Unpublished Disposition, 922 F.2d 845 (9th Cir. 1991)

Advance Watch Company, Ltd. and related parties (collectively referred to as "Advance") appeal the issuance of a preliminary injunction prohibiting them from infringing upon the SHARK watch trade dress¹  and FREE STYLE Logo²  employed by Sunburst Products, Inc. ("Sunburst"). Advance also appeals the district court's denial of its motion to clarify the terms of that order. Sunburst appeals the court's subsequent failure to find Advance and Reebok International, Ltd. ("Reebok") in contempt for distributing a modified version of the infringing watch.

While we consider it an extremely close question, we affirm that portion of the district court's order protecting the SHARK watch trade dress. We reverse, however, that portion of the order protecting Sunburst's FREE STYLE logo. We affirm the district court's refusal to find Advance and Reebok in contempt.

* The district court's preliminary injunction order may be reversed only if the district court (1) abused its discretion, (2) based its decision on an erroneous legal standard, or (3) based its decision on clearly erroneous findings of fact. Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 612 (9th Cir. 1989). To qualify for a preliminary injunction, the moving party must show either (1) a combination of probable success on the merits and the possibility of irreparable harm, or (2) the existence of serious questions going to the merits and the balance of hardships tipping in its favor. Vision Sports, 888 F.2d at 612. Probable success on the merits in an action for trade dress infringement under section 43(a) of the Lanham Act is established by a showing that the trade dress in question is: (1) protectable and (2) likely to be confused with the infringing product by members of the consuming public. Id. at 613. A trade dress is protectable if it is nonfunctional and has acquired secondary meaning. Id.

* 1

The district court's finding of functionality is a question of fact which we review under the clearly erroneous standard. Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 514 (9th Cir.), cert. denied, 110 S. Ct. 202, 107 L. Ed. 2d 155 (1989). In this circuit, the burden of proving nonfunctionality is on the plaintiff. Id. at 516.

A product feature is functional if it "is essential to the [product's] use or purpose ... or affects the cost or quality of the article." Inwood Laboratories, Inc. v. Ives Laboratories, 456 U.S. 844, 850 n. 10 (1982); Vision Sports, 888 F.2d at 614. Trade dress should be examined as a whole to determine its functionality. Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 842 (9th Cir. 1987); First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1381 (9th Cir. 1987). Functional elements that are separately unprotectable can be protected as part of a trade dress. Fuddruckers, 826 F.2d at 842; LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 76 (2d Cir. 1985).³ 

The district court applied the correct legal standard. Judge Bonner properly defined functionality in reference to Inwood Laboratories. He then determined, with specific reference to Fuddruckers, that the combination as a whole was nonfunctional despite the presence of features which in isolation would be viewed as functional.

Advance argues that Rachel v. Banana Republic, Inc., 831 F.2d 1503 (9th Cir. 1987), controls the outcome of this case. There, we stated that " 'unique arrangements of purely functional features constitute a functional design' not entitled as a matter of law to protection under the Lanham Act." Id. at 1506 (quoting Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 977 (2d Cir. 1987)). If some of the items are nonfunctional, however, the Fuddruckers standard still applies.

Consistent with Rachel, the district court examined each of the elements of the trade dress to determine whether they were functional, concluding that "virtually all" were nonfunctional. We find that this conclusion was not clearly erroneous. Although some of the elements of Sunburst's claimed trade dress are arguably functional, such as the clasp and the band, other elements, such as the color combinations of the bezel, case, and band appear to be nonfunctional. Therefore, Rachel is inapplicable to this case.

Fuddruckers stresses that the relevant inquiry is whether the combination of elements is nonfunctional. Sunburst claims a trade dress in a particular, nonessential arrangement of design elements. The district court did not commit clear error in concluding that this combination is nonfunctional.

2

Whether a particular trade dress has acquired secondary meaning is a question of fact, reviewed under the clearly erroneous standard. Vision Sports, 888 F.2d at 614. The purpose of the secondary meaning inquiry is to determine whether consumers associate a particular trade dress with a single producer or source, rather than just the product itself. First Brands, 809 F.2d at 1383. Secondary meaning is "association, nothing more," which is gauged by "the effectiveness of the effort to create it." Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 802 (9th Cir. 1970).

