International v. Winship Green ( 1996 )

UNITED STATES COURT OF APPEALS
UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
FOR THE FIRST CIRCUIT
No. 96-1206
THE INTERNATIONAL ASSOCIATION OF MACHINISTS AND
AEROSPACE WORKERS, AFL-CIO, ET AL.,
Plaintiffs, Appellants,
v.
WINSHIP GREEN NURSING CENTER, ET AL.,
Defendants, Appellees.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MAINE
[Hon. Gene Carter, U.S. District Judge]
Before
Selya, Circuit Judge,
Torres* and Saris,** District Judges.
Mark Schneider, with whom John M. West and Bredhoff &
Kaiser, P.L.L.C. were on brief, for appellants.
Richard L. O'Meara, with whom Charles P. Piacentini, Jr. and
Murray, Plumb & Murray were on brief, for appellees.
December 30, 1996
*Of the District of Rhode Island, sitting by designation.
**Of the District of Massachusetts, sitting by designation.
SELYA, Circuit Judge. In this eccentric case, the
SELYA, Circuit Judge.
International Association of Machinists and Aerospace Workers
(IAM or Union) charged an employer, Winship Green Nursing Center
(Winship), with violating the Lanham Act, 15 U.S.C. 1051-1127
(1994), through its unauthorized use of a service mark on
propaganda disseminated during a union organizing campaign.1 The
district court granted Winship's motion for brevis disposition,
reasoning that the Union's claim failed to satisfy the Lanham
Act's jurisdictional requirements because (1) the parties were
not competing for the sale of commercial services, and (2)
Winship's admittedly unauthorized use of the mark was in
connection with services offered by the markholder rather than
services offered by the infringer. See International Ass'n of
Machinists v. Winship Green Nursing Ctr., 914 F. Supp. 651, 655-
56 (D. Me. 1996). The Union appeals. We affirm, albeit on a
different ground.
I. BACKGROUND
I. BACKGROUND
We present the basic facts in the light most flattering
to the party vanquished by summary judgment. All the relevant
events occurred in 1994, and all dates refer to that year.
A
A
In May the Union mounted a campaign to organize the
1An IAM official, Dale Hartford, is also a plaintiff, and
two affiliates of Winship (Hillhaven Corp. and First Healthcare
Corp.) are codefendants. Since the presence of these additional
parties does not affect the issues on appeal, we treat the
litigation as if it involved only the Union (as plaintiff-
appellant) and Winship (as defendant-appellee).
2
nonprofessional employees at Winship's facility in Bath, Maine.
Not surprisingly, management resisted this initiative and
exhorted the affected employees to vote against IAM's election as
a collective bargaining representative. As part of its retort
Winship hand-delivered two pieces of campaign literature to
employees in the putative bargaining unit. These handouts form
the basis for IAM's lawsuit.
1. The First Flier. In July Winship distributed a
1. The First Flier.
three-page flier, the first page of which asks rhetorically:
WHAT WOULD YOU DO IF YOU GOT THE ATTACHED
LETTERS?
WOULD YOU BE ABLE TO FIND ANOTHER JOB?
HOW WOULD YOU PAY YOUR BILLS?
WOULD YOU WISH THAT THE MACHINISTS UNION HAD
NEVER GOTTEN IN AT WINSHIP GREEN?
The flier then advises recipients that "IT'S NOT TOO LATE" and
implores them to "GIVE [certain named managers] A CHANCE" by
"VOT[ING] NO ON AUGUST 4." The letters, addressed individually
to particular employees and dated one year after the scheduled
election, comprise the second and third pages of the flier. One
letter purports to be written on the Union's letterhead, complete
with a reproduction of the IAM service mark (consisting of a set
of machinist's tools surrounded by a gear and the IAM name)2 and
the facsimile signature of an IAM plenipotentiary, Dale Hartford.
2Service marks and trademarks function to identify the
source of services and goods, respectively. The difference
between the two types of marks is not relevant here, and thus we
will apply case law involving either form. See Star Fin. Servs.,
Inc. v. AASTAR Mortgage Corp., 89 F.3d 5, 8 n.1 (1st Cir. 1996);
Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 815
n.1 (1st Cir. 1987).
3
This missive suggests that the Union had notified Winship of its
obligation, pursuant to an invented collective bargaining
agreement, to terminate the recipient's employment because of her
failure to pay certain assessments (e.g., union dues and an
initiation fee). The other epistle, signed by Winship's director
of operations, is also postdated. It acknowledges Winship's
receipt of the notice and professes to inform the addressee that
the company must honor the Union's request.
2. The Second Flier. The remaining piece of campaign
2. The Second Flier.
literature, disseminated by Winship a few days before the
election, urges the reader to vote against unionization and warns
that union membership will bring significant financial burdens.
This flier contains a simulated invoice inscribed on what
purports to be IAM's letterhead (and which bears the IAM service
mark). Under a heading that reads "PAYABLE TO THE MACHINISTS
UNION BY [employee's name]", the invoice lists amounts designated
as union dues, an initiation fee, and fines.3 Commentary,
undiluted by subtlety, accompanies this listing: "NO MATTER WHAT
THE UNION HAS TOLD YOU JUST ASK THE EMPLOYEES AT LOURDES
HOSPITAL" AND "JUST ASK THE 13 EMPLOYEES AT GENERAL ELECTRIC IN
SOUTH PORTLAND WHO WERE FINED FOR CROSSING THE PICKET LINE
THERE." Large, bold letters at the bottom of the invoice
proclaim: "WITHOUT THE MACHINISTS UNION, DO NOT PAY THIS BILL."
3The stated amounts are not only apocryphal but also
extravagant. During the organizing drive, IAM repeatedly
declared that there would be no initiation fee and that no
worker's monthly dues would exceed $20.
4
Notwithstanding Winship's tactics or, perhaps, due to
them the employees chose IAM as their collective bargaining
representative in the August 4 election.
