Nola Spice Designs, LLC v. Haydel Enterprises, Inc.

Filing 105

ORDER & REASONS: ORDERED THAT Plaintiff/Counter-Defendant Nola Spice, LLC and Third Party Defendant Raquel Duarte's Motion for Summary Judgment (Rec. Doc. 60 ) is hereby GRANTED in part and DENIED in part. FURTHER ORDERED that a declaratory jud gment stating that Nola Spice Designs, LLC is not infringing on the trademarks of Haydel Enterprises d/b/a/ Haydel's Bakery be entered. FURTHER ORDERED that Nola Spice Design, LLC's claims under the Louisiana Unfair Trade Practices Act, La. R.S. 51:1405 et seq., be DISMISSED with prejudice. FURTHER ORDERED Defendant/Counter-Plaintiff Haydel Enterprises' Motion for Summary Judgment (Rec. Doc. 85 ) is DENIED. FURTHER ORDERED that Haydel Enterprises' counterclaims against Nol a Spice Designs, LLC and Raquel Duarte for copyright infringement in violation of 17 U.S.C 106, false designation of origin in violation of the Lanham Act, trademark infringement in violation of the Lanham Act, trademark dilution in violation of the Lanham Act and Louisiana's Anti-Dilution Act, and unfair trade practices under LUTPA be DISMISSED with prejudice. FURTHER ORDERED that Haydel Enterprise's Motion to Strike (Rec. Doc. 97 ) is DENIED as moot. Signed by Judge Carl Barbier on 8/28/13. (sek, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA

NOLA SPICE DESIGNS, LLC

CIVIL ACTION

VERSUS

NO: 12-2515

HAYDEL ENTERPRISES INC.
d/b/a HAYDEL'S BAKERY

SECTION: "J” (2)

ORDER AND REASONS
Before the Court is Plaintiff/Counter-Defendant, Nola Spice
Design, L.L.C. ("Nola Spice") and Third Party Defendant Raquel
Duarte ("Duarte" or, collectively, "Nola Spice")'s Motion for
Summary

Judgment

(Rec.

Haydel

Enterprises,

Doc.

60),

Incorporated,

Defendant/Counter-Plaintiff
d/b/a

Haydel's

Bakery

("Haydel")'s Motion for Summary Judgment (Rec. Doc. 85), and the
parties' oppositions thereto (Rec. Docs. 89, 96). These motions
were set for hearing on August 14, 2013 at 9:30 a.m. with oral
argument. Also under consideration is Haydel's Motion to Strike
(Rec. Doc. 97) and

Nola Spice's opposition thereto (Rec. Doc.

100). This motion was set for hearing, on the briefs, on August

1

14, 2013. The Court, having considered the motions and memoranda
of counsel, the record, and the applicable law, finds that Nola
Spice's

Motion

for

Summary

Judgment

(Rec.

Doc.

60)

must

be

GRANTED in part and DENIED in part; that Haydel's Motion for
Summary Judgment (Rec. Doc. 85) must be DENIED; and that Haydel's
Motion to Strike (Rec. Doc. 97) must be DENIED as moot for the
reasons set forth more fully below.
PROCEDURAL HISTORY AND BACKGROUND FACTS
This matter arises from a trademark and copyright dispute
concerning "bead dogs."

"Bead dogs" have historically been made

by twisting broken strands of plastic Mardi Gras beads into the
shape of a dog. Though all parties agree that the bead dog
tradition began in the streets when Mardi Gras parade goers
started making trinkets out of discarded beads, it appears that,
today,

some

businesses

and

individuals

create

and

sell

merchandise centered around the bead dog.
Nola Spice claims to have started making and selling bead
dog jewelry in the Spring of 2012. Nola Spice alleges that it
features and sells its merchandise to friends and family, as well
as on various internet sites such as Storenvy.com, Twitter.com,
Facebook.com,

Pinterest.com, and Etsy.com. Nola Spice's jewelry

is composed of strands of small beads twisted into the shape of a

2

dog. The dogs are then decorated according to different themes,
and, sometimes, additional accessories and/or features are added
to them. An example would be a Parisian bead dog decorated with
an Eiffel Tower charm.

Haydel Sum. Judg., Rec. Doc. 85-1, p. 8.

The sole member of Nola Spice is Duarte.
Haydel sells bead dog merchandise as well. Haydel alleges
that it commissioned an artist in April 2008 to create a Mardi
Gras Bead Dog to serve as its mascot. The result was a design of
spherical

shapes

that

all

intersected

and

collided

so

as

to

resemble a dog made of Mardi Gras beads. There is also a necklace
around the dog's neck and smaller spheres to represent the dog's
eyes and nose. The mascot generally has a specific color scheme:
purple body, yellow necklace, and green eyes and nose. In May
2008, Haydel filed two federal trademark applications, one for
the phrase MARDI GRAS BEAD DOG and one for its BEAD DOG DESIGN,
described

in

the

trademark

registration

as

a

"stylized

dog

wearing a beaded necklace, with the dog being formed by a series
of spheres designed to look like Mardi Gras style beads. The dog
has two eyes and a nose, all formed by smaller beads." Haydel
Sum.

Judg.

registered

Exh.
on

2,

Rec.

October

Doc.

13,

85.

2009

These
and

applications

December

1,

were
2009,

respectively, in relation to jewelry, clothing, and king cake

3

pastries. As of September 14, 2012, Haydel also owns a registered
copyright

over

the

BEAD

DOG

that

extends

to

"photograph(s),

jewelry design, 2-D artwork, [and] sculpture." Haydel's First Am.
Cmplt, Exh. 1., Rec. Doc. 19-1.
Haydel

alleges

that

since

the

registration

of

its

trademarks, it has continuously used the trademarks on jewelry,
clothes, and baked goods. Haydel commissioned a large bead dog
statue for its bakery, and due to its popularity, has raffled
multiple

bead

dog

statues.

Haydel

also

partnered

with

the

Louisiana Society for the Prevention of Cruelty to Animals ("LASPCA") for the "Paws on Parade" fundraiser. For this event,
Haydel donated their BEAD DOG DESIGN mold to allow several blank
BEAD DOG DESIGN statues to be cast and decorated by different
artists.

