American Express Co. v. Goetz, No. 06-2184 (2d Cir. 2008)

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06-2184-cv American Express Co. v. Goetz 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 42 UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT _______________ August Term, 2006 (Argued March 2, 2007 Decided February 4, 2008) Docket No. 06-2184-cv _______________ American Express Co., Plaintiff-Counter-Defendant-Appellee, v. Stephen G. Goetz and Gardner Design Group, LLC, Defendants-Counter-Plaintiffs-Appellants. _______________ Before: JACOBS, Chief Judge, CARDAMONE, and POOLER, Circuit Judges. _______________ Defendants Stephen Goetz and Gardner Design Group, LLC appeal from a judgment entered February 24, 2006 in the United States District Court for the Southern District of New York (Kaplan, J.) granting plaintiff American Express's motion for summary judgment and dismissing Goetz's counterclaims. Goetz had alleged that American Express infringed upon his trademark by using the slogan MY LIFE. MY CARD. Affirmed. _______________ 1 2 3 4 5 6 7 8 9 10 11 12 13 _______________ KEITH A. VOGT, Chicago, Illinois (Rolf O. Stadheim, Joseph A. Grear, George C. Summerfield, Stadheim & Grear, Ltd., Chicago, Illinois; Micah R. Jacobs, Jacobs & Ferraro, LLP, San Francisco, California, of counsel), for DefendantsAppellants. MARC J. RACHMAN, New York, New York (Howard J. Rubin, Shirin Keen, Davis & Gilbert, LLP, New York, New York, of counsel), for Plaintiff-Appellee. _______________ 1 2 PER CURIAM: Many might associate the phrase MY LIFE. MY CARD. with 3 advertisements for the American Express credit card featuring 4 celebrity cardholders like Robert De Niro and Tiger Woods. 5 before American Express Co. (American Express) made the phrase 6 famous, Stephen Goetz, the president of Gardner Design Group, LLC 7 (Goetz), used a virtually identical slogan in a sales pitch to 8 credit card companies. 9 cards by reproducing photographs selected by cardholders on the But Goetz's idea was to personalize credit 10 face of their cards. 11 to various credit card companies, including American Express, 12 containing a description of his concept and the catchphrase My 13 Life, My Card. 14 In search of clients, Goetz sent proposals In response to American Express's MY LIFE. MY CARD. 15 campaign, Goetz demanded the company cease and desist using the 16 slogan. 17 declaratory judgment action in the United States District Court 18 for the Southern District of New York before Judge Lewis A. 19 Kaplan seeking a declaration that it had not misappropriated the 20 slogan and that Goetz lacked a viable claim for infringement. 21 a judgment entered on February 24, 2006 the district judge 22 granted summary judgment to American Express and dismissed 23 Goetz's counterclaims for misappropriation and trademark 24 infringement. American Express responded by commencing the instant 2 In 1 Goetz's principal challenge on appeal is to the district 2 court's ruling that he had not used the slogan as a trademark. 3 We affirm. 4 BACKGROUND 5 In the summer of 2004 Goetz, who was then working as a 6 corporate consultant for a company called Mez Design, formulated 7 an idea to enable credit card customers to personalize a card by 8 choosing a photograph to be printed on the card's face. 9 developed proprietary software with this capability and Goetz 10 endeavored to license or sell the software to credit card 11 companies. 12 prominently displayed the slogan he created -- "My Life, My Card" 13 -- believing that the phrase "would perfectly embody what card 14 consumers sought." 15 In proposing his idea to potential clients, Goetz On July 30, 2004 Goetz mailed a proposal to American Express 16 with a line reading: "'My Life, My Card' American Express 17 delivers personalized cards to its cardholders!" 18 similar proposals to Mastercard, Citigroup, Kessler Financial 19 Services, and Metavante, in each case tailoring the catchphrase 20 to the prospective client. 21 expert in web design, Goetz also created an Internet-based 22 demonstration of his card personalization concept, which 23 prominently displayed the slogan My Life, My Card on Krebs' 24 server at http://mylifemycard.hanskrebs.com. 25 2004 Goetz registered the domain name www.mylife-mycard.com and 26 the following day he filed an application with the United States Goetz sent With the help of Hans Krebs, an 3 On September 7, 1 Patent and Trademark Office for registration of the My Life, My 2 Card mark. 3 American Express never replied to Goetz's proposal, but 4 MasterCard expressed interest. In December 2004 and February 5 2005 Goetz met with MasterCard to discuss his personalized credit 6 card services and, in his correspondence with Mastercard 7 representatives, Goetz suggested they view his demonstration on 8 the Internet. 