Case: 10-15140 Date Filed: 12/20/2012 Page: 1 of 31
[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT ________________________
No. 10-15140 ________________________
D.C. Docket No. 9:09-cv-80918-KAM
MILLER'S ALE HOUSE, INC.,
Plaintiff - Appellant,
versus
BOYNTON CAROLINA ALE HOUSE, LLC,
Defendant - Appellee. ________________________
Appeals from the United States District Court for the Southern District of Florida ________________________
(December 17, 2012)
Before TJOFLAT and MARTIN, Circuit Judges, and DAWSON, * District Judge.
* Honorable Robert T. Dawson, United States District Judge for the Western District of Arkansas, sitting by designation. Case: 10-15140 Date Filed: 12/20/2012 Page: 2 of 31
TJOFLAT, Circuit Judge:
“[T]here is no better friend to any merchant than a fair competitor.” 1
Intellectual property law walks a fine line in its quest to preserve such fair
competition. On the one hand, it respects the policy of free copying and the free
economic competition such copying encourages. See 1 J. Thomas McCarthy,
McCarthy on Trademarks & Unfair Competition § 1:2 (4th ed. 2012). On the other
hand, it creates a set of exceptions—such as patents, trademarks, and copyrights—
that protect consumers from deception and confusion. See id. §§ 1:2, 2:2. Thus,
trademark law allows merchants to label their products with source-identifying
marks and to protect those marks from infringement, see id. § 2:2, while at the
same time maintaining competition by disallowing trademarks in generic terms,
see Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th Cir. 1986)
(“To allow a firm to use as a trademark a generic word . . . would make it difficult
for competitors to market their own brands of the same product.”).
We are called on today to determine whether Miller’s Ale House, Inc.
(“Miller’s”), a restaurant chain with a location in Boynton Beach, Florida, has
common law trademark rights in the term “ale house” and trade dress rights in the
interior decoration of its restaurants and, if so, whether its competitor, Boynton
1 J.C. Penney, Good Competitor, The Rotarian, July 1954, at 11. 2 Case: 10-15140 Date Filed: 12/20/2012 Page: 3 of 31
Carolina Ale House, LLC, (“Boynton Carolina”), violated Section 43(a) of the
Trademark Act of 1946 (the “Lanham Act”), 15 U.S.C. § 1125(a) (2006),2 and the
Copyright Act § 106, 17 U.S.C. § 106, when it adopted a name, decor, and a floor
plan similar to Miller’s own.
The United States District Court for the Southern District of Florida granted
summary judgment in favor of Boynton Carolina on all claims. 3 Miller’s,
appealing the court’s ruling, argues that the court erred as a matter of law in
finding its trademark infringement claim barred by issue preclusion, in finding its
trade dress not to be inherently distinctive, and in finding its and Boynton
Carolina’s floor plans not to be substantially similar. 4 We find no error in the
challenged rulings and affirm.
I.
Miller’s opened its first restaurant/sports bar in 1988. Since that time,
Miller’s has successfully expanded to approximately fifty locations, with the vast
majority in Florida. Each Miller’s location has a different name, but all use some
2 Section 43 of the Lanham Act is codified in 15 U.S.C. § 1125. Courts frequently refer to the statute as “Section 43” rather than referring to its location in the United States Code. For purposes of consistency, we will continue this practice throughout the opinion. 3 The District Court, which had jurisdiction over Miller’s federal law claims under 28 U.S.C. § 1331, declined to exercise supplemental jurisdiction under 28 U.S.C. § 1367 on Miller’s Florida law claims for unfair competition. 4 Miller’s also contends that the District Court erred in failing to consider two theories of unfair competition that neither party ever brought to its attention. We find this argument to be without merit. 3 Case: 10-15140 Date Filed: 12/20/2012 Page: 4 of 31
geographic prefix—such as a city, street, or neighborhood—followed by the term
“Ale House.” For example, the Boynton Beach location is named “Boynton Ale
House.” Each of Miller’s restaurants includes several common features that
contribute to the overall image of the brand. In 1998, Miller’s predecessor in
interest copyrighted five different floor plans used in its various locations. Each of
these floor plans contains a different arrangement of the decorative elements
common to Miller’s restaurants.
Boynton Carolina is a licensee of LM Restaurants, Inc., a restaurant
management company located in Raleigh, North Carolina. LM Restaurants created
the Carolina Ale House brand, opening the first restaurant in 1998. Unlike the
Miller’s chain, each Carolina Ale House restaurant displays on its exterior signs
the same name, “Carolina Ale House,” with the word “Carolina” in a smaller font.
In 2008, the events that led to this litigation began. Boynton Carolina
obtained a license from LM Restaurants to open a Carolina Ale House branded
restaurant in Boynton Beach, Florida, on Congress Avenue. At this time, Miller’s
“Boynton Ale House” was already operating a restaurant on Congress Avenue a
little over a mile from the planned Boynton Carolina location. The Boynton Ale
House employed many of the same common features found in other Miller’s
restaurants.
4 Case: 10-15140 Date Filed: 12/20/2012 Page: 5 of 31
Prior to opening, Boynton Carolina substantially renovated its building’s
interior, which had previously been used as a Tony Roma’s restaurant. In doing
so, Boynton Carolina added many of the features of Miller’s restaurants, including
walls paneled with dock wood, an exposed kitchen, a bar located at the center of
the restaurant topped with a soffit, “high-top” tables in a portion of the restaurant,
and the color red for the restaurant’s name on its exterior and menus. Furthermore,
Boyton Carolina, like Miller’s, prefixed many menu items with its name and
dressed its staff in dark polo shirts and khakis. Nevertheless, the exterior and
interior appearances of Boynton Carolina and Miller’s Boynton Ale House differ in
several significant ways. Most notably, Boynton Carolina is located in a stand-
alone building while the Boynton Ale House is attached to other shops. Boynton
Carolina also features a large outdoor area, while Miller’s Boynton Ale House has
no such area.
