Morphe, a well-known makeup company, is suing Becca in response to threats Morphe’s new eyeshadow palette’s packaging constitutes trade dress infringement, false designation of origin, and palming off under the Lanham Act. 15 U.S.C. § 1051. Becca also alleges that Morphe has tortiously interfered with Becca’s contract with Jaclyn Hill, a makeup artist that Morphe now works with. The palette in question is also a project with Jaclyn Hill, in which she teamed up with Morphe to create a line of eyeshadow palettes. The first palette was very popular and called “the Jaclyn Hill Palette.” Morphe and Jaclyn Hill created a second set of palettes called the “Vault” collection. The announcement generated lots of publicity for Morphe and on Jaclyn Hill’s Instagram, YouTube, and Twitter pages.
Morphe’s Vault collection’s packaging design features a white box with a silver background behind the logo and a confetti look with colors and shapes expanding from the center. The logo features Morphe’s name and Hill’s signature. More than six weeks after the announcement, Becca sent Morphe a cease and desist letter claiming common law trademark rights to the design. Becca mentioned their previous contract with Jaclyn Hill and stated that their palette with Hill had extensive use giving them common law trademark rights. However, Becca provided no federal registration for the packaging and allegedly had not sold, marketed or used the packaging in the U.S. for the last two years. Becca allegedly is also unable to resume use of this mark due to contractual obligations.
In comparing the two packaging designs, Morphe argues that the products differ in color, font, layout, and use of house marks. Additionally, Morphe argues that many makeup companies use similar packaging for eyeshadow palettes and co-exist without marketplace confusion. In Wal-Mart Sores, the Supreme Court held that a product’s design cannot be inherently distinctive and secondary meaning in the trade dress was necessary. Wal-Mart Sores v. Samara Bros., 529 U.S. 205, 211 (2000). But a product’s packaging may be inherently distinctive if it falls on the protectable side of the trademark spectrum. Id. Here, Becca would have to prove that its packaging is fanciful and therefore distinctive to establish trade dress rights. Since Becca does not have a federal trademark registration, the company would also have to prove that they were the first business to use the mark, or in this case package design, in commerce and that such use was exclusive. Morphe states that it was also unaware of any contract between Becca and Hill, and therefore could not have intentionally interfered with said contract.
Declaratory judgment may be sought by a threatened infringer asking the court to resolve a legal dispute between the parties. Morphe’s asks the court to declare that Becca doesn’t have any protectable rights and/or Morphe’s Vault palette does not infringe any of Becca’s rights. Pursuant to Section 35 of the Lanham Act, Morphe requests the court also grant attorneys’ fees and all other law suit expenses. 17 U.S.C. § 1117.
The case is Morphe, LLC v. Becca, Inc., Case 2:18-cv-06667 (C.D. Cal. 2018).