Morton & Bassett, LLC-V-Organic Spices Inc

Filing 89

ORDER by Judge Haywood S. Gilliam, Jr., DENYING 66 Defendant's motion for summary judgment. (hsglc3S, COURT STAFF) (Filed on 4/21/2017)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 MORTON & BASSETT, LLC, Plaintiff, 8 v. 9 ORDER DENYING DEFENDANT’S MOTION FOR SUMMARY JUDGMENT Re: Dkt. No. 66 10 ORGANIC SPICES, INC., Defendant. 11 United States District Court Northern District of California Case No. 15-cv-01849-HSG Pending before the Court is the motion for summary judgment, Dkt. No. 66 (“Mot.”), filed 12 13 on October 28, 2016 by Defendant and Counterclaimant Organic Spices, Inc. (“Spicely”). 14 Plaintiff and Counterclaim-Defendant Morton Bassett, L.P. (“Morton”) timely filed its opposition 15 on November 18, 2016.1 Dkt. No. 70 (“Opp.”). Spicely filed its reply on November 28, 2016. 16 Dkt. No. 73 (“Reply”). The Court finds that this matter is appropriate for disposition without oral 17 argument and the matter is deemed submitted. See Civil L.R. 7-1(b). For the reasons described 18 below, the Court DENIES the motion. I. 19 FACTS 20 Morton has been producing and selling premium spices since 1986. Dkt. No. 70-3, 21 Gothelf Decl. ¶ 2. The company sells its products throughout the United States in a wide array of 22 grocery stores, supermarkets, and retails outlets. Id. ¶¶ 2, 13. The company employs two similar 23 versions of its asserted trade dress. Id. ¶¶ 5-6; Dkt. No. 62 (“SAC”) ¶ 14. The original product 24 line consists of the following elements: (1) “[a] contemporary, clean round clear glass container 25 through which the enclosed product is easily seen;” (2) “[a] solid color plastic cap;” (3) “[o]paque 26 white (and occasionally colored) lettering in a clean, modern style font either decaled or embossed 27 1 28 “Plaintiff Morton Bassett L.P. [was] erroneously identified in prior pleadings in this action as ‘Morton & Bassett LLC.’” Dkt. No. 62 (“SAC”). 1 onto the clear glass container with no opaque labelling;” (4) “[t]he name of the spice is displayed 2 in all capital letters;” and (5) “[t]he name of the spice is displayed in the largest letters [of the 3 asserted trade dress] for added emphasis.” Gothelf Decl. ¶ 5; SAC ¶ 14. The “100% organic” 4 product line shares these elements, and contains the following additional elements: (1) “[t]he top 5 of the glass container has a white (or occasionally black) decaled or embossed band with the 6 words “100% ORGANIC” in all capital, reverse lettering;” and (2) “[a] circle is displayed in the 7 middle of the bottle.”2 Gothelf Decl. ¶ 6; SAC ¶ 14. This case poses the issue of whether Spicely, 8 a competing spice seller, has infringed on Morton’s asserted trade dress.3 9 II. LEGAL STANDARD Summary judgment is proper when a “movant shows that there is no genuine dispute as to 10 United States District Court Northern District of California 11 any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). 12 A fact is “material” if it “might affect the outcome of the suit under the governing law.” Anderson 13 v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). And a dispute is “genuine” if there is evidence 14 in the record sufficient for a reasonable trier of fact to decide in favor of the nonmoving party. Id. 15 But in deciding if a dispute is genuine, the court must view the inferences reasonably drawn from 16 the materials in the record in the light most favorable to the nonmoving party, Matsushita Elec. 17 Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-88 (1986), and “may not weigh the evidence 18 or make credibility determinations,” Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir. 1997), 19 overruled on other grounds by Shakur v. Schriro, 514 F.3d 878, 884-85 (9th Cir. 2008). 20 “Summary judgment is improper where divergent ultimate inferences may reasonably be drawn 21 from the undisputed facts.” Fresno Motors, LLC v. Mercedes Benz USA, LLC, 771 F.3d 1119, 22 1125 (9th Cir. 2014) (internal quotation marks omitted); see also Int’l Union of Bricklayers & 23 Allied Craftsman Local Union No. 20, AFL-CIO v. Martin Jaska, Inc., 752 F.2d 1401, 1405 (9th 24 Cir. 1985) (“Even where the basic facts are stipulated, if the parties dispute what inferences should 25 be drawn from them, summary judgment is improper.”). If a court finds that there is no genuine 26 27 28 2 The circle contains lettering, which is not part of the asserted trade dress. See SAC ¶ 14. This lettering includes “M&B” in somewhat larger font than the name of the spice. See id. 3 Additional facts are stated, as relevant, in the “Discussion” section of this order. 