The

auctioned,

decorated

and

are

now

statues
on

were

display

later
around

paraded,
the

New

and

then

Orleans

metropolitan area. Additionally, Haydel entered into a licensing
agreement with a New Orleans retail store, Fleurty Girl, to sell
BEAD

DOG

DESIGN

earrings

and

necklaces.

The

earrings

and

necklaces are not made of beads, but rather appear to be sterling
silver cast into molds. Haydel also created a poster, sold at
Fleurty Girl, that displays several BEAD DOG DESIGN statues. In
addition to its sales through Fleurty Girl, Haydel entered into

4

an agreement with a local author to create a children's book
about the MARDI GRAS BEAD DOG.
Haydel alleges that, in August of 2012, its customers began
to enquire about purchasing Nola Spice's bead dog jewelry from
Haydel. Consequently, Haydel avers that it began an investigation
into the matter at which time they learned that Duarte had posted
a photo on her Facebook.com page wherein she posed with Haydel's
BEAD DOG DESIGN statue.

Haydel alleges that Duarte posted photos

of her bead dog jewelry near the photo of Duarte and the statue,
so as to intentionally confuse the public about the origin of the
jewelry. Haydel sent cease-and-desist letters to Nola Spice that
made the following demands upon Nola Spice:
[1] remove from your website all display, mention of or
reference to the bead dog design; [2] cease any and all
promotion, sale, and/or use of the above-described
materials in any business activities you are now
conducting; [3] impound any and all goods containing
Haydel's copyrighted and trademarked bead dog design
and that you forward these impounded goods to Haydel's
bakery immediately; [4] send to Haydel's an accounting
of all sales you have made of materials containing the
bead dog design; [5] provide Haydel's with a list of
all customers who have purchased bead dog materials
from your company (whether through Etsy.com website or
by other means); [6] compensate Haydel's for all sales
of materials containing its trademarked and copyright
bead dog design; [7] compensate Haydel's all attorneys
fees it has incurred and will incur in the future in
addressing this matter.
Nola Spice's Sum. Judg., Exh. 17, Rec. Doc. 60-21, p. 2.

5

Haydel

initially alleged that Duarte did not comply with the letter and
continued

to

post

pictures

of

herself

in

front

of

Haydel's

statues and use images of Haydel's poster in proximity to photos
of her bead dog merchandise on Facebook.com, Twitter.com, and
Pinterest.com; however, at oral argument, the parties agreed that
once Duarte received and opened the letter, she promptly removed
the images. Trans., August 14, 2013 Hearing, p. 12, lines 4-8.
Pursuant to the Digital Millennium Copyright Act ("DMCA"),
Haydel also sent "take down" notices to the hosts of several
websites on which Nola Spice sold bead dog merchandise. Nola
Spice alleges that the take down notices led to the removal of
Nola

Spice's

Storenvy.com,

merchandise
and

from

Facebook.com,

Etsy.com,

though

Haydel

Twitter.com,
alleges

that

merchandise listings still appeared on Storenvy.com even after
the notices were sent.1 At oral argument on this issue, counsel
for Duarte indicated that she is currently able to post and sell
some of her bead dog merchandise, but fears full scale operations
because too many DMCA take down notices could lead to a permanent
ban from selling her goods on those sites. Trans., Aug. 14, 2013
Hearing, p. 53, line 2-25 through p. 54, lines 1-7.
1

Nola Spice asserts that a representative of Facebook initially
questioned the DMCA take down notice from Haydel because he did not see how
the content on Duarte's Facebook profile violated Haydel's rights. Nola
Spice's Sum. Judg., Rec. Doc. 60-23, Exh. 19.

6

Nola Spice filed its complaint against Haydel on October 16,
2012

seeking

(a)

a

declaratory

judgment

that

Nola

Spice's

activities are not in violation of the Lanham Act, 15 U.S.C. §
1051 et seq. ("Lanham Act") or any other federal trademark law,
(b) damages for unfair trade practice under the Louisiana Unfair
Trade

Practices

Act

("LUTPA"),

Louisiana

Revised

Statute

§51:1401, and (c) the cancellation of Haydel's trademarks under
15 U.S.C. § 1119. (Rec. Doc. 1)

Haydel answered the complaint

and asserted a Counterclaim against Nola Spice and a Third Party
Complaint

against

Duarte.

(Rec.

Doc.

7)

Haydel

asserts

counterclaims for (a) trademark infringement, false designation
of origin and trademark dilution, all in violation of the Lanham
Act,

(b)

unfair

competition

under

LUTPA,

and

(c)

copyright

infringement under § 106 of the Copyright Act, 15 U.S.C. § 106.
Haydel seeks injunctive relief and damages.
Haydel filed a motion for preliminary injunction on May 22,
2013, originally setting the motion for hearing on July 17, 2013.
In the interim, Nola Spice filed a motion for summary judgment on
July 1, setting it for hearing on July 17, 2013. (Rec. Doc. 60)
The Court continued the hearing date for both motions to August
14, 2013. While these motions were pending, Nola Spice filed a
partial motion for summary judgment and a motion in limine. (Rec.

7

Docs. 71, 80) Haydel also filed a motion for summary judgment, a
motion to strike certain exhibits from Nola Spice's motion for
summary judgment, and a motion for expedited hearing of the
motion to strike. (Rec. Docs. 85, 97, 99) All of the foregoing
motions were opposed and set for hearing on August 14, 2013 on
the briefs.
PARTIES’ ARGUMENTS
Nola Spice asserts that, as a matter of law, it is entitled
to the entry of a declaratory judgment stating that it is not
infringing on Haydel's trademarks. It also seeks summary judgment
as to: (a) its claim that Haydel's trademarks should be cancelled
and (b) its claim for unfair trade practices in violation of
LUTPA.

Nola

Spice

argues

that,

consequently,

Haydel's

counterclaim alleging trademark infringement in violation of the
Lanham Act should be dismissed. Nola Spice also seeks summary
judgment as to Haydel's counterclaims alleging trademark dilution
and

"passing

off"

in

violation

of

the

Lanham

Act,

unfair

competition under LUTPA, and copyright infringement in violation
of the Copyright Act.
Following Nola Spice's motion for summary judgment, Haydel
filed its own motion for summary judgment, which the Court will
treat as a cross-motion for summary judgment. In this motion,

8

Haydel asks the Court to grant summary judgment in its favor as
to

all

claims

asserted

against

Nola

Spice

and/or

Duarte.

