37 - Motion To Seal

Case3:12-cv-05072-MMC Document37 Filed11/30/12 Page1 of 2
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JOHN W. SPIEGEL (SBN: 78935) John.Spiegel@mto.com MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, Thirty-Fifth Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 JONATHAN H. BLAVIN (SBN: 230269) Jonathan.Blavin@mto.com JESSE M. CREED (SBN: 272595) Jesse.Creed@mto.com MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (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., GARY FRIEDMAN, and DOES 1-10, Defendants.
CASE NO. CV 12-05072 MMC NOTICE OF MOTION AND MOTION FOR ADMINISTRATIVE RELIEF TO FILE DOCUMENTS UNDER SEAL (Local Rule 79 -5) Judge: Date: Time: Dept: Hon. Maxine M. Chesney December 14, 2012 9:00 a.m. Courtroom 7 - 19th Floor
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PLAINTIFFS ADMIN. MOTION TO SEAL CV 12-05072 MMC
Case3:12-cv-05072-MMC Document37 Filed11/30/12 Page2 of 2
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TO ALL PARTIES AND THEIR COUNSEL OF RECORD: Pursuant to Civil Local Rules 79-5 and 7-11, Plaintiff Emeco Industries, Inc. hereby gives notice to all counsel of record of its Motion for Administrative Relief to File Under Seal portions of the following documents: Plaintiffs Reply in Support of Motion for a Preliminary Injunction Supplemental Declaration of Jonathan H. Blavin in Support of Plaintiffs Motion for Preliminary Injunction (Supp. Blavin Decl.) These documents contain information that Defendants have requested confidential treatment of, and which Plaintiff is conditionally treating as confidential under the Northern District of Californias Model Stipulated Protective Order for Standard Litigation pending the Courts entering of a protective order in the case. Because Defendants have designated portions of these documents confidential, Plaintiff does not need to file declaration establishing that the designated information is sealable or a proposed sealing order, pursuant to Civil Local Rule 79-5(d). Plaintiff reserves its right to challenge Defendants designation of these documents as confidential. Attached to the Declaration of Jesse Max Creed in Support of Plaintiffs Administrative Motion to File Under Seal, Plaintiff has filed with the Court narrowly tailored, public redacted versions of these documents. Plaintiff hereby respectfully requests leave to file under seal the documents Defendants designated as confidential set forth above. DATED: November 30, 2012 MUNGER, TOLLES, & OLSON LLP
By:/s/ Jesse Max Creed JESSE MAX CREED Attorneys for Plaintiff Emeco Industries, Inc.
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PLAINTIFFS ADMIN. MOTION TO SEAL CV 12-05072 MMC
Case3:12-cv-05072-MMC Document37-1 Filed11/30/12 Page1 of 2
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JOHN W. SPIEGEL (SBN: 78935) John.Spiegel@mto.com MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, Thirty-Fifth Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 JONATHAN H. BLAVIN (SBN: 230269) Jonathan.Blavin@mto.com JESSE MAX CREED (SBN: 272595) Jesse.Creed@mto.com MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (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., GARY FRIEDMAN, and DOES 1-10, Defendants.
CASE NO. CV 12-05072 MMC DECLARATION OF JESSE MAX CREED ACCOMPANYING PLAINTIFFS MOTION FOR ADMINISTRATIVE RELIEF TO FILE DOCUMENTS UNDER SEAL Judge: Dept: Hon. Maxine M. Chesney Courtroom 7 - 19th Floor
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CREED DECL. ACC. MOTION TO SEAL; CV 12-05072 MMC
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I, Jesse Max Creed, hereby declare: I am an attorney with the law firm Munger, Tolles & Olson LLP, counsel of record
for Plaintiff Emeco Industries, Inc. (Emeco) in the above-titled action. I am licensed in the State of California and admitted to practice before this Court. I make this declaration based on my personal knowledge, and, if called upon as a witness, I could and would testify competently as to the matters set forth below. 2. Pursuant to the website of the Northern District of California, it is the
recommended practice to e-file a redacted version of confidential documents along with an administrative motion to file documents under seal. 3. Attached hereto as Exhibit 1 is a true and correct copy of the public redacted
version of Plaintiffs Reply in Support of Motion for a Preliminary Injunction. 4. Attached hereto as Exhibit 2 is a true and correct copy of the public redacted
version of the Supplemental Declaration of Jonathan H. Blavin in Support of Plaintiffs Motion for a Preliminary Injunction. 5. Emeco will lodge and serve in paper the administrative motion papers and
confidential documents pursuant to General Order 62(3) and Civil Local Rule 79-5(c)(3) & (4). 6. Emeco reserves the right to challenge Defendants designation of these documents
as confidential. 7. I declare under penalty of perjury under the laws of the United States of America
and the State of California that the foregoing is true and correct. Executed on November 30, 2012 at San Francisco, California. DATED: November 30, 2012 MUNGER, TOLLES & OLSON LLP
By:/s/ Jesse Max Creed JESSE MAX CREED Attorneys for Plaintiff Emeco Industries, Inc.
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CREED DECL. ACC. MOTION TO SEAL; CV 12-05072 MMC
EXHIBIT 1
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JOHN W. SPIEGEL (SBN: 78935) John.Spiegel@mto.com MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, Thirty-Fifth Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 JONATHAN H. BLAVIN (SBN: 230269) Jonathan.Blavin@mto.com JESSE MAX CREED (SBN: 272595) Jesse.Creed@mto.com MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (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., GARY FRIEDMAN, and DOES 1-10. Defendants. CASE NO. CV 12-05072 MMC PLAINTIFFS REPLY IN SUPPORT OF MOTION FOR PRELIMINARY INJUNCTION Date: Time: Courtroom: Judge: December 14, 2012 9:00 a.m. 7 - 19th Floor Honorable Maxine M. Chesney
PUBLIC REDACTED VERSION
PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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TABLE OF CONTENTS Page INTRODUCTION .............................................................................................................. 1 EMECO HAS ESTABLISHED A LIKELIHOOD OF SUCCESS ON THE MERITS .............................................................................................................................. 2 A. Emecos Trade Dress and Trademarks Are Enforceable ........................................ 2 1. RH Has Not Proven Genericness ............................................................ 2 a. Emecos Trade Dress Is Not Generic .................................................... 2 b. Emecos Trademarks Are Not Generic ................................................. 6 RH Has Not Established Functionality ....................................................... 7 The Navy Chair Marks Are Strong .......................................................... 9 Actual Confusion Exists............................................................................ 11 Remaining Key Sleekcraft Factors Favor Emeco ..................................... 12 Emeco Has Established a Likelihood of Confusion................................................ 9
EMECO HAS DEMONSTRATED IRREPARABLE HARM......................................... 13 THE BALANCE OF HARDSHIPS TIPS SHARPLY IN EMECOS FAVOR ............... 15 THE PUBLIC INTEREST FAVORS AN INJUNCTION ............................................... 15 CONCLUSION ................................................................................................................. 15
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 FEDERAL CASES
TABLE OF AUTHORITIES Page
Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6 (7th Cir. 1992)....................................................................................................... 15 Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002)..................................................................................................... 2 adidas Am., Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007) ..................................................................................... 1, 3 Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 684 F.2d 1316 (9th Cir. 1982)................................................................................................... 3 Au-Tomotive Gold, Inc. v. Volkswagen of Am, Inc., 457 F.3d 1062 (9th Cir. 2006)................................................................................................. 12 Aurora World, Inc. v. Ty Inc., 719 F. Supp. 2d 1115 (C.D. Cal. 2009) .................................................................................. 12 Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006)............................................................................................... 12 Aztar Corp. v. NY Entmt, LLC, 15 F. Supp. 2d 252 (E.D.N.Y. 1998)....................................................................................... 15 Banff, Ltd. v. Federated Dept Stores, Inc., 841 F.2d 486 (2d Cir. 1988).................................................................................................... 12 Berg v. Symons, 393 F. Supp. 2d 525 (S.D. Tex. 2005) ...................................................................................... 5 Blumenthal Distrib., Inc. v. Exec. Chair, Inc, 2010 WL 5980151 (E.D.N.Y. Nov. 9, 2010)............................................................................ 6 Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir. 2008) ......................................................................................................... 5 Brookfield Commcns, Inc. v. W. Coast Entmt Corp., 174 F.3d 1036 (9th Cir. 1999)......................................................................................... 1, 9, 12 Byrnes & Kiefer Co. v. Flavoripe Co., 1986 WL 15550 (W.D. Pa. Aug. 20, 1986) ............................................................................ 13 Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002)................................................................................................. 13 Cartier, Inc. v. Four Star Jewelry Creations, Inc., 2003 WL 21056809 (S.D.N.Y. May 8, 2003)......................................................................... 15
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TABLE OF AUTHORITIES (continued) Page Centaur Commcns, Ltd. v. A/S/M Com., Inc., 830 F.2d 1217 (2d Cir. 1987).................................................................................................. 10 Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874 (Fed. Cir. 1992)................................................................................................. 12 Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175 (9th Cir. 1988)............................................................................................... 1, 3 Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252 (9th Cir. 2001)................................................................................................... 7 Coach, Inc. v. Abners Fashion, 2009 WL 4810179 (C.D. Cal. Dec. 7, 2009) ............................................................................ 9 Conf. Archives, Inc. v. Sound Images, Inc., 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010) .......................................................................... 5 Conopco, Inc. v. May Dep. Stores Co., 46 F.3d 1556 (Fed. Cir. 1994)................................................................................................. 11 Diamontiney v. Borg, 918 F.2d 793 (9th Cir. 1990)................................................................................................... 13 Disc Golf Assn, Inc. v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998)............................................................................................... 7, 8 Dr. Rath Health Programs USA B.V. v. Juvenon, Inc., 2006 WL 2038037 (N.D. Cal. July 19, 2006)........................................................................... 2 E & J Gallo v. Proximo Spirits, Inc., 2012 WL 273076 (E.D. Cal. Jan. 30, 2012)............................................................................ 10 Engineered Mech. Servs., Inc. v. Applied Mech. Tech., Inc., 584 F. Supp. 1149 (M.D. La. 1984) .......................................................................................... 4 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 (9th Cir. 2002)................................................................................................. 10 Fiji Water Co. v. Fiji Mineral Water USA, LLC, 741 F. Supp. 2d 1165 (C.D. Cal. 2010) .................................................................................... 6 Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143 (9th Cir. 1999)............................................................................................... 4, 6 Firehouse Rest. Grp., Inc. v. Scurmont LLC, 2011 WL 3555704 (D.S.C. Aug. 11, 2011) .............................................................................. 5 Fortune Dynamic, Inc. v. Victorias Secret Stores Brand Mgmt., Inc., 618 F.3d 1025 (9th Cir. 2010)................................................................................................. 13 - iii -
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TABLE OF AUTHORITIES (continued) Page Gasser Chair Co. v. Infanti Chair Mfg. Corp., 943 F. Supp. 201 (E.D.N.Y. 1996) ........................................................................................... 8 Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997)...................................................................................................... 5 George & Co. v. Imagination Entmt Ltd., 575 F.3d 383 (4th Cir. 2009)..................................................................................................... 6 Glover v. Ampak, Inc., 74 F.3d 57 (4th Cir. 1996)......................................................................................................... 5 Groupion, LLC v. Groupon, Inc., 859 F. Supp. 2d 1067 (N.D. Cal. 2012) .................................................................................. 13 Haritatos v. Hasbro, Inc., 2007 WL 3124626 (N.D.N.Y Oct. 23, 2007) ........................................................................... 5 Heptagon Creations, Ltd. v. Core Grp. Mktg. LLC, 2011 WL 6600267 (S.D.N.Y. Dec. 22, 2011) .......................................................................... 8 Herman Miller Inc. v. Alphaville Design Inc., 2009 WL 3429739 (N.D. Cal. Oct. 22, 2009)................................................................... 11, 13 Hermes Intl v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104 (2d Cir. 2000).................................................................................................. 4, 5 Imagineering, Inc. v. Van Klassens, Inc., 53 F.3d 1260 (Fed. Cir. 1995)................................................................................................... 8 In re Trade-Mark Cases, 100 U.S. 82 (1879) .................................................................................................................... 5 Intl Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819 (9th Cir. 1993)......................................................................................................... 2 Intl Kennel Club. v. Mighty Star, Inc., 846 F.2d 1079 (7th Cir. 1988)................................................................................................. 14 Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982) .............................................................................................................. 7, 8 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596 (9th Cir. 2005)................................................................................................. 4, 5 Leatherman Tool Group, Inc. v. Coast Cutlery Co., 823 F. Supp. 2d 1150 (D. Or. 2011) ....................................................................................... 14 LeSportsac, Inc. v. KMart Corp., 754 F.2d 71 (2d Cir. 1985)........................................................................................................ 8 - iv -
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TABLE OF AUTHORITIES (continued) Page Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2008 WL 4614660 (N.D. Cal. Oct. 16, 2008)........................................................................... 4 Levi Strauss & Co. v. Shilon, 121 F.3d 1309 (9th Cir. 1997)............................................................................................. 2, 14 Lewis Mgmt. Co. v. Corel Corp., 1995 WL 724835 (S.D. Cal. June 28, 1995)........................................................................... 13 LGS Architects, Inc. v. Concordia Homes of Nev., 434 F.3d 1150 (9th Cir. 2006)................................................................................................. 15 Linotype Co. v. Varityper, Inc., 1989 WL 94338 (S.D.N.Y. Aug. 4, 1989) .............................................................................. 15 Lorillard Tobaco Co. v. S&M Brands, Inc., 616 F. Supp. 2d 581 (E.D. Va. 2009)...................................................................................... 15 Lumber Liquidators, Inc. v. Stone Mountain Carpet Mills, Inc., 2009 WL 2013599 (E.D. Va. July 10, 2009) .......................................................................... 10 Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638 (Fed. Cir. 1991)................................................................................................... 3 Maljack Prods., Inc. v. GoodTimes Home Video Corp., 81 F.3d 881 (9th Cir. 1996)..................................................................................................... 10 Malletier v. Burlington Coat Factory Warehouse, 426 F.3d 532 (2d Cir. 2005).................................................................................................... 13 Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007)..................................................................................... 12 Marks Org., Inc. v. Joles, 784 F. Supp. 2d 322 (S.D.N.Y. 2011)..................................................................................... 14 Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197 (C.D. Cal. 2007) .................................................................................. 14 Neighborhood Assistance Corp. of Am. v. First One Lending Corp., 2012 WL 1698368 (C.D. Cal. May 15, 2012) ........................................................................ 10 Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011)................................................................................................... 7 P3 Intl v. Weitech Inc., 1999 WL 1020249 (S.D.N.Y. Oct. 6, 1999) ............................................................................. 7 Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132 (9th Cir. 1986)................................................................................................. 14 -v-
