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M2 Software, Inc. v. Madacy Entm't

M2 Software, Inc. v. Madacy Entm't

United States Court of Appeals for the Ninth Circuit

February 7, 2005, Argued and Submitted, Pasadena, California ; August 31, 2005, Filed

No. 03-55957

Opinion

 [***1163]   [*1076]  PREGERSON, Circuit Judge:

I. OVERVIEW

Plaintiff-Appellant M2 Software, Inc. ("M2 Software") is the owner of M2, a federally registered trademark that is used in conjunction with business management and interactive media application goods and services for the film and music industry. Defendants-Appellees Madacy Entertainment, Handleman Company, and SFX Entertainment (collectively, "Madacy") began using M2 Entertainment as a trademark for their new record label venture. Following failed licensing negotiations between the parties, M2 Software filed suit against Madacy in early 2000. A week after M2 Software filed its [**2]  suit against Madacy, Madacy began phasing out the use of its M2 Entertainment mark.

M2 Software argued that Madacy's use of the M2 Entertainment mark infringed M2 Software's M2 trademark and would cause a likelihood of confusion. Specifically, M2 Software's complaint alleged Madacy had committed: (1) federal trademark infringement, false designation and description of origin, and trademark dilution; (2) state trademark dilution, injury to business reputation, and unfair trade practices; and (3) common law trademark infringement, passing off, and unfair competition.

On January 8, 2002, the district court granted partial summary judgment in favor of Madacy. The district court ruled that no rational trier of fact could find a likelihood of forward confusion among either general consumers or music industry members or a likelihood of reverse confusion among music industry members.

A jury trial commenced on May 13, 2003. The only issue that went to the jury was whether there was a likelihood of reverse confusion among general consumers, i.e., consumers who were not members of the music industry. In other words, the jury was asked to decide whether general consumers would [**3]  mistakenly believe that they were purchasing Madacy's products when in fact, they were purchasing M2 Software's products.

Three days later, the jury returned a verdict in favor of Madacy, finding that it was not liable for reverse trademark confusion among general consumers. The district court entered judgment in favor of Madacy.

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421 F.3d 1073 *; 2005 U.S. App. LEXIS 18837 **; 76 U.S.P.Q.2D (BNA) 1161 ***

M2 SOFTWARE, INC., a Delaware corporation, Plaintiff-Appellant, v. MADACY ENTERTAINMENT, a corporation e/s/a Madacy Entertainment Group, Inc.; HANDLEMAN COMPANY, a corporation; SFX ENTERTAINMENT, a corporation, Defendants-Appellees.

Subsequent History: US Supreme Court certiorari denied by M2 Software, Inc. v. Madacy Entm't, 547 U.S. 1069, 126 S. Ct. 1772, 164 L. Ed. 2d 516, 2006 U.S. LEXIS 2861 (U.S., 2006)

Motion denied by, Request denied by, Sanctions disallowed by M2 Software, Inc. v. Madacy Entm't, 463 F.3d 870, 2006 U.S. App. LEXIS 21426 (9th Cir. Cal., Aug. 21, 2006)

Prior History:  [**1]  Appeal from the United States District Court for the Central District of California. D.C. No. CV-00-02853-AHM. A. Howard Matz, District Judge, Presiding.

CORE TERMS

Software, district court, music, Entertainment, trademark, consumers, marks, likelihood of confusion, products, partial summary judgment, advertising, jury instructions, infringement, marketing, weighed, matter of law, record label, purchasing, database, user, trademark infringement, conceptually, reconsideration motion, interactive, evidentiary ruling, bifurcate, fanciful, argues, senior, sales

Business & Corporate Compliance, Likelihood of Confusion, Consumer Confusion, Reverse Confusion, Trademark Law, Causes of Action Involving Trademarks, Infringement Actions, General Overview, Similarity of Marks, Appearance, Meaning & Sound, Unfair Competition, Federal Unfair Competition Law, Lanham Act, Circuit Court Factors, 9th Circuit Court, Factors for Determining Confusion, Intent of Defendant to Confuse, Civil Procedure, Appeals, Standards of Review, De Novo Review, Summary Judgment Review, Standards of Review, Names, Generic Names, Tests for Genericness, Subject Matter of Trademarks, Eligibility for Trademark Protection, Strength of Trademark, Distinctiveness, Evidence of Distinctiveness, Surveys as Evidence of Confusion, US Trademark Trial & Appeal Board Proceedings, Oppositions, Abuse of Discretion, Judgments, Relief From Judgments, Altering & Amending Judgments, Evidence, Relevance, Governments, Courts, Judges, Summary Judgment, Partial Summary Judgment, Trials, Jury Trials, Province of Court & Jury, Exclusion of Relevant Evidence, Confusion, Prejudice & Waste of Time, Separate Trials, Jury Instructions, Right to Jury Trial, Verdicts, Special Verdicts, False Advertising, False Designation of Origin, Elements of False Designation of Origin, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection