Eyebobs, LLC v. Snap, Inc.

259 F. Supp. 3d 965
CourtDistrict Court, D. Minnesota
DecidedMay 8, 2017
DocketCase No. 16-CV-4276 (PJS/DTS)
StatusPublished
Cited by1 cases

This text of 259 F. Supp. 3d 965 (Eyebobs, LLC v. Snap, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Minnesota primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Eyebobs, LLC v. Snap, Inc., 259 F. Supp. 3d 965 (mnd 2017).

Opinion

ORDER

Patrick J. Schiltz, United States District Judge

This is a trademark-infringement action brought by plaintiff Eyebobs, LLC (“Eye-bobs”1) against defendant Snap, Inc. (“Snap”). Eyebobs designs and sells reading glasses, including reading sunglasses. Eyebobs owns an incontestable registered trademark (Registration No. 3484578) protecting a mark consisting of an oval, upward-looking, black-and-white cartoon eyeball placed above the word “Eyebobs.” The Court will refer to this mark as the “Registered Mark.” The Registered Mark is typically displayed against a golden-yellow background. Eyebobs also claims that it has an unregistered, common-law trademark protecting a mark consisting of the eyeball design itself — that is, the eyeball logo unaccompanied by the word “Eye-bobs.” The Court will refer to this (claimed) mark as the “Common-Law Mark.”

[971]*971Snap owns the popular Snapchat mobile application (or “app”), which allows users to take photos and videos and send them to other Snapchat users. Snap is in the process of launching a new product called “Spectacles.” Spectacles are sunglasses with a built-in camera in the upper right corner (near where the right temple connects to the right end piece). Photos and video that are captured by the camera are wirelessly transmitted to a smart phone on which the Snapchat app is running. In marketing Spectacles, Snap uses a mark that consists of a round, forward-looking, black-and-white cartoon eyeball that is typically displayed against a vibrant-yellow background and that is often placed near the word “Spectacles.” The Court will refer to this mark as the “Spectacles Mark.”

Eyebobs brought this action against Snap, alleging that Snap’s use of the Spectacles Mark infringes Eyebobs’ Registered Mark and Common-Law Mark. This matter is before the Court on Eyebobs’ motion for a preliminary injunction. For the reasons that follow, Eyebobs’ motion is denied.

I. BACKGROUND

Eyebobs was founded in 2001 with “the mission of offering high-quality and fashionable reading glasses at a reasonable price[.]” ECF No. 1 ¶ 7. Eyebobs’ product line has since expanded to include sunglasses and frames for prescription lenses. Id. Eyebobs’ products can be purchased online, through a mail-order catalog, or at eyewear boutiques and other stores. Shirley Deck ¶ 24; see Magerman Decl. ¶¶ 7-8. The products generally sell for between $79 and $150. Shirley Deck ¶ 23. Eyebobs also operates its own retail store in Minneapolis and plans to roll out additional retail stores over the next year. Magerman Deck ¶ 11; Shirley Deck ¶ 15. In marketing its products, Eyebobs consistently uses the Registered Mark or a similar combination of the eyeball logo with the word “Eye-bobs.” ÉCF No. 1 ¶ 8. Snap contends — and Eyebobs does not seem to dispute — that the Common-Law Mark is not in use. ECF No. 29 at 11; ECF No. 50 at 3:10-4:4. In other words, the parties seem to agree that whenever the eyeball logo appears in commerce, it is accompanied in some way by the word “Eyebobs.” See Shirley Deck ¶¶ 8-18, 20.

Snap’s mission "is to “develop products that harness the power of cameras in ways that allow people to communicate, express themselves, and share their life experiences.” Horowitz Deck ¶ 3. Snap’s first product was the Snapchat mobile app, which, as noted, allows users to record photographs and videos (called “Snaps”) with their smart phones and send them to other Snapchat users. Id. ¶ 4. A Snap appears on the receiver’s screen for only a few moments before disappearing. Id. Snapchat users can also send chat messages, create visual “Stories” that remain on the user’s account for one day, and store Snaps indefinitely as “Memories.” Id. ¶ 5.

In September 2016, Snap began advertising its new Spectacles product, which was described as “sunglasses that Snap” and marketed as a camera made “Just for Snapchat.” Id, ¶¶ 6, 10; ECF No. 1 ¶ 14. A pair of Spectacles is essentially a hands-free recording device that allows users to take -a Snap with the built-in camera and wirelessly add that Snap to the Snapchat app. Horowitz Deck ¶¶ 6-7. A Snap recorded by a Spectacles camera may be viewed, edited, or shared only through the Snap-chat app. Id. ¶ 6. Spectacles come with sun lenses that do not have vision-correcting capabilities, but the sun lenses can be replaced with prescription lenses. ECF No. 1 ¶ 17. Spectacles retail for $129.99. Horowitz Decl. ¶ 9.

Snap originally sold Spectacles through vending machines (called “Snapbots”) lo[972]*972cated in various cities across the United States. Id. ¶ 8; see also Routhier Decl. Ex. 0. Snap also sold Spectacles through a temporary (and now closed) retail store in Manhattan. Horowitz Decl. ¶ 8. At present, Snap sells Spectacles online via the Spectacles.com website. Id. ¶ 9. In marketing Spectacles, Snap has used the Spectacles Mark, which Snap claims is a stylized depiction of the right lens of a pair of Spectacles. Id. ¶ 11. The Spectacles Mark is sometimes used by itself and sometimes used in conjunction with the word “Spectacles.” Id. ¶ 13.

II. ANALYSIS

Eyebobs contends that Snap’s use of the Spectacles Mark infringes its trademarks, and Eyebobs how seeks to preliminarily enjoin Snap’s continued use of the Spectacles Mark in its marketing of Spectacles.’

A. Standard of Review

The Court considers four factors in deciding whether to grant a motion for a preliminary injunction: (1) the movant’s likelihood of success on the merits; (2) the threat of irreparable harm to the movant if the injunction is not granted; (3) the balance between this harm and the harm that the non-movant will suffer if the injunction is granted; and (4) the public interest. Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d 109, 114 (8th Cir. 1981); “In deciding whether to grant a preliminary injunction, likelihood of success on the merits is -most significant.” Laclede Gas Co. v. St. Charles Cty., Mo., 713 F.3d 413, 419-20 (8th Cir. 2013) (citation and internal quotations omitted). “A preliminary injunction is an extraordinary remedy,” and the party seeking a preliminary-injunction bears the burden of establishing its entitlement to such relief under the Dataphase factors. Watkins Inc. v. Lewis, 346 F.3d 841, 844 (8th Cir. 2003) (citations omitted).

B. Likelihood of Success on the Merits

Eyebobs brings three claims against Snap. First, Eyebobs sues Snap under § 35 of the Lanham Act for infringing the Registered Mark. 15 U.S.C. § 1114. Second, Eyebobs sues Snap under § 43(a) of the Lanham Act for infringing the' Common-Law’Mark. 15 U.S.C. § 1125(a). And third, Eyebobs sues Snap under Minnesota law for engaging in deceptive trade practices. Minn. Stat. § 325D.44. The Court will address these claims, in turn.

' 1. Infringement of a Registered Trademark

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Bluebook (online)
259 F. Supp. 3d 965, Counsel Stack Legal Research, https://law.counselstack.com/opinion/eyebobs-llc-v-snap-inc-mnd-2017.