The opinion of the court was delivered by: Debevoise, Senior District Judge
This matter arises out of a lawsuit between two companies that offer online video content via their respective websites. On June 12, 2008, Fancaster, Inc. ("Fancaster") filed a Complaint against the Comcast Corporation, Comcast Interactive Media, LLC, and Comcast Management, LLC (collectively referred to as "Comcast"), asserting claims for trademark infringement, 15 U.S.C. § 1114(1), false designation of origin, unfair competition, and trade name infringement, 15 U.S.C. §§ 1125(a), 1117(a), cybersquatting, 15 U.S.C. § 1125(d), under the Lanham Act, and trademark misappropriation, unfair competition, and deceptive practices under N.J.S.A. 56:4-1 and New Jersey common law, and seeking treble damages, attorney's fees, and injunctive relief.
On June 24, 2008, Fancaster filed an Amended Complaint to add claims for unjust enrichment and trade name infringement under New Jersey law. On September 18, 2008, Comcast answered and asserted counterclaims against Fancaster and claims via a Third-Party Complaint against Fancaster's President, Craig Krueger, for fraud on the United States Patent and Trademark Office ("PTO"), 15 U.S.C. § 1120, and cyber piracy, 15 U.S.C. § 1125(d), and seeking damages, lost profits, attorney's fees, declaratory judgment that the Fancaster mark was
(1) abandoned; (2) not used in commerce; and (3) obtained and/or maintained by fraud, 15 U.S.C. §§ 1064, 1119, and injunctive relief. On November 1, 2010, Fancaster filed a Supplemental Complaint setting forth allegations of continued infringement.
On April 29, 2011, Comcast filed a Motion for Summary Judgment on all of Fancaster's claims, pursuant to Federal Rule of Civil Procedure 56(a), as well as a Motion in Limine to exclude the reports and testimony of Fancaster's damages expert, pursuant to Federal Rule of Evidence 702, 703, and 403. That same day, Fancaster and Mr. Krueger filed a Motion for Summary Judgment on Comcast's counterclaims and third-party claims, pursuant to Federal Rule of Civil Procedure 56(a), and a Motion to Strike Comcast's affirmative defenses of fraud, unclean hands, laches, and acquiescence, pursuant to Federal Rule of Civil Procedure 12(f). On May 5, 2011, Fancaster filed a Motion in Limine to exclude the reports and testimony of Comcast's PTO and cyber piracy law experts and a Motion in Limine to exclude the surveys conducted by Comcast's consumer confusion expert and his testimony, both pursuant to Federal Rule of Evidence 702, 703, and 403.
For the reasons set forth below, Comcast's Motion for Summary Judgment is GRANTED in part and DENIED in part. Fancaster's infringement-related claims are dismissed because the record does not support a likelihood of confusion among the marks at issue in this case. In addition, Fancaster is not entitled to seek corrective advertising as a remedy for those claims.*fn1
However, Fancaster's cyber piracy claim must remain this case because Comcast only addressed that claim in its reply brief.
Fancaster's and Mr. Krueger's Motion for Summary Judgment is also GRANTED in part and DENIED in part. Comcast's claim for fraud on the PTO is dismissed because there is no evidence in the record from which a jury could infer fraudulent intent. Comcast's claim for declaratory judgment is also dismissed because it is duplicative of its claim for fraud on the PTO. However, Comcast's claim for cyber piracy may move forward as there remain factual questions regarding distinctiveness and bad faith.
Fancaster's Motions in Limine are GRANTED in part and DENIED in part. The majority of testimony of Comcast's PTO and cyber piracy experts is excluded, while Comcast's consumer confusion expert's March 2009 survey and testimony related thereto is also excluded. Finally, Fancaster's Motion to Strike Comcast's affirmative defenses of fraud, unclean hands, laches, and acquiescence is GRANTED.
On June 13, 1989, Fancaster's president and sole director, Craig Krueger, registered the term FANCASTER with the PTO for use as a trademark in connection with "broadcasting services." (Dickstein Decl. [ECF No. 130], Ex. 11.) In doing so, he swore under oath that he "'has adopted and is using the trademark shown in the accompanying drawing for the following goods: communications' and/or 'broadcasting services,' and that '[t]he trademark was first used on the goods in Interstate commerce on July 15, 1988; and is now in use in such commerce.'"
