MEMORANDUM *
LTTB LLC sells t-shirts and other goods bearing its registered trademarks, the words and design, “LETTUCE TURNIP THE BEET.” LTTB brought an action against Redbubble, Inc., under the Trademark Act of 1946 (Lanham Act), 15 U.S.C. § 1051 et seq., alleging that Redbubble infringed on its trademarks by selling products containing the same words and design. The district court granted summary judgment in favor of Redbubble, concluding that, pursuant to the doctrine of aesthetic functionality, LTTB could not preclude others from displaying the phrase on products. LTTB, LLC v. Redbubble, Inc., 385 F. Supp. 3d 916, 920–22 (N.D. Cal. 2019). We have jurisdiction under 28 U.S.C. § 1291, and we apply de novo review. Moldex-Metric, Inc. v. McKeon Prods., Inc., 891 F.3d 878, 880–81 (9th Cir. 2018). We conclude that the district court correctly concluded that LTTB failed to raise a triable issue that its marks serve the trademark function of source-identification and therefore affirm. See Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1067 (9th Cir. 2006) (“The principal role of trademark law is to ensure that consumers are able to identify the source of goods.”).
1. The district court did not erroneously rely on the test for aesthetic functionality from International Order of Jobs Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980). Although Jobs Daughters was “a somewhat unique case” whose “broad language was soon clarified and narrowed,” the case remains good law. Au-Tomotive Gold, 457 F.3d at 1069.
Regardless, the result here is the same under the test for aesthetic functionality articulated in Au-Tomotive Gold. Under the first step, the t-shirts, tote bags, and other products bearing the LTTB mark would still function as t-shirts and tote bags without the mark. See id. at 1072–73 (“Auto Golds products would still frame license plates and hold keys just as well without the famed marks.”). “Similarly, use of the marks does not alter the cost structure or add to the quality of the products.” Id. at 1073.
Moving to the second step, the question is whether the marks “perform some function such that the ‘ “exclusive use of [the marks] would put competitors at a significant non-reputation-related disadvantage.” ’ ” Id. (quoting TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001)). It cannot be disputed that competitors would be unable to sell products bearing the phrase if LTTBs marks were protected. This court has been “careful to prevent ‘the use of a trademark to monopolize a design feature which, in itself and apart from its identification of source, improves the usefulness or appeal of the object it adorns.’ ” Id. (quoting Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 774 (9th Cir. 1981)); accord Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 222 (2d Cir. 2012) (“In short, a mark is aesthetically functional, and therefore ineligible for protection under the Lanham Act, where protection of the mark significantly undermines competitors’ ability to compete in the relevant market.”).
In Au-Tomotive Gold, where the defendant admitted that consumers wanted the goods because they identified the sources (Volkswagen and Audi), “the alleged aesthetic function [was] indistinguishable from and tied to the marks source-identifying nature.” Au-Tomotive Gold, 457 F.3d at 1074. By contrast, there is no evidence here that consumers buy LTTBs goods because they identify LTTB as the source, rather than because of the aesthetic function of the phrase, “LETTUCE TURNIP THE BEET.”
LTTB presented evidence of the popularity of its goods, but that evidence does not raise a triable issue as to whether consumers buy the products because they identify LTTB as the source of the goods. Its evidence includes anecdotes from Elektra Printz Gorski, LTTBs founder and owner, that celebrities wear the shirts and that a customer emailed her, as well as printouts of the goods offered for sale on the LTTB Etsy website.
1
Although LTTBs evidence may indicate that its goods are popular, it does not indicate that consumers buy the goods because the marks identify LTTB as the source of the goods. In Vuitton, the plaintiff presented an affidavit by a buyer of goods for a department store stating that it was unlikely “there is anyone who would purchase a Vuitton product solely because they found the characteristic Vuitton trademark to be aesthetically pleasing,” but instead “it is because the design associates the products with Vuitton.” Vuitton, 644 F.2d at 776. Unlike Vuitton, LTTB has presented no evidence that consumers buy the goods because the design associates the goods with the company LTTB rather than because they want goods bearing the phrase.
LTTB has presented no evidence to avoid the conclusion that the marks here “serve an aesthetic purpose wholly independent of any source-identifying function” and thus are aesthetically functional. Au-Tomotive Gold, 457 F.3d at 1073. Therefore, LTTBs evidence does not raise an issue of fact as to whether consumers buy the products because they identify LTTB as the source.
