Trademark Likelihood of Confusion in the 11th District

Both trade names and trademarks are protected under the Lanham Act, albeit under different sections. 15 U.S.C.S. § 1114 covers infringement of a federally registered trademark, while 15 U.S.C.S. § 1125(a) more broadly covers any word, term, name, symbol, or device that is likely to cause confusion.

 Regarding 15 U.S.C.S. §§ 1114 and 1125, the analysis of “likelihood of confusion” is the same under both sections of the Lanham Act.
To prove infringement under 15 U.S.C.S. § 1114 of the Lanham Act, the holder of a registered trademark must show (1) that the infringer used the mark in commerce, without the trademark holder’s consent, and (2) that the use was likely to cause confusion.
Seven factors apply in this circuit to determine whether customer confusion is likely to occur under the Lanham Act.  The factors are (1) type of mark, (2) similarity of mark, (3) similarity of the products the marks represent, (4) similarity of the parties’ retail outlets and customers, (5) similarity of advertising media, (6) defendant’s intent, and (7) actual confusion. Of the seven factors, the type of mark and the evidence of actual confusion are the most important. Caliber, 605 F.3d at 935 (citing Frehling, 192 F.3d 1330 at 1335)Freedom Sav. & Loan Ass’n v. Way, 757 F.2d 1176, 1186 (11th Cir. 1985)Atlanta Allergy & Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp. 2d 1360, 1377 (N.D. Ga. 2010). “[N]o single factor is dispositive, but greater weight is given to the type of mark and evidence of actual confusion.” Dieter, 880 F.2d at 326.
 “The likelihood of confusion is a question of fact.” Wielding Services, Inc. v. Forman, 509 F.3d 1351, 1361 (11th Cir. 2007). To award summary judgment in a case where these factors are required to be weighed, the Court must consider the evidence in a light most favorable to the non-moving party and must conclude that no reasonable jury could reach a contrary result. See Caliber, 605 F.3d at 935.  Determining whether a likelihood of confusion exists “entails more than the mechanistic summation of the number of factors on each side; it involves an evaluation of the ‘overall balance.'” Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 649 (11th Cir.2007). “[T]he district court must evaluate the weight to be accorded the individual subsidiary facts and then make its ultimate fact decision.”Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 840 n.17 (11th Cir. 1983). Even in a case where the “type of mark and evidence of actual confusion are the most weighty of considerations,” and the seven likelihood-of-confusion factors “typically inform a court’s determination of the likelihood of confusion,” a court must still “take into account the unique facts of each case.” Custom, 508 F.3d at 650(internal quotation marks omitted) (citing Hi-Tech Pharms., Inc. v. Herbal Health Prods., Inc., 132 F. App’x 348, 350 (11th Cir. 2005)). That is because “each case presents its own complex set of circumstances and not all of these factors may be particularly helpful in any given case . . . . The ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.” Id. at 650 (quoting Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir.1991)).

In the 11th Circuit, “very little proof of actual confusion would be necessary to prove the likelihood of confusion.” World, 438 F.2d at 489; see Roto-Rooter Corp. v. O’Neal, 513 F.2d 44, at 46 (confusion by four individuals held to be significant evidence of actual confusion).

Florida Commercial Eviction – Court Registry Rent

Pursuant to Florida Statute Section 83.232(5) “failure of the tenant to pay the rent into the court registry pursuant to court order shall be deemed an absolute waiver of the tenant’s defenses.  In such case, the landlord is entitled to an immediate default for possession without further notice or hearing thereon.”

The courts in Florida have gone so far as to state that a judge has no discretion to even consider the reason rent might not have been deposited into the court registry.  The Third District Court of Appeal goes so far as to state that “The law is the law.  It is not our job to carve out exceptions into an otherwise clear and imperative statute.”  See Park Adult Residential Facility, Inc. v. Dan Designs Inc., 36 So. 3d 811, 812 (Fla. 3d DCA 2010).

