Ducks Unlimited, Inc. v. Boondux, LLC et al

Filing 163

FINDINGS OF FACT AND CONCLUSIONS OF LAW. The Court finds Defendants liable for copyright infringement, trademark infringement, and false designation of origin or sponsorship. The Court finds Defendants not liable for trademark dilution. Plaintiff is entitled to an award of infringing profits in the amount of $258,919.04 for its prevailing claims. At its election, Plaintiff may take a statutory damages award of $30,000.00 in lieu of profits as recovery for its Copyright Infringement Cla im. Plaintiff must notify the Court within seven (7) days of the entry of this order if it elects to take a statutory damages award of $30,000.00 in lieu of profits for its Copyright Infringement Claim. Plaintiff must notify the Court within sev en (7) days of the entry of this order if it elects an accounting of Defendants infringing sales from the date of the most recent discovery production to the date of this decision and how Plaintiff seeks to proceed. Defendants are ENJOINED from furth er use of the Boondux Logo in commerce. The Court ORDERS the destruction of all infringing articles currently in Defendants possession or that might subsequently come into their possession, pursuant to 15 U.S.C. § 1118 and 17 U.S.C. § 503(b). Signed by Judge Samuel H. Mays, Jr on 08/18/2017. (Mays, Samuel)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TENNESSEE
WESTERN DIVISION

DUCKS UNLIMITED, INC.,
Plaintiff,
v.
BOONDUX, LLC and
CALEB SUTTON,
Defendants.

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No. 2:14-cv-02885-SHM-tmp

MEMORANDUM OPINION FINDINGS OF FACT AND CONCLUSIONS OF LAW

Plaintiff Ducks Unlimited, Inc. sues Defendants Boondux,
LLC and Caleb Sutton alleging claims of copyright infringement,
in violation of § 501 of the Copyright Act, 17 U.S.C. § 501;
trademark infringement, in violation of § 32 of the Lanham Act,
15 U.S.C. § 1114; false designation of origin or sponsorship
(“false designation”), in violation of § 43(A) of the Lanham
Act, 15 U.S.C. § 1125(a); and trademark dilution, in violation
of the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c),
based on Defendants’ use of a logo in advertising, promoting,
selling, and distributing merchandise bearing that logo.

(ECF

No. 1 ¶¶ 28-59 at 7-11.)
The Court held a bench trial on Plaintiff’s claims against
Defendants from March 27, 2017, to March 31, 2017.

The parties

filed their proposed findings of fact and conclusions of law on
May

12,

responded

2017.
to

(ECF
each

Nos.

other’s

158,

158-1,

proposed

conclusions of law on May 26, 2017.

159.)

findings

The
of

parties

fact

and

(ECF Nos. 160, 161.)

The

Court’s findings of fact and conclusions of law required by
Federal Rule of Civil Procedure 52 follow.
I.

BACKGROUND
As provided by the Pretrial Order, the parties have agreed

to the following summary of the case:
Ducks Unlimited, Inc. is a non-profit corporation
that
is
dedicated
to
waterfowl
and
wetlands
conservation. Ducks Unlimited makes use of a logo, a
drawing of the profile of a mallard’s head, which is
depicted below [(the “DU Logo”)]:

To promote and support its conservation efforts, Ducks
Unlimited licenses the [DU Logo] to be used on a
multitude of products.
In January 2012, Caleb Sutton
created a logo, which combines a fishhook and an
antler in such a way that their combination forms the
shape of a mallard’s head (the “Boondux Logo”):

2

Sutton began selling decals, hats, t-shirts, and
other products bearing the Boondux Logo, and formed a
company, which was eventually named Boondux, LLC.
Ducks Unlimited filed suit against Boondux and
Sutton (“Defendants”) for trademark
infringement,
false designation of origin or sponsorship, trademark
dilution,
and
copyright
infringement
based
on
Defendants’ use of the Boondux Logo.
Ducks Unlimited
has filed this suit to stop Defendants from using the
Boondux Logo and seeks a monetary recovery and
attorney’s fees from Defendants.
Defendants oppose
Ducks Unlimited’s allegations and deny that they are
liable to Ducks Unlimited for a monetary recovery or
attorney’s fees.
(ECF No. 146 at 3.)
II.

JURISDICTION
Each of Plaintiff’s claims arises under federal law.

Court

has

subject-matter

jurisdiction

to

adjudicate

The

federal

claims under 28 U.S.C. § 1331.
III. FINDINGS OF FACT
A.

Stipulated Facts

As provided by the Pretrial Order, the parties have agreed
that the following facts are not in dispute:
1

Ducks Unlimited is a not-for-profit corporation
formed for the purpose of conserving, restoring,
and managing wetlands and associated habitats for
North America’s waterfowl.
Ducks Unlimited was
founded in 1937.

2

Ducks Unlimited is the owner of a federal
copyright registration for the [DU Logo] image,
issued on July 14, 1980 to Ducks Unlimited Canada
and
assigned
to
Ducks
Unlimited . . . by
a
written assignment of copyright dated September
10, 1985.

3

3

On March 7, 2002, Ducks Unlimited filed with the
United
States
Patent
and
Trademark
Office
(“USPTO”) an application to register the [DU
Logo] on the Principal Register in International
Class 35, for “association services -- namely,
promoting the preservation of waterfowl.”

4

On October 8, 2002, the USPTO registered the
Logo] trademark to Ducks Unlimited, Reg.
2,631,699
in
International
Class
35
“association services -- namely, promoting
preservation of waterfowl.”

5

Plaintiff Ducks Unlimited is the owner of
Trademark Registration No. 2,613,699, a designonly
trademark that depicts a duck’s
head
drawing,
in
International
Class
35
for
“association Services -- namely, promoting the
preservation
of
waterfowl.”
The
design
registered in this registration is the [DU Logo].

6

Bass Pro Shops, an authorized retailer of items
having the [DU Logo] printed on them, sells a
number of Ducks Unlimited shirts. In the product
description for every shirt sold online by Bass
Pro Shops with the [DU Logo] appears the
following statement: “It’s all part of the Ducks
Unlimited promise: Doing more to restore -- one
garment at a timeTM.”

7

Boondux has not been involved or affiliated with
association services. Boondux sells its products
strictly for commercial gain.

8

Boondux sells products that bear marks
designs other than the disputed Boondux Mark.

[DU
No.
for
the

and

(ECF No. 146 at 11-12 (citations omitted).)
B.

Facts Established at Trial
1.

Ducks Unlimited’s Use of the DU Logo

Since 1937, Ducks Unlimited has conserved nearly 14 million
acres of wetlands and waterfowl habitat, completing conservation
4

projects in all 50 states, Canada, and Mexico.
39-41, 47-48.)

(ECF No. 152 at

As part of its mission, Ducks Unlimited educates

its members and the general public about the importance of its
work.

(Id. at 49-50.)

Its nationwide education efforts include

public service announcements, newsletters,
and radio shows.

(Id.)

a television show,

About 450 to 500 employees and 55,000

volunteers nationwide contribute to Ducks Unlimited’s mission.
(Id. at 38.)
Ducks
role

in

Unlimited’s

furthering

members

its

and

mission.

chapters
As

of

play

January

an

integral

2012,

Ducks

Unlimited had 550,000 adult members and 45,000 youth members.
(Id.

at

51.)

approximately

Today,
600,000.

conservationists,

the
(Id.

waterfowlers,

adult-membership
at
and

49.)

figure

Members

people

hunting, fishing, and the outdoors generally.

is

include

interested

in

(Id. at 50-51.)

Members join Ducks Unlimited in one of several ways.

Some join

by responding to an offer by mail or email or by seeking out
Ducks Unlimited’s website.

(Id. at 58-59.)

Others -- about two

thirds -- join by attending Ducks Unlimited events, which are
ordinarily organized by chapters.

(Id. at 58.)

Whether through

a direct contribution or through the price of an event ticket,
members join by making an annual $35 gift to the organization.
(Id.

at

55,

73.)

The

annual

retention

rate

among

members

joining through events is about 50%; the rate among members who
5

join apart from events is about 55%.

(Id. at 73.)

million

contribution

people

have

made

a

financial

Unlimited over the last three years.

Over 1
to

Ducks

(Id. at 74.)

Members are organized into chapters by geographic location.
(Id. at 51.)
(Id. at 54.)
states,

and

The chapters’ primary purpose

is fundraising.

Ducks Unlimited has 2,800 chapters spanning all 50
those

events annually.

chapters

organize

about

4,000

fundraising

(Id. at 53, 61; Tr. Ex. No. 7 (chapter map).)

In Louisiana, there are 64 chapters with over 20,000 members.
(ECF

No.

152

at

53-54.)

Two

chapters

are

in

Baton

Rouge,

Louisiana (Sutton’s hometown), both of which have existed since
1985.

(Id. at 53.)

Since before 2012, the Baton Rouge Chapter

has maintained about 900 members, and an annual event organized
by

the

Louisiana

attendees.

State

University

Chapter

draws

about

500

(Id.)

Ducks Unlimited uses its DU Logo extensively in connection
with its membership, chapter, and fundraising activities.

It

uses its DU Logo in various member communications, including
mail invitations, email “blasts,” and press releases.
55-56; e.g., Tr. Ex. No. 27 (letterhead).)

(Id. at

The DU Logo is

displayed in the welcome letter and on the membership card that
members receive in their membership kits.
56; Tr. Ex. No. 8 (letter & card).)

(ECF No. 152 at 55-

Also included in every kit

are two automotive (or window) decals, one of which is the DU
6

Logo.

(ECF No. 152 at 56; Tr. Ex. No. 9 (decals).)

Ducks

Unlimited has distributed over 10 million DU Logo decals to
members over the last 20 years.

(ECF No. 152 at 57-58.)

Amy

Batson, Chief Fundraising Officer for Ducks Unlimited, testified
that she has seen the DU Logo decal displayed in all 50 states,
Canada, and Mexico.

(Id. at 133-34.)

Members also receive an annual subscription to the Ducks
Unlimited Magazine, which is published six times a year.
at 81-82; see ECF No. 153 at 67.)

(Id.

The DU Logo always appears

standing alone in the lower-right corner of the magazine’s front
cover and can be seen throughout the magazine.
81-82; Tr. Ex. No. 17 (magazines).)

(ECF No. 152 at

In 2012, the magazine had a

circulation of 530,000 per issue; today that figure is 610,000.
(ECF No. 152 at 99.)
advertised

with

(Id. at 80.)

Ducks

Since 2012, about 150 companies have
Unlimited,

primarily

in

the

magazine.

Advertisements annually generate $3 to $4 million

in revenues for Ducks Unlimited.
Chapters

are

permitted

(Id. at 81.)

to

use

the

DU

Logo

in

chapter

communications and in promoting fundraising events and chapter
activities.

(Id. at 54.)

Ducks Unlimited provides guidance to

chapters about how the DU Logo should be displayed.
153 at 79-80.)

(ECF No.

Chapters are given some latitude to tailor how

they display the DU Logo for their own purposes, such as, for
example, placing design elements around the logo or behind the
7

logo, but Ducks Unlimited does not authorize chapters to alter
the DU Logo itself.
chapters
(Id.

a

at

certain

81.)

(Id. at 80.)
amount

Doug

of

Ducks Unlimited allows the

deviation

Barnes,

from

Creative

the

guidelines.

Director

for

Ducks

Unlimited, testified that he is not inclined to be overbearing
in enforcing the guidelines as to loyal, small-dollar supporters
or smaller chapters that are trying to raise money for Ducks
Unlimited.
Ducks

(Id. at 59, 81-82.)
Unlimited

merchandise”

goods

fundraising events.
goods

through

makes
that

available
chapters

a

variety

may

use

(ECF No. 152 at 54.)

fliers

Merchandise Catalogue.

or

through

Ducks

of

at

“incentive
member

and

Chapters may order
Unlimited’s

Event

(Id. at 59-63; Tr. Ex. No. 10 (fliers);

Tr. Ex. Nos. 11, 12 (catalogues).)

Such goods include duck

calls, hats, cups, coffee mugs, trailer hitch covers, knives,
bags, cell phone covers, can koozies, firearms, and home décor,
all of which are designed to appeal to a national audience.
(ECF No. 152 at 65.)
items,

either

Unlimited.”

The DU Logo is displayed on many of these

standing

alone

or

(Id. at 61, 66.)

with

the

words

The DU Logo has been featured

regularly on goods in the catalogue for the last 20 years.
at 67-68, 148-49.)
vendors,”

companies

“Ducks

(Id.

Ducks Unlimited partners with “preferred
licensed

merchandise for use at events.

to

provide

(Id. at 70-71.)
8

DU

Logo-branded

Ducks Unlimited

also makes promotional merchandise, such as bags and apparel,
available to members who join apart from events, and those goods
usually display the DU Logo.

(Id. at 72.)

Ducks Unlimited has used the DU Logo extensively since the
late 1980’s in conjunction with its Corporate Partners Program.
(Id. at 157, 160.)

Through that program, about 55 licensees are

approved

Ducks

to

sell

consuming public.

Unlimited-branded

(Id. at 165.)

products

to

the

Since 1986, Ducks Unlimited

has raised over $100 million in revenues from brand sponsorship,
trademark

licensing,

Corporate

Partners.

Unlimited

generates

and
(Id.

by

promotional
at

licensing

183.)
use

activities
The

of

the

significant part of its fundraising efforts.

through

royalties
DU

Logo

Ducks
are

(Id. at 76.)

a
At

trial, Jim Alexander, Senior Director of Corporate Relations for
Ducks Unlimited, testified about the importance of the DU Logo
to the Corporate Partners Program:
The importance is high. So, the way we look at it is
it’s really everything we do.
So, everything that
Ducks
Unlimited
stands
[for]
as
a
brand
is
encapsulated into that one mark or that one identity.
It’s 80 years of conservation success. It’s 13 and a
half million acres of conservation delivery across the
continent, decades of fundraising, decades of member
engagements.
So, it’s all wrapped up into one mark
that we’re allowed to build that one identity from;
and I believe that’s what that represents and why it’s
so important.
(Id. at 162.)

9

Ducks Unlimited expects its licensees to be “good stewards
of the brand” by performing well financially and by generating
expected revenues.

(Id. at 161-62.)

Prospective licensees must

fill out a trademark application, and Ducks Unlimited imposes
quality standards in its agreements with licensees.

(Id. at

167-69; Tr. Ex. No. 29 (trademark license application).)
When Ducks Unlimited authorizes licensees to use the DU
Logo or other Ducks Unlimited-brand marks, it provides guidance
and

imposes

portray

Ducks

Corporate
design

restrictions
Unlimited’s

Partners

choices

on

licensees

brand.

Graphics

available

how

to

Standards

Ducks
Manual

licensees.

may

graphically

Unlimited’s
illustrates

(Tr.

Ex.

No.

2003
the
42.)

Possible displays typically include the DU Logo standing alone,
the words “Ducks Unlimited,” or some combination of those words
and the DU Logo.

(Id. at 10.)

Two such combination displays

depict the DU Logo with the words “Ducks Unlimited” placed to
the right of or below the DU Logo (the “DU Composite Logo”):

10

(Id. at 12-13.)

All of Ducks Unlimited’s licensees use the DU

Logo in some capacity, whether standing alone or in combination
with Ducks Unlimited’s name.
Ducks

Unlimited

(See ECF No. 152 at 161.)

targets

a

broad

variety

of

consumers

through commercial sales of Ducks Unlimited-branded goods.
No. 152 at 166.)
specific

(ECF

Those consumers range from people who have a

appreciation

for

Ducks

Unlimited’s

wetlands-

conservation work to those who generally appreciate wildlife or
the outdoors or who simply want to identify with the DU Logo by
wearing

shirts

or

displaying

automotive

decals.

(Id.)

Alexander testified that, although Ducks Unlimited is a membersbased

organization,

the

sale

of

Ducks

Unlimited-branded

merchandise to the public allows Ducks Unlimited to be perceived
as an inclusive, rather than exclusive, brand and appeal to a
broader

audience

for

engagement

and

support

of

its

mission.

(Id. at 167.)
Ducks Unlimited’s licensees span a range of industries and
products.

(Id. at 170.)

Product categories include home décor,

automotive, automotive aftermarket, food and beverage, wine and
11

spirits,

apparel,

waterfowl

accessories,

firearms

and

ammunition, duck calls, license plates, trailer hitch covers,
can koozies, leather belts, and automotive decals.

(Id. at 170-

79; Tr. Ex. Nos. 30 (baseball cap), 31 (fleece pullover), 32
(key chain), 33 (decals), 34 (license plate), 35 (socks), 36
(metal hitch cover), 37 (koozie), 38 (belt).)

DU Logo decals

are particularly popular among the consuming public: since 2007,
between 250,000 and 260,000 decals, priced between $6.50 and
$18.00

each,

have

sold

at

retail,

revenues for Ducks Unlimited.

generating

$800,000

(ECF No. 152 at 182-83.)

in

Ducks

Unlimited-branded products are carried by national retailers,
such

as

Mountain,

Bass
and

Pro

Shops,

Academy

Cabela’s,

as

Sports

well

as

+

regional

independent stores, and “mom-and-pop” shops.
Ducks Unlimited-branded products are sold
and online stores.
branded

products

(Id.)
are

Outdoors,

Gander

retailers,

(Id. at 180-81.)

by

brick-and-mortar

On the Internet, Ducks Unlimited-

available

to

consumers

through

Ducks

Unlimited’s online store, licensees’ websites, and third-party
retail websites like Amazon and Etsy.

(Id. at 181; ECF No. 153

at 36.)
Artisans

has

licensee since 2007.
24.)

been

Ducks

Unlimited’s

official

apparel

(ECF No. 152 at 170; ECF No. 153 at 23-

Licensees like Artisans have sold apparel items displaying

the DU Logo to the consuming public since 1991.
12

(ECF No. 153 at

23-24.)

Apparel items include long- and short-sleeved t-shirts,

vests, pullovers, sweatshirts, and polo shirts.

(ECF No. 152 at

170; ECF No. 153 at 29; Tr. Ex. Nos. 43-46 (catalogs).)

Those

items are better described as “lodge wear” rather than “hardcore
hunting” apparel.

(ECF No. 153 at 26.)

Price points range from

$17 to $20 for t-shirts, $26 to $30 for performance t-shirts,
and $40 to $90 for sportswear.
about $17.

(Id. at 37.)

(Id. at 36.)

Hats sell for

Artisans sells Ducks Unlimited-branded

apparel through catalogues, Ducks Unlimited’s online store, and
200 retailers nationwide.
(catalogs).)

(Id. at 30-31, 35; Tr. Ex. Nos. 43-46

The DU Logo appears on 99% of the apparel items

that Artisans sells.

(ECF No. 153 at 28.)

As part of its licensing agreement with Ducks Unlimited,
Artisans must “stringently” follow Ducks Unlimited’s guidelines
and abide by quality and measurement standards.
40.)

Michael

testified

Roberts,

that

everything.”

Ducks

one

of

Artisans’s

Unlimited

gets

(Id. at 21-22, 40.)

(Id. at 24,

general

“final

managers,

approval

over

On certain apparel items,

Ducks Unlimited imposes specific requirements for displaying the
DU Logo.

(ECF No. 152 at 185.)

Those requirements include that

the

“Ducks

or

the

the

DU

name

“close

Unlimited”

juxtaposition”

with

initials
Logo.

“DU”

(Id.)

must
The

be

in

“close

juxtaposition” requirement is satisfied where, for example, the
DU Logo appears on the left breast or the back yoke of a shirt
13

and the words “Ducks Unlimited” run down the shirt sleeve or
appear on the garment’s hangtag or sew-in label.
86.)

Ducks

Unlimited

imposes

this

(Id. at 185-

“close

juxtaposition”

requirement for apparel items to be sold at retail pursuant to a
settlement agreement into which Ducks Unlimited entered with a
third-party company in 1990.1
39

(settlement

requirement

does

(Id. at 186-87, 194; Tr. Ex. No.

agreement).)
not

require

The
apparel

version of the DU Composite Logo.

“close

juxtaposition”

licensees

to

use

some

For example, in addition to

producing shirts that use the DU Composite Logo, Artisans may -and does -- produce shirts that display the DU Logo standing
alone, so long as the words “Ducks Unlimited” (or the initials
“DU”) appear somewhere on the shirt, even if not visible when
viewing the DU Logo.

(See Tr. Ex. No. 44 at 4-5; Tr. Ex. No. 47

(shirt).)
Roberts testified about the importance of the DU Logo for
Artisans’s sales.

He explained that “you don’t have a Ducks

Unlimited line without [it].”
asked

about

the

difference

(ECF No. 153 at 29.)
between

selling

a

Roberts was

plain

Artisans

apparel item and a Ducks Unlimited-brand Artisans apparel item.
(Id.)

He answered, “I can put the same product out there but

1

The Court infers from Alexander’s testimony that the “close
juxtaposition” requirement does not apply to apparel provided
directly to members or for chapter or event purposes, rather
than for retail sale. (See ECF No. 152 at 193-94.)
14

without the Ducks Unlimited logo on it, . . . it really doesn’t
have any meaning to anybody and there’s no reason for a retailer
to put me in the store against other people because he’s not
going to draw those consumers.”

(Id.)

its

paid

predecessor

licensee

have

Since 1993, Artisans and
Ducks

million in royalties from apparel sales.

Unlimited

over

$6

(Id. at 39.)