In assessing secondary meaning, we look to: (1) whether actual purchasers associate the trade dress with the plaintiff; (2) the degree and manner of the plaintiff's advertising; (3) the length and manner of the plaintiff's use of the trade dress; and (4) whether that use has been exclusive. Clamp Mfg., 870 F.2d at 517; Transgo v. AJAC Transmission Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985), cert. denied, 474 U.S. 1059, 106 S. Ct. 802, 88 L. Ed. 2d 788 (1986).

The district court applied the correct legal standard. It found that the SHARK trade dress had acquired secondary meaning by virtue of: (1) Sunburst's extensive advertising and promotional activities; (2) significant sales of the SHARK watch; (3) Sunburst's exclusive use of the SHARK trade dress; and (4) Advance's apparent intent to copy that trade dress.⁴  Advance makes several assaults on this finding, none of which persuade us that the district court's ruling was clearly erroneous.

Advance first argues that Sunburst's advertising and promotion did not qualify as "image advertising" under First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987). In First Brands, the plaintiff, seeking trade dress protection for its yellow, F-style antifreeze container, sought to establish secondary meaning by introducing evidence of its total advertising expenditures and its five-year, exclusive use of the container. Id. at 1383. We upheld the district court's conclusion that secondary meaning had not been established, largely because the plaintiff's advertising, while extensive, had not "attempt [ed] to engender consumer identification with the yellow, F-style jug." Id. Advance suggests that First Brands should be applied literally, arguing that Sunburst can establish secondary meaning only if its advertising and promotions "urge [d] the customer to 'look for' the six claimed elements" of its trade dress.

We disagree. First Brands does not require such an exact fit between secondary meaning and the image portrayed. It merely requires that the advertising "feature in some way the trade dress itself." Id. (quoting Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d 854, 860) (9th Cir. 1983) (emphasis added). Much of Sunburst's advertising and promotional materials meet this requirement by prominently and clearly featuring all of the SHARK trade dress except the clasp. By promoting a distinct image, reinforced through the endorsement of more than twenty-five professional athletes, Sunburst's advertising and promotion urges consumers to "look for" the SHARK watch in a manner that satisfies First Brands.

Advance next argues that the district court erred in finding that Sunburst's use of the SHARK trade dress had been exclusive in the face of evidence that at least four of the six claimed elements of that trade dress were utilized by Advance and other watch manufacturers prior to sale of the SHARK watch. The court acknowledged that elements of the trade dress had been employed by other manufacturers, but concluded that "the precise combination of features," which presented "a distinctive visual appearance," had not been adopted by anyone other than Sunburst when the SHARK watch was introduced. Its finding that Sunburst's use of the SHARK trade dress was exclusive is supported by the record,⁵  and therefore was not clearly erroneous.

Finally, Advance contests the court's finding of deliberate copying. The district court found that the Advance watch was "strikingly similar" to the SHARK watch. Based on the visual similarity of the two watches, the court drew an inference that Advance had intentionally copied the SHARK trade dress. Advance argues that this finding was erroneous because of the absence of direct proof that they had copied the SHARK watch.

This is admittedly a close question, but we cannot say that the district court's finding was clearly erroneous. A substantial similarity alone "is itself probative of intentional copying." Reader's Digest v. Conservative Digest, Inc., 821 F.2d 800, 804 (D.C. Cir. 1987); see also St. Ives Laboratories v. Nature's Own Laboratories, 529 F. Supp. 347, 349 (C.D.Cal1981) (defendant's trade dress "so close to Plaintiff's in detail and overall impression that Defendant obviously copied the packaging and trade dress"). Advance failed to present evidence to rebut this inference of copying. While absence of knowledge is relevant, see Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 157 (9th Cir.), cert. denied, 374 U.S. 830, 83 S. Ct. 1870, 10 L. Ed. 2d 1053 (1963), the affidavits submitted by Advance asserting that it was unaware of the SHARK watch before it introduced the 1988 Advance watch did not expressly rebut the charge of copying. Moreover, Judge Bonner engaged in a colloquy with Advance's counsel on the strength and credibility of Advance's affidavits before concluding that they failed to rebut the inference of copying. Compare PAF S.r.l v. Lisa Lighting Co., Ltd., 712 F. Supp. 394, 405-06 (S.D.N.Y. 1989) (court found "incredible" claim that defendant, an experienced businessman, was unaware of the existence of design his company had copied). We expect that the question of copying will be fully explored in the trial on the merits, but under our limited review of the evidence presented at the preliminary injunction hearing, we cannot say that the district court's finding was clearly erroneous.

