USCA1 Opinion

UNITED STATES COURT OF APPEALS

UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
FOR THE FIRST CIRCUIT

_________________________

No. 96-1206

THE INTERNATIONAL ASSOCIATION OF MACHINISTS AND

AEROSPACE WORKERS, AFL-CIO, ET AL.,

Plaintiffs, Appellants,

v.

WINSHIP GREEN NURSING CENTER, ET AL.,

Defendants, Appellees.

_________________________

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MAINE

[Hon. Gene Carter, U.S. District Judge]

___________________

_________________________

Before

Selya, Circuit Judge,

_____________

Torres* and Saris,** District Judges.

_______________

_________________________

Mark Schneider,
_______________

with whom

John M. West and

______________

Bredhoff &
___________

Kaiser, P.L.L.C. were on brief, for appellants.

________________

Richard L. O'Meara, with whom Charles P. Piacentini, Jr. and

__________________
__________________________
Murray, Plumb & Murray were on brief, for appellees.
______________________

_________________________

December 30, 1996

_________________________

______________
*Of the District of Rhode Island, sitting by designation.
**Of the District of Massachusetts, sitting by designation.

SELYA,
SELYA,

Circuit Judge.
Circuit Judge.
_____________

In this

eccentric case,

the

International Association

of

Machinists and

Aerospace

(IAM or Union) charged an employer, Winship Green

(Winship), with violating

(1994),

through

its

Nursing Center

the Lanham Act, 15 U.S.C.

unauthorized

use

of

Workers

1051-1127

a service

mark

propaganda disseminated during a union organizing campaign.1

district court granted Winship's

reasoning that

the Union's

Act's jurisdictional

not

competing for

Winship's

the

sale

of

unauthorized

services offered

services offered by

Machinists

claim failed to

requirements because

admittedly

connection with

motion for brevis

______

the infringer.

of

the

by the markholder

Lanham

parties were

commercial services,

use

The

disposition,

satisfy the

(1) the

on

mark

and

was

(2)

in

rather than

See International Ass'n of

___ _______________________

v. Winship Green Nursing Ctr., 914 F. Supp. 651, 655-

__________

__________________________

56 (D. Me.

1996).

The

Union appeals.

We affirm, albeit

on a

different ground.

I.
I.

BACKGROUND
BACKGROUND

We present the basic facts in the light most flattering

to

the party vanquished by

summary judgment.

All the relevant

events occurred in 1994, and all dates refer to that year.

A
A

In May

the Union

mounted a

campaign to organize

the

____________________

1An IAM

official, Dale Hartford,

two affiliates

of Winship (Hillhaven Corp.

Corp.) are codefendants.

parties

does not

litigation

as

is also a

affect

if it

Since the
the issues

involved

only

plaintiff, and

and First Healthcare

presence of these additional

on

appeal, we

the

Union (as

appellant) and Winship (as defendant-appellee).

treat

the

plaintiff-

nonprofessional employees

Not

surprisingly,

at Winship's facility in

management

resisted

this

Bath, Maine.

initiative

and

exhorted the affected employees to vote against IAM's election as

a collective bargaining

representative.

As

Winship

two

campaign

hand-delivered

employees in the putative

pieces

of

bargaining unit.

part of its

retort

literature to

These handouts

form

the basis for IAM's lawsuit.

1.
1.

The First Flier.

The First Flier.
________________

In July

Winship distributed

three-page flier, the first page of which asks rhetorically:

WHAT

WOULD YOU

DO IF

YOU GOT

THE ATTACHED

LETTERS?
WOULD YOU BE ABLE TO FIND ANOTHER JOB?
HOW WOULD YOU PAY YOUR BILLS?
WOULD YOU WISH THAT THE MACHINISTS UNION

HAD

NEVER GOTTEN IN AT WINSHIP GREEN?

The

flier then advises recipients

implores them

"VOT[ING] NO ON

to particular

to "GIVE

[certain

AUGUST 4."

The

employees and dated

that "IT'S NOT

named managers]

TOO LATE" and

A CHANCE"

by

letters, addressed individually

one year after

_____

the scheduled

election, comprise the second and third pages of the flier.

One

letter purports to be written on the Union's letterhead, complete

with a reproduction of the IAM service mark

of

(consisting of a set

machinist's tools surrounded by a gear and the IAM name)2 and

the facsimile signature of an IAM plenipotentiary, Dale Hartford.

____________________

2Service marks
source

of

between the

and

services and

trademarks
goods,

function

to

respectively.

identify
The

the

difference

two types of marks is not relevant here, and thus we

will apply case law involving either form.

See Star Fin. Servs.,

___ _________________

Inc. v. AASTAR Mortgage Corp., 89

____
_____________________

F.3d 5, 8 n.1 (1st Cir. 1996);

Volkswagenwerk Aktiengesellschaft
_________________________________

v. Wheeler, 814
_______

n.1 (1st Cir. 1987).

F.2d 812, 815

This

missive suggests that the Union had notified Winship of its

obligation,

pursuant

to

an

invented

collective

bargaining

agreement, to terminate the recipient's employment because of her

failure

to

pay certain

initiation fee).

of

operations, is

receipt

assessments

(e.g., union

dues

and an

The other epistle, signed by Winship's director

also

postdated.

It acknowledges

Winship's

of the notice and professes to inform the addressee that

the company must honor the Union's request.

2.
2.

literature,

The Second Flier.

The Second Flier.
________________

disseminated

by

The remaining piece of campaign

Winship

few

days

before

the

election, urges the reader to vote against unionization and warns

that union

This

membership will bring

flier

purports

mark).

contains

significant financial burdens.

simulated

invoice

inscribed

on

what

to be IAM's letterhead (and which bears the IAM service

Under

a heading

that reads "PAYABLE

TO THE

MACHINISTS

UNION BY [employee's name]", the invoice lists amounts designated

as

union

dues, an

initiation

fee,

and

fines.3

undiluted by subtlety, accompanies this listing:

THE

UNION HAS

TOLD

YOU

HOSPITAL" AND "JUST ASK

SOUTH PORTLAND

WHO

WERE

JUST ASK

THE

"NO MATTER WHAT

EMPLOYEES AT

THE 13 EMPLOYEES AT GENERAL

FINED

bold letters

FOR CROSSING

the

bottom

THE

LOURDES

ELECTRIC IN

PICKET

of the

LINE

THERE."

Large,

proclaim:

"WITHOUT THE MACHINISTS UNION, DO NOT PAY THIS BILL."

____________________

at

Commentary,

invoice

3The

stated

extravagant.
declared

amounts

During

that there

the
would

are

not

only

organizing
be no

apocryphal
drive,

initiation

IAM
fee and

but

also

repeatedly
that

no

worker's monthly dues would exceed $20.

Notwithstanding Winship's tactics

them

the employees

chose IAM

as their

representative in the August 4 election.

B
B

or, perhaps, due to

collective bargaining

The Union

suit against Winship

proved to be a

sore winner.

alleging inter alia

_____ ____

soon filed

trademark infringement

and unfair competition under the Lanham Act.4

its

It

The Union premised

federal claims on the theory that Winship's unauthorized use

of the registered service mark occurred "in connection with . . .

services," namely, IAM's

representational services, and

transgressed sections 32(1) and 43(a) of the

U.S.C.

