Fortune Dynamic Inc v. Victoria's Secret Stores Brand Mgmt. Inc, No. 08-56291.

• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)
• Writing for the Court: BYBEE, Circuit
• Citation: 618 F.3d 1025
• Parties: FORTUNE DYNAMIC, INC., a California Corporation, Plaintiff-Appellant,v.VICTORIA'S SECRET STORES BRAND MANAGEMENT, INC., a Delaware Corporation, Defendant-Appellee.
• Docket Number: No. 08-56291.
• Decision Date: 19 August 2010

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FORTUNE DYNAMIC, INC., a California Corporation, Plaintiff-Appellant,
v.
VICTORIA'S SECRET STORES BRAND MANAGEMENT, INC., a Delaware Corporation, Defendant-Appellee.

No. 08-56291.

United States Court of Appeals,
Ninth Circuit.

Argued and Submitted Nov. 2, 2009.
Filed Aug. 19, 2010.

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James C. Fedalen, Huang, Fedalen & Lin, LLP, Encino, CA, for the plaintiff-appellant.

Diana M. Torres, Kirkland & Ellis LLP, Los Angeles, CA, for the defendant-appellee.

Appeal from the United States District Court for the Central District of California, Manuel L. Real, District Judge, Presiding. D.C. No. 2:07-cv-02962-R-JTL.
Before THOMAS G. NELSON, JAY S. BYBEE, and MILAN D. SMITH, JR., Circuit Judges.OPINIONBYBEE, Circuit Judge:

In February 2007, Victoria's Secret ran a one-month marketing campaign promoting

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its new line of BEAUTY RUSH product. As part of that promotion, Victoria's Secret stores sold or gave away a hot pink tank top with the word “Delicious” written across the chest in silver typescript. Fortune Dynamic, Inc. (“Fortune”), the owner of the incontestable trademark DELICIOUS for footwear, sued Victoria's Secret for trademark infringement. The district court granted summary judgment in favor of Victoria's Secret. Mindful that “summary judgment is generally disfavored in the trademark arena,” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir.2002) (quotation marks omitted), we reverse and remand for trial.I

Since 1987 Fortune has been in the business of designing and selling footwear for women, young women, and children. In 1997, Fortune began using DELICIOUS as a trademark on its footwear for young women. Two years later, in 1999, Fortune registered the DELICIOUS trademark for footwear on the principal register of the U.S. Patent and Trademark Office. For most of the time relevant to this appeal, Fortune depicted DELICIOUS in standard block lettering with a capital “D.” ¹

Fortune spends approximately $350,000 a year advertising its footwear. In the three-year period from 2005 to 2007, Fortune sold more than 12 million pairs of DELICIOUS shoes. DELICIOUS shoes are featured on Fortune's website and in its catalogs, and have appeared in fashion magazines directed specifically to young women, including Cosmo girl, Elle girl, Teen People, Twist, In Touch, Seventeen, Latina, ym, Shop, CB, marie claire, and Life & Style. DELICIOUS footwear is available in authorized retail outlets throughout the United States.²

Victoria's Secret is a well-known company specializing in intimate apparel. It sells a wide variety of lingerie, beauty products, and personal care products in its 900 retail stores. In February 2007, Victoria's Secret launched a line of personal care products under the trademark BEAUTY RUSH. At the same time, it started a promotion that included giving away a gift package of BEAUTY RUSH lip gloss and-most importantly for our case-a pink tank top to anyone who purchased $35 of beauty product.³ The tank top was folded inside a clear plastic pouch with the lip gloss and a coupon for a future BEAUTY RUSH purchase. Across the chest of the tank top was written, in silver typescript, the word “Delicious” with a capital “D.” On the back, in much smaller lettering, there appeared the word “yum,” and the phrase “beauty rush” was written in the back collar. Victoria's Secret models were featured wearing the tank top, as were mannequins on in-store display tables. Victoria's Secret distributed 602,723 “Delicious” tank tops in connection with its BEAUTY RUSH promotion, which lasted until March 2007. Those tank tops not sold or given away during the promotion were sold at Victoria's Secret's semi-annual sale a few months later.

Victoria's Secret executives offered two explanationsfor using the word “Delicious”

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on the tank top. First, they suggested that it accurately described the taste of the BEAUTY RUSH lip glosses and the smell of the BEAUTY RUSH body care. Second, they thought that the word served as a “playful self-descriptor,” as if the woman wearing the top is saying, “I'm delicious.” No one at Victoria's Secret conducted a search to determine whether DELICIOUS was a registered trademark, but Victoria's Secret had run a very similar promotion several months earlier, this one in conjunction with the launch of its VERY SEXY makeup. That promotion also included a tank top, but that tank top was “black ribbed” with “Very Sexy” written in hot pink crystals across the chest. VERY SEXY is a Victoria's Secret trademark.

