AVERY DENNISON CORPORATION, Plаintiff-Counter-Defendant-Appellee, v. JERRY SUMPTON, Individually d/b/a Free View Listings Ltd.; FREE VIEW LISTINGS, LTD., an Unknown Entity, Defendants-Counter-Claimants-Appellants.
No. 98-55810
UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT
Argued and Submitted June 8, 1999. Decided August 23, 1999
189 F.3d 868
G. Gervaise Davis, III, Davis & Schroeder, Monterey, California, for the defendants-counter-claimants-appellants.
Adrian Mary Pruetz (Argued), and David W. Quinto (On the Briefs), Quinn Emanuel Urquhart Oliver & Hedges, Los Angeles, California, for the plaintiff-counter-defendant-appellee.
Appeal from the United States District Court for the Central District of California; J. Spencer Letts, District Judge, Presiding. D.C. No. CV-97-00407-JSL.
Before: Dorothy W. Nelson, Stephen Reinhardt, and Stephen S. Trott, Circuit Judges.
TROTT, Circuit Judge:
Jerry Sumpton and Freeview Listings Ltd. (together, “Appellants“) appeal an injunction in favor of Avery Dennison Corp., entered after summary judgment for Avery Dennison on its claims of trademark dilution under the Federal Trademark Dilution Act of 1995,
We have jurisdiction under
Background
We are the third panel of this court in just over a year faced with the challenging task of applying centuries-old trademark law to the newest medium of communication -- the Internet. (See Brookfield Communications, Inc. v. West Coast Ent. Corp., 174 F.3d 1036 (9th Cir. 1999), and Panavision Int‘l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).) Although we attempt to set out the background facts as clearly as possible, the interested reader may wish to review some of the following sources for a morе complete understanding of the Internet: Brookfield, 174 F.3d at 1044-45; Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227, 1230-32 (N.D. Ill. 1996); and Marshall Leaffer, Domain Names, Globalization and Internet Commerce, 6 Ind. J. Global Legal Stud. 139, 139-46 (1998).
Two communicative functions of the Internet are relevant to this appeal: the capacity to support web sites and the corollary capacity to support electronic mail (“e-mail“). A web site, which is simply an interactive presentation of data which a user accesses by dialing into the host computer, can be created by any user who reserves an Internet location -- called an Internet protocol address -- and does the necessary programming. Because an Internet protocol address is a string of integer numbers separated by periods, for example, <129.137.84.101>, for ease of recall and use a user relies on a “domain-name combination” to reach a given web site. The registrar of Internet domain names, Network Solutions, Inc. (“NSI“),1 maintains a database of registrations and translates entered domain-name combinations into Internet protocol addresses. When accessing a web site, a user enters the character string <http://www.>,2 followed by the reserved domain-name combination. The domain-name combination must include a top-level domain (“TLD“), which can be <.com>, <.net>, <.org>, <.gov> or <.edu>, among others, although some, like <.gov> and <.edu>, are reserved for speсific purposes. The combination also includes a second-level domain (“SLD“), which can be any word not already reserved in combination with the TLD.3 Once a domain-name combination is reserved, it cannot be used by anybody else, unless the first registrant voluntarily or otherwise relinquishes its registration.
A web site can be programmed for multiple purposes. Some merchants maintain a form of “electronic catalog” on the Internet, permitting Internet users to review products and services for sale. A web site can also be programmed for email, where the provider licenses e-mail addresses in the format <alias@SLD.TLD>, with <alias> selected by the e-mail user. A person or company maintaining a web site makes money in a few different ways. A site that aids in marketing goods and services is an asset to a merchant. E-mail providers make money from licensing fees paid by e-mail users. Money is also made from advertising and links to other web sites.
Facts
Sumpton is the president of Freeview, an Internet e-mail provider doing business as “Mailbank.” Mailbank offers “vanity” e-mail addresses to users for an initial fee of $19.95 and $4.95 per year thereafter, and has registered thousands of domain-name combinations for this purpose. Most SLDs that Mailbank has registered are common surnames, although some represent hobbies, careers, pets, sports interests, favorite music, and the like. One category of SLDs is titled “Rude” and includes lewd SLDs, and another category, titled “Business,” includes some common trademark SLDs. Mailbank‘s TLDs consist mainly of <.net> and <.com>, but some registered domain name combinations, including most in the “Business” and “Rude” categories, use the TLD <.org>. Mailbank‘s surname archives include the domain-name combinations <avery.net> and <dennison.net>.
