Thursday, February 18, 2016

Uber in Gainesville? Not So Fast...

This will be my first post on a case from outside the Middle District of Florida, but instead comes from the Northern District.  I'll let the Judge provide the intro:
You live in Gainesville and need to book a party bus, or perhaps a non-party bus or a limo to take a number of people to an event. You run a Google search for “Gainesville party bus” and, not satisfied with any of the offerings on page one of the results, turn to page two. There is a listing there for “Uber Promotions.” Thinking that perhaps this is somehow affiliated with Uber, a nationally known taxi-like service that has recently come to town, you click on the link. You are taken to a webpage with a bright green and purple “über PROMOTIONS” logo. The crux of this trademark infringement case is (roughly speaking) whether you could reasonably conclude that Uber Promotions and Uber the taxi- like service are in some way connected. 
This case pits a Gainesville, Florida company (Uber Promotions, Inc.) ("Promotions") against the nationally known Uber Technologies, Inc. ("Tech"), an on-demand car service.   Tech began in a few cities, but has exponentially expanded over the last few years.  Tech's first foray into Florida was in Tampa [ed - thus the Middle District of Florida connection!] during the Republican National Convention in 2012.  

Promotions has been operating in Gainesville since 2006. Concerned that the junior user (Tech) was encroaching into its space in Gainesville, Promotions filed suit seeking a preliminary injunction to prevent Tech from operating in Gainesville.  This is an interesting case for showing a senior user relying on common law rights in a particular geographic area to fend off or stop a junior user relying on federal trademark rights (and the respective zones of natural expansion of the two rights holders).  The Court described the respective sizes of the companies in colorful language:
Elephants don't look out for gerbils when they plow through the bush.
Apparently Tech has unveiled a new service, called UberEVENTS, that allows you to purchase a ride for others that can be used at a particular time in the future.   It was this new service that the Court decided was preventable (at least pending trial), as a broader injunction seeking to stop Uber altogether in Gainesville was too broad.  Again, the Court used useful prose:
Arming Squirrels with Bazookas
The Court addressed the preliminary injunction factors and ultimately concluded that a narrow  injunction was proper to requiring Tech to:
  • stop using the UBER mark (or any variant thereof) in connection with the UberEVENTS service in the Gainesville market (Alachua County) until further notice
  • not advertise the UberEVENTS service in Alachua County or cause it to be advertised in Alachua County until further notice.  A posting promoting UberEVENTS placed on the Facebook wall or page of an entity with its principal place of business in Alachua County is an advertisement.  A posting promoting UberEVENTS placed on the Facebook wall or page of a real person whose usual place of abode or residence is in Alachua County is an advertisement.
  • ensure that if a person attempts to book an event in Alachua County through the UberEVENTS webpage, that booking is not allowed to be completed.
  • set up a 352-area-code phone number to handle phone calls
  • make sure that internet searches for the phrase "Uber Gainesville phone" or "Uber Gainesville phone number" returns Defendant's 352-area-code number along with words clearly indicating that the results are clearly Defendants
(The injunction further required Tech to buy Google AdWords (or similar products) if necessarily to accomplish the injunction search result obligations.)  

I'm certain this case is far from done.  Stay tuned...

1 comment: