Ohio State Univ. v. Skreened Ltd.

• Decision Date: 18 April 2014
• Docket Number: Case No. 2:12–cv–662.
• Citation: 16 F.Supp.3d 905,111 U.S.P.Q.2d 1448
• Parties: The OHIO STATE UNIVERSITY, Plaintiff, v. SKREENED LTD., et al., Defendants.
• Court: U.S. District Court — Southern District of Ohio

16 F.Supp.3d 905

111 U.S.P.Q.2d 1448

The OHIO STATE UNIVERSITY, Plaintiff

v.SKREENED LTD., et al., Defendants.

Case No. 2:12–cv–662.

United States District Court, S.D. Ohio, Eastern Division.

Filed April 18, 2014.

Joseph Richard Dreitler, Mary R. True, Dreitler True LLC, Columbus, OH, for Plaintiff.

Michael James Gallagher, David J. Dawsey, Gallagher & Dawsey, Columbus, OH, for Defendants.

OPINION AND ORDER

GREGORY L. FROST, District Judge.

This matter is before the Court for consideration of the following filings:

(1) Plaintiff's motion for summary judgment (ECF No. 46), Defendants' memorandum in opposition (ECF No. 51), and Plaintiff's reply memorandum (ECF No. 53); and

(2) Defendants' motion for summary judgment (ECF No. 48), Plaintiff's combined memorandum in opposition and motion to strike (ECF No. 50), and Defendants' reply memorandum (ECF No. 54).

For the reasons that follow, this Court GRANTS IN PART and DENIES IN PART Plaintiff's motion for summary judgment (ECF No. 46), DENIES Plaintiff's motion to strike, (ECF No. 50), and DENIES Defendants' motion for summary judgment (ECF No. 48).

I. Background

Plaintiff, The Ohio State University, is in the business of licensing its trademarks for use on numerous items, including t-shirts and other clothing. Defendant Skreened Ltd. (“Skreened”), which is co-owned by Defendant Daniel Fox, is in the print-on-demand business of selling t-shirts and other clothing via its website and a retail store located in Columbus, Ohio. Defendants' business model consists primarily of operating a website in which users upload graphic designs or similar content onto the Skreened website. Other content is received via email or directly from customers' flash drives. This business model results in sales in one of two ways. The bulk of sales involve when the uploaded content is displayed on webpages designated either “shops” or “storefronts,” and a visitor to the website can peruse the various shops and order a displayed item. Skreened then fulfills each order on demand. For example, when a customer orders a single t-shirt with a specific design, Skreened then prints one t-shirt featuring that design for that specific customer. Alternatively, a much smaller percentage of Skreened's sales involve an individual presenting Skreened with content for a private order (typically a bulk order) without also offering the image or design for sale to the greater public via the website. Skreened still produces the merchandise on demand, but without the potential for Internet traffic sales.

Plaintiff claims that Defendants are selling t-shirts with numerous designs that infringe on Plaintiff's trademarks. Accordingly, after a period of Plaintiff sending Defendants warning letters, Plaintiff filed this lawsuit in July 2012. In a four-count amended complaint, Plaintiff asserts claims for the infringement of registered trademarks under 15 U.S.C. § 1114 (Count One), unfair competition and passing off under 15 U.S.C. § 1125(a) (Count Two), violation of the right of publicity under Ohio Revised Code Chapter 2741 (Count Three), and counterfeiting under 15 U.S.C. § 1114 (Count Four) (ECF No. 31 ¶¶ 41–67.) Defendants in turn assert twenty counterclaims; the first counterclaim alleges that Plaintiff is engaging in unfair competition under Ohio law, and the remaining counterclaims each seek declaratory judgment that a specific design or product does not violate the law. (ECF No. 32, at Page ID # 340–64 ¶¶ 1–139.) Both sides have filed motions for summary judgment, which are ripe for disposition. (ECF Nos. 46, 48.)

II. Discussion

A. Standard Involved

Federal Rule of Civil Procedure 56 provides that summary judgment is appropriate “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). The Court may therefore grant a motion for summary judgment if the nonmoving party who has the burden of proof at trial fails to make a showing sufficient to establish the existence of an element that is essential to that party's case. See Muncie Power Prods., Inc. v. United Tech. Auto., Inc., 328 F.3d 870, 873 (6th Cir.2003) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ).

