Suntree Technologies, Inc. v. Ecosense International, Inc.

Case: 11-13916 Date Filed: 09/05/2012 Page: 1 of 24
[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 11-13916
________________________
D.C. Docket No. 6:09-cv-01945-JA-GJK
SUNTREE TECHNOLOGIES, INC.,
a Florida corporation,
Plaintiff-Appellant,
versus
ECOSENSE INTERNATIONAL, INC.,
a Florida corporation,
GEORGE DUSSICH,
Defendants-Appellees,
DERRICO CONSTRUCTION CORPORATION,
a Florida corporation,
Defendant.
________________________
Appeal from the United States District Court
for the Middle District of Florida
_________________________
(September 5, 2012)
Case: 11-13916 Date Filed: 09/05/2012 Page: 2 of 24
Before DUBINA, JORDAN and ALARCON,* Circuit Judges.
ALARCÓN, Circuit Judge:
Suntree Technologies, Inc. (“Suntree”) appeals from the district court’s
order denying its motion for summary judgment and granting the motions for
summary judgment filed by Ecosense International, Inc. (“Ecosense”) and George
Dussich with regard to Suntree’s claims of false designation of origin and false
advertising under Section 43(a) of the Lanham Act, common law trademark
infringement and unfair competition, and deceptive and unfair trade practices
pursuant to the Florida Deceptive and Unfair Trade Practices Act (“FDUPTA”),
codified at Fla. Stat. § 501.201 et seq (2012). Suntree contends that the district
court erred in concluding that Suntree failed to establish that Ecosense and Dussich
directly or contributorily infringed on their trademark because it failed to present
evidence of actual or of a likelihood of confusion. We disagree and affirm.
I
Suntree manufactures a product called baffle boxes, which were described
by Thomas Happel, the president of Suntree, in his declaration as “stormwater
treatment structures that remove organic debris, trash, oil and other pollutants from
stormwater before the stormwater reaches lakes, rivers and streams.” Suntree is
*
Honorable Arthur L. Alarcón, United States Circuit Judge for the Ninth Circuit, sitting
by designation.
2
Case: 11-13916 Date Filed: 09/05/2012 Page: 3 of 24
the most well-known storm filtration product supplier in Florida. Suntree’s baffle
boxes have been certified by New Jersey’s Corporation for Advanced
Technologies program (“NJCAT”), a certification that is required to sell baffle
boxes in New Jersey and in a number of other states. Florida recognizes NJCAT
pre-approval of products. In his declaration, Happel alleged that “Suntree uses its
NJCAT certification as a selling point for its baffle boxes because relatively few
stormwater equipment companies have such certifications.”
Ecosense also manufactures baffle boxes. It installed its first baffle box in
2008. George Dussich is the president and majority shareholder of Ecosense.
Randy Burden is its vice-president and minority shareholder.
In the fall of 2008, the City of West Melbourne, Florida (“the City”), began
soliciting bids for the City of West Melbourne Stormwater Quality Retrofit Project
(“The CWM Project”). Contractors wishing to bid on the project obtained a packet
of documents called the Bidding and Construction Contract Documents and
Technical Specifications (“bidding documents”). The specifications in the bidding
documents included the following requirement:
NUTRIENT SEPARATING BAFFLE BOXES TO BE
PROVIDED BY SUNTREE TECHNOLOGIES, INC.
OR APPROVED EQUAL. CONSTRUCTION
DETAILS AND SPECS ARE IDENTIFIED BY
SUNTREE TECHNOLOGIES, INC. APPROVED
EQUAL SHALL MEET OR EXCEED SUNTREE
3
Case: 11-13916 Date Filed: 09/05/2012 Page: 4 of 24
TECHNOLOGIES, INC. SPECIFICATIONS.
The specifications listed Suntree baffle boxes as the “proposed baffle box
manufacturer/model” for each of the nine baffle boxes to be installed. Lawrence
Jarvis, an employee of Jones Edmunds, who was hired by the County as the project
engineer for the CWM Project, declared in his deposition that the City was not
permitted under Florida law to designate Suntree as the sole manufacturer of baffle
boxes absent a showing of special circumstances.
The bid solicitation form included in the bidding documents required bidders
to list the subcontractors and suppliers they relied upon in calculating their bids. It
stated:
The Undersigned states that the following is a full and
complete list of the proposed subcontractors and
suppliers on this Project and the class of work to be
performed by each and that such list will not be added to
nor altered without written consent to the Owner through
the Engineer.
Article 11 of the instructions to bidders, included in the bidding documents,
provided as follows:
The Contract, if awarded, will be on the basis of
materials and equipment specified or described in the
Bidding Documents without consideration of possible
substitute or “or equal” items. Whenever it is specified
or described in the Bidding Documents that a substitute
or “or equal” item of material or equipment may be
furnished or used by if acceptable to the Engineer,
4
Case: 11-13916 Date Filed: 09/05/2012 Page: 5 of 24
application for such acceptance will not be considered by
the Engineer until after the Effective Date of the
Agreement.
(emphasis added). Section 6.05 of the bidding documents provided that
“[w]henever an item of material or equipment is specified or described in the
Contract Documents by using the name of a proprietary item or the name of a
particular Supplier, the specification or description is intended to establish the type,
function, appearance and quality required.” Section 6.05 also set forth the process
a contractor must go through in order to gain approval for an “or equal” item of
material or equipment. Approval was in the sole discretion of Jarvis, as the
project’s engineer. Rather than incurring the expense of pre-approving an
additional, less expensive supplier, the engineers for the City and County decided
to use Suntree’s name in the bidding specifications. If the contractor who was
awarded the project found a less expensive baffle box that was approved to be of
equal quality to Suntree’s, the benefit of the reduction in cost would go to the
contractor.
Derrico Construction Corp. (“Derrico”), a general contractor, submitted a
bid for the CWM Project that was significantly lower than the other bidders. It was
also approximately $85,000 less than the project engineer’s estimate. Mark Cattey,
the estimator for Derrico who assembled Derrico’s bid, alleged in his deposition
5
Case: 11-13916 Date Filed: 09/05/2012 Page: 6 of 24
that, in conformity with the specifications in the bidding documents, Derrico’s bid
listed Suntree as the supplier for the baffle boxes because Derrico “did not know if
an alternate would be accepted after award so [they] had to be covered to install
[Suntree’s] product” if necessary.
Carolina Alvarez, an engineer for the County, who worked on the CWM
Project, reviewed Derrico’s bid. Derrico’s bid was accepted. At a pre-construction
meeting in mid-January 2009, Derrico requested approval of Ecosense’s baffle
boxes as an “or equal” substitute as was permitted in the bidding documents
distributed to potential bidders when the City was soliciting bids. Jarvis reviewed
the specifications of the Ecosense baffle boxes and inspected an Ecosense baffle
box installed in another municipality before approving it as a substitute for
Suntree’s product. Derrico installed Ecosense baffle boxes.
After the project was completed, Alvarez requested that Ecosense prepare a
power point presentation to train the City’s personnel on the proper cleaning and
maintenance procedures for baffle boxes. The presentation showed baffle boxes
being cleaned and maintained by municipal workers for the City of Rockledge, a
city close to Ecosense’s office. Ecosense had a good relationship with the City of
Rockledge and their maintenance crew was capable and well-trained. Because
both Ecosense and Suntree baffle boxes had been installed in the City of
6
Case: 11-13916 Date Filed: 09/05/2012 Page: 7 of 24
Rockledge, the presentation included photographs of both Ecosense and Suntree
baffle boxes. Suntree’s name was not included anywhere in the maintenance
presentation. The power point presentation was given to the City of West
Melbourne and the City of Titusville. Both were already customers of Ecosense at
that time. A link to the presentation was on Ecosense’s website for three months,
but was taken down when Suntree complained about the photographs.
