Case 3:06-cv-00444-TSL-JCS Document 33 Filed 02/29/08 Page 1 of 10
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF MISSISSIPPI
`JACKSON DIVISION
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`STEPHEN MONTALTO
`
`PLAINTIFF
`
`VS.
`
`CIVIL ACTION NO. 3:06CV444TSL-JCS
`
`VIACOM INTERNATIONAL, INC.
`
`DEFENDANT
`
`MEMORANDUM OPINION AND ORDER
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`This cause is before the court on the motion of defendant
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`Viacom International, Inc. (Viacom) for summary judgment pursuant
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`to Rule 56 of the Federal Rules of Civil Procedure. Plaintiff has
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`not responded to this motion, and the time for doing so has now
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`passed. Having considered the memorandum of authorities, together
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`with attachments, submitted by defendant, the court concludes that
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`the motion is well taken and should be granted.
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`In his complaint, plaintiff alleges that he is engaged in the
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`music industry as a musical artist, disc jockey and general
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`entertainer; that he has used the name “Joe Shmo” as his
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`entertainment name and has used the “Joe Shmo” mark since 2001 on
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`compact disc covers and party flyers; that he applied to the
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`United States Trademark Office for registration of the “Joe Shmo”
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`mark and that the mark was registered to him on March 8, 2005 for
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`“music compact discs”; and that in and before 2003, defendant
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`unlawfully, willfully and maliciously used the “Joe Schmo” mark in
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`broadcasting on its cable network SpikeTV of a television show
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`
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF MISSISSIPPI
`JACKSON DIVISION
`
`STEPHEN MONTALTO
`
`PLAINTIFF
`
`VS.
`
`CIVIL ACTION NO. 3:06CV444TSL-JCS
`
`VIACOM INTERNATIONAL, INC.
`
`DEFENDANT
`
`MEMORANDUM OPINION AND ORDER
`
`This cause is before the court on the motion of defendant
`
`Viacom International, Inc. (Viacom) for summary judgment pursuant
`
`to Rule 56 of the Federal Rules of Civil Procedure. Plaintiff has
`
`not responded to this motion, and the time for doing so has now
`
`passed. Having considered the memorandum of authorities, together
`
`with attachments, submitted by defendant, the court concludes that
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`the motion is well taken and should be granted.
`
`In his complaint, plaintiff alleges that he is engaged in the
`
`music industry as a musical artist, disc jockey and general
`
`entertainer; that he has used the name “Joe Shmo” as his
`
`entertainment name and has used the “Joe Shmo” mark since 2001 on
`
`compact disc covers and party flyers; that he applied to the
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`United States Trademark Office for registration of the “Joe Shmo”
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`mark and that the mark was registered to him on March 8, 2005 for
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`“music compact discs”; and that in and before 2003, defendant
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`unlawfully, willfully and maliciously used the “Joe Schmo” mark in
`
`broadcasting on its cable network SpikeTV of a television show
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`
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`Case 3:06-cv-00444-TSL-JCS Document 33 Filed 02/29/08 Page 2 of 10
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`called “The Joe Schmo Show,” and thereby infringed plaintiff’s
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`mark and caused economic detriment to plaintiff. On these
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`allegations, plaintiff has asserted federal claims for trademark
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`infringement and unfair competition, and state law claims for
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`unfair competition, tortious interference with business advantage
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`and negligent misrepresentation.
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`In its motion for summary judgment, Viacom argues that
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`plaintiff’s federal claim for trademark infringement and for
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`unfair competition should be dismissed because plaintiff cannot
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`show a likelihood of confusion between his use of the “Joe Shmo”
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`mark for music compact discs and Viacom’s airing of “the Joe Schmo
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`Show,” which it describes as a reality television program with a
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`storyline as a parody of reality television game shows.1 “To
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`prove trademark infringement and unfair competition under federal
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`law, [plaintiff] must show that the use of the [“Joe Schmo”] mark
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`by [defendant] is likely to cause confusion among consumers as to
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`the source, affiliation, or sponsorship of [defendant’s] products
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`or services.” Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d
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`1
`As explained in the affidavit of Chris Linn, Viacom’s
`Senior Vice President of Series Development and Programming,
`The program’s concept was that the central character,
`referred to as “Joe Schmo,” believed he was one of nine
`contestants on a reality television show called “Lap of
`Luxury.” Unbeknownst to the main character, everyone
`else on the program was an actor and the program itself
`was all an elaborate hoax designed to elicit comedic
`reactions.”
