22
Feb/17

‘Objective Baselessness’ Standard For Sham Exception For Noerr Pennington Doctrine As Applied To Trademark Demand Letter


mustang

 

Silverhorse Racing makes aftermarket parts for the Ford Mustang GT, including a bezel shifter, which is a bezel that goes around the shifter.  It is not licensed by Ford.  Ford sent a demand letter to Silverhorse’s dealer.  In the resulting trademark suit, Silverhorse brings a counterclaim alleging tortious interference resulting from the demand letter.  Ford alleges that its demand letter is immunized under the Noerr-Pennington doctrine, which protects litigants when ‘petitioning’ the government.  Silverhorse acknowledges that Noerr-Pennington has been extended from antitrust law, to trademark law, and has been extended to cover pre-litigation behavior such as demand letters.  However, Silverhorse argues that because it has, in its opinion, four good defenses to trademark infringement, the demand letter falls under the sham exception to the doctrine.

Held: Silverhorse’s assertions of its defenses did not establish that the demand letter was objectively baseless, which would have been required to establish that the demand letter was a ‘sham.’  Tortious interference claim dismissed.

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