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TWHBEA vs NWHA Summary Judgement



IN THE UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF TENNESSEE

COLUMBIA DIVISION

TENNESSEE WALKING HORSE

BREEDERS AND EXHIBITORS 

ASSOCIATION )

v.

No. 1:05-0088

JUDGE CAMPBELL

NATIONAL WALKING HORSE 

ASSOCIATION 

MEMORANDUM

Pending before the Court is Plaintiffs Motion for Partial Summary Judgment (Docket

No. 24) and Motion for Summary Judgment of Defendant, National Walking Horse Association

(Docket No. 30). For the reasons stated herein, Plaintiffs Motion for Partial Summary Judgment

(Docket No. 24) is GRANTED in part, DENIED in part and MOOT in part. Defendants Motion

for Summary Judgment (Docket No. 30) is DENIED.

Also pending before the Court is National Walking Horse Associations Motion for Oral

Argument on its Motion for Summary Judgment (Docket No. 27). The Motion (Docket No. 27)

is DENIED.

 

FACTS

Plaintiff, Tennessee Walking Horse Breeders and Exhibitors Association

(TWHBEA), has filed its Complaint (Docket No.1) against Defendant, National Walking

Horse Association (NWHA), alleging copyright infringement in violation of 17 U.S.C. 101,

et seq. (the Copyright Act), trademark infringement in violation of 1114(a) of the Lanham

Act, 15 U.S.C 1051, et seq. (the Lanham Act), unfair competition in violation of 1125(a) of

the Lanham Act, trademark dilution in violation of 1125(c) of the Lanham Act, unfair

competition in violation of 47-18-104 of the Tennessee Consumer Protection Act, Tenn. Code

Ann. 47-18-101, et seq. (TCPA), and the common law torts of unfair competition and

intentional interference with business relations.

In 1935, TWHBEA, or its predecessor the Tennessee Walking Horse Breeders

Association of America, created and established a registry (the Registry) to record the

pedigrees of the Tennessee Walking Horse (Docket No. 43 at 1). The Registry contains over 70

years worth of unbroken ancestral lineage records for Tennessee Walking Horses (Docket No.

43 at 1). TWHBEA maintains in its possession the pedigree of every horse registered with it

since 1935, and keeps these pedigrees in two fireproof vaults (Docket No. 43 at 1). Every single

horse that is registered with the TWHBEA has a registration certificate (Registry Certificate)

on file with the TWHBEA showing an unbroken chain since TWHBEA’s founding in 1935

(Docket No. 43 at 2). As of November 13, 2006, TWHBEA had approximately 430,000 horses

in its Registry, giving it a market share of 98% of the registered Tennessee Walking Horses

(Docket No. 43 at 2). TWHBEA issues Registry Certificates based upon a horse’s satisfaction of

selection criteria, including establishment that a horse is a pure-breed Tennessee Walking Horse

(Docket No. 43 at 2).

The original Constitution and Bylaws of the TWHBEA adopted in 1935 set forth rules

that govern eligibility for registration in the TWHBEA Registry (Docket No. 43 at 2). In 1938

TWHBEA, or its predecessor, published a 239 page book entitled The Register of the Tennessee

Walking Horse Breeders Association of America (the 1938 Registry) (Docket No. 39 at 2).

The 1938 Registry included specific criteria for inclusion, including specific color markings on

the legs, body, head, mane and tail (Docket No. 43 at 2). The 1938 Registry included a

copyright notice showing 1938 as the date of first publication and the TWHBEA as the copyright

claimant (Docket No. 39 at 3). The 1938 Registry included information on the lineage of certain

horses, in both chart form and prose (Docket No. 39 at 3).

Over time, TWHBEA’s selection criteria have evolved (Docket No. 43 at 2). For

example, in 1974 TWHBEA researched and discussed the use of photographs of the horses

night eyes, or chestnuts, for purposes of positive Identification and included the photographs in

its application for registration (Docket No. 43 at 2). TWHBEA’s chart of colors and markings

from 1999 includes some different color selections from the 1990 chart, and the 2006 chart

includes different colors from the 1999 chart (Docket No. 43 at 3).

TWHBEA has registered its copyright in the present TWHBEA Registry with the United

States Copyright Office (Docket No. 43 at 3 and Docket No. 1 at Ex. A). TWHBEA’s copyright

notice has appeared on its Applications for Registration continuously since 1979, TWHBEA’s

copyright notice has appeared in it rule books continuously since before 1994, and TWHBEA’s

copyright appears on its Registry Certificates (Docket No. 43 at 3 and Docket No. 33, Ex. 2).

In addition, since June, 1974, TWHBEA has continuously and exclusively used the

service-mark TENNESSEE WALKING HORSE BREEDERS AND EXHIBITORS

ASSOCIATION in interstate commerce, in connection with maintenance of the TWHBEA

Registry, sporting events, and competitions for the Tennessee Walking Horse, and informational

services, printed materials and publications in the field of the Tennessee Walking Horse (Docket

No. 43 at 3). Since May 30, 1992, TWHBEA has continuously and exclusively used the servicemark

TWHBEA in interstate commerce in connection with maintenance of the TWHBEA

Registry, sporting events and competitions for the Tennessee Walking Horse, and informational

services, printed materials and publications in the field of the Tennessee Walking Horse (Docket

No. 43 at 4). Since May, 1992, TWHBEA has continuously and exclusively used the servicemark
TWHBEA and Design (horses head in a circle)(the Design Mark) in interstate
commerce, in connection with maintenance of the TWHBEA Registry, sporting events and

competitions for the Tennessee Walking Horse, and informational services, printed material and

publications used in the field of the Tennessee Walking Horse (Docket No. 43 at 4). Since July,