Avery Dennison sells office products and industrial fasteners under the registered trademarks “Avery” and “Dennison,” respectively. “Avery” has been in continuous use since the 1930s and registered since 1963, and “Dennison” has been in continuous use since the late 1800s and registered since 1908. Avery Dennison spends more than $5 million per year advertising its products, including those marketed under the separate “Avery” and “Dennison” trademarks, and the company boasts in the neighborhood of $3 billion in sales of all of its trademarks annually. No evidence indicates what percentage of these dollar figures apply to the “Avery” or “Dennison” trademarks. Avery Dennison maintains a commercial presence on the Internet, marketing its products at <avery.com> and <averydennison.com>, and maintaining registrations for several other domain-name combinations, all using the TLD <.com>.
Avery Dennison sued Appellants, alleging trademark dilution under the Federal Trademark Dilution Act and
III
Trademark Law
Trademark protection is “the law‘s recognition of the psychological function of symbols.” Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205 (1942). Two goals of trademark law are reflected in the federal scheme. On the one hand, the law seeks to protect consumers who have formed particular associations with a mark. On the other hand, trademark law seeks to protect the investment in a mark made by the owner. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-64 (1995).
Until recently, federal law provided protection only against infringement of a registered trademark, or the unregistered trademark analog, unfair competition. See §§ 32 & 43(a) of the Lanham Trademark Act of 1946, as amended,
Many states, however, have long recognized another cause of action designed to protect trademarks: trademark dilution. Lori Krafte-Jacobs, Comment, Judicial Interpretation of the Federal Trademark Dilution Act of 1995, 66 U. Cin. L. Rev. 659, 660-62 (1998) (discussing the evolution of the dilution doctrine). With the 1995 enactment of the Federal Trademark Dilution Aсt, dilution became a federal-law concern. Unlike infringement and unfair competition laws, in a dilution case competition between the parties and a likelihood of confusion are not required to present a claim for relief. See
IV
Standard of Review
We review the district court‘s grant of a permanent injunction de novo. Erickson v. United States ex rel. Dep‘t of Health & Human Servs., 67 F.3d 858, 861 (9th Cir. 1995). To determine the legality of the injunction, we consider de novo the underlying grant of summary judgment to Avery Dennison and denial of summary judgment to Appellants. See Margolis v. Ryan, 140 F.3d 850, 852 (9th Cir. 1998). Viewing the evidence in the light most favorable to the non-moving party, summary judgment is appropriate if no genuine issues of material fact exist and the moving party is entitled to judgment as a matter of law. Id.
V
Dilution Protection
We now turn to the dilution causes of action at issue in this case, brought under the Federal Trademark Dilution Act and
In Panavision, we held that both the Federal Trademark Dilution Act and
A. Famousness
The district court considered evidence submitted by Avery Dennison regarding marketing efforts and consumer association with its marks and concluded as a matter of law that “Avery” and “Dennison” were famous marks entitled to dilution protection. 999 F. Supp. at 1339. We hold that Avery Dennison failed to create a genuine issue of fact on the famousness element of both dilution statutes.4
Dilution is a cause of action invented and reserved for a select class of marks -- those marks with such рowerful consumer associations that even non-competing uses can impinge on their value. See generally Frank L. Schechter, The Rational Basis for Trademark Protection, 40 Harv. L. Rev. 813 (1927) (proposing a cause of action for dilution); Krafte-Jacobs, supra, at 689-91. Dilution causes of action, much more so than infringement and unfair competition laws, tread very close to granting “rights in gross” in a trademark. See 3 McCarthy, supra, § 24:108. In the infringement and unfair competition scenario, where the less famous a trademark, the less the chance that consumers will be confused as to origin, see AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979), a carefully-crafted balance exists between protecting a trademark and permitting non-infringing uses. In the dilution context, likelihood of confusion is irrelevant. See
Therefore, to meet the “famousness” element of protection under the dilution statutes, “‘a mark [must] be truly prominent and renowned.‘” I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 46 (1st Cir. 1998) (quoting 3 McCarthy, supra, § 24.91). In a 1987 report, which recommended an amendment to the Lanham Act to provide a federal dilution cause of action, the Trademark Review Commission of the United States Trademark Association emphasized the narrow reach of a dilution cause of action: “We believe that a limited category of trademarks, those which are truly famous and registered,5 are deserving of national protection from dilution.” Trademark Review Commission, Report & Recommendations, 77 Trademark Rep. 375, 455 (Sept.-Oct. 1987).