II
A
Suntree filed a complaint in this matter against Ecosense, Dussich, and
Derrico on November 13, 2009. It subsequently filed an amended complaint on
December 9, 2009. The amended complaint alleged that Derrico, Ecosense, and
Dussich’s use of Suntree’s trademark in the submission of Derrico’s bid for the
CWM Project and in the maintenance presentation was likely to cause confusion as
to the origin of the products to be installed, was false and misleading, and was
likely to deceive consumers. Suntree also alleged that the conduct of Derrico,
Ecosense, and Dussich in obtaining the contract constituted unfair competition,
misleading and deceptive representations, and unfair practices under Florida state
law.
B
7
Case: 11-13916 Date Filed: 09/05/2012 Page: 8 of 24
On January 10, 2010, Suntree entered into a settlement agreement with
Derrico. In the agreement, Derrico promised that in submitting future bids which
provide “that it will use Suntree’s products on the project, it will not seek to
substitute or actually substitute any other products in place of Suntree’s products
on that stormwater filtration project.” Derrico also agreed to cooperate with
Suntree in this litigation and to provide documents and witnesses, as well as a
declaration from John Robertson, Derrico’s president, setting forth the facts
regarding his knowledge of the CWM Project. Robertson’s declaration stated as
follows:
From the beginning of our pre-bid analysis of the project
with Ecosense and Mr. Dussich through it completion,
we planned on using Ecosense’s stormwater filtration
products on the project and based the equipment costs in
Section 5.01 of Derrico’s bid on the cost of Ecosense’s
products, not Suntree’s products.
However, Mr. Dussich and I decided we would have a
much better chance of being the winning bidder if we
listed Suntree as the baffle box supplier in our bid. We
then planned to substitute Ecosense’s products in place of
Suntree’s products after obtaining the contract. Derrico
would only have installed Suntree’s products if the City
denied our substitution request.
During his deposition, Robertson testified that he would change his
declaration with regard to the statement that he and Dussich decided they would
have a better chance of being the winner bidder if Suntree was listed as the baffle
8
Case: 11-13916 Date Filed: 09/05/2012 Page: 9 of 24
box supplier in Derrico’s bid because the statement “kind of read[] conspiracy-
ish,” but that Derrico always intended to “uphold [its] commitment to the City.”
He testified that “it was just a discussion [with Ecosense], if you can get this
approved, great.” Robertson further testified that Derrico’s contact was mostly
with Burden, not Dussich.
C
During the course of discovery in this matter, Ecosense produced a brochure
which displayed pictures and descriptions of its products. The brochure was
emailed to customers in 2008 or 2009 and has since been updated several times.
One of the photos on the brochure depicted a maintenance worker looking into the
open hatch of a Suntree baffle box. Ecosense destroyed all copies of the brochure
except one exemplar for use in this litigation.
D
On March 18, 2011, Suntree, Ecosense, and Dussich filed motions for
summary judgment. Suntree argued in support of its motion that the undisputed
facts in the record established that Derrico had infringed on its trademark when it
listed Suntree as the baffle box supplier in its bid. Suntree also alleged that
Ecosense and Dussich were aware of Derrico’s improper conduct.
In its motion for summary judgment, Ecosense maintained that the
9
Case: 11-13916 Date Filed: 09/05/2012 Page: 10 of 24
“undisputed record evidence show[ed] that: 1) Derrico alone made the decision to
list Suntree on the CWM bid documents; 2) that the express terms of the bid
documents require[d] the contractor to list only pre-approved suppliers (in this
case, Suntree); and 3) that the CWM bid documents expressly permit[ted] post-bid
substitutions of alternative suppliers.” Ecosense also asserted that the power point
maintenance presentation was created for the training of existing customers. It also
argued that there was no evidence in the record that demonstrated that the
maintenance presentation or the brochure caused any customer confusion.
In his motion, Dussich requested that the district court grant summary
judgment in favor of himself and Ecosense because neither was involved in
drafting and submitting Derrico’s bid. He also asserted that Derrico precisely
followed the bidding documents’ instructions for substituting suppliers and that the
sophisticated buyers involved “were not mislead as to the source of the product.”
The district court granted summary judgment in favor of Ecosense and
Dussich and denied Suntree’s motion for summary judgment.
Suntree has timely appealed. The district court had jurisdiction pursuant to
28 U.S.C. §§ 1331 and 1338. This Court has jurisdiction pursuant to 28 U.S.C.
§ 1291.
III
10
Case: 11-13916 Date Filed: 09/05/2012 Page: 11 of 24
Suntree contends that the district court erred in granting summary judgment
in favor of Ecosense and Dussich with regard to its claims of false designation of
origin pursuant to 15 U.S.C. § 1125, common law trademark infringement and
unfair competition under Florida state law, and violations of FDUPTA. Suntree
argues that the evidence demonstrated that Ecosense and Dussich contributorily
infringed on Suntree’s trademark in the bidding process for the CWM Project. It
contends that the district court’s grant of summary judgment in favor of Ecosense
and Dussich should be reversed and that summary judgment should be entered in
its favor. In the alternative, Suntree asserts that the district court’s order should be
vacated as to whether there was contributory infringement by Ecosense and
Dussich because “a series of disputed facts” exist that should be decided by a jury.
“We review de novo the grant of a motion for summary judgment.”
Moorman v. UnumProvident Corp., 464 F.3d 1260, 1264 (11th Cir. 2006). Rule
56 of the Federal Rules of Civil Procedure provides that the “court shall grant
summary judgment if the movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” When the
court reviews a summary judgment motion, “[t]he evidence of the nonmovant is to
be believed, and all justifiable inferences are to be drawn in his favor.” Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
11
Case: 11-13916 Date Filed: 09/05/2012 Page: 12 of 24
A
The Lanham Act, codified at 15 U.S.C. §§ 1051-1127, protects trademark
owners from infringement and unfair competition by “prohibiting the use in
interstate commerce of any ‘word, term, name, symbol or device, . . . or any false
designation of origin . . . which is likely to cause confusion . . . as to the origin,
sponsorship, or approval of his or her goods, services, or commercial activities by
another person.’” Tana v. Dantanna’s, 611 F.3d 767, 772-73 (11th Cir. 2010)
(quoting 15 U.S.C. § 1125(a)). “FDUPTA makes illegal ‘[u]nfair methods of
competition, unconscionable acts or practices, and unfair or deceptive acts or
practices in the conduct of any trade or commerce . . . .’” Sovereign Military
Hospitallier Order of Saint John of Jerusalem of Rhodes & of Malta v. Florida
Priory of Knights Hospitallers of the Sovereign Order of St. John of Jerusalem,
Knights of Malta, the Ecumenical Order, 816 F. Supp. 2d 1290, 1303 (S.D. Fla.
2011) (“SMOM”) (quoting Fla. Stat. § 501.204(1)). “The purpose of FDUPTA is
‘[t]o protect the consuming public and legitimate business enterprises from those
who engage in unfair methods of competition, or unconscionable, deceptive, or
unfair acts or practices in the conduct of any trade or commerce.’” Id. (quoting
Fla. Stat. § 501.202(2)).
Suntree contends that the district court erroneously concluded that the legal
12
Case: 11-13916 Date Filed: 09/05/2012 Page: 13 of 24
analysis is the same for all three counts in Suntree’s complaint: violations of the
Lanham Act, FDUPTA, and Florida state common law for infringement and unfair
competition. We disagree. “[T]he legal standards we apply to [the FDUPTA]
claim are the same as those we have applied under section 43(a) of the Lanham
Act.” Crystal Entm’t & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1323 (11th Cir.
2011). “Plaintiff’s failure to establish a likelihood of confusion as to its Lanham
Act claim also extinguishes its claim under Florida law.” Custom Mfg. and Eng’g,
Inc. v. Midway Servs., Inc., 508 F.3d 641, 652 (11th Cir. 2007). “Courts may use
an analysis of federal infringement claims as a ‘measuring stick’ in evaluating the
merits of state law claims of unfair competition.” Planetary Motion, Inc. v.
Techsplosion, Inc., 261 F.3d 1188, 1193 n.4 (11th Cir. 2001).
B
Suntree maintains that the district court erred in concluding that Suntree
failed to demonstrate that Derrico directly infringed on its trademark by using
Suntree’s name in its bid to the CWM Project. Suntree also asserts that the district
court erred in granting summary judgment in favor of Ecosense and Dussich as to
its claim against them for contributory infringement. It argues that summary
judgment should have been granted in its favor because the record demonstrates
that they induced Derrico to use Suntree’s name in the bid. Alternatively, Suntree
13
Case: 11-13916 Date Filed: 09/05/2012 Page: 14 of 24
argues that factual disputes exist that should be tried before a jury.
1
The district court held that Suntree “failed to prove any direct trademark
infringement by Derrico, and Suntree’s claim against Defendants for contributory
infringement necessarily fails.” (footnote omitted). Suntree’s claim of trademark
infringement under Section 43(a) of the Lanham Act is that the use of its name in
Derrico’s CWM Project bid constituted a “false designation of origin, false or
misleading description of fact, or false or misleading representation of fact, which
is likely to cause confusion.” 15 U.S.C. § 1125(a)(1)(a). “To be liable for
contributory trademark infringement, a defendant must have . . . intentionally
induced another to infringe a trademark.” 4 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 25:18 at p.25-54 (4th ed. 2012). “[A]ny
liability for contributory infringement will necessarily depend upon whether or not
the contributing party intended to participate in the infringement or actually knew
about the infringing activities.” Mini Maid Servs. Co. v. Maid Brigade Sys., Inc.,
967 F.2d 1516, 1522 (11th Cir. 1992). To demonstrate that Ecosense and Dussich
were contributory infringers, Suntree was required to present evidence that Derrico
directly infringed on its mark. Id. at 1521 (Holding that contributory infringement
is a device by which “‘[l]iability for trademark infringement [extends] beyond
14
Case: 11-13916 Date Filed: 09/05/2012 Page: 15 of 24
those who actually [infringe on] the mark of another.’”) (quoting Inwood Labs.,
Inc. v. Ives Lab., Inc., 456 U.S. 844, 859 (1982)).
In order to prevail on federal claim of trademark infringement and unfair
competition, a trademark owner “must show (1) that it had trademark rights in the
mark or name at issue and (2) that the other party had adopted a mark or name that
was the same, or confusingly similar to its mark, such that consumers were likely
to confuse the two.” Tana, 611 F.3d at 773 (citing Lone Star Steakhouse &
Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 358 (11th Cir. 1997)).
“The law of unfair competition has its roots in the common-law tort of
deceit: its general concern is with protecting consumers from confusion as to
source.” Bonito Boats v. Thunder Craft Boats, 489 U.S. 141, 157 (1989)
(emphasis in original). A likelihood of confusion as to the source of a product is
established using the test set forth in AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531
(11th Cir. 1986), cert. denied, 481 U.S. 1041 (1987). There, this Court stated:
In determining whether a likelihood of confusion exists,
the fact finder evaluates a number of elements including:
the strength of the trade[mark], the similarity of [the
marks], the similarity of the product[s], the similarity of
retail outlets and purchasers, the similarity of advertising
media used, the defendant’s intent, and actual confusion.