1114(1)(a)

district court

mentioned.

See
___

&

1125(a) (quoted

rejected this

IAM, 914
___

F.

followed.

II.
II.

infra
_____

theory for the

Supp.

THE SUMMARY JUDGMENT STANDARD

THE SUMMARY JUDGMENT STANDARD

Lanham Act.

note 5).

thereby

See 15
___

The

reasons previously

at 655-56.

This

appeal

Though the case

standard

that we

appropriate in

the

must apply

is prosaic.

the generic

Summary

trademark infringement cases,

pleadings,

admissions on

is unconventional,

depositions,

answers

file, together with

to

legal

judgment is

as elsewhere,

"if

interrogatories,

and

the affidavits, if

any, show

____________________

4IAM's
state-law

complaint
claims.

without prejudice
on

the federal

understand
state
relief

also

The

embodied a

district court

salmagundi

See
___

IAM,
___

pendent

dismissed these

coincident with the entry

claims.

of

914 F.

claims

of summary judgment
Supp. at

656.

We

that the Union is pursuing these claims in a separate

court action.
under

Finally,

the complaint

the Norris-LaGuardia

Act,

29

sought injunctive
U.S.C.

101-115

(1994), but the Union now concedes the infirmity of this request.

that

there is no genuine issue as

the moving party is entitled

Boston Athletic Ass'n

______________________

1989) (quoting Fed.

suit, see Garside

___ _______

1990),

and

to a judgment as a matter

v. Sullivan,
________

R. Civ.

fact is "material" if

to any material fact and that

867 F.2d

P. 56(c)).

22, 24

of law."

(1st Cir.

Generally speaking,

it potentially affects the outcome

v. Osco Drug, Inc., 895 F.2d

_______________

dispute over

it

is

"genuine"

of the

46, 48 (1st Cir.

if the

parties'

positions on the issue are supported by conflicting evidence, see

___

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).

________
___________________

an

inquiring court is constrained

light

most favorable

resolve

all reasonable

Hachikian v. FDIC, 96
_________
____

properly

than

to the

summary judgment

inferences

documented motion

nonmovant

true

in respect

bears the burden

"must reliably

in that

record in the

opponent and

party's favor,

to

see
___

F.3d 502, 504 (1st Cir. 1996), defeating a

for summary

the jingoistic brandishing of

especially

to examine the

While

demonstrate

judgment

a cardboard sword.

to claims

or

of proof; in

that specific

create an authentic dispute exist."

requires more

issues on

This is

which the

such circumstances she

facts

sufficient

to

Garside, 895 F.2d at 48; see

_______
___

also Anderson, 477 U.S. at 256.

____ ________

We review de novo the district court's grant of summary

judgment.

181

See Mack
___ ____

(1st Cir.

1989).

bound by the lower

judgment

v. Great Atl. & Pac. Tea Co., 871 F.2d 179,

__________________________

Moreover, an

appellate tribunal

is not

court's rationale but may affirm the entry of

on any independent ground

rooted in the

record.

e.g., Hachikian, 96 F.3d at 504; Garside, 895 F.2d at 49.

____ _________
_______

See,
___

III.
III.

ANALYSIS
ANALYSIS

Our analysis proceeds in five parts.

A
A

Trademark

exist largely

infringement

to protect

and

the public

unfair

from

competition

confusion anent

laws

the

actual source of goods or services.

See, e.g., Star Fin. Servs.,

___ ____ _________________

Inc. v.
____

F.3d 5,

AASTAR Mortgage Corp., 89

______________________

9 (1st

Cir. 1996);

DeCosta v. Viacom Int'l, Inc., 981 F.2d 602, 605 (1st Cir. 1992),
_______
__________________

cert. denied, 509 U.S. 923 (1993); 3 J. Thomas McCarthy, McCarthy

_____ ______
________

on Trademarks and Unfair Competition

____________________________________

Lanham

Act is cast

in this mold.

23.01

(3d ed. 1996).

Generally speaking,

The

the Act

proscribes the

unauthorized

use

of a

service

mark

when

the

particular usage causes a likelihood of confusion with respect to

the identity of

the service

provider.5

See
___

WCVB-TV v.
_______

Boston
______

____________________

5Section
claims.

32(1)

of

the

Lanham

Act

governs

infringement

It stipulates in pertinent part:

Any

person

who

shall,

without

consent of the registrant

(a)

use

in

commerce

any

reproduction, counterfeit, copy, or

colorable imitation of a registered
mark in connection

with the

sale,

offering for sale, distribution, or

advertising
services on or

of

any

goods

in connection

or
with

which such use is likely to cause

_____________________________
confusion, or to cause
_________

mistake, or

to deceive; . . .

shall be

liable in a

civil action

by the registrant . . . .

the

15

U.S.C.

1114(1) (emphasis supplied).

unfair competition claims.

Section 43(a) governs

It stipulates in pertinent part:

Any person who, on

or in connection with any

Athletic Ass'n, 926 F.2d 42, 44 (1st Cir. 1991); see also Societe
______________
___ ____ _______

des Produits Nestle, S.A.

_________________________

641 (1st

"only

v. Casa Helvetia, Inc., 982

___________________

Cir. 1992) (explaining

those appropriations . .

in respect

. likely to

F.2d 633,

to trademarks

that

cause confusion are

prohibited").

dispositive

926

F.2d

Consequently, likelihood of confusion often is the

inquiry in a Lanham

at

Act case.

See, e.g., WCVB-TV,

___ ____ _______

44; Pignons S.A. de Mecanique de Precision

__________________________________________

Polaroid Corp.,
______________

657 F.2d 482,

492 (1st

Cir. 1981).

So it

v.

is

here.

B
B

To demonstrate likelihood of confusion a markholder (or

one claiming by,

theoretical

Foundries
_________

through, or under her) must

possibility

v.

of

Robertson, 269
_________

confusion.

U.S.

372,

show more than the

See
___

American Steel
_______________

382 (1926)

(requiring

probable confusion); Star, 89 F.3d at 10 (requiring evidence of a

____

substantial likelihood of confusion); accord 3 McCarthy, supra,

______
_____

23.01[3][a].

Just as one tree

does not constitute a forest, an

____________________

goods or services, . . . uses in commerce any

word, term,

name, symbol, or device . . . or

any false designation of origin . . . which

(A) is likely to cause confusion,
___________________________
or to cause
as

to

sponsorship,

mistake, or to deceive
.

the

origin,

or approval

of [such

person's]

goods,

services,

commercial

activities

by

or

another

person . . .

shall

be liable

in

a civil

person who believes that

action by

he or she is

likely to be damaged by such an act.

15 U.S.C.

1125(a) (emphasis supplied).

any
or is

isolated instance of confusion does not prove probable confusion.

To the contrary,

allegedly

the law

has long demanded

infringing conduct

confounding

an

appreciable

carries

U.S.

580

with it

number

purchasers exercising ordinary care.

a showing that

of

a likelihood

reasonably

the

of

prudent

See McLean v. Fleming,

___ ______
_______

96

245, 251 (1877); Mushroom Makers, Inc. v. R.G. Barry Corp.,

_____________________
________________

F.2d 44,

47 (2d

Cir. 1978),

cert.
_____

denied, 439
______

U.S. 1116

(1979); Coca-Cola Co. v.

______________

280, 284 (1st

means,

See,
___

Cir.), cert. denied,

_____ ______

of course,

public's

Snow Crest Beverages, Inc., 162

___________________________

that confusion

332 U.S. 809

resulting from

carelessness, indifference, or

e.g., United States v.

____ _____________

(1947).

F.2d

This

the consuming

ennui will not suffice.

88 Cases, More or Less, Containing

___________________________________

Bireley's Orange Beverage, 187 F.2d 967, 971 (3d Cir.) (inferring
_________________________

that "the

legislature contemplated the reaction

person who is neither savant nor

a normal measure

of the

cert. denied, 342

_____ ______

of the ordinary

dolt, [and] who . . . exercises

layman's common

sense and

U.S. 861 (1951); see also

___ ____

Indianapolis Colts,
___________________

Inc. v. Metropolitan Baltimore Football Club Ltd.,

____
__________________________________________

414

(7th Cir.

1994) (explaining

that the

judgment"),

34 F.3d 410,

Lanham Act

does not

"protect the most gullible fringe of the consuming public").

We

likelihood

typically

consider

of confusion:

(1)

the similarity

of the

eight

factors

the similarity of

goods (or, in

a service

in

assessing

the marks; (2)

mark case,

the

services); (3) the relationship

between the parties' channels of

trade;

of their

classes

(4)

the

juxtaposition

of prospective

purchasers; (6)

advertising;

the evidence

(5)

the

of actual

confusion; (7)

the defendant's intent in

infringing mark; and (8)

See Star,
___ ____

it

867 F.2d at 29.

is

1975),

not

intended

to

be either

Prods., Inc.
____________

cert. denied,
_____ ______

all-encompassing

423 U.S.

1073

(1976).

or

factor that

The listed

See Astra Pharmaceutical

___ ____________________

v. Beckman Instruments, Inc., 718 F.2d

__________________________

(1st Cir. 1983).

conveyed to

While this

See DeCosta v. CBS, Inc., 520 F.2d 499, 513-14 (1st

___ _______
__________

factors are meant to be used as guides.

other

plaintiff's mark.

does not conform easily to the peculiar facts of this

exclusive.

Cir.

strength of the

89 F.3d at 10; Sullivan,

________

compendium

case,

the

adopting its allegedly

1201, 1205

No one listed factor is determinative, and any

has a

tendency to

influence the

impression

prospective purchasers by

the allegedly

infringing

conduct

may

be weighed

likelihood of confusion.

the Restatement

forth

by the

judge

or jury

in

We completely agree with the authors of

that "[n]o mechanistic

in advance the variety

formula or list

of factors that

(Third) of Unfair Competition

the listed factors

inquiry

into

replicate

the

the

worth making.

must be evaluated in

likelihood

of

in

actually confronts

(or probably

mark.

Libman Co.
__________

See, e.g.,
___ ____

Restatement

21 cmt. a (1995).

points are

circumstances

can set

may contribute to

the particular marketing context of an actor's use."

Two related

gauging the

context, any meaningful

confusion

which

First, because

the

necessarily

ordinary

will confront)

must

consumer

the conflicting

v. Vining Indus., Inc., 69

____________________

F.3d

1360, 1362 (7th Cir. 1995), cert. denied, 116 S. Ct. 1878 (1996);
_____ ______

Black Dog Tavern Co. v.

______________________

Hall, 823
____

F. Supp.

48, 55

(D. Mass.

special gloss upon

the usual

10

1993).

Second, Rule

analytic approach.

decide

56 places a

On summary

judgment the reviewing court must

whether the evidence as a whole, taken most hospitably to

the markholder,

generates a

triable issue

as to likelihood

of

confusion.

See Sullivan,
___ ________

867 F.2d

at 29;

Astra, 718
_____

F.2d at

1205;

see also 3 McCarthy, supra,

___ ____
_____

23.11 (observing that, while

legal

precedent governs the analysis, the result of each case is

controlled by the totality of its facts).

Applying these

bears

the

evidence,

burden

Anderson,
________

here

477

principles, we conclude that

of adducing

U.S.

at

"significantly

249-50

(citation

tending to show that an appreciable number of

the Union

probative"

omitted),

prospective voters

(i.e., employees within the defined bargaining unit) were in fact

likely

to be confused or misled into believing that the service-

marked campaign

IAM.

literature was produced, sent,

The Union has not reached this plateau.

C
C

or authorized by

As

analysis,

we set

the

scene

for

the

main

thrust

of

our

we acknowledge that the campaign stump is an odd stage

for playing out

a Lanham Act

setting, confusion as to

drama.

In the

typical commercial

the source of goods or

services occurs

when there is an unacceptably high risk that a buyer may purchase

one product or service in the mistaken belief that she is

a different product

or service.

See, e.g., Star,

___ ____ ____

But the instant case is well off

involve

two entrepreneurs

the beaten track.

vying to

11

sell competing

buying

89 F.3d at 9.

It does

not

products or

services

in the traditional sense.

represent the workers and,

Rather, IAM

was angling to

although Winship opposed that effort,

it was neither offering nor seeking to provide a similar service.

In

the

vernacular of

the

marketplace, IAM

was

"selling" its

services to prospective union members and Winship was "selling" a

negative

the

lack of a need for any

such services or service-

provider.

This twist

assessment

of

favorably to the

the

has significant implications for

likelihood

of confusion.

Union, that confusion as

If

a court's

we

to the source

assume,

of the

documents bearing

the IAM service

mark may at

least indirectly

deter prospective purchasers (voters within the bargaining

unit)

from acquiring (voting for) IAM's representational services, that

deterrent will exist only

causes

the

if, and to the extent

that, confusion

purchasers to be misinformed about the nature or value of

services.

We

think it

electorate

can readily

promotional

materials,

follows

inexorably that,

identify Winship

the

deterrent

McIntyre v. Ohio Elections Comm'n,

________
______________________

as

the source

vanishes.

115 S. Ct.

if

the

of the

See,
___

e.g.,
____

1511, 1519

n.11

(1995) (suggesting that once people know the source of a writing,

they can

evaluate its

message, and, at

that point, "it

is for

them to decide what is responsible, what is valuable, and what is

truth") (citation and internal quotation marks omitted).

In that

event,

there is no misleading as to

and the

voters can assess whether

the genesis of the letters,

the Winship-authored handouts

accurately describe the Union's services, or, instead, are merely

12

manifestation

dissuade

another

the

of

voters

Winship's

from

no-holds-barred

"purchasing" those

commitment

services.

to

Put

way, knowledge as to the source of the materials dispels

incipient confusion.

The Union attempts to confess

that

the recipients'

ability

and avoid.

to ascertain

the

letters,

theory that

even

employees may have

if delivered

by

the

documents which

Winship procured

invective.

that theory does not

this

But

is neither

copies

of a

elsewhere

an

notice

instance in

and adds anti-union

employer makes minor emendations

The

letters

circumstances

and

the

invoice

indigenous

to

thought that

and then draped

previously sent

actual

the

IAM

in anti-union

fit the facts:

by

the

This contention

company, were

which an

contends

source of

documents does not necessarily negate confusion.

hinges on the

It

patently,

employer distributes

a union

commentary, nor

to

one in

employees

which an

to an authentic union document.

are composed

this

around

particular

names

and

organizational

effort.

in its

Among other things, the letters bear a date significant

relation to

the

scheduled election;

they address

each

Winship employee by name and home address; and they identify this

employer.

