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?