This Week At The Ninth: Trade Dress And Forum Non Conveniens

• Published date: 10 June 2023
• Subject Matter: Finance and Banking, Corporate/Commercial Law, Intellectual Property, Litigation, Mediation & Arbitration, Financial Services, Commodities/Derivatives/Stock Exchanges, Corporate and Company Law, Trademark, Trials & Appeals & Compensation, Securities, Shareholders
• Law Firm: Morrison & Foerster LLP
• Author: Joel F. Wacks and Alexandra Avvocato

This week, the Court considers trademark protections for furniture and the enforceability of forum-selection clauses.

JASON SCOTT COLLECTION, INC. v. TRENDILY FURNTURE, LLC

The Court affirms the district court's decision holding a defendant liable for trade dress infringement when it copied the image, design, and appearance of plaintiff's furniture products.

The panel: Judges Wardlaw, Bumatay, and Schreier (D.S.D.), with Judge Wardlaw writing the opinion.

Key highlight: "As we have recently reiterated, proof of copying strongly supports an inference of secondary meaning. This is because there is no logical reason for the precise copying save an attempt to realize upon a secondary meaning that is in existence. Trendily admits that it intentionally copied the JSC Pieces, and there is ample additional evidence that it did so. . . . Trendily was familiar with JSC's work, and likely understood JSC's significant market share with these retailers. Then, Malhotra, at the request of the owner of Western Heritage, a potential retail customer, ordered his factory in India to manufacture exact copies of the JSC Pieces based on photographs of them to gain Western Heritage's business. Malhotra proceeded to offer the Trendily Pieces to other retailers. In other words, there is no logical reason for the precise copying of the JSC Pieces other than to capitalize on JSC's good will." (Internal quotation marks, alterations, and citations omitted.)

Background: Appellee Jason Scott Collection, Inc. (JSC) is a high-end furniture manufacturer; its founder, Jason Scott, began the business by creating hand-carved furniture in a small village in Indonesia. Scott's collection has a distinctive look, featuring large-scale pieces with intricate wood carvings and decorative metal. Appellant Trendily is another high-end furniture manufacturer. In 2016, it intentionally copied three unique JSC designs and sold them to retailers. These copies were so convincing that even Jason Scott initially confused the furniture for his own.

One nonparty who noticed the copies was a retailer was a customer of both JSC and Trendily. He told Jason Scott's brother that Trendily was the copying manufacturer, but requested that he not be identified for fear of being labeled a "snitch." During the course of the lawsuit, Jason Scott was compelled to reveal the nonparty's identity to prove certain elements of his case; he consequently lost that retailer's business.

After unsuccessfully sending cease-and-desist letters, JSC sued Trendily for trade dress infringement. The district court held Trendily liable following a bench trial. It awarded JSC three years of estimated lost sales from the nonparty retailer as reasonably foreseeable damages of the infringement.

Result: The Ninth Circuit affirmed. The Lanham Act prohibits infringing on another's trade dress'the "total image, design, and appearance of a product," which includes "features such as size, shape, color, color combinations, texture or graphics." Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1257 (9th Cir. 2001). To show trade dress infringement, a plaintiff must prove: (1) that its claimed trade dress is nonfunctional; (2) that its claimed dress serves a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant's product or service...