Clicks Billiards v. Sixshooters, PLAINTIFF-APPELLANT

• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)
• Writing for the Court: McKEOWN
• Citation: 251 F.3d 1252
• Parties: (9th Cir. 2001) CLICKS BILLIARDS INC., A TEXAS CORPORATION,, v. SIXSHOOTERS INC., AN ARIZONA CORPORATION; RONALD R. FORBES, A MARRIED MAN; JANE DOE FORBES, WIFE,
• Docket Number: DEFENDANTS-APPELLEES,No. 99-17294,PLAINTIFF-APPELLANT
• Decision Date: 01 June 2001

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251 F.3d 1252 (9th Cir. 2001) CLICKS BILLIARDS INC., A TEXAS CORPORATION, PLAINTIFF-APPELLANT,
v.
SIXSHOOTERS INC., AN ARIZONA CORPORATION; RONALD R. FORBES, A MARRIED MAN; JANE DOE FORBES, WIFE, DEFENDANTS-APPELLEES. No. 99-17294 UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT Argued and Submitted March 15, 2001
Filed June 1, 2001

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Copyrighted Material Omitted

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Copyrighted Material Omitted

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Kimball J. Corson, Shields & Anderson, P.L.C., Phoenix, Arizona, for the plaintiff-appellant.

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Neal B. Thomas, Thomas & Elardo, P.C., Phoenix, Arizona, for the defendant-appellee.

Appeal from the United States District Court for the District of Arizona Robert C. Broomfield, District Judge, Presiding D.C. No. CV-97-00670-RCB

Before: John T. Noonan, M. Margaret McKeown and Kim McLane Wardlaw, Circuit Judges.

McKEOWN, Circuit Judge

Pool halls conjure up images of green felt tables, lowhanging lights, and billiard cues. But can a pool hall's overall image constitute protectable trade dress? To answer that question in this dispute between two pool hall operators, Appellant Clicks Billiards, Inc. ("Clicks"), and its competitor, Sixshooters, Inc. ("Sixshooters"), we must address whether Clicks' claimed trade dress was nonfunctional; whether Clicks' trade dress had acquired secondary meaning; and whether there was a likelihood of confusion between the two establishments. Because there are disputed issues of material fact on each of these three questions, we reverse the district court's grant of summary judgment in favor of Sixshooters and remand for trial.

BACKGROUND

Clicks operates a number of billiards establishments in the Southwest, including two in the Phoenix area. Sixshooters opened a single pool hall in the Phoenix area in December 1996, sometime after the two Clicks facilities were already in existence. Daryl Chester, a former Clicks manager who left to work for Sixshooters, was ostensibly involved in the design of Sixshooters both before and after he left Clicks. Clicks presented evidence that Chester and others affiliated with Sixshooters visited Clicks and engaged in detailed inspection and measuring of Clicks' interior features while the design of Sixshooters was being formulated. Clicks also claims that Sixshooters was built in the path of Clicks' planned expansion.

In April 1997 Clicks filed suit under the Lanham Act, 15 U.S.C. § 1051 et seq., alleging that Sixshooters infringed its trade dress. In summary judgment proceedings, Clicks asserted that the following individual features of its billiard halls, taken collectively, constitute its trade dress:

Large floral print carpet pattern and style.

Dark mahogany wood finishes.

Ceiling and wall covers.

Appearance, color, and design of custom lighting fixtures.

Millwork details on woodwork.

Layout and arrangement of pool tables.

Various electrical details as well as air conditioning features to the extent they are part of the look, feel, and appearance of the decor of Clicks.

Tile color, pattern, and use.

Color, shape, and appearance of mahogany-stained top and bottom portions of bar.

Acoustical wall treatment on lower third of perimeter walls and drink rails.

Light to medium colored oak cocktail tables.

Drink rails.

Signage at front door, including color, content, and font.

Standardized appearance of the Clicks entry area, including the black and white tile on the floor.

Drink rails, cue racks, and wood trim on top of the dark green acoustical wall.

Spatial and layout arrangements between the drink rails and the pool tables.

Neon beer signs placed on the off-white fur down or soffit above the dark, mahogany-stained wall.

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The design, color, shape, and placement of the lights over the pool halls, as well as the number and spacing between them.

The design of the bar edge and the raised motifs on the bar.

The coordinated color scheme relating to the acoustical tile ceilings, the light fixtures, and the drink railings.

The color, shape, and location of the ceiling fans.

The location of the bartender relative to the entry way.

Design, including shape, material, stain, and structural aspects, of cue racks.

Placement of match books on upside-down ash trays.

Vinyl flooring.

Appearance of ceiling loudspeaker baffles, as painted over to match ceiling tile sections.

Wall or pole-mounted juke boxes.

Oak chairs surrounding drink tables.

Black vinyl bar chairs.

Location and existence of promotional materials, stacked talcum powder containers, and boxed cue chalk squares at the register.

Wooden stools at perimeter drink tables and interior aisle tables.

Uniforms of bartenders and servers.

Size, shape, and color of trash cans.

Existence, shape, and appearance of bar-top video games.

Handles of draft-taps.

Internal layout of bar and laminate top of bar.

The type, shape, configuration, and color of the drop ceiling.

Both parties conducted extensive discovery, including depositions of employees and patrons of both establishments. Clicks submitted photographs of Clicks and Sixshooters, and the district court conducted visits to the two Clicks and one Sixshooters pool halls, though not in the presence of the parties or their attorneys. Clicks also submitted a survey purporting to provide support for a finding of secondary meaning and likelihood of confusion. The district court granted summary judgment to Sixshooters, finding that Clicks had not presented sufficient evidence to raise a triable issue of fact on the basic trademark issues of functionality, secondary meaning, and likelihood of confusion.

STANDARD OF REVIEW

We review de novo a grant of summary judgment. Balint v. Carson City, 180 F.3d 1047, 1050 (9th Cir. 1999) (en banc). Viewing the evidence in the light most favorable to the nonmoving party (Clicks) and drawing all reasonable inferences in its favor, we must determine whether the district court correctly applied the relevant substantive law and whether there are any genuine issues of material fact. See id.

ANALYSIS

Trade dress refers generally to the total image, design, and appearance of a product and "may include features such as size, shape, color, color combinations, texture or graphics." Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993) (internal quotation marks and citations omitted). It is well settled that restaurants and similar establishments may have a total visual appearance that constitutes protectable trade dress. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 (1992) (describing protectable trade dress of Mexican restaurant as "a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings, and murals"); Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.3d 837, 841 (9th Cir. 1987) ("[A] restaurant's decor, menu, layout and style of service may acquire the source-distinguishing aspects of protectable

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trade dress. . . ."); cf. Shakey's Inc. v. Covalt, 704 F.2d 426, 430 (9th Cir. 1983) (claimed aspects of pizzeria's trade dress included menu content, prices, pizza ingredients, and "style" of preparation).

To sustain a claim for trade dress infringement, Clicks must prove: (1) that its claimed dress is nonfunctional; (2) that its claimed dress serves a source-identifying role either because it is inherently distinctive¹ or has acquired secondary meaning; and (3) that the defendant's product or service creates a likelihood of consumer confusion. See Disc Golf Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1005 (9th Cir. 1998); Fuddruckers, 826 F.3d at 841. The district court held that Clicks did not present evidence sufficient to create a triable issue of fact on any of the three elements. We address them in turn.

I. FUNCTIONALITY

The first hurdle Clicks must overcome is functionality. Trade dress protection extends only to design features that are nonfunctional. As the Supreme Court explained, "A product feature is functional and cannot serve as a trademark if the product feature is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant, non-reputation-related disadvantage." Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 165 (1995); accord Traffix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255, 1259 (2001). Functionality is a question of fact. Fuddruckers, 826 F.2d at 843 (citing Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1028-29 (9th Cir. 1983)).

Although trade dress had already been recognized by courts as worthy of protection under the Lanham Act, in 1999 Congress amended the Act to make this statutory protection explicit. And, although the amendment took effect after the filing of this case, it confirms the functionality limitation on trade dress:

In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.

15 U.S.C. §1125(a)(3).As the Supreme Court observed: "This burden of proof gives force to the well-established rule that trade dress protection may not be claimed for product features that are functional." Traffix Devices, 121 S. Ct. at 1259.

This court in Fuddruckers--a case bearing many similarities to this one--shed considerable light on the precise meaning of functionality in the context of a restaurant's trade dress.² The court stressed

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the importance of evaluating the establishment's "combination of visual elements `that, taken together, . . . may create a distinctive visual impression.' " Fuddruckers, 863 F.2d at 842 (quoting Falcon Rice Mill v. Cmty. Rice Mill, 725 F.2d 336, 346 (5th Cir. 1984)). The fact that individual elements of...