The One Sentence Summary: Unsuccessful trademark infringement claims asserted against the buyer of “Smile Now, Cry Later” Hot Sauce Monkey shirts supported the buyer’s claim that the seller breached the statutory implied warranty of section 2312(3) of the California Uniform Commercial Code to provide goods that were free of “rightful claims.”
What They Were Fighting About: Oales sold Hot Sauce Monkey t-shirts to Pacific Sunwear. These shirts depict on the front, a monkey drinking a bottle of hot sauce and, on the back, the same monkey in apparent pain, expelling fire. Centered underneath each of the images is a two-word caption: on the front, the phrase “Smile Now”; on the back, the phrase “Cry Later.” SNCL, the holder of a registered trademark for Smile Now, Cry Later, made trademark infringement claims against Pacific Sunwear. In the trademark litigation in Hawaii, the court denied a motion for preliminary injunction, finding there was no likelihood of confusion after which the case settled.
Pacific Sunwear then sued Olaes for breaching the statutory warranty that the Hot Sauce Monkey T-shirts were “free of the rightful claim of any third person by way of infringement or the like.” (§ 2312(3).)
The trial court granted summary judgment for Olaes, holding that the underlying claims of infringement were not “rightful claims” in light of the federal court’s ruling that there was no likelihood of confusion.
California Uniform Commercial Code section 2312 states as follows:
“(1) Subject to subdivision (2) there is in a contract for sale a warranty by the seller that
“(a) The title conveyed shall be good, and its transfer rightful; and
“(b) The goods shall be delivered free from any security interest or other lien or encumbrance of which the buyer at the time of contracting has no knowledge.
“(2) A warranty under subdivision (1) will be excluded or modified only by specific language or by circumstances which give the buyer reason to know that the person selling does not claim title in himself or that he is purporting to sell only such right or title as he or a third person may have.
“(3) Unless otherwise agreed a seller who is a merchant regularly dealing in goods of the kind warrants that the goods shall be delivered free of the rightful claim of any third person by way of infringement or the like but a buyer who furnishes specifications to the seller must hold the seller harmless against any such claim which arises out of compliance with the specifications.”
California Court of Appeal Holdings:
- The phrase “free of the rightful claim of any third person by way of infringement or the like” in California Uniform Commercial Code section 2312 should be interpreted by reference to the commentary to section 2-312 of the Uniform Commercial Code in the absence of other evidence of legislative intent as to the meaning of “rightful claim.”
- The commentary to the Uniform Commercial Code makes it clear that the term “rightful claim” as used in the statute is intended to broadly encompass any nonfrivolous claim of infringement that significantly interferes with the buyer’s use of a purchased good.
- Other states have interpreted their statutes enacting section 2-312 of the Uniform Commercial Code consistently with the commentary that a rightful claim need not be a meritorious claim.
- Public policy reasons also support interpreting section 2312 to extend to nonfrivolous claims. A merchant regularly dealing in goods of the kind has superior knowledge of potential claims and more incentive to resolve them than a buyer. Additionally, the parties can expressly contract to alter the implied warranty under section 2312.
- The existence of a reverse warranty from buyer to seller in the case of buyer-supplied specifications under section 2312(3) supports the interpretation of section 2312.
- Interpreting section 2312 to extend to nonfrivolous claims provides a clear allocation of risk that provides certainty to parties entering a commercial transaction.
- “[T]he warranty against rightful claims applies to all claims of infringement that have any significant and adverse effect on the buyer’s ability to make use of the purchased goods, excepting only frivolous claims that are completely devoid of merit.”
- Summary judgment against the plaintiff’s warranty claim was inappropriate due to triable issues of fact as to whether the underlying infringement claim was nonfrivolous.
- Triable issues of fact precluding summary judgment also existed as to whether any damages such as Pacific Sun’s litigation expenses were proximately caused by Olaes’ failure to disclose the potential trademark claims by SNCL. The factual issues include whether Pacific Sun knew of the potential claims.