Surfer movie producer sues shoe seller for trademark infringement. BROWN v. FOOTLOCKER

Trademark law is intended to protect consumers from being tricked into buying products from someone other than the trademark owner. A trademark is something that a seller uses to brand its products. Traditionally a trademark is considered a word phrase or symbol, but anything that signals to consumers the identity of the product manufacturer can qualify for trademark protection. The first user of a trademark is referred to as the senior user, subsequent users are called junior users. Trademark law grants the senior user a trademark owner the exclusive right to brand its products with a trademark. If someone other than the trademark owner starts branding products with a trademark in a way that is likely to cause consumer confusion, that can be considered trademark infringement.

The likelihood that consumer confusion will occur is the key issue in trademark infringement. Determining when a likelihood of confusion exists can be difficult to objectively define. Courts review several factors, referred to as Polaroid factors, to determine whether there is a likelihood of confusion. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). Each circuit in the United States federal court system has a slightly different set of factors but the principles of the test are similar. Those factors are: (1) Strength of the senior user’s mark, (2) Similarity of the marks, (3) Similarity of the products or services, (4) Likelihood that the senior user will expand their product line into the junior user’s product line, (5) The junior user’s intent in adopting the mark, (6) Evidence of actual confusion, (7) Sophistication of the buyers, and (8) Quality of the junior user’s products or services.

Two trademarks do not need to be identical for trademark infringement to occur. The purpose of the Polaroid factors is to give courts an objective test to determine when there is a likelihood of consumer confusion between two trademarks. Sometimes two trademarks can be similar and a court will decline to find trademark infringement has occurred, therefore it is helpful to study court cases to learn how a court applies the Polaroid factors.

BRUCE BROWN FILMS, LLC v. FOOTLOCKER, INC., NIKE, INC., 2:20-cv-02553 (C.D.CA 2020) is a case where the Polaroid factors will heavily influence the outcome of the case.

The plaintiff in this case produced a movie in 1966 entitled The Endless Summer. The movie follows two surfers on their trip around the world in search of the perfect wave is considered to be one of the most influential films to depict surfing and the surfing lifestyle. The movie posters from The Endless Summer film, are also considered iconic and world famous. The movie poster was designed by Bruce Brown and consists of a series of stylized blue waves with a
large orange sun. The plaintiff owns multiple federal trademark registrations, for the brand name ENDLESS SUMMER, THE ENDLESS SUMMER, and the Endless Summer design mark. Plaintiff has also licensed the use of the Endless Summer brands in connection with promotional and media uses, including retail services and media promotion rights. The plaintiff’s movie poster is reproduced above on the left.

Defendant Footlocker is engaged in the business of selling merchandise, including footwear, clothing and headwear, through their Champs retail and online stores (“Champs”). Defendant Nike is a major supplier of footwear, clothing and related products that Champs sells. May of 2019, Defendants launched a marketing campaign that used the words “Endless Summer” and elements that were reminiscent of the plaintiff’s film poster. The defendant’s marketing campaign consisted of social media posts and in store displays. An example of one of the defendant’s in store displays is reproduced above on the right.

The Plaintiff filed a cm[plaint for trademark infringement in March 2020 against the Defendants. In its complaint the Plaintiff alleges that Defendants are trying to capitalize off the good will created by Plaintiff’s movie and trademarks. Plaintiff requests that the court impose an injunction and award the Plaintiffs damages for the infringement among other things. The Defendant’s have not answered the complaint yet.

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