copying without infringement, falsity without materiality in adhesive case

J-B Weld Co., LLC v. Gorilla Glue Co., 2018 WL 6356768, No. 17-CV-03946-LMM
(N.D. Ga. Oct. 17, 2018)
Among other things, this case is a reminder that when you sue a competitor for false advertising you can often expect counterclaims–here the only thing that (partially and provisionally) survives summary judgment.
J-B Weld sells a two-part epoxy adhesive: when epoxy resin
and paste hardener are mixed together, a reaction produces a permanent adhesive
bond. Both J-B Weld Original and its newer KwikWeld are sold in major retail
stores and online sites.  The current
Original trade dress dates from 2012, and J-B Weld defines it as: (1) two
squeezable tubes in a clear blister package with the two tubes arranged in a
“V-shape”; (2) red coloring on one tube and black coloring on the other tube;
(3) a clear plastic blister package holding the tubes curved downward; (4) a
drop-down technical information box, located between the two tubes, that has
four lines of information separated by white lines; (5) a colored banner across
the bottom end of the card; (6) a colored banner bar that includes “Weld”
within the banner; (7) the phrase “Steel Reinforced Epoxy” and “World’s
Strongest Bond” on the card; (8) a list of uses near the bottom right corner of
the card; and (9) a card that is five inches.

J-B Weld’s packaging has described J-B Weld Original as a
“Steel Reinforced Epoxy” and the resin tube was labeled with the word “STEEL”
since 2009.  That was also when Gorilla
Glue allegedly became aware that J-B Weld intended the word “steel” on its
packaging to indicate the presence of an iron-containing additive. Gorilla Glue
neither contacted J-B Weld about nor challenged its use of the word “steel” on
its packaging until this case. J-B Weld has also featured “World’s Strongest
Bond” on the packaging for all its adhesive products since 2011, including its
two-part epoxy adhesive sold in a plunger syringe launched in 2012; Gorilla
Glue learned of the use of the phrase when the packaging debuted. Gorilla Glue likewise
didn’t object until this case.
In 2012, Gorilla Glue introduced a new Gorilla Epoxy
formula, which improved performance and provided a clear, rather than
yellowish, formula. It then began working on a two-part clear syringe product
with methacrylate chemistry (MMA) that it referred to as “Plastic Plus” or
“Heavy Duty Epoxy” during development and consumer testing. It ultimately
became the two-tube adhesive product known as “GorillaWeld.” During the design
process, Gorilla Glue’s Brand Manager instructed its graphic designer to
develop three blister card designs, including one that was “Close to JB Weld
brand” and that “should follow closely to going head to head with JB Weld and
play with such elements as black and red color palate and bringing in some
visual reference to steel reinforcement.” The graphic designer stated: “The
objective of this project was to go straight up against the top competitor (JB
Weld) and create packaging that mimics the competitor’s architecture. I was
able to pull subtle elements into our package, but still keep our package
looking tough and geared towards the Gorilla brand.”

The ultimate trade dress had: (1) a 5-inch-wide orange
blister package card; (2) an image of a gorilla at the top next to the phrase
“Gorilla Incredibly Strong”; (3) two squeezable tubes in a clear blister
package in a V-shape; (4) a gray tube with red coloring on the bottom and a
gorilla image next to the phrase “Gorilla Incredibly Strong” towards the top;
(5) an orange tube with black coloring on the bottom and a gorilla image next
to the phrase “Gorilla Incredibly Strong” towards the top; (6) a clear plastic
blister package holding the tubes curved downward; (7) a drop-down technical
information box located between the V-shaped tubes, that has four lines of
information separated by white lines; (8) a gray banner across the bottom end
of the card; (9) a gray banner across the top of the card that includes the
name “GorillaWeld”; (10) the phrase “Steel Bond Epoxy” on the card; and (11) a
list of materials to which GorillaWeld bonds on the card’s bottom right side.
[Note: the descriptions here are really not that helpful,
though clearly carefully crafted to make J-B Weld’s case—the overwhelming fact
is that the dominant colors create a completely different visual impression.
Yes, they look like the same product, the way that different manufacturers’
light bulbs look like the same product, but they do not in any way look like
they have the same source.]
Although whether GorillaWeld is an “epoxy” was disputed, the
back of GorillaWeld’s packaging, the Safety Data Sheet (SDS), and Gorilla
Glue’s website all state that GorillaWeld uses MMA chemistry.
J-B Weld sued for trademark infringement and false
advertising of GorillaWeld as an epoxy adhesive containing steel. Gorilla Glue counterclaimed
against (1) “World’s Strongest Bond”; and (2) “Steel Reinforced Epoxy.”
