IP Law Daily, TRADEMARK—W.D. Tenn.: Duck head logo created by high school student infringed Ducks Unlimited’s logo, (Aug 23, 2017)

By Cheryl Beise, J.D.

Louisiana resident Caleb Sutton and his company were liable for copyright and trademark infringement for selling goods using a logo Caleb created while in high school consisting of a line drawing of a duck head that was substantially similar to the logo used by Ducks Unlimited, thefederal district court in Memphis has decided following a bench trial. Ducks Unlimited, however, failed to prove that its logo was sufficiently famous to qualify for dilution protection. Ducks Unlimited was awarded permanent injunctive relief, and damages of $258,919 for the defendants’ infringing profits and $30,000 in statutory damages under the Copyright Act damages (Ducks Unlimited, Inc. v. Boondux, LLC, August 18, 2017, Mays, S.).

Ducks Unlimited, Inc., was founded in 1937 as a non-profit corporation dedicated to waterfowl and wetlands conservation. Ducks Unlimited uses a logo consisting of a drawing of the profile of a mallard duck’s head (the "DU Logo"). Ducks Unlimited owns a federal copyright registration for the DU Logo and two federal trademark registrations for DU Logo in connection with association services, including fundraising, media communications, and publishing. Ducks Unlimited also owns common law rights in the DU Logo due to extensive, continuous use (including distribution of over 10 million decals in the past 10 years). Ducks Unlimited and its state chapter license the DU Logo to third-parties, which has yielded over $100 million in licensing revenues since 1986.

In January 2012, while still in high school, Caleb Sutton created a logo comprised of a drawing of a fishhook and an antler combined to form the shape of a mallard’s head (the "Boondux Logo"), which is substantially similar to the DU Logo. Sutton, and his solely-owned company, Boondux LLC, sell decals, hats, t-shirts, and other products bearing the Boondux Logo online and at trade shows. In 2014, Ducks Unlimited sued Sutton and Boondux, LLC, asserting claims for copyright infringement, and claims for trademark infringement, false designation of origin or sponsorship, and trademark dilution, in violation of the Lanham Act. The court held a five-day bench trial in March 2017.

Copyright infringement. The defendants did not contest Ducks Unlimited’s ownership of a valid copyright registration for the DU Logo, and Sutton admitted that he had seen and had access to the DU before designing the Boondux Logo. Sutton’s testimony regarding how he created the Boondux Logo was not credible, according to the court. The court determined that Sutton in fact relied on the DU Logo when designing the Boondux Logo.

The court also found that the Boondux Logo was substantially similar to the DU Logo’s copyrightable elements. Both logos depict a line-drawing of a right-facing mallard’s head in profile with no internal coloration. While the Boondux Logo has a slightly broader bill than the DU Logo’s bill, the line arcs, the curves, and the position of the duck head, bill, eye, and neck are the same in both logos. The defendants argued that the similarities in the logos amounted to a collection of unprotectable elements, but the court disagreed. The DU Logo is a unique, particular expression of a duck head that differs from the "archetypal duck," the court said, and the Boondux Logo "shares the same distinctive shape." Although the Boondux Logo added minor creative design elements of a fishing hook and a deer antler in the line drawing, when taken as a whole, the two logos were substantially similar. The defendants were liable for copyright infringement.

The court, however, declined to find that the mirror image of the Boondux Logo, i.e., a left facing duck head, was infringing. Ducks Unlimited did not present enough evidence to establish that left-facing Boondux Logo was a derivative of the DU Logo, as opposed to a derivative of the Boondux Logo.

Trademark infringement and false designation. The court noted that the Sixth Circuit uses the same eight-factor likelihood of confusion test to determine infringement of a registered mark under Section 32 of the Lanham Act and false designation of origin under Section 43(a).

The court rejected the defendants’ argument that Ducks Unlimited used the DU Logo in a merely ornamental manner rather than in a trademark manner. The court also rejected the notion that Ducks Unlimited could not claim public exposure to the DU Logo based on the sale or distribution of promotional items through its membership program. The court found that Ducks Unlimited had acquired significant use-based rights through its licensees’ use of the DU Logo on consumer goods.

After examining the relevant factors, the court concluded that the evidence of likelihood of confusion was "strong." No factors favored the defendants and the only neutral factor was actual confusion. Ducks Unlimited’s anecdotal evidence was weak and its consumer survey was flawed. Most importantly, the DU Logo was a strong mark and the Boondux Logo was very similar. The substantial overlap in kinds of consumer goods offered by the parties and the common consumers targeted by each increased the likelihood of confusion. In addition, the defendants intentionally copied the DU Logo. Consumers viewing the Boondux Logo were likely to believe that Boondux was affiliated with Ducks Unlimited or that Ducks Unlimited otherwise sponsored or approved of Boondux.

Trademark dilution. Ducks Unlimited established that its DU Logo was a strong mark, but the evidence failed to prove that the DU Logo was sufficiently famous to qualify for dilution protection under the Lanham Act. At best, Ducks Unlimited established that its mark was famous only among a specific niche audience; namely, those interested in wetlands conservation, hunting, fishing, and the outdoors generally. This fell short of establishing that the DU Logo was widely recognized among consumers nationally as one of the few marks that had achieved the status of "a household name."

Remedies. Regarding damages for trademark infringement, Ducks Unlimited requested an award of the defendants’ profits on sales of infringing products. The evidence at trial showed that the total gross sales figure for products marked with the Boondux Logo was $404,116.04 and that Boondux established costs and expenses of $145,197. Ducks Unlimited was awarded $258,919.04 in infringing profits.

As for the defendants’ copyright infringement, the court determined that Ducks Unlimited was entitled to an award of statutory damages in the amount of $30,000 in lieu of profits. The court declined to award enhanced damages for willful trademark or copyright infringement. "Although mistaken, Sutton might reasonably have believed that, by creatively modifying the DU Logo as he did, he had designed a logo that would not infringe the DU Logo," the court said. Lastly, the court granted Ducks Unlimited’s motion for a permanent injunction. The defendants were ordered to cease use of the Boondux Logo and to destroy all infringing articles in their possession.

The case is No. 2:14-cv-02885-SHM-tmp.

Attorneys: Kathryn K. Van Namen (Wyatt Tarrant & Combs, LLP) for Ducks Unlimited, Inc. Russel O. Primeaux (Kean Miller LLP) and Adam Jacob Eckstein (Martin, Tate, Morrow & Marston, P.C.) for Boondux, LLC.

Companies: Ducks Unlimited, Inc.; Boondux, LLC

Cases: Copyright Trademark TennesseeNews