Tile and style

Walker & Zanger, Inc. v. Paragon Industries, Inc, 2006 WL 3490975 (N.D.Cal.)

Prof. Patry discusses the copyright aspects of this case of copying in the tile industry here.

The problem that defeated plaintiff’s trade dress claims was that it simply failed to specify, in words, the elements of its trade dress in its lines of decorative tiles, using instead generic terms like “rustic look,” which identify a style over which no one producer can be allowed a monopoly. Perhaps the most damning moments came from the deposition of plaintiff’s Rule 30(b)(6) witness, produced to testify about the elements of the trade dress. When asked to describe the trade dress of one set of tile, plaintiff's witness replied: “What it is about their tile … is the fact that this tiles is a part of a collection that is recognized to be plaintiff's product,” and this response was apparently typical. Such vagueness cannot support a trade dress claim given the concerns for free competition and noninterference with patent/copyright law that have guided courts post-Wal-Mart.

That being said, and despite the court’s fairly harsh condemnation of plaintiff’s evidence on summary judgment, the court still gave plaintiff another bite at the apple by separately considering whether plaintiff had established actual secondary meaning in its designs. Had the court been fully serious about its determination that plaintiff’s supposed dress was generic, it wouldn’t have engaged in a secondary meaning inquiry, since de facto secondary meaning will not defeat genericness. Essentially, the court gave plaintiff a chance to show that the market recognized a more specific description of its tiles, even if plaintiff itself had tried to claim ownership of the entire style.

In the end, plaintiff failed to show secondary meaning in the actual tile design. Its own survey, which did not survey the full range of consumers, showed only limited recognition of particular tiles as coming from a specific company; its circumstantial evidence of secondary meaning from years of advertising was insufficient because, with trade dress, there must be evidence that the advertising called attention to the dress as an indication of source, and there was none.

Other allegations also failed: Plaintiff asserted separate false advertising claims, but the court found that occasional alleged statements by defendant’s representatives to a handful of consumers that the parties’ tiles are the same and/or are made in China were not sufficiently disseminated to count as commercial advertising or promotion. More generally, plaintiff alleged that copying its trade dress constituted false advertising, which is technically correct – trademark infringement is a subset of false advertising – but doctrinally messy. Not to mention that framing the claim as false advertising creates a lot of extra work for the trademark plaintiff; trademark cases don’t require any showing of materiality, as false advertising cases do. In any event, the court rejected plaintiff’s attempt to treat copying trade dress as an implicitly false ad: “Plaintiff has not identified, and the court has not found, a case in which the truthful promotion of a product whose design violates another's trade dress has given rise to a false advertising claim."

The survival of some of plaintiff's copyright claims, at least past the summary judgment stage, is a reminder that overlapping IP protection is still of use, despite greater concern on courts' part for separating the protection available under each law.