Roulo v. Russ Berrie & Co., Inc.

• Citation: 886 F.2d 931,12 USPQ2d 1423
• Decision Date: 09 November 1989
• Docket Number: Nos. 88-2270,88-2600,s. 88-2270
• Parties: , 1989 Copr.L.Dec. P 26,478, 12 U.S.P.Q.2d 1423 Georgia Lee Miller ROULO, Plaintiff-Appellee, Cross-Appellant, v. RUSS BERRIE & CO., INC., Defendant-Appellant, Cross-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

Page 931

886 F.2d 931

58 USLW 2257, 1989 Copr.L.Dec. P 26,478,

12 U.S.P.Q.2d 1423

Georgia Lee Miller ROULO, Plaintiff-Appellee, Cross-Appellant, v. RUSS BERRIE & CO., INC., Defendant-Appellant, Cross-Appellee.

Nos. 88-2270, 88-2600.

United States Court of Appeals,

Seventh Circuit.

Argued June 5, 1989.

Decided Oct. 2, 1989.

Rehearing and Rehearing En Banc Denied Nov. 9, 1989.

William T. McGrath, Michael P. Connelly, Chadwell & Kayser, Chicago, Ill., for plaintiff-appellee, cross-appellant.

Charles A. Laff, Lawrence R. Robins, Larry L. Saret, Howard B. Rockman, Laff, Whitesel, Conte & Saret, Chicago, Ill., for defendant-appellant, cross-appellee.

Before CUMMINGS, WOOD, Jr., and RIPPLE, Circuit Judges.

CUMMINGS, Circuit Judge.

Defendant, Russ Berrie & Co., Inc. (Berrie), appeals from a judgment entered on a jury verdict of $4.3 million in favor of plaintiff, Georgia Lee Miller Roulo (Roulo), for infringement of her copyright and trade-dress rights in a greeting card line known as "Feeling Sensitive" (FS) cards. Roulo's FS cards are single-faced greeting cards with engraved sentimental messages appropriate for holidays and other emotional occasions. She first introduced her FS cards in July 1977 and promoted them herself until October of 1977, when she began negotiations with Berrie for a distribution agreement. The parties entered into a two-year contract under which Berrie would exclusively manufacture, distribute and sell FS cards, remitting 10% of the sales receipts to Roulo as compensation for the use of her cards, while Roulo retained the ownership of her copyright and trade dress.

The FS cards were sold by Berrie pursuant to the agreement from approximately April 1978 to April 1980. Roulo indicated in late 1979 that she did not intend to renew the contract, prompting Berrie to begin development of a comparable greeting card line to be known as "Touching You" (TY) to substitute for the lost FS product, which it introduced in July 1980 at the Chicago Gift Show. Roulo observed the TY line at the Chicago Gift Show where she was also promoting another line of greeting cards. This suit for infringement of her FS line under the Lanham (15 U.S.C. Roulo's action was tried to a jury in a bifurcated trial of liability and damages. The jury returned a verdict in her favor under both the Lanham and Copyright Acts, awarding Roulo $4.3 million in damages based on Berrie's profits from the TY line. Berrie has launched an exhaustive attack on the jury's verdict and the district judge's rulings on pre-trial and post-trial motions. Roulo has cross-appealed from the district judge's denial of attorney's fees.

Sec. 1051, et seq.) and Copyright Acts (17 U.S.C. Sec. 101, et seq.) was filed in April 1982.

Since Berrie's challenges on appeal inextricably involve the visual appearance of the two greeting card lines, and indeed a display of each was presented to the jury for a side-by-side comparison, a detailed description of each is necessary and black and white reproductions of the cards are appended to this opinion. Roulo's FS cards are beige, single-face (no fold) cards containing sentimental verses and frequently using ellipses written in Roulo's handwriting with brown ink. An example of a verse reads: "I want to shout and tell the world how much I love you ... but instead I'll just ... whisper." Flanking the message on the left and right borders are a series of four stripes, two silver foil stripes enveloping one brown and one colored stripe in the middle. The FS cards are displayed in a four-sided freestanding rotating rack, each side containing eight cards of the same colored stripe displayed vertically. At the top of the rack is a removable header bearing a sketch of Roulo's likeness, her name, and the words " 'Feeling Sensitive'... A lost and found department for those with feelings ... in search of the words." The backs of the FS cards indicate that the verses are taken from Roulo's book "I'll See You Sometime ... Between Now and Soon." Each card was priced at eighty cents.

