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PLS OPP TO DEFS MOTION TO DISMISSCASE NO. CV 12-05072 MMC
JOHN W. SPIEGEL (SBN: 78935)[email protected], TOLLES & OLSON LLP355 South Grand Avenue, Thirty-Fifth FloorLos Angeles, CA 90071-1560Telephone: (213) 683-9100Facsimile: (213) 687-3702
JONATHAN H. BLAVIN (SBN: 230269)[email protected] MAX CREED (SBN: 272595)[email protected], TOLLES & OLSON LLP560 Mission Street, 27th FloorSan Francisco, CA 94105Telephone: (415) 512-4000Facsimile: (415) 512-4077
Attorneys for Plaintiff
EMECO INDUSTRIES, INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
EMECO INDUSTRIES, INC.
Plaintiff,
v.
RESTORATION HARDWARE, INC., GARYFRIEDMAN, and DOES 1-10.
Defendants.
CASE NO. CV 12-05072 MMC
PLAINTIFFS OPPOSITION TODEFENDANTS MOTION TO DISMISS
Date: December 14, 2012Time: 9:00 a.m.Courtroom: 7Judge: Honorable Maxine M. Chesney
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TABLE OF CONTENTS
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I. INTRODUCTION...............................................................................................................1
II. BACKGROUND .................................................................................................................2
A. Emeco and Its Iconic Navy Chair Collection .......................................................2
B. Restoration Hardware Has Replicated the Navy Chair Collection.......................4
C. Pre-Lawsuit Communications and Procedural Background....................................7
III. STANDARD OF REVIEW.................................................................................................8
IV. ARGUMENT.......................................................................................................................8
A. Emeco Has Adequately Pled a Claim for Trade Dress Counterfeiting andInfringement ............................................................................................................8
1. Restoration Hardwares Argument Regarding the Registered NavyChair Outline Is Immaterial and Legally Meritless ..................................8
2. Emecos Trade Dress Claim Rests Independently in FederalRegistration and Common Law Trade Dress Rights .................................11
3. Emeco Has Adequately Put Restoration Hardware on Notice As tothe Claimed Trade Dress at Issue ..............................................................12
4. Emeco Has Adequately Alleged Secondary Meaning and Non-Functionality for Its Navy Chair Trade Dress ........................................15
B. Emeco Has Adequately Pled a Claim for Trademark Counterfeiting andInfringement ..........................................................................................................17
1. Emeco Has Adequately Pled a Claim for Trademark Counterfeiting .......17
2. Restoration Hardwares Trademark Fair Use Argument Is
Improper on a Motion to Dismiss, and in Any Event Baseless .................183. Emecos Trademark Claim Rests Independently in Federal
Registration and Common Law Trade Dress Rights .................................20
C. Emeco Has Adequately Pled a Claim for Federal Dilution...................................21
D. Emeco Has Adequately Pled a Claim for Common Law Trade DressInfringement ..........................................................................................................22
E. Emeco Has Adequately Pled a Claim for Common Law TrademarkInfringement ..........................................................................................................23
1. Restoration Hardwares Fair Use Argument Fails.................................23
2. Emeco Has Adequately Put Restoration Hardware on Notice of Its
Common Law Trademark Rights ..............................................................23F. Emeco Has Adequately Pled a Claim for Dilution Under California Law............23
1. Emecos Claim Rests on the Common Law and May Rely on OtherStatutory Provisions...................................................................................23
2. Restoration Hardwares Fair Use Argument Fails.....................................24
3. Emeco Has Adequately Put Restoration Hardware on Notice As toWhat Is Claimed As Trademark and Trade Dress Dilution.......................25
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TABLE OF CONTENTS(continued)
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G. The Court Should Not Dismiss Emecos Remaining Claims (Claims 4-7)...........25
V. CONCLUSION..................................................................................................................25
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TABLE OF AUTHORITIES
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FEDERAL CASES
Adidas-Salomon AG v. Target Corp.,228 F. Supp. 2d 1192 (D. Or. 2002) ..........................................................................................9
Apple Inc. v. Samsung Elecs. Co.,768 F. Supp. 2d 1040 (N.D. Cal. 2011)...................................................................................15
Armstrong Cork Co. v. Armstrong Covers Co.,434 F. Supp. 860 (E.D. Mo. 1977) ..........................................................................................14
Ashcroft v. Iqbal,556 U.S. 662 (2009)...................................................................................................................8
Autodesk, Inc. v. Dassault Systemes SolidWorks Corp.,2008 WL 6742224 (N.D. Cal. Dec. 18, 2008)...................................................................13, 18
Axis Imex, Inc. v. Sunset Bay Rattan, Inc.,2009 WL 55178 (N.D. Cal. Jan. 7, 2009)................................................................................17
Burberry Ltd. v. Euro Moda, Inc.,2009 WL 1675080 (S.D.N.Y. June 10, 2009) .........................................................................11
Byrnes & Kiefer Co. v. Flavoripe Co.,1986 WL 15550 (W.D. Pa. Aug. 20, 1986).............................................................................19
Cairns v. Franklin Mint Co.,292 F.3d 1139 (9th Cir. 2002) .................................................................................................18
Coach, Inc. v. Abners Fashion,
2009 WL 4810179 (C.D. Cal. Dec. 7, 2009) ...........................................................................10
Coach, Inc. v. Horizon Trading USA Inc.,2012 WL 5451274 (S.D.N.Y. Nov. 7, 2012)...........................................................................10
Coach, Inc. v. Siskiyou Buckle Co.,2012 WL 1532489 (D. Or. Apr. 27, 2012) ........................................................................10, 17
Consol. Cigar Corp. v. Monte Cristi de Tabacos,58 F. Supp. 2d 188 (S.D.N.Y. 1999) .......................................................................................10
Crystal Entmt & Filmworks, Inc. v. Jurado,643 F.3d 1313 (11th Cir. 2011) ...............................................................................................12
David White Instruments, LLC v. TLZ, Inc.,2003 WL 21148224 (N.D. Ill. May 16, 2003)...................................................................12, 17
Deep Water Bail Bonds v. Bavouset,2007 WL 4916961 (C.D. Cal. Sept. 24, 2007) ........................................................................22
DocMagic, Inc. v. Ellie Mae, Inc.,745 F. Supp. 2d 1119 (N.D. Cal. 2010)...................................................................................16
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TABLE OF AUTHORITIES(Continued)
Pag
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CASE NO. CV 12-05072 MMC
Dynamic Fluid Control (PTY) Ltd. v. Intl Valve Mfg., LLC,790 F. Supp. 2d 732 (N.D. Ill. 2011).................................................................................12, 17
eAdGear, Inc. v. Liu,2012 WL 2367805 (N.D. Cal. June 21, 2012).........................................................................25
Entrepreneur Media, Inc. v. Smith,279 F.3d 1135 (9th Cir. 2002) .................................................................................................16
Fortune Dynamic, Inc. v. Victorias Secret Stores Brand Mgmt., Inc. ,618 F.3d 1025 (9th Cir. 2010) ...........................................................................................19, 20
Gallup Inc. v. Bus. Research Bur. (PVT) Ltd.,2009 WL 941756 (N.D. Cal. Apr. 6, 2009) .............................................................................22
Gross v. Bare Escentuals Beauty, Inc.,641 F. Supp. 2d 175 (S.D.N.Y. 2008) .......................................................................................9
Guess?, Inc. v. Tres Hermanos,993 F. Supp. 1277 (C.D. Cal. 1997) ..........................................................................................9
Hard Rock Cafe Licensing Corp. v. Pac. Graphics, Inc.,776 F. Supp. 1454 (W.D. Wash. 1991) .....................................................................................9
Huene v. U.S. Dept of the Treasury,2012 WL 1681969 (E.D. Cal. May 14, 2012) .........................................................................24
Humboldt Wholesale, Inc. v. Humboldt Nation Distr., LLC,
2011 WL 6119149 (N.D. Cal. Dec. 8, 2011)...........................................................................15
In re Dual-Deck Video Cassette Recorder Antitrust Litig.,11 F.3d 1460 (9th Cir. 1993) ...................................................................................................19
In re Portal Software, Inc. Sec. Litig.,2006 WL 2385250 (N.D. Cal. Aug. 17, 2006) ........................................................................16
Innovation Ventures, LLC v. N2G Distrib., Inc.,635 F. Supp. 2d 632 (E.D. Mich. 2008) ..................................................................................12
Katz v. China Century Dragon Media, Inc.,2011 WL 6047093 (C.D. Cal. Nov. 30, 2011) ........................................................................16
KP Permanent MakeUp, Inc. v. Lasting Impression I, Inc. ,408 F.3d 596 (9th Cir. 2005) ...................................................................................................18
Levi Strauss & Co. v. Shilon,121 F.3d 1309 (9th Cir. 1997) ...................................................................................................7
