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Guthrie Healthcare System v. Contextmedia, Inc.

United States District Court, Second Circuit

January 16, 2014

CONTEXTMEDIA, INC., et al., Defendants.



On October 26, 2012, plaintiff Guthrie Healthcare System filed a complaint against ContextMedia, Inc. and its Chief Executive Officer and President, Rishi Shah, alleging trademark infringement, unfair competition, and false designation of origin in violation of the Lanham Act, as well as common-law unfair competition and unjust enrichment. (ECF No. 1.) On October 28, 2013, plaintiff filed an amended complaint. (ECF No. 44.) On October 31, 2013, defendants filed the instant motion seeking summary judgment on all counts. (ECF No. 35.) On January 14, 2014, defendants filed a motion to strike plaintiffs jury demand. (ECF No. 65.)

For the reasons set forth below, defendants are entitled to summary judgment on the issue of monetary relief on plaintiffs Lanham Act claims: there no triable issue of material fact as to actual consumer confusion, bad faith, or willful deception. However, genuine issues of material fact exist as to the merits of plaintiffs Lanham Act claims and state-law claims as well as defendant Shah's individual liability. Accordingly, defendants' motion for summary judgment is GRANTED IN PART and DENIED IN PART. Additionally, because plaintiff may only seek equitable relief, plaintiff is not entitled to a jury. Defendants' motion to strike plaintiffs jury demand is thus GRANTED.


A. Factual Background

The following facts are undisputed, unless indicated otherwise. The Court recites only those facts relevant to its decision.

Plaintiff provides various medical care and healthcare services, including operating hospitals, clinics, and pharmacies. (Defs.' Rule 56.1 Statement of Undisputed Material Facts ("Defs.' 56.1") ¶ 1, ECF No. 41; Pl.'s Counterstatement of Undisputed Material Facts ("Pl.'s 56.1") ¶¶ 1, 5, ECF No. 59; Pl.'s Objs. and Resps. to Defs.' Rule 56.1 Statement ("Pl.'s Resp.") ¶ 1, ECF No. 60.) Plaintiff claims that it has built a reputation in all of its subsidiary businesses for providing reliable, high-quality services. (Pl.'s 56.1 ¶ 18.) Defendant ContextMedia distributes educational health-related content, including advertisements and health-related videos shown on television screens in the waiting rooms of doctors' practices. (Defs.' 56.1 ¶¶ 28-29.) According to plaintiff, some of ContextMedia's customers are located within the same geographic region as plaintiffs facilities and include physicians affiliated with one of plaintiffs main competitors; they also include pharmaceutical companies with which plaintiff does business and is likely to do business in the future. (Pl.'s 56.1 ¶¶ 92-93.)

In 2000, plaintiff retained Monigle, an advertising agency, to develop a new unified brand strategy for all of its businesses. (Pl.'s 56.1 ¶ 20.) According to plaintiff, Monigle's creative director Michael Herburger created a trademark that would symbolize and represent Guthrie's ideas and tell Guthrie's story. (Pl.'s 56.1 ¶¶ 22, 24-25, 27.) Guthrie ultimately selected an image as the centerpiece of its brand that it describes as "a shield-shaped device with a white stylized human figure inserted so as to segment the shield into four distinct sections astride the word GUTHRIE.'" (Guthrie Healthcare Sys.'s Mem. of L. in Opp. to Defs.' Mot. for Summ. J. ("Pl.'s Opp.") 3, ECF No. 51; Pl.'s 56.1 ¶¶ 31-32.)

According to defendants, plaintiff first began using the shield artwork with the Guthrie name in April 2006. (Defs.' 56.1 ¶ 7.) According to plaintiff, it first launched its trademark and new brand identity in September 2001, and each of its subsidiary businesses has used the Guthrie brand and mark consistently since then. (Pl.'s Resp. ¶ 7; Pl.'s 56.1 ¶ 15.)[1] Plaintiffs mark is registered with the United States Patent and Trademark Office (the "PTO") for use in connection with "medical services, namely, hospital, emergency room, nursing home, home infusion, hospice and home health care and nursing services." (Defs.' 56.1 ¶ 25.)

