Trademark infringement under the Lanham Act; 15 USC §§ 1114(1)(a) & 1125(a)(1)(A); Whether the “authorization” of an unregistered trademark defeats an infringement claim; State-law infringement & tort claims (fraud, conspiracy to commit fraud, & unjust enrichment); “Ratification” by accepting royalties; United States Patent & Trademark Office (USPTO)

[This appeal was from the WD-MI.] The court affirmed summary judgment for defendant-MillerKnoll (referred to as HMI) on plaintiffs’ federal and state trademark infringement and state-law tort claims. It held that plaintiffs failed to offer evidence of fraud on which the USPTO relied in issuing and maintaining trademarks for an item referred to as the “Bubble Lamp.” In an issue it had not previously directly addressed, it also held that authorization to use an unregistered trademark defeats an infringement claim under § 1125(a). While working for Herman Miller (now HMI), plaintiff-estate’s decedent (Nelson) designed the Bubble Lamp, a famous piece. Nelson relied on an oral agreement that HMI would pay him royalties on his designs. He later entered into a written agreement, and one of his heirs entered into an addendum. Nelson never registered any trademarks relating to the Bubble Lamps with the USPTO, but others did after his death, and they were acquired by HMI. This action concerned HMI’s use and ownership of trademarks collectively referred to the Bubble Lamp IP. The district court granted defendants summary judgment on all counts, ruling that there was no indication HMI committed “fraud in procuring the Bubble Lamp IP[.]” The court agreed. It noted plaintiffs did “not argue that either the 2006 Royalty Agreement or the 2015 Addendum is invalid, and under the terms of those Agreements, HMI is authorized to use and own the Bubble Lamp IP.” Further, one of the plaintiffs “ratified HMI’s use and ownership of the IP by accepting royalty payments from HMI under the terms of the Agreements, including after he learned that HMI was asserting ownership of the Bubble Lamp IP. Plaintiffs may not sustain infringement or tort claims based on conduct that they authorized and ratified.” The court declined to cancel HMI’s trademark registrations for the Bubble Lamp IP because plaintiffs “presented no evidence actually supporting their cancellation claims.” In addressing the authorization issue, it noted that in the context of registered trademark infringement claims under § 1114(1), it had recognized the Lanham Act prohibits the use of a trademark without the registrant’s consent. It held here that while § 1125(a), which creates a Lanham Act cause of action for infringement of unregistered trademarks, does not contain the “without consent” language, authorization to use a mark likewise “defeats an infringement claim under § 1125(a).” This authorization also defeated plaintiffs’ Michigan common law infringement claims, and their state tort claims. The court added that the district court correctly concluded ratification provided an alternative basis for summary judgment.