Trade dress first: the overall impression wasn’t
similar.  Much explanation of why
omitted, focusing on colors and their arrangement.  J-B Weld urged the court to find similarity
“despite the brand names, logos, and color schemes.” But “it is precisely the
prominent display of distinctive brand names and logos coupled with the use of
radically different color schemes that negates any possibility of consumer
confusion in this case—thus precluding a finding of similarity.” This wasn’t a
swap of one name and logo for another, but a “radically different color scheme”
and a prominent use of a distinctive logo “to cure the effect of any visual
J-B Weld offered as actual confusion evidence three
employees’ testimony.  One indicated that
a Loctite sales rep asked if J-B Weld made Gorilla Glue’s “twin tube product
for [Gorilla Glue]”; another had an encounter with a Loctite rep who asked if
J-B Weld was “private labeling for GorillaWeld” after seeing the packaging; and
another indicated a buyer from O’Reilly’s Auto Parts asked if J-B Weld had
“anything to do with” Gorilla Glue’s product. These were admissible hearsay, going
to state of mind and not the truth of the matter asserted.  But “[i]nquiries indicating that ‘consumers
perceive a difference between the designations and are skeptical of the
existence of a connection between users’ may not establish the existence of actual
confusion.” Those inquiries indicate that the speakers actually know there’s a
difference. They were inquiring into whether there was a possible
collaboration, but they weren’t confused about source nor did they believe that
there was a collaboration (if they did, they wouldn’t have needed to ask).  And there was no other evidence of confusion.
Intent: the Eleventh Circuit has held that: “If it can be
shown that a defendant adopted a plaintiff’s mark with the intention of
deriving benefit from the plaintiff’s business reputation, this fact alone may
be enough to justify the inference that there is confusing similarity.” But the
court here noted that “there is a difference between ‘intentional copying’ and
adopting a design ‘with the intent of deriving benefit from’ another person’s
design.”  Intent to copy aspects of a
trade dress doesn’t show intent to derive benefit from J-B Weld’s reputation
through confusion.  [Not unrelatedly,
Gorilla Glue didn’t adopt J-B Weld’s mark,
even if it copied aspects of that alleged mark.]  And bad intent is neither necessary nor
sufficient for infringement. The instructions to Gorilla Glue’s graphic designer
didn’t reveal an infringing/confusing intent. As she herself stated, “I was
able to pull subtle elements [of J-B Weld’s Dress] into our package, but still
keep our package looking tough and geared towards the Gorilla brand.” “The
Eleventh Circuit has noted that public policy favors permitting companies to
imitate the products of competitors—so long as there is no intent to deceive
consumers as to the maker or origin of the product.”  Gorilla Glue intended to compete, for sure,
but its use of its own well-known color scheme and distinct logo “clearly
indicates that Gorilla Glue did not intend to confuse consumers as to
GorillaWeld’s origin.”  In addition,
certain design features may have had non-trademark functions, such as the
V-shape showing consumers that the components need to be mixed together and preventing
leakage. “Where, as here, ‘there may have been many other motivations for
Defendant’s actions,’ intentional copying does not necessarily indicate a
desire to capitalize on another’s goodwill.”
The remaining factors changed nothing. Gorilla Glue was
entitled to summary judgment on the infringement claim.
False advertising based on Gorilla Glue’s use of the phrase
“steel bond epoxy”: The court started with “epoxy.” Literal falsity requires an
unambiguous message and is a “demanding” standard.  J-B Weld argued that Gorilla Glue’s use of “epoxy”
is literally false because “epoxy refers to a polymer containing one or more
epoxy groups.” Even if the court accepted that definition, the claim failed for
lack of materiality. “[T]he presence of a false statement alone is not
sufficient to prove materiality.”  J-B
Weld’s consumer survey didn’t show materiality; it failed to show that consumers
even understood “epoxy” as chemically defined. J-B Weld’s expert didn’t
question survey respondents about whether an “epoxy resin has a specific type
of chemistry to it”: as he said, “Do you really think [consumers] care at the
end of the day if it takes two things, you put it together, and it stays there?
