Abhoring a vacuum

Originally posted 2007-04-05 00:22:52. Republished by Blog Post Promoter

electrolux-oldRebecca Tushnet’s 43(B)log writes about a recent decision in the U.S. District Court for the Eastern District of New York — “Nothing sues like an Electrolux”:

If you sue a competitor for false advertising for telling people that your products infringe its IP rights, you can expect some IP counterclaims. And that’s what happened here. . . .

Trade dress infringement dominated the case, which provides a nice illustration of the three principles I tell my students are key in §43(a) trade dress cases: (1) the plaintiff’s ability to select and define elements of its claimed trade dress based on what it is that the defendant copied; (2) the key role of functionality and the tensions between refusing to protect functional features and protecting overall nonfunctional dress; and (3) the role of word/house marks in fending off confusion. Because of the factual uncertainty surrounding issues of protectability and confusion, the court denied summary judgment to both parties. . . .

My feeling is that Electrolux got a pass on its trade dress claims because of [junior user] Imig’s false advertising, copyright infringement, and general chutzpah in suing [senior user] Electrolux. If this had just been a trade dress case, Imig should have prevailed on summary judgment.

Rebecca is probably right. It’s a hard lesson that even without the involvement of juries, many judicial outcomes are largely rationalizations for the dispensing of rough justice. This is as true with trademark cases, or more true, than many other areas of law, especially because most judges (dare I say most judges’ clerks?) aren’t experts in the field and few cases get to the substantive decision stage. Judges usually think trademark disputes are petty and insignificant, and they are loathe to grant a summary judgment in a case they think should be settled. They also increasingly tend to side with mark holders and, as the trend of cases over the last few years makes clear, they don’t get fair use.

This matters because practitioners and clients have to be aware that the most elegant and well-supported argumentation frequently doesn’t really matter if the judge thinks your client is in the wrong and has the broad degree of discretion accorded to courts in “soft” areas of IP law such as the Lanham Act.

And that’s why they say good facts beat good law just about every time. Call it judicial nullification.

The decision by U.S. Magistrate Judge James Orenstein is here.

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Author:Ron Coleman

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