Specifically, Haydel maintains (a) that there is no issue of
material

fact

as

to

any

of

Nola

Spice's

or

Duarte's

claims

against Haydel, and (b) that Haydel should prevail on its claims
as a matter of law.
LEGAL STANDARD
Summary judgment is appropriate when “the pleadings, the
discovery and disclosure materials on file, and any affidavits
show that there is no genuine issue as to any material fact and
that the movant is entitled to judgment as a matter of law.”
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (citing former
FED. R. CIV. P. 56(c)); Little v. Liquid Air Corp., 37 F.3d 1069,
1075 (5th Cir. 1994). When assessing whether a dispute as to any
material fact exists, the Court considers “all of the evidence in
the record but refrains from making credibility determinations or
weighing the evidence.” Delta & Pine Land Co. v. Nationwide
Agribusiness Ins. Co., 530 F.3d 395, 398 (5th Cir. 2008). All
reasonable inferences are drawn in favor of the nonmoving party,
but

a

party

cannot

defeat

summary

judgment

with

conclusory

allegations or unsubstantiated assertions. Little, 37 F.3d at
1075. A court ultimately must be satisfied that “a reasonable

9

jury could not return a verdict for the nonmoving party.” Delta,
530 F.3d at 399.
If the dispositive issue is one on which the moving party
will bear the burden of proof at trial, the moving party “must
come forward with evidence which would ‘entitle it to a directed
verdict if the evidence went uncontroverted at trial.’” Int’l
Shortstop, Inc. v. Rally’s, Inc., 939 F.2d 1257, 1263-64 (5th
Cir.

1991)

(citation

omitted).

The

nonmoving

party

can

then

defeat the motion by either countering with sufficient evidence
of its own, or “showing that the moving party’s evidence is so
sheer that it may not persuade the reasonable fact-finder to
return a verdict in favor of the moving party.” Id. at 1265.
If the dispositive issue is one on which the nonmoving party
will bear the burden of proof at trial, the moving party may
satisfy its burden by merely pointing out that the evidence in
the record is insufficient with respect to an essential element
of the nonmoving party’s claim. See Celotex, 477 U.S. at 325.
The burden then shifts to the nonmoving party, who must, by
submitting
showing

or

that

referring
a

genuine

to

evidence,

issue

exists.

set
See

out

specific

id.

at

facts

324.

The

nonmovant may not rest upon the pleadings, but must identify
specific facts that establish a genuine issue for trial. See,

10

e.g., id. at 325; Little, 37 F.3d at 1075.
DISCUSSION
A. Admissibility of Certain Exhibits
As

an

initial

admissibility

of

matter,

certain

the

exhibits

Court

must

attached

deal

to

the

with

the

foregoing

motions for summary judgment.
1. Expert Report of Molly Buck Richard
In its motion for summary judgment, Haydel relies at least
in part on the opinions stated in Molly Buck Richard's expert
report. However, the Court recently ordered that this expert
report

be

excluded

at

trial.

(Rec.

Doc.

102)

Because

this

testimony is inadmissible at trial, and will never be reducible
to admissible form, it must be excluded on summary judgment. See
Fowler v. Smith, 68 F.3d 124, 126 (5th Cir. 1995). Likewise, the
Court will not consider Haydel's expert report.
2. Motion to Strike
Haydel challenges the admissibility of Exhibits 1, 2, 3, 5,
16, 21, 22, 23, 27, 28, 29, 30, and 32 to Nola Spice's Motion for
Summary Judgment. The Court need not determine the admissibility
of these exhibits, however, because it is able to resolve the
instant motions without reference to the challenged exhibits.
Therefore, the Motion to Strike is denied as moot.

11

B. Declaratory
Trademarks

Judgment

of

Non-Infringement

on

Haydel's

There are two elements to a successful infringement claim
under

the

Lanham

Act:

(a)

proof

of

"ownership

in

a

legally

protectible mark," and (b) proof of a likelihood of confusion.
Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 235-36
(5th Cir. 2010); see also Firefly, 617 F. Supp. 846.
Nola Spice argues that it is not infringing on Haydel's
trademarks because Haydel's marks are not legally protectible.
Nola Spice contends that Haydel's marks are generic, thus not
protected as explained in Firefly Digital Inc. v. Google, Inc.
817 F. Supp. 2d 846 (W.D. La. 2011). Alternatively, Nola Spice
asserts that Haydel's trademarks are merely descriptive and have
not taken on a secondary meaning as is required under Firefly,
and thus are unprotected. Furthermore, and in the alternative,
Nola Spice asserts that, even if the Court finds that Haydel owns
legally protectible marks, Nola Spice is not infringing on the
marks because (a) there is no likelihood of confusion between
Nola Spice's jewelry and Haydel's products, which is essential to
finding trademark infringement under CheckPoint Fluidic Systems
International, Ltd. v. Guccione, 10-4504, 2012 WL 3255200, *4
(E.D. La. Aug. 8, 2012) (Vance, J.), and (b) there is no evidence
that Nola Spice or Duarte ever used the phrase MARDI GRAS BEAD
12

DOG or made bead dog merchandise that copies Haydel's purported
BEAD DOG DESIGN trademark.
In opposing Nola Spice's argument, Haydel asserts that to be
protectible, a mark must be used in commerce and be distinctive.
15 U.S.C. § 1051 et seq. Haydel argues that a mark is protectible
under Taco Cabana if it is either inherently distinctive or has
gained a secondary meaning. Taco Cabana International, Inc. v.
Two Pesos, Inc., 932 F.2d 1113 (5th Cir. 1991) aff'd 505 U.S. 763
(1992).
Haydel argues that its marks are protectible because they
are not generic or descriptive. Haydel asserts that is marks are
not generic because the public associates Mardi Gras Bead Dog
jewelry, clothing, and baked goods with Haydel as evidenced by
the numerous online stories featuring Haydel's Mardi Gras Bead
Dog. Haydel contends that their marks are not descriptive because
the term MARDI GRAS BEAD DOG and the BEAD DOG DESIGN do not
describe jewelry, clothing, or baked goods. Haydel points to its
expert report, which contains the opinions of Molly Buck Richard,
as support for this contention.
Even if Haydel's marks are descriptive, Haydel argues that
its marks have acquired a secondary meaning because the public
primarily associates the term MARDI GRAS BEAD DOG and the BEAD

