Nola Spice Designs, L.L.C. v. Haydel Enterp

Case: 13-30918 Document: 00512998539 Page: 1 Date Filed: 04/08/2015
IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
No. 13-30918 United States Court of Appeals
Fifth Circuit
FILED
NOLA SPICE DESIGNS, L.L.C., April 8, 2015
Plaintiff - Appellee
Lyle W. Cayce
Clerk
v.
HAYDEL ENTERPRISES, INCORPORATED, doing business as Haydel’s
Bakery,
Defendant - Third Party Plaintiff - Appellant
RAQUEL DUARTE,
Third Party Defendant - Appellee
Appeals from the United States District Court
for the Eastern District of Louisiana
Before KING, GRAVES, and HIGGINSON, Circuit Judges.
STEPHEN A. HIGGINSON, Circuit Judge:
This case concerns the intersection between intellectual property rights
and a Mardi Gras tradition. Haydel Enterprises appeals the district court’s
grant of summary judgment to Nola Spice Designs and Raquel Duarte on
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claims of trademark infringement, unfair competition, trademark dilution,
copyright infringement, and unfair trade practices. We affirm.
FACTS AND PROCEEDINGS
During Mardi Gras parades in New Orleans, parade “krewes” throw
strands of plastic beads to onlookers, who, in turn, have created “bead dogs” by
twisting these strands into the shape of a dog. Haydel Enterprises (“Haydel”)
owns Haydel’s Bakery in New Orleans, which makes and sells pastries and
cakes, including its popular king cake sold during the Mardi Gras season. In
2008, Haydel commissioned an artist to design a mascot, which was named
“Mardi Gras Bead Dog.” On October 13, 2009, and December 1, 2009, the
United States Patent and Trademark Office (“PTO”) issued two trademark
registrations to Haydel for, respectively, the phrase “MARDI GRAS BEAD
DOG” and its bead dog design. The design consists of a “stylized dog wearing a
beaded necklace, with the dog being formed by a series of spheres designed to
look like Mardi Gras style beads. The dog has two eyes and a nose, all formed
by smaller beads.” Both registrations cover king cake pastries, jewelry, and
clothing (shirts, hats, and baby jumpsuits). Haydel sells these items in its New
Orleans store, online, and through its licensee Fleurty Girl, a New Orleans
retailer. In September 2012, Haydel obtained a certificate of copyright
registration for its work titled “Bead Dog” in “photograph(s), jewelry design,
2-D artwork, sculpture.” Haydel has acknowledged that its mascot “brings to
mind the traditional bead dog” made of Mardi Gras beads. Nevertheless,
Haydel asserts that its mascot and its use of the phrase “Mardi Gras Bead Dog”
differ from the Mardi Gras tradition in key respects, which we will discuss.
In May 2012, Raquel Duarte formed Nola Spice Designs, which sells
jewelry and accessories, including necklaces and earrings featuring bead dog
trinkets. Duarte twists each bead dog by hand from beads and wire, following
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the same general method that she used to make bead dogs as a child during
Mardi Gras. By contrast, the bead dogs in Haydel’s jewelry are made of sterling
silver. Duarte sells her jewelry on the Internet under titles that include the
phrase “bead dog,” but not “Mardi Gras bead dog.” The appendix to this opinion
contains images of Haydel’s bead dog sculpture, jewelry, and trademarked
design, as well as images of Nola Spice’s jewelry and of a traditional bead dog
trinket.
Haydel learned of Duarte’s bead dogs through Haydel’s customers. In
August 2012, Haydel sent Nola Spice Designs a letter noting Haydel’s
trademark and copyright in “the bead dog design,” and demanding, inter alia,
that Nola Spice Designs “remove from [its] website all display, mention of or
reference to the bead dog design,” and “cease any and all promotion, sale,
and/or use” of materials incorporating the bead dog design. In October 2012,
Nola Spice Designs filed a complaint against Haydel seeking (1) a declaratory
judgment that Nola Spice Designs’s activities do not violate the Lanham Act,
15 U.S.C. § 1051 et seq., or any other trademark law; (2) the cancellation of
Haydel’s trademarks under 15 U.S.C. § 1119; and (3) damages for unfair trade
practices under the Louisiana Unfair Trade Practices Act (“LUTPA”), La. Rev.
Stat. Ann. § 51:1401 et seq. Haydel asserted counterclaims against Nola Spice
Designs and filed a third-party complaint against Duarte, seeking injunctive
relief and damages. Specifically, Haydel asserted counterclaims for trademark
infringement, unfair competition, and trademark dilution, all in violation of
the Lanham Act, unfair trade practices under LUTPA, and copyright
infringement in violation of the Copyright Act, 17 U.S.C. § 101 et seq. The
parties also filed cross-motions for summary judgment.
On August 28, 2013, the district court granted in part and denied in part
the motion for summary judgment filed by Nola Spice Designs and Duarte
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(collectively, “Nola Spice”) and denied Haydel’s motion for summary judgment.
Specifically, the district court granted summary judgment to Nola Spice on its
claim for a declaratory judgment that it was not infringing Haydel’s
trademarks, and the court cancelled those trademarks as unprotectable, but it
denied Nola Spice’s motion for summary judgment on its LUTPA claims. The
district court also granted summary judgment to Nola Spice on Haydel’s claims
of trademark infringement, unfair competition, trademark dilution, copyright
infringement, and unfair trade practices. Haydel timely appealed the district
court’s August 28 order. Nola Spice did not appeal the district court’s dismissal
with prejudice of its LUTPA claim.
STANDARD OF REVIEW
We review de novo a district court’s grant of summary judgment, Xtreme
Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009),
applying the same standard as the district court, Gowesky v. Singing River
Hosp. Sys., 321 F.3d 503, 507 (5th Cir. 2003). Summary judgment is
appropriate “if the movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” Fed.
R. Civ. P. 56(a). A genuine dispute of material fact exists when the “‘evidence
is such that a reasonable jury could return a verdict for the nonmoving party.’”
Royal v. CCC & R Tres Arboles, L.L.C., 736 F.3d 396, 400 (5th Cir. 2013)
(quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The moving
party “‘bears the initial responsibility of informing the district court of the
basis for its motion, and identifying those portions of [the record] which it
believes demonstrate the absence of a genuine issue of material fact.’” E.E.O.C.
v. LHC Grp., Inc., 773 F.3d 688, 694 (5th Cir. 2014) (alteration in original)
(quoting Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986)). Once the moving
party fulfills this responsibility, the non-moving party must “go beyond the
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pleadings and by her own affidavits, or by the depositions, answers to
interrogatories, and admissions on file, designate specific facts showing that
there is a genuine issue for trial.” Id. (quoting Celotex Corp., 477 U.S. at 324)
(internal quotation marks omitted). Where the non-movant bears the burden
of proof at trial, “the movant may merely point to the absence of evidence and
thereby shift to the non-movant the burden of demonstrating by competent
summary judgment proof that there is an issue of material fact warranting
trial.” Transamerica Ins. Co. v. Avenell, 66 F.3d 715, 718–19 (5th Cir. 1995)
(per curiam). In reviewing a grant of summary judgment, we view all evidence
in the light most favorable to the non-moving party and draw all reasonable
inferences in that party’s favor. United States ex rel. Taylor-Vick v. Smith, 513
F.3d 228, 230 (5th Cir. 2008). We may affirm a grant of summary judgment
“based on any rationale presented to the district court for consideration and
supported by facts uncontroverted in the summary judgment record.”
Terrebonne Parish Sch. Bd. v. Mobil Oil Corp., 310 F.3d 870, 887 (5th Cir.
2002).
DISCUSSION
I. Trademark Infringement
Trademark infringement claims are governed by the Lanham Act, 15
U.S.C. § 1051 et seq. That Act defines “trademark,” in relevant part, as:
any word, name, symbol, or device, or any combination thereof . . .
used by a person . . . to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold by
others and to indicate the source of the goods, even if that source
is unknown.
