Friday, August 21, 2020

Tiffany's blues: Costco gets a trial on sales of "Tiffany" rings with Tiffany setting

Tiffany & Co. v. Costco Wholesale Corp., Nos. 17-2798-cv, 19-338, 19-404, 2020 WL 4743020, -- F.3d – (2d Cir. Aug. 17, 2020)

The district court found that Costco’s sales of otherwise unbranded diamond engagement rings with the solitaire setting known as a Tiffany setting, identified by point-of-sale signs containing the word “Tiffany,” constituted infringement and counterfeiting. It awarded Tiffany trebled profits, prejudgment interest, and punitive damages (under NY law) totaling over $21 million. The court of appeals held that summary judgment should not have been granted to Tiffany on liability and remanded for trial, including on Costco’s descriptive fair use defense.

Of note: (1) “Use as a mark” continues its wild and not particularly coherent ride in the US. It’s not a requirement for infringement liability in the Second Circuit but it is, we learn, a requirement for counterfeiting liability. (2) Consistent with, the court isn’t particularly interested in the difference between generic and descriptive—among other things, the court indicates that generic use can constitute descriptive fair use. This makes sense given the justification for the defense (as well as the historic use “common descriptive name” to identify generic terms). (3) But on the flipside, the court seems relatively uninterested in what I would have thought was the very important fact that, according to the facts recited, there is no other name to identify the setting at issue other than “Tiffany setting.” Even so, the court indicates that there could be infringement if consumers are confused. (4) Relatedly, the court’s suggestion at the end of its fair use discussion that the descriptive fair use defense could fail if consumers are confused seems inconsistent with KP Permanent. Descriptive fair use, in its current form, supposedly weighs something else against likely confusion—perhaps whether the competitor is objectively behaving reasonably given the descriptiveness of the term at issue, even if an ordinarily sufficient number of consumers are confused.

Some other relevant facts: Tiffany has a number of relevant trademark registrations. Costco used “Tiffany” only in connection with rings with Tiffany settings; it sold several other styles identified by similar point-of-sale signs, each of which indicated the name of the corresponding ring’s setting style and none of which used the word “Tiffany.” Also:

At some point in the late nineteenth century, Charles Lewis Tiffany developed and sold an engagement ring incorporating a particular style of six-prong diamond setting. Since that time, numerous advertisements, dictionaries, trade publications, and other documents have referred to diamond settings reminiscent of that style as “Tiffany settings.”

Costco used small, white point-of-sale signs that displayed information about the rings “(ostensibly including setting style)” in uniform black text, along with their prices in larger, bold text. “In general format, but not necessarily in size, these signs resembled other point-of-sale signs that identified virtually all items for sale throughout Costco stores.” Costco argued that it copied these signs directly from descriptions supplied by its vendors. Its signs for rings with a Tiffany setting “at times identified the ring setting using the phrases ‘Tiffany setting,’ ‘Tiffany set,’ or ‘Tiffany style,’ and at other times used only the word ‘Tiffany’ for that purpose,” and it “apparently identified other setting styles in a similarly variable manner.” Tiffany purported to challenge only the “Tiffany”-only uses, not those with “style,” “set,” or “setting.”

When Tiffany objected, Costco said that, within one week, it voluntarily removed all uses of the word “Tiffany” from the signs in its jewelry display cases. After Tiffany sued, Costco also sent a letter to all customers who had purchased engagement rings with Tiffany settings to alert them that Tiffany had sued. It explained that Costco’s point-of-sale signs had “used the word ‘Tiffany’ to indicate that [the associated] ring had a Tiffany-style pronged setting,” asserted that Costco “do[es] not believe [its] signs were inaccurate,” and reminded buyers that they could return their rings for a full refund at any time under Costco’s existing return policy. “Approximately 1.3% of customers who received this letter returned their rings to Costco.”

Infringement: A reasonable jury could find for Costco; the district court erred in finding otherwise, based on three factors. [Footnote on the multifactor test: “similarity of marks” is shorthand as defendant need not use a term “as a mark,” that is, “as a symbol to attract public attention,” to infringe.] The summary judgment standard is the same for trademark as for anything else, and also “insofar as the determination of whether one of the Polaroid factors favors one party or another involves a legal judgment—which it often does—we must review that determination de novo.” Thus, “in the majority of cases, we should review de novo both a district court’s determinations as to each Polaroid factor and its ultimate balancing of those factors.”

The key factors: (1) Actual confusion. The district court relied on (a) the deposition testimony of six Costco customers, each of whom alleged that he or she was confused by Costco’s point-of-sale signs and (b) Dr. Jacob Jacoby’s survey, which surveyed 944 people, 606 of whom identified themselves as Costco patrons who thought that “they [or their significant other] would consider buying a diamond engagement ring at Costco that cost at least $2,500.” Of the 606, each of whom was shown a photo of a diamond engagement ring alongside one of Costco’s point-of-sale signs, either in isolation or after seeing photos of other branded items sold by Costco—“more than two out of five ... were likely confused into believing that Tiffany & Co. was the source of the rings.” The district court found this evidence unrebutted, but that was error.

First, Costco argued that 6 out of the 3,349 customers who purchased Tiffany-set rings at Costco during the relevant period was only de minimis evidence, and it submitted a report from its own expert, Dr. Russel S. Winer, criticizing Dr. Jacoby’s survey methodology and results. Costco’s expert opined that Jacoby should have targeted only customers with a “present purchase interest in buying a diamond ring,” and that the survey respondents “could not have been a group whose perceptions provided any valid or reliable predictor of past or future Costco diamond ring purchaser beliefs.” In addition, he contended that the survey was fatally flawed due to “artificial, contrived and biasing” stimuli that “ignore[d] the reality of the customer purchase process.” Rather than showing survey responders a point-of-sale sign as it would have appeared to customers—in a display case surrounded by other rings identified by “other tags ..., some of which would have other setting and style types indicated”—Jacoby’s survey showed them only a single ring and sign in isolation. Indeed, Costco’s expert argued that, though both images (one with only a single point-of-sale sign and the other with a small section of a Costco display case) provided insufficient context, the relatively lower confusion among respondents who saw the latter was “striking.” A jury was entitled to consider “how the percentage [of customers identifying ‘Tiffany’ as a descriptive word rather than a brand] might have changed had the context provided been comparable to the real world experience.”

In addition—comment: highly relevant given the live dispute over the genericness of “Tiffany” for the name of the setting—Costco’s expert contended that the screening questions, which required responders to sort words into brand names and descriptive words, “trained” those responders to “bias[ ] the responses in favor of selecting Tiffany as a brand identifier.” To the extent that this nudged the numbers upward, that’s relevant also to the descriptive fair use defense, as KP Permanent says that the amount of confusion can be relevant.

Costco’s evidence was sufficient to raise a question on actual confusion. The district court had reasoned that Winer’s criticisms went to weight rather than admissibility, and that he didn’t perform his own survey. But the weight to be given to a particular piece of evidence “can be determinative of whether the moving party is entitled to summary judgment or whether a jury could find a material fact favorable to the non-moving party.” A reasonable jury could find that Tiffany failed to present sufficiently persuasive evidence to meet its burden.

(2) Good faith: The question is whether the defendant attempted “to exploit the good will and reputation of a senior user by adopting the mark with the intent to sow confusion between the two companies’ products.” Although “where the allegedly infringing mark is identical to the registered mark, and its use began subsequent to the plaintiff’s trade-mark registration, the defendant must carry the burden of explanation and persuasion,” it is still the case that “[p]rior knowledge of a senior user’s trade mark does not necessarily give rise to an inference of bad faith and may [actually] be consistent with good faith.” Indeed, “the intent to compete by imitating the successful features of another’s product is vastly different from the intent to deceive purchasers as to the source of [one’s own] product.” And “subjective issues such as good faith are singularly inappropriate for determination on summary judgment.”

The district court concluded that “no rational finder of fact could conclude that Costco acted in good faith in adopting the Tiffany mark.” The evidence it cited included an email from a Costco employee indicating that Costco’s jewelry boxes should have a more “Tiffany or upscale look”; the deposition testimony of a Costco inventory control specialist who acknowledged that she took no action in response to two emails ostensibly indicating customer and employee confusion over the source of Costco’s rings; and photographs and emails that suggest efforts by Costco to “copy Tiffany’s designs by making references to Tiffany designs and sharing links to Tiffany’s website [in communications with vendors].”

Both Tiffany and Costco also pointed to a customer email asking whether the word “Tiffany” on the label referred to the “Tiffany setting or Tiffany brand.” It was consistent with good faith that a Costco employee responded to the customer’s email that “[i]t means Tiffany setting.” And importantly, “the jury could also consider this email as evidence of an absence of actual customer confusion,” since inquiries about a potential relationship are not actual confusion and arguably show lack of confusion.

Costco’s contrary evidence indicated that it had never attempted to adopt the Tiffany mark; that its signs actually used the word “Tiffany” as a brand-independent description of a particular style of diamond setting; and that those signs merely reflected information provided by its own suppliers.

The district court thought that no reasonable jury could believe Costco, but the court of appeals disagreed. “We have consistently recognized that intent to copy a product’s useful, nonprotected attributes should not be equated automatically with an intent to deceive. Therefore, Costco’s admitted intent to sell jewelry that looks like Tiffany’s—as opposed to an intent to have its jewelry pass as Tiffany’s—cannot be enough to justify a finding that Costco acted in bad faith.” There was “substantial” evidence favoring Costco, including declarations from a diamond buyer and an assistant general merchandise manager affirming that Costco inventory control personnel took the term “Tiffany” directly from vendor descriptions, that the representatives understood Tiffany as a “generic style name,” and that indeed it was “the only name ... used to denote [that] type of pronged setting.” There was supporting evidence that the term “Tiffany” “has been used as a generic descriptor—both explicitly in conjunction with a word like “setting” and implicitly by itself—in thousands of advertisements, dictionaries, trade publications, and other public documents since the late 1800s.”

