826 F.2d 837 (9th Cir. 1987), 85-1929, Fuddruckers, Inc. v. Doc's B.R. Others, Inc.

Docket Nº:85-1929, 85-2394 and 85-2652.
Citation:826 F.2d 837
Party Name:4 U.S.P.Q.2d 1026 FUDDRUCKERS, INC. and Freddie Fuddruckers Franchising, Inc., a Texas corp., Plaintiffs/Counterdefendants/Appellant, v. DOC'S B.R. OTHERS, INC., and Arizona corp., Douglas J. Koppes and Mary F. Koppes, his wife; Dr. Gerald M. Koppes, and Stephen N. Koppes, Defendants/Counterclaimants/Appellees.
Case Date:August 24, 1987
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit
 
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826 F.2d 837 (9th Cir. 1987)

4 U.S.P.Q.2d 1026

FUDDRUCKERS, INC. and Freddie Fuddruckers Franchising, Inc.,

a Texas corp., Plaintiffs/Counterdefendants/Appellant,

v.

DOC'S B.R. OTHERS, INC., and Arizona corp., Douglas J.

Koppes and Mary F. Koppes, his wife; Dr. Gerald

M. Koppes, and Stephen N. Koppes,

Defendants/Counterclaimants/Appellees.

Nos. 85-1929, 85-2394 and 85-2652.

United States Court of Appeals, Ninth Circuit

August 24, 1987

Argued and Submitted July 16, 1986.

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Kimball J. Corson, Phoenix, Ariz., for plaintiffs/counterdefendants/appellant.

Neil Vincent Wake, Phoenix, Ariz., for defendants/counterclaimants/appellees.

Appeal from the United States District Court for the District of Arizona.

Before JAMES R. BROWNING, Chief Judge, and FLETCHER and NELSON, Circuit Judges.

FLETCHER, Circuit Judge:

Fuddruckers, Inc., appeals from a jury verdict denying Fuddruckers' claims for trade dress infringement and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982). We reverse and remand for a new trail.

BACKGROUND

Fuddruckers operates a national chain of "upscale" hamburger restaurants. The restaurants serve hamburgers, hot dogs, wurst, steak, french fries, beans and jalapenos. Although its restaurants do not all have precisely the same decor, the majority of them share a great many design elements. Fuddruckers claims these design elements as its trade dress. Fuddruckers alleges that defendants Doc's B.R. Others, Inc., Douglas, Mary, Gerald, and Steven Koppes are using its trade dress wrongfully in their restaurant, Doc's B.R. Others.

The heart of Fuddruckers' design concept is that its food preparation areas are visible to its customers. In particular, the areas in which it bakes its buns, cuts its meat, and grills the food it serves are open to the public. Various food items are presented in glassed-in display cases. Another important facet of Fuddruckers' claimed trade dress is that various food items are kept in bulk in the main part of the establishment in both packaged and unpackaged forms. There are stacked cartons of beer, produce and other items in the patron areas. Iced tea is served out of a light-colored plastic 32-gallon container that looks suspiciously like a garbage can. Patrons can help themselves to melted cheese, melted cheese with jalapenos, and sauerkraut out of large, black, round crocks. Onions, lettuce, and tomatoes are available precut at a large condiment bar that also features cartons and bags of the same items uncut. Salt and pepper are served in institutional-sized containers.

The most important non-food design elements at Fuddruckers are ubiquitous two-by-four white tiles found on the walls, the bar, and the counters. Fuddruckers also

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uses neon signs, many mirrors, brown and white checked flooring and tablecloths, brown director's chairs, and exterior yellow awnings.

In addition to these visual items, Fuddruckers uses a number of devices that it considers part of its trade dress. Its bakery area is labeled "Mother Fuddruckers." It uses its ceiling music system to call patrons when their orders are ready. It offers a restaurant "newspaper" to patrons at each table. Customers are allowed to buy bones for their dogs, with the proceeds going to animal shelters. There are several other less important design elements and devices that Fuddruckers also claims to be part of its trade dress. 1

In late 1982 or early 1983, Gerald and Doug Koppes became interested in operating a Fuddruckers franchise in Los Angeles, Denver, or Phoenix. At that time, Fuddruckers owned two restaurants in Texas and had several franchises operating outside Texas. For reasons that are disputed, the Koppes 2 did not obtain a franchise. They then became interested in opening a restaurant of their own.

Fuddruckers announced in mid-June of 1983 that it had found a franchisee for New Mexico, Arizona and Colorado, and that it planned to have the first restaurant opened in Phoenix in December of that year. About the same time, with knowledge of Fuddruckers' intentions, the Koppes began plans for their own restaurant in Phoenix. There was evidence presented from which the jury could conclude that they developed the plan for their restaurant with Fuddruckers as a model. 3 The Koppes opened Doc's B.R. Others restaurant near Phoenix in early December, 1983. The Phoenix Fuddruckers opened a short time later.

