Duck, duck, noninfringement: TM and (c) claims over distinct duck designs fail

Great American Duck Races Inc. v. Kangaroo Mf’g Inc., No. CV-17-00212-PHX-ROS (D. Ariz. Jul. 19, 2019)

Despite some bad reasoning equating intent to compete with (relevant) intent to confuse, the court rejects bad copyright and trademark claims based on the copying of the idea of an inflatable duck wearing sunglasses.  GAME’s duck was designed “from scratch,” but was similar to Sesame Street’s Rubber Ducky, except with sunglasses. GAME has a trademark registration for an image of the duck for various goods, and a copyright registration for the inflatable itself.  Defendant Ligeri and his companies “would identify successful products on Amazon and then make slightly different versions of those products without apparent concern about possible intellectual property violations.”  Nonetheless, defendants did use a designer, and the design wasn’t a slavish copy.  Setting aside size variations and the functional ring (D) v. flat flotation surface (P), Kangaroo’s version had a closed orange bill, not an open red bill, and its wings and tail were drawn on instead of inflatable. Like GAME’s duck, Kangaroo’s duck has a small crest on its head and is wearing sunglasses, but Kangaroo’s duck’s sunglasses weren’t completely black or inflatable, and they didn’t have a double bridge like GAME’s.

 

Derby Duck box

Derby Duck

Registered design mark

Kangaroo duck box

Kangaroo duck

Copyright: there was copying, but not unlawful appropriation. Under Satava v. Lowry, copyright can’t “prevent others from depicting yellow ducks, with a bill, wings, a tail, and a crest on the head. All of those attributes are found on ducks in nature.” In addition, the general design and color of an inflatable rubber duck was a “stock or standard feature[].” The sunglasses were the key protectable element of the Derby Duck, but didn’t extend to the idea of a duck wearing sunglasses, only to the particular expression. As a result, the court had to figure out “whether the two expressions of the sunglasses-on-a-duck idea are so similar that ‘the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them.’” They would not; instead, there were “a few striking differences,” including differences in the bridge, the color, and the sculptural features (inflatable versus painted on).  GAME could thus not pass the extrinsic test for similarity in protected expression; even if it could, the ducks lacked substantial similarity in total concept and feel and thus GAME couldn’t satisfy the intrinsic test.

Trademark: sloppier analysis, which is perhaps understandable given the conclusion of no liability, but the court doesn’t delineate what is actually protectable about Kangaroo’s marks and thus proceeds as if its registration might give it trade dress protection for the overall shape of the ducks, without requiring it to show either nonfunctionality or secondary meaning of the trade dress (as opposed to the registered specific image). This is a classic example of abusing a registration beyond its scope, because the US has a bad concept of the appropriate scope of a registration.  A registration for a specific two-dimensional image of a product shouldn’t be equated to trade dress rights in the product itself.  The cases tend to reject liability when fully litigated—there’s the Mardi Gras bead dog case and the Rock + Roll Hall of Fame case, for example—but this case went through summary judgment, and that’s a waste of resources and a deterrent to legitimate competition.

Anyhow, the issue was “whether a reasonable consumer seeing Kangaroo’s marks would mistakenly conclude GAME had some association with that product,” and the court cites but neither explicitly endorses nor rejects GAME’s argument that Kangaroo’s “marks” were pictures of Kangaroo’s own duck and the duck itself.  Too bad.

Conceptual strength: the court does get that there’s a problem here.  It focuses on the registered image of the duck, deeming it “descriptive” or “generic.” “The trademarks are just stylized versions of the underlying products. A consumer does not need to exercise any imagination to associate the mark with GAME’s products.” There was “relatively little” conceptual strength, and the evidence of secondary meaning was limited to use of the marks in advertising and substantial sales, resulting in “limited” commercial strength.  Overall favored Kangaroo.

Relatedness of goods: neutral, because much depends on what the Amazon listings for the products said, as in Network Automation, but GAME didn’t preserve or submit the listings. The boxes clearly identified each company, but “there is insufficient evidence to determine whether the manner in which the products were presented or advertised would have caused consumers to assume there was an association between GAME and Kangaroo.”

Similarity of marks: GAME argued that the relevant comparison was between the pictures on Kangaroo’s box to GAME’s marks, but there were distinct differences in the ducks wearing glasses.  “Some” similarity, slightly favoring GAME.  [If the court had been more rigorous about the scope of the image registration, it seems likely to have found less similarity.]

Actual confusion: no evidence, favoring Kangaroo.

Marketing channels: not very important when both parties use the internet, or more specifically Amazon.

Degree of care: low, favoring GAME.

Intent: Sigh.  There was “no question that Kangaroo made some visible changes to its duck in an apparent attempt to avoid copyright infringement. In the end, however, Kangaroo knowingly used marks similar to GAME’s in an attempt to capitalize on what was already popular. This factor supports GAME.”  So here the court, conflicting with its analysis of strength of the mark, presumes that GAME’s rights extend to the product design—but doesn’t ask whether there’s nonfunctionality or secondary meaning—by equating making a competing product, and showing that product on the box, with “use” of a “mark.”  I see nothing on the box that looks like GAME’s registered mark.

Likelihood of expansion: irrelevant.

Though counting factors favored GAME, that’s not how this game is played.  Evaluating the factors as

a whole, and in light of all the other evidence, GAME didn’t show likely confusion as opposed to possible confusion.

GAME also argued unfair competition under Arizona law, apparently finding Kangaroo’s copying “unfair.”  As Mark Lemley says, lots of businesses firmly believe that the phrase “unfair competition” is redundant.  But Arizona looks for consumer deception as the core of unfair competition. “Though there was evidence of Kangaroo’s clear intent to capitalize on the popularity of the Derby Duck, the Court would need evidence of how the public was being cheated or deceived to conclude Kangaroo’s competitive behavior was improper.” It was possible that the original Amazon listing of Kangaroo’s float was “designed … to capitalize on GAME’s own success,” which might entitle GAME to relief, if, for example, the listing “made representations that the two floats were manufactured by the same company or if the Amazon listing contained pictures of the Derby Duck but Kangaroo then delivered its own duck.”