Pet Gifts United States, LLC v. Imagine
| Decision Date | 29 March 2018 |
| Docket Number | Civil Action No: 14-cv-3884 (PGS)(DEA) |
| Parties | PET GIFTS USA, LLC, Plaintiff, v. IMAGINE THIS COMPANY, LLC, et al., Defendants. |
| Court | U.S. District Court — District of New Jersey |
This matter comes before the Court on Defendants Imagine This Company (hereinafter, "ITC") and Twelve, Inc.'s Motion for Summary Judgment. (ECF No. 99). Having previously dismissed Counts I through V of Plaintiff Pet Gift USA, LLC's Complaint with prejudice (ECF No. 72), Defendants now seek summary judgment dismissal of Plaintiff's remaining claim, Count VI, which alleges trade dress infringement under N.J.S.A. § 56:4-1. For the reasons discussed herein, Defendants' motion for summary judgment is granted.
Plaintiff Pet Gifts, a sole proprietorship that designs and produces animal-themed products, including dog bone and paw magnets, brought this lawsuit against Defendant ITC, alleging trade dress infringement. Pet Gifts describes its magnet trade dress as:
a) the dimensions of the packaging including the header card; b) shaped to correspond to the bone or paw shaped magnets; c) paw shaped magnets are 5.5" x 5.5" and Bone shaped magnets are 2.25" x 7"; d) thickness is .30 mil; e) humorous slogans provided by Plaintiff; f) the paw magnets are black with a white border and white lettering inside the magnet, the bone magnet are [sic] white with a black border including black "swoosh" symbol and red heart, the header cards are black offset with white lettering with "made in America" printed on the front, as well as "Instructions For Use" on the back.
(Defendants' Statement of Material Facts [SOMF] at ¶ 66). At deposition, Pet Gifts' co-owner, Elicia Kessler, described the trade dress more simply as "a black-and-white header card, a poly bag, stapled on the outside corners by people with disabilities . . . we were identified in the marketplace with this magent in a black-and-white header card attached to a poly bag." (Id. at ¶ 68; ECF No. 99-8, "Kessler Deposition" at 103-04).
Since the early 1990s, ITC has sold outdoor novelty car magnets, which it designs and produces at its printing facility. (Id. at ¶¶ 6-7). According to ITC, in 2005, it added dog bone and paw shaped car magnets to its production line, which were sold shortly thereafter. (Id. at ¶¶ 10-12). "The paw prints consisted of a black paw on a white background, while the bone magnets are depicted in white with [a] black outline." (Id. at ¶ 15). Within these magnets, ITC included humorous slogans, such as: "My Cat Tolerates Me," "My Dog Loves Me," and "I Hate My Cat." (Id.). In late 2005, ITC also prepared a four-page sales brochure, which depicted the various pet-themed magnets that ITC had to offer. (Id. at ¶ 16). The 2005 brochure was part of a marketing effort by ITC to expand its sale to new commercial consumers, primarily retailers. (Id. at ¶ 17). As a result of its marketing efforts, ITC distributed bone and paw shaped magnets beginning in 2005; some of these orders were customized, with unique or personalized phrases placed within the magnet, while others were stock items. (Id. at ¶ 20). According to ITC, many of its bone and paw shaped magnets were unpackaged and delivered in bulk; however, in late 2005, it began packaging its products, using a shrink-wrapped transparent plastic affixed with a header card that said, "I Love My Pet Magnets." (Id. at ¶ 25). An image of this packaging is depicted below:
Image materials not available for display.
(Id.).
In February 2007, ITC's co-owner, Beverly Moss, met Kessler at the Henrico Pet Expo in Virginia. (Id. at ¶ 34). According to ITC, Kessler had learned that another company involved in the novelty pet magnet business purchased its magnets from ITC. (Id. at ¶ 33). During this communication, the parties discussed the possibility of Pet Gifts purchasing magnets directly from ITC. (Id. at ¶ 34). Over the next few months, ITC and Pet Gifts exchanged emails, regarding orders for pet magnets from ITC's 2005 Brochure. (Id. at ¶ 37). On April 23, 2007, Pet Gifts placed its first order from ITC for bone shaped car magnets. (Id. at ¶ 44). Prior to preparing the order, ITC sent Pet Gifts a proof sheet to ensure that the magnets would be printed in accordance with Pet Gifts' specifications. (Id. at ¶ 45). According to ITC, the proof sheet also included language that stated, "Imagine This Company was reserving for itself the rights and designs that it sells." (Id. at ¶ 46). Pet Gifts, however, claims that this language was illegible and it did not understand the proof sheet as reserving ITC with the rights to Pet Gifts' designs. (Plaintiff's SOMF at ¶ 42).
