Copyright, Lanham Act and Some State Law Claims Survive Motion to Dismiss in Floral Art Case

Plaintiff Susan Tierney Cockburn filed suit (pdf) in the Western District of Washington against five out of state defendants – one manufacturing defendant and four retail defendants.  The defendants filed motions to dismiss the complaint for lack of personal jurisdiction and to dismiss plaintiff’s Lanham Act (federal trademark) and state law claims for failure to state a claim upon which relief can be granted under Fed. R. Civ.P. 12(b)(6).  The defendants also questioned whether plaintiff’s works were copyrighted, although that does not appear to have been part of the formal motion.  Judge Robert S. Lasnik granted the motion to dismiss in part and denied it in part.

Facts.  Plaintiff is a professional author and artist in Redmond, Washington.  She creates floral art with paper and three dimensional paper flowers for use in crafts and hobbies.  She “developed a unique line of paper punches to enhance her paper floral art and three dimensional paper flowers.”  (Order pdf page 2).  Plaintiff registered copyrights for two books:  Paper Bouquet and The Paper Garden – Summer Blooms.

Defendant SWS Industries, Inc. is an Illinois corporation that manufactures punches used in office products, industrial supply/hardware and crafts.  An SWS representative contacted plaintiff in 2009, asking whether plaintiff would work with it on augmenting its existing paper punches.  SWS later presented plaintiff with a contract to purchase and manufacture her floral designs, but the parties failed to come to an agreement.  Plaintiff alleges that SWS created infringing works which it sold to Internet and retail customers all over the United States.  Plaintiff alleges that the retail defendants sold SWS’s infringing products either online or through retail stores.  The retail defendants are Archiver’s, a Minnesota corporation, Notions, a Michigan corporation, Moore, a Florida corporation, and CreateForLess, LLC, an Oregon limited liability company.  The defendants are not licensed to do business in Washington state and do not have employees or a physical presence in Washington.

Plaintiff claimed copyright infringement, violation of the Lanham Act, 15 USC §1125(a), violation of Washington’s Consumer Protection Act, and violation of Washington trade dress and trade name protection.  She sought a constructive trust and an accounting, both of which are state law claims.

Personal Jurisdiction.  The court undertook the same analysis described in my June 1, 2011, post Personal Jurisdiction Found Lacking in Copyright Infringement Action.  Washington State’s long arm statute extends to the limit of the Due Process Clause. 

For a forum state to have personal jurisdiction over an out-of-state defendant, that defendant must have certain minimum contacts with the forum state, such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice.

(Order pdf page 5).

The court set out the three-part test used in the Ninth Circuit to analyze specific jurisdiction:

  1. The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws;
  2. the claim must be one which arises out of or relates to the defendant’s forum-related activities; and
  3. the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.

(Order pdf page 5).

The court indicated that “[i]n tort cases, courts typically inquire whether a defendant purposefully directs his activities at the forum state, applying an ‘effects’ test that focuses on the forum in which the defendant’s actions were felt, whether or not the actions themselves occurred within the forum.”  (Order pdf page 6).  Tort claims include a claim for willful copyright infringement. 

The first part of the above three-part test, purposeful availment, has its own three part test:  “the defendant allegedly must have (1) committed an intentional act, which was (2) expressly aimed at the forum state, and (3) caused harm, the brunt of which is suffered and which the defendant knows is likely to be suffered in the forum state.”  (Order pdf page 6). 

The Ninth Circuit has approved a sliding scale analysis in addition to the effects test:  “[T]he likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to the nature and quality of commercial activity that an entity conducts over the Internet.”  (Order pdf page 6). 

The court ruled that the defendant retailers conduct with Washington involved the sale of a small number of non-infringing products and was “insufficient to show that they directed their activity towards Washington in a substantial way.”  (Order pdf page 7).  The retail defendants’ conduct was also found not to have been expressly aimed at the forum, as the retail defendants did not previously know of plaintiff’s existence, her dispute with SWS or her residence in Washington state.  The court granted the retail defendants’ motion to dismiss for lack of personal jurisdiction.