(Perry Cert. [ECF No. 138] ¶ 2). The mark incorporates a pair of headphones turned on their side to take the place of the letter "C" so as to indicate that the mark relates to broadcasting. On September 8, 1994, Mr. Krueger filed a Combined Affidavit of Use and Incontestability for the FANCASTER mark with the PTO. In that affidavit, Mr. Krueger swore that he "was using the mark in commerce in connection with the broadcasting services that were stated in the registration, and had been doing so for five consecutive years." (Id. ¶ 14.) As evidence of such use, he submitted blank letterhead and envelopes bearing the FANCASTER mark.
Over the years, Mr. Krueger used the mark in connection with a variety of activities, including selling Fancaster branded radios, see (Id., Exs., 14, 21, 22), charging customers to watch closed- circuit boxing matches, producing karaoke shows, see (Id., Ex. 4, 694:21-296:23), transmitting sponsored news messages to wireless pagers and cell phones, and conducting live demonstrations of FANCASTER broadcast services, see (Id., Exs., 13, 16, 19).
On July 22, 2006, Fancaster launched its website, facaster.com. On the site's homepage is the most recent version of the FANCASTER mark, which appears in light-blue lowercase lettering, and incorporates the aforementioned headphones taking the place of the letter "c".*fn2
Under the word "fancaster" appears the phrase "welcome to planet fancaster!" in gold lettering. Fancaster.com offers a wide variety of short video clips, most of which feature sports-related content and a sports fan or athlete speaking into a microphone displaying the fancaster mark to discuss a particular sporting event, sports team, or sports fans in general. A screenshot of fancaster.com, dated April 21, 2011, categorizes the video clips on the site as follows: Fancaster Picks, Football, Baseball, Basketball, Play-By-Play, Horse Racing, Extreme Sports, Mixed Martial Arts, Celbrities, Hockey, Body Building, Autographs, Other, Tennis, Mayhem, Auto, European Events, Golf, Food, Cycling. (Dickstein Decl. [ECF No. 130], Ex. 17.) Mr. Krueger testified that a unifying theme of the video clips on fancaster.com, no matter what category they fall under, is that they all involve broadcasting: "[e]veryone is speaking into a microphone and being recorded." (Id., Ex. 6 at 64.)
According to Facaster's October 2009 business plan, "Fancaster is an early-stage Company that intends to develop a 21st century communications portal where user-generated video content is created by the fans and for the fans who want to emulate broadcasters or submit commentary on management, coaches, players, or teams." (Id., Ex. 13 at 4.) Fancaster also "intends to produce content that traditional media ignore, such as videos of fans at unique events such as La Tomatina in Spain, Ostrich racing in Arizona, the Westminster Kennel Club Dog Show and the annual Nathan's Hot Dog Eating Contest." (Id. at 6.)
The business plan further states that "[t]he target market initially will be sports fans. The Company contemplates, however, expansion of its offerings to include both music and movie fans at later stages. For sports fans, Fancaster intends to focus on the ever-capricious but nonetheless influential demographic of 18-to-35 year old males." (Id. at 4.) As of October 2009, Fancaster identifies "other fan sites such as www.fannation.com as well as larger user-generated and social networking sites such as YouTube and Facebook" as competitors. (Id. at 6.)
Mr. Krueger has marketed fancaster.com online on a few sports-oriented websites and those of several local pubs; however, he testified that most of Fancaster's marketing efforts have not been geared toward the Internet. See (Id., Ex. 6 at 194-195.) He has instead focused marketing the website at sporting events, bars, on local television channels in Sioux Falls, South Dakota and Sioux City, Iowa, on radio stations in Charleston, South Carolina, and via flyers and handbills.
Comcast, the well-known cable and broadband provider, offers television programming and movie channels to millions of customers across the United States. In 2003, Comcast began developing a means to deliver this content over the Internet. On November 20, 2003, Comcast launched a multi-media player on its website, Comcast.net, that allowed users to watch cable television programming online. That player was called "The Fan" because it displayed available video content in a circular pattern that resembled a fan. On October 17, 2003, Comcast filed an application with the PTO to register "TheFan" as a trademark. On May 14, 2004, the PTO rejected Comcast's application "on the ground that the mark was likely to be confused with the mark THE FAN for radio broadcasting services, owned by IBC Merger Corp." (Boudett Decl. [ECF No. 160], Ex. 66.) On November 15, 2004, Comcast filed a document labeled "RESPONSE TO OFFICE ACTION DATED 5/14/04" in which it asked the PTO to reconsider its rejection of Comcast's application. (Id.) In doing so, it listed a number of "marks that have been registered for related services and include the phrase "THE FAN," including the FANCASTER mark.*fn3 (Id.)
