Kroma Makeup Eu v. Boldface Licensing & Branding — 920 F.3d 704 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019

United States Court of Appeals for the Eleventh Circuit · 2019-04-01

15usc1125: author: Astra2 · not independently reviewed

Original case on neochart.com

Case and law context

15 U.S.C. § 1125(a)

Role: applied; posture: Rule 54(b) appeal from summary judgment for Kardashian defendants; statutory right of action determined by license terms, not Article III jurisdiction.; result: claimant-lost; claim:

Uncertainty

None recorded

Misfit

Single dispositive element: the court did not decide confusion, infringement, or claim preclusion. Contract rights, statutory zone of interests, and Article III are distinct despite the lower court standing terminology.

B · Case × element grid

Top-level elements follow claim order in panels of up to six elements. Case rows repeat across panels. Every recorded block retains its holding and basis; multiple blocks are not merged into a case-level verdict. ✓ satisfied · ✗ not satisfied · ○ not reached · · not addressed. Muted blocks are not counted. Sub-element evidence remains on case and element pages.

Elements 1–6 of 17

15 U.S.C. § 1125(a)
CaseStatutory person including state entities and officialsJudicial domestic infringing-use limitUse in commerce connected with goods or servicesEnforceable source-identifying mark or trade dressLikely consumer confusion about source or sponsorshipEntitlement to sue and protected commercial interest
Kroma Makeup Eu v. Boldface Licensing & Branding — 920 F.3d 704 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019 (15usc1125: author: Astra2 · not independently reviewed)· not addressed· not addressed· not addressed· not addressed· not addressed

Elements 7–12 of 17

15 U.S.C. § 1125(a)
CaseGood-faith descriptive use other than as a markState sovereign immunity unless a valid route permits suitMisleading affiliation approval or sponsorshipClaimant proves nonfunctionalityCommercial advertising or promotionFalse or misleading factual representation
Kroma Makeup Eu v. Boldface Licensing & Branding — 920 F.3d 704 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019 (15usc1125: author: Astra2 · not independently reviewed)· not addressed· not addressed· not addressed· not addressed· not addressed· not addressed

Elements 13–17 of 17

15 U.S.C. § 1125(a)
CaseJudicial actual-deception or tendency-to-deceive requirementJudicial materiality requirement for purchasing decisionsJudicial zone-of-interests limit to commercial injuryJudicial proximate-causation requirementRemedy-specific proof
Kroma Makeup Eu v. Boldface Licensing & Branding — 920 F.3d 704 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019 (15usc1125: author: Astra2 · not independently reviewed)· not addressed· not addressed· not addressed· not addressed· not addressed

Instances and excluded annotation blocks

Annotation blocks, including explicitly excluded context
CaseElementHolding and scopePatternExact source quotations
Kroma Makeup Eu v. Boldface Licensing & Branding — 920 F.3d 704 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019 — not · law (15usc1125: author: Astra2 · not independently reviewed)Entitlement to sue and protected commercial interestnot
Counted merits instance
applied / merits

basis: law; party: Kroma EU against Kardashian defendants; subject: party=Kroma EU against Kardashian defendants

Pure contract construction resolves statutory entitlement on summary judgment. Economic injury and exclusive distribution do not override this reservation; no universal registered-owner restriction or jurisdictional standing failure is inferred.
licensing/enforcement-reserved-to-licensor
In October 2012, Tillett granted an exclusive license to Kroma EU to import, sell, and distribute KROMA products in Europe, and to use the KROMA mark in furtherance of its business.
Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [623:804] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.

Evidence kind: fact; polarity: supports; absent flag: 0; quoted-rule flag: 0 (1 = tagged; 0 = not tagged)

Tillett retains the KROMA trademark as its "exclusive and inalienable property" and "reserves the right to assign/transfer it to any individual person or legal entity."
Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [12083:12251] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.

Evidence kind: fact; polarity: cuts-against; absent flag: 0; quoted-rule flag: 0 (1 = tagged; 0 = not tagged)

But importantly, Section 4.3.2 only vested Kroma EU with the obligation to "inform [Tillett] of any illegal use of the trademark," prompting Tillett to file suit against the infringer-at which point Tillett would be required to compensate Kroma for its losses resulting from the infringement.
Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [13782:14074] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.

Evidence kind: fact; polarity: cuts-against; absent flag: 0; quoted-rule flag: 0 (1 = tagged; 0 = not tagged)

We adopt the position taken by the district courts in this circuit-that a licensee's right to sue to protect the mark "largely depends on the rights granted to the licensee in the licensing agreement."
Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [7190:7391] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.

Evidence kind: rule; polarity: not recorded; absent flag: 0; quoted-rule flag: 0 (1 = tagged; 0 = not tagged)

Therefore, the licensing agreement does not give Kroma EU sufficient "rights in the name" to sue under the Lanham Act.
Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [16861:16979] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.

Evidence kind: held; polarity: not recorded; absent flag: 0; quoted-rule flag: 0 (1 = tagged; 0 = not tagged)

Court interpretations recorded from this case

interpretation

Here, applying the licensing agreement to this inquiry is a straightforward exercise. The plain language of the agreement demonstrates the parties' intent for Tillett to retain all ownership and enforcement rights. Kroma EU-while it may have other rights under the agreement-does not possess the ability to assert its rights in the mark in this proceeding.

Kroma Makeup Eu v. Boldface Licensing & Branding — 920 F.3d 704 (2019) · United States Court of Appeals for the Eleventh Circuit · 2019 (15usc1125: author: Astra2 · not independently reviewed)

Here, applying the licensing agreement to this inquiry is a straightforward exercise. The plain language of the agreement demonstrates the parties' intent for Tillett to retain all ownership and enforcement rights. Kroma EU-while it may have other rights under the agreement-does not possess the ability to assert its rights in the mark in this proceeding.
Source: docroot/ir/caselaw/f3d_920.jsonl#/f3d/920/0704-01; Unicode character offsets [11514:11870] (end exclusive); SHA-256 6e77869881244fd295fa194aa518afd7917c84bbbeb6287a54038cc81c2dab35.

Kroma EU illustrates enforcement rights reserved to the licensor; mere economic interest is insufficient in that contractual setting. Article III injury and statutory cause-of-action entitlement are distinct. Lexmark’s specific commercial-injury test is set out separately for advertising.