13

DOG DESIGN with a single producer, Haydel. Moreover, Haydel avers
that it has spent over $600,000 on advertising, which it asserts
is relevant under Zatarain's, Inc. v. Oak Grove Smokehouse, Inc.,
698 F.2d 786, 795 (5th Cir. 1983) abrogated on other grounds by
KP Permanent Make-Up, Inc. v. Lasting Impressions I, Inc., 543
U.S. 11 (2004). At oral argument, counsel for Haydel indicated
that he would classify the mark arbitrary, or perhaps suggestive
in regards to jewelry. Trans., August 14, 2013 Hearing, p. 25,
line 24, p. 26, lines 6-13.
A valid trademark registration is prima facie evidence that
a mark is valid and that the owner of the mark has the exclusive
right to use the mark, but the presumption of validity that is
created may be rebutted by proof that the mark is not inherently
distinctive. Amazing Spaces, 608 F.3d at 237. Therefore, Nola
Spice has the burden of proving that Haydel's marks are not
inherently distinctive. Courts often employ the Abercrombie test
to determine the distinctiveness of a word mark. Id. (relying on
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d
Cir. 1976)). When dealing with a non-word mark, the Fifth Circuit
has held that the Seabrook test is often preferred over the
Abercrombie test. Id. at 243. Both tests are discussed below.

14

1. Abercrombie Test as Applied to the MARDI GRAS BEAD DOG Word
Mark
The Abercrombie test creates five categories, ranked from
least to most distinctive: (1) generic, (2) descriptive, (3)
suggestive, (4) arbitrary, and (5) fanciful. Amazing Spaces, 608
F.3d at 240. A generic mark is not legally protectible, and a
descriptive mark is only protectible when it has gained secondary
meaning. Id.
"A generic term refers to a particular genus or class of
which an individual article or service is but a member.” Texas
Pig Stands, Inc. v. Hard Rock Cafe Int'l, Inc., 951 F.2d 684, 692
(5th Cir. 1992) (internal citations omitted). "A generic term
connotes the basic nature of articles or services rather than the
more individualized characteristics of a particular product."
Amazing Spaces, 608 F.3d at 241. "The more common method of
determining whether a term is generic is to ask whether the
public perceives the term primarily as the designation of the
article." March Madness Athletic Ass'n, L.L.C. v. Netfire, Inc.,
162 F. Supp. 2d 560, 568 (N.D. Tex. 2001)
"A descriptive term identifies a characteristic or quality
of an article or service, such as its color, odor, function,
dimensions,

or

ingredients....

Examples

of

descriptive

marks

would include Alo with reference to products containing gel of
15

the aloe vera plant and Vision Center in reference to a business
offering optical goods and services.... " Zatarains, Inc., 698
F.2d at 795; Texas Pig Stands, 951 F.2d at 692-93. A descriptive
mark is only protectible if the mark has taken on a secondary
meaning. Id. “Secondary meaning occurs when, in the minds of the
public, the primary significance of a mark is to identify the
source of the product rather than the product itself.” Amazing
Spaces, 608 F.3d at 247; Texas Pig Stands, 951 F.2d at 692-93.
Factors relevant to the secondary meaning inquiry are:
(1) length and manner of use of the mark or trade
dress, (2) volume of sales, (3) amount and manner of
advertising, (4) nature of use of the mark or trade
dress in newspapers and magazines, (5) consumer-survey
evidence, (6) direct consumer testimony, and (7) the
defendant's intent in copying the trade dress.

Amazing Spaces, Inc, 608 F.3d at 248. The primary focus of this
inquiry is the effectiveness of the trademark owner's efforts,
not the extent. Zatarains, Inc., 698 F.2d at 795. A claim of
secondary

meaning

presents

a

question

of

fact.

Aloe

Creme

Laboratories, Inc. v. Milsan, Inc., 423 F.2d 845, 849 (5th Cir.
1970).
The Court finds that the word mark MARDI GRAS BEAD DOG must
be either generic or descriptive without secondary meaning, and
therefore is not protectible. The mark is generic because there

16

is

a

product–-a

describes

this

individualized

bead

dog–-and

entire

class

characteristics

the
of

term

MARDI

products,

of

Haydel's

GRAS

rather

BEAD

DOG

than

the

products.

Haydel

contends that "[a] registered mark shall not be deemed to be the
generic name of goods or services solely because such mark is
also used as a name of or to identify a unique product or
service." 15 U.S.C. § 1064.

While this is certainly true, Haydel

ignores the sentence following the cited phrase, which states
that "[t]he primary significance of the registered mark to the
relevant public rather than purchaser motivation shall be the
test for determining whether the registered mark has become the
generic name of goods or services on or in connection with which
it has been used." 15 U.S.C § 1064. Courts have construed this to
mean that "the primary significance of the mark must be its
indication of the nature or class of the product or service,
rather than an indication of source."

Glover v. Ampak, Inc., 74

F.3d 57, 59 (4th Cir. 1996) Therefore, the relevant inquiry is
whether "when purchasers walk into retail stores and ask for [a
certain item], they regularly mean any brand of [that product],
and not specifically [the defendant's product]." Id.
For example, the term "thermos" is generic because when
customers

enter

a

store

and

ask

17

for

a

"thermos,"

they

are

generally looking for any vacuum bottle, not just the vacuum
bottles manufactured by King Seely Thermos, Co. Id. at 59. The
evidence

in

the

Haydel's

bead

record

dogs.