Lewis Mgmt. Co. v. Corel Corp.,1995 WL 724835 (S.D. Cal. June 28, 1995) ...........................................................................19
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TABLE OF AUTHORITIES(Continued)
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Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC,507 F.3d 252 (4th Cir. 2007) ...................................................................................................18
Mattel, Inc. v. MGA Entmt, Inc.,782 F. Supp. 2d 911 (C.D. Cal. 2011) .....................................................................................24
Millennium Labs., Inc. v. Ameritox, Ltd.,2012 WL 4863781 (S.D. Cal. Oct. 12, 2012) ..........................................................................17
Nailtiques Cosmetic Corp. v. Salon Sciences, Corp.,1997 WL 244746 (S.D. Fla. Jan. 10, 1997)...............................................................................9
Name LLC v. Arias,2010 WL 4642456 (S.D.N.Y. Nov. 16, 2010).........................................................................16
Network Automation, Inc. v. Advanced Sys. Concepts, Inc.,638 F.3d 1137 (9th Cir. 2011) .................................................................................................10
New Colt Holding Corp. v. RJG Holdings of Fla., Inc.,312 F. Supp. 2d 195 (D. Conn. 2004)......................................................................................12
Pan Am. World Airways, Inc. v. Flight 001, Inc.,2007 WL 2040588 (S.D.N.Y. July 13, 2007) ............................................................................9
Pepe (U.K.) Ltd. v. Ocean View Factory Outlet Corp.,770 F. Supp. 754 (D. P.R. 1991) .............................................................................................14
Perfect 10, Inc. v. Megaupload Ltd.,
2011 WL 3203117 (S.D. Cal. July 27, 2011) ..........................................................................22
PetMed Express, Inc. v. MedPets.Com, Inc.,336 F. Supp. 2d 1213 (S.D. Fla. 2004) ....................................................................................18
Playboy Enters., Inc. v. Netscape Commcns Corp.,354 F.3d 1020 (9th Cir. 2004) .................................................................................................23
Porter v. Jones,319 F.3d 483 (9th Cir. 2003) .....................................................................................................8
Publns Intl, Ltd. v. Landoll, Inc.,164 F.3d 337 (7th Cir. 1998) ...................................................................................................15
Rose Art Indus., Inc. v. Swanson,235 F.3d 165 (3d Cir. 2000) ....................................................................................................14
Sanders v. Kennedy,794 F.2d 478 (9th Cir. 1986) .....................................................................................................8
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TABLE OF AUTHORITIES(Continued)
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CASE NO. CV 12-05072 MMC
Saul Zaentz Co. v. Wozniak Travel, Inc.,627 F. Supp. 2d 1096 (N.D. Cal. 2008)...................................................................................24
Shell Trademark Mgmt. B.V. v. Warren Unilube, Inc.,765 F. Supp. 2d 884 (S.D. Tex. 2011).....................................................................................15
Smith & Hawken, Ltd. v. Gardendance, Inc.,2004 WL 2496163 (N.D. Cal. Nov. 5, 2004) ..........................................................................13
Solid Host, NL v. Namecheap, Inc.,652 F. Supp. 2d 1092 (C.D. Cal. 2009) ...................................................................................16
Stix Prods., Inc. v. United Merchants & Mfrs, Inc.,295 F. Supp. 479 (S.D.N.Y. 1968) ..........................................................................................14
Tenore v. Campbell,2008 WL 2477394 (N.D. Cal. June 18, 2008).........................................................................15
Time, Inc. v. Petersen Publg Co.,173 F.3d 113 (2d Cir. 1999) ....................................................................................................12
United States v. Guerra,293 F.3d 1279 (11th Cir. 2002) .........................................................................................11, 18
United States v. Lam,677 F.3d 190 (4th Cir. 2012) ...................................................................................................10
Vision Sports, Inc. v. Melville Corp.,
888 F.2d 609 (9th Cir. 1989) .....................................................................................................9
Vision Tech. Design & Mfg., Inc. v. Gen. Wire Spring Co.,2007 WL 2069945 (E.D. Cal. July 17, 2007) ..........................................................................21
Volkswagen AG v. Verdier Microbus and Camper, Inc.,2009 WL 928130 (N.D. Cal. Apr. 3, 2009).........................................................................9, 13
Vuitton Et Fils S.A. v. J. Young Enterprises, Inc.,644 F.2d 769 (9th Cir. 1981) ...................................................................................................15
Webceleb, Inc. v. Procter & Gamble Co.,2012 WL 460472 (S.D. Cal. Feb. 13, 2012)............................................................................19
Whitney v. Wurtz,2006 WL 83119 (N.D. Cal. Jan. 11, 2006)..............................................................................22
Zobmondo Entmt, LLC v. Falls Media, LLC,602 F.3d 1108 (9th Cir. 2010) .................................................................................................15
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TABLE OF AUTHORITIES(Continued)
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CASE NO. CV 12-05072 MMC
STATE CASES
M.A.C. Prods., Inc. v. BBK Performance, Inc.,2002 WL 1938956 (Cal. Ct. App. Aug. 22, 2002) ..................................................................24
STATUTES AND RULES
15 U.S.C. 1057(b)..................................................................................................................................15 1114(1)........................................................................................................................7, 11, 21 1115(a) ..................................................................................................................................15 1116 ................................................................................................................................11, 21 1116(a)..................................................................................................................................10 1116(d)(1)(A) .......................................................................................................................10 1117(a)..................................................................................................................................10
1117(b)..................................................................................................................................10 1117(c)..................................................................................................................................10 1125(a)..................................................................................................................7, 11, 14, 21 1125(c)....................................................................................................................................7
28 U.S.C. 1367............................................................................................................................25
Cal. Bus. & Prof. Code 14247 ..............................................................................................................................23, 24 14330 ..............................................................................................................................23, 24 17200 et seq. ...................................................................................................................7, 25
Fed. R. Civ. P.
Rule 8(a)(2)................................................................................................................................8Rule 10(c) ................................................................................................................................21Rule 12(b)(6) .............................................................................................................................8
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- 1 - PLS OPP TO DEFS MOTION TO DISMISS
CASE NO. CV 12-05072 MMC
I. INTRODUCTION
Plaintiff Emeco Industries, Inc. (Emeco) has filed a highly-detailed, 28-page Complaint
exhaustively setting forth the flagrant acts of trade dress and trademark counterfeiting and
infringement of Defendants Restoration Hardware, Inc., Gary Friedman, and Does 1-10
(Restoration Hardware). As the Complaint alleges, Restoration Hardware has copied, verbatim
the iconic and protected design of Emecos Navy Chair collection and has used the near-
identical Naval Chair name to designate its replicas. Below is a side-by-side comparison of
Emecos Navy Chair and Restoration Hardwares Naval Chair.
Emecos Navy Chair Restoration Hardwares Naval Chair
Dkt. No. 1 (Compl.) 33. Restoration Hardware has distributed millions of catalogs featuring
its counterfeit products and has prominently displayed them on its website, listing them for sale at
a fraction of what the Emeco originals cost. Restoration Hardwares conduct is not only willful,
but is part of an established business practice of profiting off of others designs and trademarks.
Restoration Hardware ignored Emecos repeated notices to cease its conduct, and only after
Emeco filed suit did it represent that it had ceased selling the chairs, effectively conceding its
wrongdoing. Emeco has filed a motion for a preliminary injunction, set for hearing on December
14, 2012, to ensure the cessation of Restoration Hardwares conduct and to obtain corrective
notice to the millions of consumers who saw its catalog and website. See Dkt. No. 10.