2 1 dispute of material fact as to only a single claim or defense or as to part of a claim or defense, it 2 may enter partial summary judgment. See Fed. R. Civ. P. 56(a). With respect to summary judgment procedure, the moving party always bears both the 3 ultimate burden of persuasion and the initial burden of producing those portions of the pleadings, 5 discovery, and affidavits that show the absence of a genuine issue of material fact. See Celotex 6 Corp. v. Catrett, 477 U.S. 317, 323 (1986). Where the moving party will not bear the burden of 7 proof on an issue at trial, it “must either produce evidence negating an essential element of the 8 nonmoving party’s claim or defense or show that the nonmoving party does not have enough 9 evidence of an essential element to carry its ultimate burden of persuasion at trial.” Nissan Fire & 10 Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102 (9th Cir. 2000). Where the moving party will 11 United States District Court Northern District of California 4 bear the burden of proof on an issue at trial, it must also show that any reasonable trier of fact 12 would have to find in its favor. See Celotex, 477 U.S. at 325. In either case, the movant “may not 13 require the nonmoving party to produce evidence supporting its claim or defense simply by saying 14 that the nonmoving party has no such evidence.” Nissan Fire, 210 F.3d at 1105. “If a moving 15 party fails to carry its initial burden of production, the nonmoving party has no obligation to 16 produce anything, even if the nonmoving party would have the ultimate burden of persuasion at 17 trial.” Id. at 1102-03. “If, however, a moving party carries its burden of production, the nonmoving party must 18 19 produce evidence to support its claim or defense.” Id. at 1103. In doing so, the nonmoving party 20 “must do more than simply show that there is some metaphysical doubt as to the material facts.” 21 Matsushita Elec., 475 U.S. at 586. A nonmoving party must also “identify with reasonable 22 particularity the evidence that precludes summary judgment,” because the duty of the courts is not 23 to “scour the record in search of a genuine issue of triable fact.” Keenan v. Allan, 91 F.3d 1275, 24 1279 (9th Cir. 1996) (quoting Richards v. Combined Ins. Co. of Am., 55 F.3d 247, 251 (7th Cir. 25 1995)). If a nonmoving party fails to produce evidence that supports its claim or defense, courts 26 must enter summary judgment in favor of the moving party. Celotex, 477 U.S. at 323. 27 III. 28 DISCUSSION Morton asserted five claims in the operative complaint. SAC ¶¶ 36-58. Later, Morton 3 1 abandoned two of these claims. See Opp. at 21 n.8 (“Morton Bassett . . . is abandoning its claims 2 for infringement under Cal. Bus. & Prof. Code § 14245 (Second Claim) and federal false 3 advertising (Fifth Claim).”). Therefore, only three claims are still at issue: trade dress and false 4 designation of origin in violation of 15 U.S.C. § 1125(A) (First Claim); common-law passing off 5 and unfair competition (Third Claim); and violation of California’s Unfair Competition Law 6 (“UCL”), Cal. Bus. & Prof. Code §§ 17200 et seq. (Fourth Claim). See SAC ¶¶ 36-38, 43-50. 7 The Court addresses these claims below. 8 A. 9 Section 43(a) of the Lanham Act proscribes infringement of an unregistered trade dress.4 Trade Dress and False Designation of Origin Wal-Mart Stores, Inc. v. Samara Bros. Inc., 529 U.S. 205, 209 (2000); see also 15 U.S.C. § 11 United States District Court Northern District of California 10 1125(a). Trade dress is “the ‘total image of a product,’ including features such as size, shape, 12 color, texture, and graphics.” Millennium Labs., Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1126 (9th 13 Cir. 2016) (quoting Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1005 n. 3 (9th Cir. 14 1998)). The elements of a trade dress claim are “(1) that [the plaintiff’s] claimed dress is 15 nonfunctional; (2) that [the plaintiff’s] claimed dress serves a source-identifying role either 16 because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant’s 17 product or service creates a likelihood of consumer confusion.” Id. at 1127 n.1 (internal quotation 18 marks omitted). In assessing these elements, the court must “focus not on the individual elements, 19 but rather on the overall visual impression that the combination and arrangement of those elements 20 create.” See id. at 1130 (emphasis in original) (quoting Clicks Billiards, Inc. v. Sixshooters Inc., 21 251 F.3d 1252, 1256 (9th Cir. Ariz. 2001)). Here, Spicely argues that Morton does not have protectable trade dress because its package 22 23 design is functional, generic, and has not acquired secondary meaning. Mot. at 11-21 24 i. “[T]rade dress protection cannot be asserted for any functional features of a product.” 25 26 Functionality Millennium Labs, 817 F.3d at 1126.5 However, the Ninth Circuit has cautioned that “functional 27 28 4 5 Morton has admitted that its trade dress is not federally registered. See Opp. at 7. “This limitation reflects a balance of considerations affecting the competitive process and 4 1 elements that are separately unprotectable can be protected together as part of a trade dress.” Id. at 2 1130 (quoting Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 842 (9th Cir. 1987)). 3 Functionality is typically “an intensely factual issue.” See Millennium Labs, 817 F.3d at 1119. 4 The Ninth Circuit uses a two-step test to determine whether trade dress is functional. Id. at 1128- 5 31. 6 7 a. Step One Step One is guided by the Supreme Court’s teaching “that ‘a product feature is functional 8 if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.’” 9 See id. at 1127-28 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10 (1982)). 13 Under Step One, courts assess four functionality factors: (1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture. No one factor is dispositive; all should be weighed collectively. 14 Id. at 1130 (quoting Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 15 1998)). If the claimed trade dress is held to be functional under Step One, the inquiry ceases. Id. 16 at 1129. 