SyncSort, Inc. v. Innovative Routines International, Inc., 2008 U.S. Dist. LEXIS 35364 (N.J. April 30, 2008).
Facts:
SyncSort and IRI sell sorting software for computers running Unix. SyncSort’s product contains a confidentiality legend reserving to the company all rights and stating that the information contained in the product is proprietary and confidential. IRI developed a program that could translate the programming language used for SyncSort’s product into language that operates IRI’s product. IRI used ‘syncsort’ as a metatag on its website, but this has been removed. SyncSort claimed IRI had used its proprietary information to develop the software translator.
Procedural History:
SyncSort filed an action claiming copyright infringement and trademark infringement (based on IRI’s use of ‘syncsort’ in its website metatag) among other claims, and sought injunctive relief, compensatory damages, and punitive damages. IRI counter-claimed for copyright infringement, among other claims, but the copyright infringement claims are not being pursued here. Both parties moved for summary judgment.
Holding: Summary judgment is granted for defendant IRI on the trademark infringement claim because it has shown that its used of ‘syncsort’ in its website metatage was a fair use.
Analysis: IRI has used the identical mark registered by SyncSort in its website metatags. It is not disputed whether this is a distinctive mark or whether it was used by IRI. The only determination at issue is the likelihood of consumer confusion, evaluated by the following factors: (1) the degree of similarity between the owner's mark and the alleged infringing mark;(2) the strength of the owner's mark;(3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;(4) the length of time the defendant has used the mark without evidence of actual confusion arising;(5) the intent of the defendant in adopting the mark;(6) the evidence of actual confusion;(7) whether the goods, competing or not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties' sales efforts are the same; (9) the relationship of the goods in the minds of consumers, whether because of the near-identity of the products, the similarity of function, or other factors; (10) other facts suggesting that the consuming public might expect the prior owner to manufacture *38 both products, or expect the prior owner to manufacture a product in the defendant's market, or expect that the prior owner is likely to expand into the defendant's market. However, the court notes that where a nominative fair use is at issue, some of these factors will mechanically weigh in favor of infringement where fair use exists. The court finds that IRI has a valid defense of nominative fair use because it uses the mark to describe its own product, the use of the mark was necessary in the description of IRI’s product, the term was used only once in description (rather than multiple times in an attempt at initial interest confusion), and the use of the mark reflects the true relationship between the mark owner (SyncSort) and IRI. This analysis shows that a court may find nominative fair use even where an entire mark is used by a defendant if use of the mark is necessary to a description of the defendant’s product and the use of the mark is limited to the number of instances required to describe that product.
Facts:
SyncSort and IRI sell sorting software for computers running Unix. SyncSort’s product contains a confidentiality legend reserving to the company all rights and stating that the information contained in the product is proprietary and confidential. IRI developed a program that could translate the programming language used for SyncSort’s product into language that operates IRI’s product. IRI used ‘syncsort’ as a metatag on its website, but this has been removed. SyncSort claimed IRI had used its proprietary information to develop the software translator.
Procedural History:
SyncSort filed an action claiming copyright infringement and trademark infringement (based on IRI’s use of ‘syncsort’ in its website metatag) among other claims, and sought injunctive relief, compensatory damages, and punitive damages. IRI counter-claimed for copyright infringement, among other claims, but the copyright infringement claims are not being pursued here. Both parties moved for summary judgment.
Holding: Summary judgment is granted for defendant IRI on the trademark infringement claim because it has shown that its used of ‘syncsort’ in its website metatage was a fair use.
Analysis: IRI has used the identical mark registered by SyncSort in its website metatags. It is not disputed whether this is a distinctive mark or whether it was used by IRI. The only determination at issue is the likelihood of consumer confusion, evaluated by the following factors: (1) the degree of similarity between the owner's mark and the alleged infringing mark;(2) the strength of the owner's mark;(3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;(4) the length of time the defendant has used the mark without evidence of actual confusion arising;(5) the intent of the defendant in adopting the mark;(6) the evidence of actual confusion;(7) whether the goods, competing or not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties' sales efforts are the same; (9) the relationship of the goods in the minds of consumers, whether because of the near-identity of the products, the similarity of function, or other factors; (10) other facts suggesting that the consuming public might expect the prior owner to manufacture *38 both products, or expect the prior owner to manufacture a product in the defendant's market, or expect that the prior owner is likely to expand into the defendant's market. However, the court notes that where a nominative fair use is at issue, some of these factors will mechanically weigh in favor of infringement where fair use exists. The court finds that IRI has a valid defense of nominative fair use because it uses the mark to describe its own product, the use of the mark was necessary in the description of IRI’s product, the term was used only once in description (rather than multiple times in an attempt at initial interest confusion), and the use of the mark reflects the true relationship between the mark owner (SyncSort) and IRI. This analysis shows that a court may find nominative fair use even where an entire mark is used by a defendant if use of the mark is necessary to a description of the defendant’s product and the use of the mark is limited to the number of instances required to describe that product.