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Addressing Viacom’s trade dress infringement claim based on a children’s performance group’s use of an animated graphic depicting an orange shooting star splattering, district court finds that the Sleekcraft factors weigh in favor of finding a likelihood of confusion with Viacom’s orange “splat” logo used by Nickelodeon but enters judgment in favor of performance group on the trade dress claim based on Viacom’s asserted “visual system” combining a color scheme with particular shapes because Viacom did not demonstrate that the system was nonfunctional or had acquired a secondary meaning
Plaintiff The Jumpitz Corp. (“The Jumpitz”) is a California-based performance group that performs live song and dance for preschool-aged children. Plaintiff first used The Jumpitz mark in December 2007 when it marketed its first DVD.On or about May 1, 2009, defendant MTV Networks (“MTV”) began marketing a live-action children’s show titled “The JumpArounds.” To promote The JumpArounds, MTV launched a website and began promoting The JumpArounds on Nickoledeon and NOGGIN web and mobile sites. In July 2009, MTV changed the name of the program to “The Fresh Beat Band.”
The Jumpitz filed a complaint against defendants alleging violation of its trademark and trade dress. Defendant Viacom Int’l, Inc. (“Viacom”) counterclaimed against The Jumpitz for trade dress infringement claiming, among other things, that graphics and colors used on The Jumpitz’s website were similar to those used on Nickelodeon’s website and programs. In July 2010, The Jumpitz moved for summary judgment on all of Viacom’s counterclaims. In its opposition papers, Viacom narrowed its trade dress claim to two elements: (1) Nickelodeon’s “splat”; and (2) Nickelodeon’s “visual system,” comprised of a particular color palette and design.
In its motion, Viacom asserted that The Jumpitz’s shooting star graphic was sufficiently similar to Nickelodeon’s splat that it was likely to create confusion among its customers. As an initial matter, the court found that defendants had a protectable interest in the orange Nickelodeon splat. The “splat,” the court held, was inherently distinctive as it bore no connection to Nickelodeon’s product, i.e. children’s programming. It further found that the splat appeared in orange for many years in the market. Thus, the court concluded that defendants established the first element of trade dress infringement – a valid protectable interest in its mark.
The court next turned to the second element of trade dress infringement – whether the allegedly infringing use of the same or similar mark is likely to cause confusion as to source, affiliation, or sponsorship among consumers. To determine whether there was a likelihood of confusion, the court applied the Ninth Circuit AMF, Inc. v. Sleekcraft Boats multi-factor test.
First, the court considered the strength of Nickelodeon’s splat mark. It found that because there was no logical connection between the services offered by Nickelodeon and the splat, the strength-of-the-mark factor favored Viacom. Second, the court examined the similarity of the marks. The court noted that it would examine The Jumpitz’s shooting star graphic in its animated form. In the animated form, a line shoots across the screen until it ends as a star splatter. The court noted that stars typically do not splatter like paint and that the animating effect makes it similar to Nickelodeon’s splat. Further, the court found that The Jumpitz’s decision to use an “orange” star also supported a finding of similarity. Thus, the second factor weighed in favor of Viacom.
In finding the third factor – intent to deceive – fell in Viacom’s favor, the court looked to an email in which The Jumpitz’s CEO specifically requested an employee to view Nickelodeon’s websites to incorporate elements from those sites into its own. The court also relied on evidence establishing that The Jumpitz’s website designer offered alternative designs that utilized colors other than orange.
Next, the court went on to examine the fourth factor – actual confusion. The court found no evidence of actual confusion but noted that this was not dispositive as the transient use of the web made actual confusion difficult to demonstrate. It concluded that “actual confusion” weighed slightly in favor of The Jumpitz.
The court held the next two factors – proximity of the goods and marketing channels – weighed in Viacom’s favor as the products were highly related and involved marketing via websites. The degree of care factor, however, fell in The Jumpitz’s favor as parents typically exercise a high degree of care in determining what their children may view.
Finally, the court held that the last factor – the likelihood of whether either party will expand its business to compete with the other – weighed in favor of neither, as the court determined that the parties were already competing to a significant extent.
In balancing the Sleekcraft factors, the court concluded that the factors weighed in favor of Viacom and should be decided by a jury. As such the court denied The Jumpitz’s motion for summary judgment on Viacom’s trade dress counterclaim based on Jumpitz’s use of the shooting star graphic.
The court, however, went on to grant summary judgment to The Jumpitz on the trade dress claim regarding Viacom’s “visual system” – i.e. its color scheme, combined with particular shapes used in its marketing and advertisements. The court concluded Viacom failed to offer to rebut Jumpitz’s evidence that the color and shapes used by Nickelodeon was merely functional in nature as the design choices were made to appeal to children who may not be otherwise able to distinguish between characters, such that it failed to carry its burden of demonstrating the system is nonfunctional. The court also found that Viacom failed to demonstrate that the “visual system” has acquired secondary meaning. The court stated that it “would be remiss if it did not express its concerns over affording trade dress protection to Nickelodeon’s broadly defined ‘visual system.’ Children present a unique audience and companies attempting to reach children must figure out to reach children in light of their limited cognitive abilities.”