Walker & Zanger, Inc. v. Paragon Industries, Inc.

• Citation: 549 F.Supp.2d 1168
• Decision Date: 03 May 2007
• Docket Number: No. C-04-1946 VRW.,C-04-1946 VRW.
• Court: U.S. District Court — Northern District of California
• Parties: WALKER & ZANGER, INC., Plaintiff, v. PARAGON INDUSTRIES, INC., Defendant.

549 F.Supp.2d 1168

WALKER & ZANGER, INC., Plaintiff, v. PARAGON INDUSTRIES, INC., Defendant.

No. C-04-1946 VRW.

United States District Court, N.D. California.

May 3, 2007.

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Morgan William Tovey, Reed Smith Crosby Heafey, William R. Overend, Reed Smith LLP, San Francisco, CA, Tracy Zurzolo Frisch, Reed Smith LLP, Philadelphia, PA, for Plaintiff.

I. Braun Degenshein, Oakland, CA, for Defendant.

AMENDED ORDER

VAUGHN R. WALKER, Chief Judge.

[The order, previously entered on December 1, 2006, is amended to correct a misquotation of 17 USC § 410(c) derived from misleading Ninth Circuit case law. See infra at 26-27. There are no other changes in the order.]

Walker & Zanger, Inc filed this action May 18, 2004, against Paragon Industries, Inc, alleging a variety of claims under the Lanham Act, the Copyright Act, state unfair competition law and state false advertising law. Compl. (Doc. # 1).

Defendant moves for summary judgment on plaintiffs claims and moves to strike surveys performed by plaintiffs expert Dr. Henry Ostberg. Doc. ## 82, 87. Plaintiff moves to exclude testimony of defendant's expert Travis Culwell. Doc. # 107. For reasons discussed below, the court GRANTS IN PART and DENIES IN PART defendant's motion for summary judgment, DENIES defendant's motion to strike and DENIES plaintiffs motion to exclude testimony.

I

Plaintiff is a producer of high quality stone and ceramic decorative tiles and tile collections for use in a variety of settings. Doc. # 111, Ex. B at 12:16-25, 13:1-15 (Overend decl.). Plaintiffs tiles are nationally marketed in several series, or lines, each of which is devoted to a particular artistic concept, such as a line exemplifying a French provencal theme. Overend decl., Ex. G. The tile lines at issue in this case are the Avignon and Newport lines, which were first promoted in approximately August 1999. Overend deck, Ex. B.

According to plaintiff, the trade dress for the tiles is consistent with the design theme, and, taken as a whole, the design elements of the tiles and their trade dress "create an inherently distinctive and nonfunctional trade dress which readily identifies [plaintiff's] products as being associated with [plaintiff]." Id. The distinctive features of plaintiffs tiles are said to include classical design, colors and glazes that evoke the look of "Old World handiwork." Id. at Ex. D; Id. at Ex. H, at 29:18-25, 47:19-49:25, 55:14-56:2. Other distinguishing characteristics include the depth and dimensions of design relief and the level of intricate detailings. Id. at Ex. E, no. 15; Id. at Ex. G, at 76:21-77:2, 79:3-80:2. Plaintiffs Avignon line, its best selling tile collection, uses a combination of designs, glazes, textures and colors to create a French provencal theme. Id. Ex. G at 18:7-25, 19:12-19, 21:2-23:8. The collection is intended to capture a variety of French-inspired designs, specifically invoking the "look and feel" of French architecture and art "over a large span of time." Id. Ex. G at 18:7-18.

Plaintiff asserts it has put effort and expense into promoting its tiles using the chosen trade dress. Id., Ex. E at no. 16; Ex. H at 108:5-18, 108:22-113:13. This includes advertisements in magazines, newspapers and trade publications and appearances at trade shows. Id. From January 2000 to the filing of the complaint, plaintiff invested over $8 million in this activity. Id. at Ex. A. Plaintiff applied for copyright registration on several of its designs, and on February 11, 2004, it received copyright registration for its "Avignon Romanesque Molding" and "Avignon Triellage Molding" designs. Id. ¶ 13 & Ex. B (copyright registrations).

