The opinion
Case: 21-30029 Document: 00516391348 Page: 1 Date Filed: 07/12/2022
United States Court of Appeals
for the Fifth Circuit
United States Court of Appeals
Fifth Circuit
FILED
July 12, 2022
No. 21-30029 Lyle W. Cayce
Clerk
Beatriz Ball, L.L.C.,
Plaintiff—Appellant,
versus
Barbagallo Company, L.L.C., doing business as
Pampa Bay,
Defendant—Appellee.
Appeal from the United States District Court
for the Eastern District of Louisiana
USDC No. 2:18-CV-10214
Before Jones, Haynes, and Costa, Circuit Judges.
Per Curiam:
Beatriz Ball, a maker of popular tableware designs, challenges the
district court’s conclusions that (1) the company lacked standing under the
Copyright Act because the plaintiff did not obtain a valid assignment of its
claim, and (2) it failed to establish a protectible trade dress under the Lanham
Act. We hold that the district court erred in its standing determination and
that certain errors in its analysis of the trade dress claim require
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reconsideration by the district court. Accordingly, we REVERSE and
REMAND the judgment. 1
BACKGROUND
Beatriz Ball, LLC, is a Louisiana company doing business as Beatriz
Ball and Beatriz Ball Collection. Beatriz Ball, the individual, (“Ms. Ball”) is
the company’s owner, founder, and designer. 2 Barbagallo Company, LLC is
a New Jersey company doing business as Pampa Bay. Beatriz Ball alleges that
Pampa Bay has been marketing and distributing products that infringe on
Beatriz Ball’s registered copyrights and its unregistered trade dress for its
“Organic Pearl” line of tableware. Beatriz Ball brought suit against Pampa
Bay in Louisiana federal court, asserting claims for copyright infringement
under the Copyright Act and unfair competition under § 43 of the Lanham
Act.
I. Beatriz Ball and the Organic Pearl Collection
Beatriz Ball as it currently exists is the result of the ingenuity of a
woman who, as a child, fled penniless with her family from communism in
Cuba to Mexico with hope for a better life. In Mexico, Ms. Ball befriended a
family that owned a successful business creating silver designs out of a new
cheaper alloy. The process and concept intrigued her, and she remained
close to the family, learned the trade, and observed the growth of their
business over the years.
Ms. Ball later married and moved to New Orleans, where she started
her own small business buying alternative metal pieces from small foundries
and selling them at home shows and bazaars. When her endeavors met with
1
Judge Haynes concurs in the judgment only.
2
Ms. Ball is not a party to this suit.
2
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success, she decided that she wanted to control production of her products,
so she built her own factory and hired artisans. She began designing her own
pieces, and she developed a unique alloy combination with particular
elements that enhanced the shine so that it looked “as much [like] silver as
possible.” This new control enabled her to expand from direct consumer
sales to business-to-business sales because she could guarantee the quality
and quantity of production.
Today, Beatriz Ball has grown into a very successful company. It
presently has 13 active collections with products made from a variety of
materials, with metalware remaining the bulk of its sales. At issue in the
present dispute is the company’s Organic Pearl collection, which has been on
the market since 2005. It remains one of the company’s most popular
collections. A main feature of this collection is its pearl border, consisting of
handcrafted pearls varying in size and shape, intending to appear
unpredictable and distorted. In addition to the “organic shape and . . . free-
formed pearl,” the collection also incorporates a more reflective design. The
disuniformity in both the pearl border and in the overall shape is one of the
defining characteristics of the Organic Pearl collection. Each piece is
individually produced by hand in Mexico using an ancient sand-mold casting
method that requires a rare set of skills.
Beatriz Ball has registered copyrights protecting four of its Organic
Pearl designs. It also claims that its Organic Pearl line embodies a distinct
trade dress, which is protectible under the Lanham Act. Beatriz Ball
identifies its trade dress in the “Organic Pearl” collection as follows:
[Beatriz Ball] owns trademark rights to the “look and feel”—
i.e., the trade dress—of the “Organic Pearl”
collection . . . . The Organic Pearl trademark applies to
tableware of hand-crafted and artisanal quality, such that each
item in the collection will have individual variation because
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each is poured and polished by hand with each piece having
undulating shape ornamented with rims of individually-formed
clay bead, each intentionally having a slightly irregular shape
and size accentuating their hand-made artisanal quality.
Importantly, Organic Pearl is not a registered trade dress.