15 U.S.C. § 1127. To prevail on its claim of trademark infringement under the
Lanham Act, Haydel must show (1) it possesses valid trademarks; and (2) Nola
Spice’s use of Haydel’s trademarks creates a likelihood of confusion as to
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source, affiliation, or sponsorship. Nat’l Bus. Forms & Printing, Inc. v. Ford
Motor Co., 671 F.3d 526, 532 (5th Cir. 2012); 15 U.S.C. § 1114(1). The district
court granted summary judgment to Nola Spice on Haydel’s claim of
trademark infringement and entered a declaratory judgment of non-
infringement on the ground that Haydel’s marks are not legally protectable.
The court pretermitted discussion of likelihood of confusion.
To be legally protectable, a mark must be “distinctive” in one of two ways.
Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008).
First, a mark is inherently distinctive if its intrinsic nature serves
to identify a particular source. . . . Second, a mark has acquired
distinctiveness, even if it is not inherently distinctive, if it has
developed secondary meaning, which occurs when, in the minds of
the public, the primary significance of a mark is to identify the
source of the product rather than the product itself.
Wal–Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210–11 (2000) (internal
quotation marks, citations, and alterations omitted). The registration of
Haydel’s marks with the PTO is prima facie evidence that the marks are
inherently distinctive. See Amazing Spaces, Inc. v. Metro Mini Storage, 608
F.3d 225, 237 (5th Cir. 2010); 15 U.S.C. § 1057(b) (registration of a mark on
the principal register is prima facie evidence of the mark’s validity). 1 However,
Nola Spice may rebut this presumption by demonstrating that the marks are
not inherently distinctive. Amazing Spaces, 608 F.3d at 237. The analysis that
our circuit follows to determine whether a mark is inherently distinctive differs
1 Haydel asserts, and Nola Spice does not dispute, that the PTO registered Haydel’s
marks based on a finding of inherent distinctiveness, and not a finding of acquired
distinctiveness. Indeed, there is no evidence in the record that the PTO examined evidence
of secondary meaning. We therefore presume inherent distinctiveness. See 2 McCarthy on
Trademarks and Unfair Competition § 11:43 (4th ed.) [hereinafter McCarthy on Trademarks]
(“[W]hen the USPTO registers a mark without requiring evidence of secondary meaning
(‘acquired distinctiveness’), it is presumed to be inherently distinctive.”).
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for word marks and design marks. Id. at 243. Therefore, we analyze separately
the distinctiveness of Haydel’s word mark (“Mardi Gras Bead Dog”) and the
distinctiveness of its design mark (the bead dog design).
A. Word Mark
To assess the distinctiveness of a word mark, our circuit relies on the
spectrum set forth by Judge Friendly in Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Abercrombie divided marks into five
categories: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5)
fanciful. Id. 2 While suggestive, arbitrary, and fanciful marks are inherently
distinctive, generic marks cannot be distinctive, and descriptive marks are
distinctive only if they have acquired “secondary meaning.” Sugar Busters LLC
v. Brennan, 177 F.3d 258, 268 (5th Cir. 1999). In categorizing a term, we must
examine the context in which the term is used. Union Nat’l Bank of Tex.,
Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 847 (5th
Cir. 1990). We consider “how [the term] is used with other words,” “the
products or services to which it is applied,” and “the audience to which the
relevant product or service is directed.” Id. “[T]he question is, ‘What do the
buyers understand by the word for whose use the parties are contending?’” Id.(quoting Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) (Hand,
J.)). Although “summary judgment is rarely appropriate” on the factual
question of categorization, Xtreme Lashes, LLC, 576 F.3d at 232, we may affirm
a grant of summary judgment where the “‘record compels the conclusion that
the movant is entitled to judgment as a matter of law.’” Amazing Spaces, 608
2 The Third Circuit has provided concise examples of what constitutes each type of
mark: “(1) arbitrary or fanciful (such as ‘KODAK’); (2) suggestive (such as ‘COPPERTONE’);
(3) descriptive (such as ‘SECURITY CENTER’); and (4) generic (such as ‘DIET CHOCOLATE
FUDGE SODA’).” Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 472 (3d Cir.
2005) (internal quotation marks and citation omitted).
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F.3d at 234 (quoting Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll.
v. Smack Apparel Co. (Smack Apparel), 550 F.3d 465, 474 (5th Cir. 2008)). The
district court found, and Nola Spice argues on appeal, that “Mardi Gras Bead
Dog” is not entitled to trademark protection because it is generic, or
alternatively, because it is descriptive and has not acquired secondary
meaning. Haydel argues that “Mardi Gras Bead Dog” is suggestive as applied
to its jewelry and arbitrary as applied to its clothing and king cakes.
“A generic term is the name of a particular genus or class of which an
individual article or service is but a member.” Amazing Spaces, 608 F.3d at 241(citation omitted); see also Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971,
974 (8th Cir. 2006) (“A generic term . . . refers to the common name or nature
of the article.”). “The test for genericness is whether the public perceives the
term primarily as the designation of the article.” Soc’y of Fin. Exam’rs v. Nat’l
Ass’n of Certified Fraud Exam’rs Inc., 41 F.3d 223, 227 (5th Cir. 1995) (internal
quotation marks, citation, and alterations omitted).
The record evidence, read in the light most favorable to Haydel,
demonstrates that the term “Mardi Gras Bead Dog” refers to the figure of a
dog made from Mardi Gras beads. David Haydel, Jr., testified that “[b]ead dog,
beaded dog, a dog made of beads are all common terms for describing” a dog
made from Mardi Gras-style beads. Dawn Turner, a Louisiana resident,
submitted an affidavit stating that she has “childhood memories of making
handmade bead dogs from broken Mardi Gras beads.” Similarly, Mary-Clare
Manson stated in an affidavit that at Mardi Gras parades, her daughter
learned from other children “how to twist the broken beads into the shape of a
dog, which we have called bead dogs for many years.” Although these trinkets
are sometimes described as “bead dogs” and not “Mardi Gras bead dogs,” Philip
Weddle, the artist who created Haydel’s bead dog design, agreed at his
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deposition that the terms “Mardi Gras” and “bead dog” “naturally go together:”
“You know, it’s a bead dog. It’s kind of hard . . . not [to] put them together,
Mardi Gras.” Indeed, the Copyright Office, in response to Haydel’s application
for a copyright registration in its bead dog design, noted that “Mardi Gras bead
dogs . . . have apparently become well-known and traditional parts of Mardi
Gras.” The record evidence thus makes clear that the relevant public—those
familiar with Mardi Gras traditions—perceives the term “Mardi Gras bead
dog” primarily to refer to a dog made of Mardi Gras beads. However, Haydel
does not sell dogs made of Mardi Gras beads. Rather, Haydel sells silver
jewelry in the shape of bead dogs, clothing with the image of a bead dog, and
king cakes containing or accompanied by bead dog figurines. 3 On this record,
therefore, the term “Mardi Gras Bead Dog” describes a characteristic of
Haydel’s products, and not the products themselves. Nola Spice therefore has
not carried its burden at summary judgment of demonstrating that “Mardi
Gras Bead Dog” is generic as applied to Haydel’s jewelry, clothing, and king
cake.
The district court nevertheless properly classified Haydel’s mark as
descriptive. “A descriptive term identifies a characteristic or quality of an
article or service, such as its color, odor, function, dimensions, or ingredients.”
Amazing Spaces, 608 F.3d at 241 (citation omitted). “Examples of descriptive
marks would include Alo with reference to products containing gel of the aloe
vera plant and Vision Center in reference to a business offering optical goods
and services.” Id. We have noted that “the concept of descriptiveness must be
3Haydel’s lawyer stated to the district court that Haydel “[p]ut a bead dog [made of
metal or ceramic] in a king cake with a ribbon, which is called a pull.” In addition, David
Haydel, Sr. stated in an affidavit that Haydel baked a record-sized king cake on September
22, 2010, and that “[e]very box with a king cake piece that was sold on [that day] contained
a small statue of Haydel’s MARDI GRAS BEAD DOG mascot.”
