United States District Court, D. Colorado
A. BRIMMER, UNITED STATES DISTRICT JUDGE
matter is before the Court on Plaintiff's Motion for
Preliminary Injunction [Docket No. 9] and Defendants'
Verified Cross-Motion for Preliminary Injunction Against
Dalkita, Inc. and Colleen Moore [Docket No. 19]. The Court
has jurisdiction over this lawsuit pursuant to 28 U.S.C.
§§ 1331 and 1367.
Dalkita, Inc. (“Dalkita”) filed this action on
June 6, 2018 asserting the following claims for relief: (1)
trademark infringement and false designation of origin under
§ 43(a) of the Lanham Act, 15, U.S.C. § 1125(a);
(2) cybersquatting under § 43(d) of the Lanham Act, 15
U.S.C. § 1125(d); (3) deceptive trade practices under
the Colorado Consumer Protection Act, Colo. Rev. Stat. §
6-1-101 et seq.; (4) trademark infringement under
Colorado common law; (5) unfair competition under Colorado
law; (6) intentional interference with contractual relations
under Colorado law; and (7) misappropriation of trade secrets
under the Colorado Uniform Trade Secrets Act, Colo. Rev.
Stat. § 7-74-102 et seq. Docket No. 1. On July
30, 2018, plaintiff moved for a preliminary injunction on its
federal trademark infringement and cybersquatting claims.
Docket No. 9. On August 24, 2018, defendants filed a
cross-motion for a preliminary injunction based on their
counterclaims for trademark infringement under § 43(a)
of the Lanham Act and unfair competition under Colorado law.
Docket No. 19. The Court held an evidentiary hearing on both
preliminary injunction motions on October 9, 2018. Docket No.
FINDINGS OF FACT
Court makes the following findings of fact based on the
parties' filings and the evidence presented at the
October 9, 2018 evidentiary hearing:
Dalkita is a full service architecture and construction firm
based in Littleton, Colorado. Dalkita's primary focus is
designing distilled spirits plants. Docket No. 1 at 2,
¶¶ 7-8. Colleen and Scott Moore are the co-owners
October 2016, Dalkita hired defendant Devin Mills as a
part-time distillery engineer. When hired, Mr. Mills owned
his own company, Devin Mills Consulting, which he had started
in 2012. Mr. Mills' job duties at Dalkita included
helping to design and build distilleries. He also engaged in
limited marketing activities, such as talking with
prospective clients and attending the American Distillery
Institute (“ADI”) conference. See
Exhibit 9 at 3-4.
April 18, 2017, Mr. Mills signed Dalkita's employment
manual, which provides that “[i]ncidental and
occasional personal use of company computers, phones, or
electronic mail and voice mail systems is permitted, but
information and messages stored in these systems will be
treated no differently from other business-related
information and messages.” Exhibit 1 at 14. The first
page of the manual states that “[t]he content of a
manual does not constitute nor should it be construed as a
promise of employment or as a contract between Dalkita
Construction, Inc. dba Dalkita Architecture &
Construction, and any of its employees.” Id.
January 2017, Mr. Mills began developing the idea for a
podcast aimed at helping distillers “get better at
their jobs.” No. one at Dalkita instructed Mr. Mills to
create a podcast or authorized him to develop the podcast
during work hours. Between January 2017 and March 2017, Mr.
Mills independently registered the domain name
distillingcraft.com, created a landing page for the website,
hired an artist to design a “Distilling Craft”
logo, and developed a basic structure for the podcast.
See Exhibits A, B, C. The landing page of the
distillingcraft.com website stated “Podcast Coming Soon
- May 2017.” The website was publicly accessible, but
only six people signed up to be notified of the podcast via
the website before July 18, 2017. Those individuals consisted
of Mr. Mills, his wife, two of his wife's co-workers, Mr.
Mills' friend Michelle, and one “random guy.”
Mr. Mills does not know how many people saw the landing page
of the distillingcraft.com website between the date of its
initial publication and July 18, 2017.
April 1, 2017, Mr. Mills and the Moores flew to Baltimore,
Maryland for the ADI conference. Dalkita paid for Mr.
Mills' trip to Baltimore. Mr. Mills told the Moores about
the podcast and distillingcraft.com during the flight to
Baltimore. Mr. Mills testified that he informed the Moores of
the podcast at that time because he felt that it would be
unethical to solicit sponsors for the podcast at the
conference without talking to Dalkita first. This testimony
is corroborated by Ms. Moore's statement that Mr. Mills
told her about the podcast in the “first quarter of
2017” and that the Moores informed Mr. Mills in April
2017 that they would reimburse him for any expenses
associated with the podcast. Additionally, the first
podcast-related entry in Mr. Mills' time records at
Dalkita was on April 11, 2017. See Exhibit 9 at 4-5.
