41 F. Supp. 3d 201
E.D.N.Y2014Background
- Gerffert was a New York distributor of Catholic religious products, with Panigel as owner; Dean worked for Gerffert and later joined New Hirten; Bonella produced artwork owned by Fratelli Bonella.
- Gerffert was the sole U.S. distributor of Bonella artwork for about five decades; it sold Bonella-related products and used a distinctive internal cataloging system of series identifiers and image numbers.
- Gerffert published catalogs with a common structure (cover, product descriptions, photos on a solid background, and a series/id number under each photo) but with varying cover logos and copyright language.
- In August 2007, New Hirten was formed by Andrea, Dean, and King to distribute Bonella line products, replacing Gerffert as exclusive U.S. distributor; Panigel directed Bonella to bill and ship to New Hirten.
- New Hirten’s catalogs closely mirrored Gerffert’s catalogs in products, descriptions, photos, and catalog numbers; Panigel opposed this in November 2008 via email to Dean.
- By 2013, Gerffert ceased operations; an asset sale led to Gerffert’s exit from the business, with Panigel alleging the New Hirten owners were effectively operating using Gerffert’s identity.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Gerffert’s Bonella catalogs constitute protectable trade dress | Gerffert's catalogs are non-functional and distinctive, capable of identifying the source. | Catalogs are either functional or not inherently distinctive, and lack secondary meaning. | Trade dress not protectable; dismissed. |
| Whether Gerffert's catalogs acquired secondary meaning | Length of use and exclusive distribution imply secondary meaning. | Evidence insufficient across the six factors; no consumer studies or positive indicia of secondary meaning. | No secondary meaning established; not protectable. |
| Whether the trade dress claim is likely to cause confusion if protectable | Distinctive catalogs would likely confuse customers between Gerffert and New Hirten. | Lack of distinctiveness and absence of confusion evidence defeat likelihood of confusion. | Not reached; no protectable trade dress means no likelihood-of-confusion analysis. |
| Whether the court should exercise supplemental jurisdiction over state-law claims | State-law claims related to catalogs should proceed alongside federal claim. | With federal claim dismissed, declining supplemental jurisdiction is appropriate. | Related state-law claims dismissed without prejudice. |
Key Cases Cited
- Samara Bros., Inc. v. Wal-Mart Stores, Inc., 529 U.S. 205 (Supreme Court 2000) (trade dress requires non-functionality and distinctiveness; includes packaging)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (Supreme Court 1992) (trade dress infringement requires proof of non-functionality and likelihood of confusion)
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) (Abercrombie classifications for determining distinctiveness of trade dress)
- Mana Prods., Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063 (2d Cir. 1995) (secondary meaning factors for trade dress; lengthy use alone is insufficient)
- Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC, 259 F.3d 25 (1st Cir. 2001) (circumstantial evidence of secondary meaning must show conscious connection to source)
- Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (Supreme Court 1982) (definition and role of secondary meaning in source identification)
- TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (Supreme Court 2001) (non-functionality includes traditional and aesthetic aspects of trade dress)
- American Eagle Outfitters, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002) (catalogs as trade dress; assessability and descriptiveness)
- Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815 (Fed. Cir. 1992) (overview of trade dress functionality and distinctiveness considerations)