Tuesday, August 07, 2007

The 6th Circuit's Likelihood of Confusion

Yesterday's posting was on a 9th circuit case that used a trademark analysis to dismiss a copyright claim. The 6th circuit recently did the reverse, finding that a trademark claim should be dismissed because it "paralleled" a copyright claim that was found to be without merit. The opinion in Tiseo Architects, Inc. v. B&B Pools Service & Supply Co., 2007 WL 2141375 (6th Cir. July 27, 2007). Here's the court's discussion in its entirety:

Tiseo Architects' Lanham Act claim fails because it parallels its copyright claim. “Where a plaintiff's Lanham Act claim parallels his copyright infringement claim, a finding of no substantial similarity on the copyright claim precludes the Lanham Act claim.” Stromback, 384 F.3 d at 300. Like the plaintiff in Stromback, Tiseo Architects “makes no attempt to distinguish his Lanham Act claim from his copyright infringement claim or to explain how there could be a likelihood of confusion when the two works are not substantially similar.” Id. Accordingly, the district court correctly denied this claim as well.
The Stromback opinion is Stromback v. New Line Cinema, 384 F.3d 283, 300 (6th Cir. 2004). Stromback in turn cited among other cases Litchfield v. Spielberg, 736 F.2d 1352, 1358 (9th Cir. 1994). Litchfield dealt with reverse passing off. A reverse passing off claim rests on an assertion that defendant's product is falsely stated to arise from defendant when in truth is was copied from plaintiff. The claim will fail if the two products are deemed not be confusingly similar. To me it doesn't follow as a matter of law, that where two products are found for copyright purposes not to be substantially similar, that they cannot be confusingly similar for trademark purposes. For example there could be similarities in unprotectible material, like color, that would nevertheless lead to confusion among customers. In place of pat rules, ad hoc adjudication is the surest way to get things right.

6 comments:

ctroncoso08 said...

As I alluded to in my comment to your previous posting, I think that the issue of overlapping IP protections is coming to a head.

Clearly this opinion missed the mark. There is no doubt that an item unprotectible under copyright law may be protected under the Lanham Act, so to say a TM claim inherently fails because it parallels the copyright claim seems unjust.
I think that more troubling however, are the implications of findings for both copyright and trademark infringement for the same "item." Overlapping protection disrupts the balance underlying copyright law, in effect giving a plaintiff the benefits of both copyright’s limited monopoly and trademark’s perpetual protection. While courts have been hesitant to afford an expired copyright trademark protection (Dastar v. 20th Century Fox), there has been little guidance in the area of concurrent protection, and what will happen at the expiration of the copyright. My fear is that in addition to seeking yet further extensions to the terms of copyrights, savvy copyright owners are seeking concurrent trademark protection for their copyrights, in effect giving them a perpetual monopoly. Although Mickey Mouse is set to enter the public domain in 2019, his status as a concurrent trademark will in effect preclude this public appropriation.

Rebecca Tushnet said...

I certainly enjoy parsing copyright/trademark differences, and yet there can be a logic to blanket rules. If the base rate of legitimate claims is low enough, then ad hoc adjudication (which of course has its own error rate) can be worse in accuracy than a blanket rule even though the blanket rule predictably denies some valid claims. In situations where the TM claim is for less traditional matter like product design trade dress -- the kind of situations where courts have most often seen TM/copyright overlap -- the increasingly stringent standards for trade dress protection mean that the base rate of valid claims is likely to be low. The example you offer -- color -- is a good one, because color is descriptive at best, and often may even be functional. So while I agree that more analysis should have been nice, I'm not opposed to at least heightening the standards when a plaintiff seems to be trying to get from copyright and TM together what it couldn't get from either alone.

William Patry said...

Thanks for your thoughtful comments, Rebecca. I paired today's and yesterday's postings because they represent flip sides of the the same phenomenon, eliding different sets of rules (or standards). The flip side of the Sixth Circuit opinion itself though is this: would the 6th circuit say that if plaintiff had proved copyright infringement that a reverse passing off claim had been established as a matter of law?

Rebecca Tushnet said...

Fair points, though Dastar answers your question for us (because courts have assumed that state law unfair competition claims work the same way as the Lanham Act, regardless of the underlying statutory language). And there's a certain attractiveness to having a non-reciprocal rule, if your theory is that copyright requires that certain things be free for anyone to copy. Given how expansive trademark's definition of source confusion is, it is important to limit trademark's scope to prevent it from taking away what copyright gives to the public, whereas it's not so important to police the copyright/defamation boundary, if there even is one.

Anonymous said...

small correction -- Note that the Ninth Circuit used a trademark analysis to sustain, i.e., to reverse the dismissal of, a copyright claim.

William Patry said...

Thanks, Anonymous, good point.