The Federal Trademark Dilution Act lists eight nonexclusive considerations for the famousness inquiry,
- the degree of inherent or acquired distinctiveness of the mark;
- the duration and extent of use of the mark in connection with the goods or servicеs with which the mark is used;
- the duration and extent of advertising and publicity of the mark;
- the geographical extent of the trading area in which the mark is used;
- the channels of trade for the goods or services with which the mark is used;
- the degree of recognition of the mark in the trading areas and channels of trade used by the mark‘s owner and the person against whom the injunction is sought;
- the nature and extent of use of the same or similar marks by third parties; and
- whether the mark was registered . . . on the principal register.
We note the overlap between the statutory famousness considerations and the factors relevant to establishing acquired distinctiveness, which is attained “when the purchasing public associates the [mark] with a single producer or source rather than just the product itself.” First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987). Proof of acquired distinctiveness is a difficult empirical inquiry which a factfinder must undertake, Taco Cabana Int‘l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1119-20 & n.7 (5th Cir. 1991), aff‘d, 505 U.S. 763 (1992), considering factors including:
[1] whether actual purchasers . . . associate the [mark] with [the plaintiff]; [2] the degree and manner of [the plaintiff‘s] advertising; [3] the length and manner of [the plaintiff‘s] use of the [mark]; and [4] whether [the plaintiff‘s] use of the [mark] has been exclusive.
Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 517 (9th Cir. 1989).6 Furthermore, registration on the principal register creates a presumption of distinctiveness -- in the case of a surname trademark, acquired distinctiveness.
Applying the famousness factors from the Federal Trademark Dilution Act to the facts of the case at bench, we conclude that Avery Dennison likely establishes acquired distinctiveness in the “Avery” and “Dennison” trademarks, but goes no further. Because the Federal Trademark Dilution Act requires a showing greater than distinctiveness to meet the threshold element of fame, as a matter of law Avery Dennison has failed to fulfill this burden.
1. Distinctiveness
We begin with the first factor in the statutory list: “inherent or acquired distinctiveness.”
The drafters of the Federal Trademark Dilution Act continued the concern for surnames when adding protection against trademark dilution to the federal scheme. On early consideratiоn of the Act, the report from the Senate Judiciary Committee emphasized: “[T]he committee intended to give special protection to an individual‘s ability to use his or her own name in good faith.” S. Rep. No. 100-515, at 43 (1988). The Federal Trademark Dilution Act imports, at a minimum, the threshold secondary-meaning requirement for registration of a surname trademark.
Avery Dennison maintains registrations of both “Avery” and “Dennison” on the principal register, prima facie evidence that these marks have achieved the secondary meaning required for protection from infringement and unfair competition. See Americana Trading, 966 F.2d at 1287. We reject Appellants’ argument that the distinctiveness required for famousness under the Federal Trademark Dilution Act is inherent, not merely acquired distinctiveness. See
We next consider the fifth and sixth factors of the statutory inquiry: the channels of trade for the plaintiff‘s goods and the degree of recognition of the mark in the trading areas and channels of trade used by plaintiff and defendant.
