EZ Pedo, Inc. v. Mayclin Dental Studio, Inc.
| Decision Date | 14 February 2018 |
| Docket Number | No. 2:16–cv–00731–KJM–CKD,2:16–cv–00731–KJM–CKD |
| Citation | 284 F.Supp.3d 1065 |
| Parties | EZ PEDO, INC., a California corporation, Plaintiff, v. MAYCLIN DENTAL STUDIO, INC., a Minnesota corporation, individually and dba Kinder Krowns; and Does 1–10, Defendants. |
| Court | U.S. District Court — Eastern District of California |
Michael Leon Meeks, Paul J. Fraidenburgh, Buchalter, A Professional Corporation, Irvine, CA, for Plaintiff.
Timothy C. Matson, PHV, Pro Hac Vice, Adam Payson Gislason, Fox Rothschild LLP, Minneapolis, MN, for Defendants.
The parties sell similar pediatric dental crowns. Plaintiff EZ–Pedo, Inc. sues defendant Mayclin Dental Studio, Inc. for copying the "look and feel" of its dental crown advertisements. Specifically, plaintiff brings trade dress and trademark infringement claims, state and federal unfair competition and false advertising claims, and deceptive trade practice claims. Defendant moves for partial summary judgment, arguing three specific advertisements are not protectable trade dress or trademarks. Mot., ECF No. 42. Plaintiff opposes. Opp'n, ECF No. 45. The court heard oral argument on May 5, 2017. ECF No. 48.
As explained below, the court GRANTS defendant's motion.
EZ–Pedo is a California corporation that manufactures and markets "prefabricated pediatric zirconia crowns," which are colorless, durable, all-ceramic crowns that mask disfiguration or stains on children's teeth. See Compl., ECF No. 1, ¶ 5.2 EZ–Pedo sells its pediatric zirconia crowns to dentists throughout the United States. Id. ¶¶ 11, 12. Defendant is a Minnesota corporation and competitor that sells similar pediatric zirconia crowns under the business name Kinder Krowns. Id. ¶ 6.
EZ–Pedo asserts defendant has intentionally copied four of EZ–Pedo's dental crown advertisements, and brings eight claims: Three federal Lanham Act claims, brought under 15 U.S.C. § 1051 et seq. , three California law claims and two Minnesota law claims. See id. ¶¶ 48–85 Defendant moves for partial summary judgment on a discrete issue: Whether plaintiff owns valid and protectable trademark or trade dress rights in three of the four advertisements it alleges defendant copied, as is required to succeed on plaintiff's Lanham Act claims. See generally Mot. Plaintiff's opposition focuses only on trade dress, not trademark. See generally Opp'n. When asked at hearing, plaintiff's counsel confirmed its focus is solely on trade dress. The court thus treats plaintiff's omission of any trademark discussion as a concession that its Lanham Act claims as to the three advertisements at issue here derive exclusively from trade dress rights. See United States v. Kitsap Physicians Serv. , 314 F.3d 995, 999 (9th Cir. 2002) (). This order therefore assesses whether a reasonable fact finder could find the three advertising campaigns constitute protectable trade dress.
Plaintiff's claimed "Beach Girl" trade dress derives from an advertisement that centers on a stock photograph of a young girl on the beach that plaintiff downloaded in December 2013 from a third-party website, iStockphoto.com. Statement of Undisputed Facts ("SUF") 2, ECF No. 43; see also Pl.'s SUF Responses, ECF No. 45–1. Plaintiff did not create or take this photograph, see SUF 2–3, nor does the record show plaintiff owns or owned exclusive rights to it. Although EZ–Pedo has never printed the Beach Girl image on its product packaging, SUF 14, beginning in March 2014, EZ–Pedo used the Beach Girl advertisement in print distributed at the 2014 annual meetings of the California Society of Pediatric Dentistry ("CSPD") and the American Academy of Pediatric Dentistry ("AAPD"); both organizations also featured the Beach Girl advertisement in their trade journals; and EZ–Pedo displayed the image on secondary pages of EZ–Pedo's website. Fisher Decl.,3 ECF No. 45–3, ¶¶ 9–10. For years, pediatric crown manufacturers, including plaintiff and defendant, have used photos of children to market and promote pediatric crowns, and the photos have appeared in trade journals and magazines. SUF 15–16 ().
