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Case 8:05-Cv-00983-JDW-EAJ Document 93 Filed 09/28/2007 Page 1 of 18 Case 8:05-cv-00983-JDW-EAJ Document 93 Filed 09/28/2007 Page 1 of 18 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA TAMPA DIVISION WORLD TRIATHLON CORPORATION, INC., Plaintiff, VS. Case No. 8:05-CV-983-T-27EAJ DAWN SYNDICATED PRODUCTIONS, TELEPICTURES PRODUCTIONS, WARNER BROS. ENTERTAINMENT, INC., WARNER BROS. DOMESTIC TELEVISION DISTRIBUTION, INC., WMOR-TV COMPANY, Defendants. ORDER BEFORE THE COURT are Defendants' Dispositive Motion for Summary Judgment (Dkt. 60), Plaintiffs Opposition (Dkt. 69) and Defendants' Reply to Plaintiffs Opposition (Dkt. 87). Upon consideration, Defendants' motion is GRANTED. Plaintiff initiated this action against Dawn Syndicated Productions, Telepictures Productions, Warner Bros. Entertainment, Inc., Warner Bros. Domestic Television Distribution, Inc., and WMOR-TV Company (collectively "Defendants"), alleging Defendants' use of the term "Ironman" in connection with a reality dating television series infringed on Plaintiffs registered trademarks in violation of state and federal law. Plaintiff asserts claims for federal trademark infringement, false designation of origin, dilution, and Florida common law trademark infringement. (Dkt. 1). Defendants move for summary judgment on all counts of Plaintiffs Complaint. (Dkt. 60). Case 8:05-cv-00983-JDW-EAJ Document 93 Filed 09/28/2007 Page 2 of 18 Summarv .ludgement Standard Summary judgment is proper if following discovery, the pleadings, depositions, answers to interrogatories, affidavits and admissions on file show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Fed. R. Civ. P. 56. "An issue of fact is 'material' if, under the applicable substantive law, it might affect the outcome of the case." Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1259-60 (11th Cir. 2004) (internal citations omitted). "An issue of fact is 'genuine' if the record taken as a whole could lead a rational trier of fact to find for the nonmoving party." Id. at 1260. All the evidence and factual inferences reasonably drawn from the evidence must be viewed in the light most favorable to the nonmoving party. Adickes v. S.H. Kress & Co., 398 U.S. 144,157 (1970); Jackson v. BellSouth Telecomms., 372 F.3d 1250,1280 (1 1th Cir. 2004). Once a party properly makes a summary judgment motion by demonstrating the absence of a genuine issue of material fact, whether or not accompanied by affidavits, the nonmoving party must go beyond the pleadings through the use of affidavits, depositions, answers to interrogatories and admissions on file, and designate specific facts showing that there is a genuine issue for trial. Celotex, 477 U.S. at 323-24. Plaintiff's evidence must be significantly probative to support the claims. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,249 (1986). Discussion I. Plaintiff's claims for Federal Trademark Infringement. False Desi~nationof Origin- and Florida Common Law Trademark Infrin~ement Trademarks are "any word, name, symbol, or device, or any combination thereof [used] to identify and distinguish [one's] goods ... from those manufactured or sold by others and to indicate Case 8:05-cv-00983-JDW-EAJ Document 93 Filed 09/28/2007 Page 3 of 18 the source of the goods." Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1216-1217 (1 1th Cir. 2000) (citing 15 U. S .C. $ 1127). To prevail on a trademark infringement claim pursuant to the Lanham Act, a plaintiff must show (1) that its mark has priority and (2) that the defendant's mark is likely to cause consumer confusion. Carnival Brand Seafood Company v. Carnival Brands, Inc., 187 F.3d 1307, 1309 (1 lthCir. 1999). Likelihood of confusion is also an essential element of Plaintiff's claims for false designation of origin and trademark infringement under Florida common law. See 15 U.S.C. $ 1125(a); Carnival Corp. v. Seaescape Casino Cruises, 74 F. Supp. 2d 1261, 1264, n. 2 (S.D. Fla. 1999) ("analysis under the Lanham Act for trademark infringement also applies to claim of trademark infringement and unfair competition under Florida common law"). A. Priority ofthe Mark Plaintiff is in the business of organizing and promoting triathlon competitions worldwide including the Ironman Triathlon World Championship. (Fertic Aff., ¶ 3). Plaintiff first used the Ironman mark in 1978 when it conducted the first Triathlon World Championship in Hawaii. (Fertic Aff., ¶ 4). The Ironman triathlon competition is comprised of a 2.4 mile swim, 112 mile bicycle race and approximately 26.2 mile run. Id. Since 1978, the race has gained mainstream media attention through articles in Sports Illustrated, ABC broadcasts, NBC broadcasts, and ESPN specials. (Fertic, qlg[ 5-8). Since 1995, over 41 million viewers have seen the Ironman Traithlon on NBC. Id. Plaintiff produces television broadcasts and sells DVDs of the triathlon productions. (Fertic Aff., 'l[ 10). The television broadcasts