Boom! Descriptive fair use defense can't be decided on motion to dismiss

Tovey v. Nike, Inc., 2012 WL 7017821 (N.D. Ohio)

Showing that “use as a mark” is a flexible but occasionally very thin reed, the magistrate judge here recommended denial of Nike’s motion to dismiss many of Tovey’s trademark claims.  Tovey pled that he attended class at Hondros College with LeBron James’ girlfriend, Brinson, when James had a sponsorship agreement with Nike.  He conceived of a line of sports clothing with the tagline, “BOOM YO” and marketed around “game changing sports moments.”  A “game changing event” would be shown on one side of each item of clothing with the word “BOOM” on that side.  The other side would show an athlete enjoying that event, along with Yo! He shared his idea with Brinson, hoping to get Brinson and James to work with him and get Nike to pay royalties to use “BOOM YO.”

Tovey filed an ITU application for BOOM YO! for clothing in 2005, which was issued in 2009.  In 2010, James posted “LeBron BOOM! SAY BOOM—www.youtube.com—BOOM! This is what epic, gamechanging moments look like. Experience them now atNike.com” on his Facebook page.  This linked to a video whose page included the text, “BOOM! This is what epic, game-changing moments look like. Experience them now at Nike.”  Tovey alleged that Nike rolled out a campaign employing the same concept of game-changing moments he discussed with Brinson, and his friends allegedly asked if he’d made an agreement with Nike.  The Nike website said, “WHAT'S YOUR BOOM MOMENT? A BOOM moment is a game changing play. It's a bottom of the ninth grand slam. It's a fourth quarter pick six. Make yours known ....”

Nike’s ad firm, WK, said of the campaign:

“Boom” celebrates the epic, game-changing moments in sport. Moments that are so over the top that all we can say is “Boom.” You've probably heard it before and even used it yourself. The word “boom” has become part of the fabric of popular sports culture. It was time to have some fun. Nike's Boom campaign features a bevy of Nike elite athletes and coaches. . . . along with high school football and volleyball athletes.

Adweek described the ads as having “the simple theme of ‘Boom!’” Nike used “Boom” on clothing and in a smartphone app, in various formats, “such as behind a flame above Manny Pacquiao's initials, behind the liberty bell on a Phillies' shirt, arranged around two crossed bats on a Texas Rangers t-shirt, in yellow lettering on a hoodie, behind two opposing helmets below the Tostitos' logo on a Stanford–Virginia Tech bowl t-shirt, and in split block lettering above ‘AMPLIFY YOUR TRAINING’ on an advertisement for a smartphone application.” 

Tovey alleged confusion with his clothing line, along with trademark counterfeiting.  The judge recommended dismissal of his counterfeiting claim, because Congress didn’t intend confusion to count as counterfeiting, which only happens when marks are “substantially indistinguishable.”  Because Tovey didn’t allege that Nike mimicked a design or color idiosyncratic to “Boom Yo,” and because the phrases “Boom” and “Boom Yo” weren’t, as a matter of law, substantially indistinguishable, Tovey failed to plead counterfeiting.

However, the judge recommended against dismissing the basic infringement claim, despite Nike’s arguments about trademark use/fair use.  Even if Tovey didn’t state a plausible claim based on the use of “Boom” in advertising, he did based on Nike’s use of “Boom” on clothing.  Neither party claimed that Tovey’s use was uniformly characterized by a particular style of lettering, colors, etc.  Thus, it was plausible that Nike’s use would create the “possibility” (not “likelihood”?) of confusion by an unwary consumer.  Whether the use of the swoosh mark would distinguish Nike’s goods from Tovey’s was a question of fact.  Anyway, Tovey argued that the swoosh gave the impression that Nike was authorized to use Tovey’s trademark, which would be infringement by sponsorship confusion.

If a defendant isn’t using a mark to identify the source of its goods, trademark law doesn’t apply.  Nike argued that it was using Boom in a non-trademark way, but rather descriptively.  Tovey alleged facts sufficient to plausibly claim that Nike was using Boom as a mark on clothing, because the use occurred “without any accompanying context that would indicate Nike's intent in printing the word on the clothing.”  Likewise, as to false designation of origin, “[w]hether defendants' depictions are merely ‘descriptive’ or are meant to suggest Tovey's trademark is an issue for the finder of fact.”

As for fair use, that’s a defense that can’t be raised on a motion to dismiss.  In a footnote, the judge flailed wildly at trademark use (as so many do): use in a non-trademark way (in its “primary or descriptive sense”) and fair use are similar, but “legally distinct.”  The central issue of the former is whether the use creates confusion (making it mysterious how this could be a situation in which trademark law didn’t apply), whereas fair use asks whether a defendant’s use should be permitted despite confusion.  “If a defendant is not using the term to identify the source of its goods, then it is presumed that there is no likelihood of confusion, and there is no need for the court to apply the eight-factor analysis.”  By contrast, fair use can occur along with some degree of confusion.  (Note the undertheorized relationship between a presumption—rebuttable? Irrebuttable? Who knows?—and a defense that allows some degree of confusion.)

Tovey’s reverse confusion claim wasn’t a separate cause of action but just a theory of liability.  It was dismissed as a separate count, though remained available as an argument.  His secondary liability claims didn’t fare so well.  His pleadings weren’t clear on who was supposed to be directly liable and who contributorily so.  Plus, he failed to plead knowledge and specific conduct that contributed to the infringement—he merely alleged willful blindness/lack of reasonable care.  The judge recommended dismissal; leave to amend should require better identification of the defendants, their knowledge, and their conduct contributing to infringement.  Similarly, with vicarious liability, Tovey failed to plead specific facts going to joint ownership or control. “[V]ague, puffery-like references to a ‘partnership’ between ... [parties are] not enough to support vicarious liability,” and that was all Tovey had.

Because the federal trademark claims survived, so did the state ones, along with unjust enrichment.  On Tovey’s tortious interference with prospective business relations/common law conspiracy claims, the judge recommended dismissal for failure to allege a contract that wasn’t consummated or any concrete business expectancy that he lost.