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TABLE OF AUTHORITIES (continued) Page
Power Balance LLC v. Power Force LLC, 2010 WL 5174957 (C.D. Cal. Dec. 14, 2010) .............................................................. 9
Quality Inns Intl, Inc. v. McDonalds Corp., 695 F. Supp. 198 (D. Md. 1988) ............................................................................................... 4 Rebel Debutante LLC v. Forsythe Cosmetic Grp., Ltd., 799 F. Supp. 2d 558 (M.D.N.C. 2011).................................................................................... 14 Reno Air Racing Assn, Inc. v. McCord, 452 F.3d 1126 (9th Cir. 2006)................................................................................................... 7 Schutz Cont., Inc. v. Mauser Corp., 2012 WL 1073153 (N.D. Ga. Mar. 28, 2012)........................................................................... 4 Secalt S.A. v. Wuxi Shenxi Constr. Mach. Co., 668 F.3d 677 (9th Cir. 2012)..................................................................................................... 8 Shuffle Master Inc. v. Awada, 2006 WL 2547091 (D. Nev. Aug. 31, 2006) .......................................................................... 11 STX, Inc. v. Bauer USA, Inc., 1997 WL 337578 (N.D. Cal. June 5, 1997) .............................................................................. 3 SunEarth, Inc. v. Sun Earth Solar Power Co., 846 F. Supp. 2d 1063 (N.D. Cal. 2012) .................................................................................. 13 Tools USA & Equip. Co. v. Champ Frame Straightening Equip. Inc., 87 F.3d 654 (4th Cir. 1996)....................................................................................................... 7 Uni. Furniture Intl, Inc. v. Collezione Europa USA, Inc., 2005 WL 2427898 (M.D.N.C. 2005)...................................................................................... 14 United States v. Guerra, 293 F.3d 1279 (11th Cir. 2002)........................................................................................... 9, 13 United States v. Lam, 677 F.3d 190 (4th Cir. 2012)..................................................................................................... 9 Vision Sports, Inc. v. Melville Corp., 888 F.2d 609 (9th Cir. 1989)................................................................................................... 10 Volkswagen AG v. Verdier Microbus & Camper, Inc., 2009 WL 928130 (N.D. Cal. Apr. 3, 2009) .............................................................................. 8 Walker & Zanger, Inc. v. Paragon Ind., Inc., 465 F. Supp. 2d 956 (N.D. Cal. 2006) ...................................................................................... 6 WE Media Inc. v. Gen. Elec. Co., 218 F. Supp. 2d 463 (S.D.N.Y. 2002)............................................................................... 11, 12 - vi -
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TABLE OF AUTHORITIES (continued) Page Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (9th Cir. 2005)..................................................................................................... 5 Zino Davidoff SA v. CVS Corp., 571 F.3d 238 (2d Cir. 2009).................................................................................................... 14 Zobmondo Entmt, LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir. 2010)................................................................................................... 2
15 U.S.C. 1064(3) ........................................................................................................................ 4 9 15 U.S.C. 1127 ............................................................................................................................. 9 10 OTHER AUTHORITIES 11 2 McCarthy 11:76 .................................................................................................................. 9, 10 12 2 McCarthy 12:14 ........................................................................................................................ 5 13 3 McCarthy 17:12 ........................................................................................................................ 4 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - vii -
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I.
INTRODUCTION As Restoration Hardwares (RH) Opposition confirms, it is asking this Court for a license
to sell cheap Chinese counterfeits of a federally-registered and protected product design made in the United States. Not surprisingly, the law does not allow this result. RH is engaging in blatant acts of infringement, and its defenses are foreclosed by controlling Ninth Circuit law. Emecos likely success on the merits is clear. RHs genericness defense is as cynical as it is meritless, and does nothing to undermine the validity of Emecos marks. At base, RH argues that because others are selling infringing products, it deserves a free pass. But evidence of other potential infringers is irrelevant under the law of this circuit. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1181 (9th Cir. 1988). RHs argument is no more persuasive than that of a drunken driver who pleads to be let off because there are lots of other drunk drivers on the roadwhy pick on me? This is not a defense, nor should it be. adidas Am., Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215, 1258, 1260 (D. Or. 2007) (quoting McCarthy 17:17). As to the likelihood of confusion, the Ninth Circuit has made clear that where, as is the case here, there is a virtual identity of marks with identical products, the likelihood of confusion would follow as a matter of course. Brookfield Commcns, Inc. v. W. Coast Entmt Corp., 174 F.3d 1036, 1056 (9th Cir. 1999). RH ignores such law, and instead relies on an irrelevant, and deeply flawed, survey as to whether consumers specifically identify Emeco as the source of the Navy Chair design. Not only does this survey at best go solely to secondary meaningwhich RH is foreclosed from challenging given Emecos incontestable marksbut it fails to meet the very standards its designer has criticized other surveys as lacking. Moreover, RHs intent to infringe is obvious. Beyond being the subject of repeated infringement actions and touting to potential investors its established practice of misappropriating others designs (none of which RH denies),
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The equities cry out for an injunction. Emeco has submitted substantial, unrebutted evidence of the massive harm it already has suffered as a result of RHs flooding of the market with millions of catalogs and website displays featuring its infringing products, and the enormous harm it would plainly suffer if RH resumes selling its chairs. Emecos need for corrective notice is manifest, and RH admittedly will suffer no burden from an injunction precluding sales which it already has purportedly ceased. Under established Ninth Circuit law, Emecos entitlement to an injunction is clear. See Levi Strauss & Co. v. Shilon, 121 F.3d 1309, 1314 (9th Cir. 1997). II. EMECO HAS ESTABLISHED A LIKELIHOOD OF SUCCESS ON THE MERITS A. Emecos Trade Dress and Trademarks Are Enforceable
RH does not dispute that Emecos marks are subject to incontestable registrations, have a strong presumption of validity, and that it must prove genericness and functionality by a preponderance of the evidence. Zobmondo Entmt, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113-14 (9th Cir. 2010). Despite RHs attempt to borrow a substantial questions standard from the patent context (Opp. at 6), the law is clear that a party must establish great doubt as to the validity of the trademark to avoid an injunction. Intl Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993) (emphasis added); Dr. Rath Health Programs USA B.V. v. Juvenon, Inc., 2006 WL 2038037, at *1 (N.D. Cal. July 19, 2006). RH has not met that burden here. 1. RH Has Not Proven Genericness a. Emecos Trade Dress Is Not Generic
RH has not come close to establishing that Emecos trade dress in the design of the Navy Chair is generic, i.e., that the design is regarded by the public as the basic form of a particular item which courts consider a severe condemnation. Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 639 (6th Cir. 2002). Beyond the distorted interpretation of an Emeco employees statement, infra p. 5, RHs evidence consists entirely of scattered instances of third parties selling chairs similar to the Navy
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Chair. These cherry-picked examples from the Internet are not, as RH misleadingly suggests (Opp. at 10), competitors innocently using a basic form of a chair, but rather are imitations and likely infringements of the Navy Chair itself. Indeed, one of the very chairs RH highlights (The Lexmod Sailor Chair, Dkt. 27, Ex. 14), is described on other sites as an emeco navy chair, Blavin Suppl. Decl. (Suppl. Decl.), Ex. 1. This same design, cited throughout RHs papers (Dkt. 27, Exs. 9, 14-15), is marketed elsewhere as Replica Emeco and Emeco Repro, Supp. Decl., Exs. 2-3. If anything, the industry use RH points to is composed of other knockoffs that frequently refer back to Emeco. And as RHs lineup shows (Opp. at 11), RHs chair by far most closely resembles the Emeco original (chairs #2 and #5 in lineup order).1 The existence of other third-party infringers does not give RH a license to engage in illegal conduct. Indeed, evidence of other potential infringers is irrelevant under the law of this circuit. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1181 (9th Cir. 1988).2 As the court held in adidas in rejecting the defendants similar argument that adidass sneaker trade dress was generic given that numerous third parties sold similar two- and four-stripe designs: [T]he Ninth Circuit has held that the mere existence of third-party infringers is irrelevant. . . . [Defendants] argument is no more persuasive than that of a drunken driver who pleads to be let off because there are lots of other drunk drivers on the roadwhy pick on me? This is not a defense, nor should it be. . . . 529 F. Supp. 2d at 1258, 1260 (quoting McCarthy 17:17). At best, this genericness defense premised on similar third-party use relates solely to the strength of the marks under the The other design RH highlights, a chair with 4 wavy lines without a curved bar on the back (Dkt. 27, Exs. 8, 12-13), is readily distinguishable from the Navy Chair (Mot. at 15, 17 n.6). RH also points to a handful of military contractors who historically have made similar (though not identical) chairs solely for the Navy, see Dkt. 27, Exs. 4-7. As RHs own documents state, most of these kinds of chairs were commissioned from Emeco. Id., Ex. 5. RH offers no evidence that such companies have ever sold such chairs to the public, as Emeco does and which is the basis of its trade dress rights, or even what their sales were to the Navy. Putting aside the question of whether these products also may infringe Emecos rights, RH cannot rely on negligible third-party sales to the Navy from half a century ago (or today) to establish use within the entire consumer market such that the public views the chair as generic. As the Ninth Circuit has held, where a small number of people use a particular mark in a limited market, the mark does not become generic and a party may register it for nationwide use, as Emeco has done here. Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 684 F.2d 1316, 1321 (9th Cir. 1982); see also Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 641 (Fed. Cir. 1991) (use by small part of the relevant purchasing public has limited probative value and is not enough to show generic use). 2 See also STX, Inc. v. Bauer USA, Inc., 1997 WL 337578, at *13 (N.D. Cal. June 5, 1997) ([E]vidence of other potential infringers is irrelevant to a suit against a particular infringer.). -3PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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likelihood of confusion analysisirrelevant here because of the identical copying at issue (infra p. 10)but does not establish invalidity. Id. at 1260 (emphasis added); see Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2008 WL 4614660, at *10 (N.D. Cal. Oct. 16, 2008) (rejecting generic defense; other jeans manufacturers using designs purportedly similar only impacted [marks] strength); Quality Inns Intl, Inc. v. McDonalds Corp., 695 F. Supp. 198, 214 (D. Md. 1988) (evidence of third-party uses is probative only of marks strength and will not preclude the[ir] enforcement); Schutz Cont., Inc. v. Mauser Corp., 2012 WL 1073153, at *19 (N.D. Ga. Mar. 28, 2012) (other possible infringers . . . falls woefully short of generic use). Indeed, the owner of a mark is not required to constantly monitor every nook and cranny of the entire nation for possible infringer[s]. Engineered Mech. Servs., Inc. v. Applied Mech. Tech., Inc., 584 F. Supp. 1149, 1160 (M.D. La. 1984). Here, Emeco has submitted extensive unrebutted evidence that it vigorously enforces its rights. Dkt. 10-1 21-23 & Ex. C. It has successfully taken action against some of the very designs RH repeatedly highlights (Dkt. 27, Exs. 9, 14-15), including in a high-profile dispute with Target in 2005 covered by The New York Times and Washington Post. Id. 22; Suppl. Decl., Exs. 4-6; Hermes Intl v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 110 (2d Cir. 2000) (Far from establishing that Herms designs have become generic, it vigorously pursued manufacturers of knockoff goods).3 Moreover, RHs showing is fundamentally inadequate because it has not put forth any evidence that the trade dress is viewed as generic by the consuming public, rendering the court without a sufficient evidentiary basis to so hold. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 606 (9th Cir. 2005) (emphasis added); Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 1148 (9th Cir. 1999) (ultimate test for genericness is how mark understood by the consuming public). As the Lanham Act states: The primary significance of the registered mark to the relevant public . . . shall be the test for determining whether a mark is generic. 15 U.S.C. 1064(3) (emphasis added). Thus, [c]onsumer surveys have become almost de rigeur in litigation over genericness and a litigant RH has not come close to establishing abandonment, which requires, by clear and convincing evidence, that all rights of protection have been lost, Levi Strauss, 2008 WL 4614660, at *10. Indeed, courts are reluctant to find an abandonment. 3 McCarthy 17:12. -4PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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who does not introduce a survey to support a generic challenge may be viewed as less than serious. 2 McCarthy 12:14; Hermes, 219 F.3d at 110 (genericness require[s] a highly factual analysis of consumer perception).4 Courts repeatedly have rejected genericness claims where, as here, the defendant provides no evidence as to whether the public perceives the marks as generic. See KP, 408 F.3d at 606; Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 28 (1st Cir. 2008) (rejecting claim that logo generic where [o]ther than industry use, there is no evidence in the record establishing how the consumer population perceives the image).5 RHs other arguments are equally meritless. It entirely misconstrues a statement in a video from an Emeco employee (Magnus Breitling) that the chair was based on a generic wood chair. Opp. at 11. At the outset, the statement is irrelevant because the word generic has a specific legal meaning . . . in trademark law [that] is not the proper subject matter for lay testimony. Firehouse Grp. v. Scurmont, 2011 WL 3555704, at *7 n.6 (D.S.C. Aug. 11, 2011). Indeed, the Ninth Circuit has rejected similar attempts to contort a partys statements to establish genericness. KP, 408 F.3d at 605 (rejecting claim that founders statement used [mark] as a generic term). And as Mr. Breitling testifies, this statement was simply meant to convey that the design took inspiration from existing wooden farm-house style chairs. Breitling Decl. 2-8.6 RHs survey did not ask respondents whether they viewed the Navy Chair as the basic form of a chair. And neither RH nor Mr. Poret offer its results on genericness; rather, Mr. Poret describes its purpose as to determine which consumers associate the chair with Emeco, Dkt. 26-17, Ex. 1 at 3, which is relevant, at best, to secondary meaning (infra pp. 10-11). See Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137, 143 n.4 (2d Cir. 1997) (survey that asked whether consumers associate Honey Brown with beer from one source relevant to secondary meaning but not genericness where failed to ask whether consumers viewed it as basic category of beer, an important omission for determining whether Honey Brown is generic). 5 See also Glover v. Ampak, Inc., 74 F.3d 57, 60 (4th Cir. 1996) (genericness not established where evidence showed that many knives used plaintiffs marks and trade dress but no consumer surveys or other evidence of publics understanding); Haritatos v. Hasbro, Inc., 2007 WL 3124626, at *5 (N.D.N.Y Oct. 23, 2007) (extensive third-party use did not establish generic where Defendants have not produced any consumer surveys or other such evidence showing that the purchasing public perceives the term candyland as a generic term). 6 Moreover, even if historically there were similar designs, [o]riginality is not an element of trade dress protection. Berg v. Symons, 393 F. Supp. 2d 525, 551 n.15 (S.D. Tex. 2005); see also Conf. Archives, Inc. v. Sound Images, Inc., 2010 WL 1626072, at *10 (W.D. Pa. Mar. 31, 2010) ([T]rade dress protection appl[ies] . . . even if unoriginal); In re Trade-Mark Cases, 100 U.S. 82, 94 (1879) (trademark generally is, the adoption of something already in existence). The critical question for genericness is whether the consuming public regards the mark as generic today, the crucial date, Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 928 (9th Cir. 2005), which RHs examples of primarily infringing use do not establish. -5PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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Finally, RHs conclusory claim that the Navy Chair trade dress is generic because it is merely the basic form of a type of a chair (Opp. at 10) is meritless. Emecos trade dress seeks to protect a specific, concrete expression of a particular design (demonstrated by the registration drawings, numerous images, and a detailed list of claimed elements). As courts have held, a chair is neither generic nor does it seek to protect a basic form of an article [where] [i]t does not seek trade dress protection in all chairs, or all office chairs, or even all meshbacked office chairs. Plaintiff seeks trade dress protection in the specific, concrete expression of the particular chair design manifested by [the identified] configurations. Blumenthal Distrib., Inc. v. Exec. Chair, Inc, 2010 WL 5980151, at *8 (E.D.N.Y. Nov. 9, 2010).7 And if the chairs design was nothing more than the basic form of a chair, it would not be celebrated today as an icon of modern design that is featured in museums around the world and which has won numerous design awards (none of which RH disputes). See Mot. at 3-4; Fiji Water Co. v. Fiji Mineral Water USA, LLC, 741 F. Supp. 2d 1165, 1176 (C.D. Cal. 2010) (that plaintiff won international awards for design innovation is strong evidence that its trade dress is unique or unusual in the field and not simply a variation on existing . . . designs). b. Emecos Trademarks Are Not Generic