Mills testified that he told “probably a couple hundred
people” at the ADI conference to visit the
distillingcraft.com website and “check out what we were
doing.” 7. Mr. Mills testified that, after explaining
his podcast idea to the Moores on the flight to Baltimore, he
and the Moores entered into a sponsorship contract whereby
Dalkita agreed to pay Mr. Mills his regular hourly rate for
time spent on the podcast in exchange for Dalkita being the
sole sponsor of the podcast. Mr. Mills testified that he
initially asked Dalkita for $450-$500 per episode in exchange
for sponsorship, but Mr. Moore suggested that Dalkita pay Mr.
Mills on an hourly basis in order to avoid Dalkita having to
fill out additional paperwork. Mr. Mills testified that
producing one episode would require approximately ten hours
of work. At the evidentiary hearing, the Moores denied the
existence of any sponsorship agreement. Ms. Moore testified
that Dalkita offered to pay for the costs of the podcast
because the podcast belonged to Dalkita, not because of any
sponsorship agreement. Likewise, Mr. Moore testified that
there were no written or oral agreements concerning
morning after the April 1, 2017 flight to Baltimore, Ms.
Moore changed the colors of the Distilling Craft logo from
red to orange to reflect Dalkita's branding. Mr. Mills
testified that he agreed to the change.
Mills' time records reflect that, beginning on April 11,
2017, Mr. Mills logged an average of ten hours of work for
each podcast episode. See generally Exhibit 9.
However, Mr. Mills' podcast-related time entries do not
always reference the podcast specifically, see,
e.g., Exhibit 9 at 5 (April 21, 2017 time entry:
“Emailed initial 4 desired interviewees then talked to
James young and Sean smiley about when the scheduling would
work best.”), or give any indication that the time Mr.
Mills spent on the podcast was governed by a separate
sponsorship agreement. See generally Exhibit 9.
Moore was heavily involved in various aspects of the
podcast's production, including the recruitment of
guests, the development of questions for the interview
segments, and marketing. See Exhibits 10, 11.
July 2017, Dalkita hired a third-party audio editing firm to
produce the finished audio files for the podcast.
See Exhibit 12.
Updates on the podcast were incorporated into Dalkita's
internal team meetings as early as May 2017. See
certain emails with prospective podcast guests, some of which
were copied to Mr. Mills, the Moores referred to the podcasts
as Dalkita's podcasts. See, e.g., Exhibit 10 at
1 (January 9, 2018 email from Colleen Moore asking if
distiller would “like to be on our podcast”), 6
(August 15, 2017 email from Colleen Moore asking if
distillers would like to be guests on “our new
podcast”), 12 (August 23, 2017 email from Colleen Moore
to distiller Scott Hanson characterizing podcast as
Dalkita's “little side project”). In other
emails, Ms. Moore referred to Dalkita as a sponsor. See,
e.g., Exhibit 10 at 3 (July 18, 2017 email from Colleen
Moore stating that Dalkita was
“sponsoring/producing” the Distilling Craft
podcast), 9 (August 23, 2017 email from Colleen Moore stating
that Dalkita was “sponsoring a podcast hosted by Devin
There is no evidence that Mr. Mills attempted to correct the
Moores when they told third parties that the podcast was
“our podcast.” Mr. Mills admits that he did not
attempt to correct that impression or talk to Ms. Moore
privately about it.
first episode of the podcast was published on July 18, 2017.
The podcast consists of three segments: (1) an engineering
talk; (2) an interview; and (3) commercials.
Mills was the host of the podcast. He was responsible for
conducting interviews, recording the “technical
talk” portion of the show, and posting the updated
metadata for the podcast to Blubrry. Blubrry is a podcast
hosting platform. The final audio files from the podcast were
uploaded onto the Blubrry platform where they were served out
to other websites, such as iTunes, Google, and dalkita.com.
Dalkita paid for the Blubrry account from the inception of
the account until approximately one month after Mr.
Dalkita paid for all expenses related to the podcast, except
for the registration of the distillingcraft.com domain name.
When Ms. Moore asked Mr. Mills to put the annual registration
fee for the distillingcraft.com domain name on Dalkita's
company credit card, Mr. Mills responded that he had already
paid for the first year ...