OHIO STATE UNIVERSITY v. THOMAS

Wynn Oil I") (holding that bulk car wax and complete car washing service of one party and car care products of other party offered consumers the fundamentally same thing: a clean car).

The facts here fit into the category of "competing directly" by offering the exact same goods or services-information and advertising about Ohio State athletics. Therefore, "confusion is likely if the marks are sufficiently similar." Daddy's Junky Music Stores, 109 F.3d at 282. The marks here however are not only similar, but they are identical. Further, Ohio State currently publishes game day programs for football, as well as numerous other sports programs and material containing athletics news, player information, team statistics, and schedules. This is the exact information Defendants publish on their website, electronic publications, and anticipated printed publication. Currently, Ohio State licenses its Ohio State trademarks to IMG, at a cost of over one million dollars, to publish athletic programs directed towards Ohio State fans; the same audience to whom Defendants direct their products.

Moreover, Defendants have sought and obtained advertising from the same advertisers as Ohio State athletic programs, such as Nike and Gatorade. Indeed, Defendants' website actually links to Ohio State's official athletics site for certain news stories, giving the viewer a false sense of affiliation but also revealing the overlap in content between the two websites. Finally, the allegedly infringing website and publications are replete with trademarked Ohio State terms and logos; scarlet and grey predominate; photographs of the Ohio State Football Stadium, Coach Tressel, the Ohio State athletics flag, and Ohio State athletes in their Ohio State uniforms predominate; and, the font used is the same block font used by Ohio State in its advertisements and information publications related to Ohio State athletics.

Defendants argue that they are a news source similar to, for example, the Columbus Dispatch. The Dispatch, Defendants assert, reports on Ohio State athletics, utilizing pictures of the Ohio State trademarks without threat of infringement actions. Defendants contend that the goods and services offered by them, like those offered by the Dispatch, are "quite dissimilar" to those offered by Ohio State. As to the goods and services offered by Ohio State, Defendants assert that because the Ohio State University is an institution of higher learning, "its primary product" is education. Whereas Defendants and the Dispatch offer the news. Defendants' arguments are not well taken.

First, the Court is unpersuaded by Defendants' argument that its services are analogous to a newspaper. The allegedly infringing website and publications report exclusively on Ohio State athletics. That type of product and service is not analogous to the Columbus Dispatch, which may or may not on any given day report on Ohio State athletics, and daily reports on a variety of news interests.

Second, Ohio State's "primary product" is not relevant to the inquiry at hand. Ohio State does not claim infringement related to its educational products or services. Ohio State claims infringement, unfair competition, and cyberpiracy against its products and services related to the use of its trademarks in association with its athletic programs.

The Court finds that the relatedness, or similarity, between materials either published or licensed by Ohio State and the alleged infringing website and publications of Defendants point to a high likelihood of confusion. Consumers of the information contained on the alleged infringing website and in the alleged infringing publications are "likely to believe that the services, similarly marked, come from the same source, or are somehow connected with or sponsored by" Ohio State. Daddy's Junky Music Stores, 109 F.3d at 283. The information offered by Defendants are certainly likely to be connected to Ohio State "in the mind of a prospective" visitor to the website or reader of the publications. See id.

3. Similarity of the marks

Similarity of marks is a factor of considerable weight. Daddy's Junky Music Stores, 109 F.3d at 282 (citing Champions Golf Club, 78 F.3d at 1119). Ohio State argues that the marks are not just similar but that they are identical. Defendants do not disagree that the marks at issue here are identical. Instead, Defendants contend that "there are, frankly, only so many ways the term [Buckeye] can look in all caps." (Doc. # 15 at 4.) This Court agrees. That is why when a company wants to make use of the trademarked term in connection with a website or print publication exclusively related to Ohio State athletics it must obtain a license.

Defendants have used both actual marks of Ohio State and styled their publications to appear like licensed or original Ohio State materials. The Court finds that this factor weighs heavily in favor of the likelihood of confusion.

