The Ninth Circuit's Likelihood of Confusion

As a Northern Californian who lives in the East, I have a split personality: as a matter of personal feelings, Northern California will always be home. (Southern California is alien territory best appreciated by its own denizens). But professionally, I have only practiced on the East Coast and am continually baffled by the Ninth Circuit’s substantial similarity copyright decisions, going back to the root of all evil, the 1977 Sid & Marty Krofft case. (562 F.2d 1157). The whole extrinsic-intrinsic stuff makes no sense to me, and to make matters worse, the circuit has developed lists of factors to be considered depending on the subject matter involved. I wish the court of appeals would ditch the whole unwieldy and unhelpful edifice and start from scratch with a much simpler approach, preferably that followed in the Second Circuit.

The Ninth Circuit’s most recent case, Jada Toys, Inc. v. Mattel, Inc., 2007 WL 2199286 (9th Cir. Aug. 2, 2007), poses a different problem, confusion between trademark and copyright law. The opinion, by a district judge, does a good of framing the facts, the parties’ contentions, and the decision below:


Jada Toys is a California corporation that specializes in the distribution and sale of miniature diecast toy cars, trucks, and other vehicles. Generally, these vehicles are scale model replicas of actual vehicles. From 2001 to 2004, Jada produced a line of toy trucks called HOT RIGZ. In 2001, Jada filed an application for a trademark registration of the term HOT RIGZ with the United States Patent and Trademark Office (“U.S.PTO”). The trademark was issued by and registered with the U.S. PTO in 2002, though Jada used its HOT RIGZ trademark in advertising material and on its toys and their packaging from 2001 to 2004. Mattel is also a toy company. Among its many lines of toys is its familiar HOT WHEELS miniature vehicle brand, which it has been marketing since 1968. The HOT WHEELS vehicle line includes small scale versions of big rig trucks. Since 1968, Mattel has employed the use of a flame logo (“68 logo”) to identify the HOT WHEELS brand. In 1982 Mattel developed a complementary version of the 68 logo, this one incorporating the Mattel seal, to be used in conjunction with the sale of its product. Mattel owns U.S. federal trademark registrations for both of these flame logos. On April 20, 2004, Jada filed an action against Mattel, asserting claims for trademark infringement, false designation of origin, and unfair competition. Jada's allegations, however, were not related to its HOT RIGZ mark; rather, Jada claimed that Mattel's advertising and sale of its OLD SCHOOL and NEW SCHOOL lines infringed on Jada's use of its registered trademark OLD SKOOL. Mattel asserted various affirmative defenses and counterclaims. Among the counterclaims were allegations that Jada's HOT RIGZ mark infringed on Mattel's HOT WHEELS mark. Mattel also counterclaimed for copyright infringement and dilution. Ultimately, each party submitted motions for summary judgment. On March 15, 2005, the district court issued its ruling regarding the parties' motions for summary judgment. As to Jada's claims relating to Mattel's OLD SCHOOL and NEW SCHOOL marks, the court granted summary judgment in Mattel's favor. And as to Mattel's counterclaims for infringement, copyright, and dilution, relating to Jada's use of its HOT RIGZ logo, the court granted summary judgment in Jada's favor. In granting summary judgment as to Mattel's infringement claims, the district court relied on the dissimilarity of the marks alone to determine that no likelihood of confusion existed. Mattel timely appealed the grant of summary judgment as to its counterclaims.
To recap: each side lost on its claims. Mattel appealed; the Ninth Circuit reversed. On the trademark claim, the court of appeals expressed concern over use of dissimilarities alone to support a finding of no likelihood of confusion. This concern inexplicably spilled over into the court’s copyright analysis:


This Court employs a two-part test to determine whether two works are substantially similar. The first part, the extrinsic test, focuses on the similarity of the ideas expressed. Sid & Marty Krofft Television Prod., Inc. v. McDonalds Corp., 562 F.2d 1157, 1164 (9th Cir.1977). The extrinsic test is objective and involves an analysis of “the type of artwork at issue, the materials used, the subject matter, and the setting for the subject.” Id. The second part, the intrinsic test, focuses on the similarity in expression. Id. This test is subjective and thus turns on the impressions of the average reasonable observer. Id. In this case, the district court concluded that because the marks at issue were not similar, the extrinsic test was not met. It also found that since the marks were not similar, no reasonable person could believe that they conveyed a similar expression and therefore the intrinsic test had not been satisfied. We hold, however, that a reasonable trier of fact could conclude that the marks are objectively similar. It could also be argued that, given the similarity of the marks, a reasonable observer of the two marks could understand the HOT RIGZ mark to be expressing the sense that the product sold under that mark is, essentially, a HOT WHEELS product. Therefore, the district court's entry of summary judgment in favor of Jada as to Mattel's copyright claim is reversed.
The part that is objectionable is this, “a reasonable observer of the two marks could understand the HOT RIGZ mark to be expressing the sense that the product sold under that mark is, essentially, a HOT WHEELS product.” That’s a trademark analysis, not a copyright analysis. One can only hope that such confusion of two very different rights and infringement of them is limited to the facts of this particular case.