B

The district court's conclusion that a likelihood of consumer confusion exists is a finding of fact and thus is subject to the clearly erroneous standard. Vision Sports, 888 F.2d at 616; Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1355 (9th Cir. 1985) (en banc). "Likelihood of confusion 'exists when customers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark.' " Fuddruckers, 826 F.2d at 845 (quoting Lindy Pen v. Bic Pen, 725 F.2d 1240, 1243 (9th Cir. 1984), cert. denied, 469 U.S. 1188, 105 S. Ct. 955, 83 L. Ed. 2d 962 (1985)).

In trade dress cases, the likelihood of confusion determination "must be made in light of 'the total effect of the defendant's product and package on the eyes of the ordinary purchaser.' " Vision Sports, 888 F.2d at 616 (quoting First Brands, 809 F.2d at 1384). Several factors are relevant for determining infringement, including (1) strength of the trade dress; (2) similarity between plaintiff's and defendant's trade dresses; (3) evidence of actual confusion; (4) marketing channels used; (5) type of goods and likely degree of consumer care; and (6) defendant's intent in selecting its trade dress. Vision Sports, 888 F.2d at 616; Clamp Mfg., 870 F.2d at 517; AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).

Not all of these factors need be considered in granting a preliminary injunction, Apple Computer, Inc. v. Formula Intern, Inc, 725 F.2d 521, 526 (9th Cir. 1984), nor are they weighed evenly. Fuddruckers, 826 F.2d at 845; Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). Evidence of actual confusion is persuasive proof that future confusion is likely. Fuddruckers, 826 F.2d at 845; Sleekcraft, 599 F.2d at 352. Use of differing names or distinctive logos in connection with similar marks can reduce the likelihood of confusion, but does not always do so. Fuddruckers, 826 F.2d at 846 n. 13; Lindy Pen, 725 F.2d at 1245 n. 4.

In issuing a preliminary injunction against Advance, the district court considered most, if not all, of the Vision Sports factors. Thus, the court applied the correct legal standard.

Advance, however, argues that the district court made several errors in applying the evidence. First, the court compared the 1988 Advance watch with the SHARK watch and found that it was "substantially identical" to the SHARK watch. Advance asserts that the court erred in not considering the differences in packaging and logos. While Advance is correct that such evidence should be considered, Lindy Pen, 725 F.2d at 1245 ("similarity must be considered in light of the way the marks are encountered in the marketplace and the circumstances surrounding the purchase"), the record indicates that the court did so.⁶  Nor does the lower court's discounting of the importance of the logos and the packaging appear to be clearly erroneous. A significant amount of Sunburst's advertising shows the watch being worn by athletes. In such advertising the packaging is not shown, nor are the logos on the watch particularly visible.

Advance also challenges Sunburst's presentation of instances of actual confusion. Advance first raises hearsay objections. In each of the cases involving the Advance watch, however, the statement was not introduced for the truth of the matter asserted, that the declarant had seen a SHARK watch in an unusual context, but to show that the individual making the statement was confused in thinking he or she had seen a SHARK watch. Therefore the statements were not hearsay. See Fed.R.Evid. 801(c).

More troubling are Advance's allegations of bias. Each of the alleged instances of confusion has potential credibility problems. A finding of credibility, however, properly belongs to the lower court. Anderson v. Bessemer City, 470 U.S. 564, 574 (1985) (special deference should be given to trial court's credibility determinations). Here, while the lower court gave credence to some of the declarations, it did not treat this evidence as persuasive proof. We do not find this use to be clearly erroneous.