B
B
The Union proved to be a sore winner. It soon filed
suit against Winship alleging inter alia trademark infringement
and unfair competition under the Lanham Act.4 The Union premised
its federal claims on the theory that Winship's unauthorized use
of the registered service mark occurred "in connection with . . .
services," namely, IAM's representational services, and thereby
transgressed sections 32(1) and 43(a) of the Lanham Act. See 15
U.S.C. 1114(1)(a) & 1125(a) (quoted infra note 5). The
district court rejected this theory for the reasons previously
mentioned. See IAM, 914 F. Supp. at 655-56. This appeal
followed.
II. THE SUMMARY JUDGMENT STANDARD
II. THE SUMMARY JUDGMENT STANDARD
Though the case is unconventional, the generic legal
standard that we must apply is prosaic. Summary judgment is
appropriate in trademark infringement cases, as elsewhere, "if
the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show
4IAM's complaint also embodied a salmagundi of pendent
state-law claims. The district court dismissed these claims
without prejudice coincident with the entry of summary judgment
on the federal claims. See IAM, 914 F. Supp. at 656. We
understand that the Union is pursuing these claims in a separate
state court action. Finally, the complaint sought injunctive
relief under the Norris-LaGuardia Act, 29 U.S.C. 101-115
(1994), but the Union now concedes the infirmity of this request.
5
that there is no genuine issue as to any material fact and that
the moving party is entitled to a judgment as a matter of law."
Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 24 (1st Cir.
1989) (quoting Fed. R. Civ. P. 56(c)). Generally speaking, a
fact is "material" if it potentially affects the outcome of the
suit, see Garside v. Osco Drug, Inc., 895 F.2d 46, 48 (1st Cir.
1990), and a dispute over it is "genuine" if the parties'
positions on the issue are supported by conflicting evidence, see
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). While
an inquiring court is constrained to examine the record in the
light most favorable to the summary judgment opponent and to
resolve all reasonable inferences in that party's favor, see
Hachikian v. FDIC, 96 F.3d 502, 504 (1st Cir. 1996), defeating a
properly documented motion for summary judgment requires more
than the jingoistic brandishing of a cardboard sword. This is
especially true in respect to claims or issues on which the
nonmovant bears the burden of proof; in such circumstances she
"must reliably demonstrate that specific facts sufficient to
create an authentic dispute exist." Garside, 895 F.2d at 48; see
also Anderson, 477 U.S. at 256.
We review de novo the district court's grant of summary
judgment. See Mack v. Great Atl. & Pac. Tea Co., 871 F.2d 179,
181 (1st Cir. 1989). Moreover, an appellate tribunal is not
bound by the lower court's rationale but may affirm the entry of
judgment on any independent ground rooted in the record. See,
e.g., Hachikian, 96 F.3d at 504; Garside, 895 F.2d at 49.
6
III. ANALYSIS
III. ANALYSIS
Our analysis proceeds in five parts.
A
A
Trademark infringement and unfair competition laws
exist largely to protect the public from confusion anent the
actual source of goods or services. See, e.g., Star Fin. Servs.,
Inc. v. AASTAR Mortgage Corp., 89 F.3d 5, 9 (1st Cir. 1996);
DeCosta v. Viacom Int'l, Inc., 981 F.2d 602, 605 (1st Cir. 1992),
cert. denied, 509 U.S. 923 (1993); 3 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition 23.01 (3d ed. 1996). The
Lanham Act is cast in this mold. Generally speaking, the Act
proscribes the unauthorized use of a service mark when the
particular usage causes a likelihood of confusion with respect to
the identity of the service provider.5 See WCVB-TV v. Boston
5Section 32(1) of the Lanham Act governs infringement
claims. It stipulates in pertinent part:
Any person who shall, without the
consent of the registrant
(a) use in commerce any
reproduction, counterfeit, copy, or
colorable imitation of a registered
mark in connection with the sale,
offering for sale, distribution, or
advertising of any goods or
services on or in connection with
which such use is likely to cause
confusion, or to cause mistake, or
to deceive; . . .
shall be liable in a civil action
by the registrant . . . .
15 U.S.C. 1114(1) (emphasis supplied). Section 43(a) governs
unfair competition claims. It stipulates in pertinent part:
Any person who, on or in connection with any
7
Athletic Ass'n, 926 F.2d 42, 44 (1st Cir. 1991); see also Societe
des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633,
641 (1st Cir. 1992) (explaining in respect to trademarks that
"only those appropriations . . . likely to cause confusion are
prohibited"). Consequently, likelihood of confusion often is the
dispositive inquiry in a Lanham Act case. See, e.g., WCVB-TV,
926 F.2d at 44; Pignons S.A. de Mecanique de Precision v.
Polaroid Corp., 657 F.2d 482, 492 (1st Cir. 1981). So it is
here.
B
B
To demonstrate likelihood of confusion a markholder (or
one claiming by, through, or under her) must show more than the
theoretical possibility of confusion. See American Steel
Foundries v. Robertson, 269 U.S. 372, 382 (1926) (requiring
probable confusion); Star, 89 F.3d at 10 (requiring evidence of a
substantial likelihood of confusion); accord 3 McCarthy, supra,
23.01[3][a]. Just as one tree does not constitute a forest, an
goods or services, . . . uses in commerce any
word, term, name, symbol, or device . . . or
any false designation of origin . . . which
(A) is likely to cause confusion,
or to cause mistake, or to deceive
as to . . . the origin,
sponsorship, or approval of [such
person's] goods, services, or
commercial activities by another
person . . .
shall be liable in a civil action by any
person who believes that he or she is or is
likely to be damaged by such an act.
15 U.S.C. 1125(a) (emphasis supplied).
8
isolated instance of confusion does not prove probable confusion.
To the contrary, the law has long demanded a showing that the
allegedly infringing conduct carries with it a likelihood of
confounding an appreciable number of reasonably prudent
purchasers exercising ordinary care. See McLean v. Fleming, 96
U.S. 245, 251 (1877); Mushroom Makers, Inc. v. R.G. Barry Corp.,
580 F.2d 44, 47 (2d Cir. 1978), cert. denied, 439 U.S. 1116(1979); Coca-Cola Co. v. Snow Crest Beverages, Inc., 162 F.2d
280, 284 (1st Cir.), cert. denied, 332 U.S. 809 (1947). This
means, of course, that confusion resulting from the consuming
public's carelessness, indifference, or ennui will not suffice.
