Asparagus + salmon is scene a faire; plaintiff's keyword buys hurt it in confusion analysis

Hearthware, Inc. v. E. Mishan & Sons, Inc., 2012 WL 3309634 (N.D. Ill.)

Hearthware owns the NU WAVE mark for halogen ovens (registered as NuWave Pro Infrared Oven), while Mishan used Super Wave (also registered) for competing products.  Hearthware sued for copyright infringement, violation of the Lanham Act, and related state law claims. 

A halogen oven/infrared oven/convection oven is “a portable cooker that uses energy from a halogen heat source located in the cooker's lid.”  A fan circulates the hot air for even cooking, while an infrared element emits heat that cooks the food from the inside out.  A halogen oven can brown or crisp foods, unlike a microwave, and is more movable and fast than a conventional oven.

Hearthware alleged copyright infringement in two infomercials, one from 2008 and one from 2010, a “moderately updated” version of the first, but the court focused on the 2010 version because the parties didn’t distinguish them.

The NuWave infomercial is a half-hour long.  It

opens with a flurry of incentives for potential buyers, including a two-year warranty and free items such as a blender/food processor. The product's benefits are summarized and then revisited by an upbeat host, who presents the product with the assistance of a “TV Cooking Expert.”  The two hosts energetically sample food cooked in the NuWave oven and explain how the product may improve the lives of buyers. This presentation is frequently interrupted by enthusiastic testimonials, demonstrations, and reminders as to the details of the bonus-laden offer.  The infomercial is rife with images of different types of food cooking illustrated with time-lapse photography.

As for Mishan aka Emson, it sells many products, including some licensed to use the Sharper Image trademark, subject to licensing requirements including product approval and other quality control provisions.  The Sharper Image didn’t engineer the Super Wave oven and doesn’t provide its warranty or money-back guarantee.  Emson registered “Super Wave” as a trademark, and marketed its competing product as the the Sharper Image Super Wave Oven, using the Sharper Image mark prominently on packaging and in ads.  It produced a competing infomercial:

No actual footage from the NuWave infomercial is included in the Super Wave infomercial but the competing infomercials share a number of similarities. Both show many of the same foods being prepared and use time-lapse photography to demonstrate the cooking process. Both suggest their respective products may be used in a recreational vehicle (“RV”), a dorm, or on a boat. Both feature a host knocking frozen food against a hard surface to demonstrate that it is frozen. The hosts are chipper, the testimonials enthusiastic, and the virtues of the product emphatically conveyed. The Sharper Image is mentioned dozens of times in the Super Wave infomercial. The Super Wave infomercial notes that the Super Wave oven is the result of “thirty-two years of The Sharper Image design ingenuity” and that the Super Wave's warranty and money-back guarantee are provided by The Sharper Image.

The court first analyzed Hearthware’s copyright infringement claim.  Along with the similarities noted above, both “feature demonstrations of food cooking, including many of the same foods (in particular, salmon cooked at the same time as asparagus); …note that the ovens are able to broil, roast, grill, bake, barbecue, steam, dehydrate, and air fry; … use similar words to describe the abilities of the free blenders that come with the products; [and] [t]he Super Wave infomercial touts ‘tri-cooking technology’ while the NuWave infomercial promises ‘triple-combo cooking power.’”  A potentially important procedural note, at least for those arguing about idea/expression or the extrinsic test: the court refused to consider about thirty additional alleged similarities, including “the presence of a male and a female host, the hosts hugging upon greeting, the cooking of a sixteen-pound turkey, and the use of testimonials,” because Hearthware didn’t identify them in response to Mishan’s interrogatories requesting identification of all words, phrases, imagery, and actions alleged to be identical or substantially similar to the NuWave infomercials.  As a result, Mishan’s discovery and summary judgment motion “understandably focused on similarities alleged in the complaint and in response to its contention interrogatories. For example, in arguing for the application of the scènes à faire doctrine, Mishan presents a chart addressing each of the similarities alleged in the complaint. Hearthware may not add new claims after the motion for summary judgment was filed without leave of court.”  How does this square, if at all, with the idea that there can be similarity in “look and feel” or intrinsic similarity?

As for the similarities the court did consider, the court agreed that they were unprotectable scènes à faire. Among other things, Mishan produced evidence that these similarities were “commonplace in the world of halogen oven infomercials.”  In fact, for each element allegedly copied, Mishan presented a list of infomercials that used it before Hearthware did.  For example, “[n]o less than eight previous infomercials demonstrate food cooking and Hearthware’s infomercials are actually only the third and fourth to specifically show salmon and asparagus cooked together.”  The court concluded that these similarities were, “as a practical matter, indispensable or at least standard in presenting a halogen oven infomercial.”  Since Hearthware didn’t identify copying of “any new or novel manners of presenting these commonplace elements” or copying of footage, its claim failed.  The specific words used to describe the NuWave’s features and the free blender/food processor with purchase were also unprotectable: “short, purely descriptive phrases concerning a product’s abilities do not receive protection.  While ‘tri-cooking technology’ may bear a resemblance to ‘triple-combo cooking power,’ both are clearly descriptive phrases that remind viewers that halogen ovens cook in three different ways.” 

Allegations of direct copying couldn’t fix the fundamental problem: the producer of Mishan’s infomercial stated that the SuperWave infomercial “[w]ould be better if there were things more substantive like Nuwave [sic],” in terms of freebies, and Mishan’s CEO responded that “All freebies should be in the tease Same [sic] like Nuwave [sic],” but no reasonable jury could find this to be evidence of direct copying.  Even if the NuWave infomercial inspired the Super Wave infomercial, Mishan was free to appropriate uncopyrightable elements.

