throbber
Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 1 of 34
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`CASE NO. 11-24110-CIV-O’SULLIVAN
`[CONSENT]
`
`MPS ENTERTAINMENT, LLC and
`MICHAEL P. SORRENTINO,
`
`Plaintiffs,
`
`v.
`
`ABERCROMBIE & FITCH STORES,
`INC. and ABERCROMBIE & FITCH
`CO.,
`
`Defendants.
`
`/
`
`ORDER
`
`THIS CAUSE is before the Court on the Defendants’ Motion for Summary Judgment
`
`(“Motion,” DE# 93, 11/1/12), which contains the defendants’ Statement of Undisputed
`
`Facts (“SUMF”). The plaintiffs filed their response (“Response,” DE# 100, 11/20/12), to
`
`which the defendants filed their reply (DE# 109, 11/20/12). Additionally, the plaintiffs filed
`
`Plaintiffs’ Response to Defendants’ Statement of Undisputed Material Facts (DE# 99,
`
`11/20/13). Having reviewed the Motion, Response, Reply, the SUMF and the plaintiffs’
`
`response thereto, and the record, the Court grants the Defendants’ Motion for Summary
`
`Judgment (“Motion,” DE# 93, 11/1/12) as more fully discussed below.
`
`

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`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 2 of 34
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`I.
`
`Background1
`
`This case involves trademark infringement and related claims by a public figure
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`alleging that a clothing company used his nickname and trademark on a t-shirt and in an
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`advertisement to sell its products. The plaintiff, Michael Sorrentino, regularly appeared on
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`the television show “Jersey Shore,” which first aired on MTV Networks on December 3,
`2
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`2009. Sorrentino and his brother Marc Sorrentino own the plaintiff MPS Entertainment,
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`LLC, which is a limited liability company engaged in the business of developing, marketing,
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`and distributing goods and services. The defendant, Abercrombie & Fitch Co., is the
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`parent company of Defendant Abercrombie & Fitch Stores, Inc. (collectively, “A&F”), and
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`A&F produces, markets, distributes, and sells clothing at retail stores. Plaintiffs’ claims
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`relate to a t-shirt created and sold by A&F that had the phrase “The Fitchuation” on the
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`front of the shirt and to a press release issued by A&F, which the plaintiffs contend
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`constituted an advertisement for A&F’s products.
`
`A.
`
`“The Fitchuation” T-shirt
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`The plaintiff Michael Sorrentino uses the nicknames “The Situation” and “Mike The
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`Situation.” Sorrentino gave himself the nickname “The Situation” based on an association
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`with his abdominal muscles.
`
`On January 28, 2010, A&F placed an order for a t-shirt bearing the phrase “The
`
`1
`The facts contained in this section are taken from the Statements of Undisputed
`Material Facts (“SUMF”), which Defendants filed as part of their Motion (see Motion, D.E. 93, at
`CM/ECF pp. 28-38) and Plaintiffs filed separately from their Response (see D.E. 99, at 1-11),
`and are undisputed unless otherwise noted. Defendants also filed a summary chart of the
`statements of undisputed facts. (See D.E. 110, at 1-30.)
`
`2
`Shore.
`
`MTV Networks, a division of Viacom, Inc., co-produces and broadcasts Jersey
`
`2
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`

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`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 3 of 34
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`Fitchuation” on the front of the shirt. A&F explains that “‘The Fitchuation’ was a play on
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`words or parody of Mr. Sorrentino’s nickname ‘The Situation.’ A&F was making fun of Mr.
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`Sorrentino giving his abs the nickname ‘The Situation,’ and used wordplay to create a
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`fanciful word using A&F’s brand name.” (Statement of Undisputed Facts, D.E. 93, ¶ 4.)
`3
`
`3
`Plaintiffs assert that they dispute A&F’s explanation of the meaning of “The
`Fitchuation.” Plaintiffs state:
`
`Mr. Wilson’s ‘spin’ on the exact wording of the Abercrombie t-shirt (that merely
`says ‘The Fitchuation’) and whether or not it is a parody is a question for the jury
`to decide. The affirmative defense of fair use/parody is a mixed question of law
`and fact as to which the proponent carries the burden of proof.