Comcast later sought to develop a stand-alone version of "The Fan" that would be available on a separate website. During the winter of 2006, Comcast paid an independent branding agency to conduct research and testing of possible names for this new media player. The agency was of the understanding, among other things, that (1) "[t]he name should help communicate that Website X is the ultimate interactive destination for TV and Movie fans," and (2) "the name should somehow tie back to Comcast, [but] the name Comcast should not be used." (Young Decl. [ECF No. 131], Ex. 1.) Using these criteria, the agency generated twenty-three potential names.
During the spring and summer of 2006, Comcast hired another branding agency to devise potential names under similar criteria. According to the agency's reports, Comcast's primary target was 29-54 year-olds, of which 60% are female and 40% are male, that use "portal-centric authority sites" such as MSN, AOL, Amazon.com, ebay.com, and Netflix. (Id., Ex. 2.) Comcast's secondary target was 18 to 28 year olds that use sites like YouTube.com, ifilm, myspace.com, feedroom, atomfilms, Jib Jab, MeFeedia.com, and del.icio.us. (Id.) On June 23, 2006, the branding agency proposed the name "FanCast.com," in addition to five other names. (Id., Ex. 4.) Shortly thereafter, the agency conducted consumer research, which indicated that "Fancast.com" performed the best overall. In addition, two members of the team at Comcast in charge of choosing a name for the new website testified that the FANCAST name was a logical joinder of "The Fan" and the Comcast name. See (Dickstein Decl. [ECF No. 130], Ex. 3, 4.) Consequently, Comcast decided to use the FANCAST name and began developing its website.
Comcast purchased the fancast.com domain name and filed an application with the PTO to conduct business using the FANCAST mark in August of 2006.*fn5 (Perry Cert., [ECF No. 138] Ex. 68); (Sarowitz Decl. [ECF No. 151], Ex. 9.) Curiously, in September 2006, Fancaster began registering large numbers of "fancast" domains.*fn6 (Perry Cert. [ECF No. 138], Ex. 70.)
i. Comcast's Meeting with Mr. Krueger
On July 13, 2006, Mr. Krueger met with Comcast employees to pitch a program of his called Mobile Voter. At that meeting, he also pitched fancaster's services and website, which he advised was about to be launched. Five days later, Mr. Krueger discovered that Fox SportsNet New England*fn7 , a television channel owned by Comcast, had an amateur broadcasting segment called Fancaster where young sports fans audition to appear on live television during professional sporting events. The segment is intended to encourage young people to pursue careers in television broadcasting. Fancaster segments are publicly posted on the CSNNE website. Mr. Krueger initially demanded that CSNNE cease and desist from using the Fancaster mark. However, after learning more about the nature of the program, he decided not to sue but reserved the right to do so if the program changed. On July 25, 2006, Comcast informed Mr. Krueger that discussions regarding a potential business relationship were suspended "due to infringement issues surrounding Fancaster.com." (Boudett Decl., [ECF No. 160] Ex. 107.)
ii. Comcast Launches Fancast.com
In January 2008, Comcast launched a fully operational version of the FANCAST website that allowed users to watch full-length premium mainstream media over the Internet, including television programming from basic channels like ABC, CBS, NBC, and Fox, as well as full-length studio movies offered by premium cable channels like HBO and Showtime. Indeed the FANCAST homepage states that visitors can use the site to "Watch Full TV Shows and Movies." (Id., Ex. 44); (Poret Decl. [ECF No. 164], Appx. E.) The FANCAST website also offers certain sports-related television and movie content. FANCAST did not offer any user-generated content whatsoever.
Fancast.com features the FANCAST mark that appears in uppercase black letters next to a pastel "expanding universe design." (Def. Br. [ECF No. 128] 3. ) According to Comcast, the mark was intended "[t]o emphasize that FANCAST aggregated all forms of popular premium television and movie content." (Id.)
