George & Co. LLC v. Imagination Entertainment Ltd.

• Decision Date: 27 July 2009
• Docket Number: No. 08-1921.,08-1921.
• Citation: 575 F.3d 383
• Parties: GEORGE & COMPANY, LLC, Plaintiff-Appellant, v. IMAGINATION ENTERTAINMENT LIMITED; Imagination Holdings PTY Ltd.; Imagination DVD, Incorporated, Defendants-Appellees, and John Doe(s) 1-10, Defendant.
• Court: U.S. Court of Appeals — Fourth Circuit

575 F.3d 383

GEORGE & COMPANY, LLC, Plaintiff-Appellant, v. IMAGINATION ENTERTAINMENT LIMITED; Imagination Holdings PTY Ltd.; Imagination DVD, Incorporated, Defendants-Appellees, and John Doe(s) 1-10, Defendant.

No. 08-1921.

United States Court of Appeals, Fourth Circuit.

Argued May 12, 2009.

Decided July 27, 2009.

ARGUED: Mark S. Sommers, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, for Appellant. William Francis Krebs, Bean, Kinney & Korman, PC, Arlington, Virginia, for Appellees. ON BRIEF: Douglas A. Rettew, Naresh Kilaru, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, for Appellant. Christopher A. Glaser, Heidi E. Meinzer, Bean, Kinney & Korman, PC, Arlington, Virginia, for Appellees.

Before WILKINSON and KING, Circuit Judges, and HAMILTON, Senior Circuit Judge.

Affirmed by published opinion. Senior Judge HAMILTON wrote the opinion, in which Judge WILKINSON and Judge KING joined.

OPINION

HAMILTON, Senior Circuit Judge:

On May 21, 2007, George and Company, LLC (George) brought this trademark infringement action against Imagination Entertainment Limited, Imagination Holdings PTY Limited, and Imagination DVD, Incorporated (collectively Imagination), claiming that Imagination infringed upon George's trademark rights in "LCR" and "LEFT CENTER RIGHT." The district court granted summary judgment in favor of Imagination. George appeals, and we now affirm.

I

A

George is a limited liability New York corporation with its principal place of business in Naples, Florida. It has marketed and sold dice games, party games, board games, and related entertainment products for more than a century.

Imagination is an Australian corporation with its headquarters in Kent Town, Australia. It markets and sells dice games, board games, and related gaming products in several countries, including the United States.

Each of the parties markets and sells a generic dice game (the Dice Game). Game play for the Dice Game is simple and straightforward. At least three players are required, and each player starts with three chips. The players then take turns rolling three specially-marked dice. Each side of the dice is marked with one of the following: the letter "L," the letter "R," the letter "C," or a dot symbol. The number of L's on the roll indicates the number of chips to be passed to the player to the left of the roller, the number of R's indicates the number of chips to be passed to the player to the right of the roller, and the number of C's indicates the number of chips to be placed in the center pot. Dots are neutral and do not require the roller to pass his chips or place them in the center pot. When a player has two or less chips in his possession, he rolls the number of dice equivalent to the number of chips he possesses; for example, a player with two chips rolls two dice. A player with no chips still plays, but on his turn he has to pass the dice to the next player and hope that the rollers adjacent to him, after their roll, pass him some chips. As the game progresses, players gain and lose chips, while the number of chips in the center pot increases. The Dice Game ends when only one player has chips remaining, and that player is declared the winner and is awarded the chips in the center pot.¹

B

According to George, beginning some time in 1983, it began to market and sell versions of the Dice Game under the names "LCR" and "LEFT CENTER RIGHT." From 1983 to 1991, the game was sold in foil wrap, with either LCR or LEFT CENTER RIGHT hand-written on the foil.²

Beginning in 1992, George began to market and sell its version of the Dice Game exclusively under the LCR name. The parties agree that George intended LCR to be an abbreviation of LEFT CENTER RIGHT. George owns registered trademarks for LCR and a related rolling-dice design (the Rolling Dice Design).³ George never sought to register the mark LEFT CENTER RIGHT.

At the time George initiated this trademark infringement action, it sold its LCR game in two forms, either in cardboard-backed blister packaging or in a plastic tube hanging from a rack.⁴ The cardboard-backed blister packaging and the cardboard on the display rack are similar in all material respects.⁵ They are predominately white in color, and contain a ™ designation following the Rolling Dice Design and a notice that "LCR ™ is a Trademark of George & Co."

Several features of the cardboard-backed blister packaging are worthy of note. First, the packaging prominently displays the name of the Dice Game through the Rolling Dice Design. The Rolling Dice Design depicts the faces of three dice in horizontal succession, with the face of the first dice containing an "L," the second a "C," and the third an "R." In the design, the three dice almost touch each other, with the L dice tilted to the left, the C dice tilted to the right, and the R dice tilted to the left. A ™ symbol is located in the lower right-hand corner of the design.

