What is your cat worth to you?
If you answered “at least a few hundred thousand dollars in damages and the rights to a lucrative domain name”, you may be Tabatha Bundesen, owner of feline internet sensation Grumpy Cat.
With this much potential money in the kitty, it was only a matter of time before Grumpy Cat got into a copyright catfight.
Wait – who is Grumpy Cat?
Grumpy Cat burst onto the high profile (and profitable) celebrity cat scene in 2012 after a Reddit post showing off its permanent sullen expression (the product of an underbite and the cat’s dwarfism) went viral. Grumpy Cat has made millions for owner Tabatha Bundesen, with lucrative deals as Friskies’ ‘spokescat’, a line of plush toys, books and other licensed merchandise, including a branded coffee drink Grumppuccino. Grumpy Cat has featured on the cover of the Wall Street Journal and in her own Lifetime Movie, has her own lawyer and is soon to have a waxwork at Madame Tussauds in San Francisco.
…no, we aren’t kitten.
What’s the issue?
Grumpy Cat Limited filed a federal lawsuit on Friday against California-based company Grenade Beverage LLC (Grenade) on December 11, accusing Grenade of exploiting the cat’s copyright and trade marks without permission and of cybersquatting. Grenade, which has a license to use the Grumpy Cat copyright and trade marks in selling the Grumppuccino iced coffee beverage and also operates the domain name grumpycat.com, announced a new line of Grumpy Cat merchandise and expansion to offer a range of Grumpy coffee beans. Grumpy Cat’s owner was furr-ious, informing Grenade that they did not agree to the new product line and that the product would breach their licensing agreement. The company went ahead and launched the product anyway.
Grumpy Cat Limited is asking for a preliminary and permanent prohibitory injunction to stop sales of the coffee beans, the maximum statutory damages of $150,000 for each copyright infringement, and $100,000 for exploiting the domain name grumpycat.com (which is owned by Grenade). That’s an absolute meowtain of cash!
Notably, Grumpy Cat Limited is also seeking the transfer of the grumpycat.com domain name to itself pursuant to the Anti-Cybersquatting Consumer Protection Act in the US of 2009, 15 U.S.C § 1125. Previous requests to have the domain name signed over have failed.
Under the ACPA, a trade mark owner may bring a cause of action against a domain name registrant who, with “a bad faith intent to profit from that mark,” “registers, traffics in or uses a domain name” that is either identical or confusingly similar to a “distinctive” or “famous” mark.
Here, Grumpy Cat Limited has alleged that that the Grumpy Cat trade mark are distinctive and famous, and that the Defendants have a bad faith intent to use the Domain Name to direct and divert customers to their own website, confusing them into believing that the Plaintiff has authorised or is affiliated with the Defendant’s alleged unauthorised use of the trade marks. Certainly enough to give Grenade paws…
Grumpy Cat down under
If the dispute was about an Australian domain name, Grumpy Cat Limited would have to follow the.au Dispute Resolution Policy (auDRP). However, Grumpy Cat Limited may have trouble in getting up an auDRP claim as it would have to prove Grenade has no rights or legitimate interests in respect of the domain name, while; Grenade continues to maintain an interest in using the Grumpy Cat trade marks under the license agreement to sell Grumppuccinos.
Grumpy Cat may not have been a happier moggie if she was Australian born and bred. The Australian Domain Name Administrator requires that for registration of a com.au domain, the registrant’s name or trade mark (or the abbreviation or acronym of it) must exactly match the domain name or be otherwise closely and substantially connected to the registrant. A close and substantial connection includes where the domain relates to a product that the registrant manufactures or sells. Grenade may well have been able to register the grumpycat domain name in Australia, even though Grumpy Cat Limited owns the ‘Grumpy Cat’ trade mark, because Grumppuccino, as associated with Grumpy Cat, is sold by Grenade under a license agreement.
The dispute is yet to be decided, but Grenade should warned that Grumpy Cat may well land on her feet.