This is the story of cannabis fertilizer producer infringing on the trademark of the senior user. In Athena Incorporated v. Advanced Nutrients, filed in the U.S. District Court for the Western District of Washington (Seattle), Athena sought a preliminary injunction against trademark infringement by Advanced Nutrients for using not just the name, but the logo of Athena in comparison advertising of its cannabis fertilizer products.
Athena is a leader for commercial cannabis-growing fertilizer. It alleged that Advanced Nutrients used, in particular, an Instagram video by the defendant’s CEO showing the two products side by side, and suggesting that, if you use Athena products, you could transition into using Advanced Nutrients products.
The defendant argued that it was nominal fair use. That’s where you merely talk about someone else’s product in order to compare them, and you can’t have the conversation about the superiority of your product if you are prevented from mentioning the name of the other product.
The court disagreed. It said that nominal fair use requires the plaintiff’s product or service not to be readily identifiable without using the trademark. The second requirement is that the defendant only uses as much of the mark as is reasonably necessary to identify the plaintiff’s product. And third, the user must do nothing that would suggest sponsorship or endorsement by the trademark holder.
Athena successfully argued that the use of its marks went beyond what’s reasonably necessary to compare the products, and that the video was sufficient to suggest an endorsement. The intent of the defendant’s advertising campaign was to convince consumers — who in this case were commercial, cannabis-growing companies, not individual consumers — that defendant’s products and instructions for using them with Athena’s products were somehow endorsed or sponsored by Athena.
Advanced Nutrients argued that even though it took down the links to its transition charts, its Instagram videos were protected by the First Amendment
There were a few things the defense did that struck me as flaky. One of them is resorting to the First Amendment on top of the trademark concept of nominal fair use as if it enshrines the argument; it’s a rather desperate way to circumvent nominal fair use requirements. Also, the defendant’s attorney suggested that they were making an “appropriate ask” for the court to direct defendant to modify the marketing materials, rather than enjoin them from using Athena’s name. I’m not aware of anyone using the phrase “appropriate ask,” which seems awfully informal to me. How about, “in the alternative, rather than enjoining the conduct in its entirety, the injunction should be more narrowly tailored”? Perhaps that’s stuffy and overly formal, but more worthy of a legal argument.
Athena also said that, when balancing the equities, the defendant was coattailing on Athena’s reputation. The defendant countered that equity favored Advanced Nutrients because of its “pro-consumer values.” I’m not sure what that means. It’s possible that the judge in his reported decision was abbreviating some arguments that were delivered more eloquently, but it strikes me as a novel (if not, unsupported) conceptual argument rather than anything based in law.
In any event, the court found it problematic for Advanced Nutrients to use the Instagram video, especially because it was still posted even after the lawsuit began. The video didn’t just compare defendant’s product with its competitors, but encouraged customers to use the products in tandem. The court held that placing the two brand names side by side could easily create consumer confusion about apparent endorsements. That’s not minimal use of the plaintiff’s trademarks.
The judge then analyzed whether the plaintiff would be irreparably harmed. One interesting note was that there could be issues with customer support if customers used both products as fertilizer for their cannabis farms. Who would be at fault and how would you work with this? That was sufficient to allege irreparable harm.
Finally the court said, in an unusually frank fashion, “The court does not have the complete picture of this case. Although it finds that the balance of equities and the public interest lean more towards granting the motion, it’s only narrow relief that’s being granted here.” The judge decided that defendants cannot post the video on Instagram, and that any continuing use of the Athena mark must be only to compare the defendant’s products to the plaintiff’s, rather than suggest that Athena’s product could be transitioned to defendant’s. As such, the court granted the preliminary injunction. Notably, that is not a final decision, but literally predicts that the plaintiff is likely to succeed on the merits.
This may be a classic example of the client (here, the CEO of a cannabis fertilizer company who was clearly… enthused and inspired) saying “I’ve got a great idea,” and not talking to lawyers in advance. Anyone using the trademark of their competitor should run it by counsel first. “Nominal fair use” is a defense, and defenses are raised when you’re sued. Perhaps it’s more prudent to avoid a reason to be sued.
