Beebe Trademark Law: An Open-Source Casebook II. Trademark Infringement 3

18 Museum Faces Legal Battle over Giant Pez Dispenser, KTVU.com, July 1, 2009, http://www.ktvu.com/print/19911637/detail.html. The museum was originally called the Pez Museum, but the owners changed the name in response to a previous objection from Pez.

19 Jesse McKinley, A Quacking Kazoo Sets Off a Squabble, N.Y. Times, June 3, 2009, at A16. Ducks are open-air amphibious vehicles that can be driven on streets and operated in the water.

20 The Chilling Effects Clearinghouse collects letters from trademark owners that make aggressive assertions of trademark (and other intellectual property) rights. See Chilling Effects Clearinghouse, http:// www.chillingeffects.org (last visited Sept. 9, 2009). As of February 25, 2009, the Chilling Effects database contained 378 such letters. Among the many specious objections are an objection from the National Pork Board (owner of the trademark “THE OTHER WHITE MEAT”) to the operator of a breastfeeding advocacy site called “The Lactivist” for selling T-shirts with the slogan “The Other White Milk,” Pork Board Has a Cow over Slogan Parody, Chilling Effects Clearinghouse, Jan. 30, 2007, http:// www.chillingeffects.org/trademark/notice.cgi?NoticeID=6418; from Kellogg to the registrant of the domain name “evilpoptarts.com,” Kelloggs Poops on Evilpoptarts.com, Chilling Effects Clearinghouse, June 5, 2006, http:// www.chillingeffects.org/acpa/notice.cgi?NoticeID=4377; from Nextel to the registrants of the domain name “nextpimp.com,” Nextel Says “Don’t Pimp My Mark”, Chilling Effects Clearinghouse, June 22, 2005, http:// www.chillingeffects.org/acpa/notice.cgi?NoticeID=2322; and from the owners of the Marco Beach Ocean Resort to the operators of “urinal.net,” a website that collects pictures of urinals in various public places, for depicting urinals at the Resort and identifying them as such, Mark Owner Pissed About Urinals, Chilling Effects Clearinghouse, Jan. 4, 2005, http:// www.chillingeffects.org/trademark/notice.cgi?NoticeID=1576.

21 Am. Dairy Queen Corp. v. New Line Prods., Inc., 35 F. Supp. 2d 727, 728 (D. Minn. 1998).

22 Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998)

23 Anheuser-Busch, Inc. v. Balducci Publ’ns, 28 F.3d 769, 772-73 (8th Cir. 1994). That any consumers were confused was remarkable, and perhaps a statement about the reliability of consumer confusion surveys rather than the stupidity of 6% of the population.

24 Id.

25 Hershey Co. v. Art Van Furniture, Inc., No. 08-14463, 2008 WL 4724756 (E.D. Mich. Oct. 24, 2008). Hershey has also sued Reese’s Nursery. Complaint at 1, Hershey Chocolate & Confectionery Corp. v. Reese’s Nursery and Landscaping, No. 3:09-CV-00017-JPB (N.D. W. Va. Mar. 19, 2009).

26 Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 397 (8th Cir. 1987).

27 Id. at 400.

28 See Toho Co. v. William Morrow & Co., 33 F. Supp. 2d 1206, 1206, 1212 (C.D. Cal. 1998).

29 Heisman Trophy Trust v. Smack Apparel Co., No. 08 Civ. 9153(VM), 2009 WL 2170352, at *5 (S.D.N.Y. July 17, 2009). Smack Apparel produced several such T-shirts, including one that substituted the number 15 for “IS” in the word HEISMAN and was printed in the colors of the University of Florida, clearly to promote Florida quarterback Tim Tebow’s candidacy. See Smack Apparel Lawsuit, LSU Tiger Tailer Newsletter (LSU Trademark Licensing, Baton Rouge, La.), Jan. 30, 2009, at 6.

30 Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 484 (5th Cir. 2008).

