Discord, Inc. v. Discord Sound

Background

Discord, Inc. alleged that it owned the DISCORD trademark, including U.S. Federal Registration No. 4,930,980, and had used the mark since March 2, 2015 for computer software applications involving social networking and the sending of messages and media files. The opinion describes those services as an application for text, audio, and video chats.

The defendant, Dynamic Technology Group Ltd., doing business as Discord Sound, began using the DISCORD SOUND mark for wireless earbuds after Discord began using the DISCORD mark. The defendant registered the discordsound.com domain name and operated a related website. It also created Facebook, Indiegogo, and other social-media pages to promote its goods and services.

Stipulated findings and judgment

The parties stipulated that the defendant’s use of the DISCORD SOUND mark violated Discord’s trademark rights under 15 U.S.C. §§ 1114, 1125(a), 1125(c), and 1125(d), damaged Discord and the DISCORD trademark, and allowed the defendant to obtain profits at Discord’s expense. The defendant stipulated to these findings and did not contest them.

Permanent injunction

The court permanently prohibited the defendant and a broad group of related or controlled persons and entities from using, applying for, or registering any trademark, trade name, domain name, or social-media account containing DISCORD SOUND, DISCORD, or the term “discord,” including misspellings and abbreviations. Those parties must remove the covered marks and terms from social-media accounts or delete accounts that cannot comply.

The order also requires the covered parties to assign rights in domain names containing “discord” or similar terms. They may not oppose, sue based on, seek cancellation of, object to, challenge, or otherwise attack Discord’s DISCORD trademark or related marks, names, copyrights, or domain names incorporating the mark. They also must monitor compliance by people under their control or employment, take reasonable corrective action for violations, notify Discord promptly in writing about underlying conduct, and accept responsibility for violations by those people.

Jurisdiction and disposition

Judge Haywood S. Gilliam, Jr. entered the stipulated judgment and permanent injunction on May 26, 2020. The court retained jurisdiction to enforce or adjudicate alleged violations of the injunction and retained ancillary jurisdiction to enforce or adjudicate violations of the parties’ confidential settlement agreement. The parties consented to the court’s jurisdiction, waived specified challenges to the court and forum, and waived the right to appeal the order or later challenge its provisions. The opinion does not state that the court awarded a specific amount of damages or profits.