Judge Advances Trademark Claims Against Porn Site

OAKLAND, Calif. (CN) – An adult sex education website may have a valid trademark case against porn site Kink.com for its use of the words “Kink University,” a federal judge found.

According to U.S. District Judge Donna Ryu’s summary of the case in her ruling, Balance Studio has been operating under the name kinkacademy.com since 2009. It offers seminars and coaching services on bondage and sadomasochism that “focus on empowerment, confidence, and communication.”

The BDSM porn website Kink.com started using kinkuniversity.com in 2014 and applied to trademark the term. But the U.S. Patent and Trademark Office rejected its application after finding a likelihood of confusion between “kink academy” and “kink university.”

In its trademark infringement lawsuit, Balance Studio says that despite this determination, Kink.com continues to use the “Kink University” mark and takes advantage of the goodwill earned by Kink Academy’s reputation, marketing porn disguised as educational videos.

In an opinion issued out of the Northern District of California Thursday, Judge Ryu declined to rule in Kink.com’s favor, finding that Balance Studio and owner Kali Williams have shown an intent to use the “Kink Academy” mark for educational purposes.

“Plaintiff has presented evidence of actual use of the registered mark in commerce, i.e., the screenshot of the Kink Academy website, gift certificate, Instagram avatar, promotional clothing, and DVD cover. A reasonable jury could conclude that such uses of plaintiff’s registered mark establish bona fide intent to use the mark in commerce for the services listed in its application, namely, “‘adult sexuality education . . . through workshops, seminars, [and] on-line video classes,’” Ryu wrote in her 17-page ruling.

Ryu also rejected Kink.com’s attempt to have the trademark declared invalid based on its claims that it has senior, exclusive rights because of the word “Kink.”

Relying on the Ninth Circuit’s “anti-dissection rule,” Ryu said Kink.com can’t split the mark in two.

“To the extent that Defendant’s invalidity argument focuses on the words ‘Kink Academy,’ Defendant must not only establish that they are descriptive, but that they lack secondary meaning,” Ryu added. “Defendant has made no attempt to do so. More importantly, in any event, such an argument does not hold water because plaintiff owns rights in a composite mark, which must be considered in its entirety.”

Balance Studios is represented by Heather Norton. Julian Swanson of the Austin Law Group represents Cybernet Entertainment, owner of Kink.com. Both attorneys are based out of San Francisco, and neither responded to an email request for comment.

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