YWCA Dances into Contributory Infringement Claim
Habeeba’s Dance of the Arts, Ltd. (”Habeeba”), which provides dance instruction and performances under the mark HABEEBA, sued dance instuctor Susan Knoblach and the YWCA for, inter alia, trademark infringement and contributory trademark infringement.
The YWCA rented space to Knoblach so she could teach dance classes, all of which were taught under the mark HABIBA. Prior to filing suit, Habeeba notified both the YWCA and Knoblach of Knoblach’s infringing use of HABIBA, but both parties ignored Habeeba’s request to cease using the mark.
YWCA filed a motion to dismiss the case as to the claim against it of contributory liability. In its defense, the YWCA argued that it merely rented the space to Knoblach and had neither proper notice of the infringement nor sufficient control over her to stop the infringing use. It could, therefore, not be held liable under a contributory theory, it argued. The court disagreed, finding, under the Fonovisa case that after receiving the notice from Haebeeba that contained sufficient information to find that a cause of action existed, the YWCA became “willfully blind” to its tenant’s activities while it collected money from her each time she taught a class.
In its motion, the YWCA also attacked the validity of the mark, claiming that, under the doctrine of foreign equivalents, the mark was descriptive and not entitled to protection. Habeeba means, loosely translated, “loved one” in Arabic. Without making a final determination as to the descriptive nature of the mark, the court dismissed this defense, finding, quite correctly, that the doctrine is not a rule, but a guideline that doesn’t necessarily govern each case and every language. Oh, and one more thing (and this is from your friends at Cobalt): YWCA you may want to look up the meaning of “descritptive” for trademark purposes, or any purpose.