The TY cards are designed for occasions similar to the FS line, employing like, although not identical, sentimental verses. The TY cards are identically sized and priced, single-face cards on cream paper with cursive written messages in brown ink. The cards combine two stripes of color on the left side and one colored stripe on the right side, none of which are in foil. A colored foil butterfly is superimposed on the left stripes. The TY cards were also displayed in a four-sided, 32-card rack with each side displaying a single color scheme.

I. TRADE-DRESS INFRINGEMENT

"Trade dress" refers to the total image of a product, including features such as "size, shape, color or color combinations, texture, graphics, or even particular sales techniques." John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir.1983). An infringement of the trade dress is proven if: (1) the plaintiff's trade dress is inherently distinctive or has acquired secondary meaning, (2) the plaintiff's trade dress is primarily non-functional, and (3) the defendant's trade dress is confusingly similar, engendering a likelihood of confusion in the marketplace. AmBrit, Inc. v. Kraft, Inc., 805 F.2d 974, 978 (11th Cir.1986), certiorari denied, 481 U.S. 1041, 107 S.Ct. 1983, 95 L.Ed.2d 822. As an affirmative defense, the alleged infringer may demonstrate that the trade dress has been abandoned. Prima facie evidence of abandonment is established by nonuse of the trade dress for two years, shifting the burden of production to the trade-dress owner to explain the nonuse or establish the existence of an intent to resume use. Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 99 (5th Cir.1983). Berrie challenges the trade-dress verdict, arguing that Roulo failed to demonstrate that her trade dress was distinctive or had acquired secondary meaning, failed to establish a likelihood of confusion between the two greeting card lines, and failed to rebut the presumption of abandonment of the greeting cards arising from their nonuse for two years.

The purpose of trademark and trade-dress protection is to enable a business to identify itself efficiently as the source of a given product through the Here Berrie asserts that Roulo has failed to demonstrate that the elements of her trade dress are distinctive or have acquired secondary meaning. Specifically, Berrie contends that Roulo's cards incorporated several common features such as stripes, dots, handwriting and other common design elements which are indigenous to all greeting cards and do not represent a trade-dress element capable of protection. To establish her claim of distinctiveness, Roulo introduced testimony of Sally Hopkins, a Hallmark cards curator, who testified that she was unable to find any cards in their collection from this century containing the same combination of elements as used in the FS line. In the alternative, Roulo introduced as evidence of secondary meaning the fact that her name and likeness appeared on the header to the rack displaying the cards, evidence of the success of her greeting cards as revealed by letters written to Berrie inquiring about Roulo's book of verse, an article in Greetings Magazine featuring her card line, and testimony by Berrie that her cards were as unusual as those of Boynton and Davis, other famous card designers. Roulo was also given 10% of sales, the highest percentage share of the sales receipts ever agreed to by Berrie for any card designer.

                adoption of a mark which may be in the form of a slogan, symbol, ornamental design or other visual insignia.  A mark or trade dress which is fanciful, arbitrary or otherwise distinctive is given protection more readily than a generic or descriptive trademark or trade dress that is functional since appropriation of generic words, marks or dress would prevent producers from accurately describing or denoting the quality or content of their goods.  Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th Cir.1986).  Hence common words necessary to describe the goods in question such as "greeting card" or a trade-dress element such as an envelope for a greeting card are not capable of appropriation, at least not in the absence of extraordinary evidence indicating secondary meaning, i.e., that the common features have come to denote a single producer in the minds of the consuming public.  It is therefore easier to secure protection for a fanciful mark or trade dress such as "Twinkie" than a more suggestive or descriptive mark such as "M-TV".  When a trademark or trade dress is inherently distinctive or fanciful, it is unnecessary to make the further showing that the mark or dress has become associated with a single producer.  Blau Plumbing, 781 F.2d at 608;  AmBrit, 805 F.2d at 979.    If the mark is not distinctive such that a showing of secondary meaning is required, it is not necessary that the public be aware of the identity of the producer, but simply that the public associate the mark or dress with a single source.  Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d 852, 856 (7th Cir.1982)
                

In order to undermine Roulo's evidence, Berrie simply asserts that Roulo failed to offer any evidence to demonstrate that her cards had acquired secondary meaning. Although Roulo did not offer any empirical evidence that consumers identified her trade dress with the Roulo name, there was certainly adequate evidence to allow the jury to conclude that Roulo's FS cards were distinctive. The adequacy of this evidence is augmented by Berrie's admission that the TY line was modeled after Roulo's FS cards once it was clear that Roulo would not renew her contract with Berrie. The fact that Berrie gave Roulo one of the highest commissions for her cards is also strong evidence that her line was unique. The fact that her cards incorporated common, indistinct elements such as lines and handwriting does not refute the...