Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

IP News

By Howard Shire and Stephanie Remy
October 01, 2022

Federal Circuit: Trade Dress Imitation In the Ninth Circuit

In P & P Imports LLC v. Johnson Enterprises, LLC, 46 F.4th 953 (9th Cir. 2022), the United States Court of Appeals for the Ninth Circuit reversed and remanded a judgement from the United States District Court for the Central District of California, and held that a genuine issue of material fact exists as to whether P & P Imports, LLC's trade dress acquired secondary meaning.

Background

P & P Imports, LLC (P & P) sued a competitor Johnson Enterprises, LLC (Johnson) for trade dress infringement under the Lanham Act. P &P sells outdoor games and sporting goods, which include an outdoor variation of the game Connect 4 with a red, white, and blue color scheme. In 2017, Johnson bought a copy of the P & P Game and sent samples to its manufacturer in China. In October, 2017, Johnson began to sell an identical version of the P & P game with identical color, style, and size game pieces. As a result, P & P sued Johnson for trade dress infringement. Johnson moved for summary judgment arguing that P & P's trade dress did not acquire secondary meaning. The district court granted Johnson's motion for summary judgment and held that the plaintiff did not meet its burden. In particular, the district court held that under Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958 (9th Cir. 2011), P & P was required to prove that consumers associate the trade dress with P & P, rather than with any single company. The court found that P &P's expert's testimony and evidence were insufficient to prove customers associate the trade dress with P & P. P & P appealed and challenged the district court's holding that P & P's trade dress did not acquire secondary meaning.

Trade Dress and Secondary Meaning

To bring a trade dress infringement action, a plaintiff must prove that: i) the trade dress is nonfunctional; ii) that their trade dress has acquired secondary meaning; and iii) that there is a substantial likelihood of confusion between the plaintiff's and the defendant's products. Trade dress helps to identify the source of a product rather than the product itself. This case focused on the second prong. Under the second prong, the question before the court was whether a consumer must both recognize the trade dress and associate the trade dress with P & P.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Removing Restrictive Covenants In New York Image

In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?

Fresh Filings Image

Notable recent court filings in entertainment law.