They’re happy.” J-B Weld’s speculation that Gorilla Glue’s prior attempts to
launch an MMA product under the name “Plastic Plus” and alleged repositioning
of the product as an epoxy indicated that “epoxy” was material were
“Steel bond”: J-B Weld argued misleadingness: a false
suggestion that GorillaWeld contains steel. Again, assuming that its survey
showed misleadingness, it still didn’t show materiality. The survey simply showed
respondents both J-B Weld Original and GorillaWeld, and then asked which of the
two products contained steel. (Amazon also originally categorized GorillaWeld
as a “metal-filled epoxy” on its website, but a retailer’s misclassification wasn’t
evidence of consumer deception.)  Nor
would the court presume deception from Gorilla Glue’s deliberate conduct
because the Eleventh Circuit hasn’t adopted that rule and in any case Gorilla
Glue’s acts weren’t of an “egregious nature.” 
J-B Weld pointed to some 2009 evidence from Gorilla Glue
employees noting that steel or a similar filler would provide “some advantage
from a marketing standpoint.” But that old evidence wasn’t a direct indication
of what actual consumers would do today. 
[Quite notable how differently courts treat evidence of advertisers’
beliefs about consumers in advertising cases versus trademark cases. There’s no
question that a substantial number of courts would treat similar evidence about
the appeal of, e.g., a particular trade dress as indicating both an intent to
deceive and likely success in doing so. I think those courts are wrong, but it’s
also a bit bizarre to presume that active competitors in a market have no idea
what might appeal to consumers.] Summary judgment for Gorilla Glue.
Counterclaims: J-B Weld argued that claims based on “steel
reinforced” should be dismissed based on laches. In Georgia, the borrowed period
for assessing laches is four years. Gorilla Glue argued that its awareness of
the phrase did not ripen into a provable claim until the present litigation. The
court agreed. In 2009, its reverse engineering attempts led to a report from an
adhesive manufacturer in 2009 stating that the “one puzzle in this adhesive is
presence of iron powder in the formula. It does not appear to add anything to
the properties … one clue to iron powder … can be found in the name ‘steel’
that labels the resin.” But that didn’t mean that Gorilla Glue knew or should
have known that it had a provable claim for false advertising simply based on a
comment from a third-party that the presence of iron in JB Weld Original was
“puzzling.” Even if it did delay, Gorilla Glue raised a material issue on
excusability, because the parties weren’t directly competing on two-tube epoxy
products until GorillaWeld was launched. 
The Eleventh Circuit has held that delay is reasonable where a plaintiff
waits to sue until coming into direct competition.
And there was a genuine dispute of material fact on literal
falsity.  Gorilla Glue had evidence that
the “presence of ‘steel’ in JB Weld glues has no significant overall
reinforcing effect,” while J-B Weld’s expert said that the addition of steel
“strengthens the adhesive, supports the adhesive, allows those steel-containing
products to provide enhanced performance and improved mechanical behavior.”  [Is that the question?  I thought it was whether there was “steel” in
there in the first place.] Anyway, could be literally false or misleading, although
the court had “reservations” about ultimate materiality and would allow
additional briefing on the matter. J-B Weld’s motion for summary judgment
Claims based on “World’s Strongest Bond” were not only
barred by laches, but also failed as a matter of law. Gorilla Glue learned of
J-B Weld’s use of the phrase in 2011, discussed challenging it in 2013, and did
nothing. Unlike with “steel reinforced,” J-B Weld was using the phrase on all its
products, including those in direct competition with Gorilla Glue.  Gorilla Glue argued that it didn’t sue because
a comparison between its Gorilla Epoxy product and J-B Weld’s competing
ClearWeld showed comparable bond strengths. “Yet if the two products had
comparable bond strengths, … it stands to reason that J-B Weld’s product could
not literally create the ‘World’s Strongest Bond,’ because another product
could create that very same bond.”
J-B Weld also showed prejudice because it “extensively used
the J-B Weld Packaging Statements and built its brand around them,” spending
millions on advertising and marketing its products between 2012-2017—all of
which prominently feature the phrase “World’s Strongest Bond.” Gorilla Glue
argued that there was no prejudice because J-B Weld knew from the beginning
that it was a wrongdoer and had no testing supporting its claims. But J-B Weld
argued that the phrase was puffery; it could hardly be said that J-B Weld would
have spent the same amount of money and effort “notwithstanding any threat of
litigation from Gorilla Glue.” [Really? 
They might have changed that one phrase; the advertising/marketing is
for the products as a whole, not a single phrase.]
Gorilla Glue argued that laches didn’t apply because it
sought only injunctive relief, but that’s only the rule where the public interest
in preventing consumer deception outweighs the effect of a plaintiff’s delay in
bringing suit. Without strong evidence of likely or actual confusion, laches
Anyway, “World’s Strongest Bond” was nonactionable puffery—exaggerated
and general. Gorilla Glue argued that the strength of an adhesive bond is
measurable and thus falsifiable. But it was too general, not a “detailed
factual claim.”

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