9 Also in the summer of 2004 American Express hired the Ogilvy 10 Group advertising agency (Ogilvy) to assist in the development of 11 a new global campaign for American Express products. 12 2004 Ogilvy proposed the MY LIFE. MY CARD. idea as the lynchpin 13 of American Express's new campaign. 14 favorably and, between July 26 and July 28, Ogilvy developed 15 several advertisements centering on the slogan. 16 Ogilvy's outside counsel conducted a preliminary trademark search 17 to determine the availability of the slogan as a service mark in 18 the United States. 19 with a full trademark search on July 31, which was two days prior 20 to the scheduled delivery date of Goetz's proposal to American 21 Express. 22 Goetz. 23 On July 22, American Express responded On July 29 Ogilvy next asked its counsel to follow-up Neither trademark search produced any references to After deciding in August 2004 to proceed with the slogan and 24 the campaign, American Express registered the domain name 25 www.mylifemycard.com on September 1, 2004 and filed an Intent to 26 Use application for MY LIFE. MY CARD. with the United States 4 1 Patent and Trademark Office on September 15, 2004. 2 in early November 2004 American Express launched the global 3 campaign by means of television, print, outdoor, and Internet 4 advertising. 5 Ultimately, The present litigation followed. During discovery, Goetz sought to examine in their entirety 6 numerous computer hard drives belonging to Ogilvy and American 7 Express employees. 8 Goetz moved to compel production. 9 Kaplan granted Goetz's motion only to the extent it involved When American Express refused this request, On October 27, 2005 Judge 10 electronic records pertinent to the disputed dates of creation of 11 two documents. 12 Express's motion to stay further discovery pending the court's 13 disposition of its summary judgment motion. 14 The district court also granted American In a judgment entered on February 24, 2006 the court granted 15 summary judgment to American Express and dismissed Goetz's 16 counterclaims. 17 protectable trademark rights in My Life, My Card or any other 18 purported mark using those words that are senior to [American 19 Express's] rights in MY LIFE. MY CARD." 20 observed that Goetz did not contest that American Express 21 independently conceived of the slogan. 22 judgment, Goetz filed a timely appeal of the trademark ruling as 23 well as its October 27, 2005 order denying his more far-reaching 24 discovery motion. The court held that Goetz had "no valid 5 The district court also Following entry of 1 DISCUSSION 2 I Standard of Review 3 We review the district court's grant of summary judgment de 4 novo, construing the facts in the light most favorable to Goetz. 5 See Tocker v. Philip Morris Cos., 470 F.3d 481, 486 (2d Cir. 6 2006). 7 discretion standard. 8 Cir. 2004). 9 II 10 Discovery rulings are reviewed under an abuse of Gualandi v. Adams, 385 F.3d 236, 244-45 (2d Goetz Did Not Use the Slogan As a Trademark Under the Lanham Act, 15 U.S.C. §§ 1051 et seq., a trademark 11 or service mark is any combination of words, names, symbols or 12 devices that are used to identify and distinguish goods or 13 services and to indicate their source. 14 While copyright law protects the content of a creative work 15 itself, see EMI Catalogue P'ship v. Hill, Holliday, Connors, 16 Cosmopulos Inc., 228 F.3d 56, 63 (2d Cir. 2000), it is trademark 17 law that protects those symbols, elements or devices which 18 identify the work in the marketplace and prevent confusion as to 19 its source. 20 McCarthy on Trademarks and Unfair Competition § 6:17.50, at 6-38 21 (4th ed. 2000) (noting that trademark law does not serve as a 22 substitute for copyright). 23 might identify that song in the marketplace, but the musical 24 composition itself would not perform that function; thus, while 25 the title may be protectable by trademark, the composition would 26 not be. See 15 U.S.C. § 1127. See id. at 62-63; see also 1 J. Thomas McCarthy, For example, the title of a song EMI Catalogue P'ship, 228 F.3d at 63. 6 Further, a mark 1 that does not perform the role of identifying a source is not a 2 trademark. 3 See id. at 64. Notably, the same mark that performs this source-identifying 4 role in one set of hands may constitute the creative work itself 5 in another. 6 advertising agency licenses a slogan to a client for the client's 7 use in marketing a product. 8 of the advertising agency's creative work, but it may become a 9 source identifier when used by the client. Such distinction often is appropriate when an In this scenario, the slogan is part See 2 McCarthy, 10 supra, § 16.39, at 16-64.2 ("In many situations . . . the mere 11 conception of a mark by an advertising agency for possible use by 12 the client does not create any trademark rights in the agency."). 