religious catalog doesn’t have a prayer on trade dress claims

Gerffert Co., Inc. v. Dean, — F.Supp.2d —-, 2014 WL 4258275, No. 09–CV–266 (E.D.N.Y. Aug. 29, 2014)
Gerffert sued Dean for infringement of its trade dress in catalogs for religious products, catalogs that featured the “iconic” artwork of Fratelli Bonella, an Italian company that produces religious artwork.  The court found no protectable trade dress and dismissed the remaining state law claims.
Gerffert distributed Catholic-themed religious products, including prayer cards and framed prints.  Dean was a former independent sales rep/employee, until 2005.  For about 50 years, Gerffert was the sole distributor of Bonella artwork in the US, and allegedly devised a “unique numbering system” for Bonella-related products, consisting of (i) a “series” identifier for the type of product (e.g., “81” for prints in 10–inch by 12–inch walnut frames; “800” for English-language laminated holy cards; “M” for non-gold micro-perforated prayer cards; “FM” for magnetic framed prints; “KC” for key chains) followed by (ii) a three-digit “image” number for the Bonella artwork.  Gerffert alleged that it spend millions of dollars on publicity and promotion, but didn’t provide evidence of this or show what portion of its ad expenses went to catalogs for Bonella-related products.
The Bonella-related Gerffert catalogs used some basic elements consistently: “a decorative cover; general descriptions of the products in the series, including their dimensions and composition, atop every page; individual photographs for the products, arranged in rows on a solid background; and a series identifier and image number below each photograph.”  (So it was a catalog.)  However, the catalogs also varied widely in other ways.  Some used the Gerffert and Bonella logos and Bonella slogan; another only the Bonella logo/slogan; another only the Gerffert logo though referencing the “Bonella Line”; and another with only the Geffert logo and no mention of Bonella.  They differed in whether and how they attributed copyright to Bonella.
Gerffert provided no evidence of its success in generating sales from Bonella-related products in particular, and sales declined starting around 2000, losing money in 2004.  In 2007, Dean and others created a new company, “New Hirten,” which became the sole distributor of Bonella products.  Both parties catered to institutional customers—sellers of religious products—and not individual customers.  New Hirten sent a letter to potential customers, identifying itself as the “new distributor of the Bonella line” and indicating that “much of the stock available to you now was out of stock by the previous distributor.”  It also began sending out catalogs for Bonella-related products.  These catalogs contained similar or even the same products as Gerffert’s catalogs, and nearly identical product descriptions, photos, and series identifiers and image numbers.
Examples of parties’ catalogs

The court found that there was a triable issue of fact on whether the catalog trade dress was nonfunctional.  Unfortunately, the court framed the issue as whether the catalogs affected the use or purpose, or cost or quality, of Bonella-related products. It would be better to have analyzed whether the trade dress at issue—for catalogs—affected the cost or quality of catalogs for religious products.  But the defendant doesn’t seem to have argued the issue and the court concluded that it was “tenuous” to claim that the catalogs improved the value or sales price of the Bonella-related products.
The court deemed aesthetic functionality a closer call. The catalogs “primarily contained design elements that are competitively necessary, at least in the abstract, e.g., Bonella-related product descriptions, numbering, and photographs.” Yet “the specific descriptions, numbering, and photographs of such products by Gerffert are not competitive necessities.”  Nor were the particular arrangements of these elements—rows and solid backgrounds—competitively necessary.  (Here, by contrast, the court is looking at the right thing—what’s functional for catalogs, not for religious-themed products.) So a reasonable jury could find nonfunctionality.
However, no reasonable jury could find distinctiveness.  The catalogs weren’t inherently distinctive. The Second Circuit has disapproved of summary judgment on non-inherent distinctiveness, but has still allowed it “when the possibilities of the ultimate trade dress for a product are limited.” So here.  Gerffert’s use of catalogs wasn’t an unfamiliar or newly invented method.  There are common constraints on how catalogs can present products.  Nor did the catalogs demand “imagination, thought and perception” to discern what they are actually selling, i.e., Bonella-related products.  The catalogs weren’t generic either.  Instead, “these catalogs are bound to look similar, but not necessarily identical, to catalogs for Bonella-related products sold by other companies.”
Other courts have implicitly held catalogs to be descriptive by requiring secondary meaning.  And in Blau Plumbing, Inc. v. S.O.S. Fix–It, Inc., 781 F.2d 604 (7th Cir.1986), Judge Posner said that ads that provided “schematic, graphic, or metaphoric” information about services were descriptive. “Gerffert’s catalogs in this case are collections of representations—graphic, numeric, or otherwise—which informed potential customers about the Bonella-related products that it was offering to sell them. Such informative, and not symbolic, representations about a company’s products and services are nothing more than descriptive trade dress.”
After that, the court readily concluded that Gerffert hadn’t shown secondary meaning.  There was no evidence of “consumer studies” equating Gerffert with its catalogs for Bonella-related products, “unsolicited media coverage” of these products [the court means “of the alleged trade dress”], or other “attempts to plagiarize” these catalogs, apart from defendants’ conduct.  Sales success at best was unhelpful and at worst counseled against finding secondary meaning.  A mere allegation that Gerffert spent “millions of dollars” on advertising could not defeat summary judgment, especially since Gerffert failed to specify how much was spent by Gerffert on its catalogs. Length and exclusivity of sales of Bonella-related products was insufficient in itself, especially given inconsistencies in the catalogs througout their period of production (the last two decades).  These inconsistencies could have led consumers to associate the catalogs with Bonella, and not attribute their primary significance to Gerffert. Ultimately, as the First Circuit said:
Proof of secondary meaning requires at least some evidence that consumers associate the trade dress with the source. Although evidence of the pervasiveness of the trade dress may support the conclusion that a mark has acquired secondary meaning, it cannot stand alone. To find otherwise would provide trade dress protection for any successful product, or for the packaging of any successful product.
Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 44 (1st Cir.2001).
The court also commented that, even if it were to consider likely confusion, that wouldn’t go well for Gerffert.  The weakness of the trade dress, the temporal divide in competition (they never overlapped in sales), the sophistication of the parties’ customers, and the lack of actual confusion all favored defendants.

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