II.
We review a district court’s grant of summary judgment de novo. Dippin’
Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 1201 (11th Cir. 2004).
Summary judgment is appropriate “if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(a).
5 Case: 10-15140 Date Filed: 12/20/2012 Page: 6 of 31
The moving party bears the initial burden of demonstrating the absence of a
genuine dispute of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106
S. Ct. 2548, 2553, 91 L. Ed. 2d 265 (1986). Though we must view all evidence
and reasonable inferences in the light most favorable to Miller’s as the nonmoving
party, “[t]he mere existence of a scintilla of evidence in support of [its] position
will be insufficient.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106
S. Ct. 2505, 2512, 91 L. Ed. 2d 202 (1986). “Where the record taken as a whole
could not lead a rational trier of fact to find for the non-moving party, there is no
genuine issue for trial.” Matsushita Elec. Indus. Co., v. Zenith Radio Corp., 475
U.S. 574, 587, 106 S. Ct. 1348, 1356, 89 L. Ed. 2d 538 (1986) (internal quotation
marks omitted).
Thus, Rule 56 “mandates the entry of summary judgment, after adequate
time for discovery and upon motion, against a party who fails to make a showing
sufficient to establish the existence of an element essential to that party’s case, and
on which that party will bear the burden of proof at trial.” Celotex, 477 U.S. at
322, 106 S. Ct. at 2552; Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1356
(11th Cir. 2007). As a result, courts may “isolate and dispose of factually
usupported claims,” which is “[o]ne of the principal purposes of the summary
judgment rule.” Celotex, 477 U.S. at 323–24, 106 S. Ct. at 2553.
6 Case: 10-15140 Date Filed: 12/20/2012 Page: 7 of 31
III.
We first address Miller’s claim that Boynton Carolina violated Section 43(a)
of the Lanham Act, 15 U.S.C. § 1125(a), when it infringed on Miller’s alleged
trademark in the term “ale house.” 5 Miller’s has not registered the term “ale
house” as a trademark. However, “the use of another’s unregistered, i.e., common
law, trademark ‘can constitute a violation of section 43(a) of the Lanham Act.’”
Crystal Ent. & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1320 (11th Cir. 2011)
(alterations omitted) (quoting Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512
(11th Cir. 1984)).
In order to prevail, Miller’s must show that (1) its mark is valid and thus
protectable and (2) Boynton Carolina adopted an identical or similar mark that
made consumers likely to confuse the two restaurants. Leigh v. Warner Bros., Inc.,
212 F.3d 1210, 1216 (11th Cir. 2000). The starting point for an assessment of the
5 Section 1125(a) states in pertinent part:
(1) Any person who, on or in connection with any goods or services, . . . uses in commerce any word, term, [or] name, . . . which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
7 Case: 10-15140 Date Filed: 12/20/2012 Page: 8 of 31
validity of a mark is to query whether or not the purported mark is distinctive. See
Welding Servs., 509 F.3d at 1357 (noting that protection is only available to
“distinctive” marks).
We recognize four gradations of distinctiveness: fanciful or arbitrary,
suggestive, descriptive, and generic. Am. Television & Commc’ns Corp. v. Am.
Commc’ns & Television, Inc., 810 F.2d 1546, 1548 (11th Cir. 1987). Marks that
are fanciful or arbitrary or suggestive are deemed to be inherently distinctive. Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753, 2757, 120
L. Ed. 2d 615 (1992). A descriptive term acquires distinctiveness, called
“secondary meaning,” when “’the primary significance of the term in the minds of
the [consuming] public is not the product but the producer.’” Welding Servs., 509
F.3d at 1358 (quoting Am. Television, 810 F.2d at 1549) (alteration in original). In
general, a generic term cannot be appropriated from the public domain and thus
cannot receive trademark protection. Id.; Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (noting that the Lanham Act offers no
“secondary meaning” exception for generic terms).
8 Case: 10-15140 Date Filed: 12/20/2012 Page: 9 of 31
The Fourth Circuit, in previous litigation between the parties at hand, 6 found
that the words “ale house” were “generic words for a facility that serves beer and
ale, with or without food, just as are other similar terms such as ‘bar,’ ‘lounge,’
‘pub,’ ‘saloon,’ or ‘tavern.’” Ale House Mgmt, Inc. v. Raleigh Ale House, Inc.,
205 F.3d 137, 141 (4th Cir. 2000). The District Court held that Miller’s claim was
barred by issue preclusion. We agree.
A.
The Fourth Circuit case began when Miller’s filed suit in 1998 in the District
Court for the Eastern District of North Carolina to prevent the first Carolina Ale
House from opening. See Ale House Mgmt, 205 F.3d at 139. Specifically,
Miller’s alleged that Raleigh Ale House infringed on its unregistered trademark in
the term “ale house” in violation of Section 43(a) of the Lanham Act. 7 Ale House
Mgmt., 205 F.3d at 140.
