The interplay between circumstantial evidence under the Lanham Act’s substantive law of trade dress infringement and the rules for summary judgment was at issue in J-B Weld Co. v. Gorilla Glue Co., 2020 WL 6144561 (11th Cir. Oct. 20, 2020). In J-B Weld,all three judges agreed that the district court erred in entering summary judgment for the defendant. In an opinion authored by Senior Judge Tjoflat, the Eleventh Circuit reversed the summary judgment dismissing the Lanham Act trade dress infringement claim, and remanded to the district court for trial. In analyzing the likelihood of confusion between the two competitors’ trade dresses, the district court repeatedly failed to view the evidence in the light most favorable to the plaintiff, J-B Weld, the court held.
J-B Weld and Gorilla Glue both manufacture and sell two-tube epoxy adhesives. The dispute concerned Gorilla Glue’s product packaging, or trade dress, for its “GorillaWeld” product, which has a design similar to J-B Weld’s product packaging for its “J-B Weld Original” and “J-B Weld Cold Weld” products.
J-B Weld sued Gorilla Glue under several theories, including trade dress infringement under the Lanham Act.
After noting that it typically looks to seven factors when determining a likelihood of confusion between two trade dresses, the court agreed with J-B Weld that, among other issues, the district court failed to give proper credit to evidence relevant to three of the seven factors—similarity of design, defendant’s intent to cause confusion, and actual confusion. Of interest for purposes of this blog: the court concluded that the district court erred in its treatment of the intent and actual confusion factors by failing to draw all inferences from the evidence in J-B Weld’s favor.
When considering the intent question, the Eleventh Circuit noted that, while there is a difference “between intentional copying and intentional copying with intent to cause confusion,” an intent to derive a benefit from a competitor’s goodwill, and thus an intent to cause confusion, may be inferred from evidence of intent to copy. J-B Weld offered substantial evidence that Gorilla Glue intended to “mirror,” “copy,” and “knock off” its trade dress. The district court erred when it relied on “improperly inferred innocuous motives” provided by Gorilla Glue’s employees to conclude that their testimony overcame the circumstantial evidence, and demanded the conclusion that Gorilla Glue did not intend to capitalize on its competitor’s goodwill.
In reaching this conclusion, the district court failed to draw all reasonable inferences in the light most favorable to the non-moving party, J-B Weld. Circumstantial evidence is exactly the kind of evidence that must be viewed in this way. “Intent to benefit from a competitor’s goodwill can rarely be proven with a smoking gun, so there is nothing unusual about a finding of intent based on circumstantial evidence. Thus, while we have held that there is a distinction between intentional copying and intentional copying with intent to cause confusion, a finder of fact may nevertheless infer intent to derive a benefit from a competitor’s goodwill—and, accordingly, an intent to cause confusion—from evidence of intent to copy.” (citations and internal punctuation omitted).
Concerning the evidence of actual confusion, the court found that the district court again erred in overlooking reasonable inferences of fact in J-B Weld’s favor when it concluded that the evidence was insufficient to establish actual confusion. Specifically, the court concluded that the district court failed to consider circumstantial factors, which are integral to determining the appropriate weight to assign to any individual instance of actual confusion.
J-B Weld offered evidence of a couple of instances of confusion among wholesale buyers for its retailer customers. Citing the similarity in the packaging, the buyers questioned whether the Gorilla Glue epoxy products were actually being manufactured by J-B Weld. The district court discounted this evidence, concluding that these buyers were not actually confused, because they knew that Gorilla Glue and J-B Weld were separate suppliers. The court pointed out that confusion as to source is not the only confusion actionable under the Lanham Act. Liability “also extends to confusion about perceived ‘affiliation’ or ‘sponsorship’ of a product or service by another company.”
Not only was this conclusion an improper finding of fact against the non-moving party, it also did not take into account the surrounding circumstantial evidence. For example, the GorillaWeld product was introduced in 2017, and J-B Weld’s first complaint was filed on October 6, 2017. “Given that the elapsed time since the introduction of the allegedly infringing product had been less than a year when the complaint was filed, in all likelihood the number of reported instances of actual confusion would be on the lower side, making each instance of reported confusion more probative.” Yet the district court did not consider these circumstances relevant, choosing instead to supply its own interpretation of the meaning of J-B Weld’s evidence and find—erroneously—that as a matter of law no actual confusion occurred.
In a concurring opinion, Judge Ed Carnes emphasized “the distinction between ‘intentional copying’ and ‘intentional copying with intent to cause confusion.’” While in this case, the evidence would allow a jury to infer that Gorilla Glue intended to copy for the purpose of causing consumer confusion, not all product copying results in Lanham Act liability. The key distinction is whether the defendant copied functional aspects of the product, in an effort to compete openly, or whether the copying was intended “to confuse consumers about GorillaWeld’s origins and benefit from J-B Weld’s goodwill.”
Parties seeking to enforce their trade dress rights ought to benefit from this decision. Where competing reasonable inferences may be drawn from the evidence, particularly where circumstantial evidence is involved, the district court must allow the issue to reach the jury. It does not take much evidence of intent to copy the appearance of an existing product to support the conclusion that the imitator intended to confuse consumers, whether as to source, affiliation, or sponsorship.