In Teletech, fame in a narrow market segment was present when the plaintiff showed “that the Teletech Companies may be the largest provider of primarily inbound integrated telephone and Internet customer care nationwide.” 977 F. Supp. at 1409. The defendant was “a contractor providing engineering and installation services to the telecommunications industry,” and maintained the domain-name combination, <teletech.com>. Id. at 1409-10. The court held that the showing on the threshold element under the Federal Trademark Dilution Act was adequate to qualify for a preliminary injunction. Id. at 1413. In Washington Speakers, both the plaintiff and defendant were in the business of scheduling speaking engagements for well-known lecturers. 33 F. Supp. 2d at 490, 503 & n.31 (citing cases). In the instant case, by contrast, Appellants’ sought-after customer base is Internet users who desire vanity e-mail addresses, and Avery Dennison‘s customer base includes purchasers of office products and industrial fasteners. No evidence demonstrates that Avery Dennison possesses any degree of recognition among Internet users or that Appellants direct their e-mail services at Avery Dennison‘s customer base.
3. Use of the Marks by Third Parties
The seventh factor, “the nature and extent of use of the same . . . marks by third parties,”
The record includes copies of five trademark registrations for “Avery” and “Averys,” a computer printout of a list of several businesses with “Avery” in their names who market products on the Internet, and a list of business names including “Avery,” which, according to a declaration submitted by NSI, is a rеpresentative sample of over 800 such businesses. The record also contains a computer printout of a list of several businesses with “Dennison” in their names which market products on the Internet and a list of business names including “Dennison,” a representative sample of over 200 such businesses. Such widespread use of “Avery” and “Dennison” makes it unlikely that either can be considered a famous mark eligible for the dilution cause of action.
4. Other Famousness Factors
Avery Dennison argues that evidence of extensive advertising and sales, international operations, and consumer awareness suffices to establish fame. We agree that the remaining four statutory factors in the famousness inquiry likely suрport Avery Dennison‘s position. Both “Avery” and “Dennison” have been used as trademarks for large fractions of a century and registered for decades. Avery Dennison expends substantial sums annually advertising each mark, with some presumable degree of success due to Avery Dennison‘s significant annual volume of sales. In addition, Avery Dennison markets its goods internationally. See
Avery Dennison‘s marketing reports are comparable to a survey we discussed in Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316 (9th Cir. 1981), proving only the near tautology that consumers already acquainted with Avery and Avery Dennison products are familiar with Avery Dennison. See id. at 1323-24. The marketing reports add nothing to the discussion of whether consumers in general have any brand association with “Avery” and “Avery Dennison,” and no evidence of product awareness relates specifically to the “Dennison” trademark. Although proper consumer surveys might be highly relevant to a showing of fame, we reject any reliance on the flawed reports submitted by Avery Dennison.
Finally, Avery Dennison -- like any company marketing on the Internet -- markets its products worldwide. See
5. Likelihood of Confusion Remains Irrelevant
We recognize that our discussion of the breadth of fame and overlapping market segments begins to sound like a likelihood of confusion analysis, and we agree with Avery Dennison that likelihood of confusion should not be considered under either the Federal Trademark Dilution Act or Business and Professional Code
B. Commercial Use
Addressing the second element of a cause of action under the Federal Trademark Dilution Act, the district court held that Appellants’ registration of <avery.net> and <dennison.net> constituted commercial use. 999 F. Supp. at 1339-40. We disagree.
Commercial use under the Federal Tradеmark Dilution Act requires the defendant to be using the trademark as a trademark, capitalizing on its trademark status. See Panavision, 141 F.3d at 1325. Courts have phrased this requirement in various ways. In a classic “cybersquatter” case, one court referenced the defendants “intention to arbitrage” the registration which included the plaintiff‘s trademark. Intermatic, 947 F. Supp. at 1239. Another court, whose decision we affirmed, noted that the defendant “traded on the value of marks as marks.” Panavision Int‘l, L.P. v. Toeppen, 945 F. Supp. 1296, 1303 (C.D. Cal. 1996), aff‘d, 141 F.3d 1316 (9th Cir. 1998). In our Panavision decision, we considered the defendant‘s “attempt to sell the trademarks themselves.” 141 F.3d at 1325.
C. Dilution
The district court then considered the dilution requirement under both statutes, holding that Appellants’ use of <avery.net> and <dennison.net> cаused dilution, or a likelihood of dilution, of “Avery” and “Dennison.” 999 F. Supp. at 1340-41. We hold that genuine issues of fact on this element of the causes of action should have precluded summary judgment for Avery Dennison.
