Gathering Tree, LLC v. Symmetric Labs, Inc.

Background

Gathering Tree filed a supplemental motion for default judgment against Symmetric Labs, Inc., doing business as Symmetry Labs. The court had previously granted default judgment on Gathering Tree’s conversion claim but denied judgment on the remaining claims without prejudice because Gathering Tree had not yet shown that it owned a valid and protectable trademark.

In its supplemental materials, Gathering Tree submitted evidence that Zachary Smith first conceived of the Tree of Ténéré in August 2016 and that Gathering Tree first publicly used the name on a fundraising page in December 2016. Gathering Tree hired Symmetry in February 2017 to design, obtain, and integrate electronic and content components for the installation. The services agreement stated that Gathering Tree owned the Tree in its entirety, while Symmetry received a limited license to software needed to operate it. The agreement also provided for certain creative credits and ended on September 5, 2017.

The Tree of Ténéré was displayed at the Burning Man arts festival in August 2017. Gathering Tree said it then communicated with potential buyers, reengineered the Tree for permanent outdoor installations, partnered with Studio Drift Holding B.V. to develop authorized reproductions, and worked with an art gallery to market them.

Trademark Claims

For trademark infringement and false designation of origin under the Lanham Act, the court required Gathering Tree to show that its trademark was valid and protectable and that Symmetry used a confusingly similar mark. The court had already found that Symmetry’s mark was confusingly similar, but it previously found insufficient evidence that Gathering Tree owned the mark.

The supplemental evidence showed that Gathering Tree was the senior user of “Tree of Ténéré” for illuminated trees with leaves containing embedded light-emitting diodes. Smith conceived the name and concept before Gathering Tree partnered with Symmetry. The court found that Gathering Tree’s display at Burning Man and its discussions with potential buyers satisfied the requirement of use in commerce. Its later efforts to commercialize the Tree further supported its ownership. The court therefore found substantive merit in Gathering Tree’s Lanham Act claims.

The court also found that the factors governing a permanent injunction supported issuing one. It stated that Gathering Tree would suffer irreparable harm if Symmetry continued to hold itself out as the mark’s owner, that money damages would not adequately compensate for the harm, and that the public interest and balance of hardships favored an injunction. The opinion did not itself set out the final injunction terms; instead, it directed Gathering Tree to file a proposed judgment.

State-Law Claims

The court granted default judgment on Gathering Tree’s claim for intentional interference with prospective economic advantage. Gathering Tree alleged that Symmetry interfered with potential customers by creating confusion about ownership of intellectual-property rights and by selling or attempting to sell unauthorized reproductions.

The court found sufficient support for the claim as to Gathering Tree’s existing relationships with potential customers. It cited an email from a customer about installing an authorized reproduction in Las Vegas and found it plausible that Symmetry knew of that relationship. The court also found that Symmetry intentionally interfered by marketing reproductions and falsely claiming exclusive ownership of the intellectual-property rights. It concluded that these actions plausibly disrupted the relationship and caused harm through confusion, lost goodwill and reputation, and lost profits. The court further found that the trademark infringement was independently wrongful.

Because it granted judgment on the Lanham Act and intentional-interference claims, the court also granted judgment on Gathering Tree’s California Unfair Competition Law claim.

Disposition

The court stated that the relevant factors for default judgment favored Gathering Tree, including the evidence that Gathering Tree—not Alex Green or Symmetry—owned the Tree of Ténéré mark. The court granted Gathering Tree’s motion for default judgment on its trademark and state-law claims. It also had previously granted default judgment on the conversion claim. Because the requested relief in the supplemental motion differed somewhat from the initial request, the court ordered Gathering Tree to file a proposed form of judgment within two weeks.

The opinion was entered by William H. Orrick, United States District Judge.