Ducks Unlimited maintains an online presence through its
website, www.ducks.org, and through social media.

(ECF No. 152

at 83-84.)

Ducks Unlimited uses the DU Logo on these various

platforms.

For at least 18 years, Ducks Unlimited has used its

website

for

such

purposes

as

member

recruitment,

member

communications, advertising, and education, and Ducks Unlimited
provides a page where users can shop for branded merchandise.
(Id. at 83-85.)

The DU Logo appears on the homepage in the top-

left corner as well as on other pages of the website.

(Id. at

84-85;

million

Tr.

Ex.

Nos.

18,

19

(screenshots).)

Over

5

unique devices (based on IP address) access the website in a
given year, and in 2016, the website registered over 70 million
“click-through” page views.
Ducks

Unlimited’s

(ECF No. 152 at 100.)

social

media

Instragram, Twitter, and YouTube.

presence

(Id. at 83.)

spans

Facebook,

Those platforms

allow Ducks Unlimited to reach a larger, and often younger,
audience

than

tools allow.

more

traditional

(Id. at 83, 87.)
15

communications

and

marketing

Ducks Unlimited started its

Facebook page before 2012 and today has over 1 million fans.
(Id.

at

87.)

It

started

currently has over 400,000

its

Instagram

followers.

page

(Id.

in

2013

and

at 93, 100-01.)

Ducks Unlimited created its Twitter account in 2008 and its
YouTube page in 2007.
DU

Logo

is

Ducks

(Id. at 90, 102.)
Unlimited’s

profile

On each platform, the
picture

whenever Ducks Unlimited makes a post or tweet.

and

appears

(Id. at 88, 90-

91, 93-94; Tr. Ex. Nos. 20 (Facebook page), 21 (Twitter page),
22 (Instagram page), 23 (YouTube page).)

Since 2010,

Ducks

Unlimited has offered several mobile apps for download, and the
DU Logo is used as the thumbnail for those apps.

(ECF No. 152

at 94-95; Tr. Ex. Nos. 24 (app thumbnail), 25 (app download
screen).)
Ducks Unlimited has also used the DU Logo in public service
announcements (“PSAs”) aired on television and in its television
shows.2

Since 2012, Ducks Unlimited’s PSAs have been aired both

nationally and regionally on such networks as ABC, Fox News
Network, CNN Airport Network, and the Travel Channel.
152 at 107-09.)

(ECF No.

In 2013 and 2016 combined, Ducks Unlimited PSAs

2

Unlike regular commercial advertisements, television networks
generally air PSAs without charge for organizations or causes
they care about. (ECF No. 152 at 107.)
16

aired 6,000 times and generated 1.7 billion impressions.3
at 110, 146.)

(Id.

Since 1997, almost 200 episodes of the television

show “DU TV” have aired with a viewership of over 3.5 million
during the most recent season.
Logo

is

frequently

(Id. at 105-06, 147.)

displayed

on

these

PSAs

and

The DU

shows,

both

through graphic design and on clothing worn by people on screen.
(Id. 105-07; Tr. Ex. No. 26 (PSA).)
The DU Logo is publicly displayed in additional contexts.
At the tradeshows in which Ducks Unlimited participates, the DU
Logo is visible on Ducks Unlimited’s booth, on the clothing worn
by people staffing the booth, and on materials and fundraising
products offered in its booth.
2014,

2015,

Louisiana

and

2016,

Sportsman

Extravaganza.

(Id.)

Ducks
Show

(ECF No. 152 at 76-77.)
Unlimited

and

participated

the

Mississippi

in

In
the

Wildlife

Twenty-seven states, including Louisiana,

make specialty license plates available to motorists, all of
which feature the DU Logo.
(sample plates).)

(Id. at 78-80;

Tr. Ex.

No. 16

The Louisiana license plate was first made

available in the mid-2000s.

(ECF No. 152 at 99.)

At its

project sites, particularly sites located on public land, Ducks
Unlimited

places

signage

displays the DU Logo.

that

identifies

(Id. at 48-49.)

3

Ducks

Unlimited

and

An approximately 130 x

Batson explained that “audience impressions” is a measure of
the estimated number of people who viewed a PSA. (ECF No. 152
at 138.)
17

45-foot DU Logo fixture is mounted on the south side of the Bass
Pro Shops at the Pyramid in Memphis, Tennessee, which can be
seen from the I-40 Bridge and parts of Downtown Memphis.
at 103-04.)

(Id.

The Pyramid’s interior houses the Ducks Unlimited

Waterfowling Heritage Center, a 4,600 square-foot museum that
has

drawn

over

500,000

visitors

since

its

opening

in

2014.

(Id.)
Ducks Unlimited frequently encounters unauthorized use of
the

DU

Logo

in

the

marketplace.

(ECF

No.

153

at

84-85.)

Barnes, nicknamed the “logo police,” testified that, when he
discovers someone selling the DU Logo on a third-party retail
website like eBay or Etsy, he usually sends a short message
warning

the

person

to

stop.

(Id.

at

62,

84-85.)

Barnes

explained that he would warn a member at a tradeshow selling DU
Logo-branded

merchandise

to

stop

because

authorized to sell branded merchandise.
Barnes

encounters

someone

using

the

only

licensees

(Id. at 86.)
DU

Logo

are
When

without

authorization in a more coordinated branding fashion, he reports
that use to Ducks Unlimited’s legal team.
legal

team,

which

polices

both

(Id. at 85.)

individuals

and

The

companies,

routinely sends cease and desist letters to, or files lawsuits
against, unauthorized users.

(Id. at 47-48; Tr. Ex. No. 87 at

16-21, 55.)

18

Ducks Unlimited does permit one-off uses of the DU Logo for
personal use by special request, such as for use on tombstones,
tattoos, or custom-made jewelry.

(ECF No. 153 at 83-84.)

custom-made

authorized

products

are

not

for

Such

resale,

and

merchants may not make additional products using the DU Logo
beyond what Ducks Unlimited expressly authorizes.

(Id. at 84.)

When people make personal requests, they generally do not ask
for permission to use the DU Logo in combination with the words
“Ducks

Unlimited”

Logo).

(Id.)

or

other

letters

(i.e.

the

Combination

DU

Instead, as Barnes testified, “[t]hey want to see

that Duckhead.”
2.

(Id.)
Boondux’s Use of the Boondux Logo

Boondux, LLC is a for-profit company started by Sutton in
June 2012.

(ECF No. 153 at 219; ECF No. 154 at 29.)

Sutton is

the sole owner, member, and paid employee of Boondux.

(ECF No.

153 at 219.)4

Boondux sells merchandise branded with the Boondux

Logo,

is the only company that sells Boondux-branded

and it

products
Before

to

the

Boondux

consuming
was

a

public.

registered

Boondux-branded products.

(ECF

LLC,

No.

Sutton

154

at

28-29.)

personally

sold

(Id.)

Boondux sells decals, apparel, and other accessories that
bear the Boondux Logo.

Boondux has sold over 10,000 decals,

4

Sutton’s mother serves as an unofficial or unpaid employee of
the company. (ECF No. 154 at 109-10.)
19

generating over $160,000 in gross revenues for that product.
(ECF

No.

154

at

223-25;

Tr.

Ex.

No.

71

(sales

records).)

Boondux decals depict the Boondux Logo without displaying any
lettering or the name “Boondux.”
Ex. Nos. 61, 62 (decals).)
(ECF No. 153 at 232.)

(ECF No. 153 at 229, 233; Tr.

They are priced between $10 and $20.

Boondux sells a variety of shirts and

hats that range in price from $22 to $35.

(Id. at 236-38, 242,

245; ECF No. 154 at 8-10; Tr. Ex. Nos. 63 (t-shirt), 64 (product
photos), 65 (product photos), 66 (hat), 67 (hat).)

On apparel

items, sometimes the name “Boondux” appears beneath the Boondux
Logo;

sometimes

product.

the

company

name

appears

elsewhere

on

(ECF No. 153 at 248; See Tr. Ex. No. 64.)

accessories

featuring

the

Boondux

Logo

include

the

Other

keychains,

sunglass straps, can koozies, and snuff skins, each of which
depicts the Boondux Logo and is priced between $4 and $12.
No. 154 at 11-13; Tr. Ex. No. 68 (keychain).)
the

Boondux

customers.

Logo

on

the

packaging

used

to

(ECF

Boondux stamps

ship

products

to

(ECF No. 154 at 213-14; Tr. Ex. No. 94 (packaging).)

Boondux also sells duck calls.

(ECF No. 154 at 14-15.)

Most

duck calls display a left-facing version of the Boondux Logo
(the “Signature Boondux Logo”), depicted below:

20

(Id. at 16; Tr. Ex. No. 69 (duck call).)
Boondux’s target consumers include people who like to hunt
and fish and sportsmen generally.

(ECF No. 154 at 17.)

Boondux

has sold products in all 50 states and Canada, but its primary
sales base is Louisiana, Mississippi, Alabama, Texas, Florida,
Georgia, the Carolinas, Arkansas, and Tennessee.

(Id. at 17-

18.)
Boondux

advertises

Facebook, Instagram,

its

products

and Twitter.

on

social

media

through

(ECF No. 153 at 226-27.)

Boondux pays for advertisements on Instagram, which is Boondux’s
primary advertising platform.
picture

on

“Boondux”

Facebook

depicts

underneath;

its

(Id. at 227.)
the

Boondux

profile

Boondux’s profile

Logo

pictures

with

on

the

name

Instagram

Twitter depict the Boondux Logo standing alone.

and

(Id.; Tr. Ex.

Nos. 58 (Facebook), 59 (Instagram), 60 (Facebook).)
Boondux primarily sells its products through its website,
www.boondux.com.
(website

(ECF

screenshot).)

No.
The

153

at

220-21;

website’s

Tr.

homepage

Ex.

No.

displays

57
the

Boondux Logo next to the name “Boondux” in the upper-left corner

21

of the page, and displays several products for sale featuring
the Boondux Logo.

(See Tr. Ex. No. 57.)

be seen elsewhere on the website.
have

a

link

to

an

“About

Us”

The name “Boondux” can

(Id.)
page

The website does not

that

might

information about Boondux or who owns the website.
at 223.)

provide

any

(ECF No. 153

Sutton testified that “someone can draw their own

conclusions on who Boondux is; but we don’t have a, you know, a
written-out letter per se that says this is who we are.”

(Id.)

Boondux has also sold products at tradeshows in Louisiana,
Texas, Mississippi, Alabama, and Tennessee.
21.)

In

2014

Louisiana

and

2015,

Sportsman

Extravaganza.

(Id.)

Boondux

Show

(ECF No. 154 at 20-

products

the

and

sold

at

both

Mississippi

the

Wildlife

At tradeshows, above the product-display

area, Boondux typically hangs several large banners that show
the Boondux Logo with the name “Boondux” and the Boondux website
URL underneath.
Except
currently

(Id. at 200-03; Tr. Ex. No. 93.)

for

offered

(retailers

sales

at

Tradeshows,

exclusively

webpage).)

online.

Sutton

Boondux
(See

testified

products

Tr.

that

Ex.
it

is

are

No.

70

“very

possible” that Boondux might expand into brick-and-mortar retail
stores.

(ECF No. 154 at 21.)

Retailers have approached him

asking to carry the Boondux brand.

(Id. at 26.)

website has a “Retailers” webpage that reads:

22

Boondux’s

If you would like to see Boondux in a store near you,
ask for us at your favorite local retailer!
At the current time we do not have a projected date
when we will release our line to retailers.
If you
would be interested in carrying Boondux at your store
in the future, or would like to suggest a retailer for
us to consider, please contact us by emailing
[e-mail].
When we are ready to offer our product
retailers you will be contacted First!
(Tr. Ex. No. 70.)

line

to

Sutton testified about the various logistical

considerations that factor into a decision to expand into storefront retail.

(ECF No. 154 at 107-09.)

At trial, Sutton agreed

that he had previously testified in his deposition that his
current

lack

of

interest

litigation” in this case.
3.

in

retail

is

“due

to

mainly

the

(Id. at 22-23.)

Logo Similarities and Differences
a.

Barnes’s Testimony

As Creative Director for Ducks Unlimited, Doug Barnes has
worked with the DU Logo for almost 20 years.
95-96.)

(ECF No. 153 at

Barnes testified about how he first saw the Boondux

Logo in public.

(Id. at 87-88.)

He explained that he was

driving home from work when he noticed ahead, about four or five
cars away, a logo on the back window of a pickup truck.

(Id.)

At first, Barnes thought it was the DU Logo, but he observed
that it was bigger than the DU Logos he normally sees on pickup

23

trucks.

(Id. at 88.)

Barnes described how he came to realize

that the logo ahead was the Boondux Logo:
So, my first response was, because I always am
watching out for the [DU Logo], I didn’t know we sold
a 10-inch tall or 12-inch tall logo.
So, I was
interested in that and I kind of pushed my way up to
the front where I could get a good look at it and when
I got about one car away, I realized that it wasn’t,
you know, that it wasn’t our logo, that just at a
distance I thought it was and then realized that it
was the one that I had been told about.
(Id.)

Barnes wondered whether the creator of the logo he saw

had traced or scanned the DU Logo or whether “in some way they
had gotten [Barnes’s] file and had subtly changed it.”

(Id.)

The next day at work, Barnes downloaded the Boondux Logo -the logo he had seen -- from Boondux’s website and created an
overlay using the Boondux Logo and the DU Logo.
Using

Photoshop

on

his

computer

to

see

how

(Id. at 91.)
the

two

logos

compared, Barnes laid the Boondux Logo over the DU Logo, using
two different colors for contrast, and then laid the DU Logo
over the Boondux Logo, both of which are depicted below:

24

(Id. at 93-95; Tr. Ex. No. 50 (logos overlay).)
experience

in

marketing

and

logo

design

Despite his

generally

and

in

tailoring the DU Logo for use at Ducks Unlimited events, Barnes
testified that he has never successfully sketched the DU Logo in
any usable form.
b.

(ECF No. 153 at 59, 95.)
Williams’s Testimony

Plaintiff offered Richard Williams, an Associate Creative
Director

at

Archer

Malmo,

to

give

his

opinion

about

the

similarities and differences between the DU Logo and the Boondux
Logo.

(ECF No. 154 at 124-25, 127.)

At Archer Malmo, Williams

has worked on branding and messaging campaigns for many clients.
(Id.

at

125-26.)

hundreds of logos.

For

over

20

years,

Williams

has

designed

(Id. at 126.)

Williams described the similarities he observed between the
two logos:
25

[T]he curvature of the head to the crown of the head,
the length of the beak, the curvature underneath the
neck are all similar.
They follow the same paths.
They have the same weight of importance. You know, to
me, you know, whether intentionally or unintentionally
it’s a direct copy.
You know, the Boondux logo is a
direct copy to me of the Ducks Unlimited logo.
(Id. at 128.)

Williams testified that the logo overlay that

Barnes had created was useful to him in forming his opinion.
(Id. at 129.)

He explained: “It really defined how, you know,

they both occupy the same space.

The curvature’s the same.

the elements are virtually the same.”

(Id.)

All

Williams also

testified about a side-by-side comparison he created and used in
comparing the logos:

(Id. at 129-30; Tr. Ex. No. 85 (diagram).)

Williams explained

that his diagram “allows you to spatially kind of get a measure
for how these two logos fit within the same space.”
154 at 130.)

(ECF No.

Williams opined: “They occupy the same curve.
26

The

position of the beak is in the same position.
beak, it’s the same length.”
almost

as

if

somebody

had

(Id.)

traced

Williams added: “[I]t’s

the

logo

Boondux logo from the Ducks Unlimited logo.”
Addressing

the

differences

The length of the

between

and

created

the

(Id. at 131.)

the

logos,

Williams

characterized the Boondux Logo’s hook and antler features as
“decoration.”

(Id. at 129.)

When asked by Defendants’ counsel

about the fact that the Boondux Logo’s neckline extends below
the termination point of the DU Logo’s neckline, Williams opined
on

the

significance

of

that

detail:

“It

would

be

like

me

creating a new Swoosh logo for Nike and instead of stopping it
where Nike stops it, I just kind of extend it out . . . and make
it

longer

and

that’s

all

that’s

done.”

(Id.

at

146-47.)

Despite the differences between the two logos, Williams opined:
“To me, the shape of the duck head is the key here; and, you
know, looking at it, the way they almost mirror each other is
pretty outstanding.”
Williams

(Id. at 129.)

discussed

a

sampling

that

he

compiled

in

expert report of duck-themed logos used by other brands.
at 134-39; Tr. Ex. No. 86 (third-party duck logos).)

his
(Id.

Williams

explained that his compilation showed that “various companies
seem to be very successful at living within the same space but
also

looking

completely

different

from

one

completely different from Ducks Unlimited.”
27

another,

looking

(ECF No. 154 at

135.)

Despite the contrasts between other brands’ duck logos

and the DU Logo, Williams opined that the Boondux Logo does not
differ from the DU Logo with respect to, among other features,
direction, pose, or style of drawing.
what

he

designing

would
a

say

duck

if

logo

a

designer

were

to

(Id. at 139.)
at

bring

his
him

firm
the

When asked
tasked

Boondux

with
Logo,

Williams answered:
I would say, you know, that it looks like somebody -you’re trying to copy the Ducks Unlimited logo.
That’s a pretty neat idea to use a hook and an antler.
Go make something else with it; or if you’re wanting
to create a duck, create a different duck. There are
millions of ducks, you know.
(Id. at 133.)
c.

Breaux’s Testimony

Defendants offered Marie Breaux, an intellectual property
lawyer with experience in copyright and trademark law, inter
alia, to give her opinion on the similarities and differences
between the DU Logo and the Boondux Logo.
66.)

(ECF No. 155 at 61,

Although Breaux had not filed a copyright application for

the Boondux Logo on behalf of Sutton, she discussed the salient
facts that would bear on whether a design like the Boondux Logo
might

be

purposes.

cleared

by

the

USPTO

for

copyright

registration

(Id. at 72-73; see Tr. Ex. No. 101 (expert report).)

In addressing the similarities between the DU Logo and the
Boondux Logo, Breaux discussed a diagram she had created that

28

depicts each logo superimposed over a duck silhouette -- what
she described as the “archetypal form of a duck” -- provided by
the Cornell Ornithological Laboratory, a leading authority on
birds:

(ECF No. 155 at 83; Tr. Ex. No. 101 at 14.)

Breaux opined that,

as illustrated by her diagram, both the DU Logo and the Boondux
Logo reflect the general shape of a duck’s head with respect to
“the

proportions,

the

(ECF No. 155 at 84.)

shape,

[and]

what

is

depicted

there.”

Breaux conceded, however, that there are

many ways to make a line drawing of a mallard’s head in right-

29

facing profile and that any such drawing need not have the same
shape and the same head and neck curves as the DU Logo.

(ECF

No. 156 at 60.)
Addressing

the

differences

between

the

logos,

Breaux

highlighted the “different artistic choices” made by the authors
of

the

respective

differences

include,

works.

(ECF

among

other

No.

155

details,

at
the

88.)

Those

difference

in

overall style between the logos, the use of continuous versus
discontinuous lines, the shape of eye and beak elements in each
logo, the shape of the neck in each, and the presence or absence
of

a

nostril

element.

(Id.;

see

Tr.

Ex.

No.

101

at

16.)

Although a legal conclusion, Breaux opined that the DU Logo and
the Boondux Logo are not “substantially similar” for copyright
purposes.

(ECF No. 155 at 88-89.)5
4.

Plaintiff

Actual-Confusion Evidence
presented

some

anecdotal

evidence

of

actual

confusion for purposes of its trademark and false designation
claims, but that evidence was minimal.

Barnes testified the he

personally has “had people call [him] about [the Boondux Logo]
on a pretty regular basis.”

(ECF No. 153 at 96.)

5

He has

Although Breaux was given latitude to testify about a variety
of considerations she found pertinent in assessing the copyright
and trademark clearance potential of the Boondux Logo, much of
her testimony consisted of legal conclusions rather than factual
evidence.
The Court does not rely on Breaux’s legal
conclusions.
30

fielded phone calls from about 25 people asking such questions
as: “Do you know about it?
to allow it to continue?”

Have you seen it?

And are you going

(Id. at 97.)

Sutton admitted that on more than one occasion people have
seen the Boondux Logo and “mentally associated” and said that
they made “some connection” between the Boondux Logo and the DU
Logo.

(ECF No. 154 at 48.)

Sutton also admitted that he has

personally encountered people who asked aloud when looking at
the Boondux Logo, “Oh, is that Ducks Unlimited?”

(Id. at 49.)

Sutton clarified that fewer than 10 people had done so.
Plaintiff’s

primary

actual-confusion

(Id.)

evidence

was

a

likelihood-of-confusion survey conducted by Hal Poret, owner of
a survey research and consulting business.
35.)

(ECF No. 153 at 134-

Poret has conducted over 1,000 consumer surveys, including

about

200

likelihood-of-confusion

surveys,

expert about the latter in 15 trials.

testifying

as

an

(Id.)

Poret designed an online Eveready survey to test whether
consumers seeing a Boondux product that includes the Boondux
Logo

in

a

retail-store

environment

would

be

confused

by

mistakenly thinking that the product comes from Ducks Unlimited
or is otherwise affiliated with or approved by Ducks Unlimited.
(Id. at 136-37.)