Costco also provided evidence that its rings were not branded with Tiffany’s mark (and indeed were branded with its supplier R.B. Diamond’s logo instead); that the rings came in “unbranded containers bearing no resemblance to Tiffany’s distinctive robin’s-egg blue packaging”; that buyers received Costco-branded receipts, appraisal forms, and other sales documents; and that Costco’s return policy permitted customers to return their rings any time after purchase. A reasonable jury could conclude that Costco’s that signs “were the product of a good-faith attempt to communicate to its customers the setting style of certain rings that it sold.” A jury could also infer good faith from Costco’s voluntary cessation and communications to purchasers.

Tiffany’s only rejoinder was that, after Costco voluntarily stopped using the name “Tiffany,” it was still able to describe those rings’ settings as “Solitaire.” “But ‘Solitaire,’ which describes any single gem in a simple setting, is undeniably a less descriptive term than ‘Tiffany,’ which ostensibly describes a specific type of six-prong setting.” If a seller claimed rights in “spoon” for a spoon, we wouldn’t think it sufficed to allow other sellers to advertise their “utensils.”

(3) Consumer sophistication: Although sophistication may usually be proven by direct evidence, including expert opinions or surveys, “in some cases a court is entitled to reach a conclusion about consumer sophistication based solely on the nature of the product or its price.” Jacoby’s study assumed that respondents who said they “would consider buying a diamond engagement ring at Costco” were representative of relevant customers, and Tiffany offered no other evidence. Costco’s expert countered that the purchase of an engagement ring is a “high involvement” transaction, and that actual purchasers—as opposed to those who merely “would consider buying an engagement ring”—possess substantial “subject matter knowledge and familiarity with the relevant vocabulary.”

The district court nevertheless found no factual question, as Costco’s evidence only went to the weight of Tiffany’s evidence and wasn’t affirmative evidence of consumer sophistication. This wrongly shifted the burden to Costco on Tiffany’s motion for summary judgment in its favor, and ignored Costco’s evidence in the form of its expert’s declaration. “A jury could reasonably conclude, by crediting Costco’s evidence and rejecting Tiffany’s, that the relevant population of consumers would be sufficiently attentive and discriminating as to recognize that Tiffany had nothing to do with Costco’s diamond engagement rings.”

Overall, a jury could reasonably conclude that the relevant consumers would know, or learn, that “Tiffany” describes a style of setting not unique to rings manufactured by Tiffany, and recognize that Costco used the term only in that descriptive sense. “Such consumers may also be distinctly capable of recognizing that Costco’s rings were not manufactured by Tiffany—based, for example, on their price, place of purchase, packaging, or paperwork—and consequently be particularly unlikely to be confused by any aspect of Costco’s point-of-sale signs,” especially given that they’d see “a jewelry case full of other unbranded rings, each identified by a sign indicating its own setting type in a similar or identical way.” Although there was clearly a “potential for confusion” inherent in the public association between the Tiffany brand and high-quality engagement rings, that wasn’t enough. In light of Costco’s evidence, as well as “Tiffany’s failure to demonstrate that actual purchasers would not recognize the word ‘Tiffany’ as denoting a commonly used setting style,” summary judgment for Tiffany was improper.

In addition (maybe), Costco was entitled to reach a jury on its descriptive fair use defense “even where the challenged material is likely to cause some confusion.” By “some” the court means “some otherwise actionable,” otherwise KP Permanent would be pointless.

The district court’s good faith finding above led it to reject Costco’s defense on the good faith prong; this was now reversed, and Costco also raised factual issues on the other elements.

(1) Use as a mark: Use as a mark means use “as a symbol to attract public attention,” or “to identify and distinguish ... goods [or services] ... and to indicate [their] source.” Relevant factors include: whether the challenged material appeared on the product “itself, on its packaging, or in any other advertising or promotional materials related to [the] product,” and the degree to which “defendants were trying to create, through repetition ... a[n] association between [themselves] and the [mark].”

A reasonable jury could find no use as a mark. “Tiffany’s own evidence indicates that Costco typically identifies the trademark associated with its branded products as the first word on the product label,” including when it did sell genuine Tiffany merchandise, whereas Costco produced hundreds of examples of signs for its engagement rings, “none of which began with the word ‘Tiffany’ or any other brand name.” Instead, it used the word “in the exact same manner (including typeface, size, color, and relative location on the signs) that it displayed setting information for other engagement rings.” “Tiffany” didn’t appear on any of its rings or ring packaging, and that the rings actually bore the logo of a different manufacturer.

(2) Descriptive use: This includes “words that describe a characteristic of the goods[ ] such as size or quality,” and also “words or images that more abstractly identify some information about the goods in question.” A jury could reasonably credit Costco’s evidence that “Tiffany” has a descriptive meaning independent of Tiffany’s brand and that Costco “intended to and did invoke that meaning when it created its point-of-sale signs.”

Tiffany argued that this result would be absurd because Tiffany is a valid mark for jewelry, and that the court shouldn’t allow “Tiffany” to be a source identifier for rings of other styles, but a descriptive term for rings in the so-called “Tiffany” style. But that’s not absurd; it’s inherent in the idea that a descriptive term can be a trademark. It’s black-letter law that “the public’s right to use descriptive words or images in good faith in their ordinary descriptive sense must prevail over the exclusivity claims of the trademark owner.” It doesn’t matter that Tiffany the company and the Tiffany setting derive their names from a common source; nor did it matter that “Tiffany” didn’t “inherently” describe the setting. For whatever reason, Tiffany didn’t stop “Tiffany setting” from becoming a well-known term [here again I note that the court doesn’t seem particularly concerned that there doesn’t appear to be another name for the setting, which I think is a pretty important issue]. “Indeed, the fact that Tiffany does not here challenge Costco’s use of the phrase ‘Tiffany set’ or ‘Tiffany setting’ may signal an implicit recognition that some uses of its protected mark are indeed descriptive.”

In conclusion, however, the court suggests that the ultimate question is whether the descriptive use worked to avoid confusion—which seems inconsistent with KP Permanent: “To be sure, a reasonable jury could also reject Costco’s evidence and find that customers would not recognize the word ‘Tiffany’ as descriptive even with the context Costco provided” (emphasis added).

The counterfeiting claim also had to be reversed and sent to the jury. In a footnote, the court indicated that if there was no use as a mark, there “likely” could be no counterfeiting even in the presence of infringement liability, since a non-mark use cannot be a “spurious mark.”  “We fail to see how a term can be a ‘fake’ mark if it is not actually used as a mark, or how a term can ‘deceptively suggest an erroneous origin’ if it is not used as a means to indicate origin in the first place,” even though terms not used as marks can still generate confusion as to “affiliation, connection, ... association[,] ... sponsorship or approval,” and thus constitute trademark infringement [court’s rather puzzling citation to §43(a)(1)(B) as a source of trademark infringement liability omitted]. “But because terms not used as marks are not ‘spurious,’ they cannot, as a matter of law, be counterfeit.”

The court declined to reach whether punitive damages under NY law would be available to Tiffany if it prevailed.

Harm story fails where deceived doctors' choices wouldn't have mattered

Quidel Corp. v. Siemens Medical Solutions USA, Inc., No. 16-cv-3059-BAS-AGS, 2020 WL 4747724 (S.D. Cal. Aug. 17, 2020)

Previously, the court ruled that alleged misrepresentations, even if false, didn’t affect testing labs’ choice of which of the parties’ tests to offer, but reserved judgment on whether they affected physicians’ choices. Here, the court grants summary judgment, finding that any falsity could not have caused cognizable harm because of the ways that physicians order tests.

The parties produce competing assays (blood tests) used for measuring thyroid stimulating immunoglobins, which can aid in the detection of Graves’ disease. There are two relevant types of assays available: (1) TSH receptor antibody (TRAb) assays, which detect both stimulating and blocking thyroid immunoglobins (TSI and TBI) and which are therefore apparently less useful and (2) TSI only assays. In Quidel’s opinion, Siemens’s product doesn’t distinguish between stimulating or blocking antibodies, but it was advertised as a TSI only assay.

Physicians order tests from labs for their patients, and labs carry one “TSI only” test at a time. Physicians’ deference to labs, versus picking a lab because it carries a specific test, apparently varies. Labs pay Quidel and Siemens for the tests. If a doctor requests a test from a lab without specifying, and relies instead on the lab to picks, Quidel couldn’t be damaged by the lab’s use of the Siemens test because, as the court already ruled, the lab did not rely on any allegedly false advertising to cause it to carry the Siemens test. If the doctor wanted Quidel’s product but used Siemens’s because the lab only carried the latter, again Quidel wouldn’t have been damaged by the false advertising. And if the doctor would only use Quidel’s product and picks labs with that in mind, again there’s no damage.

