Hulu. Humu. Who knew?
A trademark dispute between streaming video provider Hulu LLC and Humu Inc., a startup aimed at helping businesses improve employee morale, has landed in Oakland federal court.
Humu v. Hulu pits two of the most prominent women on the IP bar, Orrick Herrington & Sutcliffe’s Annette Hurst and Kirkland & Ellis’ Dale Cendali. The two are actually members of the same team in a separate high-profile copyright case.
Three ex-Google employees started Humu in 2017. Their idea is to use artificial intelligence to support employee motivation, productivity and happiness. Two of the founders met in Hawaii and decided to name the business after the Hawaiian name for the triggerfish humuhumunukunuku apua’a (or humuhumu for short). “Humu” also is evocative of “human,” making it “the perfect choice” for the HR-oriented business, according to a January complaint signed by Hurst.
Humu seeks a declaration that there’s no likelihood of consumer confusion with Hulu because of the different industries, no dilution of Hulu’s mark or other violation its trademark rights. Hulu’s “niche fame” in the streaming broadband space “is not the type of secondary meaning that qualifies as fame for purposes of dilution,” Hurst writes.
Hulu moved to dismiss the suit last month. The company said it recently provided Humu with a covenant not to sue over any use of “Humu” in connection with business-to-business human resources services. Instead of dropping its suit, Humu amended its complaint to clarify that it might offer goods and services in the future, such as downloadable audio and video material related to employee retention, career growth and increased productivity.
“Humu’s real interest is in an advisory ruling by this Court that any future use of the HUMU mark, including for unspecified consumer-oriented video services, would not be infringing,” Cendali writes in the March 26 motion. “Vague allegations of an intent to engage in a trademark use at some unknown future date are insufficient to establish a case or controversy.”
Hurst argued in a filing this week that Hulu’s position can’t be squared with its attacks on Humu’s mark at the Trademark Trial and Appeal Board and in foreign jurisdictions. Humu has already engaged in lengthy negotiations in an effort to resolve the dispute. “Only after the failure of those negotiations did Humu bring suit in this Court, as it was apparent that a protracted worldwide dispute was in the offing,” Hurst wrote.
Cendali and Hurst would know a thing or two about protracted disputes. Cendali has worked with Hurst and other Orrick partners on behalf of Oracle Corp. in its nine-year copyright battle with Google LLC over Java application programming interfaces.
Neither Cendali or Hurst responded to a request for comment.
The case has been assigned to U.S. District Judge Haywood Gilliam.