Poret’s online survey, conducted in May 2016,

drew from a Research Now database pool of about 4 to 5 million
Americans and specifically targeted people who self-identified
31

as interested in hunting, fishing, and other outdoor activities
and who answered that they were likely to purchase apparel items
from an outdoor-goods store like Bass Pro Shops or Cabela’s.
(Id. at 137-141.)
Two-hundred survey respondents formed the Test Group and
were

shown

pictures

Boondux’s website.

of

Boondux

apparel

items

(Id. at 149, 174, 209-10.)

taken

from

The Test Group

pictures depicted a Boondux hat or t-shirt, each displaying the
Boondux Logo as well as brand identification such as the name
“Boondux” and the product tag:

(Id. at 149-150; Tr. Ex. No. 54 (Test Group Photos).)

Poret

testified that he selected images that would fairly simulate a
consumer

encounter

environment.

(ECF

with

a

hat

No.

153

at

or

shirt

150-51.)

in

a

retail-store

One-hundred

survey

respondents formed the Control Group and were shown pictures
depicting a hat or t-shirt, each displaying the Drake Logo and
the name “Drake” as brand identification:

32

(ECF No. 153 at 158-60; Tr. Ex. No. 55 (Control Group Photos).)
Poret

explained

why

he

chose

the

Drake

Logo

as

his

control

image:
I wanted to have a logo that is a Duckhead but has
somewhat of a different shape and design so that it
would be a fair test of: When I show somebody
something with a Duckhead logo that is not confusingly
similar to Ducks Unlimited, will the survey for
whatever reason cause people to name Ducks Unlimited
in a way that really shouldn’t be counted?
So, this
logo being a Duckhead but not confusingly similar to
the Ducks Unlimited logo makes it a perfect control.
(ECF No. 153 at 159.)
After

viewing

the

product

images,

survey

respondents

in

both groups were asked whether they had a belief about which
company, organization, or brand made or put out the product and,
if so, to identify the company, organization, or brand.
151-53, 159; Tr. Ex. No. 53 (survey appendix).)

(Id. at

Respondents

were also asked whether they thought the product was affiliated
with, sponsored by, or approved by any company, organization, or
brand and, if so, to identify that company, organization, or
brand.

(ECF No. 153 at 155-56, 159; Tr. Ex. No. 53.)
33

The only

difference between the Test Group and the Control Group was
whether respondents were shown products displaying the Boondux
Logo or products displaying the Drake Logo.
160.)

(ECF No. 153 at

At no point were any respondents shown the DU Logo, and

Ducks Unlimited was not mentioned in the survey.
37.)

Poret

explained

that

that

design

(Id. at 136-

feature,

typical

of

Eveready surveys, made the survey “very conservative” because
the only people who might name “Ducks Unlimited” in response to
the questions, and thereby express confusion, were those who
already knew the DU Logo well and who thought of it on their
own.

(Id. at 136-37, 166-67.)
Poret’s

survey

results

showed

that

16.5%

of

survey

respondents in the Test Group answered that they thought the
Boondux Logo-branded products were made by, affiliated with, or
approved

by

Ducks

Unlimited.

(survey results chart).)

(Id.

at

163;

Tr.

Ex.

No.

56

About 23% of Test Group respondents

who identified as those who hunt identified Ducks Unlimited with
the Boondux products.

(ECF No. 153 at 175.)

In contrast, 3% of

survey respondents in the Control Group who viewed the Drake
Logo-branded
products.
rate,

products

identified

Ducks

Unlimited

(Id. at 163; Tr. Ex. No. 56.)

calculated

by

subtracting

the

with

those

The net confusion

Control

Group

confusion

percentage from the Test Group confusion percentage, was 13.5%.
(ECF No. 153 at 163-64; Tr. Ex. No. 56.)
34

Poret opined that the

survey

results

show

that

“there’s

a

statistically

meaningful

pattern of confusion in the form of people thinking that Boondux
items are from Ducks Unlimited or otherwise connected to Ducks
Unlimited because of the similarity of the Duckhead logo.”
No. 153 at 165-66.)

(ECF

Poret’s survey did not test for confusion

in the context of product sales on Boondux’s website, and he
declined to express an opinion about that context.

(Id. at 216-

17.)
The Court does not give weight to Poret’s survey.
Poret

did

not

adequately

explain

why

the

Drake

First,

Logo-branded

products were appropriate products to use for the Control Group.
Poret discussed why a control group is necessary in a survey in
which

test

group

respondents

are

shown

products

with

an

allegedly-infringing logo, such as the Boondux Logo, and are
asked to identify the source of the product.

(Id. at 157-58.)

Poret explained: “[T]he concern you have in a survey is: Is this
logo really confusingly similar with Ducks Unlimited; or is it
simply that whenever somebody sees a duck logo, they’re going to
think of Ducks Unlimited and say that?”
explained that the Drake Logo was a

(Id. at 158.)

Poret

“perfect control”

image

because, in his opinion, it “look[s] like a duck head.”

(Id.

at 159, 203-04.)
The Drake Logo does not readily look like a duck head.

The

Court was unable to perceive the appearance of a duck head when
35

viewing the Drake Logo during Poret’s direct examination.6
duck-head

logo,

the

Drake

Logo

is

highly

stylized.

As a
Poret

discussed the various quality control measures he took and the
filtering questions he asked to ensure that he obtained reliable
data.

(See, e.g. id. at 146-48, 152, 155.)

None of Poret’s

survey questions, however, ensured that respondents perceived a
duck head when they viewed the Drake Logo.
Ex.

No.

53.)

For

example,

before

(See generally Tr.

asking

what

company,

organization, or brand, if any, respondents identified with the
logos they were shown, Poret’s survey could have asked, “What if
anything does the logo you saw depict?”

Although Poret opined

that the Drake Logo looks like a duck head, his survey did not
assess
Drake

whether
Logo

Control

also

Group

thought

respondents

so.

unfamiliar

Respondents

might

with
well

the
have

perceived it as a stylized ocean wave or an abstract design.
Poret’s

Control

Group

design

did

not

reliably

mitigate

the

possibility of false positives with respect to the Boondux Logo
by guarding against the possibility that “whenever somebody sees
a duck logo, they’re going to think of Ducks Unlimited and say
that.”

(ECF No. 153 at 158.)

6

In ruling on the admissibility of Poret’s testimony pre-trial,
the
Court
did
not
consider
the
Control
Group
images.
Defendants’ objections to Poret’s testimony were based on
relevance, not reliability, and the Court addressed those
objections specifically. (See ECF No. 140 at 9-13.)
36

Second, Poret did not adequately explain whether the Drake
Logo was an appropriate control image based on its strength or
brand

recognition

among

the

consuming

public.

Roberts

of

Artisans testified that Ducks Unlimited-branded apparel competes
with Drake among other companies, such as Nike, Columbia, and
Under Armour.

(Id. at 25.)

When discussing the results of his

survey, Poret did not address what percentage of Control Group
respondents correctly identified Drake Waterfowl Systems as the
company associated with the Drake Logo.

One of Poret’s survey

questions, Question 320, asked, “For each company, brand, or
organization you just named, please explain what makes you think
that the cap [or t-shirt] you just saw is made or put out by
that

company,

organization,

or

brand.”

(Tr.

Ex.

No.

53

at

Q320.)

Poret did not discuss what if anything respondents’

answers

to

respondents

Question
who

320

correctly

revealed.
identified

Some
Drake

Control

Waterfowl

Group
Systems

might have explained that they answered as they did because they
were already familiar with the Drake brand.

Such respondents

presumably would avoid mistakenly identifying Ducks Unlimited
with the Drake Logo.
Taken

together,

respondents

either

depicted

duck

associated

a

with

it
did

head
the

is
not
or

Drake

possible

that

recognize
correctly
Logo
37

many

that

the

recognized

because

Control

they

Drake

Group
Logo

the

company

were

already

familiar with the brand.
findings

failed

to

with

the

unfamiliar

rule

Given those possibilities, Poret’s
out

Boondux

the

brand

possibility
might

that

someone

mistakenly

identify

Ducks Unlimited with the Boondux Logo simply because the Boondux
Logo

looks

like

a

duck

head

rather

than

because

it

is

confusingly similar to the DU Logo.

Because the Court is not

persuaded

questions

that

the

Control

Group

were

properly

designed, the Court cannot rely on Poret’s survey.
4.

Sutton’s Creation of the Boondux Logo

Sutton testified about how he created the Boondux Logo.
explained

that

his

“goal

was

to

create

something

that

He
was

completely unique and different from the market or just from
designs in general and just kind of create an original design.”
(ECF No. 154 at 106-07.)

He began creating his logo one day in

January 2012 during his high school religion class.
107, 174.)

(Id. at 74,

Sutton explained that he was drawing sketches using

the elements of a hook, antler, and feather after having been
inspired by a logo he had seen that incorporated those elements.
(Id. at 59-60,

106.)

After sketching several drawings that

combined a hook, antler, and feather in different ways, Sutton
noticed that one of them looked like a duck head.

(Id. at 59-

60; Tr. Ex. No. 74 at CS&B-000223 to -000225 (drawings).)
of those drawings was the following:

38

One

(Tr. Ex. No. 74 at CS&B-000225.)
Sutton testified that shortly afterward, on the weekend,
rather than go hunting with his father, Sutton stayed home and
continued refining his drawing.

(ECF No. 154 at 60.)

Sutton

explained that he worked on his drawing all day, asking his
mother and aunt, Amy Sutton, for advice and bouncing ideas off
of them.

(Id. at 171.)

Sutton testified that further drafting

led to the following drawing:

(Id. at 60-61; Tr. Ex. No. 74 at CS&B-000228.)

Sutton testified

that his mother suggested that he extend the antler out to help
form a beak and move the hook’s barb up.
97.)

Sutton

explained

that

he

(ECF No. 154 at 95-

followed

his

mother’s

suggestions, partially modifying his drawing by sketching the
faint lines, in the drawing above, that appear at the bottom and
39

back of the beak and near where the top of the beak meets the
bold lines of the hook’s barb.

(See id. at 96-97; see also id.

at

(courtroom

102-04;

Tr.

Ex.

No.

81

drawing).)

Sutton

testified that the above drawing was the last hand drawing of
his logo before he completed the logo on his computer.

(ECF No.

154 at 61-62, 78, 86.)
Sutton testified that he took the above drawing, taped the
piece of paper to his computer screen, and, using an AutoCAD
program, traced the lines using his computer mouse by viewing
the cursor on the screen through the paper.
97-98.)

Sutton

explained

that,

after

(ECF No. 154 at 63,
making

a

couple

of

revisions, such as lengthening the hook and changing the barb,
he produced the following image:

(Id. at 62, 78, 97; Tr. Ex. No. 74 at CS&B-000260 to -000261.)7
Sutton testified that, in his opinion, his final hand drawing
and his AutoCAD drawing have the same shape.

(ECF No. 154 at

64.)
7

Defendants contend that a different image was the first image
Sutton created using the AutoCAD program.
(ECF No. 159 at 1314; see Tr. Ex. No. 74 at CS&B-000259.) That contention is not
supported by the trial testimony. (See ECF No. 154 at 58-59.)
40

Sutton admitted

that he was familiar with the DU Logo.

Sutton had seen the DU Logo on t-shirts, decals, coolers, duck
calls, hats, belts, keychains, on merchandise at Cabela’s while
shopping, on his friend’s decoy bag during a hunting trip, and
on Ducks Unlimited pop-up advertisements on Facebook.
47-48.)

(Id. at

Sutton himself is a deer hunter and had been duck

hunting at least once before.

(Id. at 73.)

Sutton said that he

was aware that one of his friends has a license plate that
displays the DU Logo and that another friend has a dog collar
displaying the logo.

(Id. at 47.)

People close to Sutton are also familiar with the DU Logo.
Sutton’s former religion teacher, Michael Manning, was familiar
with the DU Logo from having seen it among the hunting- and
fishing-themed decals on trucks in the parking lot of the allboys school that Sutton attended.
(Manning

deposition).)

(Tr. Ex. No. 89 at 8, 14-16
Manning

remembers

seeing

hunting/fishing-themed decals in the parking lot since as early
as 2009.

(Id. at 15-16.)

Manning testified that he had “no

idea what [Ducks Unlimited] does, how it works, [or] anything
like

that,”

but

he

recognized

the

DU

Logo.

(Id.

at

18.)

Sutton’s friend and former high school classmate, Corey Free,
had seen the DU Logo on automotive decals, a license plate, tshirts worn by others, hats, and on merchandise sold at Bass Pro
Shops

and

Cabela’s.

(Tr.

Ex.
41

No.

90

at

7,

19-20

(Free

deposition).)

Free

collar since 2009.

had

owned

a

(Id. at 22.)

Ducks

Unlimited-branded

Free considered Sutton to be

someone with a “real interest in hunting and fishing.”
15.)

dog

(Id. at

Sutton’s aunt, Amy Sutton, who was with Sutton the weekend

he created his logo, testified that she recognized the DU Logo
and that Ducks Unlimited had been in her “atmosphere as far
back” as she could recall.
deposition).)

Over

20

(Tr. Ex. No. 88 at 28-29 (A. Sutton

years

ago,

she

worked

Unlimited girl” at two Ducks Unlimited events.
Although

Sutton

had

seen

the

DU

as

a

“Ducks

(Id. at 30.)

Logo

before

this

litigation, he testified that he could not recall when he first
saw it.

(ECF No. 154 at 46.)

Sutton agreed that it was “very

possible” that there were a lot of hunting-themed decals on
trucks

in

designed

his

the

high

Boondux

school
Logo

parking
in

lot

January

around

2012.

the
(Id.)

time

he

Sutton

maintained, however, that he did not have the DU Logo available
to him as he worked on his Boondux Logo and that he did not copy
it.

(Id. at 172-73, 222.)
Sutton’s testimony is not credible.

immersed

in

a

hunting,

fishing,

and

First, that Sutton was
outdoorsman

culture

is

evident from his testimony and the testimony of those near him.
Ducks Unlimited has strong brand presence in that culture and
has

a

strong

Louisiana

organizational

generally.

presence

in

Sutton

did

Although
42

Baton
not

Rouge

say

when

and
he

recalls having first seen the DU Logo, the evidence supports the
reasonable inference that Sutton was familiar with the DU Logo
before he designed the Boondux Logo.
Second,
specific

although

about

a

Sutton’s

number

of

testimony

the

sources

was

detailed

and

that

inspired

his

creation, his testimony about duck-specific sources was vague
and difficult to credit.

Sutton described the bouquet-shaped

“Hooks Horns & Feathers” logo that inspired his initial drawings
and explained that, while working on his logo, at one point he
walked

over

and

looked

at

the

deer

antlers

on

a

deer

head

hanging above the fireplace “to get a better representation of
the deer antlers.”
between

Plaintiff’s

(Id. at 106, 172.)
counsel

and

As shown by one exchange

Sutton

at

trial,

however,

Sutton’s recall of duck-specific sources of inspiration was much
more imprecise:
Counsel:

Okay. So, once you committed to the idea of
using the antler and the hook to form a duck
head, did -- you didn’t look at photos of
ducks or an encyclopedia or Google duck
images or anything like that, did you?

Sutton:

I think I did look at, like, pictures of
ducks in nature.

Counsel:

What did you look at?

Sutton:

I believe it was just pictures of ducks in
nature.

Counsel:

Where did you find those pictures?

Sutton:

Probably on the Internet.
43

Counsel:

Did you produce any of that material in
response to the discovery request in this
case?

Sutton:

No, ma’am.

Counsel:

So, you think you might have looked
pictures of ducks on the Internet?

Sutton:

It’s very possible, yes, ma’am.

Counsel:

It’s possible, but you don’t know for sure.

Sutton:

I think I did look at pictures of the ducks
on the Internet.

Counsel:

Where did you find the pictures?

Sutton:

On the Internet.

Counsel:

Where on the Internet?

Sutton:

Not sure.

Counsel:

You don’t know.

Sutton:

No, ma’am.

Counsel:

You just Googled
Internet and --

Sutton:

I can’t recall what exactly I Googled.

(Id. at 74-75.)

duck

pictures

on

at

the

Sutton also was not consistent about what kind

of duck the Boondux Logo depicts or is intended to depict.

In

the proposed Pretrial Order that the parties submitted, which
the Court adopted, Sutton agreed that the Boondux Logo forms the
shape

of

a

mallard’s

head.

But

when

asked

by

Plaintiff’s

counsel what breed of duck the Boondux Logo looks like, Sutton

44

answered, “Um, I’d like to say a mix between a wood duck and a
pintail.”

(Id. at 75.)

Third, and most significantly, even were the Court to fully
credit Sutton’s testimony describing the process by which he
created the Boondux Logo, critical differences between Sutton’s
final

hand

drawing

and

his

AutoCAD

design

preclude

the

possibility that Sutton created the Boondux Logo without relying
on the DU Logo.

The Court does not agree with Sutton’s opinion

that his final hand drawing has the same shape as his AutoCAD
design.

Sutton testified that he traced his hand drawing on his

computer, but the antler and beak elements of his hand-drawing
design and his AutoCAD design are significantly different.

Even

were the Court to accept that Sutton traced the faint beak lines
of his drawing rather than the bold ones, the faint lines also
do not resemble the shape of the AutoCAD design’s beak element.
The differences between the two designs ostensibly are explained
by Sutton’s testimony that he made further revisions to his
design

while

using

his

AutoCAD

program.

That

testimony,

however, does not adequately explain how Sutton achieved a final
logo shape that so closely tracks the shape of the DU Logo, as
illustrated

by

Barnes’s

and

Williams’s

testimony.

Because,

inter alia, the gap between Sutton’s final hand drawing and his
AutoCAD design is

so great, Sutton’s testimony about how he

45

created the Boondux Logo is implausible.

The Court gives that

testimony little weight.
IV.

CONCLUSIONS OF LAW
A.

Copyright Infringement Claim
1.

General Legal Standards

Plaintiff’s copyright infringement claim arises under the
Copyright Act, 17 U.S.C. § 501.

“Title 17 of the United States

Code protects owners’ copyrights in creative works.”

Murray

Hill Publ’ns., Inc. v. Twentieth Century Fox Film Corp., 361
F.3d

312,

exclusive

316

(6th

right

Cir.

to

2004).

reproduce

the

“Copyright
protected

owners
work,

have

to

the

prepare

derivative works, and to distribute copies to the public.”

Id.

(citing 17 U.S.C. § 106(1)-(3)).
“To

establish

copyright

infringement,

a

plaintiff

must

show: (1) ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original.”
Diffie,

177

omitted).

F.3d

503,

506

(6th

Cir.

1999)

Ellis v.

(quotation

marks

“Direct evidence of copying is rare, so frequently

the plaintiff will attempt to establish an inference of copying
by showing (1) access to the allegedly-infringed work by the
defendant(s) and (2) a substantial similarity between the two
works at issue.”
“Access

is

Id.
proven

when

the

plaintiff

shows

that

the

defendant had an opportunity to view or to copy plaintiff’s
46

work.”

Murray Hill, 361 F.3d at 316 (quotation marks omitted).

“[A]ccess

may

conjecture.”
“A

mere

not

be

is

of

access,

inadequate.”

(quotation marks omitted).
that

through

mere

speculation

or

Ellis, 177 F.3d at 506 (quotation marks omitted).

assertion

evidence[,]

inferred

defendant(s)

plaintiff’s work.”

had

unsupported

Murray

Hill,

361

by

probative

F.3d

at

316

Instead, a “plaintiff must establish
a

reasonable

possibility

to

view

Id. (quotation marks omitted).

In addition to access, a plaintiff must prove substantial
similarity between the two works.

“Similarity is determined by

a comparison of plaintiff’s and defendants’ works.”

Wickham v.

Knoxville Int’l Energy Exposition, Inc., 739 F.2d 1094, 1097
(6th Cir. 1984).

Before comparing similarities between the two

works, the court must “identify[] which aspects of the artist’s
work, if any, are protectible by copyright.”

Kohus v. Mariol,

328 F.3d 848, 855 (6th Cir. 2003) (quotation marks omitted).
The

court

must

then

“determin[e]

whether

the

allegedly

infringing work is substantially similar to protectible elements
of the artist’s work.”
The

first

step

Id. (quotation marks omitted).
of

the

substantial-similarity

analysis

involves “filter[ing] out the unoriginal, unprotectible elements
-- elements that were not independently created by the inventor,
and

that

possess

no

minimal

degree

of

creativity.”

Id.

“[C]opyright protection extends only to expression of ideas and
47

not to ideas themselves.”

Stromback v. New Line Cinema, 384

F.3d 283, 296 (6th Cir. 2004).

An “expression” is that which

“display[s] the stamp of the author’s originality.”

Id.

“Once the unprotectible elements have been filtered out,
the second step is to determine whether the allegedly infringing
work is substantially similar to the protectible elements of the
original.”

Kohus, 328 F.3d at 856 (6th Cir. 2003).

requires a comparison of the two works.
297.

This step

Stromback, 384 F.3d at

In doing so, the question is “whether the two works are,

taken as a whole, substantially similar in look and feel to a
jury.”

Murray Hill, 361 F.3d at 318.

“Substantial similarity

exists where the accused work is so similar to the plaintiff’s
work that an ordinary reasonable person would conclude that the
defendant

unlawfully

expression

by

appropriated

taking

material

the

plaintiff’s

of

substance

protectible
and

value.”

Stromback, 384 F.3d at 297 (quotation marks omitted).

“The

misappropriation of even a small portion of a copyrighted work
may

constitute

an

infringement

under

certain

circumstances.”

