Opinion
CASE NO. CV 03-753 DT (Mcx).
April 5, 2004
ORDER DENYING DEFENDANT PO SUN HON CO.'S MOTION FOR SUMMARY JUDGMENT
I. Background
A. Factual Summary
This action is brought by Plaintiff Cosmos Jewelry Ltd. (hereinafter "Cosmos" or "Plaintiff") against Defendant Po Sun Hon, Co., and Alan Hon (hereinafter collectively, "Defendant") for (1) copyright infringement; (2) trade dress infringement; and (3) unfair competition.
The following facts are undisputed and are provided for background purposes (other pertinent facts are discussed within the analysis portion of this Order):
Plaintiff's President, Denny Wong ("Wong"), is a designer of jewelry. In 1993, Wong created a line of gold jewelry based on the Plumeria blossom. Plaintiff began selling jewelry embodying Wong's designs in 1993. Plaintiff's Plumeria blossom line of jewelry (referred to as the Plumeria Lei Series, hereinafter "Plumeria Lei Series") includes a sand-blasted finish on the petals, while depicting the petal's curl with a high-polished raised edge, and in some cases ornamented with jewels as reflected in the copies that are in deposit with the Copyright Office supporting Plaintiff's copyright registration. It appears that Wong was the first jewelry designer to apply this combination of finishes to any Plumeria blossom piece of jewelry. Plaintiff has expended time, effort and financial resources in order to popularize, market and distribute the Plumeria Lei Series. Plaintiff featured this line of jewelry in its catalogues, brochures and other advertising media.
Plaintiff obtained Copyright Registration Number VA 804-690 for the Plumeria Lei Series, effective October 14, 1997, and Supplemental Copyright Registration No. VA 1-006-840, for the Plumeria Lei Series, effective June 1, 2000 (the "Registration"). Included in this series are 28 different pieces and designs, consisting of single-flower Plumeria blossom interpretations and multi-blossom arrangements. Plaintiff is the only authorized manufacturer and/or distributor of the Plumeria Lei Series in the United States. Moreover, Plaintiff has enforced its exclusive rights in the Plumeria Lei Series.
Plaintiff refers to Cosmos Jewelry Ltd. v. Hung's Jewelry, Inc. and Hung Tien Lu, 2001 U.S. Dist. LEXIS 22964 (D. Haw. 2001), where the District Court of Hawaii merely entered a judgment of permanent injunction without discussion and upon the Stipulation and Order for Permanent Injunction submitted by both parties to the action. This Court has reviewed and taken into consideration Defendant's Objections to Plaintiff's references to this prior action, and both Plaintiff's and Defendant's evidentiary objections to specific declarations submitted by parties, and to the extent evidence is included in this Order, to which objections have been made, said objections are deemed overruled.
B. Procedural Summary
On January 31, 2003, Plaintiff filed its Complaint in the United States District Court for the Central District of California and was assigned to Judge A. Howard Matz.
On February 12, 2003, the case was transferred to Judge Dickran Tevrizian for all further proceedings based on related cases, pursuant to General Order 224.
The two related cases that were at issue at the time of transfer are no longer pending and have both been either settled or voluntarily dismissed.
On March 11, 2003, Defendant filed an Answer to the Complaint.
On May 19, 2003, this Court held a scheduling conference and set the following dates: Discovery Cutoff — November 28, 2003; Pretrial Conference — January 26, 2004; Jury Trial — February 24, 2004.
On November 3, 2003, Plaintiff filed a Notice of Motion and Motion for a Preliminary Injunction and/or for the Impoundment of Defendant's Jewelry, which was Denied by this Court on December 15, 2003.
On November 26, 2003, this Court amended the May 19, 2003 case management schedule, pursuant to a Stipulation of Counsel and a Showing of Good Cause, as follows: Deadline for filing motions for summary judgment and partial summary judgment — February 27, 2003; deadline to complete settlement — February 27, 2004; final Pretrial Conference — March 15, 2004; Jury Trial — April 13, 2004.
On January 29, 2004, a Settlement Conference was held and appearances were made but no settlement was reached.
