Tabberone is pronounced tab ber won
not tay ber own
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Tabberone is pronounced tab ber won |
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| This information is taken directly from the court opinion. It is not taken out of context nor is it altered. |
| From Home Box Office v Showtime, 832 F.2d 1311 (2d. Cir. 1987) |
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Although we agree with the district court's application of the likelihood of confusion standard to Showtime's promotional materials, our view of the proper role
of disclaimers in trademark infringement cases is somewhat different. Although we have found disclaimers to be adequate in certain cases, each case must be
judged by considering the circumstances of the relevant business and its consumers. We have found the use of disclaimers to be an adequate remedy when they
are sufficient to avoid substantially the risk of consumer confusion. See, e.g., Springs Mills, Inc. v. Ultracashmere House, Ltd., 724 F.2d 352, 355 (2d Cir.1983);
Berlitz Schools of Languages v. Everest House, 619 F.2d 211, 215 (2d Cir.1980). In many circumstances a disclaimer can avoid the problem of objectionable
infringement by significantly reducing or eliminating consumer confusion by making clear the source of a product.
See Soltex Polymer Corporation v. Fortex Industries, Inc., 832 F.2d 1325 (2d Cir. 1987) (minimal to moderate amount of consumer confusion found by
district court could be cured effectively through the use of a disclaimer). We believe, however, that the record before us is not sufficient to support a finding that the
disclaimers proposed by Showtime will be effective in substantially reducing consumer confusion. In fact, our examination of some of the promotional materials first
submitted to the district court by Showtime as exhibits at the preliminary injunction hearing indicates to us that some of the potentially confusing statements are not
effectively disclaimed because the disclaiming information does not appear in sufficiently close proximity to the infringing statements. As an example, we find
Showtime's use of disclaimers to be especially problematic in the case of one of the multiple panel brochures submitted to the district court which had an infringing
use on its back panel and a disclaimer only appearing on an inside panel. In addition, we believe that the district court should not have received or reviewed the
revised promotional materials that Showtime presented at the hearing because this process did not provide sufficient notice to HBO or an adequate opportunity
to be heard on the proposed disclaimers.
Requiring infringing users such as Showtime to demonstrate the effectiveness of proposed disclaimers is supported by cases from other circuits in which the use of a disclaimer by an infringing user has been found not to be sufficient to avoid consumer confusion in the marketplace. See, e.g. United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 142 (3d Cir.1981); Miss Universe, Inc. v. Flesher, 605 F.2d 1130, 1134-35 (9th Cir.1979). In addition, we note that there is a body of academic literature that questions the effectiveness of disclaimers in preventing consumer confusion as to the source of a product. See Jacoby & Raskoff, Disclaimers as a Remedy for Trademark Infringement Litigation: More Trouble Than They Are Worth?, 76 Trademark Rept. 35 (1986); Radin, Disclaimers as a Remedy for Trademark Infringement: Inadequacies and Alternatives, 76 Trademark Rept. 59 (1986); 2 H. Nims, Unfair Competition and Trademarks Secs. 366f, 379a (4th ed.1947). These authors have concluded that disclaimers are frequently not effective. One discussion concluded that disclaimers, especially those (like the disclaimers in question in this case) which employ brief negator words such as "no" or "not," are generally ineffective. See Jacoby & Raskopf, supra at 54. This conclusion was based on a study of the effect of disclaimers on football jerseys, an example of the effect of corrective advertising, and a generalized framework involving behavioral science research. The authors recommended that courts should consider the effectiveness of a proposed disclaimer more carefully and "[w]henever disclaimers are considered, empirical studies should be used to evaluate their likely impact. At the very least, no disclaimer should issue without a full hearing regarding its likely effectiveness." Id. at 57-58 (citations ommitted), see also Radin, supra at 72. Radin also advocates the use of other methods either to make a disclaimer more effective or wholly unnecessary; the primary method he advocates is altering the context in which the infringing use occurs to make consumer confusion less likely. Id. at 71. |
