Wednesday, October 10, 2007

Ragin' Cajun: court rules against Louisiana's seafood claim

Piazza’s Seafood World, LLC v. Odom, 2007 WL 2874436 (E.D. La.)

Piazza imports seafood and, using the brand names “Cajun Boy” and “Cajun Delight,” sells it mostly to large national distributors, who then sell it to wholesalers and restaurants; a small percentage of Piazza’s seafood is sold to retail customers. Piazza successfully sued to invalidate Louisiana’s Cajun law, which barred labeling food as “Cajun” unless the food was produced, processed, or manufactured in Louisiana, on the ground that the Cajun law violated the First Amendment. Louisiana’s counterclaim under the Lanham Act remained; in this opinion, the court granted judgment in Piazza’s favor.

The state sought to enjoin Piazza from using “Cajun” in trademarks or brand names to market seafood that wasn’t from Louisiana, because Louisiana owns a certification mark in CAJUN. Piazza, unsurprisingly, argued that Louisiana didn’t own the word “Cajun,” that the court’s prior ruling that its use of the term was nondeceptive barred Louisiana’s claim, and that, in any case, barring Piazza from using the term would be unconstitutional under the prior ruling.

The court assumed that Louisiana had a valid unregistered certification mark; for Piazza to use it would be infringing. But Piazza didn’t use the “Certified Cajun-Product of Louisiana” mark. Instead, the state was trying to “commandeer[]” the term “Cajun” to allow itself “exclusive control” over how the term is used. (Comment: Yes, just like Coca-Cola “commandeers” the term Coke such that the competing product Koke must be renamed.) The certification mark is more than the word “Cajun,” and the Lanham Act doesn’t protect that single term. (Paging multi-factor confusion analysis! You’re needed in the seafood aisle!)

It’s not quite clear whether this is a separate rationale, but the court further ruled that there was no deception because Piazza’s product labeling clearly disclosed the products’ true country of origin. (See Piazza’s website emphasizing both the New Orleans and the worldwide aspects of the business, and the Cajun Boy site.) In the picture, you can see “product of USA” in block type. Perhaps that counteracts the deceptive trademark when the country of origin is China; I’m not so sure. Puzzlingly, the court ruled that the fact that Cajun is not “exclusively associated” with seafood, though Louisiana is known for seafood, made this case distinguishable from cases involving certification marks for specific foods (cheese and orange juice).

Louisiana also argued that, even in the absence of infringement, the CAJUN trademarks constituted false designations of origin. The court rejected this claim, again, because the packaging clearly discloses the true origin. Piazza thus received judgment as a matter of law. It would not matter, apparently, were the state prepared to prove that the relevant consumers did not notice the country-of-origin marking.

My take: Piazza successfully used the First Amendment as an end-run around classic principles of trademark infringement – most obviously, that the infringer’s mark need not be identical to the infringed mark, especially if consumers will not encounter them side by side. As geographic indications get more play, and as more defendants realize that mainstream commercial speech doctrine is a lot better for them than the crippled version found in Lanham Act cases, expect more of these cases.

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