Thursday, May 12, 2011

Bitchfest: court worsens Parks while refusing to enjoin TV show

Martha Elizabeth, Inc. v. Scripps Networks Interactive, LLC, 2011 WL 1750711 (W.D. Mich.)

Note: I’m generally sympathetic to First Amendment arguments in trademark, but I can’t help thinking that in America today it pays to be a big company facing a smaller foe. And when you see what the court does to the First Amendment test here, incorporating a confusion element that leaves defendants vulnerable to confusion evidence instead of protected by an explicit/implicit division, the outcome is clearly better for well-funded trademark owners seeking to suppress speech and able to bring in surveys purporting to show confusion than it is for defendants who may not be able to sustain a full-fledged litigation.

Scripps runs the Food Network and the Cooking Channel. Its codefendant B360, founded by Joshua Dorsey and Nadia Giosia, “provides integrated media services.”

Since 2002, plaintiff Rapp has run a business specializing in products for the home chef both at a physical store, the Bitchen Kitchen, in Pentwater, Michigan, and through the website; the BK website opened in 2004, and by September allowed direct online purchases. BK sells products bearing the BK mark as well as kitchenware endorsed by/affiliated with celebrity chefs and “As Seen on TV”-branded items. The physical store had an estimated 30-50 thousand visitors in 2010 (details of the allegedly pleasant and unique shopping experience omitted; they sound hellish to me but I’m a misanthrope), and the online store has also grown. BK has sold products to customers in all 50 states and 91 foreign countries from Dec. 2009-Jan. 2011. BK allegedly advertises extensively online and off, with ads on cable TV including the Food Network (the scope is disputed: Scripps argued that plaintiffs bought local ads from local cable without Scripps’s knowledge), Fox News, and E! TV.
In August 2007, Rapp received a trademark registration for The Bitchen Kitchen, which is exclusively licensed to plaintiff MEI.
Sometime in 2007, B360 released its first podcast of a cooking show, Bitchin’ Kitchen, hosted by Nadia Giosia as Nadia G. Bitchin’ Kitchen is edgy, and “routinely employs sexual innuendo, provocative attire, and off-color humor; offers recipes entitled ‘Save-your-sex-life Souffle’ and ‘Save-your-sex-life Shepherd's Pie’ and ‘deflate your mate Part One’; … and has a Facebook page displaying photos of [Nadia G] wearing a negligee and high heels and carrying a whip.” One available video is called "I'm never drinking like that again" under the lead-in "Partied too hard last night? Hangover? Bitchin' Kitchen feels you….” The podcast uses and, as well as Facebook.
There’s also a cookbook available on Amazon: "Bitchin' Kitchen Cookbook: Rock Your Kitchen--And Let the Boys Clean Up the Mess." Plaintiffs learned of the cookbook in 2008 when a vendor pitched it to them as a natural fit because of the same name. The cookbook was published in December 2008, and according to a B360 press release from 2010, this "best-selling cookbook ... has topped charts on Amazon and is available at Barnes & Nobles [sic], Chapters-Indigo [a major Canadian retail bookstore/music chain], Spencer's Gifts and over 1,000 specialty shops in North America and the U.K."

Rapp sent a C&D in July 2008. According to the complaint, B360 responded that it intended to use the phrase Bitchin’ Kitchen only for the podcast and the related cookbook, which it thought created no conflict. Rapp still objected, and B360 assured her that the Bitchin' Kitchen cookbook would be sold only in Canada and the mark would be used only in Canada, but refused to provide an initially promised written agreement and subsequently began selling the cookbook in the US.

B360 filed an unsuccessful application to register Bitchin’ Kitchen for “entertainment and educational entertainment programs in the fields of comedy, cooking ... and lifestyle", such as [b]ooks in the fields of comedy, cooking ... and lifestyle ...", recipe books, newsletters featuring so-called comedy cooking, printed recipe cards, recipe card holders, refrigerator decals, and aprons.” B360 actually offers spatulas, t-shirts and other kitchen items for sale online.

