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Ninth Circuit:
Judge Required Too High a Showing in Trade-Dress Suit
Judge Lee Writes That Plaintiff Need Not Show Consumers’ Association of Design With Plaintiff’s Product
By a MetNews Staff Writer
The Ninth U.S. Circuit Court of Appeals held yesterday that an action may be maintained for infringement of trade dress without showing that consumers associate the look and feel of the defendant’s product with that of the plaintiff, in particular, or any other specific company, so long as the design has acquired a secondary meaning.
Circuit Judge Kenneth K. Lee wrote for a three-judge panel in reversing a summary judgment granted by District Court Judge David O. Carter of the Central District of California in favor of defendant Johnson Enterprises, maker of a three-foot wide board game known as “Connect 4.” Johnson’s version of the game—originated in 1974 by Milton Bradley (now Hasbro)—“looks uncannily like” the version made by plaintiff P&P Imports, Lee noted.
Both companies manufacture an over-size variation, for outdoor use, of what was originally a table-top board game, with P&P first marketing its product in 2016, with Johnson following 10 months later.
Lee Explains Reversal
Lee wrote:
“The district court granted summary judgment to Johnson, ruling that P&P’s trade dress had not acquired secondary meaning because consumers do not associate the trade dress with P&P specifically. We reverse because trade dress does not have to be linked to a particular company; if consumers link the trade dress to any single (even anonymous) source/company, that is enough to constitute secondary meaning. And because a genuine issue of material fact exists about whether P&P’s trade dress acquired secondary meaning, we reverse and remand.”
In his July 28, 2020 ruling, Carter quoted the Ninth Circuit’s 2011 opinion in Fleischer Studios, Inc. v. A.V.E.L.A., Inc. as saying that a plaintiff, lacking a presumption of the validity of a mark conferred by registration, must show “that the mark has become identified with the manufacturer by acquiring a ‘secondary meaning.’ ” (Actually, the court in Fleischer, a case involving protectability of the cartoon character Bett Boop, was quoting from the Ninth Circuit’s 1980 decision in Levi Strauss & Co. v. Blue Bell, Inc.)
Overly Broad Reading
Lee said in yesterday’s decision that Carter “derived” the standard he employed—that “P&P needed to show that “consumers must both recognize P&P’s trade dress and be able to name P&P as the source”—from that single sentence in Fleischer. He declared that “Fleischer, decided by a three-judge panel, could not have overturned…earlier binding decisions” that do not require such specification, adding: “Nor did Fleischer purport to.”
The circuit judge continued:
“The district court’s reading of Fleischer also clashes with the text of the Lanham Act. Our ‘anonymous source’ test flows directly from the text of that statute, which defines ‘trademark’ as ‘any word, name, symbol, or device’ that ‘indicate[s] the source of the goods, even if that source is unknown.’…(emphasis added). Because trade dress is a subcategory of trademarks…, the same definition applies.”
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Depicted above are P&P’s “Connect 4” game, at left, and Johnson’s rival version. The Ninth U.S. Circuit Court of Appeals yesterday ordered reinstatement of P&P’s trade-dress infringement suit. |
Sufficient Showing
Evidence of copying coupled with a consumer survey showing confusion are enough for P&P to survive summary judgment, Lee said. However, he commented:
“Ultimately, a jury may find that Johnson’s copying of P&P’s Game and its marketing does not establish secondary meaning. Indeed, it may appear a bit rich that P&P accuses Johnson of copying its game when both are essentially oversized knock-offs of Connect 4. But at the summary judgment stage, we must draw all reasonable inferences in favor of P&P.”
The case is P and P Imports v. Johnson Enterprises, 21-55013.
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