Source-identifiers specific

to the Winship

election

are even more pervasive in the fictitious invoice.

The Union's fallback position seems to be that, even if

it is nose-on-the-face plain that the letters and the invoice are

not

replicas of

genuine IAM

still may have believed

materials, the

affected employees

that they somehow were based

13

on genuine

materials.

We think

this construct is both legally

factually unsupported.

to

unsound and

In the first place, a recipient's ability

recognize that the alleged infringer, at a minimum, must have

substantially

added

to or

altered

confusion as to its immediate source.

American Broadcasting Cos., 720

___________________________

(suggesting that

basis"

claim).

lack of

for asserting

In

assumption that

the

document alleviates

Cf. Warner Bros., Inc. v.

___ __________________

F.2d 231,

246

(2d Cir.

substantial similarity leaves

likelihood of

second place,

the contrived

any

confusion

even

documents

in a

indulging

the

were based

1983)

"little

Lanham Act

arguendo

on a

real

scenario, the

alterations

ordinary recipient,

are sufficiently

possessing a modicum

extensive

that

an

of intelligence, could

not help but recognize that Winship had tampered so substantially

with

the documents

emanating

from

that they

the

could no

Union.6

In

credibility

would depend

Winship was

telling the truth.

longer be

other

on the

words,

perceived as

the documents'

voters' assessment

of whether

See McIntyre, 115 S. Ct. at 1519

___ ________

____________________

6An
Absent

analogous principle
direct evidence

must prove "substantial

contested materials.

copyright law

of copyright

See, e.g.,
___ ____

NEC Corp. v.
_________

Cal. 1989).

is recognized

is

copied,

however,

no

copyright

plaintiff

copyrighted and
Intel Corp.,
___________

The applicable

by an observer

taken from the copyrighted source."

is instructive.

infringement, a

similarity" between the

U.S.P.Q.2d 1177, 1183 (N.D.

"whether the work

in

Id. at 1184.
___

10

test is

as having

been

Even if a work

infringement

exists

if

substantial

changes

render the

work

unrecognizable.

(9th Cir. 1983)

See
___

v.

(affirming grant

of

Durang, 711 F.2d

______

141, 142

summary judgment

for the defendant); NEC Corp., 10 U.S.P.Q.2d at

_________

1186-87; cf. A. Dean Johnson, Music Copyrights: The Need for an

___
___________________________________

Appropriate Fair Use Analysis in Digital Sampling Infringement

_________________________________________________________________
Suits, 21 Fla. St. U. L. Rev. 135, 158-59 (1993)
_____
likelihood of fair

use in copyright cases if

(noting greater

alterations render

an original music recording unrecognizable).

14

n.11

(discussing the

value

of

knowing

"the identity

of

the

source"

for the

contained

these

in a writing).

judging the

recognize

in one

ideas

as employees can ascertain either

or who substantially modified

readily

letters,

truthfulness of

We conclude, therefore, with regard to

documents, that as long

who authored

will

purpose of

the

entire

case, and the

the literature, they

document

invoice, in the

propaganda, and they will be in

(including

the

second case) as

a position to gauge its accuracy

accordingly.

This emphasis on source recognition

the

setting

management

and

the

relations

observed three decades

ordinarily

heated

juxtaposition of

have

not

mellowed

the

takes into account

parties.

since

ago that representational

affairs .

Justice

Labor-

Clark

campaigns "are

frequently characterized

by

bitter

and extreme

vituperations,

distortions."

charges,

personal

Linn v.
____

countercharges, unfounded

accusations,

misrepresentations

U.S. 53,

crossing

the line into outright

58 (1966).

Because

exaggeration, sometimes

falsehood, is a

staple in such

campaigns, "consumers"

(i.e., affected

that both sides likely

will embellish with scant regard

confining restraints imposed

NLRB,
____

386

inaccuracies are

relations

F.2d

117

workers)

by the truth.

(1st

Cir.

1967)

are on

The

notice

for the

See Baumritter Corp.

___ ________________

(explaining

indigenous to campaign propaganda

milieu).

and

United Plant Guard Workers of Am., Local

_________________________________________

114, 383
___

v.

rumors,

acrimonious literature

that

in the labor

disseminated by

both parties indicates that this campaign was no exception to the

15

rule.7

D
D

Having woven the contextual tapestry

Union's

claims must

be

viewed, we

turn

against which the

now to

the

octet of

factors that typically inform the likelihood of confusion.

While

the strange configuration of

those

this case renders certain of

factors irrelevant or, at least, difficult to apply

never

fit snugly

in round

interest of completeness.

holes

we make

square pegs

the effort

in the

Moreover, other relevant circumstances

compensate to some degree for this lack of fit and we intersperse

them throughout our discussion.

of especially

We deem such circumstances to be

great importance here precisely

because this case

falls well outside the customary confines of the Lanham Act.

1.
1.

Winship

Similarity of Marks.
Similarity of Marks.
____________________

is not merely similar;

reproduction.

Still,

the designation's total

The

service mark

it is identical

similarity is determined

a photocopied

on the basis

effect, see, e.g., Pignons, 657

___ ____ _______

487 (considering additional,

used by

of

F.2d at

source-identifying words printed on

goods and substantial differences in packaging), and infringement

"does not exist, though the marks be identical and the goods very

similar,

when

confusion]."

the

evidence

indicates

no

[likelihood

of

James Burrough Ltd. v. Sign of the Beefeater, Inc.,

___________________
___________________________

____________________

7For

example, one

beating your wife?"

DO[ES

WINSHIP] PLAN

IAM

flier of

variety, asks:
TO

the

"when did

"WHAT LIES

SPREAD DURING

OUR

you

OR HALF

DEBATE?"

stop

TRUTHS
The

IAM

materials also describe anticipated "company tactics" or "tricks"

in

unflattering

CORPORATE

TRAPS."

terms
The

and

warn

Winship

speaks for itself.

16

employees
literature,

to

"LOOK OUT

FOR

discussed above,

540

F.2d

266, 274

(7th

recognized that in certain

are

with

not likely to

Cir. 1976).

What is

more,

we have

circumstances otherwise similar marks

be confused if

clearly displayed names,

they are

used in conjunction

logos or other source-identifying

designations of the manufacturer.

See Aktiebolaget Electrolux v.

___ _______________________

Armatron Int'l, Inc., 999 F.2d 1, 4 (1st Cir. 1993); Pignons, 657
____________________
_______

F.2d

at

487.

Here,

Winship printed in large

the lengthy

propagandistic

type on the fictitious invoice

conspicuous, easily identifiable fliers

letters dilute

message that

and the

it sent to introduce the

the inference that might otherwise

be drawn from

the similarity between the marks.

2.

Similarity of Services.

Because the parties do not

2.

Similarity of Services.
______________________

offer competing

even

if the documents

think that

and in

services, there is no

similitude.

are evaluated in the

Furthermore,

abstract, we do not

any reasonable person, viewing them in their entirety

conjunction with

the accompanying materials,

would find

them similar to IAM's authentic campaign literature.

