American Express Co. v. Goetz

• Decision Date: 04 February 2008
• Docket Number: Docket No. 06-2184-cv.
• Citation: 515 F.3d 156
• Parties: AMERICAN EXPRESS CO., Plaintiff-Counter-Defendant-Appellee, v. Stephen G. GOETZ and Gardner Design Group, LLC, Defendants-Counter-Plaintiffs-Appellants.
• Court: U.S. Court of Appeals — Second Circuit

515 F.3d 156

AMERICAN EXPRESS CO., Plaintiff-Counter-Defendant-Appellee, v. Stephen G. GOETZ and Gardner Design Group, LLC, Defendants-Counter-Plaintiffs-Appellants.

Docket No. 06-2184-cv.

United States Court of Appeals, Second Circuit.

Argued March 2, 2007.

Decided February 4, 2008.

Keith A. Vogt, Chicago, Illinois (Rolf O. Stadheim, Joseph A. Grear, George C. Sumrnerfield, Stadheim & Grear, Ltd., Chicago, IL; Micah R. Jacobs, Jacobs & Ferraro, LLP, San Francisco, CA, of counsel), for Defendants-Appellants.

Marc J. Rachman, New York, N.Y. (Howard J. Rubin, Shirin Keen, Davis & Gilbert, LLP, New York, NY, of counsel), for Plaintiff-Appellee.

Before: JACOBS, Chief Judge, CARDAMONE, and POOLER, Circuit Judges.

PER CURIAM:

Many might associate the phrase MY LIFE. MY CARD. with advertisements for the American Express credit card featuring celebrity cardholders like Robert De Niro and Tiger Woods. But before American Express Co. (American Express) made the phrase famous, Stephen Goetz, the president of Gardner Design Group, LLC (Goetz), used a virtually identical slogan in a sales pitch to credit card companies. Goetz's idea was to personalize credit cards by reproducing photographs selected by cardholders on the face of their cards. In search of clients, Goetz sent proposals to various credit card companies, including American Express, containing a description of his concept and the catchphrase My Life, My Card.

In response to American Express's MY LIFE. MY CARD. campaign, Goetz demanded the company cease and desist using the slogan. American Express responded by commencing the instant declaratory judgment action in the United States District Court for the Southern District of New York before Judge Lewis A. Kaplan seeking a declaration that it had not misappropriated the slogan and that Goetz lacked a viable claim for infringement. In a judgment entered on February 24, 2006 the district judge granted summary judgment to American Express and dismissed Goetz's counterclaims for misappropriation and trademark infringement.

Goetz's principal challenge on appeal is to the district court's ruling that he had not used the slogan as a trademark. We affirm.

BACKGROUND

In the summer of 2004 Goetz, who was then working as a corporate consultant for a company called Mez Design, formulated an idea to enable credit card customers to personalize a card by choosing a photograph to be printed on the card's face. Goetz developed proprietary software with this capability and endeavored to license or sell the software to credit card companies. In proposing his idea to potential clients, Goetz prominently displayed the slogan he created—"My Life, My Card"—believing that the phrase "would perfectly embody what card consumers sought."

On July 30, 2004 Goetz mailed a proposal to American Express with a line reading: "`My Life, My Card' American Expressv delivers personalized cards to its cardholders!" Goetz sent similar proposals to Mastercard, Citigroup, Kessler Financial Services, and Metavante, in each case tailoring the catchphrase to the prospective client. With the help of Hans Krebs, an expert in web design, Goetz also created an Internet-based demonstration of his card personalization concept, which prominently displayed the slogan My Life, My. Card on Krebs' server at http:// mylifemycard.hanskrebs.com. On September 7, 2004 Goetz registered the domain name www.mylife-mycard.com and the following day he filed an application with the United States Patent and. Trademark Office for registration of the My Life, My Card mark.

American Express never replied to Goetz's proposal, but MasterCard expressed interest. In December 2004 and February 2005 Goetz met with Master-Card to discuss his personalized credit card services and, in his correspondence with Mastercard representatives, Goetz suggested they view his demonstration on the Internet.

Also in the summer of 2004 American Express hired the Ogilvy Group advertising agency (Ogilvy) to assist in the development of a new global campaign for American Express products. On July 22, 2004 Ogilvy proposed the MY LIFE. MY CARD. idea as the lynchpin of American Express's new campaign. American Express responded favorably and, between July 26 and July 28, Ogilvy developed several advertisements centering on the slogan. On July 29 Ogilvy's outside counsel conducted a preliminary trademark search to determine the availability of the slogan as a service mark in the United States. Ogilvy next asked its counsel to follow-up with a full trademark search on July 31, which was two days prior to the scheduled delivery date of Goetz's proposal to American Express. Neither trademark search produced any references to Goetz.

