trademark beats copyright at surviving motion to dismiss

Gorski v. Gymboree Corp., 2014 WL 3533324,  No. 14-CV-01314 (N.D. Cal. July 16, 2014)
Via Eric Goldman.  Gorski and Gymboree both make shirts that feature the phrase “lettuce turnip the beet.” Gorski sued for copyright and trademark infringement; Gorski owns trademark registrations for LETTUCE TURNIP THE BEET for “[p]aper for wrapping and packing”; “tote bags” and “[w]earable garments and clothing, namely, shirts”; and “[o]n-line retail store services featuring clothing, accessories and art.”  She alleged that her “light grey heather shirt for children is widely considered one of the most popular children’s products ever pinned on Pinterest under their ‘Popular’ heading and has over 120,000 product views on Etsy making it one of the most popular products ever on Etsy.”  In addition, she alleged that “the overall arrangement, shapes, typefaces, sizes and placement of the design elements” of Gymboree’s shirt were “substantially similar” to Gorski’s design.

Gorski Design

Gymboree design
Copyright: This can be resolved on a motion to dismiss in appropriate cases.  The court agreed with Gymboree’s argument that Gorski failed to plead substantial similarity by identifying any protected elements that were copied.  Short phrases can’t be copyrighted, even if they’re distinctively arranged or printed.  The claim about similarity in “overall arrangement, shapes, typefaces, sizes  and  placement  of  the  design  elements” merely amounted to arrangements of the short phrase “lettuce turnip the beet.”  That wasn’t protectable.  Because all the alleged similarities related to the arrangement of a short phrase, she didn’t allege copying of anything protected by copyright.  But the court granted leave to amend, because she might be able to allege substantial similarities to other protectable elements. 
Query: what other protectable elements?  I don’t know why the court invited repleading.  As my 7-year-old daughter said on looking at the shirts, the only similarity is the unprotectable words.  Her immediate reaction: “they’re different colors, the letter shapes are different, and the words are different sizes.”  My 8-year-old son concurred.  What possible additional facts could change what the shirts look like?
Gorski’s trademark claim fared much better. On the motion to dismiss, Gymboree only argued fair use.  Descriptive fair use requires a defendant to show that it’s not using the term as a mark, it’s using it fairly and in good faith, and it’s using it only to describe its own goods and services.  Plus, the court continued, the Ninth Circuit has held that “the classic fair use defense is not available if there is a likelihood of customer confusion as to the origin of the product.”  (Citing Transgo, Inc. v. Ajac Transmission Parts Corp., 911 F.2d 363, 365 n. 2 (9th Cir. 1990); Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240, 1248 (9th Cir. 1984).)
Note: Whoa, Nelly!  The Supreme Court subsequently informed the 9th Circuit that it was wrong about that, and although the 9th Circuit essentially defied the Court on remand by reinstating confusion as an important consideration and making it impossible to win a descriptive fair use defense on summary judgment, I would at least have expected a citation to KP Permanent instead of to these overruled precedents.
The court then found that descriptive fair use didn’t apply as a matter of law such that the complaint had to be dismissed.  The complaint alleged that Gymboree had appropriated the cachet of Gorski’s products and created confusion, so that’s that.  Gorski alleged that consumers had contacted Gorski, showing actual confusion—though ultimately we need to know the content of the communications; if consumers are contacting Gorski saying “Gymboree is selling shirts with the same phrase,” that doesn’t evidence confusion at all.  And Gorski alleged that consumers associate the phrase only with Gorski.  Note: had the court properly applied KP Permanent, I suspect that the complaint still survives the motion to dismiss because trademark infringement doctrine is just so broad and forgiving.  But this analysis is quite plainly incomplete under the actual governing law, which does require toleration of some confusion in order to protect descriptive uses; pleading confusion by itself shouldn’t be enough, though pleading bad faith might be.
The court proceeded to discuss nominative fair use, which just isn’t an applicable theory here—I don’t see how one could plausibly argue that Gymboree’s use was a reference to Gorski’s mark.  Unfortunately, the court said more than that.  It defined the third element of nominative fair use as requiring Gymboree to show that its use of the phrase “makes no suggestion of sponsorship or endorsement by Gorski,” and of course Gorski’s pleading of confusion trumped that on a motion to dismiss.  (Citing an increasingly appalling list of precedents: Estate of Fuller v. Maxfield &Oberton  Holdings,  LLC, 906 F.Supp.2d 997, 1012 (N.D.Cal. 2012) (holding that an allegation of likely confusion over endorsement was sufficient to deny a motion to dismiss; product name); Yeager v. Cingular Wireless LLC, 627 F.Supp.2d 1170, 1178 (E.D.Cal. 2008) (same; mention of plaintiff in press release); Films of Distinction, Inc. v. Allegro Film Productions, Inc., 12 F.Supp.2d 1068, 1076 (C.D.Cal. 1998) (same, use of “The Crime Channel” in a film as the name of a channel a character watches (!)).
This is why this common restatement of the third element of nominative fair use, eliminating the requirement of some affirmative act indicating endorsement other than the use of the mark itself, is so destructive.  New Kids identifies the third element as “the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement.”  If the use of the mark itself can prevent the third element from kicking in, nominative fair use collapses on itself, as many scholars have noted.  I part ways with them insofar as I think that nominative fair use need not collapse on itself, but I can’t deny that lower courts keep inventing new ways to muck it up. Tabaritells us that you can’t use the multifactor test to figure out whether there’s likely confusion over source or sponsorship.  If the courts also abandon the distinction between explicit sponsorship claims (“authorized biography”) and implicit ones, then guessing is the best they can do, and it’s not likely to go that well.
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