Opulent Treasures, Inc. v. Ya Ya Creations, Inc.

682 F.Supp.3d 815

OPULENT TREASURES, INC., Plaintiff, v. YA YA CREATIONS, INC., Defendant.

Case No. 2:22-cv-02616-SSS-JCx

United States District Court, C.D. California

Signed July 13, 2023

Bartholomew Philip Dalton, Katarzyna Brozynski, Pro Hac Vice, Brozynski and Dalton PC, Plano, TX, Brittany Megan Nobles, John D. Van Loben Sels, Melissa Katherine Zonne, Thoits Law APC, Los Altos, CA, John Kucera, Joshua Yaw Foli Quaye, Simon Peter Leen, Boies Schiller Flexner LLP, Los Angeles, CA, Matthew James Dalton, Dalton and Dalton PLLC, Los Angeles, CA, for Plaintiff.

Bruce G. Chapman, Marc Karish, Karish and Bjorgum PC, Pasadena, CA, Chong Hyun Roh, Michael Navid Cohen, Cohen IP Law Group PC, Beverly Hills, CA, for Defendant.

ORDER DENYING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT [Dkt. 204]; GRANTING MOTIONS TO SEAL RELATED DOCUMENTS AND EXHIBITS [Dkt. 202; Dkt. 217].

SUNSHINE S. SYKES, United States District Judge

Before the Court is Defendant Ya Ya Creations, Inc.'s motion for summary judgment. [Mot. (Dkt. 204)]. The motion was fully briefed [Opp. (Dkt. 212); Reply (Dkt. 221)] and taken under submission without a hearing.

Also before the Court are the parties' respective motions to file under seal certain materials submitted with their briefing of the motion. [Dkt. 202; Dkt. 217]. The requests to seal are both GRANTED.

For the reasons set forth below, Ya Ya's motion for summary judgment is DENIED. The parties are directed to Part VI for further instructions in light of this order.

I. BACKGROUND

Plaintiff Opulent, established in 1995, designs and sells a variety of décor items intended for use at events and in the home. Its products include several lines of decorative dessert stands. [Opp. at 8]. Opulent merchandise is available through its own website, on major e-commerce platforms, and at retail stores such as TJ Maxx and Home Goods. Defendant Ya Ya is a competing home décor company; its products are available exclusively online. [Compl. (Dkt. 57) at ¶ 3].

The instant action arises from Ya Ya's design, distribution, and sale of eight dessert stands (the "Accused Products"), each of which is alleged to closely resemble a corresponding "Opulent Design." [Compl. at ¶ 50; "Illustration 1"]. Ya Ya indicates that it began to market and sell the Accused Products sometime in 2017.¹ [Mot. at 14].

Opulent contends that each of the Designs embodies one or more distinctive trade dresses, reserved for Opulent's exclusive use by virtue of the federal Lanham Act. Opulent identifies three specific trade dresses purportedly mimicked by the Accused Products: the "Chandelier Design Mark," "Chandelier Round Cake Stand Mark," and "Banded Cake Stand Mark." [See Zaratsian Rep. at ¶ 22].²

A. The Chandelier Design Mark.

Opulent's unregistered Chandelier Design Mark is comprised of a "decorative display table" characterized by "ornate paneling surrounding" the perimeter or circumference of each horizontal surface, as well as "beads and crystals encircling the table and dangling from the ornate paneling." The products employing this mark have either a "multigrooved fluted base" or distinctive "loopy" legs. [Harper Rep. at ¶ 62; Zaratsian Rep. at ¶¶ 21, 22]. This mark is reflected in Opulent Designs such as its Chandelier Cupcake Stands, Chandelier Cake Stands, and Chandelier Loopy Cake Stands.

B. The Chandelier Round Cake Stand Mark.

Opulent's Chandelier Round Cake Stand Mark is comprised of a "decorative display table" characterized by "ornate paneling" surrounding" the circumference of the tabletop, "beads and crystals encircling the table and dangling from the ornate paneling," and a "multi-grooved fluted base." [Chandelier Cake Stand USPTO Reg. (Dkt. 57-1) at 4].

This mark was registered on the USPTO principal registry under No. 5,912,235 on November 19, 2019. [Compl. at ¶ 32]. The products embodying the Chandelier Round Cake Stand Mark comprise a subset of the products embodying the Chandelier Design Mark. [Zaratsian Rep. at ¶ 23].

C. The Banded Cake Stand Mark.

Finally, Opulent's Banded Cake Stand Mark is comprised of a "raised stand encircled by ornate banding with intricate floral infill design" and "round beads for feet." [See Exh. L to Zaratsian Rep.].

This mark is embodied in Opulent products including its Moroccan Jeweled Cake Stand, Blossom Cake Stand, and Three-Tiered Daisy Swirl Down Dessert Stand. [Zaratsian Rep. at ¶ 24].