Raleigh Ale House moved for, and was granted, summary judgment. Id. On
appeal, Miller’s argued, among other things, that while “ale house” may be generic
for a drinking establishment, it is not generic for a facility that has an extensive
6 For purposes of issue preclusion, an assignee of a trademark “steps into the shoes” of the assignor. Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1310 (11th Cir. 1999). As a result, this opinion will simply refer to the plaintiff in the Fourth Circuit case, Miller’s predecessor in interest, as “Miller’s.” The defendant in the Fourth Circuit case was Raleigh Ale House, which, like Boynton Carolina, was a licensee of LM Restaurants, Inc. 7 Miller’s sued on additional counts that are not relevant to this appeal. 9 Case: 10-15140 Date Filed: 12/20/2012 Page: 10 of 31
food menu. Id. The Fourth Circuit, however, found that Miller’s “failed . . . to
present any evidence that ‘ale house’ does not refer to institutions that serve both
food and beer.” Id. at 140–41. In contrast, Raleigh Ale House presented
“extensive evidence, including citations to newspapers, dictionaries, books, and
other publications, that the term ‘ale house’ is generic, referring to several types of
facilities.” Id. at 141 (citing Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996)
to show that such evidence can demonstrate that a term is generic). It also
referenced numerous restaurants unaffiliated with Miller’s that incorporate the
term “ale house” in their names. Id. In affirming, the Fourth Circuit concluded
that Miller’s had “no protectable interest in the words ‘ale house’ [because] [t]hey
are generic words for a facility that serves beer and ale, with or without food.” Id.
B.
Issue preclusion “bars ‘successive litigation of an issue of fact or law
actually litigated and resolved in a valid court determination essential to the prior
judgment,’ even if the issue recurs in the context of a different claim.” Taylor v.
Sturgell, 553 U.S. 880, 892, 128 S. Ct. 2161, 2171, 171 L. Ed. 2d 155 (2008)
(quoting New Hampshire v. Maine, 532 U.S. 742, 748-49, 121 S. Ct. 1808, 149
L. Ed. 2d 968 (2001)). This serves “the dual purpose of protecting litigants from
the burden of relitigating an identical issue with the same party or his privy and of
promoting judicial economy by preventing needless litigation.” CSX Transp., Inc. 10 Case: 10-15140 Date Filed: 12/20/2012 Page: 11 of 31
v. Bhd. of Maint. of Way Emp., 327 F.3d 1309, 1317 (11th Cir. 2003) (quoting
Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326, 99 S. Ct. 645, 649, 58 L. Ed. 2d
552 (1979)). We apply issue preclusion when (1) the issue at stake is identical to
the one involved in the prior litigation; (2) the issue was actually litigated in the
prior suit; (3) the determination of the issue in the prior litigation was a critical and
necessary part of the judgment in that action; and (4) the party against whom the
earlier decision is asserted had a full and fair opportunity to litigate the issue in the
earlier proceeding. See CSX Transp., 327 F.3d at 1317. The latter three
requirements are here met. Yet Miller’s contends that the issue presented in this
case differs from that presented before the Fourth Circuit, for while the Fourth
Circuit considered whether the term “ale house” was generic in 1998, this case
considers whether the term was generic in 2009. 8
8 Miller’s also argues that the Fourth Circuit’s ruling was limited to North Carolina consumer perception and therefore should have no preclusive effect for Florida consumers. We disagree. Though McCarthy notes that “it is possible that generic usage in a different and remote location in the U.S. will not be relevant,” 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 12:8.50 (4th ed. 2012) (citing Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 930 n.4 (9th Cir. 2005)), Miller’s did not assert before the Fourth Circuit common law trademark rights in North Carolina alone. Instead, both Miller’s and Raleigh Ale House based their arguments on wider use of the term “ale house.” In fact, the Fourth Circuit specifically considered use of the term “ale house” in Florida. See Ale House Mgmt, 205 F.3d at 139, 141 (describing Miller’s as an “operator of a small chain of facilities selling food and beer in Florida and later noting that Miller’s “conceded at oral argument that other Florida food-and-drink facilities incorporate ‘ale house’ in their names”). 11 Case: 10-15140 Date Filed: 12/20/2012 Page: 12 of 31
The passage of time may be a factor in a determination of whether a case
involves an identical issue to one litigated previously. But the passage of time
between prior and subsequent litigation is not by itself dispositive of non-identical
issues. Rather, “the passage of time may evoke change of circumstances which
preclude the creation of an estoppel.” Int’l Shoe Mach. Corp. v. United Shoe
Mach. Corp., 315 F.2d 449, 455 (1st Cir. 1963) (emphasis added). “[C]hanges in
facts essential to a judgment will render collateral estoppel inapplicable in a
subsequent action raising the same issues.” Montana v. United States, 440 U.S.
147, 159, 99 S. Ct. 907, 976, 59 L. Ed. 2d 210 (1979). A party “need only point to
one material differentiating fact that would alter the legal inquiry here and thereby
overcome the preclusive effect.” CSX Trans., 327 F.3d at 1317.
Certain issues in trademark law are more likely than others to be altered
across time. Fact-intensive issues such as likelihood of confusion and secondary
meaning may entail a wholly different inquiry due to significant intervening
circumstances between two bouts of litigation. See 4 Louis Altman & Malla
Pollack, Callmann on Unfair Competition, Trademarks & Monopolies § 23:37 (4th
ed. 2012). The Fifth Circuit has suggested, for example, that a “significant
intervening factual change” causing “a change in the minds of the public in the
relevant geographic area such that they could immediately associate” a mark with a
company could preclude collateral estoppel with respect to the question of 12 Case: 10-15140 Date Filed: 12/20/2012 Page: 13 of 31
secondary meaning. Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559, 576
(5th Cir. 2005) (finding “Testmasters” company not to have met this standard).