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`2
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`Case 3:06-cv-00444-TSL-JCS Document 33 Filed 02/29/08 Page 3 of 10
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`477, 483 (5th Cir. 2004). “A ‘likelihood of confusion’ means that
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`confusion is not just possible, but probable.” Id.
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`In assessing whether use of a mark creates a likelihood
`of confusion as to affiliation or endorsement, we
`consider the “digits of confusion,” a list of factors
`that tend to prove or to disprove that consumer
`confusion is likely. Those factors are: (1) the type of
`mark allegedly infringed; (2) the similarity between the
`two marks; (3) the similarity of the products or
`services; (4) the identity of retail outlets and
`purchasers; (5) the identity of the advertising media
`used; (6) the defendant's intent; and (7) any evidence
`of actual confusion.
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`Id.at 484-85 (quoting Westchester Media v. PRL USA Holdings, Inc.,
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`214 F.3d 658, 664 (5th Cir. 2000)).
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`“The first digit, that is, the type of trademark allegedly
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`infringed, questions whether the trademark is so distinctive that
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`a consumer encountering the defendant's mark would be likely to
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`assume that the source of a product or service is the owner of the
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`trademark.” Lyons Partnership v. Giannoulas, 179 F.3d 384, 389
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`(5th Cir. 1999). Thus, the “type” of trademark refers to the
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`strength of the senior user’s mark; “[t]he stronger the mark, the
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`greater the protection it receives because the greater the
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`likelihood that consumers will confuse the junior user's use with
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`that of the senior user.” Elvis Presley Enterprises, Inc. v.
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`Capece, 141 F.3d 188, 201 (5th Cir. 1998) (citations omitted) see
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`also Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 259 (5th
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`Cir. 1980) (“strong marks are widely protected, as contrasted to
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`weak marks”) (quoting Lunsford, Julius R., Jr., “Trademark
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`3
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`Case 3:06-cv-00444-TSL-JCS Document 33 Filed 02/29/08 Page 4 of 10
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`Basics,” 59 Trademark Rep. 873, 878 (1969)); Lyons P’ship, 179
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`F.3d at 389 (“the stronger the trademark, the more likely that
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`this factor would weigh in favor of the plaintiff”).
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`Here, there is no evidence that plaintiff’s mark is
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`distinctive or well known, even in plaintiff’s own field of music
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`performance. As defendant notes, plaintiff has offered no
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`evidence that the public has been educated to recognize and accept
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`his “Joe Shmo” mark as a hallmark of the source of his product,
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`which lends support to a conclusion that the mark is weak. Cf.
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`Louisiana World Exposition, Inc. v. Logue, 746 F.2d 1033, 1040 (5th
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`Cir. 1984) (extensive promotion supports finding of strong mark).
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`Moreover, defendant has presented evidence of numerous third-party
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`uses of similar marks by musicians and music groups, including
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`“Joe Schmoe,” “Joe and the Schmos,” and “Joe Schmo: Music for the
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`Living.” Third-party usage weakens a mark and limits the
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`protection to be accorded plaintiff's mark. See Amstar Corp., 615
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`F.2d at 260. This is particularly true where the mark is used
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`outside the field in which it is used by the plaintiff. See id.;
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`see also Scott Paper Co. v. Scott's Liquid Gold, Inc., 598 F.2d
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`1225, 1331 (3d Cir. 1978) (plaintiff's ownership of the mark
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`“Scott” as applied to paper products did not preclude defendant's
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`use of “Scott” on furniture polish) (cited in Amstar Corp.).
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`The second factor, the similarity between the two marks,
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`takes into account the similarity of appearance, sound and
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`4
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`Case 3:06-cv-00444-TSL-JCS Document 33 Filed 02/29/08 Page 5 of 10
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`meaning, that is, their “overall impression,” not in a vacuum, but
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`rather in the “the context that a customer perceives them in the
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`marketplace. . . .” Scott Fetzer Co., 381 F.3d at 485. See also
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`CICCorp., Inc. v. AIMTech Corp., 32 F. Supp. 2d 425, 436 (S.D.
