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May 19, 2017

Trade Dress Infringement Served Straight Up, with a Twist

Dan Aykroyd, the actor famous for his roles in The Blues Brothers and Ghostbusters, recently found himself involved in a different sort of second act – a trade dress infringement lawsuit over his brand of Crystal Head Vodka. Mr. Aykroyd’s vodka, somewhat unsurprisingly, comes packaged in a bottle shaped like a skull.

Trade dress refers to distinctive characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers.

“[T]rade dress may be protected if it is nonfunctional and has acquired secondary meaning and if its imitation creates a likelihood of consumer confusion.” Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 842. (9th Cir.1987), cited with approval in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769-70, 773-74, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).

“Plaintiff bears the burden of proving three elements of its trade dress infringement claim: (1) non-functionality; (2) secondarymeaning; and (3) likelihood of confusion.” Glob. Mfg. Grp.,LLC v. Gadget Universe.Com, 417 F. Supp. 2d 1161, 1165 (S.D. Cal. 2006) (citing Disc Golf Ass’n, Inc. v. Champion Discs, Inc.,158 F.3d 1002, 1005 (9th Cir. 1998).

Here, Mr. Aykroyd’s company, Globefill, Inc., discovered that a tequila company – Elements Spirits Inc. and its founder Kim Brandi – had begun packaging their own liquor in skull-shaped bottles. Mr. Aykroyd’s company then initiated a lawsuit for trade dress infringement.

Similar to other recent intellectual property decisions in Los Angeles, such as the recent, highly-publicized music copyright disputes between Marvin Gaye and Robin Thicke, or against Led Zepplin, the dispute went all the way through a jury trial.

This time, the Plaintiff won through a unanimous verdict. The jury found that Elements’ KAH branded tequila, which comes in a “Day of the Dead-inspired skull-shaped bottle,” was likely to confuse ordinary consumers into thinking it was made by, or affiliated with, Crystal Head, and had been purposefully designed that way.

In a highly dramatic twist of fate, Globefill was able to, in the middle of trial, locate a local tattoo artist and occasional sculptor Walter “Buddy” Szymoniak, who was then able to directly refute Ms. Brandi’s testimony about the creation of the skull.

Mr. Szymoniak testified that he met Ms. Brandi in 2009, who told him she was trying to launch a tequila that would be contained in bottles that resembled Mexican Day of the Dead sugar skulls. Szymoniak said that he told Brandi he had experience with sculpting, casting and molding, and he was then hired to help her improve on her first clay prototype.

Mr. Szymoniak went on to testify that Ms. Brandi did not like her original prototype, and when she approached him to redesign the bottle, Ms. Brandi actually gave him one of Crystal Head’s glass skull-shaped bottles for him to make a cast.

In the world of trademark litigation, this is as close to “smoking gun” testimony to show purposeful infringement as one could ever find.

It remains as a cautionary tale for all companies – never use another company’s logo or other trade dress to create your own, and always verify the provenance of any design before shifting to mass production.

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