Third, Advance points out that it uses different marketing channels than Sunburst. While Sunburst markets its watches in specialty sports shops, Advance uses mass merchandisers. Although Advance is correct to point this out, this evidence is mitigated somewhat by the fact that the watches are directed at generally the same group of consumers. Furthermore, at least one other circuit has held that in such circumstances the likelihood of consumer confusion is actually greater.⁷ 

Finally, in issuing the injunction, the court held that Advance had intentionally copied the SHARK watch. Sunburst, however, did not provide any direct evidence of intentional copying and Advance denies the accusation. The only evidence of copying seems to be the judge's inference from the similar appearance of the watches. However, as noted above in the discussion on secondary meaning, similarity can be probative of intentional copying. Reader's Digest, 821 F.2d at 804; St. Ives Laboratories, 529 F. Supp. at 349. The court did not abuse its discretion in making the inference and asking Advance to rebut it.

C

To qualify for a preliminary injunction, the moving party must show either (1) a combination of probable success on the merits and the possibility of irreparable harm, or (2) the existence of serious questions going to the merits and the balance of hardships tipping in its favor. Vision Sports, 888 F.2d at 612. The district court concluded that Sunburst met the first prong of this test. Normally in cases of trade dress infringement, once the plaintiff has established a likelihood of confusion, courts may presume that the plaintiff will suffer irreparable harm if injunctive relief is not granted. Id. at 612 n. 3; Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1220 (9th Cir. 1987). The court properly applied such a presumption and found that Sunburst's market was likely to be significantly damaged if no injunction were issued.

In the alternative, the court found that the balance of hardships weighed in Sunburst's favor. Advance argues generally that this finding is in error, but offers no substantive argument or evidence that the court committed an abuse of discretion. The record shows clearly that Sunburst would suffer harm if the injunction were not issued. Advance, on the other hand, failed to present evidence of harm, other than losses incurred through its contract with Reebok. With respect to these losses, when a party adopts "a course which it must have realized would create consumer confusion," that party cannot later "complain that having to mend its ways will be too expensive." Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 1026 (7th Cir. 1979), cert. denied, 447 U.S. 924, 100 S. Ct. 3016, 65 L. Ed. 2d 1116 (1980).

D

Advance's laches claim is without merit. Advance was responsible for the delay in Sunburst's assertion of its rights in the SHARK trade dress since Advance promised but failed to provide Sunburst with proof of its claim of prior use. Any resulting prejudice to Advance from having contracted with Reebok in the period between Sunburst's original inquiry and the commencement of litigation was thus caused by Advance, rather than Sunburst. Advance's allegation that Sunburst has unclean hands because it "lied" to the court about Advance's prior use is equally meritless, given Advance's own failure to establish prior use.

II

The modification or clarification of an injunction lies within the "sound discretion" of the district court, Regal Knitwear Co. v. National Labor Relations Board, 324 U.S. 9, 15 (1944), and is reviewed under the abuse of discretion standard. United States v. Oregon, 769 F.2d 1410, 1416 (9th Cir. 1985).

While it is true, as Advance argues, that a party has a right to clarification or modification of an injunction, see Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1432 (7th Cir. 1985), cert. denied, 475 U.S. 1147, 100 S. Ct. 1801, 90 L. Ed. 2d 346 (1986), Judge Bonner's refusal to clarify the injunction along the lines sought by Advance was not an abuse of discretion under the circumstances of this case.

With respect to declaratory rulings on the three watches, Advance did not present the court with a single product; rather, it asked the court to choose which among the three it presented would not be "confusingly similar" so as to violate the terms of the injunction. Advance did not provide a consumer survey, expert testimony, or other evidence regarding the likelihood of confusion, despite the fact that as an infringer it had an increased burden to show that a subsequent modification was not infringing. Service Ideas, Inc. v. Traex Corp., 846 F.2d 1118, 1124 (7th Cir. 1988). Given the court's substantial discretion to enforce its own orders, see In Re Crystal Palace Gambling Hall, Inc, 817 F.2d 1361, 1364 (9th Cir. 1987), and limited judicial resources, Judge Bonner's refusal to rule "point by point [on] whether a particular watch infringes or doesn't," was not an abuse of discretion.

