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District judge rejects Platypus' injunction against author of 'Bad Girl Guide'

San Francisco author Cameron Tuttle may be a "bad girl" but not because she's infringed on any trademarks, according to a federal judge.

Tuttle, who's penned the popular "Bad Girl's Guide" book series, was sued last May by San Diego-based Platypus Wear Inc., which owns a registered trademark for the phrase "bad girl."

A U.S. District judge in San Diego, however, recently denied Platypus' request for a preliminary injunction seeking to stop Tuttle's use of the phrase on apparel sold on her Web site.

The court held that the extensive use of the phrase "Bad Girl" on clothing, in book titles and in domain names rendered the mark extremely weak, and that Tuttle's use of "Bad Girl's Guide" did not create a likelihood of confusion with Platypus' mark.

"Her business is books and a Web site," said Tuttle's attorney, Karen Frank. "She had a very small number of T-shirts on her Web site being sold in connection with the books. She's not in the apparel business. She's using bad girl as an expressive phrase."

An attorney for Platypus did not return a phone call.

Tuttle has sold 1.5 million books and related items, including calendars, notebooks and stationery. Approximately 800,000 of the sales are books. By contrast, the author has sold fewer than 300 T-shirts, including ones without the moniker, "I'm a bad girl."

"Platypus Wear has a history of being an extremely aggressive litigator," said Frank, a partner with San Francisco-based law firm Howard Rice Nemerovski Canady Falk & Rabkin.

"They file suit on the basis of bad girl, even when it's not on apparel. They're trying to put a fence around 'bad girl,' and say nobody else can use it."

Platypus also is trying to stop Cameron from using the phrase for clothing and a UPN sitcom based on the "Bad Girl's Guide" series.

The television show, starring Jenny McCarthy, lasted for six episodes on UPN and is no longer airing. Paramount owns the rights to the show, but its status is unknown.

"We think it's a big victory," Frank said. "They could put in more evidence if they can find it, but they have to go back to the same judge that has told them there is no likelihood of confusion."

Frank said that at the time Platypus filed, the company hadn't used "bad girl" in connection with any entertainment or clothing items sold in the United States.

While the injunction failed, the lawsuit is proceeding forward.

Related: Platypus Wear files infringement suit against Bad Girl Swirl (May 23, 2006)

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