KP Permanent Make-Up, Inc. v. Lasting Impression, Inc. - Oral Argument

Argument of Michael Machat

Chief Justice Rehnquist: We'll hear argument now on No. 03-409, KP Permanent Make-Up, Inc. versus Lasting Impression, Inc.--

Mr. Machat?

Mr. Machat: Thank you, Mr. Chief Justice, and may it please the Court:

This case concerns whether or not a defendant in a trademark case who fulfills the statutory requirements of the fair-use defense must also demonstrate an absence of likelihood of confusion in order to avail himself of that affirmative defense.

Now, here are four reasons why that should not be the case.

In the first place, if that is the case it would render the defense useless, because if there is no likelihood of confusion, then there's no trademark infringement to begin with, so why should someone try to prove an affirmative defense when there's no trademark infringement?

Second--

Chief Justice Rehnquist: You agree with Judge Niemeyer's comment in the Fourth Circuit case, I take it.

Mr. Machat: --Yes.

Secondly, what it does is, is it shifts the burden of proof from the plaintiff to the defendant.

There's no reason ever to... there's no reason ever to prove an absence of likelihood of confusion if you're a defendant.

And then, also... there's no reason to prove the fair-use defense if you have to also prove an absence of likelihood of confusion, because it's just much more of a burden.

You have to prove, first of all--

Justice O'Connor: In this case, did the plaintiff offer any evidence of confusion, consumer confusion?

Mr. Machat: --This was a motion for summary judgement.

Justice O'Connor: And was there anything in the affidavits or attachments that have to do with consumer confusion on behalf of the plaintiff?

Mr. Machat: Yeah, actually, the record does contain some references to confusion.

The... in this case, the respondent, they were claiming that they did have some people that actually were confused.

And when that happens, you need to look at what is causing the confusion.

And essentially--

Justice O'Connor: Well, it might make it necessary for a defendant in such a situation, in order to avoid some kind of summary judgement, to also offer evidence on consumer confusion to try to show there wasn't any.

Mr. Machat: --Well, but that's shifting the issue, then, to whether or not there's likelihood of confusion.

However, even if there... what I'm saying is even if there is confusion, if you meet the elements of the fair-use defense, it doesn't matter if there's any resulting confusion.

Justice O'Connor: Well, is it possible that showing consumer confusion could be considered by the court on the issue of what's the fair use?

What's fair?

Mr. Machat: Well, the thing is, a lot of times when there is confusion, that is evidence that the term or the word being used is not being used as a mark, so the confusion illustrates that... one of the elements of the fair-use defense, whether or not the term is being used descriptively or as a mark, whether or not those elements are being met.

The confusion does not go to the likelihood of confusion issue; rather, it goes to the individual elements of the fair-use--

Justice Kennedy: Well, but I'm interested in Justice O'Connor's point.

Suppose it's a close case as to whether or not the use is in good faith and it's only discretion.

With reference to good faith, suppose there's very substantial confusion that's caused by the allegedly infringing mark.

Does that at least bear on a good-faith assessment?

In other words, suppose that it were shown that the owner of the non-registered mark, the alleged infringing mark, used the phrase... not the mark, but used the phrase... deliberately in order to cause confusion.

Would that--

Mr. Machat: --Yes... well, that would show an absence of good faith, and good faith is one of the elements of the fair-use defense.

Justice Kennedy: --Well, so that if you know that there's going to be confusion, there is no good faith?

You wouldn't go that far.

Mr. Machat: No, I wouldn't go that far.

It's a balancing sentence where it says "fairly and in good faith", and you have to look at how descriptive the word is, in particular.

For instance, if you're using the word "best"... as in "best buy" or "best foods"... I mean, best is an extremely descriptive word.

So you could go a lot further in claiming,

"Hey, I have the best... I have the best food. "

or, you know,

"Come to my store. "

"I have the best buy. "

And, yes, there could be confusion, but that is one of the risks that--

Justice O'Connor: Well, is it your position that subjective good faith is always a defense, no matter how unreasonable it is or how much confusion results?

Is that your position?

Mr. Machat: --No, I wouldn't go that far, because you also have to look at the objective use.

Justice O'Connor: I would have thought that consumer confusion is one factor in determining fairness; perhaps not subjective good faith, but certainly on the issue of fairness.

Some of the amici take that position, do they not?

Mr. Machat: Well, I think... I was reading the amici brief last night.

I think the issue of confusion, as the amicus brief points out, you have to look at whether the confusion is illustrative of whether or not the term is being used as a mark or not.

The same evidence that shows confusion can be used to show a likelihood of confusion on the plaintiff's side of the case, and that same evidence can also be used to... in the case of determining whether or not the elements of a fair-use defense have been... have been met.

Chief Justice Rehnquist: What did... what did the district court do here?

Did it grant summary judgement or deny summary judgement?

Mr. Machat: The... well, the district court granted summary judgement on a fair-use defense.

It found that, in this case, the mark was being used... sorry, that my client's words were being used not as a mark, only to describe, and that the use was done fairly and in good faith.

The Ninth Circuit--

Justice Ginsburg: But the district court... the district court... this way--

[Laughter]

--seemed to focus on the use of the word "micro color", just the word.

It didn't bring up what was new in 1999.

That is, a brochure appears where "micro color" is not simply a word, but it appears in a logo-like fashion.

And as I understand it, the district court said you could use 1991.

It didn't refer to the stylized 1999 new appearance.

So--

Mr. Machat: --Yes, that is correct.

The district court, in its opinion, did not specifically refer to that use in 1999.

Justice Ginsburg: --And it might not have been confusion just by using the word.

But when you're using it in the logo-like appearance, maybe that's different.

Mr. Machat: Well, in the abstract case, it could be.

I would argue, though, in this case it's not, because that was one use on a... you have a ten-page brochure, and it's one use on a ten-page brochure.

And you... on that same page of the brochure, at the very bottom, it said my client's name, KP Permanent Makeup.

So--

Justice Scalia: Well, that wouldn't relate to the question presented here, anyway.

It wouldn't relate to the reason for which we took this case.

Mr. Machat: --Correct.

Justice Scalia: I mean, maybe the district court misinterpreted or misapplied "fairly and in good faith" if it didn't consider the logo-like use.

