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METRO PUBL., LTD. v. SAN JOSE MERCURY NEWS

January 25, 1994

METRO PUBLISHING, LTD., Plaintiff,
v.
SAN JOSE MERCURY NEWS, INC., Defendant.



The opinion of the court was delivered by: SPENCER WILLIAMS

 FILED UNDER SEAL

 On June 7, 1990, Defendant San Jose Mercury News (hereafter "the Mercury News") began publishing a weekly tabloid called eye. Like Metro, eye contains movie listings, film and restaurant reviews, information about upcoming entertainment events and a personal advertisement section.

 On September 11, 1991, Metro Publishing filed a Complaint with this Court alleging (1) trade dress and trademark infringement in violation of § 43(a) of the Lanham Act, 15 U. S.C. § 1125(a), Complaint, PP 23-36; (2) monopolization and attempt to monopolize in violation of § 2 of the Sherman Act, 15 U.S.C. § 2, Complaint PP 37-45; (3) unfair competition in violation of California Business & Professions Code § 17200, Complaint PP 46-51; (4) unlawful dilution of a trademark in violation of California Business & Professions Code § 14330, Complaint PP 52-56; and (5) below-cost pricing in violation of California Business & Professions Code § 17043, Complaint PP 57-60.

 On September 19, 1991, this Court denied Metro Publishing's application for a preliminary injunction prohibiting the Mercury News from publishing or distributing eye. The Court specifically found that Metro Publishing's chances of success on the merits were poor, since (1) it is unlikely that consumers will be confused by the alleged similarities between eye and Metro's trade dress, see E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992); Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir. 1989) (plaintiff seeking to recover for trade dress infringement under § 43(a) of the Lanham Act must show that similarities in plaintiff's and defendant's product likely to confuse consumers); and (2) as a matter of law, the name of a newspaper column is not entitled to trademark protection.

 The Ninth Circuit subsequently reversed, holding that "under appropriate circumstances" the title of a newspaper column may be entitled to trademark protection, and that this Court erred by holding to the contrary. Metro Publishing v. San Jose Mercury News, 987 F.2d 637, 641 (9th Cir. 1993).

 Metro Publishing subsequently filed a motion for reconsideration of this Court's preliminary injunction order in light of the Ninth Circuit's holding. This Court denied Metro Publishing's motion on the basis that (1) it had failed to demonstrate that the parties' shared use of the word "eye" was likely to confuse consumers, and hence it was unlikely that it would succeed on the merits of its trademark claim, see E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992) (plaintiff must prove likelihood of consumer confusion in actions for trademark infringement under the Lanham Act) and (2) Metro Publishing was guilty of unclean hands. See July 12, 1993, Order.

 The Mercury News now moves for summary judgment on Metro Publishing's allegations of (1) trademark infringement, (2) trademark dilution, and (3) unfair competition inasmuch as that allegation involves trademark infringement or dilution. *fn1" In addition, Metro Publishing has filed a cross-motion for partial summary judgment on the issue of trademark validity. For the reasons stated below, the Mercury News' motion for partial summary judgment is GRANTED in its entirety, and Metro Publishing's cross-motion for partial summary judgment is DENIED.

 LEGAL STANDARD

 A party moving for summary judgment bears "the initial responsibility of informing the district court of the basis for its motion. . . ." Celotex Corp. v. Catrett, 477 U.S. 317, 323, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). To sustain this burden, the moving party must demonstrate that no genuine issue of material fact exists for trial. Id. at 322. However, the moving party is not required to negate those portions of the nonmoving party's claim on which the nonmoving party bears the burden of proof. Id.

 Once the moving party demonstrates that there is no genuine issue of material fact, the nomnoving party must designate "specific facts showing that there is a genuine issue for trial." Id. at 324. The nonmoving party must "make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Id. at 322.

 The adjudication of a summary judgment motion is not a "trial on affidavits." Anderson v. Liberty Lobby, 477 U.S. 242, 255, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). Credibility determinations and weighing of the evidence are solely jury functions. Id. at 255. Inferences drawn from underlying facts must be viewed in the light most favorable to the nonmoving party. Matsushita Elec. Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 89 L. Ed. 2d 538, 106 S. Ct. 1348 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654, 655, 8 L. Ed. 2d 176, 82 S. Ct. 993 (1962)).

