MOORE, J., delivered the opinion of the court, in which MARTIN, J., joined.
KENNEDY, J. (pp. 553-56), delivered a separate opinion concurring in part and dissenting in part.
MOORE, Circuit Judge.
This is an interlocutory appeal of an injunction granted in a trademark case. The parties agree that the mark purports to include at least the two-dimensional guitar shape set out in the trademark-registration papers. However, they disagree as to whether the mark extends to cover three-dimensional objects where two dimensions of those objects have the same general shape (but not the same exact proportions) as the drawing in the registration papers, and as to whether the mark includes additional product features shown in a photograph accompanying the registration papers.
With respect to Gibson's trademark-infringement claim, we
Certain basic facts are not in dispute. Gibson and PRS both manufacture high-quality guitars. Gibson has been in the business of manufacturing musical instruments for over 100 years. PRS founder Paul Reed Smith ("Smith") began manufacturing custom guitars in the mid-1970s and opened a guitar factory in 1985.
Gibson introduced at least one guitar model under the Les Paul name in 1952. Since that time, Gibson has offered a number of guitar models under the Les Paul name. At least some of these models were solid-body, single-cutaway electric guitars of the type at issue in this litigation.
PRS is a relatively recent entrant to the solid-body, single-cutaway electric-guitar market. Although PRS had previously manufactured a number of other guitars, it did not offer a single-cutaway guitar in its normal line until January 2000 at the earliest. In February 2000, PRS displayed models of the PRS Singlecut, a solid-body, single-cutaway electric guitar, at a music industry trade show.
B. Procedural History
The procedural posture of this case is somewhat unusual. We briefly summarize those aspects relevant to this interlocutory appeal. On November 6, 2000, Gibson sued PRS in federal district court in Nashville, Tennessee. The complaint sought injunctive relief, costs, attorney fees, and treble damages for trademark infringement, counterfeiting, false designation of origin, and dilution under the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a), 1125(c), and for unfair competition, fraud, and deceptive business practices under state law. PRS counterclaimed, seeking declaratory and injunctive relief and asserting that: (1) the LP Trademark is invalid and unenforceable; (2) the LP Trademark is not infringed by the PRS Singlecut; (3) any trade dress associated with the Gibson Les Paul series of guitars cannot be protected under the Lanham Act or is otherwise unenforceable; and (4) the PRS Singlecut guitar does not infringe any such trade dress.
PRS moved for summary judgment on all claims and counterclaims, and Gibson moved for partial summary judgment on the trademark-infringement claim. On January 22, 2004, the district court granted Gibson's motion for partial summary judgment on its trademark-infringement claim and denied PRS's motion for summary judgment in its entirety. Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 311 F.Supp.2d 690, 725 (M.D.Tenn. 2004) ("Gibson I"). After the district court's summary judgment decision, the parties jointly requested that the district court allow them to: (1) amend Gibson's complaint to state only the trademark-infringement claim; (2) amend PRS's answer to state only trademark-related counterclaims; and (3) dismiss all other claims and counterclaims with prejudice. The district court approved this request, and shortly thereafter Gibson filed an amended complaint and PRS filed an amended answer. As amended, Gibson's complaint seeks injunctive relief, attorney fees, and treble damages for infringement of the LP Trademark. PRS's amended counterclaim seeks declaratory and injunctive relief, costs, and attorney fees, on the basis that the LP Trademark is invalid and unenforceable and that the LP Trademark is not infringed by the PRS Singlecut.
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F.Supp.2d 841, 855 (M.D.Tenn.2004) ("Gibson II").
The district court had jurisdiction over the underlying action pursuant to the Lanham Act, 15 U.S.C. § 1114. As the district court entered a permanent injunction against PRS, we have jurisdiction to hear this interlocutory appeal pursuant to 28 U.S.C. § 1292(a)(1). Although our jurisdiction arises from PRS's interlocutory appeal of the permanent injunction entered below, we may also review the district court's summary judgment rulings because those rulings form the basis for the district court's decision to order injunctive relief.
