Via Eric Goldman. Sit back, this is going to take a while.
The parties both offer online video content. In 1989, Fancaster’s president and director, Craig Krueger, received a registration for Fancaster (design mark) for "broadcasting services."
In 1994, Krueger filed a Combined Affidavit of Use and Incontestability. As evidence of use, he submitted blank letterhead and envelopes bearing the FANCASTER mark. He used the mark in connection with a number of activities, including selling Fancaster branded radios, charging customers to watch closed-circuit boxing matches, producing karaoke shows, transmitting sponsored news messages to wireless pagers and cell phones, and conducting live demonstrations of FANCASTER broadcast services.
In July 2006, Fancaster launched fancaster.com, which uses the current
logo, which uses lowercase lettering instead of the uppercase in the
registration, and includes the tagline “welcome to planet fancaster!”:
“Fancaster.com offers a wide variety of short video clips, most of which feature sports-related content and a sports fan or athlete speaking into a microphone displaying the fancaster mark to discuss a
particular sporting event, sports team, or sports fans in general.” Krueger testified that a unifying theme is
broadcasting: "[e]veryone is speaking into a microphone and being
recorded." Fancaster’s 2009
business plan says that the company “intends to develop a 21st century
communications portal where user-generated video content is created by the fans
and for the fans who want to emulate broadcasters or submit commentary on
management, coaches, players, or teams” and "intends to produce content
that traditional media ignore, such as videos of fans at unique events such as
La Tomatina in Spain, Ostrich racing in Arizona, the Westminster Kennel Club
Dog Show and the annual Nathan's Hot Dog Eating Contest." The business plan anticipated targeting
sports fans initially, but eventually including music and movie fans. It identified both fan sites and large
UGC/social networking sites such as YouTube and Facebook as competitors.
Krueger marketed fancaster.com online on a few
sports-oriented websites and those of several local pubs but testified that
most of Fancaster's marketing efforts had not been geared toward the Internet,
but rather had taken place at sporting events, bars, on local television
channels in Sioux Falls, South Dakota and Sioux City, Iowa, on radio stations
in Charleston, South Carolina, and via flyers and handbills.
In 2003, Comcast launched a multimedia player on its website
to allow users to watch cable TV online.
The player was called “The Fan” because it displayed video in a circular pattern resembling a fan. It applied to register TheFan as a mark, but the application was rejected for likely confusion with a registered mark THE FAN for radio broadcasting services. In 2004, Comcast requested reconsideration, listing a number of marks registered for related services that used (THE) FAN; on the list was FANCASTER. (The application was ultimately abandoned.)
Comcast later sought to develop a standalone version of the
player and hired a branding agency to research and test possible names. The marching orders were that (1) "[t]he
name should help communicate that Website X is the ultimate interactive
destination for TV and Movie fans," and (2) "the name should somehow tie
back to Comcast, [but] the name Comcast should not be used." The agency generated 23 names. Comcast also hired another agency to find
names and indicated that its primary target was consumers who use
“portal-centric authority sites” such as MSN, Amazon, and Netflix, and its
secondary target was consumers who use sites such as YouTube, myspace, Jib Jab,
and del.icio.us. This agency proposed FanCast.com and five other names. Fancast.com performed best in consumer
research. Plus, the Comcast team thought
that Fancast was a logical merger of The Fan and Comcast. So Comcast went with Fancast.
Comcast bought the domain name and applied to register
FANCAST in August 2006. A month later,
Fancaster began registering large numbers of “fancast” domain names. Fancaster also opposed the application, which
was still pending. Three prior
applications by other people to register Fancast had been rejected, including
one in 2003 for likely confusion with Fancaster.
In July 2006, Krueger met with Comcast employees to pitch
his program Mobile Voter, and he also pitched Fancaster’s services and website,
which he advised was about to be launched. Five days later, Krueger discovered
that Fox SportsNet New England, a Comcast channel, had an amateur broadcasting
segment called Fancaster. Designed to
encourage young people to pursue TV broadcasting careers, this Fancaster had young
sports fans audition to appear on live television during professional sporting
events; video was posted on the channel’s website. Krueger first sent a cease and desist demand,
but then decided not to sue but reserved the right to do so if the program
changed. Comcast then told Krueger that
discussions of a potential business relationship were suspended "due to
infringement issues surrounding Fancaster.com."