31 Motion Picture Ass’n of Am. Inc. v. Respect Sportswear Inc., 83 U.S.P.Q.2d (BNA) 1555, 1564 (T.T.A.B. 2007).

32 Burck v. Mars, Inc., 571 F. Supp. 2d 446 (S.D.N.Y. 2008) (denying Mars’ motion to dismiss plaintiff’s false endorsement claim).

33 Standard Process, Inc. v. Total Health Discount, Inc., 559 F. Supp. 2d 932, 941 (E.D. Wis. 2008).

34 Amoco Oil Co. v. Rainbow Snow, 748 F.2d 556, 559 (10th Cir. 1984). Rainbow Snow sold its snow cones from fourteen round, ten-by-six-foot booths, which were blue with a 180-degree, red-orange-yellow-green rainbow appearing on the upper half of the face of the booth and prominently displayed the name “Rainbow Snow” in white letters below the rainbow. Id. at 557. Signs at Amoco’s Rainbo gas stations displayed the word “Rainbo” in white, with the word appearing against a black background and below a red-orange-yellow-blue truncated rainbow logo. Id.

35 NFL v. Governor of Del., 435 F. Supp. 1372, 1376, 1380-81 (D. Del. 1977). The lottery game was called “Scoreboard” and the individual games were identified as “Football Bonus,” “Touchdown,” and “Touchdown II.” Id. at 1380.

36 The cards on which the customers of the Delaware Lottery marked their betting choices identified the next week’s NFL football games by the names of the cities whose NFL teams were scheduled to compete against each other (e.g., Washington v. Baltimore). Id. The parties stipulated that, in the context in which they appeared, these geographic names were intended to refer to, and consumers understood them to refer to, particular NFL football teams. Id. This was enough for the court to find sponsorship or affiliation confusion because, “[a]pparently, in this day and age when professional sports teams franchise pennants, teeshirts, helmets, drinking glasses and a wide range of other products, a substantial number of people believe, if not told otherwise, that one cannot conduct an enterprise of this kind without NFL approval.” Id. at 1381. The court therefore entered a limited injunction “requiring the Lottery Director to include on Scoreboard tickets, advertising and any other materials prepared for public distribution a clear and conspicuous statement that Scoreboard [was] not associated with or authorized by the National Football League.” Id.

37 Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 526 (5th Cir. 1998).

38 Sara Lipka, PG-13? Not This College. Or That One. Or ..., Chron. Higher Educ., June 26, 2009, at 1; William McGeveran, Trademarks, Movies, and the Clearance Culture, Info/Law, July 2, 2009, http:// blogs.law.harvard.edu/infolaw/2009/07/02/tm-movie-clearance/.

39 McGeveran, supra. Apparently Harvard was less troubled about a student being depicted as having stolen money to pay its tuition: the movie was retitled Stealing Harvard.

40 See also Vince Horiuchi, HBO Disputes Trademark Infringement in ‘Big Love,’ Salt Lake Trib., July 8, 2009 (discussing a lawsuit filed by the University of Utah over the three-second depiction of a fictional research report bearing the University of Utah logo).

41 Michael Cieply, Despite Big Names, Prestige Film Falls Through, N.Y. Times, July 2, 2009, at B1.

42 “Initial interest confusion is customer confusion that creates initial interest in a competitor’s product. Although dispelled before an actual sale occurs, initial interest confusion impermissibly capitalizes on the goodwill associated with a mark and is therefore actionable trademark infringement.” Playboy Enters. v. Netscape Commc’ns Corp., 354 F.3d 1020, 1025 (9th Cir.2004).

Following the issuance of the original opinion in this action, several amici filed briefs questioning the validity of the doctrine of initial interest confusion in the context of the Internet. However, in the present appeal, the parties did not dispute the application of the doctrine of initial interest confusion, and we as a three-judge panel are bound by the precedent of our court. See Miller v. Gammie, 335 F.3d 889, 899 (9th Cir.2003) (“[A] three-judge panel may not overrule a prior decision of the court.”).

