Tuesday, May 26, 2020

Descriptive fair use on a motion to dismiss

Outhouse PR, LLC v. Northstar Travel Media, LLC, No. 19-cv-05979-NRB (S.D.N.Y. May 15, 2020)

A motion to dismiss granted on descriptive use: impressive! Outhouse is a digital media company that runs womenyoushouldknow.net, which “posts editorial content, such as interviews and profiles of women with various backgrounds,” and it also posts links to its content on social networking platforms. It has a registration for WOMEN YOU SHOULD KNOW for: (1) online social networking services and (2) entertainment services, including provision of continuing segments featuring news and commentary delivered by the internet.
Outhouse registration

as shown on website

Northstar publishes Business Travel News. In 2016, it published an article, “2016 WOMEN YOU SHOULD KNOW” on its website, featuring this banner as well as “photos and biographical information of some women participating in the travel industry”:

In 2017, it published “2017 WOMEN YOU SHOULD KNOW” featuring a different set of women and this banner:

Outhouse sent a C&D, to which BTN didn’t respond. In 2018, BTN published “2018 WOMEN YOU SHOULD KNOW” with another set of women and a banner, which was also posted to BTN’s Facebook and Twitter pages.  

Outhouse sent two more C&Ds and a proposed complaint in 2019; BTN responded that Outhouse had no viable claim and that it would seek its attorneys’ fees and costs in the event of a suit. It then published “2019 WOMEN YOU SHOULD KNOW” with another set of women and a banner, which it also shared on its Facebook page:

On the same page, it created “Check Out Other Years” tab with a list of buttons that would redirect the readers to BTN’s “WOMEN YOU SHOULD KNOW” article for a particular year.

Despite the “extremely lenient pleading standard,” the court was skeptical that confusion was adequately pled, but it didn’t matter because this was descriptive fair use.

Use other than as a mark: The articles were published on a website that displayed a sizable and conspicuous “BTN” masthead at the top to identify its source:

The social media pages also unambiguously identified BTN as the source:

The “ways by which defendant presented” the phrase further undermined an intent to indicate source. The visual presentations differed, including the dominant “making connections” in 2016, and the size was smaller than BTN’s masthead. The 2019 version was “BUSINESS TRAVEL NEWS’ 2019 WOMEN YOU SHOULD KNOW,” suggesting an intent to identify BTN as the source.  

You might wonder whether, as Outhouse argued, Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013), warrants a different conclusion. In that case, Kelly-Brown “plausibly alleged that Oprah was attempting to build a new segment of her media empire around the theme or catchphrase ‘Own Your Power,’” particularly that “defendants were trying to create, through repetition across various forms of media, … association between Oprah and the phrase ‘Own Your Power.’” True, this case involved one time per year for four years, but it was different: the alleged uses “do not even remotely approach the level of ‘wide-ranging and varied’ use of the trademark at issue by the defendants in Kelly-Brown,” which included various events and not just articles.  Use in the headline of articles under a prominent masthead display of its own mark “falls far short of establishing an effort by defendant to create an association between the Mark and defendant that would serve as a symbolic identifier of any article that contains the phrase ‘WOMEN YOU SHOULD KNOW.’”

Outhouse argued that In re Scholastic, Inc., 23 U.S.P.Q.2d 1774, 1992 WL 215313 (T.T.A.B. 1992), supported its claim. That proceeding found that the phrase “THE MAGIC SCHOOL BUS” could be registered as a trademark despite that the phrase constituted only a portion of the title of each book in a series. But registrability determinations are different. (I see why Outhouse cited this; the real question is whether there is any normative limit on claims that the defendant is using a term “as a mark” even if book series and even newspaper column titles are registrable. Rogers v. Grimaldi has a title-v-title exception, but it’s actually not clear to me that the Second Circuit would (or should) consider “website title” to be the same thing as “article title” for purposes of applying that exception. As my reference to Rogers suggests, lurking First Amendment concerns support the court’s application of this defense on a motion to dismiss.)

Is defendant’s use descriptive? Yes. Ridiculously, Outhouse argued that BTN’s use wasn’t descriptive because “no reader of defendant’s articles is under an obligation to know the women presented therein.” The court pointed out what “should” reasonably means.

Good faith: This is about whether defendant intended to create confusion, but, given the nature of the question, “the same contextual considerations that apply in considering the likelihood of confusion and assessing the similarity of two marks— namely, the overall context in which the marks appear and the totality of factors that could cause consumer confusion—also apply to a court’s analysis of good faith in the context of fair use defense.” Assuming the truth of the allegations in the complaint, there was good faith, given the literal descriptiveness of the use and conspicuous BTN masthead. Moreover, the phrase appeared in “a font and shape that are completely dissimilar to the plaintiff’s presentation of it to the public.”

The repeated use of the phrase and knowledge of Outhouse’s ownership weren’t evidence in support of an inference of bad faith. Given the descriptive nature of the use, repetition was insufficient to infer bad faith. (Kelly-Brown didn’t refer to repetition in its reasoning on bad faith, and without use seeking to create a source-related association between the phrase and the defendant, there was no reason to infer bad faith.) “Inferring bad faith from descriptive uses of word mark for being repeated would be inconsistent with the fundamental framework of trademark law.” Nor did knowledge of Outhouse’s ownership support a bad faith finding. “Failure to perform an official trademark search . . . does not, standing alone, prove . . . bad faith,” and “simply sending a cease-and-desist letter cannot create trademark rights that do not otherwise exist and, therefore, cannot by itself constitute a basis for finding bad faith.”       

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