In January 2008, Comcast launched a fully operational
fancast.com allowing users to watch full-length premium video, including
broadcast TV and premium cable shows and movies. The website offered some sports-related and
movie content, but no user-generated content.
The visual mark was, according to Comcast, designed as an “expanding
universe” “[t]o emphasize that FANCAST aggregated all forms of popular premium
television and movie content.”
Comcast marked Fancast nationally in print, on TV, and on
the internet, targeting mainstream media consumers. By late 2009, “Comcast had lost roughly $80
million on the FANCAST website, which relied entirely on advertising revenue.” So it began to phase out Fancast, moving it
to a website branded “FANCAST Xfinity TV” for Comcast cable subscribers. In March 2011, fancast.com went down and
Xfinity TV was offered exclusively to subscribers. Fancast.com was redirected to Xfinitytv.com.
In June 2008, Fancaster sued Comcast for the things you’d
expect, including cybersquatting, here for some reason denominated “cyberpiracy,”
and Comcast counterclaimed for, among other things, cybersquatting and a
finding of fraud on the PTO.
Fancaster submitted search engine results for "fancaster,"
"fancast," and other similar letter chunks, showing that the results
included paid sponsored links to fancast.com and xfinitytv.fancast.com; organic
links to Fox SportsNet’s Fancaster and www.fancast.com; and/or suggested search
terms for "fancast," "fancaster comcast," "FanCaster
Comcast," "fancast review," and "fancast xfinity tv,"
among others.
It also submitted screenshots to show that both fancast.com
and fancaster.com featured sports-related content. The fancast.com homepage featured a tab for
sports videos, and the sports section stated “XFINITY-Home of the Most Live
Sports.” Fancast hosted short sports
clips as well as full shows. Search
engine results for “fancast sports” etc. produced links to fancast.com. Fancaster additionally submitted screenshots
to show other content overlaps.
Other evidence: videos on YouTube featured the Fancast mark “either
in the corner of the video, the title of the video, on the background wall of
the set where the video was shot, and/or on the microphone being held by the
interviewer.” But the videos were posted under a number of different YouTube
usernames, so the court was uncertain whether these videos were posted on
YouTube by Comcast or by individuals who culled them independently from fancast.com
or another source without Comcast's permission.
(Cf. arguments in Viacom v.
YouTube!) Other YouTube videos featured
the Fancaster mark and were posted by Fancaster's YouTube channel.
Fancaster has a Facebook page; Comcast’s Fancast Facebook
page advertises Xfinity and directs visitors to xfinityTV.com. Fancaster has a Twitter feed; Comcast’s
Twitter feed “is a trivia site,” whatever that means.
Comcast submitted mall intercept survey evidence purporting
to show little risk of (reverse) confusion.
The respondents were people who use or were likely to use the internet
to view, post, or discuss sports-related content.
Comcast’s first survey first exposed respondents to Comcast’s
mark before showing them Fancaster’s mark as well as others. Each respondent in the test group saw a
three-page printout of fancast.com. The
printout was removed. Respondents were
then shown and questioned about fancaster.com, veoh.com, musicvideocast.com,
and tvfanonline.com. These were shown as
static screenshots on a computer. The
last two were specifically included because they were “examples of the many
websites that contain superficial name elements in common with [f]ancaster
('fan' and 'cast' respectively) but do not come close to being confusingly
similar.”
Test group respondents were asked whether they believed the
given website and the printout were from the same company, different companies,
or whether they had no opinion. If they
responded “same,” they were asked what made them think so. If they didn’t answer “same,” they were then
asked whether the company the current website is from is affiliated with or received
authorization from the company the printed-out website is from, and if they
said yes were asked what made them think so.
The same thing happened with the control group, except they saw a
website called Fanwatch with the same content, format, and overall image.
In the test group, 31.1% of respondents connected Fancast
and Fancaster (responding either that they were from the same company or that Fancaster
was affiliated with/authorized by Fancast), 10% of whom said it was because of
the similarity of the names. In the
control group, 29% connected Fancaster and Fanwatch, 8.6% of whom said it was
because of the similarity of the names.