On February 20, 2004, this Court amended the November 26, 2003 case management schedule, pursuant to a Stipulation of Counsel and a Showing of Good Cause, as follows: continued Pretrial Conference — April 16, 2004 at 1:30 p.m.; Jury Trial — May 18, 2004.
On February 20, 2004, Defendant filed a Notice of Motion and Motion for Summary Judgment, which is currently before this Court.
On March 4, 2004, Defendant filed a Notice of Continuance of Hearing Date of Defendant's Motion for Summary Judgment.
On March 23, 2004, Plaintiff filed an Opposition to Motion for Summary Judgment.
On March 29, 2004, Defendant filed a Reply in Support of Motion for Summary Judgment.
II. Discussion
A. Standard
1. Request for Judicial Notice
A court must take judicial notice if a party requests it and supplies the court with the requisite information. Fed.R.Evid. 201(d). "A judicially noticed fact must be one not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned." Fed.R.Evid. 201(b). This Court may take judicial notice of facts outside the pleadings without converting the motion to one for summary judgment. See Mack v. South Bay Beer Distributors, 798 F.2d 1279, 1282 (9th Cir. 1986) (citing Sears, Roebuck Co. v. Metropolitan Engravers, Ltd., 245 F.2d 67, 70 (9th Cir. 1956)).
A court may take judicial notice of "records and reports of administrative bodies." Mack, 798 F.2d at 1282 ( citing Interstate Natural Gas Co. v. Southern California Gas Co., 209 F.2d 380, 385 (9th Cir. 1953)). In addition, documents whose contents are alleged in a complaint and whose authenticity is not in question may be considered in a motion to dismiss. See Branch v. Tunnell, 14 F.3d 449, 453-54 (9th Cir. 1994).
This Court may take judicial notice of its own records, and documents that are public records and capable of accurate and ready confirmation by sources that cannot reasonably be questioned. See MGIC Indem. Corp. v. Weisman, 803 F.2d 500, 504 (9th Cir. 1986) (courts may take judicial notice of matters of public record outside the pleadings); United States v. Wilson, 631 F.2d 118, 119 (9th Cir. 1980) (courts may take judicial notice of their own records); see also United States v. Wilson, 631 F.2d 118, 119 (9th Cir. 1980) ("In particular, a court may take judicial notice of its own records in other cases, as well as the records of an inferior court in other cases.").
2. Motion for Summary Judgment
Under the Federal Rules of Civil Procedure, summary judgment is proper only where "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The moving party has the burden of demonstrating the absence of a genuine issue of fact for trial. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S. Ct. 2505, 2514 (1986). If the moving party satisfies the burden, the party opposing the motion must set forth specific facts showing that there remains a genuine issue for trial. See id.; Fed.R.Civ.P. 56(e).
A non-moving party who bears the burden of proof at trial to an element essential to its case must make a showing sufficient to establish a genuine dispute of fact with respect to the existence of that element of the case or be subject to summary judgment. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 2552 (1986). Such an issue of fact is a genuine issue if it reasonably can be resolved in favor of either party. See Anderson, 477 U.S. at 250-51, 106 S. Ct. at 2511. The non-movant's burden to demonstrate a genuine issue of material fact increases when the factual context renders her claim implausible. See Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 1356 (1986). Thus, mere disagreement or the bald assertion that a genuine issue of material fact exists no longer precludes the use of summary judgment. See Harper v. Wallingford, 877 F.2d 728 (9th Cir. 1989); California Architectural Building Prods., Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1468 (9th Cir. 1987).
If the moving party seeks summary judgment on a claim or defense on which it bears the burden of proof at trial, it must satisfy its burden by showing affirmative, admissible evidence. Unauthenticated documents cannot be considered on a motion for summary judgment. See Hal Roach Studios v. Richard Feiner and Co., 896 F.2d 1542, 1550 (9th Cir. 1990).
On a motion for summary judgment, admissible declarations or affidavits must be based on personal knowledge, must set forth facts that would be admissible evidence at trial, and must show that the declarant or affiant is competent to testify as to the facts at issue. See Fed.R.Civ.P. 56(e). Declarations on "information and belief" are inappropriate to demonstrate a genuine issue of fact. See Taylor v. List, 880 F.2d 1040, 1045 (9th Cir. 1989).
