Goodwill Industries Sues Motorcycle Racer Over Questionable Trademark Infringement
Rob Woodworth, of Charleston, South Carolina, thought he was getting a great deal when, in 2010, he purchased a retired Goodwill box truck from a dealer he found on Craigslist. The truck was exactly what the amateur road racer was looking for: it could haul his girlfriend, his race bikes and himself to the track with plenty of room for tools, his assortment of gear, camping equipment and even his two dogs. It would eventually haul all the trophies that come with winning races, too.
Over the next four years Woodworth, a software developer, used his free time to convert the truck into the toy hauler of his dreams, and he still has plans to enhance it further. However, there was one little problem: Goodwill’s trademarked logos hadn’t been removed from the truck.
As such, Goodwill Industries International, Inc., which is based in Bethesda, Maryland, Goodwill Industries of the Coastal Empire, Inc., and Goodwill of the Coastal Empire, both of which are based in Savannah, Georgia, filed a lawsuit on July 15 of this year, suing Woodworth for trademark infringement and deceptive trade practices, claiming, by driving the truck with the logos intact, Woodworth is “likely to cause confusion, to cause mistake, or to deceive the public by (a) confusing the public into associating the actions of Defendant with Goodwill, (b) deceiving the public into believing that Defendant is providing the Goodwill Services; and (c) causing the public to be mistaken or confused into believing that Goodwill is sponsoring or endorsing his motorcycle racing.”
The case documents, which are part of public record, allege that Woodworth continued driving the “Rogue Vehicle” – the term Goodwill’s counsel has adopted for the retired truck – “in commerce” without removing the logos. This despite Woodworth receiving multiple notices from the offices of Bouhan Falligant, the law firm representing Goodwill, requesting such.
In addition, numerous Goodwill employees allegedly claim to have seen Woodworth driving the truck near the Savannah area, where there are multiple Goodwill donation centers and/or retail stores. Using the testimonies of these employees, Woodworth was also accused of diverting donations based on the fact he didn’t respond to the letters sent by Goodwill attorneys.
Considering Woodworth lives in South Carolina, how did Goodwill find his home residence? A Charleston Goodwill affiliate noticed the truck in the area, and then reported it to the Savannah office, at which point a private investigator was hired to verify this was indeed Woodworth’s home, and that the vehicle was parked in Woodworth’s driveway “on an on-going basis.”
As a result, the plaintiff, Goodwill, claims the harm done to the brand and its reputation by the defendant, Woodworth, is “immediate, irreparable and permanent.” The plaintiff has sought an injunction on Woodworth to either cover or otherwise remove the Goodwill labels in such a way that they are no longer recognizable. Otherwise, Goodwill request the vehicle be hidden in a garage or another closed structure to hide the logos from public view.
That’s not all. Goodwill is also seeking “statutory damages of $2,000,000 per counterfeit mark per type of infringing service in accordance with Section 35 of the Lanham Act (15 U.S.C. § 1117) or alternatively, ordering Defendant to account to and pay to Plaintiffs all profits realized by Defendants wrongful acts and/or also awarding Plaintiffs their actual damages, and also directing that such profits and/or actual damages be trebled, in accordance with Section 35 of the Lanham Act (15 U.S.C. § 1117).” The plaintiff also is requesting the defendant cover the attorney and investigator fees, as well as other expenses Goodwill incurred as part of the investigation.
By now you’re likely wondering why Goodwill didn’t simply remove any and all identifying (and trademarked!) imagery from its vehicles when they were retired. Surely, that would have avoided this whole mess. According to the legal documents, it is Goodwill Savannah’s standard practice for the purchasers of the retired vehicles to completely remove, at the purchaser’s expense, all Goodwill marks displayed on the vehicle.
I spoke with the defendant, Rob Woodworth, to get his side of the story. “I saw the ad for the truck on Craigslist in 2010,” he says, “and when I bought it, nobody mentioned to me that the logos had to be removed. I doubt even the dealership knew about that policy.”
This will play a role in Woodworth’s defense, as “there was never a signed contract between the dealer and me [to remove the logos]. “This contract probably doesn’t exist, but they’re [Goodwill] pretending it’s their normal practice,” Woodworth says. He plans on tracking the title history of the truck to see if in fact a previous owner was ever given this information. Still, didn’t the thought of removing the logos upon taking ownership cross his mind?
“It did, but they’re old vinyl decals and are hard to remove,” he said. “You can’t just take spray paint and spray over the top. You still have the texture of the vinyl and you can read the logo still. It was just going to make the truck look worse and take a long time to do so.”
