In a recent decision, the Third Circuit vacated a district court's grant of summary judgment to the plaintiff in a § 43(a) false endorsement case, but affirmed the plaintiff's summary judgment win as to the state law right of publicity claims.  The dispute revolved around the National Football League's use of John Facenda's voice in a production regarding the making of the video game Madden NFL 06.  Many football fans remember Mr. Facenda's voice from NFL Films productions from the 1960s up to his death in 1984; he is sometimes referred to as "The Voice of God."   The district court granted summary judgment to Mr. Facenda's estate on both claims.

The Third Circuit affirmed the summary judgment on the right of publicity claim, but vacated it on the false endorsement claim.  On the right of publicity claim, the Third Circuit agreed with the district court that copyright law did not preempt state right of publicity law in this case.  This was because Mr. Facenda's voice was used in a commercial context, rather than an "expressive" context.  Interestingly, the court cited with approval discussion of the district court's opinion on this subject from a leading copyright treatise, Nimmer on Copyright.

On the issue of false endorsement, the Third Circuit agreed with the bulk of the district court's analysis, but vacated the summary judgment on the basis of issues of disputed fact.  In so doing, the court adopted a modified version of the Ninth Circuit's test in false endorsement cases, as the appropriate factors were a matter of first impression for the Third Circuit.  Interestingly, the court observed that "parties may not stipulate to forgoing a trial when genuine issues of material fact remain that prevent either side from succeeding on a motion for summary judgment."  This is in contrast to a recent Federal Circuit decision, where the court decided an appeal where the parties did make such a stipulation before the district court.

More detail of Facenda v. N.F.L. Films, Inc. after the jump.

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The Seventh Circuit recently reversed a district court's summary judgment for the defendant in a trademark infringement case.  The district court held no reasonable fact finder could find the marks likely to be confused.

On appeal, the Seventh Circuit reminded us that the test for likelihood of confusion is not simply whether consumers will confuse two marks, but whether upon viewing the junior mark a consumer will be likely to associate the product or service with the source of the products or services of the senior mark.  In other words, the relevant query is whether consumers will believe that goods/services offered under the junior mark are sponsored, endorsed, or otherwise affiliated with the senior trademark owner.  Applying this standard, the court held there was at least a genuine issue of fact regarding likelihood of confusion, and reversed the grant of summary judgment.

More detail of AutoZone, Inc. v. Strick after the jump.

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In a decision last week, the Tenth Circuit reversed a district court's ruling of no trademark infringement.  The district court, applying the Tenth Circuit's six likelihood of confusion factors, initially stated that three factors favored the plaintiffs, two were neutral, and one favored the defendants, but in its conclusion, stated that only one factor favored the plaintiff, with the remainder of the factors neutral or favoring the defendants.  The district court also noted it was "reluctant" to find infringement where the allegedly infringing mark incorporated one defendant's middle name.

The Tenth Circuit reversed, noting the inconsistency in the district court's findings and that such inconsistencies constitute clear error.  The court further noted that while courts are "generally reluctant to enjoin an individual from using their own name," this reluctance does not extend to situations where there was "an attempt to deceive the public."  Here, the district court specifically found the defendants chose their mark to advantage of the plaintiff's goodwill, and thus any reluctance to find infringement was inappropriate.  

More on The John Allan Co. v. The Craig Allen Co. after the jump.

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In a decision Friday, the First Circuit affirmed a district court's summary judgment of trademark infringement and an associated award of the defendant's profits and attorney fees to the plaintiff.  The defendant used the plaintiff's registered marks in both the metatags of its website as well as in white text on a white background in the body of the site in an effort to cause consumers searching for the plaintiff's marks on an internet search engine to be more likely to go to the defendant's website instead.  Over the course of discovery, the defendant essentially admitted that seven of the eight Pignons factors weighed in favor of the plaintiff, and accordingly the district court granted summary judgment, awarding the plaintiff an equitable share of the defendant's profits and attorney fees.

The First Circuit affirmed, holding that even if the final factor, evidence of actual confusion, was neutral or favored the defendant, it was not error for the district court to grant summary judgment for the plaintiff given the admissions on the other seven factors.  Further, the court held the award of profits was proper, as the plaintiff only had to prove the defendant's gross sales under 15 U.S.C. § 1117(a).  Because the defendant did not offer evidence of its costs, the district court's award of profits was proper.  Further, the award of attorney fees was not an abuse of discretion, given the defendant's admission that it intentionally used the plaintiff's marks in order to divert traffic to its website.

This is an instance where companies would do well to remember that while how search engines work is generally secret, it is widely believed that metatags have no effect on search engine ranking, although some search engines may use them for indexing purposes.  However, if the point of their use is to increase the site's position in the search results (as it usually is, and was in this case), they are basically useless and, as shown here, a potential basis for liability.

More detail of Venture Tape Corp. v. McGills Glass Warehouse after the jump.