The Fifth Circuit has held that the same is not true of a determination that a
term is generic. Confronted with a sixty-year-old case that found the term “pig
sandwich” to be “unprotectable for two conflicting reasons,” the court explained
that
Dixiepig’s assertion that “[t]he words ‘pig sandwiches’ are purely common English words, generic,” would estop the present litigation, as generic terms can never attain trademark protection. However, Dixiepig also holds that “the evidence failed to show that [‘pig sandwich’] had generally acquired a secondary meaning, . . . said words so employed being descriptive.”
Texas Pig Stands, Inc. v. Hard Rock Cafe Int’l, Inc., 951 F.2d 684, 691 (alterations
in original) (internal citations omitted). This second basis for the judgment, the
court explained, “makes it possible that the term could attain protectable status if it
acquired a secondary meaning.” Id. The answer to this question, the court
concluded, “greatly depends on whether the question is asked in 1930 . . . or in
1990.” Id. A finding of genericism, alone, however, would have barred
relitigation, in the estimation of the Fifth Circuit.
The First Circuit, on the other hand, has left the door open for relitigation of
the issue of genericism. In Miller Brewing Co. v. Falstaff Brewing Corp., 655
F.2d 5 (1st Cir. 1981), in considering whether Miller Brewing was precluded by a
1978 Seventh Circuit decision from arguing again that “LITE” was not generic, the 13 Case: 10-15140 Date Filed: 12/20/2012 Page: 14 of 31
court, “[f]or present purposes, . . . assume[d] that a judgment determining a state of
facts existing in the 1970’s [did] not preclude a fresh determination of a state of
facts existing in the 1980’s.” Id. at 9. Nonetheless, it found that Miller Brewing’s
evidence was insufficient to show that the issue had changed, without specifying
what evidence might have been sufficient. Id.
There is ample reason for a court to resist revisiting a determination of a
term’s generic quality. As Judge Friendly observed, where a term is generic, “any
claim to an exclusive right must be denied since this in effect would confer a
monopoly not only of the mark but of the product by rendering a competitor unable
effectively to name what it was endeavoring to sell.” Abercrombie, 537 F.2d at 10.
Accord William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 529, 44 S. Ct.
615, 616, 68 L. Ed. 1161 (1924) (“The use of a similar name by another to
truthfully describe his own product does not constitute a legal or moral wrong,
even if its effect be to cause the public to mistake the origin or ownership of the
product.”). To allow a party to revisit an adverse determination of genericism
based on incremental changes to the facts before the court (for example, an
expanded marketing strategy) would be to give it a greater than warranted
opportunity to monopolize a class of products. Although the Fifth Circuit’s
conclusion reflects the difficult task that should thus be faced by a party seeking to
elevate a generic term into a trademark, we agree with the First Circuit that it must 14 Case: 10-15140 Date Filed: 12/20/2012 Page: 15 of 31
be theoretically possible, where circumstances warrant, for it to be allowed to take
on that challenge.
C.
Under the Lanham Act, “the primary significance of the registered mark to
the relevant public . . . . shall be the test for determining whether the registered
mark has [lost trademark protection by] becom[ing] the generic name of goods or
services on or in connection with which it has been used.” 15 U.S.C. § 1064(3).
There is no clear standard for the inverse situation, when a previously generic term
may gain trademark protection. In only two cases, Singer Mfg. Co. v. Briley, 207
F.2d 519 (5th Cir. 1953), and Goodyear Tire & Rubber Co. v. H. Rosenthal Co.,
246 F. Supp. 724 (D. Minn. 1965), have courts held that a term previously found to
be generic had been “reclaimed from the public domain by a change in public
usage,” 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §
12:30 (4th ed. 2012). Both cases involved personal names that were introduced
originally as a mark and later fell into generic usage only to be ultimately
reclaimed by the original coiner. Id. Some courts have gone so far as to suggest
that even where evidence of changed consumer perception exists, it is irrelevant in
determining whether a once-generic term has acquired distinctiveness. See
Welding Services, 509 F.3d at 1358 (“[E]ven if the name becomes in some degree
associated with the source, a generic mark cannot achieve true secondary 15 Case: 10-15140 Date Filed: 12/20/2012 Page: 16 of 31
meaning.”); Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 21
(1st Cir. 2008) (trademark law does not protect a producer who “has acquired a ‘de
facto secondary meaning’ through its exclusive use of a generic term that causes
customers to associate the term with that specific source”). Were changed
perception sufficient to warrant the elevation of a non-coined, generic term to
trademark status, such change would have to be radical. See 2 McCarthy, supra, §
12:30.