On the one hand, any similarity to actual IAM materials

is limited to the vitriolic tone, the presence of the IAM service

mark, and the facsimile signature.

genuine IAM

communication, the letters

year and address

the employees as if

favor of union representation.

invoice) contains

more

On the other hand, unlike any

any other

a full

they already had opted

in

The next piece of propaganda (the

anti-union messages

prominent than

are postdated by

text.

that are longer

and much

And, moreover,

in stark

contrast to

handbills distributed by IAM

which invariably urged

17

employees to vote "yes" (i.e., for a union), the letters at issue

were attached to rabidly anti-union fliers exhorting employees to

vote "no" (i.e., against a union).

when compared to

the real McCoy,

and antithetical

in content.

In

short, the bogus letters,

are distinctive in

Given

appearance

such gross dissimilarities,

it cannot reasonably be

inferred that ordinarily prudent workers

would be likely to confuse the source of the letters.

See Senco
___ _____

Prods., Inc. v.
_____________

International Union of Elec. Workers,

______________________________________

Supp.

(S.D.

590,

592

confusion as to

bearing

Ohio 1970)

(finding

sponsorship of handbills

employer trademark

in

bold print

no

311 F.

likelihood

circulated by a

on

the first

of

union

line,

followed by union identifiers of equal prominence).

3-5.
3-5.

Channels of Trade and Advertising; Classes of

Channels of Trade and Advertising; Classes of
________________________________________________

Prospective Purchasers.
Prospective Purchasers.
______________________

Following circuit precedent, see Equine

___ ______

Technologies, Inc.
__________________

v. Equitechnology, Inc., 68 F.3d 542, 546 n.5

____________________

(1st

we address

Cir.

1995),

the

next

three

factors in

the

ensemble.

The parties'

(reduced to

bare

whereas

Winship

evidence

that

channels of trade

essence, IAM

sells

the

sells representational

nursing

channels

are widely disparate

home

beds),

advertising

and

services

there

those

is no

services

are

similar.

To

both

parties

be sure, as the

propagandized

through

the

exactly

the same

class

same

election campaign picked up steam,

(and, in

medium (print),

narrowly-defined

of prospective

purchasers

18

and

that

both

cadre of

sense,

of

advertised)

them targeted

individuals.

is necessarily

restricted

The

to

those

individuals and

identicality does

is,

therefore, identical.

not advance the

Union's cause in

Still,

that

the special

circumstances of this case.

On

this point,

the requisite

inquiry is

not limited

merely to determining whether the class of prospective purchasers

is the same or different.

likelihood

of confusion

Instead, a court called upon to assay

must ponder

the sophistication

of the

class, thereby taking account of the context in which the alleged

infringer uses the mark.

HQ

Network Sys.

See, e.g., Astra, 718 F.2d

___ ____ _____

v. Executive Headquarters,

755 F.

at 1206-07;

Supp. 1110,

________________

______________________

1118-19 (D. Mass.

in

May.

sent the

by

Among

1991).

Here, the

other things, the

organizational effort began

Union held open

affected workers periodic "organizing

late July

documents

when

Winship began to

persons within

meetings and

updates."

Thus,

distribute the challenged

the class could not help

but know of

the ongoing campaign and of its excesses.

We

must presume that

intelligence,

the class members

see McLean, 96 U.S.

___ ______

are of normal

at 251; Church of the Larger

_____________________

Fellowship, Unitarian Universalist v. Conservation Law Found. of

__________________________________
___________________________

New Eng., Inc.,

______________

previous months'

degree of

221 U.S.P.Q. 869,

873 (D. Mass. 1983),

electioneering would have given

enforced sophistication.

Common sense

and the

them a certain

dictates that

this group

above all others

would

filter the rivals' claims

through the seine of this knowledge.

Cf. Linn, 383 U.S. at 60-62

___ ____

(discussing

of

the

NLRB's

toleration

abusive and

inaccurate

statements made during organizational campaigns and agreeing that

19

the ultimate appraisal

of such

statements must be

good sense of those voting in the elections).

left to

the

Accordingly, class

members

were

especially

unlikely

to be

misled

by

Winship's

unauthorized use of the IAM mark.

6.
6.

Actual Confusion.
Actual Confusion.
_________________

IAM proffers

Dale Hartford's

affidavit as the mainstay of its case (indeed, its solitary piece

of evidence) on

states briefly

the issue

of actual confusion.

that "several"

employees asked

The

whether Hartford

had in fact written the letter that bore his signature.8

reports

that

one

employee

questioned

whether

she

required to pay $300 in dues and a $200 initiation fee.

opines

that "these figures

seem to have

[the apocryphal union invoice]."

affidavit

had to have

It also

would

be

Hartford

come from

This evidence, standing alone,

is insufficient to prove actual confusion.

The fundamental problem with

the Hartford affidavit is

that, even taking

its contents

as literally true,

it does

not

undermine what is perfectly obvious from a reading of the record:

no person of ordinary prudence

and normal intelligence, aware of

what was happening around her, would have been confused as to the

source

or

sponsorship

of the

letters.

For

one thing,

the

inquiries to which Hartford alludes reveal at most that employees

doubted whether he would have written a letter unfavorable to the

very

cause he

had labored

to

promote.

On their

face, these

____________________

8Although Hartford

recalled that these statements were made

in front of approximately ten other employees at a union meeting,

he claimed that
consequently,

he could not

locate the list of

attendees and,

could not name either the persons who made inquiry

of him or those who overheard the queries.

20

inquiries do not evince actual confusion as to the source of

jury-rigged

documents.

Competition

customers

associated

23

as

. .

cmt.

See
___

to whether

Restatement

(1995)

the

may not

(Third)

("Evidence

plaintiff and

establish

of

Unfair

of inquiries

the

the

by

defendant are

the existence

of

actual

confusion if the nature of the inquiries indicates that consumers

perceive a difference between

the designations and are skeptical

of the existence of a connection between the users.").

For another thing, skepticism is particularly rampant

and

wise

drive.

as to claims

the course

of any organizing
___

In the course of this organizing drive

____

a struggle which

incited more than its

members

made in

share of hyperbole

had ample reason to be skeptical.

on both sides

class

They must have known

that Winship distributed the fliers (which embodied the letters),

and

light

they therefore

of

forearmed,

knew that

the letters had

Winship's motivation.

see Miguel
___

In

de Cervantes,

to be

all events,

viewed in

forewarned is

Don Quixote de la Mancha

__________________________

(circa 1615), and, here, the Union disseminated literature in the

early

going predicting

that management

would stoop

to dubious

tactics.

The question about

dues is

an even thinner

reed.

lone

inquiry

does

not

indicate

appreciable number of purchasers.

at

47.

Regardless, this

veracity
________

of

indicate

confusion as to

probable

concerning

the source of
______

21

of

an

See Mushroom Makers, 580 F.2d

___ ________________

lone inquiry

the prediction

confusion

which

questioned the

union dues

does not

the fictitious invoice.

See
___

Pignons,
_______

expressing

657

F.2d

surprise at

at

490

(finding

consumer's

perceived affiliation

letter

between competing

companies "clearly insufficient" to prove actual confusion).

