Richard Sybert and Craig Mariam successfully reclaimed the trademark and domain names for “Malibu Pier” on behalf of California’s Department of Parks and Recreation after a two-week jury trial in U.S. District Court in Los Angeles. An eight-member jury decided unanimously on every point of fact and law in State Parks’ favor after barely four hours of deliberation.

The defendant, Stephen Harper, a self-styled business-development specialist, has been a frequent litigant and has a “track record” of registering other companies’ domain names, including General Electric, Universal Studios, and “Harry Potter.”   The state had acquired historic Malibu Pier in 1980 with the aim of preserving and restoring it as part of the California State Parks system.    

In 1999, when a restoration project was announced for the pier, Harper registered four Malibu Pier-related names with an Internet domain registrar.  In 2003, Harper contacted the Pier's state-picked concessionaire, Malibu Pier Partners, to suggest the group join him in a “marketing alliance” through his webpage, www.malibupier.com. The concessionaire said no, and told Harper that the State owned the trademark, warning him  not to use the name.  Harper responded by just days later filing an application with the U.S. Patent and Trademark Office to register MALIBU PIER as a trademark in connection with a clothing line.

Registration by itself is not determinative of a trademark, however.  "A valid trademark is established through use, not registration, and can be extended to related goods and services," G&R lawyer Rich Sybert said. "The point to the jury was that if the defendant were out there selling Malibu Pier T-shirts and hats, the public would think that there was some connection with Malibu Pier and state parks."

Harper argued that “Malibu Pier” was simply a geographical location.The G&R trial team, however, put on the stand longtime pier devotees and expert witnesses who argued the pier represented the "whole Southern California beach culture — Gidget, Malibu beach, the whole fun-in-the-sun culture."  “It has meaning to the public beyond just a bunch of pilings stuck out in the ocean,” Sybert said.  The jury apparently agreed. 

Five months following the August 2006 trial victory, the court entered judgment in favor of Gordon & Rees’ client, California’s Department of Parks and Recreation, on all claims and the defendant’s counterclaims. The defendant’s own trademark application was found to be fraudulent and the court ordered it to be cancelled immediately. The court awarded the firm’s client attorney fees and costs totaling over a half a million dollars because the case was deemed exceptional.