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