Has Amazon, the hero of online shopping and home of the Kindle, become the newest provider of pay-per-view porn? According to WREAL, the company behind the adult entertainment streaming device and website FyreTV®, this is just a taste of the confusion apparently created by the launch of Amazon’s similarly named Fire TV. Consequently, attorneys on behalf of WREAL submitted an official complaint against Amazon for trade-mark infringement.
The Issue at Hand
According to the complaint, in 2008 WREAL registered its FyreTV® and FyreTV.com® trade-marks for its on-demand pornography streaming service. Its service is accessible through the FyreTV® website, set-top box, and a few third-parties. On April 2, 2014, Amazon launched its set-top box named Fire TV. It is described as “a tiny box you connect to your HDTV” with video streaming capabilities and other features like child-friendly profiles and voice activated controls. WREAL contends that Amazon’s Fire TV performs “a substantially similar, if not identical, function” to the FyreTV® set-top box. This “function” is identified as access to a library of streaming videos that can be accessed by a consumer at home. WREAL argues that Amazon’s use of the Fire TV name has, and will, continue to cause serious and irreparable harm to WREAL’s established business.
Trade-mark Infringement and the U.S. Law
Under 15 USC § 1114 of the Lanham Act, trade-mark infringement occurs when “any reproduction, counterfeit, copy, or colorable imitation of a registered mark” is used in the sale, distribution or advertising of a good or service, or in connection with a use that is likely to “cause confusion, or cause mistake, or to deceive.” To determine if a registered mark has been infringed, American courts look to the “likelihood of confusion” test. The test considers eight factors, recognized as the “Polaroid Factors” as established in Polaroid v Polarad Elect. Corp.
Will FyreTV Sizzle or Succeed?
According to WREAL’s complaint, it seems as if the company’s primary points of contention with Amazon are the similarities between “FyreTV” and “Fire TV”, and the documented confusion amongst consumers regarding the two names – similarity and confusion being two important “Polaroid Factors.” Such factors are aggravated by the wide reach of Amazon’s marketing capabilities compared to the smaller market-influence of WREAL. As such, confusion has allegedly led many consumers to assume that “Fire TV” belongs to Amazon, leading to the possibility of WREAL’s products being viewed as lesser-valued imitations.
FyreTV® and Fire TV are very similar language-wise. Despite the spelling difference, both are pronounced in the same way. The possibility for confusion is perpetuated by the fact that FyreTV® owns “FireTV.com.” As a result, if FireTV.com is typed into an Internet browser (Warning: DO NOT try this at work), it redirects to FyreTV.com®. WREAL included in its complaint various examples of consumers identifying the FireTV.com redirect and being confused as to whether WREAL and Amazon had merged. CNBC also ran an article on the day of Amazon’s Fire TV launch entitled “Amazon TV Shares Name with Online Porn Site.” With so much immediate discussion by media and consumers alike, it is arguably difficult for Amazon to deny that confusion was created by the launch of its set-top box with the Fire TV name.
WREAL further contends that Amazon knew that FyreTV® was a registered mark. WREAL submits that had Amazon followed its past practice of registering domain names for major products, as it did for the Kindle, it would have likely attempted to register FireTV.com. Consequently, Amazon would have visited the domain name and seen the redirect. They would also have searched the name on the Trademark Electronic Search System (TESS), finding that when “FireTV” is searched FyreTV® and FyreTV.com® appear – a result I was able to duplicate myself.
How May Amazon Respond?
Amazon may reply that there is a significant difference between the two products, as FyreTV® strictly streams adult entertainment. However, WREAL does state in its complaint that they have no intention of limiting the FyreTV® brand to adult content. Furthermore, CNBC reported that when Fire TV was launched WREAL did not mention its device on its website, and that silence from the corporation had many believing that WREAL had folded. We can possibly speculate that “FyreTV” was not considered to be an active brand, or specifically an available-for-purchase video streaming device, and thus not a problem in Amazon’s eyes.
So who will emerge from the flames victorious? In my opinion, the evidence does seem stacked against Amazon. The clear confusion demonstrated by various consumers and media as soon as Fire TV was launched, along with the apparent lack of due diligence by Amazon in searching “Fire TV” both on the Internet and TESS, leads to my conclusion that Amazon has not responded to the complaint because it is trying to figure out how to put out this fire. We must ask, however, how Amazon’s size and power may influence the outcome of this case. Will Amazon push for a settlement, which the admittedly smaller and less-influential WREAL will be drawn to? What does that mean for cases between larger companies infringing on the registered marks of smaller organizations? Can the value of a smaller group’s mark really be protected; can they really win the battle? Or, does the publicity that cases like this bring benefit smaller companies as a way to ensure that grand corporations like Amazon follow the rules? Maybe these questions will be answered as this case progresses, but either way I know I’ll be tuned into this channel to see which “fire” is put out.
Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.