Opinion
No. 98 Civ. 5060 (CBM)
May 28, 2002
MEMORANDUM OPINION AND ORDER
On April 18, 2002, the court issued its findings of fact and conclusions of law in this matter, holding that Chum failed to meet its burden of demonstrating either that its marks have acquired secondary meaning or that defendants' use of their marks has caused a likelihood of confusion. Chum has moved the court for reconsideration under Rules 52(b) and 59(e) of the Federal Rules of Civil Procedure, arguing that the court placed undue weight on secondary meaning and likelihood of confusion among consumers and too little weight on secondary meaning and likelihood of confusion among industry professionals. For the reasons set forth below, Chum's motion for reconsideration is DENIED.
To begin with, Chum's motion greatly mischaracterizes the nature of the court's opinion. Far from "overlook[ing]" the effect on industry professionals, see Chum Mot. at 1, the court expressly analyzed and gave appropriate weight to whether industry professionals associate Chum's marks with their source and whether industry professionals are likely to be confused by defendants' marks. See Op. at 4-5 (finding that Chum advertised extensively in trade journals and routinely attended important industry events, but concluding nonetheless that the "advertising expenditures" factor weighed against a finding of secondary meaning because Chum essentially engaged in no direct consumer advertising at all); Op. at 11 (finding actual confusion among industry professionals, but concluding nonetheless that this factor weighed against a finding of likelihood of confusion because Chum presented no evidence whatsoever of actual confusion among consumers). Indeed, the court expressly stated twice in its opinion that the effect on industry professionals was relevant both to the secondary meaning and to the likelihood of confusion inquiries. See Op. at 5 ("Although it is certainly relevant that Chum spent substantial sums of money promoting its program to industry executives, the court finds it at least equally relevant that Chum has not adequately demonstrated it spent much, if anything at all, attempting to promote its program directly to the viewing public."); Op. at 11 ("This is not to say that the evidence of confusion among industry professionals presented by Chum is irrelevant. But it is once again at least equally relevant that there is no evidence at all of actual confusion among viewers.").
What Chum really means to say is not that the court "overlooked" the effect on industry professionals, but rather that the court failed to give that issue dispositive weight, choosing instead to consider the effect of the marks in question both on industry professionals and on consumers. This undoubtedly was the correct approach. It simply cannot be that the industry professional level is, as Chum puts it, "the level where the economic competition takes place," see Chum Mot. at 5, implying that it is entirely irrelevant to Chum's success whether its show has an audience of forty viewers or forty million. To be sure, it certainly is important to Chum (and, consequently, to the unfair competition inquiry) whether industry professionals recognize Chum's marks and whether they confuse Chum's marks with those of its competitors. The court continues to believe, however, that it is at least as important to Chum and to the unfair competition inquiry whether consumers recognize Chum's marks and whether consumers confuse Chum's marks with those of its competitors.
Chum's position finds no support in the cases it cites. Chum suggests, for example, that in Centaur Communications, Ltd. v. A/S/M Communications, Inc., 803 F.2d 1217 (2d Cir. 1987), the Second Circuit held that the relevant market in an unfair competition case involving a weekly television news program was "executives in the international marketing and advertising community." See Chum Mot. at 4. The Centaur court expressly stated, however, that it was accepting that definition (which the district court had proffered) only because neither party challenged it. See Centaur, 830 F.2d at 1222. Indeed, the panel repeatedly made clear that the relevant market in an unfair competition case generally includes the consuming public. See id. at 1221 (plaintiff must establish "that the purchasing public associates goods designated by a particular mark with but a single . . . source"); Id. ("The focus of secondary meaning therefore is the consuming public."); Id. ("Although the mark owner strives to create a secondary meaning for its product, it is the consuming public which, in effect, determines whether that effort has succeeded.").
Centaur also cited with approval Inc. Publishing Corp. v. Manhattan Magazine, Inc., 616 F. Supp. 370 (S.D.N.Y. 1985). In that case, which involved magazine titles, the district court found that the relevant market included magazine subscribers in addition to advertisers and distributors — a fact that the Centaur panel expressly recognized.See Centaur, 830 F.2d at 1221-22.
The district court cases Chum cites are similarly inapposite. In M'Otto Enters., Inc. v. Redsand, Inc., 831 F. Supp. 1491 (W.D. Wa. 1993), the court plainly considered evidence of likelihood of confusion "at both the retail and consumer levels of the market" — precisely what Chum faults the court for doing in the instant case. Id. at 1504 (emphasis added). And Television Enter. Network, Inc. v. Entertainment Network, Inc. 630 F. Supp. 244 (D.N.J. 1986), involved an application for a preliminary injunction, not a final adjudication of the merits of the dispute. Although the court relied in part on evidence of actual confusion among industry professionals (in addition to other "overwhelming" evidence of confusion, id. at 248) in concluding that the movant had demonstrated a likelihood of success on the merits of its claims, nothing in the court's opinion suggested that consumer confusion would be unimportant to the ultimate inquiry.
Finally, it is worth noting that Chum mischaracterizes the record by stating that its proposed findings "had asked the Court to find that Chum had established secondary meaning [and likelihood of confusion] in two separate categories of customers/consumers" — trade professionals and viewers. Chum Mot. at 1 (emphasis in original). Chum's proposed findings plainly did no such thing. To the contrary, Chum's factor-by-factor analysis addressed effect on industry professionals and effect on the consuming public simultaneously, just as the court's opinion did. Never once did Chum's analysis distinguish between the two, much less argue that one should carry more weight than the other. It is therefore most disingenuous for Chum to fault the court for "consider[ing] the impact on the two levels as part of a single analysis" rather than "separately assess[ing] secondary meaning and likelihood of confusion at each level." Id. at 1-2 (emphasis in original).
For the foregoing reasons, Chum's motion for reconsideration is hereby DENIED.