KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.
543 U.S. 111 (2004)
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Rule of Law:
A party raising the statutory affirmative defense of fair use to a trademark infringement claim does not have the burden to negate any likelihood of consumer confusion. The plaintiff alleging infringement retains the burden of proving likelihood of confusion as an element of their claim, and some possibility of confusion is compatible with a successful fair use defense.
Facts:
- KP Permanent Make-Up, Inc. (KP) began using the term 'microcolor' on advertising flyers and pigment bottles for its permanent makeup products around 1990-1991.
- In 1992, Lasting Impression I, Inc. (Lasting) applied to the U.S. Patent and Trademark Office to register a trademark for the words 'Micro Colors' for its permanent makeup products.
- The Patent and Trademark Office registered the 'Micro Colors' mark to Lasting in 1993.
- In 1999, Lasting's trademark for 'Micro Colors' became incontestable under the Lanham Act.
- Also in 1999, KP created a new advertising brochure that used the word 'microcolor' in a large, stylized typeface.
- After seeing the brochure, Lasting demanded that KP cease using the term.
Procedural Posture:
- KP Permanent Make-Up, Inc. (KP) sued Lasting Impression I, Inc. (Lasting) in the U.S. District Court for the Central District of California, seeking a declaratory judgment of non-infringement.
- Lasting filed a counterclaim against KP for trademark infringement.
- KP moved for summary judgment on Lasting's counterclaim, asserting the fair use affirmative defense.
- The District Court, a court of first instance, granted summary judgment for KP, finding KP had established the fair use defense without needing to address likelihood of confusion.
- Lasting, as appellant, appealed the summary judgment to the U.S. Court of Appeals for the Ninth Circuit, an intermediate appellate court.
- The Ninth Circuit reversed the District Court's summary judgment, holding that the fair use defense is unavailable if there is any likelihood of consumer confusion, and remanded the case.
- KP, as petitioner, successfully petitioned the U.S. Supreme Court for a writ of certiorari.
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Issue:
Does a defendant raising the statutory fair use affirmative defense to a trademark infringement claim have a burden to prove that its use of the term is not likely to cause consumer confusion?
Opinions:
Majority - Justice Souter
No. A party raising the statutory affirmative defense of fair use to a claim of trademark infringement does not have a burden to negate any likelihood that its practice will confuse consumers. The Lanham Act's text places the burden of proving likelihood of confusion on the plaintiff as part of the infringement claim, and it omits any mention of confusion from the elements of the fair use defense. It is illogical to require a defendant to affirmatively disprove an element that the plaintiff must first prove; the defense only becomes relevant after the plaintiff presents evidence of likely confusion. Therefore, to require the defendant to show no confusion would render the defense useless in the only situation where it is needed. The common law tolerated some confusion when descriptive terms were used, and the Lanham Act does not abrogate this principle, as doing so would improperly allow a party to monopolize a descriptive term. While a defendant has no burden to negate confusion, the degree of any confusion may be a relevant factor in determining whether the defendant's use was objectively 'fair'.
Analysis:
This decision resolves a circuit split by clarifying the allocation of burdens in trademark fair use cases. It establishes that fair use is not automatically defeated by a showing of some consumer confusion, thereby protecting the ability of competitors to use descriptive terms in the English language. By keeping the burden of proving confusion squarely on the plaintiff, the Court prevents trademark holders from using incontestable marks to monopolize descriptive words. The ruling ensures that the fair use defense remains a viable tool for defendants using terms in their primary, descriptive sense, even if those terms have acquired a secondary meaning as a trademark for another party.
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