783 F.3d 527 (5th Cir. 2015), 13-30918, Nola Spice Designs, L.L.C. v. Haydel Enters., Inc.

• Citation: 783 F.3d 527
• Opinion Judge: STEPHEN A. HIGGINSON, Circuit Judge:
• Party Name: NOLA SPICE DESIGNS, L.L.C., Plaintiff - Appellee v. HAYDEL ENTERPRISES, INCORPORATED, doing business as Haydel's Bakery, Defendant - Third Party Plaintiff - Appellant RAQUEL DUARTE, Third Party Defendant - Appellee
• Attorney: For Nola Spice Designs, L.L.C., Plaintiff - Appellee: Jason P. Foote, Esq., Law Offices of Jason P. Foote, L.L.C., Metairie, LA. For Haydel Enterprises, Incorporated, doing business as: Haydel's Bakery, Defendant-Third Party Plaintiff - Appellant: Alvin Justin Ourso III, Jones Walker LLP, Baton R...
• Judge Panel: Before KING, GRAVES, and HIGGINSON, Circuit Judges.
• Case Date: April 08, 2015
• Court: United States Courts of Appeals, U.S. Court of Appeals — Fifth Circuit

Page 527

783 F.3d 527 (5th Cir. 2015)

NOLA SPICE DESIGNS, L.L.C., Plaintiff - Appellee

v.

HAYDEL ENTERPRISES, INCORPORATED, doing business as Haydel's Bakery, Defendant - Third Party Plaintiff - Appellant

RAQUEL DUARTE, Third Party Defendant - Appellee

No. 13-30918

United States Court of Appeals, Fifth Circuit

April 8, 2015

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Appeals from the United States District Court for the Eastern District of Louisiana.

For Nola Spice Designs, L.L.C., Plaintiff - Appellee: Jason P. Foote, Esq., Law Offices of Jason P. Foote, L.L.C., Metairie, LA.

For Haydel Enterprises, Incorporated, doing business as: Haydel's Bakery, Defendant-Third Party Plaintiff - Appellant: Alvin Justin Ourso III, Jones Walker LLP, Baton Rouge, LA; Micah Fincher, Jones Walker LLP, New Orleans, LA; Kaytie Michelle Pickett, Esq., Jones Walker LLP, Jackson, MS.

For Raquel Duarte, Third Party Defendant - Appellee: Jason P. Foote, Esq., Law Offices of Jason P. Foote, L.L.C., Metairie, LA.

Before KING, GRAVES, and HIGGINSON, Circuit Judges.

OPINION

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STEPHEN A. HIGGINSON, Circuit Judge:

This case concerns the intersection between intellectual property rights and a Mardi Gras tradition. Haydel Enterprises appeals the district court's grant of summary judgment to Nola Spice Designs and Raquel Duarte on claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. We affirm.

FACTS AND PROCEEDINGS

During Mardi Gras parades in New Orleans, parade " krewes" throw strands of plastic beads to onlookers, who, in turn, have created " bead dogs" by twisting these strands into the shape of a dog. Haydel Enterprises (" Haydel" ) owns Haydel's Bakery in New Orleans, which makes and sells pastries and cakes, including its popular king cake sold during the Mardi Gras season. In 2008, Haydel commissioned an artist to design a mascot, which was named " Mardi Gras Bead Dog." On October 13, 2009, and December 1, 2009, the United States Patent and Trademark Office (" PTO" ) issued two trademark registrations to Haydel for, respectively, the phrase " MARDI GRAS BEAD DOG" and its bead dog design. The design consists of a " stylized dog wearing a beaded necklace,

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with the dog being formed by a series of spheres designed to look like Mardi Gras style beads. The dog has two eyes and a nose, all formed by smaller beads." Both registrations cover king cake pastries, jewelry, and clothing (shirts, hats, and baby jumpsuits). Haydel sells these items in its New Orleans store, online, and through its licensee Fleurty Girl, a New Orleans retailer. In September 2012, Haydel obtained a certificate of copyright registration for its work titled " Bead Dog" in " photograph(s), jewelry design, 2-D artwork, sculpture." Haydel has acknowledged that its mascot " brings to mind the traditional bead dog" made of Mardi Gras beads. Nevertheless, Haydel asserts that its mascot and its use of the phrase " Mardi Gras Bead Dog" differ from the Mardi Gras tradition in key respects, which we will discuss.

In May 2012, Raquel Duarte formed Nola Spice Designs, which sells jewelry and accessories, including necklaces and earrings featuring bead dog trinkets. Duarte twists each bead dog by hand from beads and wire, following the same general method that she used to make bead dogs as a child during Mardi Gras. By contrast, the bead dogs in Haydel's jewelry are made of sterling silver. Duarte sells her jewelry on the Internet under titles that include the phrase " bead dog," but not " Mardi Gras bead dog." The appendix to this opinion contains images of Haydel's bead dog sculpture, jewelry, and trademarked design, as well as images of Nola Spice's jewelry and of a traditional bead dog trinket.

