Alyn v. Southern Land Company, LLC

Filing 144

MEMORANDUM OPINION OF THE COURT. Signed by District Judge Waverly D. Crenshaw, Jr on 12/28/16. (DOCKET TEXT SUMMARY ONLY-ATTORNEYS MUST OPEN THE PDF AND READ THE ORDER.)(am)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF TENNESSEE
NASHVILLE DIVISION
LISA ALYN,
Plaintiff,
v.
SOUTHERN LAND COMPANY, LLC,
Defendant.

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NO. 3:15-cv-00596
JUDGE CRENSHAW

MEMORANDUM OPINION
Lisa Alyn is a real estate agent who lives and sells property in a subdivision near Franklin,
Tennessee called “Westhaven” using the business name “Westhaven Franklin.” (Doc. No. 114 at
7–8.) She promotes her real estate business through domain names that include the term
“Westhaven.” (Id. at 10–11.) Southern Land Company, LLC (“Southern Land”) developed the
Westhaven subdivision, has registered trademarks for W WESTHAVEN and WESTHAVEN, and
transacts its real estate business in the Westhaven subdivision through a business called
“Westhaven Realty.” (Id. at 1, 4.) Alyn’s First Amended Complaint raises the following claims
against Southern Land: (1) declaratory judgment that her use of the term “Westhaven” does not
infringe on any exclusive trademark right of Southern Land pursuant to the Lanham Act, 15 U.S.C.
§ 1051 et seq.; (2) cancellation of federal trademark registrations under 15 U.S.C. § 10604; (3)
tortious interference with business expectancies and relations under state law; (4) unfair
competition under the Lanham Act; and (5) defamation under state law. (Doc. No. 37 at 9–13.)
Southern Land has raised the following counterclaims: (1) cybersquatting under 15 U.S.C. §
1125(d); (2) trademark infringement under 15 U.S.C. § 1114 and common law; (3) false
designation of origin, false description and representation under 15 U.S.C. § 1125, et seq.; and (4)

violation of Tennessee Consumer Protection Act, Tenn. Code Ann. § 47-18-101, et seq. (Doc. No.
38 at 29–36.)
Alyn has filed a motion for partial summary judgment as to liability on a portion of her
defamation claim. (Doc. No. 78.) Southern Land has moved for partial summary judgment on its
trademark infringement (statutory and common law), cybersquatting, and false designation of
origin claims. (Doc. No. 85.) Southern Land also moves for summary judgment on all of Alyn’s
claims. (Doc. No. 82.)
For the reasons that follow, Alyn’s motion for partial summary judgment on her defamation
claim is DENIED. Southern Land’s motion for partial summary judgment is GRANTED on its
statutory and common law trademark infringement claims and its false designation of origin claim,
but DENIED as to its cybersquatting claim. Southern Land’s motion for summary judgment on
Alyn’s claims is GRANTED.
Also before the Court is Southern Land’s motion to exclude Alyn’s proffered expert
testimony. (Doc. No. 80.) That motion is DENIED in part and DENIED AS MOOT in part.
I.

Factual and Procedural History
A. Southern Land
In the early 2000s, Southern Land selected the name “Westhaven” when it began

development for a large residential real estate project in Franklin, Tennessee. (Doc. No. 114 at 1.)
Southern Land engages in real estate development, horticulture operations, golf course ownership
and management, property management, and resale real estate operations related to the project.
(Id. at 4.) Its real estate work is handled through its division named Westhaven Realty, which is
physically located in the Westhaven subdivision. (Id. at 4.)

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On November 9, 2000, Southern Land registered the domain name www.westhaventn.com.
(Id. at 2.) On June 20, 2003, Southern Land filed its application to register marks for
WESTHAVEN and W WESTHAVEN. (First Amended Complaint, Doc. No. 37 at ¶¶ 20–21.) On
January 5, 2004, the trademark examiner issued two Office Actions—one for each of Southern
Land’s applications—each of which required Southern Land to indicate whether “WESTHAVEN”
had any significance “in the relevant trade” or “any geographical significance.” (Id at ¶ 23; Office
Actions, Doc. No. 37-2.) On July 6, 2004, Southern Land responded to each Office Action:
“Applicant submits that ‘WESTHAVEN’ does not have any significance in the relevant trade, or
any geographical significance.” (Doc. No. 37-3.)
On June 6, 2006, Southern Land obtained U.S. Trademark Registrations from the United
States Patent and Trademark Office (“PTO”) for a W WESTHAVEN word and design mark (U.S.
Reg. No. 3,101,150) and the WESTHAVEN word mark (U.S. Reg. No. 3, 101,151) for use with a
number of real estate-related services, including “real estate brokerage services, leasing of real
estate, real estate management,” and “real estate development.” (Doc. No. 114 at 2-3; Doc. No.
38-1; Doc. No. 38-2.) The registrations show that Southern Land first used the marks in commerce
on January 31, 2002. (Doc. No. 38-1; Doc. No. 38-2.) Because the WESTHAVEN marks were in
continuous use for five years, Southern Land filed a Declaration of Incontestability with the PTO.
(Doc. No. 114 at 3–4.) The parties agree that Southern Land’s WESTHAVEN marks are now
incontestable pursuant to 15 U.S.C. § 1065. (Id. at 4.)
B. Alyn
Alyn is a licensed real estate agent who moved to a home in Southern Land’s Westhaven
development in 2008. (Id. at 7–8.) In 2009, Alyn began publishing a blog called “Westhaven
Weekly” about life in the Westhaven neighborhood. (Id. at 8–9; Doc. No. 29-1 at ¶ 7 (Alyn Decl.)).

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In January 2010, she created the domain name westhavenweekly.com to serve as a new outlet for
publishing the blog. (Doc. No. 29-1 at ¶ 8.) She has used this domain name since then, and it now
resolves to her current website. (Id.) Alyn offers her affidavit stating that before she created this
domain name, she contacted Brian Sewel, Vice President of Southern Land, and that he gave her
verbal permission to use that domain name. (Id.)
In

2012,

Alyn

registered

the domain

names

www.westhavenfranklin.com

and

www.westhavenfranklin.net. (Doc. No. 114 at 10.) The parties dispute whether Southern Land was
aware of Alyn’s ownership or use of these domain names when she registered them and whether
it gave her permission to use the WESTHAVEN marks on her website or in her domain name.
(Id.) Alyn’s declaration states that she contacted Sewel before activating these domain names, and
that he once again approved her use of the term “Westhaven” in her domain names. (Doc. No. 291 at ¶ 9.) Southern Land disputes that it gave Alyn permission to use “Westhaven” in her domain
names. (Doc. No. 114 at 10.) After registering the challenged domain names, Alyn began preparing
a website to promote her real estate services. (Doc. No. 29-1 at ¶ 10.)
C. Communications Between Southern Land and Alyn
In February and March 2013, Alyn and her staff communicated by email with Mary Lee
Bennett, Southern Land’s Marketing Manager, about the content of her website, all from email
addresses that ended in @westhavenfranklin.com. (Id. at 2–3, 19–40.) Alyn’s declaration states
that she engaged in this communication about the development of her websites and marketing
materials at the request of Sewell. (Id. at ¶ 11.)
On February 21, 2013, Alyn’s assistant, Becky Best, emailed Bennett with a proof of a “For
Sale” sign that she intended to use in her real estate business. (Doc. No. 29-1 at 2, 37.) The sign