4. Evidence of actual confusion

"Evidence of actual confusion is undoubtedly the best evidence of likelihood of confusion." Daddy's Junky Music Stores, 109 F.3d at 284 (citing Wynn Oil I, 839 F.2d at 1188). "Due to the difficulty of securing evidence of actual confusion, a lack of such evidence is rarely significant, and the factor of actual confusion `is weighted heavily only when there is evidence of past confusion, or perhaps, when the particular circumstances indicate such evidence should have been available.'" Id. (citing Wynn Oil I, 839 F.2d at 1188) (quoting Bandag, Inc. v. Al Bolser's Tire Stores, Inc., 750 F.2d 903, 914 (Fed. Cir. 1984)).

Ohio State admits that it does not, at this time, have any evidence of actual confusion. The Court, however, agrees with Ohio State's assertion that there has been no opportunity for it to engage in a search for this type of evidence, just becoming aware of Defendants' website and publications within the last few weeks. Cf. Little Caesar Enters., Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 572 (6th Cir. 1987) (less weight given when "there has been no real opportunity for actual confusion").

5. Marketing channels used

The fifth factor in the trademark infringement and unfair competition analysis requires a court to consider the similarities or differences between the predominant customers of the parties' respective goods or services. Daddy's Junky Music Stores, 109 F.3d at 285 (citing Homeowners Group, 931 F.2d at 1110). Further, a court must determine whether the marketing approaches employed by each party resemble each other. Id. (citing Homeowners Group, 931 F.2d at 1110).

Here, Ohio State, its licensees, and Defendants all use the same marketing channels to distribute their respective publications. Defendants admit that they intend to offer their print publications in and around the Ohio State University. The fact that Defendants' "Buckeye Gameday" is intended to be free of cost does not take away from the fact that the marketing approaches employed by them and Ohio State resemble each other. Defendants have sought and obtained advertisement from Columbus businesses and national businesses that are potential or actual business partners with Ohio State. Defendants and Ohio State direct the publication to the same demographic and distribute (or plan to distribute) in the same geographic area.

Further, Defendants make use of the same Internet channels used by Ohio State. "`[S]imultaneous use of the Internet as a marketing tool exacerbates the likelihood of confusion,' given the fact that "entering a web site takes little effort — usually one click from a linked site or a search engine's list; thus, Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership.'" Audi AG v. D'Amato, 469 F.3d 534, 544 (6th Cir. 2006) (citing PACCAR, 319 F.3d at 252).

Thus, the Court concludes that the similarities between the predominant customers of the parties' respective goods and services and the similar marketing approaches employed by them are likely to lead consumers to believe that Defendants and Ohio State "are affiliated in some way." Homeowners Group, 931 F.2d at 1107.

6. Likely degree of purchaser care

The degree of care with which consumers likely purchase the parties' goods or services may affect the likelihood of confusion.

Generally, in assessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution. However, when a buyer has expertise or is otherwise more sophisticated with respect to the purchase of the services at issue, a higher standard is proper. Similarly, when services are expensive or unusual, the buyer can be expected to exercise greater care in her purchases. When services are sold to such buyers, other things being equal, there is less likelihood of confusion.

Homeowners Group, 931 F.2d at 1111. For example, home buyers will display a high degree of care when selecting their real estate brokers, see id., whereas consumers of fast-food are unlikely to employ much care during their purchases. See Little Caesar, 834 F.2d at 572.

In the case sub judice, Defendants' website and publications are free. The commercial benefit realized by Defendants is in the advertising revenue obtained via the mass circulation of the allegedly infringing publications and the consumer visits to the allegedly infringing website. The Court concludes that consumers here will not exercise a high degree of care when viewing Defendants' products. The cost of the product is not merely low, but it is free. Moreover, the Internet consumers are especially unlikely to make significant efforts or to take care in ascertaining the true source of the material they view, particularly when both the domain name and the website itself display Ohio State's name and trademarks associated with Ohio State

athletics. See Audi AG, 469 F.3d at 544 ("Internet users do not undergo a highly sophisticated analysis when searching for domain names.").