43 As of June 17, 2015, the shopper might be subject to even more confusion if she began her search of Amazon’s wares through Google. If she searched Google for “Amazon MTM special ops watch,” one of the search results would be a static page on Amazon’s website. Amazon’s static webpage stated that “At Amazon.com, we not only have a large collection of mtm special ops watch products [which, of course, is flatly untrue], but also a comprehensive set of reviews from our customers. Below we’ve selected a subset of mtm special ops watch products [a repetition of the untruth] and the corresponding reviews to help you do better research, and choose the product that best suits your needs.” Amazon, http://www.amazon.com/gp/feature.html?ie=UTF8&docId=1001909381. Amazon has since removed the page.

44 http://blog.hemmings.com/index.php/tag/ferrari-365-gts4-daytona-spyder/

45 I also note that the survey relied upon by the majority to prove a likelihood of confusion is fatally flawed. Generally, “[i]n assessing the likelihood of confusion, a court's concern is ‘the performance of the marks in the commercial context.’ ” Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1106 (6th Cir.1991) (quoting Frisch's Restaurants, Inc. v. Shoney's, Inc., 759 F.2d 1261, 1266 (6th Cir.1985)). “It is the overall impression of the mark, not an individual feature, that counts.” Id. at 1109. Applied to the instant case, this means that the analysis must be based on the products as they appear in the marketplace. The ultimate question is “whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.” Id. at 1107.

The survey lacks any probative value on the issue of consumer confusion because of the manner in which it was conducted. The survey was conducted by showing photographs of Ferrari's cars and Roberts' replicas stripped of their identifying badges. By conducting the survey in this manner, no assessment could be made of the likelihood of confusion in the “commercial context.” Purchasers of plaintiff's cars are not purchasing from photographs. Accordingly, the survey is meaningless as to the likelihood of confusion.

46 The most recent amendment to the Lanham Act, the Trademark Law Revision Act of 1988, Pub.L. No. 100-667, 102 Stat. 3935 (1988) (effective Nov. 16, 1989), as originally introduced in both houses of Congress, permitted separate causes of action for dilution, disparagement and tarnishment. All of these provisions were deleted from the legislation which eventually was enacted. House Rep. 100-1028 (Oct. 3, 1988), reprinted in United States Trademark Ass'n, The Trademark Law Revision Act of 1988, The Legislative History, Reports, Testimony, and Annotated Statutory Text 277, 278 (1989); Cong.Rec. H10411, H10421 (Oct. 19, 1988).

47 “[A]llegations of forward confusion and reverse confusion do not form distinct claims—they are alternative theories that can be used separately or together in a trademark infringement claim under the Lanham Act.” Troublé v. Wet Seal, Inc., 179 F.Supp.2d 291, 297 (S.D.N.Y.2001).

48 This is not to say that other demographics don’t matter at all. Of course some older people may come across Promotions’ marks, and even if they aren’t likely to use Promotions’ services, their confusion may ultimately do harm to Promotions.

49 [See Note 1 following the opinion excerpt for further discussion of the roles that conceptual and commercial strength play in the reverse confusion context.]

50 In the time between the hearing and this Order, Tech “rebranded” with a new logo and graphic scheme. See, e.g., Brian Mastroianni, Uber re-brands itself with a new logo, CBS News (Feb. 2, 2016), www.cbsnews.com/news/uber-rebrands-itself-with-new-app-logo/. The new “look,” while still conservative compared to Promotions’ graphic presentation, is slightly more colorful. This new look in and of itself doesn’t affect the “similarity of marks” analysis in any significant way given that the people most likely to be confused have probably only heard of Tech. The fact of the change—and the fact that it was so well-publicized—might tend to increase reverse confusion by creating doubt among those familiar with Tech about what its “look” really is, but such an effect would not change this Court’s conclusion that the “similarity of marks” factor weighs slightly in favor of Promotions.

