Revisiting the Silvertop banana costume case

Silvertop v. Kangaroo (3d Cir. 2019) held that a banana costume was both copyrightable and infringed:

In holding that the costume was protectable, the Third Circuit reasoned:

Although a banana costume is likely to be yellow, it could be any  shade of yellow—or  green or brown for that matter. Although a banana costume is likely to be curved, it need not be—let alone in any particular manner. And although a banana costume is likely to have ends that resemble a natural banana’s, those tips need not look like Rasta’s black tips  (in color, shape, or size).

Commenting on this reasoning, Jamie Boyle and Jennifer Jenkins said: 

So, while the court admits that a banana costume is likely to be yellow and curved, it says it could also be brown and straight. On Halloween, when your child goes out in her brown, straight, banana costume and her friends ask “why are you dressed up as a stick!?” she will be able to respond with a simple, terse explanation. “Star Athletica,” she will say.

(It's not really Star Athletica that is the direct culprit, but the court's cramped understanding of scenes a faire/basic designs; Star Athletica just means that all the limiting work is done by idea/expression and similar doctrines, and the court misapplied Star Athletica's holding that the designer's intent is irrelevant to separability to the separate issue of whether the designer did something creative/original.)

Anyway, the court has a possibly better argument: "copyrighting Rasta’s banana costume would not  effectively monopolize the underlying idea because there are many other ways to make a costume resemble a banana.  Indeed, Rasta provided over 20 non-infringing examples."

So I decided to take a look at the record.

First, there aren't "over 20"--there are 21 pictures, 2 of which are of a costume from Arrested Development. (I only used one of those two pictures.) Of the 20 costumes--treating minor variations as different costumes--3 are "sexy" bananas, a different 6 cover the face, 1 is a guy in a yellow suit with a hood, and 1 is an odd Wolverine. Maybe that's still enough to justify protection for Rasta's version, but the fact that no one noticed Wolverine in there suggests to me that principles of equity were doing more work than copyright principles.

On the other hand, the court isn't really suggesting that noninfringing costumes need to be straight and brown or green. Yay?

 

"natural" class certified based in part on internal acknowledgement of materiality and potential falsity

Drake v. Bayer Healthcare LLC, 2024 WL 4204921, No. 22-cv-1085-MMA (JLB) (C.D. Cal. Sept. 16, 2024)

Plaintiffs alleged that Bayer falsely advertised One A Day Natural Fruit Bites Multivitamin products as “natural” even though they “contain non-natural, synthetic ingredients.” They brought claims under NY and California law. The court certified plaintiff classes. I’ll just make a few notes.

Materiality: “[P]laintiffs must offer some means of providing materiality and reliance by a reasonable consumer on a classwide basis in order to certify a class.” Here, named plaintiffs’ depositions, Bayer’s internal documents, and a materiality survey were sufficient. Particularly notable: Bayer had internal debate about “natural.” Its senior brand manager wrote that the “Regulatory [department] did not support” the use of the word “natural” on the labels “based on the presence of vitamins (which are synthetic) in the formula.” But Bayer’s vice president of marketing mentioned that she “would keep [the word “natural”] to test ...” because “[c]onsumers loved those words ...” This was enough to support, for purposes of certification, the claims that a reasonable consumer would attach importance to “natural” and that Bayer knew this. The survey was also fine—the battle of the experts also created a common question of fact. With materiality comes a presumption of reliance.

Bayer also argued that plaintiffs failed to present a workable damages model. But “class wide damages calculations under the CLRA are particularly forgiving[,]” because “California law requires only that some reasonable basis of computation of damages be used, and the damages may be computed even if the result reached is an approximation.” Plaintiffs’ expert proposed a “choice-based conjoint survey methodology,” which will “measure the value of an individual product attribute, such as a specific understanding of the label” and in turn will help “determine the price premium attributable” to the label claims. That was a well-established method for measuring classwide damages in false advertising product label cases.

 

Copyright preemption in trade dress claims?