B360’s American trademark application claimed first use on June 1, 2002, which is the same date Rapp claimed first use, though the Canadian cable series didn’t begin until 2007. In April 2008 the PTO initially denied the application based on likely confusion with plaintiffs’ mark. B360 responded that the marks had peacefully coexisted for 18 months without any known consumer confusion, though it did not disclose that B360 had heard from Rapp about the possibility of confusion. The application is presently suspended.

In early 2010, Food Network Canada aired a thirty-minute cooking show of Bitchin’ Kitchen, and then Scripps announced and heavily advertised its October 2010 US premiere. After the premiere, customers of BK allegedly contacted Rapp and expressed concern about its content, which they erroneously assumed Rapp had sponsored. Rapp began receiving more complaints and questions about affilation or sponsorship. At least one consumer looked for defendants’ Facebook page and instead found plaintiff’s, and owners of other Michigan kitchen stores asked Rapp whether BK was connected to the racy TV series.

The Bitchin’ Kitchen TV series allegedly drove BK off the first page of search engine results for “Bitchen Kitchen.” Rapp reported that customers told her that they couldn’t find BK online, and one even drove to the physical store because he couldn’t find the website.

Scripps responded that more recent searches “tell quite a different story, with plaintiff MEI's Bitchen Kitchen showing up quite prominently and readily, both in absolute terms and relative to defendant B360's Bitchin' Kitchen websites and the Scripps Defendants' related websites.” My notes: What the defendants’ search results seem to show is bad results, except for Google. Bing: # 1 IKEA (comment: hunh? I couldn’t replicate this, but I also can’t exclude the possibility that IKEA has some sort of sponsorship relationship to defendant’s show; if not, this is a bizarre result and even if so it’s ugly product placement in the organic results), # 2 B360's Bitchin' Lifestyle website, and # 3 the plaintiffs' Bitchen Kitchen. Google: # 1 defendant Cooking Channel, # 2 defendant B360's Bitchin' Lifestyle, # 3 plaintiffs' Bitchen Kitchen, # 4 unspecified [I have my suspicions that this is an unrelated blog of the same name that neither party seems interested in talking about], and # 5 again plaintiffs' Bitchen Kitchen. Yahoo!: # 1 IKEA (again!), # 2 plaintiffs' Bitchen Kitchen, # 3 unspecified, and # 4 again plaintiffs' Bitchen Kitchen. was the most terrible, though IKEA didn’t make it: plaintiffs' Bitchen Kitchen "on the first page as the seventh and tenth result[s] ... following Cooking Channel, antivirus software, cabinets, kitchen improvement, kitchen and bath remodeling, and defendant B360's Bitchin' Lifestyle website.”

The court also did its own searches.  (Is this appropriate?) They showed a mix of plaintiffs’ and defendants’ sites on the first page of results for bitchin kitchen. Plaintiffs presented no evidence of search-engine rankings before the Bitchin’ Kitchen program began airing on TV and on the internet, nor even before the cookbook was published. Maybe plaintiffs’ business suffered, but the court concluded that the record didn’t support the “rather extreme” allegations that BK “all but disappeared” from search engine results and the court accorded little weight to the search engine evidence.

Comments: The search results are complicated by various forms of personalization/geolocation, and it seems to me a reliable foundation would have to be provided to show that any of these are the types of results a reasonable consumer is likely to get. For example, my own search for bitchen kitchen (I did not use quote marks) produced a first page with links only to defendants’ sites, which may be because Google autocorrected to bitchin kitchen (no apostrophe), and then offered me the opportunity to search instead for bitchen kitchen, which search did indeed provide top results for plaintiffs' site. Also, it seems like it’s about time to start including Facebook in these evaluations, especially here since (a) some of the confusion evidence here is about Facebook and (b) both parties encourage potential customers/viewers to use Facebook.