2002, TWHBEA has continuously and exclusively used the service-marks (a) TENNESSEE

WALKING HORSE BREEDERS AND EXHIBITORS ASSOCIATION (b) TWHBEA, and

(c) the TWHBEA Design Mark (the TWHBEA Marks) in interstate commerce in connection

with on-line informational services, computerized communications services and on-line retail

store services in the field of the Tennessee Walking Horse (Docket No. 43 at 4). The United

States Patent and Trademark Office issued registration of the TWHBEA Design Mark, in

connection with the maintenance of the TWHBEA Registry, on January 31, 1995 (Docket No. 43

at 5). In 1998, NWHA was established to promote the sound, natural gaited horse and eliminate

the practice of soring (Docket No. 39 at 4). NWHA established a registry that provides ancestral

lineage information of the Tennessee Walking Horse (the NWHA Registry) and from which

the NWHA issues certificates of pedigree and ownership registration for Tennessee Walking

Horses (Docket No. 43 at 5). NWHA launched the NWHA Registry on its website in

approximately July, 2004 (Docket No. 43 at 5).

When founded, the NWHA did not possess a database of pedigrees of the Tennessee

Walking Horse (Docket No. 43 at 5). From July, 2004 through December 25, 2005, NWHA’s

website stated that it accepted TWHBEA registration certificates from applicants seeking to

register a horse with the NWHA Registry (Docket No. 43 at 6 and Docket No. 39 at 5). From

July, 2004 through December 25, 2005, the NWHA website stated:

A.  NWHA is now accepting Tennessee Walking Horse Breeders and Exhibitors

Association (TWHBEA) ... registered Walking Horses with current registration

papers for registration with NWHA.

B. Blood typing and parentage verification on horses that are currently

registered with TWHBEA ... will be accepted.

C. A code will be added to every horse that is registered with NWHA that will

denote how each horse entered the registry. (Example: TWHBEA horses will

carry the letter T).

D. Be sure to send copies of both sides of TWHBEA ... registration certificates

with application to register with NWHA.

E. Copies of TWHBEA or CRTWH registration papers MUST accompany

registration.

(Docket No. 43 at 6).

It is undisputed that NWHA’s application for registration contains no space to list a

horses pedigree (Docket No. 43 at 7). It is also undisputed that the sole source from which

NWHA obtains a horses pedigree is from TWHBEA’s Registry Certificates, the Canadian

Registry of the Tennessee Walking Horse (CRTWH) or from canned software that NWHA

purchased for $100.00 (Docket No. 43 at 7 and Docket No. 39 at 5). While it is undisputed that

NWHA accepts TWHBEA Registry Certificates, it is disputed whether NWHA limits its use of

the information contained in the Registry Certificates to the factual ancestral lineage contained

therein (Docket No. 39 at 5-6). For instance, it is undisputed that the NWHA Registry has

copied and denoted unique designations that TWHBEA has historically assigned to its horses,

such as F-38", which designates a horse that was the 38th foundation horse in the TWHBEA

Registry (Docket No. 43 at 8). In addition, TWHBEA registered Tennessee Walking Horse

“After Glo’s” NWHA application lists these markings: “blaze lower lip, sock left hind leg,

fetlock right hind leg,” and “After Glo’s” TWHBEA Registry Certificate states: Near hind sock,

off hind fetlock, lower lip, blaze. It is not the information from “After Glo’s” NWHA

application that was used by NWHA for the horses registration certificate, but rather it is the

information from “After Glow’s” TWHBEA’s Registry Certificate that was used by NWHA

(Docket No. 43 at 8). Furthermore, TWHBEA registered Tennessee Walking Horse “Sons

Suede Karma’s” NWHA application listed these markings: Bald face, sock, mix flax, and its

TWHBEA registry certificate listed these markings: Four stockings, bald, flax mane, white

tail. Similarly, it is the information from the TWHBEA Registry Certificate for Sons Suede

Karma that appeared on the registration certificate issued by NWHA for Sons Suede Karma

(Docket No. 43 at 8). Whether the information copied is protected intellectual property of

TWHBEA or merely unprotected facts is central to the dispute between the parties (Docket No.

39 at 8-9). The parties are also at odds over NWHA’s use of TWHBEA’s Marks. TWHBEA

asserts that NWHA has used TWHBEA’s Marks and NWHA denies that it has used TWHBEA’s

Design Mark (Docket No. 43 at 7 and Docket No. 39 at 6). It is undisputed that from July, 2004

through December 25, 2005, NWHA’s Website included no disclaimer explaining that

TWHBEA did not endorse or condone NWHA’s use of TWHBEA’s Marks (Docket No. 43 at 7).

It is also undisputed that NWHA never asked TWHBEA for permission to use TWHBEA Marks

and that TWHBEA never sent a cease and desist letter to NWHA regarding its use of the

acronym TWHBEA (Docket No. 43 at 7 and Docket No. 39 at 11). On approximately December

26, 2005, NWHA removed all references to TWHBEA from its website and added a disclaimer

(Docket No. 43 at 7).

It is also undisputed that NWHA’s founding directors were also sitting directors of

TWHBEA and that approximately all NWHA board members are current or former members of

TWHBEA. (Docket No. 43 at 9).

