Beatriz Ball, LLC v. Barbagallo

• Decision Date: 25 November 2020
• Docket Number: CIVIL ACTION NO. 18-10214-WBV-KWR SECTION: D (4)
• Parties: BEATRIZ BALL, LLC v. CARLOS BARBAGALLO, ET AL.
• Court: U.S. District Court — Eastern District of Louisiana

BEATRIZ BALL, LLC
v.
CARLOS BARBAGALLO, ET AL.

CIVIL ACTION NO. 18-10214-WBV-KWR SECTION: D (4)

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF LOUISIANA

November 25, 2020

FINDINGS OF FACT and CONCLUSIONS OF LAW

I. PROCEDURAL HISTORY

This is a copyright and trademark infringement case concerning tableware products. On October 31, 2018, Fabulous Pewterware, LLC, which is now known as Beatriz Ball, LLC (hereafter, "Plaintiff"), filed a Complaint and Request for Preliminary and Permanent Injunction in this Court against Barbagallo Company, LLC d/b/a Pampa Bay and Carlos Barbagallo, asserting claims for: (1) copyright infringement under the Copyright Act, 17 U.S.C. § 101, et seq.; (2) unfair competition under § 43 of the Lanham Act, in the form of false designation or false advertising under 15 U.S.C. § 1125(a) and dilution under 15 U.S.C. § 1125(c); and (3) violation of Louisiana's Unfair Trade Practices and Consumer Protection Law ("LUTPA"), Louisiana R.S. 51:1401, et seq. (R. Doc. 1 at ¶¶ 39-52). Plaintiff alleges that Pampa Bay and Barbagallo have marketed several lines of products that copy the look and feel of Plaintiff's "Organic Pearl" designs of tableware and constitute unauthorized derivative works that infringe upon Plaintiff's registered copyrights under 17 U.S.C. §§ 101, 103. (Id. at ¶¶ 23-44).

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Plaintiff also asserts that the actions of Pampa Bay and Barbagallo in knowingly copying Plaintiff's designs constitute unfair competition under § 43(a) of the Lanham Act, in the form of false designation of origin, false or misleading description of fact, and/or false or misleading representation of fact likely to cause confusion or mistake or to deceive as to the affiliation, connection, or association. (Id. at ¶¶ 45-46). Specifically, Plaintiff alleges that its products are made in Mexico and that Pampa Bay and Barbagallo have implied that their items are made in Argentina when they are actually manufactured in China, which constitutes a false or misleading representation of fact that can cause confusion or mistake as to the origin of Pampa Bay's products. (Id. at ¶ 47). Finally, Plaintiff asserts that Pampa Bay and Barbagallo's actions in knowingly copying Plaintiff's designs constitutes an unfair or deceptive method, act or practice in violation of the Louisiana Unfair Trade Practices and Consumer Protection Law ("LUTPA"), La. R.S. 51:1401, et seq. (Id. at ¶¶ 51-52).

Plaintiff asserts that it will suffer irreparable harm if Pampa Bay and Barbagallo are not enjoined from marketing, distributing and selling designs that infringe Plaintiff's registered copyrights and that are likely to cause confusion as to their origin. As such, Plaintiff seeks injunctive relief, prohibiting Pampa Bay and Barbagallo from infringing Plaintiff's copyrights and prohibiting Pampa Bay and Barbagallo from engaging in acts likely to cause confusion as to the source of origin of Pampa Bay's products. Plaintiff also seeks a declaration that the copyright infringements were willful under 17 U.S.C. § 504(c)(2), and further seeks damages from the infringements and any violations of the LUTPA. Finally, Plaintiff seeks an

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Order requiring the impoundment and destruction of all infringing goods in the marketplace or under the control of Pampa Bay and/or Barbagallo, and of all plates, molds, matrices or other articles by which such copies may be reproduced, pursuant to 17 U.S.C. § 503(a). (Id. at p. 18). The Complaint also includes a request for attorney's fees and costs under 17 U.S.C. § 505, 22 U.S.C. § 1117(a), and La. R.S. 51:1409. (Id. at pp. 17-18).

Shortly thereafter, on December 6, 2018, Plaintiff filed a First Amended Complaint and Request for Preliminary and Permanent Injunction ("First Amended Complaint"), naming James E. Martin and Associates, Inc., an authorized sales representative and authorized distributor of Pampa Bay, as an additional defendant. (R. Doc. 4 at ¶ 7). On April 15, 2019, Plaintiff voluntarily dismissed Barbagallo and James E. Martin and Associates, Inc., and voluntarily dismissed without prejudice all of its claims for copyright infringement involving "Organic Pearl" copyright applications that were pending before the United States Copyright Office. (R. Docs. 32 & 33). Prior to that dismissal, however, on February 12, 2019, Plaintiff had sought leave to file a Second Amended Complaint against the three defendants (Carlos Barbagallo, James E. Martin and Associates, Inc., and Barbagallo Company, LLC d/b/a Pampa Bay) which motion was subsequently granted on May 13, 2019. (R. Docs. 21 & 36).