Comcast marketed FANCAST to a national audience that consumes mainstream media. (Young Decl. [ECF No. 131] ¶ 4.) Comcast bought advertisements in various mainstream print publications, including The New York Times, LA Times, USA Today, Entertainment Weekly, and on television channels distributed via Comcast's cable television service. Comcast also bought banner ads on Comcast.net and other websites focused on popular TV and movies, such as TVGuide.com. In addition, Comcast purchased ads on internet search engines that would appear when users searched for keywords related to the names of specific television shows available on fancast.com, or terms such as "watch TV shows online." (Id. ¶ 4.)
iii. Comcast Dismantles Fancast.com and Starts XfinityTV.com
By late 2009, Comcast had lost roughly $80 million on the FANCAST website, which relied entirely on advertising revenue. According to Comcast, this was due to "the unexpectedly high cost of distributing video content on the internet." (Id.) Therefore, Comcast began to phase out the FANCAST service by offering a website branded "FANCAST Xfinity TV", which was functionally identical to the existing FACAST website, but allowed Comcast cable subscribers to access certain premium cable television content through a service called Xfinity TV. By the end of March 2011, Comcast took down the FANCAST website entirely and instead offered the Xfinity TV service exclusively to subscribers. All web traffic to www.fancast.com was redirected to www.Xfinitytv.com.
On June 12, 2008, Fancaster filed a Complaint against Comcast asserting claims for trademark infringement, false designation of origin and unfair competition, trade name infringement, and cybersquatting under the Lanham Act, and trademark misappropriation, unfair competition and deceptive practices under New Jersey law, and seeking treble damages, attorney's fees, and the following injunctive relief against "Defendants, their officers, agents, servants, attorneys, and all those persons in active concert and participation with them": (1) a permanent injunction from using the FANCAST mark or any other mark "confusingly similar to Fancaster's FANCASTER mark" (Compl. [ECF No. 1] ¶ 9(a)); (2) and order requiring them "to deliver to the court for destruction, or show proof of destruction of, any and all products, labels, signs, prints, packages, wrappers, receptacles, marketing materials and advertisements in Defendants' possession or control which use or depict the designation FANCAST, or any other mark or name that is confusingly similar to Fancaster's FANCASTER mark" (id. at ¶ 9(b)); (3) an order "to file with the court and serve upon Fancaster, within thirty (30) days after entry and service on Defendants of an injunction, a report in writing and under oath setting forth in detail the manner and form in which Defendants have complied with the injunction" (id. at ¶ 9(c)); and (4) an order "to transfer to Fancaster ownership of the domain name registrations for www.fancast.com, www.phancast.com, www.fancas.com, www.fancst.com, www.fancastic.com, and any other domain names containing the design or designation FANCAST," or any other mark or name that is confusingly similar to Fancaster's FANCASTER mark (id. at ¶ 9(d)).
On June 24, 2008, Fancaster filed an Amended Complaint to add claims for unjust enrichment and trade name infringement under New Jersey law. On September 18, 2008, Defendants answered and asserted counterclaims against Fancaster and claims against Mr. Krueger for fraud on the PTO and cyber piracy, and seeking damages, lost profits, attorney's fees, declaratory judgment that the Fancaster mark was (1) abandoned; (2) not used in commerce; and (3) obtained and/or maintained by fraud, and the following injunctive relief against Mr. Krueger and Fancaster, and their agents servants, employees, attorneys, and all others in active concert and participation with any of them: (1) a permanent injunction "from registering or using, directly or indirectly, 'www.fancast.org' or any other domain name that contains the FANCAST mark, or any colorable imitation, simulation or typographical variation of it, either alone or in combination with any other term, or any domain name that is confusingly similar to any of the above" (Def. Compl. [ECF No. 8] ¶ 60(e)), (2) an order requiring Mr. Krueger and Fancaster to (i) "assign to Comcast the registration of, and all rights in and to, the domain name www.fancast.org as well as any other domain name covered" by the injunction (id. at ¶ 60(f)(1)); (ii) "take all steps necessary to effectuate the transfer to Comcast of the domain name www.fancast.org, as well as any other domain name covered" by the injunction (id. at ¶ 60(f)(2)); and (iii) "file with this Court and serve on Comcast a report in writing under oath setting forth in detail the manner and form in which Fancaster and Krueger have complied with the terms of any injunction entered by this Court" (id. at ¶ 60(f)(8)), and (3) an order canceling the FANCASTER trademark.
On February 23, 2009, Defendants filed an Amended and Supplemental Answer and Counterclaims setting forth additional allegations in support of their counterclaims, and seeking similar relief as that sought in their initial answer and counterclaims.*fn8 On November 1, 2010, Fancaster filed a Supplemental Complaint setting forth allegations that Comcast's Xfinity TV services and website constitute further infringement of the FANCASTER mark, and asserting the same causes of action and seeking the same relief as in its Amended Complaint.