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proof had the words “Westhaven Franklin,” which is how Alyn has branded her business, on it.
(Id. at 2, 38.) Bennett responded by email, “We should be good.” (Id. at 37.)
On March 19 and 20, 2013, Bennett had further email exchanges between Alyn and her staff
about Alyn’s website that used the term “Westhaven” in its domain name. On March 19, 2013,
Bennett sent the following message by email:
Your website looks really good. While I don’t mind if you use the images from our
website, I do have a problem with you taking content directly from the site. Please
call me. I would like for you to develop your own content about the community.
The builder page is a good example of what I am talking about. Thanks for your
cooperation in this regard as I work really hard at keeping our content fresh and
accurate.
(Doc. No. 29-1 at 20.) On March 20, 2013, Bennett emailed Alyn again to request again that Alyn
remove the content copied from Southern Land’s websites “immediately” because it had come to
Bennett’s attention that Southern Land “may be penalized by Google if there are two websites with
the exact same content” and she “would not want for either of our site [sic] to have any issues as
a result of this.” (Id. at 21.) Alyn responded that her staff was “working on this full time as of today
to re-write material.” (Id.)
On March 27, 2013, Bennett sent an email to Alyn asking her yet again to make changes on
her website because “much of the text” was still from the Southern Land site, and the formatting
of the pages was “extremely similar” to that of the Southern Land site. (Id. at 25.) The email
instructed Alyn as to which sections needed to be changed, stated that the “Westhaven materials
are protected by copyright and you are currently violating that copyright,” and ended, “I would
hate for this to turn into a legal issue.” (Id. at 25–26.) In a follow-up email later that day, Bennett
instructed Best to provide a link on Alyn’s site to Southern Land’s site for details about the golf
course that is available to Westhaven residents. (Id. at 28–29.) On May 13, 2013, Bennett emailed
Alyn to ask her to be sure that her website clarified that some events, such as an upcoming concert
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series, are not open to the public, and thanked her for her “help with making sure we communicate
this accurately.” (Doc. No. 114-3 at 45.) Bennett testified that, although she was the marketing
manager and responsible for identifying domain names that use the term “Westhaven,” she
overlooked the use of the term in Alyn’s domain name. (Doc. No. 114-3 at 12.)
Alyn offers evidence of other businesses located in the Westhaven development that use
“Westhaven” in their names, such as Westhaven Dentistry, The Academy of Westhaven, another
real estate agent who promotes her services at westhavenhomes.net, and a business providing
chiropractic services in Westhaven that uses the domain name westhavenhealth.com. (Doc. No.
29-1 at 41–44.)
D. Cease and Desist Letter
In September 2013, Matt Magallanes, who has worked at Southern Land in different roles
since 2005, raised concerns about Alyn’s use of the term “Westhaven” with Southern Land
executives. (Doc. No. 114-1 at 7, 8, 10, 12, 27.) In October 2013, Southern Land sent Alyn a cease
and desist letter requesting that she stop the alleged infringement of the WESTHAVEN marks.
(Doc. No. 114 at 13–14.) At that time, Alyn had only been working for a few months for
SilverPointe Properties, LLC (“SilverPointe”) and she informed her managing broker, David
Guilbert, that Southern Land was questioning her use of the WESTHAVEN trademarks. (Id. at 8,
14.) Alyn represented to him that Bennett had authorized her to use certain content from Southern
Land’s website on her website and did not object to her domain name or use of the WESTHAVEN
marks. (Id.)
Since Southern Land began complaining about Alyn’s use of the term “Westhaven,” Alyn
has included a disclaimer on her website stating her lack of affiliation with Southern Land. (Doc.

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No. 29-1 at ¶ 15 and pp. 43, 47.) On other marketing materials, however, this disclaimer does not
appear, but her real estate agency is identified. (Id. at 48–52.)
E. Williamson County Association of Realtors Ethics Complaint
On April 10, 2015, Matt Magallanes, who was then a real estate agent with Westhaven Realty,
filed an ethics grievance complaint with the Williamson County Association of Realtors
(“WCAR”) alleging that Alyn was misappropriating Southern Land’s WESTHAVEN trademarks
and marketing materials. (Doc. Nos. 89-8 at 44 (Ethics Complaint); 114 at 15–16, 19.) The
complaint alleged a number of ethical violations, including her misappropriation of Southern
Land’s WESTHAVEN trademarks and marketing material. (Doc. No. 114 at 19–20.) Magallanes
also gave information to WCAR about Alyn’s website that he felt led to confusion with the
WESTHAVEN mark because it had content that normally a developer, such as Southern Land,
would have on its site, such as builder biographers. (Id. at 20 (citing Doc. No. 89-3 at 69, 79)). He
also alleged that Alyn had copied content directly from Westhaven’s website and signage,
including custom artwork and design elements. (Id.; Doc. No. 114-1 at 54–55, 121.) Magallanes
also claimed to have witnessed a number of other potentially unethical actions taken by Alyn, each
of which Alyn alleges are false and were filed to portray her as an unethical and unprofessional
real estate agent. (Doc. No. 114 at 21–22.) WCAR decided to hold the complaint in abeyance.
(Doc. No. 114 at 24.)
Among Magallanes’ allegations was the claim that Alyn had interfered in another agent’s real
estate transaction. Another realtor with Westhaven Realty, Sara Lavagnino, told Magallanes about
the incident. (Doc. No. 103 at 1.) Lavagnino alleged that an individual named Mr. Chauhan was
working with a realtor named Lisa Peebles to purchase property in Westhaven. (Id. at 1.)
Westhaven Realty was representing the seller of the home, Sajid Khan. (Id.) According to

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Lavagnino, Chauhan was in a coffee shop discussing the negotiations for Khan’s home and Alyn
eavesdropped on his conversation, then introduced herself and told him not to purchase the house
at issue because it had water damage. (Id. at 1–2.) Chauhan did not purchase the house, and
Lavagnino believes that a contract could have been made if Alyn had not interfered with the
negotiations. (Id. at 2.) Lavagnino was not present for the alleged conversation, and Alyn, while
admitting that she spoke to Chauhan, disputes the details of the encounter, including whether it
was the result of her eavesdropping and whether she told Chauhan not to buy the home. (Id. at 2,
4–5; Alyn Dep., Doc. No. 102-2 at 3.) Alyn does not dispute that she told Chauhan that there was
a “water issue” with the house and that Chauhan should “check that out” if he was “interested in
the home.” (Doc. No. 103 at 4–5.)
F. Alyn’s Termination From SilverPointe
The parties do not dispute that SilverPointe terminated Alyn based in part on the WCAR
ethics complaint. (Id. at 17.) The parties dispute whether Southern Land was responsible for other
bases for the SilverPointe’s termination decision. Alyn alleges that Guilbert terminated her because
Southern Land harassed SilverPointe with threats of litigation, made defamatory statements about
her to SilverPointe, and instituted “discriminatory policies” meant to thwart her ability to conduct
her business. (Doc. No. 37 at ¶ 36.) The “discriminatory policies” allegation refers to a policy
Southern Land implemented that required that Guilbert, as Alyn’s supervising broker, be present
for any communications between Alyn and Westhaven Realty. (Doc. No. 114-12 at 26.) Guilbert
testified that his inability to meet that requirement was one of the two primary reasons for her
termination, and the other was Alyn’s “inability to produce a document that she said existed way
back . . . related to permission given by Southern Land” to use its mark. (Id. at 16.) Guilbert also
testified that, upon his termination of Alyn, he required her to sign a hold-harmless agreement,

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which was not required of other realtors being released, because he was concerned that
SilverPointe may be sued or brought into litigation as a result of its relationship with her. (Id.)
Guilbert also testified that Southern Land had never threatened SilverPointe with litigation, never
made defamatory statements against Alyn, did not have “discriminatory policies against
SilverPointe,” and had never harassed SilverPointe, or pressured it to terminate it its contracts with
Alyn. (Id. at 17.)
II.

