IP Law Daily, TOP STORY—9th Cir.: Use of insurance company’s marks did not violate Lanham Act, (Dec 7, 2015)

By Greg Hammond, J.D.

The federal district court in Phoenix properly granted summary judgment in favor of an insurance agent, disposing of an insurance company’s trademark infringement and unfair competition claims. In affirming the lower court’s decision, the U.S. Court of Appeals in San Francisco concluded that (1) the insurance company failed to demonstrate the use of Aviva’s mark was in connection with a commercial transaction and (2) nominal use of the mark and trade dress was not likely to cause confusion when displayed with and imbedded in obvious negative commentary (Aviva USA Corp. v. Vazirani, December 4, 2015, per curiam).

Aviva USA Corp. is a life and annuity insurance company that claimed an independent insurance agent developed a website to criticize Aviva and its business practices and to publicize his lawsuits against Aviva. Each page of the website contained a heading that incorporated some elements of Aviva’s registered trade dress and stated “AVIVA Uncovered the Sad Truth About Aviva’s Business Practices.” The agent then purportedly sent out a series of “blast emails” to hundreds of thousands of life insurance and annuity sales agents and stockbrokers, providing a link to the website. The agent also registered 14 domain names in connection with the website, each of which referenced “Aviva” and was routed to the website. Some of the domain names were supposedly registered with false names and contact information.

Trademark, unfair competition. The appellate court first determined that the lower court did not err in granting the agent summary judgment on Aviva’s trademark claims under the Lanham Act. In particular, Aviva failed demonstrate the lower court erred in concluding the agent’s use of Aviva’s mark was not in connection with a commercial transaction because the agent did not use Aviva’s mark to offer competing services to the public. In addition, the lower court correctly found that the nominative use of Aviva’s trademark and trade dress is not likely to cause confusion when displayed with and imbedded in obvious negative commentary, the appellate court concluded. Summary judgment in favor of the agent was therefore affirmed with regard to Aviva’s Lanham Act and unfair competition claims.

Anticybersquatting. The lower court’s decision to grant summary judgment in favor of the agent on Aviva’s Anticybersquatting Consumer Protection Act (ACPA) claim was also affirmed by the appellate court. Contrary to Aviva’s claim that the lower court erroneously imported the Lanham Act’s commercial use requirement into the ACPA, the appellate court determined that the lower court correctly analyzed whether the agent acted in “bad faith” using the nine non-exhaustive factors provided by the ACPA. After applying the factors, the appellate court agreed that Aviva failed to show the agent acted with bad faith intent to profit in registering the domain names.

The case numbers are 13-16858 and 13-16869.

Attorneys: Andrew Foster Halaby (Snell & Wilmer) for Aviva USA Corp. and Aviva Brands Ltd. Andrew L. Pringle (Dickinson Wright PLLC) for Anil Vazirani.

Companies: Aviva USA Corp.; Aviva Brands Ltd.; Vazirani & Associates Financial, LLC; Secured Financial Solutions, LLC; James Regan & Associates LLC

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