American Express Co. v. Goetz

06-2184-cv
American Express Co. v. Goetz

1 UNITED STATES COURT OF APPEALS
2 FOR THE SECOND CIRCUIT
3
4 _______________
5
6 August Term, 2006
7
8 (Argued March 2, 2007 Decided February 4, 2008)
9
10 Docket No. 06-2184-cv
11
12 _______________
13
14 American Express Co.,
15
16 Plaintiff-Counter-Defendant-Appellee,
17
18 v.
19
20 Stephen G. Goetz and Gardner Design Group, LLC,
21
22 Defendants-Counter-Plaintiffs-Appellants.
23
24 _______________
25
26 Before:
27 JACOBS, Chief Judge,
28 CARDAMONE, and POOLER, Circuit Judges.
29
30 _______________
31
32 Defendants Stephen Goetz and Gardner Design Group, LLC
33 appeal from a judgment entered February 24, 2006 in the United
34 States District Court for the Southern District of New York
35 (Kaplan, J.) granting plaintiff American Express's motion for
36 summary judgment and dismissing Goetz's counterclaims. Goetz had
37 alleged that American Express infringed upon his trademark by
38 using the slogan MY LIFE. MY CARD.
39
40 Affirmed.
41
42 _______________
 1 _______________
2
3 KEITH A. VOGT, Chicago, Illinois (Rolf O. Stadheim, Joseph A.
4 Grear, George C. Summerfield, Stadheim & Grear, Ltd.,
5 Chicago, Illinois; Micah R. Jacobs, Jacobs & Ferraro, LLP,
6 San Francisco, California, of counsel), for Defendants-
7 Appellants.
8
9 MARC J. RACHMAN, New York, New York (Howard J. Rubin, Shirin
10 Keen, Davis & Gilbert, LLP, New York, New York, of counsel),
11 for Plaintiff-Appellee.
12
13 _______________
1 PER CURIAM:

2 Many might associate the phrase MY LIFE. MY CARD. with

3 advertisements for the American Express credit card featuring

4 celebrity cardholders like Robert De Niro and Tiger Woods. But

5 before American Express Co. (American Express) made the phrase

6 famous, Stephen Goetz, the president of Gardner Design Group, LLC

7 (Goetz), used a virtually identical slogan in a sales pitch to

8 credit card companies. Goetz's idea was to personalize credit
9 cards by reproducing photographs selected by cardholders on the

10 face of their cards. In search of clients, Goetz sent proposals

11 to various credit card companies, including American Express,

12 containing a description of his concept and the catchphrase My

13 Life, My Card.

14 In response to American Express's MY LIFE. MY CARD.

15 campaign, Goetz demanded the company cease and desist using the

16 slogan. American Express responded by commencing the instant

17 declaratory judgment action in the United States District Court
18 for the Southern District of New York before Judge Lewis A.

19 Kaplan seeking a declaration that it had not misappropriated the

20 slogan and that Goetz lacked a viable claim for infringement. In

21 a judgment entered on February 24, 2006 the district judge

22 granted summary judgment to American Express and dismissed

23 Goetz's counterclaims for misappropriation and trademark

24 infringement.

2
1 Goetz's principal challenge on appeal is to the district

2 court's ruling that he had not used the slogan as a trademark.

3 We affirm.

4 BACKGROUND

5 In the summer of 2004 Goetz, who was then working as a

6 corporate consultant for a company called Mez Design, formulated

7 an idea to enable credit card customers to personalize a card by

8 choosing a photograph to be printed on the card's face. Goetz
9 developed proprietary software with this capability and

10 endeavored to license or sell the software to credit card

11 companies. In proposing his idea to potential clients, Goetz

12 prominently displayed the slogan he created -- "My Life, My Card"

13 -- believing that the phrase "would perfectly embody what card

14 consumers sought."

15 On July 30, 2004 Goetz mailed a proposal to American Express

16 with a line reading: "'My Life, My Card' American Express

17 delivers personalized cards to its cardholders!" Goetz sent
18 similar proposals to Mastercard, Citigroup, Kessler Financial

19 Services, and Metavante, in each case tailoring the catchphrase

20 to the prospective client. With the help of Hans Krebs, an

21 expert in web design, Goetz also created an Internet-based

22 demonstration of his card personalization concept, which

23 prominently displayed the slogan My Life, My Card on Krebs'

24 server at http://mylifemycard.hanskrebs.com. On September 7,

25 2004 Goetz registered the domain name www.mylife-mycard.com and

26 the following day he filed an application with the United States

3
1 Patent and Trademark Office for registration of the My Life, My

2 Card mark.

3 American Express never replied to Goetz's proposal, but

4 MasterCard expressed interest. In December 2004 and February

5 2005 Goetz met with MasterCard to discuss his personalized credit

6 card services and, in his correspondence with Mastercard

7 representatives, Goetz suggested they view his demonstration on

8 the Internet.
9 Also in the summer of 2004 American Express hired the Ogilvy

10 Group advertising agency (Ogilvy) to assist in the development of

11 a new global campaign for American Express products. On July 22,

12 2004 Ogilvy proposed the MY LIFE. MY CARD. idea as the lynchpin

13 of American Express's new campaign. American Express responded

14 favorably and, between July 26 and July 28, Ogilvy developed

15 several advertisements centering on the slogan. On July 29

16 Ogilvy's outside counsel conducted a preliminary trademark search

17 to determine the availability of the slogan as a service mark in
18 the United States. Ogilvy next asked its counsel to follow-up

19 with a full trademark search on July 31, which was two days prior

20 to the scheduled delivery date of Goetz's proposal to American

21 Express. Neither trademark search produced any references to

22 Goetz.

23 After deciding in August 2004 to proceed with the slogan and

24 the campaign, American Express registered the domain name

25 www.mylifemycard.com on September 1, 2004 and filed an Intent to

26 Use application for MY LIFE. MY CARD. with the United States

4
1 Patent and Trademark Office on September 15, 2004. Ultimately,

2 in early November 2004 American Express launched the global

3 campaign by means of television, print, outdoor, and Internet

4 advertising. The present litigation followed.

5 During discovery, Goetz sought to examine in their entirety

6 numerous computer hard drives belonging to Ogilvy and American

7 Express employees. When American Express refused this request,

8 Goetz moved to compel production. On October 27, 2005 Judge
9 Kaplan granted Goetz's motion only to the extent it involved

10 electronic records pertinent to the disputed dates of creation of

11 two documents. The district court also granted American

12 Express's motion to stay further discovery pending the court's

13 disposition of its summary judgment motion.

14 In a judgment entered on February 24, 2006 the court granted

15 summary judgment to American Express and dismissed Goetz's

16 counterclaims. The court held that Goetz had "no valid

17 protectable trademark rights in My Life, My Card or any other
18 purported mark using those words that are senior to [American

19 Express's] rights in MY LIFE. MY CARD." The district court also

20 observed that Goetz did not contest that American Express

21 independently conceived of the slogan. Following entry of

22 judgment, Goetz filed a timely appeal of the trademark ruling as

23 well as its October 27, 2005 order denying his more far-reaching

24 discovery motion.

5
1 DISCUSSION

2 I Standard of Review

3 We review the district court's grant of summary judgment de

4 novo, construing the facts in the light most favorable to Goetz.

5 See Tocker v. Philip Morris Cos., 470 F.3d 481, 486 (2d Cir.

6 2006). Discovery rulings are reviewed under an abuse of

7 discretion standard. Gualandi v. Adams, 385 F.3d 236, 244-45 (2d

8 Cir. 2004).
9 II Goetz Did Not Use the Slogan As a Trademark

10 Under the Lanham Act, 15 U.S.C. §§ 1051 et seq., a trademark

11 or service mark is any combination of words, names, symbols or

12 devices that are used to identify and distinguish goods or

13 services and to indicate their source. See 15 U.S.C. § 1127.

14 While copyright law protects the content of a creative work

15 itself, see EMI Catalogue P'ship v. Hill, Holliday, Connors,

16 Cosmopulos Inc., 228 F.3d 56, 63 (2d Cir. 2000), it is trademark

17 law that protects those symbols, elements or devices which
18 identify the work in the marketplace and prevent confusion as to

19 its source. See id. at 62-63; see also 1 J. Thomas McCarthy,

20 McCarthy on Trademarks and Unfair Competition § 6:17.50, at 6-38

21 (4th ed. 2000) (noting that trademark law does not serve as a

22 substitute for copyright). For example, the title of a song

23 might identify that song in the marketplace, but the musical

24 composition itself would not perform that function; thus, while

25 the title may be protectable by trademark, the composition would

26 not be. EMI Catalogue P'ship, 228 F.3d at 63. Further, a mark

6
1 that does not perform the role of identifying a source is not a

2 trademark. See id. at 64.

3 Notably, the same mark that performs this source-identifying

4 role in one set of hands may constitute the creative work itself

5 in another. Such distinction often is appropriate when an

6 advertising agency licenses a slogan to a client for the client's

7 use in marketing a product. In this scenario, the slogan is part

8 of the advertising agency's creative work, but it may become a
9 source identifier when used by the client. See 2 McCarthy,

10 supra, § 16.39, at 16-64.2 ("In many situations . . . the mere

11 conception of a mark by an advertising agency for possible use by

12 the client does not create any trademark rights in the agency.").

13 The Patent and Trademark Office's Trademark Trial and Appeal

14 Board has long recognized, in such situations, that the slogans

15 cannot be registered as marks by the advertising agency, even if

16 they would be subject to registration by the end users of the

17 marks. See In re Admark, Inc., 214 U.S.P.Q. 302, 303 (T.T.A.B.
18 1982). The reason is plain: the slogan does not identify and

19 distinguish the services of the advertising agency, but rather is

20 the creative work itself. Id.; see also In re Adver. & Mktg.

21 Dev., Inc., 821 F.2d 614, 620 (Fed. Cir. 1987) (explaining that

22 an advertising agency cannot register a mark it uses to identify

23 the subject of the advertising as opposed to the agency's

24 services); In re Local Trademarks, Inc., 220 U.S.P.Q. 728, 730

25 (T.T.A.B. 1983) ("We believe that applicant's insurance agency

26 clients would view the slogan 'WHEN IT'S TIME TO ACT[]' . . . as

7
1 a feature of applicant's product and not as a mark identifying

2 and distinguishing the service being rendered by applicant.").

3 In the present case, construing all the facts in Goetz's

4 favor, the only reasonable conclusion that can be drawn is that

5 My Life, My Card was a component of Goetz's business proposal to

6 the credit card companies rather than a mark designating the

7 origin of any goods or services he offered to them.

8 According to Goetz, he believed that the phrase My Life, My
9 Card would "perfectly embody what card consumers sought." Yet,

10 for the obvious reason that Goetz did not sell credit cards, he

11 never displayed the slogan to card consumers. Instead, he

12 offered the slogan as a complement to the card personalization

13 concept and software he proposed to sell and, in this respect,

14 his claim is no better than that of an advertising agency that

15 offers its clients a marketing concept to enhance their sales.

16 Our review of Goetz's letters and proposals to card

17 companies reinforces that conclusion. Every use of the tagline
18 My Life, My Card is immediately followed by the name of a credit

19 card company which might choose to deliver personalized cards

20 with such a slogan. My Life, My Card never appears as a stand-

21 alone logo and the phrase is never followed by a reference to

22 Goetz himself or his company. It is thus clear that Goetz did

23 not intend the phrase My Life, My Card to ensure MasterCard,

24 American Express or Citigroup would associate the card

25 personalization concept with him, but instead to interest these

26 companies in a slogan that would identify personalized cards with

8
1 whichever company elected to make this product available to its

2 customers.

3 A comparison of Goetz's use of the Mez Design logo with his

4 use of the My Life, My Card slogan in his correspondence with

5 prospective clients further illustrates our point. The Mez

6 Design logo appeared in the upper left hand corner of both the

7 proposal itself and Goetz's cover letters to the companies. Such

8 placement indicated to readers that Mez Design was the source of
9 Goetz's proposal. Similarly, in his letters Goetz emphasized

10 that "[w]ith over 10 years of marketing and design expertise, Mez

11 Design is in a unique position to deliver competitive solutions,"

12 "Mez Design has helped its partners increase brand awareness and

13 gain market share," and "Mez Design has done the research, and

14 will invest the capital to deliver your product." We recognize

15 that a company's marks need not be derived from its trade name,

16 and many companies use multiple marks, but Goetz's references to

17 Mez Design furnish a solid example of typical trademark usage:
18 Goetz plainly desired readers to associate his goods or services

19 with the Mez Design mark. My Life, My Card, by contrast,

20 appeared in the section of Goetz's correspondence in which he

21 described the content of his proposal.

22 In sum, Goetz employed the slogan My Life, My Card to

23 generate interest among potential licensee credit card companies

24 and not to differentiate or identify the origin of his goods or

25 services. In such circumstances, the slogan served as "a mere

26 advertisement for itself as a hypothetical commodity."

9
1 Silberstein v. Fox Entm't Group, Inc., 424 F. Supp. 2d 616, 633

2 (S.D.N.Y. 2004). Consequently, Goetz's trademark claim was

3 properly dismissed.

4 III Analogous Use

5 It is firmly established that "the right to exclusive use of

6 a trademark derives from its appropriation and subsequent use in

7 the marketplace." La Societe Anonyme des Parfums le Galion v.

8 Jean Patou, Inc., 495 F.2d 1265, 1271 (2d Cir. 1974) (Friendly,
9 J.). Thus, there can be no trademark absent goods sold and no

10 service mark without services rendered. See, e.g., Chance v.

