Judge: Alison Mackenzie, Case: 24STCV08677, Date: 2024-12-12 Tentative Ruling
Case Number: 24STCV08677 Hearing Date: December 12, 2024 Dept: 55
NATURE OF PROCEEDINGS: Hearing on Defendants' Demurrer
Defendants' Demurrer
is sustained with leave to amend.
BACKGROUND
Plaintiff Enor International
Inc. filed this action against CST
International, Clickit Trading Inc., Jacket Trading Inc., Ruigang He, Leon
Zhang He, and doe defendants 1 to 50 (“Defendants”), alleging Defendants have been manufacturing and selling
Plaintiff’s original lighter designs without authorization.
The causes of action are: (1) Trade Dress Infringement; (2)
Unfair Competition in Violation of California Business and Professions Code
Section 17200 et seq.; (3) Common Law Unfair Competition; (4) Intentional Interference
with Business and Contractual Relationships; (5) Intentional Interference with
Prospective Economic Advantage; (6) Negligent Interference with Prospective
Economic Advantage; (7) Trespass to Chattel; (8) Conversion; (9) Unjust
Enrichment; and (10) Declaratory and Injunctive Relief.
Defendants filed a Demurrer. Plaintiff filed an Opposition.
REQUEST FOR JUDICIAL NOTICE
Defendants’ request for judicial notice of three design
patents issued by the US Patent and Trademark Office for a juice bottle and two
truck racks is granted.
LEGAL STANDARD
When considering demurrers, courts read the allegations
liberally and in context. Wilson v. Transit Authority of City of Sacramento
(1962) 199 Cal.App.2d 716, 720-21. In a demurrer proceeding, the defects must
be apparent on the face of the pleading or via proper judicial notice. Donabedian
v. Mercury Ins. Co. (2004) 116 Cal.App.4th 968, 994. “A demurrer tests the
pleading alone, and not on the evidence or facts alleged.” E-Fab, Inc. v.
Accountants, Inc. Servs. (2007) 153 Cal.App.4th 1308, 1315. As such, courts
assume the truth of the complaint’s properly pleaded or implied factual
allegations. Ibid. However, it does not accept as true deductions,
contentions, or conclusions of law or fact. Stonehouse Homes LLC v. City of
Sierra Madre (2008) 167 Cal.App.4th 531, 538.
Leave to amend must be allowed where there is a reasonable
possibility of successful amendment. See Goodman v. Kennedy (1976) 18
Cal.3d 335, 349 (court shall not “sustain a demurrer without leave to amend if
there is any reasonable possibility that the defect can be cured by
amendment”); Kong v. City of Hawaiian Gardens Redevelopment Agency
(2002) 108 Cal.App.4th 1028, 1037 (“A demurrer should not be sustained without
leave to amend if the complaint, liberally construed, can state a cause of
action under any theory or if there is a reasonable possibility the defect can
be cured by amendment.”). The burden is on the complainant to show the Court
that a pleading can be amended successfully. Blank v. Kirwan (1985) 39
Cal.3d 311, 318.
ANALYSIS
Defendants argue that all of Plaintiff’s causes of action
are derivative of its claim for trade dress infringement.
“‘[T]rade dress “refers to the ‘total image of a product’
and may include features such as size, shape, color, color combinations,
texture or graphics.” The design of a product, as well as its packaging, both
are part of its ‘trade dress.’ ‘A seller's adoption of a trade dress
confusingly similar to a competitor's constitutes unfair competition that is
actionable under section 43(a) of the Lanham Act.’” Magic Kitchen LLC v.
Good Things Internat., Ltd. (2007) 153 Cal.App.4th 1144, 1155 (citations
omitted).
“The purpose of trademark and trade dress protection is to
enable a business ‘to identify itself efficiently as the source of a given
product through the adoption of a mark which may be in the form of a slogan,
symbol, ornamental design or other visual insignia.’” Ibid (quoting Roulo
v. Russ Berrie & Co., Inc. (7th Cir. 1989) 886 F.2d 931, 935-36). “However,
trade dress protection ‘is not intended to create patent-like rights in
innovative aspects of product design. Thus, trade dress protection, unlike patent
law …, does not foster innovation by preventing reverse engineering or copying
of innovative product design features. “Trade dress protection must subsist
with the recognition that in many instances there is no prohibition against
copying goods and products.” Therefore, trade dress protection extends only to
incidental, arbitrary or ornamental product features which identify the
product's source.” Ibid (quoting Shire US Inc. v. Barr Laboratories,
Inc. (3d Cir. 2003) 329 F.3d 348, 353 (citations omitted).
