9th Circuit Gives Disney an Earful

A preliminary injunction blocking Walt Disney Co. from using its Go Network logo appears likely to stand at least until this summer following a stinging retort delivered to the entertainment giant by the United States Court of Appeals for the 9th Circuit this month.

The court ruled unanimously to reinstate an injunction preventing the Go Network from using its logo until an infringement trial expected this summer against search engine GoTo.com. The judges said in a 23-page decision that they were “immediately struck” by the two companies' “overwhelmingly similar” logos.

GoTo.com, Pasadena, CA, initially won the injunction last year after it filed suit claiming the Go Network logo infringed on its trademark. The case has pitted GoTo, a privately held company that puts its annual revenue in the “multiple millions,” against Disney, a $23.4 billion communications powerhouse. The court's latest decision puts the injunction back in force after it was suspended pending a review.

“Quibbles over trivial distinctions between these two logos are unimpressive. The logos are glaringly similar. We are unmoved by Disney's arguments to the contrary,” the judges said. “The fact that the Patent and Trademark Office has not found the two confusingly similar is not surprising, given that Disney's application to that agency was not lined for color. It is precisely the identical colors that create the confusion: white script in a green circle on a yellow square,” the court said.

“I can't remember ever reading an opinion like that,” said Pierce O'Donnell, lead attorney for GoTo. “It's almost a mocking tone. The court could not have been clearer that Disney was in the wrong.”

Disney, Burbank, CA, did not respond to a request for comment on the court decision and a new Go Network logo that appeared after the order. The company has said previously that it considers GoTo.com's claims baseless.

It's been rough going of late for the Go Network, the core of Disney's online presence. The company announced last week that Go Network, which is in the midst of a strategic realignment, hemorrhaged $265.4 million in the first quarter. The loss resulted largely from the cost of acquiring search engine Infoseek last fall. However, Disney's Web operations are expected to continue hurting the company's overall financial performance.

Disney appears to have been better prepared this time around than it was after the initial injunction. The latest incarnation of its logo features a dark green “GO” with a dotted gold arrow, a slick contrast to the simple white box and green lettering Disney used briefly last year.

But according to O'Donnell, the court's latest decision caught Disney at an inopportune moment regardless. Prior to this month's ruling, the judges issued a one-line order preventing use of the Go Network logo on the Thursday before Superbowl Sunday – an event televised by Disney's ABC network. O'Donnell said Disney scrambled to get the logo out of Superbowl commercials it had already put together for its network shows.

“They were pleading with me all day Friday to say that we wouldn't seek contempt or sanction, fines in relation to violating the order, and I wouldn't give them any assurances,” the attorney said. He added that the logo seems not to have appeared in any commercials during the game.

O'Donnell, of O'Donnell & Shaeffer, Los Angeles, has a reputation as a “studio slayer,” having litigated against several film companies. Last year against Sony Corp. he successfully defended Metro-Goldwyn-Mayer Inc.'s rights to the James Bond character.

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