A transportation showdown is brewing in gator country.
Uber Technologies, the red-hot ride-sharing app based in San Francisco, suffered a small court loss last month in Gainesville, Fla., that went generally unnoticed in the press apart from law blogs. But it has further-reaching future implications for Uber in the state of Florida.
There is a party-services company in Gainesville called Uber Promotions. The company has been around since 2006, offering event planning, photography, printing, and transportation. The latter product, a limo service, is the most relevant to the Uber you already know, which launched in 2009 but didn't enter Florida until 2012.
Uber Promotions first sent a cease-and-desist to Uber Technologies in 2014. It then filed a lawsuit, Uber Promotions Inc. v Uber Technologies Inc., seeking a preliminary injunction to keep the larger Uber from using the Uber name throughout Florida. In November, after the lawsuit had already been filed, Uber Technologies launched its new service UberEvents, which allows one person to pre-order multiple Uber rides on behalf of others, such as for after a party or other event.
In February, a Florida federal judge, U.S. District Judge Mark Walker, temporarily granted a preliminary injunction against Uber Technologies from promoting UberEvents in the city of Gainesville. The judge agreed with Uber Promotions, which has used the name "Uber" in Gainesville for a decade, that consumers might confuse the two companies.
What the judge did not agree on is the notion that Uber Technologies should be barred entirely from using its name in Gainesville. Why not? Because, Judge Walker said, "A preliminary injunction should not serve as a bazooka in the hands of a squirrel, used to extract from a more fearsome animal a bounty which the squirrel would never be able to gather by his own labors." In other words, granting Uber Promotions the full injunction it wanted -- barring Uber Tech completely from using the name Uber in Gainesville -- would've given Uber Promotions more benefit than it would have ever achieved on its own without the injunction. Nice try, Uber Promotions.
The court also did not buy the smaller Uber's claim that the larger Uber wants to push it out of Gainesville. “Elephants don’t look out for gerbils when they plow through the bush," Walker said (which is a rather remarkable sound bite from a federal judge).
The temporary injunction does include some very specific rules for the big Uber, related to its Internet marketing: It must establish a local phone number with the 352 Gainesville area code; it must also ensure that the results of any online searches in the area for Uber Promotions don't result in Uber Technologies.
That's a pretty tall order, writes Eric Goldman, an intellectual property law professor at Santa Clara University, on his blog. "This compromise is just a bit too clever," Goldman writes. "Notice the order didn’t say that Uber should 'try,' the order said Uber must 'ensure.' Yet, Uber can’t ensure that Google or the other search engines will display any particular organic search results, nor can it ensure exactly what information is presented in those organic results."
The battle of the two Ubers is only just beginning. The injunction against UberEvents is temporary, pending a full infringement trial (not yet scheduled). Uber Promotions would like to bar Uber Technologies from all of Florida, because the small service is looking to expand in the state. But for now, big Uber is only barred from offering or promoting UberEvents in Gainesville.
And because of Uber's trademark rights, which cover all of the U.S. except where there is a prior player, the smaller Uber cannot use the Uber name outside of Gainesville.
In that regard, pursuing big Uber may have ended up causing more damage to the David than the Goliath. Neither of the Ubers responded to requests for comment.
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Daniel Roberts is a writer at Yahoo Finance, covering sports business and technology.
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