In

suggests
fact,

that

Haydel

this
itself

is

the

case

points

to

with

online

conversation between Duarte and Georgia Wilson, the owner of a
local

business

customers
Haydel's

known

looking
bead

for

dogs.

as

"The

""bead
In

this

Bead

dogs"

Shop,"
are

not

conversation,

that

shows

looking
Wilson's

only

that
for

customer

inquired about purchasing a bead dog from The Bead Shop. Wilson
informed her that she did not make such dogs, but directed her to
Fleurty Girl. When the customer noted that she did not wish to
spend that much money on the necklace, Wilson directed her to
Duarte who eventually sold a bead dog product to the customer.
This

conversation

contradicts

Haydel's

contentions

that

the

public primarily associates a bead dog with Haydel because, if
that were the case, Wilson and her customer would have only
thought of Haydel for this request.
Alternatively, if the mark is not generic, it can only be
descriptive, and is still not protectible because the proof that
Haydel puts forth to prove secondary meaning is insufficient. The
Court finds that above-listed factors from Amazing Spaces weigh
against finding secondary meaning. Amazing Spaces, 608 F.3d at

18

248. Haydel has had a registered mark for this phrase for just
under four years, which is too brief a time when compared with
other cases. See Aloe Creme Laboratories, Inc., 423 F.2d at 84950 (upholding a district court's finding that 17 years of sales,
over

$3

million

publications,

and

in

advertising,

testimony

from

national
8

store

advertising
owners

that

and
the

appellant's product was synonymous with aloe was insufficient
proof of secondary meaning); see also Texas Pig Stands, Inc., 951
F.2d at 692 (upholding jury verdict finding secondary meaning
where the plaintiff had used the name "pig sandwiches" for over
60 years and was widely-known among consumers for selling such
products).
Moreover, Nola Spice provides uncontroverted evidence that
sales of MARDI GRAS BEAD DOG jewelry were minimal--amounting to
around

$30,000

in

sales

over

four

years,

including

Haydel's

direct sales and sales through its licensee, Fleurty Girl. Haydel
presented no survey or direct consumer evidence to controvert
this evidence. Instead, Haydel points to media coverage of a
fundraiser that took place at a discrete period of time in 2012
and evidence that it spent nearly $600,000 on advertising. This
does not, however, prove the effect of Haydel's advertising,
which is the valid inquiry under Zatarain's, Inc.. As for the

19

media coverage, there is no guarantee that (a) the articles were
viewed by the public, or (b) the public understood Haydel's role
in relation to the role of the LA-SPCA. As for the amount spent
on advertising, such evidence is irrelevant because it is the
effects of the expenditures that are to be considered.2
2. Seabrook Test as Applied to Haydel's BEAD DOG DESIGN
While the Fifth Circuit has not gone so far as to prohibit
the application of the Abercrombie test to non-word marks, it
cautions in Amazing Spaces that this test is often unworkable
outside

of

illuminate

the
the

realm

of

fundamental

word

marks

inquiry"

because
of

it

whether

"fails
the

to

mark's

"intrinsic nature serves to identify" its owner. Amazing Spaces,
608 F.3d at 243. When the Abercrombie

test is inapplicable,

courts may apply the Seabrook test which asks:
[1] whether it was a “common” basic shape or design,
[2] whether it was unique or unusual in a particular
field, [3] whether it was a mere refinement of a
commonly-adopted and well-known form of ornamentation

2

At oral argument, counsel for Haydel even came close to conceding that
Haydel's marks lack secondary meaning. When asked if the attainment of
secondary meaning was truly the issue, counsel for Haydel stated that
secondary meaning was not the relevant inquiry and that "you can't start
anything if you get cut out – if your knees get cut out from underneath you."
Trans., August 14, 2013 Hearing, p.26, lines 16-18. In making this statement,
counsel for Haydel seemed to argue that the marks deserved protection because
Haydel has spent large amounts of time and money developing its mascot, and it
is inequitable to allow a third party to ride on Haydel's coattails.
Unfortunately for Haydel, trademark law offers no such protection while Haydel
ramps up its operation.

20

for a particular class of goods viewed by the public as
a dress or ornamentation for the goods, or [4] whether
it was capable of creating a commercial impression
distinct from the accompanying words.
Seabrook

Foods,

(C.C.P.A.
Circuit
merely

Inc.

1977);

notes,

v.

Amazing

however,

different

Bar-Well

ways

Spaces,
that

to

the

ask

Foods
608

Ltd.,

F.3d

first

whether

F.2d

1342

243.

at

568

The

Fifth

three
the

"questions

design,

are

shape

or

combination of elements is so unique, unusual or unexpected in
this

market

that

automatically
origin—a

be

one

can

assume

perceived

trademark."

by

Amazing

without

customers
Spaces,

proof

that

as

indicator

608

an

F.3d

it

at

will
of

243-44

(internal citation omitted) (holding that a five-point star set
within a circle was not inherently distinctive because it does
not automatically indicate its association with the plaintiff
self-storage business.)
Defendants have not put forth any proof that the "design,
shape or combination of elements" of the BEAD DOG DESIGN is so
"unique, unusual or unexpected in this market that one can assume
without

proof

customers

as

that
an

it

will

indicator

automatically

of

be

origin."

Haydel

Id.

perceived

by

repeatedly

asserts that people associate Haydel with the bead dog because
there is one in front of their store and they engaged in the Paws
on

Parade

campaign,

but

as

has
21

been

noted,

Haydel

does

not

provide

any

support

for

this

assertion.

Moreover,

financial

records indicate that Haydel and its licensee, Fleurty Girl, sold
less than 200 pieces of BEAD DOG DESIGN jewelry over a four year
span, which negates Haydel's unsupported assertions that their
designs were wildly popular and integrated into the culture of
New Orleans. Nola Spice Mtn Sum. Judg., Exh. 24-25, Rec. Docs.
60-28, 60-29.
Common sense, on the other hand, indicates that, the design
and idea of the bead dog is so commonplace that children in the
street have replicated it for over sixty years during Mardi Gras
parades, and that it is Haydel that based their design off of the
original Mardi Gras bead dog trinkets. In fact, at oral argument,
counsel for Haydel stated that when the Haydel family set out to
choose its mascot, it looked for "something that is generically
oriented to the City of New Orleans but not attached to your
baking goods or jewelry." Trans., August 14, 2013 Hearing, p. 8,
lines

13-15.

