Opinion
01-CV-0191 (NPM/GJD).
August 30, 2001
MEMORANDUM-DECISION AND ORDER
In this action alleging trade dress infringement and unfair competition under New York law, defendant J.G. Peta, Inc. d/b/a Coverall Manufacturing moves for summary judgment. Peta argues that plaintiffs William Held and Club Protector's alleged trade dress is entirely functional and commonplace, and that no confusion in the marketplace exists as a result of Peta's alleged bad faith. Plaintiffs oppose the motion and cross move to consolidate this action with a related patent infringement action currently pending before this court. For the reasons that follow, the motion for summary judgment is granted and the cross motion to consolidate is denied.
BACKGROUND
Plaintiff William Held holds a golf cart canopy patent issued 1989 to plaintiff Club Protector, Inc. — a corporation headquartered in Western New York State. Club Protector, Inc. produces and sells a canopy which attaches to the rear of a golf cart, and is designed to be lowered to protect golf clubs during inclement weather and raised during good weather or to unload the golf clubs from the cart.
Located in Central New York State, defendant J.G. Peta, Inc. d/b/a Coverall Manufacturing also produces and sells golf cart canopies. Recently, the Patent and Trademark Office approved Peta's patent application for its canopy version. The issue of whether Peta's product infringes on Held's patent is the subject of a separate action pending before this court.
In February 2001, plaintiffs filed this action alleging trade dress infringement under the Lanham Act and a related claim for unfair competition under New York State law. Peta responded by moving to dismiss the complaint pursuant to Fed.R.Civ.P. Rule 12(b)(6). Plaintiffs opposed the motion to dismiss and cross-moved to consolidate this action with 99-CV-616 — the related patent case involving these same parties and products. Peta opposed consolidation. Peta also moved to convert its Rule 12(b)(6) motion into a Rule 56 motion for summary judgment on the ground that plaintiffs represented in their response papers that no further discovery was required or necessary on the trade dress issue.
At a motion conference held on June 7, 2001, plaintiffs consented to the conversion upon condition that they be allowed time to consult with a marketing expert. The court agreed. The parties then filed supplemental papers on the motion for summary judgment, including an affidavit from plaintiffs' marketing expert.
Oral argument on the motion for summary judgment was held on August 22, 2001. During oral argument, plaintiffs raised two issues. First, plaintiffs contended that Peta's motion for summary judgment was improper because subsequent to the court's conversion of the motion to dismiss into one for summary judgment, Peta failed to file a Statement of Material Facts as required by Local Rule 7.1(a)(3). Second, plaintiffs asserted that they had previously moved to amend the complaint and that a proposed amended complaint, included for the first time in their supplemental papers opposing the motion for summary judgment, should be considered by the court.
With respect to the failure of Peta to submit a Statement of Material Facts, the court exercised its discretion and waived that requirement considering both the unique history of the motion, and that the parties essentially agreed on the underlying facts regarding the two products at issue. With respect to the proposed amended complaint, the court noted that no proper motion to amend the complaint existed previous to oral argument. However, because Peta did not oppose the motion to amend the complaint, the court granted plaintiffs' oral motion to amend. Thus, the amended complaint will now be considered on this motion for summary judgment. Having resolved those two issues, both parties agreed that consideration of summary judgment was appropriate on the papers currently before the court.
The amended complaint fleshes out the original complaint's allegations by adding a new paragraph 14. Specifically, the new paragraph in the amended complaint states that Held's canopy garners its "unique and distinctive appearance — and hence its secondary meaning" from its use of (1) green and white fabric color, (2) the texture and material of SUNBRELLA~ fabric, (3) the shape, size and location of the flap on the top of the canopy, and (4) the single clear, plastic located on the back of the canopy cover. In all other respects, the complaint and the amended complaint are identical.
DISCUSSION
Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions of file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); see e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552 (1986). Summary judgment is thus properly granted where "no reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2509 (1986). When considering a motion for summary judgment, the court views the evidence in the light most favorable to the party opposing the motion, and resolves all doubts in favor of the opponent. See Wright Med. Tech., Inc. v. Osteonics, Corp., 122 F.3d 1440, 1443 (Fed. Cir. 1997). If the moving party makes the required showing, the nonmoving party must then designate specific facts to demonstrate the existence of a genuine issue for trial. See Fed.R.Civ.P. 56(e).
