Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC
741 F.Supp.2d 1165 (2010)
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Rule of Law:
A plaintiff is entitled to a preliminary injunction for trade dress infringement by showing a likelihood of success on the merits, which requires demonstrating that its trade dress is non-functional, distinctive, and that the defendant's similar trade dress creates a likelihood of consumer confusion.
Facts:
- Since 1997, Fiji Water Company (FIJI) has sold natural artesian water from the Republic of Fiji in the United States, investing over $72 million in marketing and promotion.
- FIJI developed a specific product packaging, or trade dress, featuring a square-shaped bottle, a blue cap, a transparent front label, and a back label with tropical imagery visible through the front.
- In 2007, Fiji Mineral Water USA (VITI) produced a bottled water product called 'Vitiblu' which was sold in a round bottle with a different label design.
- In April 2009, VITI began selling 'VITI' brand water in the United States, also sourced from Fiji.
- VITI's new packaging featured a square-shaped bottle, a blue cap, a transparent front label, and a back label with tropical imagery visible through the front, similar to FIJI's design.
- Both FIJI and VITI bottled water products were sold in the same retail channels, including Albertson's grocery stores and ARCO AM/PM convenience stores.
Procedural Posture:
- FIJI filed a lawsuit against VITI in the U.S. District Court for the Central District of California, alleging federal and state claims including trade dress infringement.
- FIJI amended its complaint on two separate occasions.
- FIJI filed a motion for a preliminary injunction seeking to stop VITI from marketing and selling its bottled water in the allegedly infringing packaging during the pendency of the litigation.
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Issue:
Does VITI's bottled water trade dress infringe upon FIJI's trade dress to an extent that warrants a preliminary injunction by demonstrating a likelihood of success on the merits, a likelihood of irreparable harm, a balance of equities in FIJI's favor, and that the injunction is in the public interest?
Opinions:
Majority - Judge Cormac J. Carney
Yes. A preliminary injunction is warranted because FIJI has established a likelihood of success on its trade dress infringement claim and met the other requirements for preliminary relief. To demonstrate a likelihood of success, FIJI successfully showed that its trade dress is protectable and that VITI's product creates a likelihood of consumer confusion. First, the court found FIJI's trade dress is non-functional, as its combination of aesthetic elements, like the three-dimensional label effect and tropical imagery, serves to identify the source rather than being essential to the product's use or cost. Second, the court determined the trade dress is both inherently distinctive, due to its unique combination of elements, and has acquired secondary meaning through extensive sales, advertising, and brand recognition. Finally, the court found a strong likelihood of consumer confusion by applying the eight Sleekcraft factors. The court emphasized the remarkable visual similarity of the bottles, the strength of the FIJI brand, survey evidence showing a 24.3% confusion rate, the products' direct competition in the same marketing channels, the low degree of consumer care for an inexpensive item, and strong circumstantial evidence that VITI intentionally copied the design after previously using a dissimilar bottle for its 'Vitiblu' product. The court also found FIJI would suffer irreparable harm to its goodwill, the balance of hardships favored FIJI, and the public interest is served by preventing consumer confusion.
Analysis:
This case provides a clear framework for analyzing trade dress infringement claims for consumer product packaging, particularly at the preliminary injunction stage. The court's decision emphasizes that the 'total image' and 'overall visual impression' of a trade dress are key, meaning that even if individual elements are functional or common (like a square bottle or blue cap), their unique combination can be protectable. The opinion underscores the significance of strong evidence of intentional copying and consumer survey data in establishing a likelihood of confusion. This ruling serves as a strong precedent for brand owners who have invested heavily in creating distinctive packaging, reinforcing their ability to prevent competitors from using confusingly similar designs that trade on their established goodwill.
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