It looks like Flickr co-founder Caterina Fake may have to find a new name for her new product Pinwheel. A New York court has granted a preliminary injunction against Fake’s startup 2bkco, as requested by a similarly named startup Pinweel.
The injunction was posted on Scribd by lawyer and blogger Venkat Balasubramani, and I’ve embedded it below. Fake sent me an email confirming its accuracy, though she declined to say what the company’s response will be, because “we can’t comment on pending legal matters.” The Pinweel team sent a similarly terse statement, saying, “We can confirm that the federal court has issued a preliminary injunction that requires that Caterina Fake’s company immediately cease their use of the Pinwheel name.”
Of the two companies, Pinwheel is almost certainly the better-known, thanks to Fake’s background and the fact that the company raised funding from True Ventures, Founder Collective, SV Angel, Redpoint, Betaworks, Obvious Corp., and others. Its app is still in private beta, but it sounds like a way to annotate real-world locations with notes, tips, and photos for friends and other users. Pinweel, meanwhile, is a self-funded photo-sharing app — when I covered Pinweel in February, the company told me that it considered Fake’s use of “Pinwheel” to be trademark infringement and said it would be taking legal action.
There’s a long discussion in the injunction covering a number of legal points — part of Pinwheel’s argument in its defense seems to be that users aren’t likely to confuse the two products. As background, the court notes that Pinweel was distributing promotional material with its name and testing the app with a limited audience back in 2011, while Pinwheel made its “public announcement” in February of this year. The court says “several instances of confusion between the parties’ products followed the launch of Pinwheel,” including users who “became confused, and in some cases angry, when their Pinwheel login information did not work with Plaintiffs’ Pinweel app.”
As for next steps, the court says the two companies need to file a “proposed case management plan” by August 6.
Pinweel v. Pinwheel (S.D.N.Y.) (Order Granting Request for Prelim. Injunction)