Southern Land’s Motion to Exclude Alyn’s Proffered Expert Testimony
Southern Land moves to exclude the testimony offered by Alyn’s three expert witnesses.
A. Legal Standard
Under Rule 702 of the Federal Rules of Evidence, a proposed expert’s opinion is admissible

if it satisfies three requirements: (1) the witness must be qualified by knowledge, skill, experience,
training, or education; (2) the testimony must be relevant, meaning that it will assist the trier of
fact to understand the evidence or to determine a fact in issue; and (3) the testimony must be
reliable. Superior Prod. P’ship v. Gordon Auto Body Parts Co., 784 F.3d 311, 323 (6th Cir. 2015).
“The Rule 702 inquiry is a flexible one and its focus must be solely on principles and methodology,
not on the conclusions they generate.” Id. (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S.
579, 595 (1993)). “Similarly, Rule 702 directs courts to focus on the reliability of expert testimony,
rather than the credibility and accuracy of that testimony.” Id.
B. Analysis
1. Edward Timberlake
Edward Timberlake is a former examiner at the PTO, a former adjunct professor of
trademark law, and a practicing trademark attorney. (Doc. No. 80-1 at 9–10.) He offers the
following opinions: “Westhaven” is a geographically descriptive term; Southern Land’s

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misrepresentation to the PTO that the term was not geographically descriptive was material, in that
the PTO likely would have refused to register the W WESTHAVEN and WESTHAVEN marks if
Southern Land had indicated “Westhaven” was a term with geographical significance; and
Southern Land’s failure to so indicate to the PTO constituted fraud. (Id. at 2–6.) Southern Land
argues that Timberlake’s opinions are actually conclusions of law and, thus, are
inadmissible. Berry v. City of Detroit, 25 F.3d 1342, 1353–54 (6th Cir. 1994). Alyn responds that,
“[w]hether a mark is primarily geographically descriptive . . . is a question of fact,” not a question
of law. In re The Newbridge Cutlery Co., 776 F.3d 854, 857 (Fed. Cir. 2015). The concerns raised
by Southern Land go to the weight, not the admissibility, of Timberlake’s expert testimony. As
the Court finds no basis to exclude Timberlake’s testimony, Southern Land’s motion to exclude
his testimony is DENIED.
2. Robert J. Fisher and Joseph C. Grubbs
Alyn offers the expert testimony of Robert J. Fisher and Joseph C. Grubbs on the issue of
her damages. As set forth below, the Court has resolved liability on all claims in Southern Land’s
favor, it has no need to consider expert testimony as to Alyn’s alleged damages. Accordingly,
Southern Land’s motion to exclude the testimony of these experts is DENIED AS MOOT.
II.

Cross Motions for Summary Judgment
A. Legal Standard
In reviewing a motion for summary judgment, this Court will only consider the narrow

question of whether there is “genuine dispute as to any material fact and [whether] the movant is
entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). The Court is required to view “the
facts and reasonable inferences in the light most favorable to the nonmoving party.” Ferrari v. Ford
Motor Co., 826 F.3d 885, 891 (6th Cir. 2016) (citing Cass v. City of Dayton, 770 F.3d 368, 373

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(6th Cir. 2014)). In a case involving allegations of trademark infringement, a plaintiff will be
entitled to summary judgment if defendant lacks a meritorious defense and there is no “material
issue of fact as to likelihood of confusion” between the marks. Gray v. Meijer, Inc., 295 F.3d 641,
651 (6th Cir. 2002).
B. Analysis
Southern Land moves for summary judgment on all of Alyn’s claims (Doc. No. 82) and
for partial summary judgment on its claims of statutory and common law trademark infringement,
cybersquatting, and false designation of origin claims. (Doc. No. 85.) It does not move for
judgment on its Tennessee Consumer Protection Act claim. Alyn moves for partial summary
judgment as to liability on her defamation claim. (Doc. No. 78.)
1. Alyn’s Claim for Cancellation of Federal Trademark Registrations
Alyn seeks the equitable relief of cancellation of Southern Land’s federal registration of the
WESTHAVEN marks. The Lanham Act authorizes district courts the discretionary authority to
rule directly on the validity of a registration:
In any action involving a registered mark the court may determine the right to
registration, order the cancellation of registrations, in whole or in part, restore
canceled registrations, and otherwise rectify the register with respect to the
registrations of any party to the action.
15 U.S.C. § 1119; accord CFE Racing Prod., Inc. v. BMF Wheels, Inc., 793 F.3d 571, 593 (6th
Cir. 2015) (“[T]he permissive language of § 1119, providing that the court “may” determine the
right to registration, order cancellation of registrations, and the like, endows the district court with
discretionary authority.”) “A request for cancellation under § 1119 must be supported by a showing
that (1) the party has standing to petition for cancellation because it is likely to be damaged, and
(2) there are valid grounds for discontinuing registration.” Id. (internal quotation marks and
citation omitted).
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Alyn asserts that Southern Land’s WESTHAVEN marks should be cancelled because they
were procured by fraud, which consisted of its knowingly making false material misrepresentations
to the PTO trademark examiner when it stated that the term “Westhaven” had no “geographical
significance.” (Doc. No. 115 at 13–14.) According to Alyn, Southern Land was aware that the term
“Westhaven” is primarily a geographical term used by other cities in the United States, such as
Westhaven, Connecticut, and intended to deceive the PTO when it indicated that the term had no
geographical significance.
Once a mark, such as Southern Land’s WESTHAVEN marks, is “incontestable” pursuant
to 15 U.S.C. § 1065, the defense that the mark is a geographical term is no longer available. Park
‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 201 (1985); Daddy’s Junky Music Stores,
Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 282 (6th Cir. 1997); Wynn Oil Co. v.
Thomas, 839 F.2d 1183, 1187 (6th Cir. 1988). However, the validity of an incontestable mark can
be challenged on grounds of fraud. In re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009). The
Lanham Act “prohibit[s] an applicant from making knowingly inaccurate or knowingly misleading
statements.” Id. (internal quotation marks omitted; emphasis in original). Thus, “absent the
requisite intent to mislead the PTO, even a material misrepresentation would not qualify as fraud
under the Lanham Act warranting cancellation.” Id. An “allegation of fraud in a trademark case,
as in any other case, should not be taken lightly.” Id. “A party seeking cancellation of a trademark
registration for fraudulent procurement bears a heavy burden of proof; . . . it must prove fraud ‘to
the hilt’ with clear and convincing evidence.” Id. “There is no room for speculation, inference or
surmise and, obviously, any doubt must be resolved against the charging party.” Id.
To refuse registration for a mark that is “primarily geographically descriptive” in violation
of 15 U.S.C. § 1052(e)(2), the “Trademark Examiner must show that: (1) the mark sought to be

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registered is the name of a place known generally to the public, and (2) the public would make a
goods/place association, i.e., believe that the goods for which the mark is sought to be registered
originate in that place,” and (3) “the source of the goods is the geographic region named in the
mark.” In re The Newbridge Cutlery Co., 776 F.3d 854, 861 (Fed. Cir. 2015); (citing Trademark
Manual of Examining Procedure (“TMEP”) § 1210.01(a)). Alyn argues that Southern Land’s
WESTHAVEN marks are geographically descriptive because the term has come to be used to refer
to Southern Land’s Westhaven Development, which has a geographic location. (Doc. No. 115 at
6–8, 14–16.)
When Southern Land chose the name “Westhaven” for its real estate development, the term
was not “geographically descriptive” because there was no community by that name in middle
Tennessee before Southern Land developed one. Indeed, the name could have been attached to
real estate anywhere in middle Tennessee or any other area where there was not a preexisting
“Westhaven.” Thus, it was not “a place known generally to the public,” in middle Tennessee,
where it sought to establish its residential subdivision, and the public would not have made a
“goods/place association.” Southern Land’s claim that “Westhaven” had no geographical
significance, however, was made in response to the PTO’s request in 2004, over two years after
Southern Land’s first claimed use of its marks in commerce. Two years does not strike the Court
as an impossibly short period of time for the geographic name of a neighborhood to gain purchase
in the minds of the public.
Southern Land, then, faced a situation in which its marks may have had, in at least a
colloquial sense, some geographic significance, but that significance was only due to Southern
Land’s own commercial efforts in support of a name it selected. The TMEP recognizes the unique

