Studio 1712, Inc. v. Etna Products Co.

777 F. Supp. 844, 22 U.S.P.Q. 2d (BNA) 1280, 1991 U.S. Dist. LEXIS 16251, 1991 WL 235303
CourtDistrict Court, D. Colorado
DecidedNovember 6, 1991
DocketNo. 90-C-1985
StatusPublished
Cited by3 cases

This text of 777 F. Supp. 844 (Studio 1712, Inc. v. Etna Products Co.) is published on Counsel Stack Legal Research, covering District Court, D. Colorado primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Studio 1712, Inc. v. Etna Products Co., 777 F. Supp. 844, 22 U.S.P.Q. 2d (BNA) 1280, 1991 U.S. Dist. LEXIS 16251, 1991 WL 235303 (D. Colo. 1991).

Opinion

FINDINGS OF FACT, CONCLUSIONS OF LAW AND ORDER

CARRIGAN, District Judge.

Plaintiff Studio 1712, Inc. (Studio 1712) commenced this action asserting, inter alia, trade dress infringement under the Lanham Act, 15 U.S.C. § 1125(a). Defendants are Etna Products Co., Inc. (Etna), Harriet Carter Gifts, Inc. (Harriet Carter) and Hanover House Industries, Inc. (Hanover House). Currently pending is the plaintiff’s motion for preliminary injunction pursuant to Fed.R.Civ.P. 65(a). Defendants have responded by opposing the motion. Jurisdiction exists under 28 U.S.C. § 1331.

Plaintiff asserts that the defendants have infringed the trade dress of its product, the Bangle-Hangall, a wall-mounted jewelry organizer. Etna imports and sells a similar, wall-mounted jewelry organizer known as the “Jewelry Hang-All” that is distributed by Harriet Carter and Hanover House. Plaintiff seeks a preliminary injunction prohibiting the defendants from selling the Jewelry Hang-All, and requiring the defendants to notify purchasers of the product that further sales are prohibited until a trial on the merits.

The parties have fully briefed the issues, and an evidentiary hearing has been held. This memorandum constitutes my findings of fact, conclusions of law and order as required by Fed.R.Civ.P. 52(a).

I. Findings of Fact.

Studio 1712 is a Colorado corporation founded in 1988. Its sole product is the “Bangle-Hangall.” Etna is a New Jersey corporation whose business is importing and selling, to mail order companies and wholesalers, novelty and gift items. Harriet Carter and Hanover House are Pennsylvania corporations engaged in selling novelty and gift items through catalogs that they publish and distribute nationally.

Studio 1712 was founded by its current president Cherl A. Meyer. A graphic designer prior to forming that company, Meyer originated the idea of a wall-mounted jewelry organizer. She employed several engineers and a plastic mold expert to assist her in developing the Bangle-Hangall.

After constructing a working prototype of her product, Meyer solicited funds from several friends to finance production. Each investor receives royalty payments at regular intervals. Royalties are calculated as percentages of customer payments for final sales.

[848]*848The Bangle-Hangall is made of transparent, purple-tinted plastic and consists of a head piece and three storage trays in which removable dividers may be inserted to create a maximum of thirty-six compartments for storing jewelry. Attached at the product’s bottom is a single row of nine rounded pegs for hanging necklaces and similar items.

The Bangle-Hangall’s headpiece measures two and one-half inches wide by nine and one-half inches in length. It has inlaid designs on both ends, rounded corners with a double rounded arch on one end, and two holes through which screws may be inserted to affix the device to a wall.

The storage trays and the row of pegs, whose dimensions by necessity are similar to that of the head piece, are attached to one another by means of a design that allows each to rotate slightly. The product, as sold, contains three storage trays, but its design allows additional trays to be attached.

Plaintiff began marketing and selling its product in 1988. Because of financial constraints, free publicity was a source of early advertising. At times, the plaintiff also has purchased magazine and newspaper advertising.

Studio 1712’s initial marketing strategy included attempting to sell the Bangle-Hangall through mail-order catalogs. Janice Brady, a certified public accountant who was responsible for Studio 1712’s marketing and accounting from 1988 until she resigned in early 1990, maintained “contact sheets” that detailed the history of that marketing effort with various catalog houses. Brady contacted several major gift catalog houses, including the defendants Harriet Carter and Hanover House.

Prior to 1990, the Bangle-Hangall was marketed nationwide through catalogs distributed by Starcrest and Suarez, both California catalog companies. Drug stores and certain specialty shops also marketed Studio 1712’s product.

Brady first contacted the defendant Harriet Carter in 1988. At Harriet Carter’s request, Brady sent the company a sample of the Bangle-Hangall on March 27, 1989. (Plaintiff’s Ex. 35).

Brady first contacted the defendant Hanover House in February 1989. John Diers, Hanover House’s vice-president, was Bra-dy’s main contact. At Diers’ request, Bra-dy sent a sample of the Bangle-Hangall to him on March 28,1989. (Plaintiff’s Ex. 36). She responded to his request for further merchandise information the following month. Id.

In early 1990, Diers contacted Jeffery Snyder, an Etna executive, inquiring whether a product similar to the Bangle-Hangall could be produced, and requesting that one be produced for future sale in the Hanover House catalog. Diers provided Etna a picture of the Bangle-Hangall that Etna forwarded to a Hong Kong manufacturing company. Etna has conceded that, other than Studio 1712’s and its own products, it is aware of no other clear plastic, wall-mounted jewelry organizer.

The Hong Kong company assured Etna that it could produce an item similar to the Bangle-Hangall. Testimony at the hearing established that Etna’s Hong Kong manufacturer used the Bangle-Hangall as a model for designing the Jewelry Hang-All.

Etna began importing and selling the Jewelry Hang-All in 1990. In product orders sent to the Hong Kong manufacturer, Etna has referred to the item ordered as the “Bangle Jewelry Organizer.” Etna sells the Jewelry Hang-All primarily through catalog sales companies, including Harriet Carter and Hanover House.

The Jewelry Hang-All is made of transparent plastic and consists of a head piece and three storage trays in which removable dividers may be inserted to create a maximum of thirty-six compartments for storing jewelry. Attached at the product’s bottom is single row of nine pegs for hanging necklaces and similar items.

The Jewelry Hang-All’s headpiece measures roughly two and one-half inches wide by nine and one-half inches in length. It has inlaid designs and double rounded arches on both ends. Two holes are provided so that screws may be inserted to affix the device to a wall.

[849]*849The storage trays and the row of pegs, whose dimensions by necessity are similar to that of the head piece, are attached solidly to the headpiece. The product, as sold, contains three storage trays. Its design prohibits appending additional trays.

Plaintiff first became aware of the Jewelry Hang-All in the summer of 1990 when Meyer’s friend, Carol Fregg, who had seen Etna’s product in a catalog, telephoned Meyer to inquire whether the Jewelry Hang-All was, in fact, the Bangle-Hangall.

Testimony and documents submitted at the hearing establish that Studio 1712, whose income derives exclusively from sales of the Bangle-Hangall, was a profitable company from shortly after its inception until 1990.

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Related

Studio 1712, Inc. v. Etna Products Co., Inc.
968 F.2d 10 (Tenth Circuit, 1992)
Studio 1712, Inc. v. Etna Products Co.
968 F.2d 10 (Tenth Circuit, 1992)

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777 F. Supp. 844, 22 U.S.P.Q. 2d (BNA) 1280, 1991 U.S. Dist. LEXIS 16251, 1991 WL 235303, Counsel Stack Legal Research, https://law.counselstack.com/opinion/studio-1712-inc-v-etna-products-co-cod-1991.