Lttb LLC v. Redbubble, Inc.

• Court: Court of Appeals for the Ninth Circuit
• Decided: January 20, 2021
• Docket: 19-16464
• Status: Unpublished

Opinion

FILED NOT FOR PUBLICATION JAN 20 2021 UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS

FOR THE NINTH CIRCUIT

LTTB LLC, a California limited liability No. 19-16464 company, D.C. No. 3:18-cv-00509-RS Plaintiff-Appellant,

v. MEMORANDUM*

REDBUBBLE, INC., a Delaware corporation,

Defendant-Appellee.

Appeal from the United States District Court for the Northern District of California Richard Seeborg, District Judge, Presiding

Argued and Submitted November 18, 2020 San Francisco, California

Before: TASHIMA, NGUYEN, and HURWITZ, Circuit Judges.

LTTB LLC sells t-shirts and other goods bearing its registered trademarks,

the words and design, “LETTUCE TURNIP THE BEET.” LTTB brought an

action against Redbubble, Inc., under the Trademark Act of 1946 (Lanham Act), 15

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. U.S.C. § 1051 et seq., alleging that Redbubble infringed on its trademarks by

selling products containing the same words and design. The district court granted

summary judgment in favor of Redbubble, concluding that, pursuant to the

doctrine of aesthetic functionality, LTTB could not preclude others from

displaying the phrase on products. LTTB, LLC v. Redbubble, Inc., 385 F. Supp. 3d

916, 920–22 (N.D. Cal. 2019). We have jurisdiction under 28 U.S.C. § 1291, and

we apply de novo review. Moldex-Metric, Inc. v. McKeon Prods., Inc., 891 F.3d

878, 880–81 (9th Cir. 2018). We conclude that the district court correctly

concluded that LTTB failed to raise a triable issue that its marks serve the

trademark function of source-identification and therefore affirm. See Au-Tomotive

Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1067 (9th Cir. 2006) (“The

principal role of trademark law is to ensure that consumers are able to identify the

source of goods.”).

1. The district court did not erroneously rely on the test for aesthetic

functionality from International Order of Job’s Daughters v. Lindeburg & Co.,

633 F.2d 912 (9th Cir. 1980). Although Job’s Daughters was “a somewhat unique

case” whose “broad language was soon clarified and narrowed,” the case remains

good law. Au-Tomotive Gold, 457 F.3d at 1069.

2 Regardless, the result here is the same under the test for aesthetic

functionality articulated in Au-Tomotive Gold. Under the first step, the t-shirts,

tote bags, and other products bearing the LTTB mark would still function as t-

shirts and tote bags without the mark. See id. at 1072–73 (“Auto Gold’s products

would still frame license plates and hold keys just as well without the famed

marks.”). “Similarly, use of the marks does not alter the cost structure or add to

the quality of the products.” Id. at 1073.

Moving to the second step, the question is whether the marks “perform some

function such that the ‘“exclusive use of [the marks] would put competitors at a

significant non-reputation-related disadvantage.”’” Id. (quoting TrafFix Devices,

Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001)). It cannot be disputed that

competitors would be unable to sell products bearing the phrase if LTTB’s marks

were protected. This court has been “careful to prevent ‘the use of a trademark to

monopolize a design feature which, in itself and apart from its identification of

source, improves the usefulness or appeal of the object it adorns.’” Id. (quoting

Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 774 (9th Cir. 1981));

accord Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696

F.3d 206, 222 (2d Cir. 2012) (“In short, a mark is aesthetically functional, and

therefore ineligible for protection under the Lanham Act, where protection of the

3 mark significantly undermines competitors’ ability to compete in the relevant

market.”).

In Au-Tomotive Gold, where the defendant admitted that consumers wanted

the goods because they identified the sources (Volkswagen and Audi), “the alleged

aesthetic function [was] indistinguishable from and tied to the mark’s source-

identifying nature.” Au-Tomotive Gold, 457 F.3d at 1074. By contrast, there is no

evidence here that consumers buy LTTB’s goods because they identify LTTB as

the source, rather than because of the aesthetic function of the phrase, “LETTUCE

TURNIP THE BEET.”

LTTB presented evidence of the popularity of its goods, but that evidence

does not raise a triable issue as to whether consumers buy the products because

they identify LTTB as the source of the goods. Its evidence includes anecdotes

from Elektra Printz Gorski, LTTB’s founder and owner, that celebrities wear the

4 shirts and that a customer emailed her, as well as printouts of the goods offered for

sale on the LTTB Etsy website.1

Although LTTB’s evidence may indicate that its goods are popular, it does

not indicate that consumers buy the goods because the marks identify LTTB as the

source of the goods. In Vuitton, the plaintiff presented an affidavit by a buyer of

goods for a department store stating that it was unlikely “there is anyone who

would purchase a Vuitton product solely because they found the characteristic

Vuitton trademark to be aesthetically pleasing,” but instead “it is because the

design associates the products with Vuitton.” Vuitton, 644 F.2d at 776. Unlike

Vuitton, LTTB has presented no evidence that consumers buy the goods because

the design associates the goods with the company LTTB rather than because they

want goods bearing the phrase.

