Argued: December 11, 2015
a provider of healthcare services in New York and
Pennsylvania, and Defendant, a provider of digital
health-related content nationwide, both appeal from the
judgment of the United States District Court for the Southern
District of New York (Forrest, J.), which granted limited
permanent injunctive relief on Plaintiff's claim of
trademark infringement. The complaint alleged that
Defendant's trademarks were confusingly similar to
Plaintiff's trademark. The injunction, following a bench
trial, prohibited Defendant from using its marks within
Plaintiff's geographic service area, but placed no
restriction on Defendant's use of its marks on the
Internet or outside Plaintiff's service area. The Court
of Appeals concludes that Defendant's trademarks are
infringing, but that the current limitations placed on
Defendant by the district court in the injunction were based
on an incorrect standard and fail to give Plaintiff and the
public adequate protection from likely confusion. The finding
of liability and the grant of injunctive relief are AFFIRMED.
The scope of the injunction is expanded, and the case is
REMANDED for further proceedings.
ELLIOTT J. STEIN, Stevens & Lee, Lawrenceville, NJ, (Bradley
L. Mitchell, Neil C. Schur, on the brief), for
P. JOYCE, Sidley Austin LLP, New York, NY, (Joshua J.
Fougere, on the brief), for
Before: JACOBS, LEVAL, CALABRESI, Circuit Judges
and Defendant each appeal from the judgment of the
United States District Court for the Southern District of New
York (Forrest, J.), which, following a bench trial,
imposed on Defendant a limited injunction. Defendant contests
the finding of liability, and Plaintiff contests the limited
scope of the injunction. The complaint alleged trademark
infringement in violation of the Lanham Act, 15 U.S.C. §
1114, unfair competition, and a number of related claims, on
the basis that Defendant's trademark logo was confusingly
similar to Plaintiff's trademark. The court ruled in
Plaintiff's favor, finding that a likelihood of confusion
resulted from Defendant's use of trademarks similar to
Plaintiff's. The court accordingly granted permanent
injunctive relief, prohibiting Defendant from using its marks
within Plaintiff's geographic service area ("Guthrie
Service Area") (covering the "Twin Tiers"
region of Northern Pennsylvania and Southern New York), but
held that Defendant may continue to use its marks everywhere
outside the Guthrie Service Area, as well as without
restriction in Internet transmissions, on Defendant's
websites and on social media.
agree with the district court's liability determination
that there is a likelihood of confusion between
Plaintiff's and Defendant's trademarks. We conclude,
however, that, in restricting the scope of the injunction,
the court misapplied the law, and failed to adequately
protect the interests of Plaintiff and the public from likely
confusion. We therefore affirm the judgment in part, vacate
in part, expand the scope of the injunction, and remand for
further consideration of the scope of the injunction.
Guthrie Healthcare System is a Pennsylvania non-profit
corporation composed of Guthrie Healthcare, the Guthrie
Clinic, and the Guthrie Foundation. Operating primarily in
the Twin Tiers region of New York and Pennsylvania, Plaintiff
has 32 medical facilities, including three hospitals and 29
clinics, as well as a number of specialized healthcare
facilities such as a cardiology center and a cancer center.
Plaintiff also operates home healthcare services, hospice
services, and a durable medical equipment company. It has a
multi-disciplinary medical group practice that includes more
than 280 physicians and 130 mid-level providers (physician
assistants and nurse practitioners) who practice in New York
and Pennsylvania. It also operates a pharmacy, and several
medical supply stores, which sell directly to the public.
recruits doctors and residents nationwide. It provides
educational programs for its physicians, nurses, and medical
technicians. Additionally, it operates the Guthrie School of
Nursing, which recruits students nationwide. The Guthrie
Foundation conducts medical research and fundraising beyond
the Guthrie Service Area, and disseminates medical
information over the Internet, as well as in symposia and
seminars. It requires that such information meet
evidence-based medicine guidelines.
refuses to endorse third-party products or services or to
host advertisements, in order to accommodate research
funders' sensitivities, preserve its eligibility for
clinical trials, and avoid the fact or appearance of conflict
of interest, bias, or partiality.
derives a substantial portion of its patient-care revenue
from referrals from physicians and medical professionals.
Around 20% of the approximately $300 million annually paid to
Plaintiff for specialized medical care comes from referrals
by other doctors and medical professionals who are not
affiliated with Plaintiff. Plaintiff focuses considerable
marketing efforts on these referring doctors and medical
professionals, inviting them to classes, seminars, and
symposia, and assuring them that Guthrie will not seek to
provide medical services to the referred patients beyond
those for which they were referred.
