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ORACLE CORPORATION v. LIGHT READING

November 25, 2002

ORACLE CORPORATION, PLAINTIFF,
V.
LIGHT READING, INC. DEFENDANT.



The opinion of the court was delivered by: Elizabeth D. Laporte, United States Magistrate Judge

OPINION AND ORDER GRANTING IN PART PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION

I. BACKGROUND

Plaintiff Oracle Corporation, maker of database software, moved for a preliminary injunction against defendant Light Reading's use of the trademarks "OpticalOracle" and "WirelessOracle" for on-line newsletters, asserting claims for trademark infringement and dilution. Defendant opposed the motion and moved to strike the declarations of Philip Johnson and Itamar Simonson in support of plaintiff's motion. Plaintiff replied.

On November 12, 2002, this Court held a hearing on the motion and indicated its intention to issue a tailored preliminary injunction, rather than a complete ban as requested by plaintiff. On November 13, 2002, the Court ordered the parties to meet and confer and submit proposed language for the preliminary injunction to the Court in conformity with the guidance provided by the Court at the hearing. On November 19, 2002, the parties submitted proposed orders on the preliminary injunction. The Court has considered all admissible evidence and arguments.*fn1

II. DISCUSSION

A. Trademark Infringement

For the reasons stated at the hearing and set forth briefly in this opinion, the Court concludes that there is sufficient likelihood of confusion, especially initial interest confusion, that a tailored preliminary injunction should issue that provides for more prominent use of the Light Reading house mark and a disclaimer of affiliation with plaintiff. The likelihood of confusion or dilution on this record, however, is not so clear that it would support a grant of summary judgment, nor so great that it can only be addressed at the preliminary injunction stage by the complete ban on the use of "oracle" sought by plaintiff.

Assessment of the likelihood of confusion begins with the Sleekcraft factors: (1) strength of the mark; (2) similarity of the marks; (3) marketing channels used; (4) proximity or relatedness of the goods; (5) likelihood of expansion of the product lines; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) evidence of actual confusion; and (8) defendant's intent in selecting the mark. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). "In the context of the Web, the three most important Sleekcraft factors in evaluating a likelihood of confusion are (1) the similarity of the marks, (2) the relatedness of the goods or services, and (3) the parties' simultaneous use of the Web as a marketing channel." Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936, 942 (9th Cir. 2002).

1. Strength of the Mark

Oracle is a strong mark. As a suggestive mark based on the ancient Greek teller of truths or predictions, it is not as inherently strong as fanciful marks, but it is stronger than merely descriptive marks. However, extensive advertising, coupled with incontestable status, has made the Oracle mark very strong and well-known. While it has not achieved the universal fame of a Coca-Cola in every type of household, wired or unwired, rich or poor, highly educated or not, it is nonetheless an extremely prominent brand within the general world of business, finance and technology, not just within the computer software or high technology industry. BusinessWeek magazine ranks the Oracle brand the 23rd most valuable in the world. (Gosse Dec. Ex. A.) While this ranking does not value household fame, but rather future earnings, it does indicate a high degree of familiarity within the business community. (Gosse Dec. Ex. A.)

Unlike "Dr. Suess," however, "Oracle" is not a unique identifier whose use by another is almost certain to cause confusion, especially in the Internet context. Cf. Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936, 943-44 (9th Cir. 2002) (explaining that"[m]arks of renown, like DR. SEUSS, describe the source of only one company's products" and thus actionable initial interest confusion results from even unrelated uses of the mark.") Oracle wisely acknowledges that many uses of "Oracle," such as to describe a website promoting fortune telling services, would not infringe its trademark.

2. Similarity of the Marks

The parties' trademarks are rather similar, but not identical. While both incorporate the word "oracle," OpticalOracle precedes it with another word containing three syllables and WirelessOracle with another word containing two syllables that sound quite different. Yet these additional words are descriptive and thus weaker than the more famous, suggestive term Oracle. As used in the website banners, the words "Optical" and "Wireless" on the one hand, and "Oracle" on the other, are equally prominent in size and distinguished by different colors, though the color scheme in "OpticalOracle" tends to highlight "Optical" whereas the color scheme in "WirelessOracle" tends to highlight "Oracle." Cf Thane International, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 903 (9th Cir. 2002) (holding that a reasonable jury could find either way on whether OrbiTrek and Trek marks were confusingly similar); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1145 (9th Cir. 2002) (holding summary judgment was appropriate against the use of "Entrepreneur Illustrated" on the cover of a magazine in favor of the trademark owner of "Entrepreneur" magazine, where "Illustrated" was only half the size of "Entrepreneur" and obscured by artwork, rendering the appearance of the marks virtually identical, coupled with evidence that defendant adopted the name for the purpose of free-riding on plaintiff's better known trademark).

In terms of access to plaintiff's and defendant's websites, although a quick guess or a search engine may initially lead to defendant's site when plaintiff's was desired, consumers are aware that even slight differences in the domain name may demarcate unrelated websites. Entrepreneur Media, 279 F.3d at 1146-47. Furthermore, consumers know that if they land on the wrong site, the correct one is often just one click away. In the words of Interstellar ...


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