B. Propriety of Granting Injunctive Relief
In determining whether a district court has properly granted a permanent injunction, we review factual findings for clear error, legal conclusions de novo, and the scope of injunctive relief for abuse of discretion. Worldwide Basketball and Sport Tours, Inc. v. Nat'l Collegiate Athletic Ass'n, 388 F.3d 955, 958 (6th Cir. 2004). A district court normally must hold an evidentiary hearing prior to issuing a permanent injunction. Moltan Co. v. Eagle-Picher Indus., Inc., 55 F.3d 1171, 1174 (6th Cir.1995). In this case, it is unclear from the parties' submissions whether the district court held an evidentiary hearing prior to issuing the permanent injunction. However, because an evidentiary hearing is not required when "no factual issues remain for trial," id., the district court's decision to grant a permanent injunction without such a hearing could still be upheld if the entry of summary judgment in favor of Gibson and against PRS was proper. Accordingly, resolution of PRS's interlocutory appeal from the permanent injunction requires us to determine whether summary judgment was properly granted to Gibson. We conclude that it was not, and the district court accordingly erred in granting a permanent injunction.
Summary judgment should be granted whenever "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." FED. R. CIV. P. 56(c). On a motion for summary judgment in a trademark-infringement case, we conduct de novo review of both (1) the district court's determination of what material facts are in dispute; and (2) the legal conclusions the district court drew from the undisputed facts. Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 422 (6th Cir.1999). In conducting this review of a summary judgment motion, we draw all reasonable inferences in favor of the party opposing the motion. Johnson v. Karnes, 398 F.3d 868, 873 (6th Cir.2005).
C. The Scope of the LP Trademark
Prior to conducting our substantive inquiry, we take this opportunity to clarify a fundamental issue. The district court appears to have confused trademark law and trade-dress law when it concluded that the LP Trademark covered the entire guitar, rather than the two-dimensional silhouette included in the registration papers, Gibson I, 311 F.Supp.2d at 719; see also Gibson II, 325 F.Supp.2d at 852. This affected the remainder of the district court's reasoning and prevented proper analysis of the parties' claims. Specifically, we do not believe that the two-dimensional drawing included in the LP Trademark should be construed to create a trademark on the entire guitar as depicted in photographs accompanying the trademark application (including the location and style of knobs, switches, and other hardware).
D. Trademark Infringement Under the Lanham Act
To establish trademark infringement within the meaning of the Lanham Act, Gibson must demonstrate that the PRS Singlecut "is likely to cause confusion among consumers regarding the origin [of the Singlecut]." Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 280 (6th Cir.1997) (citing 15 U.S.C. § 1114). We determine whether such confusion is likely by examining the eight Frisch factors: (1) "strength of the plaintiff's 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 defendant's intent in selecting its mark," and (8) "likelihood of expansion of the product lines." Jet, 165 F.3d at 422 (citing Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir.), cert. denied, 459 U.S. 916, 103 S.Ct. 231, 74 L.Ed.2d 182 (1982)).
The district court concluded that, with the exception of actual confusion (factor four), all factors on which it made a finding favored Gibson for summary judgment purposes.
1. Gibson's Theories of Purchaser Confusion
Gibson argues that despite the lack of actual confusion at the point of sale, the district court's decision can be affirmed under a theory of either initial-interest confusion (the theory relied on by the district court), post-sale confusion, or some combination of the two. Initial-interest confusion takes place when a manufacturer improperly uses a trademark to create initial customer interest in a product, even if the customer realizes, prior to purchase, that the product was not actually manufactured by the trademark-holder. See PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243, 253 (6th Cir.2003); see also J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:6 (4th ed. 1996 & Supp.2005) ("MCCARTHY ON TRADEMARKS") (collecting cases). Post-sale confusion occurs when use of a trademark leads individuals (other than the purchaser) mistakenly to believe that a product was manufactured by the trademark-holder. See Esercizio v. Roberts, 944 F.2d 1235, 1245 (6th Cir.1991), cert. denied, 505 U.S. 1219, 112 S.Ct. 3028, 120 L.Ed.2d 899 (1992); see also MCCARTHY ON TRADEMARKS § 23:7 (collecting cases). We conclude that neither initial-interest confusion, nor post-sale confusion, nor any combination of two, is applicable in this case.
