Simplicam Maker Asks Judge To Nix SimpliSafe TM Suit

Law360, Boston (September 13, 2016, 9:34 PM EDT) -- Arcsoft Inc., maker of the Simplicam home monitoring camera, pressed a Massachusetts federal judge for a quick win Tuesday in a trademark suit brought by home security company SimpliSafe, saying its mark doesn't infringe as a matter of law.

In summary judgment arguments that lasted more than an hour, Arcsoft told U.S. District Senior Judge Rya Zobel that the two companies are non-competitors in different industries, and that the camera is drastically different in purpose and function than SimpliSafe’s home security systems.

Unlike the Simplicam, SimpliSafe’s systems have high-decibel alarms, a way to directly dial the police, and Wi-Fi-enabled monitors to tell if glass is broken or a door is opened, Arcsoft argued.

Simplicam, a wireless camera, has none of that, Arcsoft said.

“The primary purpose is for people to check in on their kids,” said Steven J. Wadyka, Jr. of Greenberg and Trauig LLP.

In addition, Wadyka said, the channels of trade are different — and merely because both sell it through the Internet doesn’t establish otherwise, Wadyka said.

SimpliSafe first filed suit in October 2014, alleging common law and federal trademark infringement by use of the Simplicam name and mark of the earlier SimpliSafe mark. The complaint was later amended to include an allegation that Arcosft got its Simplicam trademark by fraud — by incorrectly telling the U.S. Patent and Trademark Office that its date of first use in commerce was Jan. 7, 2014, when it was really in August of 2014.

On the fraud allegations, Arcsoft said that its in-house counsel wasn’t wrong, that any alleged misstatements were immaterial, the attorney didn’t know of any false misrepresentation and that she didn’t intend to deceive the PTO.

SimpliSafe, in a matter of first impression, is urging Judge Zobel to use the “reckless disregard” standard to show the PTO was defrauded. That is common in patent or libel law but unusual in trademark law. Arcsoft said that such allegations need to be proved “to the hilt.”

On the trademark infringement claims, both sides agree it all comes down to likelihood of confusion, which, in the First Circuit, includes as factors the similarity of the marks, similarity of the foods, the relationship between their channels of trade, the relationship between their advertising, the classes of prospective purchasers, the evidence of actual confusion, the defendant’s intent, and the strength of the plaintiff’s mark.

The marks themselves, Arcsoft told Judge Zobel, have key differences — demonstrating with two large photographs the logos and names. In the SimpliSafe name and logo, the word "Simpli" is highlighted. The two names have completely different fonts, and while they're both blue, it's a different kind of blue. Also, Arcsoft argued, while its logo depicts an aperture, SimpliSafe's depicts a lock.

SimpliSafe itself did not request summary judgment, instead arguing that Arcsoft was wrong on the facts and the law and that many of these issues are fact-intensive and need to go to a jury.

Plaintiffs’ attorney Nicole Gage of Foley & Lardner LLP said that Arcsoft itself, in their business plans, website and in public relations, touted the Simplicam right in the SimpliSafe bailiwick: security.

In fact, Gage said, multiple articles touted by Arcsoft describe the security aspects of the Simplicam, like its ability to turn on to ward off a burglar.

And although they don’t need to prove actual confusion to get at likelihood of confusion, it’s still one element, and a strong one at that, Gage said.

They’ve found more than a dozen examples of people asking whether the Simplicam and SimpliSafe were affiliated or otherwise confused about it, Gage said.

Arcsoft, on the other hand, said that the number of people who were actually confused was de minimis.

Arcsoft is represented by Zachary C. Kleinsasser, John F. Farraher Jr., Emily C. Hannigan and Steven J. Wadyka, Jr. of Greenberg Traurig LLP.

SimpliSafe is represented by Nicole E. Gage, Robert S. Weisbein and Rachel E. Kramer of Foley & Lardner LLP.

The case is SimpliSafe Inc. v. Arcsoft Inc., case number 1:14-cv13850-RWZ in the U.S. District Court for the District of Massachusetts.