B. Analysis
Defendant seeks summary judgment on all three counts of the Complaint, namely for (1) copyright infringement, (2) trade dress infringement and (3) unfair competition. In deciding Defendant's Motion for Summary Judgment, this Court must view the evidence in the light most favorable to Cosmos, as the nonmoving party, and draw all reasonable inferences in Cosmos' favor. Playboy Enterprises, Inc. v. Netscape Comm. Corp., 354 F.3d 1020, 1023-24 (9th Cir. 2004).
1. Plaintiff's and Defendant's Request for Judicial Notice is Granted
Plaintiff requests this Court take judicial notice of certain facts and documents relating to the Google Internet search engine. See Request for Judicial Notice in Support of Cosmos Jewelry LTD.'s Opposition to Motion for Summary Judgment, Exh. N-U. Defendant also request this Court take judicial notice of the material relating to jellyfish species and size. See Defendant's Request for Judicial Notice, Exh. 6. Because such documents constitute public records capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned, have not been opposed by the parties, and bear a direct relation to matters at issue in the present proceeding, both Plaintiff's and Defendant's Request for Judicial Notice is granted as to the aforementioned materials.
2. Cosmos' Infringement Claim Relate to All Pieces in its Plumeria Lei Series
Defendant argues that Cosmos' copyright infringement claim in this action does not include multi-blossom arrangements, but instead, relate to only three elements of its Plumeria blossom design, namely, (1) its similarity to a Plumeria blossom, (2) its use of a high polish edge, and (3) its use of a sandblast finish in combination with the high polish edge. Accordingly, Defendant argues that Cosmos should not be permitted to assert a copyright infringement claim based on its multi-blossom arrangements because Cosmos has allegedly only asserted claims based on the design of a single Plumeria blossom. In support of this contention, Defendant relies exclusively on Cosmos response to Interrogatory No. 11 and 16, wherein Cosmos does not specifically mention their "multi-blossom arrangements." However, this Court disagrees with Defendant for the following reasons.
The Complaint in this action specifically asserts claims for infringement of all the pieces in the Plumeria Lei Series, which necessarily include the multi-blossom arrangements. See Complaint at ¶¶ 10-15. Attached to the Complaint and incorporated by reference is Cosmos copyright registration which includes 28 different jewelry design pieces, out of which there are at least 15 composition pieces. Additionally, Defendant ignores Cosmos' response to Interrogatory No. 17 asking to "state all facts upon which Plaintiff bases its allegation that Defendants have infringed Plaintiff's copyright." See Plaintiff's Responses to Defendant Po Sun Hon Co., Inc.'s Interrogatories at ¶ 17. Cosmos specifically stated, in relevant part, that "Defendants created and/or sold at least four pieces of infringing jewelry, identified as items 5077, 4604, 4004 and 4596 by Defendants in their response to Plaintiff's First Set of Interrogatories. . . ." Id. These specific item numbers refer to multi-blossom arrangements. Furthermore, during a December 15, 2003 hearing of Cosmos' Motion for Preliminary Injunction, these multi-blossom jewelry arrangement pieces were discussed and said pieces were physically demonstrated to the Court for comparison to Defendant's alleged "knock-off" pieces. Therefore, Defendant cannot now contend that Cosmos' copyright infringement claim is related solely to the appearance of an individual Plumeria flower blossom. It is evident that Cosmos' copyrights and the complete Plumeria Lei Series have been at issue since the inception of this lawsuit.
3. Defendant's Summary Judgment Motion as to Cosmos' Copyright Infringement Claim is Not Warranted
Defendant has moved for summary judgment on the validity of Cosmos copyright, which, as explained above, includes 28 different designs. All of the 28 designs in the Cosmos Copyright Registration, including the designs based on a single blossom and those which are multi-blossom arrangements, are registered in the United States Register of Copyrights. Thus, there is a statutory presumption that the copyrights are valid and original. 17 U.S.C. § 410(c); Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 109 (2d Cir. 2002). Consequently, Defendant bears the burden of proving the invalidity of Plaintiff's registered copyright.
a. Level of originality
To qualify for copyright protection, a work must be original to the author. See Harper Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985). While Defendant claims that no feature of Cosmos' Plumeria blossom interpretation is original, the experts disagree.