In viewing the evidence, the Court must draw all reasonable inferences in favor of the nonmoving party, which must set forth specific facts showing that there is a genuine issue of material fact for trial. Id. (citing Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ); Hamad v. Woodcrest Condo. Ass'n, 328 F.3d 224, 234 (6th Cir.2003). A genuine issue of material fact exists “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Muncie, 328 F.3d at 873 (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). Consequently, the central issue is “ ‘whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.’ ” Hamad, 328 F.3d at 234–35 (quoting Anderson, 477 U.S. at 251–52, 106 S.Ct. 2505 ).

B. Analysis

Involved in this litigation are several registered trademarks held by Plaintiff and used on clothing and other merchandise by its licensees: two “BUCKEYES” marks, registration numbers 1,152,683 and 1,267,035 ; a “BUCKEYE DESIGN” mark, registration number 2,437,954; two “OHIO STATE” marks, registration numbers 1,294,114 and 1,152,682 ; and “OSU” mark, registration number 1,121,595; an “OHIO STATE UNIVERSITY” mark, registration number 1,294,115; a block “O” mark, registration number 2,689,612; a Brutus head mark, registration number 4,028,867; a “THE SHOE” mark, registration number 3,186,508; a “SCARLET & GREY” mark, registration number 3,173,656; a Gold Pants design mark, registration number 3,394,719; a “GOLD PANTS” mark, registration number 3,394,720; the Ohio State athletic logo design mark, registration number 2,094,602; and a running Brutus mark, registration number 4,266,878. Plaintiff is also asserting common law rights in the marks “OSU,” “Brutus,” and “Go Bucks.” Over the course of this litigation, Plaintiff has narrowed its case to proceeding against Defendants on only select t-shirt designs.

1. Federal Claims

As noted, this action presents claims for trademark infringement, unfair competition and passing off, violation of the right of publicity, and counterfeiting. The first of these claims constitutes the Count One trademark infringement claim under 15 U.S.C. § 1114. To establish trademark infringement under this provision of the Lanham Act, Plaintiff must prove that (1) it owns a valid trademark; (2) Defendants used the trademark “in commerce” and without Plaintiff's authorization; (3) Defendants used the trademark (or an imitation of it) “in connection with the sale, offering for sale, distribution, or advertising” of goods or services; and (4) Defendants' use of the trademark is likely to confuse consumers. 15 U.S.C. § 1114(a). The “touchstone of liability” for federal trademark infringement claims brought under 15 U.S.C. § 1114 “is whether the defendant's use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties.” Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 280 (6th Cir.1997) ; see also Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 515 (6th Cir.2007).

In Count Two, Plaintiff then asserts a federal claim of unfair competition predicated on asserted trademark infringement; the theory is that Defendants are passing off their goods as official merchandise. This second claim rests on § 43(a) of the Lanham Act, which is codified at 15 U.S.C. § 1125(a). That statutory provision provides in pertinent part:

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a). Thus, this § 1125(a) unfair competition claim, like the § 1114 trademark infringement claim, asks whether there is a likelihood of confusion among consumers regarding the origin of the goods offered by the parties. In fact, the same likelihood of confusion test applies. Audi AG & Volkswagen of America, Inc. v. D'Amato (“Audi AG”), 469 F.3d 534, 542 (6th Cir.2006) (“Under the Lanham Act, 15 U.S.C. § 1051 et seq., we use the same test to decide whether there has been trademark infringement, unfair competition, or false designation of origin: the likelihood of confusion between the two marks.”).

In Count Four, Plaintiff then asserts a claim for counterfeiting under 15 U.S.C. § 1114. This claim is not redundant to the prior claims, as another judicial officer in a sister District has explained:

Even if a mark is infringing, that mark is not necessarily counterfeit, because, while “[c]ounterfeiting is a subset of trademark infringement [and] [a]ll counterfeits infringe ... not all infringements are counterfeit.” 2–5 Gilson on Trademarks § 5.19 (2008). Infringement, therefore, is merely one prerequisite to a finding of a counterfeit mark.

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