KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

PETITIONER: KP Permanent Make-Up, Inc.
RESPONDENT: Lasting Impression I, Inc., et al.
LOCATION: Texas State Capitol

DOCKET NO.: 03-409
DECIDED BY: Rehnquist Court (1986-2005)
LOWER COURT: United States Court of Appeals for the Ninth Circuit

CITATION: 543 US 111 (2004)
GRANTED: Jan 09, 2004
ARGUED: Oct 05, 2004
DECIDED: Dec 08, 2004

ADVOCATES:
Beth S. Brinkmann - argued the cause for Respondents
Michael Machat - argued the cause for Petitioners
Olivia Maria Baratta - for the International Trademark Association as amicus curiae
Patricia A. Millett - argued the cause for Petitioners, on behalf of the United States, as amicus curiae
Robert A. Long, Jr. - for the Society of Permanent Cosmetic Professionals et al. as amici curiae urging affirmance
Theodore H. Davis, Jr. - for the International Trademark Association as amicus curiae
William D. Raman - for the International Trademark Association as amicus curiae

Facts of the case

Cosmetics company Lasting Impression trademarked the term "micro colors." Lasting Impression sued K.P. Permanent Make-Up in federal district court for using the term. K.P. used the "classic fair use defense" and argued it used the term only to describe K.P. products. The district court sided with K.P. Lasting appealed to the Ninth Circuit Court of Appeals. Unlike other federal appellate courts, the Ninth Circuit required companies that used the fair use defense to prove there was no likelihood of confusion in use of the term. The Ninth Circuit ruled there was likelihood of confusion and reversed the district court's ruling.

Question

Did the classic fair use defense to trademark infringement require the party asserting the defense to demonstrate an absence or likelihood of confusion?

Media for KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

Audio Transcription for Oral Argument - October 05, 2004 in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

Audio Transcription for Opinion Announcement - December 08, 2004 in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

David H. Souter:

Justice Souter has the opinion to announce in KP Permanent Make-Up.

This case comes to us on writ of certiorari to the United States Court of Appeals for the Ninth Circuit.

The Trademark Act of 1946 also known as the Lanham Act requires the holder of a registered mark to show that another's used of its imitation of its mark is likely to cause confusion, what it cause mistake, or to deceive.

In order to prevail an infringement action, the defendant in such an action has an affirmative defense of fair use.

If it can show that its use of the term is used otherwise than as a mark of a term which is descriptive of and used fairly and in good faith only to describe the defendants goods.

Petitioner KP Permanent Make-Up and respondent Lasting Impressions both sell permanent make-Up which is a mixture of pigment and liquid to be injected under the skin for cosmetic or medical purposes.

Lasting and its licensee alleged in the District Court that KP infringed the Lasting's registered incontestable trademark and the term "Micro Colors" by using a version of the term in KP's advertising brochures.

KP raise the affirmative defense of fair use.

The District Court granted summary judgment in favor of KP on its fair use defense the trademark infringement.

But it did so without considering whether KP's use of the term was likely to cause confusion among consumers as to the origin of KP's goods.

The Ninth Circuit reversed finding that KP could only benefit from the fair use defense if there was no likelihood of confusion between its use of the term "Micro Color" and Lasting's mark.

In an opinion filed today with the Clerk of the Court we vacate the judgment and hold that the defendant to an infringement action has no need to show that confusion is unlikely in order to make out the affirmative defense of fair use.

Nothing in the text of the statute setting out the affirmative defense indicates the defendants must make any showing regarding likelihood of confusion, and because congress was specific in requiring the mark holder to show likelihood of confusion, mistake or deception.

In order to make out an infringement claim, we decline Lasting's invitation to read Congress' silence on the significance of confusion under the fair use defense in order to require the defendant to show an absence of such likelihood.

Nor can the common law of unfair competition be used to require the defendant to shoulder a burden on this issue.

The common law in fact tolerated some degree of confusion from a descriptive use of words contained in another person's mark, and it did so in order to preserve the common right to use descriptive terms.

Finally, it would make little sense to require the defendant to disprove as part of its affirmative defense an element of the plaintiff's prima facie case.

If the defendant could do that it would have no need of an affirmative defense at all.

It follows from our conclusion that some degree of consumer confusion may co-exist with the fair use of the term contained in another's trademark.

But our holding does not foreclose the possibility that the extent of likely consumer confusion maybe relevant in assessing whether a defendant's use is objectively fair.

We leave such questions for another day.

The opinion is unanimous almost.

Justice Scalia does not join in footnotes four and five and Justice Breyer does not join in footnote six.

John Paul Stevens:

Mr. Clerk the clerk will now undertain motions or the admission to the Bar of the Court.