Guthrie Healthcare System v. Contextmedia, Inc.

826 F.3d 27 (2nd Cir. 2016)

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Nature of the Case

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Facts

P operates in the Twin Tiers region of New York and Pennsylvania. P has 32 medical facilities, including three hospitals and 29 clinics, as well as a number of specialized healthcare facilities such as a cardiology center and a cancer center. P operates home healthcare services, hospice services, and a durable medical equipment company. Its medical group practice includes more than 280 physicians and 130 mid-level providers (physician assistants and nurse practitioners) who practice in New York and Pennsylvania. It also operates a pharmacy, and several medical supply stores, which sell directly to the public. P recruits nationwide. It also provides educational programs for its physicians, nurses, and medical technicians. It operates the Guthrie School of Nursing, which recruits students nationwide. The Guthrie Foundation conducts medical research and fundraising beyond the Guthrie Service Area and disseminates medical information over the Internet, as well as in symposia and seminars. Around 20% of the approximately $300 million annually paid to P for specialized medical care comes from referrals by other doctors and medical professionals who are not affiliated with P. D has offices in Chicago and New York City and employs 42 people. D serves approximately 2,600 physician practices and operates in all 50 states. D delivers health-related content to physician practices. Defendant installs digital screens in waiting areas, examination rooms, and infusion rooms in physician practices which play short videos and clips about health and wellness to patients at those facilities. D's revenue comes from advertising displayed with its content. D has two websites. A sidebar on the left side of the installed screen displays D's marks. P used the Guthrie Trademark in September 2001. The mark became a Registered Trademark on January 22, 2008. Both marks are very similar. The PTO originally refused to register three of D's marks because of likelihood of confusion with P's mark. The PTO ultimately approved the marks for registration and registered D's first seven marks between 2009 and 2013. P never heard of D prior to December 2011, when P received a holiday card from Defendant which displayed its Mark 1. P filed this action for trademark infringement. D moved for summary judgment on all counts, and the district court granted it in part. The court found that there was no triable issue of material fact as to actual consumer confusion, bad faith, or willful deception for Marks 1-7; as a result, monetary relief was not available under the Lanham Act. The court found that there was a 'likelihood of confusion' between P's and D's trademarks in the Guthrie Service Area. It ruled that there was no such likelihood of confusion outside of the Guthrie Service Area. The court enjoined D from using its marks within the Guthrie Service Area, but allowed D to 'continue to use its marks on its websites, in social media, and in other online content that is made available to the public at large through the Internet.' Both parties appealed.