Plaintiff believes that defendant has been producing, promoting and selling tiles with designs and displays that are confusingly similar to plaintiffs. Doc. # 1 at ¶ 16. Plaintiff further believes that defendant is in the practice of copying the tile designs of its competitors and offering them as its own, assertedly an unfair method of competition. Id. ¶ 17. In this case, the designs allegedly appropriated by defendant include the "Fleur De Lis Border," "Perle Molding," "Triellage Molding" and "Romanesque Molding" tiles from the Avignon line, and the "Westport Molding" tile from the Newport line. Id. ¶ 18. Plaintiff believes not only that defendant has copied these tiles, but also that defendant has displayed the copies using trade dress similar to that used by plaintiff in promoting its corresponding tiles. Id. ¶ 19.

Along with this, plaintiff believes that defendant has made confusing or misleading statements about the relationship between plaintiffs and defendant's tiles. Id. ¶ 20. For example, plaintiff alleges that defendant's representatives have stated that "[defendant's] tiles are the same as [plaintiffs] tiles, but at a much less expensive price." Id. Plaintiff also believes that defendant's representatives have claimed that both plaintiffs and defendant's tiles are made in China, when in fact plaintiff's tiles are not. Id.

After the court dismissed plaintiffs defamation claim pursuant to defendant's Rule 12(b)(6) motion, Doc. # 26, six claims for relief remain. Plaintiff alleges that: (1) defendant has violated section 43(a) of the Lanham Act through unfair competition and false advertising by misappropriating plaintiffs trade dress and making false claims about plaintiffs products; (2) defendant has violated section 43(a) of the Lanham Act by infringing plaintiffs trade dress and thereby confusing consumers as to the origin of defendant's goods; (3) defendant has violated section 43(a) of the Lanham Act by falsely claiming that plaintiffs and defendant's goods have the same origin; (4) defendant has infringed plaintiffs copyrights in its tiles; (5) defendant's conduct violates the California unfair competition law, Cal Bus & Prof Code § 17200; and (6) defendant has engaged in false advertising under California statutory and common law. Defendant seeks summary judgment on all counts.

II

In reviewing a summary judgment motion, the court must determine whether genuine issues of material fact exist, resolving any doubt in favor of the party opposing the motion. "[S]ummary judgment will not lie if the dispute about a material fact is `genuine,' that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Id. And the burden of establishing the absence of a genuine issue of material fact lies with the moving party. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When the moving party has the burden of proof on an issue, the party's showing must be sufficient for the court to hold that no reasonable trier of fact could find other than for the moving party. Calderone v. United States, 799 F.2d 254, 258-59 (6th Cir.1986). Summary judgment is granted only if the moving party is entitled to judgment as a matter of law. FRCP 56(c).

The nonmoving party may not simply rely on the pleadings, however, but must produce significant probative evidence supporting its claim that a genuine issue of material fact exists. TW Elec. Serv. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir.1987). The evidence presented by the nonmoving party "is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson, 477 U.S. at 255, 106 S.Ct. 2505. "[T]he judge's function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Id. at 249, 106 S.Ct. 2505.

III

A

Section 43(a) of the Lanham Act gives a producer a cause of action for the use by any person of "any word, term, name, symbol, or device, or any combination thereof * * * which * * * is likely to cause confusion * * * as to origin, sponsorship, or approval of his or her goods." 15 USC § 1125(a). This cause of action has been extended to cover a product's "trade dress" — a category that traditionally consisted of packaging, but in modern parlance includes the design and shape of the product itself. See Vision Sporis, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir. 1989) (noting that trade dress includes "features such as size, shape, color, color combinations, texture or graphics."). A claim for infringement of trade dress requires a plaintiff to prove three elements: (1) distinctiveness, (2) non-functionality and (3) likelihood of confusion.Kendall-Jackson Winery Ltd. v. E & J Gallo Winery, 150 F.3d 1042, 1046-47 (9th Cir.1998).

Courts exercise "particular caution" when extending protection to product designs because such claims present an acute risk of stifling competition. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir.1997). "While most trademarks only create a monopoly in a word, a phrase or a symbol, granting trade dress protection to an ordinary product design * * * create[s] a monopoly in the goods themselves." Yunnan Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir. 2001).

As a preliminary matter, defendant challenges plaintiffs claim for trade dress on the ground that plaintiff fails to identify the claimed trade dress with particularity. The leading case cited by defendant on the Jieed to articulate trade dress with particularity is Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir.2001). At issue in that case was plaintiffs line of jewelry, about which the Second Circuit noted: "The overall impression conveyed by the Yurman designs that are alleged to embody Yurman's trade dress is a structural, almost industrial motif of twisted multistrand cable, executed with a polished and elegant finish, and set off by gemstones." Id. at 114. The Second Circuit...