ALEXANDRIA, Va. — The operators of RedTube.com have been hit with a counterclaim suit over rights to assert the "RedTube" mark.
RedTube.com, owned by Hong Kong-based Bright Imperial, last year sued RT Media Solutions and its managing director, Walter Olligschlager, over 29 similarly worded adult websites, such as RedTube.net and RedTube-TV.com.
Now RT Media has filed a counterclaim after losing a motion on personal jurisdiction in the case, alleging that Bright Imperial’s U.S. trademark application over RedTube was fraudulently used by former owner J&P and current owner Bright Imperial in violation of the Lanham Act.
RT Media is asking a federal judge in the counterclaim to cancel all of Bright Imperial's U.S. trademark registrations relative to the phrase "RedTube."
Specifically, RT Media is pointing to Section 61 of the Lanham Act.
Section 61 establishes eligibility criteria for an international registration based on a
U.S. trademark application, in accordance with the Madrid Protocol. The applicant must
be a U.S. national or domiciliary, or must have a “real and effective industrial or
commercial establishment in the U.S.”
Bright Imperial counsel said that the only basis for RT Media's allegation of fraudulent conduct is the assertion that J&P lacked “real and effective industrial or commercial establishment in the U.S. when it applied for international registration of the RedTube mark."
"In making this bold but baseless accusation, defendants refer to a letter written at about the same time asserting that [J&P] was not subject to personal jurisdiction in an action brought in California Superior Court," Bright Imperial told the court in a motion to dismiss RT Media's counterclaim. "But defendants’ counterclaim fails to disclose that the action with respect to which that letter was sent had nothing whatsoever to do with the RedTube trademark, with [J&P], or with [J&P's] presence in the U.S.
"This is apparent, however, from the complaint filed in that action, and from the fact that the plaintiff in that action never pursued claims against [J&P]."
Bright Imperial, in its defense of the counterclaim, said that Section 61 doesn't provide basis for cancelling a U.S. Trademark registration, "it merely permits the owner of a U.S. trademark application or registration file for an international application."
"Moreover, granting the relief defendants seek by ordering cancellation of Bright Imperial’s U.S. and international applications would be largely futile since Bright Imperial could still maintain this action based on its common law trademark rights and Bright Imperial would have a grace period to convert its international application into national registrations," Bright Imperial counsel said in a response.
Bright Imperial's RedTube, according to the original suit, was launched July 2006 at www.jpds.com/redtube, and in March 2007 it began to operate using its current URL, RedTube.com.
RT Media, however, contends it started using 'RedTube' name in connection with Red-Tube.com in November 2006, about five months before RedTube.com was launched.
But Bright Imperial said its www.jpds.com/redtube starting date is the one to consider. By that date, "Bright's 'RedTube' website was already receiving over 286,000 daily visits," the original suit said.
Bright Imperial also notes that it holds the "RedTube" trademark in the U.S., Australia, Switzerland, Singapore, Brazil and Iceland, and that it owns and operates hundreds of active "RedTube" sites.
Plaintiffs also charge that the defendants use a similar logo, with its colors only modified from red and white to red and gray.
"With only minor additions or modifications, defendants' infringing domains are identical to the 'RedTube' trademark and RedTube's domain name," said the suit, filed at U.S. District Court in Alexandria, Va. "Defendants' websites, including Red-Tube.com, call themselves 'RedTube' and prominently display the 'RedTube' trademark on each and every page."
Bright Imperial is seeking an injunction against the defendants, as well as damages for trademark infringement, conspiracy and dilution. The suit also seeks a transfer of the domain names to Bright Imperial.
The websites targeted in Bright Imperial's suit include RedTube.net, Red-Tube.net, Red-Tube.com, RedTube-Cams.com, RedTube-Cams.net, RedTube-TV.com, RedTube-TV.net, Red-TubeNet.com, RedTube-Flirt.net, RedTube-Flirt.com, RedTubeShop.org, RedTubeShop.net, RedTube-Shop.com, RedTube-Shop.org, RedTube-Shop.us, Red-Tube-Shop.com, Red-Tube-Shop.net, Red-Tube-Shop.org, Red-Tube-Shop.us, RedTube-TestAccount.com, Red-Tube.biz, My-RedTube.com, RedTube24.com, Red-Tube-Porn.net, RedTube24.net, Red-Tube-Porn.net, RedTube24.net, RedTube-Hardcore.com and Reds-Tube.com.
XBIZ was unable to reach RT Media's Olligschlager for comment.
A judge will weigh Bright Imperial's motion to dismiss the counterclaim on Aug. 3 at U.S. District Court in Alexandria, Va.