International Ass'n of Machinists and Aerospace Workers, AFL-CIO v. Winship Green Nursing Center

• Decision Date: 30 July 1996
• Docket Number: AFL-CIO,No. 96-1206,96-1206
• Citation: 103 F.3d 196
• Parties: , 41 U.S.P.Q.2d 1251 The INTERNATIONAL ASSOCIATION OF MACHINISTS AND AEROSPACE WORKERS,, et al., Plaintiffs, Appellants, v. WINSHIP GREEN NURSING CENTER, et al., Defendants, Appellees. . Heard
• Court: U.S. Court of Appeals — First Circuit

Page 196

103 F.3d 196

65 USLW 2452, 41 U.S.P.Q.2d 1251

The INTERNATIONAL ASSOCIATION OF MACHINISTS AND AEROSPACE

WORKERS, AFL-CIO, et al., Plaintiffs, Appellants, v. WINSHIP GREEN NURSING CENTER, et al., Defendants, Appellees.

No. 96-1206.

United States Court of Appeals, First Circuit.

Heard July 30, 1996.

Decided Dec. 30, 1996.

Mark Schneider, with whom John M. West and Bredhoff & Kaiser, P.L.L.C., Washington, DC, were on brief, for appellants.

Richard L. O'Meara, with whom Charles P. Piacentini, Jr. and Murray, Plumb & Murray, Portland, ME, were on brief, for appellees.

Before SELYA, Circuit Judge, TORRES ^* and SARIS, ^** District Judges.

SELYA, Circuit Judge.

In this eccentric case, the International Association of Machinists and Aerospace Workers (IAM or Union) charged an employer, Winship Green Nursing Center (Winship), with violating the Lanham Act, 15 U.S.C. §§ 1051-1127 (1994), through its unauthorized use of a service mark on propaganda disseminated during a union organizing campaign. ¹ The district court granted Winship's motion for brevis disposition, reasoning that the Union's claim failed to satisfy the Lanham Act's jurisdictional requirements because (1) the parties were not competing for the sale of commercial services, and (2) Winship's admittedly unauthorized use of the mark was in connection with services offered by the markholder rather than services offered by the infringer. See International Ass'n of Machinists v. Winship Green Nursing Ctr., 914 F.Supp. 651, 655-56 (D.Me.1996). The Union appeals. We affirm, albeit on a different ground.

I. BACKGROUND

We present the basic facts in the light most flattering to the party vanquished by summary judgment. All the relevant events occurred in 1994, and all dates refer to that year.

A

In May the Union mounted a campaign to organize the nonprofessional employees at Winship's facility in Bath, Maine. Not surprisingly, management resisted this initiative and exhorted the affected employees to vote against IAM's election as a collective bargaining representative. As part of its retort Winship hand-delivered two pieces of campaign literature to employees in the putative bargaining unit. These handouts form the basis for IAM's lawsuit.

1. The First Flier. In July Winship distributed a three-page flier, the first page of which asks rhetorically:

WHAT WOULD YOU DO IF YOU GOT THE ATTACHED LETTERS?

WOULD YOU BE ABLE TO FIND ANOTHER JOB?

HOW WOULD YOU PAY YOUR BILLS?

WOULD YOU WISH THAT THE MACHINISTS UNION HAD NEVER GOTTEN IN AT WINSHIP GREEN?

The flier then advises recipients that "IT'S NOT TOO LATE" and implores them to "GIVE [certain named managers] A CHANCE" by "VOT[ING] NO ON AUGUST 4." The letters, addressed individually to particular employees and dated one year after the scheduled election, comprise the second and third pages of the flier. One letter purports to be written on the Union's letterhead, complete with a reproduction of the IAM service mark (consisting of a set of machinist's tools surrounded by a gear and the IAM name) ² and the facsimile signature of an IAM plenipotentiary, Dale Hartford. This missive suggests that the Union had notified Winship of its obligation, pursuant to an invented collective bargaining agreement, to terminate the recipient's employment because of her failure to pay certain assessments (e.g., union dues and an initiation fee). The other epistle, signed by Winship's director of operations, is also postdated. It acknowledges Winship's receipt of the notice and professes to inform the addressee that the company must honor the Union's request.

2. The Second Flier. The remaining piece of campaign literature, disseminated by Winship a few days before the election, urges the reader to vote against unionization and warns that union membership will bring significant financial burdens. This flier contains a simulated invoice inscribed on what purports to be IAM's letterhead (and which bears the IAM service mark). Under a heading that reads "PAYABLE TO THE MACHINISTS UNION BY [employee's name]", the invoice lists amounts designated as union dues, an initiation fee, and fines. ³ Commentary, undiluted by subtlety, accompanies this listing: "NO MATTER WHAT THE UNION HAS TOLD YOU--JUST ASK THE EMPLOYEES AT LOURDES HOSPITAL" AND "JUST ASK THE 13 EMPLOYEES AT GENERAL ELECTRIC IN SOUTH PORTLAND WHO WERE FINED FOR CROSSING THE PICKET LINE THERE." Large, bold letters at the bottom of the invoice proclaim: "WITHOUT THE MACHINISTS UNION, DO NOT PAY THIS BILL."

