Moot Court Spring 1995

Moot Court

Copy Cop v. Task Printing & Sampa Corp.
Tom Field --- Spring 1995

Ruling on Motion for Preliminary Injunction
District Court for the District of Massachusetts

Ira Scible, J., sitting by designation.

Plaintiff, Copy Cop, seeks preliminary relief against defendants' use of a logo alleged to be confusingly similar to its own. This court has jurisdiction under 28 U.S.C. § 1338.

I. Facts     Both parties have registered logos (reproduced in an appendix) with the U.S. Patent and Trademark Office. Plaintiff's design was registered in 1972. Defendant Sampa, d.b.a. Signal Graphics, first registered its logo in 1985 under the name "stop & go printing." Both logos feature a "bobby cop."Both firms (Sampa through Task and other franchisees) provide printing as well as photocopying.
     Plaintiff has fourteen locations in the greater Boston area and advertises heavily. Defendant Task, a Sampa franchise, has been in Newton since mid-1993. Sampa has about 45 franchises, but, aside from two in Connecticut and one in New Hampshire, most are distant from plaintiff.
     Because Copy Cop's logo was registered when Sampa adopted its logo, Sampa has had constructive notice from its first use in 1977. Yet, it seems not to have known of Copy Cop until 1992 -- when its President and CEO, Steve Morris, vacationed in Boston.
     Likewise, Copy Cop has had constructive notice of Sampa since its logo was published for opposition in June 1985. Also, it has had actual notice of Sampa since at least 1989 when it investigated the firm. However, it appears not to have learned of Task until shortly before filing this action in late 1993.

II. Likelihood of Confusion Soon after a second firm enters a market with a similar mark, actual confusion may be difficult to show. Thus, actions often turn on the likelihood of confusion as a function of similarity in the parties' marks and businesses. When businesses are identical, as here, far less similar marks are apt to confuse the public.
Actual confusion has so far been minimal, but this seems to be mostly because of Task's recent entry. The cops are very similar (far more so than one in the Williams logo that plaintiff opposed in 1989), and both are prominent. Thus, it is very likely that consumers will, e.g., tell their friends about their (good or bad) experiences with "that copying place with the cop on its sign." Also, although Sampa did not appear to seek a free ride on plaintiff's good will, it recently used a stand-alone bobby cop in a promotional campaign. Moreover, it is likely, particularly in view of defendant's lack of sensitivity to the important role of unique trade identifiers, that plaintiff will be able to further demonstrate irreparable harm to its goodwill at trial.

III. Relief      However, for preliminary relief, plaintiff must demonstrate more than a probably of prevailing on the merits. This is more difficult where Copy Cop has let Sampa go about its business notwithstanding constructive notice since 1985. In the intervening time, Sampa has licensed many firms and continued to build its goodwill. Thus, defendant argues that plaintiff's lack of diligence constitutes laches and should bar any relief.
     At common law, firms had rights in marks only in their respective territories. Expanding firms often had to divide the country and take extraordinary measures to minimize confusion at market boundaries. The Lanham Act has made it possible to avoid such problems by treating registered marks as though they were being used throughout the country, but firms must diligently guard their rights and avoid leading others astray. De jure confusion is no more likely than it has been since 1985, and Copy Cop did not act. However, it did so as soon as it learned that Sampa, through Task, was on its doorstep. This presents a difficult situation.
     In addition to showing probability of ultimately prevailing, plaintiff must show that potential harm from denying preliminary relief outweighs clear harm to defendant and others in granting it. For example, if Sampa must change its logo, franchisees throughout the country will be aggrieved by, e.g., sign changes and having to and familiarize customers with a new look. Yet, none save Task are before this court.
     Because of this, sympathy for plaintiff must be tempered. Yet, defendants are hardly blameless; fully expecting plaintiff to protest invasion of its market, they persisted and had their expectations realized. Given the relative balance of equities, it seems appropriate to consider the public interest. Why should consumers have to strain to distinguish these firms -- as well as others whose logos may have even more in common? Seen in this light, Copy Cop can be regarded, at least as to Sampa, as having, through acquiescence, waived its federal rights outside the greater Boston area. However, I find no basis for waiver within that area.
     Thus, it seems appropriate to enjoin defendants' use of its logo in Massachusetts, subject to amendment after full consideration of the facts. Although Copy Cop evidences no desire to expand throughout that area, much less beyond it, should it venture into any area occupied by Sampa, I would likewise not hesitate to enjoin it pending full consideration.
     While Sampa argues that it will be burdensome not to use the same logo at all of its franchises, it has several options. One is to institute a nationwide phased change of logo. Another is to buy out Task and avoid the disputed area.
     Conversely, Copy Cop argues that it should not be locked into a space not much larger than what it occupies. In view of the facts, this is difficult to take seriously. If and when it desires to expand into areas that it has ceded to Sampa by acquiescence (probably most of the country), it can simply use something other than a bobby cop.

Students will represent Copy Cop and Sampa in teams of two. One person on each side will address laches and acquiescence; the other the likelihood of confusion and issues (other than laches and acquiescence), e.g., the balance of hardships, posed because the relief is preliminary.

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