false designation claim doesn't require distinctiveness, court wrongly holds

Simpson Strong-Tie Company Inc. v. MiTek Inc., 2021 WL 1253803, No. 20-cv-06957-VKD (N.D. Cal. Apr. 5, 2021)

The plaintiff benefits from very generous treatment of its false designation and copyright claims, in the process stripping false designation of anything other than a prohibition on copying/vitiating both Wal-Mart and Dastar.

Simpson sells structural connectors for use in building construction. Each product has an individual alphanumeric product name including a “part name” consisting of a letter or combination of letters designating the product line, and a “model number” consisting of additional numbers and letters appended to the part name to distinguish between various models of a particular part with different attributes. Its Wood Construction Connectors Catalog contains an alphabetical product index and various charts specifying various attributes of Simpson’s products, listed by product names. It registered copyirghts in its catalog and supplements.

Simpson alleged that MiTek’s products were “knock-offs or close copies” of Simpson’s products that are not equivalent to or substitutes for Simpson’s products due to the patented nature of some of Simpson’s technology. MiTek’s 2020 Catalog allegedly uses Simpson product names as a basis for MiTek’s own product names and includes an alphabetical reference index using Simpson product names as reference numbers, deceiving consumers into believing that the companies’ products are equivalent and interchangeable when they are not, or that MiTek’s products are actually Simpson’s products.

MiTek argued that a product name cannot be proven true or false, but the court agreed that Simpson had sufficiently pled that placing the parties’ products next to each other in this way created a false impression that the parties’ products are “equivalent or otherwise interchangeable.”

Passing off: MiTek argued that Simpson didn’t plead inherent or acquired distinctiveness, and Simpson responded that the Lanham Act protects even generic marks from “false designation of origin.” [You know it’s going to be bad when a court says “generic marks,” a noncategory.] The court agreed! It was enough to allege that (1) MiTek’s use of Simpson product names as MiTek’s own product names falsely identifies MiTek products as Simpson products, and (2) MiTek’s use of Simpson’s product names as reference numbers for MiTek’s own products in MiTek sales and marketing literature creates a false impression that MiTek’s products are in some way connected to or associated with Simpson. Comment: this is entirely junk reasoning, since there can be no false identification without distinctiveness (that is, identification)--the genericity cases require "de facto secondary meaning" in the absence of legally protectable secondary meaning, and they also limit the available remedies to clear disclosure. 

Copyright infringement: MiTek argued that the portions of the catalog it allegedly copied—Simpson product names and the alphabetical index of Simpson products—were not protectable. Although originality is a question of fact, sometimes you can just look at the accused and accusing work. Though there were “serious questions” about the originality of the product names and alphabetical index, it wanted a fuller record before saying that the names and alphabetical index weren’t sufficiently original as a matter of law.

The state law claims also survived; as a competitor, Simpson didn’t have to plead its own reliance under the UCL.