Davis v. Walt Disney Co.

430 F.3d 901, 2005 WL 3274496
CourtCourt of Appeals for the Eighth Circuit
DecidedJanuary 11, 2006
DocketNo. 05-1999
StatusPublished
Cited by34 cases

This text of 430 F.3d 901 (Davis v. Walt Disney Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Eighth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Davis v. Walt Disney Co., 430 F.3d 901, 2005 WL 3274496 (8th Cir. 2006).

Opinion

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 [903]*903grant of summary judgment de novo and view all facts in the light most favorable to the non-moving party. Brooks v. Tri-Systems, Inc., 425 F.3d 1109, 1110 (8th Cir. 2005). If the district court had made its determination of a likelihood of confusion following a bench trial, we would review it for clear error. Kemp v. Bumble Bee Seafoods, Inc., 398 F.3d 1049, 1053-54 (8th Cir.2005). Because the determination in this case was made at the summary judgment stage, however, we must conduct an independent analysis.

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, 28 F.3d 769, 773 (8th Cir.1994). Because we affirm the district court’s finding of no likelihood of confusion in this case, we need not analyze the First Amendment issue.

A. The SquirtCo Factors

In SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir.1980), we articulated the factors to be considered in evaluating a likelihood of confusion. These can be enumerated as: 1) the strength of the plaintiffs mark; 2) the similarity between the plaintiffs and defendant’s marks; 3) the degree to which the allegedly infringing product competes with the plaintiffs goods; 4) the alleged infringer’s intent to confuse the public; 5) the degree of care reasonably expected of potential customers, and 6) evidence of actual confusion. “[W]e use [these factors] as a guide to determine whether a reasonable jury could find a likelihood of confusion. Factual disputes regarding a single factor are insufficient to support the réversal of summary judgment unless they tilt the entire balance in favor of such a finding.” Duluth News-Tribune v. Mesabi Publ’g Co., 84 F.3d 1093, 1096 (8th Cir.1996).

1. Strength of the Mark

? 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, 942 F.2d 483, 486 (8th Cir.1991). As such, we find that the first SquirtCo factor weighs in favor of the appellees.

2. Similarity Between the Marks

This factor weighs in favor of the appellants. The appellees used the term “Earth [904]*904Protectors,” 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., 741 F.Supp. 1546, 1557 (S.D.Fla.1990) (finding that when the defendant used a term similar to the plaintiffs mark as the name of a company in its fictional movie, the movie was the product to be compared to the plaintiffs goods). If products are “wholly unrelated” this factor weighs against a finding that confusion is likely. Kemp, 398 F.3d at 1056. If the products are closely related, and it is reasonable for consumers to believe the products come from the same source, confusion is more likely. Id. We find that a movie designed for children’s entertainment that airs on a national children’s network is not so similar to an infrequently broadcast cable-access environmental advocacy television program that consumers are likely to believe the two products came from the same source. Accordingly, this factor also weighs in favor of the appellees.

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 eompetition claim, the absence of such intent is a factor to be considered. See Caterpillar Inc. v. Walt Disney Co., 287 F.Supp.2d 913, 919 (C.D.Ill.2003) (stating that the absence of bad intent on the part of the defendant “troubles the Court”).

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430 F.3d 901, 2005 WL 3274496, Counsel Stack Legal Research, https://law.counselstack.com/opinion/davis-v-walt-disney-co-ca8-2006.