Interstellar Starship Services, Ltd. v. Epix, Inc.

Epix, Inc. (defendant) sold sophisticated electronic-imaging products using the web address epixinc.com. Michael Tchou was the founder of Interstellar Starship Services, Ltd. (Interstellar) (plaintiff). In 1995, Interstellar obtained the web address epix.com, which Tchou chose because it connoted electronic pictures. Before adopting the address, Tchou conducted a web search for “epix” but did not find Epix because it was not yet on the internet. Interstellar’s website primarily promoted an Oregon theater troupe through digital pictures, but it also sometimes included topics like Tchou’s use of software to edit and import digital images as well as Interstellar’s consulting services. Epix tried to obtain the epix.com web address but failed because Interstellar already owned it. Interstellar sought a declaratory judgment that its use of epix.com did not infringe on Epix’s trademark. Epix counterclaimed, asserting, among other things, trademark infringement due to initial-interest confusion. Around the time Epix filed its counterclaims, Interstellar removed all nontheater content from epix.com. The district court granted summary judgment to Interstellar, but the court of appeals reversed. On remand, Epix added a claim under the Anticybersquatting Consumer Protection Act. After a trial, the district court found that (1) Interstellar’s past use of epix.com to promote Tchou’s imaging software and consulting services infringed Epix’s trademark, (2) Interstellar’s present use of epix.com for theater-related material did not infringe Epix’s trademark, and (3) Interstellar did not violate the act because Tchou obtained epix.com in good faith. Accordingly, the district court allowed Interstellar to retain epix.com. Epix appealed, arguing that any use by Interstellar of epix.com created initial-interest confusion because the parties’ marks were similar, their goods and services were related, and the parties both used the internet for marketing and the district court erred by considering other factors in concluding otherwise.