Visa International Service Ass'n v. JSL Corp.

                  FOR PUBLICATION
  UNITED STATES COURT OF APPEALS
       FOR THE NINTH CIRCUIT

VISA INTERNATIONAL SERVICE                No. 08-15206
ASSOCIATION,
                 Plaintiff-Appellee,         D.C. No.
                v.                        CV-01-00294-
                                            LRH/LRL
JSL CORPORATION,
                                            OPINION
             Defendant-Appellant.
                                       
        Appeal from the United States District Court
                 for the District of Nevada
         Larry R. Hicks, District Judge, Presiding

                   Argued and Submitted
        January 14, 2010—San Francisco, California

                    Filed June 28, 2010

Before: Alex Kozinski, Chief Judge, J. Clifford Wallace and
            Richard R. Clifton, Circuit Judges.

             Opinion by Chief Judge Kozinski




                            9347
9350           VISA INTERNATIONAL v. JSL CORP.




                         COUNSEL

Bradley L. Booke, Moriarity, Badaruddin & Booke, Las
Vegas, Nevada, for the defendant-appellant.

Michael J. McCue, Lewis and Roca LLP, Las Vegas, Nevada,
for the plaintiff-appellee.


                          OPINION

KOZINSKI, Chief Judge:

  She sells sea shells by the sea shore. That’s swell, but how
about Shell espresso, Tide motor oil, Apple bicycles and Play-
boy computers? We consider the application of anti-dilution
law to trademarks that are also common English words.

                             Facts

   Joseph Orr runs eVisa, a “multilingual education and infor-
mation business that exists and operates exclusively on the
Internet,” at www.evisa.com. At least he did, until the district
court enjoined him. Orr traces the name eVisa back to an
English language tutoring service called “Eikaiwa Visa” that
he ran while living in Japan. “Eikaiwa” is Japanese for
English conversation, and the “e” in eVisa is short for
                VISA INTERNATIONAL v. JSL CORP.             9351
Eikaiwa. The use of the word “visa” in both eVisa and
Eikaiwa Visa is meant to suggest “the ability to travel, both
linguistically and physically, through the English-speaking
world.” Orr founded eVisa shortly before his return to Amer-
ica, where he started running it out of his apartment in Brook-
lyn, New York.

   Visa International Service Association sued JSL Corpora-
tion, through which Orr operates eVisa, claiming that eVisa
is likely to dilute the Visa trademark. The district court
granted summary judgment for Visa, and JSL appeals.

                           Analysis

   [1] A plaintiff seeking relief under federal anti-dilution law
must show that its mark is famous and distinctive, that defen-
dant began using its mark in commerce after plaintiff’s mark
became famous and distinctive, and that defendant’s mark is
likely to dilute plaintiff’s mark. See Jada Toys, Inc. v. Mattel,
Inc., 518 F.3d 628, 634 (9th Cir. 2008). JSL does not dispute
that the Visa mark is famous and distinctive or that JSL began
using the eVisa mark in commerce after Visa achieved its
renown. JSL claims only that the district court erred when it
found as a matter of law that eVisa was likely to dilute the
Visa trademark.

   [2] There are two types of dilution, but here we are con-
cerned only with dilution by blurring, which occurs when a
mark previously associated with one product also becomes
associated with a second. See 15 U.S.C. § 1125(c)(2)(B);
Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 903-04 (9th
Cir. 2002). This weakens the mark’s ability to evoke the first
product in the minds of consumers. “For example, Tylenol
snowboards, Netscape sex shops and Harry Potter dry clean-
ers would all weaken the ‘commercial magnetism’ of these
marks and diminish their ability to evoke their original associ-
ations.” Mattel, 296 F.3d at 903. Dilution isn’t confusion;
quite the contrary. Dilution occurs when consumers form new
9352            VISA INTERNATIONAL v. JSL CORP.
and different associations with the plaintiff’s mark. “Even if
no one suspects that the maker of analgesics has entered into
the snowboard business, the Tylenol mark will now bring to
mind two products, not one.” Id.

