Federal court ruling: FireTV vs. FyreTV and a FL porn streaming company’s infringement claim

Three-judge panel consisted of Barbara Lagoa and Charles Wilson, both of Florida, and Andrew Brasher of Alabama

By: - June 28, 2022 3:54 pm

Elbert P. Tuttle Courthouse in downtown Atlanta. Credit: John McCosh

A Miami-based pornography streaming service called FyreTV can pursue its trademark-infringement case against Amazon.com, Inc. over the internet giant’s FireTV brand, a federal appeals court ruled on Tuesday.

The U.S. Court of Appeals for the Eleventh Circuit cited the likelihood that the Amazon trademark, launched in 2012, well after Wreal LLC launched its FyreTV brand in 2008, could confuse consumers.

“Here, the record evidence establishes that Amazon acquired actual knowledge of Wreal’s registered trademark and still launched a product line with a phonetically similar name,” a three-judge panel said in an unsigned opinion.

Among other evidence bolstering an infringement claim, “the two marks at issue are nearly identical,” the court said. Amazon’s FireTV (sometimes spelled “fireTV”) doesn’t broadcast porn, the panel added, but does provide access to HBO and Showtime, which sometimes broadcast what the jurists characterized as “softcore pornography.”

The panel cited Amazon’s massive advertising push to establish its trademark for streaming services and smart TVs and other devices “on television, in print media, and on in-store displays,” and that Wreal had identified consumers who were confused by the similarity.

The court ordered a federal trial judge, who’d kicked the case out of court, to submit it to a jury.

Sitting on the panel were Barbara Lagoa and Charles Wilson, both of Florida, and Andrew Brasher of Alabama.

‘Reverse confusion’

The dispute involved what’s known in intellectual property law as “reverse confusion” between trademarks. Unlike a “forward confusion” case, in which an established brand accuses a newcomer of trying to exploit its good name, in these cases a smaller established brand accuses a market-dominating competitor of overwhelming its trademark in the marketplace.

“The paradigm case of reverse confusion is that of a knowing junior [or later] user with much greater economic power who saturates the market with advertising of a confusingly similar mark, overwhelming the marketplace power and value of the senior user’s mark,” the court said.

“The harms that can occur are varied. For example, consumers may come to believe the smaller, senior user of the mark is itself a trademark infringer or that the defendant’s use of the mark diminishes the value of the plaintiff’s mark as a source indicator.”

Amazon’s insertion of the trademark “amazon” [sic] in its FireTV ads served not to differentiate the trademarks, the court said. “Because the harm is false association of the plaintiff’s mark with the defendant’s corporate identity, the defendant’s use of a housemark alongside the mark is more likely to cause confusion.”

“When the focus is on the similarity of the marks themselves, the result is clear — FyreTV and FireTV are nearly identical. ‘Fire’ ‘is the first and only dominant word in both marks, and it is presented in a phonetically and connotatively identical fashion. It is also an abstract term, and thus the only term in either mark that gives the mark meaning,” the court said.

The court described Amazon as the “largest online purveyor of goods and services in the United States.”

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Michael Moline
Michael Moline

Michael Moline has covered politics and the legal system for more than 30 years. He is a former managing editor of the San Francisco Daily Journal and former assistant managing editor of The National Law Journal. He began his career covering the Florida Capitol for United Press International. More recently, he wrote for Florida Politics.

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