Surfvivor Media, Inc. v. Survivor Productions

• Decision Date: 04 May 2005
• Docket Number: No. 02-17064.,02-17064.
• Citation: 406 F.3d 625
• Parties: SURFVIVOR MEDIA, INC.; Peter S. Deptula, Plaintiffs-Appellants, v. SURVIVOR PRODUCTIONS; CBS Broadcasting Inc.; CBS Worldwide, Inc.; WPC Brands, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

406 F.3d 625

SURFVIVOR MEDIA, INC.; Peter S. Deptula, Plaintiffs-Appellants, v. SURVIVOR PRODUCTIONS; CBS Broadcasting Inc.; CBS Worldwide, Inc.; WPC Brands, Inc., Defendants-Appellees.

No. 02-17064.

United States Court of Appeals, Ninth Circuit.

Argued May 4, 2004.

Submitted May 14, 2004.

Filed May 4, 2005.

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Paul Maki, Honolulu, HI, for the plaintiffs-appellants.

Andrew M. White, White O'Connor Curry & Avanzado LLP, Los Angeles, CA, for the defendants-appellees.

Appeal from the United States District Court for the District of Hawaii; Leslie E. Kobayashi, Magistrate Judge, Presiding.¹ D.C. No. CV-01-00509-LEK.

Before: FARRIS, NOONAN, and RAWLINSON, Circuit Judges.

RAWLINSON, Circuit Judge:

Plaintiffs-Appellants Surfvivor Media, Inc., and Peter S. Deptula (collectively Surfvivor or Deptula) appeal the grant of summary judgment in favor of Defendants-Appellees Survivor Productions, L.L.C., et al. (collectively Survivor), on Surfvivor's federal and state trademark infringement claims. Surfvivor also challenges the magistrate judge's ruling limiting discovery to allow examination of only certain Survivor goods.

Because no material issue of fact was raised reflecting confusion between the marks, we affirm the entry of summary judgment in favor of Survivor. We also hold that the discovery rulings were well within the bounds of the court's discretion.

I. FACTUAL & PROCEDURAL BACKGROUND

A. Factual Background

1. Plaintiffs-Appellants and the Surfvivor Mark

Deptula holds three federal trademarks for the mark "Surfvivor," an amalgamation of the words "surf" and "survivor." Deptula has adorned the majority of his Hawaiian beach-themed products, ranging from sunscreen, to t-shirts, to surfboards, with that mark. Of these products, approximately thirty to fifty percent of Plaintiff's wares are emblazoned with the Surfvivor mark alone. The remaining wares sport a tiny Surfvivor mark along with a third-party logo, such as college insignia.

Visually, the Surfvivor mark consists of the term "Surfvivor" in block or cursive writing, often accompanied by a stylized graphic, such as a sun or a surfer. Deptula has been using this mark for several years and has advertised his wares on local television and radio shows, on his website, and at local trade shows. Surfvivor goods are primarily sold to Hawaiian consumers through the local university, a chain of drugstores, military exchanges, and Hawaiian branches of major retailers. Deptula would like to expand Surfvivor's out-of-state presence, but has not made any firm plans to do so.

2. Defendants-Appellees and the Survivor Mark

Several years after Deptula coined the "Surfvivor" name, the Defendants-Appellees began broadcasting a reality television show, Survivor, involving a cast that must survive in extreme outdoor conditions. The show has been a viewer favorite for several years.

Survivor's producers created a special Survivor logo for advertising and marketing purposes. As with the Surfvivor mark, the Survivor mark is emblazoned on a wide range of consumer merchandise, including t-shirts, shorts, and hats. The Survivor mark consists of the word "Survivor" in block script, and is often accompanied by the words "outwit[,] out-play[, and] outlast," or is superimposed on a stylized graphic suggesting the location of a particular series.

Survivor's producers acknowledge awareness of Deptula's mark.

3. Evidence of Actual Confusion

After Survivor aired, Deptula encountered a few people who wondered whether his business was sponsored by Survivor. One retailer and one customer mistook Survivor sunscreen for Deptula's product, and one trade show attendee thought that Deptula's business was endorsed by Survivor's producers.

Survivor never received any complaints from confused customers, and a survey commissioned by Survivor revealed that fewer than two percent of four hundred and two sunscreen purchasers were confused by the two marks. None of Deptula's customers ever returned any Surfvivor goods because of a mistaken belief that the goods they purchased were produced or endorsed by Survivor. No merchant stopped doing business with Deptula on account of confusion between the product lines.