ContextMedia ("CMI"), founded in 2006, has offices
in Chicago and New York City, and employs 42 people. Rishi
Shah is CMI's president and one of its directors.
Defendant serves approximately 2, 600 physician practices,
and operates in all 50 states.
business is to deliver health-related content to physician
practices. Defendant installs digital screens in waiting
areas, examination rooms, and infusion rooms in physician
practices which play short videos and clips about health and
wellness to patients at those facilities. In the vast
majority of instances, Defendant's revenue comes from
advertising displayed with its content; a small number of
physicians who subscribe to its service pay a fee in order to
avoid advertisements. The advertisers whose ads appear
together with Defendant's content, its "sponsors,
" are mostly large pharmaceutical companies; their ads
are displayed in between the segments of educational
material Defendant displays on its screens is primarily
educational digital content related to health and wellness,
such as short segments on nutrition and exercise tips. Much
of this material is created by organizations such as the
American Heart Association, the American Dietetic
Association, the Academy of Nutrition and Dietetics, the
Juvenile Diabetes Research Foundation, Health Day TV, and D
Life, among others, from which Defendant obtains licenses to
broadcast their materials.
offices that wish to display CMI's programming in their
practices enroll as Defendant's "members."
Defendant then installs flat panel display units, media
players, and necessary hardware in their waiting rooms.
Defendant recruits new members by placing cold calls to
has two websites: www.contextmediahealth.com, which serves
primarily members, and www.contextmediainc.com, which is
directed primarily to potential sponsors, prospective
employees, and media.
screen is divided into three sections. A sidebar on the left
side of the screen displays CMI's marks. There is also a
main content window, and a news ticker at the bottom of the
screen. The main content window also occasionally displays
the CMI marks.
launched the Guthrie Trademark and a new brand identity in
September 2001. The mark was developed by Monigle Associates,
a consulting firm that works in corporate branding and
identity. Soon after, every aspect of Plaintiffs business
bore the Guthrie Trademark. Plaintiff appHed to register the
Guthrie Trademark with the United States Patent and Trademark
Office ("PTO") in 2006, and the mark became a
Registered Trademark on January 22, 2008. Plaintiffs mark is
Guthrie Trademark has two elements-a logo on the left and the
Guthrie name, which appears in bold, capital letters to the
right of the logo. This litigation concerns primarily the
logo. The Guthrie logo consists of a shield containing a
stylized human figure composed of crescent moon segments,
topped by a detached oval head. The upper part of the
body-outstretched arms and torso-is represented by a single
crescent moon shape with its two points curving upward, each
representing an arm, terminating at points at the outer edges
of the background shield. The portion of the body below that
crescent is represented by two partial vertical crescents,
joined at the top where they meet the upper body crescent and
combine to represent the lower part of the torso, and
separated at the bottom, so that each represents a leg. The
points of the crescents curve toward the viewer's left,
and each lower tip ends at the border of the background
shield. The center point between the tips of the figure's
legs is substantially to the right of the vertical center
line of the background shield, while the head is to the left
of the vertical centerline of the shield, so that the figure
tilts toward the viewer's left. The points of the
crescent moons (depicting the arms and the legs of the
figure) divide the shield into four segments. The human
figure is white. The segments of the shield outside the
outline of the human figure are colored - two segments are
dark blue, one is yellow, and one is orange. There is a
small, rectangular cutaway at the top right corner of the
shield. The word "Guthrie" is always presented in
large, bold, capital letters to the right of the logo.
Guthrie Trademark is prominently featured on both the primary
Guthrie website (www.guthrie.org) and the website focused on
personnel recruitment and business development
(www.ichoseguthrie.org). The Trademark appears on Guthrie
facilities, personnel badges, business cards, stationery,
brochures, reports, publications, billboards, buses, and in
print and television advertisements.
in 2001, Plaintiff ran television advertising that
prominently displayed the Guthrie Trademark in New York and
Pennsylvania. Plaintiff has also partnered with television
stations to produce health-related features that have been
broadcast to wide audiences, also featuring the Guthrie
Trademark. From July 1, 2008 to June 30, 2013, Plaintiff
spent $7.25 million promoting the Guthrie Mark and brand.
in 2010, Plaintiff began a new program called digital
signage, designed to "push" health-related content
out to video screens at Guthrie facilities. Only two such
screens are now in place, but according to Joseph Scopelliti,
the President and CEO of Guthrie, "many more" are
planned. The project was included in the 2013 and 2014 Fiscal
Year budgets. However, the two screens that are in place have
been there since 2011 (or 2010), and no more have gone up.
