                        NOT RECOMMENDED FOR PUBLICATION
                               File Name: 17a0229n.06

                                           No. 16-5582

                         UNITED STATES COURT OF APPEALS
                              FOR THE SIXTH CIRCUIT

OAKLAWN JOCKEY CLUB, INC.; TAMPA BAY               )                            FILED
DOWNS, INC.; CHURCHILL DOWNS INC.; NEW             )                       Apr 19, 2017
YORK RACING ASSOC., INC.; NEW JERSEY               )                  DEBORAH S. HUNT, Clerk
THOROUGHBRED          HORSEMEN’S   ASSOC.;         )
GULFSTREAM PARK RACING ASSOC., INC.;               )
LOS ANGELES TURF CLUB, INC.; OREGON                )
RACING, INC.; LAUREL RACING ASSOC., INC.;          )         ON APPEAL FROM THE
PACIFIC RACING          ASSOC.; MARYLAND           )         UNITED STATES DISTRICT
JOCKEY CLUB OF BALTIMORE CITY, INC.,               )         COURT FOR THE WESTERN
     Plaintiffs-Appellants,                        )         DISTRICT OF KENTUCKY
                                                   )
v.                                                 )
KENTUCKY DOWNS, LLC                  and    EXACTA )
SYSTEMS, LLC,                                      )
     Defendants-Appellees.                         )
                                                   )

BEFORE: GIBBONS, SUTTON, and WHITE, Circuit Judges.

       HELENE N. WHITE, Circuit Judge. Plaintiffs, owners of horse-racing venues across

the United States (the “Track Owners”), appeal the district court’s dismissal of their action for

trademark infringement. Because Plaintiffs failed to adequately plead that Defendants’ use of

Plaintiffs’ trademarks was likely to cause consumer confusion, we AFFIRM.

                                           I. Background

       In 2010, the Kentucky Horse Racing Commission amended its regulations to permit

gambling on historical horse races.1 The regulations require that, after bets are placed, “the



       1
           Historical horse-race betting was developed to allow customers to gamble on horse
racing even when no live races are being run. Customers receive anonymized information about
the historical horses, handicap the race, and place their bets. At oral argument, it was also
No. 16-5582, Oaklawn Jockey Club, Inc., et al. v. Kentucky Downs, LLC, et al.


terminal shall display a video replay of the race, or a portion thereof, and the official results of

the race. The identity of the race shall be revealed to the patron after the patron has placed his or

her wager.” 810 KAR 1:011 § 3(7)(f). In 2013, Defendant Exacta Systems, then named Encore

Gaming, developed an historical horse-race gambling platform (the “System”). On April 2,

2015, Defendant Kentucky Downs began using the System at its track.

       The Track Owners have common-law and federally registered trademarks for the names

of their racetracks. Many of the historical races utilized in the System were run at the Track

Owners’ venues. The System functions as follows. Customers are shown information about an

historical race chosen randomly. The information is presented anonymously—horses, jockeys,

the venue, and date are not identified and customers do not know which historical race they are

betting on. After customers finalize their wagers, the System, as required by the Kentucky

regulations, shows a “video replay” of the historic race. The replay is not an actual replay of the

historical race. Rather, it is computer-generated, generic, and lasts for only a few seconds; it

shows only the order of finish and does not attempt to visually recreate the racetrack that

originally hosted the race. During the replay, the System displays the following identification

information to substantiate the results of the race:

       Location: NAME OF TRACK
       Date:
       Race Number:
       ID:

The Track Owners contend that this brief display of their trademarks is likely to confuse

consumers into believing that they are the source of the video recreation and endorse its

accuracy.


represented that there is an “automatic” feature that skips the handicapping stage and operates
similarly to a slot machine.


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No. 16-5582, Oaklawn Jockey Club, Inc., et al. v. Kentucky Downs, LLC, et al.