The evidence shows that prior to 1993, when Wong designed the Plumeria Lei Series consisting of both the single-flower or multi-blossom arrangements, there was no meaningful "prior art" depicting the Plumeria blossom with the same particular embellishments and features as Cosmos' Plumeria Lei Series. Defendant contends that although being the "first to create" is only one aspect of copyright originality, the other aspect is that a work, or at least the parts of the work that the copyright holder claims are infringed, must have "at least some minimal degree of creativity." Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 345 (1991); Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003). The Supreme Court continued their discussion about the degree of originality needed to qualify for a copyright:
To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, `no matter how crude, humble or obvious' it might be. [citations omitted] Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not a result of copying.Feist Publications, Inc., 499 U.S. at 345.
After erroneously contending that Cosmos' multi-blossom arrangement designs are allegedly not at issue in this action, Defendant goes on to argue that Cosmos' use of the high polish edge/sandblast finish combination on its single flower designs is merely a realistic depiction of the Plumeria blossom that exists in nature and therefore, is insufficiently original to qualify for copyright protection as a matter of law. For support, Defendant cites to Satava, where the Ninth Circuit Court of Appeals held that the features of the Satava "glass in glass" sculpture containing a jellyfish were no more than stock elements of straightforward interpretations of the jellyfish as it exists in nature. See Satava, 323 F.3d at 810-11.
First, this Court has already concluded above that Plaintiff's multi-blossom arrangement pieces that are part of the Plumeria Lei Series are at issue in this action. This Court further concludes that at the very least, these multi-blossom arrangement pieces are not straightforward interpretations of the Plumeria blossom as it exists in nature and are sufficiently original to qualify for copyright protection.
With regard to Plaintiff's single-flower Plumeria blossom designs, Defendant's argument that it should not be entitled to copyright protection as a matter of law because it is merely a realistic depiction of the Plumeria blossom that exists in nature is unpersuasive. Although Defendant relies on the Ninth Circuit decision in Satava as stated above, in that case, the Ninth Circuit specifically stated that "[w]e do not hold that realistic depictions of live animals cannot be protected by copyright . . . [a]n artist may, however, protect the original expression he or she contributes to these ideas. An artist may vary the pose, attitude, gesture, muscle structure, facial expression, coat, or texture of the animal. An artist may vary the background, lighting, or perspective. Such variations, if original, may earn copyright protection." Satava, 323 F.3d at 813; see also Kamar Int'l, Inc. v. Russ Berrie and Co., 657 F.2d 1059, 1061 (9th Cir. 1981) (realistic depictions of animals are protectable by copyright, holding that "[a]nyone can copyright anything, if he adds something original to its expression.").
Furthermore, courts have consistently extended copyright protection to pieces of jewelry, even where the jewelry design is based on constituent elements which if considered alone might not be original. See Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 109 (2d Cir. 2002) (upholding copyright protection for cable-twist jewelry even where the individual constituent elements, considered alone, are not original); Charles Garnier, Paris v. Andin Int'l, Inc., 36 F.3d 1214, 1217 n. 1 (1st Cir. 1994) ("Swirled Hoop Earring" is copyrightable); Donald Bruce Co. v. B.H. Multi Com Corp., 964 F.Supp. 265, 266 (N.D. Ill. 1997) ("It is undisputed that jewelry is included within the sculptural works classification of Section 102(a)(5)."); Maggio v. Liztech Jewelry, 912 F.Supp. 216, 222-23 (E.D. La. 1996) (23 jewelry pin designs were the subjects of valid copyrights).
In order to prove originality, Cosmos submits the expert testimony of Dr. Kent Bridges, a botanist expert at the University of Hawaii, who testifies and details how Wong's interpretation of the single-flower Plumeria blossom differs materially from the Plumeria blossom as it appears in nature. Thus, crediting Wong for adding originality to his expression of the Plumeria blossom. Wong's declaration also details the features of his designs and how those features differ from those in nature. Plaintiff points out that there are countless ways to interpret the Plumeria blossoms in designs that differ materially from the Cosmos' designs, such as in size, shape, jewel use, configuration, colors, finishes and combination of finishes. As the Ninth Circuit discussed inSatava, Wong varied the pose, perspective and texture of the Plumeria blossom in his own original and individualistic way.