1 The printouts show images of LTTB’s products and three five-star reviews. But, almost all the products bear the phrase “LETTUCE TURNIP THE BEET” on them, indicating that the phrase acts as an aesthetic design, not as a symbol for the company. Cf. EMI Catalogue P’ship v. Hill, Holliday, Connors Cosmopulos Inc., 228 F.3d 56, 63 (2d Cir. 2000) (rejecting the claim that a “song itself serves as a ‘symbol or device’ that indicates its source” because trademark law “does not protect the content of a creative work of artistic expression as a trademark for itself”). The comments in the reviews state: “Fast shipping. Product as described/true to photo. I would highly recommend!” and “Great stickers shipped on time. Thank you.” This evidence does not support LTTB’s contention that consumers purchase the products because they are source- identifying rather than merely aesthetically pleasing. 5 LTTB has presented no evidence to avoid the conclusion that the marks here

“serve an aesthetic purpose wholly independent of any source-identifying

function” and thus are aesthetically functional. Au-Tomotive Gold, 457 F.3d at

1073. Therefore, LTTB’s evidence does not raise an issue of fact as to whether

consumers buy the products because they identify LTTB as the source.

2. Despite the fact that LTTB’s trademarks are registered and two of

them are incontestable, see 15 U.S.C. § 1115(b), the right to use registered marks is

subject to nine “defenses or defects” listed in the statute, including “[t]hat the mark

is functional.” id. § 1115(b)(8). The defense of functionality “provides the

challenger of a mark the opportunity to rebut prima facie evidence of the mark’s

validity.” Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 782 (9th Cir. 2002); see

15 U.S.C. § 1115(a). Because, on this record and when used on the allegedly

infringing products that are the subject of LTTB”s complaint, LTTB’s marks are

functional, they are not protectable against any type of allegedly infringing

activity.2 See Tie Tech, 296 F.3d at 783 (“[T]he plaintiff retains the ultimate

burden of persuasion in a trademark infringement action, namely proof of

2 The district court pointed out that Redbubble’s argument was not that LTTB’s registered trademarks are per se invalid, but that LTTB could not “show[] a likelihood of confusion as to source, where the mere use of the pun on the face of various products cannot be source-identifying.” LTTB, 385 F. Supp. 3d at 921. Similarly here, we do not hold that LTTB’s marks are per se invalid. 6 infringement. A necessary concomitant to proving infringement is, of course,

having a valid trademark; there can be no infringement of an invalid mark.”). We

therefore reject LTTB’s contentions that the district court erred in failing to address

uses of the marks on Redbubble’s website and in online advertising. We also need

not address LTTB’s arguments regarding counterfeiting and contributory

infringement.

3. Because LTTB’s mark is functional and therefore not protectable on

this record, there is no need to address the issue of likelihood of confusion. See

Talking Rain Beverage Co. Inc. v. S. Beach Beverage Co., 349 F.3d 601, 603 (9th

Cir. 2003) (observing that “we need not reach the distinctiveness and likelihood of

confusion issues” because, “notwithstanding its registered trademark, [plaintiff’s]

bike bottle design is functional”).

4. LTTB’s argument that the district court erroneously ignored its design

marks is similarly unavailing. Unlike copyright and patent laws, trademark laws

are “not designed to protect originality or creativity,” Dastar Corp. v. Twentieth

Century Fox Film Corp., 539 U.S. 23, 37 (2003), but to “prevent[] competitors

from copying ‘a source-identifying mark,’” id. at 34 (quoting Qualitex Co. v.

Jacobson Prods. Co., 514 U.S. 159, 163-64 (1995)). Thus, “[i]n general, unless an

intellectual property right such as a patent or copyright protects an item, it will be

7 subject to copying.” Id. at 33 (quoting TrafFix, 532 U.S. at 29); see also, e.g., id.

at 36 (where “Wal-Mart produced ‘knockoffs’ of children’s clothes designed and

manufactured by Samara Brothers,” the designs on the clothes could not be

protected under the Lanham Act without showing that the designs “‘identify the

source of the product’” (quoting Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S.

205, 211 (2000))). Like the sweater designs in Wal-Mart, LTTB’s marks are

primarily aesthetic on this record, not source-identifying.

5. The district court did not improperly rely on the Patent and Trademark

Office’s initial rejection of Gorski’s trademark application in considering whether

the mark was merely functional or source-identifying. Cf. TrafFix, 532 U.S. at 34

(looking to the prosecution history of an expired patent in considering whether

features asserted to be trade dress were functional). Nor did the district court

erroneously conflate the standards for registration of a trademark and trademark

infringement liability.

• ! •

LTTB’s marks do not function as trademarks because they are aesthetic only

and do not identify the source of the goods. The allegedly infringing activity does

not deceive or mislead consumers about the source of the goods but copies the

designs themselves. See Job’s Daughters, 633 F.2d at 919 (“under the Lanham

8 Act ‘one can capitalize on a market or fad created by another provided that it is not

accomplished by confusing the public into mistakenly purchasing the product in

the belief that the product is the product of the competitor’” (quoting Am.

Footwear Corp. v. Gen. Footwear Co. Ltd., 609 F.2d 655, 662 (2d Cir. 1979))).

Because functionality is a defense to the validity of the marks and to LTTB’s

exclusive right to use the marks, the district court properly granted summary

judgment to defendant Redbubble on this ground and was not required to consider

LTTB’s other arguments.

AFFIRMED.