Net confusion: 2.1%. The survey
expert, Hal Poret, also concluded that the rate at which test group members
connected Fancast and Fancaster was “statistically equivalent to the rate at
which they connected Fancast to Musicvideocast (27.3%), Tvfanonline.com (33.0%),
and Veoh (22.0%).” He concluded that the
confusion results didn’t rise above the level of typical survey noise.
Comcast’s second study, in 2011, exposed respondents to the
Fancaster mark to determine whether it would mistakenly be connected to
Fancast, on the theory that Fancast had been around long enough to give
consumers ample opportunity to become aware of it. Respondents were shown the current Fancaster
website and allowed time to explore it.
The surveyors then asked them whether they had an opinion about what
company the website they just saw was from; if they had an opinion, they were
asked what company and why. The survey
then asked whether they thought the website company provided any other services
or operated any other websites, and if so which and why. Finally, they were asked whether they thought
the website company was affiliated with or received authorization from any
other company, and (if yes) what made them think so. Of 209 respondents, 2 gave an answer
indicating possible confusion. By
contrast, 25% said the website was from Fancaster. Other responses: Youtube (22 respondents),
Twitter (9), ESPN (8), NFL (7), Yahoo (5), Facebook (5), Google (3) and TMZ
(2).
Fancaster’s damages expert submitted testimony that Comcast
spent $83 million marketing Fancast, and $200 million more to promote Xfinity
featuring the Fancast brand. He opined
that it would take one year of Comcast’s average annual ad expenditures to
correct inaccurate marketplace beliefs, or over $73 million. However, he based this on Comcast’s expenses,
not on the existing goodwill of Fancaster.
The court initially evaluated Fancaster’s challenge to the
surveys. Fancaster challenged the survey
universe because (1) only focused on sports fans, as opposed to sports, movie,
and music fans, (2) ignored Fancaster's initial target of 18-35 year old males,
and (3) improperly surveyed participants nationwide because Comcast offers its
services only in certain markets.
Given that the claim here was one of reverse confusion, the
proper universe was the junior user’s market.
The court found that it was appropriate to focus on sports fans for the
first survey because at the time Fancaster was focused on sports-related
content; Fancaster’s hopes to expand didn’t matter because the proper universe
was Fancaster’s actual customer base at the time. Likewise, even in spring 2011 when the second
survey was conducted Fancaster maintained a sports focus; the vast majority of
clips and categories were sports-related.
It was also fine to sample men and women; Krueger testified that
Fancaster was "targeting [a] younger ... probably a little
male-driven" audience "anywhere from 12 years old to 40 years old ...
although we have a lot of women who love Fancaster." A nationwide sample was also appropriate
because Krueger claimed a nationwide customer base.
Fancaster also challenged the extrapolation of a
non-probability mall intercept survey to the general population. However, mall intercept studies have often been
accepted as evidence; problems extrapolating them go to weight rather than
admissibility.
More problematic was Fancaster’s argument that the first
survey bore no resemblance to marketplace conditions. A survey gains weight according to how
closely it simulates how a consumer would encounter a trademark in the real
world. Here, Poret used a printout and
static screenshots of the parties’ homepages instead of live vesions. This distortion provided “ample grounds” to exclude
the survey. Video websites are meant to
be viewed on a computer and to allow consumers to browse and interact with
them; the survey was nothing like the actual market presentation. Moreover, “the use of two different media to
present the FANCAST and fancaster websites could improperly enhance the
distinction between them.”
Comcast argued that the printout and screenshots provided a
representative snapshot of the available content. The court was unimpressed. “While an image of a website's homepage may
accurately summarize the nature of its content and services, it cannot meaningfully
test for confusion if it is not presented in the way that an Internet user
would actually encounter it.”
As for the second survey, Fancaster argued that the format
was inappropriate because there was no evidence that respondents had been
exposed to the Fancast mark. Comcast responded
that there was ample evidence that FANCAST mark had saturated the marketplace,
and that any lack of awareness of the mark merely cut the reverse confusion
claim. McCarthy takes the position that
a survey can’t work in a reverse confusion case until the junior user saturates
the market with its mark because, until then, consumers haven’t been exposed to
the relatively large promotional efforts of the junior user. The record reflected a substantial nationwide
ad campaign for Fancast across multiple media.