 However, there may be no genuine issue of material fact if "the evidence is of insufficient caliber or quantity to allow a rational finder of fact" to find for the nonmoving party. Anderson, 477 U.S. at 254. And in some circumstances the factual context may render the nonmoving party's claim implausible, and the nonmoving party must come forward with "more persuasive evidence" to support the claim "than would otherwise be necessary." Matsushita, 475 U.S. at 587.

 DISCUSSION

 A. Trademark Infringement

 In its Complaint, Metro Publishing alleges (1) that the words "Eye" and "Public Eye" are its trademarks and (2) the Mercury News infringed on its trademark by publishing the tabloid eye. Complaint, PP 30-36. The Court grants summary judgment in favor of the Mercury News on this claim for three reasons: (1) Metro Publishing has failed to raise a genuine issue of material fact as to the validity of its asserted trademark; (2) Metro Publishing has failed to raise a genuine issue of material fact as to whether consumers are likely to be confused by the parties' shared use of the word "eye;" and (3) Metro Publishing's action is barred by the doctrine of unclean hands.

 1. Validity

 A trademark is defined as "any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods . . . from those manufactured and sold by others and to indicate the source of the goods . . . ." 15 U.S.C. § 1127. In this context, the "good" in question is not the "Public Eye" column, but rather Metro as a whole. See Ex parte Meredith Publishing Company, 109 U.S.P.Q. 426 (Comm'r Pat. & T.M. 1956). Therefore, in order to prevail, Metro Publishing must prove that it has used its asserted mark to distinguish Metro from other publications moving in interstate commerce, not merely to distinguish the "Public Eye" column from other parts of its own publication. Id. To do this, Metro Publishing must show that it has "so advertised, promoted and advanced . . . ["Public Eye" that] . . . "readers have developed a conscious association between . . . ["Public Eye"] and [Metro] and [Metro Publishing]." Id. Cases where readers associate the title of an article with the publication itself and its publisher are "the exception rather than the rule." Id.2

  Notwithstanding the fact that Metro Publishing has printed its "Public Eye" column for almost nine years, and has distributed Metro to many thousands of readers on a weekly basis, the only evidence of reader recognition that it has been able to muster after over two years of litigation is four short affidavits, one of which is based largely on unsubstantiated hearsay statements made by unnamed declarants. See Kouzes Decl.; Raso Decl.; D. Teifeld Decl.; Keith Decl. *fn3" The only rational conclusion which a jury could reach based on this evidence is that a negligible percentage of Metro's readers, for unknown reasons, associate the word "eye" with the Metro publication, though possibly not with Metro Publishing itself. Any assumptions that a jury might make regarding other readers would be pure speculation. This scant evidence of reader recognition would not support a jury verdict in favor of Metro Publishing. Accordingly, summary judgment is GRANTED in favor of the Mercury News on the issue of validity. See Anderson v. Liberty Lobby, 477 U.S. 242, 254, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986) (summary judgment granted in favor of the moving party where "the evidence is of insufficient caliber or quantity to allow a rational finder of fact" to find for the nonmoving party).

 2. Likelihood of Consumer Confusion

 In order to prevail on its trademark infringement claim, Metro Publishing must also prove that the Mercury News' use of its asserted trademark gives rise to a likelihood of confusion by the consuming public. Metro Pub., 987 F.2d at 640 (citing E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992)). "A likelihood of confusion exists when consumers 'are likely to assume that a product or service is associated with a source other than its actual source because of similarities between the two sources' marks or marketing techniques.'" Id. (citations omitted). The Ninth Circuit has developed an eight-part test to assess likelihood of consumer confusion: (1) the "strength" of the trademark; (2) proximity or relatedness of the goods; (3) similarity of the sight, sound, and meaning of the marks; (4) evidence of actual confusion; (5) degree to which marketing channels converge; (6) type of goods and degree of care consumers are likely to exercise in purchasing them; (7) intent of the defendant in selecting the allegedly infringing mark; and (8) likelihood that the parties will expand their product lines. Id. (citing E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992)). Because each factor is not necessarily relevant to every case, this list functions as a guide and is neither exhaustive nor exclusive. Id. (citation omitted). In considering whether to grant summary judgment on the issue of consumer confusion, "the [district] court must [not] evaluate the marks . . . in the ...


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