L. & J.G. Stickley, Inc. v. Canal Dover Furniture Co., Inc.

• Decision Date: 21 March 1996
• Docket Number: No. 95,D,95
• Citation: 79 F.3d 258
• Parties: , 38 U.S.P.Q.2d 1202 L. & J.G. STICKLEY, INC., Plaintiff-Appellee, v. CANAL DOVER FURNITURE CO., INC. and Charles F. Kuder, Individually, Defendants-Appellants. ocket 95-7715.
• Court: U.S. Court of Appeals — Second Circuit

Page 258

79 F.3d 258

64 USLW 2660, 38 U.S.P.Q.2d 1202

L. & J.G. STICKLEY, INC., Plaintiff-Appellee, v. CANAL DOVER FURNITURE CO., INC. and Charles F. Kuder Individually, Defendants-Appellants.

No. 95, Docket 95-7715.

United States Court of Appeals Second Circuit.

Argued Jan. 31, 1996.

Decided March 21, 1996.

Canal Dover Furniture Co., Inc. appeals from a preliminary injunction prohibiting it from displaying, advertising, or shipping particular items of its furniture.

Ray L. Weber, Akron, OH (Sylvia A. Petrosky, Renner, Kenner, Greive, Bobak, Taylor & Weber; Dennis P. Hennigan, Peter D. Carmen, Mackenzie Smith Lewis Michell & Hughes, Syracuse, NY, of counsel), for Defendants-Appellants.

Susan E. Farley, Albany, N.Y. (Nicholas Mesiti, Heslin & Rothenberg, P.C., of counsel), for Plaintiff-Appellee.

Before OAKES and WINTER, Circuit Judges, and SAND, ^* District Judge.

OAKES, Senior Circuit Judge:

This appeal involves trade dress rights in furniture designs associated with Gustav Stickley, a leader of the early 20th century Arts & Crafts movement. Appellee L. & J.G. Stickley, Inc. ("L. & J.G. Stickley") brought suit against Appellant Canal Dover Furniture Co. and its president Charles F. Kuder (collectively referred to as "Canal Dover") for violation of § 43(a) of the Lanham Act, 15 U.S.C. 1125(a) (1994), and common law unfair competition and dilution. L. & J.G. Stickley claimed that certain pieces of Canal Dover furniture infringed upon the distinctive trade dress of L. & J.G. Stickley's Mission Collection furniture designs. The district court, Frederick J. Scullin, Jr., Judge, granted L. & J.G. Stickley a preliminary injunction on the basis of its Lanham Act claim. Specifically, the court found that (1) L. & J.G. Stickley was likely to succeed in proving at trial that there is protectible secondary meaning in the Mission Collection trade dress; and (2) a likelihood of confusion exists between L. & J.G. Stickley's Mission Collection furniture and Canal Dover's furniture. Canal Dover appeals the preliminary injunction. For the reasons set forth below, we vacate the injunction and remand the case for trial.

BACKGROUND

The Arts and Crafts movement, which rejected machine manufacturing and sought a return to craftsmanship, developed at the turn of the century in response to the Industrial Revolution. In the United States, one of the foremost promoters of the Arts and Crafts movement was Gustav Stickley, a furniture maker. The style of furniture made by Gustav Stickley and others in the movement is commonly called "Mission furniture" and is known for its "severely plain and rectilinear style ... visually enriched only by expressed structural features and the warm tones of the wood." David M. Cathers, Furniture of the American Arts and Crafts Movement 1 (1981).

In 1916, Gustav Stickley closed down his Craftsman Shops and joined his brothers L. and J.G. Stickley in business at the Stickley Associated Cabinetmakers, which later became L. & J.G. Stickley, Inc. By 1920, the Arts and Crafts movement had lost its popularity and Mission-style furniture was no longer favored by consumers. L. & J.G. Stickley and other Mission furniture makers ceased production of the furniture in the 1920s. From that time until the 1980s, Mission furniture was not commercially successful, though it did gain a place in history books and museum collections. During this sixty-year period, L. & J.G. Stickley manufactured boat hulls, school desks, and copies of early American antiques.