       The only other challenged use of the trademarks arises from Exacta’s advertising

materials. The advertising brochure includes a screenshot of a video replay. The screenshot in

the brochure includes the track names of Mountaineer Casino Racetrack & Resort, Rockingham

Park, and Turf Paradise. However, the owners of these tracks are not parties to this suit. There

is no mention of any of the trademarks in the actual text of the brochure. The brochure states

that “[t]he Encore RBG System and its individual games have successfully undergone the

rigorous testing of Gaming Laboratories International (GLI), the gold standard in technical

review and authorization of wagering software and hardware.” R. 20-7, PID 153. It also

includes a large and colorful image of a checkmark next to the text “Gaming Labs Certified,”

and frequently references Encore trademarks and technology throughout the brochure.

       On October 7, 2015, the Track Owners instituted this action against Kentucky Downs and

Exacta seeking injunctive relief, damages, and disgorgement of profits. After the Track Owners

moved for a preliminary injunction, Kentucky Downs and Exacta moved for dismissal of the

case pursuant to Federal Rule of Civil Procedure 12(b)(6). Finding Defendants’ use of the

trademarks to be a non-trademark use, the district court granted the motion to dismiss. The

district court alternatively found that even if there was a trademark use, dismissal was proper

because Defendants were entitled to a fair-use defense as a matter of law.

       The Track Owners appeal, arguing that: (1) Defendants’ use of the trademarks is a

trademark use that is likely to cause confusion, and, further, there are, at minimum, questions of

fact in that regard that render dismissal on the pleadings inappropriate; (2) Defendants are not

entitled to a fair-use defense; and (3) their amended complaint properly stated a claim for unfair

competition.




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No. 16-5582, Oaklawn Jockey Club, Inc., et al. v. Kentucky Downs, LLC, et al.


                                             II. Analysis

                                       A. Standard of Review

       Dismissals for failure to state a claim upon which relief can be granted are reviewed de

novo. Lambert v. Hartman, 517 F.3d 433, 438-39 (6th Cir. 2008). “When deciding such a

motion, we must construe the complaint in the light most favorable to the plaintiff and must

accept all of the factual allegations contained in the complaint as true.” In re NM Holdings Co.,

LLC, 622 F.3d 613, 618 (6th Cir. 2010). “The factual allegations, assumed to be true, must do

more than create speculation or suspicion of a legally cognizable cause of action; they must show

entitlement to relief.” League of United Latin Am. Citizens v. Bredesen, 500 F.3d 523, 527 (6th

Cir. 2007) (emphasis in original). This standard does “not require heightened fact pleading of

specifics, but only enough facts to state a claim to relief that is plausible on its face.” Bell Atl.

Corp. v. Twombly, 550 U.S. 544, 570 (2007).

                              B. Whether there was a trademark use

       The Lanham Act defines “trademark” as “any word, name, symbol, or device . . . used by

a person . . . to identify and distinguish his or her goods, including a unique product, from those

manufactured or sold by others and to indicate the source of the goods, even if that source is

unknown.” 15 U.S.C. § 1127. In order to state a claim of trademark infringement under the

Lanham Act, a plaintiff must allege that (1) it owns the registered trademark; (2) the defendant

used the mark in commerce; and (3) the use was likely to cause confusion or mistake. 15 U.S.C.

§ 1114(1). There is no dispute the Track Owners own the trademarks and that Defendants used

the trademarks in commerce; the sole issue is whether Defendants’ use was likely to cause

confusion.

       The “touchstone of liability [for trademark infringement] is whether the defendant’s use

of the disputed mark is likely to cause confusion among consumers regarding the origin of the
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No. 16-5582, Oaklawn Jockey Club, Inc., et al. v. Kentucky Downs, LLC, et al.


goods offered by the parties.” Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music

Ctr., 109 F.3d 275, 280 (6th Cir. 1997). “To frame it another way, the ultimate question is

whether relevant consumers are likely to believe that the products or services offered by the

parties are affiliated in some way.” Champions Golf Club, Inc. v. The Champions Golf Club,

Inc., 78 F.3d 1111, 1116 (6th Cir. 1996) (internal quotation marks omitted). “When the mark is

used in a way that does not deceive the public we see no such sanctity in the word as to prevent

its being used to tell the truth.”     Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924).