Miller’s evidence is wholly inadequate to indicate that, after the Fourth
Circuit’s decision, such a drastic change occurred in the public’s perception of the
term “ale house.” Miller’s offered declarations by two of its customers from Boca
Raton, a community located south of Boynton Beach. Unlike a random consumer
survey, these statements fail to offer evidence of general public perception. See 2
McCarthy, supra, § 12:14 (“Consumer surveys have become almost de rigueur in
litigation over genericness.”). These two customers stated that they refer to the
Miller’s locations where they have eaten as “Ale Houses” and to their local
location as “the Ale House” and that they only use the term for Miller’s
restaurants. Neither, though, stated that he had ever even visited Miller’s Ale
16 Case: 10-15140 Date Filed: 12/20/2012 Page: 17 of 31
House or Carolina Ale House in Boynton Beach.9 In fact, these customers appear
to reside in an area in which Miller’s is the only user of the term “ale house,”
which renders their statements not inconsistent with generic use of the term “ale
house.”10
Miller’s also presented employee statements that customers routinely
confuse the two restaurants. Such evidence is irrelevant to our inquiry. The
prominent use of a generic term by two competitors may understandably confuse
consumers; however, this does not make the term any less generic. See Gift of
Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 801 (11th Cir. 2003)
(“[C]onfusion . . . is irrelevant unless the mark is protectible in the first instance.”);
Boston Duck Tours, 531 F.3d at 21 (“[T]rademark law . . . is not intended to
prevent confusion between two similar, generic marks.”).
Finally, the fact that Miller’s expanded its locations and spent more
advertising provides little to no indication of public perception, because it has no
bearing on how that expansion and advertising was received. See Abercrombie,
9 Between them, the two mention explicitly the Ft. Lauderdale Ale House, the Davie Ale House, the Hollywood Ale House, and the Boca Ale House. 10 If, for example, Boynton Garden Shop is the only local user of this seemingly generic phrase, residents might well only use the words “the garden shop” in reference to it. This fact should not inhibit a competitor from opening a “Carolina Garden Shop.” 17 Case: 10-15140 Date Filed: 12/20/2012 Page: 18 of 31
537 F.2d at 9 (stating that advertising may not remove a generic term from the
public domain).
Miller’s evidence fails to indicate any change at all in the public perception
of the term “ale house,” and the uncontested fact that restaurants and bars
unaffiliated with either party use the term “ale house” points in the opposite
direction. See Boston Duck Tours, 531 F.3d at 19 (stating that generic use by third
parties is evidence that the term is generic).
In the absence of any indication of differentiating facts materially relevant to
our inquiry, see CSX Transp., 327 F.3d at 1317, we agree with the District Court
that Miller’s is bound by the Fourth Circuit’s decision. Miller’s still has “no
protectable interest in the words ‘ale house’ [because] [t]hey are generic words for
a facility that serves beer and ale, with or without food.” Ale House Mgmt., 205
F.3d at 141. Because a generic name may not receive trademark protection, the
District Court properly granted summary judgment on Miller’s trademark
infringement claim.
IV.
We now turn to Miller’s claim that Boynton Carolina infringed on its
unregistered trade dress in violation of Section 43(a) of the Lanham Act, 15 U.S.C.
18 Case: 10-15140 Date Filed: 12/20/2012 Page: 19 of 31
§ 1125(a) (2006).11 “The term ‘trade dress’ refers to the appearance of a product
when that appearance is used to identify the producer.” Dippin’ Dots, Inc. v.
Frosty Bites Distribution, LLC, 369 F.3d 1197, 1202 (11th Cir. 2004) (quoting
Publ’ns Int’l, Ltd. v. Landoll, Inc., 164 F.3d 337, 338 (7th Cir. 1998)). “Trade
dress is a complex composite of features and the law of unfair competition in
respect to trade dress requires that all of the features be considered together, not
separately.” Am. Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1141
(3d Cir. 1986) (quoting SK & F, Co. v. Premo Pharm. Labs., 481 F. Supp. 1184,
1187 (D.N.J. 1979)) (internal quotation marks omitted). The features “may include
. . . size, shape, color or color combinations, texture, graphics, or even particular
sales techniques.” AmBrit, Inc. v. Kraft Inc., 812 F.2d 1531, 1535 (11th Cir. 1986)
(quoting John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir.
1983)).
To bring a successful trade dress infringement claim under the Lanham Act,
a plaintiff must prove that (1) the defendant’s product is confusingly similar to its
11 While the text of Section 43(a)(1) does not include the term “trade dress,” see note 5 supra, trade dress “constitutes a ‘symbol’ or ‘device’ for purposes of [Section 43(a)(1)].” Wal- Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209, 120 S. Ct. 1339, 1342, 146 L. Ed. 2d 182 (2000); see 15 U.S.C. § 1125(a)(1). “This reading of . . . § 43(a) is buttressed by . . . § 43(a)(3), which refers specifically to ‘civil action[s] for trade dress infringement under this [Act] for trade dress not registered on the principal register.’” Id. (citing 15 U.S.C. § 1125(a)(3)). 19 Case: 10-15140 Date Filed: 12/20/2012 Page: 20 of 31
product; (2) the similar features of the two products are primarily non-functional; 12
and (3) the plaintiff’s product is distinctive. Dippin’ Dots, 369 F.3d at 1202. The
District Court held that Miller’s did not meet its burden of demonstrating the
“appropriated” elements to be distinctive and, as a result, granted summary
judgment against Miller’s on its trade dress claim without addressing whether the
products are confusingly similar or whether the common features are primarily
non-functional. See Dippin’ Dots, 369 F.3d at 1202 (“[A]s all three elements are
necessary for a finding of trade dress infringement, any one could be characterized
as threshold.”) (quoting Epic Metals Corp. v. Souliere, 99 F.3d 1034, 1039 (11th
Cir. 1996)) (internal quotation marks omitted). We agree with the District Court’s
assessment that Miller’s has not shown its trade dress to be distinctive, an essential
element of its trade dress claim.