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construed rather broadly.” Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698
F.2d 786, 792 (5th Cir. 1983) (internal quotation marks, alteration, and
citation omitted), abrogated on other grounds by KP Permanent Make–Up, Inc.
v. Lasting Impression I, Inc., 543 U.S. 111 (2004). A central inquiry to assess
descriptiveness is the “imagination test,” which “seeks to measure the
relationship between the actual words of the mark and the product to which
they are applied.” Id. “If a word requires imagination to apply it to the product
or service in question, it tends to show that the term as used is suggestive. On
the other hand, if the word conveys information about the product, it is
descriptive.” Union Nat’l Bank of Tex., 909 F.2d at 848.
The record makes clear that the phrase “Mardi Gras Bead Dog” conveys
information about Haydel’s clothing, jewelry, and king cake. The bead dog
design embodied in each of these products is, in Haydel’s words, a “rendering
of the old time bead dog.” In addition, Haydel’s own public statements closely
link these products to the traditional Mardi Gras bead dog. Haydel advertises
its clothing on its website as “Mardi Gras Bead Dog parade gear,” next to a
description of the Mardi Gras tradition of twisting beads into the shape of a
dog. Likewise, Haydel advertises its jewelry as a way to “[s]how your Mardi
Gras spirit year round.” Fleurty Girl, which sells Haydel’s jewelry pursuant to
a license, published the following advertisement: “In New Orleans, you can
twist your Mardi Gras beads a certain number of ways and make what we call
a Bead Dog. Now available for the first time ever in sterling silver.” These
statements make clear that the bead dog image is a central aspect of Haydel’s
clothing and jewelry. Similarly, the use of “Mardi Gras bead dog” in connection
with king cake, a popular Mardi Gras tradition, conveys information about the
bead dog figurine inside or accompanying the king cake. No reasonable juror
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could find that imagination is required to link Haydel’s clothing, jewelry, and
king cake to the phrase “Mardi Gras bead dog,” as Haydel uses that phrase.
A second test to determine descriptiveness is “whether competitors
would be likely to need the terms used in the trademark in describing their
products.” Zatarains, 698 F.2d at 793 (internal quotation marks and citation
omitted). An article in a magazine published by Haydel describes the
traditional bead dog as “a fond memory of Mardi Gras’ past and symbol of the
City’s youth.” Another magazine article refers to the traditional bead dog as
“an iconic Mardi Gras symbol.” Given the bead dog’s popularity and its close
connection to Mardi Gras, common sense indicates that other vendors would
need to use the term “Mardi Gras bead dog” to describe their own Mardi Gras-
themed clothing, accessories, and baked goods containing the image of a bead
dog. See id. (“Common sense indicates that in this case merchants other than
Zatarain’s might find the term ‘fish fry’ useful in describing their own
particular batter mixes.”)
In response to compelling evidence of descriptiveness, Haydel fails to
identify evidence raising a genuine factual issue as to the word mark’s inherent
distinctiveness. Haydel argues that its word mark must be suggestive as
applied to jewelry because Nola Spice conceded in its motion for summary
judgment that “Haydel does not make and sell bead dogs.” However, that
statement at most reflects that the phrase “Mardi Gras bead dog” is not generic
as applied to Haydel’s merchandise. Indeed, other phrases conveying a
product’s shape have been found to be descriptive. See Vox Amplification Ltd.
v. Meussdorffer, No. 13-4922, 2014 WL 558866, at *6 (E.D.N.Y. Feb. 11, 2014)
(“‘Teardrop[,]’ . . . used in conjunction with a teardrop-shaped instrument body,
is clearly descriptive.”), adopted, – F. Supp. 3d –, 2014 WL 4829578 (E.D.N.Y.
2014); In re Carlson Dolls Co., 31 U.S.P.Q. 2d 1319, at *2 (T.T.A.B. 1994)
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(finding that the name “Martha Washington” is descriptive of a doll intended
to represent the historical figure Martha Washington).
Also unpersuasive is Haydel’s argument that its word mark is arbitrary
as applied to clothing and king cake. Arbitrary marks “bear no relationship to
the products or services to which they are applied.” Amazing Spaces, 608 F.3d
at 241 (citation omitted); see also Union Nat’l Bank of Tex., 909 F.2d at 845(“[T]he term ‘arbitrary’ refers to ordinary words which do not suggest or
describe the services involved.”). Haydel notes that “Apple” is commonly
described as an arbitrary mark in connection with computers, even though an
Apple computer displays the image of an apple. See Sport Supply Grp., Inc. v.
Columbia Cas. Co., 335 F.3d 453, 460 n.7 (5th Cir. 2003). However, a mark’s
categorization under the Abercrombie typology depends on the context in which
it appears and on the nature of the products sold. See Union Nat’l Bank of Tex.,
909 F.2d at 847. Apple Computer sells electronic products, which bear no
relationship to the fruit. By contrast, Haydel’s public statements make clear
that it is marketing Mardi Gras-related merchandise; the bead dog image on
its clothing and the bead dog figurine inside or accompanying its king cake are
part of and describe the product being sold. No reasonable juror could therefore
conclude that the phrase “Mardi Gras bead dog” “bear[s] no relationship” to
Haydel’s clothing and king cake. Amazing Spaces, 608 F.3d at 241 (citation
omitted). Because the record compels the conclusion that Haydel’s word mark
is descriptive as applied to jewelry, clothing, and king cake, the mark is legally
protectable as a source identifier only if it has acquired secondary meaning,
which we discuss below.
B. Design Mark
We now analyze the distinctiveness of Haydel’s design mark, which the
PTO defined as “a stylized dog wearing a beaded necklace, with the dog being
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formed by a series of spheres designed to look like Mardi Gras style beads. The
dog has two eyes and a nose, all formed by smaller beads.”
While the Abercrombie test determines the inherent distinctiveness of
word marks, we recently embraced the Seabrook Foods test to determine the
inherent distinctiveness of a design mark, although we did not “go so far as to
hold that the Abercrombie test is eclipsed every time a mark other than a word
is at issue.” Amazing Spaces, 608 F.3d at 243. To assess inherent
distinctiveness, the Seabrook Foods test asks:
[1] whether it was a “common” basic shape or design, [2] whether
it was unique or unusual in a particular field, [3] whether it was a
mere refinement of a commonly-adopted and well-known form of
ornamentation for a particular class of goods viewed by the public
as a dress or ornamentation for the goods, or [4] whether it was
capable of creating a commercial impression distinct from the
accompanying words.
Id. at 232 (quoting Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342,
1344 (C.C.P.A. 1977)). 4 We have noted that “[t]he first three of the Seabrook
Foods ‘questions are merely different ways to ask whether the design, shape
or combination of elements is so unique, unusual or unexpected in this market
that one can assume without proof that it will automatically be perceived by
customers as an indicator of origin—a trademark.’” Id. at 243–44 (internal
quotation marks omitted) (quoting I.P. Lund Trading ApS v. Kohler Co., 163
F.3d 27, 40 (1st Cir. 1998) (quoting 1 McCarthy on Trademarks § 8:13)). If not,
4 This case does not require analysis of the fourth question in the Seabrook Foods test,
which “by its terms applies only when a party seeks trademark protection for a background
design typically accompanied by words.” Amazing Spaces, 608 F.3d at 243 n.14. We further
note that Nola Spice, in relying on the Seabrook Foods test, does not argue that the bead dog
design in Haydel’s products is incapable of inherent distinctiveness as “product design” trade
dress. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 207 (2000) (analyzing a claim
of infringement of unregistered trade dress).
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then the mark is not inherently distinctive and is protectable only upon a
showing of secondary meaning. Id. at 247. We have also found useful the
following language from the Restatement: “The manner in which a symbol or
design is used . . . is relevant to the likelihood that it will be perceived as an
indication of source. In some instances a design is likely to be viewed as mere
ornamentation rather than as a symbol of identification.” Restatement (Third)
of Unfair Competition § 13 cmt. d; Amazing Spaces, 608 F.3d at 246; see also 1
McCarthy on Trademarks § 3:3 (“Usually, if when viewed in context, it is not
immediately obvious that a certain designation is being used as an indication
of origin, then it probably is not. In that case, it is not a trademark.”).