13 The Patent and Trademark Office's Trademark Trial and Appeal 14 Board has long recognized, in such situations, that the slogans 15 cannot be registered as marks by the advertising agency, even if 16 they would be subject to registration by the end users of the 17 marks. See In re Admark, Inc., 214 U.S.P.Q. 302, 303 (T.T.A.B. 18 1982). The reason is plain: 19 distinguish the services of the advertising agency, but rather is 20 the creative work itself. 21 Dev., Inc., 821 F.2d 614, 620 (Fed. Cir. 1987) (explaining that 22 an advertising agency cannot register a mark it uses to identify 23 the subject of the advertising as opposed to the agency's 24 services); In re Local Trademarks, Inc., 220 U.S.P.Q. 728, 730 25 (T.T.A.B. 1983) ("We believe that applicant's insurance agency 26 clients would view the slogan 'WHEN IT'S TIME TO ACT[]' . . . as the slogan does not identify and Id.; see also In re Adver. & Mktg. 7 1 a feature of applicant's product and not as a mark identifying 2 and distinguishing the service being rendered by applicant."). 3 In the present case, construing all the facts in Goetz's 4 favor, the only reasonable conclusion that can be drawn is that 5 My Life, My Card was a component of Goetz's business proposal to 6 the credit card companies rather than a mark designating the 7 origin of any goods or services he offered to them. 8 9 According to Goetz, he believed that the phrase My Life, My Card would "perfectly embody what card consumers sought." Yet, 10 for the obvious reason that Goetz did not sell credit cards, he 11 never displayed the slogan to card consumers. 12 offered the slogan as a complement to the card personalization 13 concept and software he proposed to sell and, in this respect, 14 his claim is no better than that of an advertising agency that 15 offers its clients a marketing concept to enhance their sales. 16 Our review of Goetz's letters and proposals to card Instead, he 17 companies reinforces that conclusion. Every use of the tagline 18 My Life, My Card is immediately followed by the name of a credit 19 card company which might choose to deliver personalized cards 20 with such a slogan. 21 alone logo and the phrase is never followed by a reference to 22 Goetz himself or his company. 23 not intend the phrase My Life, My Card to ensure MasterCard, 24 American Express or Citigroup would associate the card 25 personalization concept with him, but instead to interest these 26 companies in a slogan that would identify personalized cards with My Life, My Card never appears as a stand- It is thus clear that Goetz did 8 1 whichever company elected to make this product available to its 2 customers. 3 A comparison of Goetz's use of the Mez Design logo with his 4 use of the My Life, My Card slogan in his correspondence with 5 prospective clients further illustrates our point. 6 Design logo appeared in the upper left hand corner of both the 7 proposal itself and Goetz's cover letters to the companies. 8 placement indicated to readers that Mez Design was the source of 9 Goetz's proposal. The Mez Such Similarly, in his letters Goetz emphasized 10 that "[w]ith over 10 years of marketing and design expertise, Mez 11 Design is in a unique position to deliver competitive solutions," 12 "Mez Design has helped its partners increase brand awareness and 13 gain market share," and "Mez Design has done the research, and 14 will invest the capital to deliver your product." 15 that a company's marks need not be derived from its trade name, 16 and many companies use multiple marks, but Goetz's references to 17 Mez Design furnish a solid example of typical trademark usage: 18 Goetz plainly desired readers to associate his goods or services 19 with the Mez Design mark. 20 appeared in the section of Goetz's correspondence in which he 21 described the content of his proposal. We recognize My Life, My Card, by contrast, 22 In sum, Goetz employed the slogan My Life, My Card to 23 generate interest among potential licensee credit card companies 24 and not to differentiate or identify the origin of his goods or 25 services. 26 advertisement for itself as a hypothetical commodity." In such circumstances, the slogan served as "a mere 9 1 Silberstein v. Fox Entm't Group, Inc., 424 F. Supp. 2d 616, 633 2 (S.D.N.Y. 2004). 3 properly dismissed. 4 Consequently, Goetz's trademark claim was III 5 Analogous Use It is firmly established that "the right to exclusive use of 6 a trademark derives from its appropriation and subsequent use in 7 the marketplace." 8 Jean Patou, Inc., 495 F.2d 1265, 1271 (2d Cir. 1974) (Friendly, 9 J.). La Societe Anonyme des Parfums le Galion v. Thus, there can be no trademark absent goods sold and no 10 service mark without services rendered. See, e.g., Chance v. 11 Pac-Tel Teletrac Inc., 242 F.3d 1151, 1156 (9th Cir. 2001) 12 ("[L]ike with trademarks, common law rights are acquired in a 13 service mark by adopting and using the mark in connection with 14 services rendered." (emphasis added)). 