UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA, CA4, 2010

While furniture designs might be protectible under trademark law using a trade dress theory (Taco Cabana 1992 Supreme Court case) or perhaps as protected design where secondary meaning can be shown (Samara Bros. v. Wal-Mart, 2000 Supreme Court and 4th Circuit Ashley Furniture case), this cases discusses a false designation of origin theory of infringement.   But more interestingly, copyright protection in furniture was found, a bit surprising.  Copyright law protects "original works of authorship".  Most authorship is 2-dimensional, i.e. written or drawn works, but copyright extends to certain visual works of art that are 3-dimensional.  Copyright does not protect useful articles of manufacture.  These are covered with design patents.  Most furniture is primarily useful.  However, art can exist in furniture designs (as it does in sculpture) and, according to this case, is copyrightable if originality exists.  However, the artistic aspects must be "conceptually separable" from utilitarian aspects, relying on the 1954 Supreme Court case of Mazer v. Stein.  The court looked for compilations of decorative elements to support copyright and found them in various shells, leaves, columns, finials, rosettes and other carvings in the furniture, describing these features as aesthetic decorative elements, not intertwined with the function of the furniture and capable of existing independently.  The court then found infringement because substantial similarity existed in the works.  The court also found false designation of origin under trademark law by finding that consumers were misled.  The case originated in North Carolina, a furniture manufacturing state, having a Uniform Deceptive Trade Practices Act.  The court found violations of this state law.
    For manufacturers of furniture having decorative ornamentation, the case shows that attempting copyright registrations for furniture is a worthwhile effort.  The cost of registration is low and a federal action for copyright infringement may not be brought without a registration.

Georgia-Pacific Consumer Prods. LP v. Myers Supply, Inc, CA8, Sept. 2010

GP, an industry leader in paper products, distributes paper towel holders and paper towels to commercial enterprises, as does defendant Myers.  Myers placed non-GP paper towels in GP towel holders that were leased to parties against terms and conditions in contracts requiring use of GP paper.   GP claims trademark infringement and tortious interference with business relations for the contract issue.
      In considering trademark infringement from both the standpoint of end user paper towel purchasers (who were not confused) and bathroom towel users (who generally did not care what was in the dispensers), the court went through the classic infringement test involving factors, including market factors.  The testimony from competing survey experts was discounted in favor of testimony by industry insiders who said that stuffing towel holders of one brand with paper products of a different brand was common industry practice that did not cause confusion.  A claim for tortious interference with a business relation (contract between GP and its customer) was dismissed.  Defendant wins.
     Thus, the general rule of substituting a competitor product for a trademarked product in consumer distribution as being trademark infringement was not sustained.    Once again, survey evidence was discounted after a battle of experts.   Both sides spent a lot of time, money and effort in a case that should have been settled.

FORTUNE DYNAMIC, INC. v. VICTORIA'S SECRET STORES BRAND MANAGEMENT, INC., CA9 2010

     On the one hand, we generally do not like to discuss fashion industry cases, on the other hand, the 9^th Circuit is our home, so we need to pay attention here.   One would think that many trademark cases could be decided on summary judgment if underlying factual issues are not significantly in dispute, particularly for non-competing goods.   Wrong, not in the 9^th Circuit.   We in the 9^th Circuit need to have what Dr. Seuss called beetle battles in a puddle muddle, or more properly called jury trials in trademark cases.

    Fortune has substantial sales and advertising of DELICIOUS shoes.  Victoria placed DELICIOUS across the front tank tops associated with a product line associated with a scent.  So we have the identical mark on non-competing goods with no fact dispute on what happened in the market.  Plaintiff’s infringement claim merits the multi-factor market oriented test.  Defendant’s fair use defense merits the multi-factor common usage test.   But do the multi-factor tests need to be weighed and analyzed by a jury because the analysis is heavily fact dependent, or are the factors mostly a matter of law that a court can decide?   The 9^th Circuit found that because the multi-factors depend upon weight given to facts, including expert’s findings, the weight attachment analysis is properly a jury question and the District Court’s grant of summary judgment was reversed and sent back for a jury trial.  

     Our reaction is that it is too bad that trademark cases cannot readily and rapidly be decided on summary judgment where underlying facts, such as sales and goods, are not in dispute.