See, e.g., United States v. 88 Cases, More or Less, Containing
Bireley's Orange Beverage, 187 F.2d 967, 971 (3d Cir.) (inferring
that "the legislature contemplated the reaction of the ordinary
person who is neither savant nor dolt, [and] who . . . exercises
a normal measure of the layman's common sense and judgment"),
cert. denied, 342 U.S. 861 (1951); see also Indianapolis Colts,
Inc. v. Metropolitan Baltimore Football Club Ltd., 34 F.3d 410,
414 (7th Cir. 1994) (explaining that the Lanham Act does not
"protect the most gullible fringe of the consuming public").
We typically consider eight factors in assessing
likelihood of confusion: (1) the similarity of the marks; (2)
the similarity of the goods (or, in a service mark case, the
services); (3) the relationship between the parties' channels of
trade; (4) the juxtaposition of their advertising; (5) the
classes of prospective purchasers; (6) the evidence of actual
9
confusion; (7) the defendant's intent in adopting its allegedly
infringing mark; and (8) the strength of the plaintiff's mark.
See Star, 89 F.3d at 10; Sullivan, 867 F.2d at 29. While this
compendium does not conform easily to the peculiar facts of this
case, it is not intended to be either all-encompassing or
exclusive. See DeCosta v. CBS, Inc., 520 F.2d 499, 513-14 (1st
Cir. 1975), cert. denied, 423 U.S. 1073 (1976). The listed
factors are meant to be used as guides. See Astra Pharmaceutical
Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1205
(1st Cir. 1983). No one listed factor is determinative, and any
other factor that has a tendency to influence the impression
conveyed to prospective purchasers by the allegedly infringing
conduct may be weighed by the judge or jury in gauging the
likelihood of confusion. We completely agree with the authors of
the Restatement that "[n]o mechanistic formula or list can set
forth in advance the variety of factors that may contribute to
the particular marketing context of an actor's use." Restatement
(Third) of Unfair Competition 21 cmt. a (1995).
Two related points are worth making. First, because
the listed factors must be evaluated in context, any meaningful
inquiry into the likelihood of confusion necessarily must
replicate the circumstances in which the ordinary consumer
actually confronts (or probably will confront) the conflicting
mark. See, e.g., Libman Co. v. Vining Indus., Inc., 69 F.3d
1360, 1362 (7th Cir. 1995), cert. denied, 116 S. Ct. 1878 (1996);
Black Dog Tavern Co. v. Hall, 823 F. Supp. 48, 55 (D. Mass.
10
1993). Second, Rule 56 places a special gloss upon the usual
analytic approach. On summary judgment the reviewing court must
decide whether the evidence as a whole, taken most hospitably to
the markholder, generates a triable issue as to likelihood of
confusion. See Sullivan, 867 F.2d at 29; Astra, 718 F.2d at
1205; see also 3 McCarthy, supra, 23.11 (observing that, while
legal precedent governs the analysis, the result of each case is
controlled by the totality of its facts).
Applying these principles, we conclude that the Union
bears the burden here of adducing "significantly probative"
evidence, Anderson, 477 U.S. at 249-50 (citation omitted),
tending to show that an appreciable number of prospective voters
(i.e., employees within the defined bargaining unit) were in fact
likely to be confused or misled into believing that the service-
marked campaign literature was produced, sent, or authorized by
IAM. The Union has not reached this plateau.
C
C
As we set the scene for the main thrust of our
analysis, we acknowledge that the campaign stump is an odd stage
for playing out a Lanham Act drama. In the typical commercial
setting, confusion as to the source of goods or services occurs
when there is an unacceptably high risk that a buyer may purchase
one product or service in the mistaken belief that she is buying
a different product or service. See, e.g., Star, 89 F.3d at 9.
But the instant case is well off the beaten track. It does not
involve two entrepreneurs vying to sell competing products or
11
services in the traditional sense. Rather, IAM was angling to
represent the workers and, although Winship opposed that effort,
it was neither offering nor seeking to provide a similar service.
In the vernacular of the marketplace, IAM was "selling" its
services to prospective union members and Winship was "selling" a
negative the lack of a need for any such services or service-
provider.
This twist has significant implications for a court's
assessment of the likelihood of confusion. If we assume,
favorably to the Union, that confusion as to the source of the
documents bearing the IAM service mark may at least indirectly
deter prospective purchasers (voters within the bargaining unit)
from acquiring (voting for) IAM's representational services, that
deterrent will exist only if, and to the extent that, confusion
causes purchasers to be misinformed about the nature or value of
the services. We think it follows inexorably that, if the
electorate can readily identify Winship as the source of the
promotional materials, the deterrent vanishes. See, e.g.,
McIntyre v. Ohio Elections Comm'n, 115 S. Ct. 1511, 1519 n.11
(1995) (suggesting that once people know the source of a writing,
they can evaluate its message, and, at that point, "it is for
them to decide what is responsible, what is valuable, and what is
truth") (citation and internal quotation marks omitted). In that
event, there is no misleading as to the genesis of the letters,
and the voters can assess whether the Winship-authored handouts
accurately describe the Union's services, or, instead, are merely
12
a manifestation of Winship's no-holds-barred commitment to
dissuade the voters from "purchasing" those services. Put
another way, knowledge as to the source of the materials dispels
incipient confusion.
The Union attempts to confess and avoid. It contends
that the recipients' ability to ascertain the source of the
documents does not necessarily negate confusion. This contention
hinges on the theory that employees may have thought that the
letters, even if delivered by the company, were actual IAM
documents which Winship procured and then draped in anti-union
invective. But that theory does not fit the facts: patently,
this is neither an instance in which an employer distributes
copies of a notice previously sent by a union to employees
elsewhere and adds anti-union commentary, nor one in which an
employer makes minor emendations to an authentic union document.
The letters and the invoice are composed around names and
circumstances indigenous to this particular organizational
effort. Among other things, the letters bear a date significant
in its relation to the scheduled election; they address each
Winship employee by name and home address; and they identify this
employer. Source-identifiers specific to the Winship election
are even more pervasive in the fictitious invoice.
