5th Circ. Tableware Reset Embraces 7 Trade Dress Factors

July 27, 2022

Originally published by Law360.

The U.S. Court of Appeals for the Fifth Circuit recently issued an opinion in Beatriz Ball LLC v. Barbagallo Co. LLC, reversing and remanding on July 12 a decision from the U.S. District Court for the Eastern District of Louisiana after a three-day bench trial.

In 2018, Beatriz Ball LLC sued Barbagallo Company LLC, which was doing business as Pampa Bay, for copyright and unregistered trade dress infringement over a dinnerware collection.

The collection, named the Organic Pearl, was one of Beatriz Ball's most popular. On the market since 2005, the collection featured an organic overall shape, a border of handcrafted pearls in various sizes to appear irregular and random, and a reflective design.

Approximately 11 years after Beatriz Ball launched its Organic Pearl collection, in 2016, Pampa Bay launched a strikingly similar but lower-quality dinnerware collection. While the Organic Pearl collection products were individually crafted in Mexico using a rare set of skills, the accused products were made with cheaper materials and sold at lower-priced retail outlets.

Beatriz Ball lost on all claims after a three-day bench trial. The district court never reached the merits of the copyright or trade dress claims, because the court found that the plaintiff:

  • Lacked standing to sue because the assignment of the four copyright registrations after the infringement occurred;
  • Did not specifically mention a transfer of rights to sue for past infringements; and
  • Failed to meet its burden to prove it owned protectable trade dress rights in the Organic Pearl collection.


Four of the items in the collection were registered with the U.S. Copyright Office but the owner's name was incorrectly listed as Beatriz Ball Collection. The day prior to filing the lawsuit, Beatriz Ball assigned ownership to Beatriz Ball LLC.

The district court concluded that the assignment did not provide Beatriz Ball LLC standing to sue because the language did not specifically transfer the right to sue for past infringements.

Interestingly, the defendant only raised the standing challenge in closing argument and the district court accepted it.

Although the Fifth Circuit disagreed with the lower court's conclusion, it reversed on other grounds.

The Fifth Circuit concluded that the error in the plaintiff's copyright registration — namely, listing the name under which it does business, Beatriz Ball Collection, rather than its legal entity name, Beatriz Ball LLC — was an innocent error.

The Fifth Circuit held the innocent error falls within the scope of the Copyright Act's safe harbor provision, Title 17 of the U.S. Code, Section 411(b)(1), and that it did not undermine the plaintiff's standing to assert copyright infringement.[1]

The Fifth Circuit found that the plaintiff's employees submitting the applications had no idea they inaccurately listed the name of the collection and not the formal business name.

Accordingly, the case was typical of other cases where 411(b)(1) applies and permits a plaintiff, as here, to proceed with its infringement claims in federal court.[2]

Trade Dress

The district court also considered whether the collection was entitled to unregistered protection as trade dress, which required an assessment of seven factors to determine whether secondary meaning was established in the minds of consumers.[3] The district court concluded that the plaintiff failed to prove secondary meaning.

The Fifth Circuit, however, found the collection had distinguishing features, and that the district court clearly erred in analyzing three of the seven factors for determining whether the collection had acquired secondary meaning:

  • Length and manner of use of the mark or trade dress;
  • Volume of sales;
  • Amount and manner of advertising;
  • Nature of use of the mark or trade dress in newspapers and magazines;
  • Consumer survey evidence;
  • Direct consumer testimony; and
  • The defendant's intent in copying the trade dress.[4]

For each of the seven factors, "the focus is on how [the evidence] demonstrates that the meaning of the mark or trade dress has been altered in the minds of consumers."[5]

On the volume-of-sales factor, the Fifth Circuit held the district court failed to consider evidence regarding the volume of overall sales attributable to the collection. The plaintiff offered testimony that over $6.6 million of overall sales were attributable to the Organic Pearl collection.

The district court ignored this testimony and failed to consider whether this volume of sales favored a finding of secondary meaning.

On the nature-of-use factor by media, the Fifth Circuit held the district court erred by failing to consider third-party advertisements or publications that did not refer to the collection by name.

There was evidence of publications by third parties promoting the Organic Pearl collection trade dress that the district court ignored. Instead, the district court only reviewed the plaintiff's general advertising and self-promotions and concluded the evidence failed to mention the name Organic Pearl collection.

This was clear error, because the relevant inquiry is the extent of media promotion is the trade dress itself, not the name of the collection.

On the intent factor, the Fifth Circuit held the district court incorrectly failed to address intent directly and instead only partially analyzed widespread use in the industry of similar designs.

The defendant offered evidence of other uses of various features depicted in the Organic Pearl collection and the district court held that the similarities among other products was evidence showing a lack of secondary meaning.

However, the Fifth Circuit focused on the "totality of features and overall appearance," not a dissection of isolated features.

The plaintiff's trade dress in the Organic Pearl collection was described as featuring:

A unique combination of features pertaining to the individuality of each piece, the irregular and unpredictable size and shape of the pearls, the undulated shape of the body, the metallic shine, and the overall, accurate impression that each piece was handmade with artisanal quality.

While it is high burden to establish product design trade dress, and even more difficult in cases of a collection, here the plaintiff introduced evidence of a consistent overall look in the collection.

The Fifth Circuit further held, contrary to the district court, that a difference in quality between products does not support a finding of lack of copying. Moreover, the Fifth Circuit held that a visual comparison of the alleged trade dress features in the competing products can create an inference of copying.

Accordingly, the Fifth Circuit ultimately concluded that this sum of errors required reversal. The court reversed and remanded for further proceedings consistent with its opinion. The implications of the Fifth Circuit's decision are unclear, in part, because trade dress protection for product design is not typically gauged by focusing on copying or intent to copy aesthetically pleasuring features.

Trade dress protection for product design only applies to source-identifying features of the product. For instance, if consumers recognize and associate a product design feature with a single source, then the trade dress law applies, but it does apply if consumers are merely attracted to features for the ornamental design appeal.

In other words, to establish trade dress protection, a manufacturer is typically required to prove exclusivity and concentrated efforts over a period of time to create secondary meaning in the product design trade dress.

The Fifth Circuit seemed to overemphasize similarities and an apparent intent to copy design features rather than analyze whether the product design features identified a single source of origin.

The district court will have an opportunity on remand to consider all seven factors for determining whether the product design has acquired secondary meaning to identify a single source or origin.

Scott P. Shaw is managing partner of the Los Angeles office of Merchant & Gould PC.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] 17 U.S.C. § 411(b)(1) (providing that a copyright registration with inaccurate information can support an infringement claim if the misstatements in the application were either unknowing or immaterial); see also Unicolors, Inc. v. H&M Hennes & Mauritz, L. P., S. Ct. 941, 945 (2022) ("[l]ack of knowledge of either fact or law can excuse an inaccuracy in a copyright registration."

[2] See 2 Melville Nimmer, Nimmer on Copyright § 7:20 (2021) at § 7:20 ("[C]ases have forgiven even ... erroneous statements as to the identity of the author, or of the copyright claimant.").

[3] See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000).

[4] Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 236 (5th Cir. 2010).

[5] Id. at 248.

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