“To sustain a claim for trade dress infringement, [a plaintiff]
must prove: (1) that its claimed dress is nonfunctional; (2) that its claimed
dress serves a source-identifying role either because it is inherently
distinctive or has acquired secondary meaning; and (3) that the defendant's
product or service creates a likelihood of consumer confusion.” Clicks
Billiards, Inc. v. Sixshooters Inc. (9th Cir. 2001) 251 F.3d 1252, 1258
(citing Disc Golf Ass'n v. Champion Discs, Inc. (9th Cir. 1998) 158 F.3d
1002, 1005 and Fuddruckers, Inc. v. Doc's B.R. Others, Inc. (9th Cir.
1987) 826 F.2d 837, 841. In Wal-Mart Stores v. Samara Bros. (2000)
529 U.S. 205, 216 (Samara Bros.), the United States Supreme Court held
that “in an action for infringement of unregistered trade dress under § 43(a)
of the Lanham Act, a product's design is distinctive, and therefore
protectible, only upon a showing of secondary meaning.” Additionally, “a
plaintiff seeking to protect its trade dress in a line of products must
articulate the design elements that compose the trade dress.” Yurman Design,
Inc. v. PAJ, Inc. (2d Cir. 2001) 262 F.3d 101, 116; see also Crafty
Productions, Inc. v. Michaels Companies, Inc. (S.D. Cal. 2019) 424
F.Supp.3d 983, 992 (“While pictures of products certainly help the Court in
understanding what is to be protected, merely attaching hundreds of images
requires the Court to do all of the work for Plaintiffs.”).
I. Representational Lighters
Defendants argue that several of Plaintiff’s alleged trade
dresses are unprotectable concepts.
“Just as copyright law does not protect ideas but only their
concrete expression, neither does trade dress law protect an idea, a concept,
or a generalized type of appearance.” Jeffrey Milstein, Inc. v. Greger,
Lawlor, Roth, Inc. (2d Cir. 1995) 58 F.3d 27, 33 (Jeffrey Milstein, Inc.).“The
level of generality at which a trade dress is described, as well as the fact
that a similar trade dress is already being used by manufacturers of other
kinds of products, may indicate that that dress is no more than a concept or
idea to be applied to particular products.” Ibid. In Jeffrey
Milstein, Inc., the court rejected a greeting card company’s argument that
it was entitled to trade dress protection for manufacturing die-cut
photographic greeting cards. The court held that “despite its initial novelty
within the greeting card industry, however, [the plaintiff’s] trade dress
cannot qualify for trade dress protection because [the plaintiff] is
effectively seeking protection for an idea or concept--die-cut photographic
greeting cards.” Ibid.
In Int'l Leisure Prods. v. Funboy LLC (2d Cir. 2018)
747 F.App'x 23 (Int’l Leisure Prods.), the court affirmed dismissal of
the plaintiff’s trade dress infringement claim because the claim was at too
high a level of generality. There,
plaintiff alleged that it had a protectable trade dress in its line of “GIANT
SWANTM” inflatable swimming pool products. The Court noted that “a
swan-shaped pool float represents the type of design choice that is ‘almost
invariably’ intended "to render the product itself more useful or more
appealing’ rather than to ‘identify the [product's] source.’” Int'l Leisure
Prods., supra, 747 F.App'x at p. 26 (quoting Samara Bros., supra,
529 U.S. at 213). The Court further noted that the plaintiff “appears to be
seeking protection for a trade dress that would encompass any bird-shaped pool
float with even a passing resemblance to [its] GIANT SWAN™” and concluded, the
plaintiff’s “claimed trade dress is impermissibly overbroad, and that, as a
result, it has failed to state a claim for trade dress infringement under the
Lanham Act.” Ibid.
Several of Plaintiff’s lighters are designed to look like
something other than a lighter. The Court refers to these as “Representational
Lighters.” Plaintiff’s Representational Lighters include the Poker Chip Lighter,
Torch Gun Lighter, Bikini Lighter, Gun Torch Lighter, Pen Torch Lighter, Chip
Lighter, Fire Extinguisher Lighter, and Spray Can Lighter. Each of the
Representational Lighters features design elements that “together form the
appearance of” or “together resemble” the thing they represent, e.g., a stack
of poker chips, a handgun, or a fire extinguisher. FAC ¶¶ 26, 37, 59, 70, 81,
125, 136, 147.