In an attempt to distract the Court from its own conduct, Restoration Hardware has filed a
Motion to Dismiss (Motion) asserting a laundry list of pedantic, hyper-technical arguments
all of which are immaterial to the substance and viability of Emecos claims and which disregard
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CASE NO. CV 12-05072 MMC
the actual allegations of the Complaint and settled law. The allegations of the Complaint more
than adequately identify the protected trade dress and trademarks at issue and sufficiently plead
claims for statutory and common law counterfeiting, infringement, and dilution. Restoration
Hardwares fair use arguments are not only procedurally improper at the motion to dismiss stage,
but lack any merit as the Complaint alleges that Restoration Hardware is not using the Naval
Chair mark in a purely descriptive sense, but as the name of the product itself, and is acting in
bad faith by attempting to capitalize on Emecos significant goodwill.
Restoration Hardwares Motion should be denied in its entirety.
II. BACKGROUND
A. Emeco and Its Iconic Navy Chair Collection
Founded in 1944 in Hanover, Pennsylvania, Emeco manufactures and markets the iconic
Navy Chair. Compl. 13. Emeco developed the Navy Chair when the United States Navy
commissioned the company during World War II to build a seaworthy, lightweight, and durable
chair suitable for use on warships and submarines. Id.
In the years since, the Emeco Navy Chair has been recognized as a modern masterpiece
of twentieth-century design. Id. 14. It is in the permanent collections of museums around the
world. Id. It is used worldwide in homes, offices, hotels, colleges, and restaurants and regularly
appears in design magazines and books, fashion layouts, and Hollywood films and television
series. Id. The Navy Chair also has been prominently displayed by preeminent designers
including Philippe Starck and Frank Gehry in their own projects. Id.
The Navy Chair is constructed by hand in Hanover, one at a time, through a highly
technical and precise manufacturing process consisting of 77 steps. Id. 15. The chairs undergo
a thermal treatment, making them three times stronger than steel. Id. Each chair is expected to
last for 150 years, and comes with a lifetime guarantee. Id. Emeco has earned an industry-wide
reputation for exclusively manufacturing the Navy Chair through this rigorous process. Id.
16. Emecos unique manufacturing process and its Navy Chair products have attracted the
attention of wide-reaching media outlets, including CNN. Id.
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Emeco has entered into a Joint Venture Partnership with the Coca-Cola Company to
construct a version of the Navy Chair (the 111 Navy Chair) made out of recycled plastic
Coca-Cola bottles. Compl. 17. The 111 Navy Chair is available in various colors, including
red, black, green, orange, and white, and has won several design awards. Id. Below are images
of the 1006 Navy Chair and the 111 Navy Chair.
1006 Navy Chair 111 Navy Chair
Id. 18. In addition, Emeco makes a number of other products as part of its Navy Chair
collection, including the Navy Armchair, the Navy Counter Stool, and the Navy Barstool.
The Navy Armchair The Navy Counter Stool The Navy Barstool
Id. 19. Emeco sells its Navy Chair collection directly to consumers, including through
its website, and through established retail furniture and design stores. Id. 20.
Emeco is the owner of federal registration nos. 2,511,360 and 3,191,187, which cover the
configuration and outline of the Navy Chair, as well as federal registration nos. 3,016,791 and
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CASE NO. CV 12-05072 MMC
Navy Chair Naval Side Chair
Navy Armchair Naval Armchair
Navy Counter Stool Naval Counter Stool
Navy Barstool
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Navy Barstool Naval Barstool
Id. 33-34. Restoration Hardware prominently marketed and advertised its chairs and stools
with the Naval Chair name in its print catalog and on its website. Id. 36-38. For the last
fiscal year, Restoration Hardware distributed roughly 26.1 million catalogs to consumers. Id.
37. The retail prices of Restoration Hardwares Naval Chair products are more than $300 less
than their Navy Chair counterparts, with, for example, the Navy Chair priced at $450
compared to the Naval Chairs $129 price tag. Id. 32.
The identical nature of the Navy Chair and Naval Chair product lines is not mere
coincidence, but is the result of willful, intentional conduct that is part of Restoration Hardwares
established practice of using others designs and trademarks for financial gain. Id. 44. As
Restoration Hardware itself has stated, euphemistically, in its pre-IPO filings with the Securities
and Exchange Commission, [a]t our core we are not designers, rather we are curators and
composers of inspired design and experiences. Id. 45. Restoration Hardware acknowledges in
these public filings that by [e]xternally discover[ing] and curat[ing] others designs, as opposed
to [i]nternally design[ing] and develop[ing] its own products, it can cut the development
process from 12-18 months lead time to 3-9 months and reduce product costs. Id. Indeed,Restoration Hardware has been the focus of half a dozen copying and infringement actions over
the last decade, with one observer stating, [t]hey should call it Replication Hardware. Id.
47-55.
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CASE NO. CV 12-05072 MMC
C. Pre-Lawsuit Communications and Procedural Background
On September 7, 2012, Gregg Buchbinder, President & CEO of Emeco, expressed
concerns regarding Restoration Hardwares Naval Chair product line to Glenn Krevlin, a
member of the board of directors of Restoration Hardware, and told him that if Restoration
Hardware did not cease its conduct, Emeco would be forced to bring legal action. Id. 39. Per
Mr. Krevlins suggestion, Mr. Buchbinder emailed Mr. Krevlin on September 8, 2012 with
Emecos position and demands. Id. 40. Mr. Krevlin responded, Got it. Id.
Seeing no response from Restoration Hardware, Emecos counsel sent a letter on
September 20 to Restoration Hardwares current CEO, Carlos Alberini, asking the company to
cease and desist its infringing activity. Id. 41. Restoration Hardware modified its website to
remove all references to Naval Chair and replace them with the product name the Aluminum
line, but otherwise refused to cease selling the products. Id. 42. The infringing products
remained for sale and millions of catalogs describing these products as part of the Naval Chair
series already had been circulated to the public. Id.
On October 1, 2012, Emeco filed suit against Restoration Hardware. See Compl. The
Complaint asserts claims for trade dress and trademark counterfeiting and infringement under 15
U.S.C. 1114(1), 1125(a) (Counts I-II); federal dilution under 15 U.S.C. 1125(c) (Count III);
common law trade dress and trademark infringement (Counts IV-V); dilution under California
statutory and common law (Count VI); and violation of the Cal. Bus. & Prof. Code 17200 et
seq. (Count VII). Id. 64-124. On October 10, Emeco filed a motion for a preliminary
injunction. See Dkt. No. 10.1
A hearing on the motion is set for December 14. Dkt. No. 17.
1As noted, Restoration Hardware has since represented to Emeco that it is no longer selling its
Naval Chair products though only after Emeco filed this lawsuit, only after ignoring
repeated cease-and-desist letters from Emeco, and only after distributing millions of catalogsfeaturing the counterfeit products. As explained in Emecos motion for a preliminary injunction,the Court can and should issue a preliminary injunction notwithstanding Restoration Hardwaresrepresentations. As the Ninth Circuit has held, a trademark plaintiff is entitled to effectiverelief; and any doubt in respect of the extent thereof must be resolved in [the plaintiffs] favor asthe innocent producer and against the [defendant], which has shown by its conduct that it is not tobe trusted. Levi Strauss & Co. v. Shilon, 121 F.3d 1309, 1314 (9th Cir. 1997) (quoting WilliamR. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 532 (1924)). Moreover, Restoration Hardwarehas done nothing to provide corrective notice to consumers following its flooding of the
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III. STANDARD OF REVIEW
In a motion to dismiss under Rule 12(b)(6) for failure to state a claim, the complaint must
be construed in the light most favorable to the non-moving party and all material allegations in
the complaint are taken to be true. Sanders v. Kennedy, 794 F.2d 478, 481 (9th Cir. 1986). A
complaint need only satisfy the minimal notice pleading requirements of Rule 8(a)(2) a short
and plain statement to survive a motion to dismiss. See Fed. R. Civ. P. 8(a)(2);Ashcroft v.
Iqbal, 556 U.S. 662, 677-78 (2009); Porter v. Jones, 319 F.3d 483, 494 (9th Cir. 2003).
IV. ARGUMENT
A. Emeco Has Adequately Pled a Claim for Trade Dress Counterfeiting andInfringement
1. Restoration Hardwares Argument Regarding the Registered NavyChair Outline Is Immaterial and Legally Meritless
Restoration Hardwares lead-off argument in its Motion focusing on Emecos federal
registration for the outline of the Navy Chair is both immaterial and wrong as a matter of law.