Notwithstanding Winship's tactics--or, perhaps, due to them--the employees chose IAM as their collective bargaining representative in the August 4 election.

B

The Union proved to be a sore winner. It soon filed suit against Winship alleging inter alia trademark infringement and unfair competition under the Lanham Act. ⁴ The Union premised its federal claims on the theory that Winship's unauthorized use of the registered service mark occurred "in connection with ... services," namely, IAM's representational services, and thereby transgressed sections 32(1) and 43(a) of the Lanham Act. See 15 U.S.C. §§ 1114(1)(a) & 1125(a) (quoted infra note 5). The district court rejected this theory for the reasons previously mentioned. See IAM, 914 F.Supp. at 655-56. This appeal followed.

II. THE SUMMARY JUDGMENT STANDARD

Though the case is unconventional, the generic legal standard that we must apply is prosaic. Summary judgment is appropriate in trademark infringement cases, as elsewhere, "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 24 (1st Cir.1989) (quoting Fed.R.Civ.P. 56(c)). Generally speaking, a fact is "material" if it potentially affects the outcome of the suit, see Garside v. Osco Drug, Inc., 895 F.2d 46, 48 (1st Cir.1990), and a dispute over it is "genuine" if the parties' positions on the issue are supported by conflicting evidence, see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986). While an inquiring court is constrained to examine the record in the light most favorable to the summary judgment opponent and to resolve all reasonable inferences in that party's favor, see Hachikian v. FDIC, 96 F.3d 502, 504 (1st Cir.1996), defeating a properly documented motion for summary judgment requires more than the jingoistic brandishing of a cardboard sword. This is especially true in respect to claims or issues on which the nonmovant bears the burden of proof; in such circumstances she "must reliably demonstrate that specific facts sufficient to create an authentic dispute exist." Garside, 895 F.2d at 48; see also Anderson, 477 U.S. at 256, 106 S.Ct. at 2514.

We review de novo the district court's grant of summary judgment. See Mack v. Great Atl. & Pac. Tea Co., 871 F.2d 179, 181 (1st Cir.1989). Moreover, an appellate tribunal is not bound by the lower court's rationale but may affirm the entry of judgment on any independent ground rooted in the record. See, e.g., Hachikian, 96 F.3d at 504; Garside, 895 F.2d at 49.

III. ANALYSIS

Our analysis proceeds in five parts.

A

Trademark infringement and unfair competition laws exist largely to protect the public from confusion anent the actual source of goods or services. See, e.g., Star Fin. Servs., Inc. v. AASTAR Mortgage Corp., 89 F.3d 5, 9 (1st Cir.1996); DeCosta v. Viacom Int'l, Inc., 981 F.2d 602, 605 (1st Cir.1992), cert. denied, 509 U.S. 923, 113 S.Ct. 3039, 125 L.Ed.2d 725 (1993); 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23.01 (3d ed. 1996). The Lanham Act is cast in this mold. Generally speaking, the Act proscribes the unauthorized use of a service mark when the particular usage causes a likelihood of confusion with respect to the identity of the service provider. ⁵ See WCVB-TV v. Boston Athletic Ass'n, 926 F.2d 42, 44 (1st Cir.1991); see also Societe Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 641 (1st Cir.1992) (explaining in respect to trademarks that "only those appropriations ... likely to cause confusion are prohibited"). Consequently, likelihood of confusion often is the dispositive inquiry in a Lanham Act case. See, e.g., WCVB-TV, 926 F.2d at 44; Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 492 (1st Cir.1981). So it is here.

B

To demonstrate likelihood of confusion a markholder (or one claiming by, through, or under her) must show more than the theoretical possibility of confusion. See American Steel Foundries v. Robertson, 269 U.S. 372, 382, 46 S.Ct. 160, 162-63, 70 L.Ed. 317 (1926) (requiring probable confusion); Star, 89 F.3d at 10 (requiring evidence of a substantial likelihood of confusion); accord 3 McCarthy, supra, § 23.01[a]. Just as one tree does not constitute a forest, an isolated instance of confusion does not prove probable confusion. To the contrary, the law has long demanded a showing that the allegedly infringing conduct carries with it a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care. See McLean v. Fleming, 96 U.S. 245, 251, 24 L.Ed. 828 (1877); Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir.1978), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979); Coca-Cola Co. v. Snow Crest Beverages, Inc., 162 F.2d 280, 284 (1st Cir.), cert. denied, 332 U.S. 809, 68 S.Ct. 110, 92 L.Ed. 386 (1947). This means, of course, that confusion resulting from the consuming public's carelessness, indifference, or ennui will not suffice. See, e.g., United States v. 88 Cases, More or Less, Containing Bireley's Orange Beverage, 187 F.2d 967, 971 (3d Cir.) (inferring that "the legislature contemplated the reaction of the ordinary person who is neither...