## Facts

- Epix, Inc. used the EPIX mark beginning in 1984, obtained a federal registration in 1990 for electronic imaging-related goods, and later achieved incontestable status.
- Michael R. Tchou, acting through Interstellar Starship Services, Ltd. (ISS), registered the domain name epix.com in 1995, stating he chose it for its meaning “electronic pictures,” and at a time when Epix lacked an internet presence.
- Epix marketed relatively expensive imaging hardware/software to sophisticated consumers (e.g., universities and research laboratories) and operated online at epixinc.com.
- ISS previously used epix.com to promote Tchou’s imaging software and consulting services, but by the time of trial used the site only for theater-related content connected to an Oregon theater troupe.
- After a bench trial, the district court found past infringement based on ISS’s earlier imaging-related use, but found no infringement from ISS’s current theater-focused use.
- The district court also found no cybersquatting under the Anticybersquatting Consumer Protection Act (ACPA) due to good-faith registration, rejected dilution, enjoined future infringing uses, and allowed ISS to retain ownership of epix.com.
- Epix appealed, seeking findings of initial interest confusion, ACPA liability, dilution, and broader injunctive relief including transfer of the domain name.

## Issues

1. Whether ISS’s current use of epix.com created actionable initial interest confusion and a likelihood of confusion with Epix’s EPIX mark.
2. Whether ISS’s registration and use of epix.com constituted cybersquatting under the ACPA, including whether ISS acted with bad-faith intent to profit.
3. Whether ISS’s use of epix.com diluted the EPIX mark under federal dilution standards.
4. Whether the district court abused its discretion by enjoining future infringement without ordering transfer of the domain name or expressly extending the injunction to successors and assigns.

## Decision

- The Ninth Circuit affirmed the district court’s judgment in full.
- The court upheld the finding that ISS’s current theater-related use did not create a likelihood of confusion, including under an initial interest confusion theory.
- The court upheld the finding that ISS did not violate the ACPA because Epix failed to prove bad-faith intent to profit from the mark.
- The court upheld the rejection of dilution based on the lack of proof that ISS’s current use blurred or tarnished the mark.
- The court affirmed the tailored injunction barring future infringing uses without requiring transfer of epix.com and without separately enumerating successors and assigns.

## Legal Principles

- Initial interest confusion is not a per se rule triggered by mark similarity and shared use of the internet; it remains part of a context-dependent likelihood-of-confusion analysis.
- Likelihood of confusion determinations may account for present, real-world website content and the nature of the parties’ goods and channels of trade, including the sophistication of consumers and the purchasing context.
- ACPA liability requires proof of “bad-faith intent to profit”; good-faith registration and use, including registration timing and a non-parasitic rationale for the domain name, can defeat the claim.
- Federal dilution requires evidence that the challenged use lessens the mark’s capacity to identify and distinguish the trademark holder’s goods (e.g., by blurring or tarnishment); limited overlap and weak proof of harm support denial.
- Injunctive relief in trademark/domain disputes is equitable and may be limited to preventing future infringement; courts are not required to order domain transfer where a narrower injunction adequately protects trademark rights.

## Conclusion

The Ninth Circuit sustained a fact-driven judgment that ISS’s current, non-competing website content did not confuse consumers, that ISS lacked ACPA bad faith, and that dilution was unproven, and it approved an injunction limited to preventing future infringing uses without compelling transfer of the domain name.


Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002)