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IP/Entertainment Case Law Updates

Canfield, et al. v. Health Communications, Inc., et al.

Defendant for years published, under license, the very successful Chicken Soup for the Soul series of books (170 separate titles, with 112 million copies sold). After termination of its publishing agreement with the plaintiff authors, defendant intended to publish several unrelated books . The titles of the proposed books are “Republican’s Soul,” “Democrat’s Soul,” “The Ultimate Cat Lover,” “The Ultimate Horse Lover,” and “The Ultimate Dog Lover.”

The defendant created mock-ups of the book covers which indicated that the new books were from the publisher of the Chicken Soup for the Soul books. The plaintiffs filed suit for a preliminary injunction to stop publication, claiming that the defendant’s use of their registered mark Chicken Soup for the Soul on the books after the termination of its publishing agreement with the plaintiffs violated plaintiffs’ trademark.

As an initial matter, the court confirmed that in the Ninth Circuit the standard of review for a preliminary injunction in a trademark infringement suit had not changed despite the U.S. Supreme Court’s ruling in eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), because in the court’s view eBay applied to claims of copyright and patent infringement only, and this case involves claims for trademark infringement. “The Ninth Circuit's rulings on injunction [sic] relief in the trademark infringement context [in which irreparable harm could be presumed on a showing of a likelihood of infringement] were undisturbed and have been reaffirmed subsequent to eBay [citing Abercrombie & Fitch Co. v. Moose Creek, Inc., 486 F.3d 629, 633 (9th Cir. 2007)]. As such, the central inquiry for the court in determining the appropriateness of a preliminary injunction is whether Plaintiffs' claim of trademark infringement against Defendant is likely to succeed. If the claim is likely to succeed then irreparable injury may be presumed.”

The defendant claimed its use of the plaintiffs’ mark is a classic (or statutory) fair use and a nominative fair use. Statutory fair use is codified at 15 U.S.C. § 1115(b)(4), which provides: "the use of the name, term or device charged to be an infringement is a use, otherwise than as a mark . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin."

The Ninth Circuit distinguishes statutory fair use from nominative fair use based on the nature of the reference to the mark. The Ninth Circuit has stated: “The nominative fair use analysis is appropriate where a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal is to describe his own product. Conversely, the classic [statutory] fair use analysis is appropriate where a defendant has used the plaintiff's mark only to describe his own product, and not at all to describe the plaintiff's product.” (Brother Records, Inc. v. Jardine, 318 F.3d 900, 903-904 (9th Cir. 2003)).

The district court held that the defendant’s proposed use of the plaintiffs’ mark would not qualify as a classic or statutory fair use because the defendant was not using the mark descriptively. “Defendant asserts that it is attempting simply to state a fact - that it did publish the relevant Chicken Soup for the Soul series - and it is not using the Plaintiffs' trademark as a mark. That Defendant was the publisher of the Chicken Soup series does not change the use of the mark on the relevant covers. The reference to Chicken Soup for the Soul is a reference to the Plaintiffs' mark, independent of the Defendant's publication of that series. Such a reference is not descriptive of the actual language used - i.e., Defendant is not alluding to a warm concoction of chicken and broth soothing to one's spiritual self, nor figuratively to a group of heart-warming stories - instead, Defendant is referring specifically to Plaintiffs' mark and the series of books it published.”

In the Ninth Circuit, a defendant can claim nominative fair use if three requirements are met: (1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

In this case, the court found that the defendant satisfied the first two prongs but not the third because the prominence and placement of the plaintiffs’ mark on the book cover mock-ups and the titles of two of the new books that include the word “soul” could suggest sponsorship or endorsement by the plaintiffs. The court granted the plaintiffs’ motion for a preliminary injunction for the defendant’s books containing “soul” in the title, but denied the motion for preliminary injunction for the books whose titles did not contain any words from the plaintiffs’ trademark.