When a court observes that “the logos employed in Plaintiff’s and Defendant’s marks are jaw-droppingly similar—nearly identical not only in conception but also… in the great majority of the fine details of execution,” you don’t want to be the Defendant referred to.
Granted, by the time that the United States Court of the Appeals for the Second Circuit commented on the logos at issue in Guthrie Healthcare Systems v. ContextMedia, Inc., defendant ContextMedia (CMI) had already lost after trial in the Southern District of New York. On appeal, the Second Circuit upheld the finding that CMI’s mark infringed upon Guthrie’s mark, and then found that the limited permanent injunctive relief granted by the trial court was too limited—“based on an incorrect standard and [not sufficient] to give the Plaintiff and the public adequate protection from likely confusion.”
Likewise, as the defendant, you don’t want to read this in that same opinion: “[W]hile Defendant is not a ‘bad faith’ infringer, nor is it an entirely innocent infringer.” That’s just salt in the wound.
There’s not much, if anything, that’s novel about the matter of Guthrie v. ContextMedia, decided June 13, 2016. The opinion of the appellate court is mostly an appropriately detailed application of the Polaroid factors (to conclude that the trial court properly found infringement) followed by a review of the scope of an injunction as relief… which review leads to the conclusion that the trial court was in error in limiting the injunction to those geographic locations in the real world (that is, not online) where the plaintiff maintains a physical “service area.” But among the expected analyses and citations to the usual precedents, the opinion does offer up some gems of commentary, some subtle, some not so much.
Guthrie Healthcare System is a Pennsylvania non-profit corporation composed of three separate entities that operate primarily in the “Twin Tiers” region of New York and Pennsylvania—a region this commentator had never heard of before reading the opinion and of the existence of which he is still not convinced. In any event, Guthrie has “32 medical facilities, including three hospitals and 29 clinics, as well as a number of specialized heathcare facilities such as a cardiac center and a cancer center.” It also has a “multi-disciplinary medical group practice that includes more than 280 physicians and 130 mid-level providers.” Significantly, Guthrie “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.” In short, Guthrie is an impressive organization, seemingly admired by the appellate court.
CMI was “founded in 2006, has offices in Chicago and New York City, and employs 42 people.” It serves approximately 2,600 physician practices, operating in all 50 states. Its business is to “deliver health-related content to physician practices… install[ing] digital screens in waiting areas, examination rooms, and infusion rooms… which play short videos and clips about health and wellness to patients.” In a perfect world, this plaintiff and this defendant could easily live harmoniously. Read More…