Monster, Inc. v. Dolby Laboratories Licensing Corp.
920 F. Supp. 2d 1066
N.D. Cal.2013Background
- Monster filed an operative FAC seeking declaratory relief that Monster Headphone Mark does not infringe Dolby’s Dolby Headphone Mark on grounds of no likelihood of confusion, no unfair competition, and abandonment; Dolby answered with counterclaims for federal trademark infringement and unfair competition; Monster asserted a defense that using headphones as a design element is generic/aesthetically functional; Court held a hearing on December 18, 2012; Court denied Monster’s Summary Judgment motion and granted Dolby’s Partial Summary Judgment on naked licensing and aesthetic functionality.
- Dolby asserted counterclaims; Monster answered with an affirmative defense against likelihood of confusion; the case involved extensive Sleekcraft analysis and trademark-ownership issues; evidence included survey discussions and licensing practices; court addressed whether the mark is incontestable and the strength thereof.
- Court analyzed Sleekcraft factors, noting two factors were conceded by both sides (proximity of goods, marketing channels, likelihood of expansion), and that actual confusion was absent, but a triable issue remained on several factors.
- Court considered Monster’s naked licensing claim, ruled evidence insufficient for abandonment, and granted Dolby partial summary judgment; court rejected Monster’s aesthetic functionality defense as disallowed by Ninth Circuit law.
- Court concluded that Monster’s motion for summary judgment was denied, while Dolby’s motion for partial summary judgment on naked licensing and aesthetics was granted; decision emphasized the mark’s overall protectability and likelihood of confusion questions to be decided by a jury.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion under Sleekcraft | Monster argues no likelihood of confusion | Dolby argues likelihood of confusion exists | Triable issue; not resolved in Monster’s favor |
| Strength of the Dolby mark | Monster claims mark is weak/descriptive | Dolby contends mark is strong and incontestable | Triable issue; jury could find strength supports confusion |
| Naked licensing | Monster asserts Dolby failed to police licensees, abandoning rights | Dolby maintains adequate quality control; no abandonment | Granted in Dolby’s favor; naked licensing not proven at summary judgment |
| Aesthetic functionality | Mark’s headphone design is generic/aesthetically functional | Composite mark remains protectable despite generic elements | Granted in Dolby’s favor; anti-dissection rule bars the defense |
| Abandonment and registration status | Monster seeks abandonment argument to invalidate rights | No abandonment shown given control measures | Not granted as a standalone issue; focus remains on likelihood of confusion |
Key Cases Cited
- GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) (importance of the mark as a whole over individual elements)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (Sleekcraft factors for likelihood of confusion)
- Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (U.S. 1985) (expansion and related market considerations in confusion analysis)
- GoTo.com, Inc. v. GoTo.com, 202 F.3d 1190 (9th Cir. 2000) (composite mark strength and overall impression)
- M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073 (9th Cir. 2005) (evidence weight in summary judgment for confusion)