As with its trade dress arguments, RHs failure to provide any survey or other evidence establishing whether the public views The Navy Chair trademark as genericreferring to a general type of product, Filipino, 198 F.3d at 1147renders its submission inadequate. Thirdparty use alone is insufficient to prove genericness, particularly where such use is infringing. Moreover, The Navy Chair mark is at the very least descriptive, and because the mark is incontestable, RH cannot challenge its validity. As RH agrees, the USPTO determined that the mark was descriptive, not generic, because it describes a particular style of chair commonly used by the Navy, not a general type of product, and awarded registration due to evidence it had acquired secondary meaning. Opp. at 9; see also George & Co. v. Imagination Entmt Ltd., 575 F.3d 383, 395 (4th Cir. 2009) (court obligated to defer to USPTO determination that mark is descriptive). RH itself describes its use of naval as a descriptive word for something designed and used by the U.S. Navy. Opp. at 19. RHs challenge is thus foreclosed by By contrast, in Walker & Zanger, Inc. v. Paragon Ind., Inc., 465 F. Supp. 2d 956, 964 (N.D. Cal. 2006) (Opp. at 10), the plaintiff sought to protect abstract images or marketing themes. -6PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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hornbook trademark law. . . [It] cannot assert that an incontestable mark is invalid because it is descriptive. . . . Reno Air Racing Assn, Inc. v. McCord, 452 F.3d 1126, 1135 (9th Cir. 2006).8 2. RH Has Not Established Functionality
RH has not established that Emecos trade dress in the design of the Navy Chair is functional, i.e., that it is essential to the use or purpose of the chair. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982) (emphasis added). RHs entire defense is based on nothing more than conclusory attorney argument, and on that basis alone should be rejected. See, e.g., Tools USA & Equip. Co. v. Champ Frame Straightening Equip. Inc., 87 F.3d 654, 658 (4th Cir. 1996) (rejecting functionality defense where defendant cites no evidence, and offers no argument beyond conclusory statements). And at any rate, RHs specific claims are meritless. RH points to statements that the Navy Chair is utilitarian and suitable for use on warships and submarines (Opp. at 12) but overlooks the fact that these advantages stem solely from Emecos manufacturing process, and that the inquiry must not focus on the usefulness of the article overall, but rather the exact feature or combination of features that is claimed as a protectable trade dress or mark. Disc Golf Assn, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1008 (9th Cir. 1998); Mot. at 14 & 16 n.4. And RH entirely ignores the substantial advertising and marketing evidence touting the chairs aesthetic beauty, independent of any utilitarian advantages, which is an independent factor supporting nonfunctionality. Mot. at 15-16. Further, RHs focus on individual design elements disregards that the design must be examined as a whole, not by its individual constituent parts. Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1259 (9th Cir. 2001); Mot. at 13-14. Because RH has presented no evidence that the combination of qualities that constitutes plaintiffs trade dress is essential to the effective functioning of the chair, it has not sustained its burden even if it could demonstrate[] that each aspect of plaintiffs trade dress serves a functional purpose. P3 Intl v. Weitech Inc., 1999 WL 1020249, at *4 (S.D.N.Y. Oct. 6, 1999) (emphasis added). Indeed, RH has not even identified any specific elements that are essential to the use or purpose of the Because the 111 Navy Chair, which refers to the 111 Coke bottles that are used to construct each chair, requires a mental leap, it is suggestive and thus inherently distinctive. See Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1150 (9th Cir. 2011). -7PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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chair. 456 U.S. at 850 n.10 (emphasis added). RH states, e.g., that the three bars and lower curve on the seat back offer a place to grip the chair and the rounded and one-piece design offer[s] back support and avoids sharp corners. Opp. at 12. But a feature that merely accommodates a useful function, such as a place to grip the chair or avoid a sharp corner, which is all RH has shown, is not enough. LeSportsac, Inc. v. KMart Corp., 754 F.2d 71, 76 (2d Cir. 1985). These elements are not essential to the functioning of the chair. Gasser Chair Co. v. Infanti Chair Mfg. Corp., 943 F. Supp. 201, 214 (E.D.N.Y. 1996); Imagineering, Inc. v. Van Klassens, Inc., 53 F.3d 1260, 1262 (Fed. Cir. 1995) (trade dress protection for chair with wide slats, scooped seat boards and arms, rounded edges, notched and curved legs, and angled backrests).9 RH argues that because some alternative aluminum chair designs may be similar, this supports functionality. But even if alternative designs look similar, but not identical, [t]his does not favor a finding of functionality because none of them offer exactly the same features as the plaintiffs product. Secalt S.A. v. Wuxi Shenxi Constr. Mach. Co., 668 F.3d 677, 686 (9th Cir. 2012). Further, there are a plethora of alternative aluminum chairs that look nothing like the Navy Chair (Suppl. Decl., Exs. 7-10):
Finally, RH argues that it is able to build its chair cheaply, but the question is whether the design results from a comparatively simple or inexpensive method of manufacture. Disc Golf, 158 F.3d at 1006 (emphasis added). The evidence shows that the chairs design is not dictated by cost, as Emecos manufacturing process results in the same design at a higher cost. Mot. at 16. B. Emeco Has Established a Likelihood of Confusion
RHs lengthy discussion of the likelihood of consumer confusion disregards the simple Heptagon Creations, Ltd. v. Core Grp. Mktg. LLC, 2011 WL 6600267 (S.D.N.Y. Dec. 22, 2011) (Opp. at 13), is inapposite. There, the court stated that the chairs trade dress was functional because it served aesthetic purposes, but in this Circuit, features with aesthetic purposes support non-functionality. Volkswagen AG v. Verdier Microbus & Camper, Inc., 2009 WL 928130, at *5 (N.D. Cal. Apr. 3, 2009); Mot. at 13-14. -8PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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reality that it is selling identical counterfeit goods, and under settled law, confusion is presumed as a matter of law. See Brookfield, 174 F.3d at 1056; Power Balance LLC v. Power Force LLC, 2010 WL 5174957, at *4 (C.D. Cal. Dec. 14, 2010) (given identicality of products, Court presumes the likelihood of confusion for trade dress claims); Mot. at 19. RH half-heartedly argues that while its chairs look similar to Plaintiffs chairs (Opp. at 15)indeed, they are identicaland while it is using the near-identical Naval Chair name, it is not selling counterfeit items because it is not us[ing] the Emeco name, and it marketed the chairs in its own catalog and on its own website. Opp. at 15. That is all irrelevant. The test for a counterfeit good is simply whether it is identical with, or substantially indistinguishable from, a registered mark, 15 U.S.C. 1127, which is plainly the case here. The marks at issue are the design of the Navy Chair and The Navy Chair and 111 Navy Chair marks, not Emeco. Indeed, RH could have branded the chairs something else entirely, but they still would have been counterfeits of the chairs design. A party cannot avoid liability simply by affixing a single tag that says something other than the brand name to counterfeit merchandise. Coach, Inc. v. Abners Fashion, 2009 WL 4810179, at *3 (C.D. Cal. Dec. 7, 2009). Further, that RH sold the chairs in its own catalog, stores, and website is immaterial; that fake Rolex watches are sold on street corners rather than in Rolex stores does not make them any less counterfeit. And in fact, RHs products do not have to be an exact replica of [the] registered Navy Chair marks to be deemed a counterfeit. United States v. Lam, 677 F.3d 190, 199 (4th Cir. 2012). Such an 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). The likelihood of confusion is presumed as a matter of law. That begins and ends the inquiry. And in any event, RHs arguments as to the specific Sleekcraft factors are deeply flawed and in no way rebut the presumption. 1. The Navy Chair Marks Are Strong
At the outset, even if Emecos marks were weak, which they are not, this is irrelevant because where the products are nearly identical, the strength of the mark is of diminished importance. Brookfield, 174 F.3d at 1058-59; 2 McCarthy 11:76 (strength of mark of little -9PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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importance where the conflicting mark is identical). In any event, because the marks are incontestable, this provides conclusive proof of secondary meaning, Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1142 n.3 (9th Cir. 2002), and a mark is the strongest kind of mark where it is a registered trademark that became incontestable. Neighborhood Assistance Corp. of Am. v. First One Lending Corp., 2012 WL 1698368, at *17 (C.D. Cal. May 15, 2012).10 Further, Emeco has submitted extensive evidence establishing secondary meaning, including RHs indisputable copying that strongly supports an inference of secondary meaning, Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9th Cir. 1989), Emecos expenditure of substantial sums promoting the chair, numerous articles and television shows featuring the chair, its inclusion in modern art museums, and its winning of several design awards. Mot. at 17-18. Ignoring all of this, RH improperly relies upon a survey by Hal Poret to purportedly demonstrate that Emecos marks lack secondary meaning. See Opp. at 15-16. Because the marks are incontestable as a matter of law, this survey cannot be used to establish that they lack[] secondary meaning. Lumber Liquidators, Inc. v. Stone Mountain Carpet Mills, Inc., 2009 WL 2013599, at *9 (E.D. Va. July 10, 2009). But even if the survey were relevant, its results are meaningless. Mr. Poret began with two questions: Do you associate the overall look of this chair with any particular company or brand of chair or do you not?, and if yes to that question, With what company or brand of chair do you associate the overall look of this chair? Dkt. 2617, Ex. 1 at 5. RH argues that because a small percentage of respondents to the second question specifically identified Emeco as the source, there is no secondary meaning (Opp. at 16). But that is not the proper inquiry. A showing of secondary meaning only requires that the public associate[] the product with a single source, even if that source is anonymous. Maljack Prods., Inc. v. GoodTimes Home Video Corp., 81 F.3d 881, 887 (9th Cir. 1996); Centaur Commcns, Ltd. v. A/S/M Com., Inc., 830 F.2d 1217, 1221 (2d Cir. 1987) (public need not know the name of the producer). Indeed, in prior reports, Mr. Poret himself has criticized surveys that asked the respondents to identify a particular producer, stating that it would not be appropriate See also E & J Gallo v. Proximo Spirits, Inc., 2012 WL 273076, at *15 (E.D. Cal. Jan. 30, 2012) (based on the incontestable status, trade dress is a strong mark). - 10 PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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to assume respondents know the name of the company that makes [the plaintiffs product] and would name [that company] if they believed they were looking at [the product]. Suppl. Decl., Ex. 11 at 9 n.9 (emphasis added). Mr. Porets first question went to the relevant inquiry of whether the respondents identified the Navy Chair design with a single though anonymous source, and in response to that question, 94 respondents (31% of total respondents), answered yes. Dkt. 26-21, Cell AZ (Q210). Various courts have held that such a percentage of recognition (approximately 30% or more) is probative of secondary meaning. Shuffle Master Inc. v. Awada, 2006 WL 2547091, at 3 n.1 (D. Nev. Aug. 31, 2006) (collecting cases). 2. Actual Confusion Exists
Where, as here, counterfeit furniture is identical to, or substantially indistinguishable from a plaintiffs, actual confusion is presumed. Herman Miller Inc. v. Alphaville Design Inc., 2009 WL 3429739, at *7 (N.D. Cal. Oct. 22, 2009). As shown in Emecos Motion, consumers already have demonstrated confusion between the products. Mot. at 9-10. RH attempts to sidestep this reality through the Poret Survey. But as noted, the survey, at best, goes to a finding of secondary meaning, as RH concedes, Opp. at 15, not likelihood of confusion. As the Federal Circuit held in rejecting this very type of survey for purposes of establishing confusion in a trade dress action regarding the design of two hand lotion containers, [t]hat survey was a secondary meaning survey, designed to test whether the overall shape and coloring of the Conopco container had acquired meaning as a sourceindicator. The survey did not purport to address the question of whether consumers could successfully distinguish that container from the Venture container, and thus has no relevance to the actual confusion or likelihood of confusion issues. Conopco, Inc. v. May Dep. Stores Co., 46 F.3d 1556, 1564 n.9 (Fed. Cir. 1994) (emphasis added). In fact, Mr. Poret himself has criticized surveys that fail to have respondents compare the plaintiffs and defendants products, as would be the case under actual marketplace conditions: Respondents did not have the opportunity to see both [the] products and to consider their similarities (or differences) as they would if encountering both in the marketplace. Accordingly, Kleins [competing expert] survey failed to account for confusion under such actual marketplace circumstances. My survey, on the other hand, tested a scenario in which respondents encounter both products, and found that confusion was likely to occur under the marketplace conditions that Klein declined to simulate. Suppl. Decl., Ex. 11 at 8.11 Under actual marketplace conditions here, consumers would compare
11
See also WE Media Inc. v. Gen. Elec. Co., 218 F. Supp. 2d 463, 474 (S.D.N.Y. 2002) - 11 PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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the chairs directly, e.g., on the Internet. Because it is obvious that a comparison of the products here would have yielded substantial evidence of confusion, Mr. Poret chose not to do in this case what he has properly done in prior surveys and has expressly criticized others for failing to do. But moreover, the Poret Survey, if anything, demonstrates that RH already has caused substantial confusion by flooding the market with millions of catalogs featuring its products and through its widely-visited website. In response to the second question of the surveyWith what company or brand of chair do you associate the overall look of this chair?38 respondents identified RH, more than any other source, and several did so on the basis of what they had already seen in its catalogs and on its website. Dkt. 26-21, Cell BA (Q210); Cell BB (Q220) (e.g., have seen this in a catalog; seen it or something very similar on their website; Have seen in their catalogue; seen it in email; have seen it in their catalog). See, e.g., Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1238 (10th Cir. 2006) (actionable confusion where consumers believe defendant is the source of the plaintiffs products or services). 3. Remaining Key Sleekcraft Factors Favor Emeco
