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 ameliesbakery.com 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
www.ameliesbakery.com 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 epicurious.com. 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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