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In a lengthy decision last week, the First Circuit held a district court erred in finding the term "duck tour" nongeneric in the context of sightseeing tours on amphibious vehicles.  The district court, based largely on the nongenericness of this aspect of the parties' marks, found the plaintiff was likely to succeed in its infringement claims, and entered a preliminary injunction.  The defendant appealed.

The First Circuit vacated the injunction.  The district court's erroneous holding regarding the generic nature of "duck tour" caused the district court to give too much weight to those terms in the composite marks in its likelihood of confusion analysis.  As a result, the district court also erred in finding both a likelihood of confusion and a likelihood of success on the merits for both the word marks and design marks at issue.  Therefore, the court vacated the district court's preliminary injunction.

More concerning Boston Duck Tours, LP v. Super Duck Tours, LLC after the jump.

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In a decision last week, the Tenth Circuit affirmed a district court's grant of summary judgment finding no trademark infringement, no unfair competition, and no cybersquatting. 

The district court held, and the Tenth Circuit affirmed, that none of the three elements of a trademark infringement action was proven, namely that the mark was not protectable, the defendant's use was not in connection with goods or serivces, and that the successful parody showed there was no likely confusion.  On the cybersquatting claim, the district court held, and the Tenth Circuit also affirmed, that the mark was not shown to be protectable (as with the trademark claim), and there was no bad faith.  As a result, the district court's summary judgment was affirmed in all respects.

More detail on Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research after the jump.

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In a decision last week, the Fifth Circuit affirmed a district court's conclusion it had subject matter jurisdiction over a trademark case, as well as its grant of a preliminary injunction.  While the activities giving rise to the claim of trademark infringement took place in Mexico, they had a "substantial effect" on United States commerce, and thus were within the court's subject matter jurisdiction.  

After ruling on subject matter jurisdiction, the court moved on to the issue of preliminary injunction.  The Fifth Circuit affirmed the preliminary injunction, stating the district court did not abuse its discretion concluding the plaintiff would likely prevail on the issue of likelihood of confusion, and that the likelihood of confusion would lead to an irreparable injury.  Unfortunately for practitioners, however, the court did not address the potential applicability of the Supreme Court's eBay decision to the commonly-applied presumption of irreparable harm in trademark cases, making it the second circuit court to pass on the issue (the Eleventh Circuit did likewise last month).

More concerning Paulsson Geophysical Servs., Inc. v. Sigmar after the jump.

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In a recent decision, the Eleventh Circuit vacated a district court's injunction against the use of a competitor's trademarks in the meta tags of a defendant's website.  The court held that while the plaintiffs had shown likelihood of success on both their trademark infringement and false advertising claims, because the district court relied on a presumption of irreparable harm to support its injunction, the injunction must be vacated.

Specifically, the court noted that the Supreme Court's eBay decision did away with the notion of irreparable harm in patent cases, and that the statutory authorization for injunctions is similar in trademark cases.  While the court noted that eBay applied to the case, it declined to decide its effect, specifically "whether the nature of trademark infringement gives rise to a presumption of irreparable injury," meaning whether presuming irreparable harm in trademark cases would run afoul of eBay.

More detail of N. Am. Med. Corp. v. Axiom Worldwide, Inc. after the jump.

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In a decision yesterday, the Second Circuit affirmed a jury's findings in a trademark infringement case between Polo Ralph Lauren and the U.S. Polo Association.  The jury found that one of the USPA's four marks was likely to cause confusion.  The two parties had been involved in a previous lawsuit in the early 1980s, and the USPA's former logo was found to have infringed Polo's trademark rights.

The court held that it was not erroneous for the district court to permit evidence of statements made during settlement negotiations that one of the logos was not "offensive" to Polo, as it was necessary for the USPA's claim of estoppel.  Further, the court held that it was not erroneous for the district court to refuse to give a jury instruction that the USPA, because it was previously found to have infringed, was required to stay a "safe distance" away from Polo's mark.  Such an instruction would have confused the jury regarding the applicable legal standard.

More detail of PRL USA Holdings, Inc. v. U.S. Polo Ass'n, Inc. after the jump.

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In a recent decision, the Fifth Circuit affirmed a district court's finding of infringement and disgorgement of profits, but increased the amount of profits awarded because the defendant failed to provide evidence of its costs to reduce the award.  Interestingly, the infringement took place entirely outside the United States, namely in Saudi Arabia.  Even though the products were not sold in the United States, under the Fifth Circuit's decision in American Rice, Inc. v. Arkansas Rice Growers Cooperative Association, enforcement of trademark rights extraterritorially was permitted if it was not an affront to Saudi sovereignty.  Here, there was no such evidence of record (such as a finding by a Saudi court that there was no infringement), so the court determined that jurisdiction was properly exercised.

The court also vacated the district court's award of attorney's fees on the basis that it represented an inconsistent award.  The district court awarded profits, but no attorney fees under the Lanham Act, and attorney's fees, but no other damages under a breach of contract theory.  Because an award of both attorney fees and profits would mean portions of the award would come from different legal theories under Texas law, the court did not permit recovery of both.

More detail of Am. Rice, Inc. v. Producers Rice Mill, Inc. after the jump.

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