Anyway, of more help to plaintiffs, in Google’s sponsored links defendants misspelled the TV series name to Bitchen Kitchen, which plaintiffs suggested was a willful attempt to confuse consumers. Some blogs also used the spelling Bitchen Kitchen to refer to B360’s show, as did one B360 press release. The court’s own searches revealed that search engines respond to bitchen kitchen with a fair number of bitchin kitchin results.

Plaintiffs sued to enjoin any use of Bitchen Kitchen or any confusingly similar mark for any lifestyle-media product or program across all media, to require defendants to give MEI “all domain names, social-media identifiers or webpages which publish or containing the Bitchen Kitchen mark or any confusingly similar mark” on sites such as Facebook, Twitter, and YouTube, and to enjoin the defendants from using the BK or any confusingly similar mark from bidding on keywords or otherwise manipulating search engine results. They also sought treble damages and an award for corrective advertising.

Now we get to the PI standard, which requires an evaluation of irreparable injury as well as of likelihood of success on the merits, the balance of the equities, and the public interest. Loss of market share or sales typically isn’t irreparable harm. (Tell me again what goodwill is?)

On the merits, MEI argued reverse confusion, such that consumers would wrongly assume that defendants licensed, sponsored, or were otherwise affiliated with plaintiffs, denying plaintiffs control over their own reputation.

The Bitchen Kitchen mark is suggestive, and thus relatively weak. The court commented that, should the BK mark later achieve incontestability, it would get a presumption of relative strength, a weird rule from the perspective of any interest in actually sussing out likely confusion, but not relevant here. (The court did not discuss the difference between conceptual and marketplace strength and the different role those concepts play in reverse confusion cases, though its categorization of suggestive marks as relatively weak fits with the reverse confusion precedent.)

Most of the other factors favored the plaintiffs. The goods and services were highly related and even overlapping. The marks are almost identical, and “when one searches for one of the terms with an internet search engine, each search engine used asks something to the effect of "Did you mean [the other term]?" and/or states "We have included results for [the other term]." Even without that, the sight, sound, and meaning could readily be found confusingly similar. However, an ultimate similarity determination will require assessing the other elements, including fonts, colors, graphics, and other visual/textual elements, with which the marks are presented to consumers.

The court thought plaintiffs could ultimately make a strong case on actual confusion, given evidence that one or two specific consumers were actually confused. But if they failed to present additional evidence, this factor could cut the other way. Further inquiry was also justified about the kinds of confusion—short-lived confusion or confusion of individuals casually acquainted with a business are worthy of little weight. “Here the specific customer whom the plaintiffs present as confused between the two marks was apparently a regular customer of Rapp's Bitchen Kitchen store, rendering her confusion worthy of significant weight.”

The PTO’s determination of likely confusion also deserved “some weight,” though the examining attorney’s opinion is not binding. The court indeed cited precedent that in cases of doubt deference was due to the PTO, though they’re not really on point since the PTO is not deciding likely confusion of the mark as used but rather whether the two marks in the abstract are likely to be confused.

Anyway, the plaintiffs also showed similar marketing channels used to reach similar consumers. Scripps, however, presented uncontested evidence that Bitchin’ Kitchen personalities and Scripps personnel were not allowed to sell anything directly on B360’s cable show. (Interesting way to put it; I’m still wondering about that Ikea connection.)

But B360 sells very similar products to plaintiffs’. Though B360 argued that its target audience was dramatically different because it aimed at "fans of Nadia G and the online television series [podcast], typically young adults with Internet and/or mobile video access," this claim was unpersuasive in 2011. “Until and unless B360 presents competent evidence to the contrary, the court will not assume that only or even predominantly ‘young adults’, rather than the vast general population of nearly all ages, has and regularly uses access to the Internet and to video.”  B360 had expanded far beyond the podcast, to the cable series. And both parties used their online stores, social-networking sites such as Facebook and MySpace, and sponsored links on search engines.