In March 2007, Fortune filed a complaint alleging that Victoria's Secret's use of “Delicious” on its tank top infringed Fortune's rights in its DELICIOUS mark. After the district court denied Fortune's motion for a preliminary injunction, Victoria's Secret moved for summary judgment. In its opposition to Victoria's Secret's motion for summary judgment, Fortune submitted two pieces of expert evidence: the Marylander survey (with an accompanying declaration) and the Fueroghne declaration, both of which we discuss below.

Invoking its duty to “scrutinize carefully the reasoning and methodology underlying the expert opinions offered,” the district court excluded all of Fortune's proffered expert evidence. Without any of Fortune's expert evidence before it, the district court granted Victoria's Secret's motion for summary judgment, holding that the factors used to determine whether there is a likelihood of confusion “weigh[ed] in favor of Victoria's Secret,” and that Fortune's claims were “entirely barred by the fair use defense.” Fortune brought this timely appeal.

II

The Lanham Act creates a comprehensive framework for regulating the use of trademarks and protecting them against infringement, dilution, and unfair competition. 15 U.S.C. § 1051 et seq. To prove infringement, a trademark holder must show that the defendant's use of its trademark “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1125(a)(1)-(a)(1)(A). Protecting against a likelihood of confusion-what we have called the “core element of trademark infringement,” Brookfield Commc'ns v. W. Coast Entm't Corp., 174 F.3d 1036, 1053 (9th Cir.1999) (quotation marks omitted)-comports with the underlying purposes of trademark law: “[1] ensuring that owners of trademarks can benefit from the goodwill associated with their marks and [2] that consumers can distinguish among competing producers.” Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th Cir.2002).

Eight factors, sometimes referred to as the Sleekcraft factors, guide the inquiry into whether a defendant's use of a mark is likely to confuse consumers: (1) the similarity of the marks; (2) the strength of the plaintiff's mark; (3) the proximity or relatedness of the goods or services; (4) the defendant's intent in selecting the mark; (5) evidence of actual confusion; (6) the marketing channels used; (7) the likelihood of expansion into other markets; and (8) the degree of care likely to be exercised by purchasers of the defendant's product. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979). This eight-factor analysis is “pliant,” illustrative rather than exhaustive, and best understood as simply providing helpful guideposts. Brookfield Commc'ns, 174 F.3d at 1054; see

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E & J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir.1992) ( “This list of factors, while perhaps exhausting, is neither exhaustive nor exclusive.”). The Sleekcraft factors are not a scorecard, a bean-counter, or a checklist. Thane, 305 F.3d at 901. “Some factors are much more important than others, and the relative importance of each individual factor will be case-specific.” Brookfield Commc'ns, 174 F.3d at 1054.

The Lanham Act provides some affirmative defenses, see 15 U.S.C. § 1115(b), one of which allows an accused infringer to avoid liability by showing that it has used the plaintiff's trademark “fairly,” id. § 1115(b)(4). To establish a fair use defense, the defendant must show that it used the term “fairly and in good faith only to describe [its] goods or services.” Id. We have recognized a nominative fair use defense and a classic fair use defense. Nominative fair use applies “where a defendant has used the plaintiff's mark to describe the plaintiff's product,” Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir.2002) (emphasis added), whereas classic fair use-the only defense at issue here-involves a defendant's use of a descriptive term “in its primary, descriptive sense,” id. at 1150-51 (quotation marks omitted).

We review the district court's grant of summary judgment de novo, and must view the evidence in the light most favorable to Fortune. In re Caneva, 550 F.3d 755, 760 (9th Cir.2008). Summary judgment is improper if there are “any genuine issues of material fact”-facts which, “under the governing substantive law, could affect the outcome of the case.” Id. (quotation marks and ellipses omitted). “A genuine issue of material fact exists when the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Id. at 761 (quotation marks and ellipsis omitted).

III

This case is yet another example of the wisdom of the well-established principle that “[b]ecause of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena.” Entrepreneur Media, 279 F.3d at 1140 (quotation marks omitted). We are far from certain that consumers were likely to be confused as to the source of Victoria's Secret's pink tank top, but we are confident that the question is close enough that it should be answered as a matter of fact by a jury, not as a matter of law by a court. See Thane, 305 F.3d at 901 (“Likelihood of confusion is a factual determination.”).

The same is true of Victoria's Secret's reliance on the Lanham Act's fair use...