7. Intent of the defendant in selecting the mark

Intent is relevant because purposeful copying indicates that the alleged infringer, who has "at least as much" knowledge "as the trier of fact" regarding the likelihood of confusion, believes that his copying may divert some business from the senior user. Little Caesar, 834 F.2d at 572. Direct evidence of intentional copying is not necessary to prove intent. See Wynn Oil Co. v. American Way Serv. Corp., 943 F.2d 595,603 (6th Cir. 1991) (" Wynn Oil II"). Rather, the use of a contested mark with knowledge of the protected mark at issue can support a finding of intentional copying. See id. A defendant's intentional copying of a senior user's mark however creates a presumption of likelihood of confusion. Ferrari s.p.a. Esercizio Fabriche Automobili D. Corse v. Roberts, 944 F.2d 1235, 1243 (6th Cir. 1991).

Defendants argue that the intent behind the choice of domain name of the allegedly infringing website and the names of the allegedly infringing publications "stem[] not from a desire to mislead or steal customers or even advertisers away from the Ohio State University's athletic web site," but instead stem "from a desire to simply identify what the website or magazine focuses on: news about Ohio State athletics." (Doc. # 5 at 5.) Defendants conclude that because of this, their use is a "fair use." This Court disagrees.

The Sixth Circuit explains:

A defendant may raise the affirmative defense of fair use by establishing that:

the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.

Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 612 (6th Cir. 2009) (quoting 15 U.S.C. § 1115(b)(4) and citing KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118-22 (2004) and Audi AG, 469 F.3d at 547).

The problem for Defendants, and the reason why this defense is unavailable to them, is that the terms and logos they have chosen to use are not being used "otherwise than as a mark." The fair use affirmative defense only permits others to use a protected mark to describe aspects of their own goods, provided the use is in good faith and not as a mark. For example, in ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 920-21 (6th Cir. 2003), the court held that an artist's use of Tiger Woods's name on the back of the envelope containing the artist's print and in the narrative description of the print was "purely descriptive," and that there was "nothing to indicate that [it was] used other than in good faith." Woods's name, the court noted, was used only to describe the content of the print, and all of the materials accompanying the print clearly identified the artist himself as the source of the print. Id. In the instant action, however, the marks at issue are not used in the descriptive sense, but instead are used as marks.

Accordingly, the Court finds that Defendants intentionally copied Ohio State's trademarks intending to capitalize on the commercial value of Ohio State's reputation and good will.

8. Likelihood of expansion of the product lines

"[A] `strong possibility' that either party will expand his business to compete with the other or be marketed to the same consumers will weigh in favor of finding that the present use is infringing." Homeowners Group, 931 F.2d at 1112 (citing Restatement of Torts § 731(b) comment c (1938)). "[A]s with the seventh factor, an affirmative finding will provide a strong indication that the parties' simultaneous use of the marks is likely to lead to confusion, while a negative finding is not a strong indication to the contrary." Champions Golf Club, 78 F.3d at 1122 (emphasis in original).

In this case, Defendants are poised to expand the market and distribution channels for their products. Both the "Ohio State Buckeyes E-Book" and the "Buckeye Gameday" indicate that Defendants will distribute thousands of hard copies of the publication "Buckeye Gameday" in the Columbus area, and the "Ohio State Buckeye E-Book" also indicates that "subscribers will receive the publication each week" with new content over the course of the year. Such expansion will undoubtably enlarge the breadth of the competition between Ohio State and Defendants and further illustrates the likelihood that confusion among consumers will be compounded over time to Ohio State's detriment.

9. Conclusion of the likelihood of success on the merits

As set out above, seven of the eight factors indicate that Defendants' allegedly infringing website and publications are highly likely to result in consumer confusion. Defendants have argued, with regard to the website, that any proof of consumer confusion is rebutted by a disclaimer at the bottom of the landing page on the website that states: "This website is an unofficial and independently operated source of news and information not affiliated with any school or team."

