Seattle Trademark Lawyer

Trade dress infringement? Plaintiff’s and defendants’ jewelry designs

In Cosmos Jewelry, Ltd. v. Po Sun Hon Co., the Ninth Circuit considered a rare trade dress trial involving competing jewelry designs. In colorful language, the court affirmed the district court’s findings that plaintiff’s trade dress was distinctive and non-functional and, therefore, defendant was liable for infringement. The decision came down March 24.

“Unlike many copyright and trade dress cases, this one went to trial. We therefore review the findings of fact only to determine whether they are clearly erroneous, and do not review de novo as we would for summary judgment. In the hyperbolic language we first used in a trademark case,  ‘[t]o be clearly erroneous, a decision must … strike us as wrong with the force of a five-week old, unrefrigerated dead fish.”

“Regarding trade dress, Hon appeals the adverse determination, and we again affirm, again because the case went to trial and our standard of review limits us to considering whether the findings were clearly erroneous. Though it is a stretch to compare identifying characteristics of jewelry to the green cover on an ironing board, Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159 (1995), the jewelry characteristics are not like the springs on a traffic sign, TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001). The district court found Cosmos’s trade dress, ‘plumeria flowers in yellow gold in a specific size and shape with a sandblasted matte finish on the petals and high-polished shiny edges,’ to be distinctive. Our precedents allow for the findings the district court made.

“The district court’s finding of non-functionality is not clearly erroneous. Cosmos’s distinctive use of common techniques, such as shiny edges and sandblasting, were not functional in the sense of providing a means for hanging the earrings securely on the ear or attaching other jewelry, which might be analogous to the springs in TrafFix, but merely for creating the distinctive aesthetic appearance of [plaintiff’s Denny] Wong jewelry. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 1072 (9th Cir. 2006), does not help Hon, because Hon can avoid ‘a significant non-reputation-related competitive disadvantage’ by making and selling plumeria jewelry that does not look like Cosmos’s. There is evidence in the record supporting the district court’s finding that the Cosmos flowers were identified with the source, Wong’s design, and not merely with plumeria flowers, so had acquired secondary meaning. Hon does not challenge the finding of likelihood of confusion.”

In affirming the district court’s finding, the court upheld a $2.3 million judgment and award of attorney’s fees.

Press coverage of the case here and here.

The case cite is Cosmos Jewelry, Ltd. v. Po Sun Hon Co., Nos. 06-56338, 06-56240, 07-55333, 2009 WL 766517 (9th Cir.) (March 24, 2009) (unpublished).

In Campagnolo S.R.L. v. Full Speed Ahead, Inc., well-known bicycle component manufacturer Campagnolo claims that Woodinville, Wash.-based Full Speed Ahead has made misrepresentations about the stiffness-to-weight ratios of the parties’ bicycle cranksets.

After the case was transferred to the Western District from the Eastern District of Pennsylvania, Campagnolo moved for partial summary judgment on its false advertising claim, arguing that Full Speed Ahead published false comparative advertisements listing incorrect weights for Campagnolo’s products in comparison with Full Speed Ahead’s products.

Instead of responding to the motion, Full Speed Ahead sought a continuance under Rule 56(f), which provides such relief when a motion for summary judgment is found to be premature. In response, Campagnolo argued that Full speed Ahead has all the information it needs to defend Campagnolo’s motion in its possession because Full Speed Ahead was the only party that published the allegedly false information.