Murray Hill, 361 F.3d at 320 (quotation marks omitted).

“Even

if a copied portion be relatively small in proportion to the
entire work, if qualitatively important, the finder of fact may
properly

find

substantial

similarity.”

omitted).

48

Id.

(quotation

marks

“Once

a

plaintiff

establishes

access

and

substantial

similarity, the defendant may rebut the presumption of copying
by

showing

work.”
(6th

independent

creation

of

the

allegedly

infringing

Fogerty v. MGM Grp. Holdings Corp., 379 F.3d 348, 352
Cir.

2004).

independent

“[D]etailed

creation”

may

and

overcome

specific

an

implicit

copying produced by the plaintiff’s proof.

evidence

of

suggestion

of

See Ellis, 177 F.3d

at 507.
2.

Analysis

Defendants
copyright

in

concede

the

DU

that

Logo.

Ducks
At

Unlimited

issue

is

owns

whether

a

valid

Defendants

unlawfully copied the DU Logo in their creation and use of the
Boondux Logo.
a.
Ample

Access

evidence

of

access

shows

that

Sutton

had

an

opportunity to view the DU Logo before he designed the Boondux
Logo.

First, the Court concludes, based on Sutton’s testimony,

that Sutton did, in fact, have the DU Logo available to him and
relied on it as he designed the Boondux Logo.

Although Sutton

denied those facts, as discussed above, the Court does not find
Sutton’s

denial

credible.

Sutton’s

narrative

about

how

he

independently created the Boondux Logo is implausible because,
inter alia, his final hand drawing, which Sutton testified he
traced on his computer, does not match the AutoCAD design that
49

Sutton produced.

The Court does not agree with Sutton’s opinion

that his final hand drawing and his AutoCAD design are the same
shape.

Sutton testified that he further revised his design on

the computer after tracing the hand drawing, but the act of
revision

alone

does

not

persuasively

account

for

the

close

similarity in shape between the Boondux Logo and the DU Logo.
Such a claim of coincidence is not compelling, especially given
that Sutton’s testimony was not clear and consistent about key
aspects of his logo-creation narrative.
Other evidence also shows that Sutton had an opportunity to
view

the

Unlimited
Sutton’s

DU

Logo

has

before

designing

substantial

home

state

of

brand

the

Boondux

presence

Louisiana.

Logo.

nationally

Access

may

be

Ducks
and

found

in
“if

plaintiff’s work has been widely disseminated, as by extensive
publication.”
Copyright

4 Melville B. Nimmer & David Nimmer, Nimmer on

§ 13.02[A]

(rev.

ed.

2017).

Of

Ducks

Unlimited’s

2,800 chapters and 600,000 members nationwide, 64 chapters with
20,000

members

are

in

Louisiana.

Two

chapters

in

Sutton’s

hometown of Baton Rouge have been established since 1985, one of
which has a member base of 900 people, and the other draws 500
attendees

to

its

annual

event.

Those

appreciably changed since January 2012.
also

placed

available

to

the
both

DU

Logo

Ducks

on

many

Unlimited
50

figures

have

not

Ducks Unlimited has

consumer
members

goods

and

the

that

are

consuming

public.

Although Plaintiff did not produce evidence of specific

sales figures for DU Logo-branded merchandise in Baton Rouge or
Louisiana, it is reasonable to infer that product sales in both
places are substantial given the critical mass of chapters and
members in both locations.

Ducks Unlimited and its DU Logo are

also visible on the Internet through Ducks Unlimited’s website
and on various social media platforms -- media that Sutton has
used personally.
Whether through membership or through product sales, Ducks
Unlimited targets the hunting, fishing, and outdoorsman culture,
in

which

Sutton

participants.

and

a

number

of

his

friends

are

active

Sutton and those near him are familiar with the

DU Logo, having seen it on a variety of products -- such as
decals, license plates, apparel items, and hunting goods -- and
in a variety of settings, ranging from Sutton’s own hunting
outings and shopping trips to the parking lot at his former high
school.

Sutton’s aunt testified that Ducks Unlimited has been a

part of her life experience as far back as she can remember.
Defendants argue that the evidence of Sutton’s access to
the

DU

Logo

speculation

before
or

he

designed

conjecture.”

the

For

Boondux

example,

Logo

is

although

“mere
Sutton

admitted that it was “very possible” there were many huntingthemed decals on trucks in his high school parking lot around
the time he designed the Boondux Logo (Sutton’s religion teacher
51

confirmed

the

presence

of

such

decals

as

early

as

2009),

Defendants contend there is no evidence that the DU Logo was
necessarily one of them.
also

argue

that

others’

(ECF No. 161 at 16-17.)
knowledge

of

the

DU

Defendants

Logo,

such

as

Sutton’s friends or his former religion teacher, should not be
“imparted” to Sutton without evidence that those people “have
the same life experience and exposure to trademarks” as Sutton.
(Id. at 17.)

Defendants discount Sutton’s hunting experience on

the ground that Sutton is not a regular duck hunter.

(Id.)

Defendants argue, “Ducks Unlimited was able to establish that
[Sutton] was aware of the [DU Logo] at the time of trial; it did
not prove that Mr. Sutton was aware prior to his creation of the
Boondux Mark.”

(Id. at 16.)

For access purposes, the test is not whether the defendant
was

actually

aware

of

the

plaintiff’s

work

at

defendant created the allegedly infringing work.

the

time

the

Rather, the

test is whether the defendant had a “reasonable possibility to
view plaintiff’s work.”
added).

The

Court’s

Murray Hill, 361 F.3d at 316 (emphasis
conclusion,

based

in

part

on

Sutton’s

testimony, that Sutton, in fact, relied on the DU Logo while
creating

the

Boondux

Logo

additional access evidence.

obviates

the

need

to

rely

on

Notwithstanding that conclusion,

the additional access evidence presented shows that Sutton at
least had a reasonable possibility to view the DU Logo before
52

January 2012.
before then.

Sutton did not deny having seen the DU Logo
Defendants do not plausibly suggest that, before

2012, there was a dearth of products bearing the DU Logo or
settings in which it could be seen in and around Baton Rouge.
The reasonable inference that Sutton had many opportunities to
view the DU Logo based in part on similar experiences by those
near

to

Sutton

does

not

turn

on

whether

their

total

life

experiences are identical to Sutton’s.
Because

Sutton

had

an

opportunity

to

view

the

DU

Logo

before designing the Boondux Logo, Sutton had an opportunity to
copy the DU Logo.

The Court finds that Sutton, in fact, viewed

and relied on the DU Logo while designing the Boondux Logo.
Plaintiff has proven the access element.
b.

Substantial Similarity

The Boondux Logo is substantially similar to the DU Logo’s
copyrightable

elements.

The

DU

mallard’s head shown in profile.

Logo

depicts

right-facing

The DU Logo is composed of

thick, dark lines with no internal coloration.
exhibits the same features.

a

The Boondux Logo

As shown by Barnes’s and Williams’s

diagrams, the position of the duck head, bill, eye, and neck are
the same in both logos.

The neck lines in the Boondux Logo

extend below the termination point of the neck lines in the DU
Logo and the Boondux Logo has a slightly broader bill than the
DU Logo’s bill, but the size and proportions of the head, neck,
53

and bill in both logos are otherwise the same.

The line arcs

and curves of both logos’ head lines, neck lines, and bills are
nearly identical.
Williams, Plaintiff’s branding expert, described how both
logos “occupy the same space” and how their lines “have the same
weight

of

importance.”

He

opined

that

the

key

similarity

between the DU Logo and the Boondux Logo is the shape of the
duck head.

In his words, “the way they almost mirror each other

is pretty outstanding.”

Williams also discussed the variety of

duck-themed logos that other brands have used.

He explained how

the Boondux Logo does not differ from the DU Logo as to such
features as direction, pose, or style of drawing.
As Defendants point out, the Sixth Circuit has instructed
that to perform a proper substantial-similarity analysis, the
Court must first filter the unoriginal, unprotectible elements
out of the original work and then assess whether the allegedly
infringing

work

is

substantially

similar

protectible elements in the original.
856-56.
the

DU

to

any

remaining

See Kohus, 328 F.3d at

Defendants contend that, when that test is applied to
Logo

and

the

Boondux

Logo,

there

is

no

substantial

similarity between the two logos.
Relying

on

Breaux’s

opinions,

Defendants

argue

that

unoriginal, unprotectible elements of the DU Logo that must be
filtered out before any comparison can be done include: “(1) the
54

idea of a duck drawing; (2) the technique of line drawings;
(3) the idea of depicting only a head of a duck; (4) the idea of
depicting a duck in profile; and (5) the idea of a rightwardfacing duck.”
as

shown

(ECF No. 159 at 36-37.)

by
Logo

Boondux

Breaux’s
each

diagram

Defendants contend that,

depicting

superimposed

the

over

a

DU

Logo

duck

and

the

silhouette

representing the “archetypal form of a duck,” any similarities
between the two logos and the “archetypal duck” attributable
solely to the fact that both logos depict duck heads must also
be filtered out.

Those similarities include: “(1)

shape of the

beak; (2) curvature of the back of the head and backward-facing
neck;

(3) curvature

(4) placement

of

of

the

the

eye

chin

and

region;

and

frontward-facing
(5) proportions

skull and neck in relation to other parts of the head.”
38.)

Defendants

contend

that,

after

filtering

neck;
of

the

(Id. at
out

the

unprotectible elements, any protectible elements that remain in
the DU Logo are not substantially similar to the Boondux Logo.
The Court is not persuaded that the similarities between
the

DU

Logo

and

the

unprotectible elements.

Boondux

Logo

are

a

mere

collection

of

The similarities include more than the

fact that both logos depict right-facing line drawings of a
mallard’s

head

in

profile.

expression of a duck head.

The

DU

Logo

is

a

particular

Integral to that expression is,

among other details, the distinctive duck head shape that the DU
55

Logo depicts.
shape.

The

The Boondux Logo shares
Court

agrees

with

the

Williams’s

same distinctive
opinion

that

the

distinctive shape shared by both logos is the key similarity
between them.
feature

among

Although the shape of the logos is only one
many

that

might

be

compared,

that

feature

is

“qualitatively important” and the Boondux Logo’s appropriation
of that key feature makes the two logos, “taken as a whole,
substantially similar in look and feel.”

Murray Hill, 361 F.3d

at 318, 320.
Defendants’
similarity.

arguments

do

not

account

for

that

key

The nearly identical shape shared by the logos is

not attributable solely to the fact that both logos depict duck
heads.

Defendants’ arguments assume that there is only one or

are only a few ways in which to depict a right-facing line
drawing

of

a

mallard’s

head

in

profile.

Breaux’s

demonstrates why that assumption is incorrect.

diagram

Although both

logos are alike in that the back neck line, the front neck line,
and the bottom of the chin follow the same path and occupy the
same space, both logos differ from the “archetypal duck” in the
same manner as to those features.

Compared to the “archetypal

duck,” the back neck lines of both logos extend behind the back
of the “archetypal duck’s” head, the front neck lines of both
logos run down the middle of the “archetypal duck’s” neck, and
the bottom of the chins of both logos falls below the bottom of
56

the “archetypal duck’s” chin.

Based on the evidence Defendants

have presented, the shape of the DU Logo’s duck head does not
mirror

the

“archetypal

duck”

head.

Instead,

it

unique, particular expression of a duck head.

reflects

a

Breaux agreed

that there are many ways to depict a right-facing line drawing
of a mallard’s head in profile and that such a line drawing need
not have the same shape and head and neck curves as the DU Logo.
In designing the Boondux Logo, Sutton could have chosen another
way to depict the shape and curves of his logo’s duck head.
Instead, he used a shape and curves that mirror the particular
expression of those elements in the DU Logo.
is

substantially

elements

of

protection.

the

similar
DU

to

Logo

Plaintiff

has

the

DU

that
proven

Logo

are
the

The Boondux Logo

in

that

entitled

to

substantial

it

copies

copyright
similarity

element.8
c.

Independent Creation

Defendants contend that they have presented “overwhelming”
evidence

that

Sutton

independently

8

created

the

Boondux

Logo.

Defendants argue that, because neither Barnes nor Williams
performed
a
filtration
step
in
testifying
about
their
observations of the two logos, the Court may not rely on their
testimony or diagrams in assessing substantial similarity. (ECF
No. 159 at 41-45.)
Neither witness was offered as a copyright
law expert.
The filtration step is to be performed by the
Court, not the witnesses. The Court has performed that step and
concludes that the shape of the DU Logo’s duck head is a
protectible element.
The Court is not precluded from
considering Barnes’s lay observations and Williams’s opinions on
logo design in reaching its legal conclusion.
57

(ECF No. 159 at 45.)

A defendant in a copyright action may

attempt to rebut an inference of copying that arises from the
plaintiff’s evidence of access and substantial similarity.
Fogerty, 379 F.3d at 352.

See

Because the Court finds that Sutton,

in fact, copied the DU Logo when designing the Boondux Logo,
there is no need to consider separately Defendants’ independentcreation evidence.
Sutton’s

creation

As discussed above, the Court does not find
narrative

credible.

Although

Defendants’

evidence was “detailed” and in some instances “specific,” see
Ellis, 177 F.3d at 507, that evidence is entitled to little
weight.
d.

Conclusion

The Boondux Logo is creative in the manner in which it
combines a fishing hook and a deer antler to form the shape of a
duck head.
from

That creativity, however, does not spare Defendants

copyright

liability

because,

despite

that

creativity,

Sutton, in creating the Boondux Logo, had access to and copied
protectible

elements

of

copyright protection.

the

DU

Logo

that

are

entitled

to

Boondux, in turn, has repeatedly sold

goods bearing the infringing Boondux Logo and has otherwise used
that

logo

for

business

purposes.

Sutton,

as

sole

owner

of

Boondux, responsible for its overall and day-to-day operations,
and having a direct financial interest in Boondux’s infringing
activities,

is

personally

liable
58

for

Boondux’s

infringing

conduct.

See Microsoft Corp. v. Sellers, 411 F. Supp. 2d 913,

920 (E.D. Tenn. 2006) (“Sellers”).

Plaintiff prevails on its

Copyright Infringement Claim.
Plaintiff also asks the Court to find that Defendants’ use
of

the

left-facing

Signature

copyrights in the DU Logo.

Boondux

Logo

infringes

its

Other than presenting evidence of

Defendants’ use of that logo on duck calls and sales figures
based on the sale of those duck calls, Plaintiff’s evidence,
arguments, and the allegations in its Complaint almost entirely
address Defendants’ creation and use of the right-facing Boondux
Logo.

Plaintiff contends that “Defendants have admitted that

the [Signature Boondux Logo] is a derivative of the original
Boondux Logo, and as such, it also infringes Ducks Ulimited’s
[DU Logo] copyright.”

(ECF No. 158 at 51 n.15.)

Plaintiff

cites no authority that any derivative work of an infringing
work is likewise infringing.

One court has declined to apply

such a rule where the allegedly infringing design was not merely
a mirror image of the protected work but a mirror image of a
design with “numerous and substantial differences” compared to
the protected work.

Medallion Homes Gulf Coast, Inc. v. Tivoli

Homes of Sarasota, Inc., 656 F. App’x 450, 454 n.3 (11th Cir.
2016).

The Signature Boondux Logo is not a mirror image of the

DU Logo but is instead a mirror image of the Boondux Logo,
which,

although

infringing,

nevertheless
59

differs

from

the

DU

Logo as to several design features.
its

burden

of

establishing

that

Plaintiff has not carried

the

Signature

Boondux

Logo

infringes Ducks Unlimited’s copyright in the DU Logo.
B.

Trademark Infringement and False Designation Claims
1.

General Legal Standards

Plaintiff’s

trademark

infringement

claims arise under the Lanham Act.

and

false

designation

Section 32 of the Lanham

Act, 15 U.S.C. § 1114, protects registered marks specifically,
and

Section

marks,

43(A),

15

unregistered

service.

U.S.C.

marks,

§ 1125(a),

and

other

protects

aspects

of

registered
a

good

or

NetJets Inc. v. IntelliJet Grp., LLC, 602 F. App’x

242, 244 (6th Cir. 2015).
To sustain a claim for trademark infringement, a plaintiff
must

prove

trademark;

three
(2) the

elements:
defendant

“(1) it
used

the

owns
mark

(3) the use was likely to cause confusion.”

the
in

registered

commerce;

and

Hensley Mfg., Inc.

v. ProPride, Inc., 579 F.3d 603, 609 (6th Cir. 2009).9

To

sustain a claim for false designation, a plaintiff must prove
four elements: “(1) ownership of a specific service mark in
connection with specific services; (2) continuous use of the
service mark; (3) establishment of secondary meaning if the mark
is

descriptive;

and

(4)

a

likelihood

9

of

confusion

amongst

A defendant need not use the registered mark itself; instead,
he may be liable for using a “colorable imitation of a
registered mark.” 15 U.S.C. § 1114(1)(a).
60

consumers due to the contemporaneous use of the parties’ service
marks

in

connection

with

the

parties’

respective

services.”

Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d
1100, 1105 (6th Cir. 1991).
The Sixth Circuit “use[s] the same test to decide whether
there has been trademark infringement, unfair competition, or
false designation of origin: the likelihood of confusion between
the two marks.”
2006)

(citing

(1992)).

Audi AG v. D’Amato, 469 F.3d 534, 542 (6th Cir.
Two

Pesos

v.

Taco

Cabana,

505

U.S.

763,

780

In determining whether an alleged infringement of a

trade or service mark causes a likelihood of confusion among
consumers, courts in this Circuit consider the eight Frisch’s
factors:

(1) the

relatedness

of

the

strength

of

plaintiff’s

goods;

(3) the

similarity

mark;
of

the

(2) the
marks;

(4) evidence of actual confusion; (5) marketing channels used;
(6) likely degree of purchaser care; (7) defendant’s intent in
selecting the mark; and (8) the likelihood of expansion of the
product lines.

Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th

Cir. 1988) (“Wynn Oil I”) (citing Frisch’s Restaurants, Inc. v.
Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th
Cir. 1982)).
“These

factors

imply

no

mathematical

precision,

but

are

simply a guide to help determine whether confusion is likely.”
Homeowners, 931 F.2d at 1107.

“They are also interrelated in
61

effect.”

Id.

“Each

case

presents

its

own

complex

set

of

circumstances and not all of these factors may be particularly
helpful in any given case.”

Id.

“The ultimate question remains

whether

are

likely

relevant

consumers

to

believe

that

the

products or services offered by the parties are affiliated in
some way.”

Id.

Plaintiff’s

claims

against

Defendants

address

Ducks

Unlimited’s trademark rights in the DU Logo.

Defendants do not

dispute

in

Ducks

Unlimited’s

ownership

rights

the

DU

Logo.

Defendants also do not dispute that they have used the Boondux
Logo in commerce.

Defendants contest Plaintiff’s assertions,

first, that the DU Logo is a valid, protectible trademark, and
second,

that

Defendants’

use

of

the

Boondux

Logo

creates

a

likelihood of confusion among consumers.
2.

Validity and Scope of Plaintiff’s Trademark
a.

Registration-Based Rights

In 2002, the USPTO issued a registered trademark in the DU
Logo

to

Ducks

Unlimited.

“Registration

of

a

mark

on

the

Principal Register of the USPTO creates a rebuttable presumption
that

a

trademark

distinctive

or

is

valid,

descriptive

that
with

is,

either

secondary

inherently

meaning,

therefore, protectable under federal trademark law.”

and

Leelanau

Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 513 (6th
Cir. 2007) (citing 15 U.S.C. § 1115(a)).
62

Pursuant to 15 U.S.C.

§ 1065, that registration became incontestable in 2008.
No.

152

at

43-44;

incontestability).)

Tr.
An

Ex.

No.

5

(ECF
of

registration

incontestable

(declaration

is

“conclusive evidence of the validity of the registered mark and
of the registration of the mark, of the registrant’s ownership
of the mark, and of the registrant’s exclusive right to use the
registered mark in commerce,” subject to enumerated statutory
defenses.

15 U.S.C. § 1115(b).

Defendants
Unlimited’s

do

not

challenge

registration-based

rights

challenge the scope of those rights.

the
in

validity
the

DU

of

Ducks

Logo.

They

Because the DU Logo is

registered in International Class 35 for “association

services

-- namely, promoting the preservation of waterfowl,” Defendants
argue that Ducks Unlimited’s registration-based rights do not
extend to consumer goods, such as decals, apparel, and other
accessories, and that any rights Ducks Unlimited might have in
consumer goods are limited to any common law use-based rights
that Ducks Unlimited might have acquired.

(ECF No. 159 at 49-

50.)
To the extent Defendants suggest that Plaintiff’s trademark
infringement claim under § 32 of the Lanham Act must necessarily
fail because Ducks Unlimited has no relevant registration-based
rights

in

the

DU

Logo

with

Defendants’ argument lacks merit.
63

respect

to

consumer

goods,

“The exclusionary rights of a

registered trademark owner are not limited to the goods and/or
services specified in the registration, but go to any goods or
services

on

confusion.”

which

the

use

of

the

mark

is

likely

to

cause

J. Thomas McCarthy, 4 McCarthy on Trademarks and

Unfair Competition § 23:76 (4th ed.).
Amy

Batson

testified

that

Ducks

Unlimited’s

services include its fundraising efforts.

association

(ECF No. 152 at 45.)