We measure the distinctiveness of a design mark with reference to the
market in which the mark is used, although uses beyond that market are also
relevant. See Amazing Spaces, 608 F.3d at 245 n.18 (framing the inquiry as
whether the design mark “identifies and distinguishes Amazing Spaces’s self-
storage services from others’ self-storage services,” while noting that “[t]his
does not mean . . . that we must blind ourselves to uses beyond the self-storage
services industry”). In evaluating distinctiveness, our circuit and other courts
have considered evidence of third-party use of similar marks. See id. at 232(noting that “the same or a similar five-pointed star was used in commerce in
at least 63 different industries and businesses on buildings, property, and as
part of logos and on the buildings of at least 28 other self-storage locations”
(internal quotation marks and citation omitted)); see also Seabrook Foods, 568
F.2d at 1345 (noting “evidence of third-party uses and registrations of similar
marks on frozen foods, indicating that Seabrook’s ‘oval’ design is not unique in
this field”); Wiley v. Am. Greetings Corp., 762 F.2d 139, 142 (1st Cir. 1985)
(applying Seabrook Foods and affirming a grant of summary judgment on a
common law trademark claim on the ground that the mark—a red heart affixed
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to the left breast of a teddy bear—was not inherently distinctive, noting that
“[t]he record contains pictures of, and references to, an abundance of plush
animals, including many teddy bears, that sport heart designs on their chests
or other parts of their anatomy”).
To prevail on summary judgment, Nola Spice must offer sufficient
evidence both to overcome the presumption of inherent distinctiveness that
accompanies Haydel’s registration, and to compel the conclusion that Haydel’s
design mark is not inherently distinctive as a matter of law. See Amazing
Spaces, 608 F.3d at 234. A first step is to define the relevant market. Haydel
defines the relevant market as one for pastries, clothing, and jewelry, while
Nola Spice argues that the market is one for “bead dogs.” We believe the
market is appropriately defined as one for Mardi Gras-themed products. This
definition is consistent with advertising of Haydel’s products, which makes
clear that Haydel is selling Mardi Gras-themed merchandise to an audience
familiar with Mardi Gras traditions. See generally A.J. Canfield Co. v.
Honickman, 808 F.2d 291, 303 (3d Cir. 1986) (recognizing the importance of
consumer understanding to determining the relevant product genus). Haydel
describes its clothing as “Mardi Gras Bead Dog parade gear.” Haydel’s jewelry
is advertised as a traditional bead dog cast in sterling silver, and as a way to
“[s]how your Mardi Gras spirit year round.” As Haydel acknowledges, king
cake is also a Mardi Gras tradition. We therefore must consider whether
Haydel’s bead dog design is “so unique, unusual or unexpected” in the market
for Mardi Gras-themed merchandise that it “will automatically be perceived
by customers as an indicator of origin.” Amazing Spaces, 608 F.3d at 243–44.
We may also consider uses of bead dog designs beyond that market, given that
a “[c]ommonplace . . . design[’s] . . . appearance on numerous products makes
it unlikely that consumers will view [it] as distinctive of the goods or services
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of a particular seller.” Restatement (Third) of Unfair Competition § 13 cmt. d;
Amazing Spaces, 608 F.3d at 245 n.18.
The record is replete with evidence that Haydel’s design is substantially
similar to the traditional bead dog that parade-goers have long crafted from
Mardi Gras beads. Haydel describes its design mark as “a rendering of the old
time bead dog, jazzed up for the 21st century.” In its application for a copyright
registration for its bead dog design, Haydel acknowledged that the image
“brings to mind the traditional bead dog.” Indeed, David Haydel, Jr. testified
that every bead dog that could be made would “look like” Haydel’s trademarked
design. Ryan Haydel likewise testified that there was not “any other way to
make a bead dog” besides Haydel’s bead dog design. An article published in the
magazine Rally to Rescue describes Haydel’s design mark as taking “the form
of an iconic Mardi Gras symbol: the bead dog.” In addition to these statements,
the record contains various images of traditional bead dogs that are similar to
Haydel’s design. These include a photograph of a bead dog trinket on an artist’s
weblog; a photograph of a bead dog crafted by Duarte from Mardi Gras-style
beads during her deposition, which Haydel acknowledges is a traditional bead
dog trinket; and still shots from a YouTube.com video, titled Boudreaux the
BeadDog, featuring a cartoon bead dog.
Haydel argues that its design is distinct from a traditional bead dog
because its design has eyes, a nose, a tail, and a necklace. However, the cartoon
in Boudreaux the BeadDog also has eyes, a nose and a tail. Other images in
the record depict dog trinkets made of beads and wearing a “necklace,” which
may be described as a collar. At most, the eyes, nose, tail, and collar on Haydel’s
design are a mere “refinement” of the traditional bead dog, which is a well-
known image to those who celebrate Mardi Gras. See Wiley, 762 F.2d at 142(“The fact that Wiley’s alleged mark is a red heart, permanently affixed to the
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left breast of a teddy bear does not . . . serve to distinguish [plaintiff’s] use of
the design from others’ uses of hearts on other stuffed animals. These
characteristics, even if they in combination could be deemed unique, are ‘mere
refinement[s] of a commonly-adopted and well-known form of
ornamentation . . . .’” (emphasis in original) (quoting Seabrook Foods, 568 F.2d
at 1344)). Given the similarity between Haydel’s design mark and a traditional
Mardi Gras bead dog, no reasonable juror could conclude that Haydel’s mark
is “so unique, unusual or unexpected” when used in connection with Mardi
Gras-themed merchandise that it would “automatically be perceived by
customers as an indicator of origin.” Amazing Spaces, 608 F.3d at 243–44.
Hence, Haydel’s design mark, like its word mark, is not inherently distinctive
and may be protected only if it has acquired secondary meaning.
C. Secondary Meaning
“Secondary meaning occurs when, in the minds of the public, the primary
significance of a mark is to identify the source of the product rather than the
product itself.” Id. at 247 (internal quotation marks and citations omitted). In
other words, “[t]he mark must denote to the consumer a single thing coming
from a single source to support a finding of secondary meaning.” Zatarains,
698 F.2d at 795 (internal quotation marks and citation omitted). The district
court found that even if Haydel’s word and design marks were descriptive and
not generic, there was no factual issue as to whether these marks had acquired
secondary meaning.
Because Nola Spice has demonstrated that Haydel’s marks are
descriptive, rebutting the presumption of inherent distinctiveness arising from
Haydel’s registrations, Haydel bears the burden of establishing secondary
meaning at trial. See Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559,
567 (5th Cir. 2005) (“Registration is prima facie proof that the registered mark
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is distinctive. However, this presumption can be overcome by showing that the
mark is merely descriptive. The burden then shifts to the registrant to prove
that its mark has secondary meaning.” (citations omitted)); American Heritage
Life Insurance Company v. Heritage Life Insurance Company, 494 F.2d 3, 12
n.9 (5th Cir. 1974) (noting that where the mark was descriptive at most, but
registration appeared to have been based on a finding of arbitrariness, the
burden of showing secondary meaning rested with the putative mark holder),
abrogated on other grounds by B & B Hardware, Inc. v. Hargis Indus., Inc., No.
13-352, – S. Ct. –, 2015 WL 1291915 (2015); 20th Century Wear, Inc. v.
Sanmark-Stardust Inc., 747 F.2d 81, 88 n.8 (2d Cir. 1984) (“We hold . . . that
in the absence of evidence that the Patent and Trademark Office registered the
mark because of its secondary meaning, 15 U.S.C. § 1052(f), registration does
not shift the burden of proving a lack of secondary meaning onto the
defendant.”). In the summary judgment context, Nola Spice may merely point
to an absence of evidence of secondary meaning, thus shifting to Haydel the
burden of demonstrating by competent summary judgment proof that there is
a genuine issue of fact warranting trial. See Transamerica Ins. Co., 66 F.3d at
718–19.
The burden of demonstrating secondary meaning “is substantial and
requires a high degree of proof.” Test Masters Educ. Servs., 428 F.3d at 567.