According to plaintiff, it has aggressively advertised its business using its trademark since launching it in September 2001. (Pl.'s 56.1 ¶¶ 40, 42-51.) For example, plaintiff uses its mark in advertisements, educational and training programs, and in marketing. (Pl.'s 56.1 ¶¶ 42-44, 48-50.) Plaintiff claims that, from 2008 to 2013, it spent over $7 million promoting the Guthrie trademark and brand, with over $5 million spent on advertising featuring the mark. (Pl.'s 56.1 ¶¶ 46-47.) In 2010, plaintiff initiated a plan to distribute healthcare-related information through a network of video screens. (Pl.'s 56.1 ¶¶ 52-54.)

According to plaintiff, it filed an application to register its trademark with the PTO on May 1, 2006. (Pl.'s 56.1 ¶ 61.) On January 22, 2008, the PTO registered plaintiffs mark. (Pl.'s 56.1 ¶ 64.)

ContextMedia has used its marks, which also consist of graphic artwork featuring a shield with text, since early March 2008. (Defs.' 56.1 ¶ 30.) ContextMedia began developing the artwork for its logo in late 2007. (Defs.' 56.1 ¶ 31.) ContextMedia hired Anthony Bonilla, a graphic designer recommended by an outside board member who ran a graphic design company, on a freelance basis. (Defs.' 56.1 ¶¶ 31-32.) Mr. Bonilla was given instructions about the brand image that ContextMedia sought. (Defs.' 56.1 ¶ 33.) Mr. Bonilla then created initial proposals, several of which used shields and stylized figures. (Defs.' 56.1 ¶ 35.)[2] Mr. Bonilla and ContextMedia went back and forth making alterations and design choices until a final mark was created. (Defs.' 56.1 ¶¶ 35-38.) There is no evidence in the record that Mr. Bonilla or ContextMedia had heard of plaintiff or seen its mark until several years later. (Defs.' 56.1 ¶¶ 34, 41.)

According to plaintiff, defendant Shah, the CEO, president, director, and controlling shareholder of ContextMedia, selected the trademarks that ContextMedia would use. CPl.'s 56.1 ¶¶ 157-64.) Plaintiff further asserts that defendants failed to conduct trademark searches for any of the marks. (Pl.'s 56.1 ¶ 112.)

Neither party was aware of the other party until December 2011, when plaintiffs co-CEO saw a ContextMedia holiday card that bore one of the ContextMedia marks. (Defs.' 56.1 ¶¶ 42-44.)

On January 3, 2012, a representative of plaintiff contacted ContextMedia in regard to its logo and requested an explanation from ContextMedia. CDefs.' 56.1 ¶ 44; Pl.'s Resp. ¶ 44; Pl.'s 56.1 ¶ 130.) According to plaintiff, it followed that phone call with a lettel' on February 1, 2012, but ContextMedia ignored both complaints. (Pl.'s 56.1 ¶ 132.)

By January 10, 2012, the PTO had registered or approved registration of four of ContextMedia's eight marks. (Defs.' 56.1 ¶ 39.) On January 27, 2012, the PTO initially rejected three of the remaining ContextMedia applications in light of plaintiffs prior-registered mark. (Defs.' 56.1 ¶ 41.) The PTO Examining Attorney noted that "the marks share a nearly identical depiction of a stick figure, formed by curved lines and superimposed on a shield, " that the "striking similarity of the highly distinctive design element in both marks is sufficient to create a common commercial impression, " and that patients encountering the marks "would likely assume such marks represent the same commercial source." (Pl.'s 56.1 ¶¶ 134-35.)

In response to the PTO's rejections, ContextMedia argued that there was no likelihood of consumer confusion because the marks as a whole were dissimilar; the graphic portions were made up of elements commonly used in logos for healthrelated companies and thus the graphic portion of the mark was weak; the words (which were dramatically different) should be given greater weight than the graphic portions; the companies provided quite different services; and the companies had coexisted for a substantial amount of time with no actual consumer confusion. (Defs.' 56.1 ¶ 41.) The PTO then approved registration of those three marks. (Id.) On August 16, 2013, ContextMedia filed an application to register its eighth mark, for "ContextMedia: Health." (Defs.' 56.1 ¶ 39.)

