October 22, 2010 3:39 PM

With Help of Williams & Connolly, "Cake Boss" Can Have His Name...

Posted by Ed Shanahan

Word came through midday Friday that Discovery Communications and Masters Software have settled a dispute over the title of the popular TV show "Cake Boss" on TLC, a Discovery property.

"Plaintiff Masters Software, Inc., and defendants Discovery Communications Inc., TLC, and Buddy Valastro have settled their lawsuit relating to the use of the trademark 'Cake Boss,'" according to a brief statement issued jointly by the two parties.

The settlement--which, according to the joint statement, is confidential and "amicable"--basically allows both parties to continue using their respective versions of the "Cake Boss" name.

As The Am Law Daily reported last month, Texas-based Masters, which produces a software program called "CakeBoss" for "bakers and cake hobbyists," had filed a trademark infringement suit against Discovery over TLC's use of "Cake Boss" as the title of Valastro's show. (TLC refers to the Hoboken-based baker as a "cake artist"; click here for more about the Valastro family bake shop).

According to our prior report about the Masters suit, soon after Valastro began to gain notoriety, the software company was inundated with e-mails intended for Discovery.

The e-mail flood, Masters claimed, proved that the companies' marks were similar--and causing the kind of confusion necessary to press a trademark infringement claim. Discovery argued that the marks were not similar and that consumers weren't likely to confuse TV's "Cake Boss" with the software CakeBoss.

Discovery's legal team was led by Williams & Connolly litigator Kannon Shanmugam (the company bolstered its roster after a federal district judge granted Masters a preliminary injunction in July, as we previously reported). Masters was represented by Seattle-based solo K.D. Long and J.D. Stahl of Mundt MacGregor, also in Seattle.

The case is the second matter that Williams & Connolly has resolved recently for Discovery. Earlier this month, the firm settled a breach-of-contract lawsuit brought by Discovery against the fishing-net-wielding stars of the hit show Deadliest Catch.

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