D. Opulent's Causes of Action.

In defense of its alleged trade dresses, Opulent asserts four causes of action against Ya Ya:

(1) Infringement of a registered trademark, 15 USC § 1114(1);

(2) Trade dress infringement, 15 USC § 1125(a);

(3) Trade dress dilution, 15 USC 1125(c);

(4) Unfair competition, 15 USC 1125(a).³

Ya Ya moves for summary judgment of Opulent's infringement and dilution claims. Specifically, it argues that Opulent's infringement claims fail because it cannot show that the alleged marks are "distinctive," and that its dilution claims fail because it lacks sufficient evidence to show the marks are "famous." Ya Ya does not address Opulent's allegations of unfair competition in violation of the Lanham Act, so the Court assumes that it does not seek summary dismissal of that claim.

The Court has reviewed Opulent's evidence, including its two expert reports and the exhibits attached thereto. It finds that Opulent has raised a triable issue of fact as to distinctiveness. It further concludes that because Ya Ya has failed to carry its initial burden as the moving party as to Opulent's dilution claims, it need not address the sufficiency of Opulent's evidence in support of its marks' purported fame.

II. EVIDENTIARY OBJECTIONS

Both parties have filed evidentiary objections in connection with this motion. Ya Ya objects to Opulent's expert reports and customer declarations as inadmissible hearsay, see Fed. R. Ev. 801, and for failure to comply with the requirements of Fed. R. Civ. P. 56(c)(4). [Dkt. 223]. Opulent objects to Ya Ya's expert report as inadmissible pursuant to Fed. R. Ev. 702. [Dkt. 216].

While such objections may be cognizable at trial, on a motion for summary judgment, the Court is concerned only with the admissibility of the relevant facts at trial, and not the form of these facts as presented in the motions. Sandoval v. Cty. of San Diego, 985 F.3d 657, 666 (9th Cir. 2021). Where "the contents of a document can be presented in a form that would be admissible at trial - for example, through live testimony by the author of the document - the mere fact that the document itself might be excludable hearsay provides no basis for refusing to consider it on summary judgment." Id. (citations omitted).

To the extent that the Court relies upon evidence to which the parties object, the objections are OVERRULED. To the extent the Court does not, the objections are DENIED AS MOOT.

III. LEGAL STANDARD

Summary judgment is appropriate when there is no genuine issue as to any material fact, so that the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "A factual issue is 'genuine' when there is sufficient evidence such that a reasonable trier of fact could resolve the issue in the non-movant's favor, and an issue is 'material' when its resolution might affect the outcome of the suit under the governing law." Headlands Reserve, LLC v. Center for Natural Lands Management, 523 F. Supp. 2d 1113, 1122-23 (C.D. Cal. 2007).

The moving party has the initial burden of informing the court of the basis for its motion and identifying the portions of the pleadings and the record that it believes demonstrate the absence of an issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Where the non-moving party bears the burden of proof at trial, the moving party need not produce evidence negating or disproving every essential element of the non-moving party's case. Id. at 325, 106 S.Ct. 2548. Instead, the moving party need only prove there is an absence of evidence to support the nonmoving party's case. In re Oracle Corp. Sec. Litig., 627 F.3d 376, 387 (9th Cir. 2010). If the moving party sustains its burden, the non-moving party must then show that there is a genuine issue of material fact that must be resolved at trial. Celotex, 477 U.S. at 324, 106 S.Ct. 2548.

When deciding a motion for summary judgment, the court construes the evidence in the light most favorable to the non-moving party. Barlow v. Ground, 943 F.2d 1132, 1135 (9th Cir. 1991). The court does not make credibility determinations, nor does it weigh conflicting evidence. Eastman Kodak Co. v. Image Technical Servs., Inc., 504 U.S. 451, 456, 112 S.Ct. 2072, 119 L.Ed.2d 265 (1992).

IV. DISCUSSION

A. Trade Dress Infringement

To prevail on its infringement claims at trial, Opulent will need to show (1) that the trade dresses constitute valid, protectible marks; (2) that Opulent owns the marks; and (3) that Ya Ya used designs similar to the marks without Opulent's consent and in a manner likely to cause confusion among ordinary consumers as to the products' source. 9th Cir. Model Jury Instruction No. 15.8.

A trade dress, like any form of trademark, is protectible only if it is (1) non-functional and and (2) distinctive. Disc Golf Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1005 (9th Cir. 1998). A mark is "distinctive" if its primary significance in the minds of consumers is as an indicator of the source of a particular good or service. Jason Scott Collection, Inc. v. Trendily Furniture, LLC, 68 F.4th 1203, 1212 (9th Cir. 2023), citing Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1257 (9th Cir. 2001). Some marks are considered "inherently distinctive," in that their "intrinsic nature serves to identify a particular source." Wal-mart v. Samara Bros., Inc., 529 U.S. 205, 210-11, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). A mark that is not inherently distinctive may nevertheless acquire...