`
`(Response to Statement of Undisputed Facts, D.E. 99, ¶ 4 (citing cases).)
`
`Without providing any details of the content contained therein, the plaintiffs also refer
`the Court to the “Deposition of Marc Sorrentino attached hereto as Exhibit ‘A’ 114:17-115:3,
`116:13-19; 118:4-19.” (Id.) However, the plaintiffs did not attach any exhibits to its Response
`to the Statement of Undisputed Facts. The plaintiffs originally filed six exhibits as a separate
`filing attached to a declaration of Richard Wolfe (D.E. 101). However, the plaintiffs filed a
`Notice of Striking that filing on November 26, 2012 (D.E. 103), and these exhibits do not contain
`the cited pages of Marc Sorrentino’s deposition. The plaintiffs filed additional exhibits as a
`separate filing on November 26, 2012 (D.E. 106-1, 106-2). The Court has reviewed the
`plaintiffs’ exhibits and has not found the cited pages of Marc Sorrentino’s deposition. Exhibit A
`consists of excerpts from a deposition of Michael Kagan, and the excerpts do not contain pages
`114, 115, 116, or 118. (See D.E. 106-1, at CM/ECF p. 4.) Exhibit G is a two-page excerpt from
`the deposition of Marc Sorrentino; however, the exhibit consists only of the cover page of the
`deposition transcript, lines 22 through 25 of page 295, and lines 1 through 25 of page 296.
`(See id. at CM/ECF p. 86-87.) The Court has also reviewed the defendants’ exhibits and has
`not found the cited pages of Marc Sorrentino’s deposition. The defendants filed excerpts of
`Marc Sorrentino’s deposition in support of their Motion for Summary Judgment as Exhibit 1, but
`these excerpts do not contain pages 114, 115, 116, or 118. (See Motion Ex. 1, D.E. 93-2, at
`CM/ECF p. 2-37.) Finally, the Court has reviewed the exhibits attached to the Plaintiffs’ Second
`Amended Complaint, which also does not contain the cited pages of Marc Sorrentino’s
`deposition. (See D.E. 68.)
`
`Under Rule 56(e)(2) of the Federal Rules of Civil Procedure, “If a party . . . fails to
`properly address another party’s assertion of fact as required by Rule 56(c), the court may: . . .
`consider the fact undisputed for purposes of the motion.” Here, the Court considers as
`undisputed the fact that the plaintiff Sorrentino gave his abdominal muscles the nickname “The
`Situation” and that the phrase “The Fitchuation” was created using part of A&F’s brand name
`with part of the plaintiff Sorrentino’s nickname. The Court also notes that in their Response to
`the Statement of Undisputed Facts, the plaintiffs discuss the origin of the nickname, stating
`“While ‘The Situation’ may have originated based on an association with his abs, it is also
`
`3
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`

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`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 4 of 34
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`A&F began selling the t-shirt in February 2010 exclusively through its Abercrombie
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`& Fitch branded stores and website. A&F does not engage in any conventional
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`advertising, and it did not advertise “The Fitchuation” t-shirt. All but four of the shirt sales
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`were made by December 2010, and the remaining four shirt sales were made by June
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`2011.
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`On October 19, 2010, the plaintiffs filed an application to register “The Situation” as
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`a trademark covering entertainment services. The plaintiff MPS currently sells t-shirts on
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`its website, http://www.officialsituation.com. One t-shirt sold by the plaintiff MPS is called
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`the “Official Situation Logo T-shirt,” which contains the words “The Situation” and “Official
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`Situation Nation.” (See Motion Ex. 42, D.E. 93-6, at CM/ECF p. 21.) The plaintiffs have
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`never used the phrase “The Fitchuation.”
`
`B.
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`Press Release / Advertisement
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`On the episode of Jersey Shore airing on August 11, 2011, Sorrentino wore at least
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`one pair of A&F-branded sweatpants. Four days later, on August 15, 2011, A&F sent a
`4
`5
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`letter via overnight Federal Express to MTV Networks, in which A&F stated that it would
`
`Sorrentino’s trademark and he is specially known as the Situation.” (Response to Statement of
`Undisputed Facts, D.E. 99, ¶ 57.) In support of this statement, the plaintiffs again cite to
`exhibits that do not correspond to exhibits they filed in support of their response. (See id.)