Plaintiff contends it stopped investing in this trade dress within four months after its first use, in July 2014, after discovering defendant had copied it for use and displayed it in AAPD's July 2014 print journal. Fisher Decl. ¶¶ 13–14.
See id. ¶ 13 (Figure 2).
Plaintiff crafted its claimed Gears trade dress in mid–2014. Id. ¶ 17. This design appears in an advertisement that depicts a photograph of metal gears plaintiff downloaded from a third-party website; the photograph is placed beside the slogan, "engineered for a precision fit," which plaintiff first used in flyers, brochures and on secondary website pages, in mid–2014. SUF 19, 22. Plaintiff has never used this image on product packaging. SUF 21. Plaintiff contends it stopped using this trade dress in June 2015, after discovering defendant had copied it to advertise its "Less Prep" crown line on its company website. Fisher Decl. ¶¶ 18–19. As shown below, plaintiff's Gears advertising incorporates images of two white tooth crowns viewed from the side; Defendant's incorporates an image of a blue crown viewed from the bottom.
See Fisher Decl. ¶ 18 (Figure 4).
Plaintiff's claimed "Blue CAD" trade dress depicts a computer-aided drawing ("CAD") of a deep-blue-colored tooth with visible contours. See Compl. ¶¶ 35–40. The software program "3Shape 3D Viewer," through which the drawing was created, opens in such a manner to display images as one of three default color choices: Purple, grey or deep blue, with the actual color applied to the image selected by the user. See Vladimir Scherbak Decl., ECF No. 45–6, ¶ 6(b)-(g). Plaintiff first used this Blue–CAD image at a trade show in mid–2013. Fisher Decl. ¶ 5. Then, in 2014, plaintiff began associating the Blue–CAD image with a specific "V2" crown line. Id. ¶ 6. The Blue–CAD image was featured in plaintiff's print advertising, trade-show banners, brochures, flyers and on its website. Id. (); SUF 25. Plaintiff has never displayed the Blue–CAD image on its physical products or product packaging. Plaintiff says it did start placing small blue dots on its V2 crowns in 2014; these dots, however, are not depicted in the summary judgment record, and there is no representation they are shaped like a tooth. See Fisher Decl. ¶ 7; see also Pl.'s Ex. A (attached to Fisher Decl.), ECF No. 45–4. Plaintiff contends defendant began copying the Blue–CAD advertisement in May 2014, by using the image shown below on its website, www.kinderkrowns.com, to market and sell its own line of "Less Prep" crowns. Fisher Decl. ¶ 8.
See id. (Figure 1).
As noted, defendant moves for summary judgment on all Lanham Act claims deriving from these three advertisements, contending plaintiff has not shown any of them constitutes protectable trade dress.
A court will grant summary judgment "if ... there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The "threshold inquiry" is whether "there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
The moving party bears the initial burden of showing the district court "there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett , 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Then the burden shifts to the non-movant to show "there is a genuine issue of material fact ...." Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 585, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). In carrying their burdens, both parties must "cit[e] to particular parts of materials in the record ...; or show [ ] that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(1) ; see also Matsushita , 475 U.S. at 586, 106 S.Ct. 1348 (). Also, "[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson , 477 U.S. at 247–48, 106 S.Ct. 2505.
In deciding summary judgment, the court draws all inferences and views all evidence in the light most favorable to the non-movant. Matsushita , 475 U.S. at 587–88, 106 S.Ct. 1348. "Where the record taken as a whole could not lead a rational trier of fact to find for the [non-movant], there is no 'genuine issue for trial.' " Id. at 587, 106 S.Ct. 1348 (quoting First Nat'l Bank of Ariz. v. Cities Serv. Co. , 391 U.S. 253, 289, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968) ).
The Lanham Act is the federal statute governing trademark and trade dress protection, unfair competition and false advertising. See 15 U.S.C. § 1051 et seq. The Act defines when trademark and trade dress owners are entitled to federal judicial protection against infringement. A trademark can be a word, such as the brand name "McDonald's"; a phrase, such as "I'm lovin' it"; a logo, such as golden arches; a symbol; or some other mark that...
To continue reading
Request your trial