Lincoln Square Legal Services, Inc., the nonprofit law firm running many of Fordham Law’s clinics, scored a major court victory this spring for a Long Island bath products manufacturer embroiled in a trademark dispute over her popular soap line designed after the periodic table of elements.
Students from the Samuelson-Glushko Intellectual Property and Information Law Clinic and the Federal Litigation Clinic teamed up throughout 2016 to write motion papers and conduct oral arguments, advocating for the ability of the manufacturer, Just Bubbly, to produce its “It’s Elementary Periodic Table Soap” line. This March, the United States District Court for the Eastern District of New York dismissed the suit against Just Bubbly with prejudice, ruling that its imprints of the periodic table elements on soap products did not violate trademark law.
“If this product were pulled, I would have had to close my company,” said Just Bubbly owner Mariann Smith, who has sold handmade soap products since 1999 and periodic table soap products since 2014. “Literally and figuratively, the team from Fordham saved my company. I’m still in business because of the work they did.”
Getting Their Hands Dirty
Smith approached IP clinic director Ron Lazebnik around the 2015 Christmas break, months after being served with a second lawsuit involving her periodic table soap. A California judge dismissed the first suit on jurisdictional grounds.
Based on their meeting, Lazebnik believed that Smith’s case provided potential for a valuable litigation experience for students not only in his clinic but also in Professor Michael W. Martin’s Federal Litigation Clinic. Once students dug into the case, an opportunity to rid Smith of the suit quickly emerged, Lazebnik said. A team featuring clinical students Justin Giles ‘16, Barbara Leal ‘17, Christina Menga ‘16, Aditya Ramanathan ‘16, and Felicia A. Siegel ‘16 assembled soon after Lazebnik’s meeting with Smith.
While poring over statutes and case law, the students discovered the trademark law doctrine of aesthetic functionality, the linchpin of their argument for a motion to dismiss. In trademark law, utilitarian features of a product or package are not protectable, because all competitors should be able to provide that functionality to consumers. Aesthetic functionality says that a product’s or packaging’s aesthetically pleasing features are also not protectable under trademark law when they are incorporated to improve the commercial success of a product rather than help consumers identify the product’s manufacturer.
The suit against Smith was brought by California-based Bubble Genius LLC, whose “In Your Element” soap line also incorporates the periodic table. According to Giles, consumers are buying soap that looks like the periodic table not because it’s made by a specific manufacturer but because the product is “cool.”
“American trademark law is not meant to give one side a monopoly on something if it’s cool,” Giles said, explaining that the plaintiff sought to prevent other periodic table soap products for this reason, among others. “It’s meant to stop someone from saying their product is Coke, if it’s not Coke.”
The matter came down to whether Bubble Genius LLC’s design contained protectable content. The students argued successfully that it did not because the periodic table exists in the public domain.
“Once we broke down the law, it became very apparent the plaintiff’s case didn’t exist,” Siegel added. From that realization, the students’ focus turned to effectively translating and simplifying aspects of trademark law for the court in an easily understandable fashion that could lead to an early resolution, Siegel added.
Giles and Siegel credited Lazebnik and Martin for providing them guidance as needed but otherwise allowing the students an opportunity to develop their own case.
Whereas students in the spring semester cultivated an argument from case law and then made it accessible for a judge, the students who inherited the case in the fall semester faced a different challenge. Namely, they had to internalize all the cases cited by their predecessors—and their opponents—during a grueling three-week preparation designed to address every possible question a judge might raise.
“The previous interns created an unbelievable brief,” noted Tziporah Pill ’17, who worked on the case during the fall 2016 semester. “So once we had the cases under our belt, it was easy to take their brief and turn it into an argument because they did such a great job.”
Pill described the aesthetic functionality argument—which the students and their instructors agreed was their strongest, given their limited time—as a “slam dunk situation.”
Still, there were tense moments in the week or so leading up to the Nov. 1 oral argument, when Stephanie D’Angelo ’17 came down with flu-like symptoms and had to visit an urgent care facility for treatment. On the scheduled day for oral arguments, D’Angelo chose to speak before the court rather than have a teammate fill in, confident that her 12-hour days prepping for the moment would win out over any residual sickness she felt.
“Once we began comparing the soap’s aesthetic functionality with relevant case law, you could see in the judge’s eyes that our argument was resonating,” observed D’Angelo, who worked on the oral argument with Pill, Penina Green ‘17 and Nick Tantone ’17. When the team left the argument, they felt confident the judge would dismiss the case with prejudice, Pill added, but continued researching the next steps in case the judge did not dismiss with prejudice.
In Their Element
Four months later, Smith received the news she had desired, in the form of the judge’s ruling. She exhaled knowing that no appeal would be forthcoming, and that she could focus on continuing her line that to date features 26 elements. She described Fordham’s advocacy efforts—from keeping her abreast of the case and explaining it to her in layman’s terms to their court arguments—as “extraordinary.”
“The Fordham Law team was so thorough in both their research and support,” Smith said. “Nothing was left unaddressed. As a small business owner, that made me feel very secure.”
Giles, who now works for Quinn Emanuel in New York, said that the day Lazebnik sent him the opinion to dismiss the case was “one of the happiest, most personally fulfilling professional moments I’ve had.”
“It’s great that the client was able to keep her business going,” Giles said, adding it pleased him to know all the clinic’s work wasn’t “just an academic exercise.”
Members of the fall semester clinical team shared Giles’ enthusiasm for Smith and the clinical experience.
“How many law students graduating as 3Ls can say they were part of a winning group before the Eastern District?” D’Angelo asked rhetorically. “It’s not many. I am very grateful to have had this experience.”