Parker v. Viacom

Parker v. Viacom Int’l, Inc. 2009 U.S. Dist. LEXIS 20643 (filed March 16, 2009)

Parker (individual in PA) brought action against Viacom (DE Corp. & principal in NY). Parker brought five different allegations, but the focus for this brief is the Lanham Act allegation. Viacom aired a reality television show which teaches socially awkward men how to meet women. Parker authored a book entitled “29 reasons not to be a nice guy”, and uses the term “pivot” to relate to seduction advice. Parker claims he has first use trademark rights to the term “pivot” and claims Viacom’s use of the word constitutes false designation of the origin of the term.

Procedural Posture:
Viacom made a motion to dismiss under FRCP 12(b)(6) (failure to state a claim for which relief can be granted).

To state a claim for false designation under the Lanham Act, the Plaintiff must show: (1) D uses a false designation of origin; (2) that the false use occurs in interstate commerce in connection with goods and services; (3) that such false designation is likely to cause confusion, mistake or deception as to origin or sponsorship; and (4) P has been damaged or is likely to be damaged.

(1) Part 1 is not satisfied because Viacom is the producer or “origin of” the show, which is the good in question. “Pivot” is a component part of the show, but not the origin of good or service itself. (2) P has undermined his own conclusion by stating that the term “pivot” has acquired a secondary meaning and failing to allege that the meaning identified himself as the source of the good or service. (3) P did not assert that the use of the term was likely to cause confusion as to the origin of the goods. This complaint was dismissed.

Important Dicta:
The court pointed to Parker v. Google Inc (24 Fed Appx 833), which used a similar theory via the internet. Google republished the term “Ray FAQ”, a website that defamed the plaintiff. The plaintiff did not want people to believe he created the site. Because the plaintiff failed to show likelihood of confusion the claim was dismissed.

Unanswered Questions:
There still seems to be confusion as to what a commercial good is under the trademark infringement analysis. Here the court defines the good as the television show itself, not the term “pivot”. If this were the internet, it seems as though the website would be the commercial good and not the photograph or other trademark within the website. Would this definition of commercial good change the outcome of some of our cases?

Critical Analysis:
If you want your claim heard under the Lanham Act, you MUST be able to show likelihood of confusion!

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