THOIP v. Walt Disney Co.
| Citation | 690 F. Supp.2d 218 |
| Decision Date | 09 February 2010 |
| Docket Number | No. 08 Civ. 6823 (SAS).,08 Civ. 6823 (SAS). |
| Parties | THOIP (A Chorion Limited Company), Plaintiff, v. The WALT DISNEY COMPANY, Disney Consumer Products, Inc., and Disney Destinations, LLC, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Paul M. Fakler, Esq., Martin Schwimmer, Esq., Kandis Koustenis, Esq., Amanda J. Schaffer, Esq., Moses & Singer LLP, New York, NY, for Plaintiff.
Dale M. Cendali, Esq., Melanie Bradley, Esq., Courtney Schneider, Esq., Kirkland & Ellis LLP, New York, NY, for Defendants.
In stark contrast to the cuteness and humor of the cartoons at the heart of this trademark dispute, presently before the Court are dueling motions in limine to preclude dueling expert testimony. Each side argues that the other's expert survey concerning consumer confusion is so methodologically unsound as to render the survey and accompanying testimony inadmissible. No survey is perfect and the limits and flaws of a survey generally go to evidentiary weight and do not warrant exclusion. Exclusion may be justified, however, where a single error or the cumulative errors are so serious that the survey is unreliable or insufficiently probative. For the reasons stated below, I conclude that THOIP's survey is inadmissible and Disney's survey is admissible.
THOIP claims rights in an unregistered trademark consisting of "LITTLE MISS" with a character trait in big, bold, capital letters plus a character.1 For example:
According to THOIP, the mark was first used in the United States on a series of children's books—to which THOIP acquired rights in 2004.2 "From 1981 to the present, over 35 LITTLE MISS characters have been created and featured in at least 75 books, each book with a title character prominently featured on the cover, as well as various television series and videos."3 In addition to marketing the Little Miss—and related Mr. Men—books, THOIP has extensively licensed "the images, characters, stories and settings from the books ... for a wide range of uses worldwide,"4 including for an assortment of merchandise.5
In the summer of 2006,6 a THOIP licensee launched a line of T-shirts featuring the Little Miss "images and names in a format taken from the iconic cover of each book."7 The shirts are faux-distressed so as to look and feel vintage.8 They are sold at boutiques such as Kitson; national retail chains such as Bloomingdale's, Gap Kids, Hot Topic, Macy's, Nordstrom, Urban Outfitters, and Walmart; and online.9 Additionally, beginning in May 2007, THOIP's shirts were available at Vault 28—a boutique inside the Downtown Disney shopping complex, which lies outside of the Disneyland theme park in Anaheim, California.10 THOIP's shirts were also sold at Disney World in Orlando, Florida, specifically at Epcot Center's United Kingdom Pavilion and at the Virgin store in the Downtown Disney complex.11
In this suit, THOIP contends under section 43(a) of the Lantham Act and common law that its mark was infringed by two lines of T-shirts of the Walt Disney Company, Disney Consumer Products, Inc., and Disney Destinations, LLC (collectively "Disney").12 The first line—the so-called "Little Miss Disney" line—was launched in February 2008 and consisted of four different shirts: "Little Miss Bossy" with Daisy Duck, "Little Miss Perfect" with Minnie Mouse, "Little Miss Sassy" with Tinkerbell, and "Little Miss Wicked" with the Queen from the tale of Snow White.13
THOIP puts out a "Little Miss Bossy" shirt with its character, but has not used the specific adjectives perfect, sassy, or wicked.14
The Little Miss Disney shirts were sold at Disney theme parks, including Disneyland and Disney World, and at the World of Disney store in Manhattan.15
THOIP alleges that the Little Miss Disney shirts are infringing because both companies' shirts:
(1) use as their most prominent term the consistent formative LITTLE MISS element; (2) followed by a personality trait, usually self-deprecating; (3) rendered in identical sans-serif block letter typefaces, taken from the MR. MEN and LITTLE MISS book covers; (4) alongside a cartoon character visually portraying the relevant personality trait; (5) the shirts are rendered in faux-distressed style; and (6) the shirts are made from a fabric made to appear and feel well-worn and soft.16
The second line of allegedly infringing Disney shirts—the "Miss Disney" line— was launched in October 2007 and consisted of four different shirts: "Miss Chatterbox" with Minnie Mouse, "Miss Fabulous" with Minnie Mouse, "Miss Attitude" with Tinkerbell, and "Miss Adorable" with Marie the Cat.17
THOIP puts out a "Little Miss Chatterbox" shirt with its character, but has not used the terms fabulous, attitude, or adorable.18
The Miss Disney shirts were sold by many of the same national retail chains as the Little Miss THOIP shirts, as well as online.19 Two Miss Disney shirts—Miss Attitude and Miss Fabulous—were also available at Vault 28 within Downtown Disney in Anaheim.20
Though THOIP does not use "Miss" without the modifier "Little",21 THOIP alleges the Miss Disney shirts nonetheless are an unlawful infringement upon its mark.22