SWS argued that exercising personal jurisdiction over it would be unreasonable.  “Defendant must present a compelling case that the presence of some other considerations would render jurisdiction unreasonable.”  (Order pdf page 8).  The seven factors for determining reasonableness are:

  1. the extent of the defendants’ purposeful contacts;
  2. the burden on defendant of having to defend in Washington;
  3. the extent to which jurisdiction conflicts with the sovereignty of the defendant’s resident state;
  4. Washington’s interest in adjudicating the dispute;
  5. which forum is the most efficient for resolution of the dispute;
  6. plaintiff’s interest in choosing the Washington forum; and
  7. the existence of an alternative forum to adjudicate plaintiff’s claims.

The court discussed the factors one by one.  It found that factors one, three, four and six weigh in favor of the plaintiff and factors two, five and seven weigh in favor of the defendant.  SWS did not present a compelling case that jurisdiction in Washington State is unreasonable.  The court denied SWS’s request to dismiss for lack of personal jurisdiction.

Copyright.  The defendants questioned whether plaintiff’s works were copyrighted, but did not provide support for that argument.  Defendants next argued that plaintiff’s designs become a useful article when used with a paper punch.  However, the designs can be cut with scissors or drawn.  The court did not think they were useful articles.  Defendants also argued that plaintiff’s floral designs are scenes a faire, since their origins are objects of nature.  The court ruled that this doctrine is inapplicable, since plaintiff did not claim copyright protection for the shape of certain flowers, but only for the designs of those flowers as rendered in her books. 

Lanham Act claim.  Plaintiff argued that SWS’s products used a trade dress confusingly similar to her products, in violation of the Lanham Act, 15 U.S.C. §1125(a).  Defendants argued that plaintiff’s Lanham Act claims duplicated her copyright claims and failed as a matter of law.  The court stated that “parallel copyright and Lanham Act claims are not per se improper” and that courts limit the application of trademark law when copyright laws “provide an adequate remedy.”  (Order pdf page 12).  The court indicated that plaintiff’s Lanham Act claim includes other elements that are not necessarily compensable under copyright law, such as a false designation of origin and/or sponsorship and SWS passing off its products as plaintiff’s.  The court stated that “courts typically resolve the issue of whether the Lanham Act and copyright claims overlap at the summary judgment stage rather than on a motion to dismiss.”  (Order pdf page 13).  The court denied defendants’ motion to dismiss the Lanham Act claim.

State law claims.  The defendants argued that plaintiff’s state law claims are preempted by the Copyright Act.  Preemption was discussed in my May 10, 2011, post Ninth Circuit Upholds Script Writer’s Implied Contract Claim under California State Law.  The two part preemption test adopted by the Ninth Circuit is

  • courts must first determine whether the subject matter of the state law claim falls within the subject matter of copyright as described by 17 U.S.C. §§102 and 103, and
  • courts must determine whether the rights asserted under state law are equivalent to the rights contained in 17 U.S.C. §106.

To survive preemption, the state law claim must include an extra element that is not protected by the Copyright Act.  The court ruled that plaintiff’s Consumer Protection Act (CPA) claim does not include the required extra element and dismissed that claim as preempted.  Of note to attorneys practicing in the Western District of Washington, the court stated that

[P]laintiff’s response does not address her CPA claim, which the Court construes, pursuant to Local Rule 7, as a concession that defendants’ arguments regarding that claim have merit.

The court found that plaintiff’s Washington State trade dress claims are not preempted, for the same reason the Lanham Act claims are not preempted.

The court found that plaintiff’s state law trade name claim based on words used by plaintiff in her copyrighted works is preempted by copyright law. 

Plaintiff’s state law trade name claim based on the alleged misuse of her name by the defendants is not preempted by copyright law.  “A person’s name or likeness is not a work of authorship within the meaning of 17 U.S.C. §102.”  (Order pdf page 15).

Plaintiff’s state law constructive trust claim was dismissed as preempted, as it was based on defendants’ violation of plaintiff’s copyrights. 

This case is Susan Tierney Cockburn v. SWS Industries, Inc., et al., Case No. C10-1566 RSL, Western District of Washington at Seattle.

Copyright Infringement Suit Regarding Precast Concrete Vault Drawings Yields Summary Judgment Rulings

Western District of Washington Judge Marsha J. Pechman granted in part and denied in part Defendant’s motion for summary judgment, granted Plaintiff’s motion for summary judgment and granted Plaintiff’s motion to amend its complaint in Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc. (pdf) on March 2, 2011.

