Court grants North Face’s motion to dismiss the case concerning the “Fluid” logo by artist Futura
A California federal judge granted North Face and its owner VF Corp the April 26 motion to dismiss the trademark infringement lawsuit that Leonard McGurr – aka Futura – brought against them earlier this year, alleging that North Face ” inexplicably began to use a copy of “his famous ‘atom’ as the logo of a new line of clothing and textile technology in 2019” without [his] consent. ”McGurr – who filed a lawsuit in the U.S. District Court for the Central District of California in January – claimed that he“ has become known for a signature element that appears over and over again in his work: a peculiar stylized representation of an atom ”, which he has used repeatedly over the past fifty years“ as a traditional logo, to identify himself as the source of the consumer products he offers, including clothing ”.
In response to the lawsuit, VF and co. disputed the validity of McGurr’s atomic mark, claiming that the “spherical atomic symbol” is not a valid mark because “(1) it is aesthetically functional; (2) it is merely ornamental because of its size, location and dominance over the goods on which it is placed; (3) it does not identify a “secondary source”; and (4) it is purely a work of art ”and, therefore,“ does not function as a source identifier ”, which is the main function of a mark. Beyond that, the defendants argued that this spring, the McGurr case should be dismissed out of court because the artist “does not use his drawing consistently,” and instead the symbol of the atom is “not a singular drawing but the representation of a concept with an unlimited number of iterations.
As Justice Stanley Blumenfeld noted in his June 1 ruling, McGurr states in his complaint that he “was one of the first to adopt a” fluid trademark “- that is, with different iterations that feature enough family resemblance that the target audience can recognize it, in all its variations. The problem with this, the court said, is that McGurr “doesn’t cite any legal authority endorsing a fluid brand theory,” and at the same time, “this Court [is not] regardless of any judicial or USPTO trademark protection finding based on a collection of similar but different designs.
While McGurr is correct in his assertion that “there are no formal limitations on what can function as a trademark,” Justice Blumenfeld noting that “things such as colors, flavors and scents can be of trademarks if they are not functional and serve as a source identifier, ”he states that McGurr, nevertheless,“ cannot take refuge in this general principle ”in order to protect a“ style ”.
According to the court, McGurr “does not claim to have a single, distinctive identifier that serves as a trademark,” and instead, claims “trademark protection to control the commercial use of a spherical atomic symbol,” an assertion which Judge Blumenfeld said “is extraordinary in its seemingly unlimited application – unlimited because the supposedly protected symbol does not need to be accompanied by a word, name, product or any other identifier of source for alleged trademark infringement, and unlimited because the design of the spherical atomic symbol is ‘fluid.’ ”
Rejecting McGurr’s attempt to rely on trademark protection in relation to the “spherical atomic symbol,” Justice Blumenfeld held that “[b]Asic geometric shapes, base letters and unique colors cannot be protected because they are inherently distinctive. Citing a “useful point of contrast”, the judge noted the Louis Vuitton Malletier c. Dooney & Burke, Inc. case, in which the United States Court of Appeals for the Second Circuit found that Louis Vuitton owned a trademark in the “Multicolore” pattern introduced in 2002 in collaboration with artist Takashi Murakami, which was a colorful play on ” the famous [brown and gold] Monogram Toile, with LV initials intertwined with three motifs: a curved diamond with a four-pointed star, its negative and a circle with a four-leaf flower.
In its 2006 decision, the Second Circuit concluded that “Louis Vuitton’s Multicolore brand, made up of stylized shapes and letters – the traditional Toile brand combined with the 33 Murakami colors – is original in the handbag market and inherently distinctive. “.
Ultimately, McGurr’s “New Fluid Trademark Theory, if permitted as proposed here, would give new meaning to federal trademark law with far-reaching consequences,” according to Blumenfeld J., who allowed the petition. of the defendants in dismissal, but also gave McGurr the option of amending his factum “to specify a distinguishing mark, consisting of a symbol next to his commercially famous name”. McGur’s lawyer has until June 14 to file an amended complaint.
The case is Leonard McGurr v. The North Face Apparel, VF Corp., et al., 2: 21-cv-00269 (CD Cal.)