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Friday, July 29, 2011

Courts - 7th Circuit issues opinion about toilet paper, with link to youtube [Updated]

In Georgia-Pacific v. Kimberly-Clerk, a 17-page, July 28th, 2011, ruling in a case out of Illinois, Judge Evans' opinion begins:

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 firstrate. 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.

Georgia-Pacific has been selling toilet paper since 1902. In the early 1990s, it rebranded its toilet paper as Quilted Northern, emphasizing a new diamond-shaped embossed design on the tissue, which gives it the appearance of a quilt. This design—recognizable for the commercials with cartoon quilters[1]—is referred to as the “Quilted Diamond Design.” * * *

[1] A video of a 2003 Quilted Northern advertisement featuring the quilters is available at: http://www.youtube.com/watch?v= ttoiVqy8C3c&feature=related (last visited June 21, 2011).

[Updated at 9:29 AM] Christopher G. Wren, Wisconsin Assistant Attorney General, calls this a "Charmin" opinion and tells the ILB that "Judge Evans is a favorite around here." More:
The opinion cites a youtube video (footnote 1). A quick search of all federal and State cases on Westlaw turned up only 36 cases (not counting this one) citing to specific videos (search term: www.youtube.com/watch), with 28 of the citations occurring in federal-court opinions, including one in the Supreme Court. Three opinions from the 7th Circuit contained citations to specific videos - in a per curiam order by a panel that included Judge Evans (who wrote today's opinion, too), and in two opinions written by Judge Evans. To those of us who practice in the 7th Circuit, this pattern comes as no surprise.

The per curiam order itself might interest anyone looking for an example of judicial unhappiness with a lawyer's advocacy: Thorogood v. Sears, Roebuck & Co., 627 F.3d 289 (7th Cir. 2010).

Posted by Marcia Oddi on July 29, 2011 08:16 AM
Posted to Ind. (7th Cir.) Decisions