include coverage of the triathlon competition and human interest stories concerning the individual athletes, their extraordinary athletic efforts, and their determination to win. (Fertic Aff., ¶ 11) Plaintiff owns the rights to use several registered Ironman marks for the presentation of Case 8:05-cv-00983-JDW-EAJ Document 93 Filed 09/28/2007 Page 4 of 18 triathlon events and exercise-related products, including but not limited to "IRONMAN" (Reg. No. 1,353,3l3), "IRONMAN TRIATHLON" (Reg. No., 1,226,245), and "IRONMAN TRIATHLON WORLD CHAMPIONSHIP (Reg. No. 1,462,281) for the presentation of athletic contests consisting of running, swimming, and biking; "IRONMAN TRIATHLON" (Reg. No. 1,705,114) for clothing related to running, biking and swimming; and "IRONMAN TRIATHLON (Reg. No. 2,356,707) for sports bags, back packs, and other related tote bag products. (Fertic Aff., ¶ 14). Plaintiff also owns the rights to use "IRONMAN PRODUCTIONS" (Reg. Nos. 2908844 and 2845630) for pre-recorded DVDS videotapes featuring race events involving swimming, biking, running and training, as well as television film and video production services featuring events related to triathlons. Id. Plaintiff's trademark registrations are prima facie evidence of the validity of the registered marks, Plaintiff's ownership of the marks, and Plaintiff's exclusive right to use the registered marks in commerce. 15 U.S .C. $ 11 15(a). Additionally, many of Plaintiff's Ironman marks have been deemed "incontestable" by the Patent & Trademark Office.' "Once a mark has become 'incontestable,' its validity is presumed, subject to certain enumerated defenses" which Defendants have not raised in this case. See Dieter v. B&H Industries of Southwest Florida, Inc., 880 F.2d 322, 328 (1 lthCir. 1989) (citing 15 U.S.C. $ 1065). Contrary to Defendants' assertion, Plaintiff's agreement with Marvel Entertainment, which The incontestability provisions of the Lanham Act were designed to provide a means for a trademark holder to "quiet title in the ownership of his mark." Park 'N Fly v. Dollar Park and Fly Inc., 469 U.S. 189, 198 (1985). A mark is "incontestable" if it has been registered for five years with the Patent & Trademark Office, the holder of the mark files an affidavit in accordance with 15 U.S.C. 1065(3) and the Patent & Trademark Office declares the mark "incontestable." Frehling Enterprises, Inc. v. International Select Group, Inc., 192 F.3d 1330, 1336 (1 lthCir. 1999). Case 8:05-cv-00983-JDW-EAJ Document 93 Filed 09/28/2007 Page 5 of 18 holds the rights to the "Iron Man" comic character, and its agreement with John Balik and Stephanie Bier, who hold the rights to Iron Man Magazine, do not prohibit Plaintiff from protecting itself from the alleged infringing conduct by Defendants. Neither agreement calls into question the validity of Plaintiffs marks. Nor do the agreements extend rights to Defendants to use the Ironrnan mark. Accordingly, Plaintiff has sufficiently demonstrated that its marks are valid and that its right to the Ironman mark is superior to any right held by Defendants. B. Likelihood of Confusion The Eleventh Circuit has set forth seven factors that should be considered when determining whether there is a likelihood of confusion: (1) type of mark; (2) similarity of mark, (3) similarity of the products the marks represent, (4) similarity of the parties' retail outlets and customers, (5) similarity of advertising media used, (6) defendant's intent and (7) actual confusion. Frehling Enterprises, Znc. v. International Select Group, Znc., 192 F.3d 1330, 1335 (1 1" Cir. 1999); Dieter, 880 F.2d at 326. "Of these factors, the type of mark and evidence of actual confusion are the most important in this circuit." Dieter, 880 F.2d at 326 (citations omitted). There are, however, no hard and fast rules as to how much evidence of confusion is enough. Rather, "when looking at the evidence the reviewing court must take into consideration the circumstances surrounding each particular case." Id. at 326, n. 3 (citations omitted). Tvpe of Mark Trademark law recognizes four categories of marks, based on levels of distinctiveness. From least distinctive to most distinctive, these categories are: "(1) generic - marks that suggest the basic nature of a product or service; (2) descriptive - marks that identify the characteristic or quality of a product or service; (3) suggestive - marks that suggest characteristics of the product or service and Case 8:05-cv-00983-JDW-EAJ Document 93 Filed 09/28/2007 Page 6 of 18 require an effort of the imagination by the consumer in order to be understood as descriptive; and (4) arbitrary or fanciful - marks that bear no relationship to the product or service . ." See Gift of Learning Foundation, Znc. v. TGC, Znc., 329 F.3d 792,797-98 (1 1" Cir. 2003) (citations omitted). Suggestive and arbitrary marks are "inherently distinctive" and are therefore afforded greatest protection.
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