But, as I understand it, the only question we have before us is whether the "fairly and in good faith" provision is an exception even when there is confusion.

Mr. Machat: Yes, I would agree.

Justice Breyer: Is that... I'm... and I'm mixed up.

I thought that the issue is whether you, on your side, have to present evidence of no confusion.

Mr. Machat: Yes, I think--

Justice Breyer: So as far as--

Mr. Machat: --I think we're both saying the same thing--

Justice Breyer: --So as far as Justice O'Connor's question is concerned, I thought your answer would be, if they want to go and present evidence that there is confusion, to the point where it's so obviously unfair, it's ridiculous, they can do it.

I mean, do you object to that?

Mr. Machat: --No, I agree.

Justice Breyer: No.

So your answer to her question is, of course it could be relevant.

Let the other side come in and show that it's relevant.

You don't have to show that there is no confusion.

Mr. Machat: Absolutely.

Justice Breyer: That's where we are, is that right?

Mr. Machat: That's exactly--

Justice Breyer: Okay.

Mr. Machat: --where we are.

Justice Scalia: Could you give us a... I'd be much more sympathetic to your case if I could readily envision a situation where there is confusion but, nonetheless, the use is fair and in good faith.

Give me a clear example.

Mr. Machat: In my particular case?

This--

Justice Scalia: No.

I mean, make up one--

Mr. Machat: --Okay.

Justice Scalia: --that's really clear.

Mr. Machat: Let's use the words "best buy".

Best Buy is a famous consumer electronics store, and somebody opens up a shop, say Mark's, that says,

"Mark's, he has the best buy. "

He wants to advertise on radio,

"Come down to Mark's Electronics for the best buy... for the best buy in consumer electronics, go to Mark's. "

and he keeps using those words "best buy".

Justice Scalia: I don't think there's any likelihood of confusion there, do you?

I mean--

Mr. Machat: Well--

Justice Scalia: --what if he just takes out an ad that says, "Best Buy", exclamation point?

That would be closer.

Mr. Machat: --Okay, in that case there would be confusion, but Mark, in that case, would be using "best buy" as a trademark, not only to describe; and, therefore, he would not fulfill the statutory requirements of a fair-use defense.

Because a lot of times when confusion comes up, it comes up in the case that--

Justice Scalia: I didn't mean to make it that in my hypothetical.

You're just putting it in bold type at the beginning of the piece, "Best Buy", exclamation point.

That means it's a trademark?

Mr. Machat: --Well, it would be evidence that it is a trademark.

You have to... it depends how big the words "best buy" were in relation to the word "Mark's Electronics".

Chief Justice Rehnquist: Well, but if you had a... if you had a headline at the head of an ad, "Great Sale", that surely is not a trademark, just because you have it in boldfaced print.

Mr. Machat: I agree, it's not necessarily a trademark.

You have to look at the totality of the ad, and you have to look at what the person is trying to use to help consumers to identify and distinguish the products, or, in this case, the store.

Justice Kennedy: I suppose if you have a sign that says "Park 'n Fly" and an arrow, with a capital "P" and a capital "F", then it's arguably being used as a trademark.

Mr. Machat: Well--

Justice Kennedy: Whereas, if you say in a brochure,

"Rent a car from us, and park and fly. "

then that's okay.

Is that the distinction?

Mr. Machat: --Yes, but I'd go even further and say that the... if you had a big sign that said "Park 'n Fly", and it's next to an airport, that would not necessarily be a trademark.

I mean, if it said, like,

"Jerry's Airport Parking, Park and Fly. "

I would say that's being a descriptive use.

But some people may argue differently in that case.

Justice Ginsburg: The Ninth... the Ninth Circuit, as I understand it, did put an initial burden on the trademark-holder to prove confusion.

If you look at the petition for cert, 6a, in its opinion, it seems to recognize that the trademark-holder must show that the alleged infringer's use of the mark is likely to cause confusion or to cause mistake or to deceive.

So this opinion starts out by saying,

"Yes, we know that under the Lanham Act the trademark-holder is obliged to show likelihood of confusion. "

Mr. Machat: They do it.

But then on... if you look on page 17a of my cert petition, the same opinion, the Ninth Circuit later on go on to say, in the middle paragraph,

"As expressed in Kahn's, the fair-use analysis only complements the likelihood of confusion... likelihood of customer confusion analysis. "

And then they quote from Transgo, and they say... explain that

"anyone is free to use the term in its primary descriptive sense as long as such use does not result in consumer confusion as to the source of goods. "

In effect, what they're doing is, they're expanding the rights of trademark-holders of descriptive words.

Essentially what they're saying is--

Chief Justice Rehnquist: Well, they go further in that same paragraph, and the last couple of lines refer to a Lindy Pen case, according to... the way they described, explaining that the fair-use defense is not available if likelihood of confusion has been shown.

Mr. Machat: --Right, and that's... that's where they're negating what they said in the beginning of their opinion.

Justice Ginsburg: They do have one authority for that proposition.

They cite McCarthy, and I think they're right about that.

Mr. Machat: Well, they do cite McCarthy, but I would submit that McCarthy is incorrect, in this case.

Justice Ginsburg: But there is a treatise writer who does take the position that if there's confusion, there's no fair-use defense.

Mr. Machat: Well, there are other treatise writers... Kane, for example, takes the contrary position and says that fair use will always be a defense, even if--

--even if there is likelihood of confusion.

Justice Ginsburg: So does the... what is it... the unfair competition restatement?

Mr. Machat: Yes, that takes a similar position, as well, that there can be confusion and fair use at the same time.

Again, you have to look at what's causing the confusion.

And most often the problem is the confusion is being caused because the person with the words in question is using it as a mark, and that's causing the confusion.

If... there's certain... there's certain... there's certain terms and words that Congress has said never get trademark protection.

Descriptive words, of course, is one of them, in the sense that they can never get trademark protection in their primary descriptive sense; they only get trademark protection in their... in their secondary-meaning sense if they can actually prove secondary meaning.

Justice Ginsburg: But I thought we're dealing with an incontestable mark here, and the secondary meaning would be assumed.

Mr. Machat: Yes.

In the case of an incontestable mark, secondary meaning is presumed; however, that still does not take away the burden of the holder of an incontestable mark of proving likelihood of confusion.