The Union's fallback position seems to be that, even if
it is nose-on-the-face plain that the letters and the invoice are
not replicas of genuine IAM materials, the affected employees
still may have believed that they somehow were based on genuine
13
materials. We think this construct is both legally unsound and
factually unsupported. In the first place, a recipient's ability
to recognize that the alleged infringer, at a minimum, must have
substantially added to or altered a document alleviates any
confusion as to its immediate source. Cf. Warner Bros., Inc. v.
American Broadcasting Cos., 720 F.2d 231, 246 (2d Cir. 1983)
(suggesting that lack of substantial similarity leaves "little
basis" for asserting likelihood of confusion in a Lanham Act
claim). In the second place, even indulging the arguendo
assumption that the contrived documents were based on a real
scenario, the alterations are sufficiently extensive that an
ordinary recipient, possessing a modicum of intelligence, could
not help but recognize that Winship had tampered so substantially
with the documents that they could no longer be perceived as
emanating from the Union.6 In other words, the documents'
credibility would depend on the voters' assessment of whether
Winship was telling the truth. See McIntyre, 115 S. Ct. at 1519
6An analogous principle in copyright law is instructive.
Absent direct evidence of copyright infringement, a plaintiff
must prove "substantial similarity" between the copyrighted and
contested materials. See, e.g., NEC Corp. v. Intel Corp., 10
U.S.P.Q.2d 1177, 1183 (N.D. Cal. 1989). The applicable test is
"whether the work is recognized by an observer as having been
taken from the copyrighted source." Id. at 1184. Even if a work
is copied, however, no copyright infringement exists if
substantial changes render the work unrecognizable. See v.
Durang, 711 F.2d 141, 142 (9th Cir. 1983) (affirming grant of
summary judgment for the defendant); NEC Corp., 10 U.S.P.Q.2d at
1186-87; cf. A. Dean Johnson, Music Copyrights: The Need for an
Appropriate Fair Use Analysis in Digital Sampling Infringement
Suits, 21 Fla. St. U. L. Rev. 135, 158-59 (1993) (noting greater
likelihood of fair use in copyright cases if alterations render
an original music recording unrecognizable).
14
n.11 (discussing the value of knowing "the identity of the
source" for the purpose of judging the truthfulness of ideas
contained in a writing). We conclude, therefore, with regard to
these documents, that as long as employees can ascertain either
who authored or who substantially modified the literature, they
will readily recognize the entire document (including the
letters, in one case, and the invoice, in the second case) as
propaganda, and they will be in a position to gauge its accuracy
accordingly.
This emphasis on source recognition takes into account
the setting and the juxtaposition of the parties. Labor-
management relations have not mellowed since Justice Clark
observed three decades ago that representational campaigns "are
ordinarily heated affairs . . . frequently characterized by
bitter and extreme charges, countercharges, unfounded rumors,
vituperations, personal accusations, misrepresentations and
distortions." Linn v. United Plant Guard Workers of Am., Local
114, 383 U.S. 53, 58 (1966). Because exaggeration, sometimes
crossing the line into outright falsehood, is a staple in such
campaigns, "consumers" (i.e., affected workers) are on notice
that both sides likely will embellish with scant regard for the
confining restraints imposed by the truth. See Baumritter Corp.
v. NLRB, 386 F.2d 117 (1st Cir. 1967) (explaining that
inaccuracies are indigenous to campaign propaganda in the labor
relations milieu). The acrimonious literature disseminated by
both parties indicates that this campaign was no exception to the
15
rule.7
D
D
Having woven the contextual tapestry against which the
Union's claims must be viewed, we turn now to the octet of
factors that typically inform the likelihood of confusion. While
the strange configuration of this case renders certain of those
factors irrelevant or, at least, difficult to apply square pegs
never fit snugly in round holes we make the effort in the
interest of completeness. Moreover, other relevant circumstances
compensate to some degree for this lack of fit and we intersperse
them throughout our discussion. We deem such circumstances to be
of especially great importance here precisely because this case
falls well outside the customary confines of the Lanham Act.
1. Similarity of Marks. The service mark used by
1. Similarity of Marks.
Winship is not merely similar; it is identical a photocopied
reproduction. Still, similarity is determined on the basis of
the designation's total effect, see, e.g., Pignons, 657 F.2d at
487 (considering additional, source-identifying words printed on
goods and substantial differences in packaging), and infringement
"does not exist, though the marks be identical and the goods very
similar, when the evidence indicates no [likelihood of
confusion]." James Burrough Ltd. v. Sign of the Beefeater, Inc.,
7For example, one IAM flier of the "when did you stop
beating your wife?" variety, asks: "WHAT LIES OR HALF TRUTHS
DO[ES WINSHIP] PLAN TO SPREAD DURING OUR DEBATE?" The IAM
materials also describe anticipated "company tactics" or "tricks"
in unflattering terms and warn employees to "LOOK OUT FOR
CORPORATE TRAPS." The Winship literature, discussed above,
speaks for itself.
16
540 F.2d 266, 274 (7th Cir. 1976). What is more, we have
recognized that in certain circumstances otherwise similar marks
are not likely to be confused if they are used in conjunction
with clearly displayed names, logos or other source-identifying
designations of the manufacturer. See Aktiebolaget Electrolux v.
Armatron Int'l, Inc., 999 F.2d 1, 4 (1st Cir. 1993); Pignons, 657
F.2d at 487. Here, the lengthy propagandistic message that
Winship printed in large type on the fictitious invoice and the
conspicuous, easily identifiable fliers it sent to introduce the
letters dilute the inference that might otherwise be drawn from
the similarity between the marks.
2. Similarity of Services. Because the parties do not
2. Similarity of Services.
offer competing services, there is no similitude. Furthermore,
even if the documents are evaluated in the abstract, we do not
think that any reasonable person, viewing them in their entirety
and in conjunction with the accompanying materials, would find
them similar to IAM's authentic campaign literature.