In support of its claims, THOIP proffers a survey from its retained expert Dr. Gary Ford that purports to examine whether consumers perceive two Little Miss Disney and two Miss Disney shirts to be emanating from, associated with, or permitted by THOIP.23
Dr. Ford conducted a two-room "sequential array" survey in which respondents were shown, in room one, a THOIP shirt, and, in room two, an array of five shirts including an allegedly infringing Disney shirt (or control shirt) and four non-infringing "filler" shirts.24 Each respondent participated in one of eight different cells.25 Cells One, Three, Five, and Seven were "treatment" cells in which a THOIP shirt was compared to an array that included an accused Disney shirt.26 Dr. Ford testified that he paired a specific THOIP shirt with an allegedly infringing Disney shirt based on resemblance.27
Cells Two, Four, Six, and Eight were "control" cells—each corresponding to the immediately preceding treatment cell.28 In the control cells, a THOIP shirt was compared to an array of shirts in which the allegedly infringing Disney shirt from the corresponding treatment cell was replaced with a shirt bearing the same Disney character but omitting the words.29
More specifically to survey operation, a respondent was shown in room one a specific THOIP shirt and was told to look at it as if deciding whether to purchase it.30 When the respondent was finished looking at the shirt, the shirt was removed from view and the interviewer asked some unrelated questions intended to clear short-term memory of the THOIP shirt.31
The interviewer then escorted the respondent into a second room in which she was shown the five-shirt array.32 The interviewer instructed the respondent to look at the shirts as if considering whether to purchase any of them.33 The order of the array remained constant across respondents within a cell; the allegedly infringing Disney shirt (or control shirt) was always in the middle of the display.34 None of the shirts in the survey contained a neck label or any other indicia of origin.35
When the respondent finished looking over the array, the interviewer asked her a series of questions to determine whether she thought one or more of the shirts in the array emanated from, was associated with, or was permitted by THOIP.36 For instance, a respondent was asked: "Do you think one or more of these products is put out by the same company that put out the shirt I showed you earlier or that none of these products is put out by the same company that put out the shirt I showed you earlier or don't you know?"37
As an example, Cell One—which tested THOIP's Little Miss Bossy shirt with Disney's Little Miss Bossy shirt—was presented as follows:
As shown above, the array in room two consisted of Minnie Mouse, Lucy from Peanuts with the word "Lucy" above her image, Disney's allegedly infringing Little Miss Bossy with Daisy Duck, Dora the Explorer with the words "Dora the Explorer" above her image, and Hello Kitty.38
The array from Cell Two—the control cell corresponding to Cell One—was as follows:
Cell Three tested THOIP's Little Miss Chatterbox shirt with Disney's Miss Chatterbox shirt; Cell Four was the control version of Cell Three.39 Cell Five tested THOIP's Little Miss Splendid shirt with Disney's Miss Fabulous shirt; Cell Six was the control version of Cell Five.40 Cell Seven tested THOIP's Little Miss Splendid shirt with Disney's Little Miss Perfect shirt; Cell Eight was the control version of Cell Seven.41
Dr. Ford classified a respondent as confused as to source, association, or permission if she identified one of the following reasons for selecting the allegedly infringing Disney shirt:
a) because the shirt said Little Miss Bossy, Miss Chatterbox or Little Miss Splendid and/or Miss Fabulous and Little Miss Splendid and/or Little Miss Perfect or some variant of those terms; b) because the shirt said "Little Miss" or "Miss;" c) because the shirt said the same name, or same wording in both, same slogan or a similar phrase; or d) because the shirt sic the same lettering, the lettering looks the same, or a similar response related to the lettering or writing on the shirt.42
Respondents were not classified as confused if they "gave a response such as it is a cartoon character,' `same fabric' or similar responses or gave responses that may have had multiple meanings, such as `same logo.'"43
Based on his coding, Dr. Ford found: (1) 27.5 percent of respondents perceived Disney's Little Miss Bossy shirt to be from a source that was the same as, associated with, or permitted by the company that put out THOIP's Little Miss Bossy shirt;44 (2) no respondents...
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...(S.D.N.Y., 2005), §5.400 Think Pink, Inc. v. Rim, Inc. , 798 N.Y.S.2d 413 (N.Y.A.D., 1 Dept., 2005), §30.300 THOIP v. Walt Disney Co. , 690 F.Supp.2d 218 (S.D.N.Y., 2010), §23.412 Thoma Opticians, Inc. v. Barnes, Dennig & Co. , 784 N.E.2d 1207, 151 Ohio.App.3d 566 (2003), Overview Thomas v.......
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