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Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt. - 618 F.3d 1025 (9th Cir. 2010)


Summary judgment is improper if there are any genuine issues of material fact--facts which, under the governing substantive law, could affect the outcome of the case. A genuine issue of material fact exists when the evidence is such that a reasonable jury could return a verdict for the nonmoving party. However, there is a well-established principle that because of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena.


In February 2007, defendant-appellee Victoria's Secret ran a one-month marketing campaign promoting its new line of BEAUTY RUSH product. As part of that promotion, Victoria's Secret stores sold or gave away a hot pink tank top with the word "Delicious" written across the chest in silver typescript. Plaintiff-Appellant Fortune Dynamic, Inc. ("Fortune"), the owner of the incontestable trademark DELICIOUS for footwear, sued Victoria's Secret for trademark infringement. The district court excluded all of Fortune’s proffered expert evidence. The district court held that the factors used to determine whether there was a likelihood of confusion weighed in favor of Victoria's Secret and that tFortune’s claims were entirely barred by the fair use defense. The district court granted summary judgment in favor of Victoria's Secret. Fortune sought review.


In a shoe manufacturer's lawsuit for trademark infringement under the Lanham Act, did the district court err in granting summary judgment in favor of Victoria's Secret rather than submitting the likelihood of confusion question to a jury?




Noting that summary judgment is generally disfavored in the trademark arena, the federal circuit court reversed. The court held that it was far from certain that consumers were likely to be confused as to the source of Victoria's Secret’s tank top, but the court was confident that the question was close enough that it should be answered as a matter of fact by a jury, not as a matter of law by a court. There remained a genuine issue of material fact as to whether Victoria's Secret used "Delicious" unfairly. Likelihood of confusion is a factual determination. The same was true of Victoria's Secret’s reliance on the Lanham Act's fair use defense. Although it was possible that the term was used fairly--that is, in its primary, descriptive sense--a jury was better positioned to make that determination as well.  

In determining whether a defendant's use of a mark is likely to confuse customers, the court considered the eight Sleekcraft factors. The court reviewed the district court's grant of summary judgment de novo, viewing the evidence in the light most favorable to Fortune. 

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