Kargo Global, Inc. v. Advance Magazine Publishers, Inc.
U.S. District Court for the Southern District of New York
August 6, 2007
Judge: John F. Keenan, U.S. District Judge
ISSUE: Plaintiff Kargo Global, Inc., a distributor of online content for wireless devices, argues that the defendant’s defunct (Conde Nast) magazine, “Cargo,” infringed on the plaintiff and caused damages through the concept of “reverse confusion.” (Cargo was a short-lived men’s shopping magazine that promoted clothes, cars, electronic gadgets and other luxury items.) Also at issue are defendant’s attempts to exclude a report and testimony of survey expert, Dr. Jacob Jacoby and plaintiff’s attempts to exclude report and testimony of defendant’s expert, Dr. Itamar Simonson.
SURVEY EXPERTS. Dr. Jacoby, a professor at New York University, is perhaps the most well know survey expert in America. In this case, Dr. Jacoby directed two Internet surveys, using survey panels. After a rigorous screening process, respondents were shown work product from different media including, “Cargo.” This sophisticated protocol was designed to determine if what was shown came from the same source that produced the magazine. Dr. Simonson, a professor at Stanford University and also a well known intellectual property survey expert, had Opinion Research Center conduct two telephone surveys. Respondents in the first survey were questioned whether they associated “Kargo” with any product. Respondents in the second survey were questioned whether they associated “Powered by Kargo” with any product or service.
RESULTS: Dr. Jacoby’s survey found likelihood of confusion of 17.7 %, which was reduced to 15.5% from “noise” uncovered by a control group. No respondents in either of Dr. Simonson’s surveys found any awareness of either “Kargo” or “Powered by Kargo.”
REBUTTAL ARGUMENTS: The two surveys served to rebut each other’s findings. The court’s opinion made no use of any other adversarial survey experts.
RESOLUTION: The court chose to exclude the findings produced by Dr. Jacoby and dismissed Dr. Simonson’s findings as “moot” since the Jacoby survey was excluded.
No damages were awarded.
SUBJECTIVE OPINION: The concept behind “reverse confusion” is when a well-known new party attempts to hijack the trademark of a lesser-known senior user. Dr. Jacoby should be congratulated for undertaking an extremely creative and sophisticated survey. However, the case foundation appears weak and the survey findings of less than 20% were marginal at best. Judge Keenan didn’t buy any of it and singled out Dr. Jacoby’s work as “so flawed that its probative value is substantially outweighed by its potential for unfair prejudice and likelihood that it will confuse or mislead a jury.”
The Simonson survey, on the other hand, was clean and straightforward — but as it turned out — unnecessary.
Friday, May 29, 2009
A ‘Sexy’ Subject
Victoria Secrets Stores Brand Management, Inc. v. Sexy Hair Concepts, LLC
U.S. District Court for the Southern District of New York
April 8, 2009
Judge: Gerald E. Lynch, U.S. District Judge
ISSUE: This was an appeal by the plaintiff of a TTAB decision sustaining defendant’s opposition to plaintiff’s application of the trademark SO SEXY for hair care products. Defendant, producer of the SEXY HAIR products line, moved that TTAB decision be affirmed. The real issue is whether “SEXY” is descriptive or suggestive. Plaintiff argues descriptive; defendant argues suggestive.
SURVEY EXPERTS: Dr. Michael Mazis, Ph.D., a professor emeritus in marketing from American University, was retained by the plaintiff to design a survey (presumably a mall intercept survey) to test whether actual customers associate the word, “sexy,” with the defendant. A second plaintiff expert, Gerald L. Ford, partner of the Huntington Beach (CA)-firm of Ford Bubala Associates and an emeritus faculty member of California State University, Long Beach, introduced two additional surveys testing likelihood of confusion. One survey was a mall intercept effort and the other utilized the Internet.
RESULTS: The Mazis survey results showed a 1.6% of those questions associated “sexy” with the defendant. Both Ford surveys indicated no likelihood of confusion.
REBUTTAL ARGUMENTS. Defendant produced no survey experts to critique either Mazis or Ford. However, defendant argues Mazis survey was “flawed” and introduced a “Daubert” motion to exclude it. Defendant also sought to exclude Ford’s findings. The key to the defendant’s argument was “sexy” is suggestive and NOT descriptive.
RESOLUTION: Defendant’s attempts to exclude Mazis and Ford surveys denied. Defendant’s motion for summary judgment denied.
SUBJECTIVE OPINION: The descriptive v. suggestive argument is extremely difficult to prove because of the fine line between the two concepts. Both Mazis and Ford are well known and highly regarded survey experts. Attempts to use Daubert arguments to discredit their work clearly made no sense as articulated by Judge Lynch. The plaintiff, however, took a risk by using two survey experts. In this instance, it did not damage the plaintiff’s case, but when two or more experts are used on the same side, there is always the chance that the other side can play one off against the other.
U.S. District Court for the Southern District of New York
April 8, 2009
Judge: Gerald E. Lynch, U.S. District Judge
ISSUE: This was an appeal by the plaintiff of a TTAB decision sustaining defendant’s opposition to plaintiff’s application of the trademark SO SEXY for hair care products. Defendant, producer of the SEXY HAIR products line, moved that TTAB decision be affirmed. The real issue is whether “SEXY” is descriptive or suggestive. Plaintiff argues descriptive; defendant argues suggestive.
SURVEY EXPERTS: Dr. Michael Mazis, Ph.D., a professor emeritus in marketing from American University, was retained by the plaintiff to design a survey (presumably a mall intercept survey) to test whether actual customers associate the word, “sexy,” with the defendant. A second plaintiff expert, Gerald L. Ford, partner of the Huntington Beach (CA)-firm of Ford Bubala Associates and an emeritus faculty member of California State University, Long Beach, introduced two additional surveys testing likelihood of confusion. One survey was a mall intercept effort and the other utilized the Internet.
RESULTS: The Mazis survey results showed a 1.6% of those questions associated “sexy” with the defendant. Both Ford surveys indicated no likelihood of confusion.
REBUTTAL ARGUMENTS. Defendant produced no survey experts to critique either Mazis or Ford. However, defendant argues Mazis survey was “flawed” and introduced a “Daubert” motion to exclude it. Defendant also sought to exclude Ford’s findings. The key to the defendant’s argument was “sexy” is suggestive and NOT descriptive.
RESOLUTION: Defendant’s attempts to exclude Mazis and Ford surveys denied. Defendant’s motion for summary judgment denied.
SUBJECTIVE OPINION: The descriptive v. suggestive argument is extremely difficult to prove because of the fine line between the two concepts. Both Mazis and Ford are well known and highly regarded survey experts. Attempts to use Daubert arguments to discredit their work clearly made no sense as articulated by Judge Lynch. The plaintiff, however, took a risk by using two survey experts. In this instance, it did not damage the plaintiff’s case, but when two or more experts are used on the same side, there is always the chance that the other side can play one off against the other.
Free Speech or Infringement?
Charles Smith v. Wal-Mart Stores, Inc.
U.S. District Court for the Northern District of Georgia, Atlanta Division
March 20, 2008
Judge: Timothy C. Batten, Jr., U.S. District Judge
ISSUE: Plaintiff Charles Smith, a satirist, sought summary judgment against defendant Wal-Mart, who accused Smith of trademark infringement and dilution of Wal-Mart’s brand. The issue in question involves bitingly satirical (noncommercial) graphic and Internet presentations of “Walocaust,” “Wal-Qaeda.” “Freedom Hater Mart,” and “Bentonville Bullies Always.” The retailer also sought summary judgment through a cross-motion.
SURVEY EXPERTS: Dr. Jacob Jacoby was retained by the defendant to conduct two surveys: (1) a mall intercept study and (2) an Internet survey.
