Durie Tangri and Twitter got some good news last week from U.S. Magistrate Judge Jacqueline Scott Corley.
Corley rejected the TWiT Netcasting Network‘s bid to disqualify the firm from defending Twitter against TWiT’s breach of contract and trademark action.
She also granted Twitter’s bid to dismiss all of TWiT’s contract claims with prejudice. The judge dismissed the trademark claims with leave to amend. “Plaintiffs have not plausibly alleged that they entered into a contract with Twitter, that Twitter defrauded plaintiffs, or that Twitter is doing something that infringes on plaintiffs’ trademarks,” Corley wrote.
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TWiT, which stands for This Week in Tech, began distributing audio and video content over the internet about a year before Twitter launched its micro-blogging service in 2006. TWiT owner Leo Laporte interviewed Twitter co-founder Evan Williams on TWiT’s net@night program the following year. The two discussed the similarities of their marks, but Williams indicated there was no conflict because Twitter was focused on the text space.
When Twitter was rumored to be moving into audio and video streaming in 2009, Laporte wrote to Williams expressing concern about their ability to “co-exist.”
“Don’t worry,” Williams emailed back. “We’re not expanding to audio or video under the Twitter brand.”
Fast-forward eight years and Twitter ultimately did move into that space. Laporte sued the company in January. For its defense, Twitter enlisted Durie Tangri, a firm that TWiT had retained in 2013 when a patent assertion entity called Personal Audio was threatening lawsuits against podcasters.
Durie Tangri billed TWiT for only 25 hours, and the matter was closed in 2015 without TWiT ever being sued. But the firm learned TWiT executives’ views about litigation and its financial ability to fight a lawsuit, the company’s new lawyers at Santa Rosa’s Spaulding, McCullough & Tansil and San Jose’s Payne IP argued.
That is not enough to disqualify a law firm in a subsequent representation, Corley ruled Friday. “At bottom, plaintiffs are arguing that because they are a small business, any information that Durie Tangri obtained from the prior representation is material to this action. But this is not the law,” Corley wrote.
Corley then granted Twitter and Durie Tangri’s motion to dismiss the case. First, Corley listened to the 2007 interview and said she didn’t hear an oral contract being formed. “No offer was made. No offer was accepted. No consideration was exchanged,” she wrote.
Nor was the “don’t worry” email a written contract. “‘Don’t worry’ does not support a plausible inference that Mr. Williams promised that Twitter would never expand to audio or video under the Twitter brand,” Corley wrote.
As for TWiT’s trademark claims, it has not “adequately pled what Twitter is doing” is creating a likelihood of confusion between the two marks. She granted leave to amend that claim.
Durie Tangri’s Ragesh Tangri, Joseph Gratz, Josh Lerner and Eric Messinger represent Twitter before Corley.