The Sixth Circuit has specifically stated that "such a disclaimer does not absolve [the defendant] of liability for his unlawful use of marks identical to [the plaintiff]'s trademarks." Audi AG, 469 F.3d at 546 (citing Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665, 673-74 (E.D. Mich. 2002) ("The principle that disclaimers are often ineffective is especially applicable when the infringer uses an exact replica of the relevant trademark.")). The Audi AG court went on to explain:

In addition, as we stated in PACCAR,

[a]n infringing domain name has the potential to misdirect consumers as they search for web sites associated with the owner of a trademark. A disclaimer disavowing affiliation with the trademark owner read by a consumer after reaching the web site comes too late. This "initial interest confusion" is recognized as an infringement under the Lanham Act.

PACCAR, 319 F.3d at 253.

Id. For these same reasons, this Court finds that Defendants' disclaimer does not absolve Defendants of liability here.

Consequently, the Court concludes that Ohio State has demonstrated a strong likelihood that it will succeed on the merits of its claims of trademark infringement and unfair competition.

B. Irreparable Injury

Once a moving party has demonstrated a likelihood of confusion, a finding of irreparable injury ordinarily follows. Wynn Oil II, 943 F.2d at 608. Ohio State has already demonstrated that there is a high likelihood that consumers will associate Defendants' website and publications with Ohio State. Moreover, given a trademark's unique role in protecting intangible assets, such as reputation and goodwill, injuries that arise as a result of trademark infringement and public confusion "are by their very nature irreparable and not susceptible of adequate measurement for remedy at law." Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d 852, 858 (7th Cir. 1982). See also Central Benefits Mutual Ins. Co. v. Blue Cross and Blue Shield Ass'n, 711 F. Supp. 1423, 1434 (S.D. Ohio 1989) ("Trademark infringement by nature is generally

irreparable and the showing of a high probability of confusion almost invariably gives rise to irreparable harm."); Dominic's Rest. of Dayton, Inc. v. Mantia, 2009 U.S. Dist. LEXIS 37215, *36 (S.D. Ohio April 20, 2009) (same). The Processed Plastic court went on to observe:

The most corrosive and irreparable harm attributable to trademark infringement is the inability of the victim to control the nature and quality of the defendant's goods. Even if the infringer's products are of high quality, the plaintiff can properly insist that its reputation should not be imperiled by the acts of another." quoting 4 R. Calmann "Unfair Competition, Trademarks and Monopolies," section 88.3(b) at 205 (3rd ed. 1970).

Id.

The Court concludes Ohio State will suffer irreparable harm if Defendants continue to publish and disseminate their products because they improperly trade on the goodwill and reputation of Ohio State. Accordingly, this element of the preliminary injunction standard also favors Ohio State.

C. Harm to Others

The third factor that the Court must consider is whether issuance of the requested injunction will cause substantial harm.

In a trademark case, if the movant can show a likelihood of success, then the harm to others caused by an injunction will likely consist in part of the non-movant's lost profits from sales of the apparently infringing articles and a loss of the money expended on promotional materials and advertising. Such harm caused to apparent infringers, however, is not entitled to consideration in assessing the harm caused by an injunction. See Central Benefits Mutual Ins. Co. v. Blue Cross and Blue Shield Ass'n, 711 F. Supp. 1423, 1435 (S.D. Ohio 1989).

Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1461 (S.D. Ohio 1990).

"A party who willfully proceeds to expend funds on infringing activities cannot claim the loss of those funds as a ground for denying preliminary injunctive relief." Central Benefits Mutual Ins. Co., 711 F. Supp. at 1435. "Accordingly, if the plaintiff alleging trademark infringement can show a likelihood of success, the `harm to others' factor of the preliminary injunction standard would normally favor the plaintiff as well." Worthington Foods, 732 F. Supp. at 1462.

