Streetwise Maps, Inc. v. Vandam, Inc., Docket No. 97-7943

• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
• Writing for the Court: CARDAMONE; After a bench trial
• Citation: 159 F.3d 739,1998 WL 751699
• Parties: STREETWISE MAPS, INC., Plaintiff-Counter-Defendant-Appellant, v. VANDAM, INC., a corporation of the State of New York, and Steven Meuth, also known as Stephan Van Dam, Defendants-Counter-Claimants-Appellees.
• Docket Number: Docket No. 97-7943
• Decision Date: 27 October 1998

Page 739

159 F.3d 739 48 U.S.P.Q.2d 1503 STREETWISE MAPS, INC., Plaintiff-Counter-Defendant-Appellant,
v.
VANDAM, INC., a corporation of the State of New York, and
Steven Meuth, also known as Stephan Van Dam,
Defendants-Counter-Claimants-Appellees. Docket No. 97-7943. United States Court of Appeals,
Second Circuit. Argued March 13, 1998.
Decided Oct. 27, 1998.

Page 741

Gerard F. Dunne, New York, New York (Eric Weiss, Law Offices of Gerard F. Dunne, New York, New York), for Plaintiff-Counter-Defendant-Appellant.

James N. Blair, New York, New York (Loselle Greenawalt Kaplan Blair & Adler, New York, New York), for Defendants-Counter-Claimants-Appellees.

Before: CARDAMONE, WALKER, and MAGILL ^*, Circuit Judges.

CARDAMONE, Circuit Judge:

Streetwise Maps, Inc. had a great idea when it began developing its simplified, foldable, laminated street map. But, as with most good ideas, imitators were quick to follow. This litigation concerns plaintiff Streetwise's attempt to eliminate from the marketplace one such imitator's product--defendants' StreetSmart maps. To accomplish that purpose, plaintiff brought an action against defendants under the Lanham Act and copyright law.

Competitors, by copying and underselling a product's originator, enjoy a "free ride" on an originator's efforts. Yet, since the common law favors competition, unless a plaintiff can establish that the defendant encroached on its trademark or copyright, the law will tolerate such conduct. Because plaintiff failed to make out a viable claim for either trademark or copyright infringement, we affirm the district court's dismissal of its complaint.

BACKGROUND

Plaintiff Streetwise Maps, Inc. (Streetwise) began publishing maps in 1985. One of the first companies to market the laminated street maps now seen everywhere in the hands and shirt pockets of tourists, Streetwise currently produces such maps for many large international cities, including New York. Plaintiff owns the trademark, "STREETWISE," which it registered with the United States Patent and Trademark Office in 1985.

Defendants VanDam, Inc. and its president, Stephan Van Dam (Van Dam), entered the map-making business in 1984, a year earlier than Streetwise did. Their first line of maps were called "Unfolds," which were pop-up street maps of various cities, the sale of which was also aimed at tourists. Realizing that the trend of the major map publishers in the early 1990s was toward offering a foldable, laminated street map, defendants, to remain competitive, began selling their own version of such a map for New York City in 1995 under the trademark "StreetSmart." Van Dam testified he chose that name because he liked the combined effect the two separate words created. "Street" seemed like a good way to describe the product and "smart" connoted how informed the user who purchased the map would come to be about the city depicted. Put together, the name promoted the idea that the product's user would be smart about the streets of a given city.

VanDam, Inc. had already used the word "smart" in connection with its maps before 1995. In 1991 it produced a line of maps of Boston called the "Smartmap" for another map manufacturer's subsidiary. In addition, at the time it started selling the StreetSmart line in 1995, it also produced a "TravelSmart" map. Defendants informally searched the internet and a library for use of the StreetSmart name, but never conducted a formal trademark search. Van Dam testified that while he knew plaintiff already marketed a line of maps under the name Streetwise, he did not think the name he had chosen infringed on that mark.

Page 742

The StreetSmart map and plaintiff's Streetwise Manhattan map share some cartographic conventions, including the use of purple to depict water and a clarified white street grid superimposed on a gray landmass background. Defendants aver that the cartography of the StreetSmart map originated from their earlier New York City Unfolds map and a Manhattan map they had created for Macy's Department Store. While they knew plaintiff's map employed these two conventions at the time they designed their StreetSmart map, defendants insist these salient features plaintiff contends were copied had been in use for many years, predating plaintiff's Streetwise maps.

