On the one hand, we generally do not like to discuss fashion industry cases, on the other hand, the 9th 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 9th Circuit. We in the 9th 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 9th 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.
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