“Trademark law’s likelihood-of-confusion requirement . . . is designed to promote informational

integrity in the marketplace. By ensuring that consumers are not confused about what they are

buying, trademark law allows them to allocate their capital efficiently to the brands that they find

most deserving.” Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494, 512

(6th Cir. 2013).

       Generally, we evaluate the likelihood of confusion through an eight-factor inquiry.2 See

Daddy’s Junky Music Stores, Inc., 109 F.3d at 280. Before employing this test, however, we ask

whether Defendants are using Plaintiffs’ trademarks to identify the source of Defendants’

product. Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 610 (6th Cir. 2009). “If defendants are

only using [the] trademark in a ‘non-trademark’ way—that is, in a way that does not identify the

source of a product—then trademark infringement and false designation of origin laws do not

apply,” Interactive Prods. Corp. v. a2z Mobile Office Sols., Inc., 326 F.3d 687, 695 (6th Cir.

2003), and it is unnecessary to consider the eight-factor test. Here, we must determine whether

       2
          The factors considered by the court include: (1) the strength of the senior mark; (2) the
relatedness of the goods or services; (3) the similarity of the marks; (4) evidence of actual
confusion; (5) the marketing channels used; (6) the likely degree of purchaser care; (7) the intent
of the defendant in selecting the mark; and (8) the likelihood of expansion of the product lines.
Daddy’s Junky Music Stores, Inc., 109 F.3d at 280.


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No. 16-5582, Oaklawn Jockey Club, Inc., et al. v. Kentucky Downs, LLC, et al.


Defendants’ use of Plaintiffs’ trademarks in the video recreations of the historic horse races

constitutes a “trademark use.”

        Our inquiry focuses on “whether a consumer is likely to notice [the plaintiff’s trademark]

. . . and then think that the [defendant’s product] may be produced by the same company[.]” Id.

at 696 (finding that the presence of the plaintiff’s trademark in a URL path for the defendant’s

product would not create a likelihood of confusion and was not a trademark use). This court’s

decision in Hensley Manufacturing is particularly instructive. There, we acknowledged that the

likelihood of confusion is generally a question of fact that is inappropriate to resolve at the

motion-to-dismiss stage.     Hensley Mfg., 579 F.3d at 613.          Nevertheless, we affirmed the

dismissal of the suit because although the defendant’s advertising materials used the plaintiff’s

trademark, the defendant did not use the trademark to identify the source of its products or to

suggest an association between the defendant and the plaintiff. Id. at 611. Because there was no

likelihood of consumer confusion regarding whether the plaintiff trademark owner was the

source of the defendant’s products, we held that the defendant’s use of the trademark was a

permissible non-trademark use. We concluded that “[the plaintiff] contends that ‘facts may exist

that establish a level of consumer confusion[.]’ . . . But mere speculation is insufficient; it was

[the plaintiff’s] burden to allege those facts, if they indeed exist, in the first instance.” Id. at 613

(emphasis in original).

        The Track Owners argue that Defendants’ display of their trademarks constitutes a

trademark use because it confuses consumers into believing that the Track Owners provided or

verified the video replays. We disagree. The System does not display live feeds of races being

run at the Track Owners’ venues, nor does it show actual video replays of previous races.

