Twitter Admissibility — Third-Party Tweets = Hearsay on Issue of Actual Confusion in Trademark Dispute Absent Authentication from Declarants

Ponelman v. Nike, Inc., 2016 U.S. Dist. LEXIS 17662 (N.D. Ill. Feb. 9, 2016):

Daniel Poneman ("Plaintiff") brings suit against Nike, Inc. ("Nike"), and Footlocker, Inc. ("Foot Locker"), (collectively "Defendants") for trademark infringement related to his "SwagAir" mark pursuant to 15 U.S.C. § 1121. Plaintiff also asserts common law trademark infringement and claims under the Illinois Uniform Deceptive Trade Practices Act, 815 Ill. Comp. Stat. 510/1et seq., and The Illinois Consumer Fraud and Deceptive Trade Practices Act, 815 Ill. Comp. Stat. 505/1 et seq. Before the Court is Defendants' motion for summary judgment. For the following reasons, the motion is granted.

I. BACKGROUND

In 2006, while still a high school student himself, Plaintiff began scouting high school basketball players for collegiate programs. Plaintiff continued his activities through high school until, in his senior year, he left school to pursue his career full time. From 2006 until 2010 Plaintiff conducted his online operations through IllinoisHSbasketball.com and DPBball.blogspot.com. In March 2010, Plaintiff sought to rebrand himself, in order to remove limits imposed by such specific and regional names. Plaintiff was looking for a moniker that would allow him to expand into other areas such as national scouting, scouting for other sports, music management, apparel production, et cetera. Eventually Plaintiff settled on the name "SwagAir" meant to be a play on the word "swag," a term only "the cool kids were using" and "swagger." Defs.' Reply Mem. Supp. Mot. Summ. J., Ex. 1, Dep. Daniel Poneman, pp. 101 :12-103:3. At no time did Plaintiff register the name "SwagAir" with the U.S. Patent and Trademark Office, or any other office.

Plaintiff began using his new name in conjunction with his scouting activities and to brand many of his 539 YouTube videos. [*3]  On March 28, 2010, Plaintiff held the first of his basketball showcases and called the event the "SwagAir Showcase," over one year later Plaintiff held his second showcase, again calling it "SwagAir Showcase." Def.'s Mot. Summ. J. Pl.'s Claims, Ex. A 4, p. 9. At the showcases Plaintiff sold each player-participant a t-shirt, the cost of which was included in their registration fee, and also offered the same t-shirts for sale to those in attendance. Over the course of both showcases, Plaintiff distributed 296 t-shirts in total.

However, Plaintiff's scouting business was not blooming as he had hoped. In an effort to expand his business and brand nationally, he began producing a documentary film chronicling the struggle of several high school basketball players. Beginning in 2012 and for the three years following, Plaintiff took a step back from producing YouTube videos and hosting basketball showcases. While he retained the moniker SwagAir as his social media handle, the name does not appear on any other materials, such as promotional material for the film, from 2012-2014.

In August 2012, Foot Locker representatives approached Nike and requested that they design and produce a t-shirt that [*4]  included the word "swag." Nike designers immediately began experimenting with designs and slogans, eventually settling on SWAG AIR in the traditional Nike font. During the course of the design process Nike completed a trademark search for "swag air" and its variations; because Plaintiff's mark was never registered, it did not appear. Nike also reviewed the results of internet searches and discovered only Plaintiff's social media presence. By March 2013, Nike had produced the t-shirt in question and began selling them in Nike retail stores, Foot Locker stores, Foot Locker's affiliated stores, and online.

On December 10, 2013, Plaintiff filed a complaint, alleging that Defendants are liable for trademark infringement under 15 U.S.C. § 1125(a). The Court has original jurisdiction pursuant to 15 U.S.C. § 1121. Plaintiff also alleges common law trademark infringement and violations of the Illinois Uniform Deceptive Trade Practices Act, 815 Ill. Comp. Stat. 510/2(a), and The Illinois Consumer Fraud and Deceptive Trade Practices Act, 815 Ill. Comp. Stat. 505/2. The Court has supplemental jurisdiction for the state law claims pursuant to 28 U.S.C. §1367(a).

In March 2014, Plaintiff resumed his SwagAir Showcase activities and on March 30, 2014, and March 29, 2015, hosted his third and fourth showcases. [*5]  These showcases, like the two that preceded them, were Chicago area events that hosted approximately 100 player-participants. However, Plaintiff does not state that he has sold any merchandise at the two most recent showcases.

***

f. Evidence of Actual Confusion.

While evidence of actual confusion is not necessary to find for the Plaintiff, it does weigh heavily in favor of a finding of confusion. See Sorensen, 792 F.3d at 731. Here, Plaintiff provided several statements from friends and family members acknowledging Defendants' shirts bore the same words [*18]  as Plaintiff's mark.

Plaintiff cites case law to establish that any instance of confusion is sufficient to establish actual confusion and that such confusion would weigh heavily in favor of Plaintiff. See Pl.'s Mem. Opp'n to Mot. Summ. J. 18. However, Plaintiff has provided no evidentiary support from actual customers to allow the Court to find an instance of actual confusion. While there were several statements made on Twitter, following the introduction of Nike's "SWAG AIR" shirts, from Plaintiff's fans and followers, Plaintiff admits that these statements were not indicative of actual confusion. Moreover, these tweets are inadmissible hearsay and cannot be considered by the Court absent deposition testimony or sworn affidavits from the declarants. See Fed. R. Evid. 801(c). Again, while the Plaintiff is entitled to a favorable view of the evidence, he must first place that evidence before the Court. Ultimately, there is no evidence of actual confusion before the Court and therefore no reasonable jury could find any instances of actual confusion and the Court finds this factor in favor of Defendants.

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