10 United States District Court Northern District of California 11 12 17 As to the first factor, whether the design yields a utilitarian advantage, a reasonable jury 18 might conclude that the trade dress is “merely aesthetic, not functional,” see Millennium Labs, 817 19 F.3d at 1130, because it does not affect the “actual benefit” (i.e., spices) that consumers seek to 20 purchase, see Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 741 F. Supp. 2d 1165, 1174 21 (C.D. Cal. 2010) (finding that “taken together,” design elements of Fiji’s water bottle, such as 22 shape of bottle and lettering, raindrop, and hibiscus flower used on label, were “purely 23 aesthetic”).6 Just as the court in Fiji Water found that “[c]onsumers do not buy bottled water 24 25 26 27 28 consumer benefit. Although Congress does not want consumers to be confused about a product’s source, it also does not want to restrict the availability and use of functional features that enhance the utility of the product.” Millennium Labs., 817 F.3d at 1127. 6 The procedural posture of Fiji Water was a motion for preliminary injunction as opposed to a motion for summary judgment, such that the burden on the movant was different than the one applicable here. Nonetheless, the Court finds the conceptual analysis in Fiji Water to be persuasive. 5 based on how its packaging looks, but rather based on how the water tastes or how much it costs,” 2 see id. at 1174, a reasonable jury might conclude here that consumers buy spices based not upon 3 their packaging, but rather upon their quality and price. At a minimum, Morton has raised a 4 dispute of material fact as to whether its trade dress, instead of impacting the product’s quality or 5 price, or constituting what customers actually seek to buy, has instead functioned to identify that a 6 particular entity (i.e., Morton) was the product’s source. See id. at 1173 (citing Leatherman Tool 7 Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009 (9th Cir. 1999)). For example, Morton’s CEO 8 since 1986 states in his declaration that the trade dress has been “one of the most important 9 features of our brand,” and has attached advertising, marketing, and media materials emphasizing 10 the trade dress. See Gothelf Decl. ¶¶ 11, 14; id. Ex. A (company webpage, nearly half of which is 11 United States District Court Northern District of California 1 comprised of color photo of three containers); id. Ex. B (historical promotional materials, with 12 conspicuous color images of containers); id. Ex. C (color photographs from trade show, displaying 13 large spice racks showcasing containers, as well as promotional banner featuring very large color 14 image of four containers); id. Ex. D (media materials with various color photographs of the 15 containers); id. Ex. E (business card, nearly half covered by color image of four containers), id. 16 Ex. F (promotional materials with many prominent color images of containers). 17 As to the second factor, while Spicely contends that Morton has presented no evidence that 18 alternative designs are available, see Mot. at 14, Morton has actually raised a dispute of material 19 fact as to this factor. For example, its Vice President of Business Development, who is 20 responsible for “knowing competitive products” in the spice industry, states in her declaration that 21 no other competitor besides Spicely uses the combination of elements used in Morton’s 22 packaging, and attaches color photographs of competitive spice products. See Dkt. No. 70-4, 23 Campbell Springfield Decl. ¶¶ 4, 9; id. Ex. B. A reasonable jury could conceivably conclude that 24 there are commercially feasible alternatives to Morton’s trade tress, such that protecting its trade 25 dress would not hamper competition. See Disc Golf, 158 F.3d at 1008; see also Fiji Water, 741 F. 26 Supp. 2d 1174 (“Since competitors routinely use alternative designs in packaging their bottled 27 water products, protecting the particular combination of elements of the FIJI packaging will not 28 hinder competition in the bottled water industry.”). 6 1 As to the third factor, the parties do not dispute that Morton uses advertising slogans such as “Clearly What Spices Should Be” and “Our Commitment to Quality is Clear,” but they disagree 3 on whether that amounts to touting the utilitarian advantages of Morton’s asserted trade dress. 4 Compare Mot. at 14-15 with Opp. at 11. Spicely asserts that Morton “admits that the 5 characteristics of its trade dress directly influenced its marketing strategy.” See Mot. at 14 (citing 6 SAC ¶ 17 (“Playing on the look of elements of its Morton Bassett Trade Dress, Plaintiff has 7 adopted and used slogans including ‘Clearly What Spices Should Be,’ and ‘Our Commitment to 8 Quality is Clear.’”)). In contrast, Morton argues that its advertising slogans “tout the high-quality 9 spices inside the bottles,” see Mot. at 11; Gothelf Decl. ¶ 22, “not . . . the overall aesthetic of the 10 combination of elements that comprise the Morton Basset Trade Dress,” see id.; Gothelf Decl. ¶ 11 United States District Court Northern District of California 2 21 (“Morton Bassett does not, and has never used advertisements or marketing materials which 12 has [sic] encouraged consumers to by [sic] Morton Bassett’s spices because of the packaging.” 