May 2011 Issue

Civil Cases

THOIP v. Walt Disney Co.,
2011 WL 1792585 (S.D.N.Y. May 10, 2011)

ABSTRACT
The Southern District of New York granted summary judgment to Disney, holding that no reasonable juror could find that Disney’s use of the wording LITTLE MISS and MISS on t-shirts bearing its iconic cartoon characters would cause reverse confusion with plaintiff’s use of LITTLE MISS and its own cartoon characters.  After finding plaintiff’s survey inadmissible as flawed and not credible, the court concluded that absent any evidence of actual confusion, the likelihood-of-confusion factors weighed in favor of Disney.

CASE SUMMARY

FACTS
Plaintiff THOIP is the owner of several trademarks consisting of the phrase LITTLE MISS followed by a descriptive term, such as LITTLE MISS TROUBLE, LITTLE MISS BOSSY, and others.  The marks appear on t-shirts along with characters drawn from the popular children’s book series titled “Little Miss” by Rogers Hargreaves, to which THOIP owns the rights.  The Walt Disney Company (“Disney”) began selling t-shirts in its theme parks and World of Disney stores with images of its iconic female characters (e.g., Minnie Mouse, Daisy Duck, Tinker Bell) appearing next to phrases such as LITTLE MISS PERFECT and MISS CHATTERBOX.  Examples of the parties’ respective character art as displayed on t-shirts are shown below.

THOIP filed suit in 2008, alleging that Disney’s t-shirts were likely to cause forward and reverse confusion with its own t-shirts.  In August 2010, the court granted Disney’s motion for partial summary judgment on the forward-confusion claim.  The court left open the issue of reverse confusion, however, finding that four of the eight Polaroid factors weighed in THOIP’s favor, and invited the parties to submit evidence on the issue of actual confusion.

In response, THOIP commenced an “array” survey in shopping malls around the country, where consumers viewed various t-shirts lined up next to each other, including the parties’ t-shirts, and were asked a series of questions to determine whether they believed any of the t-shirts were put out by the same companies.  THOIP’s expert concluded that there was a net likelihood of reverse confusion between THOIP’s t-shirts and Disney’s t-shirts of 8% for the MISS t-shirts and 19% for the LITTLE MISS t-shirts.  Disney conducted a different type of survey known as an “Eveready” survey, where participants were shown only one t-shirt and asked questions about its source.  Disney’s survey expert found no residual evidence of reverse confusion. 

Disney moved to exclude THOIP’s survey as flawed and inadmissible under Federal Rules of Evidence 702 and 403, and moved for summary judgment on the issue of reverse confusion.

ANALYSIS
After a detailed analysis of THOIP’s survey and expert report, the court concluded that (1) the survey failed to replicate actual marketplace conditions because there was no evidence that the t-shirts would ever be encountered side-by-side as they had been shown in the survey; (2) the survey lacked a proper control because the alleged “control” group t-shirts were more unlike than like the Disney t-shirts;
(3) the expert improperly counted certain responses as indicating confusion even if Disney was not mentioned; and (4) the survey suffered from demand defects in that the expert set up the survey so that the Disney and THOIP t-shirts were clearly open to comparison.  Ultimately, the court found that THOIP’s survey was not a reliable indicator of consumer confusion, and found it inadmissible.

The court then turned to an analysis of whether the remaining evidence was sufficient to grant Disney’s motion for summary judgment on THOIP’s reverse-confusion claim.  In its earlier ruling, the court had concluded that the first Polaroid factor—the strength of THOIP’s marks—favored THOIP.  But the court revisited this finding in response to Disney’s argument that, although forward confusion is more likely where a plaintiff’s mark is strong, the opposite is true with respect to reverse confusion, as a strong mark is less likely to be swamped by a junior user.  The court agreed that in a reverse-confusion case, it must look at the comparative strength of the junior user’s marks.  Within this framework, the court concluded that although the strength of THOIP’s marks could weigh against it for purposes of assessing reverse confusion, the comparatively greater strength of Disney’s marks (i.e., its characters) meant that the first factor still weighed in THOIP’s favor, “albeit less heavily” than the court had initially concluded.

In its previous ruling, the court had also found that the following factors all weighed in favor of THOIP on the issue of reverse confusion: (1) the similarity of the allegedly infringing elements of Disney’s t-shirts to THOIP’s mark; (2) the competitive proximity of the parties’ t-shirts; and (3) the equal quality of the products.  However, while the court found that Disney had likely intended to copy THOIP’s t-shirts, this was not the same as demonstrating that Disney had intended to exploit the goodwill and reputation of THOIP by creating t-shirts “with the intent to sow confusion between two companies’ products.”  Accordingly, the court looked to the remaining factor—evidence of actual reverse confusion—to tip the balance in finding reverse confusion.

Although actual confusion need not be shown in order to prevail in a reverse-confusion case, the court noted that it is “highly probative” on the issue.  Both parties’ t-shirts were available on the market for close to a year, but THOIP presented no evidence of actual confusion, and its survey was excluded.  Although Disney’s survey was admissible, the court nevertheless found that it failed to replicate actual market conditions and was thus “largely irrelevant.”  Thus, the court found that it was in essentially the same position that it had been at the time of its August 2010 ruling, with neither party proffering probative, reliable evidence of reverse confusion.  As a result, the court concluded that the “actual-confusion” factor weighed in Disney’s favor.

The court found that the competitive proximity, similar quality of the t-shirts, and strength of Disney’s marks weighed slightly in THOIP’s favor on the issue of reverse confusion.  However, in light of THOIP’s lack of reliable survey evidence suggestive of actual reverse confusion, the absence of any nonhypothetical evidence showing that Disney’s t-shirts were likely to overwhelm THOIP’s mark, and no evidence demonstrating Disney’s bad faith, the court concluded that no reasonable juror could find reverse confusion.

CONCLUSION
This decision shows the value of a properly conducted confusion survey.  In balancing the Polaroid factors, the court expressly stated that “had THOIP submitted strong (probative and reliable) survey evidence of reverse confusion,” the court would have “conclude[d] that a reasonable juror could find reverse confusion,” and denied Disney’s motion for summary judgment.