E. Proposed Evidence of Potential Confusion Between Fancast.com and Fancaster.com
Fancaster submits a number of screenshots, dated between May 31, 2009 and April 22, 2011, reflecting the results of internet searches using a variety of search engines, including Google, Yahoo!, AOL, Altavista, Bing, and Dogpile, for the following search terms: "fancaster", "fancaste", "fanc", "fanca", "fancas", "fancast", and "綩�쭞". See (Boudett Decl., [ECF No. 160] Exs. 18-27, 30.) Those screenshots indicate that when one inputs one or more of those terms into those search engines, the results include (1) paid sponsored links to fancast.com and "xfinitytv.fancast.com"; (2) organic (i.e. non-sponsored) links to CSNNE's Fancaster and www.fancast.com; and/or (3) suggested search terms for "fancast", "fancaster comcast", "FanCaster Comcast", "fancast review", and "fancast xfinity tv", among others. See (id.)
Fancaster submits a number of screen shots to show that both fancast.com and fancaster.com feature sports-related content. Specifically, Fancaster submits undated*fn9 screen shots of (1) the fancast.com homepage, which features a tab that a user can click to view sports videos; (2) fancast.com's sports section, which states, "XFINITY -- Home of the Most Live Sports", and offers the following categories of video content: "Highlights", "NFL Videos", "College Sports Videos", "NBA Videos", and "The Best of Sports TV"; and (3) fancaster.com's aforementioned "Categories" section indicating that Fancaster also provides sports-related videos, including those relating to football, baseball, and basketball. See (Boudett Decl. [ECF No. 160], Ex. 44.)
Fancaster also submits screenshots, dated March 21, 2011 and May 3, 2011, of Google search results for the terms "fancast sports", "fancast baseball", "fancast basketball", "fancast kentucky derby", "fancast breeder's cup", "fancast nfl lockout", "fancast sports trivia", "fancast trivia contest", and "fancast trivia",-all of which provide links to fancast.com. See (id., Exs. 31, 32, 35, 37, 38, 39, 44.) Fancaster juxtaposes these screenshot with screenshots of fancaster.com offering video clips related to those search terms. See (id.)
Specifically with respect to basketball, Fancaster submits screenshots, dated March 27, 2011, of (1) fancast.com's page entitled "CBS Sports NBA" featuring short video clips of "[t]he latest from around the NBA, including news, player interviews and press conferences, features, breakdowns of the biggest games, expert opinion, analysis and more"; (2) fancast.com's page entitled "Big Ten College Basketball" featuring similar short clips relating to college basketball; (3) a short video clip on fancast.com of a college basketball coach giving a press conference; (4) a short video clip on fancast.com of an interview with a college basketball coach; and (5) a short video clip on fancast.com of a college basketball player giving a press conference. See (id., Ex. 31.) Fancaster juxtaposes those screenshots with screenshots, dated May 3, 2011, from fancaster.com of short video clips related to college and professional basketball. See (id.)
Fancaster also submits a number screenshots to show that fancast.com and fancaster.com share celebrity-related content, including screenshots, dated May 3, 2011, of Google search results for the terms "fancast" followed by the name of a number of celebrities offering links to fancast.com.*fn10 See (id., Exs. 33, 34, 40, 41, 42, 43, and 45.) Fancaster juxtaposes these screenshots with screenshots of video content on fancaster.com related to those celebrities. See (id.)
Finally, Fancaster submits screenshots to show that fancast.com and fancaster.com share content beyond sports and celebrities. Specifically, Fancaster submits screenshots, dated March 21, 2011, of Google search results for the terms "fancast chocolate show" and "chocolate show fancast" that offer links to fancast.com, juxtaposed with a screenshot, dated May 3, 2011, of chocolate-related video content on fancaster.com. See (id., Ex. 36.) Fancaster also submits (1) a screenshot, dated March 21, 2011, of Google search results for the term "fancast westminster" offering links to fancast.com, (2) a screenshot, dated September 3, 2009, of a page from fancast.com entitled "The Westminster Kennel Club Dog Show (1996-2009)" offering photos and video clips from the Westminster Kennel Club Dog Show, and (3) a screenshot, dated May 3, 2011, of short video clips related to the Westminster Kennel Club Dog Show on fancaster.com. See (id., Ex. 46.)
iii. Presence in Social Media Outlets
Fancaster submits screenshots to show that both fancast.com and fancaster.com have videos posted on YouTube. Specifically, Fancaster submits screenshots, dated May 3, 2011, of video clips on www.youtube.com depicting interviews with various celebrities. See (Boudett Decl. [ECF No. 160], Ex. 47.) Those screenshots feature the FANCAST mark either in the corner of the video, the title of the video, on the background wall of the set where the video was shot, and/or on the microphone being held by the interviewer. See (id.) However, the screenshots indicate that these videos were posted under a number of different YouTube usernames. See (id.) Thus, it is unclear whether these videos were posted on YouTube by Comcast or by individuals who culled them independently from fancast.com or another source without Comcast's permission.
