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Amazon must face porn company in trademark trial, 11th Circuit rules

A panel of the Atlanta-based appeals court ruled that the e-commerce giant’s use of the Fire TV name could cause consumers to believe that is the source of on-demand porn streaming service FyreTV.

ATLANTA (CN) — A jury should decide whether Amazon’s Fire TV brand infringes on the trademarked porn streaming service FyreTV, a unanimous panel of the 11th Circuit held Tuesday.

The appeals court ruled that Miami-based adult entertainment company Wreal LLC is entitled to a trial over whether Amazon’s use of the Fire TV mark is likely to confuse consumers and lead them to believe that the e-commerce giant is the source of Wreal’s FyreTV service.

The three-judge panel’s decision overturned a Florida federal judge’s 2019 ruling in Amazon’s favor, which found it unlikely that consumers would mistake FyreTV, a hardcore porn streaming service that markets itself as the “Netflix of porn,” for Amazon’s Fire TV set-top box.

The 11th Circuit ruled that the two marks are “nearly identical.”

“Both use the same words, are pronounced the same, and have the same meaning.  While they are spelled slightly differently and use different fonts, this is not enough to conclude that the marks are dissimilar,” U.S. Circuit Judge Barbara Lagoa wrote on behalf of the panel. “Amazon’s pervasive use of its housemark alongside 'fireTV' 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.”

Agreeing with arguments advanced by Wreal’s attorneys during oral arguments in the case last year, the panel found the company presented convincing evidence that Amazon infringed on the trademark under the theory of reverse confusion.

The ruling explains that reverse confusion occurs when a commercially larger but junior user of a trademark saturates the market with a mark which is identical or very similar to a mark used by a smaller user of a more senior trademark. The smaller user is harmed by consumer association of its mark with the larger user’s corporate identity.

“In this case, Wreal is not suggesting that Amazon chose the Fire TV mark with the intention of siphoning Wreal’s goodwill; instead, Wreal claims that, by Amazon’s use of the Fire TV mark, Wreal has lost control over its own, more senior mark,” Lagoa wrote.

Wreal has been using the mark FyreTV since 2008, while Amazon did not begin using the mark Fire TV until 2012.

Amazon has admitted that it knew about Wreal’s FyreTV trademark registration before launching Fire TV but chose not to contact Wreal.

Instead, Amazon “specifically tried to flood the market with advertising in an attempt to lower awareness of Wreal’s similarly named mark,” the ruling says.

A spokesperson for Amazon refused to comment on the ruling, citing the active litigation.

Although the decision points out that there is “no overlap” between the marketing schemes or sales outlets used by Amazon and Wreal for the two streaming services, a reasonable juror could find that Amazon, a “do-it-all giant,” was likely to enter the porn streaming industry.

“Amazon already offers at least some softcore pornography on its streaming services and competes with other general-interest set-top boxes that offer hardcore pornography content on theirs, including the FyreTV streaming service at issue here,” Lagoa wrote. “Amazon also sells hardcore pornographic materials on its website.  It would not be unreasonable for a reasonable consumer to see FyreTV and think Amazon was the source.”

Wreal has pointed to two instances which suggest that consumers believed Amazon had purchased or become otherwise involved with the FyreTV name. One customer called Amazon to find out whether FyreTV could be accessed via Amazon’s Fire TV and another tweeted at Wreal to ask whether the company had merged with Amazon.

The ruling says that while two instances of confusion after years of litigation is undoubtedly low, they are worthy of consideration in light of expert testimony that people who watch porn are less likely to self-report than consumers of other media due to shame.

Lagoa was joined on the panel by fellow Trump appointee U.S. Circuit Judge Andrew Brasher and U.S. Circuit Judge Charles Wilson, a Bill Clinton appointee.

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