A. Trade Dress Infringement
That trade dress is protected under federal law is well established. Section 43(a)(1) of the Lanham Act prohibits a person from using a false designation of origin in commerce in connection with goods or containers for goods. See 15 U.S.C.A. § 1125(a)(1) (1998). As the Supreme Court of the United States has explained, "the design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning, assuming that other requisites are met, is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods." TrafFix Devices, Inc. v. Marketing Displays, Inc., ___ U.S. ___, 121 S.Ct. 1255, 1259 (2001).
Specifically, the Act provides that:
[a]ny person who, on or in connection with any goods or services, . . . uses in commerce any word, term, name, symbol or device, or any combination thereof, or any false designation of origin, false or misleading representation of fact, which —
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.15 U.S.C.A. § 1125(a)(1).
In a civil action for unregistered trade dress infringement, such as the one here, the party asserting trade dress protection has the burden of showing that the matter sought to be protected is not functional. See 15 U.S.C.A. § 1125(a)(3) (West Supp. 2001). In addition to proving non- functionality, the producer must demonstrate that its trade dress is distinctive, and that the allegedly infringing feature is likely to cause confusion with the product for which protection is sought. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 120 S.Ct. 1339, 1343 (2000). As stated in TrafFix, trade dress protection "must subsist with the recognition that in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying." 121 S.Ct. at 1260. With these principles in mind, the court turns to the instant motion.
According to the amended complaint, plaintiffs identify four features of the Club Protector golf cart canopy which give it a unique appearance. As footnoted previously, plaintiffs cite (1) the green and white fabric color of his canopy, (2) the texture and appearance of the Sunbrella~ fabric used on the canopy, (3) the size, shape and location of a flap on the top of the canopy, and (4) the single clear piece of plastic located on the back of the canopy. Plaintiffs argue that the combination of the above listed features operates together to create the unique appearance that the public associates with the Club Protector and, in turn, that Peta's use of the same features has led to confusion in the marketplace.
Sunbrella~ Brand acrylic fabric is produced by Glen Raven Raven Custom Fabrics, LLC. Plaintiffs have no proprietary interest in Sunbrella~ and, accordingly, cannot rely on Sunbrella~ as an identifying source for their product.
Peta simply argues that summary judgment is appropriate here because the above features of the Club Protector canopy are entirely functional. In additional to being functional, Peta asserts that none of the above features are distinct, and absolutely no evidence exists with respect to whether there is any confusion among the public as to the two competing brands. As stated above, the Lanham Act mandates here that trade dress protection may only be acquired if the matter sought to be protected is non-functional. "In general terms, a product feature is functional and cannot serve as a trademark, if its is essential to the use or purpose of the article, or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non- reputation-related disadvantage." Qualitex Co. v. Jacobsen Prods. Co., Inc., 514 U.S. 159, 165, 115 S.Ct. 1300, 1304 (1995). Putting aside for the moment the issue of color, the remaining features of the Club Protector cited by plaintiffs as trade dress — i.e., the rain-repellent fabric, the flap, and the rear window — are clearly functional features of that product. That the rain-repellent fabric is "essential" to the golf cart canopy is axiomatic. The rain-repellent fabric provides the most essential function of the canopy, it keeps the golf clubs dry. Likewise, the use of clear plastic on the back of the canopy to allow the driver of the golf cart to see behind him or her is undoubtedly functional. And the use of a flap, which wraps around the canopy and serves to hold the canopy in place when it is in its upright position, is functional by its very definition.
Plaintiff do not squarely address the rather obvious functionality of the above features. Rather, they conclusorily state that their trade dress allegations "involve a variety of non-functional aspects of the product which operate together to create trade dress" (Dkt. No. 20, at 2). With respect to functionality, the affidavit of plaintiffs' marketing expert, James J. Hettich, merely states that "the adoption of these features by [Peta] were not intended to improve functionality, but instead to create an appearance similar to that of [the Club Protector]" (Dkt No. 22,¶ 12). Hettich's statement, of course, is not the proper test. In sum, no genuine issue of material facts exists as to the functionality of the alleged trade dress cited above.
Whatever protection Held and Club Protector may be entitled to, if any, appears to be grounded in patent rather than trademark law. As explained in Qualitex:
[t]he functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time . . . after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could extended forever (because trademarks my be renewed in perpetuity).514 U.S. at 164-65; 115 S.Ct. at 1304 (citation omitted).
