Metropolitan News-Enterprise


Friday, April 12, 2019


Page 3


Ninth Circuit:

Manufacturer at Liberty to Mimic Ads of Competitor That Are ‘Non-Distinctive’


By a MetNews Staff Writer


Plaintiff’s ad

Defendant’s ad


A manufacturer of dental crowns for children that produced three ads for its product mimicking those of a competitor—one of which included the same shot of a little girl at the beach, plucked from the website—cannot be liable for trade dress infringement where the original ads lacked uniqueness, the Ninth U.S. Court of Appeals has held.

“[N]one of the trade dress at issue is inherently distinctive,” a three-judge panel’s memorandum opinion, filed Wednesday, declares.

“Inherent distinctiveness” is necessary to establish liability for trade dress infringement under the Lanham Act unless the plaintiff can show that the dress—the product’s image and overall impression—over time, has acquired distinctiveness. But, the opinion notes, the plaintiff “does not argue on appeal that its claimed trade dress has secondary meaning.”

‘Look and Feel’

The opinion affirms a partial grant of summary judgment by District Judge Kimberly J. Mueller of the Eastern District of California in favor of defendant Mayclin Dental Studio, Inc., a Minnesota corporation. It was sued by EZ Pedo, Inc., a California company, which claims that its rival appropriated the “look and feel” of its ads.

“The Beach Girl trade dress consists of information about EZ Pedo, descriptions and illustrations of its product (pediatric zirconia crowns) and a picture of that product’s ultimate user (a child),” the opinion says.

That, it proclaims, does not qualify for protection.

District Judge’s View

Mueller had observed, with respect to the “Beach Girl”:

“[T]he court and competitors remain in the dark as to what EZ–Pedo purports to own. Are competitors never to advertise using the same third-party stock photograph? Can they use the same photograph, but pair it with different text, logo and company information?”

Mueller also found that there is no protection for an EZ Pedo ad that pictures mechanical gears or one depicting a computer aided drawing (“CAD”) of a tooth, colored blue.

Agreeing, the Ninth Circuit’s opinion says that the “Gears trade dress is merely a commonplace image combined with a two-word phrase” and that the “Blue CAD trade dress adds nothing more than a particular color, which the Supreme Court has held cannot alone be inherently distinctive.”

Oral Argument

Addressing the blue tooth image, Paul J. Fraidenburgh of the Orange County office of Buchhalter, representing EZ Pedo, told the panel that the depiction is “sort of unique” because the tooth is of a “dark blue color which is not the color of an actual product,” noting that “the product is white, like a tooth.”

He said the defendant utilized such an image to market a “very, very niche product” which was “the exact same thing” that the plaintiff was selling.

Fraidenburgh stressed that what was at hand was a “look and feel case” and that, under precedent, it was necessary to examine the overall effect of the images.

Issue Not Examined

The panel deciding the case—comprised of Ninth Circuit Judges M. Margaret McKeown and A. Wallace Tashima, joined by Sixth Circuit Judge Eugene E. Siler, sitting by designation—did not address a major contention by Mayclin. As expressed at oral argument by Minneapolis attorney Timothy Matson:

“Trade dress does not encompass advertising—never has.”

Rather, he said, trade dress relates to labels, containers, and the like.

Pressed by Tashima as to whether “advertising can never” constitute trade dress, he acknowledged that such a proposition “might be a bit of a stretch,” pointing to a case in which cigarette advertising featuring the “Marlborough Man” was held to be protected. But that case, he noted, entailed a secondary meaning, acquired over a 20-year period.

A fourth copycat ad by Mayclin was not addressed by the motion for partial summary judgment and remains to be dealt with by the District Court. The cause of action for a copyright violation involves a photograph of a girl in lavender dress which was not a stock photo, but was one taken by EZ Pedo.

Fraidenburgh said at oral argument that Mayclin took, and used in advertising, a “very, very similar photograph.”

The case is EZ Pedo, Inc. v. Mayclin Dental Studio, Inc., 18-15806.


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