   Whether a defendant’s mark creates a likelihood of dilution
is a factual question generally not appropriate for decision on
summary judgment. See Jada Toys, Inc., 518 F.3d at 632.
Nevertheless, summary judgment may be granted in a dilution
case, as in any other, if no reasonable fact-finder could fail to
find a likelihood of dilution. Congress has enumerated factors
courts may use to analyze the likelihood of dilution, including
the similarity between the two marks and the distinctiveness
and recognition of the plaintiff’s mark. 15 U.S.C.
§ 1125(c)(2)(B)(i), (ii), (iv); see also PerfumeBay.com, Inc. v.
eBay, Inc., 506 F.3d 1165, 1181 n.9 (9th Cir. 2007). And, in
an appropriate case, the district court may conclusively deter-
mine one or more of these factors before trial.

   [3] The marks here are effectively identical; the only dif-
ference is the prefix “e,” which is commonly used to refer to
the electronic or online version of a brand. That prefix does
no more to distinguish the two marks than would the words
“Corp.” or “Inc.” tacked onto the end. See Horphag Research
Ltd. v. Garcia, 475 F.3d 1029, 1036 (9th Cir. 2007) (use of
identical mark provides “circumstantial evidence” of dilu-
tion).

   [4] And Visa is a strong trademark. “In general, the more
unique or arbitrary a mark, the more protection a court will
afford it.” Nutri/System, Inc. v. Con-Stan Indus., Inc., 809
F.2d 601, 605 (9th Cir. 1987). The Visa mark draws on posi-
tive mental associations with travel visas, which make poten-
tially difficult transactions relatively simple and facilitate new
opportunities and experiences. Those are good attributes for
a credit card. But those associations are sufficiently remote
that the word visa wouldn’t make people think of credit cards
if it weren’t for the Visa brand. “This suggests that any asso-
                VISA INTERNATIONAL v. JSL CORP.             9353
ciation is the result of goodwill and deserves broad protection
from potential infringers.” Dreamwerks Prod. Grp., Inc. v.
SKG Studio, 142 F.3d 1127, 1130 n.7 (9th Cir. 1998). Visa
also introduced uncontroverted evidence that Visa is the
world’s top brand in financial services and is used for online
purchases almost as often as all other credit cards combined.
This was enough to support the district court’s summary judg-
ment.

   [5] JSL vigorously contests the validity of market surveys
and expert testimony introduced by Visa to show that eVisa
dilutes the Visa mark, and it claims that evidence should have
been excluded under Daubert v. Merrell Dow Pharm., Inc.,
509 U.S. 579 (1993). But a plaintiff seeking to establish a
likelihood of dilution is not required to go to the expense of
producing expert testimony or market surveys; it may rely
entirely on the characteristics of the marks at issue. See 15
U.S.C. § 1125(c)(2)(B) (listing relevant factors). Expert testi-
mony and survey evidence may be necessary in marginal
cases, or where a defendant introduces significant evidence to
show that dilution is unlikely. But JSL presented nothing,
other than Orr’s statement that he did not intend to dilute the
Visa mark, to rebut the inference of likely dilution created by
the strength and similarity of the marks. Good intentions
alone do not negate a showing of a likelihood of dilution. We
therefore need not reach the admissibility of Visa’s expert tes-
timony and market survey evidence.

   [6] JSL claims the eVisa mark cannot cause dilution
because, in addition to being an electronic payment network
that’s everywhere you want to be, a visa is a travel document
authorizing the bearer to enter a country’s territory. When a
trademark is also a word with a dictionary definition, it may
be difficult to show that the trademark holder’s use of the
word is sufficiently distinctive to deserve anti-dilution protec-
tion because such a word is likely to be descriptive or sugges-
tive of an essential attribute of the trademarked good.
Moreover, such a word may already be in use as a mark by
9354            VISA INTERNATIONAL v. JSL CORP.
third parties. For example, we rejected a dilution claim by
Trek Bicycle Corporation for its “Trek” mark in part because
it played heavily off the dictionary meaning of “trek,” sug-
gesting that the bicycles were designed for long or arduous
journeys. Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d
894, 912 n.14 (9th Cir. 2002). Additionally, the creators of the
Star Trek series had already “incorporated this common
English language word into their trademark,” and the “glow
of this celebrity ma[de] it difficult for Trek to obtain fame
using the same word.” Id. In our case, Visa’s use of the word
visa is sufficiently distinctive because it plays only weakly off
the dictionary meaning of the term and JSL presented no evi-
dence that a third party has used the word as a mark.

