"Now there's something you don't see every day, Chauncey."
"What's that, Edgar?"
"A porn streaming provider suing one of the largest companies in the world for trademark infringement!"
ATLANTA—That dialog, part of which is probably familiar to fans of The Rocky and Bullwinkle Show, could easily have been the headline back in 2014 when Wreal Inc., the parent company of adult streaming service FyreTV, which has been in business since 2008, first sued Amazon.com for naming its own streaming service "Fire TV," charging that the Amazon product could too easily be confused with Wreal's trademarked name.
At first glance, it would seem to be a no-brainer: Fyre vs. Fire. After all, they sound the same and look nearly the same, and both are accessed through set-top boxes sold by the respective companies. Not only that, but FyreTV, which bills itself as "the Netflix of porn," in an effort to help consumers avoid confusion trying to reach its site on the Web, early on also trademarked "Fire.com" along with its own "Fyre.com"—a fact that Amazon undoubtedly ran across when it tried to trademark its Fire TV site.
But somehow, all of those similarities didn't sway Florida-based U.S. District Judge Joan A. Lenard, who in July of 2019 issued a ruling that essentially said no one was likely to confuse the two services, basing her ruling in part on Amazon's assertions such as, "Differences between the FyreTV and Amazon Fire TV marks include: (a) one is red, the other yellow or orange; (b) one is two words, the other is one; (c) one includes a flame graphic, the other does not; (d) each has its own unique stylized font: one is with a 'y' and the other with an 'I'; and (e) one often has 'Amazon' in front of it, and the other does not."
But Wreal wasn't about to give up so easily, especially since its own service predates Amazon's by several years, and because, as Wreal's attorney Carlos Nunez-Vivas argued last Thursday to the Eleventh Circuit in a new attempt to revive the suit, "One just needs to hear the words ‘Fire TV.’ They sound exactly the same."
"They’re saturating the market," Nunez-Vivas continued, referring to Amazon. "They’re spending eye-popping numbers in advertising. Let’s say Wreal would’ve liked to go into mainstream content. Well, they’re going to have a difficult time doing that when there’s a mammoth company that is controlling that market and associating the mark with its own name." He added, "If Amazon eventually destroys the brand for some reason, if the Amazon name doesn’t become a good name, then it tarnishes the brand. It tarnishes the mark that is being protected."
While that latter point seems unlikely, the concept of brand confusion is real, with even Eleventh Circuit Judge Barbara Lagoa noting during argument that, according to an article on Courthouse News, "at least one customer called Amazon to find out whether FyreTV could be accessed from Amazon’s Fire TV and another tweeted to ask whether Wreal merged with Amazon."
However, Amazon's attorney Drew Hansen poo-poo'd the idea, calling the two customers "a couple instances of actual confusion" that didn't indicate any sort of widespread trend, and arguing, "The people who are writing in clearly know there’s a difference between the Amazon thing and the FyreTV thing and they’re making remarks about that. There is no indication that the [consumers] think that Amazon is the source, affiliate or sponsor of Wreal’s product."
Hansen further argued that while Amazon's Fire TV box can be purchased at several mainstream retailers, the same can't be said for FyreTV's box, nor does Wreal advertise FyreTV on mainstream TV as Amazon does its Fire TV.
And therein lies Wreal's major problem: In order to win its case, it will have to show that enough potential subscribers to its service are 1) aware of FyreTV in the first place; 2) aware of the existence of Fire TV; and 3) sufficiently confused by the similarity of names that they will be compelled to attempt doing their porn-viewing on Amazon.
Still, although TechCrunch.com's Matt Burns suspects that "with FireTV.com (NSFW) redirecting to FyreTV.com, it’s highly likely more than a few unsuspecting shoppers thought Amazon had gotten into the adult film business," as attorney Darren Heitner pointed out on his blog, "In order for the argument to work, it needs to be shown that the public has come to assume that a senior user’s [Wreal's] products are really the junior user’s [Amazon's] or that they are connected. The consequence would be that the senior user loses its value of its trademark and control over its goodwill and reputation. In this case, Wreal (the senior user) argued that many consumers were not even aware of the Amazon Fire TV. That, alone, kills its argument."