And, second, the trademark protection attaches only to the secondary meaning of the mark, never to the primary, descriptive meaning of the words in question.

And one other quick example.

The laws say you cannot obtain a trademark in the U.S. flag.

Now, we have 12 ice-cream manufacturers, they each put the flag on their ice cream.

There will be confusion there.

Someone will say,

"I want the ice cream with the flag on it. "

But they all have a flag on it.

That's another example where Congress said, "We will tolerate confusion".

Sometimes we tolerate confusion so we can free up descriptive words so business owners are free to describe their goods to consumers.

And, if I may, I'd like to reserve the balance of my time.

Argument of Patricia A. Millett

Chief Justice Rehnquist: Very well, Mr. Machat.

Now, Ms. Millett, we'll hear from you.

Mr. Millett: Mr. Chief Justice, and may it please the Court:

Justice Scalia, you asked for an example of a case where there might be confusion, but there would still be a fair use.

This Court's decision in William Warner versus Eli Lilly, which was a common-law case cited on page 27 of our brief, gives an example of that.

You had Coco-quinine, and Quin-coco being sold.

And this Court held, as a matter of the common law fair-use doctrine, that the descriptive... fair, truthful, descriptive use of a term to describe a product will be permitted even if consumer mistakes result.

There are other cases cited in the brief.

Howe Scale is cited in our brief.

The Canal Company versus Farr case.

The fair-use defense that's at issue here takes its... has its roots in that common law precedent, and that common law precedent, in origin, speaks directly, Justice O'Connor, to your... and Justice Kennedy... to your questions about, what does a fairness component of this test in the statute mean.

There is not a general requirement that the... say, the defendant here; the parties were reversed, but the non-trademark holder acts fairly.

That's not what Congress said.

It says the term... and I'm... and you can see, on page 9a of the statutory appendix to our brief--

--the term has to be used fairly and in good faith... putting that aside, used fairly only to describe the product.

That is not some sort of general equitable receptacle for fairness concerns.

That focuses on what the defendant did and how they acted in describing.

That's not a test of how the public reacted.

How did the defendant behave?

Which is exactly what William Warner, Canal Company, and Howe Scale also looked at.

In common parlance, in a common dictionary meaning, when you talk about fairly describing something, that's not general equity.

That is, is it a legitimate, reasonable, proper, objectively apt, and fair way to describe a product.

One could reasonably--

Justice O'Connor: Well, does... does consumer--

--if substantial consumer confusion is shown by the plaintiff, is that enough to defeat a fair-use defense?

Mr. Millett: --Not by itself, no, Justice O'Connor.

Congress told us what will defeat the defense, and that is a... that is a conclusion that the term is being used as a mark.

Consumer confusion might be, if you could explain that that demonstrates that it's being used as a mark.

It might show that you're not objectively, reasonably, accurately describing your product.

If I describe Twinkies as a sugary snack, that's a... I can fairly describe Twinkies as a sugary snack.

I can't fairly describe Twinkies as a healthy food.

Justice Kennedy: Suppose, in the Coco-quinine case, the non... the non-holder is doing just fine without using the particular term, and then he decides,

"you know, I'm going to cut into that market, and I'm going to use the term Coco-quinine. "

"And I'm going to do that just in order to get more customers away from the trademark-holder. "

Is that good faith?

Mr. Millett: Yes, because there's nothing, in the marketplace, with wanting to increase your business and to do better and to use descriptive terms descriptively to do that.

The good-faith--

Justice Scalia: But what--

Mr. Millett: --continued here--

Justice Scalia: --what if he intends to increase his market share precisely by causing the confusion?

That would eliminate the good-faith element, wouldn't it?

Mr. Millett: --The good-faith element is, do I intend... it depends on what you mean by "causing confusion".

If I intend to freeload or ride or exploit the secondary--

Justice Scalia: Yeah.

Mr. Millett: --meaning of the term--

Justice Scalia: Right.

Mr. Millett: --that's what good faith means in trademark law, generally.

It has an established component.

Justice Scalia: Right.

Mr. Millett: If I intend to do that.

But just showing that consumer confusion could result, or that I hope consumers will pause and think about, you know,

"what... what's in the... what am I now being offered in the marketplace? "

But I have to... if I intend to avail myself of the secondary meaning that you've established of the goodwill that you've generated, that's what good faith goes to.

But to use fairly to describe is not a general means of just saying--

Justice Stevens: May I ask you--

Mr. Millett: --if there's confusion, that's a bad--

Justice Stevens: --What does the term "micro color" describe?

Mr. Millett: --The term "micro color" describes--

--this is not my area of expertise, but... describes, as I understand it, the inks that are used for this permanent make-up process.

And the reason it's called "micro color"--

Justice Stevens: Does it have a meaning in any context other than describing the... one party's product in this case?

Mr. Millett: --I wouldn't begin to know whether other professions or occupations use the term "micro color".

But my understanding, from the record, is that the color is obvious.

That's... it's different color inks.

And the reason that they use the term 98 of the first volume of the joint appendix, is that the molecular size of these inks is very, very fine.

It's going into the skin.

It's micron-size.

And so that's, I think, the... as suggested by petitioner's client... that that's the origin of the term "micro color".

Now, "micro" is a common term that's... common descriptive term in its own right.

It appears in many contexts.

Obviously, computers is one that we're all familiar with.

Medical devices often will refer to "micro".

But "micro color"--

Justice Ginsburg: Wasn't there... wasn't there something to the effect that "micro pigmentation" is a synonym in the trade for permanent make-up?

It's another name for permanent make-up, and it's... it has "micro" in it, "micro pigmentation".

Mr. Millett: --That's my understanding, yes.

Justice Ginsburg: "Micro pigmentation" sounds awfully close to "micro color".

Mr. Millett: "Micro color", yeah.

That's my understanding.

Again, I don't really want to weigh in on one side of the dispute or the other on the merits of whether "micro color" is a generic or a--

Justice Scalia: Well, you have to weigh in on it.

I mean, you have to show that the... it seems to me, if you think that side should win, that the words are being used in a descriptive sense.

And if "micro color" doesn't mean a blessed thing to anybody unless they associate it with the trademark, then, it seems to me, you lose.