15 service marks usually cannot be "affixed" or displayed in close 16 connection with the services, so advertisements and solicitations 17 are often used as evidence of use. 18 Callmann, The Law of Unfair Competition, Trademarks and 19 Monopolies § 26:27, at 26-225 to 26-228 (Louis Altman 4th ed. 20 1998). 21 actually used if it is displayed in an advertisement for services 22 that are non-existent or will only hypothetically be available at 23 some point in the future. 24 Life Ins. Co., 214 U.S.P.Q. 473, 474-75 (T.T.A.B. 1982). 25 made no actual use of My Life, My Card since Goetz's services Unlike trademarks, See generally 4A Rudolf However, it cannot be said that a service mark is See, e.g., Greyhound Corp. v. Armour 10 Goetz 1 were wholly hypothetical when he sent his promotional materials 2 to the credit card companies. 3 Goetz counters that even if he did not actually use My Life, 4 My Card as a trademark, his activities were analogous to 5 trademark use. 6 Thompson U.S.A., Inc., No. 01 Civ. 2950, 2005 WL 2148925 7 (S.D.N.Y. Sept. 6, 2005) and Housing & Services, Inc. v. Minton, 8 No. 97 Civ. 2725, 1997 WL 349949 (S.D.N.Y. June 24, 1997), in 9 support of the assertion that analogous use is sufficient to Goetz cites Diarama Trading Co. v. J. Walter 10 establish trademark rights in the absence of actual use. 11 cases suggest that the analogous use doctrine, where it applies, 12 eases the technical requirements for trademarks and services 13 marks in favor of a competing claimant who asserts priority on 14 the basis of earlier analogous use of the mark. 15 2148925, at *7 ("[P]rior 'use of a designation . . . in a manner 16 analogous to trademark and service mark use' can defeat a 17 trademark registered by a subsequent user."); Minton, 1997 WL 18 349949, at *3 (noting that evidence of an actual sale may not be 19 required to establish prior use). 20 These Diarama, 2005 WL Goetz's use of the My Life, My Card logo does not qualify as 21 analogous use. At the very least analogous use must be use that 22 is "open and notorious." 23 other words, analogous use must be "of such a nature and extent" 24 that the mark has become "popularized in the public mind" so that 25 the relevant segment of the public identifies the marked goods 26 with the mark's adopter. See Minton, 1997 WL 349949, at *4. In Id.; see Diarama, 2005 WL 2148925, at 11 1 *7. 2 few commercial actors within the credit card industry. 3 no public exposure of the My Life, My Card slogan. 4 Goetz himself, in a series of emails to Hans Krebs between August 5 and October 2004, indicated that he wanted to keep a low profile 6 for the project and for the website. 7 nor notorious and My Life, My Card never came to be associated 8 with Goetz in the public mind. 9 Here, Goetz used his slogan only in communications with a There was In fact, Such use was neither open Moreover, as Goetz never made actual use of the slogan, he 10 would have us rely on his purported analogous use as the sole 11 source of his trademark rights. 12 been stretched so far as to obviate the requirement that Goetz 13 show eventual actual use. 14 DeBeers Diamond Syndicate Inc., 440 F. Supp. 2d 249, 265 n.14 15 (S.D.N.Y. 2006) ("[I]nsofar as plaintiffs contend that they can 16 obtain protectable rights in a mark solely through [analogous 17 use], this view of Section 43(a)'s scope has never been adopted 18 by this circuit." (emphasis in original)); WarnerVision Entm't 19 Inc. v. Empire of Carolina Inc., 915 F. Supp. 639, 646 (S.D.N.Y. 20 1996), vacated on other grounds 101 F.3d 259 (2d Cir. 1996) (any 21 promotional activities "must be within a commercially reasonable 22 time prior to actual use" for them to be considered analogous 23 uses). 24 25 26 IV The doctrine, however, has not See De Beers LV Trademark Ltd. v. Discovery Ruling Goetz unpersuasively claims that the district court abused its discretion by limiting discovery to ascertain whether 12 1 American Express independently conceived of MY LIFE. MY CARD. 2 Specifically, Goetz appealed the district court's October 27, 3 2005 order denying him full access to computer hard drives of 4 employees of American Express and Ogilvy who worked American 5 Express's campaign. 6 The district court granted Goetz's motion to compel 7 production in part and afforded him access to electronic records 8 pertaining to documents the dates of creation of which were in 9 question. Although Goetz's motion called for broader discovery 10 than was granted him, Goetz has not identified any error in the 11 district court's determination that "such wholesale rummaging" 12 through American Express's electronic records was not appropriate 13 here. 14 15 CONCLUSION For these reasons, the judgment of the district court 16 granting American Express's motion for summary judgment and 17 dismissing Goetz's counterclaims is affirmed. 13

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