Facts.  Plaintiff Oldcastle Precast, Inc. began manufacturing concrete precast vaults in the 1960s and is considered the leader in the precast concrete vault market.  Defendant Granite Precasting & Concrete, Inc. is a competitor.  In 2006, Plaintiff became aware that Defendant was using drawings similar to those created by Plaintiff.  Plaintiff notified Defendant of the alleged copying, the parties met and Defendant agreed to change 12 sets of its drawings.  Defendant did not sign Plaintiff’s proposed settlement agreement.  Plaintiff did not follow up.

Plaintiff monitored Defendant’s website from 2007 through 2009 and found the continued infringing use of only one product.  Plaintiff believed that Defendant complied with the agreement, except for that one product.  Sometime in mid-2007, Plaintiff became aware that Defendant did not change all of its drawing and product numbers.  In 2009, Defendant submitted a bid for a Seattle City Light project using drawings that Plaintiff believed infringed its copyright.  Plaintiff sued Defendant for copyright infringement on February 24, 2010.

Defendant filed a summary judgment motion, arguing that the statute of limitations had expired on Plaintiff’s copyright and trademark claims, that its state law breach of implied covenant claim was barred by the statute of frauds and that Plaintiff’s copyright and trademark claims failed on the merits.  Plaintiff filed a summary judgment motion, too, to dismiss Defendant’s copyright misuse counterclaim. 

Plaintiff also filed a motion to amend its complaint.  Plaintiff’s previous amended complaint alleged that Defendant downloaded Plaintiff’s drawings electronically and used those drawings to create its own infringing drawings.  Plaintiff’s drawings were registered with the Copyright Office.  Testimony from a September 2010 deposition led Plaintiff to believe that Defendant copied some much older drawings that Plaintiff’s predecessor produced and published and that Defendant obtained from Seattle City Light.  Plaintiff believed that those drawings were registered under the Copyright Act of 1909, not the Copyright Act of 1976. 

Plaintiff undertook a laborious process of inspecting company records for the earliest publication of the documents, preparing the renewal registration and supplementing its registration under the 1976 Act.  Plaintiff submitted its documents to the Copyright Office on November 22, 2010.  On December 9, 2010, the Copyright Office granted the renewal and supplemental registrations.  Plaintiff filed its motion for leave to amend its complaint on December 22, 2010.  Defendant moved for summary judgment on all of Plaintiff’s claims on December 16, 2010, the discovery cut-off was November 26, 2010, the dispositive motion deadline was December 27, 2010 and trial was set for April 25, 2011.

Defendant’s Motion for Summary Judgment.  The court will grant a motion for summary judgment “when the moving party has shown an entitlement to judgment as a matter of law and there is an absence of genuine issues of material fact.”  (Order pdf page 4).

Defendant moved for summary judgment on the following bases:

  • The statute of limitations on the copyright claim expired.
  • The statute of limitations on the Lanham Act (trademark) claim expired.
  • The state breach of implied covenant claim was barred by the statute of frauds.
  • Plaintiff’s works were not copyrightable.
  • The Lanham Act claim fails on the merits.

Copyright Act statute of limitations.  The court found that the three year copyright statute of limitations expired regarding one drawing, but that the Plaintiff could not have discovered the alleged infringements regarding the other drawings through diligent research in the three years prior to the date the complaint was filed.  The court granted Defendant’s motion for one drawing.

Lanham Act statute of limitations.  The court noted that there is no express statute of limitations in the Lanham Act and applied the statute of limitations for the closest analogy under Washington State law – the common law tort of trade name infringement.  The applicable statute of limitations was three years.  The court ruled that Plaintiff’s Lanham Act claims were barred by the statute of limitations for one drawing.

Statute of frauds.  The statute of frauds requires that “any contract that by its terms is not to be performed in one year from the making thereof must be in writing.”  (Order pdf page 8, citing RCW 19.36.010.)  The court ruled that since the contract could not be performed within one year but required Defendant’s forbearance from copying Plaintiff’s work forever, Plaintiff’s breach of implied covenant claim was barred by the statute of frauds.

