68 F.4th 1203
9th Cir.2023Background
- Jason Scott Collection (JSC) designs high-end, hand-carved teak furniture sold through exclusive Texas retailers; three JSC designs (Sacred Heart Table, Iron Star Desk, Borgota Buffet) were registered for copyright in 2017.
- In 2016 Trendily (and its owner Rahul Malhotra) intentionally copied those three designs and sold nearly identical knockoffs (the M.J. Collection) to Texas retailers despite cease-and-desist letters.
- District court granted summary judgment to JSC on copyright infringement (awarding Trendily’s profits), enjoined further sales, and ordered destruction of remaining pieces; it held a bench trial on trade dress because secondary meaning was disputed.
- At trial the court found JSC’s trade dress nonfunctional (by stipulation), had acquired secondary meaning (relying on intentional copying, long use, advertising, trade-show exposure, and retailer/consumer recognition), and that Trendily’s products created a likelihood of confusion.
- Remedies: district court awarded JSC three years of foreseeable lost profits from a retailer (Coyote Candle), statutory attorneys’ fees and costs; Ninth Circuit affirmed liability, damages, and fee awards and granted appellate fees to be determined.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claimed trade dress is nonfunctional and properly defined | JSC: dress comprises detailed ornamental features (weathered teak, metal designs, ornate carving); parties stipulated nonfunctional | Trendily: JSC blurred its claimed dress to "overall look," requiring fresh functionality analysis | Court: Stipulation controls; detailed pleadings defined dress sufficiently; nonfunctionality accepted |
| Whether JSC proved secondary meaning | JSC: intentional copying, long continuous use, advertising, trade-show presence, retailer and consumer recognition establish secondary meaning | Trendily: copying alone insufficient without intent to confuse; retailer testimony cannot substitute for end-consumer proof | Court: No clear error—copying strongly supports inference of secondary meaning plus additional indirect evidence; retailer testimony probative given market dynamics |
| Whether Trendily’s pieces created a likelihood of consumer confusion | JSC: near-exact copying, same market and channels, retailer confusion, overlap of customers | Trendily: lack of evidence of actual end-consumer confusion; maintained exclusivity agreements and marketed to different stores | Court: Sleekcraft factors favor JSC (high similarity, proximity, shared channels, intent to copy); actual confusion not required where copying is intentional |
| Whether damages and attorneys’ fees were appropriate | JSC: entitled to reasonably foreseeable damages (lost retailer business) and fees because Trendily willfully infringed and ignored cease-and-desists | Trendily: harms (loss of Coyote Candle business) were not foreseeable; fees unwarranted because trade dress findings were erroneous | Court: No abuse of discretion on damages—lost business was foreseeable consequence of willful infringement and litigation; award of statutory fees upheld as case was "exceptional" under SunEarth; appellate fees remanded for calculation |
Key Cases Cited
- Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000) (product-design trade dress is not inherently distinctive; secondary meaning required)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (sets multi-factor test for likelihood of confusion)
- adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018) (intentional copying supports inference of secondary meaning)
- P & P Imports LLC v. Johnson Enterprises, LLC, 46 F.4th 953 (9th Cir. 2022) (lists secondary-meaning evidentiary factors)
- Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837 (9th Cir. 1987) (deliberate copying is probative of secondary meaning but not conclusory presumption)
- Skydive Ariz., Inc. v. Quattrocchi, 673 F.3d 1105 (9th Cir. 2012) (standard for damages under §1117(a)(2); district court discretion)
- SunEarth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179 (9th Cir. 2016) (totality-of-circumstances test for "exceptional case" and awarding attorneys' fees)
- Perfumebay.com, Inc. v. eBay, Inc., 506 F.3d 1165 (9th Cir. 2007) (absence of proven actual confusion is not dispositive in trademark claims)