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Scorpiniti v. Fox Television Studios, Inc.

United States District Court, N.D. Iowa, Cedar Rapids Division

January 23, 2013

Louis J. SCORPINITI, Plaintiff,
v.
FOX TELEVISION STUDIOS, INC., Defendant.

Page 867

[Copyrighted Material Omitted]

Page 868

Timothy J. Zarley, Zarley Law Firm, PLC, Des Moines, IA, for Plaintiff.

Christine Lebron-Dykeman, Jeffrey D. Harty, Jonathan Lee Kennedy, Bradley J. Powers, McKee, Voorhees & Sease, PLC, Des Moines, IA, for Defendant.

ORDER

LINDA R. READE, Chief Judge.

TABLE OF CONTENTS

I.

INTRODUCTION 869

II.

PROCEDURAL HISTORY 869

III.

SUBJECT MATTER JURISDICTION 869

IV.

SUMMARY JUDGMENT STANDARD 869

V.

RELEVANT FACTUAL BACKGROUND 870

A.

Parties 870

B.

Scorpiniti's THE GATE Mark 870

C.

FTVS's THE GATES Mark 871

D.

Alleged Infringement 871

VI.

ANALYSIS 873

A.

Infringement Claim 873

1.

Protectible interest 873

a.

Use in commerce 874

b.

Use in connection with television broadcasting services 876

c.

Summary 877

2.

Likelihood of confusion 878

a.

Strength of Scorpiniti's mark 879

I.

Conceptual strength 879

ii.

Commercial strength 881

iii.

Summary 882

b.

Similarity 882

c.

Competitive proximity 883

d.

Intent 884

e.

Degree of care 885

f.

Actual confusion 886

g.

Summary 887

3.

First Amendment 887

4.

Damages 888

B.

Remaining Claims 888

VII.

CONCLUSION 888

Page 869

I. INTRODUCTION

The matter before the court is Defendant Fox Television Studios, Inc.'s (" FTVS" ) " Motion for Summary Judgment" (" Motion" ) (docket no. 55).

II. PROCEDURAL HISTORY

On December 21, 2011, Plaintiff Louis J. Scorpiniti filed an Amended Complaint (" Complaint" ) (docket no. 15) against FTVS. Count I alleges trademark infringement in violation of 15 U.S.C. § 1114.[1] Count II alleges false designation of origin and unfair competition in violation of 15 U.S.C. § 1125. Count III alleges unfair competition under Iowa law.

On September 26, 2012, FTVS filed an Answer (docket no. 47), denying Scorpiniti's allegations, asserting affirmative defenses and counterclaims against Scorpiniti. Counterclaim I requests that the court cancel Scorpiniti's trademark for nonuse. Counterclaim II requests that the court cancel Scorpiniti's trademark due to fraud on the United States Patent and Trademark Office (" USPTO" ).

On November 14, 2012, FTVS filed the Motion. On December 12, 2012, Scorpiniti filed a Resistance (docket no. 66). On December 21, 2012, FTVS filed a Reply (docket no. 69). In the Motion, FTVS requests the opportunity to present oral argument. The court finds that a hearing is unnecessary. The matter is fully submitted and ready for decision.

III. SUBJECT MATTER JURISDICTION

The court has federal question subject matter jurisdiction over Scorpiniti's first two claims because they arise under the Lanham Act, 15 U.S.C. §§ 1114 and 1125. See 28 U.S.C. § 1331 (" The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States." ). The court has supplemental jurisdiction over Scorpiniti's third claim because " the federal-law claims and state-law claim [ ] in the case derive from a common nucleus of operative fact and are such that [a plaintiff] would ordinarily be expected to try them all in one judicial proceeding." Kan. Pub. Emps. Ret. Sys. v. Reimer & Koger Assocs., Inc., 77 F.3d 1063, 1067 (8th Cir.1996) (second alteration in original) (quoting Carnegie-Mellon Univ. v. Cohill, 484 U.S. 343, 349, 108 S.Ct. 614, 98 L.Ed.2d 720 (1988)) (internal quotation marks omitted); see also 28 U.S.C. § 1367 (" [I]n any civil action of which the district courts have original jurisdiction, the district courts shall have supplemental jurisdiction over all other claims that are so related to claims in the action within such original jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution." ).