Defendant argued that Plaintiff’s works were not copyrightable on the following theories:

  • The works are outside the scope of copyright protection.
  • There is insufficient substantial similarity between Defendant’s drawings and Plaintiff’s drawings to establish copyright infringement.
  • Plaintiff’s copyright protection is “thin” and therefore protects only against copies that are virtually identical.
  • The idea of precast concrete vault drawings merges with the expression.
  • Plaintiff’s drawings are scenes a faire (a standard feature).

Scope of protection.  The court ruled that technical drawings such as Plaintiff’s are expressly included as works covered by the Copyright Act.  17 USC §§ 101 and 102(a)(5).  The court also ruled that a technical drawing is not a “useful article” under the Copyright Act.  The technical drawing of a precast concrete vault, a useful article, was not itself a useful article.  Useful articles are not protected by copyright law.

Substantial similarity.  Plaintiff has the burden of showing 1) access to the copyrighted work and 2) substantial similarity between the copyrighted work and the infringing work.  “Substantial similarity” has both an extrinsic test and an intrinsic test.  The court rules only on the extrinsic test on summary judgment, as the intrinsic test is for the jury to determine at trial.  The court found “Plaintiff to have shown adequate articulable similarities between the expressive elements of the drawings to satisfy the extrinsic test.”  (Order pdf page 12). 

Thin copyright protection.  Defendant argued that there is only a limited range of ways to express the idea of a precast vault, requiring Plaintiff to show “virtual identity” between its drawings and Defendant’s.  The court found that Defendant did not present enough evidence on this point to prevail.  The court also stated that “there is nothing inherent in the notion of precast concrete vaults that limits their range of expression.”  (Order pdf page 13).

Merger doctrine.  “When an idea and its expression are indistinguishable, or ‘merged,’ the expression will only be protected against nearly identical copying…..Merger means there is practically only one way to express an idea.”  (Order pdf page 14).  The court ruled that evidence that Plaintiff’s vault drawings are the industry standard does not satisfy the merger doctrine.

Scenes a faire.  “Scenes a faire holds that when similar features in the item claimed to be copyrighted are as a practical matter indispensable, or at least standard, in the treatment of a given idea, they are treated like ideas and are therefore not protected by copyright.”  (Order pdf page 14).  The court ruled that the scenes a faire doctrine did not apply, as Plaintiff sought protection for only specific expressions of vaults, not for the expression of utility vaults in general.

Lanham Act claim merits.  Plaintiff claimed trade dress violations under 15 USC §1125(a)Trade dress is some physical aspect of the product that identifies it as coming from a particular source.  Plaintiff has the burden of proving “(1) that its claimed dress is nonfunctional; (2) that its claimed dress serves a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant’s product or service creates a likelihood of consumer confusion.” (Order pdf page 16).  The court granted Defendant’s motion for summary judgment on this claim, as Plaintiff did not argue the first two points and did not provide competent evidence on the third point.

Plaintiff’s Motion for Summary Judgment.  The court granted Plaintiff’s motion for summary judgment on Defendant’s copyright misuse counterclaim.  “The party pursuing a copyright misuse claim must prove that the holder of the copyright is using its monopoly secured by the copyright to extend to areas not covered by the copyright itself.”  (Order pdf page 18).  “[T]here must be facts tending to show efforts to expand and extend rights secured by the Copyright Act beyond their proper scope.”  (Order pdf page 19). 

The court ruled that Defendant did not articulate a public policy reason to invalidate Plaintiff’s copyright and that it did not provide sufficient facts to support its claim of copyright misuse.  The court rejected Plaintiff’s argument that copyright misuse is a defense and not a cause of action and that therefore it was improperly pled as a counterclaim.  Plaintiff’s argument that Defendant’s copyright misuse counterclaim was barred by the statute of limitations was also rejected by the court, as the claim was based on Plaintiff filing the lawsuit in 2010 and not on Plaintiff’s actions in 2006.  The court ruled that Defendant could reassert its copyright misuse counterclaim in response to Plaintiff’s second amended complaint.

Plaintiff’s Motion to Amend its Complaint.  The factors to consider in granting a motion to amend are “(1) undue delay, (2) bad faith, (3) futility in amendment and (4) prejudice to the non-moving party.” (Order pdf page 20).  The court granted Plaintiff’s motion to amend, as it did not find evidence to establish any of these factors.  The court ruled that the amendment focused only on clarifying what copyrights apply and how Defendant obtained the drawings.  Plaintiff’s timing in filing its motion was not undue delay.

