Fancaster, Inc. v. Comcast Corp., Civ. No. 08-2922 (DRD)
| Decision Date | 22 December 2011 |
| Docket Number | Civ. No. 08-2922 (DRD) |
| Parties | FANCASTER, INC., Plaintiff, v. COMCAST CORPORATION, COMCAST INTERACTIVE MEDIA, LLC, and COMCAST MANAGEMENT, LLC, Defendants/Counterclaimants/Third Party Plaintiffs v. FANCASTER, INC. sometimes d/b/a "TARGET WIRELESS Counterclaim-Defendant, and CRAIG KRUEGER, Third-Party Defendant. |
| Court | U.S. District Court — District of New Jersey |
FANCASTER, INC., Plaintiff,
v.
COMCAST CORPORATION, COMCAST INTERACTIVE MEDIA, LLC, and COMCAST MANAGEMENT, LLC,
Defendants/Counterclaimants/Third Party Plaintiffs
v.
FANCASTER, INC. sometimes d/b/a "TARGET WIRELESS Counterclaim-Defendant,
and CRAIG KRUEGER, Third-Party Defendant.
Civ. No. 08-2922 (DRD)
UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY
Dated: December 22, 2011
FOR PUBLICATION
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Appearances by:
PASHMAN STEIN PC
by: Michael S. Stein, Esq.
Sean Mack, Esq.
MATORIN LAW OFFICE, LLC
by: Mitchell J. Matorin, Esq.
FOLEY HOAG LLP
by: Michael P. Boudett, Esq.
Attorneys for Plaintiff
LOEB & LOEB LLP
by: Jodi Sarowitz, Esq.
Douglas N. Masters, Esq.
Tal E. Dickstein, Esq.
Attorneys for Defendants.
DEBEVOISE, Senior District Judge
This matter arises out of a lawsuit between two companies that offer online video content via their respective websites. On June 12, 2008, Fancaster, Inc. ("Fancaster") filed a Complaint against the Comcast Corporation, Comcast Interactive Media, LLC, and Comcast Management, LLC (collectively referred to as "Comcast"), asserting claims for trademark infringement, 15 U.S.C. § 1114(1), false designation of origin, unfair competition, and trade name infringement, 15 U.S.C. §§ 1125(a), 1117(a), cybersquatting, 15 U.S.C. § 1125(d), under the Lanham Act, and trademark misappropriation, unfair competition, and deceptive practices under N.J.S.A. 56:4-1 and New Jersey common law, and seeking treble damages, attorney's fees, and injunctive relief.
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On June 24, 2008, Fancaster filed an Amended Complaint to add claims for unjust enrichment and trade name infringement under New Jersey law. On September 18, 2008, Comcast answered and asserted counterclaims against Fancaster and claims via a Third-Party Complaint against Fancaster's President, Craig Krueger, for fraud on the United States Patent and Trademark Office ("PTO"), 15 U.S.C. § 1120, and cyber piracy, 15 U.S.C. § 1125(d), and seeking damages, lost profits, attorney's fees, declaratory judgment that the Fancaster mark was (1) abandoned; (2) not used in commerce; and (3) obtained and/or maintained by fraud, 15 U.S.C. §§ 1064, 1119, and injunctive relief. On November 1, 2010, Fancaster filed a Supplemental Complaint setting forth allegations of continued infringement.
On April 29, 2011, Comcast filed a Motion for Summary Judgment on all of Fancaster's claims, pursuant to Federal Rule of Civil Procedure 56(a), as well as a Motion in Limine to exclude the reports and testimony of Fancaster's damages expert, pursuant to Federal Rule of Evidence 702, 703, and 403. That same day, Fancaster and Mr. Krueger filed a Motion for Summary Judgment on Comcast's counterclaims and third-party claims, pursuant to Federal Rule of Civil Procedure 56(a), and a Motion to Strike Comcast's affirmative defenses of fraud, unclean hands, laches, and acquiescence, pursuant to Federal Rule of Civil Procedure 12(f). On May 5, 2011, Fancaster filed a Motion in Limine to exclude the reports and testimony of Comcast's PTO and cyber piracy law experts and a Motion in Limine to exclude the surveys conducted by Comcast's consumer confusion expert and his testimony, both pursuant to Federal Rule of Evidence 702, 703, and 403.
For the reasons set forth below, Comcast's Motion for Summary Judgment is GRANTED in part and DENIED in part. Fancaster's infringement-related claims are dismissed because the record does not support a likelihood of confusion among the marks at issue in this case. In
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addition, Fancaster is not entitled to seek corrective advertising as a remedy for those claims.1However, Fancaster's cyber piracy claim must remain this case because Comcast only addressed that claim in its reply brief.
