For the past six months or so, my life has been all about poop. You see, my daughter and her friends have entered into a charming phase in which no opportunity to make a poo, pee or fart joke goes unmissed. (This morning’s latest gem, about a Kenmore commercial touting large capacity refrigerators: “Mom, did you hear? They said: ‘We put more in so you get more out’ — hah… they put more food in so you can ‘get more out,’ in poop, get it?” Sigh.)
At first we tried to put a lid on this toilet humor; but now we just, um, go with the flow. (Gah, it’s contagious!) My husband has frankly adopted the “if you can’t beat ‘em, join ‘em” approach, serenading my daughter and me with an obscure Bobby Bare country song that used to play on a.m. radio when he was growing up in Montana. I think even you city folk will get a chuckle out of the lyrics to “Bathroom Tissue Paper Letter.” Case in point:
When I got home this evening about a half past ten
And found she wasn’t waiting so I let myself on in
I headed for the icebox to get myself a beer
And found that little note that said my baby wasn’t there.
There was a bathroom tissue paper letter hanging on the wall
She said I just can’t take no more and you can have it all
I’m taking what good sense I’ve got and leaving you behind
And you can take this letter and wipe me from your mind.
C’mon, funny, right? I know — some of you may be feeling a bit sorry for my family and me, mired in, well, excremental humor as we seem to find ourselves lately. But we don’t need your pity. As it turns out, recent trademark news has given me cause to hold my head up high; my daughter, poopy puns and all, can now follow in the footsteps of none other than the esteemed judges of the Seventh Circuit Court of Appeals.
In a suit brought in 2009, toilet paper titan Georgia-Pacific claimed that the trademarks it registered in the quilted diamond pattern used on rolls of “Quilted Northern” had been trashed by competitor Kimberly-Clark, who in 2008 redesigned its premier brand of TP — Cottonelle — using a similar quilted design. Last week, the Seventh Circuit flushed Georgia-Pacific’s trademark claims down the, well, you know. The Court of Appeals upheld the lower court’s finding on summary judgment that Georgia-Pacific’s quilted diamond design was functional and therefore not entitled to trademark protection. And it did so in a hilarious opinion by Judge Terence Evans riddled with, you guessed it, potty puns.
The opinion is worth reading in its entirety, but here are the opening paragraphs, just to whet your appetite:
EVANS, Circuit Judge. Toilet paper. This case is about toilet paper. Are there many other things most people use every day but think very little about? We doubt it. But then again, only a select few of us work in the rarefied air inhabited by top-rate intellectual property lawyers who specialize in presenting and defending claims of unfair competition and trademark infringement under the Lanham Act, 15 U.S.C. §§ 1051 et seq. And the lawyers on both sides of this dispute are truly first-rate. Together they cite some 119 cases and 20 federal statutes (albeit with a little overlap) in their initial briefs. We are told that during the “expedited” discovery period leading up to the district court decision we are called upon to review, some 675,000 pages of documents were produced and more than a dozen witnesses were deposed. That’s quite a record considering, again, that this case is about toilet paper.
We’ll start by introducing the combatants. In the far corner, from an old cotton-producing state (Dixie: “I wish I was in the land of cotton, old times there are not forgotten.”) and headquartered in the area (Atlanta) where Scarlett O’Hara roamed Tara in Margaret Mitchell’s epic Gone With the Wind, we have the Georgia-Pacific Company. Important to this case, and more than a bit ironic, is that the name of Georgia-Pacific’s flagship toilet paper is Quilted Northern. In the near corner, headquartered in the north, in Neenah, Wisconsin (just minutes away from Green Bay), and a long way from the land of cotton, we have the Kimberly-Clark Corporation. Ironically, its signature toilet paper brand is called Cottonelle.
The claim in this case is that a few of Kimberly-Clark’s brands of toilet paper are infringing on Georgia-Pacific’s trademark design. But again, this case is about toilet paper, and who really pays attention to the design on a roll of toilet paper? The parties, however, are quick to inform us that in a $4 billion dollar industry, designs are very important. Market share and significant profits are at stake. So with that, we forge on.
And on they forged, finding that the quilted pattern on Georgia-Pacific’s toilet paper represented a functional feature of TP, rather than a unique identifying feature, and was thus not eligible for trademark protection.
Under patent and trademark laws, if a design is “functional” the owner cannot trademark it, as this could stymie future invention and innovation. When considering whether a trademarked design is functional, courts will look to several factors, including (1) the existence of a utility patent that involves or describes the functionality of an item’s design element and (2) advertising of the item that touts the utilitarian advantages of the item’s design elements. The Seventh Circuit found that the “central advance” claimed in Georgia-Pacific’s utility patents — embossing a quilt-like diamond lattice filled with signature designs to improve perceived softness and bulk and reduce “nesting and ridging” (apparently these are signs of poor quality in paper products, and not verbs that I would want describing anything happening in the region where toilet paper is traditionally applied) — is the same “essential feature” claimed in the trademarks. The Court also was persuaded by the fact that Georgia-Pacific’s ads linked the quilted feature of the TP to numerous utilitarian benefits, such as softness, comfort and absorption.
The Seventh Circuit thus invalidated Georgia-Pacific’s trademark, concluding that “Georgia-Pacific, whether intentionally or not, patented their Quilted Diamond Design and claimed it to be functional. They must now live with that choice and can benefit only under the protection of a patent, not that of a trademark.” But it could not reach that conclusion without comment on how “Georgia-Pacific unrolled this suit against Kimberly-Clark,” and how de novo review (i.e., review by an appellate court without deference to the lower court’s decision) requires that the appellate panel “wipe the slate clean” even where the judge below “dutifully plied her opinion.”
(Also worthy of comment: the judges include a footnote citation to YouTube video of a 2003 Quilted Northern television advertisement. I’m not sure what this says about society or the legal system, but it cannot be good. [Ed. Note: Eh, call me when a judge cites to the “Bed Intruder Song.”])
Georgia-Pacific, of course, is not unique in losing its trademark rights to a functionality defense. The same doctrine has been used to invalidate trademarks associated with steel cable jewelry, dual-spring bases for traffic signs, and round beach towels. But none of those products lend themselves to amusing puns and juvenile humor, so it’s only now that toilet paper is involved that you get a blog post out of it.
Will Georgia-Pacific now pursue a patent infringement action? Or will they be too embarrassed by this crappy result? Hey, Georgia-Pacific, you look a little “flushed…” What’s it like going from “sue-er” to the “sewer”? Bet the Seventh Circuit rubbed you the wrong way… Ok, I’ll stop, I’ll stop. Geez, I sound like The Annoying Orange.
Well, at least my daughter’s toilet humor has become, perhaps, a bit more high brow. Thank you, Judge Evans.