This and similar cases have led to ridiculous results.  In the Park Adult case there was a court order requiring the tenant to deposit the rent into the court registry prior to November 3, 2009.  On November 4, 2009 the tenant attempted to deposit the rent into the registry but the clerk would not allow it as it was untimely.

However, the inability to deposit the money had nothing to do with the tenant.  On the day before the money was to be placed in the court registry, the tenant obtained two official checks issued by Citibank to cover the rent.  The tenant provide these checks to its lawyers on the same day.  The lawyers gave these checks to their courtiers to deliver to the court.  Unbeknownst to the lawyers, however, the couriers walked off the job and failed to deposit the rent checks into the registry.

On the day after learning of the failure to deliver the monies, the lawyers immediately attempted to put the money in the court registry but were rejected.

The Appellate Court stated that the trial court could not even consider the reasons why the deposit was not timely made.  Many other Third District cases have agreed with this reasoning.

The dissent of Judge Cope in the Park Adult was more rational.  Judge Cope acknowledge that the failure to make payment was not the fault of the tenant.  According to Judge Cope:

“I cannot agree with the assertion in the majority opinion that the trial court was without authority to grant relief.  “Statutes should be construed in light of the manifest purpose to be achieved by the legislation.” Tampa-
Hillsborough County Expressway Auth. v. K.E. Morris Alignment Serv., Inc., 444 So. 2d 926, 929 (Fla. 1983).  The purpose of this statute is to assure that the landlord will be paid for the rent which accrues during eviction litigation. The tenant acted in accordance with the statute. The tenant timely obtained bank checks totaling $ 42,800 and gave them to counsel for delivery to the registry of the court. Counsel gave the checks to a law firm employee who subsequently walked off the job without delivering the checks. Counsel personally took the checks to the court the next day, but the clerk refused to accept them.”

Judge Cope cited Middleton v. Silverman, 430 So. 2d 981 (Fla. 3d DCA 1983), a case in which a Plaintiff, attempting to beat the statute of limitations, arrived at the courthouse at 2pm, but the court was already closed due to a disturbance in Miami.  When the courthouse opened the next day, the potential Plaintiff filed its case.  The Third District in that case held that “the plaintiff made a positive and identifiable attempt to commence the action within the applicable statute of limitations and because it is also undisputed that this attempt was frustrated due to the court being closed as a result of civil disorder” the Plaintiff’s filing was deemed timely.

Judge Cope also cited to Kazel v. Ostendorf, 629 So. 2d 817, 818 (Fla. 1993) where it was held that a court’s decision to dismiss a case “based solely on the attorney’s neglect unduly punishes the litigant and espouses a policy that this Court does not wish to promote.”

Finally, Judge Cope points out that the Florida Supreme Court has stated “We have long held that the Court should not interpret a statute in a manner resulting in unreasonable, harsh, or absurd consequences.”  Fla. Dep’t of Envtl. Prot. v. Contractpont Fla. Parks, LLC, 986 So. 2d 1260, 1270 (Fla. 2008).

Given the potentially absurd consequences of the Florida Statute, hopefully the Third District Court of Appeal will get another opportunity soon to correct this draconian law.






Cuban Government Company Obtains Trademark for HAVANA CLUB

Cubaexport, a Cuban government run company, partnered with Pernod Ricard, a French liquor maker, has won the right at the United States Patent and Trademark Office (USPTO) to the HAVANA CLUB trademark.  For years, Bacardi has claimed that it had the right to the mark in the United States.

Cubaexport had previously registered the mark but was unable to renew it due to the embargo.  The company attempted to obtain a license from the Office of Foreign Assets Control (OFAC) in 2006 so that it could pay the renewal fee to the USPTO, but was denied  as allowing it to do so was inconsistent with United States policy concerning Cuba.  This led to the HAVANA CLUB mark expiring.

