Court Finds Trademark and Trade Dress Infringement; Awards Treble Damages and Attorneys' Fees

In a January 6, 2014 ruling, Judge Harold Baer, Jr. entered judgment in favor of the plaintiffs after a four-day bench trial on the plaintiffs’ trademark and trade dress infringement claim over plaintiff Audemars Piguet Holding S.A.’s well-known octagonal watch design.  The plaintiffs contended that two models of the defendants’ watches infringed their trademarks and trade dress in their “Red Oak” line of watches.  In finding in favor of the plaintiffs, Judge Baer found that “the similarities between these watches remain striking.”

In considering the trade dress claim, the Court wrote that a “plaintiff asserting product design trade dress infringement must prove distinctiveness by showing that ‘“in the minds of the public, the primary significance of [the mark] is to identify the source of the product rather than the product itself” (what is known as ‘acquired distinctiveness’ or ‘secondary meaning’).’”  Judge Baer added that to “determine whether a secondary meaning has attached, the court considers six factors:  ‘(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.’”  The Court considered each factor in turn, and found that all but one of them favored the plaintiffs.

Having found that the plaintiffs’ trade dress has secondary meaning, the Court conducted a similar analysis to determine whether there was a likelihood of confusion between the plaintiffs’ and the defendants’ watches, using the well-known eight factor Polaroid test.  Finding that four of the factors favored the plaintiffs, the Court concluded that the defendants’ “use of the allegedly infringing designs is likely to cause customer confusion.”

Court Finds Trade Dress Generic and Dismisses Infringement Claim, Stay Infringement Claim and Denies Interlocutory Appeal

In a December 11, 2013 ruling, Judge Shira A. Scheindlin granted defendant Regent Baby Products Corp.'s summary judgment motion to dismiss plaintiff Luv N' Care, Ltd.'s trade dress infringement action over infant sippy cups.  In considering the motion, Judge Scheindlin noted that a "plaintiff asserting a trademark infringement claim must show first that its trade dress or trademark is a protectable interest under the Lanham Act, and second that there is a likelihood of confusion.  If a plaintiff offers no evidence of a protectable interest, a court need not consider likelihood of confusion."

Regent did not contest likelihood of confusion, but instead argued that Luv N' Care's cups are not entitled to trade dress protection because they are generic.  In support of its argument, Regent submitted "exhaustive evidence" of numerous designs similar to Luv N' Care's cups "that have been widely available on the market for over two decades, through submission of third party catalogs and websites of online retailers."  Judge Scheindlin accepted this evidence, and ruled:

There is no genuine issue of material fact as to whether these designs are generic.  [Luv N' Care's] trade dress descriptions refer to common shapes frequently used in the sippy cup industry -- a "generally cylindrical cup with a slightly wider upper portion" and a cap with a "bulb-like base and a slightly pointed top" or a "football-helmet shaped cap" with a "ring shaped base" -- that even when configured together would simply be too broad and too general to warrant trade dress protection. . . . [T]hese general shapes and configurations are ubiquitous in the sippy cup market and do not warrant Lanham Act protection.

The Court also rejected Luv N' Care's argument that its designs had acquired secondary meaning "as irrelevant for generic trade dress.  Second Circuit law is clear that 'even a showing of secondary meaning is insufficient to protect product designs that are overbroad or generic' and that '[g]eneric trade dress in never entitled to protection.'"  The Court thus dismissed the trade dress claims.

In a subsequent February 13, 2014 ruling, Judge Scheindlin stayed the remaining design patent infringement claims so as to avoid duplicative trials of the trade dress and design patent infringement claims should the trade dress claims proceed to trial first, and the design patents later survive reexamination.  The Court also declined to permit an interlocutory appeal, finding that the plaintiff's request did "not raise a controlling question of lwa, 'a new legal question or [a legal issue] of special consequence appropriate for interlocutory review."

Court Transfers Infringement Case to Tennessee

In an August 2, 2013 ruling, Judge Alison J. Nathan transferred an action alleging patent infringement, trade dress infringement, unfair competition and dilution to the Middle District of Tennessee.  A defendant in the New York action, R&L Merchandising, LLC, had brought a declaratory judgment action of non-infringement against the plaintiff, Alex and Ani, LLC, in the Middle District of Tennessee.  Alex and Ani then started the infringement action against R&L and others in the Southern District.  Judge Nathan granted the defendants' motion to change venue under 28 U.S.C. § 1404(a).  Although noting that the plaintiff's choice of the forum is typically entitled to considerable weight, the Court stated that "that is not the case if the chosen forum has a limited connection with the locus of operative facts."  For the trade dress infringement, dilution and unfair competition claims, the Court held that "the locus of operative facts is where the infringement, dilution, and unfair competition occurred."  Since those operative facts took place nationwide, Judge Nathan found that New York's "connection to the operative facts is not unique."  For the patent infringement claim, the Court held that the locus "is generally where the patented invention was developed or where the allegedly infringing product was designed, developed, and produced," which in this case was outside New York.  Judge Nathan thus transferred the case to the Middle District of Tennessee.

Copyright Infrigement and Unfair Competition Claims Go Forward in Litigation Over "Hangman" Books

In an August 1, 2013 ruling, Judge Paul A. Crotty dismissed the trade dress infringement claim of plaintiff Michael Ward d/b/a Brainteaser Publications, and declined to dismiss the copyright and unfair competition claims against Andrews McMeel Publishing, LLC.  The plaintiff had been publishing "Scratch & Solve Hangman" books, incorporating variations on the "Hangman" word game, for nearly twenty years, including since 2005 in the U.S.  The defendant introduced its own "Hangman"-based books in 2008, and Ward sued, alleging that the defendant's books "'incorporate the entire concept, feel, and design" of the plaintiff's books.  The Court rejected parts of the plaintiff's copyright claim because the supposedly copied material lacked sufficient originality to be copyrightable, but found that the drawings of certain stick figures used in the "Hangman" game could support a copyright claim.  Judge Crotty held that "[w]hether the illustrations or total concept and overall feel of the [defendant's books] are substantially similar to those of the [plaintiff's books] presents a close factual question.  Accordingly, it will be left for a jury to determine."