“I’M” not like “i’m” in the trademark sense

Finding Internet video player and instant messaging software “extraordinarily different,” court denies preliminary injunction in trademark case.

Instant Media, Inc. v. Microsoft Corp., No. 07-2639, 2007 WL 2318948 (N.D.Cal. August 13, 2007)

Plaintiff Instant Media sued Microsoft for trademark infringement, and later moved for a preliminary injunction. Instant Media had a registration for the word mark I’M for use in connection with its downloadable media player called I’M. Microsoft used the mark “i’m” in connection with philanthropic services closely tied to its Windows Live Messenger service.

The court denied the motion for preliminary injunction, finding that Instant Media would not likely succeed on its infringement claim. It applied a subset of the Ninth Circuit’s Sleekcraft factors known as the “Internet trinity,” comparing (1) the similarity of the marks, (2) the relatedness of the products, and (3) the parties’ simultaneous use of the Internet as a marketing channel.

Similarity of the Marks

As for the first factor of the Internet trinity, the court considered the sight, sound and meaning of the two marks. It held that in terms of sight, Microsoft’s mark, consisting of lowercase letters “i’m” appearing in a stylized format with a speech balloon and rendered in pale green and blue, was sufficiently different from Instant Media’s registered “I’M” word mark. The court determined that the sound of the two marks was ambiguous, so Instant Media had not established that the marks sound the same. The court also sided with Microsoft on the third subpart of this analysis — meaning — holding that, given “I’M” could mean Instant Media, instant messenger or the contraction “I am,” Instant Media had not demonstrated that the two marks shared the same meaning.

Relatedness of the Products

The court then turned to the second factor of the Internet trinity, the relatedness of the services. Citing to Jupiter Hosting Inc. v. Jupitermedia Corp., 76 U.S.P.Q.2d 1042 (N.D. Cal. 2004), Instant Media had essentially argued that the two products were necessarily related under this factor, because they were both “free downloadable Internet applications intended for computer users at large.”

The Jupiter Hosting case had relied on GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) in which the Ninth Circuit observed that in the Internet context, “even services that are not identical are capable of confusing the public.” The GoTo.com case recognized, however, that “[o]ur ever-growing dependence on the Web may force us eventually to evolve into increasingly sophisticated users of the medium.”

The court declared that such an age of increasing sophistication had arrived:

GoTo.com was decided seven years ago-aeons in Internet terms-and the moment of our evolution into “increasingly sophisticated users of the medium” is upon us. While it may have been plausible in 2000 to suggest that consumers could not easily discriminate between content-delivery programs such as the I’M player or iTunes on the one hand and instant messaging programs such as WLM or AIM on the other, in 2007, where iPods and instant messaging are household concepts, this Court cannot say that, as a matter of law, “it is irrelevant whether the parties’ Internet related services are different.”

Applying this standard, the court held that Microsoft’s instant messaging software and Insight Media’s video player were “extraordinarily different within the context of the Internet.”

Simultaneous Use of the Internet as Marketing Channel

This third factor of the “Internet trinity” was the only one that weighed in Instant Media’s favor. Although Microsoft argued that the marketing channels were different, in that it did not advertise on television (and Instant Media did), the court held there was no real dispute that both parties used the Internet to market their products.