Mr. Millett: --But, Justice Scalia, the problem here is that the Ninth Circuit said that what makes them lose is not that they didn't use this fairly to describe their product, or not that they failed to act in good faith, or not that they were using this as a trademark, but that it was a--

Justice Scalia: You're right, that's not the issue in the case.

Mr. Millett: --Right.

Right.

And my understanding... again, the record shows that, in fact, the descriptive use of this was conceded in this case, and that's on page 29a of the petition appendix, and also in the joint appendix on 152.

Justice Scalia: You're right.

Mr. Millett: But, again, our concern is that this statute has to be read with the terms Congress enacted.

Congress drew a balance here.

Congress struck the balance between allowing... giving unprecedented protection that this Court recognized in "Park 'n Fly" two descriptive terms, but policing the line between the secondary meaning that attaches to descriptive terms and the... reserving for the marketplace, for competition, the availability of descriptive terms in their original descriptive sense.

Justice Scalia: In other words, if you choose to use a descriptive term as your logo, you take your chances--

Mr. Millett: Exactly.

Justice Scalia: --that that descriptive term will be used fairly and in good faith by somebody else and cause confusion.

Mr. Millett: Exactly.

Justice Scalia: And if you don't want confusion, pick a term that isn't descriptive.

Mr. Millett: That's exactly right.

There's a tradeoff.

When you pick a descriptive term, you get right up front, right up front, the immediate appeal and resonance of a term to the... to the consumers.

"Best buy".

Who wouldn't want the best buy?

I want the best buy.

"Chunky" candy bars.

It's going to be easier to break into the marketplace with "Chunky" candy bars or "Almond Joy" candy bars, because consumers will have a sense of what they're getting, than if you come in with a--

Justice Scalia: "Schwartz", "Schwartz" candy bars.

Mr. Millett: --"Schwartz" candy bar, "Kodak", I don't know--

Justice Scalia: It doesn't do anything for you.

[Laughter]

Mr. Millett: --I don't know why that is, and why would I want to eat it.

They're going to have to do more work.

But the downside, the tradeoff, is, as you said, Justice Scalia, that you do not get to take those terms out of usage.

Trademark law protects usage, not words.

And if the usage is descriptive, and it's fair, in the sense that it's reasonable, apt, and accurate, as this Court said in William Warner, Canal Company, Howe Scale, in the unfair-competition sense; and the Kellogg versus National Biscuit Company, the Shredded Wheat case, if it's apt and accurate, that's what "used fairly" means.

And if its satisfies that objective test, and if it satisfies the subjective good-faith test, and it's not used as a mark, we will tolerate that confusion, because that--

Justice Ginsburg: How do you tell whether it's used as a mark?

I mean, is that... that certainly seems to be central.

Is it used as a mark?

And if it's used as a mark, then there is a violation.

Mr. Millett: --The fair-use defense is unavailable if it's used as a mark.

There are other--

Justice Ginsburg: Right.

Mr. Millett: --defenses that are available, but the fair-use defense is, by definition, unavailable.

That's correct.

The way you prove whether something is used as a mark... there's, sort of, two ways of getting to that end.

When something is used as a mark, that means it is signifying to the origin or source of those goods in the marketplace.

It's not just describing it, it's telling you who is making it or who is putting it out on the market.

Justice Ginsburg: So let's go back to the use on the brochure of a logo-like... I mean, as long as they're using just the word "micro color", I see your position entirely, it's used descriptively, not as a mark.

But what about when they use something that looks like a mark?

Mr. Millett: Well, there's... there's going to be difficult questions of proof.

Our position is that, by taking a descriptive term, you don't get to consign everybody else to ten point Times New Roman font, and that they can do some colorful display, but not a mark.

Argument of Beth S. Brinkmann

Chief Justice Rehnquist: Thank you, Ms. Millett.

Ms. Brinkmann, we'll hear from you.

Mr. Brinkmann: Mr. Chief Justice, and may it please the Court:

Defendant's... Petitioner's absolute defense is contrary to the text, purpose, structure and history of the fair-use defense of the Lanham Act.

In response to Justice Scalia's question about this is the risk that someone takes when they choose a descriptive term, this defense does not apply only to descriptive terms.

Under Petitioner's view, this defense would be available to users of arbitrary, fanciful and suggestive marks so long as they were used descriptively and not as a mark.

Indeed, our mark here is not--

Justice Scalia: How can you use a fanciful term descriptively?

I mean, I think that's the definition of an arbitrary or fanciful term, that it doesn't mean anything.

Mr. Brinkmann: --Well, it may mean something in a different context, I think an example you could use would be the arbitrary trademark of "Apple" for computers.

There could be advertising for Computer Electronics, Incorporated in the fall, when there's the back to school rush, using the term "Apple" in a descriptive sense: "Apples for Teachers", you know, the beginning of the year, "Come to our store".

So, in reliance on that, you drive two hours because you're the school district director who needs to buy ten new computers to hook into the system.

You get there, it turns out they're not Apple Computers.

Justice Stevens: No, but do they use the apple as clearly a descriptive term with secondary meaning, that's what gives it protection.

But if you have an arbitrary term, as Justice Scalia says, how could that be, how could the defense have any relevance to a fanciful or arbitrary term.

And I thought the defense only was relevant when you... everybody agrees you're talking about descriptive terms?

Mr. Brinkmann: No, Your Honor, the Solicitor General does not take that position either, in their brief they recognize that this applies to all level of mark.

Justice Kennedy: No, but that, all we need to decide this case is to assume that it's descriptive.

Mr. Brinkmann: Well, Your Honor, the Ninth Circuit's holding was that it was inherently distinctive, or descriptive, and we maintain that it is suggestive, as was pointed out earlier, this isn't a word that can be found in the English language anywhere, it doesn't describe the pigment or the ink, what it does is suggests the small nature and the fine lines that are ultimately used when this is applied.

Justice Kennedy: Let's assume that it was descriptive, would the Ninth Circuit test still apply?

That you would have to show absence of confusion before you raised the good faith defense?

Mr. Brinkmann: We don't believe that's what the Ninth Circuit test does, this was a summary judgment entered against us when we had introduced--

Justice Kennedy: Well, would you agree, then, that in a case where the mark is descriptive, the non-trademark holder, the defendant in the case, can raise the fair-use defense without having to show that there's no confusion?

Mr. Brinkmann: --Yes, we believe it's the plaintiff's burden, it's clear it's the plaintiff's burden to show likelihood of confusion.

The point is, under the district court's absolute rule, notwithstanding evidence in this case of actual confusion, indeed, summary judgment was entered against us because the district court took Petitioner's absolute view that there was no relevance whatsoever to likelihood of confusion to the determination of fair use, that's the rule in the Ninth Circuit overruled, and that's what needs to be affirmed.

Justice Breyer: Now, I'm confused. I thought the question you're supposed to answer, which is in the blue brief, is whether they have to show an absence of confusion.

And I guess now you agree the answer to that question is "no".

Is that right, you agree with that?

Mr. Brinkmann: Yes.

Justice Breyer: Now, that's the end of this case, isn't it?

That's what we took it to decide, and that's... you agree with it and they agree with it, so everybody's happy.

We don't even have to write an opinion, we can just--

Mr. Brinkmann: I believe the Petitioner came up with that formulation because they had taken on the burden because they were the movant on summary judgment.

That's where that misnomer came from.

Justice Scalia: Did you object to the formulation of the question presented?

Here's the question, does the classic fair-use defense to trademark infringement require the party asserting the defense to demonstrate an absence of likelihood of confusion?

That's the question.

And you say, "no".

Mr. Brinkmann: We agree that the plaintiff, it's clear that under... in the Ninth Circuit... the Ninth Circuit pointed out that, Justice Ginsburg quoted before, made clear that the plaintiff does bear the burden of establishing likelihood of confusion.

Justice Breyer: --Now, suppose you establish it, maybe we can find some differences here, would you also agree that simply establishing confusion is not enough to overcome the fair-use defense, you'd have to also show that the confusion, along with possibly other things are such that it shows unfairness, or what's the other word, unfairness, or lack of good faith?

Mr. Brinkmann: We believe that when Congress--

Justice Breyer: You agree with that, or not?

Mr. Brinkmann: --No, Your Honor, we agree that when Congress wrote the test in 1946, it used the terms "used fairly" to refer to the common law, which included not only the common law of technical trademark, but the common law of unfair competition.

Justice Breyer: Good, so now we have something I can disagree with you about.

Now, the question would be, why, it's the words are unfair, why, if you just show there's some confusion, which normally there would be, or quite often there would be, why is that enough to overcome their defense that they put here?

Mr. Brinkmann: Your Honor, the time that those words were used, the common law, and we respectfully disagree with the Solicitor General's office on the reading of Warner, we'd urge the Court to read that.

The reason the Court allowed the use of the term in that case is because they quite clearly said it did not have a secondary meaning.

There is no trademark protection for descriptive words with secondary meaning, we are in complete agreement with that.

We're dealing with the secondary meaning.

Justice Breyer: All right, so now, if we're going to go back into what the Court did, I would say that I was a little disturbed reading this as to why you get protection at all, because I was thinking "micro color", well, that describes very well what it is, it's a tiny, teeny, weenie, weenie bit of color.

And when I think of "micro pigment", I think of a farm animal, I think... I don't know what I think, it's confusing me.

So, for an average person, the word "micro color", I thought,

"Gee, that's very descriptive of just what it is, a teeny weenie bit of color. "

Mr. Brinkmann: Well, Your Honor, I would urge you to look at joint appendix pages 137 to 139 where it lists twenty other competitors that sell this very product, they have no cause to use that word.

It is not used in the industry as a descriptive term, they're called "pigment", they're called "ink", they're not called "micro colors", that is my client's trademark.

Justice Ginsburg: What's the difference between pigment and color, especially when it's not just "micro color", don't they advertise "micro color red", "micro color grey", so pigment--

Mr. Brinkmann: The typical suggestive term, it was created to associate the high quality that my client markets in this product with that term, I want the "micro color" pigments, not the other pigments that are sold by--

Justice Ginsburg: --But, what about the word, is it... am I wrong in what I suggested before, that the word, "micro pigmentation" is used in the trade as a synonym for permanent makeup?

Mr. Brinkmann: --That's correct, and oftentimes, trademarks are shortened versions of other terminology.

The fact is it is suggestive because "micro colors" is the protected trademark here.

Justice Souter: But there is a sense of color in which color is synonymous with pigment.

And I assume that's what was accepted here, which leads me to my question, I don't understand why we're having this discussion.

Justice Scalia: Exactly.

Justice Souter: Because I thought it was agreed that for purposes of the defense, this was a descriptive use, is that incorrect?

Mr. Brinkmann: Yes, Your Honor, for purposes of the defense, it's the other party that has to be using the term descriptively.

Justice Souter: Well, could you just point to me... I'm not asking so much about the "why", I just want to know what this case is.

Is there someplace in the materials that we've got that indicate that, in fact, you dispute that there is a descriptive use here?

Mr. Brinkmann: Yes, footnote 3 of the red brief explains that this purported concession that they discuss about the use of this mark had to do because Justice Ginsburg was distinguishing before, early uses on a bottle, and a flyer, which we dispute occurred, but assuming they occurred, those were descriptive.

In 1998 and 1999, Petitioner started using it on their marketing brochures in a very different manner.

Justice Scalia: Excuse me, this still goes to the merits of the defense and not to the question presented.

The question presented is, descriptive or not descriptive, do you have a defense if it's, if there is consumer confusion?

And your position, if you're opposing the question presented, is that if there is consumer confusion, there is no defense.

And it's... I thought that was the only question you were going to discuss here, not in fact whether, if there is such a defense, it has been made out in this case, because these words were or were not descriptive.

I mean, that's a--

Mr. Brinkmann: Thank you, Your Honor, I'd be happy to discuss that.

As I pointed out, it's contrary to the textual language used by the Congress in 1946.

They meant "used fairly" to mean what the common law meant.

The common law prohibited confusing uses of both technical trademarks and trade names.

Moreover, Petitioner's interpretation is contrary to the clear focus of the Lanham Act, which is to prevent customer confusion.

The whole point is so that you can walk into a store--

Justice Ginsburg: Ms. Brinkmann, may I stop you there, because I thought you have conceded, as I think you must, I thought you conceded quite clearly, I wrote down that you said, it is the plaintiff's burden to show likelihood of confusion.