Restoration Hardware argues that Emecos federal registration for the outline of the Navy
Chair, Registration No. 3,191,187 (Compl. Ex. 1), does not support Emecos trade dress claim
because it is for a logo, not for a product configuration. Dkt. No. 22 (Mot.) at 5. But as
Restoration Hardware concedes in the very next paragraph, Emeco has a separate trademark
registration for the configuration of the Navy Chair, Registration No. 2,511,360, which serves
as an independent basis for [Emecos] trade dress counterfeiting and infringement claim. Id. at
6. Thus, even if this argument regarding the registered outline had any merit, which it does not,
Restoration Hardware concedes that it would have no effect on Emecos trade dress claim.
In any event, Restoration Hardwares argument has no legal basis. As the Ninth Circuit
and numerous other courts have held, logos are not limited to trademark claims and can be
included as part of a trade dress claim. As the Ninth Circuit has held,
trade dress involves the total image of a product and may include features such assize, shape, color, color combinations, texture, or graphics. . . . Trade dressprotection is broader in scope than trademark protection, both because it protects
marketplace with millions of catalogs featuring the infringing products, which is a criticalcomponent of Emecos proposed preliminary injunction order.
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aspects of packaging and product design that cannot be registered for trademarkprotection and because evaluation of trade dress infringement claims requires thecourt to focus on the plaintiffs entire selling image, rather than the narrowersingle facet of trademark. . . . Thus, to the extent that [the plaintiffs] cause ofaction focuses upon the look and styling of the [product], along with the colorscheme and graphic display embodied in the VSW logo, it is a trade dress claim.
Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir. 1989) (emphasis added).2 And
as alleged in the Complaint, the Navy Chair outline plays a critical role in the Navy Chair
trade dress and Emeco brand. The outline, which reflects the actual design of the chair, serves as
the companys official logo, as noted above. Compl. 27. It is on the packaging of every Emeco
product, in its advertising and marketing materials, and is displayed at trade fairs.
Restoration Hardware ignores this case law by suggesting that because the Navy Chair
outline may have been registered as a trademark, it cannot serve as the basis for a trade dress
claim. Mot. at 6. Numerous courts have rejected that very argument, holding that where graphic
elements such as a logo that might otherwise be considered trade dress are part of a
registered trademark, that mark should also be entitled to the broader protection afforded to
trade dress. Hard Rock Cafe Licensing Corp. v. Pac. Graphics, Inc., 776 F. Supp. 1454, 1460
(W.D. Wash. 1991) (emphasis added); see Adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d
1192, 1207-08 (D. Or. 2002) (numerous cases address trade dress claims which include
registered trademarks);Nailtiques Cosmetic Corp. v. Salon Sciences, Corp., 1997 WL 244746,
at *2 (S.D. Fla. Jan. 10, 1997) (protection of trademark registration extends to. . . Trade Dress).
Restoration Hardwares argument that there can be no counterfeit(as opposed to
traditional infringement) claim with respect to the Navy Chair outline because Emeco does not
accuse Defendants of using any trademark that is identical with, substantially indistinguishable
2See also, e.g., Volkswagen AG v. Verdier Microbus and Camper, Inc., 2009 WL 928130, at *5-6
(N.D. Cal. Apr. 3, 2009) (holding VW logo to be part of protectable trade dress and that VWhas established a likelihood of success on the merits on its trade dress infringement claim onpreliminary injunction motion); Guess?, Inc. v. Tres Hermanos, 993 F. Supp. 1277, 1285 (C.D.Cal. 1997) (holding that Guess? logos are non-functional protectable trade dress); Gross v. BareEscentuals Beauty, Inc., 641 F. Supp. 2d 175 (S.D.N.Y. 2008) (finding trade dress to includelogos); Pan Am. World Airways, Inc. v. Flight 001, Inc., 2007 WL 2040588, at *11 (S.D.N.Y.July 13, 2007) (Pan Am Globe logo is likely to merit trade dress protection).
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from, or confusingly similar to the Navy Chair outline (Mot. at 7) is misplaced, for several
reasons. First, as noted, Restoration Hardwares argument does notapply to Emecos registration
for the configuration of the Navy Chair, Registration No. 2,511,360, which serves as an
independent basis for Emecos trade dress counterfeiting claim. Second, the argument at best
only applies to Emecos counterfeiting, as opposed to infringement, trade dress claim. It would
only affect the availability of certain remedies, like statutory damages but notably not Emecos
claim for injunctive relief.3
And the argument is meritless. Whether a product rises to the level of a counterfeit mark,
i.e., a spurious mark that is identical with, or substantially indistinguishable from, a registered
mark is a factual inquiry that cannot be resolved on the pleadings. See Coach, Inc. v. Siskiyou
Buckle Co., 2012 WL 1532489, at *3 (D. Or. Apr. 27, 2012) (citing 15 U.S.C. 1127). And at
any rate, Restoration Hardwares trade dress does not have to be an exact replica of [the]
registered Navy Chair outline to be deemed a counterfeit. United States v. Lam, 677 F.3d
190, 199 (4th Cir. 2012); see also Consol. Cigar Corp. v. Monte Cristi de Tabacos, 58 F. Supp.
2d 188, 196 (S.D.N.Y. 1999) (granting summary judgment for trade dress counterfeiting despite
minor differences in trade dress which would not be apparent to an unwary observer); Coach,
Inc. v. Horizon Trading USA Inc., 2012 WL 5451274, at *5-6 (S.D.N.Y. Nov. 7, 2012) (different
stylization of CC logo still counterfeited Coachs CC marks); Coach, Inc. v. Abners Fashion,
2009 WL 4810179, at *3 (C.D. Cal. Dec. 7, 2009) (products variations from Coach designs do
not defeat evidence of counterfeiting);Burberry Ltd. v. Euro Moda, Inc., 2009 WL 1675080, at
*6-7 (S.D.N.Y. June 10, 2009) (products were counterfeits despite design variations). Such an
3To state a claim for trademark infringement, Emeco must allege (1) that it has a protectible
ownership interest in the mark; and (2) that the defendants use of the mark is likely to cause
consumer confusion. Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137,1144 (9th Cir. 2011) (emphasis added). Congress clearly intended counterfeiting to be a subset ofinfringing activity, rather than a free-standing claim. Cf. 15 U.S.C. 1116(d)(1)(A) (referring toa civil action arising under 1114(1)(a) . . . with respect to a violation that consists of using acounterfeit mark) (emphasis added). Proof of counterfeiting expands the remedies available to atrademark owner, including treble damages and statutory damages. See 15 U.S.C. 1117(b)-(c).But these provisions in no way alter the traditional test for trademark infringement, nor do theyshrink the traditional arsenal of available remedies, including Emecos claim for injunctive reliefand profits and damages. See 15 U.S.C. 1116(a), 1117(a).
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interpretation would allow counterfeiters to escape liability by modifying the registered
trademarks of their honest competitors in trivial ways. United States v. Guerra, 293 F.3d 1279,
1288 (11th Cir. 2002). Here, as the Complaint sufficiently alleges, the image of Restoration
Hardwares Naval Chair, featured on its website and catalog, is identical with, or substantially
indistinguishable from, the registered Navy Chair outline:
Registered Navy Chair Outline Restoration Hardware Website Image
Compl. 1 & Ex. 1.
2. Emecos Trade Dress Claim Rests Independently in FederalRegistration and Common Law Trade Dress Rights
Restoration Hardware challenges Emecos reference in its first cause of action for trade
dress counterfeiting and infringement to its common law rights in the design of its Navy Chair
products (Compl. 66; Mot. at 7). Like the above argument, this claim ultimately is immaterial
as Restoration Hardware acknowledges that the federal registrations are a sufficient basis for
Emecos trade dress claim under 15 U.S.C. 1114(1) and 15 U.S.C. 1116, Mot. at 7-8, which
the Complaint lists as statutory bases for that claim, see Compl. at 18 & 74, 77-78.
But moreover, Restoration Hardware ignores that in addition to 15 U.S.C. 1114(1),
Emeco also lists 15 U.S.C. 1125(a) as an independent statutory basis for its first cause of action,
see Compl. at 18 & 75. Emecos unregistered, common law trade dress rights in its Navy
Chair products are directly relevant to and independently actionable under 15 U.S.C. 1125(a).