Plaintiff’s motion for reconsideration on the breach of implied covenant claim was denied on April 11, 2011.

This case is Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc., Case No. C10-322 MJP, Western District of Washington at Seattle.

Betty Boop Court Misses the Trademark

Controversy surrounds the 9thCircuit’s ruling in the Betty Boop case (Fleischer v. A.V.E.L.A.).  I felt reluctant to do a post on this case because there are already some sagacious posts on this topic by highly respected commentators:  Betty Boop And The Return of Job’s Daughters by Marty SchwimmerWho Knows Who Owns Betty Boop by Pamela ChestekBetty Boop as a Material Girl by Rebecca Tushnet and An Opinion That Cries Out For A 9th Circuit En Banc Review…Betty Boop and The Tangled Character Copyright and Trademark Chain of Title  by Kate Spelman.  I decided to take the plunge after realizing that my take is different from what I have read so far and because it’s such an intriguing topic.

I have a question and a comment about this case:

Question:  Does the court believe that trademarks should be limited in duration, like copyrights?

Comment:  The Betty Boop plaintiff loses because of the court’s completely inapplicable analogy.  The court generalized from a case in which the trademark owner failed to timely assert its rights in its mark to this case in which the trademark owner did timely assert its rights. 

Here is a brief summary of the case.  The Betty Boop cartoon character was created by Max Fleischer in the 1930s.  He sold the rights to her cartoon and character around 1946.  The Fleischer family revived the Fleischer cartoon business in the early 1970s, repurchasing intellectual property rights to the Betty Boop character.  A.V.E.L.A., the defendant, started selling Betty Boop merchandise sometime after the Fleischer family began to bring the Betty Boop character back into circulation.  Fleischer sued A.V.E.L.A. for copyright and trademark infringement.

The district court dismissed the case on summary judgment.  The 9th Circuit affirmed.  The 9th Circuit’s ruling on the trademark part of the case creates the most controversy.  The circuit court determined that the parties’ arguments were moot and that the controlling precedent was its decision in International Order of Job’s Daughters v. Lindeburg, a case which neither party cited.

Job’s Daughters is an organization that used its name and emblem as trademarks.  Lindeburg manufactured jewelry with the Job’s Daughters emblem without a license.  Job’s Daughters sued for trademark infringement.  The 9thCircuit held that Lindeburg did not use the Job’s Daughters name and emblem as trademarks, that consumers purchased the jewelry for its design and did not purchase it because it was sponsored by the organization the emblem signified.  Jewelry with the Job’s Daughter’s emblem was available from many different unlicensed sources and consumers did not ordinarily purchase jewelry from only “official sources.”  In addition, Lindeburg manufactured unlicensed jewelry with the Job’s Daughters emblem between 1954 and 1975 before Job’s Daughters finally took action.  Job’s Daughters did not police its trademark when it should have, and when it did try to enforce its exclusive rights in the mark, it was too late.

The Betty Boop court applied its Job’s Daughters ruling to the Betty Boop facts and determined “that A.V.E.L.A. is not using Betty Boop as a trademark, but instead as a functional product.”

It is true in Job’s Daughters that the consumers bought the unlicensed jewelry as a functional product.  This resulted from the failure of the trademark owner to enforce the mark, not because of the intrinsic functionality of the jewelry.  The court in Job’s Daughters should have determined that the trademark owner did not enforce the mark and let it go at that.  Instead, the court created a bad precedent which it used in the Betty Boop case.

This language from the Betty Boop case is particularly interesting for rights holders of properties that are subject to both copyright and trademark protection:

If we ruled that A.V.E.L.A.’s depictions of Betty Boop infringed Fleischer’s trademarks, the Betty Boop character would essentially never enter the public domain.

