Duck, duck, noninfringement: TM and (c) claims over distinct duck designs fail

Great American Duck Races Inc. v. Kangaroo Mf’g Inc., No.
CV-17-00212-PHX-ROS (D. Ariz. Jul. 19, 2019)
Despite some bad reasoning equating intent to compete with
(relevant) intent to confuse, the court rejects bad copyright and trademark
claims based on the copying of the idea of an inflatable duck wearing
sunglasses.  GAME’s duck was designed
“from scratch,” but was similar to Sesame Street’s Rubber Ducky, except with
sunglasses. GAME has a trademark registration for an image of the duck for
various goods, and a copyright registration for the inflatable itself.  Defendant Ligeri and his companies “would identify
successful products on Amazon and then make slightly different versions of
those products without apparent concern about possible intellectual property
violations.”  Nonetheless, defendants did
use a designer, and the design wasn’t a slavish copy.  Setting aside size variations and the
functional ring (D) v. flat flotation surface (P), Kangaroo’s version had a
closed orange bill, not an open red bill, and its wings and tail were drawn on
instead of inflatable. Like GAME’s duck, Kangaroo’s duck has a small crest on
its head and is wearing sunglasses, but Kangaroo’s duck’s sunglasses weren’t
completely black or inflatable, and they didn’t have a double bridge like
GAME’s.
 

Derby Duck box

Derby Duck

Registered design mark

Kangaroo duck box

Kangaroo duck

Copyright: there was copying, but not unlawful
appropriation. Under Satava v. Lowry, copyright can’t “prevent others from depicting yellow ducks, with a bill,
wings, a tail, and a crest on the head. All of those attributes are found on
ducks in nature.” In addition, the general design and color of an inflatable
rubber duck was a “stock or standard feature[].” The sunglasses were the key
protectable element of the Derby Duck, but didn’t extend to the idea of a duck wearing
sunglasses, only to the particular expression. As a result, the court had to
figure out “whether the two expressions of the sunglasses-on-a-duck idea are so
similar that ‘the ordinary observer, unless he set out to detect the
disparities, would be disposed to overlook them.’” They would not; instead,
there were “a few striking differences,” including differences in the bridge,
the color, and the sculptural features (inflatable versus painted on).  GAME could thus not pass the extrinsic test
for similarity in protected expression; even if it could, the ducks lacked
substantial similarity in total concept and feel and thus GAME couldn’t satisfy
the intrinsic test.
Trademark: sloppier analysis, which is perhaps
understandable given the conclusion of no liability, but the court doesn’t
delineate what is actually protectable about Kangaroo’s marks and thus proceeds
as if its registration might give it trade dress protection for the overall
shape of the ducks, without requiring it to show either nonfunctionality or
secondary meaning of the trade dress (as opposed to the registered specific
image). This is a classic example of abusing a registration beyond its scope,
because the US has a bad concept of the appropriate scope of a
registration.  A registration for a
specific two-dimensional image of a product shouldn’t be equated to trade dress
rights in the product itself.  The cases
tend to reject liability when fully litigated—there’s the Mardi
Gras bead dog case
and the Rock +
Roll Hall of Fame
case, for example—but this case went through summary
judgment, and that’s a waste of resources and a deterrent to legitimate
competition.
Anyhow, the issue was “whether a reasonable consumer seeing
Kangaroo’s marks would mistakenly conclude GAME had some association with that
product,” and the court cites but neither explicitly endorses nor rejects
GAME’s argument that Kangaroo’s “marks” were pictures of Kangaroo’s own duck
and the duck itself.  Too bad.
Conceptual strength: the court does get that there’s
a problem here.  It focuses on the
registered image of the duck, deeming it “descriptive” or “generic.” “The
trademarks are just stylized versions of the underlying products. A consumer
does not need to exercise any imagination to associate the mark with GAME’s
products.” There was “relatively little” conceptual strength, and the evidence
of secondary meaning was limited to use of the marks in advertising and
substantial sales, resulting in “limited” commercial strength.  Overall favored Kangaroo.
Relatedness of goods: neutral, because much depends on what
the Amazon listings for the products said, as in Network Automation, but
GAME didn’t preserve or submit the listings. The boxes clearly identified each
company, but “there is insufficient evidence to determine whether the manner in
which the products were presented or advertised would have caused consumers to
assume there was an association between GAME and Kangaroo.”
Similarity of marks: GAME argued that the relevant
comparison was between the pictures on Kangaroo’s box to GAME’s marks, but
there were distinct differences in the ducks wearing glasses.  “Some” similarity, slightly favoring GAME.  [If the court had been more rigorous about
the scope of the image registration, it seems likely to have found less
similarity.]
Actual confusion: no evidence, favoring Kangaroo.
Marketing channels: not very important when both parties use
the internet, or more specifically Amazon.
Degree of care: low, favoring GAME.
Intent: Sigh.  There
was “no question that Kangaroo made some visible changes to its duck in an
apparent attempt to avoid copyright infringement. In the end, however, Kangaroo
knowingly used marks similar to GAME’s in an attempt to capitalize on what was
already popular. This factor supports GAME.” 
So here the court, conflicting with its analysis of strength of the
mark, presumes that GAME’s rights extend to the product design—but doesn’t ask
whether there’s nonfunctionality or secondary meaning—by equating making a
competing product, and showing that product on the box, with “use” of a
“mark.”  I see nothing on the box that
looks like GAME’s registered mark.
Likelihood of expansion: irrelevant.
Though counting factors favored GAME, that’s not how this
game is played.  Evaluating the factors
as
a whole, and in light of all the other evidence, GAME didn’t
show likely confusion as opposed to possible confusion.
GAME also argued unfair competition under Arizona law,
apparently finding Kangaroo’s copying “unfair.” 
As Mark Lemley says, lots of businesses firmly believe that the phrase
“unfair competition” is redundant.  But
Arizona looks for consumer deception as the core of unfair competition. “Though
there was evidence of Kangaroo’s clear intent to capitalize on the popularity
of the Derby Duck, the Court would need evidence of how the public was being
cheated or deceived to conclude Kangaroo’s competitive behavior was improper.”
It was possible that the original Amazon listing of Kangaroo’s float was “designed
… to capitalize on GAME’s own success,” which might entitle GAME to relief, if,
for example, the listing “made representations that the two floats were
manufactured by the same company or if the Amazon listing contained pictures of
the Derby Duck but Kangaroo then delivered its own duck.”

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