foot fault: overlapping TM and copyright claims in packaging

Profoot, Inc. v. MSD Consumer Care, Inc., 2012 WL 1231984 (D.N.J.)

The parties compete in the market for foot-care products.  Profoot makes the Triad orthotic shoe insole, and sued MSD alleging that its Dr. Scholl’s Tri-Comfort orthotic insole violated Profoot’s trademarks.  MSD counterclaimed for trademark and copyright infringement based on Triad’s packaging.

On the copyright claim, Profoot argued that MSD failed to plead that Profoot copied original elements of the Tri-Comfort packaging.  But the court found that all that was required was pleading ownership of a valid copyright and unauthorized copying of original elements, and MSD satisfied this standard by specifically describing the combination of original elements of the work Profoot allegedly copied: “a series of three circles connected by short diagonal lines arranged in a downward slanting direction from the upper left of the insole to the middle of the insole, and a number in each circle, with the upper-left circle numbered 1, the middle circle numbered 2, and the lower circle numbered 3; and … each circle on the New Triad Packaging identifies a feature of the insole, as follows: Circle 1 states ‘cradles balls of feet,’ Circle 2 states ‘supports arches,’ and Circle 3 states ‘cushions heels.’”  The requisite level of creativity is low, and the recited features “the combination of which MSD has copyrighted [can this be true, or does MSD have a copyright for the package?], plausibly establish that MSD will be able to satisfy this low bar.”  Talk about your microwork!

Profoot next argued that MSD’s trade dress infringement claims should be dismissed as duplicative of the copyright claims, and that MSD failed to allege protectable trade dress.  But Dastar didn’t stand for the proposition that any trade dress case is preempted  when copyright provides an adequate remedy. “It stands only for the proposition that the Lanham Act cannot be interpreted to permit a backdoor into establishing a copyright infringement claim.”  (This is why Mark McKenna considers Dastar potentially easy to evade.)  Copyright preemption doesn’t apply to other federal IP rights, and the additional element of likely confusion saved the state law claims, except for the unjust enrichment claim.

MSD successfully pled nonfunctionality, secondary meaning through millions spent on ads, and likely confusion.  Even if the elements are generic, the combination might be protectable.