TWHBEA has filed a Motion for Summary Judgment (Docket No. 24) requesting

summary judgment on its claims of trademark infringement under the Lanham Act, on its claims

of unfair competition in violation of the Lanham Act, federal common law and the TCPA, and on

its claims of copyright infringement in violation of the Copyright Act. TWHBEA also requests

summary judgment on all of the affirmative defenses raised by NWHA in its Answer (Docket

No. 8), but does not seek summary judgment on its claim of intentional interference with

business relations under Tennessee law or trademark dilution under the Lanham Act. In

addition, TWHBEA requests permanent injunctive relief against NWHA.

NWHA has also filed a Motion for Summary Judgment (Docket No. 30) requesting

summary judgment on TWHBEA’s claim for copyright infringement under the Copyright Act on

the grounds that TWHBEA cannot demonstrate that it holds the copyright in the pedigree of the

Tennessee Walking Horse or its registry, and, alternatively, on the grounds that TWHBEA’s

Registry is a compilation of facts not subject to copyright protection. In addition, NWHA

requests summary judgment on TWHBEA’s claims for trademark infringement and unfair

competition in violation of the Lanham Act, the TCPA and common law on the grounds that

TWHBEA dId not establish trademark rights in the acronym TWHBEA prior to filing this

case, and TWHBEA cannot show that NWHA’s use of the acronym TWHBEA is likely to cause

confusion. Alternatively, NWHA argues that its use of the acronym TWHBEA on its website

represented fair use. Furthermore, NWHA argues that TWHBEA’s claims for trademark dilution

in violation of the Lanham Act must be dismissed as a matter of law because TWHBEA cannot

show that NWHA’s use of the acronym TWHBEA caused actual confusion. Finally, NWHA

argues that TWHBEA’s state law claim for intentional interference with business relations must

fail because TWHBEA cannot establish the required elements of its claim.

SUMMARY JUDGMENT

Summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to

interrogatories, and admissions on file, together with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving party is entitled to a judgment as a

matter of law." Fed. R. Civ. P. 56(c); Meyers v. Columbia/HCA Healthcare Corp., 341 F.3d

461, 466 (6th Cir. 2003). In deciding a motion for summary judgment, the court must view the

factual evidence and draw all reasonable inferences in favor of the nonmoving party. Id.; Hopson

v. DaimlerChrysler Corp., 306 F.3d 427, 432 (6th Cir. 2002).

To prevail, the non-movant must produce specific evidence that demonstrates there is a

genuine issue of material fact for trial. Meyers, 341 F.3d at 466. A mere scintilla of evidence is

insufficient; there must be evidence on which the trier of fact could reasonably find for the nonmovant.

Id. The non-moving party may not rest on mere allegations but must set forth specific

facts showing that there is a genuine issue for trial. Hopson, 306 F.3d at 432.

ANALYSIS

1. Copyright Infringement

TWHBEA has filed a motion for summary judgment on its copyright infringement claim

under the Copyright Act. TWHBEA asserts that NWHA has infringed its copyright in the

TWHBEA Registry by copying information directly from TWHBEA Registry Certificates.

TWHBEA acknowledges that the TWHBEA Registry is a compilation of facts, but asserts that it

is a copyrightable compilation as a work formed by the collection and assembling of preexisting

material and data that is selected, coordinated and arranged in such a way so that the resulting

work as a whole constitutes an original work of authorship. More specifically TWHBEA claims

that the selection and arrangement of the information in its Registry is original despite

employing a family tree diagram, as it has exercised creativity in deciding what to include from

the choice about which horses to include (and their ancestors), to the designation for foundation

horses, and the specific colors and markings, which have evolved over time. TWHBEA argues

that the very act of beginning to compile the pedigree and lineage of the Tennessee Walking

Horse in 1935 and then continuing to do so today is, by itself, the heart of TWHBEA’s original

selection. TWHBEA further asserts that the Registry Certificates contain unique colors and

combinations, markings, Identifiers and abbreviations. In making its case of infringement,

TWHBEA asserts that NWHA has copied not only the pedigrees included on the Registry

Certificates, but also specific notations and abbreviations that TWHBEA has created.

In response to TWHBEA’s assertions and also in support of its own motions, NWHA

argues that the pedigree of the Tennessee Walking Horse is nothing more than facts which are

not subject to copyright protection. More specifically, NWHA argues that arranging ancestral

lineage into the familiar family tree is not the type of selection, coordination, or arrangement

of data necessary to afford copyright protection to a compilation and that TWHBEA cannot, as a

matter of law, claim ownership of facts of ancestral lineage of the breed of horses known as the

Tennessee Walking Horse. In addition, NWHA argues that neither the designation of foundation

stock nor the description for horse colors are sufficiently original to warrant copyright

protection. NWHA further argues that even if they are, the designation of TWHBEA’s

foundation stock by using the letter F followed by a number, along with the names ascribed to

such stock, passed into the public domain by operation of law many years ago. Finally, NWHA

argues that over 95% of the registry certificates it issues use NWHA colors rather than

TWHBEA colors, and, therefore, any use by NWHA of TWHBEA’s colors is de minimis.

In order to prove copyright infringement under the Copyright Act, TWHBEA must show

that it owned a valId copyright, and that NWHA copied original elements of its copyrighted

work. Montgomery County Assn. of Realtors, Inc. v. Realty Photo Master Corp., 878 F. Supp.

804, 809 (D. Md. 1995). “A certificate of copyright registration constitutes prima facie evIdence

of the valIdity of the certificate and the facts stated in the certificate.” Id. (citing M. Kramer

Mfg. Co. v. Andrews, 783 F. 2d 421, 434 (4th Cir. 1986)). If a plaintiff possesses a copyright

registration certificate, the only evidence required of the plaintiff to establish prima facie

ownership ... is evidence of plaintiff’s chain of title from the original copyright registrant.” Id. at

809-810 (quoting 3 Melville B. Nimmer and David Nimmer, Nimmer on Copyright, 13.01[A]

(1993)). Once TWHBEA carries its burden, the burden then shifts to NWHA to overcome the

presumption of a valid copyright. Id. at 810.

