The Supreme Court decided today that the trademark defense of fair use does not require the party asserting fair use to prove that its use did not create a possibility of consumer confusion. This dispute arose, as do most decisions from the Supreme Court on trademark issues, from a truly ridiculous set of facts. Previously, we've seen uniforms at chain taco stands (Taco Cabaña) set the stage for a little morality play. This time, it's lipstick. Or, rather, the marketing of one characteristic of lipstick: "microcolors." Or should that be "micro colors"?
That this ended up in the Supreme Court indicates that the litigants each felt there was a "principle" at stake, as opposed to any rational basis for the litigation. Under the Lanham Act, attorney's fees may be awarded only in an "appropriate case"—and a circuit split almost always indicates that the case will not be "appropriate." Thus, the cost just of the Supreme Court appeal almost certainly greatly outweighs the economic benefit available to either side from winning the case, whether in damages or in even a generous valuation of equitable relief. That the Lanham Act almost requires this ridiculousness through the "defend it or lose it" provisions makes this sadly amusing. As if anything connected to trademarklike rights and privileges in fashion isn't ridiculous to start with…
In any event, that's not the strangest part of this decision. Look, instead, to the syllabus, where one finds at the end:
Souter, J., delivered the opinion of the Court, in which Rehnquist, C. J., and Stevens, O'Connor, Kennedy, Thomas, and Ginsburg, JJ., joined, in which Scalia, J., joined as to all but footnotes 4 and 5, and in which Breyer, J., joined as to all but footnote 6.
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., No. 03–409 (Dec. 8, 2004), slip op. (syl.) at 3 (PDF, 156kb). Really, now: The only reason not to join the opinion was a footnote or two? Those must be important footnotes!
Or maybe not.
Justice Scalia objected to the following two footnotes:
4. Not only that, but the failure to say anything about a defendant’s burden on this point was almost certainly not an oversight, not after the House Subcommittee on Trademarks declined to forward a proposal to provide expressly as an element of the defense that a descriptive use be "'[un]likely to deceive the public.'" Hearings on H. R. 102 et al. before the Subcommittee on Trade-Marks of the House Committee on Patents, 77th Cong., 1st Sess., 167–168 (1941) (hereinafter Hearings) (testimony of Prof. Milton Handler). (Id. (op.) at 6)
5. See also Hearings 72 (testimony of Wallace Martin, Chairman, American Bar Association Committee on Trade-Mark Legislation)("Everybody has got a right to the use of the English language and has got a right to assume that nobody is going to take that English language away from him"). (Id. (op.) at 10)
I suppose that's just Justice Scalia's revulsion for legislative history again. Justice Breyer waits until the end to object:
6. The record indicates that on remand the courts should direct their attention in particular to certain factual issues bearing on the fair use defense, properly applied. The District Court said that Lasting's motion for summary adjudication conceded that KP used "microcolor" descriptively and not as a mark. SA CV 00–276–GLT (EEx) at 8, App. to Pet. for Cert. 29a. We think it is arguable that Lasting made those concessions only as to KP's use of "microcolor" on bottles and flyers in the early 1990s, not as to the stylized version of "microcolor" that appeared in KP's 1999 brochure. See Opposition to Motion for Summary Judgment in SA CV 00–276–GLT (EEx) (CD Cal.), pp. 18–19; Appellants' Opening Brief in No. 01–56055 (CA9), pp. 31–2. We also note that the fair use analysis of KP’s employment of the stylized version of "microcolor" on its brochure may differ from that of its use of the term on the bottles and flyers. (Id. (op.) at 11–12)
I am uncertain what this objection pertains to. For that matter, I'm uncertain what the footnote itself pertains to—I think there is little chance that one could make even a colorable argument that the District Court's characterization might qualify as the law of the case, particularly since the Supreme Court's decision makes clear that the entire basis for summary judgment needs to be revisited.
Too bad some of the other footnotes in Supreme Court history did not also draw naked objections, or at least comment. I'm thinking especially of the various decisions on arbitrability, which culminated in the mess of Prima Paint and continued misinterpretations thereafter. More to the point, there's the whole issue of what the facts "really were" in Acton. But who am I to talk? <SARCASM> Just because I've read the entire unsealed record doesn't mean I understand the case, now, does it? </SARCASM>