Hartford House, Ltd. v. Hallmark Cards, Inc., 86-2748

• Decision Date: 24 May 1988
• Docket Number: No. 86-2748,86-2748
• Citation: 846 F.2d 1268
• Parties: HARTFORD HOUSE, LTD., a Colorado corporation, d/b/a Blue Mountain Arts, Susan Polis Schutz, and Stephen Schutz, Plaintiffs-Appellees, v. HALLMARK CARDS, INCORPORATED, a Missouri corporation, and Hallmark Marketing Corporation, Defendants-Appellants.
• Court: U.S. Court of Appeals — Tenth Circuit

Page 1268

846 F.2d 1268

6 U.S.P.Q.2d 2038

HARTFORD HOUSE, LTD., a Colorado corporation, d/b/a Blue

Mountain Arts, Susan Polis Schutz, and Stephen

Schutz, Plaintiffs-Appellees, v. HALLMARK CARDS, INCORPORATED, a Missouri corporation, and Hallmark Marketing Corporation, Defendants-Appellants.

No. 86-2748.

United States Court of Appeals, Tenth Circuit.

May 24, 1988.

Robert J. Sisk, of counsel, of Hughes, Hubbard & Reed, New York City (John M. Townsend of Hughes, Hubbard & Reed, New York City, Andrea I. Williams, Thomas S. Nichols and Andrew M. Low of Davis, Graham & Stubbs, Denver Colo., and Barry M. Katz and M. Theresa Hupp of Hallmark Cards, Inc., Kansas City, Mo., with him on the briefs), for defendants-appellants.

Harry G. Melkonian of White & Case, Los Angeles, Cal. (James B. Hicks and Kathleen M. White of White & Case, Los Angeles, Cal., and Steve C. Briggs of Hutchinson, Black, Hill & Cook, Boulder, Colo., with him on the brief), for plaintiffs-appellees.

Before HOLLOWAY and McKAY, Circuit Judges, and BURCIAGA ^*, District Judge.

McKAY, Circuit Judge.

I.

Plaintiffs, Susan Polis Schutz, Stephen Schutz, and Hartford House, Ltd., d/b/a Blue Mountain Arts (hereinafter collectively referred to as "Blue Mountain"), are in the greeting card business. Presently, Blue Mountain's two major lines of cards are entitled "AireBrush Feelings" and "WaterColor Feelings." These lines have been on the market since 1981 and 1983, respectively, and contain non-occasion emotional messages concerning love, personal relationships, and other similar subjects, superimposed on watercolor or airbrush artwork that generally has a landscape motif or nature theme.

Defendants, Hallmark Cards, Incorporated, and Hallmark Marketing Corporation (hereinafter collectively referred to as "Hallmark"), have produced and marketed greeting cards for more than seventy-five years. One of Hallmark's lines of cards is known as "Personal Touch," which, like Blue Mountain's cards, conveys emotional messages about personal relationships.

Blue Mountain brought this action against Hallmark, alleging that Hallmark's "Personal Touch" line of greeting cards, designed and distributed for sale beginning in April 1986, is deceptively and confusingly similar to Blue Mountain's "AireBrush Feelings" and "WaterColor Feelings" lines. Blue Mountain asserts that Hallmark has violated section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982), ¹ and is guilty of unfair competition and copyright infringement.

In the proceedings below, Blue Mountain sought a preliminary injunction to enjoin Hallmark from manufacturing and marketing its "Personal Touch" line during the pendency of this action. Pertinent to this request, Blue Mountain claimed that Hallmark's "Personal Touch" cards infringed the protected trade dress of Blue Mountain's "AireBrush Feelings" and "WaterColor Feelings" lines.

The district court studied the materials presented by the parties, held an evidentiary hearing, and made preliminary findings of facts and conclusions of law, reported at Hartford House Ltd. v. Hallmark Cards Inc., 647 F.Supp. 1533 (D.Colo.1986). Among the district court's findings not challenged on this appeal are the following: Blue Mountain has been a successful leader in that part of the greeting card business aimed at expressing strong, non-occasion personal emotions. Hallmark was aware of the commercial success of Blue Mountain's cards and viewed Blue Mountain as a serious competitive threat. In early 1986, Hallmark mounted an intense effort to capture the emotionally expressive non-occasion greeting card market and designed and marketed its "Personal Touch" cards to appeal to the same type of consumers who purchase Blue Mountain's cards.

The district court also found that the "AireBrush Feelings" and "WaterColor Feelings" cards have an inherently distinctive and highly uniform overall appearance that is recognizable and attributable to Blue Mountain. According to the district court, some or all of the following features comprise that overall look:

1. A two-fold card containing poetry on the first and third pages.

2. Unprinted surfaces on the inside three panels.

3. A deckle edge on the right side of the first page.

4. A rough-edge stripe of color, or wide stripe, on the outside of the deckle edge of the first page.

5. A high-quality, uncoated, and textured art paper for the cards.

6. Florescent ink for some of the colors printed on the cards.

7. Lengthy poetry, written in free verse, typically with a personal message.

8. Appearance of hand-lettered calligraphy on the first and third pages with the first letter of the words often enlarged.