IV. SUMMARY JUDGMENT STANDARD

Summary judgment is appropriate " if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). " A dispute is genuine if the evidence is such that it could cause a reasonable jury to return a verdict for either party; a fact is material if its resolution affects the outcome of the case." Amini v. City of Minneapolis, 643 F.3d 1068, 1074 (8th Cir.2011) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)), cert. denied, __ U.S. __, 132 S.Ct. 1144, 181 L.Ed.2d 1018 (2012). " [S]elf-serving allegations and denials are insufficient to create a genuine issue of material fact."

Page 870

Anuforo v. Comm'r, 614 F.3d 799, 807 (8th Cir.2010). " To survive a motion for summary judgment, the nonmoving party must substantiate [its] allegations with sufficient probative evidence [that] would permit a finding in [its] favor based on more than mere speculation, conjecture, or fantasy." Barber v. C1 Truck Driver Training, LLC, 656 F.3d 782, 801 (8th Cir.2011) (second alteration in original) (quoting Putman v. Unity Health Sys., 348 F.3d 732, 733-34 (8th Cir.2003)) (internal quotation marks omitted). The court must view the record in the light most favorable to the nonmoving party and afford it all reasonable inferences. See Schmidt v. Des Moines Pub. Sch., 655 F.3d 811, 819 (8th Cir.2011).

V. RELEVANT FACTUAL BACKGROUND

Viewing the evidence in the light most favorable to Scorpiniti and affording him all reasonable inferences, the uncontested material facts are as follows.

A. Parties

Scorpiniti is a citizen of Iowa who resides in Des Moines, Iowa. Scorpiniti produces and broadcasts religious-based television programs.

FTVS is a Delaware corporation with its principal place of business in Los Angeles, California. FTVS is a television production company that creates and produces television shows.

B. Scorpiniti's THE GATE Mark

On November 25, 2008, the USPTO registered " THE GATE," U.S. Reg. 3,536,556, to Scorpiniti as a service mark in International Class 38 for use in relation to " television broadcasting." Plaintiff's Exhibit 1 (docket no. 15-1) at 1. In his trademark registration application, Scorpiniti included the disclaimer, " [n]o claim is made to the exclusive right to use the, gate apart from the mark as shown." Defendant's Appendix (" Def. App'x" ) (docket nos. 55-3 through 55-4) at 48.

Scorpiniti first used THE GATE in 2007 in association with the program Soul Search, which is broadcast on the central Iowa Mediacom public access cable system. During his deposition, Scorpiniti testified that, while he had no documentation about the broadcast distribution of the central Iowa Mediacom public access cable system, he had heard that the " footprint is central Iowa to on occasion the footprint is considerably larger." Def. App'x at 3. Scorpiniti's friend, Craig Hutchinson, produces and stars in Soul Search. Soul Search is a religious music television program in which Hutchinson plays music videos and, in between videos, reads scripture and provides humor.

In 2007, Scorpiniti was developing his own religion-themed music television show, The Gate. When Scorpiniti received music videos that he felt were not appropriate for The Gate, he provided those videos to Hutchinson free of charge for use in Soul Search. At the beginning and end of each episode of Soul Search, a character generation appeared on screen stating that Soul Search was " in association with," among other things, " THE GATE." Defendant's Statement of Undisputed Facts (docket no. 55-2) ¶ 14. Occasionally, THE GATE was also used in a voiceover during Soul Search. Other than providing free music videos to Hutchinson and being a " cheerleader," Def. App'x at 5, Scorpiniti did not assist Hutchinson with Soul Search. Specifically, Scorpiniti did not distribute Soul Search or provide videography, audio or other ...


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