In the present case, there appears to be no dispute that TWHBEA holds a valid copyright

in the Registry and Registry Certificates (Docket No 43 at 3). Thus, the inquiry becomes

whether TWHBEA has proved the second element of its case, namely did NWHA copy original

elements of its copyrighted work.

Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S. Ct. 1282,

113 L. Ed. 2d 358 (1991) is the leading case on whether a compilation possesses enough

originality to warrant copyright protection. In Feist, the Supreme Court held that originality is a

constitutional requirement and the touchstone of copyright protection. Feist, 111 S. Ct. at 1285.

In Feist, the Supreme Court further held that a compilation is not copyrightable per se, but is

copyrightable only if its facts have been selected, coordinated, or arranged in such a way that

the resulting work as a whole constitutes an original work of authorship.Id. (quoting 17 U.S.C.

101 (emphasis added)). Furthermore, even a compilation that is copyrightable receives only

limited protection for the copyright does not extend to facts contained in the compilation.

(quoting 17 U.S.C. 103(b) (emphasis added)). In Feist, the Supreme Court found that while the

plaintiff had a valid copyright in its telephone directory as a whole, there was nothing original in

its white pages. Id. In so finding, the Supreme Court determined that the raw data comprising

the white pages were uncopyrightable facts, and that the way in which plaintiff selected,

coordinated, and arranged those facts was not original in any way. Id.

 

In another copyright case involving the alleged infringement of a compilation, an

associations copyright in a registry of massage therapists, the District Court for the Northern

District of Illinois held, choices as to which facts to include, the order of placement, and how to

arrange the data so they may be used effectively by readers are sufficiently original that

Congress may protect such compilations through the copyright laws so long as the choices are

made independently by the compiler and entail a minimal degree of creativity. American

Massage Therapy Assoc. v. Maxwell Petersen Assn., Inc., 209 F. Supp. 2d 941, 948 (N.D. Ill.

2002). In American Massage Therapy, the District Court found that the selection of information

in plaintiffs registry was sufficiently creative to be eligible for copyright protection, but also

found that the copyright would not extend to the underlying facts in the registry, the names and

addresses of the therapists therein, holding that raw facts may be copied at will. Id. at 948.

Similarly, in another copyright infringement case involving the copying of facts in an MLS

database, the District Court for the District of Maryland held that, if the compilation author

clothes facts with an original collocation of words, he or she may be able to claim a copyright in

this written expression. Montgomery County Assn., 878 F. Supp. at 810 (quoting Feist, 111 S.

Ct. at 1289). As a result, others may copy the underlying facts from the publication, but not

the precise words used to present them. Id. In Montgomery County, the District Court found

that the subject MLS database possessed at least some minimal degree of creativity in that it

contained marketing puffery that could not be characterized as factual, and an elaborate system

of abbreviations in organizing its database. Id. Further, the District Court found that the fact

that each MLS property report contained some purely factual information relating to a home did

not negate the original presentation and arrangement of the information in the database. Id.

In the present case, the Court finds that TWHBEA has demonstrated that the Registry and

Registry Certificates possess the requisite level of originality in the selection and originality of

material included therein to entitle the Registry and Registry Certificates to copyright protection.

More specifically, the undisputed facts show that TWHBEA has exercised creativity and has

adopted unique and creative selection criteria in deciding which horses to include in its Registry,

including the choices about what horses are pure bred Tennessee Walking Horses, the

designation for foundation horses, and specific colors and markings of the Tennessee Walking

Horse, all of which have evolved over time (Docket No. 43 at 1-3). While the underlying facts

regarding a particular horse or its lineage may not be subject to copyright protection, it is the

way in which the facts have been expressed, selected and coordinated by TWHBEA in the

Registry and Registry Certificates as a whole work of authorship that is original and subject to

the protection of TWHBEA’s copyright.

Having determined that the Registry and Registry Certificates are sufficiently original to

warrant copyright protection, the Court must next determine whether NWHA has copied any of

the original elements of the Registry and/or Registry Certificates. In the present case, the Court

finds that the record before it shows that NWHA did not use independent selection criteria for

inclusion of a horse in its NWHA Registry or that it simply copied raw facts about a horses

ancestry from TWHBEA Registry Certificates. Rather, the Court finds that the undisputed facts

show that NWHA has solicited TWHBEA Registry Certificates from applicants and copied

almost verbatim from TWHBEA Registry Certificates (Docket No. 33, Ex. 2 and Docket No. 43

at 8). As such, the Court finds that NWHA has infringed TWHBEA’s copyright in its Registry

and Registry Certificates in that each of TWHBEA’s copyrighted Registry Certificates bears a

portion of the copyrighted Registry.

NWHA argues that any such copying is de minimis in that the undisputed proof shows

that only 7 out of 158 NWHA Registry Certificates list TWHBEA designated colors, rather than

NWHA colors. To establish that a copyright infringement is de minimis, the alleged infringer

must demonstrate that the copying of the protected material is so trivial Ôas to fall below the

quantitative threshold of substantial similarity, which is always a required element of actionable

copying. Gordon v. Nextel Communications and Mullen Advertising, Inc., 345 F. 3d 922, 924

(2003). The Court finds that NWHA’s copying of TWHBEA’s protected material is not de

minimis in that the undisputed facts show that NWHA has copied almost verbatim from

TWHBEA Registry Certificates (Docket No. 33, Ex. 2). The extent of copying, of course, also

goes to the issue of damages.