So, if it's the plaintiff's burden to show likelihood of confusion, how can it be the defendant's burden to show unlikelihood of confusion?

Mr. Brinkmann: --We don't believe it's the defendant's burden, we believe we... the district court was correctly reversed the Ninth Circuit in entering summary judgment against us, notwithstanding the fact that there was dispute regarding likelihood of confusion.

And the district court did that, because as I said it was absolutely irrelevant to their determination of used fairly.

Chief Justice Rehnquist: I think this is really quite confusing, Ms. Brinkmann.

The question presented, as several people have pointed out, whether the Lanham Act's fair-use defense to trademark infringement requires a party asserting the defense to demonstrate the absence of a likelihood it could confuse... consumer confusion.

Now, do you agree or disagree with that?

Mr. Brinkmann: We--

Chief Justice Rehnquist: You can surely answer that, "we agree", or "we don't agree".

Mr. Brinkmann: --We don't agree.

We believe that likelihood of confusion defeats the fair-use defense.

Chief Justice Rehnquist: Okay, okay.

Mr. Brinkmann: And we would point out that as a textual argument and the purpose argument--

Justice Stevens: May I ask, may I just interrupt, but when would one ever be able to use the defense if the plaintiff makes out a prima facie case, prima facie case, I assume, includes the burden of establishing likelihood of confusion.

So, is there any room for the defense at all?

Mr. Brinkmann: --As we point out in our brief, Your Honor, we do believe that since the amendment in 1988, this has ultimately become a redundancy, but the plaintiff's burden of showing likelihood of confusion--

Justice Stevens: So the answer is no.

Mr. Brinkmann: --It remains as a Congressional emphasis that even if, in a trademark situation, a use that is not likely to confuse is allowed.

That is what, this was a--

Justice Stevens: It's allowed without the affirmative defense.

Mr. Brinkmann: --To understand why this came in, it's important to understand in 1946 this defense applied only to incontestable marks.

It did not apply to other registered marks.

At that time, incontestable mark holders did not have to prove likelihood of confusion.

That incontestable mark was a conclusive evidence of the mark holder's exclusive right to use that mark on the same goods.

Same mark, on the same goods that were set forth in the affidavit with the PTO.

That was akin to early common law.

At that point, the plaintiff could go into court with their incontestable mark, and it was conclusive evidence.

So there had to be a safety valve for defendants to be able to say,

"Okay, I know this is an incontestable mark, I know that, and I know I'm using it on the same goods, but notwithstanding, I can use it because I'm using it fairly, I'm not confusing consumers with this. "

"That's what the purpose was. "

"In 19-- "

Justice Stevens: But are you suggesting, I want to be sure I follow your thinking, are you saying that in, back in those days, somebody with an incontestable mark did not have to prove likelihood of confusion?

Mr. Brinkmann: --It was presumed by the weight of that, that was the conclusive evidence.

Justice Stevens: Because otherwise, wouldn't that defeat the defense, too, then?

Mr. Brinkmann: Because the way Congress structured 1115(b), it was conclusive evidence except subject to the seven specific defenses, this was the fourth one.

Justice Souter: No, but you're saying, isn't your answer to Justice Stevens is that it was a rebuttable presumption?

Mr. Brinkmann: Yes.

Justice Souter: Yes.

Mr. Brinkmann: Yes, I'm sorry, yes.

Yes, Your Honor.

I would also point out that when Congress amended in 1988, there's absolutely no evidence whatsoever that they intended to change this and that's what's so fundamental about the position... the district court position.

This is a gaping hole in the core purpose of the Lanham Act.

Justice Breyer: But suppose IBM had used the word "computers" when they were the only company for ten or fifteen years to mark their product.

Now, another company comes along and they produce the same thing, they want to use the word "computer".

You're saying that that would be the end of it, they couldn't do it?

Mr. Brinkmann: Not at all, Your Honor.

Justice Breyer: People would be confused.

For a while they'll think that IBM, there would be confusion, but it's the best word to describe the product, in fact, at least a very good one.

Mr. Brinkmann: Your Honor, if that were the case, it was more than likely, almost certainly be a generic term with no protection.

Justice Breyer: Well, at the very beginning, IBM was the only one to do it, they didn't have to call it computer, they could have called it a word processor, they could have called it a "think faster".

I don't know what they could have called it, but I mean, you know, they chose the word computer.

Mr. Brinkmann: And Congress took that explicitly into account when it allowed any mark to be canceled at any time for genericism.

Escalator, aspirin are all examples of your situation.

That's exactly what happened, and when they came a generic term, that trademark was canceled and it became used as generic.

Congress--

Justice Breyer: So what is this fair-use defense for, since you're normally going to show confusion to show the infringement, what's it for, in your opinion?

Mr. Brinkmann: --Since 1988 it's a vestigial reminder of what Congress wanted to make sure was understood in 1946.

Even for the strongest, incontestable mark on the same goods, we are still going to always allow uses that are not likely to confuse.

Justice Scalia: --But we don't usually interpret statutes that way.

I mean, you tell us what Congress had in mind, but our best indication of what Congress had in mind is the words of the statute.

And the words of the statute make no sense if they say you have to prove confusion and the only... however, there's a special defense which you have, which turns out to be there's no confusion, that's not a special defense.

Mr. Brinkmann: Two points, Your Honor--

Justice Scalia: Makes it a meaningless statute, really.

Mr. Brinkmann: --Two points.

Petitioner gives no meaning to words "used fairly".

So if a worst statutory construction--

Justice Ginsburg: I thought they did when they outlined to us what it means is you're using it descriptively, and not as a mark.

Mr. Brinkmann: --Your Honor, those are other terms that are used in the statute, those are separate requirements.

There are four requirements in the provision, used not as a mark, used descriptively, used in good faith, and used fairly.

They read "used fairly" right out of the language.

Justice Ginsburg: Ms. Brinkmann, am I right that several cases say, the key here is, are you using it as a mark.

Because that suggests you're trying to pawn off your goods as another's.

Are you using it as a mark?

Or, are you using it, merely descriptively?

I thought use as a mark was the key, you're using it as a mark, you're not using it in good faith.

