The United States Court of Appeals for the Seventh Circuit has issued a decision in Gensler v. Strabala, overturning a district court’s ruling dismissing a complaint for trademark infringement under §43(a) of the Lanham Act.
Strabala, a former Design Director and architect for the architectural firm Gensler & Associates, formed his own design firm, 2Define Architecture. The 2Define Architecture website stated that Strabala had designed five projects for which Gensler was the architectural firm of record. Gensler filed suit, contending that this was “reverse passing off” and violated §43(a) of the Lanham Act. However, the district court dismissed the complaint, ruling that Strabala neither claimed that he built or sold those structures, therefore he could not have violated the statute.
Genseler appealed the dismissal to the Seventh Circuit Court of Appeals. According to the Seventh Circuit, there are three ways in which an architect’s assertion that he designed the building could be false: “(1) the architect did not have anything to do with the project, never working on the design; (2) The architect worked on the project but overstated his role; (3) The architect worked on the project and contributed some or even all important features, but the project was so complex that no one person bore full responsibility.” In this case, the Seventh Circuit determined that although Gensler’s complaint did not assert one of these three situations, the complaint could be interpreted to mean that big projects, such as those at issue in this case, require big teams and that Gensler insists on institutional rather than personal credit. Furthermore, the court reasoned that as both firms specialize in large projects with sophisticated clients, and such clients would not be misled by such statements, the purpose of the complaint is to conceal that an architect has left the firm.
Ultimately the court believed that Gensler's allegations were not sufficient to warrant dismissal under Rule 12(b)(6), and the district court's dismissal was not proper before the parties had joined issue on vital topics.
The full opinion is available here.