Judgement Briefs

Intellectual Property Rights

Interstellar Starship Services Ltd. v. Epix, Inc.

184 F.3d 1107 (9th Cir. 1999)

Citation
184 F.3d 1107 (9th Cir. 1999)
Court
U.S. Court of Appeals for the Ninth Circuit
Date
17 June 1999
Bench
Ninth Circuit panel; O’Scannlain J. delivered the opinion

Facts

  • Epix, Inc. manufactured and sold video-imaging hardware and software under the registered mark EPIX.
  • Its products included computer programs and circuit boards used for acquiring, processing, displaying and transmitting images.
  • Interstellar Starship Services Ltd. registered and operated the domain name epix.com.
  • The website contained photographs and, at different times, information concerning digital-image alteration and Interstellar’s business services.
  • Epix objected to the domain name and asked the domain-name registrar to cancel it.
  • Interstellar then sought a declaration that use of epix.com did not infringe Epix’s trademark.
  • Epix counterclaimed for trademark infringement and unfair competition.
  • The District Court granted summary judgment in favour of Interstellar, concluding that there was no likelihood of confusion.
  • Epix appealed to the Ninth Circuit.

Issue

  • Whether using epix.com as a domain name could infringe the registered EPIX trademark.
  • Whether users might experience “initial-interest confusion” even if they later realised that the website was unrelated to Epix.
  • Whether the likelihood-of-confusion dispute could properly be decided through summary judgment.

Rule

  • A domain name may function as a trademark or source identifier and can therefore infringe an existing mark.
  • Trademark infringement requires a likelihood that consumers will be confused regarding:
  • source;
  • sponsorship;
  • affiliation; or
  • connection.
  • The Ninth Circuit applies the Sleekcraft factors, including:
  • similarity of the marks;
  • proximity of goods or services;
  • strength of the mark;
  • marketing channels;
  • purchaser care;
  • defendant’s intent;
  • actual confusion;
  • likelihood of market expansion.
  • Initial-interest confusion occurs where a defendant attracts a consumer by using another’s mark, even though the confusion is corrected before purchase.
  • The defendant may still gain an unfair opportunity by diverting attention through the goodwill of the mark owner.

Application

  • The Court found epix.com practically identical to EPIX in appearance and meaning.
  • Adding “.com” did not meaningfully distinguish the domain because it merely identified the internet address.
  • Both parties used the internet as an important marketing channel.
  • This increased the possibility that persons looking for Epix would reach Interstellar’s website.
  • Epix produced evidence that some customers searching for its business had visited epix.com.
  • Even if those visitors eventually recognised that the website was not operated by Epix, the initial diversion could still matter.
  • A visitor might read about Interstellar’s services and decide to deal with it instead.
  • In that situation, Interstellar would have obtained commercial attention by using the goodwill attached to Epix’s mark.
  • Some factors supported Interstellar:
  • Epix’s products were expensive;
  • its purchasers included sophisticated industrial and academic customers;
  • such purchasers would exercise greater care before buying.
  • However, the remaining evidence was disputed.
  • It was unclear whether Interstellar’s website offered services sufficiently related to Epix’s video-imaging business.
  • There was also conflicting evidence regarding:
  • whether EPIX was arbitrary, suggestive or descriptive of “electronic pictures”;
  • whether Interstellar selected the name innocently;
  • whether website visits proved actual confusion;
  • whether the parties’ services were likely to expand into the same market.
  • These were factual matters requiring weighing of evidence.
  • Summary judgment was therefore inappropriate because a reasonable fact-finder could conclude that confusion existed.

Conclusion

  • The Ninth Circuit reversed the summary judgment granted to Interstellar.
  • It did not finally hold that infringement had occurred.
  • It held that Epix had produced enough evidence of possible confusion, including initial-interest confusion, to obtain a trial.
  • The matter was remanded for factual determination.
  • Use this case for: a domain name identical to a trademark may cause actionable initial-interest confusion even where users later discover that the website is unrelated to the trademark owner.