Commercial Litigation and Arbitration

Wayback Machine — Accuracy Cannot Reasonably Be Questioned — Judicial Notice Appropriate

The Pond Guy, Inc. v. Aquascape Designs, Inc., 2014 U.S. Dist. LEXIS 85504 (E.D. Mich. June 24, 2014):

Currently before the Court is Plaintiffs' motion for a preliminary injunction. A hearing was held on this matter on May 29, 2014, which was continued to and completed on June 9, 2014. For the reasons set forth below, the Court DENIES Plaintiffs' motion.


1. Plaintiffs in this case are The Pond Guy, Inc., and its principal, Jason Blake ("Blake"). Defendants are Aquascape Designs, Inc., and its principal, Gregory Wittstock ("Wittstock"). Both parties are in the "water features" business, which entails the installation and servicing of landscape design elements that have water as their focus, such as ponds and waterfalls of varying sizes. The parties also sell parts and equipment necessary for the maintenance and installation of water features.

2. The conflict in this case arises from the use of the phrase "The Pond Guy."  Defendants applied for registration of the phrase "The Pond Guy" ("the mark") as a trademark on August 5, 1999. Pls.' Ex. 101, Defs.' USPTO Application. Plaintiffs applied for registration of the same phrase as a service mark on October 1, 1999. Pls.' Ex.  [*2] 102, Pls.' USPTO Application. Plaintiffs, in their registration application identified January 1996 as the earliest use of the mark, while Defendants' application claims December 1990 as their first use of the mark. Defendants' application was pending for approximately two-and-a-half years, and on December 18, 2001, the U.S. Patent and Trademark Office (the "USPTO") issued a final action denying Defendants' application. Defs.' Ex. 555, USPTO Final Office Action. Plaintiffs' eventually received federal registration from the USPTO on March 4, 2003 for the "The Pond Guy" service mark for "aquatic management services" under International Class 37. Pls.' Ex. 113, Service Mark Registration.

3. Plaintiffs use the mark as the name of their business, and as a brand name insofar as the products they produce and sell are branded with the mark. See, e.g., Defs.' Ex. 551, The Pond Guy Catalog. As Blake testified, Plaintiffs also sell products produced by other companies, including by Defendants. ::FOOTNOTE::1 Blake also testified that Plaintiffs use the mark to identify him, personally.

4. The parties are in agreement that Defendants have used and continue to use the mark in several ways, but they  [*3] have never sold any products branded with the mark. Defendants primarily use the mark to identify Wittstock. See, e.g. , Defs.' Ex. 720-743, Various Marketing Material. That is, in most if not all of Defendants print marketing and educational materials, Defendant Wittstock includes a message to the consumer, which is "signed" with Defendant Wittstock's signature, immediately followed by the phrase "a.k.a. 'The Pond Guy'", printed in the same cursive font as the signature. Id. Defendants' more recent use of the mark on the internet will be addressed below, as it is central to Plaintiffs' motion.



A. Marketing Channels, the Internet, and Prior Use of the Mark

13. Defendants have established a variety of marketing channels, both in traditional printed forms and on the internet. There is no dispute that Defendants have a long history of using the mark to market their products and services to professional contractors and retailers, undoubtedly dating to before Plaintiffs' trademark registration.

14.  [*8] As to the Defendants' use of traditional media as a means of marketing to both the retail and wholesale markets, the testimony of both Blake and Wittstock supports a finding that Defendants engaged in aggressive traditional media marketing almost from the inception of their business and that Wittstock used the mark as means of identifying himself personally at marketing events such as seminars and conventions by speaking it aloud. As to the geographic extent of that, however, the evidence presented to the Court does not establish with any certitude a set territory. That being said, Mr. Payton's testimony on behalf of Defendants regarding the distribution of printed marketing media including catalogs, magazines, and books in the tens-of-millions of copies from the mid-1990s though the mid-to-late-2000s is strongly suggestive of a national or near-national geographic use.

However, as Defendants have largely phased it out, their use of print media is less pertinent to this motion than their use of the internet, beyond, of course, as a benchmark for establishing a consistent use by Defendants of the mark in all of their marketing efforts across various media dating back to the inception  [*9] of their business.

15. During the hearing, both parties made reference to the history of their respective presence on the internet. Neither party, however, has submitted sufficient evidence to the Court detailing exactly what their historical internet presence consisted of.

Seeing as this is a key issue in dispute, the Court turns to the Internet Archive, found at, for the taking of judicial notice. As a resource the accuracy of which cannot reasonably be questioned, the Internet Archive has been found to be an acceptable source for the taking of judicial notice. See, In re Methyl Tertiary Butyl Ether (MTBE) Products Liab. Litig. , 2013 WL 6869410 (S.D.N.Y. Dec. 30, 2013) (taking judicial notice of certain reports by way of an internet archive search and citing Juniper Networks, Inc. v. Shipley , 394 Fed. App'x 713, at *1 (Fed.Cir.2010) (indicating that the Internet Archive may be an appropriate source for judicial notice), and; Martins v. 3PD, Inc. , 2013 WL 1320454, at *16 n. 8 (D.Mass. Mar. 28, 2013) (taking judicial notice of "the various historical versions of a website available on the Internet Archive at as facts readily determinable by resort  [*10] to a source whose accuracy cannot reasonably be questioned").

16. The Court takes judicial notice of the parties' historical internet presence as represented by the Internet Archive. Specifically, with regard to Defendants' use of the phrase "the Pond Guy" as an identifying mark for Wittstock directed at both end-use consumers and professional contractors and retailers, the Court finds that Defendants have been making such a use of the mark on the internet since at least February 29, 2000. See,, and;

17. This finding is based on both the tone and content of the above cited archival internet material, which on one page identifies Wittstock as "The Pond Guy" and on the other page is clearly directed at an end-use consumer. An example of language appearing on the archived website that clearly has as its intended audience the end-use retail consumer is the following entreaty: "[d]on't delay in joining the thousands of people who have enhanced their property and their lives with water features." Id.

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