On the one hand, any similarity to actual IAM materials
is limited to the vitriolic tone, the presence of the IAM service
mark, and the facsimile signature. On the other hand, unlike any
genuine IAM communication, the letters are postdated by a full
year and address the employees as if they already had opted in
favor of union representation. The next piece of propaganda (the
invoice) contains anti-union messages that are longer and much
more prominent than any other text. And, moreover, in stark
contrast to handbills distributed by IAM which invariably urged
17
employees to vote "yes" (i.e., for a union), the letters at issue
were attached to rabidly anti-union fliers exhorting employees to
vote "no" (i.e., against a union). In short, the bogus letters,
when compared to the real McCoy, are distinctive in appearance
and antithetical in content. Given such gross dissimilarities,
it cannot reasonably be inferred that ordinarily prudent workers
would be likely to confuse the source of the letters. See Senco
Prods., Inc. v. International Union of Elec. Workers, 311 F.
Supp. 590, 592 (S.D. Ohio 1970) (finding no likelihood of
confusion as to sponsorship of handbills circulated by a union
bearing employer trademark in bold print on the first line,
followed by union identifiers of equal prominence).
3-5. Channels of Trade and Advertising; Classes of
3-5. Channels of Trade and Advertising; Classes of
Prospective Purchasers. Following circuit precedent, see Equine
Prospective Purchasers.
Technologies, Inc. v. Equitechnology, Inc., 68 F.3d 542, 546 n.5
(1st Cir. 1995), we address the next three factors in the
ensemble. The parties' channels of trade are widely disparate
(reduced to bare essence, IAM sells representational services
whereas Winship sells nursing home beds), and there is no
evidence that the channels advertising those services are
similar.
To be sure, as the election campaign picked up steam,
both parties propagandized (and, in that sense, advertised)
through the same medium (print), and both of them targeted
exactly the same narrowly-defined cadre of individuals. The
class of prospective purchasers is necessarily restricted to
18
those individuals and is, therefore, identical. Still, that
identicality does not advance the Union's cause in the special
circumstances of this case.
On this point, the requisite inquiry is not limited
merely to determining whether the class of prospective purchasers
is the same or different. Instead, a court called upon to assay
likelihood of confusion must ponder the sophistication of the
class, thereby taking account of the context in which the alleged
infringer uses the mark. See, e.g., Astra, 718 F.2d at 1206-07;
HQ Network Sys. v. Executive Headquarters, 755 F. Supp. 1110,
1118-19 (D. Mass. 1991). Here, the organizational effort began
in May. Among other things, the Union held open meetings and
sent the affected workers periodic "organizing updates." Thus,
by late July when Winship began to distribute the challenged
documents persons within the class could not help but know of
the ongoing campaign and of its excesses.
We must presume that the class members are of normal
intelligence, see McLean, 96 U.S. at 251; Church of the Larger
Fellowship, Unitarian Universalist v. Conservation Law Found. of
New Eng., Inc., 221 U.S.P.Q. 869, 873 (D. Mass. 1983), and the
previous months' electioneering would have given them a certain
degree of enforced sophistication. Common sense dictates that
this group above all others would filter the rivals' claims
through the seine of this knowledge. Cf. Linn, 383 U.S. at 60-62(discussing the NLRB's toleration of abusive and inaccurate
statements made during organizational campaigns and agreeing that
19
the ultimate appraisal of such statements must be left to the
good sense of those voting in the elections). Accordingly, class
members were especially unlikely to be misled by Winship's
unauthorized use of the IAM mark.
6. Actual Confusion. IAM proffers Dale Hartford's
6. Actual Confusion.
affidavit as the mainstay of its case (indeed, its solitary piece
of evidence) on the issue of actual confusion. The affidavit
states briefly that "several" employees asked whether Hartford
had in fact written the letter that bore his signature.8 It also
reports that one employee questioned whether she would be
required to pay $300 in dues and a $200 initiation fee. Hartford
opines that "these figures seem to have had to have come from
[the apocryphal union invoice]." This evidence, standing alone,
is insufficient to prove actual confusion.
The fundamental problem with the Hartford affidavit is
that, even taking its contents as literally true, it does not
undermine what is perfectly obvious from a reading of the record:
no person of ordinary prudence and normal intelligence, aware of
what was happening around her, would have been confused as to the
source or sponsorship of the letters. For one thing, the
inquiries to which Hartford alludes reveal at most that employees
doubted whether he would have written a letter unfavorable to the
very cause he had labored to promote. On their face, these
8Although Hartford recalled that these statements were made
in front of approximately ten other employees at a union meeting,
he claimed that he could not locate the list of attendees and,
consequently, could not name either the persons who made inquiry
of him or those who overheard the queries.
20
inquiries do not evince actual confusion as to the source of the
jury-rigged documents. See Restatement (Third) of Unfair
Competition 23 cmt. c (1995) ("Evidence of inquiries by
customers as to whether the plaintiff and the defendant are
associated . . . may not establish the existence of actual
confusion if the nature of the inquiries indicates that consumers
perceive a difference between the designations and are skeptical
of the existence of a connection between the users.").
For another thing, skepticism is particularly rampant
and wise as to claims made in the course of any organizing
drive. In the course of this organizing drive a struggle which
incited more than its share of hyperbole on both sides class
members had ample reason to be skeptical. They must have known
that Winship distributed the fliers (which embodied the letters),
and they therefore knew that the letters had to be viewed in
light of Winship's motivation. In all events, forewarned is
forearmed, see Miguel de Cervantes, Don Quixote de la Mancha
(circa 1615), and, here, the Union disseminated literature in the
early going predicting that management would stoop to dubious
tactics.
The question about dues is an even thinner reed. A
lone inquiry does not indicate probable confusion of an
appreciable number of purchasers. See Mushroom Makers, 580 F.2d
at 47. Regardless, this lone inquiry which questioned the
veracity of the prediction concerning union dues does not
indicate confusion as to the source of the fictitious invoice.
21
See Pignons, 657 F.2d at 490 (finding consumer's letter
expressing surprise at perceived affiliation between competing
companies "clearly insufficient" to prove actual confusion).
The Union strives to persuade us that, no matter how
paltry the evidence of actual confusion, it is nonetheless
adequate to survive testing on summary judgment where we must
accept all reasonable inferences favorable to the nonmovant. We
are not convinced. The core purpose of the summary judgment
procedure is to "pierce the boilerplate of the pleadings" and
evaluate the proof to determine whether a trial will serve any
useful purpose. Wynne v. Tufts Univ. Sch. of Med., 976 F.2d 791,
794 (1st Cir. 1992), cert. denied, 507 U.S. 1030 (1993).
