Prior use can’t be determined on motion to dismiss, even using Wayback Machine

My Health, Inc. v. General Electric Co., 2015 WL 9474293,
No. 15-cv-80 (W.D. Wis. Dec. 28, 2015)
GE allegedly uses MYHEALTH on a section of its website that
provides health and benefits information to GE employees,,
infringing plaintiff’s incontestable trademark.  GE argued that it had priority, but this could
not be determined on a motion to dismiss.
GE argued that its website was a document specifically
referred to in the complaint, thus incorporated by reference.  Separately, GE argued that the court could take
judicial notice of the historical content of the GE website based on print-outs
from the Internet Archive, showing use at least by November 2005, before My
Health’s 2008 registration.  The court
rejected both arguments.  “GE’s website
is not a simple document that can be incorporated by reference into the
complaint. A website, particularly one like GE’s, is a dynamic library of
documents.”  No more would a citation to
the NYT website incorporate everything on by reference.  Separately, “a snapshot of a moment in time,
which is all the Internet Archive can provide, does not establish the
continuous use for particular purposes that GE must show to establish priority
over My Health’s rights.”  Nor would the
court take judicial notice of Internet Archive printouts anyway.  They would have to be authenticated by an
Internet Archive employee, and that made them inappropriate for judicial
My Health’s registration was incontestable and couldn’t be
cancelled because of another’s prior use, but a senior user who could show
continuous use could have common-law trademark rights unaffected by any
subsequent registration.  (This is an
interesting strategic dilemma.  I might possibly
have gone with descriptive fair use; did GE really acquire trademark rights by
using a term just for information for its employees?)  But the court couldn’t consider priority, a
factual issue, on a motion to dismiss.
Even if the court considered the Wayback Machine evidence,
showing some prior use wouldn’t sustain GE’s burden of showing prior rights. My Health plausibly alleged a
protectable interest in its mark, even though GE might later prove an
affirmative defense based on a priority.
Likewise, My Health plausibly alleged consumer confusion
(among GE employees?).  My Health alleged
that the marks were virtually identical and differed only in insignificant ways
(“My Health” versus “myHealth”); that the parties market similar products
(patented remote patient care technology versus websites to facilitate
exchanges between medical professionals and patients); and that both parties
market their offerings to consumers via the internet. My Health alleged that
potential licensees and customers found GE’s products because of the accused
mark and confused GE’s offerings with My Health’s. GE’s website invites
customers to “[g]o to the main U.S. myHealth site” and allegedly created “the
impression that GE’s website is run and operated by My Health.” Assuming these
facts to be true, they plausibly alleged likely confusion.  [Here, current law’s indifference to the
identity of people suffering confusion hurts GE.]   

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