With the threshold of originality requiring some minimal degree of creativity and with this Court's obligation to view the evidence in the light most favorable to Cosmos and to draw all reasonable inferences in Cosmos' favor, this Court disagrees with Defendant and concludes that Plaintiff's Plumeria Lei Series as a whole is not insufficiently original for copyright protection as a matter of law. Based on fundamental principles of copyright law and for purposes of this Motion, the original features of the Plumeria Lei Series does enjoy copyright protection.
b. Degree of similarity
Defendant also moves for judgment in their favor on the basis that the comparison of Cosmos' designs to Defendant's designs demonstrates they are not substantially similar and/or virtually identical. Defendant contends that the overwhelming dominance of standard design elements and unprotectable ideas that characterize the Cosmos Plumeria design entitle it to a "thin" copyright protection, if any, and require application of the "virtually identical" standard when considering the question of whether Cosmos' and Defendant's designs are substantially similar. See Apple Computer, Inc. v. Microsoft Corporation, 35 F.3d 1435, 1446 (9th Cir. 1994). Defendant then attempts to point out the following subtle differences:
(1) The petals in Defendant's design follow a smooth arc from the blossom center to the end of the petal. In contrast, the petals in the Cosmos design follow a smooth arc from the blossom center to a point about 2/3 of the distance from the blossom center to the end of the petal. At that point, the remaining 1/3 of the petal drops downward at a sharp angle.
(2) The petals in Defendant's design are shaped differently than the petals in the Cosmos design. If Defendant's petals were cut across their width at the midpoint between blossom center and the end of the petal, the cross-section would from an inverted "u" shape similar to the shape formed by the underside of a spoon. In contrast, a cross section of the Cosmos petals taken at their midpoint would form a slight "u" shape characteristic of the shape formed by the upper side of a spoon.
(3) The blossom petals in Defendant's design overlap more, and are set at more of an angle in relation to each other than the petals in the Cosmos design, which lay flatter and overlap less.
(4) The diamond in the blossom center of Defendant's design is in a pave' setting, which is formed by scraping metal from the surfaces of the blossom surrounding the diamond until the metal presses tightly against the diamond. In contrast, the Cosmos design utilizes a five prong setting, which is a separate piece inserted through the center hole of the blossom, and into which the diamond is placed.
(5) The high polish edge of Defendant's design is wide, long, and extends around most of the top, side and bottom edge surfaces of the Plumeria blossom petals on one side. The high polish edge of the Cosmos design in narrow, short, and is only on the top edge surface of the blossom petals, and possibly a portion of the side edge surface.
(6) The sandblast finish of Defendant's design is slightly smoother, or less coarse, than the sandblast finish of the Cosmos design.See Defendant's Reply to Plaintiff's Opposition to Motion for Summary Judgment, p. 19-20.
Plaintiff argues that the degree of similarity is a disputed question of fact for the jury. As the Ninth Circuit states: "summary judgment is not highly favored on questions of substantial similarity in copyright cases." Shaw v. Lindheim, 919 F.2d 1353, 1355 (9th Cir. 1990). "When the issue is whether two works are substantially similar, summary judgment is appropriate if `no reasonable juror could find substantial similarity of ideas and expression[,]' viewing the evidence in the light more favorable to the nonmoving party." Kouf v. Walt Disney Pictures Television, 16 F.3d 1042, 1045 (9th Cir. 1994). "Where reasonable minds could differ on the issue of substantial similarity, summary judgment is improper." Shaw, 919 F.2d at 1355; Kouf, 16 F.3d at 1045.