`
`4
`The parties dispute the number of pairs of A&F-branded sweatpants worn by
`Sorrentino in the episode. The plaintiffs claim that Sorrentino wore only one pair of A&F-
`branded sweatpants during the episode, whereas the defendants claim that Sorrentino wore
`three pairs of A&F-branded sweatpants. (See Statement of Undisputed Facts, D.E. 93, ¶ 15;
`Response to Statement of Undisputed Facts, D.E. 99, ¶ 15.)
`
`5
`The Statement of Undisputed Facts contains a typographical error on the date A&F sent
`the letter, stating the date of the letter as August 15, 2012. (See Statement of Undisputed Facts, D.E. 92,
`¶ 16.) The Court’s review of the record, including the exhibits attached to the declaration of Reid Wilson
`that Defendants cited in their Statement of Undisputed Facts, shows that the date of the letter is August
`15, 2011. (See Reid Wilson Decl., Ex. A, D.E. 93-8, at CM/ECF p. 12.)
`
`4
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`

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`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 5 of 34
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`be willing to pay MTV, Sorrentino, or other characters on the show up to $10,000 not to
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`wear any clothing bearing trademarks owned by A&F. The body of the letter stated, in
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`relevant part, as follows:
`
`I am reaching out to you on behalf of Abercrombie & Fitch Co. (“A&F”) to
`address a matter with respect to one of the shows aired by MTV Networks,
`namely “Jersey Shore.” We have been disturbed to see that one of the
`characters on the show, Michael Sorrentino (better known as “The
`Situation”), has been prominently wearing A&F clothing on a number of
`episodes aired to date this season.
`
`A&F obviously has not sought product placement on the show, and we
`believe that, since the character portrayed by Mr. Sorrentino is not brand
`appropriate, his display of A&F clothing could be misconstrued as an
`endorsement by him of our clothing or – worse – an endorsement by A&F of
`his wearing our clothing.
`
`We have no interest at this point in pursuing any sort of legal action against
`MTV or the producers of “Jersey Shore.” In fact, we would be willing to pay
`MTV or Mr. Sorrentino or other characters up to $10,000 NOT to wear any
`clothing bearing the “ABERCROMBIE & FITCH,” “A&F,” “FITCH,” “MOOSE”
`or related trademarks. For additional episodes aired this season, we would
`appreciate it if you would ensure that our brands are pixilated or otherwise
`appropriately masked.
`
`(Reid Wilson Decl., Ex. A, DE # 93-8, at CM/ECF p. 12.) MTV Networks received the letter
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`the next morning, on August 16, 2011, at 9:01 a.m.6
`
`Later that same day, on August 16, 2011 at 6:13 p.m., A&F issued a press release
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`referring to Sorrentino. The press release stated as follows:
`7
`
`6
`The Statement of Undisputed Facts contains a typographical error on the date
`MTV Networks received A&F’s letter, stating the date of the receipt as August 16, 2012. (See
`Statement of Undisputed Facts, D.E. 92, ¶ 16.) The Court’s review of the record, including the
`exhibits attached to the declaration of Reid Wilson that the defendants cited in their Statement
`of Undisputed Facts, shows that the date of receipt is August 16, 2011. (See Reid Wilson
`Decl., Ex. B, DE# 93-8, at CM/ECF p. 14.)
`
`7
`The plaintiffs dispute this fact and state that “[o]n its face, the Press Release is dated
`August 12, 2011. (Response to Statement of Undisputed Facts, D.E. 99, ¶ 18.) Upon review of the
`record, the Court finds that there is no genuine dispute of fact as to the date A&F issued its press release.