Scotts Company LLC v. SBM Life Science Corp., --- F.Supp.3d ----, No. 2:23-cv-1541, 2024 WL 4217446 (S.D. Ohio Sept. 18, 2024)

Scotts makes consumer lawn, garden, pesticide, and insecticide products, including under the “ORTHO” brand. Scotts alleged rights in its red mark, black trade dress, black label, and yellow barrier design that were allegedly infringed by competitor SBM’s competing products. Unsurprisingly, the court accepts those claims on a motion to dismiss, but seems to get the copyright preemption analysis backwards.

Scotts sufficiently alleged fame for dilution purposes.

Ortho red design mark

The allegations were, along with pictures, sufficient to allege a defined, distinctive trade dress:

The distinctive packaging of certain Scotts’ ORTHO control products consists of a unique arrangement of colors, graphic elements, font styles and text, with a black background with some lighter gradations of gray, a prominent placement of a red pentagon containing a brand name in white lettering above horizontal information bars that start on the left side of the label and connect into a circular or arc design that contains an image of green plant material. One information bar is yellowish/gold and the other information bar is silver. A product name is placed between the pentagon design and the information bars.

Ortho black trade dress

This was sufficiently definite; it didn’t include terms like “such as” or “for example,” which can be problematic.

However, coordinate state law claims under the Ohio Deceptive Trade Practices Act were preempted by §301 because the alleged extra element—the fact that the copied matter was put on products and sold on products that compete with Scotts’—didn’t qualitatively distinguish Scotts’ copyright claim from its trade dress claim. “[B]ased on Scotts’ allegations, the source of any likelihood of confusion—the extra element required to advance Scotts’ state-law claims—is the same activity that forms Scotts’ copyright claim,” so it wasn’t qualitatively different. (As TM gets more property-like, this argument may be more attractive to courts; when “confusion” is more notional than real, it seems less like an extra element.)

The court did find a copyright claim based on label similarity plausible. “Each [label has] a primarily black background, lighter gradations of gray, a prominent placement of a red pentagon containing white lettering where the brand name is, and horizontal information bars in yellowish/gold and silver that extend from the left side of the label to a circular image depicting green plant material.”

accused SBM trade dress--I really can't see substantial similarity of protectable expression here; this seems to conflate (c) and TM

The court doesn't separately deal with the copyright claim over the yellow barrier design, which to me clearly falls on the idea side of the idea/expression line:

False advertising: Scotts challenged SBM’s advertising statements that its Brush Killer Product kills brush for up to 12 months, protects for up to 12 months, and provides consumers with up to 365 days of control. Scotts alleged that the products do not provide the advertised protection for up to 12 months or 365 days; that was sufficient to allege falsity. At least the court is equally lenient with TM and false advertising?

"Made in the USA" materiality showing requires evidence, not just interested witness testimony

Illinois Tool Works Inc. v. J-B Weld Co., No. 3:19-cv-1434 (JAM), 2024 WL 4117244 (D. Conn. Sept. 9, 2024)

The parties compete in the sale of “chemical bonding products marketed for home and automotive use.” Here, the court kicks out Lanham Act claims/counterclaims on summary judgment for want of materiality—for “Made in USA” and the term “epoxy”—as well as another claim on laches grounds. The first one’s the potential surprise, and raises evidentiary questions about hearsay that a court in a trademark case might have seen differently.

J-B has used unqualified “Made in USA” claims in its advertising. The parties disputed whether J-B’s silicone sealants, manufactured by its suppliers, contain ingredients sourced from abroad and the significance of those ingredients.

