Descriptive fair use on a motion to dismiss

Outhouse PR, LLC v.
Northstar Travel Media, LLC, No. 19-cv-05979-NRB (S.D.N.Y. May 15, 2020)
A motion to dismiss
granted on descriptive use: impressive! Outhouse is a digital media company
that runs womenyoushouldknow.net, which “posts editorial content, such as
interviews and profiles of women with various backgrounds,” and it also posts
links to its content on social networking platforms. It has a registration for
WOMEN YOU SHOULD KNOW for: (1) online social networking services and (2)
entertainment services, including provision of continuing segments featuring
news and commentary delivered by the internet.
 

Outhouse registration

as shown on website

Northstar publishes Business
Travel News. In 2016, it published an article, “2016 WOMEN YOU SHOULD KNOW” on
its website, featuring this banner as well as “photos and biographical
information of some women participating in the travel industry”:

In 2017, it published
“2017 WOMEN YOU SHOULD KNOW” featuring a different set of women and this
banner:

Outhouse sent a
C&D, to which BTN didn’t respond. In 2018, BTN published “2018 WOMEN YOU
SHOULD KNOW” with another set of women and a banner, which was also posted to
BTN’s Facebook and Twitter pages.  

Outhouse sent two more C&Ds and a proposed complaint in 2019; BTN
responded that Outhouse had no viable claim and that it would seek its
attorneys’ fees and costs in the event of a suit. It then published “2019 WOMEN
YOU SHOULD KNOW” with another set of women and a banner, which it also shared
on its Facebook page:

On the same page, it
created “Check Out Other Years” tab with a list of buttons that would redirect
the readers to BTN’s “WOMEN YOU SHOULD KNOW” article for a particular year.
Despite the “extremely
lenient pleading standard,” the court was skeptical that confusion was
adequately pled, but it didn’t matter because this was descriptive fair use.
Use other than as a
mark: The articles were published on a website that displayed a sizable and
conspicuous “BTN” masthead at the top to identify its source:

The social media
pages also unambiguously identified BTN as the source:

The “ways by which
defendant presented” the phrase further undermined an intent to indicate
source. The visual presentations differed, including the dominant “making connections”
in 2016, and the size was smaller than BTN’s masthead. The 2019 version was
“BUSINESS TRAVEL NEWS’ 2019 WOMEN YOU SHOULD KNOW,” suggesting an intent to identify BTN as the source.  
You might wonder
whether, as Outhouse argued, Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir.
2013), warrants a different conclusion. In that case, Kelly-Brown “plausibly
alleged that Oprah was attempting to build a new segment of her media empire
around the theme or catchphrase ‘Own Your Power,’” particularly that “defendants
were trying to create, through repetition across various forms of media, …
association between Oprah and the phrase ‘Own Your Power.’” True, this case
involved one time per year for four years, but it was different: the alleged
uses “do not even remotely approach the level of ‘wide-ranging and varied’ use
of the trademark at issue by the defendants in Kelly-Brown,” which
included various events and not just articles. 
Use in the headline of articles under a prominent masthead display of
its own mark “falls far short of establishing an effort by defendant to create
an association between the Mark and defendant that would serve as a symbolic
identifier of any article that contains the phrase ‘WOMEN YOU SHOULD KNOW.’”
Outhouse argued that
In re Scholastic, Inc., 23 U.S.P.Q.2d 1774, 1992 WL 215313 (T.T.A.B. 1992),
supported its claim. That proceeding found that the phrase “THE MAGIC SCHOOL
BUS” could be registered as a trademark despite that the phrase constituted
only a portion of the title of each book in a series. But registrability
determinations are different. (I see why Outhouse cited this; the real question
is whether there is any normative limit on claims that the defendant is using a
term “as a mark” even if book series and even newspaper column titles are
registrable. Rogers v. Grimaldi has a title-v-title exception, but it’s
actually not clear to me that the Second Circuit would (or should) consider “website
title” to be the same thing as “article title” for purposes of applying that
exception. As my reference to Rogers suggests, lurking First Amendment
concerns support the court’s application of this defense on a motion to
dismiss.)
Is defendant’s use
descriptive? Yes. Ridiculously, Outhouse argued that BTN’s use wasn’t
descriptive because “no reader of defendant’s articles is under an obligation
to know the women presented therein.” The court pointed out what “should” reasonably
means.
Good faith: This is
about whether defendant intended to create confusion, but, given the nature of
the question, “the same contextual considerations that apply in considering the
likelihood of confusion and assessing the similarity of two marks— namely, the
overall context in which the marks appear and the totality of factors that
could cause consumer confusion—also apply to a court’s analysis of good faith
in the context of fair use defense.” Assuming the truth of the allegations in
the complaint, there was good faith, given the literal descriptiveness of the
use and conspicuous BTN masthead. Moreover, the phrase appeared in “a font and
shape that are completely dissimilar to the plaintiff’s presentation of it to
the public.”
The repeated use of
the phrase and knowledge of Outhouse’s ownership weren’t evidence in support of
an inference of bad faith. Given the descriptive nature of the use, repetition
was insufficient to infer bad faith. (Kelly-Brown didn’t refer to
repetition in its reasoning on bad faith, and without use seeking to create a
source-related association between the phrase and the defendant, there was no
reason to infer bad faith.) “Inferring bad faith from descriptive uses of word
mark for being repeated would be inconsistent with the fundamental framework of
trademark law.” Nor did knowledge of Outhouse’s ownership support a bad faith
finding. “Failure to perform an official trademark search . . . does not,
standing alone, prove . . . bad faith,” and “simply sending a cease-and-desist
letter cannot create trademark rights that do not otherwise exist and,
therefore, cannot by itself constitute a basis for finding bad faith.”       

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