Walter v. Mattel, Inc.
| Decision Date | 04 September 1998 |
| Docket Number | No. CV-98-2048-RJK.,CV-98-2048-RJK. |
| Citation | 31 F.Supp.2d 751 |
| Parties | Katherine WALTER, a.k.a and d.b.a. Pearl Beach, Plaintiff, v. MATTEL, INC.; Defendant. |
| Court | U.S. District Court — Central District of California |
Paul A. Larsen, Jack S. Yeh, Ku, Fong, Larsen & Chen, LLP, Los Angeles, CA, for plaintiff.
Adrian M. Pruetz, Steven M. Anderson, Brett L. Healy, Steven Vaughan, Quinn, Emanuel, Urquhart, Oliver & Hedges, LLP, Los Angeles, CA, for defendant.
The Court, having read and considered all papers filed in connection with this litigation, including all papers filed in connection with Defendant's Motion for Judgment on Partial Findings Upon Close of Plaintiff's Case, pursuant to FED.R.CIV.P. 52(c), and having heard testimony on August 25, 26, and 27, 1998, hereby orders as follows.
On March 23, 1998, Plaintiff Katherine Walter, also known as and doing business as Pearl Beach ("Plaintiff") filed a Complaint for (1) false designation of origin and false deception under the Lanham Act, 15 U.S.C. § 1125(a), (2) common law unfair competition, and (3) statutory unfair competition under CAL.BUS. & PROF.CODE § 17200 et seq. Plaintiff, a commercial illustrator who provides illustration services and illustrations to professional clients, alleges that in 1997 Defendant Mattel, Inc. ("Mattel") misappropriated her long standing marks when it began promoting and distributing a line of "Pearl Beach Barbie" dolls, which she claims not only used her name but copied her pearl & shell logo on the product packaging as well.
On July 13, 1998, the Court heard oral argument on Plaintiff's Motion for Preliminary Injunction, wherein she sought to enjoin Mattel from using, marketing, advertising, developing, selling, distributing, or promoting any goods or services which utilize the "Pearl Beach" trade names, service marks, or trademarks including but not limited to "Pearl Beach," the Pearl & Shell logo, and/or any confusingly similar variations thereof. At that time the Court ordered the hearing consolidated with a trial on the merits, pursuant to FED.R.CIV.P. 65(a)(2).1 Said trial was to be bifurcated from any issues of damages, and it was made clear to the parties that the Court would only consider the issues relating to Plaintiff's request for a permanent injunction. The Court set the matter down for trial to begin on August 18, 1998, which date was later changed to August 25, 1998, by stipulation of the parties.
At that July 13 hearing the Court also ordered the parties to file a Proposed Pre-Trial Conference Order ("Proposed Order") not later than July 20, 1998, and pursuant to the parties' expressed desire to be brought before a judicial settlement officer, had the matter referred to the Hon. Harry L. Hupp for a settlement conference to be heard on August 11, 1998.
The Court, in order to allow the parties time to focus on their upcoming settlement conference, delayed taking any action on the parties' timely-filed Proposed Order until such time as it learned of that conference's outcome. When the Court learned that no settlement was reached, it turned its attention to the Proposed Order, and took no time at all in concluding both that said filing was wholly inadequate for its intended purpose of guiding the trial, and that, in all likelihood, valuable judicial resources had been wasted in having the dispute brought before a settlement officer. The parties had failed in their July 20 filing to stipulate or admit to any facts, even those regarding preliminary matters, and had done little more than restate what the Court already knew about the dispute. No effort was made to narrow the issues for trial, let alone to agree upon the issues such that the Court might be informed what the trial was going to be about, how long it was going to take, and how many witnesses would be necessary.
On August 17, 1998, the Court ordered the parties to
jointly prepare and file, not later than August 21, 1998, a [Proposed Order] that significantly narrows the issues for trial [which was to] include a precise recital of the factual issues that both parties agree remain to be litigated.
August 17, 1998 Minute Order (emphasis in original).
