FILED
NOT FOR PUBLICATION
JAN 20 2021
UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
LTTB LLC, a California limited liability No. 19-16464
company,
D.C. No. 3:18-cv-00509-RS
Plaintiff-Appellant,
v. MEMORANDUM*
REDBUBBLE, INC., a Delaware
corporation,
Defendant-Appellee.
Appeal from the United States District Court
for the Northern District of California
Richard Seeborg, District Judge, Presiding
Argued and Submitted November 18, 2020
San Francisco, California
Before: TASHIMA, NGUYEN, and HURWITZ, Circuit Judges.
LTTB LLC sells t-shirts and other goods bearing its registered trademarks,
the words and design, “LETTUCE TURNIP THE BEET.” LTTB brought an
action against Redbubble, Inc., under the Trademark Act of 1946 (Lanham Act), 15
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
U.S.C. § 1051 et seq., alleging that Redbubble infringed on its trademarks by
selling products containing the same words and design. The district court granted
summary judgment in favor of Redbubble, concluding that, pursuant to the
doctrine of aesthetic functionality, LTTB could not preclude others from
displaying the phrase on products. LTTB, LLC v. Redbubble, Inc., 385 F. Supp. 3d
916, 920–22 (N.D. Cal. 2019). We have jurisdiction under 28 U.S.C. § 1291, and
we apply de novo review. Moldex-Metric, Inc. v. McKeon Prods., Inc., 891 F.3d
878, 880–81 (9th Cir. 2018). We conclude that the district court correctly
concluded that LTTB failed to raise a triable issue that its marks serve the
trademark function of source-identification and therefore affirm. See Au-Tomotive
Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1067 (9th Cir. 2006) (“The
principal role of trademark law is to ensure that consumers are able to identify the
source of goods.”).
1. The district court did not erroneously rely on the test for aesthetic
functionality from International Order of Job’s Daughters v. Lindeburg & Co.,
633 F.2d 912 (9th Cir. 1980). Although Job’s Daughters was “a somewhat unique
case” whose “broad language was soon clarified and narrowed,” the case remains
good law. Au-Tomotive Gold, 457 F.3d at 1069.
2
Regardless, the result here is the same under the test for aesthetic
functionality articulated in Au-Tomotive Gold. Under the first step, the t-shirts,
tote bags, and other products bearing the LTTB mark would still function as t-
shirts and tote bags without the mark. See id. at 1072–73 (“Auto Gold’s products
would still frame license plates and hold keys just as well without the famed
marks.”). “Similarly, use of the marks does not alter the cost structure or add to
the quality of the products.” Id. at 1073.
Moving to the second step, the question is whether the marks “perform some
function such that the ‘“exclusive use of [the marks] would put competitors at a
significant non-reputation-related disadvantage.”’” Id. (quoting TrafFix Devices,
Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001)). It cannot be disputed that
competitors would be unable to sell products bearing the phrase if LTTB’s marks
were protected. This court has been “careful to prevent ‘the use of a trademark to
monopolize a design feature which, in itself and apart from its identification of
source, improves the usefulness or appeal of the object it adorns.’” Id. (quoting
Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 774 (9th Cir. 1981));
accord Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696
F.3d 206, 222 (2d Cir. 2012) (“In short, a mark is aesthetically functional, and
therefore ineligible for protection under the Lanham Act, where protection of the
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mark significantly undermines competitors’ ability to compete in the relevant
market.”).
In Au-Tomotive Gold, where the defendant admitted that consumers wanted
the goods because they identified the sources (Volkswagen and Audi), “the alleged
aesthetic function [was] indistinguishable from and tied to the mark’s source-
identifying nature.” Au-Tomotive Gold, 457 F.3d at 1074. By contrast, there is no
evidence here that consumers buy LTTB’s goods because they identify LTTB as
the source, rather than because of the aesthetic function of the phrase, “LETTUCE
TURNIP THE BEET.”
LTTB presented evidence of the popularity of its goods, but that evidence
does not raise a triable issue as to whether consumers buy the products because
they identify LTTB as the source of the goods. Its evidence includes anecdotes
from Elektra Printz Gorski, LTTB’s founder and owner, that celebrities wear the
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shirts and that a customer emailed her, as well as printouts of the goods offered for
sale on the LTTB Etsy website.1
Although LTTB’s evidence may indicate that its goods are popular, it does
not indicate that consumers buy the goods because the marks identify LTTB as the
source of the goods. In Vuitton, the plaintiff presented an affidavit by a buyer of
goods for a department store stating that it was unlikely “there is anyone who
would purchase a Vuitton product solely because they found the characteristic
Vuitton trademark to be aesthetically pleasing,” but instead “it is because the
design associates the products with Vuitton.” Vuitton, 644 F.2d at 776. Unlike
Vuitton, LTTB has presented no evidence that consumers buy the goods because
the design associates the goods with the company LTTB rather than because they
want goods bearing the phrase.
