Guthrie Healthcare Systems v. ContextMedia, Inc.
2016 U.S. App. LEXIS 10662
2d Cir.2016Background
- Guthrie Healthcare (Plaintiff) is a regional healthcare system operating hospitals and clinics in the "Twin Tiers" of NY/PA; it owns a registered logo (shield with stylized human figure composed of crescent shapes) used widely in recruitment, advertising, and online.
- ContextMedia/CMI (Defendant) provides digital health content/screens in physician offices nationwide and adopted a logo nearly identical to Guthrie’s shield-and-crescent figure across multiple marks and web/office displays.
- Guthrie sued for trademark infringement under the Lanham Act after discovering CMI’s logo; district court held a bench trial, found likelihood of confusion within Guthrie’s geographic service area and issued a limited permanent injunction prohibiting CMI’s use in that area but allowed Internet and out-of-area use.
- The Second Circuit affirmed liability (likelihood of confusion) based on Polaroid factors: extraordinary similarity of marks, related subject matter, geographic overlap, and Guthrie’s mark strength and buyer unsophistication.
- The Second Circuit held the district court misapplied the remedial law by narrowly tailoring the injunction: it vacated as to permitting Internet and broad out-of-area use, expanded the injunction to include two additional counties, and remanded to fashion an injunction that protects Guthrie and the public while weighing equitable considerations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether CMI’s marks infringe Guthrie’s registered trademark (likelihood of confusion) | Guthrie: marks are virtually identical and used in related healthcare contexts; confusion is likely/probable | CMI: differences in text and use of ContextMedia name, and lack of proven actual confusion, defeat infringement | Court: infringement found—likelihood of confusion established (similarity, proximity, strength, consumer sophistication favor Guthrie) |
| Proper geographic/scope limits of injunctive relief (including Internet) | Guthrie: injunction must prevent foreseeable confusion beyond local service area, including Internet and additional counties | CMI: injunction should be limited to areas with proven probability of confusion; Internet/out-of-area use should remain allowed | Court: district court erred; injunction expanded to add Tompkins & Schuyler counties and remanded to consider broader restrictions (including Internet) under equitable factors |
| Role of defendant’s intent/bad faith in remedy | Guthrie: CMI failed to search trademarks and could have avoided infringement; equities favor broader relief | CMI: no bad faith; designer denied copying; recent adoption limits hardship of stricter injunction | Court: no finding of bad faith required for liability; equitable considerations (lack of trademark search, minimal hardship to CMI) support broader injunction |
| Whether absence of actual confusion defeats relief | Guthrie: actual confusion not required; likelihood suffices | CMI: lack of actual confusion, limited overlap, and specialized viewers reduce likelihood | Court: actual confusion not required; lack of direct evidence does not undermine strong likelihood-of-confusion showing |
Key Cases Cited
- Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) (sets out the Polaroid factors for likelihood-of-confusion analysis)
- Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959) (permits narrow geographic injunctions where senior user has no expectation to enter defendant’s area)
- Starter Corp. v. Converse, Inc., 170 F.3d 286 (2d Cir. 1999) (injunctions must be narrowly tailored to actual violations and avoid unnecessary burdens)
- Patsy's Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir. 2003) (courts may place proven infringers in a position less advantageous than innocent parties to prevent future infringement)
- Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (review standards for Polaroid factor findings and balancing in trademark disputes)