We Media, Inc. v. Cablevision System Corp.

94 F. App'x 29
CourtCourt of Appeals for the Second Circuit
DecidedApril 13, 2004
DocketNo. 02-9096
StatusPublished
Cited by4 cases

This text of 94 F. App'x 29 (We Media, Inc. v. Cablevision System Corp.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Second Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
We Media, Inc. v. Cablevision System Corp., 94 F. App'x 29 (2d Cir. 2004).

Opinion

SUMMARY ORDER

WE Media, Inc. (“WEM”), appeals from a judgment granting defendants’ motion for summary judgment and dismissing WEM’s complaint with prejudice. WEM’s complaint asserted four causes of action: trademark infringement pursuant to 15 U.S.C. §§ 1114-18, trade name infringement pursuant to 15 U.S.C. § 1125(a), trademark dilution pursuant to 15 U.S.C. § 1125(c), and unfair competition pursuant to New York common law. WEM appeals this dismissal.

Familiarity is assumed as to the facts, the procedural context, and the specifications of appellate issues. Generally, WEM claims that the defendants infringed on its intellectual property rights by creating and marketing the WE: Women’s Entertainment (“WWE”) cable television channel.

This Court reviews a district court’s summary judgment determination de novo. See Ertman v. United States, 165 F.3d 204, 206 (2d Cir.1999). However, when we review a Lanham Act case, “the district court’s findings with regard to each of the Polaroid factors are entitled to considerable deference, even on appeals from summary judgment.” Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 215 (2d Cir.2003) (internal quotes and citations removed). Nevertheless, even under these circumstances, “[i]f a factual inference must be drawn to arrive at a particular finding on a Polaroid factor, and if a reasonable trier of fact could reach a different conclusion, the district court may not properly resolve that issue on summary judgment.” Id. Finally, “we are free to affirm a district court decision on any grounds for which there is a record sufficient to permit conclusions of law, even grounds not relied upon by the district court.” Alfaro Motors, Inc. v. Ward, 814 F.2d 883, 887 (2d Cir.1987) (internal citations omitted).

[31]*31 I. Injunctive Relief

Plaintiff argues that in deciding whether they could pursue a claim for injunctive relief, the district court erred in its likelihood of confusion analysis. “To prevail on a claim of trademark infringement, a plaintiff must show, first, that its mark merits protection, and, second, that the defendant’s use of a similar mark is likely to cause consumer confusion.” Brennan’s, Inc. v. Brennan’s Restaurant, L.L.C., 360 F.3d 125, 2004 WL 354325, at *3 (2d Cir. Feb.26, 2004). To evaluate the likelihood of consumer confusion, we apply the multifactor test set forth by Judge Friendly in Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961). No single factor is dispositive, nor is a court limited to consideration of only these factors. Polaroid, 287 F.2d at 495. Plaintiff challenges the district court’s conclusions on each of the Polaroid factors and the district court’s final weighing of the Polaroid factors.

Strength of the Mark

WEM questions the district court’s finding that its mark was weakened because of 1) lack of usage or presence in the television market; 2) insufficient evidence of defendants’ willful infringement; and 3) evidence of third-party usage of similar marks in unrelated markets. [Blue at 21] However, WEM does not challenge the district court’s determination that their mark is suggestive.

There are two components of a mark’s strength: its inherent distinctiveness and the distinctiveness it has acquired in the marketplace. See Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743-44 (2d Cir.1998). “Courts assess inherent distinctiveness by classifying a mark in one of four categories arranged in increasing order of inherent distinctiveness: (a) generic, (b) descriptive, (c) suggestive, or (d) fanciful or arbitrary.” Brennan’s, 360 F.3d 125, 130. Here, the district court found that the mark was suggestive, meaning it “fall[s] in an in-between category.” See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10 (2d Cir.1976). Suggestive marks are more distinctive than descriptive marks, and thus are accorded trademark rights without need to demonstrate that consumers have come to associate them with the user of the mark. See id. at 11. Nonetheless, because they seek to suggest qualities of the product, they possess a low level of distinctiveness and are given less protection than is reserved for more distinctive marks — those that are “arbitrary” or “fanciful.” See id. In addition, recent caselaw has established that a suggestive mark with little acquired distinctiveness may be entitled to limited protection, but that it is not especially strong. See Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 147-48 (2d Cir.2003). Furthermore, while we acknowledge that there were flaws in the district court’s reasoning, we agree with the district court’s finding that WEM’s mark holds virtually no acquired distinctiveness. Because WEM’s mark is suggestive and carries little acquired distinctiveness, we agree with the district court’s ultimate conclusion that the mark is relatively weak. See Alfaro Motors, 814 F.2d at 887.

Proximity of the Products in the Marketplace

The district court found that although “there is some overlap between the two parties’ products markets ... the overlap is too slight for the Court to conclude that the parties directly compete at this time.” WE Media, Inc. v. Gen. Elec. Co., 218 F.Supp.2d 463, 477 (S.D.N.Y.2002). We find no error in this conclusion.

Bridging the Gap

In determining that this factor only slightly favored plaintiffs, the district court [32]*32did not mention WEM’s talks with Hearst regarding a niche cable network targeted towards those with disabilities. Id. at 478. The district court erred in failing to consider this information. However, the affidavit that supports this assertion does not establish that WEM had anything more than a vague hope of entering the cable television market. That hope was dashed during the time period that the WWE channel was launched, but not as a result of WWE’s television efforts. Thus, we find it to be a close call, but conclude that the district court did not err in finding that this factor “tends more toward [ ] finding a possibility of confusion, than against.” Id. at 478.

Actual Confusion

The district court found that “WEM’s strongest evidence purporting to show actual confusion would be Sorensen’s Report concluding that one-third of his respondents believed WWE and WEM to be affiliated.” Id. However, the district court found that flaws in methodology meant that the Report carried little probative weight. Id.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Beastie Boys v. Monster Energy Co.
66 F. Supp. 3d 424 (S.D. New York, 2014)
GMA Accessories, Inc. v. BOP, LLC
765 F. Supp. 2d 457 (S.D. New York, 2011)
Cranbury Brook Farms v. Township of Cranbury
226 F. App'x 92 (Third Circuit, 2007)

Cite This Page — Counsel Stack

Bluebook (online)
94 F. App'x 29, Counsel Stack Legal Research, https://law.counselstack.com/opinion/we-media-inc-v-cablevision-system-corp-ca2-2004.