Thus,

the

Court

finds

it

unlikely,

without

the

assurance of consumer surveys and other conclusive proof, that
consumers in the New Orleans market would view the BEAD DOG
DESIGN and automatically associate it with Haydel. A New Orleans
consumer may see the dog and associate it with the statues found
around the area as part of the "Paws on Parade" fundraiser, but

22

there is no proof in the record that consumers associate the Paws
on Parade statues with Haydel. Haydel points to the fact that
there are plaques next to the statues with Haydel's name on it,
but concedes that most people would not have been able to see the
plaques, as the statues are most often viewed from a distance,
while driving and the plaques are rather small. Nola Spice Opp.
to Sum. Judg., Exh 1., Rec. Doc. 88-1, p. 67-68.
Viewing

all

of

the

facts

in

a

light

most

favorable

to

Haydel, the Court finds that the evidence overwhelmingly supports
Nola Spice's arguments that Haydel's marks are either generic or
descriptive without secondary meaning, such that no reasonable
jury

could

Haydel's

find

marks.

that

Nola

Spice

is

infringing

Therefore,

Nola

Spice's

motion

on

either

for

of

summary

judgment must be granted as to request for a declaratory judgment
of non-infringement. Amazing Spaces, 608 F.3d at 234 (Summary
judgment may be granted as a matter of law when the Court finds
no reasonable jury could ever rule in favor of the non-moving
party.)
C. Cancellation of Haydel's Trademarks
Nola Spice requests judgment in their favor on this claim,
but they do not present any law or evidence in support of this
contention.

In

its

cross-motion

23

for

summary

judgment,

Haydel

argues that their marks must be considered generic to cancel
their registrations. 15 U.S.C. § 1064; Soweco, Inc. v. Shell Oil
Co., 617 F.2d 1178. Though 15 U.S.C. § 1064 states that a mark
may be cancelled "[a]t any time if the registered mark becomes
the

generic

name

for

the

goods

or

services,"

courts

have

determined that the term "generic" as used in the Act extends to
both generic and descriptive marks that have not gained secondary
meaning.

15

U.S.C.A.

§

1064;

Am.

Heritage

Life

Ins.

Co.

v.

Heritage Life Ins. Co., 494 F.2d 3, 11 (5th Cir. 1974) (noting
that

some

courts

distinguish

but

in

any

case,

necessarily

one

of

degree);

terms,

between

the

generic

distinction

see

also

March

and

descriptive

between

them

is

Madness

Athletic

Ass'n, L.L.C. v. Netfire, Inc., 162 F. Supp. 2d 560, 568 (N.D.
Tex. 2001) ("The more common method of determining whether a term
is

generic

is

to

ask

whether

the

public

perceives

the

term

primarily as the designation of the article."); see also, Glover
v. Ampak, Inc., 74 F.3d at 59 (To find a product generic "the
primary significance of the mark must be its indication of the
nature

or

class

of

the

product

or

service,

rather

than

an

indication of source.")
The Court already determined that Haydel's marks were either
generic or descriptive without secondary meaning, which means

24

that their mark may be cancelled, even without firmly classifying
the marks as one or the other. Therefore, the Court finds that
Haydel's trademarks must be cancelled.
D. LUTPA claims
Nola Spice asserts that Haydel is liable under LUTPA because
it is "trying to push its weight around" in order to unfairly
compete with and squash Nola Spice. Nola Spice lists several
examples of such behavior in support of this contention: (a)
Haydel claims a monopoly over a long-standing tradition that it
did

not

create,

(b)

it

made

Copyright office, (c) Haydel

misrepresentations

to

the

U.S.

misrepresented facts to Facebook in

their takedown notices which caused Nola Spice's webpage to be
altered when it was not engaging in improper conduct, (d) Haydel
is

bullying

a

small

business

with

threats

of

a

non-viable

infringement claim, (e) Haydel has made misrepresentations in
court documents that the bead dog is known to be linked to Haydel
when its own financial documents show that revenue from bead dog
products is minimal, (f) Haydel trademarked the phrase "Mardi
Grad Bead Dog," and the design "bead dog" so as to create a
monopoly over the idea.
LUTPA prohibits "[u]nfair methods of competition and unfair
or deceptive acts or practices in the conduct of any trade or

25

commerce

are

hereby

declared

unlawful."

La.

R.S.

§

51:1405.

Courts have determined that:
"[w]hat constitutes deceptive practices prohibited by
the statute is determined on a case-by-case basis."
Louisiana courts have restrictively defined unfair
practices as conduct “which offends established public
policy
and
which
is
unethical,
oppressive,
unscrupulous,
or
substantially
injurious.”
The
specificity of the state courts infers a strict
construction. A trade practice is deceptive “when it
amounts to fraud, deceit, or misrepresentation."

Am. Mach. Movers, Inc. v. Mach. Movers of New Orleans, LLC, 136
F. Supp. 2d 599, 604 (E.D. La. 2001) aff'd sub nom. Am. Mach.
Movers v. Mach. Movers of New Orleans, LLC, 34 F. App'x 150 (5th
Cir. 2002) (defendant did not violate LUTPA "by setting up a
competing business while he was still employed at AMM and by
soliciting AMM's customers") citing Jefferson v. Chevron U.S.A.
Inc., 713 So.2d 785, 792 (1998).
The Court does not find that Haydel's actions to protect its
products were by any means "unethical, oppressive, unscrupulous,
or substantially injurious." Id. Haydel was simply engaging in
normal

business

practice

and

taking

appropriate

and

ordinary

measures to protect what it believed were legally protectible
marks and copyrights. Therefore, Nola Spice's motion for summary
judgment must be denied as it pertains to their LUTPA claims.

26

E. Dismissal of Haydel's Counterclaims
Haydel asserts counterclaims for copyright infringment in
violation of the Copyright Act; trademark infringement, trademark
dilution, and "passing off" in violation of the Lanham Act; and
unfair trade practices under LUTPA. Nola Spice moves for summary
judgment on these counterclaims.
1. Copyright Infringement
Haydel avers that under Peel & Co. v. The Rug Market, 238
F.3d 391 (5th Cir. 2001), it is required to show (1) proof of
ownership of a valid copyright and (2) unauthorized copying.
Haydel maintains that its copyright registration is prima facie
proof of a valid copyright, and Nola Spice does not refute this
assertion. Moreover, Haydel argues that Nola Spice's contention
that Haydel's copyright is invalid because it is derivative of
the traditional bead dog trinket is without merit because a
copyright

only

requires

minimal

originality

under

ZZ

Top

v.