13 (emphasis in original)). Morton’s asserted trade dress is composed of not only the clear glass 14 container and labeling, which apparently relate to the use of “clear” or “clearly” in Morton’s 15 advertising, but also to the particular font, capitalization, and size of the lettering, which 16 apparently do not, and the Court may not analyze the container and label in isolation from the 17 lettering. See Millennium Labs, 817 F.3d at 1126 (declaring that functional elements may be 18 collectively protected as part of the trade dress, even if not individually protectable). Viewing the 19 inferences reasonably drawn from the record in the light most favorable to Morton, the Court finds 20 that it is possible that a reasonable jury could find that Morton’s advertising did not tout the 21 utilitarian advantages of its trade dress. 22 As to the fourth factor, there is a dispute of material fact regarding whether the asserted 23 trade dress results from a comparatively simple or inexpensive method of manufacture. Spicely 24 argues that the broad availability of the stock jar used by Morton implies “an inexpensive method 25 of manufacture relative to other strong dress examples such as McCormack’s [sic] trade dress 26 registration for its distinctive, custom jar.” See Mot. at 15 (citing Kanach Decl., Exs. 18-20 (three 27 trademark registrations of McCormick & Co., Inc.)). However, this argument misses the mark by 28 focusing only on the clear glass container used by Morton, while ignoring the four other elements 7 1 of the asserted trade dress. See Millennium Labs, 817 F.3d at 1130 (requiring assessment not of 2 individual elements, but rather the “overall visual impression that the combination and 3 arrangement of those elements create.” (quoting Clicks Billiards, 251 F.3d 1256)). Moreover, 4 Morton’s CEO, who created and approved the asserted trade dress, states that he “did not consider 5 cost as a factor in selecting any of the elements of the Morton Bassett Trade Dress” and that he 6 eschewed “many less expensive alternative glass containers, caps [and] labels.” See Gothelf Decl. 7 ¶¶ 7-8. Weighing the four Disc Golf factors collectively, the Court finds that summary judgment is 8 9 10 not appropriate at Step One. The Court therefore moves on to Step Two. See Millennium Labs, 817 F.3d at 1131. United States District Court Northern District of California 11 b. Step Two Step Two is guided by the Supreme Court’s holding that “a functional feature is one the 12 13 ‘exclusive use of which would put competitors at a significant non-reputation-related 14 disadvantage.’” See Millennium Labs, 817 F.3d at 1128 (alterations omitted) (quoting Qualitex 15 Co. v. Jacobson Prod. Co., 514 U.S. 159, 165 (1995)). Thus, at Step Two, the Ninth Circuit 16 inquires “whether protection of the feature as a trademark would impose a significant non- 17 reputation-related competitive disadvantage.” Id. at 1131 (quoting Au-Tomotive Gold, Inc. v. 18 Volkswagen of Am., Inc., 457 F.3d 1062, 1072 (9th Cir. 2006)). Summary judgment is not warranted at Step Two. Spicely has failed either to put forward 19 20 evidence negating an essential element of Morton’s claim or to demonstrate that Morton “does not 21 have enough evidence of an essential element to carry its ultimate burden of persuasive at trial.” 22 See Nissan Fire, 210 F.3d at 1102. Spicely’s argument regarding Step Two cites only one piece of 23 evidence: an exhibit showing that the Mason jar was patented in 1858.7 See Mot. at 16-17 (citing 24 Kanach Decl., Ex. 21). Spicely’s argument regarding Step Two also fails to identify any 25 evidentiary deficiency, much less one necessarily precluding Morton from prevailing at trial. See 26 27 28 7 Spicely fails to identify its argument as relating to Step Two, or to cite the two-step functionality test from Millennium Labs. Nonetheless, Spicely cites the relevant rule from Au-Tomotive Gold, which the Ninth Circuit relied upon at Step Two in Millennium Labs. See Mot. at 16. 8 1 id. Since Spicely, the movant, did not meet its initial burden of production, Morton, the non- 2 movant, had no obligation to produce anything, even though it will bear the ultimate burden of 3 persuasion at trial. See Nissan Fire, 210 F.3d at 1102-03.8 For the foregoing reasons, summary judgment is not appropriate on the basis of 4 5 functionality. 6 ii. Distinctiveness The second element of a trade dress claim is “that [the plaintiff’s] claimed dress serves a 7 8 source-identifying role either because it is inherently distinctive or has acquired secondary 9 meaning.” Millennium Labs., 817 F.3d at 1127 n.1. “If a . . . [trade] dress is inherently distinctive[,] it need not be shown to also have a secondary meaning.” Int’l Jensen, Inc. v. 11 United States District Court Northern District of California 10 Metrosound U.S.A., Inc., 4 F.3d 819, 824 (9th Cir. 1993). Trade dress, like a trademark, “is inherently distinctive if its intrinsic nature serves to 12 13 identify a particular source.” See Wal-Mart, 529 U.S. at 210 (internal alterations omitted). The 14 Supreme Court has distinguished product-packaging trade dress from product-design trade dress, 15 finding that the former can be inherently distinctive, while the latter cannot. Compare id. at 212 16 (“The attribution of inherent distinctiveness to certain categories of . . . product packaging derives 17 from the fact that the very purpose of . . . encasing [a product] in a distinctive packaging, is most 18 often to identify the source of the product.”) with id. at 213 (“In the case of product design . . . , we 19 think consumer predisposition to equate the feature with the source does not exist.”) and id. at 216 20 (“[I]n an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act, a 21 product’s design is distinctive, and therefore protectible, only upon a showing of secondary 22 meaning.”) Trademarks are often classified in the following categories of generally increasing 23 24 distinctiveness: “(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two 25 Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). “The latter three categories of marks, 26 8 27 28 Morton should not take false solace in surviving summary judgment at Step Two. Remarkably, the Opposition fails to address Step Two or to cite either Millennium Labs or the relevant rule from Au-Tomotive Gold. See Opp. at 7-14. Morton should not expect a similar approach to be successful at trial. 9 1 because their intrinsic nature serves to identify a particular source of a product, are deemed 2 inherently distinctive and are entitled to protection.” Id. at 768. At the other end of the spectrum, 3 “generic” marks—which “refer to the genus of which the particular product is a species”—cannot 4 be protected. Id. at 768 (internal quotations marks, brackets, and citations omitted). In between 5 these two poles, “descriptive” marks, while not inherently distinctive, may nonetheless “acquire” 6 the requisite distinctiveness for protection (i.e., “secondary meaning”). Id. at 769. In other words, 7 suggestive, arbitrary, and fanciful marks “meet the distinctiveness element automatically”; generic 8 marks “never meet the distinctiveness element”; and descriptive marks only meet the 9 distinctiveness element if they “acquire” distinctiveness (i.e., secondary meaning). KendallJackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998) (summarizing 11 United States District Court Northern District of California 10 Two Pesos, 505 U.S. at 768-69). The Supreme Court has not held, however, that this spectrum of categories created for 12 13 word marks applies to product-packaging trade dress, which typically involves shapes and images. 14 Driven by the increasing recognition that the word-mark spectrum of distinctiveness may not be 15 helpful for assessing the inherent distinctiveness of non-word trade dress, courts now widely 16 follow the test of inherent distinctiveness for non-verbal symbols adopted in Seabrook Foods, Inc. 17 v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977) (“Seabrook test”). See J. Thomas 18 McCarthy, McCarthy on Trademarks & Unfair Competition § 8:13 (4th ed.) (updated March 19 2017) (collecting cases applying the Seabrook test). In addition, the Ninth Circuit’s Manual of 20 Model Civil Jury Instructions suggests that, in product-packaging trade dress cases, “the court 21 consider the propriety of giving an instruction using the test in Seabrook” instead of engaging in 22 likely necessary modification of the model jury instructions based upon the Two Pesos analysis. 23 See Manual of Model Civil Jury Instructions for the District Courts of the Ninth Circuit 311 (2007 24 ed.) (updated March 2017). The Court agrees that “the Seabrook test is by far the preferable test 25 to classify inherently distinctive trade dress in packaging and containers.” See McCarthy, supra § 26 8:13 (describing the test’s advantages).9 27 28 9 The parties agree that the Seabrook test applies. Compare Mot. at 19 with Opp. at 16. 10 Applying the Seabrook test to product-packaging trade dress claims, courts typically 1 2 analyze “whether (1) the design or shape is a common, basic shape or design; (2) it was unique or 3 unusual in a particular field; and (3) it was a mere refinement of a commonly-adopted and well- 4 known form of ornamentation for a particular class of goods which consumers view as mere 5 ornamentation.” See, e.g., Mattel, Inc. v. MGA Entm’t, Inc., 782 F. Supp. 2d 911, 1004 (C.D. Cal. 6 2011) (internal quotation marks omitted); see also McCarthy, supra § 8:13 (same).10 Ultimately, 7 these various factors all boil down to asking “whether the design, shape or combination of 8 elements is so unique, unusual or unexpected in this market that one can assume without proof that 9 it will automatically be perceived by customers as an indicator of origin—a trademark.” See McCarthy, supra § 8:13; see also I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 40 (1st Cir. 11 United States District Court Northern District of California 10 1998) (quoting this analysis with approval); Spark Indus., LLC v. Kretek Int’l, Inc., No. CV 14- 12 5726-GW ASX, 2014 WL 4365736, at *7 (C.D. Cal. Aug. 28, 2014) (same). Although Spicely cites the Seabrook test, it fails to actually analyze any of the factors. See 13 14 Mot. at 20. In fact, Spicely’s analysis regarding inherent distinctiveness includes only three 15 sentences, none of which is adequate to meet its initial burden at summary judgment. See id. 16 First, Spicely argues that “as discussed, M&B’s trade dress does not have the hallmarks of 17 distinctiveness, since its use of a non-custom, stock bottle and use of other basic, non-descript 18 features are generic and commonplace, particularly within the spice industry.” Mot. at 20. 