United States District Court, S.D. California
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Benjamin D. Scheibe, Browne George Ross LLP, Los Angeles, CA, Steven W. Winton, Winton Law Corporation, San Diego, CA, for Plaintiff.
Matthew L. Green, Best Best and Krieger LLP, San Diego, CA, for Plaintiff/Defendants.
Keith J. Wesley, Peter W. Ross, Best Best and Krieger LLP, Kent M. Walker, Lewis, Kohn & Fitzwilliam LLP, San Diego, CA, Dan N. MacLemore, Fulbright-Winnifor PC, Waco, TX, Chong H. Roh, Park Law Firm, Thomas M. O'Leary, Leclairryan LLP, William E. Thomson, Jr., Brooks Kushman, PC, Emily L. Rice, Ropers Majeski Kohn & Bentley, Los Angeles, CA, Lawrence E. Heller, Heller & Edwards, Beverly Hills, CA, David Swift, Kinsella Weitzman Iser Kump & Aldisert LLP, Santa Monica, CA, James F. Monagle, Timothy J. Halloran, Allen Kuo, Murphy, Pearson, Bradley & Feeney, San Francisco, CA, Chanille Carswell, Mark A. Cantor, Brooks Kushman PC, Southfield, MI, for Defendants.
ORDER (1) DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT ON TRADE DRESS; (2) GRANTING IN PART DEFENDANTS' MOTION TO EXCLUDE DR. WUNDERLICH'S EXPERT TESTIMONY; AND (3) GRANTING IN PART DEFENDANTS' MOTION TO EXCLUDE DR. FRAZIER'S EXPERT TESTIMONY; AND (4) DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT ON LOST PROFITS
GONZALO P. CURIEL, District Judge.
Plaintiff Brighton Collectibles, Inc. (" Brighton" ) manufactures and sells women's fashion accessories, including handbags. Brighton filed this copyright infringement action against Defendants RK Texas Leather Manufacturing, Inc., Richard Ohr, K & L Import, Inc., NHW, Inc., YK Trading, Inc., JC NY, Joy Max Trading Inc., and AIF Corporation (" Defendants" ). The Court heard oral argument on December 20, 2012. For the reasons stated below, the Court denies both summary judgment motions, and grants in part and denies in part the motions to exclude two of Brighton's expert witnesses.
I. Defendants' Motion for Summary Adjudication of Trade Dress Claim
The Lanham Act, 15 U.S.C. § 1125(a), " gives a producer a cause of action for the use by any person of ‘ any word, term, name, symbol, or device, or any combination thereof ... which ... is likely to cause confusion ... as to the origin, sponsorship, or approval of his or her goods....' " Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000) (children's clothing). The Lanham Act " has been held to embrace not just word marks, such as ‘ Nike,’ and symbol marks, such as Nike's ‘ swoosh’ symbol, but also ‘ trade dress'— a category that originally including only the packaging, or ‘ dressing,’ of a product, but in recent years has been expanded ... to encompass the design of a product." Id.
In its second claim, Brighton alleges that Defendants infringed its distinctive trade dress in the " Brighton" line of fashion accessories. Brighton describes its trade dress as " a sculpted, silver heart,
used in conjunction with any two or more of the following: (i) leather embossed to resemble exotic materials such as crocodile, alligator, snake and lizard; (ii) filigreed, silver ornamentation; (iii) a silver heart dangling from a leather strap; (iv) cowhide or brocaded fabrics; and/or (v) additional sculpted silver hearts." Second Amended Compl. ¶ 36.
To prove trade dress infringement, plaintiff must prove " (1) that its claimed trade dress is nonfunctional; (2) that its claimed trade dress serves as a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant's product ... creates a likelihood of consumer confusion." Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1258 (9th Cir.2001) (footnote omitted).
Defendants seek summary adjudication on the first and second elements. Summary judgment is appropriate when the " pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
A. Nonfunctional Requirement and Aesthetic Functionality Doctrine
The first element of a trade dress claim is that the product design is " not functional." 15 U.S.C. § 1125(a)(3).
Over the years, the Supreme Court has articulated the functionality standard in several ways. In 1982, the Supreme Court held that " a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982). This is known as the traditional or utilitarian test. Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1067 (9th Cir.2006) (" ‘ utilitarian’ functionality ... relates to the performance of the product in its intended purpose" ); Clicks, 251 F.3d at 1260 (" functionality denotes utility" ).
In 1995, the Court announced another test and explained that a feature is functional if " exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 165, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995). Under this " competition theory of functionality," courts consider whether trade dress protection would leave a " variety of comparable alternative features that competitors may use to compete in the market." Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410, 418 (6th Cir.2012). " If the feature is not a likely impediment to market competition, then the feature is nonfunctional." Id.; Disc Golf Ass'n v. Champion Discs, Inc., 158 F.3d 1002, 1008 (9th Cir.1998) (considering whether " commercially feasible alternative configurations exist" ) (quotations and emphasis omitted).
In 2001, the Supreme Court held that a plaintiff can prove a feature is not functional " by showing that it is merely an ornamental, incidental, or arbitrary aspect" of the product. TrafFix Devices, Inc. v. Mktg. Displays, ...