The determination of secondary meaning is “primarily an empirical inquiry,”
informed by the following factors:
(1) length and manner of use of the mark or trade dress, (2) volume
of sales, (3) amount and manner of advertising, (4) nature of use of
the mark or trade dress in newspapers and magazines, (5)
consumer-survey evidence, (6) direct consumer testimony, and (7)
the defendant’s intent in copying the trade dress [or mark].
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Amazing Spaces, 608 F.3d at 248 (internal quotation marks and citation
omitted). “While none of these factors alone will prove secondary meaning, in
combination they may establish the necessary link in the minds of consumers
between a product and its source.” Zatarains, 698 F.2d at 795. Although
secondary meaning is a question of fact, summary judgment may be upheld if
the record “compels the conclusion that the movant is entitled to judgment as
a matter of law.” Smack Apparel, 550 F.3d at 474; Amazing Spaces, 608 F.3d
at 248–50 (affirming grant of summary judgment where plaintiff failed to raise
a genuine issue of fact on secondary meaning).
As to the first factor for assessing secondary meaning, Haydel began
using its marks in October 2008, when it placed a statue of its mascot in front
of its bakery, three-and-a-half years before Nola Spice began selling bead dog
jewelry. Haydel began using its marks in connection with the sale of jewelry,
clothing, and king cake in April 2009. This duration of use is relatively brief
and does not alone raise a factual issue for trial with respect to secondary
meaning. See Amazing Spaces, 608 F.3d at 248 (finding an absence of
secondary meaning, as a matter of law, where the mark was used for ten years);
Bank of Tex. v. Commerce Sw., Inc., 741 F.2d 785, 788 (5th Cir. 1984) (finding
an absence of secondary meaning despite nine years of use, and noting that
“[a]lthough one party may have been successful in imbuing a name with
secondary meaning in three short years, that does not mean that length of time
alone is sufficient to establish secondary meaning”). As for sales volume,
Haydel’s financial records reflect that it sold bead dog-related items worth
approximately $30,500 between January 2007 and May 2013. These sales
include approximately 80 clothing items and 300 jewelry items. The record
does not reflect the number of king cakes that Haydel sold in connection with
its marks. Haydel’s sales are low compared to the sales of products bearing
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marks that we have found to have secondary meaning. See Zatarains, 698 F.2d
795–96 (holding that the district court’s finding of secondary meaning was not
clearly erroneous where Zatarain’s sold 916,385 cases of Fish-Fri between 1964
and 1979); Smack Apparel, 550 F.3d at 472, 478 (affirming summary judgment
to mark holders on secondary meaning where recent sales of products bearing
the marks exceeded $93 million).
With respect to the third factor, the “amount and manner of advertising,”
David Haydel, Sr. stated in an affidavit that Haydel spent more than $594,000
between October 2008 and August 2013 on “the development and promotion
and expanding the use” of Haydel’s bead dog mascot. However, David Haydel
did not specify how much of this money was spent on the “development” of the
mascot, which may not have affected public perception of the mark. As for
promotion and advertising, “spending substantial amounts of money does not
of itself cause a mark or trade dress to acquire secondary meaning.” Pebble
Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 541 (5th Cir. 1998), abrogated on
other grounds by TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23(2001). The relevant question “is not the extent of the promotional efforts, but
their effectiveness in altering the meaning of [the mark] to the consuming
public.” Zatarains, 698 F.2d at 795 (internal quotation marks and citation
omitted); see also Amazing Spaces, 608 F.3d at 248 (finding an absence of
secondary meaning as a matter of law even though plaintiff had spent nearly
$725,000 in advertising). Haydel’s most significant promotional effort appears
to have been “Paws on Parade,” an exhibit coordinated with the Louisiana
Society for the Prevention of Cruelty to Animals (“LA/SPCA”) to raise
awareness about animal welfare. Some 74 bead dog sculptures, each about 54
inches long and 42 inches tall, were displayed throughout New Orleans from
January to September 2012. Haydel donated the mold to create the sculptures,
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which embody Haydel’s design mark. The sculptures were painted by New
Orleans artists and displayed next to a plaque with various names, including
the LA/SPCA, Haydel, the artist, and the organization that sponsored the
sculpture.
The Paws on Parade exhibit has little probative value on the question of
secondary meaning. The statues do not feature the word mark “Mardi Gras
Bead Dog.” Although the statues embody Haydel’s design mark, the record
does not raise an inference that the exhibit led the consuming public to
associate that mark with a single source. See Zatarains, 698 F.2d at 795. In
evaluating the effectiveness of advertising, we have considered the context in
which the mark appears. See Amazing Spaces, 608 F.3d at 248–49. Haydel’s
name on the plaque is no more prominent than names of other people and
organizations involved in the exhibit. In addition, David Haydel, Jr. conceded
that a person could read the plaques only by approaching the sculptures, and
not from a moving vehicle. Two Nola Spice customers stated that that they had
seen the Paws on Parade statues or photos of these statues, and that they had
not known that these statues “were associated with Haydel’s Bakery or any
store or artist in particular.” One of the customers stated that she “thought it
was simply a Mardi Gras themed art project.” The exhibit’s short duration
further limits its potential effect. See Test Masters Educ. Servs. v. Singh, 46 F.
App’x 227, at *4 (5th Cir. 2002) (per curiam) (noting that “[t]he probative value
of advertising depends on the presence of data regarding its reach, frequency,
and duration”).
Haydel’s promotional efforts also include the placement, beginning in
October 2008, of one or two bead dog statues outside its bakery, atop a pedestal
that reads “Haydel’s Mardi Gras Bead Dog.” David Haydel, Jr. testified that
“hundreds of people” take pictures with the bead dog statue every day.
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However, there is no evidence that the sculptures led consumers to associate
the design and word marks only with Haydel or another single source. See
Amazing Spaces, 608 F.3d at 248 (“In considering th[e] evidence [of secondary
meaning], the focus is on how it demonstrates that the meaning of the mark or
trade dress has been altered in the minds of consumers.” (quoting Pebble Beach
Co., 155 F.3d at 541)). Indeed, Haydel’s inclusion of its own name before “Mardi
Gras Bead Dog” on the pedestal suggests a generic use of that phrase. See 2
McCarthy on Trademarks § 15:52 (“Use of a term in its descriptive sense or in
a nontrademark sense is not evidence of secondary meaning.” (footnotes
omitted)); see also E.T. Browne Drug Co. v. Cococare Prods., Inc., 538 F.3d 185,
200 (3d Cir. 2008) (finding that use of the phrase “Palmer’s Cocoa Butter
Formula” was not probative on the question of whether the phrase “Cocoa
Butter Formula” had acquired secondary meaning). In addition, the exposure
of a single sculpture in a permanent spot is necessarily limited. Furthermore,
Haydel does not claim trademarks in connection with sculptures, but rather in
connection with clothing, jewelry, and king cake. Given the bead dog’s
popularity in New Orleans and the similarities between Haydel’s design and a
traditional bead dog, even a consumer who associated the large bead dog
sculptures with a single source would not automatically associate other
merchandise bearing a bead dog image with a single source. See Genesee
Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 143 n.3 (2d Cir. 1997) (noting
that secondary meaning “depends on whether a significant number of
prospective purchasers understand the term when used in connection with the
particular kinds of goods involved in the registration certificate as indicative
of an association with a specific entity”). With respect to clothing, jewelry, and
king cake, Haydel’s promotion of its marks is limited. Haydel advertised that
merchandise on its website and in Mambo Beat, its annual magazine. In 2010,
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Haydel baked two record-sized king cakes and included a “small statue” of its
mascot with each piece of cake sold to the public. However, the record does not
reflect the effectiveness of this one-day promotional event in creating an
association in the minds of consumers between Haydel and its bead dog design.
Press coverage of Haydel’s marks, the fourth factor in the analysis of
secondary meaning, is also slim. Two short online articles about Paws on
Parade include photographs of the statues and mention that Haydel provided
the mold. Haydel’s magazine Mambo Beat and a magazine titled Rally to
Rescue published longer articles that describe Paws on Parade and include
Haydel’s design and word marks, but there is no evidence of these magazines’
circulation or of their impact on public perception. Haydel does not identify any
evidence of third-party media coverage of its marks in connection with
clothing, jewelry, or king cake.