The court's refusal to grant the general clarification requested by Advance may be sustained on several grounds. First, not only did the clarification Advance sought at oral argument differ from that sought in its pleadings (i.e., a ruling on the Reebok watches), but Advance, which had the burden of proof, failed to establish how the injunction was unclear or to submit alternative language. Moreover, the clarification sought at oral argument--restricting the injunction to watches which contain all six of the elements of the SHARK trade dress--misses the point of trade dress infringement analysis. Whether a product is "confusingly similar" depends not on the number of protected elements employed by a competitor, but on whether their use, "viewed as a whole, is likely to confuse consumers." Fuddruckers, 826 F.2d at 842 n. 7.

III

In issuing its preliminary injunction the district court ordered Advance to refrain from infringing on both the SHARK trade dress and "Free Style's Logo Trademark." To obtain specific protection for the FREE STYLE logo, Sunburst had to show that the logo, separate from the trade dress, is protectable and that there is a likelihood of consumer confusion between it and Appellants' watches. See e.g., Clamp Mfg., 870 F.2d at 515-17. No such showing was made. The evidence presented to the lower court concerned only the trade dress.

Sunburst argues that the logo's protectability was established as part of the trade dress. Such a showing, however, is irrelevant to prove that the logo itself is entitled to protection outside its role as an element of the protectable trade dress.⁸  We therefore reverse the portion of the preliminary injunction that makes reference to the FREE STYLE logo as a protectable trademark.

IV

A district court has wide latitude in determining whether its orders have been violated. In Re Crystal Palace Gambling Hall, Inc., 817 F.2d 1361, 1364 (9th Cir. 1987). A court's refusal to find a party in contempt is reviewed for an abuse of discretion. Id.

The core of Sunburst's appeal is its claim that the district court erred in requiring it to prove by clear and convincing evidence that Advance and Reebok violated the preliminary injunction. We find, however, no error. It is well settled that the petitioning party in a civil contempt proceeding bears the burden of establishing by clear and convincing evidence that the underlying order was violated. Vertex Distributing v. Falcon Foam Plastics, Inc., 689 F.2d 885, 889 (9th Cir. 1982). See also Battaglia v. United States, 653 F.2d 419, 422 (9th Cir. 1981); United States v. Powers, 629 F.2d 619, 622 n. 6 (9th Cir. 1980) (dicta); Howard Johnson Co., Inc. v. Khimani, 892 F.2d 1512, 1516 (11th Cir. 1990); AMF Inc. v. Jewett, 711 F.2d 1096, 1100 (1st Cir. 1983); KSM Fastening Systems v. H.A. Jones Co., 776 F.2d 1522, 1524 (Fed. Cir. 1985); 11 Wright & Miller, Federal Practice & Procedure: Civil Sec. 2960 at 591, and cases cited therein.

Sunburst argues in the alternative that it established by clear and convincing evidence that Advance and Reebok had violated the preliminary injunction. Sunburst placed near total reliance on a consumer survey which purported to show the existence of a substantial degree of consumer confusion between the SHARK watch and the Reebok Version 3. It claims that the district court abused its discretion in disregarding this evidence. We disagree, finding that the district court properly weighed the probative value of the survey. Advance raised serious questions about the strength of the survey's conclusions, which were heard during the course of a full evidentiary hearing at which expert testimony was proffered by both sides. We cannot say that the district court abused its discretion in concluding that the evidence presented failed to establish infringement by clear and convincing evidence.

We also note that a consumer survey, while a significant measure of consumer confusion, is not in itself dispositive. Judge Bonner also considered the visual similarities between the SHARK and Reebok Version 3 watches. He concluded that "as a matter of visual observation ... the Version 3 Reebok ... has some similarities to the SHARK watch and the SHARK trade dress." While the watch was "reasonably close to the line of a type of watch that would be confusingly similar to the SHARK," he concluded that this similarity alone was not enough to violate the injunction. Contrary to Sunburst's suggestion, reliance on visual observation is an appropriate means of assessing consumer confusion. Ambrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1541 (11th Cir. 1986) (general similarity of trade dress design of two products is strong indication of likelihood of confusion), cert. denied, 481 U.S. 1041, 107 S. Ct. 1983, 95 L. Ed. 2d 822 (1987).⁹ 

V

Both Advance and Sunburst have moved for sanctions for alleged misrepresentations on appeal. We deny their motions.

VI

The preliminary injunction issued by the district court is AFFIRMED in part and VACATED in part.