`
`5
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`

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`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 6 of 34
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`ABERCROMBIE & FITCH PROPOSES A WIN-WIN SITUATION
`
`New Albany, Ohio, August 12, 2011: Abercrombie & Fitch Co. (NYSE: ANF)
`today reported that it has offered compensation to Michael ‘The Situation’
`Sorrentino, a character in MTV’s TV show The Jersey Shore to cease
`wearing A&F products.
`A spokesperson for Abercrombie & Fitch commented:
`“We are deeply concerned that Mr. Sorrentino’s association with our brand
`could cause significant damage to our image. We understand that the show
`is for entertainment purposes, but believe this association is contrary to the
`aspirational nature of our brand, and may be distressing to many of our fans.
`We have therefore offered a substantial payment to Michael ‘The Situation’
`Sorrentino and the producers of MTV’s The Jersey Shore to have the
`character wear an alternate brand. We have also extended this offer to other
`members of the cast, and are urgently waiting a response.”
`
`Abercrombie & Fitch
`Brand Senses Department
`(614) 283-6500
`
`At the end of the second quarter, the Company operated a total of 1,073
`stores. The Company operated 316 Abercrombie & Fitch stores, 179
`abercrombie kids stores, 501 Hollister Co. stores and 18 Gilly Hicks stores
`in the United States. The Company operated 10 Abercrombie & Fitch stores,
`four abercrombie kids stores, 44 Hollister Co. stores and one Gilly Hicks
`store internationally. The Company operates e-commerce websites at
`www.abercrombie.com, www.abercrombiekids.com, www.hollisterco.com
`and www.gillyhicks.com.
`
`(Motion Ex. 20, DE# 93-4, at CM/ECF p. 23; Reid Wilson Decl., Ex. C, DE# 93-8, at
`
`CM/ECF p. 17.) The italicized paragraph in the press release is “standard boilerplate that
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`goes at the end of every press release” issued by A&F. (Statement of Undisputed Facts,
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`D.E. 93, ¶ 24.) The press release did not contain any video, photographs, or images of
`
`The press release bears the August 16, 2011 date (see Motion Ex. 20, D.E. 93-4, at CM/ECF p. 23),
`A&F’s distribution document explicitly states “Publish date & time 06:13PM EDT 08/16/2011” (see Reid
`Wilson Decl., Ex. D, 93-8, at CM/ECF p. 19), Plaintiffs do not dispute how the press release was
`distributed (see Response to Statement of Undisputed Facts ¶ 19), and counsel for A&F stated in
`a deposition that the August 12, 2011 date that was printed on the press release was a
`“typographical mistake” (see Motion Ex. 32, Reid Wilson Dep., D.E. 93-5, at 107:22-109:7).
`
`6
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`

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`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 7 of 34
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`Sorrentino.
`
`II.
`
`Complaint, Motion, and Response
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`On June 15, 2012, Plaintiffs filed their Second Amended Complaint (“Complaint,”
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`DE# 68), wherein they raised the following six claims against both of the defendants: (1)
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`trademark infringement under common law; (2) unfair competition and false designation
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`of origin in violation of 15 U.S.C. § 1125(a) ; (3) false advertising in violation of 15 U.S.C.
`8
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`§ 1125(a); (4) unfair competition under Florida Statute Section 495.151; (5) common law
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`injury to business reputation; and (6) misappropriation of likeness for commercial purposes
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`in violation of Florida Statute Section 540.08. (See Compl. ¶¶ 34-70, 77-84.) In addition,
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`the plaintiffs raised the following three claims against the defendant Abercrombie & Fitch
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`Co.: (1) deceptive, false, and misleading advertising in violation of Florida Statute Section
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`495.151; (2) illegal use of name in commerce under the common law; and (3) deceptive,
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`false, and misleading advertising in violation of Florida Statute Section 817.41. (See id.
`
`¶¶ 71-76, 85-92.) 9
`
`On November 1, 2012, the defendants moved for summary judgment on all claims.
`
`8
`The plaintiffs title this count as including a false advertising claim under 15
`U.S.C. § 1125(a), but they provide no facts supporting this claim in Count II, and they
`separately allege a false advertising claim under 15 U.S.C. § 1125(a) in Count III. (See Compl.
`¶¶ 47-65.)