Defendants offered no testimony or evidence to the contrary.
Ducks Unlimited’s fundraising efforts include the royalties it
generates from sales of products bearing the DU Logo.

Many of

those products, particularly apparel items, are sold with hang
tags informing consumers that a portion of the sales price will
be

contributed

program.

to

Ducks

Unlimited’s

wetlands

(E.g., Tr. Ex. No. 30 (hat).)

conservation

To the extent that

consumers are aware of the numerous DU Logo-branded consumer
goods available in the marketplace and are likely to be confused
by competing products bearing the Boondux Logo, Ducks Unlimited
may vindicate its registration-based rights in the DU Logo as to
the sale of consumer goods.
b.

Common Law Use-Based Rights

Ducks Unlimited also has common law use-based rights in the
DU

Logo

as

to

various

kinds

of

consumer

goods.

“[I]n

the

absence of federal registration, prior ownership of a mark is
only established as of the first actual use of a mark in a
64

genuine

commercial

transaction.”

Allard

Enters.,

Inc.

v.

Advanced Programming Res., Inc., 146 F.3d 350, 358 (6th Cir.
1998).

“Such use need not have gained wide public recognition,

and even a single use in trade may sustain trademark rights if
followed by continuous commercial utilization.”

Id. (quotation

marks omitted).
Ducks Unlimited has raised tens of millions of dollars from
sales of DU Logo-branded consumer goods by its licensees since
the

late

1980’s.

Those

goods

span

a

range

including decals, apparel, and other accessories.

of

products,

Decals have

been sold to the consuming public since at least 2007; apparel
since at least 1991.

Ducks Unlimited has acquired use-based

rights in the DU Logo as to those goods, among others.
Defendants

resist

that

conclusion

on

several

grounds.

First, Defendants contend that none of the evidence of products
bearing the DU Composite Logo, which includes the words “Ducks
Unlimited,” can be considered in assessing the nature and scope
of Ducks Unlimited’s use-based rights in the DU Logo standing
alone on consumer goods.
2-4.)

(ECF No. 159 at 30-34; ECF No. 161 at

Defendants assert that many Ducks Unlimited products bear

the DU Composite Logo rather than the DU Logo.
out

that

Standards

Ducks
Manual

Unlimited’s
identified

2003
the

Corporate
DU

Defendants point
Partners

Composite

Logo

Graphics
as

the

“official Ducks Unlimited trademark” and that Batson and Barnes
65

both testified that the DU Composite Logo and the DU Logo are
different marks.

(See ECF No. 152 at 114; ECF No. 153 at 102.)

Defendants argue that, as to composite marks containing both
word and design elements, words are presumed to be the dominant
portion of the mark.

Defendants argue that Plaintiff has failed

to rebut that presumption as to the DU Composite Logo by failing
to offer evidence showing how the ordinary consumer perceives
the

DU

Composite

Logo.

Defendants

conclude

that

the

DU

Composite Logo creates a distinct commercial impression in the
mind of a typical consumer and that the Court must not consider
Ducks Unlimited’s use of the

DU Composite

Logo in assessing

Ducks Unlimited’s use-based rights in the DU Logo standing alone
on consumer goods.
Defendants’ argument is based on the assumption that the
word portion of the DU Composite Logo is the dominant part of
that

logo.

Defendants

cite

In

re

Viterra

Inc.

for

the

proposition that words are presumed to be the dominant portion
of a composite mark, but that court “cautioned that there is no
general rule that the letter portion of the mark will form the
dominant portion of the mark” and that marks “must be considered
on a case-by-case basis.”
2012).

671 F.3d 1358, 1362-63 (Fed. Cir.

Defendants likewise cite McCarthy, but McCarthy states

that the “literacy” presumption, which “assumes that words have
more

impact

than

designs,”

is
66

a

“dubious

generalization.”

McCarthy,
element

supra,
is

words).

§ 23:47

dominant

One

court

(citing

if

more

has

cases

finding

conspicuous

instructed

that,

than

that

design

accompanying

“when

a

composite

includes both words and a design, the design element is likely
to dominate if it is more conspicuous or well known to the
purchasing public.”

Ass’n of Co-op. Members, Inc. v. Farmland

Indus., Inc., 684 F.2d 1134, 1141-42 (5th Cir. 1982).
Here, there is good reason to conclude that the dominant
part of the DU Composite Logo is the duck head, not the words
“Ducks Unlimited.”

Ducks Unlimited has used the DU Logo duck

head in conjunction with its Corporate Partners Program since
the late 1980’s, and all of Ducks Unlimited’s licensees use the
duck head in some capacity.
importance
Partners

of

the

Program

duck
is

Jim Alexander testified that the

head

high

to

and

Ducks
that

Unlimited’s

“everything

Corporate

that

Ducks

Unlimited stands [for] as a brand is encapsulated into that one
mark or that one identity.”

The duck head appears on 99% of the

apparel that Artisans sells.

Michael Roberts testified that

“you don’t have a Ducks Unlimited line without” the duck head.
Roberts explained that, without the duck head logo on Artisans
products, there is no reason for retailers to place Artisans
products

alongside

Artisans

apparel

anybody.”

competitors’

item

“really

products
doesn’t

because

have

any

a

plain

meaning

to

Whenever Ducks Unlimited receives special requests
67

for permission to use the DU Logo on custom-made products, those
requests are not for permission to use the DU Composite Logo.
Instead,

as

Duckhead.”

Barnes

testified,

requesters

“want

to

see

that

Because the duck head portion of the DU Composite

Logo is the more conspicuous and well known aspect of that logo,
Ducks

Unlimited’s

use

of

the

DU

Composite

Logo

is

relevant

evidence establishing Ducks Unlimited’s use-based rights in the
DU Logo on consumer goods.
Second,
acquired

Defendants

use-based

contend

rights

in

that

the

DU

Ducks
Logo

Unlimited
on

has

consumer

not

goods

because Ducks Unlimited’s licensees use the DU Logo only for
ornamentation and not as a source identifier.
50-53.)

(ECF No. 159 at

Defendants assert that the use of the DU Logo on many

Ducks Unlimited-branded apparel items is ornamental based on the
size and placement of the DU Logo on those items.
Defendants do not persuasively explain why the use of the
DU

Logo

on

consumer

goods

where

the

logo

is

depicted

ornamentally necessarily fails to serve a trademark function.
Defendants cite McCarthy, but McCarthy states that a “symbol or
design that is ornamental and decorative can in addition be a
valid

trademark”

so

long

distinguish[es] a source.”

as

it

also

“identif[ies]

McCarthy, supra, § 7:24.

and

Designs

that cannot serve as valid trademarks are those that are “solely
or merely ornamental.”

Id.

Sources include secondary sources
68

such as licensors who authorize licensees to use the licensor’s
trademark

in

authorization

a
of

provided

a

stylized

‘Cal’

manner
the

helpful

that

indicates

product.

Id.

illustration:

logo

was

sold,

sponsorship

§ 3:8.

“[I]f
Champion

a

One

court

be

has

with

t-shirt

may

or

the

the

direct

manufacturer but the University of California, Berkeley, would
be the secondary source that authorized Champion to produce and
distribute the shirt bearing the school’s registered trademark.”
Macy’s Inc. v. Strategic Marks, LLC, Nos. 11-cv-06198-EMC, 15cv-00612-EMC, 2016 WL 374147, at *3 (N.D. Cal. Feb. 1, 2016).
The numerous examples of products Plaintiff presented show
that

the

Defendants

DU

Logo

is

categorize

used
the

as
use

a
of

trademark.
the

DU

For
Logo

on

example,
a

hat

manufactured by licensee Outdoor Cap as an ornamental rather
than a trademark use.

Although the DU Logo on that hat is

several inches in diameter and prominently displayed front-andcenter, the logo has not been altered artistically in any way.
(See Tr. Ex. No. 30 (hat).)

Next to the DU Logo is the ®, or

“registered trademark,” symbol.

See Macy’s, 2016 WL 374147, at

*6 (“[T]he marks at issue are not purely ornamental, but wellknown, strong marks that indicate a source, as emphasized by the
use of “TM” on the shirts immediately following the marks.”).
The use of the ® symbol next to the DU Logo is typical of many
goods produced by Ducks Unlimited’s licensees.
69

(See Tr. Ex.

Nos. 30-38.)

On the hat made by Outdoor Cap, a fabric label

sewn into the inseam depicts the DU Composite Logo along with
the

text,

UNLIMITED.”

“MANUFACTURED
(Id.)

&

SOLD

UNDER

LICENSE

FROM

DUCKS

Ducks Unlimited’s licensees use the DU Logo

in a trademark manner, not merely an ornamental manner, and
Ducks

Unlimited

has

acquired

use-based

rights

through

its

licensees’ use of the DU Logo.
Third, Defendants contend that “Ducks Unlimited disclaimed
its

intent

to

create

trademark

clothing and accessories.”

rights

in

the

[DU

(ECF No. 159 at 53.)

Logo]

for

Defendants

point to the settlement agreement between Ducks Unlimited and a
third

party

company

in

1990,

which

gave

rise

to

Ducks

Unlimited’s “close juxtaposition” requirement for apparel and
accessories.
consistently

Defendants argue that Ducks Unlimited has acted
with

that

settlement

agreement,

and

thus

Ducks

Unlimited has not obtained use-based rights in the DU Logo on
apparel and accessories.
Defendants’

argument

(Id. at 53-56.)
is

a

reformulated

version

of

the

abandonment argument they made at the summary judgment stage.
At that stage, rather than argue that Ducks Unlimited had never
acquired use-based rights to apparel and accessories, Defendants
argued that Ducks Unlimited had abandoned its use-based rights
by entering into and abiding by the 1990 settlement agreement.
(ECF No. 88-2 at 8-10.)

In the Court’s March 21, 2017 Summary
70

Judgment

Order,

the

Court

rejected

that

argument,

concluding

that Ducks Unlimited’s compliance with the 1990 agreement did
not cause Ducks Unlimited to abandon its trademark rights in the
DU Logo and that Plaintiff was not precluded from asserting
trademark

infringement,

false

designation,

and

trademark

dilution claims against Defendants based on Boondux’s use of the
Boondux Logo on clothing and apparel items.

(ECF No. 140 at 45-

46, 84-85.)
Defendants’
Unlimited’s

arguments

intent

than

place

the

law

more

importance

supports.

For

on

Ducks

purposes

of

acquiring use-based rights in a mark, what matters is a party’s
actual

bona

fide

use

of

a

mark

in

commerce

and

the

public

visibility of that use, not the party’s intent, which a consumer
cannot perceive.
company’s

In Allard, the Sixth Circuit decided that a

publically

visible,

bone

fide

use

of

a

mark

established use-based rights in that mark, unlike the use of a
mark by a company in another case discussed by Allard, where the
use was not public and bone fide although done with the intent
to reserve the mark for the future.

146 F.3d at 357-58, 359-60

(discussing Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260
(5th Cir. 1975)).
Ducks

Unlimited’s

intent

in

entering

into

the

1990

agreement does not matter (nor does its intent about whether the
DU

Composite

Logo

is

Ducks

Unlimited’s
71

official

logo

or

a

separate logo).

What matters is what consumers can see, and the

consuming public has seen the DU Logo displayed on apparel and
accessories for decades.
logo

is

often

all

that

When viewing the DU Logo head-on, that
a

consumer

may

see

because

Ducks

Unlimited’s “close juxtaposition” requirement allows the DU Logo
and the words “Ducks Unlimited” to appear on different parts of
a given product.

Ducks Unlimited has acquired and maintained

its use-based rights in the DU Logo on apparel and accessories.
Defendants’ argument is not well taken.10
Fourth, Defendants contend that, “[w]hile numerous products
crafted by Ducks Unlimited licensees were entered into evidence,
Ducks Unlimited failed to present any evidence that more than
one unit of the particular product exists or has been sold.”

10

The Court finds persuasive Plaintiff’s response to Defendants’
settlement agreement-based argument:
Defendants’ argument posits that consumers -- who are
very accustomed to seeing the [DU Logo] without any
accompanying words, as it appears on the ubiquitous
Ducks Unlimited car decals and a host of other
products, including apparel -- will not be confused by
the Boondux Logo appearing alone on a t-shirt, because
they are sophisticated enough to realize that when it
comes to t-shirts and sweatshirts, sometimes the [DU
Logo] appears near the words “Ducks Unlimited.” This
contention puts a remarkable burden of observation,
recollection, and analysis on people who are just
trying to buy a t-shirt -- and who are certainly
unaware of the existence of the Agreement . . . an
agreement that has as its purpose the avoidance of
consumer confusion and not its facilitation.
(ECF No. 160 at 35 n.8.)
72

(ECF No. 159 at 56.)

Defendants argue that “Ducks Unlimited did

not submit into evidence any exact figures or evidence on where
each product is sold, how long that product has been available
for sale, the price of the particular products, the number of
units sold, and the revenue earned on those items -- let alone
any products featuring the [DU Logo] alone.”

(Id.)

Plaintiff presented a long parade of products featuring the
DU Logo.

The Court does not find that evidence to be a façade.

Since 1986, Ducks Unlimited has raised over $100 million in
revenues from its Corporate Partners Program.

Since 1993, sales

by Ducks Unlimited’s apparel licensees have generated over $6
million in royalties.

Ducks Unlimited has used its DU Logo

extensively on consumer goods for decades and has acquired usebased rights in those goods by doing so.
Fifth, Defendants contend that Ducks Unlimited’s use of the
DU Logo on incentive merchandise made available to members and
through chapter events cannot be considered in assessing Ducks
Unlimited’s use-based rights in consumer goods because use on
incentive merchandise “does not meet the necessary requirements
of

‘in

commerce’

to

establish

common-law

trademark

rights.”

(ECF No. 159 at 57.)
In
Creek

support

of

that

Productions,

Inc.

argument,
v.

Foria

Defendants

rely

International,

U.S.P.Q.2d 1134, 2009 WL 1719597 (T.T.A.B. 2009).
73

on

Morgan

Inc.,

91

In Morgan

Creek, a film production company holding a registered trademark
in the name “Morgan Creek” for films and other recording mediums
opposed an application for the same word mark in apparel by a
company in the business of selling apparel goods.
Among

other

grounds,

the

film

company

opposed

Id. at *1.
the

apparel

company’s application because the film company had the practice
of

distributing

promotional

displayed its mark.

items,

including

Id. at *2, *8.

apparel,

that

The Trademark Trial and

Appeal Board decided that the film company had not acquired usebased rights in its mark for apparel goods.

Id. at *11.

Morgan Creek is readily distinguishable from this case.

In

Morgan Creek, the film company distributed its promotional items
to employees and friends of the company and never to the general
public.

Id. at *10.

Here, Ducks Unlimited distributes its

promotional items to a member base that exceeds half a million.
Unlike the exclusive status of the recipients in Morgan Creek,
Ducks Unlimited’s membership program is easy to join and is
readily available to the consuming public.
membership
number

of

retention
people

rate

exceeds

regularly

50%,

exposed

Ducks Unlimited’s

which
to

means

Ducks

that

the

Unlimited’s

membership program, and consequently to the promotional items
Ducks Unlimited makes available to its members, substantially
exceeds
Morgan

its

550,000-to-600,000

Creek,

the

film

annual

company
74

was

membership
not

in

the

figure.
business

In
of

selling apparel using the contested mark.

Id. at *10.

Here,

through its licensees, Ducks Unlimited sells to the consuming
public

the

promotional

same

kinds

items

of

through

goods
its

that

it

makes

membership

available

program.

as

Ducks

Unlimited is in the business of selling decals, apparel, and
other

accessories.

Even

were

the

Court

to

ignore

Ducks

Unlimited’s use of the DU Logo on incentive merchandise for
purposes of assessing Ducks Unlimited’s use-based rights in the
DU Logo on consumer goods, Ducks Unlimited’s use of its logo in
its

Corporate

Partners

Program

is

more

than

sufficient

to

establish use-based rights in the DU Logo on consumer goods.
Because Ducks Unlimited owns a valid, protectible trademark
in the DU Logo, collectively grounded in its registration-based
and use-based rights, including use on consumer goods, Plaintiff
may assert trademark infringement and false designation claims
against Defendants based on their use of the Boondux Logo in
commerce.
3.

Analysis of the Frisch’s Factors
a.

Strength of Plaintiff’s Mark

“The strength of a mark is a factual determination of the
mark’s

distinctiveness.”

Leelanau,

502

F.3d

at

515.

“A

stronger mark is accorded greater protection and encroachment
upon a strong mark is deemed more likely to produce confusion
among

buyers.”

Id.

Evaluation
75

of

the

strength

factor

“encompass[es]

two

separate

components:

(1) ‘conceptual

strength,’ or ‘placement of the mark on the spectrum of marks,’11
which encapsulates the question of inherent distinctiveness; and
(2) ‘commercial strength’ or ‘the marketplace recognition value
of the mark.’”
Inc.,

679

Maker’s Mark Distillery, Inc. v. Diageo N. Am.,

F.3d

410,

supra, § 11.83).

419

(6th

Cir.

2012)

(quoting

McCarthy,

“A mark is strong if it is highly distinctive,

i.e., if the public readily accepts it as the hallmark of a
particular
because

source;

it

has

advertisement,

it

can

been
or

become

the

so

subject

because

of

because
of

a

wide

it

is

and

combination

unique,

intensive
of

both.”

Homeowners, 931 F.2d at 1107 (quotation marks omitted).
“Unless a registered mark is successfully challenged within
five

years

of

incontestable”

and

registration, . . . the
“the

mark

must

be

trademark

considered

becomes

strong

and

worthy of full protection.”

Wynn Oil I, 839 F.2d at 1186-87.

“Although

be

a

trademark

may

‘strong

and

worthy

of

full

protection’ because it is valid and incontestable, [Wynn Oil I],
839

F.2d

strength

at
is

1187,

that

particularly

does

not

relevant

11

necessarily
to

the

mean

ultimate

that

its

issue

of

The spectrum of marks consists of marks that range from
“arbitrary,” “fanciful,” or “suggestive,” which are inherently
distinctive and protectible, to “descriptive,” which are not
inherently distinctive but may be protectible if they develop
secondary meaning, and “generic,” which never qualify for
trademark protection.
Leelanau, 502 F.3d at 512-13 (discussing
distinctiveness-of-mark taxonomy).
76

whether confusion is likely to occur.”

Therma-Scan, Inc. v.

Thermoscan, Inc., 295 F.3d 623, 632 (6th Cir. 2002).

A mark’s

incontestable status entitles it to a presumption of strength,
but “the relative import of that presumption within the overall
strength analysis still requires an analysis of ‘whether the
mark is distinctive and well-known in the general population.’”
Maker’s Mark, 679 F.3d at 420 (quoting Therma-Scan, 295 F.3d at
632).
The DU Logo is a strong mark.

The DU Logo is entitled to a

presumption of strength based on the incontestable status of its
registration.

Although

that

registration

is

limited

to

association services related to the preservation of waterfowl,
as discussed above, Ducks Unlimited’s fundraising efforts, which
include

generating

revenues

from

sales

of

DU

Logo-branded

consumer goods, are part of those association services.

The

presumption of strength of the DU Logo therefore extends to
consumer goods.
Registration aside, the DU Logo has both conceptual and
commercial

strength.

The

DU

Logo

has

conceptual

strength

because, as a stylized line drawing of a duck head, the DU Logo
is

a

suggestive

distinctive.

mark.12

Suggestive

marks

Leelanau, 502 F.3d at 512.

12

are

inherently

Breaux, Defendants’

At the summary judgment stage, Defendants agreed that the DU
Logo is suggestive, although they now retreat from that
concession. (See ECF No. 102 at 28.)
77

expert witness, agreed that the DU Logo is distinctive.
No. 156 at 7-8.)

(ECF

Because the DU Logo is inherently distinctive,

it has conceptual strength.
As discussed above, the DU Logo has developed commercial
strength through Ducks Unlimited’s extensive use of the logo in
conjunction

with

communications,

its

conservation,

fundraising,

and

education,

marketing

membership

efforts.

About

600,000 members are regularly exposed to the DU Logo with a
substantial
annually.

number

of

others

cycled

in

among

their

ranks

Ducks Unlimited stamps the DU Logo on each copy of

its bi-monthly magazine, on other member communications mediums,
and on a variety of incentive merchandise items available to
members and chapters.

Ducks Unlimited has used its DU Logo in

its Corporate Partners Program since the late 1980’s, generating
over $100 million in revenues since 1987.

Products by licensees

are carried by national, regional, and independent retailers in
store fronts and online.

Apparel licensees have used the DU

Logo on goods since 1991, and those goods are carried by 200
retailers nationally.
distributed
quarter

to

million

Over 10 million DU Logo decals have been

members
have

over
been

the
sold

last
to

20

the

years,
public

and
since

over

a

2007.

Millions of devices access Ducks Unlimited’s website annually,
PSAs aired on national and regional networks have generated over
a billion impressions since 2013, millions annually tune in to
78

watch

Ducks

thousands
media

Unlimited’s

follow

Ducks

channels.

contexts.

The

television
Unlimited

DU

Logo

shows,

through

is

and

its

featured

hundreds

various

in

each

of

social

of

those

Both nationwide and in Louisiana, millions of people

are regularly exposed to the DU Logo on consumer goods and in
other sectors of the economy.

When people make special requests

to use one of Ducks Unlimited’s marks on custom-made goods, it
is the DU Logo, unaccompanied by the words “Ducks Unlimited,”
that they ask for.
Defendants

contend

commercial strength.

that

the

are

not

a

Logo

does

not

have

They argue that there was scant evidence

that consumers recognize the DU Logo.
survey was performed.

DU

For example, no consumer

(ECF No. 159 at 67.)

prerequisite

to

establishing

“[C]onsumer surveys
secondary

meaning.”

Maker’s Mark, 679 F.3d at 421 (alteration and quotation marks
omitted)

(“In

demonstrating

light
market

of

the

abundance

recognition,

such

of

other

evidence

as

Maker’s

Mark’s

extensive marketing efforts . . . and its widespread publicity,
it was not clear error for the district court to overlook the
lack

of

survey

evidence

because

that

evidence

determinative of the strength of the mark.”).

was

not

Defendants agree

that long-term use of a mark and commercial success establish
commercial

strength,

both

of

which

evidence.
79

are

established

by

the

Defendants also contend that the commercial success of a
company does not necessarily indicate the commercial success of
its trademark.

(ECF No. 159 at 67.)

Plaintiff did not present

evidence of Ducks Unlimited’s commercial success unrelated to
its use of the DU Logo.
the DU Logo.

All of Ducks Unlimited’s licensees use

Ducks Unlimited’s apparel licensee uses the DU

Logo on 99% of the goods it sells.

The evidence establishes

that the DU Logo is integral to the commercial success Ducks
Unlimited has enjoyed.
Plaintiff has proven that the DU Logo is strong.

This

factor favors finding a likelihood of confusion.
b.

Relatedness of the Goods

“Cases generally fit into one of three categories regarding
the

relatedness

of

the

goods

and

services

of

the

parties.”

Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music
Ctr., 109 F.3d 275, 282 (6th Cir. 1997).
First, if the parties compete directly by offering
their goods or services, confusion is likely if the
marks are sufficiently similar; second, if the goods
or services are somewhat related but not competitive,
the likelihood of confusion will turn on other
factors; third, if the goods or services are totally
unrelated, confusion is unlikely.
Id.

“The question is, are the [goods or services] related so

that

they

are

likely

to

prospective purchaser?”

be

connected

in

the

mind

of

a

Id. at 283 (alteration in original)

(quotation marks omitted).
80

Both

Ducks

Unlimited

offering related goods.

and

Boondux

compete

directly

Both offer t-shirts, hats, decals, and

other accessories like keychains and can koozies for sale.
items offered by each are comparably priced.
Unlimited

and

Boondux

by

compete

directly

by

The

Because Ducks
offering

related

goods, consumer confusion is more likely.13
Plaintiff

has

proven

that

the

Unlimited and Boondux are related.

goods

offered

by

Ducks

This factor favors finding a

likelihood of confusion.
c.

Similarity of the Marks

“Similarity of marks is a factor of considerable weight.”
Id.

“This

factor

entails

more

than

a

simple

comparison of the trademarks in question.”
F.3d

at

633.

particular

“Instead,

trademark,

the

when

relevant
viewed

side-by-side

Therma-Scan, 295

inquiry

alone,

is

whether

a

lead

to

would

uncertainty about the goods or services that it identifies.”
Id.

“[C]ourts must determine whether a given mark would confuse

the

public

possibility

when
that

viewed

alone,

sufficiently

in

order

similar

to

account

marks

may

for

the

confuse

consumers who do not have both marks before them but who may
have a general, vague, or even hazy, impression or recollection
of

the

other

party’s

mark.”

Daddy’s,

13

109

F.3d

at

283.

Defendants’ arguments addressing this factor presuppose that
the DU Logo is not a valid, protectible mark.
As discussed
above, those arguments lack merit.
81

“[C]ourts must view marks in their entirety and focus on their
overall impressions, not individual features.”

Id.

The DU Logo and the Boondux Logo are very similar.

The

Boondux Logo depicts a right-facing line drawing of a mallard’s
head in profile.

The DU Logo also depicts a right-facing line

drawing of a mallard’s head in profile.

Despite differences in

individual features between the two logos, such as the presence
of a hook and antler in the Boondux Logo and the absence of
those features in the DU Logo, the overall impression of both
logos is the same.

When glancing at the Boondux Logo, only

after considered reflection does the Court perceive that it is
not looking at the DU Logo.
Defendants contend that “Ducks Unlimited’s entire argument
is based around finding similarities in appearance between the
two marks rather than any similarities in impression conveyed to
consumers.”

(ECF No. 161 at 7.)

The Court finds that the

impression that would be conveyed to the ordinary consumer by
each logo, not simply each logo’s appearance, is the same.

To

the extent Defendants suggest that such a factual finding is
impermissible absent market research data or some other such
evidence showing actual consumer impressions in the marketplace,
no binding legal authority imposes such a requirement.

Were it

otherwise, trademark holders would be unable to vindicate their
rights against infringers unless they could afford to finance
82

market research surveys and expert witness testimony.

McCarthy

states that “[s]imilarity of appearance between marks is really
nothing more than a subjective ‘eyeball’ test” and that “all one
can

say

§ 23:25.

is

‘I

know

it

when

I

see

it.’”

McCarthy,

supra,

The Court finds that the logos are similar and convey

the same impression.
Plaintiff

has

proven

similar to the DU Logo.

that

the

Boondux

Logo

is

unduly

This factor favors finding a likelihood

of confusion.
d.
“Evidence

Evidence of Actual Confusion

of

actual

confusion

is

evidence of likelihood of confusion.”
1188.

undoubtedly

the

best

Wynn Oil I, 839 F.2d at

“Where evidence of actual confusion exists, the weight to

which such evidence is entitled varies depending upon both the
type and amount of confusion that occurs.”
F.3d

at

634.

“Even

though

evidence

of

Therma-Scan, 295

actual

confusion

is

undoubtedly the best evidence of likelihood of confusion it does
not follow that any type or quantum of such evidence is entitled
to significant weight in the determination.”
F.2d at 1110.

Homeowners, 931

“[C]onfusion that is brief or that occurs among

individuals who are not familiar with the products in question
is

entitled

to

considerably

less

weight

than

are

‘chronic

mistakes and serious confusion of actual customers.’”

Therma-

Scan, 295 F.3d at 634 (quoting Homeowners, 931 F.2d at 1110).
83

“Due to the difficulty of securing evidence of actual confusion,
a lack of such evidence is rarely significant, and the factor of
actual confusion is weighted heavily only when there is evidence
of past confusion, or perhaps, when the particular circumstances
indicate such evidence should have been available.”

Daddy’s,

109 F.3d at 284 (quotation marks omitted).
“The most common and widely recognized type of confusion
that

creates

infringement

McCarthy, supra, § 23:5.
of

sale

involves

a

is . . . point

of

sale

confusion.”

“Likelihood of confusion at the point

purchaser’s

confusion

as

to

a

product’s

origin or sponsorship occurring at the time of purchase.”

Gen.

Motors Corp. v. Keystone Auto. Indus., Inc., 453 F.3d 351, 355
(6th Cir. 2006) (citing McCarthy).

At present, Boondux products

are sold only on Boondux’s website and at tradeshows.
The Sixth Circuit has also recognized that other kinds of
confusion

are

sometimes

actionable,

confusion and post-sale confusion.

such

as

initial-interest

See Gibson Guitar Corp. v.

Paul Reed Smith Guitars, LP, 423 F.3d 539, 549-52 (6th Cir.
2005).

Plaintiff

confusion

is

presented

evidence

has

not

actionable
that

in

established
this

Defendants

that

initial-interest

case

because

it

has

not

have

deceptively

used

the

Boondux Logo to lure consumers to Boondux’s website or its booth
at tradeshows or shown how, if at all, Boondux’s advertising
efforts are deceitful.

See Groeneveld Transp. Efficiency, Inc.
84

v.

Lubecore

Int’l,

Inc.,

730

F.3d

494,

518

(6th

Cir.

(discussing the “paradigmatic initial-interest case”).14
Summary

Judgment

Order,

the

Court

decided

that

2013)
In its

post-sale

confusion was not actionable in this case because Plaintiff had
not

demonstrated

products

a

bearing

genuine

the

Boondux

dispute

products bearing the DU Logo.

Logo

of

were

material
knockoff

fact

that

versions

(ECF No. 140 at 56.)

of

At issue

here is whether Plaintiff presented evidence of actual confusion
occurring at the point of sale.
Plaintiff’s

evidence

of

actual

confusion

consists

of

anecdotal examples of confusion and a market research survey
conducted

by

Hal

Poret.

Plaintiff’s

entitled to little or no weight.

anecdotal

evidence

Any confusion by employees of

Ducks Unlimited, like Doug Barnes, is legally irrelevant.
do

not

qualify

as

consumers.

is

See

Progressive

They

Distribution

Servs., Inc. v. United Parcel Serv., 856 F.3d 416, 434 (6th Cir.
14

“Initial-interest confusion takes place when a manufacturer
improperly uses a trademark to create initial customer interest
in a product, even if the customer realizes, prior to purchase,
that the product was not actually manufactured by the trademarkholder.” Gibson Guitar, 423 F.3d at 549. The Sixth Circuit has
been reluctant to extend initial-interest confusion as an
actionable theory under the Lanham Act outside the narrow
context of disputes over internet domain names. See id. at 551
& n.15. In that context, actionable initial-interest confusion
may occur where, for example, the defendant uses the plaintiff’s
word mark in the defendant’s internet domain name to direct
consumers to the defendant’s website. See id. at 550-51 & n.15
(discussing
authorities).
Boondux
has
not
used
Ducks
Unlimited’s name or word mark in the domain name for its
website, www.boondux.com.
85

2017) (“[I]n a trademark infringement action, the focus rests
upon the likelihood of a consumer being confused by the two
marks

and

not

an

employee.”).

The

25

telephone

calls

that

Barnes received from people asking whether Ducks Unlimited was
aware of the Boondux Logo and whether Ducks Unlimited planned to
allow Boondux’s use of its logo to continue at most suggest the
callers’

curiosity

about

Ducks

Unlimited’s

enforcement

plans

rather than confusion about source, affiliation, or sponsorship
of Boondux products.

Sutton testified that he encountered some

people who asked aloud when looking at the Boondux Logo, “Oh, is
that Ducks Unlimited?”

Sutton clarified that fewer than 10

people expressed any such confusion
Ducks

Unlimited’s

commercial

and,

activity

given the scope of

and

presence

in

the

marketplace, that minimal evidence “provide[s] only weak support
for finding a likelihood of confusion.”

Therma-Scan, 295 F.3d

at 635-36 (finding six instances of consumer confusion legally
insignificant given the scale of plaintiff’s operations).
Citing
appropriate

Daddy’s,

Plaintiff

circumstances,

even

argues
one

that

instance

“under
of

confusion can increase the likelihood of confusion.”
160 at 45.)

the

consumer
(ECF No.

There is no indication, however, that any of these

anecdotal examples of confusion occurred at the point of sale.
Even were that so,

such minimal evidence of actual consumer

confusion, particularly following a full trial on the merits,
86

“does not tilt the balance of determining whether a likelihood
of

confusion

direction.”

exists

to

a

significant

degree

in

either

Therma-Scan, 295 F.3d at 635-36 (limiting Daddy’s

fact-specific actual-confusion holding to the summary judgment
context).
Plaintiff’s
weight.

consumer

survey

evidence

is

not

entitled

to

First, Poret’s survey did not test for point-of-sale

confusion in the context of sales on Boondux’s website or at
tradeshows.
confusion

His survey was limited to testing for point-of-sale
in

the

retail-store

context.15

Poret’s

survey

findings, if reliable, would be relevant for purposes of the
expansion-of-product-lines factor, but not for purposes of this
factor.

Second, as discussed above, Poret’s failure to use a

proper control image in his survey, or at least to explain to
the Court’s satisfaction why the image he used, the Drake Logo,
was a proper control image and how his quality control measures
verified

his

otherwise
presented

be
on

methodological

conclusion,
based
the

on

undermines

his

issue

errors,

a

survey
of
court

any

findings

results.
actual
may

“Where

confusion

choose

that

to

a

might
survey

reflects
limit

the

importance it accords the study in its likelihood of confusion
analysis.”

Leelanau, 502 F.3d at 518.

15

Poret’s survey also tested for post-sale confusion, but for
reasons explained in the Summary Judgment Order, the Court does
not consider that evidence.
87

In

its

Summary

Judgment

Order,

the

Court

found

that,

because Poret’s survey did not test for point-of-sale confusion
in

the

context

circumstances
confusion

of

here

were

Boondux’s

suggest

occurring

that,

due

to

website,
if

the

actual

Boondux’s

“particular
point-of-sale

internet

sales,

Poret’s survey should have been able to uncover it” and that
“this may be the rare case where a lack of evidence of relevant
actual

confusion

confusion.”

weighs

against

finding

a

likelihood

of

(ECF No. 140 at 70 (citing Daddy’s, 109 F.3d at

284).)
Having heard the proof in this case, the Court concludes
that Poret’s decision not to test for point-of-sale confusion in
the context of Boondux’s website is not reason to conclude that
this factor weighs in Defendants’ favor.

Poret’s survey amounts

to lack of evidence one way or the other rather than positive
evidence that consumer confusion is not occurring at the point
of sale.

There was no testimony about how testing conditions

emulating the context of Boondux’s website might have materially
differed from the retail-store conditions that the Test Group
attempted to emulate.

Presumably such test-group photos would

have depicted screenshots from Boondux’s website, which displays
Boondux’s name in proximity to the Boondux Logo, but the Test
Group photos Poret used displayed Boondux’s name and product
labels.
88

Boondux’s website does not have a link to an “About Us”
page or otherwise provide any information about Boondux or who
owns the website.

The Sixth Circuit has found that the use of a

conspicuous disclaimer on a defendant’s website can mitigate the
likelihood of consumer confusion.

See, e.g., Hensley, 579 F.3d

at 608, 611; Taubman Co. v. Webfeats, 319 F.3d 770, 777 (6th
Cir. 2003).

Boondux’s website, however, has no disclaimer of

affiliation with Ducks Unlimited.

Sutton testified that someone

visiting Boondux’s website “can draw their own conclusions on
who

Boondux

is”

and

that

the

website

does

information “that says this is who we are.”

not

provide

“Web surfers are

more likely to be confused as to the ownership of a web site
than traditional patrons of a brick-and-mortar store would be of
a store’s ownership.”
omitted).

Audi, 469 F.3d at 544 (quotation marks

By designing a survey that did not specifically test

for likelihood of confusion in the context of Boondux’s website
and instead tested for confusion in the retail-store context,
Poret did not use Test Group images that withheld disclaimer
information
otherwise

that
have

images

taken

displayed.

No

from

Boondux’s

inference

can

website
be

might

drawn

in

Defendants’ favor based on Poret’s decision not to test for
point-of-sale confusion on Boondux’s website.16

16

No evidence was presented about what, if any, disclaiming
information Boondux provides consumers at tradeshows. Likewise,
89

Plaintiff has not presented materially probative evidence
of actual confusion among consumers at the point of sale.

On

the facts of this case, this factor favors neither party.
e.
“The

the

parties’

predominant customers and their marketing approaches.”

Therma-

Scan,

fifth

Marketing Channels Used

295

factor

F.3d

at

requires

636.

an

Stated

analysis

of

differently,

this

factor

considers “how and to whom the respective goods or services of
the parties are sold.”

Homeowners, 931 F.2d at 1110.

“The more

channels and buyers overlap, the greater the likelihood that
relevant

consumers

products.”

will

confuse

the

sources

of

the

parties’

Kibler v. Hall, 843 F.3d 1068, 1079 (6th Cir. 2016).

“Where the parties have different customers and market their
goods or services in different ways, the likelihood of confusion
decreases.”
That

Therma-Scan, 295 F.3d at 636.
both

“automatically
marketing

parties
lead

channels.”

to

market
the

Id.

on

the

conclusion
at

637.

Internet

that

they

“Instead,

does
use

the

not

common

relevant

questions include: (1) whether both parties use the Web as a
substantial marketing and advertising channel, (2) whether the
parties’

marks

are

utilized

in

conjunction

with

Web-based

no inference can be drawn in Defendants’ favor based on Poret’s
decision not to test for point-of-sale confusion in that
context.
90

products,

and

(3) whether

overlap in any other way.”

the

parties’

marketing

channels

Id. (quotation marks omitted).

Both Ducks Unlimited and Boondux market their products to
the same kinds of consumers.
Unlimited-branded

consumer

The target consumers for Ducks

goods

(as

well

as

its

membership

demographic) include people interested in hunting, fishing, and
the

outdoors

generally.

The

target

consumers

for

Boondux-

branded consumer goods include the same constituencies.
both

Ducks

Unlimited

and

Boondux

target

the

same

That

kinds

of

consumers favors a likelihood of confusion.
Defendants do not dispute that Ducks Unlimited and Boondux
target the same kinds of consumers.
Boondux

markets

purely

commercial

Defendants contend that

goods,

but

Ducks

Unlimited

markets “promotional items” to support its conservation work.
(ECF No. 159 at 84-85.)

Defendants focus on the fact that many

Ducks Unlimited-branded products include hang tags

describing

Ducks Unlimited’s conservation efforts and informing consumers
that

a

portion

efforts.
hangtag).)

(Id.;

of

the

See,

sales

e.g.,

proceeds

Tr.

Ex.

No.

contributes
31

to

(sweatshirt

those
with

Defendants reason that, because Boondux’s and Ducks

Unlimited’s missions differ, so do their marketing approaches.
That Ducks Unlimited discloses its conservation mission as
part of its marketing efforts does not change the fact that
Ducks Unlimited and Boondux target the same consumers.
91

Ducks

Unlimited

targets

conservationists

and

Boondux

does

not,

but

Ducks Unlimited targets all of the consumers Boondux targets.
That Ducks Unlimited uses its revenues for a charitable purpose
and Boondux does not does not make their respective marketing
approaches materially different.

Defendants cite no authority

to the contrary.
Ducks

Unlimited

marketing channels.

and

Boondux

also

use

some

of

the

same

Both market through Facebook, Instagram,

and Twitter, and both have participated in some of the same
tradeshows.

Although Ducks Unlimited uses additional channels,

all of the channels that Boondux uses, Ducks Unlimited uses as
well.

Both use the Internet as a substantial marketing and

advertising channel and, based on their mutual participation in
tradeshows, both of their channels overlap outside the internetcontext.
overlap

See Therma-Scan, 295 F.3d at 637.
between

Ducks

Unlimited’s

and

The substantial

Boondux’s

marketing

channels favors a likelihood of confusion.
Citing Kibler, Defendants contend that the parties’ shared
use

of

Twitter

social

media

is

limited

of

marketing approaches.

platforms

like

relevance

Facebook,

in

Instagram,

assessing

(ECF No. 159 at 85.)

similarity

and
of

In Kibler, the

Sixth Circuit held that two musical artists’ shared use of such
websites
Amazon

as
and

Facebook

and

Twitter

iTunes

for

targeting
92

for

marketing
consumers

purposes
was

not

and
of

significance in assessing likelihood of confusion because “most
musical artists use those websites to advertise and sell their
products today.”
544

843 F.3d at 1080.

(“Simultaneous

use

of

the

But cf. Audi, 469 F.3d at

Internet

as

a

marketing

tool

exacerbates the likelihood of confusion, given the fact that
entering a web site takes little effort -- usually one click
from a linked site or a search engine’s list.” (alteration and
quotation marks omitted)).
Defendants contend that, under the Kibler standard, this
factor favors them because the parties share use of social media
platforms for marketing purposes.
was neutral.
parties’

Kibler found that this factor

It did not favor the defendant.

target

consumers

and

marketing

Although the

channels

overlapped,

they overlapped as to users of popular, third-party websites
that were widely used.
Kibler,

there

was

See

nothing

Kibler, 843 F.3d

narrow,

focused,

or

at 1080.

In

particularized

about the shared target consumers and marketing channels that
might have made consumer confusion more likely.

See id.

Here, the common target consumers shared by Ducks Unlimited
and Boondux are a niche audience, people interested in hunting,
fishing, and related outdoor activities, not simply users of
popular, third-party websites.
and particularized.
consumers

through

The overlap is narrow, focused,

Both parties have
some

of

the
93

same

marketed to the

tradeshows,

a

same

marketing

channel

that

is

also

narrow,

focused,

and

particularized.

Although the shared use of the widely-used websites Facebook,
Instagram,

and

Twitter

for

marketing

purposes

might

not

be

significant if that were the only overlap the parties shared,
the

overlap

between

Ducks

Unlimited’s

and

Boondux’s

particularized consumer audiences is highly significant.
Plaintiff has proven that the Ducks Unlimited and Boondux
have similar marketing approaches.

This factor favors finding a

likelihood of confusion.
f.

Likely Degree of Purchaser Care

“Generally, in assessing the likelihood of confusion to the
public, the standard used by the courts is the typical buyer
exercising ordinary caution.”

Homeowners, 931 F.2d at 1111.

However, when a buyer has expertise or is otherwise
more sophisticated with respect to the purchase of the
services at issue, a higher standard is proper.
Similarly, when services are expensive or unusual, the
buyer can be expected to exercise greater care in her
purchases. When services are sold to such buyers,
other things being equal, there is less likelihood of
confusion.
Id.

A key consideration is whether consumers are likely to be

confused

about

the

affiliation

between

two

companies.

See

Therma-Scan, 295 F.3d at 638; Champions Golf Club, Inc. v. The
Champions Golf Club, Inc., 78 F.3d 1111, 1121 (6th Cir. 1996).
This

factor

is

“less

significant

94

than,

or

largely

dependent

upon, the similarity of the marks at issue.”

Daddy’s, 109 F.3d

at 286.
The

overlapping

Boondux

market

accessories
goods.

--

like

products
e.g.,

that

both

t-shirts,

keychains

and

Ducks

hats,

can

Unlimited

decals,

koozies

--

and

are

and

other

consumer

No evidence suggests that typical buyers of the parties’

consumer goods are likely to be sophisticated or have special
expertise in discriminating among those goods.
931 F.2d at 1111.

See Homeowners,

Many of the common consumer goods tend to be

in the $4-to-$35 price range and are comparably priced.
consumer goods are not especially expensive or unusual.

The

See id.

Typical buyers of the goods are not likely to be discriminating
and are more likely to be confused about whether Boondux is
affiliated with Ducks Unlimited than if the goods were expensive
or unusual.
that

can

Of critical importance, the likelihood of confusion

be

inexpensive

expected

and

due

commonplace

to

low

goods

customer
in

care

question

is

as

to

the

exacerbated

because the Boondux Logo is so similar to the DU Logo.

Cf.

Daddy’s, 109 F.3d at 286 (“[C]onfusingly similar marks may lead
a purchaser who is extremely careful and knowledgeable about the
instrument that he is buying to assume nonetheless that the
seller is affiliated with or identical to the other party.”).
Defendants
“Boondux”

on

argue

Boondux’s

that

the

website
95

multiple
and

on

uses

of

signage

at

the

name

tradeshows

“indicates

that

a

typical

buyer

exercising

ordinary

care

is

unlikely to believe he had purchased a Ducks Unlimited product
when he purchases a Boondux product.”

(ECF No. 159 at 86.)

Although a consumer shopping on Boondux’s website or at its
booth at a tradeshow is likely to be aware that he or she is
dealing

with

an

entity

called

“Boondux”

rather

than

Ducks

Unlimited directly, the use of Boondux’s name in those settings
does nothing to mitigate the likelihood that a consumer might
nevertheless

believe

that

Boondux

is

affiliated

with

Ducks

Unlimited, a form of confusion no less actionable under the
Lanham Act.
disclaimer

As discussed above, Defendants have not placed a
of

affiliation

with

Ducks

Unlimited

on

Boondux’s

website, and there is no evidence of any disclaiming activity by
Boondux at tradeshows.
website.

Boondux is not described anywhere on its

Defendants have not taken steps to mitigate the risk

of confusion by ordinary consumers shopping at those points of
sale.
Defendants argue that testimony at trial established there
are other reasons consumers have, on occasion, become interested
in Ducks Unlimited-branded goods.

For example, one particular

apparel item displayed pictures of puppies.

(ECF No. 161 at 8.)

These anecdotal examples underscore that many consumers of Ducks
Unlimited-branded goods are likely to be less careful.

96

Typical buyers exercising ordinary caution when purchasing
the

goods

at

issue

purchasing care.

are

likely

to

exercise

a

low

degree

of

This factor favors finding a likelihood of

confusion.
g.
“If

a

confusion,

Defendants’ Intent in Selecting Mark

party
that

chooses
fact

a

alone

mark
may

with
be

inference of confusing similarity.”
1111.

the

intent

sufficient

to

of

causing

justify

an

Homeowners, 931 F.2d at

“Circumstantial evidence of copying, particularly ‘the

use of a contested mark with knowledge of the protected mark at
issue,’ is sufficient to support an inference of intentional
infringement where direct evidence is not available.”

Therma-

Scan, 295 F.3d at 638-39 (quoting Champions Golf, 78 F.3d at
1121).
Although

“the

presence

of

intent

can

constitute

strong

evidence of confusion,” the “lack of intent by a defendant is
largely irrelevant in determining if consumers likely will be
confused as to source.”
marks omitted).

Daddy’s, 109 F.3d at 287 (quotation

“Intent therefore is an issue whose resolution

may benefit only the cause of a senior user, not of an alleged
infringer.”

Id.

As discussed above, the Court has found that, when Sutton
created the Boondux Logo, he had access to and relied on the DU
Logo while designing the Boondux Logo.
97

Defendants’ used the

Boondux Logo with full knowledge of the DU Logo’s existence.
That

evidence

of

copying

gives

rise

to

the

Defendants intended to infringe the DU Logo.

inference

that

See Therma-Scan,

295 F.3d at 638-39.
Citing
Circuit’s
copying

Groeneveld,

trademark
per

confusion.’”
514).)

se

but

law,

Defendants
the

about

argue

intent

copying

that,

element
that

is

under

this

“‘not

engenders

about

consumer

(ECF No. 161 at 9 (quoting Groeneveld, 730 F.3d at

Defendants contend that “for the factor of intent to

weigh in favor of Ducks Unlimited, it must prove that Defendants
intended to deceive or confuse customers when it adopted and
began use of the [Boondux Logo] in a way that would improperly
benefit from any goodwill contained in the [DU Logo].”
In

Groeneveld,

the

Sixth

Circuit

addressed

the

standard for proving intent in a trade dress action.
at 511.

(Id.)
proper

730 F.3d

The Court held that the appropriate standard is “not

the intent to copy but rather the intent to deceive or confuse.”
Id. at 514.

Groeneveld discussed the factor of intent in the

context of “trademark law” generally rather than the law of
trade dress specifically.

See id. at 511-16.

Although Groeneveld spoke of trademark law generally, the
Sixth Circuit appears to have limited Groeneveld to trade dress
actions.

Following

continued

to

repeat

Groeneveld,
and

Sixth

reinforce
98

Circuit

the

decisions

standard

for

have

intent

articulated

by

decisions

like

Therma-Scan.

See,

e.g.,

Progressive, 856 F.3d 416, 435-36; Innovation Ventures, LLC v.
N2G Distrib., Inc., 763 F.3d 524, 535-36 (6th Cir. 2014).
Progressive

court

explained

that

“knowledge

of

a

The

trademark,

alone, will not support a finding of intent to confuse if other
circumstances
infringement.”

show

that

the

defendant

856 F.3d at 436.

believed

there

was

no

The Progressive court found

that the plaintiff’s evidence of intent was equivocal where the
evidence showed that the defendant’s employees acknowledged the
existence of the plaintiff’s mark but did not believe that the
defendant’s use of a contested mark would result in a likelihood
of

confusion

because

“many

companies

used

similar

marks

because the products appear[ed] substantially different.”

and

Id.

As discussed above, the evidence supports a finding that
Defendants used the Boondux Logo with knowledge of the DU Logo.
There is no positive evidence that Sutton believed there was no
infringement in Defendants’ doing so.

Unlike the defendant’s

employees in Progressive, who testified that they knew of the
plaintiff’s mark but believed that use of the contested mark was
not infringing, Defendants contend that there is no evidence
that Sutton knew of the DU Logo or relied on it while designing
the Boondux Logo, a contention the Court has rejected.

99

An inference of intentional infringement by Defendants is
supported

by

the

evidence.

This

factor

favors

finding

a

likelihood of confusion.
h.
“Inasmuch

Likelihood of Expansion of Product Lines

as

a

trademark

owner

is

afforded

greater

protection against services that directly compete or are in the
same channels of trade, a ‘strong possibility’ that either party
will

expand

his

business

to

compete

with

the

other

or

be

marketed to the same consumers will weigh in favor of finding
that the present use is infringing.”
1112.

“[A]n

affirmative

Homeowners, 931 F.2d at

finding

will

provide

a

strong

indication that the parties’ simultaneous use of the marks is
likely to lead to confusion, while a negative finding is not a
strong indication to the contrary.”

Daddy’s, 109 F.3d at 287

(quotation marks omitted).
Sutton testified about the likelihood that Boondux might
expand

into

approached

brick-and-mortar
Sutton

products.

about

Boondux’s

retail

the

stores.

possibility

website

has

a

of

Retailers
carrying

“Retailers”

have

Boondux

page

that

encourages retailers to contact Boondux about the possibility of
carrying

its

products

retailers

to

currently

carried

nationwide.

do

and

encourages

so.

Ducks

by

hundreds

consumers

Unlimited-branded
of

retailers

of

to

ask

local

products
varying

are
sizes

Given that Ducks Unlimited and Boondux target the
100

same

consumers

prospective

and

offer

expansion

closely

would

related

goods,

exacerbate

any

Defendants’

likelihood

of

confusion that presently exists and create new opportunities for
confusion.
Defendants represent that they are unlikely to expand the
Boondux

brand

contend

that

into

the

brick-and-mortar

“Sutton

has

not

retail

meaningfully

space.

They

pursued

those

opportunities due to the cost and complications associated with
moving into the retail space.”
Those
Sutton

representations

described

possible.”

(ECF No. 159 at 87-88.)

do

Boondux’s

not

accord

prospective

with

the

expansion

evidence.
as

“very

See Homeowners, 931 F.2d at 1112 (noting that a

“strong possibility” of expansion is legally significant).
“Retailers”

page

on

Boondux’s

website

invites

The

interested

retailers to contact Boondux and promises, “When we are ready to
offer

our

First!”

product
Although

line

to

Sutton

retailers

testified

you

about

will

be

various

contacted
logistical

considerations that factor into a decision to expand into the
brick-and-mortar

setting,

he

admitted

that

he

had

previously

testified in his deposition that his current lack of interest in
retail is “due to mainly the litigation” in this case.
Under this factor, Boondux’s prospective expansion need not
be absolutely certain; there need only be a strong possibility.

101

Sutton’s testimony confirms that there is.

This factor favors

finding a likelihood of confusion.
i.

Overall Evaluation of Factors

Having considered each of the eight Frisch’s factors, the
“ultimate question remains whether relevant consumers are likely
to believe that the products or services offered by the parties
are affiliated in some way.”

Homeowners, 931 F.2d at 1107.

There is a strong likelihood of confusion among consumers
shopping on Boondux’s website or at its booth at tradeshows.
The “most significant” facts that drive that conclusion are that
the DU Logo is a strong mark and that the Boondux Logo is very
similar to that strong mark.

The Sixth Circuit has instructed

that the “most important Frisch[’s] factors are similarity and
strength of [plaintiff’s] mark.”

Maker’s Mark, 679 F.3d at 424

(quotation marks omitted) (finding likelihood of confusion where
strength and similarity-of-marks factors favored plaintiff); cf.
Progressive, 856 F.3d at 436 (finding no likelihood of confusion
where

strength

defendant).

and

similarity-of-marks

factors

favored

Here, there is a significant risk that consumers

will mistake (and have mistaken) the Boondux Logo for the DU
Logo

and

conclude

that

Boondux

is

affiliated

with

Ducks

Unlimited or that Ducks Unlimited otherwise sponsors or approves
of Boondux.

Even a careful, observant consumer who happens to

notice the antler and fishhook elements in the Boondux Logo
102

might reasonably believe that Ducks Unlimited is allowing one of
its licensees or affiliates to exercise a degree of creative
license with the DU Logo for marketing purposes.

The risk is

not merely that consumers might be reminded of the DU Logo when
they

see

the

Boondux

Logo,

see

Groeneveld,

730

F.3d

at

519

(citing McCarthy, supra, § 23:9), but that such consumers might
believe that Ducks Unlimited stands behind Boondux.
Consideration of additional factors only reinforces that
conclusion.

The substantial overlap in kinds of consumer goods

offered by the parties and the common consumers targeted by each
increase the likelihood of confusion.
into

brick-and-mortar

retail

space,

Should Boondux expand
a

strong

possibility,

potential incidents of confusion will increase.

Although not

dispositive of the inquiry, the absence of any disclaimer of
affiliation
activity

on

at

confusion

Boondux’s

tradeshows

does

occur,

website

serves
it

or

to

is

evidence

ensure

that,

unlikely

to

of

disclaiming

when
be

consumer

dispelled.

Defendants have been content to allow consumers to “draw their
own conclusions on who Boondux is.”

That posture is consistent

with the evidence giving rise to an inference of intentional
infringement by Defendants.
disclaimers

of

some

kind,

Even were Defendants to provide
because

the

goods

at

issue

are

inexpensive and commonplace, consumers are likely to exercise a

103

low degree of care in perceiving whether Boondux is related to
Ducks Unlimited.
The only factor that does not favor a finding of likelihood
of confusion is the evidence-of-actual-confusion factor.

For

the reasons discussed above, that factor is neutral and is not
significant in analyzing confusion here.
Because there is a likelihood of confusion among consumers
of Boondux’s products based on Defendants’ use of the Boondux
Logo, Defendants’ use of that logo has infringed the DU Logo.
As sole owner and paid employee of Boondux and as one personally
involved

in

authorizing

Boondux

Logo,

Sutton

infringing activity.

and
is

directing
personally

Boondux’s
liable

use

for

of

the

Boondux’s

See Ohio State Univ. v. Skreened Ltd., 16

F. Supp. 3d 905, 921 (S.D. Ohio 2014); see also Simmons v. Cook,
701

F.

Supp.

2d

965,

990

(S.D.

Ohio

2010)

(“[A]

corporate

officer who is the ‘sole shareholder, officer, and director of
the corporate infringer is personally liable.
does

not

hinge

upon

the

piercing

of

(quoting McCarthy, supra, § 25:24)).

the

Such liability

corporate

veil.’”

Plaintiff prevails on its

Trademark Infringement and False Designation Claims.
C.

Trademark Dilution Claim
1.

General Legal Standards

Plaintiff’s
Trademark

Trademark

Dilution

Dilution

Revision

Act
104

Claim
(the

arises

“TDRA”),

under
15

the

U.S.C.

§ 1125(c).

Under the TDRA, “the owner of a famous mark that is

distinctive . . . shall
another

person

who,

at

be

entitled

any

time

to

after

an

injunction

the

owner’s

against
mark

has

become famous, commences use of a mark or trade name in commerce
that is likely to cause dilution by blurring . . . of the famous
mark, regardless of the presence or absence of actual or likely
confusion,

of

competition,

15 U.S.C. § 1125(c)(1).

or

of

actual

economic

injury.”

Dilution by blurring is “association

arising from the similarity between a mark or trade name and a
famous

mark

that

impairs

the

distinctiveness

mark.”

of

the

famous

15 U.S.C. § 1125(c)(2)(B).

To sustain a claim under the TDRA, a plaintiff must prove
five

elements:

The

(2) distinctive.

“senior

Use

of

mark

the

must

junior

be
mark

(1) famous;
must

(3) be

and
in

commerce; (4) have begun subsequent to the senior mark becoming
famous; and (5) cause dilution of the distinctive quality of the
senior mark.”

AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 802

(6th Cir. 2004).
2.

Analysis
a.

Fame of the DU Logo

“Whether a mark is ‘famous’ is the threshold issue in a
trademark dilution claim.”

Maker’s Mark Distillery, Inc. v.

Diageo N. Am., Inc., 703 F. Supp. 2d 671, 697 (W.D. Ky. 2010).
Under the TDRA, “a mark is famous if it is widely recognized by
105

the

general

consuming

public

of

the

United

States

as

a

designation of source of the goods or services of the mark’s
owner.”

15 U.S.C. § 1125(c)(2)(A).

Statutory factors a court

may consider in assessing a mark’s fame include:
(i)

The duration, extent, and geographic reach of
advertising and publicity of the mark, whether
advertised or publicized by the owner or third
parties.

(ii)

The amount, volume, and geographic extent of
sales of goods or services offered under the
mark.

(iii)

The extent of actual recognition of the mark.

(iv)

Whether the mark was registered under the Act
of March 3, 1881, or the Act of February 20,
1905, or on the principal register.

Id.
The TDRA’s protections apply “only to a small category of
extremely strong marks.”

Maker’s Mark, 703 F. Supp. 2d at 698.

The class of mark holders protected is “far narrower” than is
the

class

protected

by

“traditional

trademark

protections.”

Moore v. Weinstein Co., LLC, No. 3:09-CV-00166, 2012 WL 1884758,
at *41 (M.D. Tenn. May 23, 2012) (quotation marks omitted).
That

is

because

the

TDRA

“afford[s]

expansive

trademark

protections” and “permits the owner of a qualified, famous mark
to enjoin uses throughout commerce, regardless of the absence of
competition or confusion.”

Id.

Marks considered famous enough

to be accorded protection under the TDRA include those owned by

106

such brands as Buick, DuPont, Kodak, Budweiser, Camel, Nissan,
Nike, Pepsi, Audi, and Victoria’s Secret.

See Maker’s Mark, 703

F. Supp. 2d at 698; Bd. of Regents, Univ. of Tex. Sys. ex rel.
Univ. of Tex. at Austin, 550 F. Supp. 2d 657, 674, 679 (W.D.
Tex. 2008).
name.”

“In other words, the mark must be a household

Bd. of Regents, 550 F. Supp. 2d at 674.

The TDRA does not protect marks that possess only “niche”
fame.

See Maker’s Mark, 703 F. Supp. 2d at 697.

In Board of

Regents, the University of Texas’s (“UT”) distinctive longhorn
logo was found to possess only niche fame despite evidence that
UT

football

and

basketball

games

are

regularly

nationally

televised on major television networks with national viewership
in championship games sometimes exceeding 35 million and that UT
had

held

the

record

among

royalties in a single year.

universities

for

most

licensing

550 F. Supp. 2d at 677-78.

That

evidence amounted to niche fame because it did not establish
that one who is not a college sports fan would recognize the
longhorn logo as associated with UT.

Id. at 678.

held, “Simply because UT athletics have achieved

The court
a level of

national prominence does not necessarily mean that the longhorn
logo is so ubiquitous and well-known to stand toe-to-toe with
Buick or KODAK.”

Id.

The DU Logo likewise does not stand toe-to-toe with Buick
or Kodak.

Plaintiff has presented evidence that, in 2012, Ducks
107

Unlimited’s membership (including youth) reached almost 600,000
members

and

that

its

magazine

distribution

reached

530,000.

Plaintiff has proven that over 5 million unique devices access
Ducks

Unlimited’s

website

annually,

that

Ducks

Unlimited

currently has over 1,000,000 fans on Facebook and over 400,000
followers on Instagram, and that viewership of Ducks Unlimited’s
television show has climbed to over 3.5 million in the most
recent season.

Those figures are

impressive when viewed in

isolation, but they are far exceeded by the level of public
recognition UT and its longhorn logo enjoy.

If the longhorn

logo falls short of the degree of fame required for protection
under the TDRA, the DU Logo does so a fortiori.17
Ducks

Unlimited’s

corporate

officers

acknowledged

Ducks Unlimited targets a specific niche audience.

that

Both its

target members and its target consumers include those interested
in

wetlands

conservation,

generally.

Amy

hunting,

Batson

testified

fishing,

and

the

that

Ducks

outdoors

Unlimited’s

advertisers “know they reach a very specific niche audience”
through Ducks Unlimited’s magazine and website.
81.)
budgets

Batson
and

explained
requir[e]

that
a

advertisers,

measurement

17

of

who

(ECF No. 152 at
have

return

“limited
on

their

Only evidence of the DU Logo’s fame as of January 2012 is
relevant for purposes of Plaintiff’s Trademark Dilution Claim,
see 15 U.S.C. § 1125(c)(1), but evidence of present public
recognition of the DU Logo is also insufficient to support
protection under the TDRA.
108

investment,”

have

“specific

products”

with

which

“they

know

they’re reaching a very target audience” among readers of Ducks
Unlimited’s magazine.

(Id.)

Plaintiff attempts to distance

itself from that testimony, arguing that magazine readership is
not

exclusively

advertising

limited

expenditure

to

the

evidence

target
carries

audience,

but

substantial

the

weight.

Plaintiff has not established that one unaffiliated with the
hunting, fishing, and outdoorsman community would recognize the
DU Logo as associated with Ducks Unlimited.

See Bd. of Regents,

550 F. Supp. 2d at 678.
The DU Logo is a strong mark that is worthy of protection
against

trademark

competition.

infringement

and

other

forms

of

unfair

It is not, however, a famous mark under the TDRA.
b.

Conclusion

Because the DU Logo is not a famous mark under the TDRA,
Plaintiff cannot prevail on its Trademark Dilution Claim.

The

Court need not consider evidence tending to prove the remaining
elements of that claim.
D.

Remedies
1.

Damages, Profits, and Other Financial Relief
a.

General Legal Standards

Under the Lanham Act, a prevailing plaintiff on a trademark
infringement

or

false

designation

claim

“shall

be

entitled, . . . subject to the principles of equity, to recover
109

(1) defendant’s

profits,

plaintiff,

(3) the

§ 1117(a).18
cause

the

and

(2) any
costs

of

damages
the

sustained

action.”

by

15

the

U.S.C.

“The court shall assess such profits and damages or
same

to

be

assessed

under

its

direction.”

Id.19

Plaintiff asks for an award of Defendants’ profits, but not an
award for damages.
“In assessing profits the plaintiff shall be required to
prove defendant’s sales only; defendant must prove all elements
of cost or deduction claimed.”

Id.

“It is not the plaintiff’s

burden to prove the profits with exactness because the statute
places the burden on the defendant once the plaintiff comes
forward with proof of the defendant’s gross sales.”

Wynn Oil

Co. v. Am. Way Serv. Corp., 943 F.2d 595, 605 (6th Cir. 1991)
(“Wynn Oil II”).

“[A]n award of profits may be warranted under

various rationales, such as unjust enrichment, deterrence, and
compensation.”