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issues related to such “coined locations” 1 and generally favors permitting registration: “The mere
fact that a term may be the name of a place that has a physical location does not necessarily make
that term geographic under § 2(e)(2). For example, names of amusement parks, residential
communities, and business complexes which are coined by the applicant, must not be refused.”
TMEP § 1210.02(a). Courts as well have tended to respect the rights of parties seeking trademark
protection for the names of locations that they themselves developed. See Pebble Beach Co. v.
Tour 18 I, Ltd., 942 F. Supp. 1513, 1538 (S.D. Tex. 1996) (“Where a developer chooses an
arbitrary mark to designate a development, the mark is protectable despite the geographic aspects
of the development.”); Horseshoe Bay Resort Sales Co. v. Lake Lyndon B. Johnson Imp. Corp.,
53 S.W.3d 799, 808 (Tex. Ct. App. 2001) (“Because the mark ‘Horseshoe Bay’ is an arbitrary
mark, coined by Lake LBJ Corp., and was not in prior use at the geographic site, we conclude that
the district court did not err in resolving that the mark ‘Horseshoe Bay’ is not geographically
descriptive.”); Prestwick, Inc. v. Don Kelly Bldg. Co., 302 F. Supp. 1121, 1124 (D. Md. 1969)
(enforcing trademark rights in the name of a housing development despite the name having
acquired secondary geographic meaning); see also Bishops Bay Founders Grp., Inc. v. Bishops
Bay Apartments, LLC, 301 F. Supp. 2d 901, 908 (W.D. Wis. 2003) (observing that developer’s
claim to rights in allegedly geographically descriptive mark was undermined by evidence that the
name at issue appeared on maps before developer used it and therefore may not have been

Alyn suggests that the Court cannot treat “Westhaven” as a “coined location” because other
locations already exist known as Westhaven. While it is true that Southern Land cannot be said to
have coined “Westhaven” generally as a word referring to some place, the Court sees no reason
why that distinction should affect the underlying principles supporting the coined location
exception, as long as Southern Land, as the applicant/registrant of the WESTHAVEN marks, is
the originator of “Westhaven” as a term to refer to a location in Southern Land’s area of business—
middle Tennessee—and the surrounding area. Similarly, while many of the cited cases involved
arbitrary marks whereas this one does not, see infra, the Court does not read those cases as
precluding an application of their basic principles to a conceptually weaker mark.
1

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developer-coined); Dominion Fed. Sav. & Loan Ass’n v. Ridge Dev. Corp., No. CIV.A. 86-0140A, 1986 WL 15438, at *3 (E.D. Va. July 24, 1986) (considering a trademark infringement claim
based on a mark that was also the geographic designation of the rights holder’s residential
development).
Because Southern Land’s WESTHAVEN marks are now incontestable, the question before
this Court is whether Southern Land “knowingly made a false, material representation of fact” to
the PTO, which Alyn must prove by clear and convincing evidence to prevail on her claim for
cancellation of trademark on the basis of fraud. Southern Land could have informed the PTO that
“Westhaven” did refer to a geographic location, but that Southern Land intended to rely on a coined
location theory to establish that the mark was registrable. Instead, Southern Land merely stated
that “Westhaven” “does not have any . . . geographical significance.” If Southern Land had relied
only on the legal assertion that “Westhaven” was not geographically descriptive—the term actually
used by the Lanham Act, 15 U.S.C. § 1052(e)(2)—it might have been able to defend the assertion
as an interpretation of the coined term exception. The claim that “Westhaven” had no geographic
significance, however, is more problematic. Westhaven is a real location in middle Tennessee; it
is difficult to argue that the name of an actual, identifiable geographic location has no geographic
significance, even if that geographic significance would not necessarily preclude trademark
registration.
Even a material misrepresentation, however, is not enough to mandate the cancellation of
an incontestable mark in the absence of “clear and convincing evidence” that Southern Land
intended “to mislead the PTO.” In re Bose Corp., 580 F.3d at 1243. Alyn has adduced no evidence
to suggest that Southern Land’s chosen language amounted to anything other than an arguably
poor choice of words premised on a legitimate theory of its rights: that Southern Land could claim

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the WESTHAVEN marks because they were not geographically descriptive when coined and had
no relevant geographic significance independent of Southern Land’s efforts. Because Alyn’s
allegation of fraud is based on “speculation, inference, or surmise,” id., the Court will not cancel
Southern Land’s WESTHAVEN or W WESTHAVEN marks and enters judgment for Southern
Land on Alyn’s cancellation claim.
2. Trademark Infringement, False Designation of Origin, Unfair Competition
The Lanham Act prohibits the use of “any word, term, name, symbol or device, or any false
designation of origin, false or misleading description of fact, or false or misleading representation
of fact, which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or commercial activities by another person . . . .” Lanham
Act, § 43(a)(1), 15 U.S.C. § 1125(a)(1). Alyn seeks declaratory judgment of trademark noninfringement under 28 U.S.C. §§ 2201 and 2202 et seq. (Doc. No. 37 at 9–10.) Southern Land
counterclaims that Alyn has infringed on its trademark in violation of the Lanham Act, 15 U.S.C.
§ 1114. (Doc. No. 38 at 30–32.) To prevail on a claim of trademark infringement under the Lanham
Act, 15 U.S.C. § 1114, a party must show that: “(1) that it owns a trademark, (2) that the infringer
used the mark in commerce without authorization, and (3) that the use of the alleged infringing
trademark is likely to cause confusion among consumers regarding the origin of the goods offered
by the parties.” Coach, Inc. v. Goodfellow, 717 F.3d 498, 502 (6th Cir. 2013).
Both Southern Land’s claim of false designation of origin, false or misleading description,
and false or misleading representation and Alyn’s claim for unfair competition rest on § 43(a) of
the Lanham Act, which provides in pertinent part:
(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or device,
16

or any combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or as to
the origin, sponsorship, or approval of his or her goods, services, or commercial
activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person’s
goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is
likely to be damaged by such act.
15 U.S.C. § 1125(a)(1).
Courts “use the same test to decide whether there has been trademark infringement, unfair
competition, or false designation of origin: the likelihood of confusion between the two
marks.” Audi AG v. D’Amato, 469 F.3d 534, 542 (6th Cir. 2006) (citing Two Pesos v. Taco
Cabana, 505 U.S. 763, 780 (1992) (“Whether we call the violation infringement, unfair
competition or false designation of origin, the test is identical—is there a ‘likelihood of
confusion?’”). 2 To determine whether a likelihood of confusion exists, courts consider and weigh
the following eight factors: “(1) strength of the senior mark; (2) relatedness of the goods or
services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used;
(6) likely degree of purchaser care; (7) the intent of defendant in selecting the mark; and (8)
likelihood of expansion of the product lines.” Daddy’s Junky Music Stores, Inc. v. Big Daddy\’s
Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997). Courts must be mindful that
[t]hese factors imply no mathematical precision, but are simply a guide to help
2

Likelihood of confusion is also the basic test for common law trademark infringement. J.
McCarthy, McCarthy on Trademarks § 23:1 (4th ed.2004); see Men of Measure Clothing, Inc. v.
Men of Measure, Inc., 710 S.W.2d 43, 48 (Tenn. Ct. App. 1985) (holding that trademark
infringement under Tennessee law is premised on the same likelihood of confusion analysis as
infringement under the Lanham Act).

