Friday, May 11, 2012

"Paris shabby chic" not protectable trade dress

Vraiment Hospitality, LLC v. Binkowski, 2012 WL 1493737 (M.D. Fla.) (magistrate judge)

Vraiment owns two successful Amelie's Bakery & Café restaurants in North Carolina.  After a failed joint venture with defendants, Vraiment sued for trademark infringement and theft of trade secrets.  The parties settled and the court dismissed the case.  Alleging breach of the settlement, Vraiment sought enforcement, but since the case had simply been dismissed and the settlement wasn’t part of the dismissal, the court instead restarted the infringement case.  Because most of the allegedly infringing conduct ceased, and the plaintiff didn’t show a substantial likelihood of success on the remainder, the magistrate judge recommended that a preliminary injunction be denied.

Amelie’s interior décor is “an eclectic amalgamation of Francophile pieces, antique and replica furniture, and customized artwork,” or “Paris shabby chic.”  The Binkowskis were friends of Vraiment’s principal and wanted to open an Amelie’s in Tampa.  Vraiment’s designer created an interior décor that resembled the Charlotte Amelie’s, and the parties promoted the Tampa Amelie’s opening, including created by the Binkowskis and a Facebook page.  Disagreements soon after opening broke up the collaboration, and defendants changed the name of their restaurant to Sophie’s French Bakery and Café.  They allegedly continued to use Amelie’s recipe and décor, and also used Amelie’s name online.

As part of the settlement, defendants agreed to return certain décor items to Vraiment, repaint the interior walls so as not to be alternating stripes of blue, re-name their salted caramel brownie, remove all references to Amelie's and the salted caramel brownie in metatags, and assign their rights in to the plaintiff. 

Vraiment argued that this was akin to a franchise dispute, so that the court could presume confusion from continued use post-termination.  The magistrate judge disagreed: Vraiment first had to establish protectable trade dress, and likely confusion couldn’t be presumed because Amelie’s is not a well-known franchise. 

On the merits, Vraiment argued that, “[f]rom the custom built chandeliers and decoupage place settings, to the mixture of kitsch and traditional artwork, Amelie's [décor] is uncommon” and “more than a simple refinement of commonly adapted themes.”   It did not base its claim on secondary meaning.

Even assuming that Amelie’s trade dress as a whole was inherently distinctive, Sophie’s was substantially modified, and Vraiment failed to show that the portions of the trade dress that still appeared in Sophie’s were inherently distinctive and nonfunctional, and failed to show likely confusion.  Moreover, Vraiment’s request for an injunction barring the defendants from decorating in a way that copies “Amelie’s style” would be impermissibly vague and would inhibit lawful competition.  Vraiment has no interest in protecting a mere method and style of doing business.  In any event, “Paris shabby chic” isn’t exclusive to Amelie’s; other restaurants use it too.

The closest Vraiment came to identifying what specifically it claimed was: “alternating light blue and dark blue vertical stripes on the interior walls, together with mis-matched furniture, custom chandeliers, eclectic wall art, the Amelie's name and logo, and other features ... constitute a unique and protectable trade dress.”   This was inadequate because it included features Vraiment couldn’t monopolize (mismatched furniture) and failed to identify the “other features” and “eclectic wall art.”  And anyway Sophie’s didn’t use the Amelie’s name and logo.  Though Vraiment provided a specific list of items in its original motion, most of those had been removed and returned to it.  Any allegedly infringing conduct had therefore ceased and was unlikely to recur.  The remaining items were couches, furniture, drapes, and chalk board menus, but these were functional at that level of generality.  “For example, couches and tables, even with an artistic [flair], are functional, as they provide a place to consume food and beverages.  Further, the plaintiff acknowledges the functionality of this décor, as it asserts that its business model encourages patrons to stay as long as they wish.”  Blue-on-blue interior stripes were also not unique and couldn’t on their own constitute trade dress.

Separately, Vraiment failed to show likely confusion.  “[D]ue to the distance between the establishments, the customers are unlikely to know of both restaurants and therefore would be unaware of any similarity in trade dress that could cause confusion.”  With a descriptive or at most suggestive design, the fact that other restaurants use “shabby chic” weakened the trade dress’s distinctiveness.  The overall impression of the restaurants and the types of products sold were similar.  It was dissimilarity of retail outlets and purchasers that was key; the restaurants were separated by hundreds of miles.  Neither party had a well-known brand, and so confusion of an appreciable number of reasonably prudent buyers was unlikely.  The parties’ internet marketing was “completely separate and distinct,” so common use of the internet and social media was unlikely to cause confusion.  Once defendants significantly modified Sophie’s appearance, the intent factor provided little support for Vraiment’s claim.

On actual confusion, Vraiment presented evidence from two former North Carolina residents who patronized Amelie's and Sophie's.  One visited Sophie’s because she heard that Amelie’s was opening a Tampa restaurant and found the Hyde Park restaurant using Google.  She said she thought it was Amelie’s until an employee told her it was Sophie’s.  Another visited the restaurant when it was still Amelie’s and said it had the principal attributes of the Charlotte Amelie’s, though when he visited again after it became Sophie's he noted that much of the artwork was gone and the restaurant had a different “vibe.”  These isolated incidents didn’t show likely confusion.  The two people weren’t Tampa residents and there was no showing they were typical patrons.  Moreover, Sophie’s changed since their initial visits, as the second patron’s reaction confirmed.

The magistrate judge also recommended a rejection of the trade secret claim based on Amelie’s salted caramel brownie recipe.  Vraiment argued that its brownie had a unique combination of ingredients including a “secret ingredient,” and that it required employees to execute confidentiality agreements.  Vraiment argued that Sophie’s was misappropriating the recipe because its chef tasted both and opined that they looked and tasted the same and had the same “unique” texture.  The judge was not impressed by Vraiment’s argument that, because defendants sought to buy/license Vraiment’s overall know-how, this was evidence that the recipe was in fact a trade secret.  Defendants argued that it wasn’t a trade secret because Vraiment allowed the recipe to be published in Charlotte Magazine, but Vraiment responded that it omitted a key secret ingredient (which seems to make the recipe a misrepresentation, I must say).  Vraiment identified this “secret ingredient,” the apparent key to trade secret protection, and the magistrate judge was “unimpressed by the purported uniqueness of this ingredient in a brownie.”  The ingredient was included in a caramel brownie recipe on  Moreover, defendants’ executive chef averred that he didn’t use Amelie’s recipe, but rather relied on independent research and his more than twenty years of experience.  He submitted his recipe, stating that it was not the same, and Vraiment failed to submit its own recipe for comparison.  On this record, Vraiment didn’t show a substantial likelihood of success.

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