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LTTB LLC v. Redbubble, Inc.

United States District Court, N.D. California

July 12, 2019

LTTB LLC, Plaintiff,
v.
REDBUBBLE, INC., Defendant.

          ORDER DENYING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT AND GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

          RICHARD SEEBORG, UNITED STATES DISTRICT JUDGE

         I. INTRODUCTION

         No one suggests puns are copyrightable or patentable. This case presents the question of whether a pun may be protected under trademark principles. The answer is clear: while a source-identifying trademark may embody a pun, no one can claim exclusive rights to use the pun merely by printing it on t-shirts, other “[w]earable garments and clothing, ” “[p]aper for wrapping and packaging, ” or “tote bags, ” or similar products and calling it a “trademark.” Even if a trademark embodying a pun is otherwise enforceable where there is a likelihood of source confusion, the trademark holder cannot prevent others from using the pun in contexts that do not imply source.

         Plaintiff in this action has registered trademarks for the pun “LETTUCE TURNIP THE BEET.” The PTO allowed those registrations, but only after plaintiff proposed including the phrase on product labels and hang tabs-the application was rejected when plaintiff first suggested the phrase merely would be emblazoned across those products. While plaintiff may be entitled to continue to enforce those marks when used in source-identifying manners, it is not entitled to preclude others from making the joke on t-shirts or elsewhere.

         II. BACKGROUND

         Plaintiff in this action is LTTB, LLC (“LTTB”), which describes itself as “a small business that has grown from a single street vendor into a hugely popular online storefront with 10, 000 followers and sales of nearly $1 million.” Plaintiff contends it has “achieved this success largely due to public fascination with its LETTUCE TURNIP THE BEET trademark and the beautiful and high-quality goods sold under that mark.” There is no dispute that LTTB owns four United States federal trademark registrations for the mark LETTUCE TURNIP THE BEET, two of which allegedly have become “incontestable” due to continued use in the statutory period.

         Defendant Redbubble, Inc., a company based in Australia, operates what it characterizes as a “global online marketplace” on the internet where independent artists can and do “upload and sell their creative designs on high-quality, everyday products such as apparel, phone cases, stickers, bags, wall art and so on.” This action arises from the fact that products featuring the phrase “Lettuce Turnip the Beet” or similar phrases allegedly have been offered for sale on the Redbubble site.

         Redbubble seeks summary judgment on grounds that it cannot be held liable for any trademark infringement by third parties, given efforts it insists it has made to respond to any complaints made by LTTB and to remove any allegedly infringing products. Redbubble also argues that, apart from whether or not allegedly infringing products have been offered for sale on its website, LTTB is not entitled to preclude others from using the “LETTUCE TURNIP THE BEET” pun, absent evidence of source confusion.

         Although there might otherwise be triable issues of fact as to whether Redbubble could be liable for the marketing of allegedly infringing products on its website, it is entitled to summary judgment because LTTB is not entitled to pre-empt use of the pun under the guise of trademark law. Further factual background is set out in the discussion below, where material.

         III. LEGAL STANDARD

         Summary judgment is proper “if the pleadings and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). The purpose of summary judgment “is to isolate and dispose of factually unsupported claims or defenses.” Celotex v. Catrett, 477 U.S. 317, 323-24 (1986). The moving party “always bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of the pleadings and admissions on file, together with the affidavits, if any, which it believes demonstrate the absence of a genuine issue of material fact.” Id. at 323 (citations and internal quotation marks omitted). If it meets this burden, the moving party is then entitled to judgment as a matter of law when the non-moving party fails to make a sufficient showing on an essential element of the case with respect to which he bears the burden of proof at trial. Id. at 322-23. The non-moving party “must set forth specific facts showing that there is a genuine issue for trial.” Fed.R.Civ.P. 56(e). The non-moving party cannot defeat the moving party's properly supported motion for summary judgment simply by alleging some factual dispute between the parties.

         To preclude the entry of summary judgment, the non-moving party must bring forth material facts, i.e., “facts that might affect the outcome of the suit under the governing law . . . . Factual disputes that are irrelevant or unnecessary will not be counted.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). The opposing party “must do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 588 (1986). The court must draw all reasonable inferences in favor of the non-moving party, including questions of credibility and of the weight to be accorded particular evidence. Masson v. New Yorker Magazine, Inc., 501 U.S. 496 (1991) (citing Anderson, 477 U.S. at 255); Matsushita, 475 U.S. at 588 (1986). It is the court's responsibility “to determine whether the ‘specific facts' set forth by the nonmoving party, coupled with undisputed background or contextual facts, are such that a rational or reasonable jury might return a verdict in its favor based on that evidence.” T.W. Elec. Service v. Pacific Elec. Contractors, 809 F.2d 626, 631 (9th Cir. 1987). “[S]ummary judgment will not lie if the dispute about a material fact is ‘genuine,' that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248. However, “[w]here the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no ‘genuine issue for trial.'” Matsushita, 475 U.S. at 587.

         IV. DISCUSSION

         A trademark is defined in 15 U.S.C. § 1127 as including “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 ...


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