Quidel argued that there were doctors who wanted to use Siemens’s product because of its allegedly false advertising, and who thus chose a Siemens-using lab. But the court found that “Quidel cannot claim that its damages are caused by the lab carrying the product which in turn leads to the physicians ordering the product from the lab.” But: if there are doctors who did pick Siemens over Quidel, why wouldn’t that be harm causation from the allegedly false advertising even if the labs were waiting to supply them? The court responds: this is a previously undisclosed damages theory. Quidel originally claimed damages based on the labs’ switching tests, not any doctors. Quidel’s damages expert didn’t  consider the actions of individual physicians in his damages evaluation. This wasn’t a harmless omission, since it deprived Siemens of the chance to develop information about individual doctors. And even if the theory had been adequately disclosed, it didn’t have supporting evidence that doctors were influenced or that labs consider physician preference in determining which test to carry.

Quidel argued that it did have evidence that individual clinicians were misled: Siemens and labs received inquiries from clinicians regarding whether the Siemens product could differentiate between TSI and TBI, and they didn’t disclose the (alleged) truth. But that still wasn’t proof that the doctors acted on what the labs did or didn’t say.  

Quidel’s evidence of its corrective advertising expenses were also insufficient because Quidel had to show it suffered likely injury before it could claim corrective advertising damages. “If the false statements have no material impact, there is nothing to correct.”

Nor would the court presume injury because of the parties’ direct competition plus a likelihood of deception from comparative advertising, as the Ninth Circuit has said can be done. The challenged advertising didn’t compare the parties’ products; instead, it continually contrasted Siemens’ product with TRAb assays. The market isn’t a two-player market. Without comparative advertising, “injury to a particular competitor may be a small fraction of the defendant’s sales, profits, or advertising expenses.” In such cases, “actual evidence of some injury resulting from the deception is an essential element of the plaintiff’s case.” Here, “[i]f TSI only assays are substantially better than TRAb assays, as both parties claim, then Siemens could be making sales to those who used to use TRAb assays but switched over to using [its product].”

No presumption of injury. Also, no injunctive relief: though proof of “injury” wasn’t required for injunctive relief, “irreparable harm” was. And Quidel’s only claimed harm was monetary: lost sales.

Second Circuit finds conflict preemption of publicity rts for unauthorized music sample

Jackson v. Roberts, No. 19-480 (2d Cir. Aug. 19, 2020)

Judge Leval, kindly citing my work as well as that of other scholars, finds a right of publicity claim against a remix album preempted by the Copyright Act/Supremacy Clause through implied (conflict) preemption, as well as by §301. Unsurprisingly, I think the conflict preemption ruling is correct.

Jackson (p/k/a 50 Cent) sued Roberts (p/k/a Rick Ross) for sampling a well-known 50 Cent song to which he did not own the copyright, “In Da Club,” on a mix tape, Renzel Remixes, “which Roberts released for free in 2015, in advance of Roberts’s then-upcoming commercial album, Black Market.” Jackson alleged that Roberts’s use of Jackson’s voice performing “In Da Club,” as well as of Jackson’s stage name in the track title identifying that song, violated his right of publicity under Connecticut common law.

Some background:

In the hip-hop world, a “mixtape” — unlike a commercial album — is an album of material generally produced by a recording artist for free distribution to fans. As both Jackson and Roberts agree, it is common for hip-hop mixtapes to include “remixes,” often consisting of new vocal recordings by the releasing artist, combined with samples of songs by other artists who are identified by name. And as both Jackson and Roberts agree, many hip-hop artists (including Jackson himself) have created mixtapes that included samples of recordings of other artists without obtaining permission from either the recording artist or the copyright holder of the work sampled. Some (but not all) mixtapes are released for free in advance of an upcoming commercial album by the same artist and include material that promotes the upcoming release.

Roberts’s Renzel Remixes mixtape is a compilation of 26 remixes in which Roberts performs his own new lyrics over audio samples of popular songs by well-known recording artists. For 11 remixes, the track list identifies 18 original recording artists associated with the samples, including, for example, “Hello (Feat. Adele),” “Bill Gates (Feat. Lil Wayne),” and “In Da Club (Ft. 50 Cent).”  The “In Da Club (Ft. 50 Cent)” track consists of Roberts rapping over the original instrumental track of Jackson’s song, followed by a roughly thirty-second sample of Jackson singing his refrain from the original “In Da Club” recording, reproduced without alteration. Roberts did not obtain or request permission from Shady/Aftermath or from Jackson to include those in his mixtape, or to use Jackson’s stage name.

“In Da Club (Ft. 50 Cent)” remix included several references to Roberts’s then-upcoming commercial album, Black Market: “Only on the Black Market, December 4th / The Album is out.” The cover art for the mixtape included a reference in small white typeface to Black Market and its release date. 

The district court dismissed the claim because, under his Recording Agreement, Jackson “surrendered his rights to the use of his name, performance and likeness associated with the master recording of ‘In Da Club’ in connection with the advertising and marketing of ‘Phonograph Records’” and because it was preempted.The court of appeals disagreed with the contractual reasoning. The contractual grant ended in 2014, before the remix was released. Preemption still barred the claim.

“[P]rominent copyright scholars have suggested that implied preemption may bar a right of publicity claim where the claim does not further a distinct state interest, such as preventing ‘consumer deception,’ protecting privacy, or safeguarding against reputational harms.” (Citations: Rebecca Tushnet, Raising Walls Against Overlapping Rights: Preemption and the Right of Publicity, 92 Notre Dame L. Rev. 1539, 1545–48 (2017); Nimmer; Jennifer Rothman; and Guy Rub.)  The court of appeals agreed that right of publicity claims were preempted when they “would impair the ability of a copyright holder or licensee to exploit the rights guaranteed under the Copyright Act, or in some way interfere with the proper functioning of the copyright system.” However, not all interferences with any possible exploitation justify preemption, at least where the state is furthering “sufficiently substantial state interests, such as protecting a person’s privacy, compensating for fraud or defamation, or regulating unauthorized use of its citizens’ personas.” For example, an anti-paparazzi statute protecting citizens “from unreasonable intrusions on personal privacy,” could have the “collateral effect of precluding the defendant from exploiting a photograph that falls within the subject matter of federal copyright law” without preemption, and a ban on falsity could likewise interfere with the exploitation of literary works containing falsehoods.

"Bonito Boats instructs that analysis of implied preemption depends on whether the state law claim furthers substantial state law interests that are distinct from the interests served by the federal law which may preempt the claim. The standard: “when a person undertakes to exert control over a work within the subject matter of the Copyright Act under a mechanism different from the one instituted by the law of copyright (i.e., a state law claim), implied preemption may bar the claim unless the state- created right vindicates a substantial state law interest, i.e. an ‘interest[] outside the sphere of congressional concern in the [copyright] laws.’” [Andrew Gilden and others might find something to say here about the implicit suggestion that privacy is outside the sphere of congressional concern in copyright. But perhaps the court is better read as saying that some kinds of privacy claims are outside the sphere of congressional concern—unauthorized subject claims, not creator claims.]

Some right of publicity claims will therefore avoid preemption: those that target false endorsements, because the “state’s interest in protecting its consumers from deception in the commercial marketplace is clearly both substantial and distinct from the interest in ‘grant[ing] valuable, enforceable rights to authors . . . to afford greater encouragement to the production of literary (or artistic) works of lasting benefit to the world’” (citing me). So too with “right of publicity claims that vindicate privacy or reputational interests, or those that would prohibit the sale of goods whose value to consumers consists predominantly of the unauthorized exploitation of a person’s valuable persona,” since that too “vindicate[s] substantial state law interests that have little relation to the interests of a copyright holder to exclusive control over works of authorship.” [Ugh; not citing me, unsurprisingly, and not explaining what those substantial state interests are or how they can be detached from the interests of the author who created the relevant representation.] “The more substantial the state law interest involved in the suit, the stronger the case to allow that right to exist side-by-side with the copyright interest, notwithstanding its capacity to interfere, even substantially, with the enjoyment of the copyright” (back to citing me for allowing state “protection of consumers, reputation, or privacy”).

However, “the less substantial the state law rights invoked, or the more the invocation of the state right amounts to little more than camouflage for an attempt to exercise control over the exploitation of a copyright, the more likely that courts will find the state law claim to be preempted.”

So, does this lawsuit assert “a sufficiently substantial state interest, distinct from the interests underlying federal copyright law, to evade preemption”?  The court first expressed doubt as to whether Connecticut really meant to prohibit “mere use” of Jackson’s name to identify him as the artist of the song Roberts samples, and the use of the sound of Jackson’s voice, “which is inevitable in sampling Jackson’s performance of his song,” without permission. However, “Jackson’s claim may just barely fall within the boundaries of Connecticut’s right of publicity as Roberts undoubtedly believed it was to his personal benefit to include the references to Jackson in his mixtape.”

Despite that, the court found that the lawsuit didn’t seek to vindicate any substantial state interests distinct from those furthered by the copyright law. There was no use of Jackson’s name or persona “in a manner that falsely implied Jackson’s endorsement of Roberts, his mixtape, or his forthcoming album, nor in a manner that would induce fans to acquire or pay heed to the mixtape merely because it included Jackson’s name and a sound that could be identified as his voice.” The court relied on (1) the absence of any explicit endorsement statement; (2) evidence “that it is common practice in the hip-hop industry for artists to use copyrighted samples in mixtapes without the permission of the copyright holders or performers of the sampled works (and to reference the relevant performers by name in track titles),” and (3) the “context” of Roberts’s use.

Comment: not that I disagree, but it’s pretty interesting how a mini-confusion inquiry works here without much in the way of factfinding. (2) is particularly notable because that has nothing to do with actual consumer perception—though it might help to the extent that one views the “reasonable” consumer as a normative construct.

