Using photos of competitor's product not unfair competition

Trott's Woodproducts, Inc. v. American Cabinet Doors & More, Inc., 2007 WL 625920 (W.D. Ark.)

Consumer sophistication can stave off confusion. Here’s the unusual case where consumer ignorance prevents infringement, because consumers don’t recognize the existence of a mark.

Plaintiff, which does business as Diamond Doors, sued defendants for false advertising, state unfair competition, false designation of origin, and deceptive trade practices, all stemming from defendants’ alleged practice of using photos of Diamond Doors sample cabinet doors in sales brochures. (One of the defendants allegedly took photos, price lists, customer lists, and manufacturing information when she left plaintiff’s employment. Perhaps plaintiff should institute a non-compete agreement with its employees.) Defendants argue that the pictures are simply pictures of generic types and styles of cabinet doors used throughout the industry.

The court rejected plaintiff’s application for a preliminary injunction, finding that consumers were unlikely to recognize the doors, or the photos, as plaintiff’s trademarks, because it would require extreme sophistication to recognize who made a cabinet just by looking at it. There was no false advertising because the court found no likelihood of material deception; plaintiff’s only evidence was that one of its customers received a brochure from defendants, perceived the brochure as containing photos of plaintiff’s products, and called plaintiffs about it.

The court may have gotten caught up in trademark and overlooked the basic passing off that was allegedly taking place – even if no trademark exists in the configuration of the doors, the representation that these doors represent defendants’ work could be false and misleading, whereas photos of defendant’s exact copies of the doors would be perfectly legitimate. That’s the difference between trademark protection for the doors and general unfair competition protection against passing off.