In 2012, the Supreme Court of the United States refused to review the case and Bacardi was waiting for the mark to expire.  However, Cubaexport petitioned the Trademark Office claiming that the registration could not be revoked because the embargo froze the registration.

On the 12th of this month, after having received permission from OFAC, gave its license authorizing payment of the renewal fee to the USPTO and obtained registration.

According to Bacardi, the company is “shocked and very concerned by this unprecedented action taken by the United States government.”  The company added that “In essence, this administration has reversed long-standing U.S. and international public policy and law that protects against the recognition or acceptance of confiscatory actions of foreign governments.”

Bacardi had claimed rights in the HAVANA CLUB mark after purchasing the rights from a Cuban family who made rum in Cuba and had sold HAVANA CLUB in the United States since as early as the 1930s.  After the 1959 revolution the family’s registration lapsed and Cubaexport stepped in and registered the HAVANA CLUB mark in 1976.

Bacardi has stated that it will continue to fight the “fundamental rights against confiscation without compensation” and will “continue to pursue all the necessary legal action to defend its position” as the owner of HAVANA CLUB.

Monkey Cannot Own Copyright in Selfies

In a lawsuit filed by the People for the Ethical Treatment of Animals (PETA) last year concerning whether or not a monkey can own the copyright in photos, the ninth circuit has held that an animal cannot hold a copyright.  The case was filed by PETA concerning photographs taken by a a macaque monkey using a photographer’s equipment while the photographer was away from the equipment.

The photographer, David Slater, published the photographs in a book called “Wildlife Personalities” and claimed copyright in the photos.  Many, however, claimed that Slater was not entitled to the copyright in the photographs as he was not the one who took the photos.  Slater argued that he was entitled to the copyright as he had set up the cameras, adjusted the angles of the cameras, the lighting and the development of the photos.

The United States Copyright Office, in its internal “Compendium of U.S. Copyright Office Practices, Third Edition”, which is not binding on the courts, wrote that a monkey cannot register copyrights.

PETA brought it’s lawsuit claiming that copyright actually resided with Naruto, the monkey who actually clicked the button on the camera to take the photo selfies.  United States District Judge William Orrick held that there was nothing in the Copyright Act that extends copyright to animals.  The judge stated that “while Congress and the president can extend the protection of law to animals as well as humans, there is no indication that they did so in the Copyright Act.”

Even thought the judge will dismiss the case, he has given PETA the opportunity to amend the complaint, and the group claims they will.

The main issue still remains, however – can Slater own the copyrights in the pictures in his book as he did not technically click the button to take the pictures.

U.S. Court of Appeals 11th Circuit- Rosa Parks Right of Publicity

The United States Court of Appeals for the Eleventh Circuit ruled in favor of Target Corp. over a nonprofit corporation that owns Rosa Parks name and likeness in a right of publicity case.  The Rosa and Raymond Parks Institute for Self Development sued Target Corp. over its sale of books, movies and plaques depicting Rosa Parks.

Michigan law applied to the case as Rosa Parks lived there at the time of her death.  Under Michigan law, there is a qualified privilege for matters of public concern regarding the right of publicity or the right of privacy.

The court held that the civil rights movement is a matter of public interest and that there was no protection for the works sold by target.  According to the Court, “The institute has not articulated any argument as to why Michigan’s qualified privilege for matters of public concern would not apply to these works, in light of the conspicuous historical importance of Rosa Parks.  Nor can we conceive of any.”  The Court wen ton that “Michigan law does not make discussion of these topics of public concern contingent on paying a fee.”

The Court found that five of the six books were “bona fide works of nonfiction discussing Parks and her tole” in the civil rights movement.  The other book, while fiction, was meant to introduce children to the civil rights movement which was also a matter of public concern.

In sum, the Court held that “it is in the general public interest to relentlessly preserve, spotlight and recount the story of Rosa Parks and the Civil Rights Movement-even when that interest allegedly conflicts with an individual right of publicity,” according to Judge Robin Rosenbaum.