The use of Jackson’s voice and the “small discreet notation that correctly identifies Jackson as the artist of the sample played” thus didn’t violate any substantial state law publicity interest. Instead, “the predominant focus of Jackson’s claim is Roberts’s unauthorized use of a copyrighted sound recording that Jackson has no legal right to control.”

On the other side of the balance, there was a potential for interference with “the dissemination of works within the subject matter of copyright and the operation of the federal copyright system.” First, many protected works of authorship involve depictions of or appearances by real people; if those in themselves could support a publicity rights claim, “the potential for impairment of the ability of copyright holders and licensees to exploit the rights conferred by the Copyright Act is obvious and substantial.”

Although the contract could have protected Jackson’s label from impairment of its interest in fully exploiting the work, that wasn’t enough to protect either licensees (if the label somehow failed to transfer its rights) or fair users. Although many statutory rights of publicity have specific exceptions for “types of uses that might qualify as fair use,” and although the First Amendment might provide protection even in the absence of such exceptions, “the potential for conflict would persist in many instances.” Likewise, “a state law that would impose liability on a defendant for use of a public domain work, on the sole basis that the plaintiff is depicted in that work,” would interfere with the federal policy of free copying of public domain works (cf. Dastar).

Here, a creator and performer of a work within the subject matter of copyright, who owned no copyright interest in the work, was nonetheless trying to control its distribution in defiance of the exclusive right of the copyright owner to exercise such control. True, under the contract, Jackson’s approval was also required for sampling; thus Roberts was “presumably” liable for copyright infringement to the label, and Jackson might have a right to compel the label to sue Roberts or to seek damages for the label’s failure to protect his right to royalties. Nonetheless, Jackson had no legal right to directly go after Roberts, and his attempt to do so “under the disguise of a right of publicity claim” was in derogation of the label’s exclusive right to enforce the copyright. And the label might have had good reason to tolerate the use to enhance the song’s commercial value; as the copyright owner, its exclusive right included “the right to decide whether to tolerate an infringement.”

Although implied preemption usually protects a defendant who’s lawfully reproducing or publishing a work, the policy considerations justifying the doctrine of implied preemption nonetheless applied here.

Just in case, the court also found § 301 preemption. I tend to find §301 reasoning in what’s really a conflict preemption case to be tortured; I’ll just focus on what the court additionally says about consumer confusion. Specifically, claims based on the use of an image/representation of a person embodied in a copyrighted work are not preempted where the use is “in a manner that appears to communicate a message that the plaintiff endorses the defendant’s service or product (other than the copyrighted work in which the plaintiff appears).” In a footnote, the court highlights the “important difference” between conveying that the plaintiff consented to appear in or was voluntarily associated with a work and conveying that the plaintiff endorsed “an entirely separate product or service.” The former implication—of the plaintiff’s consent to appear in the work and “to some extent” endorsement of the work itself— is “immaterial” here.

So, in Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001), a publicity rights claim wasn’t preempted where Abercrombie had “create[d] t-shirts[] exactly like those worn by the [plaintiffs] in the photograph” and “advertised those t-shirts alongside the photograph of the similarly clad plaintiffs, thus conveying a false implication that the plaintiffs were wearing Abercrombie shirts and represented Abercrombie as brand ambassadors.” Permission from the copyright holder was insufficient to justify preemption because the gravamen of the claim was “the defendant’s usurpation of the plaintiff’s identity to sell a product or service with which the plaintiff has no relevant connection.”

This particularly tortured sentence (citations and footnotes omitted) shows both why I don’t think §301 works here and why the right of publicity lacks intelligible boundaries:

In our view, the pertinent distinction for [whether a claim is within the subject matter of copyright] is whether, on the one hand, the defendant’s use of a work involving the plaintiff’s likeness seeks advantage for the defendant on the basis of the plaintiff’s identity — as where the plaintiff is identified in a manner that implies the plaintiff’s endorsement, sponsorship, or approval (or in some cases the plaintiff’s disapproval or rejection) of the defendant or its product, or holds opinions favored (or disfavored) by the defendant, or where (as with baseball cards) the value of what the defendant distributes lies in its reference to the identity of the plaintiff shown — what might be called “identity emphasis,” which argues against preemption — or whether, on the other hand, the advantage sought by the defendant flows from the reproduction or dissemination of the work itself (as opposed to the persona of the plaintiff), which argues in favor of preemption.

In a footnote, the court rejects “commercial advantage” as an extra element, as both too broad and too narrow. In particular, “a plaintiff should legitimately be entitled to claim the right of publicity where the defendant appropriates the plaintiff’s persona to advance a non-commercial cause, as by falsely representing that the plaintiff supports a political candidate or a controversial cause.” [This could well be an example of how decisions that purport to limit a claim can lay the foundations for its expansion. Under ordinary, non-IP First Amendment precedents, a false claim of political endorsement could easily fail based on the Supreme Court’s solicitude for noncommercial falsehoods, so the court here is, unnecessarily, assuming a very broad scope for publicity rights.]

And the court explains “identity emphasis” as covering, in addition to the positive value of identity, “depicting an unpopular plaintiff in a manner suggesting that person’s dislike of the defendant or its product, or using the plaintiff’s identity in a negative way to generate interest in the defendant or the defendant’s work.” 

The preemption question is whether the defendant is seeking "advantage through identity emphasis" or whether the plaintiff is seeking “control of the [copyrighted] work itself.” "In other words, the more the defendant has used a copyrighted work for its own value, as opposed to using it to exploit the depicted plaintiff’s identity, the more the right of publicity claim brought by someone depicted in the work can be considered a disguised effort to control the dissemination of the work." 

Comment: (1) This of course has nothing to do with the subject matter of copyright or extra elements; it is conflict preemption analysis in a 301 hat. (2) Unfortunately, this formulation suffers from the usual deficiencies of attempts to distinguish the dancer from the dance for publicity rights purposes: where the works are valuable because they depict a well-known person—nobody wants a biography of me!—they are used for both their own value and to exploit the depicted person. That is the basic stuff of ordinary news reporting and nonfiction. Courts just announce that a news photo of Chris Pine, or AOC, is used “for its own value” while a drawing of the Three Stooges is used to exploit their identity.

Which brings us back to deception: “a crucial issue in determining whether Jackson’s right of publicity claim is subject to preemption depends on whether Roberts’s use of Jackson’s stage name and the ‘In Da Club’ sample could reasonably be construed by the intended audience as a false implication of Jackson’s endorsement or sponsorship of Roberts or his product.” [Among the questions this raises for me: suppose that such a claim survives a motion to dismiss, but on summary judgment or after trial the relevant factfinder finds no likelihood of confusion. Is the claim then preempted?]

Footnote: false endorsement/sponsorship isn’t required to survive preemption, as long as “the defendant has otherwise exploited the plaintiff’s identity to gain an advantage,” e.g. by making a poster of the plaintiff, but Jackson was arguing false endorsement as his sole reason to avoid preemption here.

Here, Roberts offered “evidence that, in the hip-hop industry, it is common practice for artists to sample each other’s work without permission, and to credit the artists they sample on mixtapes without authorization, with designation (e.g., a ‘ft.’ line) in a track title.” Jackson himself has done this. “[T]his evidence powerfully supports the conclusion that, in the hip-hop world, the mere use, without more, of a sample from a well-known song, with acknowledgment of the identity of the sampled artist, does not communicate to the relevant audience that the sampled artist has endorsed or sponsored the sampling artist’s work.” Instead, “Roberts is expressing himself as an artist by his choice of sampled works, without implying that the artists so depicted have lent their personas to the promotion of his album.” And the song was so well known “that it could not possibly be understood to be material Jackson created specifically for inclusion in the mixtape”; also, the album sampled from at least 26 artists and identified 18. “It would be unreasonable for a listener to conclude, simply based on Roberts’s use of these samples and his references to those artists’ stage names, that each of these well-known artists — including Adele, Nas, Snoop Dogg, Kendrick Lamar, and Lil Wayne — endorsed or sponsored Roberts’s free mixtape.”

The court distinguished other cases in which use of a plaintiff’s image or persona could communicate endorsement or sponsorship, such as Downing, which involved what was essentially a clothing catalog. In Toney v. L’Oreal, the defendant used the model’s photo in magazine ads and on packaging “in a context that suggested that the plaintiff had used the product and intended to be seen as endorsing the defendant’s product.” [I will note that the FTC, with all the attention it’s given to endorsement, doesn’t think that a model’s appearance is ordinarily perceived as an endorsement; instead the FTC expects that viewers will perceive the model as doing a job.] Here, there was “no such contextual implication of endorsement. … Jackson does not appear on the cover of the mixtape, nor do any of Roberts’s lyrics refer to Jackson, nor is the “In Da Club” sample used in a manner that could mislead listeners into believing that it was new material that Jackson had created specifically for inclusion in Roberts’s mixtape.” His music and his stage name were used in the same manner as the other artist’s.

Even without direct evidence about consumer perception, the absence of an explicit message, the evidence of standard mixtape practice, and the large number of sampled/identified artists “compel[led] the conclusion that there is no substantial likelihood that the audience could reasonably construe Roberts’s use of the ‘In Da Club’ sample, credited to Jackson, as a suggestion that Jackson had endorsed Roberts, his mixtape, or his upcoming commercial album.” Thus, the gravamen of the claim was not use of his identity but use of the work itself.

