Designer Skin LLC v. S & L Vitamins, Inc., et al.
Interstellar Starship Services Ltd. v. Epix, Inc.
983 F. Supp. 1331 (D. Oregon, Nov. 20, 1997), aff'd. 184 F.3d 1107 (9th Cir.), petition for cert. denied, No. 99-925 (Feb. 2, 2000)
Defendant Epix, Inc. owned a federal trademark in the mark "Epix" which it used in connection with its business of manufacturing and selling video imaging hardware and software. Plaintiff operated a website at "epix.com." On its site, plaintiff publicized the activities of a theater group, including displaying digital images of cast members in a production of "The Rocky Horror Picture Show" being performed by the troupe. For those who are unaware, this show might be considered offensive by some members of the public.
Defendant charged that plaintiff's use of "epix" in this fashion constituted trademark infringement in violation of the Lanham Act, as well as unfair competition in violation of Section 43 of the Lanham Act. Plaintiff sought a declaratory judgment that its use of defendant's mark did not constitute trademark infringement. Both sides moved for summary judgment.
The court concluded that plaintiff's use did not constitute trademark infringement.
"Unlike a patent or copyright, a trademark does not confer on its owner any rights in gross or at large. The law does not per se prohibit the use of trademarks or service marks as domain names. Rather, the law prohibits only uses that infringe or dilute an owner's trademark or service mark."
A central element of both defendant's trademark infringement and unfair competition claims was "whether the public is likely to be deceived or confused by the similarity of the marks" being used by the parties. The court concluded that given the differing nature of the businesses in which the parties engaged in, no such confusion was likely. No one who arrived at the site seeking defendant's products would leave confused, because plaintiff did not offer any product similar to defendant's for sale. Said the court:
In reaching this conclusion, the court was undoubtedly influenced by the innocent nature in which plaintiff came to be using the mark in question. The court found that plaintiff "selected "epix.com" as a domain name for reasons unrelated to Epix, Inc." Rather, it was "selected ... as a domain name as a shorthand designation for "electronic pictures."