Plaintiff's and defendants' maps are about the same size, but the Streetwise map uses the traditional accordion fold, while the StreetSmart map employs a "triple gate fold." StreetSmart's Metro Edition also includes an eight-page inserted booklet describing the top sightseeing attractions with their addresses bound into the center of the map. The two companies use different color schemes on the covers of their maps. VanDam, Inc. prints "Street" in yellow (for the City Edition) or white (for the Metro Edition) and "Smart" in red, both words appear in a black rectangle. In contrast, plaintiff's "Streetwise Manhattan" is written in large white block letters, outlined in black, in a rectangle with a gold background. StreetSmart's New York City map also devotes half of its cover to a design using the letters "NYC" accompanied by an icon symbolizing New York, the Statue of Liberty. The cover of Streetwise's map shows the lower end of Manhattan.

As just stated, defendants began selling their StreetSmart New York City map in April 1995. In May plaintiff notified defendants that their map infringed upon its copyright. Defendants, nevertheless, continued to sell their map. As a result, on July, 14, 1995, Streetwise filed the instant action in the United States District Court for the Southern District of New York (Chin, J.) against VanDam, Inc. and Van Dam individually for trademark and trade dress infringement in violation of the Lanham Act, 15 U.S.C. § 1051, et seq.; copyright infringement in violation of 17 U.S.C. § 101, et seq.; and unfair competition under New York law.

After a bench trial, Judge Chin, in an oral decision rendered on June 25, 1997, dismissed Streetwise's complaint in its entirety with prejudice. Relevant to this appeal, the trial court denied Streetwise injunctive relief on its trademark infringement claim because it found it unlikely that an appreciable number of purchasers would be confused as to the source of the maps. With respect to the copyright infringement claim, the trial judge held the evidence did not support the conclusion that defendants copied a protectible element of Streetwise's map. These holdings were reduced to a judgment entered on June 30, 1997.

Streetwise appeals the dismissal of its claim for injunctive relief under the Lanham Act and the dismissal of its claim for copyright infringement.

DISCUSSION

I Trademark Infringement

A. Lanham Act Generally

The Lanham Act protects the rights of the first user of a trademark, particularly where that mark is a strong one. Trademark law accomplishes this by barring a later user from employing a confusingly similar mark, likely to deceive purchasers as to the origin of the later user's product, and one that would exploit the reputation of the first user. See Spring Mills, Inc. v. Ultracashmere House, Ltd., 689 F.2d 1127, 1135 (2d Cir.1982). The Lanham Act therefore makes a person who uses "any word, term, name, symbol, or device ... or any false designation of origin, false or misleading description of fact ... which is likely to cause confusion," liable in a civil suit to one damaged by such act. 15 U.S.C. § 1125(a)(1).

To prevail on a claim of trademark infringement, a plaintiff must show that the defendant (1) without permission, copied, reproduced, or imitated the plaintiff's (2) registered trademark in commerce (3) as part of the sale or distribution of goods or services (4) and that such use is likely to cause confusion between the two marks. See id. *743s 1114(1)(a); Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir.1993). It is undisputed in the instant case that defendants were without Streetwise's permission to use the StreetSmart mark, that the mark was used in commerce as part of the sale or distribution of goods, and that "Streetwise" is a registered trademark entitled to protection. Thus, the only issue we must decide is whether the district court erred when it determined that defendants' use of the StreetSmart mark is unlikely to cause confusion between their and Streetwise's mark. See Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 390-91 (2d Cir.1995) (reasoning that because the defendant did not dispute the validity of the plaintiff's mark, the only question before the court was whether defendant's use of a similar mark was likely to cause confusion).

To support a finding of infringement, a probability of confusion, not a mere possibility, must exist. See Gruner + Jahr, 991 F.2d at 1077; see also Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1510 (2d Cir.1997) ("Likelihood of confusion means a probability of confusion; 'it is not sufficient if confusion is merely "possible." ' ") (quoting 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:2, at 23-10 to -11 (1996)). A probability of confusion may be found when a large number of purchasers likely will be confused as to the source of the goods in question.

To measure the likelihood of confusion, courts ordinarily will weigh the so-called Polaroid factors: (1) the strength of the plaintiff's mark; (2) the similarity of plaintiff's and defendant's marks; (3) the competitive proximity of their products; (4) the likelihood that plaintiff will "bridge the gap" and offer a product like defendant's; (5) actual confusion between products; (6) defendant's good faith; (7) the quality of defendant's product as compared to plaintiff's; and (8) the sophistication of the purchasers. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961); see also Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 213-14 (2d Cir.1985). These factors are not always dispositive, see Estee...