17

determine whether confusion is likely. They are also interrelated in effect. Each
case presents its own complex set of circumstances and not all of these factors may
be particularly helpful in any given case. But a thorough and analytical treatment
must nevertheless be attempted. The ultimate question remains whether relevant
consumers are likely to believe that the products or services offered by the parties
are affiliated in some way.
Id.
“As to the first factor, ‘[t]he strength of a mark is a factual determination of the mark’s
distinctiveness. The more distinct a mark, the more likely is the confusion resulting from its
infringement, and therefore the more protection it is due.’” Audi, 469 F.3d at 543 (quoting Frisch’s
Restaurant, Inc. v. Shoney’s Inc., 759 F.2d 1261, 1264 (6th Cir. 1985). “Marks fall on a ‘spectrum’
that ranges, in order of increasing strength, from ‘(1) generic . . . and (2) merely descriptive to (3)
suggestive and (4) arbitrary or fanciful.’” Grubbs v. Sheakley Grp., Inc., 807 F.3d 785, 795 (6th
Cir. 2015) (citing Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111,
1116–17 (6th Cir. 1996)).
Each level of increasing strength reflects a growing attenuation between the underlying
product or service and the mark at issue. Representing the lowest level, a generic mark is one that
merely “identif[ies] the genus of which a particular product is a species” and is “never entitled to
trademark protection.” Ward v. Knox Cty. Bd. of Educ., 612 F. App’x 269, 272 (6th Cir. 2015).
“Examples of generic marks are ‘aspirin,’ ‘escalator,’ and ‘light beer.’” Borescopes R U.S. v.
1800Endoscope.com, LLC, 728 F. Supp. 2d 938, 946 (M.D. Tenn. 2010) (citing Champions, 78
F.3d at 1117). One step higher, “[a] merely descriptive [mark] specifically describes a
characteristic or ingredient of an article.” Champions, 78 F.3d at 1117. For example, “School
Coupons” is descriptive of coupon books sold in schools. Ward v. Knox Cty. Bd. of Educ., 612 F.
App’x 269, 273 (6th Cir. 2015). Stronger than a descriptive mark is a suggestive mark, which
“suggests rather than describes an ingredient or characteristic of the goods and requires the
18

observer or listener to use imagination and perception to determine the nature of the
goods.” Innovation Ventures, LLC v. N.V.E., Inc., 694 F.3d 723, 730 (6th Cir. 2012). That level
of distinctiveness still falls short of a truly arbitrary or fanciful mark, which “is unrelated to the
product or service to which the mark is attached, such as CAMEL cigarettes or APPLE
computers.” Champions, 78 F.3d at 1117.
As incontestable marks, Southern Land’s marks are initially presumed to be at least
descriptive. Daddy’s Junky Music Stores, 109 F.3d at 282. At most, though, WESTHAVEN falls
close to the border between “descriptive” and “suggestive.” As Southern Land concedes, “west”
refers to Westhaven’s location west of Franklin, Tennessee. “Haven,” by its dictionary definition,
refers to a “place of safety.” HAVEN, Merriam-Webster Dictionary (online ed. 2016). A name
literally meaning “safe place to the west” is not particularly distinctive as applied to real estate.
That weak distinctiveness is confirmed by the numerous other locations with “haven” in their
names, including Westhaven, Connecticut. Finally, the evidence Alyn has introduced showing that
at least some members of the public have grown to use “Westhaven” in a purely geographic sense
shows further erosion of the mark’s strength. The more strongly “Westhaven” is perceived to refer
to the area in question, the less strongly it will be perceived to refer to services specifically
furnished by Southern Land. See Vail Assocs., Inc. v. Vend-Tel-Co., 516 F.3d 853, 867 (10th Cir.
2008) (upholding conclusion that an incontestable mark was not particularly strong, in part due to
the geographic meaning of the mark). This factor accordingly weighs against finding a likelihood
of confusion.
As to the second factor, relatedness of goods, “if the parties compete directly by offering
their goods or services, confusion is likely if the marks are sufficiently similar.” Audi, 469 F.3d at
543 (quoting Daddy’s Junky Music Stores, 109 F.3d at 282). Alyn acknowledges that she and

19

Southern Land are both engaged in real estate services and concedes that this factor favors a finding
of likelihood of confusion. (Doc. No. 115 at 20.) This factor weighs in favor of finding a likelihood
of confusion.
As to the third factor, the similarity of the marks, “courts should examine the pronunciation,
appearance, and verbal translation of conflicting marks.” Audi, 469 F.3d at 543 (quoting Daddy’s
Junky Music Stores, 109 F.3d at 283). The Sixth Circuit has held that, with respect to domain
names, the addition of “generic or common descriptive words” along with the mark does not
eliminate the likelihood of confusion. Id. (finding defendant’s domain name www.audisport.com
likely to cause confusion with plaintiff’s “AUDI” trademark); PACCAR Inc. v. TeleScan Techs.,
319 F.3d 243, 252 (6th Cir. 2003) (finding that defendant’s domain names, such as
www.peterbiltnewtrucks.com, had the same appearance as plaintiff’s domain name
www.peterbilt.com). The same result obtains here. “Westhaven Franklin” is similarly just the
WESTHAVEN word mark with a geographic modifier. This factor strongly favors finding a
likelihood of confusion. 3
As to the fourth factor, evidence of actual confusion, “although such evidence is the best
indicator of likelihood of confusion, the absence of actual confusion evidence is

3

Alyn argues that all of her websites and advertisements include a disclaimer stating that she
is not associated with Southern Land, which weighs against a finding of likelihood of confusion.
Taubman Co. v. Webfeats, 319 F.3d 770, 777–78 (6th Cir. 2003); Holiday Inns, Inc. v. 800
Reservation, Inc., 86 F.3d 619, 625 (6th Cir. 1996). This argument is unavailing. First, many of
Alyn’s materials do not contain a disclaimer. (Compare Doc. No. 29-1 at 43, 47 (with disclaimer)
with 48–52 (without disclaimer)). Second, the Sixth Circuit found significant that in addition to
the defendants’ providing disclaimers in Holiday Inns and Taubman, they also directed errant
telephone calls (Holiday Inns) and website traffic (Taubman) to the respective plaintiff’s business.
Taubman, 319 F.3d at 777–78. Alyn’s website does not provide such a link to Southern Land’s
website, and the other materials that she submitted as documentation of her provision of
disclaimers have no such disclaimer and no redirection to Southern Land. Alyn’s disclaimer on
some of her online posts do not mitigate against a finding that she is using Southern Land’s actual
trademark, which supports a finding of a likelihood of confusion.
20

inconsequential.” Audi, 469 F.3d at 543. Southern Land offers the following evidence of actual
confusion: some people confuse Lisa Alyn with Lisa Cahalan, who works for Westhaven Realty
based on the similarity of the names (Magallanes Dep., Doc. No. 114-1 at 75); and some people
mistakenly believed that Alyn worked for Westhaven Realty or otherwise confused the services of
Westhaven Realty and Alyn (id.; Cahalan Dep., Doc. No. 114-10 at 10–13). (Doc. No. 121 at 8.)
This evidence shows some actual confusion between Alyn and Westhaven Realty’s services, which
supports a finding of a likelihood of confusion.
The fifth factor requires the Court to consider “the similarity in the customers for the goods
and services as well as in the marketing efforts employed by each party.” Grubbs v. Sheakley Grp.,
Inc., 807 F.3d 785, 796 (6th Cir. 2015). Alyn provides evidence that Westhaven Realty primarily,
if not exclusively, represents the builders/sellers of new construction homes in Westhaven,
whereas she represents buyers and sellers of resale homes and buyers of new homes. (Doc. No.
115 at 20 (citing Cahalan Dep., 114-10 at 6–7)). Although these customer bases are distinct, they
are still situated in the same broader market of home sales, such that a consumer might not
understand the boundaries between the two companies’ respective business models. The evidence
of the parties’ respective marketing strategies is insufficient to support a firm conclusion about
their degree of overlap. This factor therefore is neutral.
The sixth factor requires consideration of the degree of customer care in selecting a
particular good or service. “[C]onfusion is less likely in cases involving expensive or unusual
services or unusually skilled buyers.” Grubbs, 807 F.3d at 797. Individuals are likely to carefully
select a real estate broker for a service as important as buying or selling a home. See Homeowners
Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1111 (6th Cir. 1991) (“[B]ecause selling
one’s property is likely the most significant commercial transaction ever undertaken for most