Western District Judge Ricardo Martinez concluded otherwise. The court found: “Campagnolo’s partial summary judgment motion rests almost entirely upon the independent testing performed by Northwest Laboratories of Seattle, Inc. Campagnolo claims that these tests unequivocally reveal that FSA’s cranksets weigh more than what FSA advertised and posted on its website. But as FSA correctly points out, FSA has not had the opportunity to propound any discovery upon Northwest Labs. There is no way for FSA to know with any certainty whether Northwest Labs weighed the same version of the same product that was weighed by Campagnolo before it published the allegedly false information in magazines and on its website. …

“In addition, FSA has had no opportunity to explore whether these allegedly false statements are material. As mentioned above, a plaintiff must show that the deceptive practice influenced the purchasing decision. Furthermore, Campagnolo acknowledges that with respect to FSA’s website, the information online only reveals the weight of FSA’s crankset. While it is certainly true that ‘a product’s weight is the product’s weight’ as Campagnolo contends, the weight is only one factor of a crankset’s stiffness-to-weight ratio. Indeed, Campagnolo fails to produce any customer surveys regarding whether the weight of a bicycle when viewed in isolation would affect a customer’s purchasing decision. As a result, adjudicating a summary judgment motion without the benefit of such information would ignore the well-established test of whether a plaintiff has a valid § 43(a) Lanham Act claim.

“Lastly, the Court finds it worthwhile to address FSA’s affirmative defense of unclean hands. FSA claims that Campagnolo frequently reports weights of components that differ from the actual production line models. Campagnolo contends that this defense is a ploy to distract the Court and implies that it was frivolously brought. However, Campagnolo cannot dispute that ‘[u]nclean hands is a defense to a Lanham Act infringement suit.’ The Ninth Circuit has recognized that ‘it is essential that the plaintiff should not in his trade mark, or in his advertisements and business, be himself guilty of any false or misleading representation.’ Thus, FSA is entitled to explore this affirmative defense that would bar Campagnolo’s right to relief. Should this defense prove to be frivolous as Campagnolo contends, Campagnolo certainly has the ability to pursue the remedial avenues provided by the Federal Rules.”

Based on these findings, the court granted Full Speed Ahead’s motion in part, striking Campagnolo’s motion for summary judgment without prejudice to refile at a later date.

The case cite is Campagnolo S.R.L. v. Full Speed Ahead, Inc., No. 08-1372, 2009 WL 779221 (W.D. Wash.) (March 23, 2009).

On March 24, the Ninth Circuit affirmed the District of Nevada’s award of attorney’s fees to the plaintiff trademark owner in Invision Production & Media Services, Inc. v. Glen J. Lerner Legal Services.

This is the second time the court has considered the issue. It previously affirmed the propriety of a fees award under the Copyright Act but vacated and remanded the award of fees under the Lanham Act for further explication by the district court. The Ninth Circuit also previously remanded the determination of the amount of fees awarded under the Copyright Act, because the district court had not separately determined the amount of fees attributable to the Copyright and Lanham Act issues.

On remand, the district court stated several bases for its conclusion that the case was exceptional under the Lanham Act. The court also determined that the fees should be allocated 60 percent to to trademark issues and 40 percent to copyright issues. The district court first awarded $104,375 in fees and, subsequently, another $20,000 for fees not previously billed.

The Ninth Circuit found: “On remand, the district court independently found that Invision’s infringement was ‘willful’ in the sense that it was a ‘deliberate and bad faith attempt to trick and deceive consumers, and to trade upon the substantial goodwill Lerner had established in the ONE CALL mark.’ The record evidence, particularly the evidence establishing that Invision itself arranged for an out-of-state attorney to run advertisements using the ONE CALL mark, supports the district court’s conclusion.

“Moreover, the jury found, based on testimony at trial, that Invision’s use of the ONE CALL mark was likely to cause confusion among Nevada’s consumers; the district court, based in part on evidence of actual confusion, found consumer confusion the ‘certain and foreseeable’ result of Invision’s actions. Consumer confusion alone does not make a trademark case ‘exceptional,’ as actions taken consistent with a reasonable claim of ownership in the mark might also cause consumer confusion. But Invision’s ownership claims in the ONE CALL mark are extremely weak. Ownership of trademarks typically inhere in the use of the mark in the sale of goods and services. The record is undisputed that Invision never used the ONE CALL mark itself to promote its own legal services in Nevada. Moreover, as the district court found, Invision’s purported assignment of the registration from a Florida law firm was insufficient to establish ownership rights. Trademarks may only be assigned ‘with the goodwill of the business in which the trademark is used,’ and Invision never claimed to carry forward an association with the Florida law firm.”