So, Woodworth decided to drive the truck as is. Considering “I park it in my driveway 90% of the time,” he says, and only drives it when going to the races, he, like many of us, thought nothing of it. That is, until, he was served papers from a law firm requesting to have the logos removed or face legal charges. “I ignored those letters at first,” Woodworth said. “I hadn’t done anything wrong, so I wasn’t worried.”
Ignoring the letters proved to be a costly mistake. It appears now, from Woodworth’s point of view, that Goodwill is trying to make an example out of him.
Goodwill’s ammunition comes in the form of two affidavits, one from Goodwill of the Coastal Empire’s Branding Specialist, Brenda M. Gantt, the other from the Director of Retail, Tony Brown, claiming they had seen the truck at separate instances in Georgia. Neither could exactly identify the truck as being Woodworth’s, however, and in his affidavit, Brown claims to have engaged in a pursuit of the truck after spotting it on the highway. He then claims the truck was moving “at a high rate of speed” and subsequently disengaged his pursuit.
If that sounds outrageous to you, you’re not alone. “They’re claiming someone saw the truck and took it upon themselves to chase me down,” Woodworth said. “And they couldn’t catch me in their car in this box truck!? This truck gets bad gas mileage, so I drive under the speed limit so I can get maybe nine miles per gallon. For them to say they were in pursuit of this truck and they couldn’t catch me is crazy. It’s like they’re trying to say I’m reckless since I race motorcycles so I must drive the same way. I certainly don’t remember any instance where I was in a pursuit. Besides, I wouldn’t try and run from a car with a box truck, not that I could.”
Despite Goodwill spending significant sums of money to sue Woodworth, the defendant has so far taken it upon himself to represent himself. “When this all started, I didn’t see a reason to get a lawyer since it would cost me tens of thousands of dollars and I never imagined it would escalate to where it is today. If this goes to trial, then I’ll hire a lawyer. For now, I have a full-time job and I’m trying to be a lawyer at the same time.”
In case it wasn’t obvious by now, Woodworth isn’t willing to succumb to Goodwill’s scare tactics regarding the case. Apart from tracking down title history for the truck, he also plans to fight the count of trademark infringement levied upon him. “I’m not in violation of the trademark,” Woodworth says. “That would mean I have a competing business to Goodwill and am using the truck, and its logos, to solicit donations. I’m not in competition with Goodwill, nor am I tricking people into giving me donations. Driving motorcycles to race tracks in this truck is not a form of commerce. Even if it was, it’s not a competing business to Goodwill.”
Woodworth admits not responding to the early letters was a mistake he now regrets. In defiance, he initially manipulated the lettering on the truck to read “Badwill,” but has since painted over and/or removed the Goodwill logos, at his own cost, in an attempt to appease Goodwill, but it’s not enough. Goodwill has continued to come after him.
“They’re saying they want legal fees back, but now I think they’re trying to screw me over and make an example out of me. It’s my understanding the company’s main source of income is donation money. So now they are coming after me because they are spending donation money to cover legal fees.”
Woodworth was quick to add, “This has also gotten people to do more research on Goodwill and now they are discovering other questionable practices, like Goodwill hiring disabled workers and paying them less than minimum wage, using a loophole in the federal labor laws. Meanwhile, Goodwill executives are making millions.”
The legal process is often long and complicated, and the intimidation tactics can scare people into succumbing to the demands of a document littered with legalese. “A lot of people just take orders from lawyers, but I know I’m not legally obligated to do anything with those letters, because it’s a lawyer representing another party trying to intimidate me,” Woodworth says. “They came at me with lies at how I’m misrepresenting an organization, and now they want to drag me through the mud. I know I haven’t done anything wrong, especially the things mentioned in the letter.”
Despite the apparent lies Woodworth is being accused of, furthering the legal battle with a countersuit isn’t likely. “I’m not really sure what I could countersue for,” he says, “but this feels like entrapment, since they sold the truck to a dealer with the logos still intact. Then I buy it and use it, and they come back and sue me for damages because I didn’t remove the logos. As far as I’m concerned, I just want this to be over with. I’ll eat the costs of repainting, and my time, and I just want it to be done.”
To get Goodwill’s side of the story, I called John B. Manly, one of two attorneys representing Goodwill Industries International, Inc. for comment. The conversation didn’t get far, however, as he promptly hung up the phone once I introduced myself
As stated earlier, Woodworth is representing himself in this case. If you would like to help him pay for legal fees, he’s set up a donation page at www.gofundme.com/dbzpws.