Finally, with respect to NWHA’s argument that the designation of TWHBEA’s

foundation stock, along with the names ascribed to such stock, passed into the public domain by

operation of law many years ago, the Court finds that TWHBEA is not asserting a copyright in

the facts contained in the Registry, such as the ancestral lineage of the Tennessee Walking Horse

or names, markings or colors of horses, and has made no claim with respect to TWHBEA’s first

printed publication of its registry. Rather, TWHBEA’s asserted copyright is in the selection,

coordination and arrangement of Ideas in its current Registry as a whole and as an original work

of authorship.

Accordingly, TWHBEA’s Motion for Summary Judgment (Docket No. 24) on its

copyright infringement claim under the Copyright Act against NWHA is GRANTED, and

NWHA’s motion for summary judgment on TWHBEA’s claim for copyright infringement under

the Copyright Act is DENIED. At the pretrial conference set for February 16, 2007, the parties

shall be prepared to discuss the terms of a permanent injunction and bond, as well as any

unresolved copyright issues, such as damages. The pretrial conference set for February 16, 2007

at 1:00 p.m. is hereby moved to Nashville, rather than Columbia.

2. Trademark Infringement

In support of its Motion for Summary Judgment (Docket No. 24), TWHBEA asserts that

NWHA has infringed its trademark in violation of 1114 of the Lanham by openly encouraging

the public for a period of seventeen months to submit TWHBEA Registry Certificates when

applying for NWHA Registry Certificates. In response to TWHBEA’s allegations and in support

of its own Motion (Docket No. 30), NWHA argues that there is no evidence of actual confusion

in the marketplace from NWHA’s use of TWHBEA’s name on its website, and that walking

horse owners are sophisticated consumers likely to know the difference between the TWHBEA

and the NWHA. In addition, NWHA asserts that it did not intend to benefit from its use of

TWHBEA’s name or acronym on its website and that its use of TWHBEA’s acronym on its

website constitutes fair use. NWHA has also filed its own Motion for Summary Judgment

(Docket No. 30) on TWHBEA’s claims of trademark infringement under the Lanham Act

asserting the additional argument that TWHBEA has no federal trademark protection in the

acronym TWHBEA.

Section 1114 of the Lanham Act provides:

Any person who shall, without the consent of the registrant-

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a

registered mark in connection with the sale, offering for sale, distribution, or advertising

of any goods or services on or in connection with which such use is likely to cause

confusion or to cause mistake, or to deceive ..., shall be liable in a civil action by the

registrant for the remedies hereinafter provided.

15 U.S.C. 1114.

The touchstone of liability under 1114 is whether the defendants use of the disputed

mark is likely to cause confusion among consumers regarding the origin of the goods offered by

the parties. Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center, 109 F. 3d

275, 280 (6th Cir. 1997). The Sixth Circuit has Identified the following factors to consider when

determining whether actual confusion exists: 1) strength of the senior mark; 2) relatedness of the

goods or services; 3) similarity of the marks; 4) evidence of actual confusion; 5) marketing

channels used; 6) likely degree of purchaser care; 7) the intent of defendant in selecting the

mark; and 8) likelihood of expansion of the product lines. Id. See also, Frischs Restaurants,

Inc. v. Elby’s Big Boy, Inc. of Steubenville, 670 F. 2d 642, 648 (6th Cir. 1982).

The strength of a mark is a factual determination of the marks distinctiveness. The

more distinct a mark, the more likely is the confusion resulting from its infringement, and

therefore, the more protection it is due. Daddy’s Junky Music, 109 F. 3d at 280 (quoting

Frisch’s Restaurants, 759 F. 2d at 1264). In the present case, there appears to be no real dispute

that TWHBEA satisfies the first factor. As noted above, since June, 1974, TWHBEA has

continuously and exclusively used the service-mark TENNESSEE WALKING HORSE

BREEDERS AND EXHIBITORS ASSOCIATION in interstate commerce, in connection with

maintenance of the TWHBEA Registry, sporting events, and competitions for the Tennessee

Walking Horse, and informational services, printed materials and publications in the field of the

Tennessee Walking Horse (Docket No. 43 at 3). Since May 30, 1992, TWHBEA has

continuously and exclusively used the service-mark TWHBEA in interstate commerce in

connection with maintenance of the TWHBEA Registry, sporting events and competitions for

the Tennessee Walking Horse, and informational services, printed materials and publications in

the field of the Tennessee Walking Horse (Docket No. 43 at 4). Since May, 1992, TWHBEA has

continuously and exclusively used the service-mark TWHBEA and Design Mark in interstate

commerce, in connection with maintenance of the TWHBEA Registry, sporting events and

competitions for the Tennessee Walking Horse, and informational services, printed material and

publications in the field of the Tennessee Walking Horse (Docket No. 43 at 4). Since July,

2002, TWHBEA has continuously and exclusively used TWHBEA MARKS in interstate

commerce in connection with on-line informational services, computerized communications

services and on-line retail store services in the field of the Tennessee Walking Horse (Docket

No. 43 at 4). The United States Patent and Trademark Office issued registration of the

TWHBEA Design Mark, in connection with the maintenance of the TWHBEA Registry on

January 31, 1995 (Docket No. 43 at 5).

There also appears to be no dispute over the relatedness of goods and services. The

undisputed facts show that both TWHBEA and the NWHA have established a registry that

provides ancestral lineage information of the Tennessee Walking Horse and issue certificates of

pedigree and ownership for the Tennessee Walking Horse (Docket No. 43 at 1-2, 4-5).