There has been no development or implementation of content
for the screens.
2007, Defendant hired Anthony Bonilla, a graphic designer, to
develop a logo. Defendant began using Bonilla's designs
as its logos in March 2008.
eight marks at issue in this litigation contain the same
graphic element, although the colors of the background
elements differ. Defendant's Mark 1 is pictured below:
the Guthrie logo. Defendant's logo consists of a shield
containing a stylized human figure composed of crescent moon
segments, topped by a detached oval head. The upper part of
the body-outstretched arms and torso-is represented by a
single crescent moon shape with its two points curving
upward, each representing an arm, terminating at points at
the outer edges of the background shield. The portion of the
body below that crescent is represented by two partial
vertical crescents, joined at the top where they meet the
upper body crescent and combine to represent the lower part
of the torso, and separated at the bottom so that each
represents a leg. Both of the points of these crescents curve
toward the viewer's left, and each lower tip ends at the
border of the background shield. The center point between the
tips of the figure's legs is to the right of the vertical
center line of the background shield, while the head is to
the left of the vertical centerline of the shield, so that
the figure tilts toward the viewer's left. The points of
the crescent moons (depicting the arms and the legs of the
figure) divide the shield into four segments.
Plaintiff's logo, the human figure in Defendant's
logo is always white, and the four background shield sections
are colored. Defendant uses its logo with text in bold,
usually capitalized letters, laid out to the right of the
logo. It uses the logo in eight different marks, the
differences lying primarily in the different text and in the
varying colors of the background shield. Three of
Defendant's marks have a color scheme similar to
Guthrie's-"Mark 1" (the logo with the text
"Diabetes Health Network"), "Mark 2, "
(the logo with the text "ContextMedia"), and
"Mark 8" (the logo with the text "ContextMedia
Health")-all have a purple segment, two yellow/gold
segments, and a dark blue segment. Other CMI marks at issue
have background color schemes that differ from Guthrie's.
Three of the CMI marks are in black and white. Defendant
sometimes uses its name, "ContextMedia, " alongside
the logo. In other marks, the text alongside the logo
describes the health-related subject matter of the particular
videos being shown. Occasionally Defendant's graphic
appears on its own without accompanying text.
originally refused to register three of Defendant's marks
because of likelihood of confusion with Plaintiff's mark.
Defendant responded to the PTO and made many of the same
arguments it made in this case. The PTO ultimately approved
the marks for registration, and registered Defendant's
first seven marks between 2009 and 2013.
August 16, 2013, ten months after this litigation commenced,
Defendant filed an Intent to Use Trademark Application to
register another mark ("CMI Mark 8").
has rebranded itself as ContextMedia Health, and intends to
use Mark 8 as its primary mark going forward. The
condition-specific marks continue to be used in some
communications with sponsors.
Events Triggering this Suit
had never heard of Defendant prior to December 2011, when
Plaintiff received a holiday card from Defendant which
displayed its Mark 1. Mary Ann Dougherty, Plaintiff's
director of strategic planning and marketing, saw that the
"[t]he graphic elements used in the [CMI] trademarks
[were] very, very similar to that of the Guthrie
trademark." On January 3, 2012, she contacted Defendant
to advise it that it was "duplicating"
Plaintiff's logo and requested an explanation. She
followed up with a letter on February 1, 2012,
"demanding" that Defendant cease all use of
Plaintiff's image. She never received a reply from
filed this action on October 26, 2012. The amended complaint
asserts eight counts of trademark infringement under 15
U.S.C. § 1114; a claim of unfair competition under 15
U.S.C. § 1125(a); a claim of false designation of origin
under 15 U.S.C. § 1125(a); common-law unfair
competition; a claim of trademark dilution under 15 U.S.C.
§ 1125(c); and unjust enrichment.
moved for summary judgment on all counts, and the district
court granted it in part. The court found that there was no
triable issue of material fact as to actual consumer
confusion, bad faith, or willful deception for Marks 1-7; as
a result, monetary relief was not available under the Lanham
Act. The court also granted summary judgment to Defendants on
the state-law unfair competition claim, which requires bad
faith as an element. Plaintiff abandoned its claim for
dilution prior to the grant of summary judgment. Before
trial, the court granted Defendant's motion for
reconsideration and dismissed Plaintiff's unjust