Consequently, summary judgment cannot be sidestepped by pointing
to evidence that is merely colorable or suggestive, see, e.g.,
Mack, 871 F.2d at 181, or evidence that lacks substance, see,
e.g., Mesnick v. General Elec. Co., 950 F.2d 816, 822 (1st Cir.
1991), cert. denied, 504 U.S. 985 (1992), or evidence that is
inherently incredible, see, e.g., United States v. Joost, 92 F.3d
7, 14 (1st Cir. 1996).
In this instance, the Union submitted no affidavits
from any individuals who personally received the campaign
literature,9 and we think that it is inherently implausible to
9In point of fact, the only such affidavit in the record
that of an employee named Gail Snipe states unequivocally that
she "recognized all of the materials . . . to be my employer's
campaign materials." She adds: "The face of the documents as
well as the context in which the documents were presented made it
clear that the campaign materials were from the employer, not the
IAM."
22
infer from the inquiries described by Hartford that prospective
voters actually were confused as to the source of the materials.
The summary judgment paradigm requires us to draw and respect
only reasonable inferences; we need not infer that which is
farfetched or fantastic. See Sheinkopf v. Stone, 927 F.2d 1259,
1262 (1st Cir. 1991); Medina-Munoz v. R.J. Reynolds Tobacco Co.,
896 F.2d 5, 8 (1st Cir. 1990); Raskiewicz v. Town of New Boston,
754 F.2d 38, 45 (1st Cir.), cert. denied, 474 U.S. 845 (1985).
Here, the face of the documents, the accompanying fliers, the
environment in which they were distributed, and the lack of
significantly probative evidence of actual confusion combine to
render unreasonable the inference that IAM would have us draw.
7. Intent. IAM relies heavily on the principle that
7. Intent.
when an alleged infringer intentionally copies a trademark, it
may be presumed that she intended to cause confusion and profit
thereby.10 See Sullivan, 867 F.2d at 34. But the presumption is
inapposite in situations where there is no persuasive evidence of
any intent to use the mark to suggest official sponsorship. See
WCVB-TV, 926 F.2d at 45-46 (attaching considerable importance to
the alleged infringers' contemporaneous offer to broadcast
disclaimers, thus making clear that they were not official
sponsors of the trademarked product).
10This rebuttable presumption works with maximum efficiency
in the commercial setting. There, an infringer typically copies
a trademark to palm off her own goods as those of a recognized
manufacturer, thereby free riding on the markholder's reputation
and goodwill. See generally McCarthy, supra, 25.01. The
presumption works less well in cases that do not involve
competitors.
23
The template of this case is similar to that of WCVB-
TV. Winship incorporated the bogus documents in fliers
prominently displaying anti-union commentary and containing pleas
by named managers for votes against unionization. In addition,
the fake invoice itself includes what amounts to a conspicuous
disclaimer. Under the circumstances, no reasonable factfinder
could conclude, notwithstanding Winship's purposeful
misappropriation of the IAM service mark, that the company
intended to mislead employees about the source of the handouts.
8. Strength. Under the Lanham Act strong marks enjoy
8. Strength.
the greatest protection against infringement. See Aktiebolaget,
999 F.2d at 5; Pignons, 657 F.2d at 492. The IAM service mark is
robust, having been duly registered and widely promoted for over
thirty years. But the muscularity of a mark, in and of itself,
does not relieve the markholder of the burden to prove a
realistic likelihood of confusion. See Aktiebolaget, 999 F.2d at
5; Pignons, 657 F.2d at 492. Because the Union has utterly
failed to produce evidence sufficient to meet that burden, see
supra, the mark's strength cannot carry the day.
E
E
After giving due weight to each factor and considering
the unique circumstances that necessarily inform our analysis, we
find no colorable basis for a likelihood of confusion, and,
hence, no trialworthy Lanham Act claim. In reaching this
conclusion we stress the significance of the factual setting.
Here, the ambiance powerfully influenced the impression conveyed
24
by Winship's unauthorized use of the IAM service mark. The
parties' preparations for the election inflamed the historic
enmity between labor and management and colored the
communications distributed by both protagonists. The climate
inevitably conditioned voters to view with suspicion any claims
made by either party about the other. This suspicion peaked
shortly before the election, and that is when the offending
documents surfaced. Moreover, the documents, when received, were
affixed to clearly identifiable management propaganda. These
additional, relevant circumstances counsel persuasively against
any realistic possibility of confusion as to
the source or sponsorship of the mismarked literature.
IV. CONCLUSION
IV. CONCLUSION
Considering the record as a whole in the light most
favorable to the summary judgment loser, we hold that there is no
triable issue of fact as to likelihood of confusion. It is simply
inconceivable that employees who received the challenged literature at
the height of a fiercely disputed union organizing campaign would,
upon even a cursory glance, be apt to believe that IAM either
distributed or contributed in any meaningful way to these vociferously
anti-union tracts.
We add a postscript. The employer wins this appeal, but not
our admiration. While we strongly disapprove of Winship's
misappropriation of IAM's service mark, however, the Union has other
available remedies to redress that infraction. See, e.g., Linn, 383
U.S. at 61 (approving state-law remedy in analogous circumstances).
25
For our part, we are unwilling to stretch the Lanham Act into
unfamiliar contours simply for the sake of punishing conduct that we
deplore. While we are not willing to venture quite as far into
uncharted waters as our concurring colleague after all, unlike the
authorities on which she primarily relies, see post, this case
involves neither a political campaign nor a parody the policy
concerns that undergird her views fortify our resolve to hold the
line. By like token, the special circumstances that the district
court described at length, see IAM, 914 F. Supp. at 653-56 such as
the noncommercial nature of the unauthorized use, the absence of any
competition between the parties in the representational services
market, and the fact that Winship did not appropriate the mark for use
"in connection with" any services of its own point in the same
direction.11 We need go no further.
Affirmed.
Affirmed.