With respect to the third factor, similarity of marks is a significant factor in determining

whether there is a likelihood of confusion. Id. at 283. In the present case, NWHA does not deny

that it uses TWHBEA Marks on its website (Docket No. 43 at 6). Rather, in support of its own

Motion for Summary Judgment, NWHA asserts that TWHBEA has no Federal trademark

protection in the acronym TWHBEA under 1114(1) of the Lanham Act. More specifically,

NWHA argues that TWHBEA did not have a registered trademark for the acronym TWHBEA

prior to filing this lawsuit. In addition, NWHA argues that because TWHBEA did not apply for

registration for the acronym TWHBEA prior to filing of this case and failed to object to the

use of the TWHBEA acronym on the NWHA website, TWHBEA’s Federal trademark

infringement claim must be dismissed as a matter of law.

In response to NWHA’s assertions, TWHBEA argues that there is not just similarity of

the marks, the word elements of the marks are Identical. More specifically, TWHBEA asserts

that the undisputed facts show that TWHBEA’s Design Mark incorporates the acronym

TWHBEA. The Court finds the third factor weighs in favor of TWHBEA regarding the

similarity of the marks.

Next, the Court must evaluate whether there is evidence of actual confusion. Evidence of

actual confusion is undoubtedly the best evidence of likelihood of confusion, but a lack thereof is

rarely significant. Id. at 284. With respect to this fourth factor, TWHBEA admits that it does not

have evIdence of actual confusion, but asserts that there is direct evidence of confusion over

possible affiliation or approval by TWHBEA regarding the NWHA. To support its position,

TWHBEA argues that at least three consumers, Kristin Chambers (Chambers), Ronnie Blakely

(Blakely) and David Wenger (Wenger), were confused as to how their horses appeared on

the NWHA website without their permission. The NWHA discounts TWHBEA’s argument as

merely evidence of TWHBEA members who were upset because information related to their

horses was available on NWHA’s website without their knowledge or permission, and that the

information likely came from canned software used by NWHA to establish their database.

Furthermore, NWHA argues that even if Chambers, Blakely and Wenger were confused as to

how their horses pedigrees appeared on the NWHA website without their permission, that this

confusion is not the type of confusion required to establish evidence of actual confusion.

The Court finds that questions of fact also remain as to the fourth factor of whether there

is evidence of actual confusion. For instance, the Court finds that the Declaration of Blakely

indicates that he had been under the impression that his horse What’s Up Tiger Lily had been

entered in NWHA’s online pedigree registry based upon receipt of the horses pedigree from

TWHBEA (Docket No. 41, Ex. G). While Blakely’s Declaration certainly evidences confusion

as to how NWHA obtained the information used in its database, it falls short of definitively

establishing whether his confusion extended to actual confusion as to TWHBEA’s endorsement

or sponsorship of NWHA’s Registry or merely evidenced irritation that information about the

horse had been disseminated without permission.

With respect to the fifth factor, the Court must consider the similarities or differences

between the predominant customers of the parties respective goods or services and the

marketing approaches employed by each party. Id. at 285. In the present case, TWHBEA

asserts that NWHA is reaching out to the same consumers as TWHBEA. NWHA does not

dispute this assertion and the undisputed facts show that many NWHA members continue to

register their horses with TWHBEA even after NWHA launched its own registry (Docket No. 43

at 9). Accordingly, the Court finds that this fifth factor also weighs in favor of TWHBEA.

Next, the Court must look at the likely degree of purchaser care. The degree of care with

which consumers likely purchase goods or services is usually measured against the typical buyer

exercising ordinary caution. Id. A finding of enhanced purchaser care is proper when the buyer

has expertise or is more sophisticated. Id. The ultimate significance of a given degree of care,

however, often will depend upon its relationship with the other seven factors. Id. In the present

case, TWHBEA concedes that consumers of both NWHA and TWHBEA Registry goods and

services are most likely sophisticated purchasers, but further asserts that this factor is not

relevant in relation to the other seven factors. In response to TWHBEA’s assertions and on

behalf of its own summary judgment motion, NWHA argues that Tennessee Walking Horse

owners are sophisticated consumers likely to know that the TWHBEA and the NWHA are not

related. Given the parties apparent agreement that purchasers of TWHBEA and NWHA’s

goods and services are sophisticated purchasers, the Court finds that this factor weighs in favor

of NWHA. The Court does not agree with TWHBEA that the degree of purchaser care is not

significant, but finds that its significance must be weighed in relation to the other seven factors.

See, Id.

The seventh factor to be considered by the Court is NWHA’s intent in using TWHBEA’s

mark. If a party chooses a mark with the intent of causing confusion that fact alone may be

sufficient to justify an inference of confusing similarity. Id. at 286 (internal quotations and

citations omitted). Intent is relevant because purposeful copying indicates that the alleged

infringer, who has at least as much knowledge as the trier of fact regarding the likelihood of

confusion, believes that his copying may divert some business from the senior user. Id. at 286

(citing Little Caesar Enters., Inc. v. Pizza Caesar, Inc., 834 F. 2d 568, 572 (6th Cir. 1987)).

