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"The only thing necessary for the triumph of evil is for good men to do nothing"
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B

There are two theories of confusion at issue here: post-sale confusion and initial interest confusion. Post-sale confusion occurs when someone other than the purchaser encounters the product in some capacity and is confused as to the product's source, affiliation, or sponsorship. See, e.g., Neles-Jamesbury, Inc. v. Valve Dynamics, Inc., 974 F. Supp. 964, 978 (S.D. Tex. 1997) ("`[L]ikelihood of confusion . . . can be at any point in the chain of distribution or ownership, including post-sale confusion of third parties who later encounter the product.'" (quoting Joy Mfg. Co. v. CGM Valve & Gauge Co., 703 F. Supp. 1387, 1394 (S.D. Tex. 1989))); 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 23:5 (4th ed. 2009) ("The vast majority of courts recognize post-sale confusion, which may occur among those who see an infringing mark in use by . . . owner[s] who were not confused at the time they bought the product."). Trademark infringement can also be based on "confusion that creates initial consumer interest, even though no actual sale is finally completed as a result of the confusion." Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 204 (5th Cir. 1998) (internal quotation marks and citation omitted).

MetroPCS argues that Virgin Mobile cannot prove likelihood of confusion under either theory. Virgin Mobile contends that consumers who encounter the reflashed handsets-whether by observing others' use of the handsets, using the handsets themselves, or purchasing reflashed handsets in the secondary market-are likely to be confused as to the association of the handsets and service with Virgin Mobile and to mistakenly believe that the decreased functionality of the handsets is attributed to Virgin Mobile. Virgin Mobile posits that, even if purchasers of reflashed handsets in the secondary market eventually learn, prior to purchase, that the trademark holder is unaffiliated with MetroPCS or its MetroFLASH service, MetroPCS still benefits from the initial interest confusion engendered by the association of MetroPCS with the trademark holder. Because the court concludes below that there is a genuine dispute of fact regarding whether there is a likelihood of post-sale confusion, the court need not consider whether there is a likelihood of initial interest confusion.


Virgin Mobile submits online sale listings in which owners of unlocked or reflashed handsets advertise the sale of their handsets in a manner that purportedly suggests that other companies are associated with MetroPCS. See, e.g., D. App. 81-83 (seller on eBay advertises a "Kyocera K612 Strobe Metro PCS Camera Cell Phone" and presents a stock photo image of a Virgin Mobile-branded handset); 91-96 (seller on eBay markets a "Brown Motorola W385 - Boost/MetroPCS cell phone"[10] that is "ready to use in Metro PCS network"); 105-07 (two listings on a "Wireless Dealer" website advertising a "Handset Verizon Metro PCS" and displaying photographs of phones that display the Verizon logo[11]). Virgin Mobile posits that these instances demonstrate actual and potential post-sale confusion occurring in the marketplace as a result of MetroPCS' reflashing. MetroPCS disputes the proposition that these listings constitute evidence of actual confusion. See P. 3-30-09 Reply Br. 22 ("Virgin Mobile has adduced no evidence of actual confusion.").

The court holds that a reasonable jury could not find that these listings demonstrate actual confusion as to the relationship between MetroPCS and the branded carrier. Cf. Moore Bus. Forms, Inc. v. Ryu, 960 F.2d 486, 491 (5th Cir. 1992) ("The record contains evidence of instances in which both customers and employees were confused by [defendant's] use of the mark and had inquired as to whether the two companies were affiliated."); Scott Fetzer Co., 381 F.3d at 487 (plaintiff submitted several affidavits recounting instances in which customers have said they thought defendant was an authorized dealer or repair shop). Assuming arguendo that the sale listings are themselves confusing, they still do not necessarily indicate actual confusion. At most, the sale listings evidence potential post-sale confusion.


I

Considering all the pertinent factors in toto, the court holds that a reasonable jury could find in favor of Virgin Mobile on the issue of likelihood of confusion. Accordingly, because genuine issues of material fact exist regarding whether MetroPCS "uses" Virgin Mobile's trademark for purposes of the Lanham Act and whether its use creates a likelihood of post-sale confusion, the court denies MetroPCS' motion for summary judgment on Virgin Mobile's direct infringement counterclaim.

 

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