19 Without any citation, however, the Court cannot ascertain which “discuss[ion]” Spicely is 20 referencing, or even which specific elements of the asserted trade dress Spicely considers “generic 21 and commonplace,” apart from the “stock bottle.” Moreover, the use of a stock bottle alone does 22 not constitute evidence negating an essential element of Morton’s claim, see Nissan Fire, 210 F.3d 23 at 1102, given that the asserted trade dress has five different elements, and the relevant inquiry is 24 25 26 27 28 10 The fourth factor of the Seabrook test (“whether the design is capable of creating a commercial impression distinct from the accompanying words”) relates to the distinct issue of whether a design is actually a registerable mark separate from any nearby words, and therefore should not be part of the inherent distinctiveness test. See McCarthy, supra § 8:13 n.9. This conclusion is supported by courts that follow McCarthy in omitting the fourth factor, see, e.g., Mattel, 782 F. Supp. 2d at 1004, and by courts that state the fourth factor but omit it from their actual analysis of inherent distinctiveness, see, e.g., Fiji Water, 741 F. Supp. 2d at 1176-77. 11 1 the total visual impression created by the combination and arrangement of these elements, see 2 Millennium Labs, 817 F.3d at 1130. Second, Spicely contends that Morton “cannot demonstrate 3 on the evidence in the record that its product packaging is inherently distinctive based on the 4 elements claimed to comprise its trade dress.” See Mot. at 20. However, the movant, Spicely, 5 cannot force the non-movant, Morton, to proffer evidence supporting its claim simply by asserting 6 that the non-movant lacks such evidence. See Nissan Fire, 210 F.3d at 1105. Third, Spicely 7 contends that Morton’s CEO “admitted M&B’s spice jar packaging is not recognized by its 8 customers.” See Mot. at 20 (citing Kanach Decl. Ex 1 at 66:12-15, 66:19-25, 71:18-23). This 9 contention, however, is contradicted by the cited testimony. In fact, Morton’s CEO testified that while members of the public often do not recognize the brand’s name, they do recognize the 11 United States District Court Northern District of California 10 brand’s packaging, purchasing the jar based upon its “look and feel.” See Kanach Decl. Ex 1 at 12 71:18-23. Since Spicely, as the movant, has failed to carry its initial burden of production, 13 Morton, as the non-movant, is not required to produce any evidence supporting the inherent 14 distinctiveness prong. Summary judgment is not appropriate on the inherent distinctiveness 15 prong, and therefore, the Court does not proceed to the secondary meaning prong. See Int’l 16 Jensen, 4 F.3d at 824 (if inherent distinctiveness is shown, secondary meaning need also not be 17 shown). 18 Finally, the Court addresses Spicely’s argument that Morton “cannot demonstrate that its 19 trade dress is nongeneric.” See Mot. at 17 (capitalization omitted). As a threshold matter, the 20 Court observes that this argument relies upon the Two Pesos test for distinctiveness. See id. at 17 21 (citing Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1995) (“We 22 evaluate the distinctiveness of trade dresses according to the [Two Pesos test]”)); see also 23 McCarthy, supra § 8:6.50 (describing Milstein as the lead case among those that “have held that a 24 package or product shape can lack protection as being ‘generic’ if the trade dress is defined as a 25 mere product theme or style of doing business or is such a hackneyed or common design that it 26 cannot identify any particular source”). As noted above, the Court agrees with the trend of 27 adopting the Seabrook test instead of the Two Pesos test in trade dress cases involving product 28 packaging and containers. However, the Ninth Circuit, albeit nearly twenty years ago and only in 12 1 passing, appeared to hold that a non-genericness defense may be asserted to trade dress claims. 2 See Kendall-Jackson, 150 F.3d at 1051 (declaring that one of the possible conclusions that the jury 3 could draw from the evidence presented “would support a finding that the trade dress was generic 4 or descriptive and therefore nondistinctive” (emphasis added)). Therefore, the Court addresses 5 this argument as well. Since Spicely raised the defense of genericness in its counterclaims, see Dkt. No. 64 at 7, 6 Morton “has the burden of proof to show that the mark is valid,” see Yellow Cab Co. of 8 Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 928 (9th Cir. 2005). However, the 9 “usual rules pertaining to the grant of summary judgments” still apply. See id. at 929. Therefore, 10 Spicely, as the party moving for summary judgment, still must “either produce evidence negating 11 United States District Court Northern District of California 7 an essential element of [Morton’s] claim or show that [Morton] does not have enough evidence of 12 an essential element to carry its ultimate burden of persuasion at trial.” See Nissan Fire, 210 F.3d 13 at 1102.11 Here, Spicely’s arguments regarding genericness contain no record citations 14 whatsoever. See Mot. at 18-19. Consequently, the only issue presented is whether Spicely has 15 shown that Morton lacks evidence of an essential element to carry its burden of persuasion at trial. 