`
`9
`The plaintiffs’ Second Amended Complaint appears to raise claims related to two
`trademarks – “The Situation” and “GTL.” (See Compl. ¶¶ 3, 8, 35, 36, 61.) However, on May
`16, 2012, the plaintiffs filed a Notice of Voluntary Dismissal (D.E. 51), wherein the plaintiffs
`“voluntarily dismiss[ed] all claims related to their claim that Defendants infringed Plaintiffs[’]
`rights in any registered and unregistered ‘GTL’ trademark, from this action with prejudice.”
`Citing to the Plaintiffs’ Notice of Voluntary Dismissal, A&F did not address any of the plaintiffs’
`claims related to the “GTL” trademark in its Motion (see Motion 8 n.12), and the plaintiffs did not
`make any argument related to the “GTL” mark in their Response (see generally Response).
`The Court likewise treats all of the plaintiffs’ claims related to the “GTL” mark as dismissed.
`
`7
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`

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`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 8 of 34
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`The defendants argue that “[a]s for Plaintiffs’ trademark infringement claims, the August
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`15, 2011 press release, in criticizing Plaintiff Michael ‘The Situation’ Sorrentino as contrary
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`to A&F’s brand image, could not possibly have created a likelihood of confusion that the
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`press release was nevertheless issued or approved by Sorrentino.” (Motion for Summary
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`Judgment p. 1, DE# 93, 11/2/12) The defendants also argue that the “Fitchuation” t-shirt
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`was a “play on words or parody between the words ‘Fitch’ and ‘Situation’” and “cannot
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`establish likelihood of confusion under well-established Eleventh Circuit law.” (Id.) The
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`defendants further argue that the plaintiffs “do not have a ‘right of publicity’ claim” because
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`“the press release does not directly promote a product or service” and it “explicitly
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`attempted to disassociate his name from A&F’s brand.” (Id.) In their Response, the
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`plaintiffs argue that “there are genuine issues of material fact” on all claims that preclude
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`summary judgment for the defendants. (Response p. 1, DE# 100, 11/20/12)
`
`III.
`
`Legal Standards
`
`On a motion for summary judgment, the Court is to construe the evidence and
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`factual inferences arising therefrom in the light most favorable to the nonmoving party.
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`Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970). Summary judgment can be
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`entered on a claim only if it is shown “that there is no genuine dispute as to any material
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`fact and the movant is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(a). The
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`Supreme Court has explained the summary judgment standard as follows:
`
`[T]he plain language of [Rule 56] mandates the entry of summary judgment,
`after adequate time for discovery and upon motion, against a party who fails
`to make a showing sufficient to establish the existence of an element
`essential to that party’s case, and on which that party will bear the burden of
`proof at trial. In such a situation, there can be no genuine issue as to any
`material fact, since a complete failure of proof concerning an essential
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`8
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`

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`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 9 of 34
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`element of the non-moving party’s case necessarily renders all other facts
`immaterial.
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`Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986) (internal quotation omitted). The trial
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`court’s function at this juncture is not “to weigh the evidence and determine the truth of the
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`matter but to determine whether there is a genuine issue for trial.” Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 249-50 (1986). A dispute about a material fact is genuine if the
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`evidence is such that a reasonable fact-finder could return a verdict for the nonmoving
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`party. Id. at 248; see also Barfield v. Brierton, 883 F.2d 923, 933 (11th Cir. 1989).
`
`The party moving for summary judgment “always bears the initial responsibility of
`
`informing the district court of the basis for its motion, and identifying those portions of the
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`‘pleadings, depositions, answers to interrogatories, and admissions of file, together with
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`affidavits, if any,’ which it believes demonstrate the absence of a genuine issue of material
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`fact.” Celotex, 477 U.S. at 323. Once the movant makes this initial demonstration, the
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`burden of production, not persuasion, shifts to the nonmoving party. The nonmoving party
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`must “go beyond the pleadings and by [its] own affidavits, or by the ‘depositions, answers
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`to interrogatories, and admissions on file,’ designate ‘specific facts showing that there is
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`a genuine issue for trial.’” Id. at 324; see also FED. R. CIV. P. 56(c). In meeting this burden
`
`the nonmoving party “must do more than simply show that there is a metaphysical doubt
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`as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
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`586 (1986). That party must demonstrate that there is a “genuine issue for trial.” Id. at
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`587. An action is void of a material issue for trial “[w]here the record taken as a whole
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`could not lead a rational trier of fact to find for the nonmoving party.” Id.