Degree of care: “the defendants have not yet mounted a particularly persuasive response to the plaintiffs' contention that consumers in the market for kitchen implements and cooking and recipe items are not likely to exercise a high degree of care as to the origin of the products which they purchase.” An ultimate factfinder would want evidence on the average price of items sold through the parties’ stores and/or with the parties’ marks attached.

Intent: there was evidence from which a factfinder “could readily conclude that defendant B360 chose the Bitchin' Kitchen mark in order to capitalize unlawfully on the goodwill and brand reputation and recognition which the plaintiffs had earlier built for the nearly-identical Bitchen Kitchen mark.” Comment: this explanation is completely inconsistent with the reverse confusion theory, which is that the defendant overwhelms the plaintiff’s mark. Bad faith in reverse confusion is willingness to trample established rights, not attempts to get the plaintiff’s goodwill, which in the reverse confusion scenario is tiny compared to what the defendant can develop using its own promotional resources.

There was more general evidence of bad faith: (1) The misstatement of first use dates in B360’s Canadian and American TM applications corresponding with plaintiffs’ first use date (though I will note that the first use date alleged in the application is of no legal significance in the US, given that if granted it’s the registration/application dates that create constructive nationwide rights, not the alleged first use date). (2) The misspelling Bitchen Kitchen in a sponsored search engine link ("Bitchen Kitchen Every Wednesday at 10:30 pm on Cooking Channel--Don't Miss It!")—“[a] reasonable factfinder might well disbelieve any claim that the defendants accidentally mis-spelled their own mark in a major advertisement (a sponsored link on a very widely used search engine), finding instead that the mis-spelling was intentional--and, in turn, that the very choice of a mark that is textually, aurally, and substantively effectively identical to an older, established, successful mark was intentional as well.” If you have low-level employees writing text for search engines, take note!

(3) As to B360, it continued and expanded its use of the mark after Rapp warned it that continued use would confuse consumers and harm plaintiffs. B360 argued that it considered the matter settled because plaintiffs didn’t respond to B360’s last communication, but 360 thereafter expanded its use. Under circuit precedent, use of a mark with knowledge of another’s prior use supports an inference of intentional infringement. “The fact that B360's president allegedly agreed to limit his company's use of the Bitchin' Kitchen mark to Canada strongly suggests that he knew or believed that that mark posed a substantial risk of consumer confusion and attendant harm to the holder of the senior mark.” (4) Likewise, B360’s continued use after it learned of Rapp’s registration could support an inference of bad faith.

Plaintiffs argued that any doubt about likely confusion should be resolved in favor of the senior user, but there was insufficient precedential support for that rule. And even if the tie-breaking rule were the law, that wouldn’t help on a motion for a preliminary injunction.

If the court considered only the likely confusion factors, it would be inclined to find a likelihood of success on the merits. Scripps, however, made a colorable argument that an injunction against running a TV show because of its title would violate the First Amendment, and thus that a PI was inappropriate against it.

Plaintiffs relied on the premise that, when a TV show and a store have the same name, consumers will believe that a single producer puts out both. In a prior reverse confusion case, Viacom was enjoined from expanding its TV Land programming brand to retail stores because of TV Land retail stores in Chicago. B360 similarly filed ITUs for many goods and services competing directly with plaintiffs, and there was actual and significant overlap between kitchenware offered by B360 and that offered by plaintiffs, including aprons, spatulas, cookbooks, and coffee mugs.

