Laureyssens v. Idea Group, Inc.
22 U.S.P.Q. 2d (BNA) 1811, 1992 U.S. App. LEXIS 10643, 964 F.2d 131 (1992)
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Rule of Law:
A product's trade dress that is not inherently distinctive is protected under the Lanham Act only after it has acquired secondary meaning in the minds of the public; the doctrine of 'secondary meaning in the making' is not a valid basis for a claim. Copyright infringement requires proof of both actual copying and improper appropriation, with the latter determined by whether substantial similarity exists between the protectible elements of the two works.
Facts:
- Dirk Laureyssens designed a series of six-piece foam rubber puzzles, marketed as HAPPY CUBE, which could be assembled into a flat rectangle or a three-dimensional cube.
- The pieces of the HAPPY CUBE puzzles featured edges with five 'notch-widths' to a side.
- Laureyssens began marketing the puzzles in the United States in 1988, packaged in clear shrink-wrap with a cardboard insert.
- At the 1990 American International Toy Fair, Laureyssens discovered that Idea Group, Inc. was marketing identical puzzles under the name SNAFOOZ.
- After Laureyssens sent a cease and desist letter, Idea Group admitted its puzzle was copied and could not be marketed without permission.
- After negotiations to license the puzzle to Idea Group failed, Idea Group hired a graduate student to develop its own version of a flat-to-cube puzzle.
- The student designed a new set of SNAFOOZ puzzles utilizing pieces whose edges were six notch-widths in length, rather than five.
- Idea Group began marketing its new six-notch-width SNAFOOZ puzzles in packaging developed prior to seeing Laureyssens' packaging.
Procedural Posture:
- Laureyssens filed suit against Idea Group in the U.S. District Court for the Southern District of New York, alleging trade dress infringement, copyright infringement, and unfair competition.
- Laureyssens moved for a preliminary injunction to stop Idea Group from marketing its SNAFOOZ puzzles.
- The district court granted the preliminary injunction on the trade dress and unfair competition claims but denied the injunction on the copyright infringement claim.
- Idea Group, the defendant, appealed the grant of the trade dress injunction to the U.S. Court of Appeals for the Second Circuit.
- Laureyssens, the plaintiff, cross-appealed the denial of the copyright injunction to the same appellate court.
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Issue:
Does the Lanham Act protect a product's trade dress under the doctrine of 'secondary meaning in the making' when the trade dress has not yet achieved actual secondary meaning with the consuming public?
Opinions:
Majority - Oakes, Chief Judge
No. The Lanham Act does not protect a product's trade dress under the doctrine of 'secondary meaning in the making.' To receive protection for trade dress that is not inherently distinctive, a plaintiff must establish that actual secondary meaning has been achieved. The court rejected the doctrine because the text of the Lanham Act requires a likelihood of confusion as to the 'origin' of goods, which cannot exist if the public does not yet associate the trade dress with a specific source. The secondary meaning requirement ensures that trademark law protects an actual, existing association in the public's mind before limiting a competitor's freedom to copy. The court found that existing legal doctrines, such as using intentional copying as evidence of secondary meaning and state unfair competition laws, provide adequate protection for new products against piracy without needing to adopt this novel theory. The court also affirmed the denial of the copyright infringement injunction, clarifying that infringement requires both 'actual copying' and 'improper appropriation.' While Idea Group had access and there was evidence of actual copying, there was no improper appropriation because the copyright only protects Laureyssens' particular expression (the five-notch-width piece shapes), not the unprotectible idea of a flat-to-cube puzzle. The court concluded that Idea Group's six-notch-width pieces were a 'bona fide redesign' and not substantially similar to Laureyssens' protectible expression.
Analysis:
This decision formally rejects the doctrine of 'secondary meaning in the making' in the Second Circuit, establishing a significant precedent that raises the bar for plaintiffs seeking trade dress protection for new products. By requiring proof of actual secondary meaning, the court reinforced a clear line between nascent and established goodwill, prioritizing the freedom to compete over protecting a product in the early stages of market entry. The court's clarification of the two-step copyright infringement analysis—distinguishing 'probative similarity' for proving the act of copying from 'substantial similarity of protectible elements' for proving appropriation—provides valuable guidance for future cases and helps to resolve a frequently confused aspect of copyright law.
