Dreamwerks Production, Inc. v. SKG Studio

• Decision Date: 21 April 1998
• Docket Number: No. 96-55595,96-55595
• Citation: 142 F.3d 1127
• Parties: , 98 Cal. Daily Op. Serv. 2951, 98 Daily Journal D.A.R. 4061 DREAMWERKS PRODUCTION GROUP, INC., Plaintiff-Appellant, v. SKG STUDIO, dba DreamWorks SKG, Defendant-Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1127

142 F.3d 1127

46 U.S.P.Q.2d 1561, 98 Cal. Daily Op. Serv. 2951,

98 Daily Journal D.A.R. 4061

DREAMWERKS PRODUCTION GROUP, INC., Plaintiff-Appellant, v. SKG STUDIO, dba DreamWorks SKG, Defendant-Appellee.

No. 96-55595.

United States Court of Appeals Ninth Circuit.

Argued June 4, 1997.

Submission Deferred June 6, 1997.

Submitted April 21, 1998.

Decided April 21, 1998.

Kenneth R. Umans, Colluci & Umans, New York City, Surjit P. Soni, Sheldon & Mak, Pasadena, California, for plaintiff-appellant.

Cathleen Collins, Kinsella, Boesch, Fujikawa & Towle, Los Angeles, California, for defendant-appellee.

Appeal from the United States District Court for the Central District of California; William M. Byrne, Jr., District Judge, Presiding. D.C. No. CV-95-02874-WMB.

Before: BROWNING, FLETCHER, and KOZINSKI, Circuit Judges.

KOZINSKI, Circuit Judge.

Dreamwerks, a company hardly anyone has heard of, sues entertainment colossus DreamWorks SKG, claiming trademark infringement. This is the reverse of the normal trademark infringement case, where the well-known mark goes after a look-alike, sound-alike, feel-alike unknown which is trying to cash in on the famous mark's goodwill. The twist here is that Dreamwerks, the unknown, was doing business under that name long before DreamWorks was a twinkle in Hollywood's eye. Dreamwerks is therefore the senior mark, and it argues that its customers will mistakenly think they are dealing with DreamWorks, the junior mark.

Facts

Everyone--or most everyone--has heard of DreamWorks SKG, established in 1994 by what many consider the three hottest names in Hollywood: Steven Spielberg, Jeffrey Katzenberg and David Geffen (each of whom graciously contributed an initial to form the SKG part of the trademark). DreamWorks is a film studio, having produced such well-advertised movies as The Peacemaker, Amistad and Mouse Hunt. Like other movie studios, DreamWorks participates more generally in the entertainment business, having created DreamWorks Interactive (a joint venture with software giant Microsoft); GameWorks (described in the press as a micropub and virtual reality video arcade for the 90s); and DreamWorks Toys (a joint venture with toy maker Hasbro).

Less well known is Dreamwerks Production Group, Inc., a small Florida company that since 1984 has been in the business of organizing conventions in the Northeast and Midwest, mostly with a Star Trek theme. At a typical Star Trek convention, Dreamwerks draws customers with a star like DeForest Kelley (Bones), Leonard Nimoy (Spock) or Michael Dorn (Worf from The Next Generation ). For an admission fee of $25 or so, customers get autographs, meet fellow trekkies, compete in costume contests, listen to pitches for upcoming movies and browse the products of vendors who have rented space at the convention. Dreamwerks sometimes presents previews of science fiction and adventure- /fantasy movies produced by the major studios, such as Batman Returns, Dracula, Aladdin and Jurassic Park. Dreamwerks clearly caters to the pocket-protector niche, and its convention business has never really taken off. But the longevity of the enterprise illustrates its remarkable resilience, not unlike the starship itself.

Because Dreamwerks registered its mark with the United States Patent and Trademark Office in 1992, it holds the senior mark and is the plaintiff here. It claims that DreamWorks SKG is causing confusion in the marketplace by using a mark too similar to its own and is doing so with respect to goods and services that are too similar to those it (Dreamwerks) is offering.

Pshaw, one might say. What could be better for Dreamwerks than to have people confuse it with a mega movie studio? Many an infringer has tried to manufacture precisely such confusion and thereby siphon off the goodwill of a popular mark. See, e.g., E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1293 (9th Cir.1992) ("Gallo" wine and "Joseph Gallo" cheese). Not so, answers Dreamwerks, apparently in earnest. It is not interested in fooling consumers, and it claims to suffer ill will when people buy tickets under the misimpression that they are dealing with DreamWorks rather than Dreamwerks. Dreamwerks also frets that its own goodwill will be washed away by the rising tide of publicity associated with the junior mark. Dreamwerks points out (somewhat wistfully) that it hopes to expand its business into related fields, and that these avenues will be foreclosed if DreamWorks gets there first. Finally, Dreamwerks notes that whatever goodwill it has built now rests in the hands of DreamWorks; if the latter should take a major misstep and tarnish its reputation with the public, Dreamwerks too would be pulled down.