Chrysler Corporation, 54 F. Supp. 2d 983 (W.D. Wash. 1999).
As to the copying element, Haydel argues that it shows the
requisite proof under Miller v. Universal Studios Incorporated,
82 F.2d 1365, 1375 (5th Cir. 1981) that Nola Spice had access to
their design and that there are substantial similarities in the
works; therefore, Haydel is entitled to summary judgment. Haydel

27

alleges that its statue was in public, so the access element is
easily satisfied.
violation

of

Haydel further argues that any copying is a

Haydel's

exclusive

rights,

not

just

exact

replicating. Haydel contends that Nola Spice's bead dogs are
derivative works of Haydel's design, as defined in 17 U.S.C. §
101,

and

therefore

its

goods

are

in

violation

of

Haydel's

copyright.
In response, Nola Spice presents two options to the Court:
(a)

Haydel's

protected,

copyright

or

(b)

is

Haydel

invalid,
has

a

thus

valid

the

design

copyright

is

over

not

their

specific bead dog design, but no proof that Nola Spice or Duarte
infringed upon their copyrighted design by making traditional
style bead dogs. In support of its first theory, Nola Spice
alleges that, if Haydel's bead dog design is not distinctly
different

from

the

traditional

bead

dog

design,

as

Haydel's

former attorney, Mr. John Hazard represented that it was, then
Haydel's copyright is invalid, and

there is nothing upon which

Nola Spice can infringe.
In support of their second theory, Nola Spice and Haydel
point to correspondence between Haydel's attorney, Mr. Hazard,
and

the

noted

U.S.

that

Copyright

the

design

Office,
Haydel

wherein

submitted

28

the

Copyright

appeared

to

Office

be

very

similar to traditional bead dog creation, which is not able to
be copyrighted. Mr. Hazard subsequently presented the Copyright
Office with several points of originality and dissimilarity from
the traditional design and Haydel was granted a copyright over
the design. With this in mind, Nola Spice contends that Haydel's
copyright only applies to this distinctly different design, and
Nola Spice's jewelry is composed only of traditional bead dogs;
therefore, there is no copying, thus no infringement.
Nola Spice compares the present case to Herbert Rosenthal
Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971) wherein
there was no infringement when a party made a similar jeweled
bee pin because a bee pin made of jewels is an idea with only so
many

expressions.

Moreover,

Nola

Spice

asserts

that,

under

Streeter v. Rolfe, 491 F. Supp. 416 (W.D. La. 1980), a person
can use an idea of another as long as she does not plagiarize
the expression of that idea. Nola Spice further argues that its
bead dogs are not exact copies of Haydel's bead dogs, noting
that

Haydel's

bead

dog

is

a

caricature

of

a

bead

dog.

In

contrast, Nola Spice argues that its jewelry is made in the
style of traditional bead dogs, does not always use smaller
beads for the nose and tail, and does not have a necklace, but
rather, Nola Spice's dogs have wire or bead tails and noses,

29

and, on a few designs only, a collar made of fabric or other
non-bead materials.
Haydel's
jewelry

copyright

design,

2-D

certificate
artwork,

covers

[and]

"photograph(s),

sculpture."

Counter

Plaintiff's First Am. Cmpt, Exh. 1, Rec. Doc. 19-1. The Court
has determined that it need not consider whether Haydel has a
valid copyright because, regardless of that determination, the
Court

finds

that

Nola

Spice's

design

does

not

constitute

unauthorized copying of Haydel's design.
To determine whether a party has engaged in unauthorized
copying, the Court must consider (1) whether the party alleged
to be infringing "had access to the copyrighted material and"
(2) whether "there is a substantial similarity between the two
works." Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 47
(5th Cir. 1995).
court

should

In determining if a party had access, the

consider

"whether

the

person

who

created

the

allegedly infringing work had a reasonable opportunity to view
the copyrighted work."

Peel & Co., Inc., 238 F.3d at 394. In

determining if two works are substantially similar, the court
must engage in a side-by-side comparison "to determine whether a
layman would view the two works as substantially similar." Id.
While this question is one of fact, "summary judgment may be

30

appropriate

if

the

court

can

conclude,

after

viewing

the

evidence and drawing inferences in a manner most favorable to
the

nonmoving

party,

that

no

reasonable

juror

could

find

substantial similarity of ideas and expression." Id.
Because the BEAD DOG DESIGN statues were all over the New
Orleans metropolitan area, it is fairly clear that Duarte had
access to the design, meaning that the main issue is whether the
parties' products are substantially similar.

In Rosenthal, the

Ninth Circuit engaged in a discussion of this requirement that
is instructive to the current issue.

Rosenthal, 446 F.2d 738.

In that case, the copyright owner of a jeweled bee pin brought
allegations of copyright infringement against another jeweler
who manufactured a nearly identical pin. Id. The plaintiff in
that

case

contended

that

"its

copyright

registration

of

a

jeweled bee entitles [it] to protection from the manufacture and
sale by others of any object that to the ordinary observer is
substantially
added).

similar

in

appearance."

Id.

at

740

(emphasis

The Ninth Circuit rejected this argument, noting that

the plaintiff seemed to confuse patent and copyright. Id. While
patents grant monopolies to the creators of novel, useful, and
nonobvious

advances,

protection.

Id.

copyrights

Copyrights

only

31

provide
guard

substantially

against

copying

less
of

an

expression. Id.; Streeter, 491 F.Supp. at 420-21.

An idea is

not copyrightable. Streeter, 491 F.Supp. at 420-21. The Ninth
Circuit recognized that the line between an expression and an
idea may be blurred, especially in situations where there are
only a few ways in which to express an idea, as was the case
with the jeweled bee pins; however, when the call is a close
one, the court urges the consideration of the "extent of the
copyright owner's monopoly" were it granted exclusive rights to
their work. Rosenthal, 446 F.2d at 742.
While it is clear from the parties' arguments that there
are

similarities

between

the

designs,

the

Court

finds

the

Rosenthal court's reasoning persuasive and adopts it in this
matter. There are only so many ways in which to create a bead
dog, and if the Court were to grant exclusive rights to Haydel,
its monopoly over a long-standing Mardi Gras tradition would be
expansive, which goes against the policy underlying copyright
law.3 Therefore, summary judgment in favor of Nola Spice must be
granted on this issue.

