Crowning inglory: no trade dress in short-lived ads

EZ Pedo, Inc. v. Mayclin Dental Studio, Inc., No.
16-cv-00731, 2018 WL 934552 (E.D. Cal. Feb. 15, 2018)
EZ-Pedo sells “prefabricated pediatric zirconia crowns,”
which are colorless, durable, all-ceramic crowns that mask disfiguration or
stains on children’s teeth. Mayclin sells similar pediatric zirconia crowns
under the business name Kinder Krowns.  EZ-Pedo sued over the copying of several ads
it made from stock photos, but its trade dress claims failed.
EZ-Pedo used the “Beach Girl” ad at the 2014 annual meetings
of the California Society of Pediatric Dentistry and the American Academy of
Pediatric Dentistry; both organizations also featured the Beach Girl
advertisement in their trade journals; and EZ-Pedo displayed the image on
secondary pages of EZ-Pedo’s website. EZ-Pedo alleged that it stopped investing
in this “trade dress” within four months after its first use, after discovering
Kinder Krowns had used it in AAPD’s July 2014 print journal.
EZ-Pedo’s “Gears” design is in an ad that shows a photo of
metal gears plaintiff downloaded from a third-party website; the photograph is
placed beside the slogan, “engineered for a precision fit,” and Kinder Krowns
allegedly copied it to advertise its “Less Prep” crown line on its company
website, causing EZ-Pedo to abandon it after about a year.   The
“Blue CAD” design depicts a computer-aided drawing of a deep-blue-colored tooth
with visible contours. The image was created with 3Shape 3D Viewer, and deep
blue is one of three default color choices. 
The image was featured in print ads, trade-show banners, brochures,
flyers and on its website. Kinder Krowns allegedly copied the Blue CAD trade
dress to advertise its own line of “Less Prep” crowns.    
Beach Girl ads

Blue CAD images

Gears
Promotional flyers/ads could in theory be
covered by trade dress protection; courts have said as much about a website’s
“overall look and feel.” Nonetheless, the burden of establishing protectability
is a serious one.  EZ-Pedo argued that
its ads were inherently distinctive trade dress because each contains
“beautiful, glamorous, fanciful, recognizable” imagery.  But it couldn’t meet the “demanding”
standard; Wal-Mart cautioned against
vague tests for inherent distinctiveness. 
At least inherently distinctive trade dress requires “manifestly unique
arrangements,” and a plaintiff can’t just point at an “overall look”; it must
“articulat[e] the specific elements which comprise its distinct dress.”    EZ-Pedo’s claims couldn’t meet this standard.  For Beach Girl, adjectives like “unique” and
“distinctive” weren’t sufficiently specific. 
“As currently defined, the court and competitors remain in the dark as
to what EZ-Pedo purports to own. Are competitors never to advertise using the
same third-party stock photograph? Can they use the same photograph, but pair
it with different text, logo and company information?” Vague descriptions may
also cause “jurors viewing the same line of products [to] conceive the trade
dress in terms of different elements and features” and so the verdict may drive
from “inconsistent findings.”  

Nor was there a
triable issue on secondary meaning. “Not one of its promotional advertisements
was on the market for more than a year before the alleged infringements
happened.” That was too short, especially given the lack of any consistent
theme in the ads and indeed the drastic differences among them.  Nor were any of the ads ever placed on
EZ-Pedo’s product or product packaging, “further weakening any association.”  And there was no direct evidence of any consumer meaning, let alone meaning
to a substantial portion of consumers.  A
vague, self-serving declaration from EZ-Pedo’s founder that “[t]he pediatric
dentistry community has come to associate the Blue Crown CAD imagery with
EZ-Pedo’s products. I know this…from specific conversations I have had with
purchasing pediatric dentists who have stated they recognize the Blue Crown CAD
as symbolizing our products,” was insufficient. So too with claims of
“thousands” of ads distributed and “substantial time and energy” promoting the
imagery. “[P]rominent display” in a trade journal “is not the kind of media
coverage that shows the ‘enthusiasm and loyalty’ of plaintiff’s customers.”  

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