M2 Software Inc. v. Viacom Inc.

MEMORANDUM *

M2 Software appeals the district court’s grant of summary judgment in favor of Viacom. Because the facts are known to the parties, we will not recite them in detail except as necessary. We have jurisdiction pursuant to 28 U.S.C. § 1291 , and we reverse.

To prevail on its claim of trademark infringement in violation of the Lanham Act, M2 Software must show (1) that it has a valid mark entitled to protection under the Act, and (2) that Viacom’s mark creates a likelihood of confusion. See Brookfield Communications, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1046 (9th Cir.1999). The district court concluded that M2 Software had a valid trademark in its Record Label Management System (“RLMS”), but that Viacom’s “M2: Music Television” cable channel did not create a likelihood of confusion. See M2 Software, Inc. v. Viacom, Inc., 119 F.Supp.2d 1061 (2000).

We review de novo the district court’s grant of summary judgment. Interstellar Starship Servs., Ltd. v. Epix, Inc., 184 F.3d 1107 , 1109 (9th Cir.1999), cert. denied, 528 U.S. 1155 , 120 S.Ct. 1161 , 145 L.Ed.2d 1073 (2000). “Because of the intensely factual nature of trademark disputes, summary judgment is…

Dissenting.

I disagree with the majority as to whether M2 Software’s M2 trademark extends to its CD-ROM products. I think that Judge Paez, who handled the case in the district court, got it right when he concluded that M2 Software’s trademark ownership should be analyzed in connection with its CD-ROM products at the time when the CD-ROM products were first used in commerce, and not when M2 Software first acquired its rights in the M2 mark through its use on prior products. Accordingly, I respectfully dissent because I think the CD-ROM products should not have been included in the likelihood of confusion analysis as they were not used in commerce before Viacom used its mark.