1
The printouts show images of LTTB’s products and three five-star
reviews. But, almost all the products bear the phrase “LETTUCE TURNIP THE
BEET” on them, indicating that the phrase acts as an aesthetic design, not as a
symbol for the company. Cf. EMI Catalogue P’ship v. Hill, Holliday, Connors
Cosmopulos Inc., 228 F.3d 56, 63 (2d Cir. 2000) (rejecting the claim that a “song
itself serves as a ‘symbol or device’ that indicates its source” because trademark
law “does not protect the content of a creative work of artistic expression as a
trademark for itself”). The comments in the reviews state: “Fast shipping.
Product as described/true to photo. I would highly recommend!” and “Great
stickers shipped on time. Thank you.” This evidence does not support LTTB’s
contention that consumers purchase the products because they are source-
identifying rather than merely aesthetically pleasing.
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LTTB has presented no evidence to avoid the conclusion that the marks here
“serve an aesthetic purpose wholly independent of any source-identifying
function” and thus are aesthetically functional. Au-Tomotive Gold, 457 F.3d at
1073. Therefore, LTTB’s evidence does not raise an issue of fact as to whether
consumers buy the products because they identify LTTB as the source.
2. Despite the fact that LTTB’s trademarks are registered and two of
them are incontestable, see 15 U.S.C. § 1115(b), the right to use registered marks is
subject to nine “defenses or defects” listed in the statute, including “[t]hat the mark
is functional.” id. § 1115(b)(8). The defense of functionality “provides the
challenger of a mark the opportunity to rebut prima facie evidence of the mark’s
validity.” Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 782 (9th Cir. 2002); see
15 U.S.C. § 1115(a). Because, on this record and when used on the allegedly
infringing products that are the subject of LTTB”s complaint, LTTB’s marks are
functional, they are not protectable against any type of allegedly infringing
activity.2 See Tie Tech, 296 F.3d at 783 (“[T]he plaintiff retains the ultimate
burden of persuasion in a trademark infringement action, namely proof of
2
The district court pointed out that Redbubble’s argument was not that
LTTB’s registered trademarks are per se invalid, but that LTTB could not “show[]
a likelihood of confusion as to source, where the mere use of the pun on the face of
various products cannot be source-identifying.” LTTB, 385 F. Supp. 3d at 921.
Similarly here, we do not hold that LTTB’s marks are per se invalid.
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infringement. A necessary concomitant to proving infringement is, of course,
having a valid trademark; there can be no infringement of an invalid mark.”). We
therefore reject LTTB’s contentions that the district court erred in failing to address
uses of the marks on Redbubble’s website and in online advertising. We also need
not address LTTB’s arguments regarding counterfeiting and contributory
infringement.
3. Because LTTB’s mark is functional and therefore not protectable on
this record, there is no need to address the issue of likelihood of confusion. See
Talking Rain Beverage Co. Inc. v. S. Beach Beverage Co., 349 F.3d 601, 603 (9th
Cir. 2003) (observing that “we need not reach the distinctiveness and likelihood of
confusion issues” because, “notwithstanding its registered trademark, [plaintiff’s]
bike bottle design is functional”).
4. LTTB’s argument that the district court erroneously ignored its design
marks is similarly unavailing. Unlike copyright and patent laws, trademark laws
are “not designed to protect originality or creativity,” Dastar Corp. v. Twentieth
Century Fox Film Corp., 539 U.S. 23, 37 (2003), but to “prevent[] competitors
from copying ‘a source-identifying mark,’” id. at 34 (quoting Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 163-64 (1995)). Thus, “[i]n general, unless an
intellectual property right such as a patent or copyright protects an item, it will be
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subject to copying.” Id. at 33 (quoting TrafFix, 532 U.S. at 29); see also, e.g., id.
at 36 (where “Wal-Mart produced ‘knockoffs’ of children’s clothes designed and
manufactured by Samara Brothers,” the designs on the clothes could not be
protected under the Lanham Act without showing that the designs “‘identify the
source of the product’” (quoting Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S.
205, 211 (2000))). Like the sweater designs in Wal-Mart, LTTB’s marks are
primarily aesthetic on this record, not source-identifying.
5. The district court did not improperly rely on the Patent and Trademark
Office’s initial rejection of Gorski’s trademark application in considering whether
the mark was merely functional or source-identifying. Cf. TrafFix, 532 U.S. at 34
(looking to the prosecution history of an expired patent in considering whether
features asserted to be trade dress were functional). Nor did the district court
erroneously conflate the standards for registration of a trademark and trademark
infringement liability.
• ! •
LTTB’s marks do not function as trademarks because they are aesthetic only
and do not identify the source of the goods. The allegedly infringing activity does
not deceive or mislead consumers about the source of the goods but copies the
designs themselves. See Job’s Daughters, 633 F.2d at 919 (“under the Lanham
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Act ‘one can capitalize on a market or fad created by another provided that it is not
accomplished by confusing the public into mistakenly purchasing the product in
the belief that the product is the product of the competitor’” (quoting Am.
Footwear Corp. v. Gen. Footwear Co. Ltd., 609 F.2d 655, 662 (2d Cir. 1979))).
Because functionality is a defense to the validity of the marks and to LTTB’s
exclusive right to use the marks, the district court properly granted summary
judgment to defendant Redbubble on this ground and was not required to consider
LTTB’s other arguments.
AFFIRMED.
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