RESULTS: Dr. Jacoby reported that his two surveys reflected high levels of consumer confusion and dilution by tarnishment.
REBUTTAL ARGUMENTS: Experts retained by the plaintiff were: Dr. Richard Teach, an emeritus marketing professor and former dean of the Georgia Tech School of Business and Dr. Alan Jay Rosenblatt, a professional in the area of Internet advocacy. Dr. Teach argued that Dr. Jacoby did not have the requisite Internet experience to conduct the Web-based point-of-sale portion of this particular study and that several aspects of Jacoby’s methodology affecting both portions of the study were faulty; thus “too deeply flawed to be considered.” Dr. Rosenblatt pointed out some Internet-related deficiencies in Jacoby’s methodology.
RESOLUTION: Court grated Smith’s motion for summary judgment and denied Wal-Mart’s cross motion. Smith’s parodic work was considered non-commercial. Plaintiff’s Daubert motion to exclude Dr. Jacoby’s research and report was denied. Court also denied defendant’s motions to exclude Dr. Teach and Dr. Goldblatt.
SUBJECTIVE OPINION: Wal-Mart was represented by three attorneys from Quinn, Emanuel, Oruhart, Oliver & Hedges LLP, New York, and two attorneys from Troutman Sanders, Atlanta. Smith was represented by an attorney from the Southern Center for Human Rights, Atlanta, and an attorney from the Public Citizen Litigation Group, Washington, DC. Despite all of Wal-Mart’s legal firepower and the efforts of one of the nation’s foremost survey experts, the rights of free speech and free expression, in the end prevailed.
U.S. District Court for the Northern District of Georgia, Atlanta Division
March 20, 2008
Judge: Timothy C. Batten, Jr., U.S. District Judge
ISSUE: Plaintiff Charles Smith, a satirist, sought summary judgment against defendant Wal-Mart, who accused Smith of trademark infringement and dilution of Wal-Mart’s brand. The issue in question involves bitingly satirical (noncommercial) graphic and Internet presentations of “Walocaust,” “Wal-Qaeda.” “Freedom Hater Mart,” and “Bentonville Bullies Always.” The retailer also sought summary judgment through a cross-motion.
SURVEY EXPERTS: Dr. Jacob Jacoby was retained by the defendant to conduct two surveys: (1) a mall intercept study and (2) an Internet survey.
RESULTS: Dr. Jacoby reported that his two surveys reflected high levels of consumer confusion and dilution by tarnishment.
REBUTTAL ARGUMENTS: Experts retained by the plaintiff were: Dr. Richard Teach, an emeritus marketing professor and former dean of the Georgia Tech School of Business and Dr. Alan Jay Rosenblatt, a professional in the area of Internet advocacy. Dr. Teach argued that Dr. Jacoby did not have the requisite Internet experience to conduct the Web-based point-of-sale portion of this particular study and that several aspects of Jacoby’s methodology affecting both portions of the study were faulty; thus “too deeply flawed to be considered.” Dr. Rosenblatt pointed out some Internet-related deficiencies in Jacoby’s methodology.
RESOLUTION: Court grated Smith’s motion for summary judgment and denied Wal-Mart’s cross motion. Smith’s parodic work was considered non-commercial. Plaintiff’s Daubert motion to exclude Dr. Jacoby’s research and report was denied. Court also denied defendant’s motions to exclude Dr. Teach and Dr. Goldblatt.
SUBJECTIVE OPINION: Wal-Mart was represented by three attorneys from Quinn, Emanuel, Oruhart, Oliver & Hedges LLP, New York, and two attorneys from Troutman Sanders, Atlanta. Smith was represented by an attorney from the Southern Center for Human Rights, Atlanta, and an attorney from the Public Citizen Litigation Group, Washington, DC. Despite all of Wal-Mart’s legal firepower and the efforts of one of the nation’s foremost survey experts, the rights of free speech and free expression, in the end prevailed.
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