3

In his deposition, David Haydel, Jr. stated that as it
relates to jewelry, clothing, and baked goods, he could not
"envision anybody being able to make a bead dog and sell it that
doesn't infringe on [Haydel's] copyright." Nola Spice Mot. Sum.
Judg., Exh. 15, Rec. Doc. 60-19, p. 10, lines 2-11.
32

2. Trademark Claims
To

succeed

competition,

and

on
false

its

trademark

designation

of

infringement,
origin

unfair

claims,

Haydel

asserts that, under Taco Cabana, it must prove: (a) that its
marks qualify for protection under the law, and (b) that the
alleged infringer's use of the mark creates a likelihood of
confusion in the minds of potential customers. Because the Court
found that Nola Spice is entitled to summary judgment in their
favor on their declaratory judgment action for non-infringement,
Haydel's

counterclaim

dismissed.

The

for

remainder

trademark
of

Haydel's

infringement
trademark

must

claims

be
are

discussed below.
a. Trademark Dilution in violation of the Lanham Act and
La. Rev. Stat. Ann. 51:223.1
Nola Spice seeks summary judgment on Haydel's counterclaim
for

trademark

dilution.

Nola

Spice

asserts

that

one

of

the

elements required to prove trademark dilution is that the marks
are

"famous

as

distinct"

as

is

noted

in

Checkpoint

Fluidic

Systems International, Ltd. v. Guccione, 888 F. Supp. 2d 780,
793-94 (5th Cir. 2012); and, that Haydel will not be able to
prove this element. Additionally, Nola Spice asserts that they
have not "adopted" either of Haydel's Marks because neither of
them have used the phrase MARDI GRAS BEAD DOG or made a large
33

statue to resemble the BEAD DOG DESIGN.
Under the Lanham Act, "the owner of a famous mark that is
distinctive

...

shall

be

entitled

to

an

injunction

against

another person who, at any time after the owner's mark has
become famous, commences use of a mark or trade name in commerce
that is likely to cause dilution by blurring or dilution by
tarnishment of the famous mark." CheckPoint Fluidic Sys. Int'l,
Ltd., 2012 WL 3255200 at *5 (internal citations omitted). To
prevail on a trademark dilution claim, Haydel "must prove that
(1)

its

adopted

marks
its

are

mark

famous
after

and

distinctive;

[Haydel's]

had

(2)

become

[Nola

Spice]

famous

and

distinctive; and (3) [Nola Spice] caused dilution of [Haydel's]
mark."

Id.

Similarly,

"[t]he

Louisiana

Anti–Dilution

statute

[La. Rev. Stat. Ann. § 51:223.1] protects a mark based upon its
strength, [...] and that strength can be demonstrated by showing
a mark to either be distinctive or to have acquired a secondary
meaning." Prudhomme v. Procter & Gamble Co., 800 F. Supp. 390,
395 (E.D. La. 1992).
As noted above, the Court finds that Haydel's marks are not
inherently distinctive, but rather that they are either generic
or

descriptive

without

secondary

meaning.

Therefore,

summary

judgment must be granted in favor of Nola Spice on this issue.

34

See Firefly, 817 F. Supp. 2d at 867.
b. False Designation of Origin
A person may be held liable for false designation of origin
if they use a "word, term, name symbol, or devices, or any
combination thereof" that:

(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 the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents
the nature, characteristics, qualities, or geographic origin
of his or her or another person's goods, services, or
commercial activities.
15 U.S.C.A. § 1125 (West). To succeed on a claim for "passing
off,"

Haydel

must

prove

that

their

marks

are

"entitled

to

protection because [they are] distinctive or [have] acquired a
secondary meaning", and that the phrases/products are so similar
that they are "likely to confuse consumers.” KV Pharm. Co., 354
F. Supp. 2d at 686.

Therefore, the elements of a "passing off"

claim are nearly identical to the consideration made in the
preceding trademark infringement claim. Because the Court has
held that Nola Spice is entitled to summary judgment on their
trademark

infringement

claim,

secondary

meaning

attached

has

specifically

35

to

stating

Haydel's

marks,

that

no

summary

judgment must also be granted in favor of Nola Spice as to the
false designation of origin claim.
3. Unfair Trade Practices under LUTPA
Haydel asserts in its countercomplaint that Nola Spice's
intentional

and

practices.
infringe

In

on

willful

light

Haydel's

of

infringement

constitutes

the

that

finding

trademarks

entitled to damages under LUTPA.

or

Nola

copyrights,

unfair
Spice
Haydel

trade

did

not

is

not

Therefore, Nola Spice's motion

for summary judgment must be granted on this issue.
Accordingly,
IT IS ORDERED THAT Plaintiff/Counter-Defendant Nola Spice,
LLC and Third Party Defendant Raquel Duarte's Motion for Summary
Judgment (Rec. Doc. 60) is hereby GRANTED in part and DENIED in
part.
IT IS FURTHER ORDERED that a declaratory judgment stating
that Nola Spice Designs, LLC is not infringing on the trademarks
of Haydel Enterprises d/b/a/ Haydel's Bakery be entered.
IT IS FURTHER ORDERED that Nola Spice Design, LLC's claims
under

the

Louisiana

Unfair

Trade

Practices

Act,

La.

R.S.

§

51:1405 et seq., be DISMISSED with prejudice
IT

IS

Enterprises'

FURTHER
Motion

ORDERED
for

Defendant/Counter-Plaintiff

Summary

36

Judgment

(Rec.

Doc.

Haydel
85)

is

DENIED.
IT IS FURTHER ORDERED that Haydel Enterprises' counterclaims
against Nola Spice Designs, LLC and Raquel Duarte for copyright
infringement in violation of 17 U.S.C § 106, false designation of
origin in violation of the Lanham Act, trademark infringement in
violation of the Lanham Act, trademark dilution in violation of
the

Lanham

Act

and

Louisiana's

Anti-Dilution

Act,

and

unfair

trade practices under LUTPA be DISMISSED with prejudice.
IT IS FURTHER ORDERED that Haydel Enterprise's Motion to
Strike (Rec. Doc. 97) is DENIED as moot.
New Orleans, Louisiana this 28th day of August, 2013.

CARL J. BARBIER
UNITED STATES DISTRICT COURT

37