Since Plaintiff moved for, and the Court granted, Plaintiff's motion to dismiss defendants Carlos Barbagallo and James E. Martin and Associates, Inc., the only remaining defendant in the lawsuit following the filing of the Second Amended

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Complaint is Barbagallo Company LLC d/b/a Pampa Bay ("Pampa Bay"). Plaintiff asserts the following causes of action against Pampa Bay in the Second Amended Complaint: (1) copyright infringement under 17 U.S.C. § 106; (2) unfair competition under § 43 of the Lanham Act, in the form of false designation of origin in violation of 15 U.S.C. § 1125(a)(1)(A), false advertising in violation of 15 U.S.C. § 1125(a)(1)(B), and dilution in violation of 15 U.S.C. § 1125(c); and (3) violation of the Louisiana Unfair Trade Practices Act, La. R.S. 51:1401, et seq. (R. Doc. 37 at pp. 30-39). On November 27, 2019, the Court denied Pampa Bay's Motion for Partial Summary Judgment, seeking dismissal of Plaintiff's claims for unfair competition under § 43 of the Lanham Act, false advertising and dilution of Plaintiff's alleged trade dress, and alleged violations of the LUTPA. (R. Docs. 46 and 89).

This matter was tried before the Court without a jury on December 2-4, 2019. The Court has carefully considered the testimony of all of the witnesses and the exhibits entered into evidence during the trial, as well as the record in this matter. Pursuant to Rule 52 of the Federal Rules of Civil Procedure, the Court enters the following Findings of Fact and Conclusions of Law. To the extent that any finding of fact may be construed as a conclusion of law, the Court hereby adopts it as such. To the extent that any conclusion of law may be construed as a finding of fact, the Court adopts it as such.

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II. FINDINGS OF FACT

A. Findings of Fact as to Count 1, Copyright Infringement.

1. Beatriz Ball, LLC's ("Plaintiff's) tableware products are made of metal and are hand-crafted using a sand-casting method by skilled artisans working in factories located in Mexico. (R. Doc. 37 at ¶¶ 14-15; R. Docs. 48 & 52; Trial Testimony of Beatriz Ball, December 2, 2019).

2. Barbagallo Company LLC d/b/a Pampa Bay ("Pampa Bay") has been producing and selling its ceramic tableware products, which are made in China, since at least as early as 2016.

3. Plaintiff alleges the Pampa Bay has infringed upon four of its registered copyrighted designs (the "Registered Copyrights"), namely:

6127	ORGANIC nova pearl oval tray; (md)	REGISTERED	VA-1-638-; 637	2006
6792	ORGANIC PEARL Kristi rect; tray w/handles (Ig)	REGISTERED	VA-1-928-; 830	2014
6370	Organic Pearl quad dip	REGISTERED	VA-1-714-; 656	2010
6793	ORGANIC PEARL sauce bowl	REGISTERED	VA-1-928-; 829	2014

(R. Doc. 37-1 at p. 1).

4. The Copyright Registration Certificate for VA-1-638-637, ORGANIC nova pearl oval tray (Trial Exhibit 1), identifies the following relevant information:

"Author"	"Beatriz Ball"
"Author Created" work	"sculpture/3 D artwork"
"work made for hire"	"No"
"Copyright Claimant"	"Beatriz Ball Collection"

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5. The Copyright Registration Certificate for VA-1-928-830, ORGANIC PEARL Kristi rect. tray w/handles (Trial Exhibit 3), identifies the following relevant information:

"Author"	"Beatriz Ball Collection"
"Author Created" work	"sculpture"
"work made for hire"	"Yes"
"Copyright Claimant"	"Beatriz Ball Collection"

6. The Copyright Registration Certificate for VA-1-714-656, Organic pearl quad dip (Trial Exhibit 4), identifies the following relevant information:

"Author Created" work	"sculpture/3 D artwork"
"Author"	"Beatriz Ball Collection"
"work made for hire"	"No"
"Copyright Claimant"	"Beatriz Ball Collection"

7. The Copyright Registration Certificate for VA-1-928-829, ORGANIC PEARL sauce bowl (Trial Exhibit 2), identifies the following relevant information:

"Author"	"Beatriz Ball Collection"
"Author Created" work	"sculpture"
"work made for hire"	"Yes"
"Copyright Claimant"	"Beatriz Ball Collection"

8. Each of the registered copyrights referenced above were issued by the United States Copyright Officer prior to the United States Supreme Court's ruling on March 22, 2017 in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S.Ct. 1002, 197 L.Ed.2d 354 (2017). (R. Doc. 37-1 at p. 1).

9. By letter dated July 12, 2017, the United States Copyright Office denied Plaintiff's pending copyright applications and refused to register the other alleged copyrights that form the basis of Plaintiff's copyright infringement claims (the "Refused Copyrights"), finding that the submitted products were

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"useful articles" under 17 U.S.C. § 101 and, therefore, were legally ineligible for copyright protection and registration. (Trial Exhibit 7; R. Doc. 37-1 at p. 14).

10.Those products which were refused copyrights and found to be useful items by the United States Copyright Office include the following:

PEARL denisse oval bowl centerpiece
SOHO spiral dip
SOHO brooklyn long rect platter
VENTO sasha pyrex casserole 9 x 13
ORGANIC PEARL diana bowl (md)
VENTO rebecca md bowl w/ handles
PEDESTAL Soho oval tray (sm)
SOHO arden tiled bowl (md)
SOHO arden tiled bowl (sm)
ORGANIC PEARL rect tray (md)
PEDESTAL VENTO Alex bowl (md)
G&G VENTO Petit Tray
G&G PEARL Petit Tray
SOHO oval bowl (xlg)
SOHO round bowl (mini)
SOHO jean bowl (md)
SOHO mari spoon (mini)

(Trial Exhibit 7

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