These are not fanciful or unreasonable concerns, though they may be somewhat exaggerated by the hope of winning an award or settlement against an apparently very solvent DreamWorks. We are not, however, in a position to judge the extent to which these harms are likely, nor whether they are somehow offset by any extra goodwill plaintiff may inadvertently reap as a result of the confusion between its mark and that of the defendant. These are matters for the trier of fact. The narrow question presented here is whether Dreamwerks has stated a claim for trademark infringement sufficient to survive summary judgment. The district court held that Dreamwerks had not because the core functions of the two businesses are so distinct that there is no likelihood of confusion as a matter of law. Dreamwerks appeals, and it is that ruling we review de novo. See Americana Trading Inc. v. Russ Berrie & Co., 966 F.2d 1284, 1287 (9th Cir.1992). ¹

Discussion

The test for likelihood of confusion is 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. ² In AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979), we listed eight factors to facilitate the inquiry: (1) strength of the mark; (2) proximity or relatedness of the goods; (3) similarity of sight, sound and meaning; (4) evidence of actual confusion; (5) marketing channels; (6) type of goods and purchaser care; (7) intent; and (8) likelihood of expansion. The factors should not be rigidly weighed; we do not count beans. "Rather, the factors are intended to guide the court in assessing the basic question of likelihood of confusion." Gallo Winery, 967 F.2d at 1290.

In the usual infringement case, these factors are applied to determine whether the junior user is palming off its products as those of the senior user. Would a consumer who finds a running shoe marked Mike be bamboozled into thinking that it was manufactured by Nike? In a reverse infringement case, like ours, there is no question of palming off, since neither junior nor senior user wishes to siphon off the other's goodwill. The question in such cases is whether consumers doing business with the senior user might mistakenly believe that they are dealing with the junior user. More specifically, the question here is whether a reasonable consumer attending a Dreamwerks-sponsored convention might do so believing that it is a convention sponsored by DreamWorks. ³

Before performing a Vulcan mind meld on the "reasonably prudent consumer," we note that if this were an ordinary trademark case rather than a reverse infringement case--in other words if DreamWorks had been there first and Dreamwerks later opened up a business running entertainment-related conventions--there would be little doubt that DreamWorks would have stated a case for infringement sufficient to survive summary judgment. ⁴ The reason for this, of course, is that a famous mark like DreamWorks SKG casts a long shadow. Does the result change in a reverse infringement case because the long shadow is cast by the junior mark? We think not. ⁵

Three of the Sleekcraft factors are pivotal here: (1) arbitrariness of the mark; (2) similarity of sight, sound and meaning; and (3) relatedness of the goods. ⁶ "Dreamwerks" is an arbitrary and fictitious mark deserving of strong protection. ⁷ Had Dreamwerks chosen a descriptive mark like Sci-Fi Conventions Inc., or a suggestive mark like Sci-Fi World, some confusion with the marks of legitimate competitors might be expected. DreamWorks argues that the word "Dream" makes the Dreamwerks mark suggestive of a company which brings sci-fi dreams to life. But "Dream" is used in too many different ways to suggest any particular meaning to the reasonable consumer. ⁸ At best, "Dreamwerks" conjures images related to fantasy, hope or reverie. It's too great a mental leap from hopes to Star Trek conventions for us to treat the mark as suggestive. The Dreamwerks mark deserves broad protection.

Sight, sound and meaning is easy. There is perfect similarity of sound, since "Dreamwerks" and "DreamWorks" are pronounced the same way. There is also similarity of meaning: Neither literally means anything, and to the extent the words suggest a fantasy world, they do so equally. ⁹ Similarity of sight presents a slightly closer question. The man-in-the-moon DreamWorks logo, when presented in the full regalia of a movie trailer, is quite distinctive. But "DreamWorks" often appears in the general press and in Industry magazines without the logo, leaving only the slight difference in spelling. Spelling is a lost art; many moviegoers might think that Mirimax and Colombia Pictures are movie studios. Moreover, a perceptive consumer who does notice the "e" and lower-case "w" in Dreamwerks might shrug off the difference as an intentional modification identifying an ancillary division of the same company. While we recognize that spelling matters, we're not sure substituting one vowel for another and capitalizing a middle consonant dispels the similarity between the marks.

The clincher is the relatedness of the goods. Twenty years ago DreamWorks may have had an argument that making movies and...