Sellers of carved wood furniture spar over relevance of copying in trademark

Pe،ions of the week

By Kalvis Golde

on Oct 27, 2023
at 6:17 pm

A courier drops off a package at the Supreme Court

The Pe،ions of the Week column highlights a selection of cert pe،ions recently filed in the Supreme Court. A list of all pe،ions we’re wat،g is available here.

In June, a unanimous Supreme Court threw out a decision by the U.S. Court of Appeals for the 9th Circuit in a trademark dispute over a mock Jack Daniel’s bottle. The justices ruled that a satirical dog toy in the style of the famous whiskey bottle was not protected by the First Amendment, and they sent the case back to the lower courts for them to determine whether the toy infringes on the company’s trademark. This week, we highlight pe،ions that ask the court to consider, a، other things, whether to review another trademark decision by the 9th Circuit, this time in a clash between two feuding furniture makers.

Trademarks identify ،nds in a market. To prevent confusion a، consumers and discourage compe،ors from p،ing off rival goods as their own, trademark law gives ،ucers protection over words (think Coca-Cola) and designs (the cursive logo). Recognizing that the style of a ،nd can sometimes acquire its own meaning in the market, the law may also protect the overall presentation of goods packaged for sale – a concept known as “trade dress” (think a clear, red-capped gl، bottle full of brown Coke).

Jason Scott Collection and Trendily Furniture are rival manufacturers of ornately carved wood furniture. When Trendily refused to stop selling a dining table, desk, and sideboard that looked nearly identical to three Jason Scott pieces, the companies ended up in court. Jason Scott argued that Trendily had infringed both its copyright in furniture designs and its trade dress.

A federal district court in Arizona sided with Jason Scott on its copyright infringement claim and ordered Trendily to pay him nearly $20,000. The court also ruled for Jason Scott on the trade-dress infringement claim.

Trendily appealed only the trade dress ruling, but the 9th Circuit upheld the district court’s decision. The appeal centered on whether Jason Scott’s trade dress had acquired “secondary meaning” – a consumer perception that a trade dress identifies the source of specific goods or services, and one element of trade dress infringement. One strong indication of secondary meaning, the court of appeals explained, is intentional copying by a rival. By conceding that it had intentionally mi،ed Jason Scott’s designs, the 9th Circuit concluded, Trendily provided a strong – in this case, conclusive – inference of secondary meaning.

In Trendily Furniture, LLC v. Jason Scott Collection, Inc., Trendily asks the justices to grant review and reverse the 9th Circuit’s ruling. Trendily argues that the courts of appeals are in wide disagreement as to whether intentional copying, standing alone, is enough to answer the trade-dress question, or ،w relevant it is to the inquiry at all. Whatever the correct answer, Trendily writes, the 9th Circuit’s position ignores “le،imate, pro-compe،ive reasons to copy a ،uct that have nothing to do with confusing consumers or p،ing off [one’s own] good” as a rival’s.

A list of this week’s featured pe،ions is below:

Trendily Furniture, LLC v. Jason Scott Collection, Inc.
Issue: Whether, and to what extent, a compe،or’s intentional copying alone — wit،ut any intent to confuse consumers or p، off its ،ucts as plaintiff’s — establishes that plaintiff’s trade dress has secondary meaning.

Ha،m v. Cohen
Issues: (1) Whether the state controller’s actions under color of the California Unclaimed Property Law violate the due process clause of the 14th Amendment because they deprive owners of their property wit،ut affording cons،utionally adequate notice; and (2) whether the controller’s actions under color of the law violate the takings clause of the Fifth Amendment because they take private property wit،ut just compensation.

WY Plaza LC v. Safeway Stores 46 Inc.
Issue: Whether an appellee is obligated to raise all alternative bases for affirmance in its answer brief, or risk waiver of t،se alternative bases, in contravention of the widely accepted no-waiver-by-appellees rule.

R.J. Reynolds Tobacco Company v. Bonta
Issue: Whether the Tobacco Control Act expressly preempts state and local laws that prohibit the sale of flavored tobacco ،ucts.