The remaining Sleekcraft factors all strongly militate in favor of Emeco: Trade Channels: Contrary to RHs argument, this factor does not limit channels of trade to identical stores . . . . Rather a channel of trade includes the same type of distribution channel, which exists here. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992); see Aurora World, Inc. v. Ty Inc., 719 F. Supp. 2d 1115 (C.D. Cal. 2009). Further, both parties sell products through the Internet, an overlapping channel. Brookfield, 174 F.3d at 1057. Due Care: Where, as here, the products are identical and the marks are identical, the sophistication of buyers cannot be relied on to prevent confusion. Banff, Ltd. v. Federated Dept Stores, Inc., 841 F.2d 486, 492 (2d Cir. 1988). Indeed, confusion may often be likely even in the case of expensive goods sold to discerning customers. Brookfield, 174 F.3d at 1060. Moreover, RH ignores post-purchase confusion, i.e., someone other than the purchaser who sees the item after it has been purchased. AuTomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1077-78 (9th Cir. 2006). The products price points will do nothing to preclude such confusion.12 Intent: Emeco is not relying on ad hominem attacks to establish intent (Opp. at 20), ([g]ermane survey evidence should make some effort to compare the impressions the marks have on potential customers); Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 574 & n.120 (S.D.N.Y. 2007) (excluding survey for failing to employ a sequential presentation or line-up of products which better approximates marketplace conditions). 12 Further, RH ignores that the 111 Navy Chair, which is sold in black and white versions identical to the Naval Chair products, sells for $260 (Dkt. 10-6, Ex. 1), and there is thus less than a $100 price differential between the 111 Navy Chair and the Naval Chair products. - 12 PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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13
but settled law. Where counterfeit furniture is identical to, or substantially indistinguishable from the plaintiffs, that is sufficient to show that [the defendant] intentionally copied plaintiffs marks. Herman Miller, 2009 WL 3429739, at *7. Further, RHs willful intent may be inferred from the fact it has been sued in similar actions in the past and has made a practice of copying others designs, none of which RH denies. Mot. at 10, 21.
Marks Similarity: RH does not argue that the designs of the products are dissimilar because, of course, they are identical. Further, the similarity of the marks test especially when the comparison is between marks on identical product types . . . does not require an identity of marks. Malletier v. Burlington Coat Factory Warehouse, 426 F.3d 532, 538 n.3 (2d Cir. 2005). And as RH concedes, it is called the Naval Chair collection. Opp. at 18 (emphasis added). By changing Navy Chair to Naval Chair, RH has merely turned a noun (Navy) of a two-word mark into its adjectival form (Naval). The term Introducing is a small-print, stock promotional clause. And the inconsistent use of the phrases 1940s and 1940s Aluminum as a preface is, at best, a trivial modification to the mark. See Guerra, 293 F.3d at 1288. Groupion, LLC v. Groupon, Inc., 859 F. Supp. 2d 1067, 1076 (N.D. Cal. 2012) (Opp. at 19) is inapposite. Unlike here, the products there were not closely related.13 III. EMECO HAS DEMONSTRATED IRREPARABLE HARM RHs irreparable harm arguments ignore significant record evidence and settled law. First, Emeco has provided substantial evidence that RHs conduct has caused and threatens to cause lost sales, price erosion, loss market share, and damage to goodwill (Opp. at 22). Diamontiney v. Borg, 918 F.2d 793, 795 (9th Cir. 1990) (injury need not be inflicted as strong threat of irreparable injury . . . adequate). As the unrebutted record demonstrates: Emeco spends substantial sums advertising the Navy Chair, attributing its source to Emeco. Dkt. 10-1 8. See SunEarth, Inc. v. Sun Earth Solar Power Co., 846 F. Supp. 2d 1063, 1083 (N.D. Cal. 2012) (irreparable harm where plaintiffs invested significantly in building up a strong reputation over the course of several decades). RH raises a conclusory fair use defense solely as to its use of Emecos trademarks, not trade dress, rendering it largely irrelevant to the proposed injunction. In any event, the defense fails. First, courts repeatedly reject fair use defenses when the defendant uses the mark as part of its product name, which is clearly the case here. See 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 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) (same). RHs contention that it is using Naval Chair as part of a longer phrase clearly distorts the context in which the terms appear. Fortune Dynamic, Inc. v. Victorias Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1040 (9th Cir. 2010) (non-fair use when mark used as a symbol to attract public attention). Moreover, as discussed, RH plainly has not used the mark fairly and in good faith. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002). - 13 PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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The Naval Chair collection replicates the design and name of the Navy Chair, causing a strong likelihood of consumer confusion. Dkt. 10-1 28. See Marks Org., Inc. v. Joles, 784 F. Supp. 2d 322, 334 (S.D.N.Y. 2011) (particularly strong likelihood of confusion should weigh in favor of finding irreparable injury). Emeco has no control over the quality of products made by RHs Chinese source. See Zino Davidoff SA v. CVS Corp., 571 F.3d 238, 243 (2d Cir. 2009) (interference with holders legitimate steps to control quality risks injury to the reputation of mark). The Naval Chairs $129 price point is more than $300 less than an authentic Navy Chair, cheapening the brand and devaluing the genuine Navy Chair to millions of Emecos prospective and existing customers who saw advertisements in RHs catalogs and on its website or who see the Naval Chair in public spaces. Dkt. 10-1 29-30; Dkt. 10-6 2-3, Exs. 1-2; Uni. Furniture Intl, Inc. v. Collezione Europa USA, Inc., 2005 WL 2427898, at *3 (M.D.N.C. 2005) (where infringer can charge significantly lower prices for its furniture, this damages reputation and goodwill). Given this abundant evidence, RHs reliance on Leatherman Tool Group, Inc. v. Coast Cutlery Co., 823 F. Supp. 2d 1150, 1158-59 (D. Or. 2011), in which the court rejected statements by an executives conclusory vouch[ing] for [plaintiffs] harm is clearly misplaced.14 While RHs lawyers casually tell the Court that it will cease sales pending this litigation, Emeco remains entitled to an injunction under controlling Ninth Circuit precedent holding that the voluntary cessation of infringing activities is not a ground for denial of a preliminary injunction. See, e.g., Levi Strauss & Co. v. Shilon, 121 F.3d 1309, 1314 (9th Cir. 1997); Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135-36 (9th Cir. 1986). The reason is simple: [i]f the defendants sincerely intend not to infringe, the injunction harms them little; if they do, it gives [the plaintiff] substantial protection. Polo Fashions, 793 F.2d at 1135-36. And indeed, it is entirely too easy for an adjudicated infringer to claim a reformation once the specter of an injunction looms near, which is of particular concern given RHs past infringing conduct and clear intent to infringe here. Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1221 (C.D. Cal. 2007). Further, even if RH has ceased production, it has not shown that it would be unable to resume production in the future. Rebel Debutante LLC v. Forsythe Cosmetic Grp., Ltd., 799 F. Supp. 2d 558, 568 (M.D.N.C. 2011). RHs measures to secure its inventory do not refute that it has full custody of the infringing products and at any time could
14
Furthermore, Leatherman was not even a trademark case; it involved a noncomparative false advertising claim. By contrast, damages occasioned by trademark infringement are by their very nature irreparable. Intl Kennel Club. v. Mighty Star, Inc., 846 F.2d 1079, 1092 (7th Cir. 1988). - 14 PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
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return them to market. Further, its assurances do not render injunctive relief moot given that it vigorously continues to assert a right to engage in the complained-of conduct. Aztar Corp. v. NY Entmt, LLC, 15 F. Supp. 2d 252, 256 n.4 (E.D.N.Y. 1998).15 And at any rate, Emeco requests not only an injunction on sales, but also corrective notice to the millions of catalog recipients and website visitors who viewed the infringing Naval Chair (Dkt. 10-43 at 4).16 Absent this relief, the irreparable injury to Emeco persists, as demonstrated by the several respondents to the Poret Survey who affiliated the Navy Chair design with RH based on their viewing of its catalog and website. LGS Architects, Inc. v. Concordia Homes of Nev., 434 F.3d 1150, 1154 (9th Cir. 2006) (cessation of sales would not moot plaintiffs request for a mandatory injunction); Cartier, Inc. v. Four Star Jewelry Creations, Inc., 2003 WL 21056809, at *5-7 (S.D.N.Y. May 8, 2003) (cessation does not moot injunction request where plaintiff sought notice to each recipient of catalog of infringing items). IV. THE BALANCE OF HARDSHIPS TIPS SHARPLY IN EMECOS FAVOR Conceding that it would not suffer any hardship from an injunction on future sales, RH only takes issue with Emecos request for corrective notice. Its argument thus would only affect the nature and scope of the notice. In any case, RH fails to cite any evidence demonstrating hardship, and its bald assertions of financial cost and loss of goodwill do not outweigh the unrebutted evidence of substantial hardship to Emeco caused by the confusion wrought by the millions of distributed catalogs and website displays featuring its infringing products. V. THE PUBLIC INTEREST FAVORS AN INJUNCTION As RH concedes, courts often define the public interest at stake as the right of the public not to be deceived or confused. Opp. at 25. While RH makes a short plea for competition, this contention must fail given that confusion in the marketplace is highly likely. VI. CONCLUSION Emeco respectfully requests that the Court enter the proposed injunction. Lorillard Tobaco Co. v. S&M Brands, Inc., 616 F. Supp. 2d 581, 586 (E.D. Va. 2009) (irreparable harm where party still challenges infringement); Rebel, 799 F. Supp. 2d at 568. 16 See Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6, 19 (7th Cir. 1992) (corrective notice at the heart of the Lanham Act); Linotype Co. v. Varityper, Inc., 1989 WL 94338, at *3 (S.D.N.Y. Aug. 4, 1989) (notice in preliminary injunction to counteract false impression by ad). - 15 PLS REPLY ISO PRE. INJ. MOT.; CASE NO. CV 12-05072 MMC
15
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DATED: November 30, 2012
MUNGER, TOLLES & OLSON LLP By: /s/ John W. Spiegel JOHN W. SPIEGEL
Attorneys for Plaintiff Emeco Industries, Inc.
- 16 -
EXHIBIT 2
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
JOHN W. SPIEGEL (SBN: 78935) John.Spiegel@mto.com MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, Thirty-Fifth Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 JONATHAN H. BLAVIN (SBN: 230269) Jonathan.Blavin@mto.com MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (415) 512-4077 Attorneys for Plaintiff EMECO INDUSTRIES, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA
EMECO INDUSTRIES, INC. Plaintiff, v. RESTORATION HARDWARE, INC., GARY FRIEDMAN, and DOES 1-10. Defendants.
CASE NO. CV 12-05072 MMC SUPPLEMENTAL DECLARATION OF JONATHAN H. BLAVIN IN SUPPORT OF PLAINTIFFS MOTION FOR PRELIMINARY INJUNCTION Date: Time: Courtroom: Judge: December 14, 2012 9:00 a.m. 7 - 19th Floor Honorable Maxine M. Chesney
PUBLIC REDACTED VERSION
SUPPL. BLAVIN DECL. ISO PLS MOT. FOR PRELIM. INJUNC. CASE NO. CV 12-05072 MMC
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
I, Jonathan H. Blavin, hereby declare: 1. I am an attorney with the law firm Munger, Tolles & Olson LLP, counsel
of record for Emeco Industries, Inc. (Emeco) in the above-entitled action. I am licensed in the State of California and admitted to practice before this Court. I make this declaration based on my personal knowledge, and, if called upon as a witness, I could and would testify competently as to the matters set forth below. 2. Attached hereto as Exhibit 1 is a true and correct copy of a printout from
the website lowpricewithbest.us selling a LexMod Sailor Modern Cafe Side Chair, which it describes as an emeco navy chair, located at lowpricewithbest.us/buy -lexmod-sailor-modern-caf e-side-chair-brushed-aluminum-best-prices-with-emeco-nav y -chair/ 1. 3. Attached hereto as Exhibit 2 is a true and correct copy of a printout from
the website MattBlatt.COM featuring a Matt Blatt Replica Emeco US Navy Chair, located at www.mattblatt.com.au/Replica-Dining-Chairs/Replica-Emeco-US-Nav y -Chair-Aluminium.aspx?p1487c13. 4. Attached hereto as Exhibit 3 is a true and correct copy of a printout from
eBay.com featuring Modern Aluminum Navy Caf Chairs Emeco Repro, located at http://www.ebay.com/itm/BROWN-MODERN-PLASMA-LCD-LED-HD-TV-STAND-MEDIACREDENZA-DRAWERS-GLASS-COMPARTMENT-/230871361015?_trksid=p2047675. m1985&_trkparms=aid%3D444000%26algo%3DSOI.CURRENT%26ao%3D1%26asc%3D13%2 6meid%3D3676989860440018526%26pid%3D100012%26prg%3D1014%26rk%3D4%26sd%3D 281003829395%26. 5. Attached hereto as Exhibit 4 is a true and correct copy of an article from
The Trademark Blog regarding Emecos Navy Chair dispute with Target, located at http://www.schwimmerlegal.com/2005/06/emeco-navy-chair-dispute.html. 6. Attached hereto as Exhibit 5 is a true and correct copy of a June 2, 2005
article entitled Look-Alikes Draw Lawyers Stares from the New York Times regarding Emecos Navy Chair dispute with Target, located at http://www.nytimes.com/2005/06/02/garden/02 knock.html?_r=0. -1SUPPL. BLAVIN DECL. ISO PLS MOT. FOR PRELIM. INJUNC. CASE NO. CV 12-05072 MMC
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
7.
Attached hereto as Exhibit 6 is a true and correct copy of a July 9, 2005
article entitled Not Exactly a Stand-Up Move from the Washington Post regarding Emecos Navy Chair dispute with Target, located at http://www.washingtonpost.com/wpdyn/content/article/2005/07/08/AR2005070801970_pf .html. 8. Attached hereto as Exhibit 7 is a true and correct copy of a printout from
the website Bistro Direct featuring an alternative aluminum chair design, located at www.bistrodirect.co.uk/stackable-aluminium-chair-p-190.html. 9. Attached hereto as Exhibit 8 is a true and correct copy of a printout from
the website Mity-Lite featuring an alternative aluminum chair design, located at www.mitylite.com/stacking-chairs/chiavari/. 10. Attached hereto as Exhibit 9 is a true and correct copy of a printout from
the Museum of Modern Arts website featuring an alternative aluminum chair design, located at http://www.moma.org/collection/object.php?object_id=4294. 11. Attached hereto as Exhibit 10 is a true and correct copy of a printout from
the website Global Industrial featuring an alternative aluminum chair, located at www.globalindustrial.com/g/office/outdoor-furniture/chairs-outdoor/aero-outdoor-aluminumchairs-standard-bar-height. 12. Attached hereto as Exhibit 11 is a true and correct copy of the Expert
Rebuttal Report of Hal Poret Regarding Klein Survey and Reports, submitted in CytoSport Inc. v. Vital Pharmaceutical, Inc., No. 2:08-cv-02632-JAM-GGH (Dkt. No. 195-13) (E.D. Cal. July 11, 2012). 13. Attached hereto as Exhibit 12 is a true and correct copy of documents
produced in this matter by Defendants bearing the Bates stamp RESTO 1 to RESTO39.
14.
Attached hereto as Exhibit 13 is a true and correct copy of documents SUPPL. BLAVIN DECL. ISO PLS -2MOT. FOR PRELIM. INJUNC. CASE NO. CV 12-05072 MMC
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
produced in this matter by Defendants bearing the Bates stamp RESTO 342 to RESTO 347. Attached hereto as Exhibit 14 is a certified translation of Exhibit 13. Attached hereto as Exhibit 15 is a certification that the translations are verified to be an accurate and complete rendering of the contents of the original document.
15.
Attached hereto as Exhibit 16 is a true and correct copy of documents
produced in this matter by Defendants bearing the Bates stamp RESTO 160 to RESTO 177 and RESTO 179 to RESTO 185. Attached hereto as Exhibit 17 is a certified translation of Exhibit 16, as demonstrated by the certification of translation in Exhibit 15.
16.
produced in this matter by Defendants bearing the Bates stamp RESTO 336 to RESTO 341. Attached hereto as Exhibit 19 is a certified translation of Exhibit 18, as demonstrated by the certification of translation in Exhibit 15.
17.
produced in this matter by Defendants bearing the Bates stamp RESTO 361 to RESTO 362. Attached hereto as Exhibit 21 is a certified translation of Exhibit 20, as demonstrated by the certification of translation in Exhibit 15.
I declare under penalty of perjury under the laws of the United States of America and the State of California that the foregoing is true and correct. Executed on November 30, 2012 at San Francisco, California.
/s/ Jonathan H. Blavin Jonathan H. Blavin -3SUPPL. BLAVIN DECL. ISO PLS MOT. FOR PRELIM. INJUNC. CASE NO. CV 12-05072 MMC
EXHIBIT 1
e Side Chair, Brushed Aluminum Best Prices with emeco nav y chair | Buy Low Pirces With Best In Blac 11/30/12
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LexMod Sailor Modern Cafe Side Chair, Brushed Aluminum feature Brushed aluminum For indoor or outdoor use Lightweight Plastic Non-Marking Feet Fully assembled
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The best products with emeco navy chair. Buy LexMod Sailor Modern Cafe Side Chair, Brushed Aluminum from AMAZON.COM. Low prices !! emeco navy chair. The LexMod Sailor Modern Cafe Side Chair, Brushed Aluminum Nourish a trademark keenness for moving forward with a sincere and confident posture. The ultimate instrument of progress is the ability to lead with discernment. The Sailor Modern Cafe Chair in brushed aluminum will bolster your sense of advancement and adventure. This item is a high quality reproduction of the original. Overall Product Dimensions: 16W x 24.5D x 33.5H Seat Size: 15.5W x 14.75D x 18H Package Dimesions: 37.5L x 24.5W x 16.5H Ships with small package carrier LexMod Sailor Modern Cafe Side Chair, Brushed Aluminum emeco navy chair
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The Matt Blatt Replica Emeco US Nav y Chair - Aluminium - Matt Blatt
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The Matt Blatt Replica Emeco US Navy Chair - Aluminium