Haydel argues that Nola Spice’s intent in copying Haydel’s marks
supports a finding of secondary meaning. However, Nola Spice did not use
Haydel’s word mark, “Mardi Gras Bead Dog.” As for Haydel’s design mark,
Haydel’s discussion of secondary meaning does not identify evidence it believes
demonstrates Nola Spice’s intent to copy that mark. Elsewhere in its briefs,
Haydel points to evidence that Duarte briefly posted images of statues from
the Paws on Parade exhibit on Nola Spice’s webpages on Facebook.com,
Pinterest.com, and Twitter.com. However, the record does not support an
inference that Duarte knew Haydel provided the mold for these statues, or that
she intended to copy Haydel’s design in crafting her bead dog jewelry. With
respect to the remaining factors, Haydel does not offer any consumer testimony
or survey evidence. While survey evidence is not required to establish
secondary meaning, it is “‘the most direct and persuasive way of establishing
secondary meaning.’” Amazing Spaces, 608 F.3d at 248 (quoting Zatarains, 698
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F.2d at 795). We have cited one scholar’s observation that “‘in a borderline case
where it is not at all obvious that [a] designation has been used as a mark,
survey evidence may be necessary to prove trademark perception.’” Id. at 249
(citing 1 McCarthy on Trademarks § 3:3).
In light of the above factors, we agree with the district court that Haydel
failed to raise a fact issue as to whether its design and word marks acquired
secondary meaning. The overwhelming evidence demonstrates that Haydel’s
marks are not distinctive and therefore not protectable. Because a mark’s legal
protectability is an element of a trademark infringement claim, the district
court properly granted summary judgment to Nola Spice on its claim for a
declaratory judgment that it was not infringing Haydel’s marks. The court also
properly granted summary judgment to Nola Spice on Haydel’s counterclaim
of trademark infringement. The district court properly pretermitted discussion
of likelihood of confusion.
II. Cancellation of Trademark Registrations
A court may cancel the registration of a trademark that it determines is
not distinctive. See 15 U.S.C. § 1119 (“In any action involving a registered mark
the court may . . . order the cancellation of registrations . . . .”); see also Xtreme
Lashes, LLC, 576 F.3d at 232 (“[I]f the mark is found to be either generic or
descriptive and lacking secondary meaning, a court may cancel it.”). The
district court canceled Haydel’s word mark and design mark registrations for
all three classifications—clothing, jewelry, and king cake pastries—based on
the court’s findings that the marks were generic, or, alternatively, descriptive
without secondary meaning. Cancellation of Haydel’s word and design marks
was proper because the record evidence compels the conclusion that these
marks are descriptive of Haydel’s products but lack secondary meaning.
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III. Unfair Competition
The district court granted summary judgment to Nola Spice on Haydel’s
counterclaim of false designation of origin in violation of Section 43(a) of the
Lanham Act, which prohibits certain types of unfair competition. 15 U.S.C.
§ 1125(a); Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 29
(2003). The relevant provision of Section 43(a) creates a cause of action against
a person who, in connection with goods or services,
uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading
representation of fact, which . . . is likely to cause confusion, or to
cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person . . . .
15 U.S.C. § 1125(a)(1)(A). Haydel argues that Nola Spice violated Section 43(a)
by engaging in “passing off,” which “occurs when a producer misrepresents his
own goods or services as someone else’s.” Dastar Corp., 539 U.S. at 27 n.1.
Haydel points to the following record evidence in support of its claim. As of
August 14, 2012, Nola Spice’s Facebook.com page featured a photograph of
Duarte posing with a bead dog sculpture from the Paws on Parade exhibit.
Only the sculpture’s ears, eyes, and part of its nose are visible in the
photograph. Duarte later posted the same photograph on Nola Spice’s pages on
Twitter.com and Pinterest.com. As of September 7, 2012, Duarte had replaced
the photograph on Facebook.com with a photograph of herself posing with
another Paws on Parade statue, which has the head of a crawfish and the body
of a bead dog. Next to the photograph is an image of a poster, created by
Haydel, portraying about thirty miniature versions of the bead dog sculptures
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from Paws on Parade. None of these photographs or images includes Haydel’s
name or depicts the bead dog statue that stands outside Haydel’s store.
The district court based its grant of summary judgment on a finding that
Haydel’s marks are unprotectable as a matter of law. Although Section 43(a)
“extends beyond mere trademark protection,” Schlotzsky’s, Ltd. v. Sterling
Purchasing & Nat’l Distrib. Co., 520 F.3d 393, 399 (5th Cir. 2008), Haydel’s
claim is foreclosed because its bead dog design lacks distinctiveness. Given that
Haydel’s design does not act as a source identifier, the image of a sculpture
incorporating that design on Nola Spice’s webpages could not “cause confusion
. . . as to the origin, sponsorship, or approval” of Nola Spice’s goods. 15 U.S.C.
§ 1125(a)(1)(A); see Samara Bros., 529 U.S. at 210 (“Nothing in § 43(a)
explicitly requires a producer to show that its trade dress is distinctive, but
courts have universally imposed that requirement, since without
distinctiveness the trade dress would not ‘cause confusion . . . as to the origin,
sponsorship, or approval of [the] goods,’ as the section requires.” (alterations
in original)); see also Genesee Brewing Co., 124 F.3d at 150 (holding that to
recover for unfair competition based on the use of a generic term, the plaintiff
was required to show, inter alia, “an association of origin by the consumer
between the mark and the first user, that is, secondary meaning” (internal
quotation marks and citation omitted)). Because Haydel’s marks lack
secondary meaning and are therefore not distinctive, Nola Spice was entitled
to summary judgment on Haydel’s unfair competition claim. 5
5 Although Nola Spice’s display of sculpture from Paws on Parade does not alone
support an unfair competition claim under Section 43(a), our holding does not preclude
Haydel from bringing future unfair competition claims if Nola Spice misrepresents its
relationship with Haydel in other ways. See Schlotzsky’s, Ltd., 520 F.3d at 399–400.
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IV. Trademark Dilution
The district court granted summary judgment to Nola Spice on Haydel’s
counterclaims for trademark dilution under the Lanham Act and Louisiana
law. The Lanham Act, as amended by the Trademark Dilution Revision Act,
provides, in relevant part,
the owner of a famous mark that is distinctive, inherently or
through acquired distinctiveness, shall be entitled to an injunction
against another person who, at any time after the owner’s mark
has become famous, commences use of a mark or trade name in
commerce that is likely to cause dilution by blurring or dilution by
tarnishment of the famous mark, regardless of the presence or
absence of actual or likely confusion, of competition, or of actual
economic injury.
15 U.S.C. § 1125(c)(1). To state a dilution claim under the Lanham Act, Haydel
must show that (1) it owns a famous and distinctive mark; (2) Nola Spice has
commenced using a mark in commerce that is diluting Haydel’s mark; (3) the
similarity between Nola Spice’s mark and Haydel’s mark gives rise to an
association between the marks; and (4) the association is likely to impair the
distinctiveness of Haydel’s mark or harm the reputation of Haydel’s mark. See
Nat’l Bus. Forms & Printing, Inc., 671 F.3d at 536 (citing Louis Vuitton
Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 264–65 (4th Cir.
2007)). Because Haydel’s marks are not distinctive, the district court properly
granted summary judgment to Nola Spice on Haydel’s federal dilution claim.
Louisiana’s anti-dilution statute provides:
Likelihood of injury to business reputation or of dilution of the
distinctive quality of a mark or trade name shall be a ground for
injunctive relief in cases of infringement of a mark registered or
not registered or in cases of unfair competition notwithstanding
the absence of competition between the parties or the absence of
confusion as to the source of goods or services.
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La. Rev. Stat. Ann. § 51:223.1. Although a dilution claim under Louisiana law
requires a showing of distinctiveness, Louisiana courts have provided little
guidance on the meaning of distinctiveness for dilution purposes. See
Advantage Rent-A-Car, Inc. v. Enter. Rent-A-Car, Co., 238 F.3d 378, 381 (5th
Cir. 2001). In the context of trademark infringement, the Louisiana Supreme
Court has adopted the same definition of distinctiveness that applies to a
Lanham Act claim: the mark must either be inherently distinctive or have
secondary meaning. Id. (citing Gulf Coast Bank v. Gulf Coast Bank & Trust
Co., 652 So. 2d 1306 (La. 1995)). We believe the Louisiana Supreme Court
would apply the same definition for purposes of a dilution claim, and Haydel
does not argue otherwise. See Six Flags, Inc. v. Westchester Surplus Lines Ins.
Co., 565 F.3d 948, 954 (5th Cir. 2009) (noting that to determine Louisiana law
in the absence of authority from the Louisiana Supreme Court, “we must make
an Erie guess and determine, in our best judgment, how that court would
resolve the issue if presented with the same case” (internal quotation marks
and citation omitted)). Given that Haydel’s marks are not distinctive, the
district court’s grant of summary judgment to Nola Spice was proper with
respect to Haydel’s state law dilution claim.
V. Copyright Infringement
“To prove copyright infringement, a plaintiff must establish (1)
ownership of a valid copyright; (2) factual copying; and (3) substantial
similarity.” Armour v. Knowles, 512 F.3d 147, 152 (5th Cir. 2007) (per curiam).
As to the first element, Haydel obtained a certificate of a copyright registration
for its work titled “Bead Dog,” in the form of “photograph(s), jewelry design,
2-D artwork, [and] sculpture.” The Copyright Act provides that a certificate of
copyright registration “made before or within five years after first publication
of the work shall constitute prima facie evidence of the validity of the
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copyright.” 17 U.S.C. § 410(c). Although the presumption of validity may be
rebutted, see Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir.
1995), Nola Spice does not develop any argument that Haydel’s work as a whole
is unprotectable. We therefore do not assess the validity of Haydel’s copyright.
See Audler v. CBC Innovis Inc., 519 F.3d 239, 255 (5th Cir. 2008) (“A party
waives an issue if he fails to adequately brief it.” (internal quotation marks
and citation omitted)). Nola Spice also does not argue against a finding of
factual copying, the second element required for a copyright infringement
claim. Rather, Nola Spice argues that the third element is absent because its
works are not substantially similar to Haydel’s bead dog design.
The district court relied on the merger doctrine in granting summary
judgment to Nola Spice on Haydel’s copyright infringement claim. The merger
doctrine is based on the statutory prohibition against copyright protection for
ideas. See 17 U.S.C. § 102(b). “If an idea is susceptible to only one form of
expression, the merger doctrine applies and § 102(b) excludes the expression
from the Copyright Act.” Veeck v. S. Bldg. Code Cong. Int’l, Inc., 293 F.3d 791,
801 (5th Cir. 2002). However, examples of bead dogs in the record make clear
that the idea of a bead dog may be expressed in various ways. The merger
doctrine therefore does not alone preclude a finding of copyright infringement.
Still, “we may affirm the district court’s decision on any ground supported by
the record, even if it was not the basis for the judgment.” Terrebonne Parish
Sch. Bd., 310 F.3d at 878. We find that the grant of summary judgment was
appropriate based on the absence of substantial similarity between Haydel’s
and Nola Spice’s bead dogs.
While the question of substantial similarity “typically should be left to
the factfinder, summary judgment may be appropriate if the court can
conclude, after viewing the evidence and drawing inferences in a manner most
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favorable to the nonmoving party, that no reasonable juror could find
substantial similarity.” Peel & Co. v. Rug Mkt., 238 F.3d 391, 395 (5th Cir.
2001) (footnote omitted). To assess substantial similarity, we have often cited
the following test: “[A] side-by-side comparison must be made between the
original and the copy to determine whether a layman would view the two works
as ‘substantially similar.’” Creations Unlimited, Inc. v. McCain, 112 F.3d 814,
816 (5th Cir. 1997) (per curiam) (footnote omitted). However, where the
copyrighted work contains unprotectable elements, the first step is to
distinguish between protectable and unprotectable elements of the copyrighted
work. See Peel & Co., 238 F.3d at 398 (holding that the district court erred in
failing to identify the original constituent elements of the copyrighted design
before comparing the two works); Kepner-Tregoe, Inc. v. Leadership Software,
Inc., 12 F.3d 527, 533–34 (5th Cir. 1994) (“To determine the scope of copyright
protection in a close case, a court may have to filter out . . . unprotectable
elements of plaintiff’s copyrighted materials to ascertain whether the
defendant infringed protectable elements of those materials.”); see also Feist
Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (describing an
element of infringement as the “copying of constituent elements of the work
that are original”). The next inquiry is whether the allegedly infringing work
bears a substantial similarity to the protectable aspects of the original work.
See Peel & Co., 238 F.3d at 398 (“To support a claim of copyright infringement,
the copy must bear a substantial similarity to the protected aspects of the
original.”). This determination should be based on the perspective of a
“layman” or “ordinary observer.” See id. (“[A] layman must detect piracy
without any aid or suggestion or critical analysis by others.” (internal
quotation marks and citation omitted)). Our precedents also support
consideration of the importance of the copied protectable elements to the
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copyrighted work as a whole. Positive Black Talk Inc. v. Cash Money Records
Inc., 394 F.3d 357, 373 n.12 (5th Cir. 2004), abrogated on other grounds by Reed
Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); Eng’g Dynamics, Inc. v.
Structural Software, Inc., 26 F.3d 1335, 1343 (5th Cir. 1994). 6
Applying these principles to Haydel’s claim, we first identify the
unprotectable elements in Haydel’s bead dog design, which is manifested most
clearly in sculpture form. Haydel concedes that its bead dog design is a
“derivative” work, meaning that it is “based upon one or more preexisting
works.” 17 U.S.C. § 101. “The copyright in a . . . derivative work extends only
to the material contributed by the author of such work, as distinguished from
the preexisting material employed in the work, and does not imply any
exclusive right in the preexisting material.” Id. § 103(b); see also Yurman
Design, Inc. v. PAJ, Inc., 262 F.3d 101, 109–110 (2d Cir. 2001). Haydel concedes
that the body of its bead dog design is unprotectable as preexisting material
because it mimics the body of a traditional bead dog. Haydel nevertheless
contends that its “original contributions include, among other things, the
selection and arrangement of a necklace, nose, eyes, and a tail, all made of
6 Our analysis here is similar to the “abstraction-filtration-comparison” test that our
circuit has adopted to assess the substantial similarity of computer programs. See Eng’g
Dynamics, Inc., 26 F.3d at 1343. Under that test, we abstract the copyrighted program into
its constituent parts, filter out unprotectable elements, and compare the remaining
protectable expression with the allegedly infringing program to determine whether the
defendant misappropriated substantial elements of the plaintiff’s program. Id. at 1342–43
(quoting Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 834 (10th Cir. 1993)).
Several courts and a copyright scholar have found this test, or variations on it, well-suited to
analyze copyrighted works other than computer programs. See Country Kids ’N City Slicks,
Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996) (wooden dolls); R. Ready Prods., Inc. v.
Cantrell, 85 F. Supp. 2d 672, 683 & n.10 (S.D. Tex. 2000) (advertising letters); Churchill
Livingstone, Inc. v. Williams & Wilkins, 949 F. Supp. 1045, 1050 (S.D.N.Y 1996) (medical
textbooks); 4 Nimmer on Copyright § 13.03 (noting that “there is no reason to limit” the
filtration test to the realm of computer software).
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smaller beads.” However, anatomical features on replicas of animals are ideas
not entitled to copyright protection. See Blehm v. Jacobs, 702 F.3d 1193, 1204
(10th Cir. 2012) (“[C]ommon anatomical features such as arms, legs, faces, and
fingers [on cartoon figures] . . . are not protectable elements.”); Mattel, Inc. v.