Mr. Brinkmann: No, that is one of the factors in likelihood of confusion, that you can take into account, that there can be non-trademark uses that are confusing, but the common law cases we talk about are full of examples of that.

I would like to make one other response to Justice Scalia's point, if I could.

Justice Scalia, to the extent that you hold that the fair-use defense no longer prohibits, all uses are likely to confuse as unfair, we would look to the suggestion made by the amici that there is a middle ground that likely to confusion, in any event, cannot be completely irrelevant to the used fairly determination, as Petitioner in the district court would have it.

We discuss on page 15 of our brief, for example, the Restatement's position, which we would urge the Court to look to, which is akin to what the amici suggests.

Justice Scalia: That may well be, but I don't think that's the question presented here.

I mean, we could agree with that, that it's relevant to deciding the defense, and still answer the question presented the way that the Petitioner wants.

Mr. Brinkmann: The district court's entry of summary judgment must be reversed, the Ninth Circuit did that because of its total disregard for likely to confusion--

Justice Souter: Well, that may be, but the issue here is whether the Ninth Circuit simply went too far in the other direction and required too much.

And all we have to determine is whether there is a per se obligation to prove non-confusion.

If we do so, that doesn't necessarily reinstate the district court's position, it simply says that the Ninth Circuit went too far, isn't that correct?

I mean, that is what is... that is the issue before us?

Mr. Brinkmann: --I think the ruling from this Court would have to be that it's not an absolute defense against likelihood of confusion.

Justice Ginsburg: How about if the ruling were a defendant who uses a descriptive term fairly and in good faith to describe its goods or services is not liable for infringement, even if some residual confusion is likely.

That's what the Restatement that you've just been applauding says.

Mr. Brinkmann: Yes, and that discussion explains a couple of things.

It explains that if there is a likelihood of substantial confusion, that would be the outer limit, ordinarily that would not be a fair use.

It also points out that likelihood of confusion is relevant to that determination that Your Honor just described.

Yes, we would win under that position, Your Honor, that's absolutely correct, that's the middle ground of the Restatement--

Justice Ginsburg: Well, you would win--

Justice O'Connor: You'd still have to vacate the judgment below, which seemed to go too far in saying that if there is any consumer confusion, that's the end of it.

Mr. Brinkmann: --Well, Your Honor, we would actually urge the Court to affirm the judgment below, in support of we cite cases in our brief, the Meritor case and the Yakima case, in which the judgment of the Ninth Circuit reversing the district court should be affirmed, and there are other holdings of the Ninth Circuit also that are not before the Court that should be affirmed.

Chief Justice Rehnquist: Well, you're urging then that the Ninth Circuit be affirmed on alternate grounds.

Mr. Brinkmann: Yes, Your Honor, that's--

Chief Justice Rehnquist: We rarely do that.

Mr. Brinkmann: --Yes, Your Honor, I understand that, but in this particular situation--

Justice O'Connor: Why wouldn't we just vacate it, and you have other grounds that the court below didn't address, but why wouldn't, at the very least, we vacate the judgment and send it back?

Mr. Brinkmann: --We certainly would agree, Your Honor, that if we are then given an opportunity on remand to go back to summary judgment and carry our burden of establishing a likelihood of confusion, but not have it held against us.

For example, in the middle ground, to determine what used fairly is, in addition to likelihood of confusion, we would suggest that there are other factors that the Restatement puts forth.

For example, whether there is commercial justification for the use.

Did we point out, there is no commercial justification, there are twenty other competitors that don't use this terminology.

Justice Scalia: They might have been afraid that you'd sue them.

Mr. Brinkmann: That's quite a strong mark, Your Honor.

Justice Ginsburg: --Ms. Brinkmann, am I right that they were, KP, they were in fact using the word "micro color" before you registered your trademark?

Mr. Brinkmann: No, we dispute that, Your Honor, they've never produced one bottle from that period.

In fact, we introduced four bottles of their--

Justice Ginsburg: But that would be... that would be a disputed issue of fact.

Mr. Brinkmann: --Yes, Your Honor.

Justice Ginsburg: And are we making any differentiation at all between the mini color red or whatever, and this logo that appears?

Mr. Brinkmann: Yes, all the difference in the world, Your Honor.

We maintain that that is a mark use.

I mean, the district court rejected that as well, but that is one of the issues where you suggested that courts have resolved these on whether something is used as a mark or not, that is not an easy answer, and that is why it's always part and parcel of the likelihood of confusion.

That's the purpose of the Lanham Act, to ensure that when you go into a store, you can buy the products you want.

For example, in the health and safety area here, you may be willing to buy a product that costs more money because you know of the quality of them.

At the same time, you want to be assured when you go in, because you don't want to buy the one that's recalled all the time, or that has ingredients that cause allergies for you, that's what the Lanham Act is to protect.

And it encourages the economic efficiency of the market--

Justice Stevens: Your customers are pretty sophisticated people, I guess, they're specialists in an unusual trade, so they're not just like a person walking off the street that doesn't know what it is, they probably know this market pretty well.

Mr. Brinkmann: --That's directly relevant to the likelihood of confusion, Your Honor.

In fact, the typical way of proving that when it ultimately goes to trial is through consumer survey.

And the law is clear that that survey would not be of the person on the street, it would be of the appropriate purchasers, who are more sophisticated clinicians and cosmetologists.

But, Your Honor, even on that situation in this record, we have direct evidence of confusion.

It's at joint appendix page 170, Your Honor, it's the declaration of Gloria Torres, where about 1998, 1999, she was one of the people who did sales, and she started getting calls from people wanting products, and it confused her because they weren't on my client's customer list, and also they were citing different prices.

It didn't mean anything to her at the time, it turns out this was the confusion because they were actually seeing this new usage on the marketing brochure by KP Permanent.

Justice Stevens: Just out of curiosity, it has nothing to do with the case, do they market this product with color charts, just like paint companies do?

Mr. Brinkmann: They do, Your Honor, that's absolutely right, color wheels, color... and also in the micro pigmentation history, it's very important, because even though it's like tattooing, the purpose is absolutely the opposite, it's to hide the color.

So mixing of the colors is a critical component of that industry.

I want to make another point about the economic efficiency that is furthered by the trademark laws and not allowing likelihood of confusing uses, which is what Congress intended.

