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Use of Mark with Web Site Not Sufficient to Establish Use in Commerce

Plaintiff Robert Guichard is an independent film producer who is working on a proposed, unproduced screenplay titled “Whisper of the Blue” about an ex-Navy SEAL who sets out to find a ship of sunken gold and comes across a modern-day pirate. In February 2006, Mr. Guichard launched a Web site at www.whisperoftheblue.com that contains information about his project.

Filiming on the set of “Whisper of the Blue”

In Oct. 2006, Mr. Guichard sued in the Northern District of California to enjoin defendant Universal City Studios LLLP from using “Whisper” as the title of its upcoming motion picture, which had been in production since November 2004. Universal’s movie is about the kidnapping of a seemingly meek 10-year-old boy whose kidnappers soon realize is far less innocent than he appears and, while he may be quiet, they had better be careful because his whisper “may be the last thing that they hear.”

Universal’s “Whisper” (now on DVD)

Plaintiff argued he had gained exclusive control over the use of the word “whisper” in the title of his project because he had acquired a service mark in his Web site domain name for “providing information, via the Internet, in the field of entertainment, namely, the development, production and distribution of motion picture films.”

The court disagreed. In June, Judge Jeffrey White denied Mr. Guichard’s motion for preliminary injunction because “his described use of the WHISPER OF THE BLUE mark does not satisfy the ‘use in commerce’ requirement necessary to establish priority of use. Although Plaintiff alleges that there have been multiple visits to his website since its launch on February 4, 2006, this minimal use does not establish ‘use in commerce’ as required to establish priority. There is no showing that Plaintiff has used his mark in the actual sale or advertising of services in commerce.”

The court also found that Universal had already invested more than $12 million in its “Whisper” movie by the time Mr. Guichard launched his Web site so Universal had priority, not Mr. Guichard.

The court similarly rejected Mr. Guichard’s evidence of confusion: “During oral argument on this motion, in an effort to establish possibility of confusion, Plaintiff introduced an exhibit consisting of a number of Google searches he had conducted using the terms ‘whisper underwater production,’ ‘whisper underwater actors,’ and ‘whisper underwater ‘feature film’. The searches pulled up listings that included both the website for Plaintiff’s proposed film project and other information and listing[s] with reference to Defendants’ motion picture. However, the search is not probative as the search function calls up any internet listing with the search terms, including any motion picture with the search words in the same listing. The searches are far too broad and not probative as to likelihood of confusion. There is no evidence of actual or likelihood of confusion in the record.”

On Dec. 20, the Ninth Circuit upheld the Central District’s denial of Mr. Guichard’s motion for prelminiary injunction. In an unpublished decision, it found: “The district court’s conclusion that Guichard’s web presence at whisperoftheblue.com was not a use in commerce sufficient to create a protectable trademark interest is consistent with our precedent. Because Guichard has no protectable trademark interest, no infringement occurred.”

The case cite is Guichard v. Universal City Studios LLLP, No. 07-16089, 2007 WL 4467589 (9th Cir.). 

Posted on December 26, 2007 by Registered CommenterMichael Atkins in | CommentsPost a Comment

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