Krueger stated that he believed Fancast.com to be "one of the top
websites in the world" based on several "measurement sites that are
publicly available on the internet and track the top web sites in the
world," and that Comcast had "done a pretty good job of saturating
the market." (Sometimes, both
parties have incentives to maintain that the world is a particular way.)
Fancaster argued that many survey respondents still had no
exposure to Fancast because they were outside Comcast’s territory. But Fancast.com was available to anyone with
an internet connection, and Comcast was marketing it to consumers in and
outside of its footprint. Even when it
offered content to Comcast cable subscribers, there was no evidence that it
altered its marketing strategy before the website was dismantled. The second survey was admitted.
The court also excluded some portions of Comcast’s expert
testimony about trademark registration and cybersquatting (Greg Lastowka was
the expert there—hi Greg!) for reaching legal conclusions. While some technical background about the
registration process etc. could aid the jury, whether Fancaster’s uses counted
as “use in commerce” of the Fancaster mark for the applied-for services (broadcasting)
was for the court/the factfinder, as was whether Fancaster’s specimens were
acceptable. Likewise, technical issues
of internet functions and cybersquatting were appropriate subjects of expert
testimony, but Lastowka’s opinion that Fancaster “registered multiple domain
names with a bad faith intent to profit in violation of the ACPA” was not
appropriate expert testimony. “A jury should
not be receiving instructions on the law from two sources, and however erudite
and accurate they may be, Mr. Lastowka's instructions will not be allowed to
compete with the Court's instructions.”
The court then turned to the core trademark infringement
claim. In a reverse confusion case,
intent, actual confusion, and the strength of the marks are analyzed
differently than they are for forward confusion, but the factors are otherwise
the same. The court found that each
factor weighed in Comcast’s favor and granted summary judgment for want of
likely confusion.
Degree of similarity: The court found the appearance, sound,
and meaning of the marks to be sufficiently distinct to present minimal risk of
confusion. On its website, Fancast appeared
in all black capital letters next to a pastel "expanding universe
design." On its website, Fancast
appeared in lowercase light-blue lettering and incorporated a pair of
headphones turned on their side. This
use of a design as part of the mark minimized the likelihood of confusion, as
did “welcome to planet fancaster!” and the different fonts. There was no evidence that consumers put more
emphasis on the verbal components of the marks than their design or meaning and
the court therefore saw no reason to weigh them more heavily. (Could no reasonable jury have decided
otherwise?)
The sound of the marks weighed “less heavily” in Comcast’s
favor, though the sounds were “somewhat distinct.” And confusion was minimized by use of the
Comcast housemark on fancast.com. (Why
would that help avoid reverse confusion? The Third Circuit has explicitly disapproved the effectiveness of a house mark in a reverse confusion case. I can see the argument for why we should still count the house mark, and I
actually am sympathetic to it, but it relies on a conclusion that Fancast isn’t
really serving as a mark on its own, and I can’t imagine most TM owners like
that logic.)
Plus, the marks evoked distinct meanings. A “fancaster” is a fan acting as a
broadcaster, as emphasized by the headphones.
Fancast doesn’t evoke the same meaning.
The court also dealt with Fancaster’s initial interest
confusion argument here. Based on the
domain name, Fancaster argued, internet users who saw the domains on search
engines, in sponsored ads, etc. would be confused. In an IIC case, the relatedness of the
parties’ products and consumers’ level of care are of particular importance. Previewing what it would say about the other factors,
the court found minimal content overlap, weighing against IIC. Also, in the absence of record evidence about
consumers’ level of care in searching for video content, the court went with
Network Automation’s conclusion that the default level of
care online is increasing.
The search engine results weren’t probative of IIC, because
any internet user knows that a welter of search results creates uncertainty
about where to go next, not necessarily trademark confusion. Thus, similarity
weighed in favor of Comcast overall.
Strength divides into conceptual and marketplace
strength. Comcast was in as good a
position as a TM owner can be in this kind of case: having abandoned Fancast as
a branding strategy, it was free to dump on the strength of its own mark at
will. So it argued that Fancaster was
merely descriptive of services that allow fans to become broadcasters. Fancaster argued that 15 years of
incontestability should create a presumption of strength, and that the mark was
coined anyway and was therefore fanciful.