Second, the packaging uses the following tagline, "Left, Center or Right—Don't Lose Your Chips" (the Tagline). Third, the packaging contains a design (the Arrows Design) in which the faces of the three dice that appear in the Rolling Dice Design are arranged in a U-shaped design, with the L dice on the upper left side of the U-shaped design, the C dice on the bottom of the U-shaped design, and the R dice on the upper right side of the U-shaped design. The word "Left" is located to the left of the face of the L dice, the word "Center" is located below the face of the C dice, and the word "Right" is located to the right of the R dice. The Arrows Design also has three chips, one below the face of the L dice, one above the face of the C dice, and one below and slightly to the right of the face of the R dice. Three arrows also appear, one running around the left side of the chip below the face of the L dice, one pointing from the face of the C dice to the chip appearing above it, and one running around the right side of the chip below the face of the R dice.

Fourth, a much smaller version of the Rolling Dice Design appears in other places on the packaging, and each time a ™ symbol follows the design. The design is used to inform the customer that LCR is "the new game that everyone's getting hooked on. So simple, kids love it." It is also used to inform the customer that the game is so "contagious and fast-paced" that parents "grab up" LCR "for themselves." Customers are told through use of the design that you play LCR "with chips or whatever makes it fun for you." Finally, the design is used to inform the customer that LCR "is a game for 3 or more players ages 5 to 105!"

After the initiation of this trademark infringement action, George added a new package design, which is predominately blue in color, to its arsenal of LCR products.⁶ In addition to an ® designation following the Rolling Dice Design, the new product contains ™ designations next to the Tagline and the Arrows Design.

George markets and sells its LCR games online and in retail shops, including its own retail shop in Williamsville, New York. In the four years leading up to the filing of this infringement action, George sold an average of more than 500,000 LCR games per year.

C

In 2006, Imagination began marketing its version of the Dice Game to potential distributors under the name "LeFT CeNTeR RIGHT."⁷ In June 2007, Imagination began distributing and selling LEFT CENTER RIGHT to the consuming public. The rules and game play for LEFT CENTER RIGHT are the same in all material respects to the rules and game play of LCR. On January 30, 2006, Imagination filed an application with the USPTO for the purpose of registering LEFT CENTER RIGHT as a trademark on the Principal Register. On July 17, 2006, the application was denied on the ground that the mark LEFT CENTER RIGHT was descriptive. On January 17, Imagination filed an amended application, which on March 5, 2007 was denied, once again on descriptiveness grounds. On September 7, 2007, Imagination amended its application once more, this time seeking registration on the Supplemental Register.⁸ On October 1, 2007, the USPTO accepted Imagination's amendment and placed LEFT CENTER RIGHT on the Supplemental Register.

Imagination sells LEFT CENTER RIGHT in two versions, a "card pack" version and a plastic-wrapped "tin" version.⁹ Both the card pack and tin version are bright red with bent yellow arrows depicting game movement with the game name, LEFT CENTER RIGHT, displayed in the center of each package. The tagline "The Addictive Dice Game" is featured prominently on the "card pack" version on the bottom right inside a dice and prominently on the "tin" version on the bottom center.

Imagination places its name and logo in an upper corner of each version. Imagination's packaging displays a ™ designation next to LEFT CENTER RIGHT and contains the notice "IMAGINATION ™ NAME AND LOGO AND LEFT CENTER RIGHT ™ ARE TRADEMARKS OF IMAGINATION ENTERTAINMENT LIMITED AND IMAGINATION HOLDINGS PTY LTD."

D

On May 21, 2007, George filed this trademark infringement action seeking declaratory, injunctive, and monetary relief under the Lanham Act, 15 U.S.C. § 1051 et seq., and Virginia law. The gist of George's complaint is that Imagination's use of LEFT CENTER RIGHT infringes on: (1) George's federal trademark rights in LEFT CENTER RIGHT; and (2) George's LCR trademark, which is federally-registered. In resolving these claims, the district court granted Imagination's motion for summary judgment, reasoning that George had no federal trademark rights in LEFT CENTER RIGHT and that there was no likelihood of confusion created by Imagination's use of LEFT CENTER RIGHT. George noted a timely appeal.

II

We review an award of summary judgment de novo. Hawkspere Shipping Co., Ltd. v. Intamex, S.A., 330 F.3d 225, 232 (4th Cir.2003). Summary judgment is only appropriate "if the pleadings, the discovery and disclosure materials on file, and any affidavits...