The System merely shows brief, computer-generated generic recreations of the finish lines of



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No. 16-5582, Oaklawn Jockey Club, Inc., et al. v. Kentucky Downs, LLC, et al.


historical races and states the locations at which the races were run. These depictions are

sufficiently different from the Track Owners’ product—live horse racing at their venues—that

the minimal use of the trademarks, preceded by the word “Location,” would not confuse

consumers into believing the videos were provided by Plaintiffs. The Track Owners attempt to

analogize their trademarks to that of technology giant Apple Inc. They argue that “[j]ust as . . . a

computer may be an Apple® computer, so too can a horse race be, for example, an Oaklawn®

horse race or a Churchill Downs® horse race.” Appellant Br. at 13. This analogy may be apt in

certain circumstances; for instance, deciding where to watch a live horse race or which live-

broadcast race to watch may be similar to deciding which brand of computer to purchase. Here,

however, the fact that a race occurred at Oaklawn or Churchill Downs is relevant only as a

factual matter—it is used so consumers can substantiate the race’s result, not to promote the

quality of Exacta’s product.

       The Track Owners’ assertion that their trademarks are used “to substantiate or legitimize

the video” has some merit. Appellant Br. at 5. However, they substantiate the video only in the

sense that they provide consumers with the requisite details to verify the video game’s accuracy.

If the System displayed inaccurate results, it is unlikely that a wagerer would file a complaint

with the relevant Track Owner under the belief that the Track Owner was the source of the

videogaming product or the inaccurate information. Rather, a customer would likely contact one

of the parties actively representing the accuracy of the results: Exacta, Kentucky Downs, or the

Kentucky Horse Racing Commission.             The term “Location” preceding the trademarks

sufficiently explains to consumers that the trademarks are being used in a wholly descriptive

manner and does not cause a likelihood of confusion as to the source of the video. The fact that




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No. 16-5582, Oaklawn Jockey Club, Inc., et al. v. Kentucky Downs, LLC, et al.


the replay is entirely generic and does not visually depict the Track Owners’ facilities further

supports this conclusion.

       Additionally, Exacta’s advertising materials do not mention the Track Owners at all; the

only display of specific track names in the advertisement appears in a screenshot of a video

replay, and the track names used are not owned by any Plaintiff. In fact, the brochure highlights

that the System is certified by Gaming Laboratories International, and was “the result of decades

of experience in developing legally compliant products for central determinant gaming markets.”

R. 20-7, PID 156–57. The advertising material thus promotes the System by trading on the

goodwill of Gaming Laboratories International and Exacta itself, rather than that of the Track

Owners.

       The allegations in the amended complaint that Defendants’ use of the trademarks is likely

to cause confusion, and that such confusion has harmed the Track Owners’ businesses and

goodwill “in an amount that cannot be ascertained at this time” are conclusory. R. 20, PID 124.

The amended complaint pleads no facts from which to infer that Defendants are engaging in a

trademark use of Plaintiffs’ trademarks.     “[A] conclusory and ‘formulaic recitation’ of the

elements of a trademark infringement cause of action is insufficient to survive a motion to

dismiss,” Hensley Mfg., 579 F.3d at 611, and thus the claim was properly resolved on

Defendants’ motion to dismiss.

       Because this was a non-trademark use of Plaintiffs’ trademarks, we need not reach the

question whether the fair-use defense applies. Additionally, since “likelihood of confusion is the

essence of an unfair competition claim,” Champions Golf Club, Inc., 78 F.3d at 1123 (internal

quotation marks omitted), and courts “apply the same analysis for Kentucky common law

trademark infringement and unfair competition claims as they do for federal claims of trademark



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No. 16-5582, Oaklawn Jockey Club, Inc., et al. v. Kentucky Downs, LLC, et al.


infringement,” Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 703 F. Supp. 2d 671, 688

n.17 (W.D. Ky. 2010), aff’d, 679 F.3d 410 (6th Cir. 2012), the preceding analysis also forecloses

Plaintiffs’ unfair competition claim.

                                          III. Conclusion

       For these reasons, we AFFIRM the district court’s grant of Defendants’ motion to

dismiss.




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