2. Despite the fact that LTTBs trademarks are registered and two of them are incontestable, see 15 U.S.C. § 1115(b), the right to use registered marks is subject to nine “defenses or defects” listed in the statute, including “[t]hat the mark is functional.” id. § 1115(b)(8). The defense of functionality “provides the challenger of a mark the opportunity to rebut prima facie evidence of the marks validity.” Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 782 (9th Cir. 2002); see 15 U.S.C. § 1115(a). Because, on this record and when used on the allegedly infringing products that are the subject of LTTBs complaint, LTTBs marks are functional, they are not protectable against any type of allegedly infringing activity.
2
See Tie Tech, 296 F.3d at 783 (“[T]he plaintiff retains the ultimate burden of persuasion in a trademark infringement action, namely proof of infringement. A necessary concomitant to proving infringement is, of course, having a valid trademark; there can be no infringement of an invalid mark.”). We therefore reject LTTBs contentions that the district court erred in failing to address uses of the marks on Redbubbles website and in online advertising. We also need not address LTTBs arguments regarding counterfeiting and contributory infringement.
3. Because LTTBs mark is functional and therefore not protectable on this record, there is no need to address the issue of likelihood of confusion. See Talking Rain Beverage Co. Inc. v. S. Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (observing that “we need not reach the distinctiveness and likelihood of confusion issues” because, “notwithstanding its registered trademark, [plaintiffs] bike bottle design is functional”).
4. LTTBs argument that the district court erroneously ignored its design marks is similarly unavailing. Unlike copyright and patent laws, trademark laws are “not designed to protect originality or creativity,” Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003), but to “prevent[ ] competitors from copying ‘a source-identifying mark,’ ” id. at 34, 123 S.Ct. 2041 (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-64, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995)). Thus, “[i]n general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying.” Id. at 33, 123 S.Ct. 2041 (quoting TrafFix, 532 U.S. at 29, 121 S.Ct. 1255); see also, e.g., id. at 36, 123 S.Ct. 2041 (where “Wal-Mart produced ‘knockoffs’ of childrens clothes designed and manufactured by Samara Brothers,” the designs on the clothes could not be protected under the Lanham Act without showing that the designs “ ‘identify the source of the product’ ” (quoting Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000))). Like the sweater designs in Wal-Mart, LTTBs marks are primarily aesthetic on this record, not source-identifying.
5. The district court did not improperly rely on the Patent and Trademark Offices initial rejection of Gorskis trademark application in considering whether the mark was merely functional or source-identifying. Cf. TrafFix, 532 U.S. at 34, 121 S.Ct. 1255 (looking to the prosecution history of an expired patent in considering whether features asserted to be trade dress were functional). Nor did the district court erroneously conflate the standards for registration of a trademark and trademark infringement liability.
․
LTTBs marks do not function as trademarks because they are aesthetic only and do not identify the source of the goods. The allegedly infringing activity does not deceive or mislead consumers about the source of the goods but copies the designs themselves. See Jobs Daughters, 633 F.2d at 919 (“under the Lanham Act ‘one can capitalize on a market or fad created by another provided that it is not accomplished by confusing the public into mistakenly purchasing the product in the belief that the product is the product of the competitor’ ” (quoting Am. Footwear Corp. v. Gen. Footwear Co. Ltd., 609 F.2d 655, 662 (2d Cir. 1979))).
Because functionality is a defense to the validity of the marks and to LTTBs exclusive right to use the marks, the district court properly granted summary judgment to defendant Redbubble on this ground and was not required to consider LTTBs other arguments.
AFFIRMED.
FOOTNOTES
1
. The printouts show images of LTTBs products and three five-star reviews. But, almost all the products bear the phrase “LETTUCE TURNIP THE BEET” on them, indicating that the phrase acts as an aesthetic design, not as a symbol for the company. Cf. EMI Catalogue Pship v. Hill, Holliday, Connors Cosmopulos Inc., 228 F.3d 56, 63 (2d Cir. 2000) (rejecting the claim that a “song itself serves as a ‘symbol or device’ that indicates its source” because trademark law “does not protect the content of a creative work of artistic expression as a trademark for itself”). The comments in the reviews state: “Fast shipping. Product as described/true to photo. I would highly recommend!” and “Great stickers shipped on time. Thank you.” This evidence does not support LTTBs contention that consumers purchase the products because they are source-identifying rather than merely aesthetically pleasing.
2
. The district court pointed out that Redbubbles argument was not that LTTBs registered trademarks are per se invalid, but that LTTB could not “show[ ] a likelihood of confusion as to source, where the mere use of the pun on the face of various products cannot be source-identifying.” LTTB, 385 F. Supp. 3d at 921. Similarly here, we do not hold that LTTBs marks are per se invalid.