TWHBEA argues that NWHA intended to benefit from TWHBEA’s Marks when it referred to

them for 17 months on NWHA’s website and invited the public to submit their TWHBEA

certificates when applying with the NWHA. TWHBEA further argues that NWHA’s intent to

benefit from TWHBEA’s marks also is shown by the fact that twelve of the sixteen NWHA

founding directors were also sitting directors of TWHBEA, almost all of NWHA’s board

members are current or former members of TWHBEA, and NWHA members continue to apply

for registration with TWHBEA despite the alternative NWHA In response to TWHBEA’s

assertions, NWHA argues that any reasonable person viewing NWHA’s website would

understand that NWHA used only so much of TWHBEA’s name or acronym as needed to

Identify the registration certificates it would accept for purposes of obtaining pedigree

information for an NWHA applicant horse. Thus, NWHA argues that its use of the TWHBEA

mark falls squarely within the fair use doctrine as it is applied in the trademark context.

Under the doctrine of ‘fair use’, the holder of a trademark cannot prevent others from

using the work that forms the trademark in its primary or descriptive sense. Bliss Clearing

Niagara, Inc. v. Midwest Brake Bond Co., 339 F. Supp. 2d 944 (W.D. Mich. 2004) (quoting

Herman Miller, Inc. v. Palazzetti Import & Exports, Inc., 270 F. 3d 298, 319 (6th Cir. 2001)).
The fair use doctrine as applied in the trademark context permits others to use a protected mark to
describe aspects of their own goods. ETW Corp. v. Jireh Publishing, Inc., 332 F. 3d 915, 920

(6th Cir. 2003) (internal quotations and citations omitted). In evaluating a defendants fair use

defense, a court must consider whether defendant has used the mark: (1) to describe their own

goods; (2) in its descriptive sense; and (3) in good faith. Id. In what is often referred to as

nominative fair use, a defendant uses the plaintiffs mark to describe the plaintiffs product

rather than its own. Bliss Clearing Niagara, 339 F. Supp. at 963 (citing New Kids on the Block

v. News Am. Publishing, Inc., 971 F. 2d 302 (9th Cir. 1992)).

In the present case, it is undisputed that NWHA’s website stated that it accepted

TWHBEA registration certificates from applicants seeking to register a horse with NWHA’s

Registry and instructed applicants to send their TWHBEA registration certificates with their

application to register (Docket No. 43 at 6). It is also undisputed that the source from which

NWHA obtains a horses pedigree is from either a registration certificate from the TWHBEA,

the CRTWH or from canned software (Docket No. 43 at 7 and Docket No. 39 at 5). The Court

finds that from the facts before it at this time, it is unable to determine whether NWHA’s use of

TWHBEA’s mark was with the intent of causing confusion and promoting its own interest, or

simply for the good faith purpose of describing its registration process. The Court acknowledges

that certain Identification uses of TWHBEA’s mark may be in good faith, but given the factual

disputes about the intentions of NWHA and is alleged animosity toward TWHBEA, the issue of

good faith is for trial. Accordingly, the Court finds that questions of fact remain whether

NWHA used TWHBEA’s Mark to induce consumers into believing that possible affiliation with

or approval by TWHBEA regarding NWHA’s Registry existed, or whether NWHA used

TWHBEA’s Marks in good faith to describe the type of information it would accept in order to

register a horse.

Finally, the eighth factor to be considered by the Court in determining actual confusion is

likelihood of expansion of the product lines. In the present case, there appears to be no dispute

between that parties that this factor has been established. TWHBEA asserts that there is a strong

possibility that either TWHBEA or NWHA will continue to expand its reach to compete with the

other or be marketed to the same consumers, and NWHA does dispute these assertions.

Accordingly, the Court finds that this eighth factor, the likelihood of expansion of the product

line, weighs in favor of TWHBEA.

In conclusion, the Court has found that the first, second, third, fifth and eighth

factors weigh in favor of TWHBEA, and the sixth factor weighs in favor of NWHA. The Court

has also found that material questions of fact remain with respect to the fourth factor (evidence

of actual confusion), the seventh factor (the intent of NWHA in selecting the mark), and with

respect to NWHA’s fair use defense. The Court finds that given these questions of fact,

summary judgment on TWHBEA’s claim for trademark infringement under the Lanham Act is

inappropriate at this time. Accordingly, TWHBEA’s Motion for Summary Judgment (Docket

No. 24) on its claim of Trademark Infringement under the Lanham Act is DENIED. Similarly,

NWHA’s Motion for Summary Judgment (Docket No. 30) on TWHBEA’s claim for trademark

infringement under the Lanham Act is DENIED.

3. Unfair Competition Claims

TWHBEA has also filed a motion for summary judgment (Docket No. 24) on its unfair

competition claims under 1125(a) of the Lanham Act, Federal common law and the TCPA.

Similarly, NWHA has filed its own motion for summary judgment (Docket No. 30) on these

claims. Like TWHBEA’s claim for trademark infringement under the Lanham Act, each of these

causes of actions requires proof of likelihood of confusion. Daddy’s Junky Music, 109 F. 3d at

288; Frischs Restaurants, Inc., 670 F. 2d at 647; McDonalds Corp, v. Shop at Home, Inc., 82 F.

Supp. 2d 801, 816-817 (M.D. Tenn. 2000). Given the Courts earlier determination that

questions of fact remain with respect to the likelihood of confusion caused by NWHA’s use of

TWHBEA’s mark, TWHBEA’s Motion for Summary Judgment (Docket No. 24) and NWHA’s

Motion for Summary Judgment (Docket No. 30) on these claims are both DENIED.

4. Trademark Dilution

NWHA has filed a motion for summary judgment (Docket No. 30) on TWHBEA’s claim

for trademark dilution under 1125(c) of the Lanham Act asserting that TWHBEA cannot show

that NWHA’s use of the acronym TWHBEA caused actual dilution of its registered mark.