Although the text of Section 43(a) does not “explicitly require[] a producer
to show that its trade dress is distinctive, . . . courts have universally imposed that
requirement, since without distinctiveness the trade dress would not ‘cause
confusion . . . as to the origin, sponsorship, or approval of [the] goods.’” Wal-Mart
Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 120 S. Ct. 1339, 1343, 146
12 The parties disagree as to whether summary judgment was appropriate on the ground that Miller’s failed to present any evidence to demonstrate the non-functionality of its trade dress. Appellee Br. 30; Reply Br. 23–24. Because we dispose of this case based solely on the distinctiveness prong of the infringement test, we see no need to address the issue. 20 Case: 10-15140 Date Filed: 12/20/2012 Page: 21 of 31
L. Ed. 2d 182 (2000). Trade dress may become distinctive in two ways. Some
trade dress, “because [its] intrinsic nature serves to identify a particular source of a
product, [is] deemed inherently distinctive.” Two Pesos, 505 U.S. at 768, 112
S. Ct. at 2757. Other trade dress, though not inherently distinctive, can become
distinctive if it acquires “secondary meaning, which occurs when, in the minds of
the public, the primary significance of [trade dress] is to identify the source of the
product rather than the product itself.” Wal-Mart, 529 U.S. at 211, 120 S. Ct. at
1343 (internal quotation marks omitted). Miller’s does not contest the District
Court’s conclusion that it presented no evidence to show that its trade dress, as
distinct from its mark, has acquired secondary meaning and consequently that it
failed to raise a genuine issue of material fact as to secondary meaning. We
therefore limit our inquiry to the question of whether Miller’s trade dress is
inherently distinctive.
Prior to the Supreme Court’s holding in Wal-Mart, we used the Federal
Circuit’s Seabrook test to determine whether or not trade dress could be considered
inherently distinctive. 13 See Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d
13 We have used the Abercrombie word-spectrum test, see Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976), after applying the Seabrook test to support a district court’s finding under the Seabrook test, see AmBrit, Inc. v. Kraft Inc., 812 F.2d 1531, 1537 (11th Cir. 1986), but never as the sole tool of analysis for the inherent distinctiveness of trade dress. As Thomas McCarthy has written: “The Abercrombie spectrum was developed 21 Case: 10-15140 Date Filed: 12/20/2012 Page: 22 of 31
854 (11th Cir. 1983) (initially adopting test); Seabrook Foods, Inc. v. Bar-Well
Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977). See also University of Florida v.
KPB, Inc., 89 F.3d 773, 776 n.5 (11th Cir. 1996) (reciting test); AmBrit, 812 F.2d
at 1537 (using test to find inherent distinctiveness in Klondike ice cream
wrappers). Under that test, we must consider “whether it is a ‘common’ basic
shape or design, whether it is unique or unusual in a particular field, and whether it
is a mere refinement of a commonly-adopted and well-known form of
ornamentation for a particular class of goods viewed by the public as a dress or
ornamentation for the goods.” Brooks Shoe, 716 F.2d at 858 (quoting Seabrook,
568 F.2d at 1344) (internal alterations omitted).
In the course of holding in Wal-Mart that product designs can never be
inherently distinctive, the Court questioned the test’s utility in cases involving
product design. 529 U.S. at 213–14, 120 S. Ct. at 1345 (“Respondent and the
United States as amicus curiae urge us to adopt for product design relevant
specifically for word marks and does not translate into the world of shapes and designs.” 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 8:13. Nonetheless, Miller’s argues that we should use the Abercrombie test and cites the Supreme Court’s holding in Two Pesos for support. Though the Court in Two Pesos does analyze Taco Cabana’s claim using the Abercrombie test, it notes that it does so because “the [Fifth Circuit] followed this classification and petitioner accepts it.” 505 U.S. at 768, 112 S. Ct. at 2757. In Wal-Mart, however, the Court refers to the test as applying “[i]n the context of word marks” and, later, as a “test developed for word marks.” 529 U.S. at 210, 212, 120 S. Ct. at 1344. We do not take the Supreme Court to have endorsed the Abercrombie test for trade dress claims. 22 Case: 10-15140 Date Filed: 12/20/2012 Page: 23 of 31
portions of the [Seabrook test] . . . . Such a test would rarely provide the basis for
summary disposition of an anticompetitive strike suit.”)
The Court said nothing, however, about the ongoing utility of the test to
determine whether or not trade dress might be “inherently distinctive.” See In re
Chippendales USA, Inc., 622 F.3d 1346, 1357–58 (Fed. Cir. 2010) (“Nothing in
the Wal-Mart decision questioned or undermined the reasoning in Seabrook.
Indeed, the Court cited Seabrook but did not express any disagreement with its use
to determine the inherent distinctiveness of trade dress . . . . Under these
circumstances, the panel is bound by Seabrook, and only the court en banc may
overturn it.”); 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair
Competition § 8:13 (4th ed. 2012) (discussing and endorsing the Federal Circuit’s
retention of the Seabrook test and our use of that test). This being the case, we
follow our precedent and, like the District Court, apply the Seabrook test as
articulated in Brooks Shoe to determine whether Miller’s trade dress is inherently
distinctive.
Miller’s argues that the “proper inquiry” under the Lanham Act is not
“whether or not other restaurants shared one or more of these elements, but
whether other restaurants featured this combination of elements.” Appellant’s Br.
27. It contends that the “composite commercial impression” created by its
“interior and layout, the prominent use of the ALE HOUSE logos throughout the 23 Case: 10-15140 Date Filed: 12/20/2012 Page: 24 of 31
restaurants, menu design and placement, method of service, and uniforms is unique
and distinctive” and thus entitled to protection as trade dress. Id. at 29. We
disagree.