This quote above is based on Dastar Corp. v. Twentieth Century Fox Film Corp. In Dastar, Fox neglected to renew its copyright on a television series it created under license and based on General Dwight D. Eisenhower’s book about the World War II allied campaign in Europe.  The television series entered the public domain.  Fox later acquired rights to Eisenhower’s book, including the exclusive right to distribute and sublicense the television series on video.  Dastar used footage from the television series to manufacture its own video set of the allied campaign, without attributing any of it to Fox.  Fox sued Dastar for copyright infringement.  Fox tacked on a Lanham Act §43(a) (a.k.a. §1125(a)) claim for “reverse passing off,” which is the infringer passing off the trademark owner’s goods as the infringer’s own goods.  Ordinary “passing off” is when the infringer passes off his goods as the trademark owner’s goods.  Fox could not overcome the failure to maintain the copyright and tried to rely on a claim for an unregistered trademark to save the day.  Fox tried to regain its copyright in the television series, which it allowed to slip into the public domain, by using a trademark theory and the court didn’t buy it.  Dastar is another case with a very narrow range of supportable application.

Different types of intellectual property offer different protections.  Properly maintained trademarks do not enter the public domain.  Whether the expiration of a copyright causes a property that is also protected by a trademark to enter the public domain is hotly debated. Does the court mean to suggest that long time trademarks such as IBM and Sears should someday enter the public domain?

The court also failed to acknowledge that Betty Boop is essentially a cartoon character.  Cartoon characters differ from other trademarks in that the product, the cartoon, is the same as the trademark, the cartoon.  Thus, it misses the point to look at the functional aspect of a product derived from the cartoon.  I posted a paper on this subject entitled Trademark Protection for Cartoon Characters on my website.

Coca-Cola Facebook Approach Does Not Fit in FranklinCovey Seven Habits Situation

I enjoyed reading blogger Ron Coleman’s  post, The seven habits of highly annoying lawyers. Ron created his own list of seven habits.  The “seven habits” phrase originated from The 7 Habits of Highly Effective People®, written by Stephen R. Covey and published by FranklinCovey.  It is a highly regarded book discussing “proven principles of fairness, integrity, honesty, and human dignity.”

FranklinCovey recently sent a cease and desist letter to Schlock Mercenary for publishing an ongoing, online webcomic called “The Seven Habits of Highly Effective Pirates.”  Ron’s post commented on the post of another legal blogger who thought that FranklinCovey’s cease and desist letter was unwarranted and that FranklinCovey missed the opportunity to put into play “think win-win,” one of The 7 Habits of Highly Effective People.  Under a comparison and competition based approach to life, one side wins and the other side loses and there is only so much pie to go around.

“Win-win sees life as a cooperative arena, not a competitive one….Win-win means agreements or solutions are mutually beneficial and satisfying.  We both get to eat the pie, and it tastes pretty darn good.” 

Unfortunately, trademark law does not operate on a “win-win” approach.  Trademark law arose out of unfair competition law.  Trademark law requires the trademark owner to use and protect the trademark or lose it.  This is particularly true in the 7 Habits situation.  7 Habits is probably a famous trademark, which entitles it to greater protection than ordinary trademarks, but also requires greater vigilance on the part of the trademark owner.

The Coca-Cola Facebook situation is an example of how a trademark owner created a “win-win” out of a trademark infringement and potential media disaster.  Michelle Golden  describes this situation on pages 68-69 of her book, Social Media Strategies for Professionals and Their Firms. Coca-Cola fans created a Coca-Cola Facebook page, included the Coca-Cola logo and posted content the corporation could not control.  Coke did not attempt to shut the page down, but instead, invited the two people who created the Facebook page to corporate headquarters.  There, Coke entertained them and began a collaboration with the fans to work on the page together.  Both the two fans and Coke executives are administrators of the page.  This is a “win-win.”  The fans get to keep their Facebook page and Coke gets to have a voice in the content.

Why won’t the same thing work for FranklinCovey?  Because FranklinCovey does not like the message about its mark.  Schock Mercenary’s message about the FranklinCovey trademark pokes fun at the mark and is undesirable for the corporation, whereas the Facebook message about Coca-Cola was a positive one that the company wished to encourage.  For FranklinCovey, there is no possibility of a “mutually beneficial and satisfying” solution when another is using its mark in such a manner.

Getting back to the famous trademark discussion in the fourth paragraph, as the owner of a famous trademark, FranklinCovey has the responsibility of policing its mark by refusing to let others “tarnish” it.  Tarnishment is “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”  Policing the mark means taking action to stop parodies or other undesirable uses of the mark.

“[A] ‘parody‘ is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.”

A parody is not categorically a fair use and can still create a likelihood of confusion.