Concurring Opinion Follows
11We take no view of the concurring opinion's suggested
holding, the grounds on which the district court premised its
ruling, or the other theories urged by Winship in support of the
judgment below. While the Union's case may be vulnerable on
several fronts, the absence of any meaningful confusion renders
further comment supererogatory.
26
Saris, U.S.D.J.
I concur on the ground that Winship Green's misuse of the
union's trademark in its campaign literature during the union election
is not a commercial use of the mark adumbrated by Sections 32 or
43(a) of the Lanham Act, as amended, 15 U.S.C. 1114(1), 1125
(1994).
I
I
The union alleges that Winship Green's use of its trademark
during the election violated Sections 32 and 43(a) of the Lanham Act.
A
A
Section 32 of the Lanham Act concerns "trademark
infringement" and proscribes misuse of another's registered trademark
in commerce "in connection with the sale, offering for sale,
distribution, or advertising of any goods or services on or in
connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive."12 15 U.S.C. 1114(1)(a) (1994).
12 Section 32 of the Lanham Act, as amended, states in
pertinent part:
(1) Any person who shall, without the consent of the
registrant --
(a) use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark
in connection with the sale, offering for sale,
distribution, or advertising of any goods or
services on or in connection with which such use
is likely to cause confusion, or to cause mistake,
or to deceive ...
* * *
shall be liable in a civil action by the registrant for
the remedies hereinafter provided....
27
B
B
Section 43(a) provides broader protection, prohibiting
"unfair competition" by use of any mark, registered or not. See Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Section
43(a) prohibits two types of activities: "false designations of
origin," 15 U.S.C. 43(a)(1)(A) ("Prong (A)") and "false
descriptions," 15 U.S.C. 43(a)(1)(B) ("Prong (B)").13 See Truck
Components, Inc. v. K-H Corp., 776 F. Supp. 405, 409 (N.D. Ill. 1991);
3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
27.02[3] (3d ed. 1996) (discussing history of the "two prongs" of
15 U.S.C. 1114(1) (1994).
13 Section 43(a) of the Lanham Act, as amended, states in
pertinent part:
1125. False designations of origin and false
descriptions forbidden
(a) Civil action. (1) Any person who, on or in
connection with any goods and services, or any
container for goods, uses in commerce any word, term,
name, symbol, or device, or any combination thereof, or
any false designation of origin, false or misleading
description of fact, or false or misleading
representation of fact, which --
(A) is likely to cause mistake, or to deceive as
to the affiliation, connection, or association of
such person with another person, or as to the
origin, sponsorship, or approval of his or her
goods, services, or commercial activities by
another person, or
(B) in commercial advertising or promotion,
misrepresents the nature, characteristics,
qualities, or geographic origin of his or another
person's goods, services, or commercial
activities.
shall be liable in a civil action by any person who
believes that he or she is or is likely to be damaged
by such act.
15 U.S.C. 1125(a) (1994) (emphasis in original).
28
43(a) -- 43(a)(1)(A) ("trademark infringement") and 43(a)(1)(B)
("false advertising").
Prong (A)14 prohibits false designations of the origin or
sponsorship of goods or services. 15 U.S.C. 1125(a)(1)(A) (1994).
Typical claims under prong (A) would involve a new trademark that was
confusingly similar to an already established one, or an attempt by a
defendant to "palm-off" its goods as those of a competitor by use of
the competitor's mark. See Truck Components, 776 F. Supp. at 409;
McCarthy on Trademarks, supra, at 27.02[4] (describing these claims
as "trademark infringement").
In contrast, the protection under prong (B) is very
different. Following its amendment in 1988, prong (B) creates
liability for misrepresentations in commercial advertising or
promotion as to the "nature, characteristics, qualities or geographic
origin" of another person's goods or services. 15 U.S.C. 1125(a)(1)
(1994); see also Trademark Law Revision Act, Pub. L. 100-662, 132,
102 Stat. 3946 (1988); U.S. Healthcare, Inc. v. Blue Cross of Greater
Philadelphia, 898 F.2d 914, 921 (3d Cir. 1990) (discussing effect of
1988 amendment to Lanham Act); McCarthy on Trademarks, supra, at
27.02[4]. The Senate Committee Report accompanying this amendment
explained the need for this addition to the Act as follows:
In one important area, however, the courts
have refused to apply the section. Based on a
1969 seventh circuit decision, the courts have
held that Section 43(a) applies only to
misrepresentations about one's own products and
14 In 1992 Congress redesignated paragraphs (1) and (2) of
section 43(a) as subparagraphs (A) and (B). See Oct. 27, 1992,
Pub. L. 102-542, 3(c), 106 Stat. 3568.
29
services; it does not extend to misrepresentations
about competitor's products or services. Bernard
Food Indus. v. Dietene Co., 415 F.2d 1279, 163
USPQ 265 (7th Cir. 1969), cert. denied, 397 U.S.
912, 164 USPQ 481 (1970). The committee agrees
that this effect is illogical on both practical
and public policy levels and that the public
policy of deterring acts of unfair competition
will be served if Section 43(a) is amended to make
clear that misrepresentations about another's
products are as actionable as misrepresentations
about one's own.
S. Rep. No. 515, 100th Cong., 2d Sess. (1988), reprinted in 1988
U.S.C.C.A.N. 5577; see also McCarthy on Trademarks, supra, at
27.02[4] (stating that 1988 amendment codified "two prongs" of
43(a): "part one relat[ing] to . . . unregistered trademark,
tradename and trade dress infringement claims, and part two
relat[ing] to . . . false advertising (as well as trade libel)
claims"). Thus, prong (B) prohibits misrepresentations about the
quality of a defendant's own goods -- even where the
misrepresentations do not tend to confuse its goods with those of
a competitor or otherwise misstate the origin of the goods -- as
well as affirmative misrepresentations about another's products.
Truck Components, 776 F. Supp. at 409 (citing In re Uranium
Antitrust Litigation, 473 F. Supp. 393, 408 (N.D. Ill. 1979));
see also McCarthy on Trademarks, supra, at 27.04 (describing
elements of prima facie case under prong (B)).
