Strange Music, Inc. v. Strange Music, Inc., 326 F.Supp.2d 481 (S.D.N.Y 2004) (full-text).
Factual Background Edit
Plaintiff and defendant both operated record labels but served different niches in the music industry. Plaintiff used the mark "sTRANGEmUSIC" and produced "new music" — a type of "contemporary concert music" combining electronic elements with classical forms. Plaintiff created sTRANGEmUsic in 1998 and registered the domain name "strangemusic.com" later that year. Defendant used "Strange Music" for a label producing rap and hip-hop music. Defendant did not know about plaintiff until May 2003 when it attempted to register the domain "strangemusic.com," which plaintiff already owned. Defendant instead registered "strangemusicinc.com." Defendant was significantly more commercially successful than plaintiff, with $5,590,000 in sales versus plaintiff’s $15,000. When plaintiff learned of defendant in August 2003, plaintiff demanded that defendant cease use of its mark but defendant refused.
Trial Court Proceedings Edit
The court denied plaintiff’s motion for a preliminary injunction on its claims for trademark infringement and state trademark dilution. Plaintiff based its infringement claim on reverse confusion, i.e., plaintiff asserted that consumers would believe that the better-known defendant was the source of plaintiff’s music so that the public would also consider plaintiff a hip-hop artist, presumably tarnishing its image.
The court first found that plaintiff’s common-law mark was suggestive and thus inherently protectable because consumers could not "immediately discern to which genre of music it belonged." Turning to likelihood of confusion, however, the court found that plaintiff’s mark was weak in the marketplace based on its sales of only 1,319 CDs for only $15,000 and limited advertising over a five-year period.
Although plaintiff may have had some strength in the "new music" community, that was only a "miniscule" part of the entire music market for which it sought an injunction. In contrast, defendant’s mark was stronger than the plaintiff’s based on defendant's sales of $5,590,000 and advertising expenditures of $3,350,000, thus weighing in favor of reverse confusion.
Regarding similarity of the marks, although both marks were spoken identically, the court stated that they differed greatly in font, color, and design such that they did not create the same overall commercial impression and their "appearance in the marketplace is unlikely to confuse consumers." The parties' products were not competitive, which favored defendant. The only basis for confusion due to the "proximity" of the parties’ products was that searches on Internet search engines like Yahoo! or Google revealed hits for one or both of the parties.
Any initial-interest confusion resulting from such hits, however, was not actionable. According to the court, "[c]ommon sense dictates that upon arrival at each site, a consumer looking to purchase a CD by other party would immediately know if they had reached the wrong web-site" and even a "cursory glance" at defendant's website "would be sufficient to inform a new music aficionado that [plaintiff’s] compositions are not available for sale through that site." Moreover, plaintiff was unlikely to bridge the gap to enter defendant's market. Indeed, plaintiff's claim that defendant's use of its mark for hip-hop and rap music would tarnish his image was inconsistent with his stated intent to bridge the gap.
As to the actual-confusion factor, plaintiff’s evidence of a few anecdotal misdirected phone calls and e-mails failed to establish reverse confusion. Plaintiff offered no evidence that actual consumers had been confused or that their purchasing decisions had been influenced. Nor was there any evidence that defendant adopted its mark to benefit from plaintiff's reputation. And the court fond that Internet shoppers were "relatively sophisticated" when they searched for a particular artist’s works.
Plaintiff thus failed to show a likelihood of success on the merits of its trademark infringement claim. Based on the court's finding that plaintiff’s mark was weak for purposes of the likelihood-of-confusion analysis, it found that plaintiff's mark was not sufficiently distinctive to warrant protection under the New York antidilution statute.
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