A New York court has ruled that a US-based podcaster and a pair of crypto traders must stop using a Satoshi Nakamoto-inspired name on any of their products or media properties because a UK-based Redditor got there first.
As reported by Law360, back in October, businessmen Kyle Bongers and Blake Starling started selling a cryptocurrency called “$SSB,” promoting it across a number of Telegram groups, including SatoshiStreetbets, SatoshiStreetbetsAnnouncements, and SSBTokenOfficial.
However, British businessman David Gilbert claimed that these group names were ripping off his SatoshiStreetBets subreddit — itself heavily indebted to the WallStreetBets subreddit — that’s been running since February 2020 and has amassed more than 600,000 members.
Gilbert runs a company called Diamond Hands Consulting but earlier this year started to sell crypto — specifically a currency he called SatoshiSwap — in an effort to monetize his massive social media following.
And in a remote hearing earlier this week, Judge Ronnie Abrams approved Gilbert’s request for a preliminary injunction that will block Bongers and Blake from piggybacking on SatoshiStreetBets’ success.
However, the final decision on all SatoshiStreetBets trademark applications will have to go through the Trademark Trial and Appeal Board.
The injunction also applies to podcaster Noah Kazlow who used to work with Bongers and Starling but struck out on his own to launch the Satoshi Street Bets Podcast.
Speaking at the hearing, Judge Abrams said: “Plaintiff has established its consistent and long-standing use of the mark in commerce since before any other known user of the mark,” (our emphasis).
“The cryptocurrency space is full of interesting characters,” added a member of Gilbert’s legal team.
“We look at Starling and Bongers as two fraudsters who saw an opportunity to take someone else’s name. … We think that they’ve probably made millions of dollars doing that,” (via Law360).
The US is a ‘first to use’ country not ‘a first to file’ country
Kazlow argued that he should be allowed to continue to use the name due to the fact that he filed to trademark the name back in February 2021 – six months before Gilbert. However as Gilbert’s lawyers pointed out, in the US, it’s not who files first but who uses first.
They also added that Gilbert had applied for a trademark in the UK before Kazlow made his own attempt.
During the hearing, Bongers and Starling tried to delay the judge’s decision, arguing that the issue is far from clear.
However, Gilbert’s team hit back, pointing out that any decision from the Trademark Trial and Appeal Board could take years and that the board would likely “suspend the matter, pending the results of what this court decides.”
One major point that could have a bearing on the final outcome of the case is whether or not a subreddit can be classed in the same way as a business. If it transpires that it can’t, Krazow claims, he would be the first to use the mark commercially.