To avoid §301 preemption, Jackson argued that stage names are not “works of authorship” that “come within the subject matter of copyright.” But implied preemption took care of this regardless, since Roberts used Jackson’s stage name to accurately identify him as the performer of one of the works he sampled. Allowing such a claim “would impermissibly interfere with the administration of the federal copyright system by placing a substantial barrier between copyright holders and the full exploitation of their works.” Also, a state right of publicity prohibiting the use of an author or performer’s name to accurately describe a work “could further interfere with permitted uses of that work by individuals other than the rightsholder or licensee — such as an art critic, teacher, news reporter or parodist, exercising the right to make fair use of a copyrighted work.” The court did, however, caution that “a different right of publicity claim based on the use of a name in a misleading manner may invoke a significant state interest in protecting against unauthorized exploitations of a person’s name so that it would escape implied preemption (citing Cher v. Forum Int’l, Ltd., 692 F.2d 634 (9th Cir. 1982) (while a magazine that purchased a journalist’s interview with Cher and published it was entitled to tell its readers that it was publishing the interview, a different magazine violated her right of publicity because its marketing copy implied Cher’s endorsement of the magazine)).

IPSC Panel 15 – Trademark Law II

Trademark Fame and Corpus Linguistics, Jake Linford, FSU College of Law and Kyra Nelson, Independent

Dilution protects famous marks as if they were monosemous: having same source meaning no matter what goods/services applied to. Proposal: use data about TM use from large corpora to better ensure that fame is properly granted and perhaps reduce the costs of finding fame/decrease reliance on things like sales numbers. Famous=unique commercial signifier (consistent with Schecter’s original formulation) and widely recognized (household name). Different databases with different sources, date ranges, numbers of words. Could use these databases to measure recognition via frequency of appearance in corpus and to measure level of singularity. [That’s measuring production not recognition, which is probably worth distinguishing.]

Question: can we set a threshold for appearaances?

Diachronic changes/change over time: could a mark lose fame the same way it loses distinctiveness? What are the words that appear more frequently than you’d expect next to this word, and do they point to singular meanings or multiple meanings?

Looked at frequency in database, compared to litigated cases. Lots of marks held not famous are relatively not frequent: Buck Rogers, Blue Man Group, Field of Screams. Some high frequency marks are found famous: Microsoft is an outlier [that is likely because the corpus draws from articles that mention using Excel or another Microsoft product that does the work]. But there are also ones with mismatches. Was this FTDA problem only? FTDA cases do have slightly lower mean frequency v. TDRA, but not statistically significant. One per million is relatively high frequency so that could be a frequency, but leaves out Citibank, Tylenol, Rolex, and Victoria’s Secret.  Nearly 2/3 of marks found famous are at 0.83 per million, so maybe that’s right. Non famous .042/million. 3 standard deviations above mean is .375 per million. Hotmail also changes in frequency a lot over time.

Collocation: Microsoft’s adjacent terms all point to Microsoft the entity (or its competitors).

What about Coach? Collacates in top 20 are all sports terms. Apple: all the brand use is computer-related but all the non brand use is much bigger and is apple/fruit. What’s the best treatment?

Could we do a better job predicting how cases should go? Choose Your Own Adventure: court seems to presume CYOA famous. In 1979, when first book comes out, only one hit. .06 frequency, highest .12 over time, never gets there. Concordance: some TM use, some not.

Mark Lemley: useful tool, but separate utility of tool from the particular vision of dilution which might not be widely accepted. Could be valuable even if you don’t need singularity.

Mark McKenna: singularity might not be about fame, but it is about dilutability: if the mark isn’t singular, it’s already diluted. Also, does frequency really correlate with fame? It’s not surprising that “coach” would have a lot of non-brand use b/c it’s an English word. Are you really measuring anything other than fancifulness?

A: Panavision is distinctive, but not famous: that’s why frequency matters. Apple is the question: does Apple swamp commercial terminology and (more importantly) should that commercial dominance matter?
Jeanne Fromer: need to have an explicit methodology for measuring fame for nonfanciful marks. Recognition and production are distinct: apple might be easily recognized as a fruit without a lot of use in the corpus. So we need better definitions.

A: is the concern overcounting or undercounting famous marks?

Fromer: probably both! It has to have frequency for you to care, but if there’s any mention of a non brand appearance, how does that factor in? Develop a methodology at the outset=very helpful.

Lisa Ramsey: agrees re fanciful or even suggestive marks (Microsoft) & separate analysis of those from what’s not in the dictionary.

Barton Beebe: exciting idea. Hand coding can account for nonmark use but you should feature that in the intro/discussion.

A: note that Hotmail looks very strong in one year—the corpus doesn’t always give you a snapshot over time and databases vary. Another concern: scholars seem to assume that a judge can be turned loose w/ this toolkit and reach right answers, and that might not be true. This could just be a tool to stick a number on an intuition, like with stampeding the factors.

RT: non word marks: it matters that the corpus is for words! Bigger picture: there is a hierarchy of goodness of marks; word marks are better at doing the things we want done with fewer side effects and we should start admitting it more readily. [Alt take: we maximize what we can measure and reliance on the corpus will make it harder for us to think about what non-word-mark fame would look like. That could be good or bad!]

Ramsey: does the corpus distinguish b/t contexts where brand use is more likely (casual discussions) v. where it’s not (academic journal articles)?

Fandom is Nonexcludable, Betsy Rosenblatt, University of Tulsa School of Law

Warner sued Potterhead running club, which raises money for charity by having runners run on their own. “We solemnly swear that we are up to no good.” WB claims: Ds designed merch & business model to appeal to and attract fans of the HP franchise, but that’s a privilege reserved to WB and its licensees.  But that’s not the law: New Kids on the Block says you can raise money by appealing to fans. There are other limitations as well, including the First Amendment.

Defenses tend to break down over things that look like “use as a mark”: Potterheads name, Packers Fan podcast. Names identify source of group/its goods or services and describe relationship to underlying object of fannish attention. They are descriptive in her categorization b/c they are referring descriptively to what they’re fans of rather in a TM sense to the creator of that underlying work.

Claims against fan organizations look like irrational overclaims, but that’s not a helpful argument. Even when there’s competition w/ the “authorized” user, there is no economic benefit in allowing control over these kinds of descriptive uses. Fanmarks have characteristics of aesthetic functionality: a non reputation related value. Anti-monopoly principles: you get shoddy fan goods instead of really nice ones.

Ramsey: use as a mark by the plaintiff? False association as a countervailing risk.

A: Among other things we’re willing to tolerate risks of confusion in Rogers, nominative fair use, descriptive fair use, other contexts; we should be willing to tolerate some risks here.

Jessica Litman: need a pretty crisp definition of fan activity/fanworks, or any number of competitors will be able to claim to fit.

A: not distinguishing fan from non fan, but distinguishing referential mark from that which refers to the producer of the underlying work in a Dastar sense.

Linford: people are raising money and that seems nice, but how do we distinguish that from a universal 5K run? We are in a place where there is a presumption of licensing for runs & theme parks. Not persuaded yet that New Kids will get you there.

A: agree, which is why she’s developing the argument.

Linford: but why is referential not indicating source/sponsorship? Can you say something about grassroots/astroturf, is that what we care about?

A: reference is to a type of good not to a source. We shouldn’t be calibrating rights based on maximizing TM owner wealthy; these are positive spillovers.

Elizabeth Townsend Gard: is this a commercial/noncommercial distinction?

A: Not necessarily.

Lisa Macklem: Concerned about people taking advantage of fans/feeding at the trough?

A: think it doesn’t matter b/c we still get the benefits [that happens all the time in traditional expressive media: biographies or magazine articles taking advantage of something popular, and we think that’s a good thing].

Lemley: very easy to say that money changes everything. And very easy to find money somewhere in a transaction, especially online. So you will have to go broad.

A: doesn’t care whether people make money. Under her standard: Why can’t someone just call themselves Warner Brothers & make movies? Because she’s basing this on a genericism [I’d say functionality] and referential use framework, we can use the same framework we use for house brands.

Certification (and) Marks – Understanding Usage and Practices Among Standards Organizations, Brad Biddle, Arizona State University, Jorge Contreras, University of Utah, and Vigdis Bronder, Biddle Law

Would expect to find certification marks going along w/standards orgs. Just 17K of 36 million TM registrations are certification marks, but hard to distinguish ICT standard setting organizations from others.

Findings: testing and certification is an important activity for SSOs, though some large organizations don’t do the testing. Over 60% did do their own testing, and most had an associated logo. Use traditional TMs much more than certification marks. In 94 different organizations: 122 certifications across 9 jurisdictions, but that’s just 2% of their marks. Why? Initial registration is challenging; providing a copy of the specification; more flexibility and control over use of a traditional TM; tend to have sophisticated licensing programs. Certification marks can’t be used by certifying entity, and as a pragmatic matter most orgs had similarity b/t mark and organization name. International issues. Implications: conventional wisdom doesn’t seem to match real world practice. Is this a misuse of marks, dodging the consumer protective elements of certification marks? For policymakers, clear that certification marks aren’t using them as intended. For reformers, tightening rules for certification marks won’t matter if most certification happens outside certification mark system: would have to focus on the process of certification instead.

Margaret Chon: TM too are supposed to be about quality, and your findings reinforce that.

Jorge Contreras: practically it seems harder for certification mark user to police use

Vigdis Bronder: no certification cancellations we found; even organizations that had no formal licensing structure for a long time were fine.

Chon: was revenue stream an issue?

A: interviewees were practitioners who might not know and probably would not have said. The people who run these orgs aren’t lawyers and don’t have in house counsel. Figuring out who has the info is tricky.