The Union strives

paltry

the

adequate

evidence

to survive

of

to persuade us

that, no matter

actual confusion,

testing on

it

not convinced.

procedure is

evaluate

The

to "pierce

core purpose

the boilerplate

the proof to determine

nonetheless

summary judgment where

accept all reasonable inferences favorable to

are

is

we must

the nonmovant.

of the

how

We

summary judgment

of the

pleadings" and

whether a trial

will serve any

useful purpose.

Wynne v. Tufts Univ. Sch. of Med., 976 F.2d 791,

_____
________________________

794

1992),

(1st

Cir.

Consequently,

cert.
_____

denied,
______

507

U.S.

1030

(1993).

summary judgment cannot be sidestepped by pointing

to

evidence that is

Mack, 871 F.2d

____

merely colorable or

at 181,

e.g., Mesnick v.
____ _______

or evidence that

suggestive, see, e.g.,

___ ____

lacks substance,

General Elec. Co., 950 F.2d 816,

_________________

1991), cert. denied,

_____ ______

504 U.S.

985 (1992), or

see,
___

822 (1st Cir.

evidence that

is

inherently incredible, see, e.g., United States v. Joost, 92 F.3d

___ ____ _____________
_____

7, 14 (1st Cir. 1996).

In this

from

any

instance, the

individuals

literature,9 and we

who

Union

submitted no

personally

think that it

received

the

affidavits

campaign

is inherently implausible

to

____________________

9In point of fact, the

that

only such affidavit in the

of an employee named Gail Snipe

she "recognized
campaign

all of the materials

materials."

She

adds:

record

states unequivocally that

. . . to

"The face

be my employer's

of the documents as

well as the context in which the documents were presented made it

clear that the campaign materials were from the employer, not the
IAM."

22

infer from

voters

Hartford that prospective

actually were confused as to the source of the materials.

The summary

only

the inquiries described by

judgment paradigm requires

reasonable
__________

inferences; we

need

us to

draw and

not infer

that

respect

which is

farfetched

or fantastic.

1262 (1st

See Sheinkopf v. Stone, 927 F.2d 1259,

___ _________
_____

Cir. 1991); Medina-Munoz v. R.J. Reynolds Tobacco Co.,

____________
_________________________

896 F.2d 5, 8 (1st Cir. 1990); Raskiewicz v. Town of New Boston,

__________
___________________

754 F.2d

38, 45 (1st Cir.),

Here, the

face of

environment

in

significantly

cert. denied, 474 U.S.

_____ ______

the documents,

which they

were

845 (1985).

the accompanying

fliers, the

distributed, and

probative evidence of

the

lack of

actual confusion combine to

render unreasonable the inference that IAM would have us draw.

7.
7.

when an

Intent.
Intent.
______

IAM relies heavily on the

alleged infringer

may be presumed that

thereby.10

intentionally copies a

principle that

trademark, it

she intended to cause confusion

See Sullivan, 867 F.2d at 34.

___ ________

and profit

But the presumption is

inapposite in situations where there is no persuasive evidence of

any intent

to use the mark to suggest official sponsorship.

WCVB-TV, 926 F.2d at

_______

the

alleged

45-46 (attaching considerable importance to

infringers'

disclaimers,

thus

See
___

contemporaneous

making

clear

offer

that they

were

to

broadcast

not

official

sponsors of the trademarked product).

____________________

10This
in the

rebuttable presumption works with maximum efficiency

commercial setting.

a trademark

There, an infringer typically copies

to palm off her

own goods as those

manufacturer, thereby free riding on the

and

goodwill.

presumption

See
___

works

generally McCarthy,
_________
less

well

in

competitors.

23

cases

of a recognized

markholder's reputation
supra,
_____
that

25.01.
do

not

The

involve

The template of this

TV.
__

Winship

incorporated

case is similar to that

the

bogus

documents

of WCVB_____

in

fliers

prominently displaying anti-union commentary and containing pleas

by

named managers for votes

the

fake invoice itself

disclaimer.

could

Under

conclude,

misappropriation

against unionization.

includes what amounts

the circumstances, no

notwithstanding

of

the

IAM

In addition,

to a conspicuous

reasonable factfinder

Winship's

service mark,

that

purposeful

the

company

intended to mislead employees about the source of the handouts.

8.
8.

Strength.
Strength.
________

Under the Lanham Act strong marks enjoy

the greatest protection against infringement.

999 F.2d at 5; Pignons, 657 F.2d at 492.

_______

robust, having been

thirty years.

does

the

muscularity of a mark, in and

markholder

realistic likelihood of confusion.

5;

Pignons, 657
_______

failed to

The IAM service mark is

duly registered and widely promoted for over

But the

not relieve

See Aktiebolaget,
___ ____________

F.2d

at 492.

of

the

burden

to

prove

See Aktiebolaget, 999 F.2d at

___ ____________

Because

produce evidence sufficient

the Union

has utterly

to meet that

burden, see
___

supra, the mark's strength cannot carry the day.

_____

of itself,

After giving due weight

to each factor and considering

the unique circumstances that necessarily inform our analysis, we

find no

hence,

colorable

basis for

no trialworthy

conclusion

we stress

Lanham

likelihood of

Act

claim.

the significance

of the

In

confusion,

and,

reaching

this

factual setting.

Here, the ambiance powerfully influenced the impression

24

conveyed

by

Winship's

parties'

enmity

unauthorized use

preparations for

between

labor

the

and

communications distributed

inevitably conditioned

made

by either

shortly

before

by

of the

IAM

election

inflamed the

management

and

the election,

the other.

and

The

The

historic

colored

both protagonists.

voters to view with

party about

service mark.

the

climate

suspicion any claims

This

that is

suspicion peaked

when

the offending

documents surfaced.

Moreover, the documents, when received, were

affixed

identifiable management

to clearly

additional, relevant circumstances

propaganda.

counsel persuasively

any realistic possibility of confusion as to

the source or sponsorship of the mismarked literature.

IV.
IV.

CONCLUSION
CONCLUSION

These

against

Considering

favorable

to the

triable issue of

the

record

as

summary judgment

fact as to

whole

in

loser, we hold

the

light

that there

likelihood of confusion.

It is

inconceivable that employees who received the challenged literatu

the height

of a

upon

a cursory

even

fiercely disputed

glance,

be

union organizing

apt

to

campaign w

believe that

IAM

distributed or contributed in any meaningful way to these vocifer

anti-union tracts.

We add a postscript.

our

admiration.

While

The employer wins this appeal, bu

we

strongly

misappropriation of IAM's service

available remedies to redress

U.S. at

61 (approving

disapprove

of

Wins

mark, however, the Union has

that infraction.

state-law remedy in

See, e.g.,
___ ____

Linn
____

analogous circumstan

25

For

our

part, we

are

unwilling

unfamiliar contours simply for

deplore.