Doc's has many interior features like those of Fuddruckers. See photographs laid out in Appendix I. The major food preparation areas are exposed and look similar to Fuddruckers'. The same shape and brand of ubiquitous white tile can be found around Doc's. Doc's also uses neon, mirrors, and director's chairs. Doc's has a newspaper like Fuddruckers, calls its bakery, "Mother Other's," and sold dog bones for a time. A number of witnesses testified that they thought the restaurants looked very much alike and the photographs in evidence support this conclusion.

Pointing to the similarities between the restaurants and the Koppes' awareness of and interest in Fuddruckers during the planning stages of Doc's, Fuddruckers claims that the Koppes intentionally copied its design, concept and style. On the other hand, the Koppes denied that they copied Fuddruckers, and there is corroborating evidence to back them up. 4

Doc's witnesses pointed out that there are differences between the restaurants. Doc's name is prominently displayed on its directors chairs and elsewhere in the restaurant. Its checked floor is black and white rather than brown and white, and the checks are a different size. There is a very large mural and a large screen TV at Doc's

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which have no equivalent at Fuddruckers. Doc's' expert testified that the overall look of the restaurant was different from a Fuddruckers and that there is "more going on at eye level" in Doc's. 5

There was evidence at trial that after Fuddruckers opened, consumers were confused by the similarity between the restaurants. For example, a Fuddruckers employee testified that Fuddruckers personnel received more than one hundred questions a week about whether Doc's and Fuddruckers had common owners. Doc's' witnesses claimed to have heard a few similar questions or comments, although they believed that more people thought Doc's was like a different restaurant altogether, Flakey Jake's.

About six months after Fuddruckers opened in Phoenix, Fuddruckers brought this suit alleging infringement of its trade dress and seeking damages and injunctive relief. The jury rendered a verdict for Doc's, finding specifically that there was no likelihood of confusion between the two establishments and that Fuddruckers' trade dress had not acquired secondary meaning in the Phoenix area at the time Doc's opened. The district court awarded attorney's fees to Doc's, on the theory that Fuddruckers' suit was merely an anti-competitive ploy. 623 F.Supp. 21. Fuddruckers timely appeals.

The parties make a variety of claims on appeal relating to the sufficiency of the evidence to support the verdict, the adequacy of the jury instructions, and specific evidentiary rulings. As will become apparent, the case turns on the adequacy and correctness of the instructions that the court gave to the jury to define the elements of Fuddruckers' trade dress infringement action. We therefore must examine those elements in some detail.

DISCUSSION

Section 43(a) of the Lanham Act provides a remedy for a broad range of deceptive marking, packaging and marketing of goods or services in commerce. Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 858, 102 S.Ct. 2182, 2190, 72 L.Ed.2d 606 (1982). A plaintiff seeking to recover for trade dress infringement under section 43(a) must show that its trade dress is protectable and that defendant's use of the same or similar trade dress is likely to confuse consumers. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir.1987); Le Sportsac, Inc. v. K. Mart Corp., 754 F.2d 71 (2d Cir.1985).

Prior trade dress infringement cases in this circuit have involved the copying of products' packages and displays. See e.g., First Brands Corp., 809 F.2d 1378 (antifreeze bottles); Fabrica, Inc. v. El Dorado Corp., 697 F.2d 890 (9th Cir.1983) (carpet display blocks). The test we have articulated for trade dress infringement "is whether there is a likelihood of confusion resulting from the total effect of the defendant's package on the eye and mind of an ordinary purchaser." Id. at 894. This case expands the boundaries of trade dress infringement, seeking protection for a combination of elements employed in the marketing of restaurant services. Fuddruckers' suit seeks protection for more than the visual elements of a package or restaurant exterior. Fuddruckers claims that it is entitled to protection of the total visual image of its restaurant services under the rubric of trade dress protection. Other courts have adopted expansive definitions of trade dress, see, e.g., M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 448 n. 25 (4th Cir.1986); Prufrock Ltd. v. Lasater, 781 F.2d 129, 132 (8th Cir.1986); CPG Products Corp. v. Pegasus Luggage, Inc., 776 F.2d 1007, 1011 (Fed.Cir.1985); LeSportsac, 754 F.2d at 75; see also 1 J. McCarthy, Trademarks and Unfair Competition Sec. 8:1 at 282-83 (2d ed. 1984). We agree with Fuddruckers that a restaurant's decor, menu, layout and style of service may acquire the source-distinguishing aspects of protectable trade dress such that their imitation is likely to cause consumer confusion. Indeed,

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we implicitly recognized that such aspects of a restaurant's services might be entitled to protection under...

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