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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