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Code: Navy Chair This is a Matt Blatt replica of the original design. Originally designed by Emeco for the US Navy in 1944, this chair has come to represent classic design and retro chic. Timeless, practical and stylish, this authentic replica will continue to delight for years to come. Crafted entirely from aluminium, the clean, classic lines of this chair make it perfect for multiple uses. Whether as a dining chair in the home or commercial space, an office chair or simply a stylish side chair, the Matt Blatt Replica US Navy Aluminium Chair will not disappoint. Available in either red, white, black or silver, this metal chair can be adapted to any interior, and is as elegant as it is versatile. The rest of the Replica Emeco range is available here. Our price: $129 Colour
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Specifications Delivery info Pick up locations Returns Customer reviews Dimensions 39cm W x 86cm H x 35cm D Seat height 46cm. Materials Aluminium. General comments Suitable for commercial use. Height: 86.00 Width: 39.00 Depth: Weight: 30.00 Weight:
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2 MODERN ALUMINUM NAVY CAFE CHAIRS EMECO REPRO INSIDE/OUTSIDE RESTAURANT QUALITY | eBay Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page23
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2 MODERN ALUMINUM NAVY CAFE CHAIRS EMECO REPRO INSIDE/OUTSIDE RESTAURANT QUALITY
Se e original listing
Item condition: New Ended: Nov 18, 2012 13:13:06 PST Price:
US $318.00 [ 6 sold ]
Shipping: FREE Standard Shipping Item location: United States Seller: everythinghome (2724
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Description
Ite m num be r: 281003829395
Seller assumes all responsibility for this listing.
Item specifics
Condition: Style: Upholstery Fabric: Main Color: Product Type: New: A brand-new, unused, unopened, undamaged item in its original packaging (where packaging is ... R e ad m ore Modern Contemporary Aluminum ALUMINUM CHAIR Room: Type: Material: Color: Cafe Dining Chairs Aluminum Aluminum
2 MODERN ALUMINUM NAVY CAFE CHAIRS EMECO REPRO INSIDE/OUTSIDE RESTAURANT QUALITY
AS AN EBAY SELLER FOR OVER A DECADE, WE'VE EARNED YOUR TRUST.
Square Trade AP6.0
Is using Pay Pal too m uch hassle? No problem . Com plete the auction and pay ov er the phone using any m ajor credit card! Best tim e to reach us at 888-731-3130 is M-F 10AM-5PM central tim e. If w e can't answ er, leav e a m essage. We'll call back as soon as w e can.
EVERYTHING YOU NEED AT EVERYTHINGHOME...BEST PRODUCTS...BEST SERVICE...GREAT PRICE. PURCHASE ITEMS WHERE THE SELLER HAS A PROVEN TRACK RECORD. PLEASE CHECK OUR FEEDBACK. THIS EBAY SELLER, EVERYTHINGHOME, HAS OVER 25 YEARS BUSINESS EXPERIENCE, OVER 10 YEARS EBAY EXPERIENCE AND 100% POSITIVE CUSTOMER FEEDBACK. WE'RE NOT SAYING WE'RE PERFECT BUT WE SURE TRY HARD TO MAKE YOU HAPPY!
IMPORTANT - PLEASE READ ENTIRE DESCRIPTION
BRAND NEW FROM OUR WAREHOUSE TO YOU! YOU ARE GETTING TWO MODERN ALUMINUM RESTAURANT QUALITY CAFE/BAR CHAIRS IN THIS POSTING WHICH IS AN EMECO REPRODUCTION. WE ARE IN NO WAY AFFILIATED WITH EMECO.
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There is no reason to restrict contemporary furniture to the indoors - enjoy it al fresco on your deck, patio, or restaurant with the Cafe Chair.
(This posting is priced for 2 chairs with FREE shipping!)
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Made of lightweight, versatile brushed aluminum, these chairs can be easily moved and will stand up to the elements of the outdoors.
The simple design lends itself well to just about any type of setting. Plastic non-marking feet finish off the legs and provide additional stabilization. The Cafe chair is fully assembled.
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All of our furniture must pass strict quality controls to ensure durability that will last. Features: - Hollow brushed aluminum - These chairs can be used outdoors, as well - Lightweight, yet sturdy construction - Arrives fully assembled - Plastic-non marking feet to protect your floors from scratches Dimensions: Overall: 15.75"W x 18.5"D x 33"H Seat: 15.5"W x 14.75"D x 18"H ***IMPORTANT INVENTORY NOTICE*** UNLESS STATED OTHERWISE AT THE VERY BEGINNING OF THIS DESCRIPTION, AT THE TIME OF THIS POSTING, THIS ITEM WAS IN STOCK AND READY TO SHIP OUT TO PAID CUSTOMERS ABOUT 3 BUSINESS DAYS FROM RECEIPT OF PAYMENT. HOWEVER, EBAY IS NOT OUR ONLY SALES VENUE. EVERY DAY WE SELL TO INTERIOR DESIGNERS, FURNITURE STORES, RESTAURANTS, BARS, ebay.com/itm/2-MODERN-ALUMINUM-NAVY-CAFE-CHAIRS-EMECO-REPRO-INSIDE-OUTSIDE-RESTAURANT-QUALITY-/281003829395?p CAFES, BISTROS AND HOTELS ALL 5/8
TO INTERIOR DESIGNERS, FURNITURE STORES, RESTAURANTS, BARS, CAFES, BISTROS AND HOTELS ALL OVER THE COUNTRY AND A SINGLE PURCHASE ORDER CAN DEPLETE ABOUT 25 ITEMS ALL AT ONCE. IF BY CHANCE THIS HAPPENS AT THE TIME YOU COMPLETE THIS AUCTION, WE WILL OF COURSE, ASK IF YOU WOULD LIKE A 100% REFUND OR IF YOU WOULD LIKE TO HOLD OUT FOR OUR NEXT ARRIVING BATCH OF STOCK FOR WHICH WE WILL PROVIDE AN ETA. EITHER WAY, IF YOU MAY ALWAYS CALL US TOLL FREE AT 888-731-3130 AT ANYTIME WHILE YOUR ORDER IS PENDING, OR BEFORE COMPLETING THIS AUCTION IF YOU HAVE ANY QUESTIONS. THANK YOU.
Important Note About our Pricing: We understand it nev er hurts to ask for a low er price and w e can appreciate that. We w ould be inclined to do the sam e thing. Because w e know the m arketplace, w e hav e taken m uch tim e and effort to ensure w e already hav e our low est possible, legitim ate and authorized price. Our pricing already reflects high v olum e. The good new s is y ou only hav e to purchase one item to be priv ileged to pricing as if y ou w ere purchasing 15 item s all at once. Because our business m odel relies on v olum e w e only m ake a tiny am ount off each piece sold but w e sell a lot of stuff. Plus, w e are an established dealer of this product. This m eans in the unlikely ev ent of a factory defect or any shipping dam age, w e w ill do w hatev er it takes to m ake it right. Buy som ething like this from som eone else and w ell, w ho know s. We look forw ard to the chance of earning y our business w hile prov iding the serv ice and support y ou deserv e.
LOVE IT OR LEAVE IT We at everythinghome strive only for positive eBay feedback and 5 stars in EVERY rating category. Your happiness is our happiness. And, we work hard to protect our reputation. Anything less than 5 stars in each category we consider a failure on our part. If you don't absolutely love your item, contact us within 3 days of receipt. We'll do what it takes to make it right or refund all your dough less PayPal (if applicable), eBay, original shipping, return shipping and 30% restocking fees. Product must be returned in " like-new" condition and in its original packaging with our return authorization number marked clearly on return label only - not package. No returns after 15 days. Damaged items upon your inspection must be exchanged for new shipment. IMPORTANT SHIPPING INFORMATION Delivery, including packaging, handling and insurance anywhere to the 48 Continental U.S. States for each item (or pair of items or multiple items if posting references an offer of more than one item) is FREE! Alaska, Hawaii, VI and Puerto Rico, you may email for shipping quote, however this extra cost can be very expensive (like in the multiple hundreds of dollars). Sorry but shipping is not available to to APO or FPO or International Addresses. Thank you. WE MUST HAVE 2 THINGS BEFORE WE CAN SHIP: 1.) A VERIFIED & CONFIRMED PAYPAL ADDRESSES IF USING PAYPAL. 2.) AN ACCURATE PHONE NUMBER FOR OUR SHIPPING AGENT.
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ACCEPTANCE GUIDELINES 1.) INSPECT FOR VISIBLE BOX/PACKAGING DAMAGE. 2.) REJECT ONLY DAMAGED MERCHANDISE. ACCEPT ANY MERCHANDISE THAT IS NOT DAMAGED. PAYMENT METHODS WE ACCEPT E-CHECKS, BANK TRANSFERS AND CREDIT CARDS THROUGH PAYPAL. WE ALSO ACCEPT ANY MAJOR CREDIT CARD OVER-THE-PHONE AT 888-731-3130. MN RESIDENTS MUST ADD 7.275% AND ILLINOIS RESIDENTS MUST ADD 7.75% SALES TAX. CONTACT IS REQUIRED 3 DAYS FROM COMPLETION OF AUCTION AND PAYMENT MUST BE RECEIVED WITHIN 7 DAYS.
QUESTIONS???
CALL 10AM-5PM CENTRAL TIME. 888-731-3130
CLICK HERE TO VIEW ALL OUR AVAILABLE HOME, GARDEN, FURNITURE & ELECTRONIC ITEMS!
PRIVACY NOTICE We do not sell or rent our custom er inform ation to any outside party under any circum stances.
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EXHIBIT 4
2
Jun/05
Emeco Navy Chair Dispute