The case cite is Invision Production & Media Services, Inc. v. Glen J. Lerner Legal Services, No. 07-15778, 2009 WL 766502 (9th Cir.) (unpublished).

Promotional graphic from defendants’ Web site

Who can forget the Moscow Cats Theatre case? Plaintiffs Yuri and Dimitri Kuklachev sued their former producer, several performance venues (including the Seattle Repertory Theatre), two ticket outlets, and a number of individuals for their alleged involvement in promoting a competing cat show under plaintiffs’ “Moscow Cats Theatre” name.

In December, the court granted plaintiffs’ motion for preliminary injunction against producer Mark Gelfman, Gelfman International Enterprises, Inc., and Yanis Gelfman.

In January, plaintiffs voluntarily dismissed the Seattle Repertory Theatre, which alleged staged some of the “copycat” performances.

Today, Judge Charles Sifton granted a motion for judgment on the pleadings brought by three individual defendants on the ground they were not responsible for the trademark, unfair competition, and tort injuries that plaintiffs claimed.

The court found: “The complaint states that Yanis Gelfman was manager of the allegedly infringing show, that [Yuri] Pototski was a director, and that [Dmitry] Krassotkine was the press secretary. Other than these allegations as to defendants’ role in the allegedly infringing show, there are no individual allegations against Pototski, Krassotkine and Yanis Gelfman in the complaint, nor can any further allegations against these defendants be inferred. Defendants argue that these allegations are insufficient to state a claim against them.

“Plaintiffs confine their arguments in opposition to the claims of false advertising, trademark infringement, and copyright infringement. Plaintiffs additionally assert that defendants are liable as employees of Mark Gelfman and Gelfman Inc., who they allege were primarily responsible for the infringement. Plaintiffs make no allegation that Pototski, Krassotkine, and Yanis Gelfman knew that Gelfman, Inc. and Mark Gelfman were not authorized to use the tricks, ‘Moscow Cats Theatre’ mark, and photographs belonging to plaintiffs. Nor have they alleged that these defendants were active, conscious participants in any allegedly infringing activities. As such, plaintiffs have failed to make out a claim against these defendants.”

The case cite is Kuklachev v. Gelfman, No. 08-2214 (E.D.N.Y. March 25, 2009).

Partner, professor, and philosopher Bob Cumbow explores trademark “use” in a forthcoming article in ABA’s Landslide magazine.

In “Use Is the New Protectability, Dawn Donuts Are Still Hot This Season, and Other Trademark Issues,” Bob revisits Dawn Donut fifty years after the Second Circuit decided the case.

“The ‘Dawn Donut rule,’ arising from Dawn Donut Company, Inc. v. Hart’s Food Stores, Inc. [267 F.3d 358 (2nd Cir. 1959)], holds essentially that even a federally registered senior user vested with nationwide rights may be denied injunctive relief against a remote junior user if the plaintiff’s use of its mark has not made it sufficiently known in or near the defendant’s geographic territory so as to create a likelihood of confusion. As a result, in ‘Dawn Donut situations,’ trademark plaintiffs’ attorneys have tended to send warning letters rather than seek injunctions, and defendants’ attorneys have tended to tell trademark owners to take a hike and call back when they are ready to use the mark in the local area — which often is never.”

Increased travel, Internet advertising, and the ubiquity of television beg the question of whether the Dawn Donut rule is (or should be) dead.

Examining recent cases deciding issues of trademark use, Bob concludes that courts are in flux.

In his view, “[a] brief examination of the recent jurisprudence reveals that, with respect to some types of commerce, the Dawn Donut rule is still applied as an absolute, while in other circumstances some courts regard it as only one of several factors to be considered in a balancing test and still other courts have soundly questioned and criticized the viability of the rule altogether.”

Until the Supreme Court lays down a new rule, Bob’s piece helps sort out courts’ evolving (and inconsistent) treatment of trademark use.