Free Response to Motion - District Court of Colorado - Colorado

Case 1:01-cv-00600-JLK-MEH

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Filed 06/30/2006

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 01-cv-0600-JLK-MEH GO PRO, LTD., a Georgia limited liability company, Plaintiff, v. RIVER GRAPHICS, INC., a Colorado corporation, Defendant.

GO PRO, LTD.'S RESPONSE IN OPPOSITION TO DEFENDANT RIVER GRAPHICS, INC.'S MOTION TO PRECLUDE EVIDENCE OF FEBRUARY 11, 2003 TRADEMARK REGISTRATION

Defendant River Graphics, Inc. ("RG") moved to preclude introduction of and reliance by Plaintiff Go Pro, Ltd. ("Go Pro") at trial on principal U.S. Trademark Registration No. 2,685,531 for the mark "HERE FISHY, FISHY" for use in connection with shirts and head wear ("the '531 Registration") (Ex. 1). The '531 Registration was filed May 8, 2001, issued February 11, 2003, and claims that the mark was first used on or in connection with shirts and head wear at least as of February 1997. RG claims the '531 Registration does not address any issue remaining in the case, is thus irrelevant and should be precluded on that ground. Alternatively, RG claims that existence of the '531 Registration was not timely disclosed and thus should be precluded from introduction at trial as a discovery sanction. Neither of RG's contentions is accurate.

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A.

THE '531 REGISTRATION IS RELEVANT

Go Pro claims that RG has engaged in unfair competition in violation of federal trademark law by unauthorized use of HERE FISHY, FISHY on or in connection with shirts and head wear. To succeed on that claim, Go Pro must prove it owned a valid and protectable trademark prior to RG's introduction of its products to the marketplace in July of 1998. See Brookfield Comm., Inc. v. West Coast Enter. Corp., 174 F.3d 1036, 1047 (9th Cir. 1999); Primedia Intertec Corp. v. Tech. Marketing Corp., 35 F. Supp. 2d, 809, 815 (D. Kan. 1998). Importantly, however, Go Pro must also prove that it continued to own valid and protectable trademark rights in and to the HERE FISHY, FISHY mark from that date to this date. Aetna Health Care Sys., Inc. v. Connecticut Corp., No. 84-642, 1986 U.S. Dist. LEXIS 25527, at *36-37 (N. D. Okla. May 14, 1986) (ownership of trademark results from use; owner has right to exclude others from use only if mark is continually used); Planetary Motion, Inc. v. Techplosion, Inc., 261 F.3d 1188, 1195 (11th Cir. 2001) (continuity of use of mark is a relevant inquiry of establishing trademark ownership and corresponding rights). Indeed, without such proof, Go Pro's claim cannot succeed. Id. 15 U.S.C. § 1057(b) states in pertinent part: A certificate of registration of a mark upon a principal register provided by this Act shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate. The '531 Registration thus establishes that Go Pro presumptively owns protectable trademark rights in HERE FISHY, FISHY since at least as early as May 2001 through the present. The Registration also shows that Go Pro claims to have been using HERE FISHY, FISHY on or in connection with 2

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shirts and head wear in a trademark sense in commerce since at least February of 1997. Clearly, the Registration is relevant to material disputed issues pending in this case, and Go Pro is entitled to present that Registration to the Jury in support of its 15 U.S.C. § 1125(a) unfair competition claim. B. RG Was Aware Of The '531 Registration At Least As Early As August 2003

On August 21, 2003, Go Pro's Georgia intellectual property counsel sent a cease and desist letter to Los Rios Anglers, Inc. in Taos, New Mexico. (See Ex. 2.) In that letter, Go Pro advised Los Rios that it was the owner of valuable trademark rights in and to HERE FISHY, FISHY. In that letter, counsel specifically advised that the mark was covered by two federal trademark registrations, identifying in the letter both the original Supplemental Trademark Registration, as well as the Principal '531 Trademark Registration. On September 9, 2003, then-counsel for RG sent a letter to Go Pro's Georgia counsel, stating the following: We represent River Graphics, Inc. in the Colorado litigation initiated by your client. We were provided a copy of your August 21, 2003 letter to Los Rios Anglers, Inc. Demand is hereby made that you cease and desist all such improper and tortious communications with our client's customers. You are aware that Go-Pro's claim against River Graphics is currently in litigation in Colorado. Motions for Summary Judgment are pending before the Court. It is highly unlikely that your client's claim will survive. (See Ex. 3.) On September 25, 2003, Go Pro's counsel responded, again advising RG's counsel that it owned two federally registered trademarks for HERE FISHY, FISHY, including the '531 Registration. (Ex. 4.) RG has been on notice of the '531 Registration and of Go Pro's belief that the Registration supports its trademark claims for almost three years. RG's claim of surprise is simply false. Further, 3

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in light of the facts of this situation, any claim of prejudice made by RG would also be totally meritless. Accordingly, it would simply be improper for this Court to exercise its discretion to preclude introduction of the '531 Registration at trial as some form of a discovery sanction. C. CONCLUSION

For the above set forth reasons, Go Pro requests that the Court deny RG's Motion to Preclude Evidence of February 11, 2003 Trademark Registration. Respectfully submitted,

Dated: June 30, 2006

By:

s/ Robert R. Brunelli Robert R. Brunelli [email protected] Paul S. Cha [email protected] SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, Colorado 80202-5141 Telephone: 303-863-9700 Facsimile: 303-863-0223 E-mail: [email protected] ATTORNEYS FOR PLAINTIFF GO PRO, LTD.

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Case 1:01-cv-00600-JLK-MEH

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CERTIFICATE OF SERVICE

I hereby certify that on June 30, 2006, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following e-mail addresses: Franklin D. Patterson, Esq. [email protected] William P. Boyle, Esq. [email protected] PATTERSON, NUSS & SEYMOUR, P.C. 304 Inverness Way South, Suite 305 Englewood, Colorado 80112 Telephone: 303-741-4539 Facsimile: 303-741-5043 ATTORNEYS FOR DEFENDANT RIVER GRAPHICS, INC.

s/ Kristin M. Heil Kristin M. Heil Assistant to Robert R. Brunelli SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, CO 80202-5141 Telephone: 303-863-9700 Facsimile: 303-863-0223 E-mail: [email protected] [email protected]

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