Goldberger Doll Mfg. Co., 365 F.3d 133, 136 (2d Cir. 2004) (“An upturned nose,
bow lips, and wide eyes are the ‘idea’ of a certain type of doll face. That idea
belongs not to Mattel but to the public domain.”). As for the “necklace” in
Haydel’s design, the ring of spheres around the neck of Haydel’s bead dog may
be characterized as a collar. Collars on dogs, like anatomical features, are
common ideas that belong to the public domain. Still, while the idea of eyes, a
nose, a tail, and a collar are not protectable, the manner in which Haydel
expresses these features may be protectable, as long as that expression is
original and not dictated by the underlying idea. See Mattel, Inc., 365 F.3d at135–36 (“The copyright does not protect ideas; it protects only the author’s
particularized expression of the idea.”); Blehm, 702 F.3d at 1201 (“A copyright
owner’s original stylistic choices qualify as protectable expression if the choices
are not dictated by the underlying idea.”).
We now compare Nola Spice’s bead dog to the protectable elements of
Haydel’s bead dog, assuming the perspective of an ordinary observer and
considering the significance of the protectable elements to Haydel’s work as a
whole. See Peel & Co., 238 F.3d at 398; Eng’g Dynamics, Inc., 26 F.3d at 1343.
Haydel argues that only some of Nola Spice’s bead dogs are infringing and
identifies examples in the record. Focusing on the protectable elements of
Haydel’s design, the similarity between Nola Spice’s and Haydel’s bead dogs is
the expression of the collar as a ring of small spheres. As for the differences,
the torso of Haydel’s bead dog has three spheres, while the torso of Nola Spice’s
bead dog has one sphere. The spheres that make up Haydel’s bead dog are
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pressed together, whereas visible wire connects the spheres that make up Nola
Spice’s bead dogs. Whereas the tail of Haydel’s bead dog consists of two spheres
and no wire, the tails of Nola Spice’s bead dogs include a curled wire, either
alone or atop one or two spheres. Likewise, the noses of Nola Spice’s bead dogs
include a curled wire, either alone or atop a single sphere, while the nose of
Haydel’s bead dog is a single sphere. Unlike Haydel’s bead dog, Nola Spice’s
bead dogs do not have eyes. No reasonable juror could conclude that Nola
Spice’s bead dogs bear a substantial similarity to the way in which the eyes,
nose, and tail are expressed in Haydel’s bead dog. Indeed, Haydel focuses its
argument on the collar, conceding that its “copyright infringement claim is
narrow. Only to the extent that Nola Spice copied Haydel’s original expression
by, at least adding a necklace made of smaller beads to what would otherwise
look like a dog trinket made of larger beads, has Nola Spice infringed Haydel’s
copyrighted expression.” We must therefore decide whether the collar on Nola
Spice’s bead dogs could suffice to support a finding of substantial similarity in
the mind of a reasonable juror.
Because the idea of a collar is unprotectable, only its expression as a
string of spheres is relevant to the analysis of substantial similarity. As a
threshold matter, we question whether using bead-shaped spheres for a bead
dog’s collar is sufficiently original to merit copyright protection. See Feist
Publ’ns, Inc., 499 U.S. at 348 (“[C]opyright protection may extend only to those
components of a work that are original to the author.”). Although the
requirement of originality demands only a “creative spark, no matter how
crude, humble or obvious,” the level of creativity must be more than “trivial.”
Id. at 345, 359 (internal quotation marks and citation omitted). Even if a bead-
shaped collar possesses the requisite creative spark, its minimal originality
counsels against a finding of substantial similarity. See Harney v. Sony
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Pictures Television, Inc., 704 F.3d 173, 187 (1st Cir. 2013) (“[L]ocating the
subject of a photograph in the middle of a frame is an element of minimal
originality and an insufficient basis, without more, to find substantial
similarity.” (internal quotation marks omitted)). In addition, the collar is both
qualitatively and quantitatively insignificant in relation to Haydel’s work as a
whole, which is designed to represent a traditional bead dog trinket and is
dominated by unprotectable elements. See Positive Black Talk Inc., 394 F.3d
at 373 n.12 (noting other circuits’ support for the proposition that the
substantial similarity analysis should consider the qualitative and
quantitative importance of the copied material to the plaintiff’s work as a
whole); Eng’g Dynamics, Inc., 26 F.3d at 1343 (noting that the goal of the
comparison step is to “determine whether the defendants have
misappropriated substantial elements of the plaintiff’s” work (citing Gates
Rubber, 9 F.3d at 834) (emphasis added)). In light of these considerations, no
reasonable jury could find substantial similarity based solely on Haydel’s
expression of a collar.
Haydel argues that the “best evidence” of substantial similarity consists
of statements by the Haydel family that its customers were confused about the
relationship between Nola Spice’s bead dogs and Haydel’s mascot. Haydel
points to a sworn statement by David Haydel, Sr. that he “personally heard
several customers of Haydel’s Bakery asking whether Nola Spice Designs sells
Haydel’s MARDI GRAS BEAD DOG jewelry and telling our staff that they (the
customers) believed that Nola Spice Designs sold Haydel’s MARDI GRAS
BEAD DOG jewelry.” This vague allegation of consumer confusion by a self-
interested party possesses little probative value. Cf. Filipino Yellow Pages, Inc.
v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1152 (9th Cir. 1999) (finding that
“vague,” “self-interested” testimony by the founder of the plaintiff company,
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alleging confusion by unidentified consumers, “possesse[d] very limited
probative value” and “did not create a genuine issue for trial” as to whether the
company’s claimed trademark had acquired secondary meaning). More
important, any confusion by Haydel’s customers would have stemmed from a
comparison of the two bead dog designs in their entirety, and would therefore
have been based largely on unprotectable elements. Given that the substantial
similarity analysis requires a focus on protectable elements, Haydel’s evidence
of confusion does not raise a genuine issue for trial. See Johnson v. Gordon,
409 F.3d 12, 19 (1st Cir. 2005) (“[I]n assessing whether substantial similarity
exists, an overall impression of similarity may not be enough . . . [i]f such an
impression flows from similarities as to elements that are not themselves
copyrightable.” (internal citation omitted)). Because no reasonable jury could
conclude that Nola Spice’s and Haydel’s bead dogs are substantially similar in
protectable expression, the district court properly granted summary judgment
to Nola Spice on Haydel’s copyright infringement claim.
VI. Louisiana Unfair Trade Practices Act
The Louisiana Unfair Trade Practices Act (“LUTPA”) prohibits “[u]nfair
methods of competition and unfair or deceptive acts or practices in the conduct
of any trade or commerce.” La. Rev. Stat. Ann. § 51:1405(A). “A business
practice is considered ‘unfair’ if it offends established public policy and is
unethical, oppressive, unscrupulous, or substantially injurious. A business
practice is ‘deceptive’ for purposes of LUTPA when it amounts to fraud, deceit
or misrepresentation.” Surgical Care Ctr. of Hammond, L.C. v. Hosp. Serv.
Dist. No. 1 of Tangipahoa Parish, 309 F.3d 836, 843 (5th Cir. 2002) (citing
Jefferson v. Chevron U.S.A. Inc., 713 So. 2d 785, 792–93 (La. Ct. App. 1998)).
Haydel argues that the district court erred in granting summary judgment to
Nola Spice on Haydel’s LUTPA claim. However, Haydel supports that
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argument only by asserting that the district court erred in dismissing its
trademark and copyright infringement claims. Haydel waived its argument
regarding LUTPA by failing adequately to develop it. See Audler, 519 F.3d at
255.
CONCLUSION
For the above reasons, we AFFIRM the district court’s grant of summary
judgment to Nola Spice on its claim for a declaratory judgment of non-
infringement of Haydel’s trademarks, and we AFFIRM the district court’s
cancellation of those trademarks. We also AFFIRM the district court’s grant of
summary judgment to Nola Spice on Haydel’s claims of trademark
infringement, unfair competition, and trademark dilution under the Lanham
Act; trademark dilution under Louisiana law; copyright infringement under
the Copyright Act; and unfair trade practices under LUTPA.
APPENDIX
Haydel’s Sculpture
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Haydel’s Design Mark
Haydel’s Jewelry
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Nola Spice’s Jewelry
Traditional Bead Dog Trinket
38