The Court finds that this is the normal situation where, because Ohio State has shown a strong likelihood of success on the merits, the harm to others element also favors Ohio State. Defendants cannot claim a loss of profits on their infringing activities as harm. Thus, the balance of harms favors granting Ohio State's motion for emergency injunctive relief.

D. Public Interest

The Court concludes that the public interest favors issuing a preliminary injunction. In trademark cases, public policy concerns may weigh in favor of preliminary injunctive relief because an injunction would halt confusion in the marketplace. See Worthington Foods, 732, F. Supp. at 1463. See also P G v. Georgia-Pacific Consumer Prods. LP, No. 1:09-cv-318, 2009 U.S. Dist. LEXIS 72052, at *30 (S.D. Ohio August 3, 2009) ("Absent a likelihood of confusion, it is not within the public interest to grant an injunction at this time."). Further, the Court finds persuasive Ohio State's argument that the Ohio State University is a public institution, funded by the public who has an interest in ensuring that is marks are used properly and under the quality control of Ohio State, thereby ensuring that Ohio State can maximize its own revenue associated with the use of its name, reputation, goodwill, and intellectual property.

Accordingly, the public interest also weighs in favor of issuance of the requested injunction.

E. Conclusion — Injunctive Relief

As set forth above, all four factors in the injunctive relief analysis weigh in favor of granting Ohio State's request for emergency injunctive relief. The Court determines that Ohio State's request for a combined temporary restraining order and preliminary injunction has merit. The Court does not find it necessary, nor have Defendants requested the opportunity, to engage in expedited discovery to prepare for a second injunctive relief hearing. Moreover, there is nothing before the Court to indicate that discovery can produce any evidence that could possibly affect the Court's conclusions related to the injunctive relief analysis. Therefore, a second injunctive relief hearing is unnecessary.

F. Bond

This Court must determine whether a bond is appropriate in this case. It is within the sound discretion of the trial court to set the amount of a bond or set a nominal bond under Rule 65 of the Federal Rules of Civil Procedure. See Roth v. Bank of the Commonwealth, 583 F.2d 527, 539 (6th Cir. 1978) (explaining that while a district court must consider whether security is appropriate, the decision is left to the sound discretion of the court); see also Moltan Co. v. Eagle-Picher Indus., Inc., 55 F.3d 1171, 1176 (6th Cir. 1995) ("While we recognize that the language of Rule 65(c) appears to be mandatory, and that many circuits have so interpreted it, the rule in our circuit has long been that the district court possesses discretion over whether to require the posting of security.").

Here, based on the fact that all four factors in the preliminary injunction analysis favor Ohio State and Ohio State would certainly able to pay any potential damages awarded against it, the Court finds that no bond is required.

IV. Conclusion

Based on the foregoing, the Court GRANTS Plaintiff's Motion for a Temporary Restraining Order and a Preliminary Injunction. (Doc. # 4.)

V. Temporary Restraining Order and Preliminary Injunction

IT IS HEREBY ORDERED that Defendants and their agents, servants, employees, successors, representatives and assigns, and all others in active concert and privity with them who receive actual notice of this Temporary Restraining Order and Preliminary Injunction by personal service or otherwise, are enjoined from:

1. Using the Ohio State trademarks, as defined in the amended complaint and described in this decision, in commerce in any way.

2. Using, registering, selling, transferring or assigning any domain name that contains any of the Ohio State trademarks.

3. Using the Ohio State trademarks in connection with a website or as metatags, directory names, other computer addresses, invisible data, or otherwise engaging in acts or conduct that would cause confusion as to the source, sponsorship or affiliation of Ohio State with Defendants.

4. Using the Ohio State trademarks in connection with any printed publication.

IT IS FURTHER ORDERED that this Temporary Restraining Order and Preliminary Injunction shall become effective upon entry of this Opinion and Order.

IT IS FURTHER ORDERED that this Temporary Restraining Order and Preliminary Injunction shall remain in effect pending disposition of this action on the merits.