Abercrombie & Fitch v. American Eagle Outfitters

Decision Date12 July 1999
Docket NumberNo. C2-98-569.,C2-98-569.
Citation130 F.Supp.2d 928
CourtU.S. District Court — Southern District of Ohio
PartiesABERCROMBIE & FITCH STORES, INC., Plaintiff, v. AMERICAN EAGLE OUTFITTERS, INC., Defendant.

Frank J. Colucci, Richard Jacobson, Courtney Monahan, W. Brant Mossop, Colucci & Umans, New York, NY, Melvin Donald Weinstein, Kegler Brown Hill & Ritter, Columbus, OH, for Plaintiffs.

Lynda M. Braun, Robert S. Sugarman, Weill, Gotshal & Manges, New York, NY, Joel Robert Chambers, Wood, Herron & Evans, Cincinnati, OH, for Defendants.

MEMORANDUM AND ORDER

HOLSCHUH, District Judge.

This action was filed by Abercrombie & Fitch Stores, Inc. ("A & F") against American Eagle Outfitters, Inc. ("American Eagle") asserting claims under the Lanham Act, 15 U.S.C. § 1125(a), the Ohio Deceptive Trade Practices Act, and the common law of trade dress infringement and unfair competition. A & F claims that the way in which American Eagle has chosen to market its goods, which are similar to goods sold by A & F, deliberately copies A & F's promotional and marketing materials and therefore infringes upon A & F's rights in its marketing presentation. In response to the complaint, American Eagle filed a motion for summary judgment which argues that, whether or not American Eagle has intentionally copied A & F's marketing approach for the goods in question, it has infringed no rights belonging to A & F because A & F has no rights, and cannot acquire rights, in the type of generic marketing devices which are described in the complaint. The summary judgment motion has been fully briefed and is ripe for decision.

I.

Fed.R.Civ.P. 56(c) provides:

The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.

"[T]his standard provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (emphasis in original); Kendall v. The Hoover Co., 751 F.2d 171, 174 (6th Cir.1984).

Summary judgment will not lie if the dispute about a material fact is genuine; "that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party," Anderson, 477 U.S. at 248, 106 S.Ct. 2505. The purpose of the procedure is not to resolve factual issues, but to determine if there are genuine issues of fact to be tried. Lashlee v. Sumner, 570 F.2d 107, 111 (6th Cir.1978). Therefore, summary judgment will be granted "only where the moving party is entitled to judgment as a matter of law, where it is quite clear what the truth is, ... [and where] no genuine issue remains for trial, ... [for] the purpose of the rule is not to cut litigants off from their right of trial by jury if they really have issues to try." Poller v. Columbia Broadcasting System, Inc., 368 U.S. 464, 467, 82 S.Ct. 486, 7 L.Ed.2d 458 (1962); accord, County of Oakland v. City of Berkley, 742 F.2d 289, 297 (6th Cir.1984).

In making this inquiry, the standard to be applied by the Court mirrors the standard for a directed verdict. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Anderson, 477 U.S. at 250, 106 S.Ct. 2505.

The primary difference between the two motions is procedural: summary judgment motions are usually made before trial and decided on documentary evidence, while directed verdict motions are made at trial and decided on the evidence that has been admitted. Bill Johnson's Restaurants, Inc. v. NLRB, 461 U.S. 731, 745, n. 11, 103 S.Ct. 2161, 76 L.Ed.2d 277 (1983). In essence, though, the inquiry under each is the same: whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so onesided that one party must prevail as a matter of law.

Accordingly, although summary judgment should be cautiously invoked, it is an integral part of the Federal Rules which are designed "to secure the just, speedy and inexpensive determination of every action." Celotex, 477 U.S. at 327, 106 S.Ct. 2548 (quoting Fed.R.Civ.P. 1).

In a motion for summary judgment the moving party bears the "burden of showing the absence of a genuine issue as to any material fact, and for these purposes, the [evidence submitted] must be viewed in the light most favorable to the opposing party." Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970) (footnote omitted); accord, Adams v. Union Carbide Corp., 737 F.2d 1453, 1455-56 (6th Cir.1984), cert. denied, 469 U.S. 1062, 105 S.Ct. 545, 83 L.Ed.2d 432 (1984). Inferences to be drawn from the underlying facts contained in such materials must be considered in the light most favorable to the party opposing the motion. United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962); Watkins v. Northwestern Ohio Tractor Pullers Association, Inc., 630 F.2d 1155, 1158 (6th Cir.1980). Additionally, "unexplained gaps" in materials submitted by the moving party, if pertinent to material issues of fact, justify denial of a motion for summary judgment. Adickes, 398 U.S. at 157-60, 90 S.Ct. 1598; Smith v. Hudson, 600 F.2d 60, 65 (6th Cir.), cert. dismissed, 444 U.S. 986, 100 S.Ct. 495, 62 L.Ed.2d 415 (1979).