21

people, Specialists’ customers are likely to carefully select the provider of sales services.”). This
factor favors Alyn’s contention that there is not a likelihood of confusion.
For the seventh factor, “[p]roving intent is not necessary to demonstrate likelihood of
confusion, but the presence of that factor strengthens the likelihood of confusion.” AutoZone, 373
F.3d at 799. “If a party chooses a mark with the intent of causing confusion, that fact alone may
be sufficient to justify an inference of confusing similarity.” Homeowners, 931 F.2d at 1111.
Southern Land argues that Alyn incorporated the Westhaven mark into her competing business
name and marketing materials with the intention of profiting from its work in building the
Westhaven community. Alyn argues that she uses the term “Westhaven” to accurately describe
where she lives and sells homes, and that she has not intended to cause confusion. (Doc. No. 115
at 22.) Because both parties offer plausible accounts of Alyn’s motivations, this factor is neutral.
As to the eighth factor, the likelihood that product lines will expand, a “‘strong possibility’
that either party will expand his business to compete with the other or be marketed to the same
consumers will weigh in favor of finding that the present use is infringing.” Homeowners, 931
F.2d at 1112 (citing Restatement of Torts § 731(b) & comment c (1938)). Alyn argues this factor
is not relevant to this case. (Doc. No. 115 at 22.) Southern Land argues that this factor favors
finding confusion because Southern Land is increasingly likely to engage in real estate resale
operations as the Westhaven development ages and there are more resales. (Doc. No. 121.) As
Southern Land provides no citation to the record to support its contention that it will increasingly
be engaged in resales in the Westhaven development, the Court finds this factor to be neutral.
On balance, these factors establish that there is a likelihood of confusion with regard to at
least some of Alyn’s uses of the term “Westhaven” in association with her business. While

22

Westhaven’s mark is weak, the closely related services that Alyn and Southern Land provide and
the similarity of their marks ultimately render the possibility of confusion inescapable.
a. Alyn’s Acquiescence Defense
Alyn asserts the affirmative defense of acquiescence, which requires a “finding of conduct
on the plaintiff’s part that amounted to an assurance to the defendant, express or implied, that
plaintiff would not assert his trademark rights against the defendant.” Kellogg Co. v. Exxon Corp.,
209 F.3d 562, 569 (6th Cir. 2000). Unlike laches, acquiescence requires more than the “ordinary
requirement of showing unreasonable delay and prejudice to the defendant.” Id. (quoting Elvis
Presley Enters., Inc. v. Elvisly Yours, Inc., 936 F.2d 889, 894 (6th Cir. 1991)). “[A]cquiescence
implies active consent, while laches implies a merely passive consent.” Id. “To defeat a suit for
injunctive relief, a defendant must also prove elements of estoppel which requires more than a
showing of mere silence on the part of the plaintiff; defendant must show that it had been misled
by plaintiff through actual misrepresentations, affirmative acts of misconduct, intentional
misleading silence, or conduct amounting to virtual abandonment of the trademark.” Id. at 574.
Alyn argues that there are disputed issues of material facts regarding her acquiescence
defense which preclude summary judgment. (Doc. No. 115 at 22–23.) She argues that she informed
Southern Land about her use of the term “Westhaven” for her real estate business as early as 2009,
yet it did not object to her use of the term until October of 2013 when it sent her the cease and
desist letter. (Id. at 23.) She has provided the Court with examples of her website in November
2009 to support her position that her website was promoting her real estate services in Westhaven.
(Doc. No. 29-1 at 8–15.) Further, she argues that Southern Land employees corresponded with her
by email regarding the websites using “Westhaven” in the domain names from February 21, 2013,
through March 27, 2013, yet Southern Land made no objection to her using those domain names.

23

(Id.) Southern Land counters that Alyn’s use of the term “Westhaven” between 2009 and 2013
was solely in a blog about life and community events in Westhaven, as opposed to her current use
for promoting her real estate services. (Doc. No. 121 at 11.) It further argues that it never consented
to her use of the domain names containing the term “Westhaven” beginning in 2013. (Id. at 11–
13.)
Alyn has not provided sufficient evidence from which a reasonable jury could conclude
that Southern Land affirmatively acquiesced to her use of its mark for her competing real estate
business by assuring her that it would not enforce its trademark rights. At most, she has shown that
Southern Land openly tolerated some of her uses of “Westhaven” for a period of time. Alyn has
provided no evidence to support a finding that she was “misled . . . through actual
misrepresentations, affirmative acts of misconduct, intentional misleading silence, or conduct
amounting to virtual abandonment of the trademark,” to preclude Southern Land from seeking to
enjoin her from continuing to infringe on its mark. Kellogg, 209 F.3d at 574. Furthermore,
assuming Southern Land was on notice in 2009 that Alyn was using its WESTHAVEN mark to
promote her real estate business, the four years that passed before it made a demand that she cease
and desist her infringement was not “so outrageous, unreasonable and inexcusable as to constitute
a virtual abandonment of its right.” Id. In Kellogg, the Sixth Circuit held that, as a matter of law,
Kellogg did not acquiesce in Exxon’s use of its cartoon tiger in connection with the sale of nonpetroleum products even if it had waited twelve years from the time it should have known that
Exxon was using the cartoon tiger to promote the sale of food products until it filed its lawsuit.
(Id.) Southern Land’s comparatively short delay is insufficient to support acquiescence in the
absence of greater evidence that Southern Land affirmatively led Alyn to believe that it would not
assert its trademark rights.

24

b. Alyn’s “Fair Use” Defense
Alyn argues that she is using the WESTHAVEN mark merely to describe the location
where she lives and sells properties and that her use is therefore protected by the affirmative “fair
use” defense. (Doc. No. 115 at 24.) The Lanham Act, 15 U.S.C. § 1115(b)(4), provides a defense
to an infringement claim when a “defendant has used the mark: (1) in its descriptive sense; and (2)
in good faith.” ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 920–21 (6th Cir. 2003) (holding an
artist’s use of Tiger Woods’ name to describe a picture of him was “purely descriptive” and used
in good faith). “Under the fair use doctrine, the holder of a trademark cannot prevent others from
using the word that forms the trademark in its primary or descriptive sense.” Hensley Mfg. v.
ProPride, Inc., 579 F.3d 603, 612 (6th Cir. 2009). “Rather, the only right of exclusion that
trademark law creates in a descriptive word is in the secondary, new, ‘trademark’ meaning of the
word that plaintiff has created. The original, descriptive primary meaning is always available for
use by others to describe their goods, in the interest of free competition.” Id. (quoting J. Thomas
McCarthy, McCarthy on Trademarks & Unfair Competition § 11:45 (4th ed.1996)).
Alyn’s use of the “WESTHAVEN” mark, at least in the instances at the heart of this
litigation, does not constitute fair use because she is not using it merely to refer to where she lives
and works. To the contrary, she is using the term in the name of her business and the domain names
for her websites as part of the marketing of her competing real estate business. That is not to say,
however, that simply because some of Alyn’s uses of the term “Westhaven” fall outside of fair use
that she is or should be forbidden from ever using the term at all. As an individual selling properties
in Westhaven, Alyn has a right to fairly, accurately, and non-misleadingly use “Westhaven” in the
conduct of her business. The questions of what Alyn may or may not do going forward and how
many of her uses were infringing goes to the question of remedies and is outside the scope of this

