KAT Video Productions, Inc. v. KKCT-FM Radio

Decision Date12 February 1997
Docket NumberKKCT-FM,No. 960184,960184
Citation560 N.W.2d 203
PartiesKAT VIDEO PRODUCTIONS, INC., and Todd Muggerud, Plaintiffs and Appellants, v.RADIO a/k/a Kat Country, Defendant and Appellee. Civil
CourtNorth Dakota Supreme Court

Daniel L. Hovland and Scott K. Porsborg (argued), of Smith Bakke Hovland & Oppegard, Bismarck, for plaintiffs and appellants.

Orell D. Schmitz and Robert R. (Rick) Maixner (argued), of Schmitz, Moench & Schmidt, Bismarck, for defendant and appellee.

NEUMANN, Justice.

¶1 KAT Productions appeals the district court's judgment dismissing its complaint seeking to enjoin KKCT-FM Radio, a/k/a Kat Country, from using the name "Kat" and a tiger logo, in violation of North Dakota's tradename and trademark laws. KAT Productions argues the court erred by dismissing the case on summary judgment, asserting the test for infringement, whether there is a "likelihood of confusion," is a question of fact. Alternatively, KAT Productions argues, if this court decides summary judgment was appropriate, the district court erred by not finding a likelihood of confusion exists as a matter of law. We reverse and remand with instructions.

¶2 In 1989, Todd Muggerud founded KAT Productions, a business providing audio and video production services for commercial, educational, and training purposes. Muggerud conceived the name "KAT," and a lion's head logo, intending them to be unique and distinct from other competitors. In 1993, Kat Country, a country music radio station and audio production company, was founded. Kat Country initiated an advertising campaign using the name "Kat" and a tiger's head logo. In November and December 1993, after learning of Kat Country's advertising campaign, KAT Productions registered its logo and name according to North Dakota's trademark and tradename laws, N.D.C.C. chapters 47-22 and 47-25. 1 Since 1993, both companies have maintained their names and logos. 2

¶3 In September 1994, KAT Productions initiated proceedings against Kat Country for trademark and tradename infringement. In July 1995, KAT Productions moved for a temporary injunction, seeking to enjoin Kat Country from using the "Kat" name and feline logo. In an affidavit before the district court, Muggerud submitted the names of various businesses and individuals who had confused the two companies or mistaken their affiliation. For example, Muggerud told of a woman caller who complained to KAT Productions about an O.J. Simpson joke broadcast on Kat Country. According to KAT Productions, many of its clients are state agencies, local social service agencies, and tribal authorities who are culturally sensitive to social issues such as child abuse, drug and alcohol abuse, and sexual abuse. KAT Productions claimed Kat Country is less sensitive to social issues, 3 and potential clients might avoid KAT Productions if they perceived an affiliation with Kat Country.

¶4 A hearing was held on the motion for a temporary injunction on October 16, 1995. After the hearing, the court requested the parties amend the motion so the matter could be considered as a motion for summary judgment. The parties agreed. On April 16, 1996, the court entered its memorandum opinion. The district court applied a six-step test used by the Eighth Circuit Court to determine whether a likelihood of confusion exists between the parties' trademarks and tradenames. Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769, 774 (8th Cir.1994). According to the Eighth Circuit test, a court must examine: (1) the strength of the trademark or tradename; (2) the similarities between the marks; (3) the competitive proximity of the products; (4) the alleged infringer's intent to confuse the public; (5) evidence of actual confusion; and, (6) the degree of care reasonably expected of plaintiff's potential customers. The district court found "KAT" is an arbitrary trademark and is afforded the greatest amount of protection under North Dakota law. However, the court determined KAT Productions had not established an infringement on their tradename or trademark because the feline trademarks were distinguishable, the services rendered by each company were not in direct competition, there was no basis to suggest a confusion of consumers, and Kat Country did not choose the name "KAT" or the tiger trademark to pass off their services as related to KAT Productions. The district court ordered summary judgment in favor of Kat Country. KAT Productions appeals, arguing the district court erred in concluding Kat Country is not in violation of North Dakota's trademark and tradename laws.

¶5 "In reviewing a summary judgment, we view the evidence in the light most favorable to the party opposing the summary judgment motion, and we allow that party all favorable inferences." Delzer v. United Bank of Bismarck, 484 N.W.2d 502, 508 (N.D.1992). "[T]he court may examine the pleadings, depositions, admissions, affidavits, interrogatories, and inferences to be drawn from the evidence to determine whether summary judgment is appropriate." Kukowski v. Simonson Farm, Inc., 507 N.W.2d 68, 71 (N.D.1993). "Summary judgment is inappropriate if neither party is entitled to judgment as a matter of law or if reasonable differences of opinion exist as to the inferences to be drawn from the undisputed facts." Larson v. Baer, 418 N.W.2d 282, 286 (N.D.1988) (citing Garcia v. Overvold Motors, Inc., 351 N.W.2d 110 (N.D.1984)).