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`9
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`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 10 of 34
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`IV.
`
`Discussion
`
`A.
`
`Trademark Infringement
`
`The plaintiffs claim that A&F infringed on their trademark “The Situation” by using
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`the mark on their t-shirt and in their advertising campaign. To establish a trademark
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`infringement claim under the Lanham Act or the common law, “a plaintiff must show (1)
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`that the plaintiff had enforceable trademark rights in the mark or name, and (2) that the
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`defendant made unauthorized use of it ‘such that consumers were likely to confuse the
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`two.’” Custom Mfg. and Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 647-48 (11th
`10
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`Cir. 2007) (quoting Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106
`
`F.3d 355, 358 (11th Cir. 1997)) (citing SunAmerica Corp. v. Sun Life Assurance Co. of
`
`Canada, 77 F.3d 1325, 1334 (11th Cir. 1996)). To show “proof of a valid trademark[,] a
`
`plaintiff need not have a registered mark.” Tana v. Dantanna’s, 611 F.3d 767, 773 (11th
`
`Cir. 2010). “‘[T]he use of another’s unregistered, i.e., common law, trademark can
`
`constitute a violation of [the Lanham Act] where the alleged unregistered trademarks used
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`by the plaintiff are so associated with its goods that the use of the same or similar marks
`
`10
`The Eleventh Circuit and Florida state courts apply the same standards to a
`trademark infringement claim under the Lanham Act as to one brought under the common law.
`See Natural Answers, Inc. v. SmithKlineBeecham Corp., 529 F.3d 1325, 1332-33 (11th Cir.
`2008) (stating that “[s]ince Natural Answers is unable to bring an unfair competition claim under
`the Lanham Act under the theory of either false advertising or trademark infringement, it follows
`that the common law claims based on unfair competition and trademark infringement must fail
`as well”); Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 n.4 (11th Cir. 2001)
`(“Courts may use an analysis of federal infringement claims as a ‘measuring stick’ in evaluating
`the merits of state law claims of unfair competition.”) (quoting Investacorp, Inc. v. Arabian Inv.
`Banking Corp. E.C., 931 F.2d 1519, 1521 (11th Cir. 1991)); Anderson v. Upper Keys Bus. Grp.,
`Inc., 61 So. 3d 1162, 1167 (Fla. 3d DCA 2011); Bavaro Palace, S.A. v. Vacation Tours, Inc.,
`203 F. App’x 252, 256 (11th Cir. 2006) (stating that “the analysis of the Florida statutory and
`common law claims of trademark infringement and unfair competition is the same as under the
`federal trademark infringement claim” (quoting Gift of Learning Found., Inc. v. TGC, Inc., 329
`F.3d 792, 802 (11th Cir. 2003)).
`
`10
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`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 11 of 34
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`by another company constitutes a false representation that its goods came from the same
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`source.’” Id. (quoting Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512-13 (11th Cir. 1984)).
`
`“However, only those marks that are capable of distinguishing the owner’s goods from
`
`those of others, i.e., that are sufficiently ‘distinctive,’ are eligible for federal registration or
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`protection as common law marks under the Lanham Act.” Id. at 773-74 (citing 15 U.S.C.
`
`§ 1052(e), (f); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992); Coach
`
`House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1559 (11th Cir. 1991)).
