Friday, December 19, 2008

VISA wins again against eVISA on trademark dilution claim under TDRA standard

The third time will hopefully be a charm for Visa International Service Association (“Visa”), owner of the famed VISA mark, in its long running trademark dispute with JSL Corporation (“JSL”) over JSL's use of the mark eVISA.

On December 16, 2008, the U.S. District Court for the District of Nevada decided once again on summary judgment that JSL’s use of the eVISA mark was likely to cause dilution against the famed VISA mark. See Visa International Service Association v. JSL Corporation, Case No. 01-CV-00294, 2008 U.S. Dist. LEXIS 101399 (D. Nev. December 16, 2008).

The case has actually been decided in Visa's favor twice already -- both times on summary judgment. On October 22, 2002, the district court granted partial summary judgment in favor of Visa on its trademark dilution claim, finding that Visa had shown as a matter of law that JSL use of the EVISA mark likely diluted the VISA mark. On appeal by JSL, the Ninth Circuit on January 16, 2004 remanded the case back to the district court in order for the court to consider the impact of the U.S. Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), which held that to prevail on a dilution claim under the dilution law at the time (the Federal Trademark Dilution Act ("FTDA")), a plaintiff must establish actual dilution rather than a likelihood of dilution.

After the Ninth Circuit's remand, the Trademark Dilution Revision Act of 2006 ("TDRA") was subsequent signed into law on October 6, 2006. On remand, the district court applied the FTDA and again granted summary judgment to Visa on its trademark dilution claim on December 27, 2007. The court, following the Ninth Circuit’s instructions set forth in Jada Toys, Inc. v. Mattel, Inc., 496 F.3d 974 (9th Cir. 2007), applied the old dilution law rather than the new law because Visa had filed the lawsuit in 2001 before the FTDA was enacted. On February 1, 2008, Visa filed a motion for relief from a final judgment based on this court's "mistake" in applying the FTDA rather than the TDRA.

Before the district court could decide the motion, the Ninth Circuit, on February 21, 2008, amended the Jada Toys decision (previously blogged here) to apply the TDRA to a trademark dilution claim even though the plaintiff filed suit before the TDRA's enactment. See Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008). The district court then informed the Ninth Circuit that it wished to entertain Visa’s motion for relief from a final judgment in light of the Ninth Circuit's amended Jada Toys decision and the Ninth Circuit remanded the case to allow this court to consider Plaintiff's motion for relief from a final judgment.

In the end, the court granted Visa’s motion for relief from a final judgment although it did so under Fed. R. Civ. P. 60(b)(5) (a party can challenge a final judgment if “it is based on an earlier judgment that has been reversed or vacated” or “applying it prospectively is no longer equitable”) instead of under Rule 60(b)(6) (for any other reason justifying relief from the operation of the judgment) which was the basis cited by Visa in its motion.

Visa tried to get the court to apply the law of the case doctrine and simply accept the court’s earlier decision to grant summary judgment after finding "likely dilution" under the pre-Moseley standard; however, the court recognized that the law of the case doctrine has an exception where there is “an intervening change in the law” and proceeded to analyze the facts again under each part of the TDRA to determine if there was any element which may be appropriate for applying the law of the case doctrine

The court did not apply law of case to the fact of fame, but found once again under the TDRA that the VISA mark is famous. As for the TDRA’s requirement that a mark be distinctive, the court accepted its prior order finding the VISA mark to be arbitrary when used in connection with the goods and services provided by Visa. Regarding JSL’s use of the VISA mark in commerce, the court concluded that it had used a mark that was nearly identical to the protected mark – the same mark except for the JSL's addition of a letter 'e' as a prefix, which is commonly used to denote the online version of a business.

The court applied law of the case to the factor of JSL’s use after the mark became famous because the element is identical to the FTDA. Finally, the court applied the six nonexclusive factors set forth in 15 U.S.C. § 1125(c)(2)(B) that a court may consider in determining whether a trademark is likely to cause dilution by blurring and found that Visa had made an “exceptionally strong showing” on four of the six factors. The court concluded as a matter of law that JSL’s use of the EVISA mark is likely to cause dilution by blurring of Plaintiff's VISA mark, and amended its December 27, 2007 order accordingly.

Finally, the court, applying law of the case, granted the same injunctive relief that it previously ordered – namely enjoining JSL from using or registering the EVISA mark and from using the domain name.

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