The court found Fancaster “even more descriptive” than
Miraclesuit (a term the Third Circuit has held suggestive). It’s a portmanteau of fan and broadcaster,
and Fancaster’s business plan said that its content related to "fans who
want to emulate broadcasters." Krueger testified that the terms "fan"
and "broadcasting" relate to all the videos on the site because they
"have some interest to the viewer of the clips" and "everyone is
speaking into a microphone and being recorded and transmitted throughout the world,"
and that "Fancaster.com [is] a place that transforms fans into the role of
a broadcaster...." Another witness testified that the term "fancaster"
is used in "common parlance" to mean someone that "gives you a
play by play of the whole game." (Never heard that, but I’m not exactly
the demo, though give me a good liveblog ….)
Anyway, using a truncated version of a word doesn’t render
the term arbitrary or fanciful. (Comcast
even offered a variety of other websites that used “caster” as a short form of “broadcaster.”) The court found no stretch of the imagination
required to see that fancaster.com “is a website that offers content related to
sports and other fans as broadcasters.”
While “fancaster” “may not perfectly describe the nature of each and
every video on fancaster.com,” that’s not the standard for descriptiveness; “it
fairly describes certain distinct characteristics of the overwhelming majority
of them--namely, a sports or other type of fan broadcasting via a microphone.”
Incontestability also had no bearing on likely confusion,
only on validity.
Even if the court found “fancaster” suggestive or fanciful,
it held, it would still find the mark weakened by evidence of its use in
connection with various different products in the same market. Comcast showed that there were many websites
beginning with “fan” that offered video and other content relating to sports
and fans. The court named eight,
including fanster.com (potential inducement if there’s infringing content
thereon, as per one of the bad facts of Grokster?), fanpop.com
(not primarily sports-related in my experience, which is born out by the
homepage), and fanadu.com (cutest name in the bunch), as well as one mentioned by
Fancaster in its business plan, fannation.com.
In a reverse confusion case, the commercial weakness of the
junior user is less important and the strength of the senior user’s mark is more
relevant. Comcast’s substantial
marketing campaign wasn’t sufficient to overcome Fancaster’s conceptual
weakness, especially given the other “fan” websites, which made it “unlikely
that consumers would associate websites featuring video content related to
sports and other fans with a particular source, regardless of Comcast's
commercial strength.”
Intent: Knowledge of the existence of a mark is insufficient
to prove bad faith; the question is whether the junior user deliberately
intended to push the senior user out of the market. Comcast knew of Fancaster’s mark, but there
was no evidence from which a jury could infer the intent to push Fancaster out
of the market. Comcast’s branding agency
conducted consumer research and found that was the best name, and the Comcast
team liked it as a merger of “The Fan” and the Comcast name. Comcast’s notice of Fancaster’s C&D as to
the Fox SportsNews Fancaster segment was irrelevant because that segment was an
entirely different product and mark.
Moreover, Fancaster withdrew its C&D letters and didn’t sue. Comcast’s
good faith explanation for its use of the name weighed heavily in its
favor.
Relationship of the services in consumers’ minds: The court
found little relationship between the videos on the Fancast and Fancaster
websites that would reasonably lead a consumer to believe that they were
related. Fancaster “focuses on short
video clips emphasizing sports-related content, most of which feature a sports
fan or athlete speaking into a microphone displaying the fancaster mark to
discuss a particular sporting event, sports team, or sports fans in general.” Krueger testified that a unifying theme of
the clips was broadcasting: "[e]veryone is speaking into a microphone and
being recorded." Fancast focused on full-length premium mainstream media
content, including major television network programming, as well as full-length
feature films offered by premium cable channels. The overlap in sports-related video content
wasn’t enough to make a reasonable consumer see the content as related. Fancaster showed that there were short clips
on both sites related to basketball, including player interviews and press
conferences, as well as short clips on both sites related to the Westminster
Kennel Club Dog Show. (The court dismissed
evidence that some video clips on Fancaster had the same topics as some search
engine results for Fancast, because those might just indicate that Fancast carried
a written story on that topic, not a video.)
“In light of the enormous number of videos offered on both sites, and the
fact that they maintain very different emphases, this level of overlap is not significant
enough to suggest a likelihood of confusion.”
