No matter how sophisticated we are on the outside, on the inside everyone has a favorite novelty t-shirt buried deep in the recesses of their juvenile subconscious. Mine is one that says “Welcome to Philadelphia. Now Go Home,” which so perfectly captures both the convivial pride and bewildering hostility of the city that raised me.
Many five-year olds these days have a different favorite t-shirt, sold by Gymboree subsidiary Crazy8, which features the pun: “Lettuce Turnip the Beet.” One problem though: artist Elektra Gorski had been selling t-shirts containing the same phrase for several years before the Gymboree line came out. Early this year, Gorski brought suit in the Northern District of California, alleging that Gymboree had violated both her copyright and trademark rights. Gymboree filed a motion to dismiss, and Judge Lucy Koh issued an order on July 16, 2014.
Gorski had alleged that her t-shirt and the Gymboree t-shirt are substantially similar with respect to “the overall arrangement, shapes, typefaces, sizes and placement of the design elements.” However, the Court held that any such similarities merely concerned the arrangement of the short phrase “Lettuce Turnip the Beet.” Since a short phrase is not copyrightable, “no matter how distinctively arranged,” Gorski had not alleged the copying of any protectable element. Therefore, the Court dismissed the copyright count. Judge Koh granted Gorski leave to amend her complaint to allege substantial similarity with respect to any protectable elements of the design, although she gave no hint as to what those protectable elements might be.
As to Gorski’s trademark claim, Gymboree argued that its use of the phrase “Lettuce Turnip the Beet” was a nominative fair use. Under the nominative fair use doctrine, a defendant is permitted to use the plaintiff’s mark to describe the plaintiff’s product, provided the defendant is not implying the endorsement of the plaintiff or creating confusion as to product source. So, for example, you can use the VOLKSWAGEN mark to let the public know that you fix Volkswagens. Similarly, even though BOSTON MARATHON is a registered trademark, the owner of that mark cannot prevent a television station from using the term “Boston Marathon” when it reports on the Boston Marathon. In other words, trademark law is concerned with preventing confusion as to the source of products, not with the censorship or monopolization of discussion about those products.
Gymboree’s theory was that the phrase “Lettuce Turnip the Beet,” was not a mark identifying the source of a product, but was itself the product. In other words, Gorski was not really selling a t-shirt; she was selling a pun. Therefore, as in the Boston Marathon example, Gymboree’s use of the term was simply a descriptive and non-source identifying reference to the pun (i.e., to the product) which could not possibly cause any confusion.
Are you buying that? Judge Koh didn’t. The Court stated that it could not find as a matter of law that no endorsement or sponsorship was implied by Gymboree’s use of Gorski’s phrase. The Court also noted that it was unaware of any prior case in which a Rule 12(b)(6) motion to dismiss was allowed based on a nominative fair use defense, even a strong one.
The parties have now entered the discovery phase. Barring settlement, the matter is scheduled for dispositive motion practice in June 2015, and trial in December 2015.