25

opinion. For the purposes of judgment, however, the Court concludes that, at a minimum, Alyn’s
uses of WESTHAVEN in the name of her business and in domain names for websites marketing
her real estate services fall outside of fair use and support a judgment in Southern Land’s favor.
c. Conclusion on Southern Land’s Claims for Trademark Infringement,
False Designation of Origin, False or Misleading Description, and False or
Misleading Misrepresentation and Alyn’s Claims of Unfair Competition
and Request for Declaratory Judgment
As Southern Land has shown a likelihood of confusion between its marks and Alyn’s
business and domain names, and Alyn’s acquiescence and fair use defenses fail, the Court enters
judgment for Southern Land on its claims for trademark infringement and false designation of
origin and on Alyn’s claims for unfair competition. The Court denies Alyn’s claim for declaratory
judgment.
3. Southern Land’s Cybersquatting Claim
Southern Land alleges that Alyn’s domain names containing the term “Westhaven” violate
the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d)). “Cybersquatting”
“occurs when a person other than the trademark holder registers the domain name of a well known
trademark and then attempts to profit from this by either ransoming the domain name back to the
trademark holder or by using the domain name to divert business from the trademark holder to the
domain name holder.” DaimlerChrysler v. The Net Inc., 388 F.3d 201, 204 (6th Cir. 2004). To
prevail on an ACPA claim, a trademark owner must establish the following: “(1) it has a valid
trademark entitled to protection; (2) its mark is distinctive or famous; (3) the defendant’s domain
name is identical or confusingly similar to, or in the case of famous marks, dilutive of, the owner’s
mark; and (4) the defendant used, registered, or trafficked in the domain name (5) with a bad faith
intent to profit.” Id.

26

Southern Land’s opening brief in support of its motion for summary judgment on its own
claims does not cite the standard for prevailing on a cybersquatting claim. Furthermore, Southern
Land did not address in either its opening or reply brief the standard for showing that Alyn had a
“bad faith intent to profit” or present evidence to support such a finding. Because Southern Land
has made no effort to develop argumentation on a necessary element of its claim, it has waived
such argument. McPherson v. Kelsey, 125 F.3d 989, 995–96 (6th Cir. 1997) (“[I]ssues adverted to
in a perfunctory manner, unaccompanied by some effort at developed argumentation, are deemed
waived. It is not sufficient for a party to mention a possible argument in the most skeletal way,
leaving the court to . . . put flesh on its bones.”). Without any discussion or argumentation of these
factors by Southern Land, the Court is unwilling to conclude as a matter of law that Alyn’s
registration and use of the allegedly infringing domain names was undertaken in bad faith, even if
Southern Land could establish the other factors needed to prevail on its cybersquatting claim.
Southern Land’s motion for judgment on this claim is therefore denied.
4. Alyn’s Tortious Interference with Business Expectancies Claim
To prevail on a claim for intentional interference with business relationships under
Tennessee law, a plaintiff must demonstrate:
(1) an existing business relationship with specific third parties or a prospective
relationship with an identifiable class of third persons; (2) the defendant’s
knowledge of that relationship and not a mere awareness of the plaintiff’s business
dealings with others in general; (3) the defendant’s intent to cause the breach or
termination of the business relationship; (4) the defendant’s improper motive or
improper means; and finally, (5) damages resulting from the tortious interference.
Trau-Med of Am., Inc. v. Allstate Ins. Co., 71 S.W.3d 691, 701 (Tenn. 2002) (emphasis in
original).
Alyn also claims that Southern Land has tortiously interfered with her business
expectancies and relations by making misrepresentations to her business colleagues, service
27

providers, potential customers, and the public about Southern Land’s “purported trademark rights”
in the WESTHAVEN and W WESTHAVEN marks. (Doc. No. 37 at 10–11.) Southern Land’s
WESTHAVEN and W WESTHAVEN marks are incontestable, and it is not liable for intentionally
interfering Alyn’s business relationships for asserting its legal rights with respect to its protected
marks.
Alyn also argues that Southern Land tortiously interfered with her ability to represent buyers
of new construction homes and her relationship with WCAR, and “intended to interfere” with her
relationship with her current broker, Coldwell Banker Barnes. (Doc. No. 115 at 25.) Alyn provides
no citations to the record or to legal sources that support those claims. Thus, she has abandoned
her tortious interference claim as to these incidents. McPherson, 125 F.3d at 995–96.
Alyn also claims that Southern Land tortiously interfered with her relationship with
SilverPointe. Alyn argues that summary judgment is improper on this claim because her managing
broker at SilverPointe, Guilbert, testified that part of the reason he terminated the relationship with
Alyn was Southern Land’s policy requiring him to be present for all communications between
Alyn and Westhaven Realty. (Doc. No. 115 at 25 (citing Guilbert Dep., Doc. No. 114-12 at 16)).
Guilbert also testified that Southern Land had never threatened SilverPointe with litigation, made
defamatory statements against Alyn, implemented “discriminatory policies against SilverPointe,”
harassed SilverPointe, or pressured it to terminate its contracts with Alyn. (Doc. No. 114-12 at 17.)
Alyn does not have evidence from which a reasonable jury could conclude that Southern Land
intended to cause a termination of this business relationship or that it used any improper motive or
means to do so. Furthermore, Alyn offers no evidence that she sustained damages as the result of
the termination of her relationship with SilverPointe. (Doc. No. 115 at 23–26.) Judgment is entered
for Southern Land on this claim.

28

5. Alyn’s Defamation Claim
Alyn’s defamation claim is based on the following: (1) the statements about Alyn in the
WCAR ethics grievance that were published to WCAR, Guilbert, SilverPointe Properties, and
others; (2) Southern Land’s having falsely claimed that it has exclusive rights to use the
WESTHAVEN trademarks; and (3) Southern Land’s having knowingly published defamatory
statements to developers, vendors, builders, clients, and potential clients of Alyn with the intent to
harm her reputation, business, and goodwill in the community. (Doc. No. 37 at 12–13.) Southern
Land seeks judgment on Alyn’s defamation claim in its entirety. Alyn’s motion for partial
summary judgment seeks judgment on a portion of her defamation claim, focusing on three
particular allegations about Alyn in the WCAR complaint, namely that she (1) eavesdropped on a
represented buyer, (2) introduced herself to a represented buyer outside the presence of his agent,
and (3) told the represented buyer not to buy a particular house. (Doc. Nos. 78-2 at 8; 115 at 28.)
To establish a prima facie case of defamation under Tennessee’s common law, the plaintiff
must establish that: (1) a party published a statement; (2) with knowledge that the statement is
false and defaming to the other; or (3) with reckless disregard for the truth of the statement or with
negligence in failing to ascertain the truth of the statement. Sullivan v. Baptist Mem’l Hosp., 995
S.W.2d 569, 571 (Tenn. 1999) (citing Restatement (Second) of Torts § 580 B (1977)). Only false
statements are actionable; truth is a defense. W. v. Media Gen. Convergence, Inc., 53 S.W.3d 640,
645 (Tenn. 2001). Defamation does not occur “simply because the subject of a publication finds
the publication annoying, offensive or embarrassing.” Stones River Motors, Inc. v. Mid-S. Publ’g
Co., 651 S.W.2d 713, 719 (Tenn. Ct. App. 1983). Instead, the words must be “reasonably
construable as holding the plaintiff up to public hatred, contempt, or ridicule.” Davis v. The
Tennessean, 83 S.W.3d 125, 130 (Tenn. Ct. App. 2001). In addition, to constitute actionable

29

defamation, the words must impair one’s reputation and/or standing in the community and carry
an element of disgrace. Id.; Stones River, 651 S.W.2d at 719.
a.

Southern Land’s Claim to Rights to WESTHAVEN Marks

To the extent that Alyn’s defamation claim rests on Southern Land’s statements that it has
exclusive rights to use the WESTHAVEN trademarks, it fails because the statements are, at least
generally speaking, true. Media General, 53 S.W.3d at 645. Southern Land’s failure to include an
exegesis on the contours of trademark law, and what exactly its exclusive rights consisted of or
did not consist of, is not enough to render its claims defamatory. Southern Land is therefore entitled
to summary judgment on Alyn’s defamation claim insofar as it is premised on Southern Land’s
claim to trademark rights.
b.