Sales efforts/marketing channels: The court found “virtually
no overlap” in the parties' marketing efforts.
Comcast marketed Fancast towards a national audience consuming
mainstream media. Fancaster's initial
target audience was male sports fans ages 18-35. What, those guys don’t consume mainstream
media? As far as I can tell, that’s who
mainstream media is for, and that group is at least a
subset of the “mainstream media” set.
But Fancaster argued that it was targeting male and female fans of
sports, music, movies, social issues, politics and entertainment generally,
without record support for that. The
court also found that the parties also used vastly different marketing
channels: Comcast bought ads in mainstream print publications and on TV
channels distributed on Comcast, while Fancaster used local TV channels in
Sioux Falls, SD, and Sioux City, IA; radio stations in Charleston, SC; and
flyers and handbills. Comcast’s TV ads
didn’t air in those cities. They both
used the internet, but that’s not enough to constitute overlapping marketing
channels. Moreover, while Comcast made
substantial use of the internet in marketing, most of Fancaster’s marketing was
not geared in that direction. Krueger
marketed Fancaster on sports-oriented websites and websites of certain local
pubs, while Comcast bought banner ads on Comcast.net and other sites foucsed on
popular TV and movies, such as TVGuide.com, as well as keyword ads for specific
TV shows and terms such as "watch TV shows online."
Actual confusion/length of time without actual
confusion. Three years and two months of
Fancast.com produced no evidence of actual confusion. A former business partner of Krueger believed
Fancaster was related to Comcast, but he’d never visited fancaster.com and
apparently was unfamiliar with Fancast, so the court dismissed this as an
anomaly.
Fancaster offered several videos in which people prompted to
say “You’re watching fancaster dot com” say things such as “You're watching
fancast dot com," "It's Comcastic tonight," "Thanks for
watching Fancast?", and "I'm here with fancast dot com." But the record didn’t identify who these
people were or the circumstances of taping, or whether they’d ever visited the
parties’ sites. (Is the latter important? Do they only have to be likely
consumers? Does it matter if they go
home and look in vain for their videos to show up on fancast.com and thus never
become the proud participatory fans of fancaster.com’s desires who send links
to all their friends?) Confusion
resulting from carelessness, indifference, or ennui is insufficient. Plus, the second Poret survey weighed against
finding confusion. This weighed heavily
in Comcast’s favor.
No likely confusion.
The court also thought Fancaster didn’t prove any
entitlement to corrective advertising damages. There wasn’t any evidence of damage to the
Fancaster mark.
Cybersquatting: Comcast didn’t address the ACPA claim in its
opening brief, and addressing it in the reply brief was insufficient (and
improper). Hard to see how a renewed
motion for summary judgment would fail, though, since the motion was denied
without prejudice.
The court then turned to the counterclaims. Fraud on the PTO: Comcast alleged that it
suffered harms from two intentionally false statements to the PTO: First,
Krueger’s 1988 declaration that he’d adopted and was using the Fancaster mark
for communications and/or broadcasting services. Second, Krueger’s 1994 affidavit
that he was using the mark in commerce in connection with the broadcasting
services that were stated in the registration, and had been doing so for five
consecutive years. Comcast argued that
the uses were "mere preparation," "demonstrations,"
"testing," or "marketing presentations" rather than bona
fide use.
The court found this argument “tenuous.” In
1988, a single “token use” would suffice (though this was soon thereafter changed
by statute). Moreover, Krueger
introduced evidence of significant commercial and promotional actions in
connection with Fancaster, both before and after registration. Comcast needed clear and convincing evidence both
that none of the preregistration uses constituted even token use and that
Krueger knew or should have known that his uses wouldn’t qualify.
Krueger proffered evidence of: a February 1987 play-by-play
broadcast using the Fancaster mark to observers of a motorcycle race;
broadcasts in 1987 to observers equipped with Fancaster branded receivers at
football games in Sioux City, IA, Worthington, MN, and the University of Kansas;
a weather broadcast from a hot air balloon in the spring of 1988; the sale of
Fancaster branded radios in July of 1988; and the transmission of a prerecorded
program to individuals using Fancaster branded radios at Lake Okoboji, IA. After
the application, Krueger continued similar activities, and even produced
karaoke shows under the mark.