This is Emecos $370 Navy chair (more info here):
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11/23/12
Emeco Navy Chair Dispute The Trademark Blog

Ambush Marketing Appellations of Origin Branding But Is It Art?
This is Targets Cafe Aluminum Side Chair, 2 for $249 (more info here):
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Emecos registration number for the configuration of its chair is 2511360 (view in TARR here).
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NY Times article Look-Alikes Draw Lawyers Stares (reg req) reports on Emecos protest to Target. The source of Targets chair, Euro Style, indicates that it will change the design of the chair.
UPDATE: Here is the Sandra Dining Set, 6 for $750 (hat tip Teresa):
www.schwimmerlegal.com/2005/06/emeco-navy-chair-dispute.html
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EXHIBIT 5
11/23/12
Look-Alikes Draw Lawyers' Stares - New York Times

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Look-Alikes Draw Lawyers' Stares
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Low-priced knockoffs of the Barcelona chair, left, is hard to tell from the original, right. By ERNEST BECK
Published: June 2, 2005 Sign In to E-Mail This Printer-Friendly Past 24 Hours | Past 7 Days 1. Well: Attention Disorders Can Take a Toll on Marriage 2. Prone to Error: Earliest Steps to Find Cancer 3. Adventures in Very Recent Evolution 4. Many States Adopt National Standards for Their Schools 5. Recipes for Health: Spicy Quinoa, Cucumber and Tomato Salad
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AT $249.99 for two, the Cafe aluminum side chairs on Target's Web site are attractively priced. Stylish, sturdy-looking and made of lightweight lacquered aluminum, the chairs are described by Target as a "classic design." But in the eyes of many design-conscious shoppers, the Cafe chair is
www.nytimes.com/2005/06/02/garden/02knock.html?_r=0
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11/23/12
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page42 of 93 ADVERTISEMENTS something else: a dead ringer for a widely acknowledged classic, the Navy Chair 1006, which has been made since the 1940's by Emeco, a company in Hanover, Pa., that holds a trademark for the design.
And for those who are budget-conscious it is an appealing alternative to the Navy chair, with its $370 suggested retail price. "I was thinking about getting the original Emeco Navy chairs from a different store, but they are expensive!" a shopper wrote in a review on the Target site. At a time when awareness of good design is spreading, industry insiders suggest that the number of lower-priced imitations, or knockoffs, of classic designs is also on the rise. As a result manufacturers are renewing efforts to curb the practice. Gregg Buchbinder, the chief executive of Emeco, for example, has complained to Target through his lawyers. And Knoll, the licensed manufacturer of Mies van der Rohe's Barcelona collection, received trademark protection last year for the designs and is pursuing those who make replicas. The blame for the increase in knockoffs, said Eleanor McKay, president of the Foundation for Design Integrity, an industry watchdog group, rests on the "mass with class" movement, fueled by shelter magazines and television decorator makeover shows, as well as on globalization. "People today have better taste," said Ms. McKay, the chief executive of Niermann Weeks, a high-end furniture company in Millersville, Md. "They're not content with buying schlock, and you can get good items at Target," thanks in part to low-cost production in countries like China. That rankles Mr. Buchbinder, who wonders how a company like Target, which commissions original designs from the likes of Michael Graves and Isaac Mizrahi, has the nerve to sell a Navy chair knockoff. "They are trying to confuse the public," he said. In a letter to Mr. Buchbinder's lawyers, a lawyer for Target said the company is not responsible for any possible trademark infringement because it did not develop or manufacture the Cafe chair. Besides, the letter continued, the company that supplies the chair to Target, Euro Style of San Rafael, Calif., gave assurance that the design did not infringe intellectual property rights. The agreement indemnifies Target "with regard to any claim from any third party," the store's lawyer wrote. But the tale of the Cafe aluminum chair is more tangled. Trig Liljestrand, the president of Euro Style, said he noticed the knockoff version, which was being made by a factory in China, at a trade fair in Asia in 2000, and contracted with the factory to buy it. "I have many designs in my head," he said,
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11/23/12
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page43 of 93 "and when I saw it I thought, 'I've seen that or something like that before, and it looks good,' but I didn't know the background."
He said he has since sold the chairs to many small and medium-size independent retailers. But this week he said he had agreed to Mr. Buchbinder's demands that Euro Style change the design of the chair. "We will cooperate, because it's better not to go into litigation," he said. Such battles are commonplace in the furniture industry, as are tinkerings with size and alterations of minor characteristics to circumvent trademark and patent restrictions. P. J. Casey, the chief executive of Cite, a SoHo shop that sells knockoffs of designs including Frank Gehry cardboard chairs and the Mies series, adjusted the dimensions of many pieces in her store after receiving a "cease and desist" letter from Knoll last November. Today Ms. Casey still sells a Barcelona-style chair - or, as she puts it, a "Mies inspired" one - with a shorter, more arched back and a lower seat that is less slanted than the original but still closely resembles what the designer created in 1929. The Cite version uses a cheaper Chinese leather that is piped, in place of Knoll's supple, hand-welted and hand-stitched Spinneybeck leather. Cite's resized knockoff is $1,000; the Knoll chair is $3,348. Not every manufacturer responds to pressure as Ms. Casey did. Officials of Gordon International, a New York company that has sold Barcelona collection designs for 20 years, said they received a similar warning letter from Knoll but chose not to recognize the validity of Knoll's design trademarks. "We challenge Knoll's legal claim to have an exclusive monopoly on an unpatented design in the public domain for decades," said Samuel D. Littlepage, a lawyer at Dickinson Wright in Washington who represents Gordon. Now, Knoll is suing Gordon International in federal district court in Manhattan for trademark infringement. Convincing a jury that one chair is a clone of another can be tricky, according to Mike Walsh, a trademark litigator at Choate, Hall & Stewart, a Boston law firm. The legal argument, Mr. Walsh said, is "not primarily about inches" but about the perception of ordinary consumers. And that "is a very subjective standard." Aside from the legal costs, the stakes in these knockoff struggles are high. Mr. Buchbinder sells around 10,000 Navy chairs annually, a big part of Emeco's business. Target, meanwhile, "can sell millions of them," he said. Moreover, he said he worries about a complaint that popped up on the Target site - that weld spots on the cheaper Cafe aluminum chairs were sloppy - saying that it
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11/23/12
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page44 of 93 "could kill the most valuable thing we have: our reputation for quality."
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RELATED ARTICLES Knocking Off The Knockoffs (October 28, 2004) 'I Seek Dead People' (October 12, 2003) Reproduction as Tribute And Legal Battleground (January 29, 1998) Currents; REPRODUCTIONS -- The Highest Compliment For the Eames Chairs (November 13, 1997) INSIDE NYTIMES.COM
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EXHIBIT 6
9/30/12
Not Exactly a Stand-Up Mov e Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page46 of 93
Not Exactly a Stand-Up Move