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`Tex. 1998) (“The court must consider the overall commercial
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`impression of the marks, as well as the setting in which they
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`appear.”); Restatement (Third) of Unfair Competition § 21(a)(i)
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`(1995) (stating that “the overall impression created by the
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`[marks] as they are used in marketing the respective goods and
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`services” is relevant to how similar two marks are) (cited in
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`Elvis Presley Enterprises, Inc., 141 F.3d at 197). “In the final
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`analysis this digit turns on whether, under the circumstances in
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`which they are used, the marks are similar enough that customers
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`are likely to conclude that [plaintiff] and [defendant] are
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`associated.” CICCorp., Inc., 32 F. Supp. 2d at 436. Defendant
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`submits that even though “Joe Shmo” and “The Joe Schmoe Show” may
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`be phonetically similar (though certainly not identical), they are
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`easy for the public to distinguish in context and as used in
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`connection with totally different goods and services, i.e., in
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`their presentation. This is clearly the case.
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`The third factor does not support plaintiff’s claim of
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`infringement inasmuch as there is no similarity in his and
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`defendant’s products; “The Joe Schmo Show” was a television series
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`5
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`Case 3:06-cv-00444-TSL-JCS Document 33 Filed 02/29/08 Page 6 of 10
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`aired on cable television while “Joe Shmo” was a mark used on
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`plaintiff’s music compact disc.
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`Plaintiff has offered no evidence as to where or how his
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`compact disc is or has been distributed, and thus has not
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`identified any connection between retail outlets used by the
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`parties or the consumers of their products. But, as defendant
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`points out, even assuming that plaintiff’s music discs are
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`distributed in record stores or on-line, those modes of
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`distribution are completely different from cable television.
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`Neither has plaintiff shown that the parties used the same or
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`similar advertising media. According to defendant, “The Joe Schmo
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`Show” was publicized on cable television, where the show was
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`aired. Plaintiff has offered no evidence of how he advertises his
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`product.
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`On the digit of intent, there is nothing in the record to
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`indicate that defendant adopted the name “The Joe Schmo Show” with
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`the intent of confusing customers and thereby benefiting from
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`plaintiff’s mark. On the contrary, defendant has presented
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`evidence that it believed that there was no conflict in its use of
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`“The Joe Schmo Show” and other “Joe Schmo” marks because of the
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`entirely different nature of its product. Thus, the court finds
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`that defendant did not adopt its mark with the intent of deriving
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`benefit from plaintiff’s reputation. See Exxon Corp. v. Texas
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`Motor Exchange of Houston, Inc., 628 F.2d 500, 506 (5th Cir. 1980).
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`6
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`Case 3:06-cv-00444-TSL-JCS Document 33 Filed 02/29/08 Page 7 of 10
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`“The best evidence of likelihood of confusion is provided by
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`evidence of actual confusion.” Id. (citing Roto-Rooter Corp. v.
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`O'Neal, 513 F. 2d 44 (5th Cir. 1975)). Plaintiff has offered no
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`evidence of actual confusion.
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`From the foregoing, it is clear that plaintiff has failed to
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`present sufficient evidence to support a finding of likelihood of
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`confusion. It follows that his federal claims must be dismissed.
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`In addition to his federal claims, plaintiff has undertaken to
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`assert a variety of claims under state law, including for unfair
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`competition, based on his allegation that defendant’s use of “The
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`Joe Schmo Show” mark “is likely to confuse the public as to the
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`origin, source or sponsorship of Defendant’s services”; for
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`trademark dilution, based on his allegation that defendant’s use
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`of “The Joe Schmo Show” mark “is likely to dilute the distinctive
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`quality of the [plaintiff’s] Mark and cause injury to Plaintiff’s
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`business reputation”; for deceptive trade practices, based on an
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`allegation that defendant has unlawfully held itself out as an
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`authorized user of plaintiff’s mark; for negligent
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`misrepresentation, based on an allegation that defendant has
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`negligently misrepresented ownership of plaintiff’s mark; and, for
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`tortious interference with business advantage, based on his
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`allegation that defendant broadcast derogatory Joe Schmo episodes
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`when it knew or should have known that plaintiff was a music
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`7
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`Case 3:06-cv-00444-TSL-JCS Document 33 Filed 02/29/08 Page 8 of 10
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`artist with a protected mark and would suffer losses from the
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`airing of such episodes.
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`Defendant submits that plaintiff is foreclosed from bringing
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`any claim for unfair competition under Mississippi law because he
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`did not first attempt to resolve the claim through the informal
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`dispute settlement program established by the Attorney General, as
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`required by Miss. Code Ann. § 75-24-15(2).2 It argues,
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`alternatively, that even if plaintiff’s claim were not barred for
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`that reason, the claim could not succeed because he cannot prove a
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`likelihood of confusion. There is merit to both grounds urged by
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`defendant, and this claim will be dismissed.