In the 1980s, Mission furniture regained its popularity, with original pieces of Gustav Stickley furniture commanding extremely high prices at auctions. In 1989, L. & J.G. Stickley decided to capitalize on this renewed interest and began manufacturing its Mission Collection. Though several other craftsmen Other furniture companies also sought to profit from "Mission mania." In April 1993, Canal Dover began manufacturing its Stillwater Collection of Mission-style furniture and expanded its line in 1994 with the Stonehouse Collection. Canal Dover derived the designs of several pieces of its Stillwater and Stonehouse lines, including those at issue in this lawsuit, from furniture design history books. In particular, Canal Dover chose to produce versions of the Gustav Stickley Spindle Chair and a chair designed by Harvey Ellis, a furniture maker at Gustav Stickley's Craftsman Shops. Although Canal Dover was aware that L. & J.G. Stickley was making Gustav Stickley reproductions, it did not take its designs from the Mission Collection nor did it seek to produce exact line-by-line pieces as L. & J.G. Stickley did. The Canal Dover pieces, while of good quality, are lower priced than L. & J.G. Stickley's pieces. Each Canal Dover piece clearly bears the company's mark on the underside of the furniture.

                were making reproductions of Gustav Stickley furniture at the time L. & J.G. Stickley entered the marketplace, L. & J.G. Stickley was the first company widely to commercialize the reproductions.   Several pieces of the collection, including five at issue in this lawsuit, are line-by-line reproductions of Gustav Stickley designs which L. & J.G. Stickley recreated by borrowing original pieces from collectors and museums.   These reproductions clearly bear the L. & J.G. Stickley company mark alongside the old Stickley mark on the underside of the furniture.   The Mission Collection pieces are high quality, distinguished reproductions aimed at the expensive end of the furniture market
                

L. & J.G. Stickley discovered the Canal Dover Stillwater Collection when some of the pieces appeared on the March 17, 1995, cover of Furniture Today. It became aware of the Canal Dover Stonehouse Collection on April 3, 1995, when one of its vice presidents saw an unfinished Canal Dover piece while visiting the factory of Fancher Chair Co., the company with which Canal Dover had contracted to produce certain pieces of the Stonehouse Collection. L. & J.G. Stickley instituted this action on April 11, 1995, claiming that several pieces of Canal Dover's Stillwater and Stonehouse lines looked too similar to six L. & J.G. Stickley pieces: the Spindle Arm Chair, the Spindle Settee, the Spindle Side Chair, the Harvey Ellis Arm Chair, the Harvey Ellis Side Chair, and the Prairie Sideboard. All of these pieces are Gustav Stickley reproductions except the Prairie Sideboard.

The district court entered a preliminary injunction in favor of L. & J.G. Stickley, based on its Lanham Act claim, against each piece of Canal Dover furniture except the Stonehouse Arm Chair, which the court found was sufficiently dissimilar to the Harvey Ellis Arm Chair to not infringe upon L. & J.G. Stickley's trade dress. ¹ The court ordered L. & J.G. Stickley to post a $100,000 bond to secure the preliminary injunction.

DISCUSSION

Canal Dover raises a variety of claims on appeal. Among them is the novel question of whether the trade dress of reproductions can gain secondary meaning which identifies and protects the reproducer. Canal Dover claims that the court erred in finding that L. & J.G. Stickley's Mission Collection of historic reproductions developed secondary meaning from their initial marketing in 1989 until the early 1990s when other furniture manufacturers began selling reproductions. We agree with Canal Dover's contention and vacate the preliminary injunction on that ground. We therefore do not address Canal Dover's other claims.

I. STANDARD FOR A PRELIMINARY INJUNCTION

In order to receive a preliminary injunction, a party must demonstrate (1) that it will suffer irreparable harm if the preliminary injunction is not issued, and (2) that it is likely to succeed on the merits of its claims or, in the alternative, has demonstrated sufficiently serious questions regarding the merits The district court found that L. & J.G. Stickley would suffer irreparable harm without an injunction and was likely to succeed on the merits of its § 43(a) claim. We must therefore turn to the Lanham Act to evaluate the district court's decision.

                of the claims and the balance of hardships tips decidedly in its favor.  Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 967 (2d Cir.1995);  Jackson Dairy, Inc., v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979).   We review the district court's issuance of a preliminary injunction for abuse of discretion.  Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir.1995).  "A failure to consider relevant factors or to apply the proper legal standard constitutes such an abuse."  Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 973-74 (2d Cir.1987)
                

II. THE LANHAM ACT

Section 43(a) of the Lanham Act prohibits any person from using "any false designation of origin" that "is likely to cause confusion, or to cause mistake, or to deceive ... as to the origin ... of his or her goods." 15 U.S.C. § 1125(a)(1)(A) (1994).

As we have explained elsewhere, this section gives a statutory remedy to a party injured by another's "false designation of origin" whether or not the party has secured a federal registered trademark for the item at issue. LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 75 (2d Cir.1985). Although trade dress once "referred only to the manner in which a product was 'dressed up' to go to market with a label, package, display card, and similar packaging elements," the concept now "includes the design and appearance of the product as well as that of the container." Jeffrey Milstein, Inc., 58 F.3d at 31. It is "essentially [the] total image and overall appearance" of a product. Id. (quoting 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)).

In order to prevail on a trade dress claim under § 43(a) of the Lanham Act, a party must first show that the trade dress is inherently distinctive or has become distinctive because it has acquired secondary meaning. Tough Traveler, Ltd., 60 F.3d at...