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Supreme Court

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,
543 U.S. 111, 125 S.Ct. 542 (2004)


Against seemingly insurmountable odds, Mr. Machat persuaded the United States Supreme Court to issue a writ of certiorari in order to address the scope and elements of the fair use defense to a claim of trademark infringement.   Mr. Machat briefed the case, and argued it before the court.   He won the case for his client, persuading the Supreme Court to overturn the 9th Circuit Court of Appeals.   In KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 125 S.Ct. 542 (2004), the Supreme Court held that a party bringing a fair use defense does not have the burden of negating a likelihood of consumer confusion.  The Court ruled that some degree of confusion was compatible with a fair use defense.

The Court’s ruling – in effect establishing fair use once and for all as a viable defense to trademark infringement – was hailed as a landmark victory.   An article in the St. Louis Today called the case “a boost for freedom of expression,” saying that the “Supreme Court’s decision is important for artists . . . since it acknowledges that creativity is impossible without a rich public domain to draw upon.”  (Michael A. Kahn, “FIRST AMENDMENT: Freedom of expression wins one, loses one,” St. Louis Today, December 21, 2004).

In interpreting the statute that sets forth the fair use defense, Lanham Act §33(b)(4), 15 U.S.C. §1115(b)(4), the Supreme Court relied on numerous types of reasoning:

  • Textual Statutory Interpretation: the statute’s statement of the fair use defense does not mention likelihood of confusion.  See KP Permanent, 543 U.S. at 118, 125 S.Ct. at 548.

  • Common Law Standards: to the extent that the statute incorporated the common law of unfair competition, this area of common law “tolerated some degree of confusion from a descriptive use of words contained in another person’s trademark.”  See KP Permanent,543 U.S. at 119, 125 S.Ct. at 548.

  • Litigation Practices: the statute (in 15 U.S.C. §§1114, 1115(b)) places the burden on the plaintiff in an infringement action to demonstrate a likelihood of confusion; thus, to prevail on the likelihood of confusion issue, the defendant must merely demonstrate that the plaintiff failed to carry its burden; the fair use defense, which requires an affirmative showing is a distinct, alternative means of defeating an action – the fair use affirmative defense is available in lieu of, or addition to, the defendant’s rebutting any essential element of the plaintiff’s case (such as likelihood of confusion).  See KP Permanent, 543 U.S. at 120, 125 S.Ct. at 549.

For the Supreme Court’s full opinion, click here.
For Mr. Machat’s article on the case, click here.

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