We find nothing particularly unique in a restaurant fixing its name in red
letters on the outside of its building and on its menu, branding items it sells with
that name, dressing its staff in khakis and a polo shirt, featuring a center bar with a
soffit, offering seating at “high-top” tables, and paneling its walls with wood.
These are the prototypical features—what we might call the “common . . . design,”
Brooks Shoe, 716 F.2d at 858—of a standard sports bar or brew pub. The
particular name affixed on the wall and to menu items, the specific color of the
polo shirts, the type of wood on the walls, the placement of the “high-top” tables,
and the openness of the kitchen,14 “even if they in combination could be deemed
unique,” Wiley v. American Greetings Corp., 762 F.2d 139, 142 (1st Cir. 1985),
are all “mere refinement[s]” of this “commonly-adopted and well-known form of
ornamentation,” Brooks Shoe, 716 F.2d at 858. See Chippendales, 622 F.3d at
1356 (finding Chippendales’s “Cuffs & Collar” costume to be a “mere refinement”
of the “pervasive Playboy mark, which includes the cuffs and collar together with
14 The record does not clearly indicate whether or not all of these elements are present at most Miller’s locations. We reasonably infer in Miller’s favor that they are. See Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 1201 n.3 (11th Cir. 2004). 24 Case: 10-15140 Date Filed: 12/20/2012 Page: 25 of 31
bunny ears”); Wiley, 762 F.2d at 142 (finding a red heart permanently affixed to
the left breast of a teddy bear to be a refinement of others’ uses of hearts on other
stuffed animals).
In short, we cannot here find that “the design, shape or combination of
elements is so unique, unusual or unexpected in this market that [we] can assume
without proof that it will automatically be perceived by customers as an indicator
of origin—a trademark.” 1 McCarthy, supra, § 8:13. As Miller’s has failed to raise
a genuine question of material fact as to the essential element of distinctiveness,
then, see Dippin’ Dots, 369 F.3d at 1202, we cannot find its restaurant interiors to
be protectable trade dress.
V.
Finally, Miller’s contends that the floor plan of the Boynton Carolina
restaurant infringed upon its copyright in Ale House Floor Plan Five, one of its five
copyrighted floor plans.15
The copyright protection of 17 U.S.C. § 102 (2012) extends to “architectural
works,”16 including “interior architecture,” H.R. Rep. No. 101-735, at 18 (1990),
15 Differences between Miller’s various plans include differences in the size, entrance location, restroom location, seating quantity/arrangement, and pool table quantity/arrangement. For example, Ale House Floor Plan Two has four pool tables and an arcade section in the bottom right corner, some booth seating to the right of the bar, and three columns of high-top tables. In contrast, Ale House Floor Plan Five (“Floor Plan Five”) has two pool tables placed between two columns of high-top seating and no booth seating to the right of the bar. 25 Case: 10-15140 Date Filed: 12/20/2012 Page: 26 of 31
reprinted in 1990 U.S.C.C.A.N. 6935, 6949. To establish copyright infringement,
a plaintiff must prove: “(1) ownership of a valid copyright, and (2) copying of
[protectable] elements.” Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d
1218, 1223 (11th Cir. 2008) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340, 361, 111 S. Ct. 1282, 1296, 113 L. Ed. 2d 358 (1991)). The parties
do not dispute the validity of Miller’s copyright in Floor Plan Five. Though
Miller’s did not introduce direct evidence of copying, a “plaintiff may show
copying by demonstrating that the defendants had access to the copyrighted work
and that the [protectable elements of the] works are ‘substantially similar.’” Id.
(quoting Herzog v. Castle Rock Entm’t, 193 F.3d 1241, 1248 (11th Cir. 1999)).17
Though disposing of a case at the summary judgment stage is inappropriate
in certain kinds of copyright infringement cases, we have approved of such
16 Section 102 states, in pertinent part:
(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:
(8) architectural works. 17 The District Court, finding that the two floor plans were not substantially similar as a matter of law, did not address the issue of Boynton Carolina’s access to Floor Plan Five. We agree and therefore do the same. 26 Case: 10-15140 Date Filed: 12/20/2012 Page: 27 of 31
treatment where the “crucial issue” is substantial similarity. Intervest Constr., Inc.
v. Canterbury Estate Homes, Inc. 554 F.3d 914, 920 (11th Cir. 2008). This is
because “the ability to separate protectable expression from non-protectable
expression is, in reality, a question of law or, at the very least, a mixed question of
law and fact.” Id.
“[I]n an action for infringement, it must be determined both whether the
similarities between the works are substantial from the point of view of the lay
[observer] and whether those similarities involve copyrightable material.” Oravec,
527 F.3d at 1224 (quoting Herzog, 193 F.3d at 1248). We can summarize this in
“a single inquiry: whether a reasonable jury could find the competing designs
substantially similar at the level of protected expression.” Id. at 1224 n.5 (citing
Beal v. Paramount Pictures Corp., 20 F.3d 454, 459 n.4 (11th Cir. 1994))
(disapproving of the two-part test used in Herzog). See also Intervest, 554 F.3d at
921 (finding that, “[a]t the level of protected expression, the differences between
the designs are so significant that no reasonable, properly instructed jury could find
the works substantially similar”).
27 Case: 10-15140 Date Filed: 12/20/2012 Page: 28 of 31
In identifying the protected elements of a plaintiff’s architectural work, we
begin by examining the statutory definition: 18
An “architectural work” is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.
