With SCOTUS having denied cert in the Jovani case, Tiffany v. Costco is LAW OF FASHION's new "case to watch" (and here's why...)

Posted by Charles Colman

This morning, the U.S. Supreme Court denied a petition for certiorari in a copyright-for-fashion case that LAW OF FASHION profiled in February. LOF would have liked to see the Supreme Court bring clarity to the muddled jurisprudence on "conceptual separability," but knew it was a long shot from the beginning.


But alas... another day, another case.  You'll recall that last week, LAW OF FASHION posted "Some initial thoughts on Costco's illuminating Answer and Counterclaims in Tiffany & Co.'s trademark 'counterfeiting' [sic] suit." In retrospect, LOF probably should have explained how it arrived at the conclusions laid out in the post -- and this writer did just that in a recent LinkedIn discussion with noted IP professor Tyler Ochoa.  I'm now posting that response to Professor Ochoa here -- with which, delightfully, the good professor "agreed on all points" -- along with Tiffany & Co.'s "Reply" to Costco's Counterclaim (the contents of which don't materially change my views at this point):



Admittedly, my first thought when I heard about Tiffany & Co.'s allegations was that it was a slam-dunk case. In fact, I thought this was such a clear case of infringement that I didn't even post the Complaint on my blog, because I didn't think it posed any issues interesting enough to discuss on LAW OF FASHION. But the more I learned about the widespread use of the term "Tiffany" to refer to a particular setting of a ring [see image following this paragraph, taken from Costco's "Answer and Counterclaim"] -- and as I discovered that Tiffany might have brought this suit in part because Costco has been doing quite well in the jewelry business -- the less convinced I became that Tiffany was in the right.



I think it's important not to focus on the understanding of the word "Tiffany" by the public at large, but rather on the segment of the public in the market for an engagement ring. Much as I knew nothing about the difference between "LCD" and "LED" TVs when I first decided to look into buying a large flat-screen TV, but had become well-versed in the distinction by the time I actually made a purchase, people making the (even costlier) investment in an engagement ring will undoubtedly come to learn that "Tiffany" is widely used by jewelers to refer to a type of setting that Tiffany & Co. does not have the exclusive right to make. For the court to base a finding of likelihood of confusion on the initial, uninformed reactions of the public who are not looking to spend thousands of dollars on an engagement ring, it seems to me, would essentially breathe new life into the "initial-interest confusion" theory of liability -- something that would be bad for trademark law, generally.



Also, if "Tiffany" is in fact a generic term for a type of ring setting -- again, among the relevant consuming public -- then I think it would be inappropriate to require Costco to add "-style" or "setting" to the descriptor, or to include a disclaimer; to impose such a requirement would, in my view, compromise the general rule that generic terms are entitled to no trademark protection, and/or seriously weaken the "statutory fair use" defense (which is already quite narrow in scope) in a manner at odds with the Supreme Court's ruling in KP Permanente (that fair use and some degree of consumer confusion are compatible.)



With that said, pleadings notoriously fail to tell the whole story. Let me get back to you once we have more of the facts in this case...



Here is the promised Tiffany & Co. filing, also available for viewing and download at Scribd.com:






[Like everything on LAW OF FASHION, this post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed in this post or at the linked web pages are those of the relevant writer(s) on a particular date, and should not necessarily be attributed to Charles Colman, his law firm, or its agents or clients. Neither the writer of this post nor LAW OF FASHION (or any person or entity associated with it) can or will warrant the thoroughness or accuracy of the content here or at the cited sources.]