By allowing purchasers to know that they're getting the product that they want, they're a lot, able to be more efficient in the market--

Justice Breyer: I also... it's very efficient to allow people to communicate, in English.

Mr. Brinkmann: --Your Honor, there's nothing to prevent that.

Justice Breyer: Well, I guess that's the question, because sometimes people... I have no doubt--

Mr. Brinkmann: Your Honor, I don't think there's anything... the way that Petitioner passed the Lanham Act grossly overstates it.

I mean, I would just submit the following list.

The only thing that the Lanham... the Lanham Act does not allow registration of generic brands, as we mentioned before.

It allows cancellation of any mark if it becomes generic.

It applies only to commercial uses, not usage in ordinary English language, only in connection with the mark.

It can only have a valid trademark when it's actively being used, any mark can be canceled or abandoned after three years.

It also, of course, only applies when there's likelihood of confusion.

Also there is an expert agency that reviews and goes through a process in which there can be oppositions, objections, all of this could be brought up at that point.

And also Congress directly addressed anticompetitive interests when it enacted the statute.

It, in 1946, enacted B(7) as a defense for antitrust violations.

It also reinforced the Justice Department, and the FTC maintains its enforcement authority, and it also had a particular provision that allowed the FTC to go in and cancel registration.

I'd also point out--

Chief Justice Rehnquist: What would be a really expert agency, which you referred to as represented by the government here, and it takes the position quite different from yours.

Mr. Brinkmann: --At this point in time, Your Honor.

I would also point out economic efficiency--

Chief Justice Rehnquist: Why are you saying at this point in time?

Are you suggesting they'll take a different position some other time?

Mr. Brinkmann: --Your Honor, in this case, it... this mark has been put through becoming to... but went through all of the procedures that the PTO required.

There's no question that this is a valid mark.

Justice Ginsburg: They're not assailing the validity of the mark.

Chief Justice Rehnquist: Nobody is challenging it, it's the fair-use defense.

Mr. Brinkmann: Your Honor, no, what I... the government's position is the same position that, in fact, it urged before Congress in 1946.

The Court's opinion in Park 'n Fly makes this clear.

They did not want descriptive terms at all protected, even with secondary meaning.

And as the Park 'n Fly opinion makes clear, Congress rejected that and struck the balance this way and included all of these other safeguards, not allowing registration of generic marks, always prohibiting uses that are likely to confuse.

We would also point out that that encourages economic efficiencies for businesses as well.

By being able to benefit from the reputation of your mark, the business invests more.

As soon as confusion is allowed, there is a free rider problem, and that competitor is free riding on that investment.

And it's a disincentive for further investment and it undermines the quality of the goods, because the only way--

Justice O'Connor: Certainly the Restatement and the view of some of the amici is contrary to yours on this.

Mr. Brinkmann: --We believe that the Restatement and the amici are very consistent in rejecting Petitioner's position and the district court's position that likelihood of confusion is completely irrelevant.

We embrace that, I think that's a consistent position, and that would be the bottom line, I would urge, on this Court, because Petitioner's position in the district court wreaks havoc, truly, with the statutory framework that Congress set up and intended.

We believe as a matter of strict statutory construction, that indeed it is now a vestigial provision, the fair-use defense, after the 1988 changes to the inconstestability provision.

But if the Court is not going to hold that that fair-use defense prohibits uses that are likely to confuse, we would urge the Court to adopt the Restatement position, that the totality of the circumstances, likelihood of confusion is relevant, we think factors that it's confusing in relationship to a health and safety issue would be relevant, the investment by the mark holder could be relevant.

And to the extent the competitor had a commercial justification for it, because it was a term that everyone needed to use, but "micro colors" is just not that kind of terminology as the record in this case demonstrates.

If there are no further questions, Your Honor.

Rebuttal of Michael Machat

Chief Justice Rehnquist: Thank you, Ms. Brinkmann.

Mr. Machat, you have three minutes remaining.

Mr. Machat: Thank you.

I'd like to point out that Ms. Brinkmann's reference to the legislative history is incorrect, and I'd just like to refer the Court's attention to my reply brief, pages 14 to 17 where basically it shows that prior to 1988, courts were required to find a likelihood of confusion before finding for the plaintiff on a trademark case.

I'd also like to point out that in this particular case, the trademark is not for the word "micro color", the trademark is for the logo mark, and here's some of the confusion.

The Respondents were able to obtain a trademark registration for the logo itself, and the strength in the logo itself is not being copied, we're just using the descriptive words within the logo itself.

And Congress always intended for descriptive words to be free for everybody to use in their primary descriptive sense, so long as the person, the subsequent user, is not using those descriptive words in the secondary meaning sense, and that's the distinction.

The confusion is only an issue to determine whether or not the elements of the fair-use defense is being met, but that confusion should be distinguished from likelihood of confusion.

Confusion is a factual determination, likelihood of confusion is a legal determination.

So you can use whether or not there is actual confusion to determine whether or not the word is being used as a mark.

Justice Scalia: I forget your position, if you've taken it, do you agree that the degree of confusion that is predictable or that is likely is one of the elements that can be used to determine whether the use is a fair one?

Do you agree or disagree with that?

Mr. Machat: I would agree, the degree of confusion, but that comes into whether or not--

Justice Scalia: All right, that's all I wanted to know.

Mr. Machat: --In this case, "used fairly" means, it does mean something, we're saying used fairly refers to whether or not the use is a truthful or reasonably accurate description of the mark.

And it always... truthful is something that the common law always looked at to see, that was a term used, in fact, by this Court in the Warner decision, basically, to quote briefly from that decision, it said

"the use of similar names by another to truthfully describe the same product does not constitute legal or moral wrong. "

So I would maintain that "used fairly" means truthful, or can determine whether or not it's exactly true, reasonably accurate.

And that would be the meaning of "used fairly".

And of course, good faith refers to the intent, and there you have the elements of the fair-use defense.

Also, I'd just like to point out once again the Ninth Circuit opinion, it says on the bottom of page 17a, it says,

"KP can only benefit from the fair-use defense if there is no likelihood of confusion between KP's use of the term'micro color', and Lasting's mark. "

And then they go on to say,

"as discussed above, because in this case they can be no fair use.... "

Chief Justice Rehnquist: Thank you, Mr. Machat, the case is submitted.