a. Initial-Interest Confusion
The one case where we arguably have applied initial-interest confusion involved facts strikingly different than those involved in the present dispute. In PACCAR, we were faced with a dispute between Telescan, a company operating
b. Post-Sale Confusion
The one published case where we have applied post-sale confusion is also clearly distinguishable from the present case. Esercizio, a trade-dress case, involved Ferrari sports cars which were manufactured in deliberately limited quantities "in order to create an image of exclusivity." Esercizio, 944 F.2d at 1237. The alleged infringer built fiberglass kits intended to be "bolted onto the undercarriage of another automobile such as a Chevrolet Corvette or a Pontiac Fiero" in order to make the "donor car" look like a far-more-expensive Ferrari. Id. at 1238. Our concern in Esercizio was that "Ferrari's reputation in the field could be damaged by the marketing of Roberts' [clearly inferior] replicas." Id. at 1245. Such a concern is not present here, where Gibson concedes that PRS guitars are not clearly inferior to Gibson guitars. See, e.g., Gibson Br. at 5, 23. Accordingly, post-sale confusion cannot serve as a substitute for point-of-sale confusion in this case.
c. Gibson's Smoky-Bar Theory of Confusion
Finally, Gibson argues that, taken together, the initial-interest-confusion and post-sale-confusion doctrines should be extended to include something that we can only describe as a "smoky-bar theory of confusion." Initial-interest-confusion doctrine, which we have already rejected on the facts of this case, applies when allegedly improper use of a trademark attracts potential purchasers to consider products or services provided by the infringer. Post-sale-confusion doctrine, which we have also rejected on the facts of this case, applies when allegedly improper use of protected trade dress on a lower-quality product diminishes the reputation of the holder of the rights to that trade dress.
Gibson Br. at 20-21. As Gibson concedes that PRS produces high-quality guitars, we do not believe such an occurrence could result in confusion harmful to Gibson. If a budding musician sees an individual he or she admires playing a PRS guitar, but believes it to be a Gibson guitar, the logical result would be that the budding musician would go out and purchase a Gibson guitar. Gibson is helped, rather than harmed, by any such confusion.
2. The Summary Judgment Motions
We have determined as a matter of law that initial-interest confusion, post-sale confusion, and Gibson's "smoky-bar theory of confusion" cannot be used to demonstrate infringement of the trademark at issue in this case. Gibson has conceded that point-of-sale confusion does not occur between these high-priced guitars, and our review of the record does not suggest otherwise. Accordingly, there is simply no basis on which Gibson can show confusion that would demonstrate trademark infringement in violation of the Lanham Act. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 125 S.Ct. 542, 547, 160 L.Ed.2d 440 (2004) (noting that a claim of trademark infringement under the Lanham Act "requires a showing that the defendant's actual practice is likely to produce confusion in the minds of consumers about the origin of the goods or services in question"). Accordingly, PRS, rather than Gibson, must be granted summary judgment on Gibson's trademark-infringement claim.
With respect to Gibson's trademark-infringement claim, we
KENNEDY, Circuit Judge, concurring in part and dissenting in part.