`
`The defendants argue that “The Situation” is not eligible for trademark protection
`
`because “The Situation” is a personal name and therefore “merely descriptive.” (Motion
`
`4.) The plaintiffs argue that “The Situation” is eligible for trademark protection because it
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`is “suggestive” or “arbitrary or fanciful.” (Response 11.) There are “four categories of
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`distinctiveness, listed in ascending order of strength: ‘(1) generic – marks that suggest the
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`basic nature of the product or service; (2) descriptive – marks that identify the characteristic
`
`or quality of a product or service; (3) suggestive – marks that suggest characteristics of the
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`product or service and require an effort of the imagination by the consumer in order to be
`
`understood as descriptive; and (4) arbitrary or fanciful – marks that bear no relationship to
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`the product or service, and the strongest category of trademarks.’” Id. at 774 (quoting Gift
`
`of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 797-98 (11th Cir. 2003)). “Suggestive
`
`and arbitrary or fanciful marks are deemed ‘inherently distinctive’ because ‘their intrinsic
`
`nature serves to identify a particular source of a product’ and are generally entitled to
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`trademark protection.” Id. (quoting Two Pesos, 505 U.S. at 768); see also Knights
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`Armament Co. v. Optical Sys. Tech., Inc., 654 F.3d 1179, 1188 (11th Cir. 2011) (stating
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`that “[b]ecause a suggestive [trademark] is inherently distinctive, no proof of secondary
`
`11
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`

`
`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 12 of 34
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`meaning is required for it to be protectable” (quoting Coach House Rest., 934 F.2d at
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`1560)); Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d
`
`931, 938 (11th Cir. 2010) (stating that “Kodak” is an example of an arbitrary or fanciful
`
`mark and that “Penguin Refrigerators” is an example of a suggestive mark). “Generic
`
`marks, on the other hand, are generally incapable of receiving trademark protection and
`
`may never be registered as trademarks under the Lanham Act.” Tana, 611 F.3d at 774
`
`(citing Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir. 2007); Coach House
`
`Rest., 934 F.2d at 1560). “Descriptive marks, though not inherently distinctive, may
`
`become sufficiently distinctive to enjoy trademark protection by acquiring ‘secondary
`
`meaning.’” Id. (quoting 15 U.S.C. § 1052(f)) (citing Coach House Rest., 934 F.2d at 1560);
`
`see also Caliber, 605 F.3d at 938 (stating that “Vision Center” is an example of a
`
`descriptive mark). “‘A name has acquired secondary meaning when the primary
`
`significance of the term in the minds of the consuming public is not the product but the
`
`producer.’” Id. (quoting Welding Servs., 509 F.3d at 1358).
`
`“[T]he touchstone of liability in a trademark infringement action is not simply whether
`
`there is unauthorized use of a protected mark, but whether such use is likely to cause
`
`consumer confusion.” Custom Mfg. And Eng’g, Inc. v. Midway, 508 F.3d 641, 647 (11 Cir.
`th
`
`2007) (citation omitted). “Although likelihood of confusion is a question of fact, it may be
`
`decided as a matter of law.” Tana, 611 F.3d at 775 n.7 (citing Welding Servs., 509 F.3d
`11
`
`11
`“The likelihood-of-confusion multifactor test presupposes that various factors will
`point in opposing directions. The role of the court in reviewing a motion for summary judgment
`is to determine the ultimate question of whether, in light of the evidence as a whole, there is
`sufficient proof of a likelihood of confusion to warrant a trial of the issue.” Tana, 611 F.3d at
`775 n.7 (citing Welding Servs., 509 F.3d at 1361).
`
`12
`
`

`
`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 13 of 34
`
`at 1361; Alliance Metals, Inc. v. Hinely Indus., Inc., 222 F.3d 895, 907 (11th Cir. 2000)).
`
`To determine whether a likelihood of confusion exists, the Court considers seven factors:
`
`(1) the type of mark (in short, whether the “relationship between the name
`and the service or good it describes” is such that the chosen name qualifies
`as generic, descriptive, suggestive, or arbitrary); (2) the similarity of the
`marks (based on “the overall impressions that the marks create, including the
`sound, appearance, and manner in which they are used”); (3) the similarity
`of the goods (“whether the products are the kind that the public attributes to
`a single source”); (4) the similarity of the parties’ retail outlets, trade
`channels, and customers (“consider[ing] where, how, and to whom the
`parties’ products are sold”); (5) the similarity of advertising media (examining
`“each party’s method of advertising” to determine “whether there is likely to
`be significant enough overlap” in the respective target audiences such “that
`a possibility of confusion could result”); (6) the defendant’s intent
`(determining whether the defendant had a “conscious intent to capitalize on
`[the plaintiff’s] business reputation,” was “intentionally blind,” or otherwise
`manifested “improper intent”); and (7) actual confusion (that is, whether there
`is evidence that consumers were actually confused).