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`According to defendant, plaintiff’s putative state law claim
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`for trademark dilution fails because he has not shown that his
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`mark is “famous,” an essential element of the claim. Mississippi
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`Code Annotated § 75-25-25 provides as follows:
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`2
`Mississippi Code Annotated § 75-24-5 provides a cause of
`action for “(B) misrepresentation of the source, sponsorship,
`approval or certification of goods or services;” “(C)
`misrepresentation of affiliation, connection or association with,
`or certification by another;” . . . “(E) “representing the goods
`or services as having sponsorship, approval, characteristics,
`ingredients, uses, benefits or qualities that they do not have or
`that a person has sponsorship, approval, status, affiliation or
`connection that he does not have;” and/or “(H) disparaging the
`goods, services, or business or another by false and misleading
`representation of fact.” Section 75-24-15(2) states, “In any
`private action brought under this chapter, the plaintiff must have
`first made a reasonable attempt to resolve any claim through an
`informal dispute settlement program approved by the Attorney
`General.”
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`8
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`Case 3:06-cv-00444-TSL-JCS Document 33 Filed 02/29/08 Page 9 of 10
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`The owner of a mark which is famous in this state shall
`be entitled, subject to the principles of equity, to an
`injunction against another's use of a mark, commencing
`after the owner's mark becomes famous, which causes
`dilution of the distinctive quality of the owner's mark,
`and to obtain such other relief as is provided in this
`section. In determining whether a mark is famous, a
`court may consider factors such as, but not limited to:
`(a) The degree of inherent or acquired distinctiveness
`of the mark in this state;
`(b) The duration and extent of use of the mark in
`connection with the goods and services;
`(c) The duration and extent of advertising and publicity
`of the mark in this state;
`(d) The geographical extent of the trading area in which
`the mark is used;
`(e) The channels of trade for the goods or services with
`which the owner's mark is used;
`(f) The degree of recognition of the owner's mark in its
`and in the other's trading areas and channels of trade
`in this state; and
`(g) The nature and extent of use of the same or similar
`mark by third parties.
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`As plaintiff has offered no proof that his mark is famous, within
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`the contemplation of the statute, his claim for trademark dilution
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`will be dismissed.
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`In his claim for deceptive trade practice, plaintiff charges
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`that defendant unlawfully held itself out as an authorized user of
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`plaintiff’s mark; but there is nothing to support this charge.
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`His claim for negligent misrepresentation similarly alleges that
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`defendant negligently misrepresented ownership of plaintiff’s
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`mark; but neither is there proof to support this charge.
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`Plaintiff’s claim for tortious interference with business
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`advantage is premised on his allegation that defendant aired
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`derogatory episodes of “The Joe Schmo Show,” including an episode
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`9
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`Case 3:06-cv-00444-TSL-JCS Document 33 Filed 02/29/08 Page 10 of 10
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`titled “Joe Schmo Can’t Rap,” which it knew or should have known
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`would damage his reputation as a musician. To succeed on a claim
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`for intentional interference with business advantage, plaintiff
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`must demonstrate that “(1) defendant’s acts were intentional and
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`willful; (2) defendant’s acts were calculated to cause damage to
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`plaintiff in his lawful business; (3) defendant’s acts were done
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`with unlawful purpose of causing damage and loss without right or
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`justifiable cause on part of defendant; and (4) actual damage and
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`loss resulted.” Christmon v. Allstate Ins. Co., 82 F. Supp. 2d
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`612, 615 (S.D. Miss. 2000). Defendant submits that summary
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`judgment is mandated on this claim in view of the absence of proof
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`to support any of these elements. The court agrees, and concludes
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`that this claim is due to be dismissed, along with all plaintiff’s
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`other claims.
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`Based on the foregoing, it is ordered that defendant’s motion
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`for summary judgment is granted.3
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`A separate judgment will be entered in accordance with Rule
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`58 of the Federal Rules of Civil Procedure.
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`SO ORDERED this 29th day of February, 2008.
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`/s/ Tom S. Lee
`UNITED STATES DISTRICT JUDGE
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`3
`Although it concludes that summary judgment should be
`granted, the court rejects defendant’s request for attorney’s
`fees.
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`10
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