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By Tamlin Bason
Sept. 29 — A defendant intended to create an impression that it was affiliated with Gonzaga University when it posted pictures of a bulldog dressed in a Gonzaga basketball jersey on social media websites, the U.S. District Court for the Eastern District of Washington held Sept. 25 (Corp. of Gonzaga Univ. v. Pendleton Enters.
“In the Spokane area, there is no dispute that Gonzaga's Identifiers and Marks are commercially strong,” the court said. By using a number of those marks—including the jersey clad bulldog—to promote its Spokane-based businesses, a defendant intended to create the impression that those businesses were affiliated with the university, the court said.
The court accordingly granted the school summary judgment on its Lanham Act claim for trademark infringement against a bar and a radio station, both of which were owned by the same defendant.
The court rejected the argument that the defendants should be allowed, under the fair use doctrine, to use Gonzaga's imagery in order to appeal to local sports fans.
“There are numerous ways in which Defendants may entertain their Gonzaga fans without infringing Plaintiff's trademark(s),” the court said.
In addition to its strong marks, Gonzaga's bid for summary judgment was also substantially helped by a record replete with instances of actual confusion. Some of this confusion was caused by Spokane Daiquiri Factory's use of a bulldog that resembled Gonzaga's official mascot, Spike.
Gonzaga owns a state registration on an image of a bulldog dressed in a jersey. Spokane Daiquiri Factory used a similar image on various social media websites which resulted in consumer complaints about the apparent use of Gonzaga's beloved mascot to sell alcohol to college students.
That concern was elevated by the fact that, according to one e-mail to the university from a student's outraged mother, Spokane Daiquiri Factory named its signature drink “Date Grape.” The e-mail went on to say that the name was “an obvious pun on Date Rape” and demonstrated “blatant insensitivity for victims of sexual assault.”
The e-mail concluded with a request that the university cease allowing Spike to be associated with such an establishment.
On balance, the court said, it was not a close call as to whether the school was entitled to summary judgment on its trademark infringement claim under Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a).Indeed, the court concluded that all of the likelihood of confusion factors either favored Gonzaga or were neutral. The court was particularly concerned that the defendants' use of Gonzaga marks was likely to harm the school's reputation. “The depiction of the bulldog in a Gonzaga jersey using a urinal as shown in the March 23, 2013, posting on Defendants' social media advertising website, for example, violates § 43(a) and the Plaintiff's right to control its reputation,” Judge Lonny R. Suko said. The court also had little trouble rejecting the defendants' fair use argument. “Because the primary purpose of the trademark laws is to protect the public from confusion, it would be somewhat anomalous to hold that the confusing use of another's trademark is ‘fair use' ” the court said. Gonzaga was represented by Mark Wayne Hendricksen of Wells St. John PS, Spokane, Wash. The defendants were represented by John Pierce, Spokane, Wash.
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