I agree that the district court erred in granting summary judgment in favor of Gibson and I also agree that Gibson cannot maintain its trademark infringement claim either on a theory of likelihood of confusion at the point-of-sale (for it has disclaimed that a consumer could be confused at the point-of-sale)
First, this court has recognized initial-interest confusion as an infringement under the Lanham Act. See PACCAR Inc., v. Telescan Technologies, L.L.C., 319 F.3d 243, 253 (6th Cir.2003) (citing Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir.2000) ("Such confusion, which is actionable as an infringement under the Lanham Act, occurs when a consumer is lured to a product by its similarity to a known mark, even though the consumer realizes the true identity and origin of the product before consummating a purchase.")).
The majority's reason for rejecting the application of initial interest confusion to product shapes is based upon the concern that since many product shapes within the same category will appear similar when viewed from a sufficient distance, if the initial-interest confusion doctrine were applied to product shapes, a product shape trademark holder could prevent competitors from producing even dissimilar products that appeared from a sufficient distance to be somewhat similar to a
Thus, this preliminary question (whether a product shape identifies its source when viewed from the point where the confusion is alleged to have occurred), when in dispute, as it is here, must be addressed before determining if there is an issue of fact as to whether a competitor's product shape causes initial interest confusion due to its similarity to a trademark holder's product shape.
Here, PRS argues that, as there are only a few general shapes in which guitars are made, and since there are numerous single-cutaway style guitars in the market, a consumer would not, and, indeed, could not, identify the source of a guitar on the basis of its shape. Although PRS would likely prevail on this issue, I cannot say, in light of the record as developed, that it has met its burden establishing that there is no genuine issue of material fact as to whether the shape of Gibson's guitar identifies its source.
Since the district court incorrectly analyzed the issue of whether Gibson's trademark served to identify its source from the distance where the confusion was alleged to have occurred, I would remand for consideration of this issue.
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 311 F.Supp.2d 690, 694-95 (M.D.Tenn.2004) ("Gibson I") (quotation marks, citations, and footnote omitted).
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F.Supp.2d 841, 854 (M.D.Tenn. 2004) ("Gibson II").
Gibson I, 311 F.Supp.2d at 719; see also Gibson II, 325 F.Supp.2d at 849 ("Elements of the Les Paul are so intermingled with PRS's Singlecut that the entire Singlecut guitar is the offending product."); id. at 852 ("Finally, Gibson's trade mark is not, as PRS argues, the two dimensional guitar, but rather is the entire Les Paul guitar and its appearance.").
Abercrombie, 280 F.3d at 629 (internal quotations omitted) (brackets and ellipses in Abercrombie). The distinction between trademark and trade dress is particularly important, given the posture of this case. As we noted above, after the district court granted Gibson's partial summary judgment motion, the district court approved the parties' agreement to dismiss with prejudice all of Gibson's remaining claims, including its claim for trade-dress infringement. Accordingly, the only remaining Gibson claim is the § 1114(1)(a) trademark-infringement claim.
Id. at 253 (emphasis added). The three cases we cited in support of the initial-interest-confusion comment in PACCAR are also Internet cases. See id. (citing Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir.2000) (Internet sale of herbal products intended as alternatives to well-known prescription medications, using names for the herbal products confusingly similar to those of the prescription medications); Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1062 (9th Cir.1999) (use of trademark "moviebuff.com" in metatags of a competitor's website); Green Prods. Co. v. Independence Corn By-Products Co., 992 F.Supp. 1070 (N.D.Ia.1997) (registration of website domain name confusingly similar to competitor's trademarked name)). Our suggestion that initial-interest-confusion doctrine applies to disputes over Internet domain names does not mean (as the dissent seems suggest) that "initial interest confusion is a recognized theory of relief generally for [all types of] trademark infringements." Dissent at 554.
To the contrary, the applicability of the initial-interest-confusion doctrine outside of the Internet context is an issue of first impression in our circuit. Although other circuits have applied the initial-interest-confusion doctrine to find trademark infringement based on use of a deliberately deceptive name or logo, see, e.g., Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 259 (2d Cir. 1987); Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331, 1342 (2d Cir.1975), we are not aware of any circuit that has applied the initial-interest-confusion doctrine to a trademark on a product's shape.