51 This Court confirmed Promotions’ allegations to that effect by conducting a Google search using the search terms “gainesville uber.” The results page features an ad for Tech above the search results.

52 Tech does have an emergency phone number that can be found using its app.

53 During Michael Farzad’s deposition, he received two phone calls from “confused” customers. After he mentioned this to Tech’s counsel, the following exchange took place:

Q. With respect to the calls that you received today, were either of those individuals confused at the point in which they were using your services?

A. No. They’re calling me because they think I’m Uber Technologies and they want to reserve services and ask questions.

Q. So those individuals were looking for Uber Technologies?

A. Right, and they left messages on my phone and they—they’re thinking that they’re speaking to Uber Technologies.

This doesn’t prove anything, of course, but it tends to support the conclusion that many of the callers to Promotions don’t even realize they’re talking to Promotions.

54 At least not in this case. If Tech were the senior user and Promotions the junior user, the fact that consumers were being diverted to Promotions—even if they initially thought they were dealing with Tech and were in fact trying to reach Tech—would be highly relevant on an “initial interest confusion” theory in a suit brought by Tech. See Axiom Worldwide, 522 F.3d at 1221–22. But such confusion is not very important to this case, because such callers are not confused as to source, just misdirected. There is not, to this Court’s knowledge, a “reverse initial interest confusion” theory of trademark infringement, nor would one make sense; the plaintiff proceeding under such a theory would be hard-pressed to articulate what harm it was suffering.

55 Some of this confusion might be “forward” or “direct” confusion—people encountering Tech and thinking it’s related to Promotions. Evidence of such confusion is relevant even in a case relying on a reverse-confusion theory. See A&H Sportswear, 237 F.3d at 233 (“[T]he manifestation of consumer confusion as ‘direct’ or ‘reverse’ may merely be a function of the context in which the consumer first encountered the mark. Isolated instances of ‘direct’ confusion may occur in a reverse confusion case, and vice-versa.”).

56 With the exception of the UberEVENTS service, which will be discussed later.

57 Passing off (or palming off, as it is sometimes called) occurs when a producer misrepresents his own goods or services as someone else's. See, e.g., O. & W. Thum Co. v. Dickinson, 245 F. 609, 621 (C.A.6 1917). “Reverse passing off,” as its name implies, is the opposite: The producer misrepresents someone else's goods or services as his own. See, e.g., Williams v. Curtiss–Wright Corp., 691 F.2d 168, 172 (C.A.3 1982).

58 As for the copyright claim, the Ninth Circuit held that the tax treatment General Eisenhower sought for his manuscript of the book created a triable issue as to whether he intended the book to be a work for hire, and thus as to whether Doubleday properly renewed the copyright in 1976. See 34 Fed.Appx., at 314. The copyright issue is still the subject of litigation, but is not before us. We express no opinion as to whether petitioner's product would infringe a valid copyright in General Eisenhower's book.

59 In the original provision, the cause of action for false designation of origin was arguably “available only to a person doing business in the locality falsely indicated as that of origin,” 505 U.S., at 778, n. 3. As adopted in 1946, § 43(a) provided in full:

“Any person who shall affix, apply, or annex, or use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall with knowledge of the falsity of such designation of origin or description or representation cause or procure the same to be transported or used in commerce or deliver the same to any carrier to be transported or used, shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin or the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the use of any such false description or representation.” 60 Stat. 441.

60 Section 43(a) of the Lanham Act now provides:

“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

“(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

“(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.” 15 U.S.C. § 1125(a)(1).