¶6 In North Dakota, trademark and tradename protection is treated in N.D.C.C. chapters 47-22 and 47-25, respectively. Under N.D.C.C. § 47-22-11(1), any person who decides to "[u]se, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a trademark registered under this chapter ... shall be liable to a civil action by the owner of such registered trademark." Under N.D.C.C. § 47-25-01 "any person who has registered a trade name hereunder may institute a civil suit prohibiting any other person from using such name." These chapters provide for registration of trademarks and tradenames in North Dakota. 4 They do not, however, provide the underlying substantive law protecting infringement. The substantive law protecting trademark and tradename infringement stems from common law, which provides the framework for the disposition of this case.

¶7 The general purpose of the law of trademarks and tradenames is "to prevent one person from passing off his goods or his business as the goods or business of another." American Foundries v. Robertson, 269 U.S. 372, 380, 46 S.Ct. 160, 162, 70 L.Ed. 317 (1926). A trademark is a distinctive mark, symbol, or designation used by a producer or manufacturer to identify and distinguish his services or goods from the services or goods of others. Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934, 939 (10th Cir.1983); N.D.C.C. § 47-22-01(1). 5 A tradename is a distinctive word name, symbol, or other designation that identifies and distinguishes a business from the businesses of others. American Foundries, 269 U.S. at 380, 46 S.Ct. at 162; N.D.C.C. § 47-25-01. Generally, trademarks identify goods and services and tradenames identify businesses, but the standard of infringement is the same. Id. at 380, 46 S.Ct. at 162.

¶8 Ownership rights in a trademark or tradename accrue when the mark or term is used or displayed in the marketplace. Blue Bell, Inc. v. Farah Manufacturing Company, Inc., 508 F.2d 1260, 1265 (5th Cir.1975). One who first uses a designation as a trademark or tradename has priority in the use of that designation over others in any geographic area in which the actor has used the designation in good faith. Hanover Milling Co. v. Metcalf, 240 U.S. 403, 415, 36 S.Ct. 357, 361, 60 L.Ed. 713 (1916); Sweetarts v. Sunline, Inc., 436 F.2d 705, 708 (8th Cir.1971). To prevail on a claim for trademark or tradename infringement, a party must show "a likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256 (2d Cir.1987) (referring to federal infringement law under the Lanham Act).

¶9 This is a case of first impression in North Dakota. Compare Standard Oil Co. v. Standard Oil Co. of North Dakota, 123 F.Supp. 227 (U.S.D.C.N.D.1954) (reviewing a claim for trademark and tradename infringement under the laws of North Dakota.) Although we have not addressed the issue, there is a wealth of case law discussing the "likelihood of confusion" standard. Ordinarily those cases examine six to eight factors in determining whether a likelihood of confusion exists. See, e.g., Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.1961); Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496, 501 (5th Cir.1979), cert. denied 444 U.S. 932, 100 S.Ct. 277, 62 L.Ed.2d 190 (1979) (applying various elements); Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 833 (6th Cir.1983) (suggesting eight factors); Helene Curtis Indust., Inc. v. Church & Dwight Co., Inc., 560 F.2d 1325, 1330 (7th Cir.1977), cert. denied, 434 U.S. 1070, 98 S.Ct. 1252, 55 L.Ed.2d 772 (1978) (adopting seven factors and cited with approval in McGraw-Edison Co. v. Walt Disney Productions, 787 F.2d 1163, 1167-68 (7th Cir.1986)); Anheuser-Busch, 28 F.3d at 774 (adopting six factors); Toho Co., Ltd. v. Sears, Roebuck & Co., 645 F.2d 788, 790 (9th Cir.1981) (suggesting eight factors); Beer Nuts, 711 F.2d at 940 (following the RESTATEMENT OF TORTS § 729 (1938) and adopting four factors); RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 (1995) (suggesting six factors).

¶10 Each of these various tests appears to be merely a moderately different way of articulating the same principles. The district court applied the Eighth Circuit Court of Appeal's six-step analysis articulated in Anheuser-Busch. Because the Eighth Circuit controls federal law in our state, we...

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2 cases
  • Burris Carpet Plus Inc. v. Burris
    • United States
    • North Dakota Supreme Court
    • June 30, 2010
    ...of law or if reasonable differences of opinion exist as to the inferences to be drawn from the undisputed facts.' " KAT Video Prod., Inc. v. KKCT-FM Radio, 1997 ND 21, ¶ 5, 560 N.W.2d 203 (quoting Larson v. Baer, 418 N.W.2d 282, 286 (N.D.1988)). Whether a district court has properly granted......
  • KAT Video Productions, Inc. v. KKCT-FM Radio, KKCT-FM
    • United States
    • North Dakota Supreme Court
    • September 29, 1998
    ...against Kat Country for trade name and trademark infringement. See KAT Video Productions, Inc. v. KKCT-FM Radio, 1997 ND 21, p 1, 560 N.W.2d 203. In Kat, this Court adopted a six-part test to aid in determining whether a likelihood of confusion exists between two trade names or trademarks. ......

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