Knockoff of Classic Chair Just Doesn't Sit Right
By Linda Hales Washington Post Staff Writer Saturday, July 9, 2005
Imitation may be the sincerest form of flattery, but what Target has done to the venerable Navy chair shows disrespect. The Web store Target.com offers a "Cafe Aluminum side chair" from Asia for $249.99 a pair. The online listing describes the chair as a "classic design." That's true. The image closely resembles a trademarked American classic: the Emeco 1006 Navy chair. The 1006 is a bona fide wartime workhorse. It was developed in Hanover, Pa., in the 1940s for use on submarines and aircraft carriers. Aluminum makes the chair lightweight and corrosion-resistant. An elaborate manufacturing process makes it virtually indestructible. According to company lore, the 1006 is tough enough to withstand a torpedo blast. The military remains a customer, but today the 1006 is also a symbol of modern industrial chic. Navy chairs are found in Armani and Tiffany boutiques, the architecture offices of Frank O. Gehry, in the movie "Mr. & Mrs. Smith" and at home with Brad Pitt. The chair has starred in its own docudrama, "77 Steps," filmed by Eames Demetrios, grandson of designer Charles Eames. Television viewers can spot Navy chairs on "Law & Order" and "CSI," as well as in Verizon and HBO ads. Design Within Reach sells them for $370 each on its Web site. The American and Asian chairs have nearly identical slatted backs, curved seats and rounded shoulders. The Navy chair has a durable brushed matte finish that is guaranteed for life. The import is painted and lacquered to simulate the look. The similarity generated correspondence between lawyers for Emeco and Target in May. The discounter pointed the finger at the supplier, Euro Style of San Rafael, Calif., whose president, Trygve Liljestrand, said this week he is hoping to avoid litigation by adding two slats to the back of his chair. He did not commission the look-alike but was shown a prototype on a visit to the Far East. He says he had no idea the Emeco chair had legal protection. Nor did he know of its role in World War II. Target's response has been less satisfying. A champion of design might have whisked the knockoff from its lineup. Target won a Smithsonian National Design Award for corporate excellence in 2003, but now the discounter is behaving like a discounter: The knockoff is still online. Why would a smart corporation like Target risk its hard-won reputation as a design store over a cheap imitation chair? Target attorney Shayne L. Brown wrote to Emeco's attorney, saying that company policy is "to respect the intellectual property rights of others." Five Target executives declined to comment for this column, including
www.washingtonpost.com/wp-dy n/content/article/2005/07/08/AR2005070801970_pf .html 1/3
9/30/12
Brown. The problem of knockoffs is not new or limited to Target. Nor is Euro Style the only source of Emeco lookalikes, which are known in the business as counterfeit classics. The Foundation for Design Integrity has been fighting them for a decade. Attorney Susan E. Farley, who represents the foundation and Emeco, was hoping to settle this week with a company threatening to market imitations of another Emeco chair, the stylish Hudson, designed in 2000 by Philippe Starck for the Hudson hotel in New York. "They are both super-super-famous chairs," Farley says. "If they're made in China, how are you supposed to compete with that? You don't have to be a Harvard business grad. That's a real threat to American jobs." The Navy chair is pure Americana, which is why Target looks so bad. It comes from an era when Yankee ingenuity, government research and a skilled labor force could work miracles, and small towns thrived on full employment. In Hanover, which is just up the road from Camp David, 60 skilled workers -- down from 600 during World War II -- produce 10,000 Navy chairs a year. The capacity is 30,000, according to Gregg Buchbinder, who bought the factory in 1998. During the war, rail cars pulled right up to the door to load government orders. Emeco, which stands for Electric Machine and Equipment Co., was founded by tool-and-die maker Wilton C. Dinges, who worked out the technology with the U.S. Navy and Alcoa. The designer's name is lost. The Design Encyclopedia of the Museum of Modern Art notes that the chair took decades to perfect. During manufacture, the molecular structure of the metal is altered to make the material three times stronger than steel. "We're risking everything," Buchbinder says. "For a little company, we put so much livelihood and development into the tooling. If someone else is allowed to make it, it just kills us." Like Target, Buchbinder has sought to raise the profile of his company by working with celebrity designers. Along with Starck's Hudson collection, Emeco makes a Superlight chair designed by Gehry. Buchbinder was hard at work on a new chair by Norman Foster, the British architect, when he learned of the aluminum chair on Target.com. He bought one and put it through a few tests before deciding to challenge it. He worried that legal fees could prevent the launch of the Foster chair. "I only have five collections," Buchbinder says. "Those jobs depend on making those chairs. My back is up against a wall. I don't have a choice. I have to fight for it." Target's commitment to design began at the Washington Monument. The corporation organized sponsorship of the famous Michael Graves blue wrap used during a lengthy renovation in 1998. Smart executives bought the notion that design could differentiate Target from other big-box stores. Exclusive collections have been commissioned from Graves, Starck, Isaac Mizrahi, Todd Oldham and others. Anonymous designers toil away on staff. The corporation also has partnered with such brand-name companies as California Closets, Sony, Eddie Bauer, Tupperware, Calphalon, Waverly and Woolrich to offer quality design at volume pricing. Target.com includes comments from three shoppers who have purchased the Cafe Aluminum side chairs. Two of them complain about sloppy welds. One of them gives the chair four stars as a "great alternative to the Emco [sic] chair." If Target's guests know the difference, surely those in the executive suite do, too.
www.washingtonpost.com/wp-dy n/content/article/2005/07/08/AR2005070801970_pf .html 2/3
9/30/12
Why not apologize, pull the imitation and maybe even work out a partnership to ensure that a great example of American design not only survives but flourishes? 2005 The Washington Post Company
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3/3
EXHIBIT 7
11/25/12 Stackable Aluminium Chair : Bistro Furniture, Cafe Furniture, Canteen Furniture, BistroDirect Case3:12-cv-05072-MMC Document37-3
Filed11/30/12 Page50 of 93
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Designer Canteen Furniture | Aluminium Bistro Tables | Aluminium Bistro Chairs | Glass Bistro Tables | Glass Bistro Furniture | Aluminium Bistro Furniture | Height Adjustable Desks | C opyright 2012 Zen Cart and Webspace Ltd . W e bsite by Website Design
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EXHIBIT 8
11/25/12
Chiavari Chair - Case3:12-cv-05072-MMC Document37-3 Aluminum Chiavari Stacking Chair - Mity-Lite
Home / Product Showroom / Stacking Chairs / Aluminum Chiavari Stacking Chair HOME FABRIC OPTIONS DESIGN YOUR OWN CHAIR FOLDING TABLES PROMOTIONS
ALUMINUM CHIAVARI STACKING CHAIR

Mity-Lite's new Aluminum Chiavari stacking chair combines classic elegance with unmatched durability in an eco-friendly platform. Weighing in at only 8 lbs yet possessing the ability to withstand over 1,000 lbs of static load, the Aluminum Chiavari can support over 125 times its own weight! The 100% welded aluminum frame eliminates chair sway so common among competitor chiavari chairs providing peace of mind for both you and your customers. Lightweight handling make set up and take down of any event a breeze, while removable cushions allow for dense stacking and extend cushion life. Perfect for use in the ballroom, the dining hall, or for any event where the classic chiavari look is desired. Aluminum Chiavari Color Options Click buttons below to start slideshow. Aluminum Chiavari Stacking Chair Quick Specs Spec Sheet Flyer Greenguard Certification Carts & Transports Image Gallery How to Purchase
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Duramax PRO Resin Stacking Chairs MeshOne Stacking Chair Sw iftSet Stacking Sw iftSet HD Stacking Chair Aluminum Chiavari Chair Aluminum Napoleon Chair Church Chairs Worship Chairs
Benefits: 40% lighter & 2.5X more durable* than leading competitor resin chairs. Environmentally friendly 100% recyclable 100% welded aluminum construction = greater durability = reduced cost of ownership Ships completeno assembly required Rust freeindoor or outdoor use Features: Durably constructed to hold 1,000 lbs. (455kg) 7 welded leg support bars for superior stability UV treated paint prevents fading & discoloration Non-marring feet & stack buttonsmade from recycled plastic Plush 2 cushion with luxurious leather feel (optional) Available in Gold, Silver, White, & Mahogany Five-year limited warranty *Based on internal BIFMA testing
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EXHIBIT 9
MoMA | The Collection | Hans Coray. Landi Chair. 1938
http://www.moma.org/collection/object.php?object_id=4294