61 Under the 1946 version of the Act, § 43(a) was read as providing a cause of action for trademark infringement even where the trademark owner had not itself produced the goods sold under its mark, but had licensed others to sell under its name goods produced by them—the typical franchise arrangement. See, e.g., My Pie Int'l, Inc. v. Debould, Inc., 687 F.2d 919 (C.A.7 1982). This stretching of the concept “origin of goods” is seemingly no longer needed: The 1988 amendments to § 43(a) now expressly prohibit the use of any “word, term, name, symbol, or device,” or “false or misleading description of fact” that is likely to cause confusion as to “affiliation, connection, or association ... with another person,” or as to “sponsorship, or approval” of goods. 15 U.S.C. § 1125(a).

62 Although Dastar involved copying of uncopyrighted work, subsequent decisions have recognized its applicability to copyrighted work as well. See, e.g., Atrium Group De Ediciones Y Publicaciones, S.L. v. Harry N. Abrams, Inc., 565 F.Supp.2d 505, 512–13 (S.D.N.Y.2008) (discussing cases).

63 The current version of § 43(c) is sometimes referred to as the Trademark Dilution Revision Act or “TDRA,” which became effective on October 6, 2006 (and which replaced the old language of § 43(c) that was established by the Federal Trademark Dilution Act of 1995 or “FTDA”).

64 For an important alternative reading of Schechter, which asserts that he sought to provide antidilution protection only to marks which are “synonymous with a single product or product class,” see Sara Stadler Nelson, The Wages of Ubiquity in Trademark Law, 88 Iowa L. Rev. 731 (2003).

65 See Barton Beebe, The Semiotic Analysis of Trademark Law, 51 UCLA L. Rev. 621 (2004) (distinguishing between source distinctiveness, or in semiotic terms, “signification,” and differential distinctiveness, or in semiotic terms, “value”).

66 See Trademark Dilution Revision Act of 2005: Hearing Before the Subcomm. on Courts, the Internet, and Intellectual Property of the House Judiciary Comm., 109th Cong. 12-13 (2005) [hereinafter 2005 Hearing] (statement of Anne Gundelfinger, President, International Trademark Association). See also id. at 22-23 (testimony of William G. Barber on behalf of the American Intellectual Property Law Association).

67 For a strong critique of this conception of blurring, see Rebecca Tushnet, Gone in 60 Milliseconds: Trademark Law and Cognitive Science, 86 Texas L. Rev. 507 (2008).

68 The student wishing to avoid madness may do well to avoid the term “dilution” altogether and simply refer to these two forms of protection as “anti-blurring protection” and “anti-tarnishment” protection.

69 For the reasons stated herein, Nike prevails on its federal and state dilution claims. Therefore, Nike's claims for trademark infringement and unfair competition need not be reached.

70 Nikepal's attorney attempted to convince the court that there is a pronunciation difference between NIKE and NIKEPAL. In her questions during trial, for example, she pronounced Nikepal's mark as “nik-a-pal.” However, in answering her questions at trial, Mr. Sandhu, the president of Nikepal, alternated between the pronunciation of NIKEPAL as “nik-a-pal” and as “Ny-key-pal.” Further, Nike's witness, Joseph Sheehan, a former FBI agent and now a private investigator, provided a tape recording of the outgoing message heard on Nikepal's answering machine which clearly pronounced the term “Nike” with long, or hard, vowels, that is an “i” like in “bike” and “e” like in “key” identical to the pronunciation of the Nike's trademark.

71 However, since both parties refer to “Nikepal” with a lowercase “p” in this action, the court adopts this spelling for the purposes of this order.

72 The TDRA, signed into law on October 6, 2006, amended the previous federal anti-dilution statute (the Federal Trademark Dilution Act (“FTDA”)). The TDRA revises the FTDA in three ways: it establishes that likelihood of dilution, and not actual dilution, is a prerequisite to establish a dilution claim; it sets forth four relevant factors courts may consider in determining famousness; and it also lists six relevant factors that courts may consider in determining whether a likelihood of dilution exists. Century 21 Real Estate LLC v. Century Surety Co., 2007 WL 433579, at *1 (D.Ariz. Feb.6, 2007).

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