Happy inauguration day to Redbubble in particular: 9th Cir. affirms functionality in Lettuce Turnip the Beet

LLTB LLC v. Redbubble, Inc., No. 19-16464 (9th Cir. Jan. 20, 2021)

LTTB LLC sells t-shirts and other goods bearing its registered trademarks, the words and design, “LETTUCE TURNIP THE BEET.”  LTTB sued Redbubble for infringing by selling products containing the same words and design. The district court granted summary judgment in favor of Redbubble on grounds of aesthetic functionality/failure to function. The court of appeals affirmed in a nonprecedential opinion, holding (contrary to what INTA wanted) that Job’s Daughters is still good law even though its “broad language was soon clarified and narrowed.”

Anyway, under Au-Tomotive Gold, the symbols here were functional. Although “the t-shirts, tote bags, and other products bearing the LTTB mark would still function as t- shirts and tote bags without the mark” and use of the mark doesn’t alter the cost structure of production or add to the [physical] quality of the products, but the question of aesthetic functionality is whether the marks “perform some function such that the exclusive use of the marks would put competitors at a significant non-reputation-related disadvantage” (cleaned up).

Without explicitly interpreting what “significant” means here, the court reasoned: “It cannot be disputed that competitors would be unable to sell products bearing the phrase if LTTB’s marks were protected.” And the Ninth Circuit disfavors monopolization of “a design feature which, in itself and apart from its identification of source, improves the usefulness or appeal of the object it adorns.” There was no evidence that consumers bought LTTB’s goods because they identify LTTB as the source, rather than because of the aesthetic function of the phrase, “LETTUCE TURNIP THE BEET.” LTTB’s evidence of the popularity of its goods didn’t raise a triable issue on source identification. Indeed, almost all of LTTB’s products bore the phrase “LETTUCE TURNIP THE BEET” on them, “indicating that the phrase acts as an aesthetic design, not as a symbol for the company.” Unlike high fashion brands, LTTB presented no evidence “that consumers buy the goods because the design associates the goods with the company LTTB rather than because they want goods bearing the phrase.” Thus, it didn’t raise an issue of fact on aesthetic functionality. [Although the court also doesn’t say anything about this, here the fact that no evidence of secondary meaning was required to register the marks cuts against LTTB: it was never required to develop such evidence, and the fact that a symbol could be inherently distinctive if used in the right way doesn’t do anything to rebut evidence that consumers are looking for the aesthetic effects of displaying the symbol prominently on goods.]

LTTB’s registrations, and even incontestable registrations, couldn’t overcome the defenses listed in statute, including “[t]hat the mark is functional.” “Because, on this record and when used on the allegedly infringing products that are the subject of LTTB”s complaint, LTTB’s marks are functional, they are not protectable against any type of allegedly infringing activity.”

So, is the court actually recognizing pure defense-side functionality? Sort of. Footnote: “[W]e do not hold that LTTB’s marks are per se invalid.” Instead (?), the uses here—including on Redbubble’s website and in online advertising—could not be infringing. But also: “Because LTTB’s mark is functional and therefore not protectable on this record, there is no need to address the issue of likelihood of confusion.” Nor did the district court err in not addressing LTTB’s design marks separately; trademark isn’t supposed to protect originality or creativity, but rather to protect source identification. “Like the sweater designs in Wal-Mart, LTTB’s marks are primarily aesthetic on this record, not source-identifying.” [This reiteration of “on this record” is confusing. Is the court suggesting LTTB can try again if it develops evidence as to front-of-product uses? Why? While there are a couple of cases allowing terms that had distinctiveness, then became generic, to reclaim that earlier distinctiveness, I’m not aware of cases allowing a once-functional product feature to become nonfunctional.]

The district court also didn’t err in looking at the PTO’s initial rejection of LTTB’s application on failure to function grounds; TrafFix looked at the prosecution history of an expired patent in addressing trade dress functionality.

We end with some vagueness about whether LTTB owns anything:

LTTB’s marks do not function as trademarks because they are aesthetic only and do not identify the source of the goods. The allegedly infringing activity does not deceive or mislead consumers about the source of the goods but copies the designs themselves…. Because functionality is a defense to the validity of the marks and to LTTB’s exclusive right to use the marks, the district court properly granted summary judgment to defendant Redbubble ….