If the moving party meets its burden and adequate time for discovery has been provided, summary judgment is appropriate if the opposing party fails to make a showing sufficient to establish the existence of an element essential to that party's case and on which that party will bear the burden of proof at trial. Celotex, 477 U.S. at 322, 106 S.Ct. 2548. The mere existence of a scintilla of evidence in support of the opposing party's position will be insufficient; there must be evidence on which the jury could reasonably find for the opposing party. Anderson, 477 U.S. at 251, 106 S.Ct. 2505. As is provided in Fed.R.Civ.P. 56(e):

When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of his pleading, but his response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If he does not so respond, summary judgment, if appropriate, shall be entered against him.

Thus, "a party cannot rest on the allegations contained in his complaint in opposition to a properly supported summary judgment motion made against him." First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 259, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968) (footnote omitted).

II.

Although, as noted above, when faced with a summary judgment motion, the Court is required to examine any submitted factual materials in the light most favorable to the non-moving party, the primary emphasis of American Eagle's summary judgment motion is that the complaint itself is insufficient to state claims under either the Lanham Act or Ohio law. Consequently, although the Court will refer to some extent to the additional materials submitted with the summary judgment motion, the focus of the factual statement in this Memorandum and Order will be the allegations of the complaint itself.

A & F describes itself as a "retailer of men's and women's casual clothing, such as t-shirts, outerwear, sweatshirts, woven shirts, sweaters, jeans, khakis, shorts, baseball caps, belts, socks, and other accessories ... designed primarily to appeal to young men and women of college age...." This collection of clothing, taken together, is referred to by A & F as the "Abercrombie Brand," and this merchandise is sold throughout the United States under registered trademarks and service marks ("Abercrombie & Fitch," "A & F Co.," "A & F," and variations of these marks). Complaint, paragraph 5. This case is not, however, about infringement of any registered trademarks and service marks.

Rather, according to paragraph seven of A & F's complaint, the merchandise collectively described as the "Abercrombie Brand" has acquired a "unique and inherently distinctive image" (referred to in the complaint as the "Abercrombie Trade Dress") which consists of nine separate features. Those features are (1) some use of the Abercrombie marks; (2) the use of the word "performance" on labels, advertising and promotional materials; (3) the use of the words or phrases "authentic," "genuine brand," "trademark," and "since 1892" on labels, advertising and promotional material; (4) the use of the word "outdoor" in the same materials; (5) the use of certain "design logos" and product names for types of clothing which convey "the image of an athletic line of casual clothing;" (6) the use of primary color combinations in connection with solid, plaid, and stripe designs to "create a consistent design and color palette;" (7) the use of all natural cotton, wool and twill fabrics to "create a consistent texture palette"; (8) the creation of a "cool" or "cutting edge" image through advertising which features clothing in a "cutout" style and which combines "a consistent conceptual theme with a lifestyle editorial content of music, electronics, books and magazine features ... printed on a cougar vellum paper;" and (9) the use of indoor signage and display setups and the employment of a sales associate team of college students to create a "consistent Abercrombie merchandise look in Abercrombie stores...." A & F alleges that these unique features are "closely and universally associated with Abercrombie" and are used by the public to identify the source and origin of A & F's goods.

A & F also alleges, in paragraph ten of its complaint, that American Eagle sells exactly the same...

To continue reading

Request your trial
140 cases
  • Thermodyn Corp. v. 3M Co., No. 3:07 CV 2491.
    • United States
    • U.S. District Court — Northern District of Ohio
    • December 17, 2008
    ...to resolve factual issues, but to determine if there are genuine issues of fact to be tried." Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 130 F.Supp.2d 928, 930 (S.D.Ohio 1999). Ultimately, this Court must determine "whether the evidence presents a sufficient disagreemen......
  • Garrett v. Fisher Titus Hosp.
    • United States
    • U.S. District Court — Northern District of Ohio
    • May 24, 2004
    ...to resolve factual issues, but to determine if there are genuine issues of fact to be tried." Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 130 F.Supp.2d 928, 930 (S.D.Ohio 1999). Ultimately, this Court must determine "whether the evidence presents a sufficient disagreemen......
  • Dryer v. Flower Hosp., No. 3:04 CV 7631.
    • United States
    • U.S. District Court — Northern District of Ohio
    • August 25, 2005
    ...to resolve factual issues, but to determine if there are genuine issues of fact to be tried." Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 130 F.Supp.2d 928, 930 (S.D.Ohio 1999). Ultimately, this Court must determine "whether the evidence presents a sufficient disagreemen......
  • Kohler v. City of Wapakoneta, No. 3:04 CV 7148.
    • United States
    • U.S. District Court — Northern District of Ohio
    • August 12, 2005
    ...to resolve factual issues, but to determine if there are genuine issues of fact to be tried." Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 130 F.Supp.2d 928, 930 (S.D.Ohio 1999). Ultimately, this Court must determine "whether the evidence presents a sufficient disagreemen......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT