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Individual name defense for designer gets a boost on appeal

By Rebecca Tushnet

JA Apparel Corp. v. Abboud, --- F.3d ----, 2009 WL 1615694 (2nd Cir.)

The district court enjoined Joseph Abboud from using his name to sell clothes because he?d sold his name as part of a comprehensive sale of his brand. The court of appeals vacated and remanded, concluding that the sale agreement was ambiguous and that extrinsic evidence of the parties? intent should be considered. Thus, Abboud could argue that he didn?t sell the right to use his name in contexts other than brand name/service mark/trademark use. In addition, trademark law alone could not suffice to uphold the judgment.

Defendants weren?t seeking to use the Joseph Abboud name on clothes, labels, or hang-tags; he merely wanted to be able to identify himself as the designer of ?jaz? clothes in advertising materials. Though defendants conceded that use of the name as a mark would cause confusion, they argued that they were entitled to make fair use despite the existence of some confusion?relying on descriptive/statutory fair use, though in this case descriptive and nominative fair use seem quite closely related. §1115(b)(4) specifically provides a defense for a use ?otherwise than as a mark? of a party?s ?individual name in his own business.? Notably, the more familiar part of this provision allows use ?of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.?

I say notably because the court here imposed not only the ?otherwise than as a mark? requirement on the defense here, but also requirements of (1) descriptiveness and (2) fairness and good faith, even though the statutory language is more naturally read to limit those requirements to non-individual name descriptive uses. (Note, for example, the placement of ?geographic origin,? which makes no sense as applied to individual names.) Descriptiveness is redundant for an individual name; the payoff of this rather strained statutory construction is the addition of a good faith requirement, raising the question whether an individual (or someone in privity with him/her, as also allowed by the statute) can use his/her own name, not as a mark, but still in bad faith.

So, did Abboud propose to use his name as a mark? The Second Circuit construes ?use as a mark? here to mean ?the use of [a] term as a symbol to attract public attention.? The district court concluded that Abboud wanted to use his name and the associated goodwill to advise consumers that he?s the source of the jaz line. Thus, there would be confusing use as a mark for products marked or advertised with ?Joseph Abboud? or ?by Joseph Abboud.? The court of appeals found that the district court had failed to properly consider the precise uses proposed, even though it had ad mock-ups available to it that would have allowed it to assess considerations such as the size, location, and context of the ?Joseph Abboud? name. The court of appeals found that individualized consideration of proposed ads was needed; in some mock-ups, the jaz name is more prominent than others (three inches high versus one inch), and the prominence and capitalization of ?Joseph Abboud? varies.

As for good faith, the issue is whether the user intended to create consumer confusion on source or sponsorship. The court of appeals concluded that the district court applied an erroneous standard, allowing a finding of likely confusion to substitute for an intent to confuse, which the district court had found was absent. Rather, the district court found that Abboud was attempting to distinguish his clothing from plaintiffs?. Moreover, the district court relied on its contract conclusion?that Abboud had unambiguously conveyed away the right to use his name?to find bad faith; that part of the decision having been vacated, this too had to go.

Full post as published by 43(B)log on June 17, 2009 (boomark / email).