Given that many TV channels offer related stores (Disney, Discovery, and something I’d never heard of), the TV Land case found, consumers were likely to believe that networks and retail stores with the same names had the same source. The court signalled agreement in theory, but found it unclear whether the First Amendment barred an injunction. In Westchester Media v. PAL USA Holdings, 214 F.3d 658 (5th Cir.2000), where the owners of the Ralph Lauren Polo mark were unable to enjoin Polo magazine, which focused on the sport of polo and the related affluent lifestyle. This presented concerns beyond the usual Lanham Act question of likely confusion, since there is a First Amendment right to choose an appropriate title for literary works. Adopting the Rogers v. Grimaldi test in the Rosa Parks case, the Sixth Circuit held that a title is protected against a Lanham Act claim unless it has no artistic relevance or it explicitly misleads as to source or content.

The Bitchin’ Kitchen title “certainly has artistic relevance to the underlying work, that is, to the content, tone, style, purpose, and intended appeal of Nadia G's performance mixing comedic, informational, and titillating material and moods during the course of the show.”

What about explicitly misleading? The court found the waters “somewhat murkier.” It wasn’t clear whether the plaintiffs could establish that the title was explicitly misleading. Scripps made a colorable argument that the Nadia G character and setting “could not be more different” from the “tranquil Pentwater brick-and-mortar store described by Plaintiffs ....” Nadia G never pitches kitchenware, nor do the Cooking Channel or Food Network sites carry any products linked to the program or its title and the associated mark. In the context of what viewers see and hear on the show, the title may not explicitly mislead about content or source.

Comment: Argh! That’s not what “explicit” means! The considerations listed by the court—to be fair, perhaps invited by Scripps—have nothing to do with whether there is explicit deception as to source. They are about implicit cues that might associate the show with or distinguish it from the plaintiffs’ store. “Explicit” means “the authorized biography” or “the official show” or “based on the Michigan store.” Those are the contextual factors that could matter. Nothing mentioned by the court is “explicit” in any way. The court here has read “explicit” to mean “explicit, or something that’s contextually confusing enough,” which was precisely the result Rogers wanted to avoid so as to avoid having an expensive and speech-deterring battle over what the use of the title suggested to consumers. Rogers specifically said that Rogers’ proposed survey evidence of likely confusion didn’t matter!

In any event, the court refused to enjoin the TV show or its title.

The rest of B360’s conduct, however, was enjoined. Plaintiffs amply demonstrated “widespread consumer confusion causing grave harm to their brand reputation, identity and distinctiveness, and the customer loyalty and goodwill that are so closely dependent on and related to those qualities.” (The court said it didn’t need to get embroiled in the dispute over whether proof of trademark infringement gives rise to a presumption of irreparable harm, by which it meant that it in fact presumed irreparable harm from the invocation of the magic word “goodwill,” which means that harm is hard to quantify.) B360 could, however, market and profit from the Nadia G brand under a different name, and B360 knowingly assumed the risk it was taking.

By contrast, Scripps would suffer a great deal financially from taking the TV program off the air (and the name was presumably integrated into the program, though the court seemed to think that the problem could just be that a new name would make the program less popular; not clear what Scripps submitted on this point). Bitchin’ Kitchen runs four episodes a week in prime time, and was one of the top three shows in the Cooking Channel’s prime-time lineup, with over one million viewers. The balance of harms thus weighed against an injunction against the TV show, especially since the Scripps defendants have never themselves sold or advertised products bearing the Bitchin' Kitchen mark or connected in the consumers' mind with that mark.

Moreover, the public interest presumptively favored freedom of speech in choosing titles. The public interest doesn’t favor intentional trademark infringement, harm to a senior user, or consumer confusion about the origins of goods purchased “with their hard-earned dollars.” (Query: in what sense would confusion influence purchase decisions here?) But with no clear answer from Parks, the public interest didn’t favor the drastic remedy of a preliminary injunction, since there’s at least as much interest in the free exchange of ideas as in avoiding misleading advertising. We can’t assume that one can forbid particular words without running a substantial risk of suppressing ideas. Cohen v. California, 403 U.S. 15, 26 (1971). “Such relief is amply justified against B360, however, as to all conduct other than the title of its TV series.”

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