Pengu Swim Sch. v. Blue Legend, LLC
| Decision Date | 21 April 2023 |
| Docket Number | 4:21-CV-1525 |
| Parties | PENGU SWIM SCHOOL, LLC, et al., Plaintiffs, v. BLUE LEGEND, LLC, et al., Defendants. |
| Court | U.S. District Court — Southern District of Texas |
MEMORANDUM AND ORDER ON CROSS MOTIONS FOR SUMMARY JUDGMENT [1]
This is a trade dress infringement case.[2] The parties are competing swimming schools offering swim lessons to children in the Greater Houston area.[3] In this action, Pengu alleges that Blue Legend copied Pengu's swimming school's distinctive trade dress designs and used them on its swim schools creating a likelihood of consumer confusion between Pengu and Blue Legend. The parties filed cross-motions for summary judgment.[4]
To recover on their trade dress infringement claim, Plaintiffs must show that their trade dress is protectable and Defendants have infringed it. To be protectable in this case Plaintiffs must show that their trade dress was either inherently distinctive or distinctive through acquired secondary meaning. In addition, they have to show that their trade dress was nonfunctional. Based on a thorough review of the briefing, record, and applicable law, the Court finds that Plaintiffs have failed to establish that their trade dress is inherently distinctive, and summary judgment against Plaintiffs is granted on this issue. The Court additionally finds that Plaintiffs have established that their trade dress is nonfunctional and summary judgment in favor of Plaintiffs is granted on this issue. However, a genuine question of fact exists as to whether their trade dress has acquired secondary meaning, and whether Defendants have infringed on their trade dress. Therefore, because there are material issues of fact in dispute, this case will proceed to trial.
In 2013, Pengu swim schools opened for business in the Houston area. L. Hofbauer Aff. ¶ 7, ECF No. 1-1 at 2. Pengu's owner, Lothar Hofbauer, contends that the ideas for the swim school design stemmed from his visit to South Africa in 1994, where he was enthralled with colorful Victorian-style changing houses lining Muizenberg Beach. Id. ¶ 4. According to Plaintiffs, the changing houses were painted bright red, blue, green, and yellow and had A-frame roofs. ECF No. 57 at 67. The colors varied across changing houses, each with altering colors for walls, door trim, and roof trim. Id. at 7. When the Hofbauers decided to build their swim schools, the changing houses in South Africa inspired their design choices. L. Hofbauer Aff. ¶¶ 4-5, ECF No. 1-1 at 2. Plaintiffs contend that their trade dress includes these design elements and colors, creating an overall feel reminiscent of the South African beach. ECF No. 57 at 21. According to Plaintiffs, each of their swim schools use common “visual elements” that contribute to their “total image and overall appearance.” ECF No. 57 at 19, 23; see also ECF No. 1 at ¶ 2.
In 2020, Blue Legend opened two swim schools-one in Katy, Texas, and one in Sugarland, Texas. ECF No. 59 at 6. Plaintiffs assert that Defendants used Pengu's total image and overall appearance in the Blue Legend swim schools, infringing on Plaintiffs' trade dress. ECF No. 57 at 16, 18-34. Plaintiffs seek summary judgment, asserting there is no genuine issue of material fact that their trade dress is protectable, and Defendants' use of their trade dress is infringing because it is likely to cause confusion. Id. at 19-34. To the contrary, Defendants contend Plaintiffs have not presented evidence showing their trade dress is protectable and Blue Legend is entitled to summary judgment in its favor. ECF No. 59 at 21-34; ECF No. 70 at 6-30.
Summary judgment is authorized if the movant establishes that there is no genuine dispute about any material fact and the law entitles it to judgment. FED. R. CIV. P. 56(a). A fact is “material” if its resolution “might affect the outcome of the suit under the governing law.” Parrish v. Premier Directional Drilling, L.P., 917 F.3d 369, 378 (5th Cir. 2019) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). Disputes about material facts are “genuine” “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Brackeen v. Haaland, 994 F.3d 249, 290 (5th Cir. 2021) (quoting Anderson, 477 U.S. at 248)).
The movant carries the initial burden “to identify areas in which there is an absence of a genuine issue of material fact.” Recif Res., LLC v. Juniper Cap. Advisors, L.P., No. CV-H-19-2953, 2020 WL 5739138, at *3 (S.D. Tex. Sept. 24, 2020) (quoting ACE Am. Ins. Co. v. Freeport Welding & Fabricating, Inc., 699 F.3d 832, 839 (5th Cir. 2012)). However, the movant “need not negate the elements of the nonmovant's case.” Magema Tech. LLC v. Phillips 66, Phillips 66 Co., No. CV-H-20-2444, 2023 WL 320180, at *19 (S.D. Tex. Jan. 19, 2023) (quoting Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994)). If the movant meets its burden, the non-movant must “go beyond the pleadings and . . . designate specific facts showing that there is a genuine issue for trial.” Nola Spice Design, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527, 536 (5th Cir. 2015) (cleaned up).
