false designation claim doesn’t require distinctiveness, court wrongly holds

Simpson Strong-Tie Company Inc. v. MiTek Inc., 2021 WL
1253803, No. 20-cv-06957-VKD (N.D. Cal. Apr. 5, 2021)

The plaintiff benefits from very generous treatment of its false
designation and copyright claims, in the process stripping false designation of anything other than a prohibition on copying/vitiating both Wal-Mart and Dastar.

Simpson sells structural connectors for use in building
construction. Each product has an individual alphanumeric product name including
a “part name” consisting of a letter or combination of letters designating the
product line, and a “model number” consisting of additional numbers and letters
appended to the part name to distinguish between various models of a particular
part with different attributes. Its Wood Construction Connectors Catalog
contains an alphabetical product index and various charts specifying various
attributes of Simpson’s products, listed by product names. It registered
copyirghts in its catalog and supplements.

Simpson alleged that MiTek’s products were “knock-offs or
close copies” of Simpson’s products that are not equivalent to or substitutes
for Simpson’s products due to the patented nature of some of Simpson’s
technology. MiTek’s 2020 Catalog allegedly uses Simpson product names as a
basis for MiTek’s own product names and includes an alphabetical reference
index using Simpson product names as reference numbers, deceiving consumers
into believing that the companies’ products are equivalent and interchangeable
when they are not, or that MiTek’s products are actually Simpson’s products.

MiTek argued that a product name cannot be proven true or
false, but the court agreed that Simpson had sufficiently pled that placing the
parties’ products next to each other in this way created a false impression
that the parties’ products are “equivalent or otherwise interchangeable.”

Passing off: MiTek argued that Simpson didn’t plead inherent
or acquired distinctiveness, and Simpson responded that the Lanham Act protects
even generic marks from “false designation of origin.” [You know it’s going to
be bad when a court says “generic marks,” a noncategory.] The court agreed! It
was enough to allege that (1) MiTek’s use of Simpson product names as MiTek’s
own product names falsely identifies MiTek products as Simpson products, and
(2) MiTek’s use of Simpson’s product names as reference numbers for MiTek’s own
products in MiTek sales and marketing literature creates a false impression
that MiTek’s products are in some way connected to or associated with Simpson. Comment: this is entirely junk reasoning, since there can be no false identification without distinctiveness (that is, identification)–the genericity cases require “de facto secondary meaning” in the absence of legally protectable secondary meaning, and they also limit the available remedies to clear disclosure. 

Copyright infringement: MiTek argued that the portions of
the catalog it allegedly copied—Simpson product names and the alphabetical
index of Simpson products—were not protectable. Although originality is a
question of fact, sometimes you can just look at the accused and accusing work.
Though there were “serious questions” about the originality of the product
names and alphabetical index, it wanted a fuller record before saying that the names
and alphabetical index weren’t sufficiently original as a matter of law.

The state law claims also survived; as a competitor, Simpson
didn’t have to plead its own reliance under the UCL.

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