What’s in A Name? The Trademark Drama of Hulu and Humu
Hulu, a well-known streaming service for many different TV shows and movies, is being sued by a company named Humu.1 Humu, created by three ex-Google employees, is trying to use machine learning and apply it to human talent development to improve the workspace experience.2 Hulu claims there is a likelihood of confusion between Humu and Hulu because both start with the letter ‘H’, are four letter words with only two syllables that rhyme, and both have the letter ‘U’ used twice.3 Superficially, the only difference between the marks is the third letter is ‘M’ and not ‘L’.4 Hulu therefore claims that there is a likelihood of confusion between the two marks.5 Hulu sent a cease and desist letter to Humu, and the company responded by suing Hulu in the Northern District of California.6
“Likelihood of confusion” is the test used to determine if trademark infringement has occurred.7 Every circuit has its own version of the test.8 The Ninth Circuit uses the Sleekcraft test, which is comprised of eight factors: “(1) strength of the mark, (2) proximity of the goods, (3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) type of goods and the degree of care likely to be exercised by the purchaser, (7) defendant’s intent in selecting the mark, and (8) likelihood of expansion of the product lines.”9 These factors, however, have a different level of importance that vary on a case-by-case basis.10
For cases utilizing the Internet, three of the factors are considered paramount: the similarity of the marks, the proximity of the goods or services, and the marketing channels used (the Internet).11 If these three factors show likelihood of confusion, then the other five factors will need to show that it is unlikely to be confusing to consumers; however, if these three factors do not show likelihood of confusion, then the other five factors will need to be considered before a court can properly render a decision. 12
For similarities of the marks, three subfactors define the analysis: “(1) similarity is best evaluated by appearance, sound, and meaning; (2) marks should be considered in their entirety and as they appear in the marketplace; and (3) similarities weigh more heavily than differences.”13 For the first subfactor, the words. Humu and Hulu look different. “M” is a different letter than “L,” and the letters look very different as well. Additionally, while they may rhyme, they ultimately sound different. Hulu is a famous company, so many people would probably be able to realize the difference in sound. Finally, the meanings between the words are different: Hulu means ‘holder of precious things’ and ‘gourd’ in mandarin, while Humu is short for “‘humuhumunukunuku apua’a,’ the Hawaiian name for a triggerfish.”14 For the second subfactor, it is arguable they look alike, as the only difference is one letter. However, as stated above, an “M” looks very different from an “L.” For the third subfactor, there appears to be more differences than similarities, though ultimately that will be for the court to decide.
The second important factor, the proximity of the goods or services, seems to weigh in favor of Humu: Hulu is a streaming service, while Humu is selling technology for improving workspace experience. There is not much overlap so there does not appear to be much danger that consumers will think there is a commonality between the service and the service-provider.15 Finally, the third important factor, the use of the Internet as a marketing channel, seems to weigh in favor of Hulu, as both websites appear to use online resources for their needs.
The other five Sleekcraft factors must also be considered. For strength of the marks, Hulu could be classified as an arbitrary or fanciful mark, since it is a word from a different language that means something unrelated to a streaming service.16 This type of mark has the strongest protection, since the mark’s level of recognizability can be attributed to the holder of the trademark.17 Evidence of actual confusion might be hard to find since Humu is still a new company. The sixth factor appears to weigh in favor of Humu, as each company would be attracting different clientele; Humu would attract individuals interested in a streaming service, while Humu advertises its product to businesses interested in motivating their employees.18
For the seventh factor, Humu has stated that the creators chose the word Humu because the three founders became friends in Hawaii and were inspired by the Hawaiian name for a triggerfish.19 Finally, it is hard to predict the likelihood of expansion of Humu’s product lines, since they are still a new company. However, they seem to be focusing on selling a program to improve workspace experience, so it would be hard to see a shift into streaming TV shows and movies.
This is still a new case and therefore has not had a ruling by the court. However, it is interesting to see the evolution of trademark law as a result of the Internet. It will be fascinating to see the court’s opinion on this name game.
Eriq Gardner, Ex-Google Employees Sue Hulu for Attempting to Stop “Humu”, HOLLYWOOD REPORTER (Jan. 21, 2019), https://www.hollywoodreporter.com/thr-esq/google-employees-sue-hulu-attempting-stop-humu-1177692. [https://perma.cc/4ADH-BEQX]↩
Complaint at 1, 2, Humu, Inc. v. Hulu, LLC, No. 3:19-CV-327 (N. Dist. Cal. filed Jan 18, 2019).↩
Gilbert T. Smolenski & Matthew M. Welch, The Call for Consistency – The Case for the Federal Circuit to Have Exclusive Jurisdiction for Trademark Matters, 19 U.C. Davis Bus. L.J. 96, 105 (2018).↩
Id. at 107; AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).↩
Brookfield Communs., Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999).↩
Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 942 (9th Cir. 2002).↩
Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1127-28 (9th Cir. 2014).↩
Gardner, supra note 1.↩
See Sleekcraft Boats, 599 F.2d at 350 (stating that “the danger presented is that the public will mistakenly assume there is an association between the producers of the related goods, though no such association exists”).↩
See Ann Bartow, Likelihood of Confusion, 41 San Diego L. Rev. 721, 741-42 (2004) (defining arbitrary and fanciful marks).↩
Nico Savidge, Humu v. Hulu: Trademark to-do leads to new lawsuit, MERCURY NEWS (Jan. 23, 2019), https://www.mercurynews.com/2019/01/23/humu-v-hulu-trademark-to-do-leads-to-new-lawsuit/. [https://perma.cc/DU5K-Y3BQ]↩
Gardner, supra note 1.↩