While

we are

uncharted waters as our

authorities

involves

on

which

neither a

not

to

stretch the

willing to

primarily

political

Act

the sake of punishing conduct

venture quite

concurring colleague

she

Lanham

relies,

campaign nor

th

as far

after all,

unlik

see post,
___ ____

this

parody

the

concerns

line.

that undergird

her views

like token,

the special

By

court described at length,

the noncommercial nature of

competition

between

the

fortify our

resolve to

circumstances that

see IAM, 914 F. Supp. at

___ ___

the dis

653-56

the unauthorized use, the absence

parties

in

hol

the representational

su

ser

market, and the fact that Winship did not appropriate the mark fo

"in

connection with"

direction.11

Affirmed.
Affirmed.
________

any services

We need go no further.

of its

own

point in

the

Concurring Opinion Follows

____________________

11We
holding,
ruling, or
judgment

take no

view

the grounds on

of the

concurring opinion's

which the

district court

suggested

premised its

the other theories urged by Winship in support of the

below.

several fronts,

While the

Union's case

the absence of any

further comment supererogatory.

26

may be

vulnerable on

meaningful confusion renders

Saris, U.S.D.J.

concur on the ground

that Winship Green's

misuse o

union's trademark in its campaign literature during the union ele

is not

43(a)

a commercial use

of the

Lanham

of the mark

Act, as

adumbrated by

amended,

15 U.S.C.

Sections 3

1114(1),

(1994).

I
I

The union alleges that Winship

during the election

Green's use of its trad

violated Sections 32 and 43(a) of the Lanham

A
A

Section

32

infringement" and

in

commerce

distribution,

of

the

Act

concerns

"trad

proscribes misuse of another's registered trad

"in

connection

or

advertising

connection with

Lanham

with

the

of any

which such use

cause mistake, or to deceive."12

sale,

goods

or

offering

for

services

on o

is likely to

cause confusion,

15 U.S.C.

1114(1)(a) (1994).

____________________

12

Section

32 of

the Lanham

Act,

as amended,

states in

pertinent part:

(1)

Any person

who shall, without the consent

of the

registrant --

(a) use in commerce any reproduction, counterfeit,

copy, or colorable imitation of a registered
in connection

with the

distribution,

or

services on

sale, offering

advertising

of

or in connection with

any

mark

for sale,
goods

or

which such use

is likely to cause confusion, or to cause mistake,

or to deceive ...
* * *

shall be liable in a civil action by the registrant for

the remedies hereinafter provided....

27

B
B

Section

43(a)

"unfair competition" by

provides

broader

protection,

use of any mark, registered or

Pesos, Inc. v. Taco Cabana, Inc., 505

_________________________________

prohib

not.

Se
__

U.S. 763, 768 (1992).

Se

43(a)

prohibits

origin,"

15

two

types

U.S.C.

descriptions," 15 U.S.C.

of activities:

"false

designation

43(a)(1)(A)

("Prong

(A)")

and

43(a)(1)(B)

("Prong (B)").13

"

See
___

Components, Inc. v. K-H Corp., 776 F. Supp. 405, 409 (N.D. Ill. 1
_____________________________

J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competit

__________________________________________

27.02[3] (3d ed.

1996) (discussing history of

the "two prongs"

____________________

15 U.S.C.

13

1114(1) (1994).

Section 43(a) of the

Lanham Act, as

amended, states in

pertinent part:

1125.

False designations of origin and false

___________________________________________

descriptions forbidden
______________________
(a)

Civil

connection

action.
with

(1)
any

Any

goods

person
and

who,

services,

on or

in

or

any

container for

goods, uses in commerce

any word, term,

name, symbol, or device, or any combination thereof, or

any false

designation of

description

of

fact,

origin, false or

misleading

or

misleading

false

or

representation of fact, which -(A) is

likely to cause mistake, or

to the affiliation,
such

person with

origin,
goods,

connection, or association of
another

sponsorship,
services,

to deceive as

or

person, or

as to

or approval

of his

commercial

activities

the

or her

by

another person, or
(B)

in

commercial

misrepresents

advertising

the

nature,

qualities, or geographic origin

person's

goods,

services,

or

promotion,

characteristics,

of his or another
or

commercial

activities.
shall be liable

in a

believes that he or she

civil action by

is or is likely to be

by such act.

15 U.S.C.

any person

1125(a) (1994) (emphasis in original).

28

who

damaged

43(a) --

43(a)(1)(A)

("trademark infringement") and

43(a)(

("false advertising").

Prong (A)14

sponsorship of goods or

prohibits false

services.

Typical claims under prong (A) would

designations of the

15 U.S.C.

1125(a)(1)(A) (1

involve a new trademark tha

confusingly similar to an already established one, or an

defendant

to "palm-off" its goods as those

the competitor's

mark.

See
___

attempt

of a competitor by u

Truck Components,
________________

McCarthy on Trademarks, supra, at

______________________ _____

orig

776 F. Supp.

at

27.02[4] (describing these c

as "trademark infringement").

In

different.

liability

contrast,

the

protection

Following

its

amendment

for

misrepresentations

promotion as to the

in

under

in

1988,

(B)

is

prong (B)

commercial

cr

advertisin

"nature, characteristics, qualities or geogr

origin" of another person's goods or services.

_______

(1994); see also

________

prong

15 U.S.C.

Trademark Law Revision Act, Pub. L.

1125(

100-662,

102 Stat. 3946 (1988); U.S. Healthcare, Inc. v. Blue Cross of Gr

__________________________________________

Philadelphia, 898 F.2d 914,

____________

1988 amendment

27.02[4].

The

921 (3d Cir. 1990) (discussing

to Lanham Act);

Senate Committee

effe

McCarthy on Trademarks, supra,

______________________ _____

Report accompanying

this amen

explained the need for this addition to the Act as follows:

In

one important

area, however,

the courts

have refused

to apply

the section.

Based

on a

1969 seventh

circuit

decision, the

courts

have

held

that

Section

misrepresentations

43(a)
about

applies

one's own

only

to

products and

____________________

14

In 1992 Congress redesignated paragraphs

section 43(a) as subparagraphs

Pub. L. 102-542,

(A) and (B).

3(c), 106 Stat. 3568.

29

See
___

(1) and (2) of

Oct. 27, 1992,

services; it does not extend to misrepresentations

about competitor's products

or services.

Food Indus. v. Dietene Co.,

____________________________

415 F.2d

Bernard
_______
1279, 163

USPQ 265

(7th Cir. 1969), cert. denied, 397 U.S.

_____________

912, 164

USPQ 481

that this
and

public

policy

(1970).

effect is
policy

committee agrees

illogical on both
levels

of deterring

The

acts

and

practical

that the

of unfair

public

competition

will be served if Section 43(a) is amended to make

clear

that

misrepresentations

products are as

actionable as

about

another's

misrepresentations

about one's own.

S. Rep. No. 515,

U.S.C.C.A.N.

100th Cong., 2d Sess. (1988), reprinted in 1988

____________

5577; see also

________

McCarthy on Trademarks, supra, at

______________________ _____

27.02[4] (stating that 1988 amendment codified "two

43(a): "part

tradename

and

relat[ing] to

one relat[ing]

trade dress

. . . false

to .

prongs" of

. unregistered

infringement

claims,

advertising (as well

trademark,

and part

two

as trade libel)

claims").

quality

Thus, prong (B) prohibits misrepresentations about the

of

defendant's

own

goods

--

even

where

the

misrepresentations do not tend to confuse its goods with those of

a competitor or otherwise misstate the origin

well

of the goods -- as

as affirmative misrepresentations about another's products.

