THOIP v. The Walt Disney Company

Filing 134

OPINION AND ORDER For the reasons stated above, Disney's motion for summary judgment is granted in part and denied in part. THOIP's motion for summary judgment is denied. The Clerk of the Court is directed to close these motions (document numbers 95 and 101). The parties shall inform the Court within thirty days of this Opinion and Order whether they intend to conduct further discovery. If either side chooses to conduct further discovery, the parties shall also submit a proposed scheduling order. If neither party chooses to conduct further discovery, the Court will decide the question of reverse confusion on the briefing and record currently sub judice. (Signed by Judge Shira A. Scheindlin on 8/13/2010) (jmi)

elements are considered to determine whether the two products have an overlapping client base."162 Here, there is sufficient market and geographic proximity to view this factor in THOIP's favor.163 For reasons already stated, the parties' shirts were direct competitors, even if they were not sold in the same stores at the same time.164
162

Rush Indust., Inc. v. Garneir LLC, 496 F. Supp. 2d 220 (E.D.N.Y.

2007). Disney's reliance on the Daubert opinion for the proposition that I already decided that the parties' products were not in competitive proximity is misplaced. I did not determine the competitive proximity of the shirts as a general matter, but rather was focused on the specific shirts tested by THOIP's expert. See THOIP, 690 F. Supp. 2d at 236-37 ("When ascertaining whether a survey methodology sufficiently simulates marketplace conditions, the focal point must be the specific products tested by the survey. THOIP has not shown a reasonable likelihood that consumers would have proximately encountered the specific pairs of shirts tested by [THOIP's expert]. . . . While comparing the most similar THOIP and Disney shirts may be a useful heuristic device, a legally-probative estimation of consumer confusion must be tethered to marketplace conditions."). As to the point that "THOIP ha[d] not shown a reasonable likelihood that consumers would have proximately encountered its shirts and the Little Miss Disney shirts in a critical number of real world situations[, because] [t]hough THOIP's shirts were available in thousands of stores nationwide, the Little Miss THOIP and Little Miss Disney shirts were on sale in a small number of nearby stores in at most three geographic locations," id. at 238, I agree with THOIP that because the THOIP shirts were sold in each location as the Little Miss Disney shirts, there is "100% geographical overlap" as a general matter. THOIP Opp. at 24. This does not, however, justify THOIP's expert specific pairings or other problems with THOIP's survey requiring its exclusion. See Patsy's Brand, 317 F.3d at 218 (holding two companies' pasta sauces to be in competitive proximity despite the fact that they were never sold in the same stores, where "[t]he products appeal[ed] to the same consumers, and sale locations [we]re geographically close," and consumers who visited stores selling 43
164 163