Interstellar Starship v. Epix, Inc., Civ. No. 97-107-FR.
| Decision Date | 20 November 1997 |
| Docket Number | Civ. No. 97-107-FR. |
| Parties | INTERSTELLAR STARSHIP SERVICES, LIMITED, Plaintiff-Counterclaim Defendant, v. EPIX, INC., an Illinois corporation, Defendant-Counterclaimant, v. Michael R. TCHOU, Counterclaim Defendant. |
| Court | U.S. District Court — District of Oregon |
Lynn S. Walsh, Portland, OR, William S. Lovell, Aloha, OR, for Plaintiff-Counterclaim Defendant.
Peter E. Heuser, Stephen F. Gass, Kolisch, Hartwell, Dickinson, McCormack & Heuser, Portland, OR, Sheldon L. Epstein, Wilmette, IL, for Defendant-Counterclaimant.
The matters before the court are 1) the plaintiff-counterclaim defendants' motion for summary judgment (# 34); and 2) the defendant-counterclaimant's motion for summary judgment of validity, enforceability and infringement of its trademark (# 40).
On January 21, 1997, the plaintiff, Interstellar Starship Services, Limited (Interstellar Starship), filed this action against the defendant, Epix, Inc., for a judgment declaring that Interstellar Starship's use of the domain name "epix.com" on the Internet does not infringe the registered trademark "EPIX" under the trademark laws of the United States.
On May 19, 1997, Epix, Inc. filed an answer and counterclaim against Interstellar Starship and its president, Michael R. Tchou, alleging that Interstellar Starship's use of the domain name "epix.com" infringes the registered trademark "EPIX" under the trademark laws of the United States.
Interstellar Starship is an Oregon corporation owned by Michael R. Tchou. The registered, assumed business name of Interstellar Starship is "epix.com." Interstellar Starship uses the name "epix.com" only in connection with publicizing the activities of a theater group called the "Clinton Street Cabaret" and the theater group's "Rocky Horror Picture Show," which includes digital images of cast members made by "epix.com."
Interstellar Starship serves as the principal source of income for the consulting services provided by Michael R. Tchou in "design for test" circuit analysis. Interstellar Starship represents that the consulting service provided by Interstellar Starship does not use the mark "epix.com." Epix, Inc. maintains that "epix.com" is also used in the consulting business conducted by Interstellar Starship.
Epix, Inc. is a Delaware corporation engaging in the manufacture and sale of video imaging hardware and software. Epix, Inc. engineers, manufactures and markets products which enable an artist or an engineer to record, save, retrieve, display, manipulate, annotate, enhance, edit or print pictures from video cameras, other cameras, and other electronic imaging sources — such as the Internet. The products of Epix, Inc. are sophisticated and are used primarily by university and industrial researchers.
Since November of 1984, Epix, Inc. has regularly and continuously used the mark "EPIX" to identify and advertise its services and products. Epix, Inc. is the owner of the registered trademark "EPIX," which was registered on the Principal Register of the United States Patent and Trademark Office, Registration No. 1,618,449 for PRINTED CIRCUIT BOARDS AND COMPUTER PROGRAMS FOR IMAGE ACQUISITION, PROCESSING, DISPLAY AND TRANSMISSION, IN CLASS 9.
On January 25, 1995, Interstellar Starship caused to have registered with Network Solutions, Inc. the domain name "epix.com."
On March 9, 1995, Epix, Inc. caused to have registered with Network Solutions, Inc. the domain name "epixinc.com."
On June 26, 1996, Epix, Inc. initiated a claim with Network Solutions, Inc. to the domain name "epix.com."
On September 11, 1996, Epix, Inc. asserted to Network Solutions, Inc. that Interstellar Starship infringes the registered trademark "EPIX" by using the Internet, which assertion included a printout of the "epix.com" home page that showed the "Rocky Horror Picture Show."
On October 4, 1996, Interstellar Starship received a letter from Network Solutions, Inc. stating that Network Solutions, Inc. was initiating its policy in effect at that time which gave Interstellar Starship the choice of (1) filing a lawsuit, or (2) having its domain name "epix.com" deactivated.
On November 8, 1996, Interstellar Starship filed a trademark and a service mark application to register the mark "EPIX" for "computer graphics design" and "computer graphics" in Classes 16 and 42, respectively. Both applications allege a date of first use in commerce of May 1, 1994. Interstellar Starship represents that these applications reflect an error on the part of its attorney because there was a discrepancy between the mark recited, "EPIX," as being sought and the actual mark being used, "epix.com." On June 23, 1997, the United States Patent and Trademark Office notified Interstellar Starship of statutory refusal under Section 2(D).