16 Spicely has not, as explained below. Spicely argues that “[b]ased upon M&B’s own allegations and admissions, on the face of 17 18 the FAC, M&B’s asserted ‘trade dress’ is indisputably generic and unprotectable as a matter of 19 law . . . .” See id. at 19. Specifically, Spicely argues that “[r]ather than disputing this allegation of 20 genericness, M&B acknowledged in the SAC that third parties[’] use and marketing of clear glass 21 spice jars is an indication of gourmet quality, rather than as [sic] a source identifier for M&B.” 22 See id. at 18 (citing SAC ¶ 52). However, the relevant portion of the SAC merely states, “By and 23 through Plaintiff’s use and marketing of its high quality spices in the Morton Bassett Trade Dress, 24 and the use of marketing by third party spice producers of glass jars for their high quality spices, 25 26 27 28 11 The case relied upon by Spicely, see Mot. at 18, is entirely consistent, given that there, the defendant had already produced evidence of genericness, see Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1151 (9th Cir. 1999) (“It does not appear that [the plaintiff] has offered evidence of nongenericness sufficient to rebut even the fairly modest evidence of genericness offered by [the defendant].”). 13 1 the relevant public has come to understand and expect that the spices contained in of [sic] glass 2 jars for spices are high quality, that is, ‘gourmet’ in nature.” See SAC ¶ 52. This language does 3 not constitute an admission that the asserted trade dress is not a source identifier.12 Spicely also contends that the asserted trade dress is generic under the Ninth Circuit’s 4 holding in Kendall-Jackson, 150 F.3d 1042. See Mot. at 18-19. In that case, the plaintiff “sued 6 [the defendant] for featuring on its wine labels a multicolored grape leaf design that allegedly 7 resembles a similarly colored leaf design that [the plaintiff] uses on its wine labels (the trademark 8 claim) and for using wine bottles that mimic the overall appearance of [the plaintiff’s] wine bottles 9 (the trade dress claim).” See id. at 1044. However, Spicely exclusively analogizes to the Ninth 10 Circuit’s reasoning in upholding the grant of summary judgment on the trademark claim, which 11 United States District Court Northern District of California 5 assessed genericness with relation only to the grape-leaf design on the plaintiff’s wine labels. See 12 Mot. at 18 (citing Kendall-Jackson, 150 F.3d at 1049). The Ninth Circuit declared that the 13 distinctiveness finding as to the grape-leaf design did not necessarily have any bearing on the 14 distinctiveness of the trade dress, given that “trade dress must be analyzed as a whole.” See 15 Kendall-Jackson, 150 F.3d at 1051. Moreover, Spicely’s position is not supported by the far more 16 relevant portion of the opinion, which affirmed the district court’s denial of the plaintiff’s motion 17 for judgment as a matter of law on the distinctiveness of its trade dress. See id. at 1049-51. There, 18 the Ninth Circuit declared that one of the alternative conclusions that a reasonable jury could reach 19 based upon the available evidence was that the “combination of an exposed cork, a rounded 20 flange, and a neck label” communicated to wine consumers “what the product is or at least the 21 characteristic of the product, namely that it is wine from California.” See id. at 1050-51. “This 22 conclusion would support a finding that the trade dress was generic or descriptive and therefore 23 nondistinctive.” Id. at 1051 (emphasis added). Accordingly, the Ninth Circuit found that “there 24 were genuine issues of fact about whether [the plaintiff’s] trade dress was distinctive” such that 25 “[t]he distict court properly let the jury decide [this] issue[].” Id. (emphasis added). Therefore, far 26 from requiring summary judgment here, the most factually and legally analogous portion of the 27 28 12 Morton objects to Spicely’s mischaracterization of the complaint. See Opp. at 14 n.7. 14 1 Kendall-Jackson opinion weighs toward letting the jury decide the issue of distinctiveness here. Lastly, Spicely argues that “[a] round bottle, plastic cap, description of the product, white 2 3 lettering on a clear label (or other colors when necessary), and capital letters for the name of the 4 product . . . are all indisputably generic as individual elements—and when taken as a whole.” See 5 Mot. at 19. However, this statement is irrelevant insofar as it analyzes the elements individually 6 and merely conclusory with relation to the total visual impression created by their combination 7 and arrangement. See Millennium Labs, 817 F.3d at 1130. Therefore, the statement does not 8 show that Morton will be unable to carry its burden at trial of demonstrating that its trade dress is 9 not either “defined as a mere product theme or style of doing business or is such a hackneyed or common design that it cannot identify any particular source.” See McCarthy, supra § 8:6.50. 11 United States District Court Northern District of California 10 Since Spicely failed to carry its initial burden of production for summary judgment on grounds of 12 genericness, Morton was not required to produce evidence in response, despite having the burden 13 of persuasion at trial. See Nissan Fire, 210 F.3d at 1102-03. For the foregoing reasons, summary judgment is not warranted on the distinctiveness 14 15 prong of Morton’s trade dress claim. 16 iii. Likelihood of Consumer Confusion Spicely’s motion makes no arguments regarding the likelihood of confusion prong. See 17 18 Mot. at 11-21 (arguing that asserted trade dress is “functional, generic, and has not acquired 19 secondary meaning”). Therefore, Spicely has not met the movant’s initial burden of showing the 20 absence of a genuine issue of material fact as to this prong. See Celotex, 477 U.S. at 323. 21 Summary judgment is therefore inappropriate as to all three prongs of Morton’s trade dress 22 claim.13 23 B. 24 Spicely argues that Morton’s federal trade dress claim preempts its Third Claim for 25 common-law passing off and unfair competition, and its Fourth Claim for violation of the UCL.14 Common-Law Passing Off and Unfair Competition, and Violation of the UCL 26 13 27 28 The various evidentiary objections advanced by Spicely, see Reply at 5-10, are DENIED AS MOOT because the Court did not rely on any of the evidence in question. 14 Spicely also argues that Morton’s Third and Fourth Claims must be dismissed to the extent that the Court grants Spicely’s motion for summary judgment as to Morton’s trade dress claim. See 15 1 See Mot. at 23. Spicely’s motion cites only one case to support this argument. See id. (citing Del 2 Madera Props. v. Rhodes & Gardner, Inc., 820 F.2d 973, 975 (9th Cir. 1987), overruled on other 3 grounds by Fogery v. Fantasy, 510 U.S. 517 (1994)). However, Madera applies the two-part test 4 for preemption established by Section 301 of the Copyright Act. See 820 F.2d at 976-77; see also 5 17 U.S.C. § 301. Therefore, Madera provides no basis for finding that the Lanham Act preempts 6 Morton’s Third and Fourth Claims. 7 The Lanham Act does not have a broad preemptive impact. See Golden Door, Inc. v. 8 Odisho, 646 F.2d 347, 352 (9th Cir. 1980)); see also 3 McCarthy, supra § 22:2 (“In general, 9 federal and state trademark and unfair competition law can coexist and cooperate without conflict.”) In Golden Door, the Ninth Circuit abandoned its prior dicta that “[t]he Lanham Act has 11 United States District Court Northern District of California 10 pre-empted the field of trademark law and controls” and instead agreed with the Third Circuit that 12 “[i]f state law would permit confusing or deceptive trademarks to operate, infringing on the 13 guarantee of exclusive use to federal trademark holders, then the state law would, under the 14 Supremacy Clause, be invalid.” See 646 F.2d at 352 (quoting Mister Donut of Am., Inc. v. Mr. 15 Donut, Inc., 418 F.2d 838, 844 (9th Cir. 1969) and Mariniello v. Shell Oil, 511 F.2d 853, 858 (3d 16 Cir. 1975), respectively). Golden Door has been understood to mean that “[t]he Lanham Act . . . 17 only preempts state laws which would provide less protection than the Lanham Act, and thus 18 would permit federal trademarks to be infringed.” See Kerzner Int’l Ltd. v. Monarch Casino & 19 Resort, Inc., 675 F. Supp. 2d 1029, 1049 (D. Nev. 2009); see also Garcia v. Coleman, No. C-07- 20 2279 EMC, 2008 WL 4166854, at *15 (N.D. Cal. Sept. 8, 2008) (citing Golden Door for the 21 principle that “there is no preemption by the Lanham Act so long as the state law does not conflict 22 with the federal law”). Most recently, the Ninth Circuit held that, since the Lanham Act does not 23 expressly preempt state law, and does not occupy the field of trademark protection, a state law can 24 be preempted by the Lanham Act only if it conflicts with the Lanham Act. See Int’l Franchise 25 Ass’n, Inc. v. City of Seattle, 803 F.3d 389, 409 (9th Cir. 2015), cert. denied sub nom. Int’l 26 Franchise Ass’n, Inc. v. City of Seattle, Wash., 136 S. Ct. 1838 (2016). 27 28 Mot. at 24. Since the Court denies the motion as to Morton’s trade dress, the Court does not address this argument. 16 Here, there appears to be no basis for preemption. With respect to Morton’s Third Claim, 1 2 “[t]he common law tort of unfair competition [or] . . . ‘passing off’ of one’s goods as those of 3 another . . . developed as an equitable remedy against the wrongful exploitation of trade names 4 and common law trademarks that were not otherwise entitled to legal protection.” See Bank of the 5 W. v. Superior Court, 2 Cal. 4th 1254, 1263 (1992). And Morton’s Fourth Claim appears to be 6 based upon the “unlawful” prong of the UCL, see SAC ¶ 48 (stating that Spicely’s “wrongful” acts 7 have violated the UCL), which “borrows violations of other laws and treats them as unlawful 8 practices that the unfair competition law makes independently actionable,” see Cel-Tech 9 Commc’ns, Inc. v. L.A. Cellular Tel. Co., 20 Cal. 4th 163, 180 (1999) (internal quotation marks omitted);15 see also Kelley Blue Book v. Car-Smarts, Inc., 802 F. Supp. 278, 289 (C.D. Cal. 1992) 11 United States District Court Northern District of California 10 (stating that the Lanham Act and the UCL are “substantially congruent”). In short, neither of the 12 claims at issue here would conflict with or limit the protections of the Lanham Act. Therefore, 13 they are not preempted. See also Keep a Breast Found. v. Seven Grp., No. 11-CV-00570 BEN 14 WMC, 2011 WL 3240756, at *3-4 (S.D. Cal. July 28, 2011) (declining to find that the plaintiff’s 15 UCL claim was preempted by the Lanham Act). 16 IV. CONCLUSION 17 For the foregoing reasons, Spicely’s motion for summary judgment is DENIED. 18 IT IS SO ORDERED. 19 Dated: April 21, 2017 ______________________________________ HAYWOOD S. GILLIAM, JR. United States District Judge 20 21 22 23 24 25 26 27 15 28 The UCL also proscribes “unfair” and “fraudulent” practices. See Cal. Bus. Prof. Code. § 17200; Cal-Tech, 20 Cal. 4th at 180. 17

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