News: Steve Bryant of eWeek has posted a copy of the complaint filed against YouTube by Ohio-based Universal Tube & Rollform Equipment Corp, which claims to have used the “uTube” trademark since 1996 for industrial tubing products. Universal Tube filed an application to register the “UTUBE” mark in the U.S. Trademark Office only last month. (I’ve reposted the Complaint here utube_v_youtube.pdf if you have trouble downloading it.)
Analysis: A couple days ago, I did a preliminary analysis of Universal Tube’s trademark claim here, without having a chance to see the complaint. Now that I’ve seen the complaint, here is some more reaction.
1. How to make YouTube sound like a shady character: I have to hand it to the attorneys for Universal Tube, they know how to write a complaint that is steeped in atmospherics. They describe YouTube as being a provider of “illegal copyrighted materials and pornography.” According to the Complaint, “YouTube facilitates the infringement of copyrighted works and the dissemination of illegal pornography through its service. YouTube condones the public exhibition of lewd and other disgusting videos which depict: [i] A man committing suicide, [ii] Torture fetish, [iii] Tampon fetish, [iv] Pubic hair fetish, [iv] Discussion of corpse defilement, and [v] child pornography. [links in Complaint omitted.]” Universal Tube complains that, because people now confuse its site (www.utube.com) for YouTube’s site (www.youtube.com), “the public has now come to associate the UTUBE mark with the Defendant and mistakenly believes [Universal Tube] to be the infringer or pornographer when it uses the mark.”
2. Actual confusion?: Universal Tube claims that “hundreds” of people have made and continue to make inquiries to Universal Tube, based on the mistaken impression that it is YouTube. Two of the inquiries, which are pretty foul-mouthed and profanity-laced, are quoted in the Complaint. Another inquiry allegedly came from Australian police inquiring about an alleged video with child pornography on YouTube.
In my first post about this case, I doubted whether Universal Tube could prove a likelihood of confusion based on the reverse confusion theory. I thought that Internet users going to a website for industrial tubing would not somehow believe that the site was a video sharing website run by YouTube. After all, the industrial tubing site has no videos!! But I could be wrong on the sophistication of at least some Internet users. If Universal Tube has the evidence to back up the allegations of “hundreds” of actual inquiries mistaking Universal Tube for YouTube, this could give it a possible leg to stand on.
3. Ohio law dilution claim?: Universal Tube also has alleged a trademark dilution claim under Ohio law, apparently under the common law. I have yet to find an Ohio case that recognizes dilution as a claim under common law, but will look around some more. Under the federal Lanham Act, only “famous” marks are eligible for dilution claims. Universal Tube probably concedes (by not raising a federal dilution claim) that it can’t qualify as having a famous mark.