Fancaster's and Mr. Krueger's Motion for Summary Judgment is also GRANTED in part and DENIED in part. Comcast's claim for fraud on the PTO is dismissed because there is no evidence in the record from which a jury could infer fraudulent intent. Comcast's claim for declaratory judgment is also dismissed because it is duplicative of its claim for fraud on the PTO. However, Comcast's claim for cyber piracy may move forward as there remain factual questions regarding distinctiveness and bad faith.
Fancaster's Motions in Limine are GRANTED in part and DENIED in part. The majority of testimony of Comcast's PTO and cyber piracy experts is excluded, while Comcast's consumer confusion expert's March 2009 survey and testimony related thereto is also excluded. Finally, Fancaster's Motion to Strike Comcast's affirmative defenses of fraud, unclean hands, laches, and acquiescence is GRANTED.
A. The Fancaster Mark
On June 13, 1989, Fancaster's president and sole director, Craig Krueger, registered the term FANCASTER with the PTO for use as a trademark in connection with "broadcasting services." (Dickstein Decl. [ECF No. 130], Ex. 11.) In doing so, he swore under oath that he "'has adopted and is using the trademark shown in the accompanying drawing for the following goods: communications' and/or 'broadcasting services,' and that '[t]he trademark was first used on the goods in Interstate commerce on July 15, 1988; and is now in use in such commerce.'"
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(Perry Cert. [ECF No. 138] ¶ 2). The mark incorporates a pair of headphones turned on their side to take the place of the letter "C" so as to indicate that the mark relates to broadcasting. On September 8, 1994, Mr. Krueger filed a Combined Affidavit of Use and Incontestability for the FANCASTER mark with the PTO. In that affidavit, Mr. Krueger swore that he "was using the mark in commerce in connection with the broadcasting services that were stated in the registration, and had been doing so for five consecutive years." (Id. ¶ 14.) As evidence of such use, he submitted blank letterhead and envelopes bearing the FANCASTER mark.
Over the years, Mr. Krueger used the mark in connection with a variety of activities, including selling Fancaster branded radios, see (Id., Exs., 14, 21, 22), charging customers to watch closed- circuit boxing matches, producing karaoke shows, see (Id., Ex. 4, 694:21-296:23), transmitting sponsored news messages to wireless pagers and cell phones, and conducting live demonstrations of FANCASTER broadcast services, see (Id., Exs., 13, 16, 19).
On July 22, 2006, Fancaster launched its website, facaster.com. On the site's homepage is the most recent version of the FANCASTER mark, which appears in light-blue lowercase lettering, and incorporates the aforementioned headphones taking the place of the letter "c".2Under the word "fancaster" appears the phrase "welcome to planet fancaster!" in gold lettering. Fancaster.com offers a wide variety of short video clips, most of which feature sports-related content and a sports fan or athlete speaking into a microphone displaying the fancaster mark to discuss a particular sporting event, sports team, or sports fans in general. A screenshot of fancaster.com, dated April 21, 2011, categorizes the video clips on the site as follows: Fancaster Picks, Football, Baseball, Basketball, Play-By-Play, Horse Racing, Extreme Sports, Mixed
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Martial Arts, Celbrities, Hockey, Body Building, Autographs, Other, Tennis, Mayhem, Auto, European Events, Golf, Food, Cycling. (Dickstein Decl. [ECF No. 130], Ex. 17.) Mr. Krueger testified that a unifying theme of the video clips on fancaster.com, no matter what category they fall under, is that they all involve broadcasting: "[e]veryone is speaking into a microphone and being recorded." (Id., Ex. 6 at 64.)
According to Facaster's October 2009 business plan, "Fancaster is an early-stage Company that intends to develop a 21st century communications portal where user-generated video content is created by the fans and for the fans who want to emulate broadcasters or submit commentary on management, coaches, players, or teams." (Id., Ex. 13 at 4.) Fancaster also "intends to produce content that traditional media ignore, such as videos of fans at unique events such as La Tomatina in Spain, Ostrich racing in Arizona, the Westminster Kennel Club Dog Show and the annual Nathan's Hot Dog Eating Contest." (Id. at 6.)
The business plan further states that "[t]he target market initially will be sports fans. The Company contemplates, however, expansion of its offerings to include both music and movie fans at later stages. For sports fans, Fancaster intends to focus on the ever-capricious but nonetheless influential demographic of 18-to-35 year old males." (Id. at 4.) As of October 2009, Fancaster identifies "other fan sites such as www.fannation.com as well as larger user-generated and social networking sites such as YouTube and Facebook" as competitors. (Id. at 6.)
Mr. Krueger has marketed fancaster.com online on a few sports-oriented websites and those of several local pubs; however, he testified that most of Fancaster's marketing efforts have not been geared toward the Internet. See (Id., Ex. 6 at 194-195.) He has instead focused marketing the website at sporting events, bars,...
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