Mishan also won summary judgment on the trademark infringement claims.

The court found that similarity clearly favored Mishan.  Except for the term “wave,” which Hearthware’s registration disclaimed, the coloring, fonts, packaging, and overall presentation differed, including prominent presentation of the Sharper Image mark on Mishan’s box and in its marketing.  “Despite the shared use the term ‘wave,’ the presentation of the marks is entirely different.”  The products were of course similar, as were the channels of sales and marketing. 

Hearthware argued that its mark was strong because it had won many awards for its infomercials, but the court found this to shed “no light” on strength, nor did the fact of the registration.  Without further evidence, the court couldn’t find any particular level of strength.  Also, “wave” as used on the products was merely descriptive.  A number of third-party halogen ovens, including FlavorWave and QuickWave, also used the term.  Further, at least sixteen other non-halogen ovens, microwave ovens, and toaster ovens had registered trademarks using “wave.”  Strength strongly favored Mishan.

Mishan also submitted a survey of approximately 300 respondents likely to purchase a halogen oven through an infomercial. Both cells saw a shortened NuWave infomercial; the test group saw a shortened Super Wave infomercial and the control saw a shortened FlavorWave infomercial.  In response to the question whether they thought the products were produced by companies that were either the same or affiliated, 59% in the control group thought the were produced by the same or affiliated companies, while only 42% thought that in the test group.  

Hearthware had no evidence of actual confusion, though it argued that it had 159 audio recordings of confused consumers who called its customer service center.  The court disagreed that these were evidence of confusion.  Mishan’s expert conducted a content analysis and found that they didn’t show actual confusion; though this was contested, the court concluded that nothing in the record would “support a reasonable inference that these callers were ‘confused’ regarding the marks.”  Among other things, these consumers weren’t calling to place orders.  One Super Wave owner initially called the Sharper Image number but was incorrectly connected to Hearthware’s call center, but this didn’t suggest consumer confusion, but rather mistake by the Sharper Image call center.  In a quarter of the calls, the expert couldn’t determine which oven the caller actually had; as for clear Super Wave customers, the number of them calling the NuWave line was de minimis, “in light of the high number of callers correctly calling the number, as well as other factors unrelated to confusion or due to Hearthware's own actions.”  The court pointed out that Hearthware bought “Super Wave” and “Sharper Image” as keywords and “as a result, a Google search for ‘super wave oven’ produced the phone number for NuWave” (emphasis added).  Whoops.  Query: would these customer service calls support Mishan’s potential infringement claim against Hearthware?

The court also found favorably with respect to Mishan’s intent.  There was no evidence of attempted passing off.  “Super Wave” was the name for innocent reasons: it’s based on the cooking technique and fits with a number of other Mishan Wave products, including the Bacon Wave, Sausage Wave, Chip Wave, Stone Wave, and Omelet Wave, as well as a number of other Mishan Super products, including the Super Sewing Machine, Super Scissors, Super 5 Edge Wipers, and Super Hear.

Given the one-sidedness of the evidence, especially on the three most important factors—similarity of the marks, intent, and actual confusion—summary judgment for Mishan was warranted.  “The only factors that favor Hearthware are product similarity and the area and manner of concurrent use. These factors would apply to any competitors in the same product line, regardless of the likelihood of confusion.”

The remaining claims of false advertising were based on Mishan’s statements that (1) the Super Wave oven is the result of thirty-two years of Sharper Image design ingenuity, (2) the Super Wave oven comes with a five-year Sharper Image warranty, and (3) the Super Wave oven is backed by a sixty-day money-back Sharper Image guarantee.  However, The Sharper Image didn’t engineer the product, nor are the warranty or guarantee provided by The Sharper Image—they come from Mishan.

Mishan argued that there was no literal falsity because “The Sharper Image reviewed and approved the oven, infomercial, packaging, instructions, and warranty cards. In Mishan's view, this oversight ensured that the product and its guarantees were consistent with Sharper Image standards.”  Thus, it stood in The Sharper Image’s shoes.  The court characterized Hearthware’s argument as “simpler,” since The Sharper Image neither designed the oven nor provided the guaranty or warranty, and agreed that a reasonable jury could find these statements literally false.

However, Hearthware still needed to show materiality.  Mishan’s second consumer survey addressed this (though in a very defendant-favorable way, testing recall instead of comprehension directly).  One hundred and fifty-three respondents watched a shortened version of the Super Wave infomercial that included all three allegedly false statements.  When asked which elements appealed to them, 5% mentioned either The Sharper Image or the brand.  Eighty-two percent recalled that there was a warranty, but only 5% mentioned The Sharper Image or the brand when they were asked what they specifically recalled about the warranty.  Eighty-eight percent recalled that there was a money-back guarantee, but none specifically recalled The Sharper Image or the brand.  (If it’s not material, why does Mishan spend so much money and effort on licensing?  Or tout it in the infomercials, as the court emphasized in its confusion analysis?)  The court found that Mishan satisfied its burden to show immateriality, and Hearthware didn’t challenge the survey or submit evidence of its own.  Claims dismissed.

In summary, the court said: “Fierce competition is not the same as unfair competition. Based on the record before the court, the battle between Hearthware and Mishan belongs in the marketplace rather than the courthouse.”