Like the trade dress in Int’ Leisure Prods., Plaintiff’s
description of the trade dress for each of the Representational Lighters is
overly broad. Using the Poker Chip Lighter as an example, Plaintiff alleges
that its trade dress includes lighters featuring “a short cylinder having
grooves extending around the circumference to indicate the appearance of
multiple poker chips in a stack.” FAC ¶ 26. This trade dress is impermissibly
broad, because it amounts to Plaintiff seeking protection for the concept of lighter
shaped like a stack of poker chips. Plaintiff argues that this is not a
conceptual trade dress because it includes the description of grooves extending
around the circumference. However, as Plaintiff notes in the complaint, those design
elements “together form the appearance of a stack of poker chips.” FAC ¶ 26.
Merely describing essential elements of the object the lighter is designed to
resemble does not mean it is not a conceptual trade dress. See Int'l Leisure
Prods., supra, 747 F.App'x at 24 (describing the purported GIANT SWAN™
trade dress.
The same is true of the alleged trade dress for each of
Plaintiff’s Representational Lighters. Each describes generic shapes common in
other mediums and purports to give Plaintiff a monopoly on making lighters in
that shape. That is not the purpose or function of a trade dress. See
Traffix Devices v. Mktg. Displays (2001) 532 U.S. 23, 29 (“Trade dress
protection must subsist with the recognition that in many instances there is no
prohibition against copying goods and products. In general, unless an
intellectual property right such as a patent or copyright protects an item, it
will be subject to copying.”). Plaintiff may be able to articulate protectable
trade dresses for each of its lighters, but it must do so without attempting to
monopolize conceptual designs. A manufacturer of poker chips may protect its
trade dress in the specific design of its chips but may not claim a trade dress
in the concept of poker chips. Likewise, Plaintiff may articulate a trade dress
for its Poker Chip Lighter but may not claim a protected trade dress in the
concept of a lighter shaped like a stack of poker chips. Accordingly, the
demurrer is sustained with leave to amend.
II. Adequately Identified
Additionally, Defendant argues that the trade dress definitions
Plaintiff includes in the FAC are vague, ambiguous, or uncertain.
In Yurman, the Second Circuit reversed a jury verdict
finding trade dress infringement where the plaintiff failed to define its trade
dress. The court held that the “failure to articulate the dress require[s]
dismissal of the Lanham Act claim as a matter of law. Yurman, supra, 262
F.3d at p. 114; see also Fair Wind Sailing, Inc. v. Dempster (3d
Cir. 2014) 764 F.3d 303, 309 (“it is the plaintiff's duty to “articulat[e] the
specific elements which comprise its distinct dress.”) “[A] plaintiff's
inability to explain to a court exactly which aspects of its product design(s)
merit protection may indicate that its claim is pitched at an improper level of
generality, i.e., the claimant seeks protection for an unprotectible style,
theme or idea.” Landscape Forms, Inc. v. Columbia Cascade Co. (2d
Cir. 1997) 113 F.3d 373, 381 (Landscape Forms, Inc.).
In the absence of controlling authority, the Court adopts
the Second Circuit’s requirement that a plaintiff alleging trade dress
infringement “offer ‘a precise expression of the character and scope of the
claimed trade dress.’” Sherwood 48 Assocs. v. Sony Corp. of Am. (2d
Cir. 2003) 76 F.App'x 389, 391 (quoting Landscape Forms, Inc., supra, at
p. 38. Additionally, “[a] trade dress infringement claimant must enumerate
which features of its purported dress are distinctive and indicate how they are
distinctive. See e.g., Geigtech E. Bay, LLC v. Lutron Elecs. Co.
(S.D.N.Y. 2018) 352 F. Supp. 3d 265, 276.
Here, Plaintiff’s trade dress descriptions of its
Non-Representative Lighters do not sufficiently describe their purported trade
dress. Its description of the Torch 12156 trade dress as consisting of an “upright
oblong base, a nozzle extending obliquely upward and outward from an upper end
of the base, and a thumb slide trigger proximate to a junction between the base
and the nozzle” does not provide adequate description of its trade dress. FAC ¶
48. As Defendant notes, this description provides no information as to the
shape or location of the thumb slide trigger, or the shape of the nozzle. Demurrer
at p. 8:21-25. Similarly, the description of the Torch 19030 trade dress is
unclear insofar as it refers to an “elongated thumb switch” without making
clear what constitutes “elongated” in this context. FAC ¶ 92. Likewise, it is
unclear what it means to say Torch 12169 has an “elongated” base. FAC ¶ 103. Additionally,
it is unclear how broadly Plaintiff intends to use the word “angled” in
referring to the Triple Torch’s barrel, which, from the included photograph, appears
to be at an approximately 90-degree angle. FAC ¶ 114. If Plaintiff uses
“angled” to mean “anything other than straight,” it should make that clear.
Accordingly, Defendants’ demurrer is sustained with leave to amend.
CONCLUSION
Defendants' Demurrer is sustained. Plaintiff has twenty
days leave to amend.