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Cedar Park woman wins injunction against ‘Cake Boss’
The Learning Channel show “Cake Boss” could be headed for a name change.
As the result of a lawsuit filed by Cedar Park woman, a Seattle District Court judge has ordered Discovery Communications to stop using the name for the show and any related merchandise pending trial.
The injunction against the use of the program’s name becomes effective within one month following the final first-run airing of the third season.
Kelley Masters, a former professional cake decorator, runs a business and website under the CakeBoss banner and sells a software product with the same name (the website distributes CakeBoss-branded cake recipes and baking tutorials, while the software assists professional cake bakers with business management, including cost tracking, recipe organization, calendaring, and invoicing customers). Masters registered the Internet domain cakeboss.com in 2006 and began selling software in 2007.
When Masters learned that The Learning Channel (a division of Discovery Networks) was planning to air a television program called “Cake Boss” in 2009, she contacted the network’s legal department. She received the response that “Discovery did not believe that a television show named ‘Cake Boss’ could be confused with a software product of the same name,” according to the lawsuit, and the network declined to change the name of the show.
Masters filed suit in March of this year and, on April 29, sought the injunction against TLC’s use of the name.
Judge Richard Jones, in his decision granting the preliminary injunction, found that Masters has lost trademark and corporate identity due to TLC’s actions. “Cake Boss appears to have simply overwhelmed CakeBoss,” he wrote. “Consumers with no evidence other than the consecutive use of the words ‘cake’ and ‘boss’ assume that Masters’ website promoting cake baking software is connected to Discovery’s television show. Masters is likely to prove that it has lost control of its product identity, its goodwill, and its ability to move into new markets.”
Masters’ suit claims that the company has received misdirected fan mail, requests for custom cakes and inquiries about the relationship between the CakeBoss website and the show. Users in online cake-related forums have attributed the website’s recipes to the program, according to court filings, and Jones noted that the CakeBoss website is often overwhelmed with visitors coinciding with the airing of a “Cake Boss” episode, at times shutting down in response to the excessive traffic. In addition, Discovery has threatened legal action in response to Masters’ sales of CakeBoss-branded products.
Jones wrote in the Court’s ruling that there’s no evidence that Discovery conducted even a rudimentary search for prior use of the brand before choosing it as the title for its program.
Discovery Networks would not respond to a request for an interview, explaining that the network does not comment on pending litigation.
Permalink | Comments (3) | Post your comment Categories: Entertainment, Local people on TV
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By Jyotsna
July 23, 2010 8:19 PM | Link to this
The above reader misses the point. She has LOST CONTROL of her legal trademark. Trademarks exist so that the company with the trademark can protect its image. For example, iff Buddy does something wrong, HER sales will be affected. This is a violation of the intent of the law.
Discovery had many opportunities to settle prior to the lawsuit. But they thought their money could protect them from a small business owner and were unbelievably arrogant.
By Ellen
July 23, 2010 6:42 PM | Link to this
I can certainly understand why you wouldn't want the hard work you have put in to a product to mistakenly be attributed to someone else. I know I would not like it if I went to all of the trouble to make a tutorial of a decorating technique on my site just to have people that watch it say "great job Buddy". And then even worse have the Discovery Channel/Buddy threaten to sue me for expanding my business that I started before they even existed. I am proud that our system is looking out for the smaller businesses and not letting the big guys push them around. Go CakeBoss!!
By Liz
July 23, 2010 2:34 PM | Link to this
I would think she would LIKE the excess traffic and name recognition gained from the misunderstanding... ??