   [7] It’s true that the word visa is used countless times
every day for its common English definition, but the preva-
lence of such non-trademark use does not undermine the
uniqueness of Visa as a trademark. See 2 McCarthy on Trade-
marks and Unfair Competition § 11:87 (4th ed. 2010). “The
significant factor is not whether the word itself is common,
but whether the way the word is used in a particular context
is unique enough to warrant trademark protection.” Wynn Oil
Co. v. Thomas, 839 F.2d 1183, 1190 n.4 (6th Cir. 1988). In
the context of anti-dilution law, the “particular context” that
matters is use of the word in commerce to identify a good or
service. There are, for instance, many camels, but just one
Camel; many tides, but just one Tide. Camel cupcakes and
Tide calculators would dilute the value of those marks. Like-
wise, despite widespread use of the word visa for its common
English meaning, the introduction of the eVisa mark to the
marketplace means that there are now two products, and not
just one, competing for association with that word. This is the
quintessential harm addressed by anti-dilution law.

   JSL is not using the word visa for its literal dictionary defi-
nition, and this would be a different case if it were. Visa does
not claim that it could enforce its Visa trademark to prevent
JSL from opening “Orr’s Visa Services,” any more than
                VISA INTERNATIONAL v. JSL CORP.             9355
Apple could shut down Orr’s Apple Orchard or Camel could
fold up Orr’s Camel Breeders. Visa doesn’t own the word
“visa” and may not “deplete the stock of useful words” by
asserting otherwise. New Kids on the Block v. News America
Publ’g, Inc., 971 F.2d 302, 306 (9th Cir. 1992); cf. Kellogg
Co. v. Nat’l Biscuit Co., 305 U.S. 111, 116-17 (1938). Con-
ferring anti-dilution rights to common English words would
otherwise be untenable, as whole swaths of the dictionary
could be taken out of circulation. Nor would a suit against
Orr’s Visa Services advance the purpose of anti-dilution law.
Such use of the word would not create a new association for
the word with a product; it would merely evoke the word’s
existing dictionary meaning, as to which no one may claim
exclusivity.

   [8] JSL argues that its use of the word “visa” is akin to
Orr’s Visa Services because the eVisa mark is meant to “con-
note the ability to travel, both linguistically and physically,
through the English-speaking world” and therefore employs
the word’s common English meaning. JSL’s site depicted the
eVisa mark next to a booklet that looks like a passport, and
it divided the services offered into the categories “Travel
Passport,” “Language Passport” and “Technology Passport.”
But these allusions to the dictionary definition of the word
visa do not change the fact that JSL has created a novel mean-
ing for the word: to identify a “multilingual education and
information business.” This multiplication of meanings is the
essence of dilution by blurring. Use of the word “visa” to
refer to travel visas is permissible because it doesn’t have this
effect; the word elicits only the standard dictionary definition.
Use of the word visa in a trademark to refer to a good or ser-
vice other than a travel visa, as in this case, undoubtedly does
have this effect; the word becomes associated with two prod-
ucts, rather than one. This is true even when use of the word
also gestures at the word’s dictionary definition.

  [9] JSL’s allusions to international travel are more obvious
and heavy-handed than Visa’s, and JSL claims that its use of
9356           VISA INTERNATIONAL v. JSL CORP.
the word is therefore “different” from Visa’s. That’s true;
Visa plays only weakly off the word’s association with inter-
national travel, whereas JSL embraced the metaphor with
gusto. But dilution always involves use of a mark by a defen-
dant that is “different” from the plaintiff’s use; the injury
addressed by anti-dilution law in fact occurs when marks are
placed in new and different contexts, thereby weakening the
mark’s ability to bring to mind the plaintiff’s goods or ser-
vices. See Mattel, 296 F.3d at 903. The only context that mat-
ters is that the marks are both used in commerce as
trademarks to identify a good or service, as they undoubtedly
are in this case.

  The district court was quite right in granting summary
judgment to Visa and enjoining JSL’s use of the mark.

  AFFIRMED.