After deciding in August 2004 to proceed with the slogan and the campaign, American Express registered the domain name www.mylifemycard.com on September 1, 2004 and filed an Intent to Use application for MY LIFE. MY CARD. with the United States Patent and Trademark Office on September 15, 2004. Ultimately, in early November 2004 American Express launched the global campaign by means of television, print, outdoor, and Internet advertising. The present litigation followed.

During discovery, Goetz sought to examine in their entirety numerous computer hard drives belonging to Ogilvy and American Express employees. When American Express refused this request, Goetz moved to compel production. On October 27, 2005 Judge Kaplan granted Goetz's motion only to the extent it involved electronic records pertinent to the disputed dates of creation of two documents. The district court also granted American Express's motion to stay further discovery pending the court's disposition of its summary judgment motion.

In a judgment entered on February 24, 2006 the court granted summary judgment to American Express and dismissed Goetz's counterclaims. The court held that Goetz had "no valid protectable trademark rights in My Life, My Card or any other purported mark using those words that are senior to [American Express's] rights in MY LIFE. MY CARD?' The district court also observed that Goetz did not contest that American Express independently conceived of the slogan. Following entry of judgment, Goetz filed a timely appeal of the trademark ruling as well as its. October 27, 2005 order denying his more far-reaching discovery motion.

DISCUSSION

I Standard of Review

We review the district court's grant of summary judgment de novo, construing the facts in the light most favorable to Goetz. See Tocker v. Philip Morris Cos., 470 F.3d 481, 486 (2d Cir.2006). Discovery rulings are reviewed under an abuse of discretion standard. Gualandi v. Adams, 385 F.3d 236, 244-45 (2d Cir.2004).

II Goetz Did Not Use the Slogan As a Trademark

Under the Lanham Act, 15 U.S.C. §§ 1051 et seq., a trademark or service mark is any combination of words, names, symbols or devices that are used to identify and distinguish goods or services and to indicate their source. See 15 U.S.C. § 1127. While copyright law protects the content of a creative work itself, see EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 63 (2d Cir.2000), it is trademark law that protects those symbols, elements or devices which identify the work in the marketplace and prevent confusion as to its source. See id. at 62-63; see also 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 6:17.50, at 6-38 (4th ed. 2000) (noting that trademark law does not serve as a substitute for copyright). For example, the title of a song might identify that song in the marketplace, but the musical composition itself would not perform that function; thus, while the title may be protectable by trademark, the composition would not be. EMI Catalogue P'ship, 228 F.3d at 63. Further, a mark that does not perform the role of identifying a source is not a trademark. See id. at 64.

Notably, the same mark that performs this source-identifying role in one set of hands may constitute the creative work itself in another. Such distinction often is appropriate when an advertising agency licenses a slogan to a client for the client's use in marketing a product. In this scenario the slogan is part of the advertising agency's creative work, but it may become a source identifier when used by the client. See 2 McCarthy, supra, 16.39, at 16-64.2 ("In many situations ... the mere conception of a mark by an advertising agency for possible use by the client does not create any trademark rights in the agency.").

The Patent and Trademark Office's Trademark Trial and Appeal Board has long recognized, in such situations, that the slogans cannot be registered as marks by the advertising agency, even if they would be subject to registration by the end users of the marks. See In re Admark, inc., 214 U.S.P.Q. 302, 303 (T.T.A.B.1982). The reason is plain: the slogan does not identify and distinguish the services of the advertising agency, but rather is the creative work itself. Id.; see also In re Adver. & Mktg. Devi, Inc., 821 F.2d 614, 620 (Fed.Cir.1987) (explaining that an advertising agency cannot register a mark it uses to identify the subject of the advertising as opposed to the agency's services); In re Local Trademarks, Inc., 220 U.S.P.Q. 728, 730 (T.T.A.B.1983) ("We believe that applicant's insurance agency clients would view the slogan `WHEN IT'S TIME TO ACT[]' ... as a feature of applicant's product and not as a mark identifying and distinguishing the service being rendered by applicant.").

In the present case, construing all the facts in Goetz's favor, the only reasonable conclusion that can be drawn is that My Life, My Card was a component of Goetz's business proposal to the credit card companies rather than a mark designating the origin of any goods or services he offered to them.

According to Goetz, he believed that the phrase My Life, My Card would "perfectly embody what card consumers sought." Yet, for the obvious reason that...