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


[page 1212]
Defendants' argument also ignores the doctrine of post-sale confusion. Post-sale confusion occurs "when consumers view a product outside the context in which it is originally distributed and confuse it with another, similar product." Academy of Motion Picture Arts & Scis., 944 F.2d at 1455. "The law in the Ninth Circuit is clear that `post-purchase confusion,' i.e. confusion on the part of someone other than the purchaser who, for example, simply sees the item after it has been purchased, can establish the required likelihood of confusion under the Lanham Act." Karl Storz Endoscopy Am., Inc. v. Surgical Techs., Inc., 285 F.3d 848 (9th Cir. 2002) (citations omitted).

As evidence of post-sale confusion of potential purchases of athletic shoes, adidas has submitted a double blind survey. Ford Dec., 8. Respondents not in the control group were shown a photograph of the Jonah shoe and asked questions regarding the source and authorization/approval of the shoes. Id., 3, 12. To focus on the stripes, the shell toe was digitally removed. Id., 12, n. 3. A preliminary review of the responses evidences that approximately 30% of the respondents expressed the belief that defendants' shoes are either made or put out by adidas. Id., 4. An additional 3% expressed the belief that defendants' shoes are being put out with the authorization and approval of adidas. Id. This supports a finding of likelihood of post-sale confusion. Id., 5, 17. Defendants challenge adidas' survey evidence on the grounds that it does not address children's model shoes, which are the only models that carry the B.U.M. name. However, they have submitted no evidence from which the court may conclude that adult shoes differ so significantly from children's shoes that the survey must be disregarded.


[page 1213]
2. The Original Superstar Trade Dress

Defendants also argue that even if a four stripe mark might theoretically be confusingly similar to the Three Stripe Mark, in this case, the trade dress displayed on their shoes is not in fact confusingly similar to the Original Superstar Trade Dress. This argument also should be rejected. Here, defendants point out that, unlike the Original Superstar Trade Dress, their shoes: (1) have no perforations between any of the stripes; (2) have no stitching design on the rear side quarter of the shoe; (3) pass the laces through silver eyelets; (4) have a different molded toe construction; and (5) have a different shaped colored moustache. However, defendants improperly ignore initial interest and post-sale confusion, focusing instead solely on point-of-sale confusion, asserting that these minor differences, as well as the B.U.M. price tags and labels, avoids any confusion. As discussed above, these minor differences and the source-indicating label may not avoid initial interest confusion. In addition, "post-sale confusion is equally relevant to a claim of trade dress infringement as it is to trademark infringement." Payless Shoesource, Inc. v. Reebok Int'l Ltd., 998 F.2d 985, 989-90 (Fed. Cir.1993).

This case is factually similar to Payless Shoesource, Inc., in which the district court recognized that defendant's private-label inexpensive shoes were "similar in appearance," but held that there would be no likelihood of confusion because the shoes were sold in different stores to different customers at different prices. The Federal Circuit vacated the decision, holding that "by exclusively focusing on confusion at the point of sale, the district court effectively disregarded Reebok's argument relating to `post-sale confusion.'" Id. at 989. In the post-sale context, the similarity of the products themselves is the most important factor tending to prove confusion. Id. at 989-90. "[P]ost-sale observers may be unaware that Payless and Reebok shoes are sold in different stores or at different prices, yet their confusion may be detrimental to Reebok." Id. at 990. Consumers will "attribute any perceived inferior quality of Payless shoes to Reebok, thus damaging Reebok's reputation and image." Id.

adidas has submitted some evidence that the materials used in the construction of the Jonah shoes are inferior to the materials used in constructing the Original Superstar shoes. Zerr Dec., 3-8. Here the striking similarity of the shoes and the evidence concerning the inferior quality of the B.U.M. shoes presents a triable issue of fact.

 

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