`
`Custom Mfg., 508 F.3d at 648 (citing Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192
`
`F.3d 1330, 1335-41 (11th Cir. 1999)). Generally, the type of mark and evidence of actual
`
`confusion are the most important factors. Dieter v. B & H Ind. of Sw. Fla., Inc., 880 F.2d
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`322, 326 (11th Cir. 1989). However, a court must consider the circumstances of each
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`particular case, and evaluate the weight to be accorded to individual subsidiary facts, in
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`order to make its ultimate factual decision. Jellibeans, Inc. v. Skating Clubs of Ga., 716
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`F.2d 833, 840 n. 17 (11th Cir. 1983).
`
`1.
`
`“The Fitchuation” T-shirt
`
`a.
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`Strength of the Mark (Factor One)
`
`“[D]etermining the strength of a mark requires a consideration of the mark’s inherent
`
`distinctiveness.” Tana, 611 F.3d at 776. “If the mark is merely descriptive, such as a
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`personal or surname, its strength depends on whether it has acquired secondary meaning.”
`
`13
`
`

`
`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 14 of 34
`
`Id. (citing Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990); Tonawanda
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`St. Corp. v. Fay’s Drug Co., Inc., 842 F.2d 643, 648 (2d Cir. 1988); Conagra, 743 F.2d at
`
`1513). “A descriptive mark with secondary meaning is a relatively strong mark.” Id. (citing
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`Dieter, 880 F.2d at 329).
`
`With regard to the mark’s distinctiveness, the Court finds that “The Situation” is an
`
`“arbitrary or fanciful” mark because it “bear[s] no relationship to the product or service.”
`
`Tana, 611 F.3d at 774. Although the word “situation” is not a word that was coined or
`
`made up by the plaintiffs, or a word that is obsolete, totally unknown in the language or out
`
`of common usage, the Court can discern no relationship between the word “situation” and
`
`the apparel or entertainment services that the plaintiffs provide.
`
`The defendants also argue that the plaintiffs did not have enforceable trademark
`
`rights in the mark or name “The Situation” because the plaintiffs did not timely develop
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`trademark rights in the personal name “The Situation.” (Motion 8-9.) The plaintiffs argue
`
`that they “own a federally registered mark for the trademark ‘The Situation’ for use on
`
`clothing . . . , which is prima facie evidence of the Mark’s validity.” (Response 12.)
`
`“Common-law trademark rights are ‘appropriated only through actual prior use in
`
`commerce.’” Crystal Entm’t & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1321 (11th Cir.
`
`2011) (quoting Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193-94 (11th
`
`Cir. 2001)). “Trademark ownership is always appurtenant to commercial activity.”
`
`Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1022 (11th Cir. 1989). “‘The use
`
`of a mark in commerce . . . must be sufficient to establish ownership rights for a plaintiff
`
`to recover against subsequent users under [the Lanham Act].’” Crystal Entm’t & Filmworks,
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`643 F.3d at 1321 (quoting Planetary Motion, 261 F.3d at 1195). Courts in this circuit
`
`14
`
`

`
`Case 1:11-cv-24110-JJO Document 211 Entered on FLSD Docket 06/28/2013 Page 15 of 34
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`“appl[y] a two-part test to determine whether a party has proved ‘prior use’ of a mark
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`sufficient to establish ownership: ‘Evidence showing, first, adoption, and, second, use in
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`a way sufficiently public to identify or distinguish the marked goods in an appropriate
`
`segment of the public mind as those of the adopter of the mark.’” Id. (quoting Planetary
`
`Motion, 261 F.3d at 1195). “Under [a] ‘totality of circumstances’ analysis, a party may
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`establish ‘use in commerce’ even in the absence of sales.” Planetary Motion, 261 F.3d at
`
`1195. “Althoug

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