Fancaster juxtaposes these screenshots with screenshots, dated May 3, 2011, of video clips on www.youtube.com depicting a celebrity interview and groups of fans reacting to certain sporting events. See (id., Ex. 48.) As with the purported FANCAST videos, the fancaster videos feature the fancaster mark either in the corner of the screen or on the interviewer's microphone. See (id.) However, In contrast to the purported FANCAST videos, the screenshots of the fancaster videos clearly indicate that they were posted by Fancaster's YouTube channel. See (id.)
Fancaster submits screenshots of the pages that it and Comcast (FANCAST) maintain on Facebook. See (id., Exs. 49-50.) However, the FANCAST page on Facebook advertises for "Xfinity" and directs visitors to www.xfinityTV.com. See (id., Ex. 50.)
Finally, Fancaster submits screenshots of its and Fancast's respective Twitter feeds. See (id., Exs. 51-52.) The FANCAST Twitter page is a trivia site. See (id., Ex. 52.)
Comcast submits survey evidence to show that there is little risk of confusion between the FANCAST and fancaster marks. Specifically, Comcast submits two surveys devised by Hal Poret, a consumer perception and trademark survey expert-in March 2009 and March 2011, respectively. Mr. Poret intended for surveys to test for reverse confusion-a concept that will be discussed later in this opinion. Based on these two surveys, Mr. Poret opines "that there is no likelihood of confusion created by Comcast's use of the mark FANCAST in connection with the Fancast website." (Poret Decl. [ECF No. 132] ¶ 10.)
1. The Survey Respondents
Mr. Poret chose respondents from "[c]omsumers who use or would be likely to use the internet to view, post, or discuss sports-related content" because they constituted Fancaster's "customers and prospective customers." (Id. ¶ 11.) Accordingly, he narrowed the survey universe to "males and females ages 16 or older who: (a) in the past 3 months have used an internet site to view, post, or discuss sports-related content; and/or (b) in the next 3 months are likely to use an internet site to view, post, or discuss sports related content." (Id.)
Mr. Poret sampled from this universe by utilizing interviewing facilities at shopping malls around the United States. Specifically, he chose two markets in each U.S. Census region (Northeast, South, Midwest, and West) by sampling from metropolitan areas within those regions. This sampling yielded the following markets: Chicago, Cleveland, Los Angeles, Miami, New York, Pittsburgh, Portland (OR), and Spartanburg (SC). Mr. Poret then chose a mall in each market based on the capacity of its interviewing facilities.*fn11
The March 2009 survey used a format known as a Sequential Lineup. That format involves "first exposing respondents to the defendant's mark prior to showing respondents the plaintiff's mark (as well as other marks), thereby simulating a scenario in which a consumer comes to learn about defendant's mark and then encounters plaintiff's mark." (Id. ¶ 28.) Out of 419 qualified respondents, Mr. Poret randomly assigned 209 to a Test Group and 210 to a Control Group. Each respondent in the Test Group was shown a three-page printout of www.fancast.com. The printout was taken away and the "[r]espondents were then instructed that they were going to be shown some websites and asked some questions." (Id. ¶ 33.) "One at a time, respondents were then shown and asked about four websites: (a) Fancaster.com; (b) Veoh.com; (c) Musicvideocast.com; and (d) Tvfanonline.com." (Id. ¶ 34.) In contrast to the printout if the FANCAST website, these websites were shown to respondents as static screenshots on a computer screen.
Respondents were not only shown facaster.com after viewing the fancast.com printout because, according to Mr. Poret, "[s]howing respondents plaintiff's service as but one of a number of services in a series created as close to a realistic consumer experience as possible." (Id. ¶ 35.) Thus, Veoh.com, Musicvideocast.com, and Tvfanonline.com were shown in addition to Fancaster.com because "they all permit users to view, post and/or discuss various forms of media-related content." (Id.) "Tvfanonline.com and Musicvideocast.com were specifically included because they are examples of the many websites that contain superficial name elements in common with [f]ancaster ('fan' and 'cast' respectively) but do not come close to being confusingly similar." (Id.)
