Ornamental use of pun is aesthetically functional (defendant-side functionality in the wild!)

LTTB LLC v. Redbubble, Inc., No.  18-cv-00509-RS (N.D. Cal. Jul. 12, 2019)

Defendant-side functionality! This is a concept I’ve been arguing exists for years (see, e.g., the result in Louboutin v. YSL), and now it is no longer immanent in the caselaw but fully arrived!

Here, it serves another way to protect noncommercial speech despite the Honey Badger case:

while a source-identifying trademark may embody a pun, no one can claim exclusive rights to use the pun merely by printing it on t-shirts, other ‘[w]earable garments and clothing,” “[p]aper for wrapping and packaging,” or “tote bags,” or similar products and calling it a “trademark.” Even if a trademark embodying a pun is otherwise enforceable where there is a likelihood of source confusion, the trademark holder cannot prevent others from using the pun in contexts that do not imply source.

Plaintiff’s applications to register “LETTUCE TURNIP THE BEET” were initially rejected as decorative/ornamental when they showed the phrase “emblazoned” on products, but allowed after it submitted specimens using on product labels and hang tabs—the application was rejected when plaintiff first suggested the phrase merely would be emblazoned across those products. The registrations became incontestable.  Although the court didn’t apply file wrapper estoppel, it did use the PTO’s reasoning to bolster its conclusion that plaintiff’s enforceable marks didn’t entitle it to preclude others from making the joke on t-shirts or elsewhere.

Anyway, defendant lets artists upload designs to be printed on products such as apparel, phone cases, stickers, bags, wall art and so on.  Products featuring the phrase “Lettuce Turnip the Beet” or similar phrases allegedly have been offered for sale on the Redbubble site.  Its no-secondary-liability argument might otherwise have created a triable issue of fact, the aesthetic functionality of the phrase when used as a phrase demanded summary judgment for Redbubble.

Redbubble’s defense was either about the rule that “decorative or ornamental” features are not subject to trademark protection or about the exclusion for “aesthetic functionality.” “Case law has not always clearly distinguished between the two concepts, which undoubtedly are related and overlap.” However characterized, it succeeded.  Despite Au-tomotive Gold, aesthetic functionality still exists in the 9^th Circuit, and here no reasonable trier of fact “could conclude that consumers seek to purchase products based on LTTB’s reputation—whether ‘genuine’ LTTB products or those produced by any competitors. Rather, as LTTB’s evidence and argument make clear, consumers are interested in purchasing products displaying the pun.”  [So this isn’t completely limited to defendant-side functionality. To the extent that LTTB’s claimed rights are based on exclusive use of the pun as the decoration for clothes, de facto secondary meaning can’t protect that. Although the term isn’t generic, declaring it aesthetically functional produces the same result for what could in other circumstances (if used on clothes tags) be an arbitrary designation.]

 

Screenshot from plaintiff's Etsy store, showing P's own variable, ornamental uses

LTTB argued that this argument “would permit a t-shirt bearing a copy or near copy of the Nike swoosh logo or some other registered design mark,” so the fact of ornamentation can’t produce functionality. But there’s a key difference: “Nike, Volkswagen, and Audi all developed their trademark rights by selling goods under those brand names, and have at least arguably gained brand loyalty for those products, as opposed to mere consumer interest in the specific names, independent of the reputation the companies developed when selling the products.”  International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980), also supported Redbubble.  And Redbubble’s case was stronger because LTTB wasn’t a group with which consumers could express allegiance by buying products displaying the pun. “The products are simply the vehicle for distributing the claimed ‘trademark,’ rather than the other way around, where a trademark is used to identify the source of the goods.”  Using an already-established mark to sell t-shirts would have been a different case.

None of this was to say that LTTB’s registered marks were “per se” invalid (though it sure sounds like a holding of limited secondary meaning).  [Side note: secondary meaning isn’t necessary for an arbitrary mark, though one might reasonably argue that should change if secondary meaning failed to develop over a long time despite the theoretical arbitrariness of the term.  But what ornamentality/decorativeness really does is provide a way to manage the presumptive source-indicating function of arbitrary/fanciful symbols: in fact there are lots of ways to use many such signals that don’t almost automatically signal trademark function.  Ornamentality is our way of managing that reality for supposedly “inherently distinctive” words or designs.]  Rather, the decorativeness of the use prevented LTTB from showing a likelihood of confusion as to source, “where the mere use of the pun on the face of various products cannot be source-identifying.”  “LTTB may not … recover for alleged trademark infringement based on any competitors’ use of the very kind of designs that the PTO found not to be eligible for trademark protection.”  As in Job’s Daughters, a use could be confusing if it led consumers to assume source/sponsorship, but there was no sufficient evidence “that any purchaser of allegedly infringing items inferred from use of the pun that the product was produced, sponsored, or endorsed by any particular person or entity, such as LTTB.”

Incontestability didn’t matter because this wasn’t a finding of invalidity of the marks, but a limit on the scope of LTTB’s rights, and because incontestability doesn’t bar a functionality challenge.