In reviewing the evidence, the Court may “not make credibility determinations or weigh the evidence.” Wells v. Minn. Life Ins. Co., 885 F.3d 885, 889 (5th Cir. 2018) (quoting Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000)). When, as here, parties file cross-motions for summary judgment, “[courts] review each party's motion independently, viewing the evidence and inferences in the light most favorable to the nonmoving party.” DynaEnergetics Eur. GmbH v. Hunting Titan, Inc., No. CV-H-20-2123, 2022 WL 4350264, at *7 (S.D. Tex. Sept. 19, 2022) (quoting Cooley v. Hous. Auth. of the City of Slidell, 747 F.3d 295, 298 (5th Cir. 2014)). However, “[i]f the dispositive issue is one on which the nonmoving party will bear the burden of proof at trial, the moving party may satisfy its burden by merely pointing out that the evidence in the record is insufficient with respect to an essential element of the nonmoving party's claim.” Magema, 2023 WL 320180, at *20 (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986)). “The burden then shifts to the nonmoving party, who must, by submitting or referring to evidence, set out specific facts showing that a genuine issue exists.” Id. (citing Celotex, 477 U.S. at 324). Thus, at this point, “[t]he nonmovant's burden cannot be satisfied by conclusory allegations, unsubstantiated assertions, or only a scintilla of evidence.” Springboards to Educ., Inc. v. Hous. Indep. Sch. Dist., 285 F.Supp.3d 989, 992 (S.D. Tex. 2018), aff'd on other grounds, 912 F.3d 805 (5th Cir. 2019), as revised (Jan. 29, 2019), as revised (Feb. 14, 2019) (quoting Turner v. Baylor Richardson Med. Ctr., 476 F.3d 337, 343 (5th Cir. 2007)).
“Furthermore, it is not the function of the court to search the record on the nonmovant's behalf for evidence which may raise a fact issue.” Springboards, 285 F.Supp.3d 989 at 992 (quoting Topalian v. Ehrman, 954 F.2d 1125, 1137 n.30 (5th Cir. 1992)). Therefore, “the nonmoving party . . . must respond by setting forth specific facts indicating a genuine issue for trial.” Id. at 992 (quoting Goodson v. City of Corpus Christi, 202 F.3d 730, 735 (5th Cir. 2000)). The nonmoving party must also respond by “articulat[ing] the precise manner in which that evidence supports his or her claim.” Diaz v. Kaplan Higher Educ., L.L.C., 820 F.3d 172, 176 (5th Cir. 2016) (quoting Ragas v. Tenn. Gas Pipeline Co., 136 F.3d 455, 458 (5th Cir. 1998)). The nonmoving party's failure “to offer proof concerning an essential element of its case necessarily renders all other facts immaterial and mandates a finding that no genuine issue of fact exists.” Luxottica Grp., S.P.A. v. Ochoa's Flea Mkt., LLC, No. 7:20-CV-00061, 2022 WL 836823, at *9 (S.D. Tex. Mar. 21, 2022) (quoting Adams v. Travelers Indem. Co. of Conn., 465 F.3d 156, 164 (5th Cir. 2006)).
Plaintiffs move for summary judgment contending that their trade dress is protectable and Defendants' copying of it creates a likelihood of confusion between Pengu and Blue Legend. ECF No. 57 at 18-34. Defendants move for summary judgment asserting that Plaintiffs' trade dress is not protectable and warrants summary judgment in its favor. ECF No. 59 at 17, 22-34.[5] The Court addresses each of these issues in turn.
Section 43(a) of the Lanham Act provides a private cause of action for violations of protected trademark rights. 15 U.S.C. § 1125(a)(1)(A). This protection is not limited to registered trademarks but applies to trade dress and is analogous to the common law tort of unfair competition. Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 250-51 (5th Cir. 2010).
“Trade dress refers to the total image and overall appearance of a product and may include features such as the size, shape color, color combinations, textures, graphics, and even sales techniques that characterize a particular product.” Id. at 251 (citations omitted); see also CAP Barbell, Inc. v. HulkFit Prod., Inc., No. CV H-22-2371, 2023 WL 2247057, at *6 (S.D. Tex. Feb. 27, 2023) (quoting the same). Trade dress also includes the “motif” of a restaurant. Sparrow Barns & Events, LLC v. Ruth Farm Inc., No. 4:19-CV-00067, 2019 WL 1560442, at *4 (E.D. Tex. Apr. 10, 2019) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 (1992)). The purpose of trade dress protection is to “secure to the owner of the trade dress the goodwill of [its'] business and to protect the ability of consumers to distinguish among competing products.” Amazing Spaces, ...
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