Thereafter, Pet Gifts sought ITC's assistance in printing a paper header card from which Pet Gifts magnets could hang. (Defendants' SOMF at ¶ 51). The design was a black header card, with white font, that said "Magnetic Pedigrees," attached to the header card was a transparentplastic poly bag, which would contain the magnet. (Id. at ¶¶ 52-53). An example of this packaging is depicted below:
Image materials not available for display.
A few months later, in August 2007, ITC changed the packaging of its magnets, now utilizing a single sheet of rigid vinyl, finished with a dark blue header and white font, the magnet is inserted within the rigid vinyl, no plastic poly bag is used. (Id. at ¶¶ 73-74). An example of this packaging is provided below:
Image materials not available for display.Notably, ITC's name is placed not only on the magnet itself, but also on the back of the packaging.
In May 2008, while attending a trade show, Pet Gifts claims to have discovered that ITC was selling its proprietary designs. (Plaintiff's SOMF at ¶ 48). At this trade show, Pet Gifts learned that ITC was printing and producing Pet Gifts' magnets for another competitor, GoToRovers.com. (Amended Complaint at ¶ 37). According to Pet Gifts, "[t]he magnets [ITC] printed and sold to GoToRovers.com were indistinguishable from Pet Gifts' uniquely designed magnets." (Id. at ¶ 38).
On May 29, 2008, ITC received a letter from Pet Gifts, which accused it of "producing an identical line in direct competition with us" and demanded ITC cease selling magnets to GoToRovers.com. (Defendants' SOMF at ¶ 57). The letter later claims, "As you know, it was [Pet Gifts'] idea to develop and produce the humorous paw magnet line." (Id. at ¶ 58).
Thereafter, on July 8, 2008, Pet Gifts sent cease and desist letters to two of ITC's sales representatives, GoToRovers.com and Magyar Enterprises. (Id. at ¶ 59). The letter also claims that Pet Gifts1 had filed applications for copyright registration of certain slogans and phrases that it produced; however, this application was denied. (Id. at ¶ 60). Nevertheless, after receiving these cease and desist letters, both GoToRovers.com and Magyar Enterprises ended their business relationship with ITC. (Id. at ¶ 61).
According to Kessler, she received "a barrage of comments and complaints since customers saw Pet Gifts magnets being sold for cheaper prices." (ECF No. 103-3, "Kessler Declaration" at ¶ 72). As a result, she claims that Pet Gifts has lost business, since ITC is capable of producing and packaging their product at a cheaper cost. (Id. at ¶ 73).
Summary judgment is appropriate under Federal Rule of Civil Procedure 56(c) when the moving party demonstrates that there is no genuine issue of material fact and the evidence establishes the moving party's entitlement to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). A factual dispute is genuine if a reasonable jury could return a verdict for the non-movant, and it is material if, under the substantive law, it would affect the outcome of the suit. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In considering a motion for summary judgment, a district court may not make credibility determinations or engage in any weighing of the evidence; instead, the non-moving party's evidence "is to be believed and all justifiable inferences are to be drawn in his favor." Marino v. Indus. Crating Co., 358 F.3d 241, 247 (3d Cir. 2004) (quoting Anderson, 477 U.S. at 255).
Once the moving party has satisfied its initial burden, the party opposing the motion must establish that a genuine issue as to a material fact exists. Jersey Cent. Power & Light Co. v. Lacey Twp., 772 F.2d 1103, 1109 (3d Cir. 1985). The party opposing the motion for summary judgment cannot rest on mere allegations and instead must present actual evidence that creates a genuine issue as to a material fact for trial. Anderson, 477 U.S. at 248; Siegel Transfer, Inc. v. Carrier Express, Inc., 54 F.3d 1125, 1130-31 (3d Cir. 1995). "[U]nsupported allegations . . . and pleadings are insufficient to repel summary judgment." Schoch v. First Fid. Bancorp., 912 F.2d 654, 657 (3d Cir. 1990); see also Fed. R. Civ. P. 56(e) ().
Moreover, only disputes over facts that might affect the outcome of the lawsuit under governing law will preclude the entry of summary judgment. Anderson, 477 U.S. at 247-48. If a court determines, "after drawing all inferences in favor of [the non-moving party], and makingall credibility determinations in his favor...that no reasonable jury could find for him, summary judgment is appropriate." Alevras v. Tacopina, 226 F. App'x 222, 227 (3d Cir. 2007).
Defendants move for summary judgment of Pet Gifts' trade dress infringement claim, since it has failed to demonstrate that it is primarily nonfunctional and has acquired secondary meaning. Alternatively, Defendants contend that dismissal is warranted since Pet Gifts claims are contractually barred and beyond the statute of limitations.
Because N.J.S.A. § 56:4-1 is the statutory equivalent of Section 43(a) of the Lanham Act, courts assess New Jersey trade dress infringement claims under the Lanham Act. See Bracco Diagnostics, Inc. v. Amersham Health...
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