17 U.S.C. § 101. Though “individual standard features” 19 are not protectable (a
“grant of exclusive rights in such features . . . imped[ing], rather than promot[ing],
the progress of architectural innovation,” H.R. Rep. No. 101-735, at 18), “the
arrangement and coordination” of such features may be. Intervest, 554 F.3d at 919
(emphasis in original). See also Oravec, 527 F.3d at 1225. This reflects
Congress’s recognition that “creativity in architecture frequently takes the form of
a selection, coordination, or arrangement of unprotectible [sic] elements into an
original, protectible [sic] whole.” H.R. Rep. No. 101-735, at 18 (quoted in
18 There are additional limitations in copyright law which may complement the statutory definition. Notably, “copyright protection does not extend to ideas but only to particular expressions of ideas. Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218, 1224 (11th Cir. 2008) (citing 17 U.S.C. § 102(b)). In addition, “copyright protection may extend only to those components of a work that are original to the author.” Intervest Constr., Inc. v. Canterbury Estate Homes, Inc. 554 F.3d 914, 919 n.2 (11th Cir. 2008) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 348, 111 S. Ct. 1282, 1289, 113 L. Ed. 2d 358 (1991)). Because we conclude that substantial similarity does not exist under the statutory definition, we need not discuss the originality requirement and idea/expression dichotomy. 19 In this case, the alleged common features—a rectangular bar, booth seating, “high- top” tables—are standard for a sports bar or restaurant and, as such, as not protectable. 28 Case: 10-15140 Date Filed: 12/20/2012 Page: 29 of 31
Intervest, 554 F.3d at 919). In this case, Miller’s alleged that Boynton Carolina
copied its arrangement of several common features: a rectangular bar at the center
of the restaurant, booth seating to the left of the bar, high-top tables to the right of
the bar, a kitchen and freezer area in back-right, and restrooms in the back-left.
The District Court granted summary judgment after concluding that no
reasonable jury, limiting its consideration to the arrangement of standard features,
could find Boynton Carolina’s floor plan substantially similar to Miller’s Floor
Plan Five. We agree.
We have previously stated that copyright protection for an architectural
work is “thin.” See Intervest, 554 F.3d at 919 & n.3 (noting that “the definition of
an architectural work closely parallels that of a ‘compilation’” and that “copyright
protection in a compilation is ‘thin’” (quoting Feist, 499 U.S. at 349, 111 S. Ct. at
1289)). Substantial similarity exists only “where an average lay observer would
recognize the alleged copy as having been appropriated from the [protectable
features of the] copyrighted work.” Oravec, 527 F.3d at 1224 (quoting Original
Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 (11th Cir. 1982)).
In light of the limited scope of protectable expression in an architectural plan, we
held in Howard v. Sterchi that “modest dissimilarities are more significant than
they may be in other types of art works.” 974 F.2d 1272, 1276 (11th Cir. 1992). 29 Case: 10-15140 Date Filed: 12/20/2012 Page: 30 of 31
Because there are only a limited number of ways to turn a rectangular
building into a sports bar and restaurant, “similarities in the general layout of
rooms can easily occur innocently.” Id. Juries recognize this fact when
determining whether an alleged copy was “appropriated from the copyrighted
work.” Oravec, 527 F.3d at 1224 (quoting Original Appalachian Artworks, Inc.,
684 F.2d at 829). Consequently, differences between the Boynton Carolina floor
plan and Miller’s Floor Plan Five would weigh heavily against a finding of
substantial similarity. See id. at 1227 (“These differences, as well as others,
preclude a finding of substantial similarity.”).
After an examination of the respective floor plans, we agree with the District
Court “that the differences here are dramatic and overwhelming, and that the
similarities between [Boynton Carolina’s] layout and Miller’s floor plan exist only
at the broad conceptual level.” Miller’s Ale House, Inc. v. Boynton Carolina Ale
House, LLC, 745 F. Supp. 2d 1359, 1379 (S.D. Fla. 2010). As the court stated:
Although both plans contain centrally located bars, for instance, the bars are in different locations relative to each restaurant’s entryway; Miller’s central bar is on the right while [Boynton Carolina’s] is slightly to the left. Much of the interior seating is markedly dissimilar; Miller’s has several columns of booth seating to the left of the entryway while [Boynton Carolina] interposes a single column of tables between its booths. [Boynton Carolina] has divided its bathroom entrances from the dining area with a solid wall and Miller’s has not. The arrangement of the pool tables and video games inside each restaurant is distinct; Miller’s places its pool tables in a column between its tables, while [Boynton Carolina] separates its pool tables from the diners and lines its video games along a wall. The outdoor areas are dramatically 30 Case: 10-15140 Date Filed: 12/20/2012 Page: 31 of 31
different; [Boynton Carolina] has a separate outside corner bar and outside seating that hugs the corner of the building, and Miller’s floor plan does not specify any outdoor seating at all.
Id.
While not disputing the accuracy of these differences, Miller’s characterizes
them as “minor.” Our recent copyright decisions involving architectural works
indicate otherwise. Compared to the similarities between the two floor plans, the
differences between them are at least as significant as those described in Intervest
and Oravec. Thus we conclude that “[a]t the level of protectable expression, the
differences between the designs are so significant that no reasonable, properly
instructed jury could find the works substantially similar.” Intervest, 554 F.3d at
921 (quoting Oravec, 527 F.3d at 1227)).
For the foregoing reasons, the judgment of the District Court is AFFIRMED.