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.