The Ninth Circuit applies a two-part test, the extrinsic test and the intrinsic test, to compare the similarities of ideas and expression in two works. See Kouf, 16 F.3d at 1045. For summary judgment, only the extrinsic test is important. See id. The extrinsic test is an objective one that asks if there is a similarity of ideas in the two works. Dr. Seuss Enterprises, L.P. v. Penguin Books USA, 109 F.3d 1394, 1398 (9th Cir. 1997);Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994) (test can use external criteria; analytic dissection and expert testimony, if helpful). A plaintiff avoids summary judgment by satisfying the extrinsic test which makes similarity of the works a triable issue of fact. See Kouf, 16 F.3d at 1045.
Here, Plaintiff argues that there is a "similarity of ideas" sufficient to satisfy the extrinsic test. Plaintiff points out, and Defendant's expert concedes, that Defendant's jewelry is a depiction of the Plumeria blossom with exactly the same design concept as that of Plaintiff's. In fact, Defendant's own expert, Mr. Georgantes, testified that Plaintiff's and Defendant's pieces he compared were "strikingly similar." Mr. Georgantes went on to state that he "could see where someone, by giving a brief look, could be confused but that if you really looked, you can see the differences." Yates Reply Dec., Exh. 3 (Georgantes Dep. 90:16-20).
Plaintiff details the extensive list of features of his designs that Defendant allegedly copied in its own designs and which, arguably, are not found on the Plumeria blossom in nature. These features include in combination (1) the shape and size of the sculpture of the flower; (2) the particular combination of a sandblasted-finish on the surface of the petals with a high-polished edge to depict a curl in the leaf (because there are countless other finishes and combinations of finishes available to designers; (3) the shiny bottom with matte finish on top; (4) the use of a contrast texture to suggest a curl edge rather than actually depicting a curl; (5) the slender fine high-polished edge; (6) the uniform color (assuming jewelry designers have many color options available); (7) the decision to have uniformity of color rather than different shades of color since the flower in nature is multi-colored; (8) shaping the blossoms as flat, not tubular; (9) fusing the petals together on the sides half way up the petal; (10) use of a diamond in the middle of the petal and on the arrangement pieces; (11) blossoms of varying sizes, laid side-by-side (not in balls) and sometimes interspersed with small branches or leaves.
With the evidence on the record, this Court concludes that Plaintiff has satisfied the extrinsic test which makes similarity of the works a triable issue of fact for the jury. This Court need not go any further to deny Defendant's Summary Judgment Motion pertaining to Plaintiff's copyright infringement claim.
4. Judgment for Defendant on Cosmos' Claim for Trade Dress Infringement is Denied
Defendant also moves for summary judgment on Cosmos' trade dress infringement claim and bases its motion on two grounds: (1) functionality and (2) secondary meaning. Defendant does not challenge the likelihood of confusion and therefore, for purposes of this motion, likelihood of confusion is conceded.
a. Functionality
"`[A] product feature is functional,'" and cannot serve as a trademark, `if it is essential to the use or purpose of an article or if it affects the cost or quality of an article,' that is, `if exclusive use of the article would put competitors at a significant non-reputation related disadvantage.'" Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), citing Inwood Labratories Inc. v. Ives Labratories, Inc., 456 U.S. 844 (1982) (emphasis added).
Defendant's argument that Cosmos' trade dress should be held functional as a matter of law is based entirely on the unsupported assertion that "Wong admits that Cosmos' exclusive use of the claimed trade dress would put [Defendant] at a competitive disadvantage. . . ." See Defendant's Motion for Summary Judgment, p. 23. Plaintiff contends that there is no such admission and that Defendant's reliance on Wong's testimony that Defendant's jewelry is of "comparable quality" is undermined by Defendant's expert's opinion that Defendant's jewelry is of poorer quality and that the Cosmos' has distinctive characteristics.