B. Procedural Background

Deptula filed suit against Survivor for trademark infringement. During the course of pretrial litigation, Deptula petitioned the court for an order compelling discovery of any Survivor goods or services beyond "t-shirts, sunscreen and lipbalm." In response, the court limited discovery to Survivor t-shirts, sunscreen and lip balm, concluding that any other evidence would be irrelevant.

Survivor subsequently moved for summary judgment, which was granted on the basis that Deptula failed to present sufficient evidence to prove one of the elements of a trademark infringement claim— whether the marks are similar enough to create a "likelihood of confusion." Because Deptula's state law claims relied on the same likelihood of confusion standard as Deptula's federal claim, the state law claims were also dismissed. Deptula filed a timely appeal.

II. STANDARDS OF REVIEW

The decision to grant summary judgment in a trademark infringement claim is reviewed de novo, and all reasonable inferences are to be drawn in favor of the non-moving party. See Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir.1998). We may affirm on any basis finding support in the record. Commonwealth of the Northern Mariana Islands v. United States, 399 F.3d 1057, 1060 (9th Cir.2005). Although disfavored in trademark infringement cases, summary judgment may be entered when no genuine issue of material fact exists. See Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901-02 (9th Cir.2002).

Discovery rulings are reviewed for an abuse of discretion. See Garneau v. City of Seattle, 147 F.3d 802, 812 (9th Cir.1998). This standard also applies to rulings regarding the relevance of evidence.² See id.

III. ANALYSIS

Deptula asserts infringement claims under the Lanham Act, 15 U.S.C. § 1114, and related state law claims. A successful trademark infringement claim under the Lanham Act requires a showing that the claimant holds a protectable mark, and that the alleged infringer's imitating mark is similar enough to "cause confusion, or to cause mistake, or to deceive." KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., ___ U.S. ___, ___, 125 S.Ct. 542, 547, 160 L.Ed.2d 440 (2004) (citation omitted). The test for "likelihood of confusion" requires the factfinder to determine whether a "reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks." Dreamwerks, 142 F.3d at 1129 (internal quotation marks omitted).

We have recognized two distinct claims in the trademark infringement context: forward confusion and reverse confusion. See id. at 1130 n. 5. Forward confusion occurs when consumers believe that goods bearing the junior mark came from, or were sponsored by, the senior mark holder. See id. at 1129-30 & n. 5. To avoid summary judgment on a forward confusion claim, Deptula must raise a material question of fact regarding whether the buying public thought that Surfvivor was either the source of, or was sponsoring, the television show and its product line. By contrast, reverse confusion occurs when consumers dealing with the senior mark holder believe that they are doing business with the junior one. See id. To survive a summary judgment motion on a reverse confusion claim, a question of material fact would have to be raised as to whether consumers believed that Survivor was either the source of, or was a sponsor of, Deptula's wares. We address each theory in turn, and then discuss the disposition of Deptula's state law claims, and motion to compel discovery.

A. Forward Confusion Claim

We need not determine whether Deptula raised a material issue of fact on the forward confusion claim. Deptula may not proceed on this theory because he failed to reference it in his complaint. See Olsen v. Idaho State Bd. of Med., 363 F.3d 916, 929-30 (9th Cir.2004) (upholding dismissal of a claim where the complaint contained no facts in support of that claim). Deptula did not seek an opportunity to amend his complaint, relying instead on his argument that he sufficiently pled a claim for forward confusion. Accordingly, Deptula has no cognizable "forward confusion" claim to review on appeal. See id.

B. Reverse Confusion Claim

To analyze likelihood of confusion, we consider the following eight factors, generally referred to as the Sleekcraft factors:

(1) strength of the mark(s);

(2) relatedness of the goods;

(3) similarity of the marks;

(4) evidence of actual confusion;

(5) marketing channels;

(6) degree of consumer care;

(7) the defendants' intent;

(8) likelihood of expansion.

Dreamwerks, 142 F.3d at 1129 (citing to AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49) (9th Cir.1979) ("Sleekcraft"). The test is a fluid one and the plaintiff need not satisfy every factor, provided that strong showings are made with respect to some of them. See id. at 1129-30, 1132 (allowing case to proceed past summary judgment where the plaintiff overwhelmingly satisfied three Sleekcraft factors).

1. Strength of the Mark(s)

i. The Strength of the Senior (Surfvivor) Mark

The purpose of examining the strength of the plaintiff's mark is to determine the scope of trademark protection to which the mark is entitled.³ Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir.2002). The more unique the mark, the greater the degree of protection. See id.

Trademarks are divided into five categories. The two strongest sets of marks are "arbitrary" and "fanciful" marks, which trigger the highest degree of trademark protection. See id. at 1141. "Arbitrary" marks are common words that have no connection with the actual product—for example, "Dutch Boy" paint. Dreamwerks...