Happy inauguration day to Redbubble in particular: 9th Cir. affirms functionality in Lettuce Turnip the Beet

LLTB LLC v. Redbubble, Inc., No. 19-16464 (9th Cir. Jan. 20,
2021)

LTTB LLC sells t-shirts and other goods bearing its
registered trademarks, the words and design, “LETTUCE TURNIP THE BEET.”  LTTB sued Redbubble for infringing by selling
products containing the same words and design. The district court granted
summary judgment in favor of Redbubble on grounds of aesthetic functionality/failure
to function. The court of appeals affirmed in a nonprecedential opinion,
holding (contrary to what INTA wanted) that Job’s Daughters is still
good law even though its “broad language was soon clarified and narrowed.”

Anyway, under Au-Tomotive Gold, the symbols here were
functional. Although “the t-shirts, tote bags, and other products bearing the
LTTB mark would still function as t- shirts and tote bags without the mark” and
use of the mark doesn’t alter the cost structure of production or add to the
[physical] quality of the products, but the question of aesthetic functionality
is whether the marks “perform some function such that the exclusive use of the
marks would put competitors at a significant non-reputation-related
disadvantage” (cleaned up).

Without explicitly interpreting what “significant” means
here, the court reasoned: “It cannot be disputed that competitors would be
unable to sell products bearing the phrase if LTTB’s marks were protected.” And
the Ninth Circuit disfavors monopolization of “a design feature which, in
itself and apart from its identification of source, improves the usefulness or
appeal of the object it adorns.” There was no evidence that consumers bought LTTB’s
goods because they identify LTTB as the source, rather than because of the
aesthetic function of the phrase, “LETTUCE TURNIP THE BEET.” LTTB’s evidence of
the popularity of its goods didn’t raise a triable issue on source
identification. Indeed, almost all of LTTB’s products bore the phrase “LETTUCE
TURNIP THE BEET” on them, “indicating that the phrase acts as an aesthetic
design, not as a symbol for the company.” Unlike high fashion brands, LTTB presented
no evidence “that consumers buy the goods because the design associates the
goods with the company LTTB rather than because they want goods bearing the
phrase.” Thus, it didn’t raise an issue of fact on aesthetic functionality.
[Although the court also doesn’t say anything about this, here the fact that no
evidence of secondary meaning was required to register the marks cuts against
LTTB: it was never required to develop such evidence, and the fact that a
symbol could be inherently distinctive if used in the right way doesn’t do
anything to rebut evidence that consumers are looking for the aesthetic effects
of displaying the symbol prominently on goods.]

LTTB’s registrations, and even incontestable registrations,
couldn’t overcome the defenses listed in statute, including “[t]hat the mark is
functional.” “Because, on this record and when used on the allegedly infringing
products that are the subject of LTTB”s complaint, LTTB’s marks are functional,
they are not protectable against any type of allegedly infringing activity.”

So, is the court actually recognizing pure defense-side functionality?
Sort of. Footnote: “[W]e do not hold that LTTB’s marks are per se invalid.”
Instead (?), the uses here—including on Redbubble’s website and in online
advertising—could not be infringing. But also: “Because LTTB’s mark is
functional and therefore not protectable on this record, there is no need to
address the issue of likelihood of confusion.” Nor did the district court err
in not addressing LTTB’s design marks separately; trademark isn’t supposed to
protect originality or creativity, but rather to protect source identification.
“Like the sweater designs in Wal-Mart, LTTB’s marks are primarily
aesthetic on this record, not source-identifying.” [This reiteration of “on
this record” is confusing. Is the court suggesting LTTB can try again if it
develops evidence as to front-of-product uses? Why? While there are a couple of
cases allowing terms that had distinctiveness, then became generic, to reclaim
that earlier distinctiveness, I’m not aware of cases allowing a once-functional
product feature to become nonfunctional.]

The district court also didn’t err in looking at the PTO’s
initial rejection of LTTB’s application on failure to function grounds; TrafFix
looked at the prosecution history of an expired patent in addressing trade dress
functionality.

We end with some vagueness about whether LTTB owns anything:

LTTB’s marks do not function as
trademarks because they are aesthetic only and do not identify the source of
the goods. The allegedly infringing activity does not deceive or mislead
consumers about the source of the goods but copies the designs themselves…. Because
functionality is a defense to the validity of the marks and to LTTB’s exclusive
right to use the marks, the district court properly granted summary judgment to
defendant Redbubble ….

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