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24 IPL Newsl. 1 (2005-2006)

handle is hein.journals/iprolane24 and id is 1 raw text is: A Publication of The ABA Section of Intellectual Property Law www.abanet.org/intelprop Volume 24 • Number 1 : Fall 2005 Confusion Likely after KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. BY SIMON J. FRANKEL Last year, the U.S. Supreme Court considered a question that has long vexed, companies caught in trade- mark disputes: When a trademark defendant claims to be using the plaintiff's mark as an English language word- and not as a trade- mark-what must the defendant Simon J. Frankel show in order to prevail? The doctrine of classic fair use in trade- mark law provides that when a defendant uses a word mark in its original English language sense, it should not be an infringement of the plaintiff's mark. The justifica- tion for this doctrine is obvious: Companies that choose ordinary, descriptive words as their trademarks should not be able to prevent others from using those words, in their descriptive sense, in commerce. But what if the defendant's use might create a likelihood of confusion between its goods and the plaintiff's goods? The Supreme Court took up this question last December in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. I The Court could have provided a sim- ple answer: A defendant who can establish it is using the trademark as an English language word, and not for its secondary meaning, also need not negate a likelihood of consumer confusion as to source or sponsorship. Despite some language to that effect, the opinion by Justice David Souter ultimately backed down from any clear rule to guide litigants and allowed that likelihood of con- fusion might always be relevant when a defendant claims a classic fair use.2 Simon Frankel is a litigation partner at Howard Rice Nemerovski Canady Falk & Rabkin in San Francisco. He special- izes in copyright, trademark, patent and right of publicity litiga- tion, defamation cases, and legal issues related to visual art. He can be reached at 415/434-1600 or sfrankel@howardrice.com. John P. Duchemin, a third-year student at the University of Chicago Law School, assisted in the preparation of this article as a summer associate at Howard Rice. When the Supreme Court sent the KP Permanent case back to the Ninth Circuit to reconsider its earlier deci- sion, that court exploited the loose language in Justice Souter's opinion. Specifically, the Ninth Circuit held that disputed factual issues concerning likelihood of confu- sion meant that the trademark defendant could not prevail with its classic fair use defense at the summary judgment stage.3 The result unfortunately leaves the law as muddy as when the Supreme Court waded into the fray last year. KP Permanent and Lasting Joust over Micro Colors The decisions of the Supreme Court and the Ninth Circuit resulted from a dispute between KP Permanent and Lasting Impression, two competitors in the perma- nent makeup industry. People, inject permanent makeup under their skin to conceal scars and, as Justice Souter put it, to modify nature's dispensations.4 Most users want the makeup to blend in, rather than announce its presence. Thus, KP and Lasting coined the term micro colors to describe their products' minute gradations of (continued on page 6) Keeping Current with the Chair .................... 3 Elimination of the Best Mode Requirement .......... 8 Supreme Court of Canada Ends MP3 Levy Battle ..... 15 Maximum Copyright Statutory Damages Award ...... 16 The Intersection Between Damages Recovery under the Patent Marking Statute ................19 European Software Patents ....................... 25 I2P Group News ...... ........................29 Recent Developments in Intellectual Property Law .... 32 Q THe A tA PECrty La Intellectual Property Law Dfending Liberty Puuing Jsie VISIT THE SECTION WEB SITE AT WWW.ABANET.ORG/INTELPROP

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