The Supreme Court will hear oral arguments on Tuesday in KP Permanent Make-Up, Inc. v. Lasting Impression, Inc., et al. a case that could significantly affect the scope of fair use defenses in trademark infringement lawsuits.
The case is, honestly, a not very interesting case of commercial litigation between two competitors in the "permanent makeup" business. (Okay, actually, the permanent makeup business might be fairly interesting: "Permanent makeup is similar to a tattoo, in that both are created by injecting pigment into the skin.") One has been using the phrase "micro colors" on its makeup for years and has a trademark; the other has been using the phrase "micro color." The inevitable lawsuit ensued, so to speak.
The district court ruled in favor of the company without the trademark, finding no infringement on a whole variety of grounds. The Ninth Circuit reversed, across the board, in a fairly perfunctory opinion (or rather, an opinion as perfunctory as one that reverses a lower court on four different issues can be). But then, wonder of wonders, the Supreme Court granted cert on the fair use issue.
So what's at stake? The gold standard for trademark infringement is "consumer confusion," which is a big fact-specific mess that relies on an eight-factor test. The so-called "fair use" defense -- not really analagous to fair use in copyright -- comes from a slighty different part of the statutory text, and lets a defendant use a trademark to describe its own goods, descriptively and in good faith. Depending on whom you ask, this defense either gives you a get-out-of-jail free card that lets you skip the whole consumer confusion analysis, or is in fact just a slightly different reformulation of that analysis. The district court said the former; the Ninth Circuit said the latter.
The difference is a big deal for two reasons. First, the get-out-of-jail-free interpretation focuses on the intent of the user and the accuracy of the description, not the minds of consumers. Because consumers are dumb and very easily confused -- at least if you believe trademark lawyers--the district court's version is much friendlier to trademark defendants. Second, because the actual consumer confusion analysis is so messy, you basically can't win a consumer confusion case on a summary judgment motion -- that is, on an attempt to skip the trial itself. If the fair use test is the same as the consumer confusion test, then, a fair use defendant will always have to face the expense of a full trial. And we know painfully well from copyright fair use litigation how chilling that expense can be, where defendants' free expression rights are at stake.
In the last two years, the Supreme Court has shown an interest in paring back trademark law: in Dastar and in Victor's Little Secret. Is the Court looking to go for a hat trick by taking KP Permanent? Stay tuned . . .