Rosenblatt: should we let people use non-certification marks in this way? Part of her issue with fandom marks is that there’s a similar blurring.

A: it seems there’s some need that the certification mark isn’t fulfilling.

Rosenblatt: but maybe that’s a bad need, like discrimination or self-dealing for oneself.

A: doesn’t think most of these orgs are being nefarious. International treatment issues are huge and they’re trying to be global organizations. Even trying to file certification marks in other countries can be very difficult w/different rules.

Bronder: since interoperability and sometimes even safety is a priority, it’s a different scenario than w/t shirts.

Ed Timberlake: are there new data you were able to get?

Biddle: did a mini project before w/USPTO and it was enormous amount of work. TMNow is really great. Could just go in and scarf up huge amount of data. Different than using USPTO data. Can find countries and classes.

Contreras: international data are also there and usable, which is great.

Barton: Do European perspectives change depending on tech sector? Might be different in how they treat agriculture versus tech where they might not diverge as much. Alexandra Mogyoros: Work on pseudo-certification marks: connect w/her. Antitrust/competition law issues, also in Fromer’s work.

A: yes there are nefarious actors, also non-nefarious actors doing good work.

Contreras: so many different organizations independently decided not to use certification marks. Doesn’t seem to be law firm driven/coordinated.

RT: Say more about international issues. Sounds a bit like they’re using trademarks just b/c it’s easier, which is not meaningless but suggests different policy levers.

Biddle: yes, there’s a global system for managing TM, but not for certification marks; only a handful of countries have such a regime, sometimes you have to show gov’t authorization. Can be expensive and even impossible in some jurisdictions. Even if you assumed that away, there are still relevant aspects, like discrimination. Do they have good reasons to discriminate that are policed via antitrust and not via certification marks?

Jessica Silbey: motivation—why one instead of the other—can be very hard to find in these studies. One possibility: catalog possible reasons and evaluate. Or focus instead on repercussions.

Chon: Jeffrey Bell’s book discusses breach of implied warranty from certification – maybe TM doesn’t raise that issue.

Biddle: many orgs call what they do certification, but a handful were very intentional about avoiding that word explicitly for that reason.

Portmanteaumarks, Brian L. Frye, University of Kentucky College of Law

Popular marks b/c they combine novelty (distinctiveness?) and familiar meaning. Looking for a framework for when they should be treated as distinctive v. descriptive/generic. Can mush words together, combine w/o blending syllables (brunch), combine w/blending (smog), orthographic/puns where there’s a homophonic element (shampagne); etc. May not help much w/evaluating distinctiveness but can be useful.

Framing: some portmanteau words are good, easily intelligible, and improve on existing words, thus enter the vernacular. [Is this distinguishable from embiggen?] Bad ones sound awkward/fail to convey information. Brunch is good, lunchfast and linner are not.

TMEP: portmanteau is subset of unitary mark, which is a combination of unregistrable terms that has the potential to be registrable. Compounds. Telescoped mark: closer to portmanteau, with blending.

Concept: failure to function. A good portmanteau creates a new word and thus should be generic. A bad one does not. Telling the difference: scores using a linguist’s test for predicting whether newly generated words are likely to become real words in a language. Formalized heuristic: Frequency of use; unobtrusiveness (does it feel natural or awkward); diversity of users/situations; generation of other forms/meanings; endurance of the concept. Each factor is scored 0-2 and if sum is 8 or higher, word is likely succes. 5-7 chance of success; less than 5 almost certain to fail. May not be directly portable to this situation but could be useful in helping think.

Linford: is this test really predictive? It seems post-use, which will have limited use to the PTO if the application comes early in the life of the new word. Work on sound symbolism may also help.

A: test is trying to predict whether a current word will survive, but needs tweaking.

Ramsey: consider genericide: what’s the process for a word or its components? Does it matter whether the initial components are clearly generic? Doctrine of foreign equivalents comparison: how likely are people to combine these words?

Rosenblatt: maybe we don’t care at all about portmanteau status, only about function: how does brunch function in language? The test you offer might work for all words.

A: does think that different words might need different analysis, but not fully committed to that. With spork, alternatives were offered, but they never worked well/caught on. Says there’s something special about that particular kind of combination.

Fromer: thinks these are a fruitful source of (claimed) marks to focus on. Consider the whole spectrum: could the word be descriptive even if not generic? There is some work on this in AI: working to take concepts and words and find best portmanteaus.

McKenna: similar question about categorization: how much do we want new categories that feed into or separate from Abercrombie? Takes to be a statement that we will ask only one question about genericness: consumer meaning. The paper doesn’t have to be descriptive, but curious about the broader utility of subcategorization. Maybe easier to get purchase on that in registration than infringement, since TMEP is full of rules of thumb.

Lemley: it’s not right to say good = unprotectable/bad=protectable, though there might be some correlation; what do consumers think about it? To him the interesting placement is between descriptive and suggestive. You can see the etymology (if the new word is good enough) and then the question is how do you think about it. Also, everything here seems plausibly true of any combination of words put together to generate a new concept, e.g., Pretzel Crisps.

Sarnoff: neologisms can’t be generic until received into language [I am not sure this is true: any new invention will need a generic identification]. Time sequence is key.

A: trying to distinguish b/t way in which portmanteau is new and way in which other words are new words. How novelty works.

RT: we unfortunately have seen some conflation in TM b/t © concepts and TM concepts and this area could be a way to explore that. Compare the treatment given to HONEY BADGER DON’T CARE where the court conflated the creator’s authorship interests w/his TM interests v. LETTUCE TURNIP THE BEET, where at least at the district court level it may have been relevant that there was evidence that the TM claimant didn’t “invent” the pun.

Tuesday, August 18, 2020

suit against laser-bearing baseball hat (for hair regrowth) proceeds

 Cooper v. Curallux LLC, 2020 WL 4732193, No. 20-cv-02455-PJH (N.D. Cal. Aug. 14, 2020)

Curallux makes “baseball-style hats with lasers in them” and advertises them as hair regrowth products that are “without side effects” and “physician recommended.” Cooper brought the usual California claims. She alleged that her side effects included itchy scalp, dry scalp, dandruff, headaches, and dizziness. She further alleged that scientific studies and experts in the field of hair restoration have identified several side effects associated with the use of low level laser therapy for hair loss. Although Curallux relied on eight physicians to endorse the products, Coopoer alleged that these physicians have a financial incentive to make the purported recommendations, while a reasonable consumer would interpret “physician recommended” to mean a physician without financial incentives.

The court denied a motion to dismiss.

Defendant argued that these were mere lack of substantiation claims, for which there is no private cause of action in California. Not so. A false advertising claim is one in which the claim has “actually been disproved,” such that “the plaintiff can point to evidence that directly conflicts with the claim.”

For “without side effects,” Cooper alleged the existence of side effects, confirmed by “[s]cientific studies and experts in the field of hair restoration,” citing a study published in the medical journal Lasers in Medical Science. This was a falsity claim, not a “there’s no evidence one way or another” claim, which would be a substantiation claim.

Curallux tried to distinguish the study as not actually discussing its specific product.  But “[t]he technology (low level light treatment/therapy) and the goal (hair growth) is the same in both the study and defendant’s products.” Although the study didn’t list all the side effects alleged in the complaint, it did list itchy scalp. Curallux posited that the helmet in the study might have caused the side effects versus a hat by creating a warmer environment/higher humidity on the scalp, and the study’s authors acknowledged this possibility, including the itchy scalp reported in the control group. The court thought this was a close case, but on a motion to dismiss plaintiff statted a claim.

“Physician recommended”: This was a misleadingness claim, not a substantiation claim. Cooper agreed that physicians recommended the product, but Curallux failed to disclose their biases. Curallux argued that she was really saying that it had no basis to make its statement because the physicians were biased, but the court didn’t agree, and I note that such reasoning would make every falsity claim into a “lack of substantiation” claim; as the court noted above, some claims are unsubstantiated because they are false or misleading, and consumers can challenge such claims.

Warranty claims also survived.

Curallux tried to strike Cooper’s request for attorneys’ fees because the FTC already investigated Curallux and required Curallux to change its advertising from “no side effects” to “no adverse side effects” and “recommended by physicians” to “recommended by physicians within Capillus’ network.” Curallux argued that California Code of Civil Procedure § 1021.5 requires a plaintiff to demonstrate that he or she actually motivated a defendant to change its advertising in order to recover attorneys’ fees. But under the CLRA, Civil Code § 1780(e), a plaintiff prevailing in litigation shall be awarded costs and attorneys’ fees; because she stated a claim, her request for fees survived, though defendant could raise the issue later.

So too with the request for injunctive relief: “It is not clear to the court that the FTC remedial action agreed to by defendant is coextensive with plaintiff’s requested injunction.”

using picture of competitor's product as reverse passing off

John Bean Tech. Corp. v. B GSE Gp., LLC, 2020 WL 4698984, No. 1:17-cv-142-RJS-DAO (D. Utah Aug. 13, 2020)

Plaintiff JBT “is a major player in the aviation industry for ground support equipment,” used to maintain aircraft, including preconditioned air (PC Air) units that cool aircraft and ground power units (GPUs) that power this equipment. JBT sought to enter the niche market to supply ground support equipment—primarily PC Air units and GPUs—for the F-35 fighter, which usually required specialized equipment. “To help it through the bidding process and to win these government contracts, JBT hired Defendant Bryan Bullerdick. Bullerdick left JBT after about three years, however, to become the head and majority shareholder of Defendant B GSE Group, LLC (BGSE),” which initially acted as JBT’s designated distributor. However, “Bullerdick began representing to industry contacts, primarily contractors and sub-contractors, that BGSE was the designer of several of JBT’s products and that JBT was merely the manufacturer of BGSE’s designs…. BGSE later began competing directly with JBT to win F-35 projects by supplying products manufactured by [competitor] Twist and others.”

