Amazon Under “Fyre” In Reverse Confusion Trademark Infringement Case

Contributing Author: Daniel Rozansky

Last week, the 11th U.S. Circuit Court of Appeals, reversing a previous summary judgment in Amazon’s favor, ruled that Amazon must face a jury trial in regard to claims that its streaming device, Fire TV (also known as fire TV), infringes upon the trademark “FyreTV” of Wreal, LLC (Wreal), a Miami-based pornography company.

The published opinion notes that this is classified as a “reverse confusion” case. Reverse confusion cases are different from typical trademark infringement cases the general public may be more familiar with. In reverse confusion cases, the plaintiff is the “senior user” of the mark (meaning it was the first to use the mark) and is not as well-known as the defendant, which is the “junior user” of the mark. Unlike the more common “forward confusion” cases, reverse confusion cases do not involve a plaintiff claiming the alleged infringer is attempting to capitalize on its success. “The paradigm case of [reverse confusion] is that of a knowing junior user with much greater economic power who saturates the market with advertising of a confusingly similar mark, overwhelming the marketplace and value of the senior user’s mark.” In this case, FyreTV argues that consumers will mistakenly assume that their mark is affiliated with Amazon’s brand. In this case, Wreal contends, “Amazon’s use of Wreal’s mark creates a likelihood that consumers will believe that Amazon is the source of Wreal’s FyreTV service.”

The outcome of forward confusion cases generally rely on a seven-factor test, in which a court examines the following: (i) distinctiveness of the mark; (ii) similarity of the infringed and infringing marks, (iii) similarity of the goods or services being offered under the two marks; (iv) similarity of the actual sales methods used by the two parties, such as their sales outlets and customer bases; (v) similarity of advertising methods; (vi) intent of the alleged infringer to misappropriate the proprietor’s goodwill; and, (vii) the existence of actual confusion in the consuming public. When this case was previously examined by the District Court, the seven-factor test was applied, and the District Court found that it was unlikely that consumers would confuse the FyreTV and Fire TV marks. The 11th U.S. Circuit reversed the District Court’s grant of summary judgment, noting that there are “several important differences” in the application of the seven-factor test in reverse confusion cases versus forward confusion cases.

So, what did the 11th Circuit have to say about applying the seven-factor test?

Distinctiveness of the Mark: The 11th Circuit instructed the trial court that when it revisits this point, it must consider, “both the conceptual strength of the plaintiff’s mark and the relative commercial strength of the defendant’s mark. . . . The greater the relative strength of the junior mark allows the junior user to ‘overwhelm’ the marketplace, diminishing the value of the senior mark.” The Court held that given Amazon’s “overwhelming” success with the Fire TV mark coupled with Wreal’s conceptual strength of its mark, this factor figures “firmly in Wreal’s favor.”

Similarity of the Marks: On summary judgment, the District Court held that the two marks— FyreTV and Fire TV—were not similar due to factors such as different fonts and spellings and that the marks were used differently in commerce. Disagreeing with the District Court, the Court of Appeals noted that the two marks are phonetically and connotatively the same, and “Fire” is the only term in either mark that gives the mark meaning. The Court of Appeals, finding that the similarity of the marks factor weighed heavily in favor of Wreal, held that “Amazon’s pervasive use of its housemark [i.e. Amazon] alongside ‘fire’ TV pushes this factor even further in favor of Wreal, as it is likely to confuse consumers into believing that Amazon is the origin of the FyreTV mark.”

Similarity of the Products: In examining this factor, the Court of Appeals examined several pieces of evidence that were before the District Court when it granted the summary judgment motion in Amazon’s favor. Among other things, the Court looked the following: the fact that consumers were able to stream softcore pornography on Fire TV through content providers such as HBO and Showtime; that consumers could stream softcore pornography on Prime Instant Video, which is Amazon’s own streaming service; that Amazon offered the sale of hardcore pornographic DVDs and magazines on the Amazon.com website; the similarity of the parties’ devices—plain set-top boxes with a small remote; and that Amazon’s direct competitors in the mainstream set-top boxes (Roku and Apple TV) already provided access to hardcore pornography, including FyreTV. The Court stated that the key question is whether the above evidence would suggest to an ordinarily prudent consumer that Amazon would seek to “bridge the gap” between its current offerings, which includes softcore and hardcore pornography, and offer a set-top box that exclusively streams hardcore pornography. The Court answered this in the affirmative and held that this factor favors Wreal.

Similarity of Sales Outlets and Customer Bases: Applying this factor, the Court of Appeals noted Fire TV is available everywhere, including on multiple internet sites and brick-and mortar locations around the world. On the other hand, FyreTV is only available on FyreTV.com, after the buyer certifies his or her age to be over 18 and interested in purchasing pornography. The Court found that this factor favors Amazon.

Similarity of Advertising: The Court held this factor strongly favors Amazon as well, due to its advertising of Fire TV on the “amazon.com homepage, on television, in print media, and on instore displays,” whereas Wreal advertised “only on the internet or other media dedicated to similarly prurient content.”

Intent of Mark Adoption: The Court of Appeals found that the evidence supported that Amazon had prior knowledge of Wreal’s trademark registration before launching Fire TV and that the evidence showed that it attempted “to flood the market with advertising in an attempt to lower awareness of Wreal’s similarly named mark.” The Court held that this factor strongly favored Wreal.

Actual Confusion: The Court stated that “in assessing the quantum of actual confusion required for a finding in the plaintiff’s favor, even a ‘very little’ amount of actual confusion is highly probative.” Wreal documented two cases of notable confusion from its customers, allowing this factor to weigh in Wreal’s favor.

Reverse confusion cases are generally considered to be difficult to prove, but in recent years, plaintiffs have had some success in bringing these cases. In addition to the Court’s recent finding in this case, in 2021, Dropbox settled a similar lawsuit with Ironhawk Technologies Inc. Ironhawk Technologies had previously filed the lawsuit against Dropbox after Dropbox launched a “Smart Sync” function because Ironhawk had already obtained a trademark for its “SmartSync” software program. Similar to the Amazon case, Dropbox was initially awarded summary judgment, but it was later revisited and overturned.

While the decision will ultimately be in the jury’s hands, it will be interesting nonetheless, and it will undoubtedly serve as a reference point for future reverse confusion cases.

When reached for comment, Amazon representatives declined to provide a statement on active litigation.

Legal Entertainment has reached out to representation for comment and will update this story as necessary.

Daniel Rozansky is a Partner at Stubbs Alderton & Markiles LLP in Los Angeles. He practices in the areas of entertainment, intellectual property and business litigation, and represents clients across multiple platforms including film, television, music, concerts and touring, and digital media. He regularly reviews television pilots, screenplays and other material in development to assist those clients in identifying and avoiding potential liabilities.