Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995).

CASE BRIEF

The plaintiff, Sunmark, uses its incontestable - 15 U.S.C. Section 1065 - mark "Swee TARTS" on candy and the defendant, Ocean Spray had sporadically advertised its cranberry juices with various permutations of the phrase "Sweet-Tart". After Ocean Spray launched a new line of candy advertised as "sweet and tart" and stepped up its "sweet-tart" cranberry juice campaign in 1991, Sunmark sued under the Lanham Act.

Ocean Spray argued that it only used the words "Sweet-Tart" to describe the taste of its cranberry juice under 15 U.S.C. Section 1115(b)(4):

[C]onclusive evidence of the right to use a mark [under 15 U.S.C. Section 1065] shall be subject to . . . the following defenses or defects: . . . (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or 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.

In other words, "[t]he use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong, even if its effect be to cause the public to mistake the origin of the product." William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 528 (1928) Cf. Zatarian's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983)(Analyzing "FISH-FRI" and "Fish Fry" for related products and implying that confusion is inconsistent with a fair use defense insomuch as it shows the words are being used as a trademark).

The trial court found that the words "sweet" and "tart" as well as the conjunction of the two were descriptive under these facts and denied a preliminary injunction against Ocean Spray. However, "in passing" the trial court also remarked that Ocean Spray had used the words as a trademark. On appeal of the ruling, and faced with such inconsistent statements, Hon. Judge Easterbrook stepped in to clarify the doctrine of descriptive fair use.

As a threshold matter, "[u]nder the Lanham Act it is irrelevant whether [Sunmark's] 'Swee TARTS' mark is itself descriptive," rather, the real issue is "whether 'Sweet-Tart' is descriptive as Ocean Spray uses it." Notably on this point, just because a word such as "Sweet-Tart" is not found in the dictionary, does not mean that it cannot be used descriptively. Indeed, a slew of news articles using such a word in a descriptive fashion demonstrate that "language often outpaces dictionaries."

Additionally, "although descriptiveness does not make status as a trademark impossible," if Ocean Spray did indeed use the words as a trademark, it "cannot invoke the fair use defense."

In any event, Easterbrook agreed that the term "Sweet-Tart" was being used by Ocean Spray in a descriptive fashion, e.g. "sweet-tart of a deal" is a play on words that works because the phrase "sweet-tart" describes the product. Even Ocean Spray's use of the phrase "sweet and tart" on its new line of candy (Fruit Spray Waves) did not rise beyond the level of descriptive fair use. The evidence proffered was simply too paltry to support a preliminary injunction (referring to a marketing survey where only three out of two-hundred, fifty-seven individuals interviewed actually associated Ocean Spray's "Sweet-Tart" use with candy).

Full text available here.

COMMENTARY

Yes. The cranberries used for the photo above are actually Ocean Spray Brand Craisins. It is worth noting that the combination of the words "sweet" and "tart" did not appear on the product packaging because the word "tart" is not used at all. The next closest thing was the phrase "Surprisingly Sweet and Tangy!"

Blawging 101

17 U.S.C. Section 102, the U.S. Copyright Act on general copyrightable subject matter specifically includes architectural works under the Architectural Works Copyright Protection Act (AWCPA). Title VII of Pub.L. 101-650, 104 Stat. 5089 (1990), enacted Dec. 1, 1990. (emphasis added). 17 U.S.C. Section 101 defines architectural works as:

[T]he design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.

Oh no! Does this mean every time I take a picture of a building that I have created an infringing derivative work of the architect's original copyright? Most likely not. This provision covers (1) any architectural work created on or after December 1, 1990; and (2) any unconstructed architectural work that was embodied in unpublished plans or drawings as of December 1, 1990, provided construction occurred prior to December 31, 2002. AWCPA Section 706. Moreover, 17 U.S.C. Section 120(a) limits the scope of exclusive rights in architectural works:

Pictorial Representations Permitted - The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.

COMMENTARY

The above photo depicts, among other things, one of the tallest buildings in Arlington, Virginia, the Rosslyn Twin Tower II, a/k/a the WJLA-TV building. It's construction was completed in 1982. The firms of Hellmuth, Obata & Kassabaum and KCF-SHG, Inc. are credited with its architecture. The Rosslyn Twin Tower II, as well as the other buildings in the photograph are both located in and visible from a public place.