Click Confusion Not the Same as “Actual Confusion”
Spike in YouTube Views and Google Search Errors Insufficient to Prove “Actual Confusion” in Trademark Infringement Claim – Scorpiniti v. Fox Television Studios, Inc., 2013 WL 252453 (N.D. Iowa Jan. 23, 2013)
Scorpiniti v. Fox Television Studios, Inc. is the latest case involving use of Internet popularity to prove infringement of a trademark or trade dress. In this case filed in Iowa’s federal district court, the plaintiff unsuccessfully argued that a sudden rise in the number of hits on a YouTube page bearing the mark in question is evidence of “actual confusion.”
The plaintiff, Louis J. Scorpiniti (Scorpiniti) registered the mark “THE GATE” with the U.S. Patent and Trademark Office for use in relation to “television broadcasing.” In 2007, Scorpiniti was developing his own religious-themed music television show, The Gate. Scorpiniti created a website for the show and completed a pilot (which he posted on YouTube) and the first episode (which he posted on his Facebook page). He never broadcasted his show on TV.
Fox Television Studios, Inc. (Fox) filed an application with the USPTO to register the mark “THE GATES” for use in relation to a new TV series, “The Gates”, about a police officer who moves into gated community inhabited by supernatural beings. Scorpiniti initially filed a Petition for Opposition to Fox’s mark, but later withdrew the petition and chose instead to sue Fox for trademark infringement. The Gates aired on ABC stations from June to September of 2010.
To prove infringement, Scorpiniti had to show that Fox’s use of THE GATES “creates a likelihood of confusion” between the two TV programs. One of the factors relevant to determining if there is “likelihood of confusion” is evidence of actual confusion.
The pilot episode of The Gate that Scorpiniti posted on YouTube experienced a spike in the number of views during the summer of 2010 when ABC was advertising The Gates. Scorpiniti argued that this was evidence of actual confusion. The court disagreed. Also unpersuasive to the court was the fact that a Google search of the term “abc the gate” yielded results in which Fox’s TV show was misspelled as “The Gate.” Spelling errors in an internet search or the fact that someone stumbles upon Scorpiniti’s YouTube video due to a search illustrates inattentiveness or carelessness on the part of the searcher, not actual confusion, the court said. Any viewer who mistakenly viewed the pilot episode of The Gate while searching for The Gates would be able to tell that the two shows come from different sources based on differences in their appearance, content and production value.