II
II
I am in agreement with the majority that the origin and
sponsorship of the allegedly infringing documents was never in
doubt. With respect to section 43(a) of the Lanham Act, prong
(A) is inapplicable because there is no evidence, or even
30
contention, that the company used the union's mark to deceive
bargaining unit members as to the affiliation of the company with
the union or as to the sponsorship of its services by the union.
Quite the contrary.
However, there is evidence that Winship Green used the
union's trademark to misrepresent the characteristics and nature
of the union's services (i.e., the amount of union dues or the
purportedly draconian results of failure to pay them), thereby
implicating prong (B), governing false descriptions. Cf. Energy
Four, Inc. v. Dornier Medical Systems, Inc., 765 F. Supp. 724,
730 (N.D. Ga. 1991) (describing cause of action for
misrepresentation under Section 43(a)(1)(B) and collecting
cases); Brandt Consol., Inc. v. Agrimar Corp., 801 F. Supp. 164,
174 (C.D. Ill. 1992) (same); McCarthy on Trademarks, supra, at
27.04 (same). Because this evidence that the company
misrepresented the union's services may be sufficient for the
fact-finder to find confusion as to the "nature, characteristics,
[or] qualities" of the union's services, I would not allow
summary judgment for the company under prong (B) on the ground of
a lack of confusion.
III
III
A firm ground for summary judgment, it seems to me, is
that the Lanham Act creates no liability because the deception
did not occur in connection with commercial sales or advertising,
as required under the Act, but rather in campaign hand-outs.
The Lanham Act protects only against certain commercial
31
uses of trademarks. Section 32 governs the use of a registered
mark "in commerce . . . in connection with the sale, offering for
sale, distribution, or advertising of any goods or services." 15
U.S.C. 1114(1)(a) (1994). Section 43(a) is likewise limited to
uses of marks "in commerce," 15 U.S.C. 1125(a)(1) (1994), which
the Act defines as using or displaying a mark in the sale or
advertising of goods or services,15 see 15 U.S.C. 1127 (1994).
And, section 43(a)(1)(B) limits misrepresentation claims to those
cases involving "commercial advertising or promotion." 15 U.S.C.
1125(a)(1)(B) (1994).
While there is no appellate case directly on point,
trial courts have rejected efforts to extend the Lanham Act to
cases where the defendant is not using or displaying the
trademark in the sale, distribution or advertising of its goods
or services. See Lucasfilm Ltd. v. High Frontier, 622 F. Supp.
931, 934 n.2 (D.D.C. 1985) (rejecting the claim that advertising
companies could be held liable for using the trade name "Star
Wars" in the political debate over a national policy because the
15 15 U.S.C. 1127 states in pertinent part:
The term "use in commerce" means the bona fide use of a
mark in the ordinary course of trade, and not made
merely to reserve a right in a mark. For purposes of
this chapter, a mark shall be deemed to be in use in
commerce --
* * *
(2) on services when it is used or displayed in
the sale or advertising of services and the
services are rendered in commerce, or the services
are rendered in more than one State or in the
United States and a foreign country and the person
rendering the services is engaged in commerce in
connection with the services.
32
trademark laws only reach activities in which a trademark is used
in connection with selling or advertising services of commercial
or noncommercial defendants); Stop the Olympic Prison v. United
States Olympic Comm., 489 F. Supp. 1112, 1124 (S.D.N.Y. 1980)
(expressing serious doubts as to whether the Lanham Act applies
to the deceptive use of the Olympic trademark by a group opposing
the conversion of Olympic facilities into a prison, in part
because "there is no suggestion that the alleged deception was in
connection with any goods or services"); Reddy Communications,
Inc. v. Environmental Action Found., 477 F. Supp. 936, 946
(D.D.C. 1979) (rejecting claim that an environmental group's
caricature of an energy industry service mark violated the Lanham
Act where the company failed to prove that the environmental
group used the service mark to "identify or promote" the sale of
its publications); see generally L.L. Bean, Inc. v. Drake
Publishers, Inc. 811 F.2d 26, 32 (1st Cir. 1987) (holding under
a state anti-dilution state that a parody was not a commercial
use of plaintiff's mark because the publisher "did not use Bean's
mark to identify or market goods or services to consumers"),
cert. denied, 483 U.S. 1013 (1987).
Nonetheless, some forms of union-related activity may
constitute commercial sale or advertising that is protected under
the Act. See, e.g., Brach Van Houten Holding, Inc. v. Save
Brach's Coalition for Chicago, 856 F. Supp. 472, 475-476 (N.D.
Ill. 1994) (finding Lanham Act protection applicable where union
used company logo in connection with the sale and distribution of
33
its buttons and stickers and solicitation of donations to support
the coalition's opposition to a plant closing and was likely to
cause confusion as to the company's affiliation with, or approval
of, defendant's proposals); Marriott Corp. v. Great Am. Serv.
Trades Council, AFL-CIO, 552 F.2d 176, 179 (7th Cir. 1977)
(rejecting the union's contention that the National Labor
Relations Board had exclusive jurisdiction over an action for
trademark infringement arising under the Lanham Act where the
union allegedly used the company's trademark in advertisements
which suggested an affiliation between the company and the union
in advertising its services to prospective employees). However,
such commercial activity is simply not present here.
Accordingly, the union's limited property right under
the Lanham Act against commercial misuse of its trademark is not
implicated in this case. See generally Lucasfilm Ltd., 622 F.2d
at 933 ("It is well established that the property right conferred
by a trademark is very limited."). While the union rightfully
complains about the company's unfair tactics, it must find its
federal remedy for deceptive campaign literature under the
National Labor Relations Act, 29 U.S.C. 141 et seq. (1994).
See Linn v. United Plant Guard Workers of Am., Local 114, 383
U.S. 53, 60 (1966) (permitting libel action under state law for
defamatory statements published during a union organization
campaign and discussing authority of the National Labor Relations
Board to set aside elections where "a material fact has been
misrepresented in the representation campaign; opportunity for
34
reply has been lacking; and the misrepresentation has had an
impact on the free choice of the employees participating in the
election").
Because the Court reaches the same conclusion for
somewhat different reasons, I join in its judgment.
35