Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc.
920 F.3d 704
11th Cir.2019Background
- Kroma Makeup EU (Kroma EU) was the exclusive European licensee of the federally registered KROMA trademark; By Lee Tillett, Inc. (Tillett) retained U.S. ownership and enforcement rights.
- The Kardashians and Boldface launched a “Khroma/Kardashian” cosmetics line; Boldface’s PTO application was refused due to likelihood of confusion with KROMA.
- Tillett sued Boldface in California and obtained a preliminary injunction; Kroma EU was not a party to that action and received no part of the settlement.
- Kroma EU sued the Kardashians and Boldface in Florida under the Lanham Act and common-law infringement; Tillett’s related claims were compelled to arbitration and Kroma EU asserted a separate breach-of-contract claim against Tillett.
- The district court granted summary judgment for the Kardashians, finding Kroma EU lacked authority under the license to bring a §1125(a) claim; the Eleventh Circuit affirmed, holding the license reserved enforcement rights to Tillett and gave Kroma EU only a duty to notify and an indemnity remedy.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Kroma EU, as licensee, has statutory cause of action under the Lanham Act to sue infringers | Kroma EU argued the Lanham Act grants any person likely to be damaged a cause of action and that the license did not strip it of enforcement rights | Kardashians argued the license expressly reserved ownership and enforcement to Tillett and limited Kroma EU to notifying Tillett and seeking contractual remedies | Court held the license gave Kroma EU insufficient “rights in the name” to bring a §1125(a) claim; enforcement authority was reserved to Tillett; judgment affirmed |
Key Cases Cited
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (Sup. Ct. 2014) (limits on statutory cause of action and zone-of-interest inquiry for Lanham Act claims)
- Holmes v. Securities Investor Protection Corp., 503 U.S. 258 (Sup. Ct. 1992) (principle limiting recovery to plaintiffs within statute’s intended sphere)
- Bank of America Corp. v. City of Miami, 137 S. Ct. 1296 (Sup. Ct. 2017) (distinguishing statutory cause-of-action inquiry from jurisdictional standing)
- Camp Creek Hosp. Inns, Inc. v. Sheraton Franchise Corp., 139 F.3d 1396 (11th Cir. 1998) (licensee must possess rights in the mark to sue under Lanham Act)
- Finance Investments Co. (Bermuda) v. Geberit AG, 165 F.3d 526 (7th Cir. 1998) (license terms can limit licensee’s ability to bring §43(a) claims)