Hasbro, Inc. v. Clue Computing, Inc.

United States Court of Appeals
For the First Circuit

No. 00-1297

HASBRO, INC.,

Plaintiff, Appellant,

v.

CLUE COMPUTING, INC.,

Defendant, Appellee.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Douglas P. Woodlock, U.S. District Judge]

Before

Torruella, Chief Judge,

Coffin, Senior Circuit Judge,

and Boudin, Circuit Judge.

Kenneth B. Wilson with whom Michael B. Levin, Wilson,
Sonsini, Goodrich & Rosati, Richard J. McCarthy and Edwards &
Angell, LLP were on brief for appellant.
Thomas A. Mullen with whom Thomas A. Mullen, P.C. was on
brief for appellee.
 November 7, 2000

Per Curiam. This case involves a dispute over the

right to use the word "clue" in an Internet domain name.1 Since

1949, residents of the United States have enjoyed playing the

Clue® board game, a popular detective game in which players try

to deduce the details of a fictional murder. The name of this

game was registered with the United States Patent and Trademark

Office in 1950, and has been on the office's principal register

ever since. Hasbro, Inc., a toy and game manufacturer, owns the

rights to the Clue® trademark and has spent millions of dollars

in support of the Clue® brand name.

In June of 1994, decades after registration of the

Clue® trademark, Eric Robison and Dieter Muller formed in

Colorado a partnership called "Clue Computing," later

incorporated as "Clue Computing, Inc." Clue Computing engages

in computer consulting and Internet access services. Within two

weeks of Clue Computing's formation, the Internet Network

1For a brief description of the Internet and domain names,
see Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d
489, 492-93 (2d Cir.), cert. denied, 120 S. Ct. 2719 (2000), or
Hasbro, Inc. v. Clue Computing, Inc., 994 F. Supp. 34, 36-37 (D.
Mass. 1997).

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Information Center, the agency that manages the assignment of

Internet domain names, approved Clue Computing's registration of

the domain name "clue.com." Clue Computing now uses the domain

name as the Internet address for its business web site.

In 1996, Hasbro notified Network Solutions, Inc., which

administers the Internet Network Information Center, that Hasbro

owned a trademark on the word "clue." Network Solutions then

informed Clue Computing that its use of the "clue.com" domain

name would soon be terminated. Clue Computing responded by

suing Network Solutions in Colorado state court, and won a

preliminary injunction against the threatened termination.

Hasbro then sued Clue Computing in federal district court in

Massachusetts, charging Clue Computing with infringement and

dilution of the Clue® trademark, under the applicable provisions

of the federal Lanham Act, 15 U.S.C. § 1125 (1994 & Supp. I

1995), and the Massachusetts anti-dilution act, Mass. Gen. Laws

ch. 110B, § 12 (1998).

In an initial decision, the district court found that

it had personal jurisdiction over Clue Computing. Hasbro, Inc.

v. Clue Computing, Inc., 994 F. Supp. 34, 44-46 (D. Mass. 1997).

After the parties agreed to allow the district court to act as

the finder of fact with respect to the trademark dilution

claims, the district court granted summary judgment in favor of

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Clue Computing on Hasbro's trademark infringement claim, and

decided the merits in favor of Clue Computing on Hasbro's

federal and state dilution claims. Hasbro, Inc. v. Clue

Computing, Inc., 66 F. Supp. 2d 117, 119 (D. Mass. 1999).

In a nutshell, the district court granted summary

judgment in favor of Clue Computing on Hasbro's trademark

infringement claim on the ground that there was no significant

evidence to establish the likelihood of confusion necessary for

conventional trademark infringement, see International Ass'n of

Machinists & Aerospace Workers, AFL-CIO v. Winship Green Nursing

Ctr., 103 F.3d 196, 200-01 (1st Cir. 1996); Astra Pharm. Prods.,

Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1207-08 (1st

Cir. 1983). The court saw very little similarity between

Hasbro's products and services and those of Clue Computing. It

said that about all that Hasbro showed was that over a period of

years a couple of Internet surfers looking for Hasbro's Clue®

site had stumbled upon the Clue Computing site, whose content

strongly indicated that the site had little to do with Hasbro's

business. Certainly in a case involving such disparate products

and services as this, the court's refusal to enter the "initial

interest confusion" thicket is well taken given the unlikelihood

of "legally significant" confusion.

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 As for Hasbro's claim under the Federal Trademark

Dilution Act, 15 U.S.C. § 1125(c), the court rejected Clue

Computing's claim that granting an injunction under the statute

would be "impermissibly retroactive" (Clue Computing having

begun using the domain name before the new dilution statute took

effect); but the court found on the merits that the Clue® mark

was not famous, that Clue Computing's use of the domain name did

not blur or tarnish Hasbro's mark, and that in any event the

equities would not justify an injunction. See generally I.P.

Lund Trading ApS v. Kohler Co., 163 F.3d 27 (1st Cir. 1998).

The dilution claim under state law was rejected for lack of

proof of any likelihood of confusion, tarnishing, or blurring.

On this appeal, Hasbro attacks the district court's

reasoning and findings both as to the infringement claim and as

to the dilution claim under both the federal and state statutes.

We think that the district court's thorough and careful analysis

justified denial of relief. Although Hasbro has written an able

brief, nothing in the discussion persuades us that the district

court used incorrect legal standards, erred in determining that

there were no material issues requiring trial on the

infringement claim, or made clearly erroneous findings of fact

on the dilution claim. Accordingly, we generally adopt the

district court's analysis without needlessly repeating it.

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 There are two qualifications to this general

endorsement. The retroactivity issue that was treated at some

length by the district court is a question on which there is

disagreement among various courts, and, as it does not affect

the outcome, we prefer to take no position on the matter. Also,

as it does not affect the result, it is unnecessary to decide

here whether lack of equity would be an independent ground for

denial of an injunction if Hasbro showed that its mark was

famous and had been tarnished or blurred by Clue Computing.

Affirmed.

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