Kleck v. Bausch & Lomb, Inc.

• Decision Date: 29 September 2000
• Docket Number: No. SA-99-CA-0416-OG.,SA-99-CA-0416-OG.
• Citation: 145 F.Supp.2d 819
• Court: U.S. District Court — Western District of Texas
• Parties: Jonathan V. KLECK d/b/a Vlad Eyewear, Plaintiff, v. BAUSCH & LOMB, INC.; Bozell Worldwide, a wholly owned subsidiary of True North Communications, Inc.; Lenscrafters, a wholly owned subsidiary of Luxottica Group, S.p.A., and Sunglass Hut International, Inc., Defendants.

Page 819

145 F.Supp.2d 819

Jonathan V. KLECK d/b/a Vlad Eyewear, Plaintiff, v. BAUSCH & LOMB, INC.; Bozell Worldwide, a wholly owned subsidiary of True North Communications, Inc.; Lenscrafters, a wholly owned subsidiary of Luxottica Group, S.p.A., and Sunglass Hut International, Inc., Defendants.

No. SA-99-CA-0416-OG.

United States District Court, W.D. Texas, San Antonio Division.

September 29, 2000.

Richard E. Tinsman, Bernard W. Fischman, Tinsman & Houser, Inc., San Antonio, TX, Glenn Grossenbacher, Kenneth J. Burch, Law Office of Glenn Grossenbacher, San Antonio, TX, Gary M. Grossenbacher, Austin, TX, for Jonathan V. Kleck.

James L. Branton, Branton & Hall, P.C., San Antonio, TX, Ivan Kline, Joseph A. DiBenedetto, Winston & Strawn, New York City, for Bausch & Lomb, Inc., Lenscrafters, Sunglass Hut International, Inc.

R. Laurence Macon, Akin, Gump, Strauss, Hauer & Feld, San Antonio, TX, James L. Branton, Branton & Hall, P.C., San Antonio, TX, Ivan Kline, Joseph A. DiBenedetto, Winston & Strawn, New York City, for Bozell Worldwide.

ORDER ACCEPTING IN PART AND REJECTING IN PART THE RECOMMENDATION OF THE MAGISTRATE JUDGE

ORLANDO L. GARCIA, District Judge.

On this date came on to be considered the Memorandum and Recommendation of United States Magistrate Judge Nancy Stein Nowak (docket no. 73), and the objections of plaintiff Jonathan V. Kleck (docket no. 74), and defendants Bausch & Lomb, Inc. ("B & L"), Bozell Worldwide, Lenscrafters, and Sunglass Hut International, Inc. (docket no. 76). When a party objects to a memorandum and recommendation, the Court is required to make a de novo determination of those portions of the report or proposed findings or recommendations to which objection is made. Kreimerman v. Casa Veerkamp, 22 F.3d 634, 646 (5th Cir.1994), cert. denied, 513 U.S. 1016, 115 S.Ct. 577, 130 L.Ed.2d 492 (1994); 28 U.S.C. § 636(b)(1)(C); FED. R.CIV.P. 72(b).

Lanham Act claim.

Kleck objects to the magistrate judge's recommendation that his trademark infringement claim under § 43(a) of the Lanham Act be dismissed. Clearly, as the magistrate judge correctly noted, trade dress law does not protect "an idea, a concept, or a generalized type of appearance." Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir.1995); Parham v. Pepsico, Inc., 927 F.Supp. 177, 179 (E.D.N.C.1995), aff'd, 86 F.3d 1151 (4th Cir.), cert. denied, 519 U.S. 953, 117 S.Ct. 368, 136 L.Ed.2d 258 (1996). It is also clear, however, that trade dress protection can extend to specific advertising, sales, and marketing techniques. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n. 1, 112 S.Ct. 2753, 2755 n. 1, 120 L.Ed.2d 615 (1992) (trade dress, defined as the "total image" of a product, may include sales techniques) (quoting John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir.1983)); Murphy v. Provident Mutual Life Insurance Co., 756 F.Supp. 83, 86 (D.Conn.) (when an advertising theme is expressed in specific and tangible words or symbols, those words or symbols may be protectable), aff'd, 923 F.2d 923 (2d Cir.1990), cert. denied, 502 U.S. 814, 112 S.Ct. 65, 116 L.Ed.2d 40 (1991); Chuck Blore & Don Richman, Inc. v. 20/20 Advertising, Inc., 674 F.Supp. 671, 682 (D.Minn.1987) (summary judgment precluded because of possible claim for § 43(a) trade dress infringement for copying the style and format of a television commercial based on possibility of confusion concerning sponsorship of commercial); Harlequin Enterprises Ltd. v. Gulf & Western Corp., 503 F.Supp. 647, 649 (S.D.N.Y.1980) (product's image may be created by advertising materials or techniques that the purchasing public has come to associate with a single source), aff'd 644 F.2d 946 (2d Cir.1981).

Ideas and concepts that are too general will not be protected. See, e.g., Prufrock, Ltd. v. Lasater, 781 F.2d 129, 132 (8th Cir.1986) (concept of "informal country dining" cannot be validly claimed as trade dress); Fashion Victim Ltd. v. Sunrise Turquoise, 785 F.Supp. 1302, 1308 (N.D.Ill.1992) (protecting t-shirt designs of skeletons engaged in assorted sexual positions would place a monopoly on a fashion idea itself); Haagen-Dazs, Inc. v. Frusen Gladje, Ltd., 493 F.Supp. 73, 75 (S.D.N.Y. 1980) (no protection for Haagen-Dazs's "unique Scandinavian marketing theme" used to promote its premium ice cream). On the other hand, concrete expressions of such ideas will be protected. See, e.g., Hartford House Ltd. v. Hallmark Cards Inc., 846 F.2d 1268, 1274 (10th Cir.) ("Blue Mountain has not been granted exclusive rights in an artistic style or in some concept, idea, or theme of expression. Rather it is Blue Mountain's specific artistic expression, in combination with other features to produce an overall Blue Mountain look, that is being protected."), cert. denied, 488 U.S. 908, 109 S.Ct. 260, 102 L.Ed.2d 248 (1988); Philip Morris Inc. v. Star Tobacco Corp., 879 F.Supp. 379, 383 (S.D.N.Y.1995) (trade dress in advertisements of plaintiff's Marlboro cigarettes, which juxtaposed the product with a setting of the American West through its "Marlboro Country" and "Marlboro Man" images, was inherently distinctive and thus protectable).¹

The distinction between an unprotectable generalized concept or idea for a product and a protectable concrete expression of an idea may often, as in the present case, be a close one. See Milstein, 58 F.3d at 33; Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1182 (5th Cir.1980) ("Trademark cases often involve line drawing in areas that are inherently `fuzzy.'"), cert. denied 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816 (1981). Milstein suggests that a court faced with this task keep in mind the purpose of trade dress law:

to protect an owner of a dress in informing the public of the source of its products, without permitting the owner to exclude competition from functionally similar products. The line drawing task is ... to distinguish an unprotectable idea from a protectable expression of the idea.

Milstein, 58 F.3d at 33.²

Two cases involving the "Cabbage Patch Kids" perhaps serve to illustrate the distinction between a mere marketing idea and a specific marketing or sales presentation with sufficient embodiment to be considered protectable dress. In Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821 (11th Cir.1982), a precursor of the Cabbage Patch Kids obtained trade dress protection against the defendant, a manufacturer of soft-sculptured dolls that, like plaintiff's dolls, came with adoption papers, a birth certificate, and the creator's name on each doll's buttock. The court found that these accouterments, although marketing techniques, were protectable trade dress. 684 F.2d at 831. In the second Cabbage Patch case, Original Appalachian Artworks, Inc. v. Blue Box Factory, 577 F.Supp. 625 (S.D.N.Y.1983), the court also accepted the view that these accouterments — adoption papers, birth certificates, promises of birthday cards, and the creator's signature on each left buttock — are trade dress. Id. at 631-32. Defendant also produced "soft-bodied" dolls, which it marketed as the "Flower Kids." But since the defendant's dolls had none of these features, the court denied plaintiff's request for § 43(a) protection. Id. The court also held that other trade dress the plaintiff sought to claim (a transparent plastic window on the boxes the dolls were sold in) was unprotectable as a "commonly used, functional device for displaying dolls." Id. at 631.

Kleck seeks protection for his trademarks and trade dress, which he alleges to include his tradename ("Vlad Eyewear"), trademarked logo (a "V" with fangs protruding from the letter),³ fangs, bats, coffins, slogans (such as "Sunglasses even a Vampire can live with" and "Vampires stay in the shade"), and depictions of actors posing as vampires wearing Vlad Eyewear in advertisements and promotions. Second Amended Original Complaint at ¶¶ 9, 20. He alleges that since 1996 he has been marketing his sunglasses using these themes and accouterments, has sold his eyewear to consumers, and has accepted an order for his eyewear in excess of $1,000,000 from a British merchant. It seems apparent that Kleck's marketing techniques and advertisements of actors posing as vampires, and his use of vampire symbols to convey the suggestion that his sunglasses protect vampires from the glare of sunlight, constitute trade dress. In other words, these elements have crossed the line from an unprotectable idea to a protectable expression of the idea.

Once this principle is accepted, it follows that whether Kleck's trade dress is inherently distinctive and whether there is a likelihood of confusion between Kleck's trade dress and Bausch & Lomb's similar advertising campaign are fact questions.⁴ See Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 792 (5th Cir. 1983) (categorization as distinctive or nondistinctive is a factual issue); Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 196 (5th Cir.1998) (likelihood of confusion is a question of fact). Therefore, dismissal of Kleck's claim under § 43(a) of the Lanham Act would be improper.

State law claims.

1. Unfair competition, breach of fiduciary duty, and civil conspiracy.

Neither side objected to the magistrate judge's recommendations concerning Kleck's unfair competition, breach of fiduciary duty, and civil conspiracy claims. Finding the recommendations neither clearly erroneous nor contrary to law, I will accept them, and these claims will be dismissed.

2. Breach of contract.

The magistrate judge converted defendants' motion to dismiss Kleck's breach of contract claim to a motion for summary judgment. The remainder of Kleck's state-law claims were analyzed under the standard of review pertaining to motions to dismiss.

Defendants point out that the confidentiality agreement contains no term providing that B & L will pay for Kleck's idea. Absent an express promise to pay, defendants...