WCAR Ethics Grievance

The first consideration with regard to whether the ethics grievance was defamatory is
whether the allegedly defamatory statements were published. 4 Woods v. Helmi, 758 S.W.2d 219,
223 (Tenn. Ct. App. 1988) (“[W]e do not reach the matter of privilege, malice or any other question
until there is a publication.”). “‘Publication’ is a term of art meaning the communication of
defamatory matter to a third person.” Sullivan v. Baptist Mem’l Hosp., 995 S.W.2d 569, 571
(Tenn. 1999). Southern Land argues that the WCAR complaint was not published, citing Woods
for the proposition that, “essential to the issue is the concept of ‘need to know.’” Woods, 758
S.W.2d at 223. The Woods court found reports of problematic incidents related to a nurse
anesthetist’s performance with patients were not published for purposes of her libel claim because,

As a preliminary matter, the Court notes that, although Southern Land indicates in its responses
to Alyn’s statement of undisputed facts that Magallanes filed the ethics complaint, not Southern
Land (Doc. No. 103 at 1–2), it does not argue in its brief that it is not legally responsible for the
content of the complaint. (Doc. Nos. 102; 84 at 25 (summarizing its defense); 121 at 15–17.) Thus,
the Court turns to the merits of the claim.

4

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even though those individuals in the “need to know” channel were employed by different corporate
entities, the “free and uninhibited flow of information by and between the officers, agents and
employees responsible for the operation of the Anesthesia Department and [the medical center] in
general was mandatory.” Id. at 224. According to Southern Land, just as the third-party recipients
of communications in Woods needed to know about the misconduct of individuals under their
supervision, the individuals at WCAR needed to know about the unethical conduct of their member
realtor. (Doc. No. 84 at 28–29.)
However, the individual who made the allegedly defamatory report about the nurse’s
performance issue in Woods was her immediate supervisor, and the individuals who received the
report all had “managerial, supervisory or administrative responsibilities and oversight for these
internal affairs of [the medical center’s] anesthesiology department and were immediately
interested in the information transmitted.” Woods, 758 F.W.2d at 222. Here, Magallanes and
Southern Land were in competition with Alyn, and no one at WCAR had any supervisory or
administrative responsibility for Alyn’s work. The Court declines to extend Woods in the way
Southern Land suggests. As Southern Land raises no additional argument or legal support for its
assertion that there was no publication, and Alyn has offered evidence that agents of Southern
Land made the allegations in the report known to WCAR and also a number of other individuals,
Alyn has made a sufficient showing on the issue of publication to survive summary judgment.
Next, Southern Land argues that the statements in the WCAR complaint are protected by
either absolute or qualified privilege—the two types of privileges that can be raised as a defense
in a defamation case. Simpson Strong-Tie Co. v. Stewart, Estes & Donnell, 232 S.W.3d 18, 22
(Tenn. 2007). First, Southern Land argues that the statements contained in the WCAR complaint
were protected by absolute privilege, citing Lambdin Funeral Serv., Inc. v. Griffith, 559 S.W.2d

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791 (Tenn. 1978), which held that the absolute privilege that attaches to statements made in the
course of a judicial proceeding that are relevant and pertinent to the issues involved “also holds
true in administrative proceedings before boards or commissions that are clothed with the authority
to revoke a license after a hearing for good cause shown.” Id. at 792. In Lambdin, the
administrative board at issue was the Tennessee Board of Funeral Directors and Embalmers, which
does have the authority to revoke a license. Id. Southern Land concedes that the WCAR does not
have the authority to revoke a real estate license, but asks the Court to extend its reasoning
nonetheless. (Doc. No. 84 at 26–27 & n.5.) The Court declines to extend the holding in Lambdin,
as the authority to revoke a license was clearly central to the Lambdin court’s decision to extend
absolute immunity that attaches to statements made in judicial proceedings to those made in
administrative proceedings where the board has the authority to revoke a license. Lambdin, 559
S.W.2d at 792.
Southern Land next argues that the Court should find that the contents of the ethics
complaint were qualifiedly privileged. (Doc. No. 84 at 27.) “A qualified privilege is based upon
public policy that recognizes information should be given freely when necessary to protect the
actor’s own interests, the interests of another, or the interests of the public. Simpson Strong-Tie,
232 S.W.3d at 22 (citing Restatement (Second) of Torts at 243). “[A] qualified or conditional
privilege is one that may be defeated if the defamatory publication was made with malice, ill-will,
or for an improper purpose.” Id. The Court agrees that the WCAR complaint was qualifiedly
privileged, because the interests of the public are served by WCAR’s efforts to monitor the conduct
of its member realtors to ensure compliance with its ethical standards. Alyn is unable to defeat the
qualified privilege that protects the contents of the WCAR complaint because she has no evidence
that the statements in the complaint were made with malice or ill-will, or for an improper purpose.

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Southern Land was entitled to utilize the WCAR grievance process to raise concerns about
potentially unethical conduct by a member realtor.
Even if the WCAR complaint were not qualifiedly privileged, or if Alyn were able to defeat
that privilege, the Court would nonetheless grant judgment to Southern Land on Alyn’s defamation
claim. Although the Court agrees with Alyn that the statements contained in the WCAR complaint
potentially held her up to public hatred, contempt, or ridicule and carried an element of disgrace,
she has not shown that Southern Land either had knowledge that the statements were false,
recklessly disregarded their truth, or negligently failed to ascertain the truth of the statements. The
only evidence is that Magallanes acted in good faith in reporting that Alyn was violating ethical
rules as a realtor. Accordingly, the Court grants Southern Land’s motion for summary judgment
as to Alyn’s defamation claims related to the WCAR complaint and denies Alyn’s motion for
partial summary judgment as to the specific allegations about her conduct that Magallanes included
in that complaint.
c.

Other Alleged Defamatory Statements

Alyn alleges broadly that Southern Land knowingly published defamatory statements to
developers, vendors, builders, clients, and potential clients of Alyn with the intent to harm her
reputation, business, and goodwill in the community. (Doc. No. 37 at 12–13.) Although Alyn takes
issue with Southern Land’s reduction of her defamation claims to the categories of Southern
Land’s claims to trademark rights in the WESTHAVEN marks and the statements in the WCAR
complaint, she does not provide evidence to support other allegedly defamatory statements that
fall outside those categories. (Doc. No. 115 at 27–28.) Alyn has failed to show that there are
disputed issues of material fact with respect to allegedly defamatory statements other than those
encompassed by the statements related to Southern Land’s trademark rights and the WCAR

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complaint made by Magallanes. Accordingly, the Court grants Southern Land’s motion for
summary judgment as to all other allegedly defamatory statements.
IV.

Conclusion
For the foregoing reasons, Alyn’s motion for partial summary judgment on her defamation

claim is DENIED, Southern Land’s motion for partial summary judgment is GRANTED as to its
statutory and common law trademark infringement claims and its false designation of origin claim,
but DENIED as to its cybersquatting claim. Southern Land’s motion for summary judgment on
Alyn’s claims is GRANTED. Southern Land’s motion to exclude Alyn’s proffered expert
testimony is DENIED in part and DENIED AS MOOT in part. The claims for which no judgment
has been entered on the threshold question of liability are Southern Land’s claim under the
Tennessee Consumer Protection Act, for which neither party sought summary judgment, and its
cybersquatting claim. All questions regarding remedies for Southern Land’s trademark and false
designation of origin claims are reserved.
The Court will enter an appropriate order.

____________________________________
WAVERLY D. CRENSHAW, JR.
UNITED STATES DISTRICT JUDGE

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