Truck Components,
_________________

776 F.

Antitrust Litigation,
____________________

Supp. at

473 F. Supp.

409

(citing In re Uranium
______________

393, 408 (N.D.

see also McCarthy on Trademarks, supra,

________ _______________________ _____

at

27.04

Ill. 1979));

(describing

elements of prima facie case under prong (B)).

II
II

I am in agreement with the majority that the origin and

sponsorship of

the allegedly

infringing documents was

never in

doubt.

(A)

is

With

respect to section

inapplicable because

43(a) of the Lanham

there

is

no

evidence,

Act, prong

or

even

30

contention,

that the

company used the

union's mark

to deceive

bargaining unit members as to the affiliation of the company with

the union or as to the

sponsorship of its services by the union.

Quite the contrary.

However, there is evidence

that Winship Green used the

union's

of the

trademark to misrepresent the characteristics and nature

union's services (i.e., the

purportedly draconian

results of

implicating prong (B), governing

amount of union

failure to pay

them), thereby

false descriptions.

Four, Inc. v. Dornier Medical Systems, Inc., 765

_____________________________________________

730

(N.D.

Ga.

1991)

misrepresentation

under

cases);

174

27.04

(describing

Section

dues or the

cause

of

43(a)(1)(B)

and

Cf. Energy
___ ______

F. Supp. 724,

action

for

collecting

Brandt Consol., Inc. v. Agrimar Corp., 801 F. Supp. 164,

_____________________________________

(C.D. Ill. 1992) (same); McCarthy on Trademarks, supra, at

______________________ _____

(same).

misrepresented

Because

the union's

this

evidence

services may

that

the

company

be sufficient

for the

fact-finder to find confusion as to the "nature, characteristics,

[or]

qualities"

of the

union's

services,

I would

not

allow

summary judgment for the company under prong (B) on the ground of

a lack of confusion.

III
III

that

firm ground for summary judgment, it seems to me, is

the Lanham Act

creates no liability

because the deception

did not occur in connection with commercial sales or advertising,

as required under the Act, but rather in campaign hand-outs.

The Lanham Act protects only against certain commercial

__________

31

uses of trademarks.

Section 32 governs the

use of a registered

mark "in commerce . . . in connection with the sale, offering for

sale, distribution, or advertising of any goods or services."

U.S.C.

1114(1)(a) (1994).

Section 43(a) is likewise limited to

uses of marks "in commerce," 15 U.S.C.

the Act

defines as

advertising

using or

15

1125(a)(1) (1994), which

displaying a mark

of goods or services,15 see 15 U.S.C.

___

in the

sale or

1127 (1994).

And, section 43(a)(1)(B) limits misrepresentation claims to those

cases involving "commercial advertising or promotion."

1125(a)(1)(B) (1994).

15 U.S.C.

While

there is

no appellate

trial

courts have rejected efforts

cases

where

the

defendant

is

not

trademark in the sale, distribution

or services.

See
___

to extend the

using

or

companies could be

held liable

on point,

Lanham Act to

displaying

or advertising of its

Lucasfilm Ltd. v. High Frontier,

_______________________________

931, 934 n.2 (D.D.C. 1985) (rejecting

Wars"

case directly

the

goods

622 F. Supp.

the claim that advertising

for using the

trade name

"Star

in the political debate over a national policy because the

____________________

15 15 U.S.C.

1127 states in pertinent part:

The term "use in commerce" means the bona fide use of a

mark

in the

ordinary

merely to reserve
this chapter, a

course of

trade, and

a right in a mark.
mark shall be deemed

not made

For purposes of
to be in use

in

commerce -* * *
(2)

on services

when it is used or

displayed in

the

sale

or

advertising

of

services

and

the

services are rendered in commerce, or the services

are

rendered

in more

than one

State or

in the

United States and a foreign country and the person

rendering the

services is engaged

in commerce in

connection with the services.

32

trademark laws only reach activities in which a trademark is used

in connection with selling

or noncommercial

or advertising services of commercial

defendants); Stop the Olympic Prison v. United

__________________________________

States Olympic Comm., 489

_____________________

F. Supp.

(expressing serious doubts as to

1112, 1124 (S.D.N.Y.

whether the Lanham Act

1980)

applies

to the deceptive use of the Olympic trademark by a group opposing

the

conversion

of Olympic

facilities

into a

prison,

in part

because "there is no suggestion that the alleged deception was in

connection with

any goods

or services");

Inc. v. Environmental Action Found.,

______________________________________

(D.D.C. 1979)

(rejecting

claim that

Reddy Communications,
_____________________

477

an

F. Supp.

environmental

936,

946

group's

caricature of an energy industry service mark violated the Lanham

Act

where the

company failed

to prove

that

group used the service mark to "identify or

its

publications);

see generally
______________

the environmental

promote" the sale of

L.L. Bean, Inc. v. Drake

____________________________

Publishers, Inc.
________________

811 F.2d 26,

32 (1st Cir. 1987) (holding under

state anti-dilution state that

a parody was

not a commercial

use of plaintiff's mark because the publisher "did not use Bean's

mark to

identify or

market

goods or

services to

consumers"),

forms of union-related

activity may

cert. denied, 483 U.S. 1013 (1987).

____________

Nonetheless, some

constitute commercial sale or advertising that is protected under

the

Act.

See, e.g.,
_________

Brach Van Houten Holding, Inc. v. Save

_________________________________________

Brach's Coalition for Chicago, 856

______________________________

Ill. 1994) (finding Lanham

F. Supp. 472,

475-476 (N.D.

Act protection applicable where union

used company logo in connection with the sale and distribution of

33

its buttons and stickers and solicitation of donations to support

the coalition's opposition to

a plant closing and was

likely to

cause confusion as to the company's affiliation with, or approval

of,

defendant's proposals);

Trades Council, AFL-CIO,

_________________________

(rejecting

Relations

the

union's

Board had

Marriott Corp. v. Great Am. Serv.

___________________________________

552

F.2d 176,

contention

that

exclusive jurisdiction

179

the

(7th

Cir. 1977)

National

over an

Labor

action for

trademark

infringement arising

union allegedly

used the

under the

Lanham Act

company's trademark

where the

in advertisements

which suggested an affiliation between the company and the

in advertising its services

to prospective employees).

union

However,

such commercial activity is simply not present here.

Accordingly, the union's

the

limited property right

under

Lanham Act against commercial misuse of its trademark is not

implicated

in this case.

See generally Lucasfilm Ltd., 622 F.2d

_____________ ______________

at 933 ("It is well established that the property right conferred

by

a trademark is very

limited.").

complains about

the company's unfair

federal

for

National

remedy

deceptive

Labor Relations Act, 29

While

the union rightfully

tactics, it must

campaign

U.S.C.

literature

141

find its

under

the

et seq. (1994).
_______

See Linn v. United Plant Guard Workers of Am., Local 114, 383
___ ________________________________________________________

U.S. 53, 60 (1966)

defamatory

(permitting libel action under state

statements

published

during

union

law for

organization

campaign and discussing authority of the National Labor Relations

Board

to set

misrepresented

aside elections

in the

where "a

material fact

representation campaign;

34

has been

opportunity for

reply has

been lacking;

impact on the free

and

the misrepresentation

has had

choice of the employees participating

an

in the

election").

Because

the

Court

reaches

the

same conclusion

somewhat different reasons, I join in its judgment.

for

35