See, e.g., Crystal Entmt & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1320 (11th Cir. 2011)
(under 15 U.S.C. 1125(a), the use of anothers unregistered, i.e., common law, trademark can
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constitute a violation of [section 43(a) of the Lanham Act]) (quoting Conagra, Inc. v. Singleton,
743 F.2d 1508, 1512 (11th Cir. 1984)); Time, Inc. v. Petersen Publg Co., 173 F.3d 113, 117 (2d
Cir. 1999) (same).
3. Emeco Has Adequately Put Restoration Hardware on Notice As to the
Claimed Trade Dress at Issue
Restoration Hardwares claim that Emeco has fail[ed] to provide sufficient specificity as
to what it is claiming as protectable trade dress (Mot. at 8-9) is baseless.
Restoration Hardwares argument ignores the actual allegations of the Complaint. Emeco
attached the federal trademark registrations for the Navy Chair configuration and outline (which
display drawings of the design at issue), included in the Complaint images of all of the Navy
Chair products at issue with the identical Restoration Hardware knockoffs, and noted thedesign elements of the Navy Chair collection at issue. Compl. Ex. 1 & 18-19, 25, 33-34.
These allegations are more than sufficient at the pleadings stage to put Restoration Hardware on
notice as to the claimed trade dress. See Dynamic Fluid Control (PTY) Ltd. v. Intl Valve Mfg.,
LLC, 790 F. Supp. 2d 732, 737 (N.D. Ill. 2011) (allegation that trade dress is comprised of a
distinctive shape, contours, and color scheme and photographs of products allegedly
exhibiting its protectable trade dress, were sufficient to put Defendants on notice as to what
[plaintiff] believes is protected);Innovation Ventures, LLC v. N2G Distrib., Inc., 635 F. Supp.
2d 632, 641 (E.D. Mich. 2008) (pictures of [plaintiffs] products and Defendants allegedly
infringing products sufficient; at the motion to dismiss stage, there is no such requirement that
plaintiff be expected to list the elements of the designs);David White Instruments, LLC v. TLZ,
Inc., 2003 WL 21148224, at *8 (N.D. Ill. May 16, 2003) (allegations not vague where
complaint contains photographs and illustrations of the . . . product line).4
4 Indeed, Emeco is entitled to claim the entire design of the Navy Chair product line, whichRestoration Hardware has copied verbatim, as protectable trade dress, without identifying anyspecific elements of the overall design. See, e.g.,New Colt Holding Corp. v. RJG Holdings ofFla., Inc., 312 F. Supp. 2d 195, 206 (D. Conn. 2004) (any lack of clarity in Plaintiffsdescriptions stems from their attempts to claim the entire appearance of the [product] . . . [T]hereis no rule of law known or cited that prohibits a plaintiff from claiming the entire appearance of aproduct as its trade dress. In this sense, Plaintiffs adequately describe the claimed trade dress.).
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But moreover, even if Emeco were required to identify the specific protectable trade dress
elements at the pleadings stage, Emeco has done exactly that. As Emeco alleges in the
Complaint, the design elements of the Navy Chair collection which together are
distinctive, non-functional, and thus protectable include the
rounded bends at the top corners on the upper back of the seat, which also formthe back legs; the rounded curves on the lower back of the seat; the overallconcave curvature of the chair back (when viewed from the back); the number,space, and positioning of the three vertical bars connecting the upper and lowercurves of the back of the seat; the unique, molded seat defined by concave curvesmeeting in the center of the seat to form a triangle butt dip; the pie-shaped crosssection of the tapered front legs; the two curved horizontal bars running betweenthe corresponding front and back chair legs in the chair and armchair versions,and for the stool versions, between the two front legs and two back legs; thepositioning and angle of the curved horizontal bar(s) on the lower base of the seat;
the outward bent of the back legs; the lack of fasteners, yielding a sculpture-like,one-piece design; and the distinct hand brushed finish with the contrastingdirection where the leg meets the seat bottom.
Compl. 25. See, e.g., Volkswagen, 2009 WL 928130, at *5 (each of the elements VW
identifies as its trade dress, including but not limited to the bread loaf design, the V design on
the nose of the vehicle and the placement of the VW Logo within the V, the placement of the
wheels and windows, and the round headlights, are sufficient showing that the sum of the
elements of the [VW Microbus] trade dress are protectable).5
Restoration Hardwares claim that
Emeco does not define what it accuses of being infringing trade dress (Mot. at 9) likewise is
wrong, as Emeco identifies and includes side-by-side pictures of Restoration Hardwares identical
knockoff products next to the Emeco originals. See Compl. 33-34.
Equally baseless is Restoration Hardwares suggestion that it is not clear whether the
claimed trade dress applies to the entire Navy Chair collection that Restoration Hardware has
5The cases Restoration Hardware cites are readily distinguishable. InAutodesk, Inc. v. Dassault
Systemes SolidWorks Corp., 2008 WL 6742224 (N.D. Cal. Dec. 18, 2008), Mot. at 9, the courtdismissed the plaintiffs trade dress claim where it unclear whether a mark and tagline are alsopart of the total image, design, and appearance of the product that constitutes its trade dress. Id.at *5. In Smith & Hawken, Ltd. v. Gardendance, Inc., 2004 WL 2496163 (N.D. Cal. Nov. 5,2004), Mot. at 9, the defendants counterclaim offered no explanation as to the nature, scope orelements making up its allegedly protectable trade dress. Id. at *3 (emphasis added). Here,Emeco has clearly defined the nature, scope, and even specific elements of its trade dress.
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copied (Mot. at 9). In fact, Emeco explicitly alleges that the specified design elements quoted
above apply to the entire Navy Chair collection. Compl. 25 (emphasis added). The
products within the collection do not differ significantly from one another, as Restoration
Hardware misleadingly suggests, Mot. at 9, but all share the same common design elements
explicitly identified in the Complaint and quoted above (Compl. 25) and which are part of
Emecos registrations.6 Any differences between products that do exist are minor; the armchair
version is identical to the chair version but with arms7; the stool versions contain longer legs than
the chair version and have a slightly different base. And where there are slight variations between
the products with respect to the claimed design elements, Emeco expressly has alleged which
elements apply to which Navy Chair products. Compl. 25 (noting two curved horizontal bars
running between the corresponding front and back chair legs in the chair and armchair versions,
andfor the stool versions, between the two front legs and two back legs) (emphasis added).
Moreover, as courts repeatedly have held, a line of products may enjoy sharedtrade dress
rights so long as they have a consistent overall look. Rose Art Indus., Inc. v. Swanson, 235 F.3d
165, 173 (3d Cir. 2000). The design of the products need not be identical, and there may be
slight variations in [the] design so long as the change does not alter the distinctive characteristics
and the trade dress conveys a single and continuing commercial expression. Id.; see also Apple
Inc. v. Samsung Elecs. Co., 768 F. Supp. 2d 1040, 1048 (N.D. Cal. 2011) (The consistent
6That the products in the Navy Chair collection contain minor variations from the drawings of
the Navy Chair registrations does not preclude the application of the registrations to theseproducts. See, e.g.,Armstrong Cork Co. v. Armstrong Covers Co., 434 F. Supp. 860, 871 (E.D.Mo. 1977) ([p]laintiffs rights in the mark . . . are not limited to the exact style shown in its . . .registrations); Stix Prods., Inc. v. United Merchants & Mfrs,, Inc., 295 F. Supp. 479, 486 n.18(S.D.N.Y. 1968) (the specific form in which the mark [is] registered ... cannot be herecontrolling) (quotingNashville Syrup Co. v. Coca Cola Co., 215 F. 527, 530 (6th Cir. 1914));
Pepe (U.K.) Ltd. v. Ocean View Factory Outlet Corp., 770 F. Supp. 754, 758 (D. P.R. 1991)(rejecting technical argument that none of the drawings of the registrations exactly duplicatethe mark PEPE as it appears on plaintiffs marks as actually used in the marketplace). Andeven if that were the case, Emeco expressly alleges that it owns statutory and common law rightsin the trade dress of the entire Navy Chair product line, Compl. 24, rendering RestorationHardwares products actionable under 15 U.S.C. 1125(a) and state law.
7 Emeco did not include the arms of the armchair version in its list of claimed common designelements shared by the Navy Chair collection, and thus this minor difference between theproducts is not even at issue in the case.