In any event, this Court concludes that Plaintiff's trade dress — a line of gold Plumeria jewelry that depicts the Plumeria blossom in a distinctive fashion, which includes protectable elements and a sand-blasted matte finish with high-polished shiny edges — is not functional. Functionality means that the features are either essential to the use of the product or affect the cost or quality of them. Neither is the case here. As Plaintiff points out, there is nothing essential in adopting Cosmos' combination of visual elements. If Defendant wants to compete in the market for gold Plumeria jewelry, they can easily design pieces which do not feature the identical elements found in Plaintiff's pieces. Moreover, nothing about the Cosmos' trade dress affects the cost or quality of the article so as to put Defendant at a significant disadvantage. Plaintiff admits that many of its competitors sell gold Plumeria jewelry that does not include Plaintiff's identical elements. Accordingly, this Court concludes that Plaintiff has presented sufficient evidence of the arbitrariness and nonfunctional nature of its design decisions and the availability of alternative designs to clear the summary judgment hurdle.
b. Secondary meaning
"A plaintiff's trade dress has acquired secondary meaning when the purchasing public associates the dress with a particular source." See Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9th Cir. 1989). "Whether a particular trade dress has acquired secondary meaning is a question of fact." Id. at 614. Factors relevant to establishing secondary meaning include (1) plaintiff's advertising expenditures, (2) consumer surveys linking trade dress to particular source, (3) sales success, (4) unsolicited media coverage, (5) attempts to plagiarize trade dress, (6) length and exclusivity of use, and (7) degree of difference between plaintiff's product and other similar products in the market. Diamond Direct, LLC v. Star Diamond Group, Inc., 116 F.Supp.3d 525, 529 (S.D.N.Y. 2000).
Here, Defendant concedes that Plaintiff can demonstrate advertising expenditures and produce direct customer statements confirming that they recognize the Cosmos line of products. This Court further concludes that Plaintiff can also demonstrate sales success and length and exclusivity of use, as evident from the fact that Cosmos has now been in the marketplace with the Plumeria Lei Series for 11 years and that Cosmos prominently features its line of products in over 60 stores throughout the Hawaiian Islands. In fact, Cosmos' designers have even won awards for the Plumeria Lei Series.
Defendant bases its argument entirely on the fact that Plaintiff has never conducted a consumer survey and therefore, has no consumer survey information demonstrating secondary meaning, and has had no recent unsolicited media coverage of its design for a decade. While this may be true, it is definitely not dispositive. What holds more evidentiary value is the appearance that Defendant has attempted to plagiarize Plaintiff's trade dress by creating jewelry that is "strikingly similar" to Plaintiff's.See Vision Sports, 888 F.2d at 615 ("Moreover, we have held that proof of copying strongly supports an inference of secondary meaning.") (emphasis added); Audio Fidelity, Inc. v. High Fidelity Recordings, Inc., 283 F.2d 551, 557-58 (9th Cir. 1960) ("There is no logical reason for the precise copying save an attempt to capitalize upon a secondary meaning that is in existence."); Fuddruckers, Inc. v. Dob's B.R. Others, Inc., 826 F.2d 837, 844 (9th Cir. 1987); Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1016 (9th Cir. 1985),cert. denied, 474 U.S. 1059 (1986). Moreover, Cosmos has been forced to actively police its rights to the Plumeria Lei Series against "copiers" in other actions as well. See Cosmos Jewelry Ltd. v. Hung's Jewelry, Inc. and Hung Tien Lu, 2001 U.S. Dist. LEXIS 22964 (D. Haw. 2001).
In sum, at a minimum, there is a question of fact as to whether Plaintiff's Plumeria Lei Series has acquired a secondary meaning and Plaintiff is entitled to present this evidence to the jury.
5. Judgment for Defendant on Cosmos' Claim for Unfair Competition is Denied
Defendant moves for judgment on Cosmos' unfair competition claim in the event this Court were to summarily adjudicate Plaintiff's copyright and trade dress infringement claims. Since this result has not been reached and this Court has denied Defendant's Motion for Summary Judgment on Plaintiff's copyright and trade dress infringement claims, this Court also denies Defendant's Motion for Summary Judgment on Plaintiff's unfair competition claim.
Plaintiff argues that another independent ground to deny Defendant's Motion is the fact that Defendant engaged in spoliation of evidence. This Court need not address this argument at this time because Defendant's Motion for Summary Judgment has already been denied on other grounds. Moreover, this Court advises Plaintiff to take up evidence related issues and concerns with the Magistrate Judge.
C. Conclusion
Accordingly, this Court denies Defendant Po Sun Hon, Co.'s Motion for Summary Judgment in its entirety.
IT IS SO ORDERED.