I won’t discuss the trade secret/contract claims you can imagine from this situation; JBT also sued for unfair competition, trademark infringement, and false advertising under the Lanham Act. Defendants counterclaimed for, inter alia, tortious interference, negligent misrepresentation, and defamation, primarily relating to JBT’s efforts to inform industry contacts of its lawsuit against BGSE and Bullerdick. Here, JBT won summary judgment on some of its claims, including trade secret, trademark, and breach of contract, and kicked out some of the counterclaims, while defendants got summary judgment on the false advertising/defamation claim against them, and the rest was left for trial.

From 2015 to 2017, BGSE independently submitted several bids to sub-contractors to supply PC Air units or GPU systems (or both) for F-35 maintenance hangars. In many, “BGSE included JBT documents and pictures of JBT products but with JBT identifiers removed and replaced with BGSE identifiers.” For example, these two images are the same, but the second image was used in a BGSE submission with its logo superimposed over JBT’s (though I'm assuming the image quality is better in the original; otherwise I don’t see how anyone could tell):

Bullerdick represented to several contractors that, although JBT manufactured BGSE’s PC Air unit and GPU products, BGSE was the creator and owner of the designs, e.g.,

[BGSE] initially brought our designs for JBT AeroTech to build. They built the power and air for us up until last summer.... We began to shar[e] BGSE designs with Twist last summer in confidence. For 8 months now we have worked with Twist engineers quietly ... The product made for BGSE with BGSE technology is call[ed] “Cool Jet.” It is not available anywhere else.”


JBT AeroTech builds 270VDC and CAS as a licensee of BGSE Group design specifications. The agreement has expired and JBT is not making the design supplied previously under BGSE licensee agreement at this time.... Solution ... Replace JBT with BGSE Group since BGSE Group is the designer and owner of the technology.

BGSE also created a brochure that contained excerpts of original JBT documents, with JBT identifying information removed and replaced with BGSE identifiers, and another that claimed that “All projects completed on this list have installed, commissioned and working 100% BGSE Group designs” with a technical specification substantially copied from JBT and two pictures of JBT HPCF 3000 PC Air units with BGSE logos superimposed on them.

After JBT sued, it sent the complaint and a cover letter to some of the parties’ mutual industry contacts. The cover letter reaffirmed that all JBT equipment sold through BGSE was designed and developed solely by JBT, and made some related statements.

False designation of origin: This was a reverse passing off claim, contending that defendants sold their products—competitor Twist’s PC Air units—by creating a false link with JBT’s products, by incorporating doctored JBT documents into bid proposals. (I don’t think the “false link” part is actually reverse passing off, stated that way—it’s false association.) But what was allegedly reverse passed off? Given Dastar, if the argument is that the bid proposals were reverse passed off, that fails. But the relevant goods were the equipment promoted by BGSE, which are tangible.

Arguing that they never actually sold any repackaged JBT products, defendants argued that Dastar precluded the claim, because Twist was the origin of the units BGSE ultimately supplied.

The court rejected this argument, relying on a Fourth Circuit case, Universal Furniture International, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417 (4th Cir. 2010), which upheld a false designation of origin claim even though the defendant never sold any of the plaintiff’s products as if they were produced by the defendant. The defendant sold cheaper versions of two of the plaintiff’s most popular furniture lines, and at one point displayed in its showroom some of the plaintiff’s actual pieces. “Because [the defendant] displayed actual pieces from [the plaintiff’s furniture line] and marketed them as belonging to [the defendant’s] 20200 collection, [the defendant] falsely designated the origin of such furniture.” That was the case here too. JBT was the producer of the tangible goods Defendants were offering for sale in the documents, including the document that provided information for a nonexistent BGSE product that was copied from a JBT specification/manual. “Thus, although BGSE represented that it was offering for sale a BGSE product to be manufactured by Twist, the substance of the submittal revealed the product being offered for sale was actually produced by JBT.” [Comment: that’s really false advertising: they delivered a product other than that which was advertised, but the product delivered was from Twist/BGSE. This matters because calling it false designation of origin relieves plaintiff of the burden of showing materiality. The court doesn’t discuss Bretford Mfg. v. Smith Sys., 419 F.3d 576 (7th Cir. 2005), which held to the contrary that advertising a prototype made with another company’s parts, but delivering a product made by the advertiser, was not false designation per Dastar.]

The court then found that confusion was inherently likely from the false designation of origin. “[A] party’s attempt to pass off another party’s product as its own satisfies the confusion requirement of the Lanham Act for an obvious reason—it represents a direct attempt to confuse a consumer about the origin of a product.” And BGSE’s conduct harmed JBT because it “prevented JBT from reaping both the financial and reputational rewards associated with its products,” given that “Defendants often were able to fulfill the requirements of the bids they won only by representing a product JBT produced” and lacked their own, non-JBT, requirement-compliant products. JBT thus “lost contracts on which it would have otherwise been the supplier.”

False advertising: JBT’s separate false advertising claim principally relied on four promotional documents whose alleged falsities were (1) inclusion of excerpts of two JBT product manuals and two engineering documents stripped of JBT identifiers and replaced with BGSE’s logo; (2) a statement that “[t]he following F 35 specific projects all have BGSE Group Equipment. All projects completed on this list have installed, commissioned and working 100% BGSE Group Designs”; (3) a similar statement in another letter that “These are BGSE Group Designs. We produce the bill of material and design and pay for the certifications”; and (4) a statement claiming BGSE brought its designs and expertise to JBT to make “second generation” PC Air units.

Defendants argued that JBT endorsed these arguments with a presentation slide stating, “Together JBT and BGSE have developed, marketed, and tested power conversion, PC Air, and Aircraft Air Start products for the 21st century warfighters’ needs.” That slide expressed only general sentiments about working together—it wasn’t an official endorsement by JBT of BGSE’s role in developing any specific products. And even if BGSE might have contributed to the development of some of JBT’s products, it was undisputed that JBT designed and built one key piece of equipment, the one to which BGSE affixed its logo in the altered picture. That was literally false, and (2) and (3) were at least ambiguous but misleading (though the court didn’t require evidence of consumer deception in finding that there was no factual issue precluding summary judgment here).

However, showing the utility for plaintiffs of moving claims into §43(a)(1)(A) where possible, JBT didn’t show that the false statements constituted “commercial advertising or promotion.” Neither party submitted evidence from which the court could determine the size of the relevant market.

JBT argued that the relevant purchasing public was exceptionally narrow, limited to the design firms, the contractors working with the military, and the military itself, and the court was willing to make that inference, but “it remains unclear to the court how small is small.” The court had no idea how many design firms and contractors are hired per hangar or in the overall market, and “the court cannot on its own come up with the appropriate denominator to evaluate the extent of Defendants’ dissemination.” While the arguments here could’ve worked to defeat a motion to dismiss, this was a summary judgment motion where JBT needed to point to evidence in its favor.

JBT cited evidence that BGSE sent a promotional email to 38 individuals involved with F-35 maintenance hangars at military bases, and argued that this was a good reference point. But one instance “does not establish that those recipients comprise the entirety—or even a rough approximation—of the relevant market,” since there were many plausible reasons to target a subset.  “Ultimately, the record provides the court no meaningful way to extrapolate the relevant market from the email.” Summary judgment for defendants.

Trademark infringement based on BGSE’s use of JBT’s trademarks on BGSE’s website and incorporating them into the website’s metatags (ugh):  The parties gave no help to the court on the multifactor test; JBT argued initial interest confusion. The court rejected older, out of circuit case law “suggesting it is enough to show initial interest confusion where the defendant has used the plaintiff’s trademarks in the metatags of the defendant’s website.” Although similarity and intent weighed in JBT’s favor, there was no evidence of actual confusion, and “weighing perhaps heaviest against likelihood of confusion is the fifth factor, the degree of care likely to be exercised by purchasers.… Contractors do not casually place PC Air units and GPUs into their digital shopping carts” and indeed don’t seem to buy them via websites at all. However, the court still found a fact issue for the jury because “JBT submitted evidence Defendants used its trademarks exactly and did so with the intent to lure customers away from JBT,” and degree of similarity is the most important factor (sadly, no discussion of how that works in the comparative advertising context).

Defamation against JBT: Failed for lack of evidence of damages. JBT argued that damages could be presumed; under the relevant state law defamation per se was: “(1) charge of criminal conduct, (2) charge of a loathsome disease, (3) charge of conduct that is incompatible with the exercise of a lawful business, trade, profession, or office; and (4) charge of the unchastity of a woman.” [That last should be eliminated; it is ridiculous to have it in the standard list. No court would today say, as courts even half a century ago might have, that a false accusation of nonwhite heritage is defamatory per se or keep that on a standard list; what justification is there for this persistent sexism? Cf. Samuel Brenner, ‘Negro Blood In His Veins’: The Development and Disappearance of the Doctrine of Defamation Per Se by Racial Misidentification in the American South, 50 Santa Clara L. Rev. 333 (2010) (discussing defamation per se by racial misidentification).]