Laukus v. Rio Brands, Inc., 391 F. App’x 416,

424 (6th Cir. 2010).

18

The “court in exceptional cases may award reasonable attorney
fees to the prevailing party,” 15 U.S.C. § 1117(a), but not
“where the trademark infringement was not malicious, willful,
fraudulent, or deliberate,” U.S. Structures, Inc. v. J.P.
Structures, Inc., 130 F.3d 1185, 1192 (6th Cir. 1997).
Plaintiff has not moved for costs or attorney’s fees.
19

A plaintiff’s recovery is also subject to the provisions of
sections 1111 and 1114 of Title 15. Neither side suggests that
those provisions are implicated here.
110

“If the court shall find that the amount of the recovery
based on profits is either inadequate or excessive the court may
in its discretion enter judgment for such sum as the court shall
find to be just, according to the circumstances of the case.”
15

U.S.C.

§ 1117(a).

compensation

and

not

“Such
a

sum . . . shall

penalty.”

Id.

“In

constitute

weighing

the

equities,” a court may consider such factors as “‘(1) whether
the defendant had the intent to confuse or deceive, (2) whether
sales have been diverted, (3) the adequacy of other remedies,
(4) any unreasonable delay by the plaintiff in asserting his
rights,

(5) the

public

interest

in

making

the

misconduct

unprofitable, and (6) whether it is a case of palming off.’”
Laukus, 391 F. App’x at 424 (quoting Quick Techs., Inc. v. Sage
Grp. PLC, 313 F.3d 338, 348-49 (5th Cir. 2003) (holding that the
district court did not err in considering those factors).

“The

trial court’s primary function is to make violations of the
Lanham Act unprofitable to the infringing party.”

Wynn Oil II,

943 F.2d at 606-07 (quotation marks omitted).
Under
copyright

the

Copyright

infringement

Act,
claim

a
may

prevailing
recover

plaintiff
either

on

a

(a) “the

copyright owner’s actual damages and any additional profits of
the infringer” or (b) “statutory damages.”

17 U.S.C. § 504(a).

Under the first option, the “copyright owner is entitled to
recover the actual damages suffered by him or her as a result of
111

the infringement, and any profits of the infringer that are
attributable to the infringement and are not taken into account
in computing the actual damages.”
establishing

the

infringer’s

17 U.S.C. § 504(b).

profits,

the

copyright

“In

owner

is

required to present proof only of the infringer’s gross revenue,
and the infringer is required to prove his or her deductible
expenses

and

the

elements

of

profit

other than the copyrighted work.”
In

the

alternative,

the

attributable

to

factors

Id.

Copyright

Act

affords

a

second

option:
[T]he copyright owner may elect, at any time before
final judgment is rendered, to recover, instead of
actual damages and profits, an award of statutory
damages for all infringements involved in the action,
with respect to any one work, for which any one
infringer is liable individually, or for which any two
or more infringers are liable jointly and severally,
in a sum of not less than $750 or more than $30,000 as
the court considers just.
17 U.S.C. § 504(c)(1).
was

committed

If “the court finds, that infringement

willfully,

the

court

in

its

discretion

may

increase the award of statutory damages to a sum of not more
than

$150,000.”

17

U.S.C.

§ 504(c)(2).

“Infringement

is

willful when the infringer has knowledge that . . . his conduct
constitutes copyright infringement.”

Calibrated Success, Inc.

v. Charters, 72 F. Supp. 3d 763, 775 (E.D. Mich. 2014).

“In a

case where the infringer sustains the burden of proving, and the
court finds, that such infringer was not aware and had no reason
112

to believe that his or her acts constituted an infringement of
copyright, the court in its discretion may reduce the award of
statutory damages to a sum of not less than $200.”

17 U.S.C.

§ 504(c)(2).
The
remedies
public

“Lanham
for

the

Act
two

policies.”

and

the

Copyright

distinct

Sellers,

411

Act

injuries
F.

Supp.

and

provide

separate

serve

different

2d

at

921

(citing

Microsoft Corp. v. Tierra Computer, Inc., 184 F. Supp. 2d 1329,
1331 (N.D. Ga. 2001) (“Tierra”); Nintendo of Am., Inc. v. Dragon
Pacific Int’l, 40 F.3d 1007, 1011 (9th Cir. 1994)).
defendant

commits

violations

under

both

acts,

a

Where a

plaintiff’s

request for remedies under both acts “does not violate the rule
against double recoveries.”

Tierra, 184 F. Supp. 2d at 1331;

see also Sellers, 411 F. Supp. 2d at 921; Microsoft Corp. v.
Compusource Distrib., Inc., 115 F. Supp. 2d 800, 811 (E.D. Mich.
2000).
b.

Analysis

At trial, Plaintiff presented two exhibits,

collectively

showing total gross sales figures for all Boondux Logo-branded
products that Boondux had sold as of the date of the most recent
discovery request.20

(ECF No. 154 at 30-33; Tr. Ex. Nos. 71

(assorted products sales records), 72 (redacted duck call sales

20

The most recent discovery request was in February 2017.
No. 158 at 55 n.18.)
113

(ECF

records).)

Sutton

analytic software.

personally

prepared

both

(ECF No. 154 at 30-32.)

exhibits

using

Sutton was asked by

Plaintiff’s counsel whether the total sales of Boondux Logobranded merchandise exceeded $400,000.

(Id. at 44.)

answered, “If this math is correct, then, yes, ma’am.”

Sutton
(Id.)

Trial Exhibit 71 lists numerous Boondux products and lists
the total gross sales figure for each product.
“Official Logo Decal,” is listed twice.

One product, the

The total gross sales

figure for all products, not counting the duplicate Official
Local Decal, is $403,716.24.
Trial Exhibit 72 lists numerous versions of Boondux duck
calls.

In that exhibit, the gross sales figures are listed for

two types of duck calls, each marked with the Boondux Logo.
(See ECF No. 154 at 33.)

The total gross sales figure for those

two products is $399.80.

When combined with the total gross

sales figure from Trial Exhibit 71 (not counting the duplicate
item), the total rises to $404,116.04.

The Court finds that the

total gross sales figure for products marked with the Boondux
Logo as of the most recent discovery request is $404,116.04.
Absent

proof

Plaintiff

is

of

Defendants’

deductible

presumptively

entitled

expenses
to

or

costs,

receive

those

infringement revenues.
Defendants

challenge

the

reliability

of

the

total,

specifically the total gross sales figure derived from Trial
114

Exhibit 71.

Defendants contend that “many items” in Exhibit 71

“are duplicated and include different numbers.”
30.)
the

(ECF No. 161 at

Only one item in Exhibit 71 is duplicated.
$404,116.04

figure,

the

Court

has

not

In calculating
included

that

duplicate.
Defendants also contend that the testimony did not clearly
establish

that

Exhibit

71

reflects

products bearing the Boondux Logo.

gross

sales

figures

for

They contend that Sutton

described Exhibit 71 as “numbers and figures that [his] attorney
asked [Sutton] to provide . . . him regarding Boondux sales.”
(ECF No. 154 at 30.)

Defendants argue that Sutton’s testimony

did not “connect that the numbers and figures relate to Ducks
Unlimited’s statement regarding its request for gross sales.”
(ECF No. 161 at 31.)
The

trial

testimony

is

to

the

contrary.

Plaintiff’s

counsel asked Sutton: “In our discovery requests in this case,
Mr.

Sutton,

we

asked

you

for

the

gross

sale

numbers

everything that you’ve sold marked with the Boondux logo.

of
I’m

going to show you some documents and ask if you can identify
these.”

(ECF No. 154 at 30.)

Sutton answered: “Yes, ma’am.

After reviewing the documents,
These are the numbers and figures

that my attorney asked me to provide to him regarding, yeah,
that I needed to, I guess, go and dive in and figure out and
provide him regarding Boondux sales.”
115

(Id.)

Sutton agreed with

Plaintiff’s

counsel’s

characterization

of

the

exhibit.

Defendants’ argument is not well taken.
Defendants argue that they have proven deductible expenses
and costs.

At trial, Defendants presented several tax returns

for Boondux for tax years 2013 through 2015.

(ECF No. 154 at

110-111, 114, 118; Tr. Ex. Nos. 82 (2013 and 2014 returns), 84
(2015 return).)

According to those returns, in 2013, Boondux

had total expenses of $27,214.00.
002934 ln. 28.)
$30,448.00.
totaling

(Tr. Ex. No. 82 at CS&B

In 2013, Boondux had cost of goods totaling

(Id. ln. 4.)

$87,535.00.

In 2014, Boondux had cost of goods

(Id.

at

CS&B

002939

ln.

2.)

Those

expenses and costs total $145,197.00.
In 2015, Boondux stated costs for various items.

Starting

in that year, Boondux began selling products displaying designs
other

than

the

Boondux Logo).
much

of

Boondux

Logo

(and

other

(ECF No. 154 at 45.)

Boondux’s

business

is

than

the

Signature

At trial, when asked how

attributable

to

merchandise

displaying the Boondux Logo and how much is attributable to
merchandise displaying other logos, Sutton answered, “Well, I do
know that; but I’d have to produce those documents, again, you
know, do the analytics.”

(Id.)

Defendants did not present

evidence of the breakdown of costs and expenses attributable to
infringing products and costs and expenses attributable to noninfringing products.
116

The

$404,116.04

in

total

gross

revenues

of

infringing

products to which Plaintiff is presumptively entitled must be
reduced by Boondux’s costs and expenses of $145,197.00 from 2013
and 2014.
of

The evidence demonstrates that, in those years, 100%

Boondux’s

products

were

infringing

products

and

thus

all

costs and expenses during those years are properly deductible
from

Boondux’s

total

gross

revenues

That calculation yields $258,919.04.

of

infringing

products.

The Court cannot further

reduce that figure based on Boondux’s costs from 2015 because
Defendants

failed

to

prove

the

portion

attributable to infringing products alone.

of

those

costs

It is Defendants’

burden to prove costs and expenses once Plaintiff has proven
gross revenues.

See 15 U.S.C. § 1117(a); 17 U.S.C. § 504(b);

see also Wynn Oil II, 943 F.2d at 606 (citing Mishawaka Rubber &
Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942) (“There
may well be a windfall to the trade-mark owner where it is
impossible to isolate the profits which are attributable to the
use of the infringing mark.

But to hold otherwise would give

the windfall to the wrongdoer.”)); cf. Balsley v. LFP, Inc., 691
F.3d 747, 769 (6th Cir. 2012) (“[I]t has been and remains the
defendant’s burden to apportion the profits among its costs and
other elements that gave rise to its profits, proving causally
why

certain

defendant’s

profits

are

infringement

or
of

are
the
117

not

attributable

plaintiff’s

to

the

copyrighted

material.”).

Plaintiff

is

presumptively

entitled

to

total

profits of $258,919.04 for infringing Boondux merchandise.
Having

assessed

presumptively
Court

must

the

entitled

consider

on

profits

to

Plaintiff’s

whether,

in

which

Plaintiff

is

claims,

the

prevailing

weighing

the

equities,

that

figure should be adjusted for purposes of Plaintiff’s Trademark
Infringement and False Designation Claims.21

Defendants contend,

inter alia, that Sutton did not intend to deceive consumers into
thinking that Boondux was associated with Ducks Unlimited, that
Boondux did not benefit from or intend to benefit from any such
association,

and

that

there

is

no

evidence

that

sales

were

diverted from Ducks Unlimited to Boondux, that Boondux engaged
in “palming off,” that Ducks Unlimited’s membership has been
negatively affected by Boondux, or that sales of DU Logo-branded
merchandise have declined.

(ECF No. 161 at 22, 27, 29.)

Defendants offer persuasive reasons why the Court should
not

find

that

the

“amount

is . . . inadequate.”

15

of

the

U.S.C.

recovery
§ 1117(a).

based

on

Other

profits
factors,

however, counsel that the Court should not find that figure to
be “excessive.”

See id.

Nothing warrants departure from Wynn

Oil II’s instruction that the “trial court’s primary function is
to

make

violations

of

the

Lanham

21

Defendants do not contend that
$258,919.04 figure for purposes
Infringement Claim.
118

Act

unprofitable

to

the

the Court may adjust the
of Plaintiff’s Copyright

infringing party.”
profits

serves

unprofitable,
bringing

the
and

this

943 F.2d at 606-07.
public
Plaintiff

action.

See

interest
did

An award of infringing
in

not

Laukus,

making

infringement

unreasonably
391

F.

delay

App’x

at

in
424.

Defendants contend that they did not intend to harm Plaintiff,
but they point to no meritorious conduct on their part that
might have mitigated the effects of their infringing conduct.
Any lack of evidence of harm to Plaintiff is less significant
here than it otherwise might be given that Plaintiff does not
seek damages, only infringing profits.
profits
only.

are

unclear.

Plaintiff

This is not a case where

asks

for

infringing

profits

Defendants offer no compelling reason why they should be

entitled

to

keep

those

infringing

profits.

An

award

of

$258,919.04 to Plaintiff for infringing profits is equitable.22
The Court must determine the statutory damages to which
Plaintiff is entitled for purposes of the Copyright Infringement
Claim should Plaintiff elect that remedy.

Defendants infringed

only one of Ducks Unlimited’s copyrighted works, but Defendants
22

That award amount represents Defendants’ infringing profits as
of the latest date that Defendants produced total gross sales
figures for all Boondux Logo-branded products, February 2017.
Plaintiff represents that Boondux has not ceased selling Boondux
Logo-branded products.
Plaintiff requests an accounting of
infringing sales from the date of the most recent discovery
production to the date of this decision and contends that it is
entitled to any infringing profits Defendants have earned during
the interim. (ECF No. 158 at 55 n.18.)
Plaintiff must notify
the Court within seven (7) days of the entry of this order if it
elects an accounting and how it seeks to proceed.
119

have

done

so

repeatedly,

selling

displaying the Boondux Logo
ceased

to

do

so

and

of

products

in all 50 states without having

generating

upwards

infringing profits from those sales.
$30,000 is just.

thousands

of

$258,919.04

in

A statutory damages sum of

See 17 U.S.C. § 504(c)(1).

Defendants have not infringed Ducks Unlimited’s copyright
willfully.
that

There is no award of increased statutory damages on

basis.

Plaintiff

“[i]nfringement

is

cites

willful

when

Calibrated,
the

which

infringer

has

held

that

knowledge

that . . . his conduct constitutes copyright infringement.”
F. Supp. 3d at 775.

72

Sutton had access to and copied the DU Logo

when creating the Boondux Logo, but no evidence suggests that
Sutton knew the design he created, which modified aspects of the
DU Logo, would qualify as an infringing work.

It does, but

Sutton did not know that or act “in reckless disregard” of Ducks
Unlimited’s rights.

Id. (quotation marks omitted).

Examples of reckless disregard that rise to the level of
willfulness

include

(a) repeatedly

ignoring

warnings

from

a

copyright holder that defendant’s behavior violates copyright
law,

(b) having

(c) relying

on

a

the

history
fair-use

of

violating

defense

even

copyright

after

a

laws,

court

has

rejected it and entered a consent order forbidding infringing
conduct, (d) engaging in a pattern of unreasonable conduct, or
(e) exhibiting willful blindness to a copyright owner’s rights.
120

Id. (collecting authorities).

There is no clear evidence that

Defendants did any of those things.
warned

Defendants

before

filing

this

Even assuming Plaintiff
action,

one

court

in

assessing willfulness has focused on whether a reasonable person
in defendant’s position would have thought that the challenged
conduct was likely infringing.

See Ohio State, 16 F. Supp. 3d

at

Sutton

921.

Although

mistaken,

might

reasonably

have

believed that, by creatively modifying the DU Logo as he did, he
had designed a logo that would not infringe the DU Logo.23
Plaintiff is entitled to an award of infringing profits in
the amount of $258,919.04 for its prevailing claims.
election,
$30,000

Plaintiff

in

lieu

may

of

take

a
as

profits

statutory
recovery

damages
for

At its
award

of

its

Copyright

Act

authorize

Infringement Claim.
2.

Injunctive Relief
a.

The
district

remedial
courts

General Legal Standards
provisions
to

“grant

of

the

Lanham

injunctions,

according

to

the

principles of equity and upon such terms as the court may deem

23

This finding, that Defendants did not willfully infringe
Plaintiff’s copyright, is not inconsistent with the Court’s
finding of an inference of intentional infringement for purposes
of the Frisch’s factors analysis.
Under that intent factor, a
finding of intent is warranted solely based on a finding that
the defendant copied the plaintiff’s mark. See Therma-Scan, 295
F.3d at 638-39.
To find willfulness, something more is
required.
121

reasonable,”
rights.

to

15

prevent

U.S.C.

violations

§ 1116(a).

of

The

a

trademark

Copyright

holder’s

Act

likewise

authorizes district courts to grant “final injunctions on such
terms

as

it

may

deem

reasonable

infringement of a copyright.”
“A

plaintiff

to

prevent

or

restrain

17 U.S.C. § 502(a).

seeking

a

permanent

injunction

must

demonstrate that it has suffered irreparable injury, there is no
adequate

remedy

hardships

between

at

law,

the

that,

plaintiff

considering
and

the

defendant,

balance
a

of

remedy

in

equity is warranted, and that it is in the public’s interest to
issue the injunction.”
omitted).

Audi, 469 F.3d at 550 (quotation marks

When considering Lanham Act violations, courts have

recognized

that

“irreparable

injury

flows

both

from

the

potential difficulty of proof of plaintiff’s damages, and also
from the impairment of intangible values.”
F.2d at 608 (quotation marks omitted).

Wynn Oil II, 943

“The reality of this

harm is not negated by the absence of damages.”

CFE Racing

Prods., Inc. v. BMF Wheels, Inc., 793 F.3d 571, 596 (6th Cir.
2015).

“For the purpose of an injunction, irreparable

harm

exists in a trademark case when the party seeking the injunction
shows

that

trademark

it

will

because

lose

loss

control

of

over

control

the

over

reputation

one’s

neither calculable nor precisely compensable.”
marks omitted).

of

reputation

its
is

Id. (quotation

The “remedial purpose” of any injunction must
122

be “to restore to the plaintiff the rightful control over its
mark

and

eliminate

defendants’

the

products

likelihood

with

those

of
the

of

confusion

of

plaintiff.”

the
Id.

(quotation marks omitted).
Under the Lanham Act, a court may order that all existing
infringing

articles

including

“labels,

receptacles,

and

“in

the

possession

signs,

prints,

advertisements”

and

of

the

defendant,”

packages,
“all

wrappers,

plates,

molds,

matrices, and other means of making the same,” be “delivered up
and destroyed.”
“the

court

15 U.S.C. § 1118.
may

order

the

Under the Copyright Act,
destruction . . . of

all

copies . . . found to have been made or used in violation of the
copyright owner’s exclusive rights, and of all plates, molds,
matrices, masters . . . or other articles by means of which such
copies . . . may be reproduced.”
b.

17 U.S.C. § 503(b).

Analysis

Plaintiff asks that Defendants be enjoined from further use
of

the

Boondux

Logo.

Defendants

agree

that

a

permanent

injunction restraining them from further use of the Boondux Logo
is

an

appropriate

Plaintiff

will

result

suffer

based

on

irreparable

a

finding

injury

if

of

liability.

Defendants

are

permitted to continue infringing the DU Logo, and an injunction
serves to restore to Ducks Unlimited rightful control over its
mark

and

eliminate

the

likelihood
123

of

confusion

created

by

Defendants’ use of the Boondux Logo.

Defendants do not have a

legitimate interest in being permitted to continue infringing
the DU Logo, and an injunction serves the public interest by
eliminating

the

likelihood

of

confusion

among

consumers.

Defendants are ENJOINED from further use of the Boondux Logo in
commerce.
Plaintiff also asks that all infringing articles be ordered
destroyed.

Defendants do not address that request.

The Court

ORDERS the destruction of all infringing articles currently in
Defendants’

possession

or

that

might

subsequently

come

into

their possession, pursuant to 15 U.S.C. § 1118 and 17 U.S.C.
§ 503(b).
V.

CONCLUSION
For

the

foregoing

reasons,

the

Court

finds

Defendants

liable for copyright infringement, trademark infringement, and
false designation of origin or sponsorship.
Defendants

not

liable

for

trademark

The Court finds

dilution.

Plaintiff

is

entitled to an award of infringing profits in the amount of
$258,919.04

for

its

prevailing

claims.

At

its

election,

Plaintiff may take a statutory damages award of $30,000.00 in
lieu

of

Claim.

profits

as

recovery

for

its

Copyright

Infringement

Plaintiff must notify the Court within seven (7) days of

the entry of this order if it elects to take a statutory damages
award

of

$30,000.00

in

lieu

of
124

profits

for

its

Copyright

Infringement

Claim.

seven (7) days

Plaintiff

must

notify

of the entry of this order

the

Court

within

if it elects an

accounting of Defendants’ infringing sales from the date of the
most recent discovery production to the date of this decision
and how Plaintiff seeks to proceed.

Defendants are ENJOINED

from further use of the Boondux Logo in commerce.

The Court

ORDERS the destruction of all infringing articles currently in
Defendants’

possession

or

that

might

subsequently

come

into

their possession, pursuant to 15 U.S.C. § 1118 and 17 U.S.C.
§ 503(b).

So ordered this 18th day of August, 2017.

/s/_Samuel H. Mays, Jr._____
SAMUEL H. MAYS, JR.
UNITED STATES DISTRICT JUDGE

125