Comcast raised legal and factual questions about each of
these uses, but the court wasn’t going to get mired in the details. It was undisputed that Krueger “engaged in
significant commercial and promotional activity involving the Fancaster mark
over the course of many years.” Even if
Comcast managed to kick each one out on a technicality, “either because they
were mere demonstrations, or involved sales of products other than broadcast
services or communication,” it offered no evidence from which a jury could
conclude that Kreuger had the requisite mental state. “A lay businessman who spends years of his
life selling branded radios, performing branded broadcasts, and vigorously
promoting additional businesses under a given mark would have no obvious reason
to suspect that his significant efforts do not constitute ‘use in commerce.’”
Comcast argued that Krueger’s intent was shown because he
submitted blank letterhead and envelopes in connection with his combined affidavit of use and incontestability because
he’d been told that letterhead was insufficient in previous communications with
the PTO. The court found this fact to
prove nothing. Even if he knew this was
insufficient evidence of use, that doesn’t show knowledge that the underlying
statements concerning use were false. (I
imagine that this conclusion would be different without all that use-like
activity; if he had letterhead and nothing else, it would be easier to infer
intent.) Moreover, the PTO actually
accepted the letterhead and envelopes. “Comcast's
real complaint is not with Mr. Krueger's submission to the PTO, but with the
PTO's decision to accept the-undeniably flimsy-evidence in approving the incontestability
application.” Maybe Krueger only had
limited success marketing his service, but the record showed that he kept
trying to build the brand.
Summary judgment for Fancaster on this claim. Comcast also
sought a declaratory judgment of cancellation, which was also dismissed on the
same rationale.
Cybersquatting: The court found jury questions sufficient to
preclude summary judgment on several aspects of Comcast’s ACPA counterclaim, including—appallingly—whether
Fancast was famous. While the court
concluded that “[t]here is ample evidence of ‘distinctiveness’ and ‘fame’ to
send the issue to a jury,” the latter can’t seriously be in play once attention
is given to the question.
What was clear was that Krueger registered dozens of
websites containing the word “fancast,” differing from the official Fancast.com
only in their extensions. These were
identical or confusingly similar to Comcast’s domain name.
Several of the factors listed in the statute weighed in
favor of bad faith: the domain names were identical to Comcast’s heavily
promoted website; plaintiffs had no prior registration for Fancast and had
never offered products or services bearing that mark. They used the domains to redirect traffic to
fancaster.com or used “parked” ad pages, rather than conducting business using
them. Plaintiffs argued that they were
entitled to the safe harbor for people who believe and have reasonable grounds
to believe that their uses were fair or otherwise lawful. Given their valid
registration for Fancaster, they argued that they had an objectively reasonable
belief that they could fairly/lawfully register the domain names at issue. Moreover, they argued that their registration
of various “fancast” websites before Fancast.com was active precluded any
finding that subsequent registration violated ACPA.
The court found these arguments disingenous. Comcast bought fancast.com and filed an application
with the PTO for Fancast in August 2006, and Krueger began registering large
numbers of “fancast” domains almost immediately thereafter. While the site wasn’t
officially launched for public use until later, “Mr. Krueger does not
actually claim that he was unaware of Comcast's purchase, registration, or
plans to use the fancast.com domain name to heavily promote services sold under
the FANCAST mark. Indeed, he explicitly withdrew prior statements to that
effect.” His timing and unwillingness to
deny knowledge “is itself highly suggestive of intent.” That was enough to get to a jury.
The court also dealt with Comcast’s laches and acquiescence
defenses as applied to Fancaster’s remaining ACPA claim. Both would require a showing that Comcast
acted in reliance on its belief that Fancaster wouldn’t enforce its rights and
would be prejudiced if Fancaster were allowed to sue now. Comcast argued that Fancaster waited 14 months
before filing suit, that a jury could infer acquiescence from its November 2006
letter approving the Fox SportsNews Fancaster segment, and that Comcast
suffered business uncertainty arising from the lawsuit.
The court found that there was no evidence that Comcast relied either on the
November 2006 letter or on Fancaster’s delay in bringing suit. Without reliance, there was no prejudice and
the laches and acquiescence defenses were thus stricken.
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