Upon seeing each of the four websites, the Test Group respondents were asked whether they believed the given website and the printout were from (1) the "same company", (2) "different companies", or (3) whether they had no opinion. (Id. ¶ 36.) "Respondents who answered 'same company' were asked what made them think so." (Id.) "Respondents who did not answer 'same company' were asked a second question, namely, whether the company the current website is from is affiliated with or received authorization from the company the printed-out website is from." (Id. ¶ 37.) "Respondents who answered 'yes' were asked what made them think so." (Id.) This series of questions was given for each website. Mr. Poret then tallied the total number of respondents who said that fancaster was from or affiliated with the same company as FANCAST.
The same procedure was performed on the Control Group, except that group was shown a control website instead of the FANCAST website that was shown to the Test Group. The Control Group was intended "to measure the tendency of respondents to connect Comcast's website with [f]ancaster for reasons unrelated to Plaintiff's claims of infringement, including the possibility that respondents drew a connection between two websites merely because they both have "Fan" in the name." (Id. ¶ 41.) The control website presented the same content and format as the Fancast website, however, the FANCAST name was changed to FANWATCH. According to Mr. Poret, "[t]he Fanwatch page is an appropriate control because it left the content, format and overall image of the Fancast page the same, while changing the name to one that is clearly non-infringing and would not be confused with Fancaster." (Id.) Therefore, he maintains, "any difference in the Test and Control Results must be attributed to . . . the substitution of the 'watch' suffix for 'cast'". (Id. ¶ 42.)
Of the 209 respondents in the Test Group, 65 (31.1%) made a connection between Fancast and Fancaster.*fn12 Of these 65, 21 (10% of the Test Group) indicated the similarity between the Fancast and Fancaster names for doing so. Of the 210 respondents in the Control Group, 61 (29%) made a connection between Fancaster and Fanwatch.*fn13 Of those 61, 18 (8.6% of the Control Group) indicated the similarity between the Fancaster and Fanwatch names for doing so. Mr. Poret called this figure the "total noise level." (Id. ¶ 62.) Mr. Poret subtracted the alleged 29% noise from the 31.1% Test Group confusion, amounting to a final potential confusion level of 2.1%. According to Mr. Poret, this figure "indicates that the tendency of respondents to connect Fancaster to Fancast is no greater than the baseline level of survey noise, and [therefore] that the likelihood of real consumers confusing the two services due to name similarity is none or negligible." (Id. ¶ 63.) Mr. Poret also found that "the connection between Fancaster and Fancast due to name similarity is actually no higher than the level of survey noise-i.e., the tendency of respondents in a survey to make a connection between names that have a superficial common element ("Fan") but clearly do not infringe." (Id. ¶ 65.) Finally Mr. Poret found that "the 31.1% rate at which Test Group respondents connected Fancast and Fancaster is statistically equivalent to the rate at which they connected Fancast to the other websites shown in the study: Musicvideocast (27.3%), Tvfanonline.com (33.0%) and Veoh (22.0%). . . . [and that] [t]his further confirms that the Test Group result for Fancaster does not rise above the level of typical survey noise." (Id. ¶ 66.)
In contrast to the March 2009 survey's Sequential Lineup format, the March 2011 used an Eveready format, under which "respondents are exposed only to use of one party's mark and are asked questions to see whether they confuse it with the other party's mark." (Id. ¶ 27.) "In the context of reverse confusion, an Eveready survey involves exposing respondents to the senior user's mark to determine whether it is mistakenly connected to the infringing junior user." (Id.) Mr. Poret chose the Eveready format instead of the Sequential Lineup format for the March 2011 survey because, at that time, "the Fancast service had been in existence for an additional two plus years and consumers should therefore have had ample opportunity to become aware of the FANCAST mark." (Id. ¶ 29.)
209 respondents participated in the March 2011 survey. Instead of a printout, they were first "shown the current, live [f]ancaster web site (starting on the home page) and asked to take as much time as they needed to review it." (Id. ¶ 45.) They were also given a mouse and allowed to click around any section of the website. "Respondents were then asked whether they had an opinion about what company the website they just saw is from." (Id. ¶ 46.) "Respondents who did have an opinion were asked what company the website is from, and what made them think so." (Id.)