Haydel learned of Duarte's bead dogs through Haydel's customers. In August 2012, Haydel sent Nola Spice Designs a letter noting Haydel's trademark and copyright in " the bead dog design," and demanding, inter alia, that Nola Spice Designs " remove from [its] website all display, mention of or reference to the bead dog design," and " cease any and all promotion, sale, and/or use" of materials incorporating the bead dog design. In October 2012, Nola Spice Designs filed a complaint against Haydel seeking (1) a declaratory judgment that Nola Spice Designs's activities do not violate the Lanham Act, 15 U.S.C. § 1051 et seq., or any other trademark law; (2) the cancellation of Haydel's trademarks under 15 U.S.C. § 1119; and (3) damages for unfair trade practices under the Louisiana Unfair Trade Practices Act (" LUTPA" ), La. Rev. Stat. Ann. § 51:1401 et seq. Haydel asserted counterclaims against Nola Spice Designs and filed a third-party complaint against Duarte, seeking injunctive relief and damages. Specifically, Haydel asserted counterclaims for trademark infringement, unfair competition, and trademark dilution, all in violation of the Lanham Act, unfair trade practices under LUTPA, and copyright infringement in violation of the Copyright Act, 17 U.S.C. § 101 et seq. The parties also filed cross-motions for summary judgment.

On August 28, 2013, the district court granted in part and denied in part the motion for summary judgment filed by Nola Spice Designs and Duarte (collectively, " Nola Spice" ) and denied Haydel's motion for summary judgment. Specifically, the district court granted summary judgment to Nola Spice on its claim for a declaratory judgment that it was not infringing Haydel's trademarks, and the court cancelled those trademarks as unprotectable, but it denied Nola Spice's motion for summary judgment on its LUTPA claims. The district court also granted summary judgment to Nola Spice on Haydel's claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. Haydel timely appealed the district court's August 28 order. Nola Spice

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did not appeal the district court's dismissal with prejudice of its LUTPA claim.

STANDARD OF REVIEW

We review de novo a district court's grant of summary judgment, Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009), applying the same standard as the district court, Gowesky v. Singing River Hosp. Sys., 321 F.3d 503, 507 (5th Cir. 2003). Summary judgment is appropriate " if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). A genuine dispute of material fact exists when the " 'evidence is such that a reasonable jury could return a verdict for the nonmoving party.'" Royal v. CCC & R Tres Arboles, L.L.C., 736 F.3d 396, 400 (5th Cir. 2013) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). The moving party " 'bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of [the record] which it believes demonstrate the absence of a genuine issue of material fact.'" E.E.O.C. v. LHC Grp., Inc., 773 F.3d 688, 694 (5th Cir. 2014) (alteration in original) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). Once the moving party fulfills this responsibility, the non-moving party must " go beyond the pleadings and by her own affidavits, or by the depositions, answers to interrogatories, and admissions on file, designate specific facts showing that there is a genuine issue for trial." Id. (quoting Celotex Corp., 477 U.S. at 324) (internal quotation marks omitted). Where the non-movant bears the burden of proof at trial, " the movant may merely point to the absence of evidence and thereby shift to the non-movant the burden of demonstrating by competent summary judgment proof that there is an issue of material fact warranting trial." Transamerica Ins. Co. v. Avenell, 66 F.3d 715, 718-19 (5th Cir. 1995) (per curiam). In reviewing a grant of summary judgment, we view all evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. United States ex rel. Taylor-Vick v. Smith, 513 F.3d 228, 230 (5th Cir. 2008). We may affirm a grant of summary judgment " based on any rationale presented to the district court for consideration and supported by facts uncontroverted in the summary judgment record." Terrebonne Parish Sch. Bd. v. Mobil Oil Corp., 310 F.3d 870, 887 (5th Cir. 2002).

DISCUSSION

I. Trademark Infringement

Trademark infringement claims are governed by the Lanham Act, 15 U.S.C. § 1051 et seq. That Act defines " trademark," in relevant part, as:

any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

15 U.S.C. § 1127. To prevail on its claim of trademark infringement under the Lanham Act, Haydel must show (1) it possesses valid trademarks; and (2) Nola Spice's use of Haydel's trademarks creates a likelihood of confusion as to source, affiliation, or sponsorship. Nat'l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 532 (5th Cir. 2012); 15 U.S.C. § 1114(1). The district court granted summary judgment to Nola Spice on Haydel's claim of trademark infringement and

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entered a declaratory judgment of non-infringement on the ground that Haydel's marks are not legally protectable. The court pretermitted discussion of likelihood of confusion.

To be legally protectable, a mark must be " distinctive" in one of two ways. Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir...