Miller's Ale House, Inc. v. Boynton Carolina Ale House, Inc.
105 U.S.P.Q. 2d (BNA) 1345, 702 F.3d 1312, 2012 U.S. App. LEXIS 26049 (2012)
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Rule of Law:
A prior judicial determination that a term is generic will preclude a subsequent trademark infringement claim under the doctrine of issue preclusion unless there is evidence of a radical change in public perception. Additionally, a combination of common, functional, and decorative elements in a restaurant's design is not inherently distinctive and thus is not protectable trade dress without proof of secondary meaning.
Facts:
- Starting in 1988, Miller’s Ale House, Inc. ('Miller’s') expanded to approximately fifty restaurant/sports bar locations, primarily in Florida.
- Each Miller’s location uses a geographic prefix followed by the term 'Ale House' (e.g., 'Boynton Ale House').
- Miller's restaurants share a common decor, including wood-paneled walls, a centrally located bar topped with a soffit, high-top tables, an exposed kitchen, and staff uniforms of dark polo shirts and khakis.
- In 1998, Miller's predecessor in interest copyrighted five different floor plans used in its various locations.
- LM Restaurants, Inc. created the 'Carolina Ale House' brand in 1998.
- In 2008, Boynton Carolina Ale House, LLC ('Boynton Carolina'), a licensee of LM Restaurants, began preparations to open a restaurant in Boynton Beach, Florida.
- Boynton Carolina's planned location was on the same street and just over a mile from an existing Miller's 'Boynton Ale House'.
- During its renovation of a former Tony Roma's restaurant, Boynton Carolina incorporated many design features similar to Miller's, such as dock wood walls, a central bar, high-top tables, an exposed kitchen, and using the color red for its name.
Procedural Posture:
- Miller’s Ale House, Inc. ('Miller’s') filed a lawsuit against Boynton Carolina Ale House, LLC ('Boynton Carolina') in the U.S. District Court for the Southern District of Florida.
- The complaint alleged federal claims for trademark infringement, trade dress infringement, and copyright infringement.
- Boynton Carolina moved for summary judgment on all claims.
- The District Court granted summary judgment in favor of Boynton Carolina on all federal claims, finding the trademark claim was barred by issue preclusion, the trade dress was not distinctive, and the floor plans were not substantially similar.
- Miller’s, the appellant, appealed the District Court's grant of summary judgment to the U.S. Court of Appeals for the Eleventh Circuit, where Boynton Carolina was the appellee.
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Issue:
Does a restaurant's use of the name 'Carolina Ale House,' along with an interior design and floor plan similar to an existing competitor's, infringe upon the competitor's common law trademark in the term 'ale house,' its trade dress rights in its restaurant decor, and its copyright in its architectural floor plan?
Opinions:
Majority - Tjoflat
No, the restaurant's similar name, decor, and floor plan do not infringe upon the competitor's intellectual property rights. For the trademark claim, the court held that issue preclusion bars Miller's claim because a prior Fourth Circuit decision determined that 'ale house' is a generic term. Miller's failed to present evidence of a significant intervening change in public perception that would overcome the preclusive effect of the prior judgment. For the trade dress claim, the court found Miller's restaurant decor is not inherently distinctive because its combination of elements—wood paneling, a central bar, staff uniforms, etc.—are prototypical features of a standard sports bar and merely a 'refinement of a commonly-adopted and well-known form of ornamentation.' As Miller's presented no evidence of secondary meaning, the trade dress is not protectable. Finally, for the copyright claim, the court concluded that the two floor plans are not substantially similar because copyright protection for architectural works is 'thin' and the numerous differences in the arrangement of spaces and features between the two plans are 'dramatic and overwhelming,' precluding a finding of infringement as a matter of law.
Analysis:
This decision reinforces the high bar for protecting common or generic elements in intellectual property law. It solidifies the principle that a judicial finding of genericness is difficult to overcome in subsequent litigation, requiring a party to show a 'radical' shift in public perception, not just increased advertising or expansion. The case also clarifies that simply combining a series of common, unprotectable design elements does not automatically create an inherently distinctive and protectable trade dress; the overall impression must be unique or unusual, not just a familiar theme. Finally, it underscores the 'thin' scope of copyright protection for architectural works, emphasizing that modest dissimilarities in layout are legally significant and can defeat a claim of substantial similarity, thereby preserving the ability to use standard functional designs.