9. An illustration that wraps around the card and is spread over three pages, including the back of the card.

10. The look of the cards primarily characterized by backgrounds of soft colors done with air brush blends or light watercolor strokes, usually depicting simple contrasting foreground scenes superimposed in the background.

Id. at 1539.

The district court then analyzed the pertinent law and granted Blue Mountain's motion for preliminary injunction. Specifically, the district court ordered that Hallmark be "enjoined and restrained, pending a trial on the merits[,] from producing, manufacturing, marketing, advertising, promoting, offering for sale, selling or distributing" eighty-three "Personal Touch" cards. Id. at 1545. The district court then listed the eighty-three cards which were the subject of the injunction. Hallmark appeals the district court's grant of the preliminary injunction.

II.

A district court may issue a preliminary injunction if the moving party establishes:

(1) substantial likelihood that the movant will eventually prevail on the merits; (2) a showing that the movant will suffer irreparable injury unless the injunction issues; (3) proof that the threatened injury to the movant outweighs whatever damage the proposed injunction may cause the opposing party; and (4) a showing that the injunction, if issued, would not be adverse to the public interest.

Lundgrin v. Claytor, 619 F.2d 61, 63 (10th Cir.1980). The scope of appellate review of a district court's discretionary grant of a preliminary injunction is narrow. Unless the district court abuses its discretion, commits an error of law, or is clearly erroneous in its preliminary factual findings, the appellate court may not set aside the injunction. City of Chanute v. Kansas Gas & Electric Co., 754 F.2d 310, 312 (10th Cir.1985); Kenai Oil & Gas, Inc. v. Department of the Interior, 671 F.2d 383, 385 (10th Cir.1982); Otero Savings & Loan Association v. Federal Reserve Bank, 665 F.2d 275, 276 (10th Cir.1981). "The merits ... may be considered on appeal only insofar as they bear on the issue of judicial discretion." Otero, 665 F.2d at 276-77.

On this appeal Hallmark does not challenge the district court's findings that Blue Mountain will suffer irreparable injury unless the preliminary injunction issues, that the threatened injury to Blue Mountain outweighs whatever damage the injunction may cause Hallmark, and that the preliminary injunction would not be adverse to the public interest. Rather, Hallmark's appeal pertains to the district court's finding that Blue Mountain has established a substantial likelihood that it will eventually prevail on the merits of its trade dress infringement claim under the Lanham Act. ²

III.

A federal cause of action for unprivileged imitation, including trade dress infringement, is available under section 43(a) of the Lanham Act. Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 516-17 (10th Cir.1987); John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir.1983). "Although historically trade dress infringement consisted of copying a product's packaging, ... 'trade dress' in its more modern sense [may] refer to the appearance of the [product] itself...." Brunswick, 832 F.2d at 517 (quoting American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1140-41 (3d Cir.1986)); LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 75 (2d Cir.1985).

Trade dress is a complex composite of features. One may be size, another may be color or color combinations, another may be texture, another may be graphics and arrangement and so on. Trade dress is a term reflecting the overall general impact, usually visual, but sometimes also tactile, of all these features taken together.

SK & F Co. v. Premo Pharmaceutical Laboratories, Inc., 481 F.Supp. 1184, 1187 (D.N.J.1979), aff'd, 625 F.2d 1055 (3d Cir.1980); accord Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 841 (9th Cir.1987) (total visual image); Clarke Checks, 711 F.2d at 980; Harlequin Enterprises Ltd. v. Gulf & Western Corp., 503 F.Supp. 647, 648-49 (S.D.N.Y.1980) (product design and format, words, symbols, collection of colors and designs). The district court described Blue Mountain's trade dress as a combination of some or all of ten features listed above, which produces an overall uniform look and distinctive appearance of Blue Mountain's "AireBrush Feelings" and "WaterColor Feelings" lines of cards.

A product's trade dress is eligible for protection under section 43(a) if it is so distinctive as to become, in effect, an unregistered trademark. Brunswick, 832 F.2d at 516-17. For a plaintiff to establish unprivileged imitation, prevail on a trade dress infringement claim, and thus prevent copying of the appearance of a product, (1) the trade dress, whether a single feature or a combination of features, must be nonfunctional; (2) the trade dress must have acquired a secondary meaning; and (3) there must be a likelihood of confusion among consumers as to the source of the competing products. ³ Brunswick, 832 F.2d at 517.

In considering the merits of Blue Mountain's trade dress infringement claim for purposes of determining Blue Mountain's likelihood of success on the merits, the district court determined that the overall appearance or arrangement...