Id. at 1538. “The issue of likelihood of confusion is not determined by merely
analyzing whether a majority of the subsidiary factors indicates that such a
15
Case: 11-13916 Date Filed: 09/05/2012 Page: 16 of 24
likelihood exists.” Id. “Rather, a court must evaluate the weight to be accorded
the individual factors and then make its ultimate decision.” Id. “The appropriate
weight to be given to each of these factors varies with the circumstances of the
case.” Id. However, “[o]f these seven factors, we consider the type of mark and
the evidence of actual confusion to be the two most important factors.” Lone Star
Steakhouse & Saloon v. Longhorn Steaks, 122 F.3d 1379, 1382 (11th Cir. 1997)
(citing Dieter v. B & H Indus. of Southwest Florida, Inc., 880 F.2d 322, 326 (11th
Cir.1989), cert. denied, 498 U.S. 950 (1990)).
No dispute exists as to 1) the type or strength of Suntree’s mark; 2) the
similarity of the companies’ marks; 3) the similarity of the companies’ products;
4) the similarity of the retail outlets and purchasers to which the companies market;
or 5) the similarity of the advertising media the companies use. The district court
did not err in determining that these factors were not helpful or relevant. Derrico
did not use Suntree’s mark to identify Ecosense’s product, nor is there any
question that the companies have similar names or marks. The dispositive issue in
this case is whether Suntree presented evidence that demonstrates that there is a
genuine issue of material fact in dispute regarding whether Derrico used Suntree’s
reputation to win a bid and then used a “bait-and-switch” tactic to substitute
Ecosense’s baffle boxes for those of Suntree.
16
Case: 11-13916 Date Filed: 09/05/2012 Page: 17 of 24
We agree with the district court that Suntree failed to present any evidence
that Derrico intended to confuse the City as to whose baffle boxes would be
installed. Both Robertson and Cattey testified during their depositions that they
intended to substitute Ecosense’s baffle boxes once they were given the contract
unless “no substitute was allowed.” Cattey inquired about a substitution for baffle
boxes at a meeting prior to submitting Derrico’s bid and was referred to the
specifications sheet in the bidding documents, which specifically allowed for “or
equal” substitutions for baffle boxes. It is undisputed that, in listing Suntree in its
bid, Derrico did what was required by the Instructions to Bidders, which provided
that the contract would be awarded “without consideration of possible substitute or
‘or equal’ items” and that “application for such acceptance [would] not be
considered by the Engineer until after the Effective Date of the Agreement.”
Suntree has failed to demonstrate that Derrico intended to deceive the City or that
Derrico hid its intention to seek approval of a supplier whose product’s
specifications were equal to Suntree’s product as a substitute baffle box supplier.
Suntree has also failed to present evidence that the City was confused at any
time, not even in their “initial interest” or at the “point of sale,” about the quality of
baffle boxes they required or the fact that contractors could request approvals of
substitute suppliers if the engineer for the city determined that the product to be
17
Case: 11-13916 Date Filed: 09/05/2012 Page: 18 of 24
substituted was of equal quality. The Instructions to Bidders stated that the
requirement included in the specifications to install baffle boxes from Suntree “or
equal” was “to establish the type, function, appearance and quality required” for
use in the project. Cattey testified in his deposition that Derrico submitted its
request for approval of Ecosense as a substitute baffle box supplier knowing that
“if no substitute was allowed [by the project engineer], . . . then the only product to
be installed would be Suntree’s and [Derrico] would have installed it.”
Because Suntree failed to present evidence of an intent to mislead or
confuse, or of actual confusion, we need not reach the question whether initial
interest confusion is actionable in the Eleventh Circuit. The district court correctly
concluded that Suntree failed to demonstrate that Derrico had infringed on its
trademark when it listed Suntree as the supplier of baffle boxes in its bid and
requested an “or equal” substitution of Ecosense after being awarded the contract.
It follows that because there was no evidence of infringement, Suntree’s claim that
Ecosense and Dussich contributed to the infringement necessarily fails.
C
Suntree also contends that summary judgment was inappropriate as to its
claim against Ecosense and Dussich of false designation of origin and false
advertising regarding the use of images of Suntree’s products by Ecosense in a
18
Case: 11-13916 Date Filed: 09/05/2012 Page: 19 of 24
brochure and a maintenance presentation because genuine factual disputes exist as
to this claim.
1
Suntree asserts that Ecosense’s use of photographs of Suntree’s product in
promotional materials was an attempt to pass off Suntree’s baffle boxes as their
own. “Passing off (or palming off, as it is sometimes called) occurs when a
producer misrepresents his own goods or services as someone else’s. . . . ‘Reverse
passing off,’ as its name implies, is the opposite: The producer misrepresents
someone else’s goods or services as his own.” Dastar Corp. v. Twentieth Century
Fox Film Corp., 539 U.S. 23, 27 n.1 (2003).
To prevail on a false designation of origin claim, a
plaintiff must show it was either actually or likely to be
damaged by the fact that the defendant used a “false
designation of origin, false or misleading description of
fact, or false or misleading representation of fact, which
was likely to cause confusion, or to cause mistake, or to
deceive . . . as to the origin, sponsorship, or approval of
his or her goods, services, or commercial activities by
another person.
Lipscher v. LRP Publ’ng., Inc., 266 F.3d 1305, 1312-1313 (11th Cir. 2001)
(quoting 15 U.S.C. § 1125(a)(1)(A)).
As stated above, to demonstrate infringement, a party “must show (1) that it
had trademark rights in the mark or name at issue and (2) that the other party had
19
Case: 11-13916 Date Filed: 09/05/2012 Page: 20 of 24
adopted a mark or name that was the same, or confusingly similar to its mark, such
that consumers were likely to confuse the two.” Tana, 611 F.3d at 773 (citation
omitted).
We agree with the Sixth Circuit’s opinion in Johnson v. Jones, 149 F.3d 494
(6th Cir. 1998), that where “the defendant has taken the plaintiff’s product and has
represented it to be his own work[,]” the first five factors of the likelihood of
confusion test are irrelevant. Id. at 503. As to factor six, Suntree failed to present
evidence that Ecosense had any intention to portray Suntree’s product as its own.
In fact, Ecosense’s immediate destruction of the brochure and its elimination of the
maintenance presentation from its website support its assertion that Ecosense did
not intend to confuse potential customers with photos of Suntree’s product. See
Can-Am Eng’g Co. v. Henderson Glass, Inc., 814 F.2d 253, 257 (6th Cir. 1987)
(“Plaintiff confuses the intentional use of the photo with the kind of intent to
misrepresent which is the cornerstone of a money damage action. We note in this
regard the swift and effective remedial action [Defendant] undertook immediately
upon being notified of its error. Under such circumstances we find no false
representation which is actionable under the Lanham Act.”). As to factor seven of
the AmBrit test, the record reflects that there was no confusion on the part of any of
the CWM Project’s engineers. Accordingly, the district court did not err in
20
Case: 11-13916 Date Filed: 09/05/2012 Page: 21 of 24
concluding that Suntree failed to present evidence of a likelihood of confusion or
elements of a claim for false designation of origin in Ecosense’s use of images of
Suntree’s products in either its maintenance presentation or its brochure.
2
Suntree also asserts that Ecosense infringed on its trademark by falsely
advertising using images of Suntree’s baffle boxes in its brochure and maintenance
presentation. “A Lanham Act false advertising claim arises when ‘[a]ny person
who, on or in connection with any goods . . . uses in commerce any . . . false or
misleading description of fact, or false or misleading representation of fact, which
. . . in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person’s
goods[.]’” Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325,
1330 (11th Cir. 2008) (quoting 15 U.S.C. § 1125(a)). “The intent of this provision
is to protect commercial interests that have been harmed by a competitor’s false
advertising, and to secure to the business community the advantages of reputation
and good will by preventing their diversion from those who have created them to
those who have not.” Id. at 1330-31 (internal quotation marks, alterations and
citation omitted).