"Respondents were next asked whether they think the company the website comes from provides any other services or operates any other websites." (Id. ¶ 47.) "Respondents who answered in the affirmative were asked to identify any such services or websites and to give their reasons for why they think such services or websites are provided or operated by the company whose website they were shown." (Id.) "Finally, respondents were asked whether they think the company whose website they were shown is affiliated with or received authorization from any other company, and what makes them think so." (Id. ¶ 48.)
Of the 209 respondents, just two "(slightly under 1%) gave an answer
indicating possible confusion with Comcast or Fancast in response to
any survey question." (Id. ¶ 67.) According to Mr. Poret, this figure
"is well within the range of typical survey noise."*fn14
(Id. ¶ 69.) In contrast, "[a] total of 52 respondents
(approximately 25%) answered that the website shown to them comes from
'[f]ancaster.'" (Id. ¶ 68.)
Fancaster retained Weston Anson, chairman of an intellectual asset consulting firm that specializes in licensing, valuation, and expert services, for the sole purpose of "determin[ing] the level of corrective advertising expenditures needed" to cure any consumer confusion between FANCAST and fancaster. (Sarowitz Decl. [ECF No. 137], Ex. 11.) After reviewing various Comcast records, Mr. Anson found that, as of March 24, 2011, Comcast spent $83,067,778 in marketing and advertising the FANCAST mark. (Id.) Mr. Anson further found that Comcast spent an addition $200,000,000 in advertising and marketing "to promote Xfinity TV that featured or displayed the Fancast Brand, and drove traffic to Fancast.com, either indirectly or though Xfinity and/or Comcast websites." (Id.)
Based on his experience in branding and advertising, Mr. Anson opined that "it will take at least one year's of Comcast['s] average annual advertising expenditures to correct any inaccurate impressions in the marketplace." (Id.) Mr. Anson thus arrived at a "reasonable estimate" of $73,163,977 owed to Fancaster in corrective advertising expenditures to "rebuild the goodwill that has been destroyed by Comcast." (Id.) Specifically, based on Fancaster's involvement in "broadcasting on low-power networks in stadiums and sporting events,  covering events of general interest . . . SMS texting and broadcasting via partnerships with several major entities . . . Fancaster had existing goodwill and the potential to build new goodwill but for Comcast's actions." (Id.) However, Mr. Anson testified that the proposed figure of $73,163,977 was based entirely on Comcast's advertising expenditures, and that the fancaster mark's goodwill "doesn't have any bearing on the amount of corrective advertising." See (Sarowitz Decl. [ECF No. 137], Ex. 5.)
Indeed, Mr. Anson foresees a "substantial amount of advertising" to regain this goodwill, including national advertising on television, the Internet, and in print. (Id.) This is so that Fancaster can compete with Comcast's "Fancast/Xfinity behemoth" and "level the playing field." (Id.) To be sure, Mr. Anson assumes that Comcast and Fancaster compete in the same digital media market, which also includes websites like hulu.com and TV.com, and therefore discusses the methods and costs of advertising in that market.
Comcast now moves for summary judgment on all of Fancaster's claims. In doing so, it argues that (1) there is no likelihood of confusion between the FANCAST and fancaster marks, and (2) Fancaster is not entitled to corrective advertising damages.*fn15 Fancaster moves for summary judgment on Comcast's claims for fraud on the PTO and cyber piracy. In doing so, it argues that (1) there is no evidence of fraudulent intent, and (2) Fancaster's valid trademark registration of the fancaster mark and registering "fancast" doman names before the launch of fancast.com suggests good faith in registering those domain names.
The parties also move to exclude certain evidence from the record. Specifically, Comcast moves to exclude the testimony of Fancater's damages expert, Weston Anson, arguing that (1) he did not employ a reliable methodology in opining that Fancaster is entitled to corrective advertising damages, (2) he applied that methodology in a speculative manner, (3) his report and testimony do not fit the facts of this case, and (4) permitting him to testify on the damages in this case would be prejudicial to Comcast. Fancaster moves to exclude the testimony and surveys conducted by Mr. Poret, arguing that he used unreliable methods in conducting the surveys and that those methods do not fit the facts of this case. Fancaster also moves to exclude the reports and testimony of Comcast's PTO and cyber piracy experts, Gary Krugman and Greg Lastowka, arguing that they usurp the role of the Court in opining on several legal issues in this case.
Finally, Fancaster moves to strike the affirmative defenses of fraud, unclean hands, laches, and acquiescence from the pleadings, arguing that there is no evidence that (1) it unreasonably delayed commencement of this lawsuit; (2) it acquiesced in Comcast's infringement; or (3) Comcast ...