Two theories of dilution are implicated in this case. First, Avery Dennison argues that Appellants’ conduct is the cybersquatting dilution that we recognized in Panavision. See 141 F.3d at 1326-27. Second, Avery Dennison argues that Appellants’ conduct in housing the <avery.net> and <dennison.net> domain names in the same database as various lewd SLDs causes tarnishment of the “Avery” and “Dennison” marks.
1. Cybersquatting
Cybersquatting dilution is the diminishment of “‘the capacity of the [plaintiff‘s] marks to identify and distinguish the [plaintiff‘s] goods and services on the Internet.‘” Panavision, 141 F.3d at 1326 (quoting the Panavision district court, 945 F. Supp. at 1304). We recognized that this can occur if potential customers cannot find a web page at <trademark.com>. Id. at 1327; see also Brookfield, 174 F.3d at 1045 (“The Web surfer who assumes that ‘X‘.com’ will always correspond to the web site of company X or trademark X will, however, sometimes be misled.“). Dilution occurs because “‘[p]rospective users of plaintiff‘s services . . . may fail to continue to search for plaintiff‘s own home page, due to anger, frustration or the belief that plaintiff‘s home page does not exist.‘” Panavision, 141 F.3d at 1327 (quoting Jews for Jesus v. Brodsky, 993 F. Supp. 282, 306-07 (D.N.J. 1998)).
In the instant case, Appellants registered the TLD <.net>, rather than <.com>, with the SLDs <avery> and <dennison>. As we recognized in Panavision, <.net> applies to networks and <.com> applies to commercial entities. 141 F.3d at 1318. Evidence on the record supports this distinction, and courts applying the dilution cause of action to domain-name registrations have universally considered <trademark.com> registrations. See Brown, Note, supra, at 251-54 (discussing cases); id. at 262-63 (addressing the <.com> versus <.net> distinction). Although evidence on the record also demonstrates that the <.com> and <.net> distinction is illusory, a fact finder could infer that dilution does not occur with a <trademark.net> registration. This genuine issue of fact on the question of cybersquatting dilution should have prevented summary judgment for Avery Dennison.
2. Tarnishment
Tarnishment occurs when a defendant‘s use of a mark similar to a plaintiff‘s presents a danger that consumers will form unfavorable associations with the mark. See Hasbro, Inc. v. Internet Ent. Group, Ltd., 40 U.S.P.Q.2d 1479, 1480 (W.D. Wash. 1996) (<candyland.com> as a domain-name combination for a sexually explicit web site diluted plaintiff‘s trademark, “Candyland,” for a children‘s game); 3 McCarthy, supra, § 24:104. The district court did not reach Avery Dennison‘s claims regarding tarnishment.
Avery Dennison offers, as аn alternative ground for affirming the district court, the fact that Appellants house <avery.net> and <dennison.net> at the same web site as lewd domain-name registrations. However, the evidence likewise indicates that to move from <avery.net> or <dennison.net> to a lewd SLD requires “linking” through the Mailbank home page, which might remove any association with the “Avery” and “Dennison” trademarks that the Internet user might have had. See Fruit of the Loom, 994 F.2d at 1363 (requiring some connection between the two parties’ uses of their marks). Whether Appellants’ use of the registrations presents a danger of tarnishment is an issue of fact that could not be decided on summary judgment.
Under the Federal Trademark Dilution Act and Business and Professional Code
VI
Attorneys’ Fees
Finally, we address Appellants’ application for attorneys’ fees. The Lanham Act permits an award of attorneys’ fees to a prevailing pаrty “in exceptional cases.”
As an appellate court, we are ill-equipped to determine Avery Dennison‘s motivation for bringing and pursuing this litigation. We therefore remand the attorneys’ fees question to the district court for determination.
VII
Conclusion
We reverse the district court‘s summary judgment in favor of Avery Dennison and remand with instructions to enter summary judgment for Sumpton and Freeview. We also remand Appellants’ request for attorneys’ fees for a determination by the district court. Finally, we deny Avery Dennisоn‘s motion to strike portions of Appellants’ brief, and we deny Appellants’ request for judicial notice.
REVERSED and REMANDED.