On December 5, 1996, Epix, Inc. filed an affidavit of continuous use and an affidavit for acquiring incontestability for a mark registered on the Principal Register with the United States Patent and Trademark Office for the mark "EPIX." The trademark registration submitted by Epix, Inc. and accepted by the United States Patent and Trademark Office on December 10, 1996 recites a date of November, 1984 for first use of the trademark and identifies the pertinent goods as "printed circuit boards and computer programs for image acquisition, processing, display and transmission in Class 9."
The words "computer graphics designs" or "services for the design of computer graphics" or words of like import do not appear in the file of EPIX Registered Trademark No. 1,618,449. Termination of an Opposition against issuance of Registered Trademark No. 1,618,449 was subject to a settlement agreement requiring that "Epix shall now and at all times in the future use the mark EPIX only in conjunction with printed circuit boards and computer programs for image acquisition, processing, display and transmission."
On April 30, 1997, Epix, Inc. applied to the United States Patent and Trademark Office for a combined trademark registration for goods, "computer graphics designs," and a service mark registration for "services for the design of computer graphics." Epix, Inc. claimed that the trademark and the service mark had both been in commerce.
Interstellar Starship concedes that Epix, Inc. is the owner of Registered Trademark No. 1,618,449, "EPIX." Interstellar Starship contends that Registered Trademark No. 1,618,449, as claimed by Epix, Inc. in this case, is invalid. Interstellar Starship explains that Epix, Inc. claims in its answer an ownership of a trademark that includes the language "computer graphics designs, services for the design of computer graphics." Interstellar Starship contends that Epix, Inc. has not made application to the United States Patent and Trademark Office and does not own a registered trademark pertaining to computer graphics design, and therefore owns no service mark at all. Interstellar Starship contends that a mark that encompasses both goods and services within the "goods" classification cannot exist as a matter of law.
Interstellar Starship contends that Epix, Inc. owns a registered trademark for "EPIX," which encompasses only those goods that conform to the description of goods in the trademark, i.e. PRINTED CIRCUIT BOARDS AND COMPUTER PROGRAMS FOR IMAGE ACQUISITION, PROCESSING, DISPLAY AND TRANSMISSION, IN CLASS 9.
Interstellar Starship contends that even if the trademark "EPIX" as claimed by Epix, Inc. is valid, there is little likelihood of confusion between the "EPIX" mark owned and used by Epix, Inc. and the "epix.com" domain name used by Interstellar Starship on the Internet. Interstellar Starship argues that an actual or prospective customer of Epix, Inc. could not possibly be confused in its purchasing decisions vis-a-vis "EPIX" and "epix.com" because such a customer cannot purchase either a circuit board or a computer program from "epix.com" or, conversely, an image of a cast member of the Clinton Street Cabaret from Epix, Inc.
CONTENTIONS OF EPIX, INC.
Epix, Inc. contends that the "EPIX" trademark is incontestable, and that Epix, Inc. is entitled to summary judgment of validity of its registration as a matter of law. Epix, Inc. concedes that its trademark registration does not recite the words "computer graphics." However, Epix, Inc. contends that its sales of "printed circuit boards and computer programs for image acquisition, processing, display and transmission" (Statement of Concise Facts of Epix, Inc., p. 2) provides trademark rights which are broad enough to result in the likelihood of confusion with the computer consulting services of Interstellar Starship, which uses "epix.com" in its circuit board consulting business.
Epix, Inc. contends that there is infringement because the "goods and services are the same." Reply Memorandum of Epix, Inc., p. 6 (emphasis in original). Epix, Inc. further contends that the marks are the same because "EPIX" is the identifying or host portion of the "epix.com" domain name used by Interstellar Starship. Epix, Inc. contends that the goods and services of Interstellar Starship are identical to the goods and services of Epix, Inc. because Interstellar Starship scans Clinton Street Theater images into a computer, transmits those images into a web site, and then permits interested persons to download those images. Epix, Inc. contends that this is precisely the same as the "image acquisition, processing, display and transmission" set forth in Epix, Inc.'s description of trademark registration goods.
Epix, Inc. contends that there is no genuine issue of material fact as to the likelihood of confusion among customers or potential customers of Epix, Inc. Epix, Inc. contends that Interstellar Starship uses the mark "EPIX" in connection with the goods identified in Epix, Inc.'s trademark registration, and that Interstellar Starship and Tchou have...
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