Retailer cleared of infringement in Viacom TV show row

A Michigan court has dismissed a trademark claim against a children’s clothing retailer, saying it was protected by the ‘first sale’ doctrine when it sold merchandise related to Viacom’s “Bubble Guppies” television show.

The motion to dismiss was granted yesterday, July 15, after the US District Court for the Western District of Michigan rejected claims by children’s clothes designers Debbie and Dean Rohn that Goodies for Kiddies infringed their ‘Guppie’ trademarks.

Last year, the complainants sued Viacom, which produces the “Bubble Guppies” show, for trademark infringement and named retailers Target, Kmart, Sears and Goodies for Kiddies in the lawsuit.

The dispute centres on the name of the “Bubble Guppies” television show and the sale of clothing connected to the programme sold by the retailers. Viacom had authorised the companies to sell clothes bearing the “Bubble Guppies” name.

The complainants stated that they own two registered US trademarks for the ‘Guppie’ word mark and logo.

In 2009, after they heard a show called “Bubble Guppies” was in development, the complainants wrote to Viacom informing the company about their trademarks.

Counsel for Viacom responded to the Rohns shortly afterwards saying that the show’s name, as well as any merchandise relating to it, would not be infringing their marks.

In 2011, “Bubble Guppies” was first broadcast and two years later a number of retailers including Target, Kmart and Goodies for Kiddies started selling t-shirts with the phrases ‘Bubble Guppies’ and ‘Hello Guppies!’.

But Judge Janet Neff dismissed the claim against Goodies for Kiddies on the grounds that it is protected by the ‘first sale’ doctrine—a legal standard that can prevent parties from being found liable for infringement for merely re-selling trademarked goods.

“Trademark infringement requires conduct more culpable than the mere act of putting a manufacturer’s product on one’s shelf and offering it for sale.

“Its actions are protected by the first sale doctrine and cannot, as a matter of law, cause a likelihood of consumer confusion,” she added.

John Di Giacomo, partner at law firm Revision and representing Goodies for Kiddies, said: "We are happy with the decision and believe that it is the right decision.

"We believe that the first sale doctrine was properly applied because its purpose of is to protect the resale of a genuine article bearing a true mark, as opposed to a counterfeit article bearing a false mark," he added.

Thomas Blaske, partner at law firm Blaske & Blaske and representing the complainants, said "we are disappointed, but not surprised", adding that the "real culprits remain in the case".

Viacom had not responded to a request for comment at the time of publication, but we will update the story should the company get in touch.