More specifically, NWHA alleges that there is no evidence that NWHA used TWHBEA’s

registered logo. In addition, NWHA asserts that because TWHBEA never registered its acronym

TWHBEA prior to filing this suit, there is no senior mark in the form of the acronym

TWHBEA that NWHA could have diluted. Furthermore, NWHA alleges that even if it were

to concede the acronym TWHBEA is a famous and distinctive trademark, there exists no mark

of NWHA that is the same or similar to that alleged by TWHBEA. TWHBEA responds to

NWHA’s assertions by arguing that this case is one of the obvious cases where actual dilution

is shown automatically because NWHA copied the TWHBEA mark verbatim. More

specifically, TWHBEA asserts that TWHBEA’s registered Design Mark incorporates both the

acronym TWHBEA and the horses head design. In addition, TWHBEA asserts that even

though TWHBEA has not registered its marks TWHBEA and Tennessee Walking Horse

Breeders and Exhibitors Association, it has used its marks continuously in interstate

commerce since 1974.

The Sixth Circuit has held that in order to establish a prima facie case of trademark

dilution the senior mark must be: (1) famous; and (2) distinctive, and the junior mark must: (3)

be in commerce; (4) have begun subsequent to the senior mark becoming famous; and (5) cause

dilution of the distinctive mark. Kellogg Co. v. Toucan Golf, Inc., 337 F. 3d 616, 628 (6th Cir.

2003). In Mosely v. V Secret Catalogue, Inc., 537 U.S. 418, 123 S. Ct. 1115, 155 L. Ed. 2d 1

(2003) the Supreme Court recognized that proof of dilution under 1125(c) requires a showing

of actual dilution. V Secret, 123 S. Ct. At 1117. The Supreme Court also held that proof of

actual dilution may be difficult to obtain, and noted that circumstantial evidence can be used to

show actual dilution under certain circumstances, such as the obvious case when the marks are

Identical. V Secret, 123 S. Ct. at 1125 Fair use of a famous mark by another to Identify

competing goods of the owner of the trademark is recognized as an exception to the anti-dilution

provision of the Lanham Act. 15 U.S.C. 1125 (c)(3)(A). See also, Toni & Guy (USA) Ltd. v.

Natures Therapy, Inc., 2006 WL 1153354 at *14 (S.D.N.Y May 1, 2006).

In the present case, the Court finds that the relevant inquiry is not as NWHA asserts,

whether any mark of NWHA is the same or similar to that alleged by TWHBEA, but rather

whether NWHA’s alleged use of TWHBEA’s Marks caused dilution of the alleged distinctive

quality of TWHBEA’s Marks. V Secret, 123 S. Ct. at 1117. The Court finds that questions of

fact remain whether NWHA’s use of the acronym TWHBEA caused actual dilution of

TWHBEA’s Design Mark. Also, the Court finds that questions of fact remain with respect to

NWHA’s asserted fair use of TWHBEA’s acronym TWHBEA. Accordingly, the Court

declines to grant summary judgment to NWHA on TWHBEA’s claim of trademark dilution

under the Lanham Act. Thus, NWHA’s Motion for Summary Judgment (Docket No. 30) on

TWHBEA’s claim for trademark dilution in violation of the Lanham Act is DENIED.

5. Intentional Interference With Business Relations

NWHA has also filed a Motion for Summary Judgment (Docket No. 30) on TWHBEA’s

claim for intentional interference with business relations under Tennessee law arguing that

TWHBEA cannot establish the requisite elements to prove its prima facie case. In response to

NWHA’s motion, TWHBEA asserts that the record contains evidence of its prima facie case

precluding summary judgment on NWHA’s motion.

Under Tennessee law, in order to establish a prima facie case of intentional interference

with business relations, a plaintiff must show: 1) an existing business relationship with specific

third parties or a prospective relationship with an Identifiable class of third persons; 2) the

defendants knowledge of that relationship and not a mere awareness of the plaintiffs business

dealings with others in general; 3) the defendants intent to cause the breach or termination of the

business relationship; 4) the defendants improper motive or improper means; and 5) damages

resulting from the tortious interference. Trau-Med of America, Inc. v. Allstate Ins. Co., 71 S.W.

3d 691, 701 (Tenn. 2002).

In the present case, while it is undisputed that NWHA was established in 1998 to

promote the sound, natural gaited horse and eliminate the practice of soring (Docket No. 39 at

4), it is also undisputed that NWHA’s founding directors were also sitting directors of TWHBEA

and that approximately all NWHA board members are current or former members of TWHBEA.

(Docket No. 43 at 9). Furthermore, the evidence shows that former NWHA charter member and

board member, Mark L. Matson (Matson), testified that some members and directors of

NWHA had a vendetta against TWHBEA, and established NWHA’s pedigree registry in an

effort to harm TWHBEA (Docket No. 41, Ex. 10). In addition, the Court has found that

questions of fact remain with respect to NWHA’s good faith in its use of TWHBEA’s trademark.

Therefore, at a minimum, the Court finds that questions of fact remain with respect to NWHA’s

intent and motive to preclude summary judgment on TWHBEA’s claim for intentional

interference with business relations. Accordingly, NWHA’s motion for summary judgment

(Docket No. 30) on TWHBEA’s claim for intentional interference with business relations is

DENIED.

6. Affirmative Defenses

NWHA has withdrawn its affirmative defenses based upon the applicable statutes of

limitations, laches and estoppel (Docket No. 42 at 1). Therefore, TWHBEA’s motion for

summary judgment (Docket No. 24) on these affirmative defenses is moot.

IT IS SO ORDERED,

_______________________________

TODD J. CAMPBELL

UNITED STATES DISTRICT JUDGE

 


 

 

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