When is descriptive use not descriptive?

Lettuce Entertain You Enterprises, Inc. v. Leila Sophia AR, LLC, N.D. Ill. (June 8, 2009)

I love this case because it hits one of my fascinations, the overlap between nominative and descriptive fair use. If only I could find a picture of the sign! Watch while a use that is concededly in most any sense not descriptive is, correctly, nonetheless deemed fair use. (Bill McGeveran could use this case to bolster his argument that we’ve put too many bells and whistles on TM fair use doctrine, obsessing over categories rather than over whether liability would make any sense; on the other hand, the court had little trouble sorting this particular case into a reasonably plausible category.)

Lettuce Entertain You (LEYE) owns a number of LETTUCE marks for restaurants and catering services. None of its restaurants uses Lettuce in the name, but it uses various LETTUCE-containing websites, vanity phone numbers, and reward cards. It uses “Lettuce” as a version of “let us” in various ways.

LEYE sued defendants for infringement based on a planned restaurant, Lettuce Mix, and the sign defendants had erected at the planned location. Defendants covered the “Lettuce mix” sign with a banner reading “Let us be!” with the words “Name pending ….” below in a smaller font, with an image of a head of lettuce on either side.

The only issue decided was whether that sign infringed. The court decided this as a descriptive fair use. (Though I think this is a descriptive/nominative use, there is arguably a doctrinal reason to stick with descriptiveness: some of LEYE’s marks are incontestable and nominative fair use is not a specifically listed defense to incontestability; however, courts have used nominative fair use to find no confusion as a matter of law, so that’s not a huge barrier to applying the doctrine to incontestable marks.)

To win, defendants had to show that (1) they weren’t using the phrase as a service mark, (2) they were using the phrase in good faith merely to describe their services, and (3) the phrase was in fact descriptive of their services. Put like that, the test sounds difficult for defendants here to meet, especially (3) but the court read the defense functionally.

First, defendants weren’t using LEYE’s mark as a service mark. This assessment depends on both intent and effect (except as we’re about to see there’s no real assessment of effect; as Mark McKenna has pointed out, there’s a choice here between an infinite regress to confusion analysis and a judicially imposed rule that something is not serving as a mark).

“Plainly,” they aren’t using the banner as a service mark. “Let us be” and its associated images doesn’t identify defendants as the source of services “or the uniqueness of a restaurant.” Instead, the banner communicates that LEYE is trying to stop defendants from using their choice of restaurant name. LEYE conceded that the wordplay was an intentional effort to draw attention to the controversy, but considered it free riding on LEYE’s marks because potential customers would “inevitably stop in to learn the story of the dispute.” (Note: I do not think “free riding” means what they think it means.) The court rejected the argument that an intent to profit indirectly from drawing attention to the lawsuit—even if that’s what was going on—constituted use as a service mark. Plenty of non-mark uses can be profit-oriented and attention-getting. One 7^th Circuit case held that the use of “I LOVE YOU” by a radio station, though profit-oriented, was used to describe the station’s qualities (apparently the station loved its city very much) and not as a mark.

So: “By ‘Let us be!’ Tehrani means, ‘Hey, Lettuce Entertain You, leave us alone!’ Furthermore, by parodying LEYE’s regular use of LETTUCE as a pun for ‘let us,’ Tehrani also expresses his opinion that LEYE’s enforcement of its mark is an unjustified attempt to appropriate a generic term.”

On to good faith: this requires a subjective inquiry, but the parties agree on defendants’ subjective purpose: “not to describe his restaurant but to express protest of LEYE’s aggressive action against Tehrani’s intended use of the word ‘Lettuce’ as a service mark” (emphasis added). The court didn’t seem to notice that, in context, that sentence could have used a little unpacking; it’s good faith for these purposes, anyway. Aside from that, the combination of images and text “must be descriptive of restaurant services.” Again, sounds a little difficult for this particular use. But descriptive terms impart information directly about the services. The question is whether the use “conveys a meaningful message” other than the secondary meaning claimed by the plaintiff. If so, the plaintiff can’t appropriate a common phrase and prevent others from using it descriptively.

Put that way, the banner is descriptive—not exactly of restaurant services, but of this particular conflict. “Let us be” may evoke LEYE, but it also immediately conveys a message to LEYE. “Even if potential customers viewing the banner do not know or learn of the dispute, it is clear at first glance that the banner is being used to communicate a message of protest.”

The banner may stay; the parties may continue to litigate the restaurant name.

Bonus picture: another nominative/descriptive "fair and balanced" use. I have a bunch of these I use in class.