Leslie A. DAVIS, in his capacity as President of Earth Protector Licensing Corporation and Earth Protector, Inc.; Earth Protector Licensing Corporation; Earth Protector, Inc., Plaintiffs-Appellants,
v.
The WALT DISNEY COMPANY; Disney Channel; ABC, Inc., Defendants-Appellees.
No. 05-1999.
United States Court of Appeals, Eighth Circuit.
Submitted: November 14, 2005.
Filed: December 5, 2005.
Nathan A. Busch, argued, St. Louis Park, MN, for appellant.
Paul Barry Klaas, argued, Minneapolis, MN (Sri K. Sankaran and Heather D. Redmond, on the brief), for appellee.
Before WOLLMAN, FAGG, and MELLOY, Circuit Judges.
MELLOY, Circuit Judge.
The plaintiffs appeal the district court's grant of summary judgment for the defendants on a claim of trademark infringement.1 We affirm.
I. Background
Leslie Davis is the founder and president of an environmental advocacy organization called Earth Protector, Inc. He owns a registered federal trademark for the term "Earth Protector" on books, pamphlets, and other printed material. Davis attempted to register the same mark for the trademark class encompassing television broadcasts and video services, but he abandoned the application. The appellees, the Walt Disney Company ("Disney") and affiliated parties, created a movie called Up, Up and Away ("Up") for the Disney Channel in 2000. Up featured a fictional company named Earth Protectors. The president of the company tried to use computer software to control the minds of kids in a nefarious plot to take over the world. Fortunately, he was thwarted by a fast-thinking, but otherwise superpower-less, teenager who was in a family of superheroes.
II. Standard of Review
The district court granted summary judgment for the appellees, finding as a matter of law that no reasonable jury could conclude that the appellees' use of the Earth Protector mark would create a likelihood of confusion.2 We review that grant of summary judgment de novo and view all facts in the light most favorable to the non-moving party. Brooks v. Tri-Systems, Inc.,
III. Analysis
The Lanham Act prohibits the use of a mark in connection with goods or services in a manner that is likely to cause confusion as to the source or sponsorship of the goods or services. 15 U.S.C. § 1125(a)(1). The lawsuit underlying this appeal is not a typical trademark case because the appellees did not affix the appellants' word mark to goods or use it to promote products or services. Rather, the appellees simply used the appellants' mark in a fictional movie. In this circuit, whether the appellees' use of the mark is protected by the First Amendment is considered separately from the question of whether the appellees' use of the mark creates a likelihood of confusion. Anheuser-Busch, Inc. v. Balducci Publ'ns,
A. The SquirtCo Factors
In SquirtCo v. Seven-Up Co.,
1. Strength of the Mark
The mark at issue is "Earth Protector." The appellants used this mark in connection with educational materials, t-shirts, and occasional broadcasts of a local cable-access show called "The Earth Protector Show." Because the mark is used in conjunction with the products and services of an environmental advocacy organization, we find that the mark is "descriptive." See id. (finding the term "Duluth News-Tribune" to be descriptive as the mark for a newspaper because "[t]he words convey meaning too directly to be suggestive, yet are too specific to be generic"). A descriptive mark is "the weakest protectable mark." Cellular Sales, Inc. v. Mackay,
2. Similarity Between the Marks
This factor weighs in favor of the appellants. The appellees used the term "Earth Protectors," which is almost identical to the appellants' Earth Protector mark.3
3. Competitive Proximity of the Goods
We reject the appellants' argument that competitive proximity exists simply because the appellants and appellees both offer educational and informational services. The appellees' only use of the mark in question was in a fictional children's movie that aired only on the Disney Channel. Thus, that movie is the product to which we must apply the SquirtCo factors. See Ocean Bio-Chem, Inc. v. Turner Network Television, Inc.,
4. Intent to Confuse the Public.
This factor weighs in favor of the appellees as there is no evidence in the record that the appellees intended to confuse the public. Although proof of bad intent is not required for success in a trademark infringement or unfair competition claim, the absence of such intent is a factor to be considered. See Caterpillar Inc. v. Walt Disney Co.,
5. Degree of Care Expected of Consumers
We find that this factor weighs in favor of neither party. In a typical trademark case, we would consider the degree of care that consumers would use in purchasing the product that bears the allegedly infringing mark. In this case, however, there are no "purchasers" because Up was not sold as a video or DVD. Although subscribers to the Disney Channel can be considered consumers for the purpose of this analysis, the appellants' mark does not appear in the movie's title, and there is no evidence that the appellees used the mark in conjunction with advertising or promotion for the movie. As such, consumers would not even be aware of the use of the mark until they viewed the film or were told about its content.
6. The Evidence of Actual Confusion
We find that this factor weighs in favor of the appellants. However, its importance is reduced due to the characteristics of the evidence put forth to establish actual confusion. The appellants' evidence of actual confusion comes from eleven affidavits, but only two of the affiants saw Up as it was broadcast on the Disney Channel. The rest were given a copy of the movie by Davis. Confusion created by the plaintiff is not evidence of actual confusion in the marketplace. See Vitek Sys., Inc. v. Abbott Labs.,
B. The Appropriateness of Summary Judgment
When "a trademark dispute centers on the proper interpretation to be given to the facts, rather than on the facts themselves, summary disposition is appropriate." Duluth,
As courts have repeatedly noted, "the `core element' of trademark infringement law is `whether an alleged trademark infringer's use of a mark creates a likelihood that the consuming public will be confused as to who makes what product.'" Brother Records, Inc. v. Jardine,
IV. Conclusion
The majority of the SquirtCo factors weigh against a likelihood of confusion in this case. Furthermore, the circumstances surrounding the appellees' use of the mark make confusion less likely than in a traditional trademark infringement action. Because we agree that no reasonable jury could find a likelihood of confusion in this case, we affirm the district court's grant of summary judgment for the appellees.
Notes:
Notes
The Honorable Donovan W. Frank, United States District Judge for the District of Minnesota
The district court also offered additional bases for its decision. Because we agree with the district court's determination regarding the likelihood of confusion, as discussed in Part III, we need not address these additional bases
We do note, however, that while the appellees used an almost identical mark, they used the mark in a very different manner than the appellants. This could reduce the probability of consumer confusion
Because it is inappropriate to assess the credibility of an affiant at the summary judgment stage, we do not consider the appellees' arguments that the affidavits should be discounted because most of them were authored by supporters of Earth Protector, Inc. and/or Davis's friends and family members. We likewise do not consider the fact that several of the affiants expressed their confusion in verbatim accounts mirroring the language of the Lanham Act
While this depiction arguably supports the appellants' previously dismissed trademark dilution and defamation claims, these claims are not part of this appeal