11 Pac-Tel Teletrac Inc., 242 F.3d 1151, 1156 (9th Cir. 2001)

12 ("[L]ike with trademarks, common law rights are acquired in a

13 service mark by adopting and using the mark in connection with

14 services rendered." (emphasis added)). Unlike trademarks,

15 service marks usually cannot be "affixed" or displayed in close

16 connection with the services, so advertisements and solicitations

17 are often used as evidence of use. See generally 4A Rudolf
18 Callmann, The Law of Unfair Competition, Trademarks and

19 Monopolies § 26:27, at 26-225 to 26-228 (Louis Altman 4th ed.

20 1998). However, it cannot be said that a service mark is

21 actually used if it is displayed in an advertisement for services

22 that are non-existent or will only hypothetically be available at

23 some point in the future. See, e.g., Greyhound Corp. v. Armour

24 Life Ins. Co., 214 U.S.P.Q. 473, 474-75 (T.T.A.B. 1982). Goetz

25 made no actual use of My Life, My Card since Goetz's services

10
1 were wholly hypothetical when he sent his promotional materials

2 to the credit card companies.

3 Goetz counters that even if he did not actually use My Life,

4 My Card as a trademark, his activities were analogous to

5 trademark use. Goetz cites Diarama Trading Co. v. J. Walter

6 Thompson U.S.A., Inc., No. 01 Civ. 2950, 2005 WL 2148925

7 (S.D.N.Y. Sept. 6, 2005) and Housing & Services, Inc. v. Minton,

8 No. 97 Civ. 2725, 1997 WL 349949 (S.D.N.Y. June 24, 1997), in
9 support of the assertion that analogous use is sufficient to

10 establish trademark rights in the absence of actual use. These

11 cases suggest that the analogous use doctrine, where it applies,

12 eases the technical requirements for trademarks and services

13 marks in favor of a competing claimant who asserts priority on

14 the basis of earlier analogous use of the mark. Diarama, 2005 WL

15 2148925, at *7 ("[P]rior 'use of a designation . . . in a manner

16 analogous to trademark and service mark use' can defeat a

17 trademark registered by a subsequent user."); Minton, 1997 WL
18 349949, at *3 (noting that evidence of an actual sale may not be

19 required to establish prior use).

20 Goetz's use of the My Life, My Card logo does not qualify as

21 analogous use. At the very least analogous use must be use that

22 is "open and notorious." See Minton, 1997 WL 349949, at *4. In

23 other words, analogous use must be "of such a nature and extent"

24 that the mark has become "popularized in the public mind" so that

25 the relevant segment of the public identifies the marked goods

26 with the mark's adopter. Id.; see Diarama, 2005 WL 2148925, at

11
1 *7. Here, Goetz used his slogan only in communications with a

2 few commercial actors within the credit card industry. There was

3 no public exposure of the My Life, My Card slogan. In fact,

4 Goetz himself, in a series of emails to Hans Krebs between August

5 and October 2004, indicated that he wanted to keep a low profile

6 for the project and for the website. Such use was neither open

7 nor notorious and My Life, My Card never came to be associated

8 with Goetz in the public mind.
9 Moreover, as Goetz never made actual use of the slogan, he

10 would have us rely on his purported analogous use as the sole

11 source of his trademark rights. The doctrine, however, has not

12 been stretched so far as to obviate the requirement that Goetz

13 show eventual actual use. See De Beers LV Trademark Ltd. v.

14 DeBeers Diamond Syndicate Inc., 440 F. Supp. 2d 249, 265 n.14

15 (S.D.N.Y. 2006) ("[I]nsofar as plaintiffs contend that they can

16 obtain protectable rights in a mark solely through [analogous

17 use], this view of Section 43(a)'s scope has never been adopted
18 by this circuit." (emphasis in original)); WarnerVision Entm't

19 Inc. v. Empire of Carolina Inc., 915 F. Supp. 639, 646 (S.D.N.Y.

20 1996), vacated on other grounds 101 F.3d 259 (2d Cir. 1996) (any

21 promotional activities "must be within a commercially reasonable

22 time prior to actual use" for them to be considered analogous

23 uses).

24 IV Discovery Ruling

25 Goetz unpersuasively claims that the district court abused

26 its discretion by limiting discovery to ascertain whether

12
1 American Express independently conceived of MY LIFE. MY CARD.

2 Specifically, Goetz appealed the district court's October 27,

3 2005 order denying him full access to computer hard drives of

4 employees of American Express and Ogilvy who worked American

5 Express's campaign.

6 The district court granted Goetz's motion to compel

7 production in part and afforded him access to electronic records

8 pertaining to documents the dates of creation of which were in
9 question. Although Goetz's motion called for broader discovery

10 than was granted him, Goetz has not identified any error in the

11 district court's determination that "such wholesale rummaging"

12 through American Express's electronic records was not appropriate

13 here.

14 CONCLUSION

15 For these reasons, the judgment of the district court

16 granting American Express's motion for summary judgment and

17 dismissing Goetz's counterclaims is affirmed.

13