Morrison Entertainment Group Inc. v. Nintendo of America, Inc.

Citation: 56 F. App'x 782Docket: Nos. 01-56694, 01-56961

Court: Court of Appeals for the Ninth Circuit; February 3, 2003; Federal Appellate Court

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Morrison Entertainment Group is appealing a district court's summary judgment favoring the defendants, while Nintendo is appealing the court's ruling that it lacked standing to cancel the Monster in My Pocket trademark. Morrison argues that the Pokémon trademark may cause "reverse confusion," leading consumers to mistakenly believe that products labeled with Monster in My Pocket are from the same source as Pokémon products. To succeed in a trademark infringement claim, plaintiffs must show a likelihood of confusion, supported by sufficient evidence for a reasonable fact-finder to rule in their favor. 

The evaluation of confusion relies on whether a "reasonably prudent consumer" might misidentify the source or endorsement of the products, as outlined in the Lanham Act. The analysis utilizes eight nonexclusive Sleekcraft factors, focusing on key aspects relevant to the case at hand. 

The marks in question differ significantly in their visual appearance, phonetics, and overall presentation. Pokémon is a single, seven-letter word accented on the "e," while Monster in My Pocket comprises four distinct words, two beginning with "m." Their logos also starkly contrast, with Pokémon's vibrant yellow and blue theme versus Monster in My Pocket's predominantly green, gothic-style font. Phonetically, Pokémon is a three-syllable word starting with a "p," whereas Monster in My Pocket, with its four words and six syllables, starts with "Ma." 

Although both trademarks carry a degree of semantic similarity—stemming from Pokémon's origin as a shorthand for "Pocket Monster"—this connection is not immediately apparent to the average consumer, who may view Pokémon as a unique, fanciful term. Ultimately, the substantial differences in sight, sound, and the limited significance of their meanings lead to the conclusion that the two marks are not likely to cause consumer confusion in the marketplace.

Morrison failed to provide evidence of actual confusion regarding the source or endorsement of its product, Monster in My Pocket, and Nintendo’s products. The declarations submitted by Morrison did not present specific instances of confusion, relying instead on speculation about potential future confusion. Morrison argued that consumers might perceive Monster in My Pocket as a "knock-off" of Pokémon, but evidence from an eBay auction indicated the contrary, suggesting that Pokémon was inspired by Monster in My Pocket. Additionally, a declaration from Gerry Hurst, a promoter for Monster in My Pocket, mentioned consumer inquiries about whether it was a knock-off, but did not link this perception to the trademarks themselves. The court noted that evidence of the marks being used on similar products and marketed to similar consumers does not support a finding of likelihood of confusion when the marks are not objectively similar and actual confusion is unproven. Citing precedent cases, the court concluded that no rational trier of fact could find a likelihood of confusion based on the evidence presented, affirming the district court's summary judgment in favor of Nintendo on the trademark infringement claim. Morrison also challenged the summary judgment regarding its claims of intentional interference with prospective economic advantage and unfair trade practices, specifically related to Warner Brothers' refusal to allow Morrison to reacquire video rights. However, since Warner Brothers was not a party to the lawsuit and there was no evidence implicating the defendants in that decision, the court upheld the district court's ruling on the intentional interference claim.

Morrison's unfair competition claim under California Business and Professions Code, Section 17200, cannot proceed without demonstrating a likelihood of confusion, as it relies solely on allegations from the trademark infringement case. The court previously established that claims under Section 17200 are closely related to those under the Lanham Act, both necessitating proof of likelihood of confusion. Since Morrison failed to establish this likelihood, his unfair competition claim is dismissed. 

Additionally, Nintendo's counterclaim to cancel Morrison's trademark is moot. Nintendo claimed potential damage from Morrison's trademark based solely on Morrison's infringement action, which has not succeeded on other grounds. Consequently, there is no ongoing controversy warranting the cancellation of the trademark. The decision is affirmed, and the disposition is deemed not suitable for publication or citation, with the defendants treated as a single entity. The court also notes that "Pokémon" has a similar meaning to "Monster in My Pocket," without further discussion on Morrison's claim regarding Pokémon as the foreign language equivalent of "Pocket Monster."