Guichard v. Universal City Studios, LLLP, 2007 U.S. Dist. LEXIS 45867 (N.D. Cal. June 15, 2007), aff’d, 261 Fed. Appx. 15 (9th Cir. 2007).
Factual Background Edit
Plaintiff Richard Guichard was a small independent film producer, who, in February 2006, launched a website at "www.whisperoftheblue.com" to promote his unproduced screenplay "Whisper of the Blue." The website contained the full text of his screenplay about an ex-Navy SEAL who battles the modern-day pirate Blackbeard Junior for the treasure of the sunken ship "Yorke," as well as information about his proposed film project and submersible equipment that could be used for underwater filming.
Trial Court Proceedings Edit
Guichard, proceeding pro se, sought to preliminarily enjoin Universal City Studios (“Universal”) from using "Whisper' as the title of an upcoming motion picture, which had been in production since November 2004. Universal's film was a supernatural thriller about the kidnapping of a young, quiet boy who turned out to have extraordinary powers such that the boy’s whisper "may be the last thing that [his captors] hear." Guichard claimed that he had gained "exclusive control" over the term "Whisper" because he acquired a service mark in the domain name "whisperoftheblue.com" for "providing information, via the internet, in the field of entertainment, namely, the development, production and distribution of motion picture films."
The court denied Guichard's motion, holding that he failed to show both a likelihood of success on his claims that Universal's use of the "Whisper" title would cause reverse confusion, i.e., that consumers would believe that Universal was the source of Guichard’s website at "www.whisperoftheblue.com," or any irreparable injury.
It initially noted that the registration of a domain name by itself does not create trademark rights. Moreover, Universal had already begun producing its movie and invested more than $12 million in its film as of February 2006, so Guichard could not establish priority of use as of that date. Further, even after February 2006, Guichard's minimal use of the WHISPER OF THE BLUE mark, which consisted solely of "multiple visits" of Internet users without any sale or advertising of services, did not satisfy the "use in commerce" element necessary to establish priority of use under the Lanham Act.
Nonetheless, the court examined the Sleekcraft factors to determine whether there was a likelihood of confusion. Regarding the similarity of the marks, although the first words in the disputed marks were similar, this factor weighed in favor of Universal because Guichard's mark had not gained "prominence or distinction by its first word." Moreover, consumers in the motion picture industry expected movie titles to communicate a message about the movie, not the identity of the producer. Under these circumstances, sophisticated consumers of motion pictures were not likely to confuse the title of Universal’s psychological horror film named WHISPER with a "multi-word website identifying a proposed and unproduced screenplay about an underwater pirate adventure."
As to the strength of the mark, the court found that although Universal had the ability to overpower Guichard's mark, Guichard's mark was too weak to support a likelihood of consumer confusion due to its use for only a short period of time and due to third-party uses of "Whisper" in literary titles. Moreover, because Guichard was attempting to protect his website and not the title of his screenplay, and Universal had not established the same type of "web-presence" as Guichard's website, the parties' goods and services and marketing channels were not closely related.
Lastly, Guichard failed to provide any evidence of actual confusion. The court rejected his offering of GOOGLE search results showing both his website and references to Universal's movie based on various queries including the word "whisper" (e.g., "whisper underwater production," "whisper underwater actors," and "whisper underwater feature film"), finding that "the search is not probative as the search function calls up any internet listing with the search terms, including any motion picture with the search words in the same listing. The searches are far too broad and not probative as to likelihood of confusion."
Finding that these Sleekcraft factors all favored Universal, the court did not consider the remaining factors. Regarding irreparable harm, Guichard had not yet started production on his own film so his claimed harms were speculative. Moreover, Guichard identified “no lost customers, talent, financing, or goodwill” as a result of Universal’s release of its movie.
Appellate Court Proceedings Edit
Plaintiff appealed the denial of his motion for a preliminary injunction. In a one-page opinion, the Ninth Circuit summarily affirmed, finding that plaintiff's "presence" at his website was not a sufficient use in commerce to create a protectable trademark interest. Thus, plaintiff could not show a likelihood of success on the merits of his trademark infringement claim. Accordingly, the district court did not abuse its discretion in denying the injunction.
- This page uses content from Finnegan's Internet Trademark Case Summaries. This entry is available under the Creative Commons Attribution-Share Alike License 3.0 (Unported) (CC-BY-SA).