The potential ramifications of applying this judicially created doctrine to product-shape trademarks are different from the ramifications of applying the doctrine to trademarks on a product's name, a company's name, or a company's logo. Cf. Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 201-03, 207, 209, 212-13, 215 (3rd Cir.1995) (discussing the related context of product-configuration trade dress). Specifically, there are only a limited number of shapes in which many products can be made. A product may have a shape which is neither functional nor generic (and hence which can be trademarked) but nonetheless is still likely to resemble a competing product when viewed from the far end of a store aisle. Thus, many legitimately competing product shapes are likely to create some initial interest in the competing product due to the competing product's resemblance to the better-known product when viewed from afar. In other words, application of the initial-interest-confusion doctrine to product shapes would allow trademark holders to protect not only the actual product shapes they have trademarked, but also a "penumbra" of more or less similar shapes that would not otherwise qualify for trademark protection.
In response, the dissent suggests that product-shape trademark-holders be required to demonstrate "that its product shape identifies its source when viewed from the vantage point where the confusion is alleged to have occurred" prior to presenting evidence of initial-interest confusion. Dissent at 555. This strikes us as a needlessly complicated and unworkable inquiry. Particularly when the product is sold by many diverse retailers with varying display styles and store configurations, it would seem to require the district court to conduct an initial hearing as to whether each instance of alleged initial-interest confusion is admissible. As consumers will often observe a product from multiple different locations, it seems difficult to determine in any non-arbitrary manner what observation distances are appropriate when considering whether a given product shape creates initial-interest confusion (e.g., in front of the product shelf, from a store aisle, from the store's front door, etc.).
Finally, our concerns about the effect of extending the initial-interest-confusion doctrine to product-shape trademarks are particularly relevant in the summary-judgment context. To the extent we allow it to do so, evidence of initial-interest confusion comes into the eight-factor Frisch test as a substitute for evidence of actual confusion. If our belief that nearly all product-shape trademark-holders will be able to show an issue of fact as to whether a competing product creates initial-interest confusion is correct, application of the initial-interest-confusion doctrine in the product-shape context would make it substantially easier for product-shape trademark-holders to survive a defendant's summary-judgment motion than for plaintiffs alleging any other type of trademark infringement. (Contrary to the dissent's view, see Dissent at 556 n. 7, product-shape trademark-holders are perfectly capable of protecting their rights without the initial-interest-confusion doctrine: they must simply show, for example, that the marks are sufficiently similar or that purchasers exercise sufficiently little care in choosing a product to show confusion at the point of sale). Given severe anti-competitive effects such a decision could have, we do not believe it is appropriate to extend the initial-interest-confusion doctrine in this manner.
Given the limited fact situation we have before us, we do not go so far as to hold that there is never a circumstance in which it would be appropriate to apply the initial-interest-confusion doctrine to a product-shape trademark. However, we are unable to imagine such a situation at this juncture, and we do hold that the doctrine cannot apply on the facts of this case.
It is true, of course, that a product shape trademark holder could argue that a competitor's product causes confusion as to its source when viewed from varying perspectives. Assuming the defendant argues that the trademark holder's product shape does not identify its source when viewed from any of those perspectives, the court will need to address this argument. In this case, the only relevant allegation of initial-interest confusion is from Gibson's expert, who claimed that upon entering Gruhn's Guitar store in Nashville, he looked at what he thought was a wall of Gibson Les Paul guitars to discover, upon closer inspection, that the guitars were actually PRS Singlecuts. Since PRS argues that Gibson's guitar shape does not identify its source, Gibson must establish that its shape does identify its source from the perspective where the alleged confusion occurred. Ultimately, Gibson may not be able to succeed in establishing this point, but PRS has not met its burden to be entitled to summary judgment.