JBT highlighted statements such as “You have to remember [JBT was] our supplier and BGSE experience they steal very easily  ... What JBT can’t come up with themselves they lie and steel [sic] and just recently in Israel they told the customer they would buy and resell USS PITs. A complete lie but they said this so they could fool the customer into the order and then build themselves....” The court found that some of the statements looked defamatory, but also they were “rhetorical hyperbole.” Bullerdick’s allegations of JBT lying and stealing thus didn’t actually accuse JBT of unlawful conduct. “At bottom, though inappropriate, Defendants’ statements are not of such common notoriety or unmistakably injurious to relieve JBT of its burden to prove it was damaged.” Because JBT lacked evidence of special damages, defendants got summary judgment.

Tortious interference claims based on specific projects would go to the jury because of disputed issues of fact on whether JBT (which claimed it was the sole compliant supplier) would’ve gotten the contracts without defendants’ fraudulent conduct.

Defendants’ counterclaims: negligent misrepresentation claims based on JBT’s statements that it would (1) enter into a renewed distribution agreement with them and assist them on a bid failed because JBT owed them no duty of care at the time.

Defamation in the cover letter publicizing the suit: Statements that defendants weren’t authorized to sell JBT equipment didn’t rise to the level of defamation, even if they caused confusion. Tortious interference likewise failed for want of an improper means of interference.

Unfair/deceptive trade practices under North Carolina law based on the cover letter: This required that (1) the defendant committed an unfair or deceptive act or practice, (2) the action in question was in or affecting commerce, and (3) the act proximately caused injury to the plaintiff.” This cause of action is broader than the traditional common law; proof of actual deception is not required as long as “an act or practice possessed the tendency or capacity to mislead, or created the likelihood of deception.”  Further, “[n]either the actor’s intent nor good faith are relevant.” The cover letter qualified as deceptive based on the statements that the parties’ distribution agreement was terminated in early 2013, that JBT would only support sales that were in process at that time, and that JBT was the sole support contact. The first statement was untrue because JBT accepted multiple sales after early 2013 that it knew about, authorized, and supported. Likewise, JBT was not the “sole” support contact, despite the implication that BGSE was unauthorized to provide support. Defendants would face an “uphill battle” showing that these “relatively benign misstatements” proximately caused injuries, but JBT didn’t contest that aspect of the claim in its motion for summary judgment.

deceptive resort fee case against Marriott survives

Hall v. Marriott Int’l, Inc., No. 19-CV-1715 JLS (AHG), 2020 WL 4727069 (S.D. Cal. Aug. 14, 2020)

A class action against Marriott for deceptive “resort” and other added fees that make the total price of a hotel room impossible to determine/compare with other prices until late in the transaction (at best) proceeds. Marriott advertises its available rooms and daily room rates online through its own website and the websites of third-party online travel agencies (OTAs), such as Priceline and Expedia.

On its own site, search results by destination and date list various hotels and rooms with matching availability, but the quoted daily room rate for each hotel doesn’t include or mention the mandatory resort fee a consumer must pay.

Once a consumer selects an option, another webpage lists available rooms with daily rates. This time there’s a light blue box at the top of the page with blue bold font that states that a “daily destination amenity fee will be added to the room rate,” followed by the hours for the property’s concierge lounge. If a consumer selects a specific room, there is a “USD subtotal” for the reservation consisting of the “USD/Night” added to “USD Taxes and Fees.” Although there’s a stopwatch graphic ticking that allegedly encourages consumers to complete their reservation quickly, if the consumer clicks the “Summary of Charges” menu, they get summary breaking down the overall costs of the reservation by room rate, “Destination Amenity Fee,” and “Estimated government taxes and fees.” In smaller and lighter-colored font, the page displays “Additional Charges,” including on-site parking and valet parking fees.
At some properties, there’s no amenity fee, and the “USD Taxes and Fees” consists solely of government taxes and fees. This is allegedly misleading because Marriott “USD Taxes and Fees” to represent one component of the hotel room charge, regardless of whether the “USD Taxes and Fees” includes an amenity fee or not. Plaintiff also alleged that the website was misleading because of inconsistent representations regarding what amenities are covered by the amenity fee or are offered complimentary. For example, a hotel may indicate that the amenity fee “includes high speed Internet/resort equipment rentals/fitness classes and more” and simultaneously advertise that fitness classes are “[c]omplimentary” and that the “[f]itness center is free of charge for hotel guests.”

Marriott also allegedly misleadingly fails to include resort fees in the rates advertised by OTAs. On Expedia, for example, the quoted room rate does not include or mention any resort or amenity fee. When a consumer clicks “Select your room,” Expedia directs the consumer to another page containing the same quoted room rate. Selecting the quoted price then directs the consumer to yet another page that fails to display a resort or amenity fee. Instead, the page includes only the discounted bargain price and the “Taxes and Fees,” indicating that there is a “Mandatory property fee: Collected by property” with a link to “Details.” Only by clicking on “Details” does the consumer learn the amount of the resort fee and what it claims to include. Nonetheless, Expedia may advertise that a room includes “Free WiFi,” while simultaneously indicating that the “Resort fee” includes “Internet access.” Expedia also allegedly encourages consumers to complete a booking by displaying stopwatches indicating how many other people are viewing the property and how many of that room type are still available.

Plaintiff brought the usual California claims, alleging deceptiveness because: (1) Marriott doesn’t include mandatory resort fees in initially advertised room rates; (2) Marriott doesn’t break out the cost of mandatory resort fees when later listing the summary of charges for a hotel room; (3) Marriott includes mandatory resort fees within the broader heading of “taxes and fees,” which leads consumers to believe the resort fees are government-imposed charges; (4) Marriott doesn’t inform consumers of the services included in the resort fee; (5) Marriott falsely states that certain amenities are complimentary when it later describes them as covered by the resort fee; and (6) Marriott provides such pricing information to consumers in an inconsistent manner across different hotels, compounding the confusion.

The court rejected Marriott’s argument that the plaintiff couldn’t challenge statements made on third-party OTAs because he himself did not rely on any OTA websites when booking a Marriott hotel room, but he was an acceptable representative plaintiff for the allegedly consistent false advertising, “regardless of whether those prices were displayed directly on Defendant’s website or indirectly on third-party OTAs’ websites.” This was a question for the certification stage.

He also sufficiently alleged an injury even though he was aware of the total amount he paid, including the resort fee.  He alleged that he “paid hotel charges that were not as advertised,” and paid a higher price than he would have “in the absence of Defendant’s misrepresentations and omissions.” In Hinojos v. Kohl’s Corporation, 718 F.3d 1098 (9th Cir.), as amended on denial of reh’g and reh’g en banc (July 8, 2013), even when the consumer knew how much he’d pay for allegedly falsely advertised “discounted” merchandise, the court found that the plaintiff stated a claim because “regular” price matters to consumers even when they’re receiving discounts.  “[A]lthough Plaintiff may have known the full amount of money he would be charged for his hotel room, the room’s regular or baseline price matters, and the inclusion or omission of resort fees affects that consumer valuation.”

For similar reasons, he had standing to seek injunctive relief. The Ninth Circuit has already held that, “[i]n some cases, the threat of future harm may be the consumer’s plausible allegations that she will be unable to rely on the product’s advertising or labeling in the future, and so will not purchase the product although she would like to.” Here, the plaintiff alleged that, “[u]ntil Marriott changes its practices, Plaintiff will be unable to determine what his true hotel charges will be and what a specific fee covers, as some Marriott hotels do not disclose what is and is not included in which fees, and other Marriott hotels state that an amenity is both complimentary when it in fact is being charged for in a fee.”

And he sufficiently alleged misleadingness: (1) Marriott allegedly omits the resort fee from its initial advertised price, luring customers in with an artificially low advertised rate; (2) by combining the resort fee with taxes under the heading “Taxes and Fees,” Marriott misleads consumers into believing that the additional fees are government-imposed (which, among other things, suggests that consumers couldn’t avoid them by choosing a different hotel); and (3) Marriott misleads consumers by representing that the resort fee covers certain amenities that are advertised as complimentary or by representing that the resort fee covers certain expenses that are charged separately.

Marriott argued that, because the consumer is twice informed of the resort fee before committing to a reservation, “no reasonable consumer would believe Marriott does not charge a $30 resort fee above and beyond the $369 rate for the room at the Marriott Marquis San Diego.” And the countdown clock, it argued, “is not deceptive,” but rather “put[s the consumer] on notice that the rate is subject to change if booking is delayed.”

But that wasn’t the alleged misleadingness. Bait and switch was the problem. [And really why regulators should take action, given the barriers to consumer class actions here.] On a motion to dismiss, the court wasn’t going to conclude as a matter of law that the alleged failure to disclose the resort fee until a consumer is invested in the booking process wouldn’t deceive a reasonable consumer.

So too with the alleged concealment of the resort fee in “Taxes and Fees.” “Although this theory is the weakest of Plaintiff’s alleged misrepresentations, the Court is not prepared to conclude at this stage as a matter of law that no reasonable consumer would be misled.”

Failure to disclose covered amenities: The alleged misleadingness was the representation that certain amenities are offered “complimentary,” whereas the consumer is really paying for them through the resort fee. This theory also survived the motion to dismiss.

Reliance was also sufficiently alleged at this stage.

Finally, Marriott argued that hotel rooms were neither “goods” nor “services” covered by the CLRA.  Fairbanks v. Superior Court, 46 Cal. 4th 56 (Cal. 2009), held that insurance was not a good or service under the CLRA because the California Legislature deliberately excluded “insurance” from the statutory definition of services that had appeared in the National Consumer Act, on which the CLRA was modeled. But that case didn’t establish that hotel rooms and related amenities were not covered by the CLRA.