There is no evidence of actual consumer confusion. (Defs.' 56.1 ¶ 45.)[3]

B. Procedural History

On October 26, 2012, plaintiff Guthrie filed its complaint against defendants, asserting a dozen causes of action. Counts One through Eight allege infringement of registered trademarks in violation of the Lanham Act, 15 U.S.C. § 1114. (Am. Compl. ¶¶ 49-112.) Counts Nine and Ten allege unfair competition and false designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a). (Am. Compl. ¶¶ 113-125.) Count Eleven alleges common-law unfair competition. (Am. Compl. ¶¶ 126-132.) Count Twelve alleges trademark dilution in violation of 15 G.S.C. § 1125(c) (Am. Compl. ¶¶ 133-135); plaintiff has abandoned that claim (Pl.'s Opp. 1 n.1). Count Thirteen alleges common-law unjust enrichment. (Am. Compl. ¶¶ 136-139.)

On October 31, 2013, defendants moved for summary judgment on all counts. (ECF No. 35.) Defendants argue that they are entitled to summary judgment on plaintiffs trademark infringement, unfair competition, false designation of origin, and unjust enrichment claims because there is no genuine factual dispute that there is no likelihood of consumer confusion. (See Defs.' Mem. in Supp. of Their Mot. For Summ. J. ("Defs.' Mot.") 1, 7, 19, ECF No. 36.) Defendants also argue that plaintiff cannot obtain monetary relief on its Lanham Act claims and that individual defendant Shah cannot be held individually liable to plaintiff as a matter of law. (Defs.' Mot. 1.) That motion became fully briefed on December 16, 2013. (ECF No. 61.)

On January 14, 2014, defendants filed a motion to strike plaintiffs jury demand, arguing that plaintiff seeks only equitable relief and is therefore not entitled to a jury. (ECF No. 65.)


Summary judgment may not be granted unless a movant shows, based on admissible evidence in the record, "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). The moving party bears the burden of demonstrating "the absence of a genuine issue of material fact." Celotex Corp. v. Catrett , 477 U.S. 317, 323 (1986). On summary judgment, the Court must "construe all evidence in the light most favorable to the nonmoving party, drawing all inferences and resolving all ambiguities in its favor." Dickerson v. Napolitano , 604 F.3d 732, 740 (2d Cir. 2010).

Once the moving party has asserted facts showing that the nonmoving party's claims cannot be sustained, the opposing party must set out specific facts showing a genuine issue of material fact for trial. Price v. Cushman & Wakefield, Inc. , 808 F.Supp.2d 670, 685 (S.D.N.Y. 2011); see also Wright v. Goord , 554 F.3d 255, 266 (2d Cir. 2009). "[A] party may not rely on mere speculation or conjecture as to the true nature of the facts to overcome a motion for summary judgment, " because "[m]ere conclusory allegations or denials... cannot by themselves create a genuine issue of material fact where none would otherwise exist." Hicks v. Baines , 593 F.3d 159, 166 (2d Cir. 2010) (citations omitted); see also Price , 808 F.Supp.2d at 685 ("In seeking to show that there is a genuine issue of material fact for trial, the non-moving party cannot rely on mere allegations, denials, conjectures or conclusory statements, but must present affirmative and specific evidence showing that there is a genuine issue for trial.").

Only disputes relating to material facts-i.e., "facts that might affect the outcome of the suit under the governing law" - will properly preclude the entry of summary judgment. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248 (1986); see alsQ Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp. , 475 U.S. 574, 586 (1986) (stating that the nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts"). The Court should not accept evidence presented by the nonmoving party that is so "blatantly contradicted by the record... that no reasonable jury could believe it." Scott v. Harris , 550 U.S. 372, 380 (2007); see also Zellner v. Summerlin , 494 F.3d 344, 371 (2d Cir. 2007) ("Incontrovertible evidence relied on by the moving party... should be credited by the court on [a summary judgment) motion if it so utterly discredits the opposing party's version that no reasonable juror could fail to believe the version advanced by the moving party.").


In the instant case, the question of whether monetary relief would be available if liability were proven as to the Lanham Act claims is clearly answered in the negative. However, questions of fact as to liability-and ...

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