Returning to the issue of color. Assuming, arguendo, that the color of the canopy is non-functional, plaintiffs could theoretically obtain trade dress protection on the green and white color of the golf cart canopy alone. The Supreme Court has held that color could be protected as a trademark, but only upon a showing of secondary meaning. See Qualitex, 514 U.S. at 163; 115 S.Ct. at 1303. "Secondary meaning" is acquired when "in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, n. 11, 102 S.Ct. 2182, 2187, n. 11 (1982). No such secondary meaning exists here. First, plaintiffs do not argue that the green and white color of the Club Protector canopy alone has secondary meaning. As stated above, plaintiffs' contend that the combination of the canopy color combined with the other features — already determined by this court to be purely functional — give the Club Protector its secondary meaning. Second, and perhaps more telling, the green and white canopy color is not distinctive to the Club Protector. Plaintiffs undisputedly sells the Club Protector canopy in a wide variety of colors. Moreover, plaintiffs offer no evidence establishing that the color of their canopy is distinctive. Accordingly, no material issue of fact exists before the court as to whether Club Protector's green and white canopy color has acquired secondary meaning. Having concluded that plaintiffs' alleged trade dress is entirely functional, and further having found that even if the color of the Club Protector canopy was non-functional it lacks secondary meaning, Peta is entitled to summary judgment on the issue of trade dress infringement. The court notes, however, that even if the "combination" of features plaintiffs seek to protect were found to be non-functional, this court would conclude that they lack any distinction or secondary meaning.
Peta has submitted undisputed evidence that the above cited features are found in a wide variety of golf cart canopies manufactured by various companies in the marketplace. It is entirely commonplace for the golf cart canopies manufactured by other competitors to include the same "combination" of features cited by plaintiffs, i.e, rain-repellent fabric, a plastic window in the back of the canopy to see out of, and a flap to hold the canopy in place when it is in its upright position. Plaintiffs argue that the Hettich affidavit creates a material issue of fact regarding distinctiveness. It does not. On the issue of distinctiveness, the Hettich affidavit merely concludes that "individual consumers are likely to associate the overall design and look of the Plaintiff's golf bag cover with the Plaintiff's product, the Club Protector" (Dkt No. 22,¶ 10) (emphasis added). As stated above, secondary meaning is acquired when a product feature serves to identify the source of the product rather than the product itself. This single statement in the Hettich affidavit falls far short of establishing a material fact as to whether the Club Protector features have acquired any secondary meaning.
B. Common Law Unfair Competition
Plaintiffs also seek damages and injunctive relief pursuant to the New York common law of unfair competition. New York law prohibits "the bad faith misappropriation of the labors and expenditures of another, likely to cause confusion or deceive purchasers as to the origin of . . . goods." Rosenfeld v. W.B. Saunders, A Division of Harcourt Brace Jovanovich, Inc., 728 F. Supp. 236, 249-250 (S.D.N.Y. 1990), aff'd, 923 F.2d 845 (2d Cir. 1990) (unpublished table decision). To state a valid claim for unfair competition, a plaintiff must show (1) that defendant's use of its mark created a likelihood of confusion between defendant's product and plaintiff's goods; and (2) produce evidence that defendant acted in bad faith. See Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y. 1993). A showing of secondary meaning is not required when a likelihood of confusion is shown to result from practices such as "palming off, actual deception, [and] appropriation of another's property,' which are "imbued with an odor of bad faith." Laureyssens v. Idea Group, Inc., 964 F.2d 131, 138 (2d Cir. 1992).
Here, no genuine issue of material facts exists on confusion in the marketplace resulting from Peta's bad faith on the record before the court. On the confusion issue, the Hettich affidavit singularly states "[i]t is my professional opinion that the result of the incorporation of all of [the Club Protector's] features into [Peta's] golf bag cover is likely to cause confusion among the individual consumers to whom [Peta] sells its product. That is, individual consumers, in purchasing [Peta's] product will confuse [Peta's] product with the [Club Protector] and will mistakenly believe they are purchasing the Club Protector when, in fact, they are not" (Dkt. No. 22,¶ 11). Plaintiffs fail to submit any market or consumer surveys to establish consumer confusion and, in this court's opinion, the above statement is equivocal and insufficient to create a triable issue of fact as to confusion. Additionally, the unusual dearth of evidence of secondary meaning in this case further undermines plaintiffs' allegations of Peta's bad faith. The physical differences between the two golf cart canopies are apparent from a simple glance. Accordingly, Peta's motion for summary judgment is granted with respect to plaintiffs' common law unfair competition claim. Having concluded that Peta is entitled to summary judgment dismissing this complaint, plaintiffs' cross motion to consolidate this action with 99-CV- 616 must be denied as moot.
CONCLUSION
For the reasons discussed above, Peta's motion for summary judgment is hereby GRANTED and the complaint is DISMISSED. Plaintiffs' cross motion for consolidation is DENIED as moot.
SO ORDERED.