THE COLLECTION
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Landi Chair
Hans Coray (Swiss, 19061991) 1938. Bent and pressed aluminum, and rubber, 30 1/2 x 21 1/4 x 22 1/8" (77.5 x 54 x 56.2 cm). Manufactured by P. & W. Blattmann Metallwaren-Fabrik, Switzerland. Gift of Gabrielle and Michael Boyd 519.1998
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If you are interested in reproducing images from The Museum of Modern Art web site, please visit the Image Permissions page (www.moma.org/permissions). For additional information about using content from MoMA.org, please visit About this Site (www.moma.org/site). Copyright 2009 The Museum of Modern Art
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EXHIBIT 10
r Chairs | Premier Hospitality Furniture - Aero Outdoor Aluminum Chairs - Standard /Bar Height - 11/28/12
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Aero Outdoor Aluminum Chairs Outdoor Seating Uses. Aero Outdoor Aluminum Chairs are made of Aluminum Frame Seating and commercial grade construction for long lasting durability. Will not rust. Made to endure most weather types. Chair heights are 31", 31-1/2", 41" and 41-1/2"H Available styles are Aero Outdoor Aluminum Bar Height Chair With Arms, Aero Outdoor Aluminum Chair With Arms, Aero Outdoor Cast Aluminum Bar Height Chair With Arms and Aero Outdoor Cast Aluminum Chair With Arms Color is Aluminum or Aluminum Cast.
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Width Inches 22 (3) 22-1/2 (1) Depth Inches 20-1/2 (2) 21-1/2 (1) 22 (1) Height Inches 31 (1) 31-1/2 (1) 41 (1) 41-1/2 (1) DESCRIPTION Aero Outdoor Aluminum Bar Height Chair With Arms
Premier Hospitality Furniture - Aero Outdoor Aluminum Chairs - Standard /Bar Height
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W" 22 D" 22 H" 41 CONSTRUCTION Aluminum IMAGE MODEL WGB476661 QTY PRICE $132.95
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Aero Outdoor Cast Aluminum Chair With Arms 22 20-1/2 31 Cast Aluminum WGB476671 $130.95
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EXHIBIT 11
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page62 of 93 Case 2:08-cv-02632-JAM-GGH Document 195-13 Filed 07/11/12 Page 1 of 12
Exhibit B
EXPERT REBUTTAL REPORT OF HAL PORET REGARDING KLEIN SURVEY AND REPORTS
REPORT PREPARED FOR:
Gibson, Dunn & Crutcher LLP 555 Mission Street, Suite 3000 San Francisco, CA 94105 Attorneys for CytoSport
PREPARED BY:
Hal Poret ORC International 625 Avenue of the Americas New York, NY 10011
February 17, 2012
BACKGROUND AND PURPOSE In connection with CytoSports motion for a preliminary injunction, I previously prepared and submitted an expert report concerning a survey measuring the likelihood of confusion between CytoSports MUSCLE MILK protein drink and Vital Pharmaceutical, Inc.s (VPX) MUSCLE POWER protein drink and an expert report responding to a Rebuttal Report of Robert Klein, which criticized my survey. I resubmitted both reports in December 2011. I have recently been provided with two additional reports from Robert Klein: (1) a Supplemental Rebuttal Report containing additional comments on my survey; and (2) an Expert Report concerning a new likelihood of confusion survey conducted by Mr. Klein. This present Rebuttal Report contains my opinions regarding Kleins Supplemental Rebuttal Report and Kleins confusion survey.
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page65 of 93 Case 2:08-cv-02632-JAM-GGH Document 195-13 Filed 07/11/12 Page 4 of 12 OPINIONS RELATING TO KLEIN CRITIQUE OF PORET SURVEY
In his original Rebuttal Report regarding my survey, Klein asserted that the proper universe of consumers for products like Muscle Milk and Muscle Power consists of 75% males and predominantly younger people (in the 18 to 34 age range).1 Klein criticized my survey universe for including too many women and respondents age 35 and older. In my Supplemental Report, I explained that the confusion level in my survey would have been roughly the same (and well above the threshold to support a finding that confusion is likely) even if the universe had used the precise age and gender percentages Klein considers appropriate.2 To illustrate this, I re-weighted my survey data based on Kleins demographics, and found a net confusion level of 27.5%, similar to, and slightly higher than, my original measurement of 25.4%. Accordingly, I observed that Kleins criticism regarding the age and gender breakdown of my survey universe was irrelevant even if his own demographics were used, the result would be equivalent.
Much of Kleins Supplemental Rebuttal Report addresses my re-weighting of the survey data. Klein argues that the result of re-weighting is not precisely accurate because it relies on weighting the results among relatively small sub-groups, each of which has a margin of error.3 This analysis misses the point and obscures the clear meaning of the data from my survey. The only significant point is that every age/gender group that Klein considers relevant exhibited a high net confusion level in the survey:
Klein Rebuttal Report (00028696) pp. 5-6 Supplemental Poret Declaration pp. 2-4 3 Klein Supplemental Rebuttal Report (00028695) pp. 2-3
1 2
Age/Gender Males 18 34 Males 35 49 Females 18 - 34 Females 35 49
Net Confusion % 22.4% 40.6% 27.1% 15.2%
As this data makes apparent, confusion was high among males, females, consumers between 18 and 34, consumers between 35 and 49, and each subgroup. It is irrelevant that each sub-groups confusion figure has a margin of error and that a re-weighted figure will also have a margin of error. When confusion is high among every demographic, it is clear that the overall confusion level is high no matter how many males and females of each age group were included in the survey.4
Even Kleins own analysis demonstrates that any margin of error is too small to call into question the reliability of the survey and its conclusions. Kleins calculations indicate that the net confusion level is in the range of 15.9% to 39.1%.5 A net confusion level anywhere in the range of 15.9% to 39.1% would support the same conclusion I reached that there is a likelihood of confusion. Even the lowest end of this range (15.9%) is above the threshold typically used to determine if confusion is likely.
Accordingly, it is my opinion that Kleins supplemental analysis relating to age and gender is irrelevant and merely seeks to obscure the fact that confusion was high among all consumer segments. Likewise, Kleins analysis of the margin of error does not undermine the reliability of the survey, as the overall net
Kleins additional criticism regarding the survey universe including consumers of the wrong type of protein drink is addressed below in connection with my opinions regarding Kleins survey. 5 Klein Supplemental Rebuttal Report (00028695) p. 3
4
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page67 of 93 Case 2:08-cv-02632-JAM-GGH Document 195-13 Filed 07/11/12 Page 6 of 12 confusion level is high even after accounting for the margin of error he calculates.
OPINIONS RELATING TO KLEIN CONFUSION SURVEY I. The Survey Universe
Klein criticized my survey for screening for consumers of protein drinks. Klein argued that protein drink is not clear enough and could be interpreted to include drinks such as Atkins, Ensure, or Slim-Fast shakes. Accordingly, Klein argued that the survey was overbroad in that it included consumers who do not consume products in the Muscle Milk/Muscle Power category, but only these other drinks.6
Remarkably, after insisting that protein drink is not sufficiently clear to limit the universe to consumers of drinks like Muscle Milk and Muscle Power, Klein conducted his own survey by screening for consumers of high protein nutritional shakes.7 This term is equally subject to the criticism Klein levels against protein drink. There is no evidence at all that a survey respondent would interpret protein drink and high protein nutritional shake differently. The substitution of shake for drink would not have distinguished between the products at issue and Atkins-type products, which could be equally viewed as shakes. Nor is there any reason to think that the use of high protein or nutritional would clarify that the survey is limited to drinks like Muscle Power and not drinks like Atkins or Ensure. These latter drinks are all marketed as having high protein and being nutritional. If a consumer could believe an Atkins shake or Ensure is a protein drink, they could also believe an Atkins shake or
6 7
Klein Rebuttal Report (00028696) p. 4 Klein Report re Survey (00028694) p. 3
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page68 of 93 Case 2:08-cv-02632-JAM-GGH Document 195-13 Filed 07/11/12 Page 7 of 12 Ensure is a high protein nutritional shake. Accordingly, if Klein is correct that my survey universe contained some consumers of the wrong protein drinks, then his survey universe is equally likely to contain consumers of the wrong high protein nutritional drinks.
It is also important to note that overbroadness would be a far greater flaw for Kleins survey than it would be for mine. My survey was a Sequential Lineup survey, meaning that all respondents were shown both the Muscle Milk and Muscle Power products as part of the survey. Accordingly, even if they did not previously have great familiarity with these products, asking respondents whether the products are made by the same company was still a relevant test that respondents could meaningfully participate in. They were able to view both products and meaningfully consider them. On the other hand, as discussed more fully below, Kleins survey showed respondents only the Muscle Power product. Accordingly, if respondents were not already aware of Muscle Milk, the survey was predetermined to show no confusion, because a respondent who has not heard of Muscle Milk obviously cannot mention Muscle Milk when shown and asked about Muscle Power. Therefore, the inclusion of consumers of the wrong protein drinks or shakes would completely invalidate Kleins survey.
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page69 of 93 Case 2:08-cv-02632-JAM-GGH Document 195-13 Filed 07/11/12 Page 8 of 12 II. The Survey Format A. Kleins Use of an Eveready Survey The survey I conducted was a Sequential Lineup survey, in which respondents were first shown Muscle Milk and were then, one at a time, shown other protein drinks, one of which was Muscle Power. When viewing Muscle Power, respondents were asked whether it was made by the same company that made the first product they were shown (Muscle Milk).
When first asked to consider and comment on my survey, Klein criticized the survey for showing respondents the Muscle Milk and Muscle Power products separately.8 Klein asserted that Muscle Milk and Muscle Power are commonly found on the shelf together in stores and that consumers would have the opportunity to see them together and compare them. Klein specifically described how he believed the survey should have been conducted. He stated that the survey should have shown respondents Muscle Milk and Muscle Power side-byside and permitted respondents to compare them, in order to mirror these marketplace conditions. He asserted that less confusion would have been found if respondents could have examined the products side-by-side.
However, when later asked to conduct his own survey, Klein chose not to design a survey that showed respondents Muscle Milk and Muscle Power side-by-side, as he previously stated they would be found in the marketplace. To the contrary, Klein chose the survey format that is most unlike a side-by-side comparison a survey in which respondents are shown only the Muscle Power product. Directly contradicting his original comments on my survey, Klein not only failed to allow respondents to consider the Muscle Milk and Muscle Power products
8
Klein Rebuttal Report (00028696) p. 8
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page70 of 93 Case 2:08-cv-02632-JAM-GGH Document 195-13 Filed 07/11/12 Page 9 of 12 side-by-side, he did not allow them to consider the two products at all, as he did not allow respondents to view Muscle Milk. Kleins failure to test his earlier claim that a side-by-side comparison would have shown less confusion evidently reflects significant doubt about that proposition.
Because it never showed respondents the Muscle Milk product, Kleins survey did not simulate the marketplace conditions he emphasized in his previous reports that Muscle Milk and Muscle Power can be found side-by-side on store shelves and can therefore be viewed in close proximity by consumers. Respondents did not have the opportunity to see both the Muscle Milk and Muscle Power products and to consider their similarities (or differences) as they would if encountering both in the marketplace. Accordingly, Kleins survey failed to account for confusion under such actual marketplace circumstances. My survey, on the other hand, tested a scenario in which respondents encounter both products, and found that confusion was likely to occur under the marketplace conditions that Klein declined to simulate.
B. Questions in Klein Survey The Klein survey may also have understated confusion because it did not ask about several forms of confusion recognized by the Lanham Act. The Lanham Act covers not only confusion as to the direct source of goods, but also other forms of confusion, such as confusion as to affiliation or approval. Accordingly, it is standard in Eveready surveys to ask not only who makes the product or what other products that company makes, but to also ask whether the company that puts out the product is affiliated with or received approval from any other company. The Klein survey omitted such questions. Accordingly, the survey did not measure whether respondents who named VPX as the source of the product (likely because they read it off the bottle after being asked the question) 8
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page71 of 93 Case 2:08-cv-02632-JAM-GGH Document 195-13 Filed 07/11/12 Page 10 of 12 believed that the product is affiliated with or approved by the maker of Muscle Milk due to the similarities in name and trade dress.
III.
Kleins Classification of Results
The original Eveready survey involved plaintiffs batteries and defendants lamps. One of the reasons the survey functioned so well is that any respondent who was confused about the source of the lamp could easily reveal their confusion by mentioning batteries when asked what other products are made by the company that makes the lamp. Here, on the other hand, the parties products are the same type. Therefore, it can be difficult or impossible to tell if a respondent is confused based on their answer to the question about what other products are made by the company that makes the product shown (Muscle Power.) If the respondent realizes that the product they are viewing is not Muscle Milk but believes it is related to Muscle Milk, they could express confusion by answering that the company that makes the product shown also makes Muscle Milk. However, if the respondent mistakenly believes they are looking at Muscle Milk (without realizing the name and trade dress are somewhat different), they would not name Muscle Milk when asked what other products are made by the company that makes the product they are shown.9 Mistakenly believing they recognize the product as Muscle Milk, they may answer that the same company also makes other protein drinks or related products, but such answers will not clarify whether or not the respondent is confused. Accordingly, when products are of the same type and have similar names, an Eveready survey may fail to reveal confusion unless proper questions
9
Respondents could reveal confusion by naming CytoSport, but the name CytoSport does not appear prominently on the Muscle Milk product, and it would not be appropriate to assume respondents know the name of the company that makes Muscle Milk and would name CytoSport if they believed they were looking at Muscle Milk. This is particularly so given that respondents could simply look at the bottle shown to them and read that it says VPX.
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page72 of 93 Case 2:08-cv-02632-JAM-GGH Document 195-13 Filed 07/11/12 Page 11 of 12 are asked to determine what respondents are thinking and a proper analysis of their answers is performed.
Klein determined that roughly 4% of survey respondents in the Test Group confused Muscle Power with Muscle Milk by counting as confused only respondents who explicitly named Muscle Milk (or CytoSport.) However, there were many respondents who did not mention Muscle Milk, but gave other answers that are ambiguous as to whether the respondent is confused or not. For instance, many respondents answered that the company that makes the product shown to them (Muscle Power) also makes other protein shakes, protein powders, and/or protein bars. The maker of Muscle Milk does make other protein shakes, protein powders, and/or protein bars. These answers are, therefore, ambiguous. One possibility is that the respondent is not confused and is merely naming other related types of products. The other possibility, however, is that the respondent mistakenly believes the product they are shown is Muscle Milk and is naming other products that are made by the same company that makes Muscle Milk.
As an example of such potential additional confusion, it is interesting to consider answers mentioning protein powder. Muscle Milk is notable for also coming in powder form, and a consumer who confuses Muscle Power for Muscle Milk might mention powders when asked what else is made by the same company. In the Klein Test Group, 18 respondents (8.1%) mentioned that the company that makes the product shown also makes powders. Only 4 respondents (3.7%) did so in the Control Group. This may indicate that some of the Test Group respondents who mentioned protein powders were confusing Muscle Power with Muscle Milk.
10
Case3:12-cv-05072-MMC Document37-3 Filed11/30/12 Page73 of 93 Case 2:08-cv-02632-JAM-GGH Document 195-13 Filed 07/11/12 Page 12 of 12 The Klein survey did nothing to clarify whether or not the many respondents who gave ambiguous answers were confused. The Klein report simply treated all such respondents as not confused when, in fact, it is possible that some of them mistakenly believed they were looking at Muscle Milk and, therefore, did not name Muscle Milk as an other product made by the same company. With no analysis of these respondents answer patterns and no way in many cases to determine what they were thinking, it is impossible to know the extent to which the reported confusion level is understated.
Dated: February 17, 2012
11
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PLAINTIFFS ADMIN. MOTION TO SEAL CV 12-05072 MMC

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PLAINTIFFS ADMIN. MOTION TO SEAL CV 12-05072 MMC

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CREED DECL. ACC. MOTION TO SEAL; CV 12-05072 MMC

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PUBLIC REDACTED VERSION

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 III. IV. V. VI. 2. B. 1. 2. 3. I. II.

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TABLE OF AUTHORITIES Page

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TABLE OF AUTHORITIES (continued) Page

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1 2 3 4 5 6 7 STATUTES AND RULES 8

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DATED: November 30, 2012

Attorneys for Plaintiff Emeco Industries, Inc.

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PUBLIC REDACTED VERSION

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Attached hereto as Exhibit 6 is a true and correct copy of a July 9, 2005

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Attached hereto as Exhibit 16 is a true and correct copy of documents

Attached hereto as Exhibit 18 is a true and correct copy of documents

Attached hereto as Exhibit 20 is a true and correct copy of documents

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