ITW advertises “the interchange between its products and the matching OEM manufacturer products” in its materials, sometimes including OEM interchanges for specific automotive brands in its package advertising. It also marketed certain products as epoxies despite their not fitting the chemical definition of an epoxy. The parties agreed that “an epoxy is a polymer containing one or more epoxy or epoxide groups,” and that adhesives containing epoxides are distinct from adhesives containing methyl methacrylate (“MMAs”), and they have distinct health and safety concerns. ITW’s accused products didn’t contain chemical epoxide groups, but it categorized them as epoxies on its website. It took the position that, “from a marketing perspective, the definition of an epoxy is any two-part adhesive,” regardless of its specific chemical composition. J-B Weld disagreed and cited a few Amazon reviews in which customers say things like “Is this epoxy or just adhesive?”; “Can anyone tell me if this has methyl methacrylate (mma)? that’s what i want but i can’t tell for sure”; “What is the base chemical of this glue—epoxy, methacrylate, or polyurethane?” Some of ITW’s technical product data sheets did differentiate between “the ‘chemical type’ of an epoxy and a non-epoxy,” identifying differences in odor and flashpoint, among other product characteristics.

ITW didn’t submit sufficient evidence of the materiality of “Made in USA,” offering only “two deposition excerpts in which ITW employees offer their opinions and vague impressions on the issue.” The former director of marketing testified that consumers “definitely” purchase products “based on Made in the USA advertising.” He elaborated: “Because of the type of consumer that shops for our products in general, the profile are people that highly value Made in the USA.” He said that Walmart told his team that “made in the USA is a priority for them.” The court deemed this hearsay and thus irrelevant for summary judgment—but I wonder whether it could also be characterized as evidence of the speaker’s mental state. Regardless, “[c]ourts that have deemed ‘Made in USA’ claims material have been offered much richer evidentiary records,” including actual retailer testimony.

In addition, ITW didn’t show actual injury; in the Second Circuit, literal falsity alone isn’t enough to presume injury in the absence of comparative advertising as well as direct competition. This wasn’t comparative advertising (or a two-player market).

OEM: The court found laches; ITW had used OEM advertising since 2001 and J-B didn’t sue until 2020. J-B argued that the relevant period should begin in 2014, when J-B entered the market, and that it wasn’t unreasonable for a new market entrant to wait to sue the most significant competitor. But that still didn’t excuse six years of delay (where the relevant state period was three years). And ITW was likely to be prejudiced “by being forced to discontinue a marketing strategy it has relied on for so many years and with the risk that customers will assume—in the absence of OEM labeling claims—that the formulation of its products have changed.”

Epoxy: In J-B Weld Co., LLC v. Gorilla Glue Co., 978 F.3d 778 (11th Cir. 2020), J-B lost a false advertising claim against a different competitor based on the competitor’s use of the term “epoxy” in advertising its non-epoxy MMA-based product. The court of appeals reasoned that “consumers likely categorize ‘epoxies’ as all two-part resin-and-hardener adhesives, regardless of the chemical constitution of the resin.” It cited the testimony of J-B’s own expert “that consumers likely only care about whether the product sticks two surfaces together effectively.” Even if there were “safety and odor” differences, there wasn’t a showing of materiality.

The record here wasn’t sufficiently different from that in Gorilla Glue. A “smattering” of Amazon reviews was insufficient to change anything. J-B’s own CEO’s opinion about whether ITW’s epoxy claim would affect consumer purchasing decisions didn’t help because he wasn’t qualified expert on consumer purchasing decisions, and “his self-interested opinion about consumer purchasing decisions exceeds the limits of permissible lay opinion testimony that must be based on a witness’s own sensory perception.”

In the alternative, J-B also failed to show injury from either the OEM or epoxy advertising. Its 30(b)(6) witness testified that various retailer customers told them that J-B was losing business because ITW used “OEM” labels and J-B didn’t, but that was hearsay. Even nominal damages required evidence of injury.

 

Engagement rings in the news

 I'm quoted in this story about a dispute in front of the Massachusetts Supreme Judicial Court this week. In the courts of talking to the reporter, I learned that there have been a couple more state supreme court cases since I last looked, including one, Cummins v. Goolsby, 255 So.3d 1257 (Miss. 2018), in which the court refused to follow the no-fault, man always gets the ring back rule, but only because he was still married to someone else when he gave her the ring. (You can read my student note on the topic, of which I'm still very proud, here.)