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overall look standard do[es] not require that the appearance of the series or line of products or
packaging be identical, and a plaintiff generally is permitted to define a product line as it sees
fit.) (quotingRose Art Indus., 235 F.3d at 173); Shell Trademark Mgmt. B.V. v. Warren
Unilube, Inc., 765 F. Supp. 2d 884, 896-97 (S.D. Tex. 2011) (same). The Complaint alleges a set
of core design features and characteristics which are common to the entire Navy Chair
collection and which convey a single and continuing expression of the Emeco Navy Chair
brand in the marketplace.
4. Emeco Has Adequately Alleged Secondary Meaning and Non-Functionality for Its Navy Chair Trade Dress
Restoration Hardwares throw-away, one-line argument that Emeco does not allege facts
sufficient to show that it has established secondary meaning or that the trade dress is non-functional (Mot. at 9) ignores the actual allegations of the Complaint and is without merit.
At the outset, this wholly conclusory argument, without any supporting analysis, should
be rejected as improper. See Tenore v. Campbell, 2008 WL 2477394, at *7 (N.D. Cal. June 18,
2008) (rejecting passing one-line argument as Court cannot properly evaluate [the] claim).
The argument at any rate fails. First, Emecos allegations regarding its registration rights
are sufficient to plead validity (Compl. 22 & Ex. 1), shifting the burden to Restoration
Hardware to prove the absence of secondary meaning and that the trade dress at issue is
functional.8 As the burden of proof lies with Restoration Hardware, Emeco need not make any
detailed allegations as to secondary meaning or non-functionality. See, e.g., Humboldt
Wholesale, Inc. v. Humboldt Nation Distr., LLC, 2011 WL 6119149, at *3 (N.D. Cal. Dec. 8,
2011) (Plaintiff has pled sufficient facts to show . . . protectable mark where it is entitled to a
presumption of validity because it is registered which confers a presumption that the registered
8See Zobmondo Entmt, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010) (citing 15
U.S.C. 1057(b), 1115(a)). This presumption includes that the trade dress has acquiredsecondary meaning, id. at 1113, and is nonfunctional, Vuitton Et Fils S.A. v. J. Young Enters.,Inc., 644 F.2d 769, 775 (9th Cir. 1981). Restoration Hardware therefore bears the burden toshow by a preponderance of the evidence that the mark is not protectable. 602 F.3d at 1114;Publns Intl, Ltd. v. Landoll, Inc., 164 F.3d 337, 339-40 (7th Cir. 1998) (for registered mark,defendant has the laboring oar on all issues relating to validity, including functionality).
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mark has acquired . . . secondary meaning).9 Indeed, because Emecos registrations have
become incontestable, this serves as conclusive proof of secondary meaning. Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1142 n.3 (9th Cir. 2002).
Even without this burden shifting, Emecos allegations are more than sufficient. As to
secondary meaning, Emeco alleges that the Navy Chair regularly appears in design magazines,
fashion layouts, and Hollywood films and television series, has been prominently displayed by
preeminent designers, and that Emeco has an industry-wide reputation for exclusively
manufacturing the chair, has been featured by several media outlets, and has extensively
advertised and marketed the chair. Compl. 14-16. Emeco further alleges that it has
expended much effort in the form of advertising, promotion, and sales to promote the trade dress
configuration of the Navy Chair product line, and that as a result of such extensive and
exclusive use and promotion, the trade dress configuration has developed secondary meaning as
an indicator that Emeco is the source of the goods. Id. 68-69. These allegations are more
than adequate to allege secondary meaning in the Navy Chair product line. See DocMagic, Inc.
v. Ellie Mae, Inc., 745 F. Supp. 2d 1119, 1140 (N.D. Cal. 2010) (allegations that use of trade
dress was long-standing and exclusive and users knew that those services were being provided
by [plaintiff] based on this trade dress adequately alleges secondary meaning).10
As to non-functionality, the Complaint specifically details the components of the claimed
trade dress which Emeco alleges are non-functional. See Compl. 25 (noting design elements
of the Navy Chair collection that comprise a non-functional aesthetic); id. 67 (protected
9See also, e.g.,In re Portal Software, Inc. Sec. Litig., 2006 WL 2385250, at *3 (N.D. Cal. Aug.
17, 2006) (where defendant has burden of proof on issue, a failure to plead issue cannot sinkplaintiffs claims on the present motion to dismiss); Katz v. China Century Dragon Media, Inc.,
2011 WL 6047093, at *5 (C.D. Cal. Nov. 30, 2011) (same).10See also Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1107 (C.D. Cal. 2009)
(plaintiff not required to adduce evidence to survive a motion to dismiss and existence ofsecondary meaning may be inferred from evidence relating to the nature and extent of the publicexposure achieved by the designation);Name LLC v. Arias, 2010 WL 4642456, at *8 (S.D.N.YNov. 16, 2010) (allegations that plaintiff actively seeks out national and international mediacoverage of its nightclubs and has been featured on several well-known national televisionnews and entertainment shows, . . . . as well as in mainstream entertainment magazines,sufficient to demonstrate distinctiveness or secondary meaning of marks).
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trade dress of the Navy Chair product line is non-functional). As courts have held, the
inquiry into whether a product is functional . . . is fact intensive with multiple factors for the
Court to consider, the Court is to assume that all allegations as to non-functionality are true,
and facts going to that functionality analysis cannot be resolved at the motion to dismiss stage.
Axis Imex, Inc. v. Sunset Bay Rattan, Inc., 2009 WL 55178, at *3 (N.D. Cal. Jan. 7, 2009).11 And
indeed, Emecos pending motion for a preliminary injunction includes substantial evidence and
analysis on the issue of non-functionality. See Dkt. No. 10 at 13-16.
B. Emeco Has Adequately Pled a Claim for Trademark Counterfeiting andInfringement
1. Emeco Has Adequately Pled a Claim for Trademark Counterfeiting
Restoration Hardwares challenge to Emecos trademark counterfeiting claim is meritless.
As noted, this argument at best only applies to Emecos counterfeiting, but not infringement,
claim, and thus would only affect a narrow range of available remedies. Supra at 10 & n.3.
Restoration Hardwares argument also fails on its own terms. At base, Restoration
Hardware claims that because it uses the phrases Introducing 1940s Naval Chair and
Introducing 1940s Aluminum Naval Chair collection, rather than Navy Chair standing alone
(Mot. at 10-11), it is not counterfeiting Emecos marks. As noted, whether a mark rises to the
level of a counterfeit is a factual issue that cannot be resolved on the pleadings. Coach, 2012
WL 1532489, at *3. And here, Emeco clearly has pled sufficient facts. Emeco has alleged that
Naval Chair refers to the name of theproduct as Restoration Hardware concedes, it is called
the Naval Chair collection. Compl. 36-38; Mot. at 10-11. And by changing Navy Chair to
Naval Chair, Restoration Hardware has merely turned a noun term (Navy) of a two-word mark
into its adjectival form (Naval). See Compl. 1 (near-identical Naval Chair name), id. 3
(chairs and stools [have] the confusingly similar Naval Chair name), id. 36-38.
11See also Dynamic Fluid Control, 790 F. Supp. 2d at 737 (allegation that Trade Dress is not
merely functional sufficient given that non-functionality require[s] factual determinations thatare premature on motion to dismiss);David White, 2003 WL 21148224, at *8 (where complaintdid not allege that trade dress is non-functional, finding allegations sufficient as [w]hether atrade dress is functional is not appropriate for consideration on a motion to dismiss);Millennium Labs., Inc. v. Ameritox, Ltd., 2012 WL 4863781, at *3 (S.D. Cal. Oct. 12, 2012).
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The term Introducing is a small-print, stock promotional clause that was clearly not
intended to be the name of the chairs. See id. 36-38. And Restoration Hardwares inconsistent
use of the phrases 1940s and 1940s Aluminum as a preface to Naval Chair is, at best, a
trivial modification to the registered mark. See Guerra, 293 F.3d at 1288 (defendant cannot
escape counterfeit liability by modifying the registered trademarks of their honest competitors
in trivial ways.). As noted, in applying the requisite level of similarity, courts overlook such
minor differences between products in concluding that an accused product is a counterfeit. See
supra at 10-11; PetMed Express, Inc. v. MedPets.Com, Inc., 336 F. Supp. 2d 1213, 1219-20 (S.D.
Fla. 2004) (concluding that MedPets.Com is a counterfeit of PetMed).12
2. Restoration Hardwares Trademark Fair Use Argument Is
Improper on a Motion to Dismiss, and in Any Event Baseless
Solely on the basis of the complaint, Restoration Hardware argues that the fair use defense
protects it from a trademark infringement claim for using Naval Chair. Mot. at 12. This
defense is improper on a motion to dismiss and at any rate meritless.
To prove a fair use defense, Restoration Hardware must show that: (1) its use of the term
is not as a trademark or service mark; (2) it uses the term fairly and in good faith; and (3) it
uses the term [o]nly to describe its goods or services. Cairns v. Franklin Mint Co., 292 F.3d
1139, 1151 (9th Cir. 2002) (emphasis added). Restoration Hardwares fair use arguments are
premature on a motion to dismiss, particularly given the factual nature of the inquiry.
Autodesk, Inc. v. Dassault Systemes SolidWorks Corp., 2008 WL 6742224, at *5 (N.D. Cal. Dec.
18, 2008); KP Permanent MakeUp, Inc. v. Lasting Impression I, Inc. , 408 F.3d 596, 609 (9th
Cir. 2005); Webceleb, Inc. v. Procter & Gamble Co., 2012 WL 460472, at *3 & n.3 (S.D. Cal.
Feb. 13, 2012) (resolution of whether mark is descriptive under fair use analysis is improper on
12 Restoration Hardware errs in relying solely onLouis Vuitton Malletier S.A. v. Haute DiggityDog, LLC, 507 F.3d 252 (4th Cir. 2007). Although the Fourth Circuit held that the ChewyVuitton and the CV monogram marks, designs, and coloring patterns were not counterfeits ofthe LOUIS VUITTON and LV marks, designs, and coloring patterns, it specifically noted that thedefendant was not selling knock-off LOUIS VUITTON handbags with a counterfeit LV mark.Id. at 269. Emeco has clearly alleged that Restoration Hardware is selling knock-off NavyChairs bearing a substantially indistinguishable mark. Compl. 1.
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motion to dismiss). Further, Restoration Hardwares argument is exclusively devoted to the third
factor and entirely ignores the other two. This alone warrants rejection of the argument.
As to the third factor, the Complaints allegations make clear that Restoration Hardware
is not using Naval Chair only to describe its goods or services. The law is clear that when an
infringer uses a mark in theproduct name, such use is not descriptive of the product as a matter of
law under the fair use doctrine. See id.; see also Lewis Mgmt. Co. v. Corel Corp., 1995 WL
724835, at *6 n.6 (S.D. Cal. June 28, 1995) (use as the name of a product, as opposed to use as
to describe the product, is not descriptive use entitled to the fair use exemption.);Byrnes &
Kiefer Co. v. Flavoripe Co., 1986 WL 15550, at *6 (W.D. Pa. Aug. 20, 1986) (where term is
indeed a part of the product name and not merely used in its descriptive sense this is not a fair
use); Fortune Dynamic, Inc. v. Victorias Secret Stores Brand Mgmt., Inc. , 618 F.3d 1025, 1042
(9th Cir. 2010) (jury could conclude that use of Delicious on a pink tank top did not qualify as
sufficiently descriptive for fair use defense).
In re Dual-Deck Video Cassette Recorder Antitrust Litig., 11 F.3d 1460, 1467 (9th Cir.
1993), on which Restoration Hardware relies, is not to the contrary. The defendant in that case
was not using the mark to designate a product, but, as Restoration Hardware concedes, to
describe a particular input on a receiver. Mot. at 12 (citingIn re Dual-Deck, 11 F.3d at 1467).
By contrast, Emeco has alleged that Restoration Hardwares use of Naval Chair is as a product
name. Compl. 1, 36-38.
More fundamentally, Restoration Hardware misunderstands the requisite level of
descriptive purity under the fair use defense. As the Ninth Circuit explained, the scope of the
fair use defense varies with the level of descriptive purity. Thus, as a defendants use of a term
becomes less and less purely descriptive, its chances of prevailing on the fair use defense become
less and less likely. Fortune Dynamic, 618 F.3d at 1042. Here, the term Naval Chair is not
purely descriptive of the chair Restoration Hardware sells, for it fails to describe the
characteristics, features, or functions of the chair. While a purely descriptive Navy Chair
product would be one, e.g., that is the color navy, Restoration Hardware does not and cannot
argue that its chair has any such purely descriptive characteristics. What Restoration Hardware
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does argue is that the Naval Chair is descriptive ofEmecos historical development of the chair
for the Navy. But this is another way of saying that Restoration Hardware seeks to capitalize on,
and usurp, Emecos own unique role in American history, Compl. 31, which, as explained
below, is a bad faith use that is flatly ineligible for fair use protection. See Fortune Dynamic, 618
F.3d at 1043.
Additionally, Restoration Hardwares fair use defense fails the remaining factors it
entirely ignores. Regarding the first factor, a non-fair use trademark function exists where the
term is used as a symbol to attract public attention, which can be demonstrated by the lettering,
type style, size, and visual placement and prominence of the challenged words. Fortune
Dynamic, 618 F.3d at 1040 (internal quotation marks and citations omitted). Emeco plainly
alleges that Restoration Hardware prominently displayed on its advertising the Naval Chair
product name using all-capitalized, enlarged-font text. See Compl. 36-38; Mot. at 10-11.
As for the second factor requiring good faith use, Emeco clearly alleges bad faith on the
part of Restoration Hardware. A lack of good faith exists where the defendant in adopting its
marks intended to capitalize on plaintiffs good will. Fortune Dynamic, 618 F.3d at 1043. This
is not a high bar for a plaintiff to meet: In Fortune Dynamic, the Ninth Circuit held that the mere
failure to investigate the possibility that a product name was being used as a trademark
demonstrated bad faith. Id. Here, Emeco has alleged that Restoration Hardware did something
far worse; it knew that the mark referred to Emeco as the source of the goods yet willfully used a
counterfeit name without Emecos permission. See Compl. 44-46. Moreover, the fact that the
products themselves are ultimately identical to one another reinforces the conclusion that
Restoration Hardware used the mark to capitalize on Emecos goodwill. Id. 31, 33.
3. Emecos Trademark Claim Rests Independently in Federal
Registration and Common Law Trade Dress Rights
Restoration Hardware similarly challenges Emecos reference in its second cause of action
for trademark counterfeiting and infringement to its common law rights in this trademark in
connection with its furniture. Compl. 80; Mot. at 13. This argument likewise is immaterial as
Restoration Hardware acknowledges that the federal registrations are a sufficient basis for
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Emecos trademark claim under 15 U.S.C. 1114(1) and 15 U.S.C. 1116, Mot. at 13, which are
listed as statutory bases for that claim, see Compl. at 20 & 88, 91. And again, Restoration
Hardware ignores that in addition to 15 U.S.C. 1114(1), Emeco also lists 15 U.S.C. 1125(a),
which specifically applies to common law rights, as an independent statutory basis for its
trademark claims, see Compl. at 20 & 89; supra at 11-12.
Restoration Hardwares claim that the Complaint at times refers to the Navy Chair
trademark common law trademark rights, yet the registrations state The Navy Chair and 111
Navy Chair (Mot. at 13), is pedantic nitpicking. Vision Tech. Design & Mfg., Inc. v. Gen. Wire
Spring Co., 2007 WL 2069945, at *16 (E.D. Cal. July 17, 2007) (denying motion to dismiss
where basis for dismissal is hypertechnical and based on semantics). Emeco sufficiently
alleges that its common law rights refer to the marks as identified in the registrations. See Compl
80 (noting that registrations cover Navy Chair and 111 Navy Chair and that Emeco has
common law rights in these marks). Moreover, Restoration Hardware does not challenge
Emecos allegations that The Naval Chair is confusingly similar with The Navy Chair.
C. Emeco Has Adequately Pled a Claim for Federal Dilution
Emeco has more than adequately pled a claim for federal trademark dilution.