To establish a prima facie case of false advertising pursuant to 15 U.S.C.
21
Case: 11-13916 Date Filed: 09/05/2012 Page: 22 of 24
§ 1125(a), a plaintiff must establish that the defendant:
1. Uses a false or misleading
A. Description of fact or
B. Representation of fact;
2. In interstate commerce;
3. And in connection with goods or services;
4. In commercial advertising or promotion;
5. When the description or representation misrepresents
the nature, qualities geographic origin of
A. The defendant’s foods, services or commercial
activities or
B. The goods, services or commercial activities of
another person;
6. And plaintiff has been or is likely to be damaged by
these acts.
5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 27:24
(4th ed. 2007) (footnotes omitted).
The most widely-accepted test for determining whether something is
“commercial advertising or promotion” is set forth in Gordon & Breach Sci.
Publishers S.A. v. Am. Inst. of Physics, 859 F. Supp. 1521 (S.D.N.Y. 1994). In that
case, the District Court for the Southern District of New York stated:
In order for representations to constitute “commercial
advertising or promotion” under Section [1125(a)], they
must be: (1) commercial speech; (2) by a defendant who
is in commercial competition with plaintiff; (3) for the
purpose of influencing consumers to buy defendant’s
goods or services. While the representations need not be
made in a “classic advertising campaign,” but may
consist instead of more informal types of “promotion,”
the representations (4) must be disseminated sufficiently
22
Case: 11-13916 Date Filed: 09/05/2012 Page: 23 of 24
to the relevant purchasing public to constitute
“advertising” or “promotion” within that industry.
Gordon & Breach, 859 F. Supp. at 1535-36. Suntree has failed to demonstrate that
there is a genuine issue of material fact in dispute regarding whether the brochure
and maintenance presentation were created “for the purpose of influencing
consumers to buy defendant’s goods or services” and that they were “disseminated
sufficiently to the relevant purchasing public to constitute ‘advertising’ or
‘promotion’ within that industry.” Id. The record shows that the maintenance
presentation was created at the request of an existing client. It was not created to
promote or advertise Ecosense’s products, but for training customers who had
already purchased the product. The engineers who worked on the CWM Project
testified that brochures would not be at all helpful in their determination as to
whether or not they would buy, or allow use of, a product like a baffle box.
Suntree also failed to present any evidence that the brochure was actually
disseminated to any potential customers. We agree with the District Court for the
Northern District of Georgia in Schütz Container Sys., Inc. v. Mauser Corp., 2012
U.S. Dist. LEXIS 44012 (N.D. Ga. Mar. 28, 2012), that “where the customer
market is particularly small[,] courts may find a statement to be sufficiently
disseminated to constitute ‘commercial advertising or promotion,’ even though
23
Case: 11-13916 Date Filed: 09/05/2012 Page: 24 of 24
only distributed to a few customers (or even one).”1 Id. at 96. However, similar to
the plaintiff in Schutz Container, Suntree “fail[ed] to put forward any evidence
regarding the number of potential consumers . . . to whom the statements were
disseminated,” thus failing the demonstrate that “a reasonable jury could find [the
statements] to constitute ‘commercial advertising or promotion.’” Id. at 96-97. The
district court did not err in granting summary judgment in favor of Ecosense and
Dussich as to Suntree’s false advertising claim.
CONCLUSION
For the reasons set forth above, the district court did not err in granting
summary judgment in favor of Ecosense and Dussich, and denying Suntree’s
motion for summary judgment.
AFFIRMED.
1
In this Circuit, “unpublished opinions are not binding precedent but they may be cited as
persuasive authority.” See 11TH CIR. R. 36-2; U.S. v. Rodriguez-Lopez, 363 F.3d 1134, 1138 n.4
(11th Cir. 2004).
24