The parties again timely filed an inadequate [Proposed] Revised Pre-Trial Conference Order ("Revised Order"). Although this Revised Order did contain eighty-one stipulated facts, there were still no admitted facts, and the parties chose to disregard the Court's explicit directions to jointly prepare and agree upon the disputed factual issues remaining to be tried, each instead filing as a separate exhibit its own Statement of Disputed Factual Issues. See Revised Order, August 21, 1998, Ex. C-1 and C-2. Because of the expedited nature of these proceedings, the Court was forced to go to trial without a signed Pre-Trial Conference Order.2
Without a proper Pre-Trial Conference Order, the Court found itself at a distinct disadvantage, as Plaintiff's theory of the case was never adequately delineated until after the start of the trial. The Court was forced to inquire of Plaintiff's counsel, before any testimony could be heard, just what theory Plaintiff was proceeding under, to which counsel indicated in open court that this was a reverse confusion case. This was the first time the Court was informed that Plaintiff was no longer proceeding under a forward confusion theory, and as a result exhibits were prepared, and evidence offered, which was not relevant to any material issue in the case as it came to be understood.
Although the parties agreed during the course of the trial to the admissibility of a large number of exhibits, these belated efforts at streamlining the proceedings were not nearly as effective as a properly prepared Pre-Trial Conference Order would have been. Unfortunately for all concerned, the pre-trial stage, during which the parties come to understand — often for the first time — what their case is about, did not occur until after the commencement of trial.
On August 27, 1998, at the end of the Plaintiff's case in chief, Mattel moved the Court to enter judgment as a matter of law pursuant to FED.R.CIV.P. 52(c), which provides, in relevant part:
If during a trial without a jury a party has been fully heard on an issue and the court finds against the party on that issue, the court may enter judgment as a matter of law against that party with respect to a claim or defense that cannot under the controlling law be maintained or defeated without a favorable finding on that issue, or the court may decline to render any judgment until the close of all the evidence. Such a judgment shall be supported by findings of fact and conclusions of law....
The Court indicated on that date its intention to GRANT Mattel's Motion, and this Memorandum of Decision and Order shall serve as the Court's findings of fact and conclusions of law in support of its decision to enter judgment as a matter of law for Mattel.
Since 1959, Mattel has produced and marketed, among other products, the famous Barbie line of dolls. Over the years, the Barbie line has expanded from a single doll to dolls featuring Barbie's friends and relatives, as well as lines of dolls and doll accessories that focus on a particular theme. One of the most popular theme lines is the annual "bathing suit" or "pool and beach" line, which have been around for at least the last ten years. Previous dolls in this segment have included "Glitter Beach Barbie," "Sparkle Beach Barbie," "Beach Fun Barbie," "Beach Blast Barbie," "Sun Jewel Barbie," "Tropical Barbie," "Tropical Splash Barbie," "Splash and Color Barbie," "Island Fun Barbie," "Sun Sensation Barbie," "Hawaiian Fun Barbie," "Sun Gold Malibu Barbie," and "Wet `N Wild Barbie." The target market for the "bathing suit" line of Barbie dolls are girls aged three to ten.
Pearl Beach Barbie is the 1998 installment of Mattel's bathing suit line of Barbie dolls. The dolls feature pearl-accented swim wear and include a faux pearl ring (for the child) that changes color in warm water. All of the Pearl Beach Barbie line of dolls are sold in product packaging that employs the famous Barbie pink trade dress and displays the Barbie name and trademark, as well as the famous Mattel trademark and logo. Each Pearl Beach Barbie doll retails for approximately five dollars.
The development of the Pearl Beach Barbie line began in the spring of 1996, when Mattel's marketing department directed Cassidy Beal Park, the preliminary designer assigned to the project, to develop ideas for the 1998 line of bathing suit dolls. In mid-1996, Ms. Park developed three possible concepts, a pearl theme, a sea shell theme, and a jewel theme, and created a concept board for each. Ms. Park testified that she came up with the pearl theme because, after doing research in the marketplace, she believed that pearls were a popular trend among both children and young adults at that time. She gave the pearl theme project the working title of Pearl Beach because of the natural association between pearls, the beach, and bathing suits. Ms. Park testified she had neither met nor heard of Plaintiff before this litigation began, nor seen any of her work.
Ms. Park's supervisors in the Preliminary Design Group chose the Pearl Beach concept for further development. Mattel's senior management gave "concept approval" to the doll in October 1996, and decided on the color change faux pearl ring as the "premium" to be included with the Pearl Beach Barbie line of dolls.
In the spring of 1997 Mattel requested that Margaret Hoebink, an in-house copywriter, as well as Ogilvy & Mather, Mattel's outside advertising agency, develop possible alternative names for the product. These prospective names were then submitted to Mattel's marketing department, which decided to retain the name Pearl...
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