First, contrary to Restoration Hardwares suggestion, Emeco has adequately identified
which trade dress and trademarks are at issue by incorporating the prior paragraphs of the
Complaint which specifically identify the claimed trade dress and trademarks, and by referencing
the Navy Chair trade dress and trademarks and Restoration Hardwares aforesaid acts,
which clearly refer to its counterpart Naval Chair knockoffs, Compl. 93-95; see also id. 63
(referencing Navy Chair trade dress and trademarks); id. at 8 (section title noting
Restoration Hardwares Unauthorized Use of Emecos Trade Dress and Trademarks). Under
Fed. R. Civ. P. 10(c), Emeco has more than sufficiently identified the trade dress and trademarks
at issue in its dilution claim through this incorporation by reference. See, e.g., Fed. R. Civ. P.
10(c) ([S]tatement[s] in a pleading may be adopted by reference elsewhere in the same
pleading); Whitney v. Wurtz, 2006 WL 83119, at *2 (N.D. Cal. Jan. 11, 2006) (under Rule 10(c),
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the complaint adequately alleges alter ego liability in the other causes of action by incorporating
these allegations by reference into the other causes of action.). Restoration Hardware cannot
plausibly claim not to know what are the trade dress and trademark rights at issue, i.e., the design
of the Navy Chair product line and the Navy Chair and the 111 Navy Chair trademarks.
Restoration Hardwares argument that Emeco has pled no facts showing fame of the
Navy Chair trade dress and trademarks is equally baseless. Emeco alleges that the Navy
Chair has been recognized as a modern masterpiece of twentieth century design, is in the
permanent collections of museums around the world, regularly appears in design magazines,
fashion layouts, and Hollywood films and television series, has been prominently displayed by
preeminent designers, and that the 111 Navy Chair has won several awards. Compl. 14,
17. Emeco also alleges that the Emeco manufacturing process and the Navy Chair product
line have been featured by several media outlets, that Emeco has extensively advertised and
marketed the Navy Chair, and that the Navy Chair product line trade dress and trademarks
are famous. See, e.g., id. 16; 94 (Emecos Navy Chair trade dress and trademarks are
famous and distinctive); id. 29, 65, 81 (same). These allegations are more than sufficient to
satisfy the famous requirement. See, e.g., Gallup Inc. v. Bus. Research Bur. (PVT) Ltd., 2009
WL 941756, at *3 (N.D. Cal. Apr. 6, 2009) (allegation that mark famous because it has been
actively promoted for over seventy years sufficient for dilution claim);Deep Water Bail Bonds
v. Bavouset, 2007 WL 4916961, at *2 (C.D. Cal. Sept. 24, 2007) (where plaintiff did not allege
mark famous, allegation that plaintiff has continuously used mark and has advertised in the
yellow pages sufficient); Perfect 10, Inc. v. Megaupload Ltd., 2011 WL 3203117, at *9 (S.D.
Cal. July 27, 2011) (allegation that marks are valuable and well known sufficient).
D. Emeco Has Adequately Pled a Claim for Common Law Trade Dress
Infringement
Restoration Hardwares argument that Emeco has not adequately identified the trade dress
at issue for its common law claims fails just as its same argument for the registration-based trade
dress claim. As noted, there is no requirement at the pleadings stage that Emeco explicitly
identify all of its claimed trade dress elements, supra at 12-13, and at any rate, Emeco has done
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precisely that. See Compl. 24-25 (Emeco owns statutory and common law rights in the
design and trade dress of the entire Navy Chair product line and identifying claimed design
elements of the Navy Chair collection). Emeco has sufficiently identified its claimed trade
dress for its common law claim.
E. Emeco Has Adequately Pled a Claim for Common Law TrademarkInfringement
1. Restoration Hardwares Fair Use Argument Fails
Restoration Hardware contends that the fair use defense defeats Emecos claim for
common law trademark infringement. Mot. at 15. As explained above, supra at 18-20, the
Complaint alleges that Restoration Hardware is not using the Naval Chair mark descriptively,
nor is it using it in good faith, rendering the fair use defense inapplicable.
2. Emeco Has Adequately Put Restoration Hardware on Notice of ItsCommon Law Trademark Rights
Again without argument, Restoration Hardware asserts that Emeco has not sufficiently
identified the trademarks at issue to support a common law infringement claim. But as detailed
above, Emeco has alleged the existence of a Navy Chair trademark that the California public
widely recognizes as designating Emeco as the source of goods. Compl. 108. Moreover,
because Emeco has clearly alleged a federal claim for trademark infringement, so too must the
state law claims survive. See Playboy Enters., Inc. v. Netscape Commcns Corp., 354 F.3d 1020,
1024 n.10 (9th Cir. 2004) (forging separate analysis of trademark infringement claims under
California law because state law is substantially congruent with federal law).
F. Emeco Has Adequately Pled a Claim for Dilution Under California Law
1. Emecos Claim Rests on the Common Law and May Rely on OtherStatutory Provisions
Restoration Hardware argues that Emecos California law dilution claim should be
dismissed because it cites to Cal. Bus. & Prof. Code 14330, which has been replaced by a
substantively equivalent dilution provision, Cal. Bus. & Prof. Code 14247. As Restoration
Hardware acknowledges (Mot. at 16 n.3), this claim also explicitly relies on California common
law, which provides an independentbasis for the claim regardless of 14330. See, e.g.,M.A.C.
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Prods., Inc. v. BBK Performance, Inc., 2002 WL 1938956, at *3 (Cal. Ct. App. Aug. 22, 2002)
(Because [plaintiff] never alleged that it registered the mark under the California Trademark
Law . . . , the infringement and dilution claims must be based on common law, which remains a
viable alternative to the statutory claims.). Thus, even if Restoration Hardwares argument were
correct, California common law provides a sufficient basis for this claim.
Further, the Complaints citation to 14330 instead of 14247 is not a grounds for
dismissal of the separate statutory basis for the claim, as the substance of the statutory provisions
at issue is equivalent.13 As courts have held in rejecting motions to dismiss claims where a party
cites a wrong statute but otherwise adequately pleads the proper elements of the claim, as
Emeco does here, a plaintiff need not include citations to specific statutes in his or her complaint
in order to state a claim on which relief can be granted. Huene v. U.S. Dept of the Treasury,
2012 WL 1681969, at *6 (E.D. Cal. May 14, 2012) (citing and quotingAlvarez v. Hill, 518 F.3d
1152, 1157 (9th Cir. 2008) (Notice pleading requires the plaintiff to set forth in his complaint
claims for relief, not causes of action, statutes or legal theories. . . . A complaint need not identify
the statutory or constitutional source of the claim raised in order to survive a motion to
dismiss.)). Indeed, where parties have cited to 14330 instead of 14247 in a dilution claim,
courts have simply analyzed the claim under 14247. See Mattel, Inc. v. MGA Entmt, Inc., 782
F. Supp. 2d 911, 1011-12 (C.D. Cal. 2011) (plaintiff asserted dilution claim pursuant to Cal.
Bus. & Prof. Code 14330; court evaluated under Cal. Bus. & Prof. Code 14247).
2. Restoration Hardwares Fair Use Argument Fails
As explained above, the fair use doctrine does not defeat Emecos claim for dilution. See
supra 18-20. As Emeco alleges, Restoration Hardware is not using the Navy Chair trade dress
13 Both provisions provide for injunctive relief for the dilution of marks. See Cal. Bus. & Prof.Code 14330 (dilution of the distinctive quality of a mark . . . shall be a ground for injunctiverelief notwithstanding the absence of competition between the parties or the absence of confusionas to the source of goods or services.); Cal. Bus. & Prof. Code 14247 (party shall be entitledto an injunction against another persons commercial use of a mark or trade name, if such usebegins after the mark has become famous and is likely to cause dilution of the famous mark).See also Saul Zaentz Co. v. Wozniak Travel, Inc., 627 F. Supp. 2d 1096, 1117 (N.D. Cal. 2008)(Under California law, a state cause of action for dilution has existed since 1967. Cal. Code Ann 14330(a) (replaced by Cal. Bus. & Prof. Code 14247).).
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and trademarks descriptively, nor is it using them in good faith. See Compl. 28-38.
3. Emeco Has Adequately Put Restoration Hardware on Notice As toWhat Is Claimed As Trademark and Trade Dress Dilution
As described above, Emeco has sufficiently identified the trade dress and trademarks at
issue in its federal dilution claim. See supra 12-14, 21. For those same reasons, Emeco has
adequately put Restoration Hardware on notice