Permanent Litigation (KP, that is)

Amazing. Some lawyers have all the luck -- clients who actually want to litigate their trademark disputes up and down and all around the federal court system. I'm talking about the KP Permanent Make-Up case, which is back at the 9th Circuit after a remand from the Supreme Court.

In this round, the 9th Circuit re-analyzed the district court's summary judgment in favor of accused infringer KP. While the 9th Circuit had no trouble identifying lots of fact issues that required trial, the most important aspect of the 9th Circuit's decision is how it assessed the scope of enforceable rights that the plaintiff owned through its incontestable MICRO COLORS & design registration (which it called a "logo mark"). The 9th Circuit stated several times that the mark owner's rights from such a registration cover not only the whole design (including the words), but also the words "MICRO COLORS" alone, which the court said was appropriate because the words were, in its view, "most salient feature of the logo mark." Accordingly, the 9th Circuit wouldn't let the accused infringer challenge the words MICRO COLORS alone as merely descriptive and lacking secondary meaning.

This broad view that the incontestability of a design mark extends to the words alone if they are the most salient feature of the design mark is, in my view, more controversial than the 9th Circuit lets on. But this is certainly a weapon to remember in future cases.

Pre-emption: Copyright Act v. Right of Publicity

The 7th Circuit recently held that the Copyright Act does not pre-empt state law claims that use of a person's photograph violates the person's right of publicity. According to the court in Toney v. L'Oreal USA, Inc., No. 03-2184 (7th Cir. May 6, 2005), the Copyright Act protects works of authorship in a fixed medium, whereas the state right of publicity protects a person's "persona," which is not so fixed. The court believed the two rights were different enough to escape preemption.

Mi jury demand es tu jury demand

The Ninth Circuit recently held that a plaintiff who didn't demand a jury trial on his trademark and trade dress infringement claims was nevertheless entitled to a jury trial on those claims under the defendant's demand for a jury trial on its counterclaims for business disparagement and false advertising, where the counterclaims were based on the alleged falsity of plaintiff's statements to customers that the defendant was infringing plaintiff's TM and trade dress rights. Whew! Long sentence! The court thought the claims and counterclaims were related enough that the plaintiff could have reasonably relied on the defendant's demand. California Scents v. Surco Prods., Inc., No. 03-56116 (May 6, 2005).

9th Circuit Botches "Relatedness of Goods" Inquiry?

The Ninth Circuit recently decided a reverse confusion case against the plaintiff. The decision in Surfvivor Media, Inc. v. Survivor Productions, No. 02-17064 (May 4, 2005) is not particularly interesting, however, except in its assessment of the "relatedness of the goods" factor in the likelihood of confusion analysis. In that paragraph, the court didn't assess whether the goods of the parties overlap, are complementary, or are otherwise related. Characterizing its task as to determine whether customers "could reasonably conclude that the products came from the same source," the court said there was no evidence to suggest that customers would "conclude that the products came from the same source," pointing as well to the near total absence of actual confusion evidence. See id. at 4851. This seems wrong to me in that it both (a) suggests that survey or other actual confusion evidence is required as to what is supposed, in my view, to be a different factor, and (b) collapses the ultimate likelihood of confusion inquiry into the relatedness of the goods factor.

Nevertheless, this precedent may come in handy when representing accused infringers.

4th Circuit on proving up copyright infringer's profits

Maybe because it was the day before taxes were due, but I missed the 4th Circuit's April 14 decision in Bonner v. Dawson, No. 04-1440. In Bonner, the court held that the plaintiff must do more than simply point to the infringer's TOTAL profit stream, and then sit back. Instead, the plaintiff has the initial burden to point to a particular profit stream and prove "some causal link between the infringement and the particular profit stream" he is seeking to recoup. Slip op. at 5-6. In Bonner, the plaintiff architect satisfied the initial burden by pointing to the income the building owner derived from leases in the infringing building.

Despite satisfying his initial burden, however, the plaintiff couldn't recover because the defendant had presented adequate evidence that the rent money was the result of factors other than the copyrighted design elements. Id. at 7.