‘Reverse Confusion’ Argument Fails in Sports Agency’s Trademark Suit

Sep 24, 2004

The 9th U.S. Circuit Court of Appeals has affirmed a district court’s denial of a preliminary injunction in a case where a sports agency, PlayMakers LLC, had argued that the popular television series of the same name, produced by ESPN, infringed upon its trademark. Specifically, it claimed that the defendant’s use of its trademark created a climate of “reverse confusion” for its clients and prospects.
PlayMakers represents and advises professional athletes and aspiring professional athletes in contract negotiations with professional sports teams and in endorsements and appearances. The company claimed it relies primarily on word-of-mouth for its marketing.
In the summer of 2003 ESPN began advertising a new dramatic series, “Playmakers,” that offered a behind-the-scenes view of a fictional professional football team. PlayMakers, the agency, filed a trademark claim. The court wrote that the plaintiff was primarily alarmed that the series fostered “negative stereotypes, for example, the prevalence of illegal drug use and domestic abuse among football players.”
Later that fall, the plaintiffs asked the court to issue a preliminary injunction “enjoining ESPN’s use of the title ‘Playmakers’ in a second Series season, in the sale of the Series to another network, or in the release of the Series on video and DVD.”
The plaintiff “argued that ESPN’s extensive, yet junior, use of (it’s) mark … was likely to devalue (it’s) mark and the goodwill of its business.”
The district court denied the motion, orally. The plaintiff appealed.
Upon review, the appeals court wrote that “the ultimate question in a reverse confusion case is ‘whether consumers doing business with the senior user might mistakenly believe that they are dealing with the junior user.’ Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1130 (9th Cir. 1998).” The appeals court found that the district court identified and applied the appropriate standards governing the likelihood of confusion analysis in a reverse confusion trademark infringement case. One of LLC’s primary complaints is that the district court erred in its determination that tarnishment “is not a factor in the likelihood of confusion analysis.” 297 F. Supp. 2d at 1284. The appeals court wrote that the plaintiff cited “no binding authority” proving that it should be “a factor to be considered in determining whether consumer confusion is likely.
“Like the district court, we are persuaded that, despite the marks’ similarities, the commonness of the term “playmaker,” the remoteness of the parties’ lines of business, the differences in their choices of marketing channels, and the degree of care professional and aspiring professional athletes are likely to exercise before choosing an agent strongly suggest that (it’s) prospective clients are not likely to be confused.”
Thus, the plaintiff “failed to show a sufficient likelihood of success on the merits to warrant a preliminary injunction.” PlayMakers, LLC v. ESPN, INC., et al., 9th Cir., No. 04-35031, 7/15/04
Attorneys of Record: (for plaintiff)O. Yale Lewis, Jr., Hendricks & Lewis, Seattle, Washington; (for defendants) Robert L. Raskopf, White & Case, LLP, New York, New York, and Stokes Lawrence, P.S., Seattle, Washington.


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