II. Pampa Bay
Since 2016, Pampa Bay has been marketing and distributing products
that look strikingly similar to the Organic Pearl designs. While nearly
identical in appearance to many pieces of Organic Pearl tableware, Pampa
Bay products are made with cheaper materials and are sold at lower priced
retail outlets. Because of this, Beatriz Ball alleges that Pampa Bay has
infringed upon its copyright and its unregistered trade dress. It claims that
Pampa Bay’s product lines are “confusingly similar” to Beatriz Ball’s unique
Organic Pearl collection because “Pampa Bay’s products copy the ‘look and
feel’ of Beatriz Ball Organic Pearl trade dress in every attribute.” In the
images reproduced below, Beatriz Ball’s products appear on the left and
Pampa Bay’s products appear on the right.
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III. District Court Proceedings
The district court conducted a three-day bench trial and ultimately
ruled against Beatriz Ball on all of its claims. Regarding the Lanham Act
claims, Judge Vitter found that Beatriz Ball had not met its burden of
establishing that its unregistered trade dress acquired “secondary meaning.”
Since secondary meaning is a prerequisite for protection of an unregistered
trade dress under the Lanham Act, the district court found for Pampa Bay
without reaching the merits of Beatriz Ball’s claim.
Further, the district court held that Beatriz Ball lacked standing to
bring the copyright claims because it lacked a legal interest in causes of action
for the relevant infringements. All four copyrights list “Beatriz Ball
Collection” as the copyright claimant. The day before this lawsuit was filed,
Beatriz Ball Collection assigned ownership of these copyrights to plaintiff
Beatriz Ball, LLC. The language of the assignment is as follows:
Assignment. Assignor [Beatriz Ball and Beatriz Ball
Collection] hereby irrevocably conveys, transfers, and assigns
to Assignee [Beatriz Ball, LLC], and Assignee hereby accepts,
all of Assignor’s right, title and interest in and to any and all
copyrights, whether registered or not and whether or not
applications have been filed with the United States Copyright
Office or any other governmental body. This assignment
expressly includes any and all rights associated with those
copyrights.
The district court judge based her decision solely on the language of this
assignment. She found that, because the assignment did not specifically
transfer the Assignor’s right to causes of action for prior infringements,
plaintiff Beatriz Ball, LLC lacked standing to challenge infringements pre-
dating the assignment. Beneficial ownership of a copyright is a precondition
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to standing. 3 Consequently, the district court did not reach the merits of the
copyright claim. Beatriz Ball timely appealed the take-nothing judgment as
to the Copyright Act and Lanham Act claims.
STANDARD OF REVIEW
The district court’s determination on standing is reviewed de novo.
Three Expo Events, L.L.C. v. City of Dallas, Texas, 907 F.3d 333, 340 (5th Cir.
2018). Following a bench trial, this court reviews findings of fact for clear
error and legal issues de novo. Preston Expl. Co., L.P. v. GSF, L.L.C., 669 F.3d
518, 522 (5th Cir. 2012).
DISCUSSION
I. Standing to Bring Copyright Claims
The Copyright Act provides a cause of action to “[t]he legal or
beneficial owner” of a copyright to vindicate infringements.
17 U.S.C. § 501(b). To prevail on a copyright infringement claim, a plaintiff
must show ownership of a valid copyright; factual copying; and substantial
similarity. Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., 783 F.3d 527,
544 (5th Cir. 2015). Thus, the question regarding standing is simple—if
Appellant owned the copyrights at the time of the alleged infringements or if
Appellant was effectively assigned the rights to vindicate prior infringements,
it has standing to proceed.
The issue of plaintiff’s standing to sue was not raised by Pampa Bay
until closing argument in the trial. Responding to the last-minute argument,
the district court had no factual record on standing but interpreted the
assignment from Beatriz Ball Collection as legally insufficient to confer
standing. We are inclined to disagree with the court’s conclusion. In any
3
17 U.S.C. § 501(b).
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event, there is a more straightforward path to finding that Appellant indeed
had standing through the Copyright Act’s safe harbor for innocent errors on
copyright registrations.
On appeal, Beatriz Ball contends, without dispute, that “Beatriz Ball,
LLC” and “Beatriz Ball Collection” are the same entity, and the assignment
was executed just before suit was filed out of an abundance of caution in the
(vain) hope of eliminating any confusion. We hold, however, that the original
filing was sufficient. The Copyright Act provides that a registration with
“inaccurate information” can support an infringement action if the
misstatements in the application were either (1) unknowing or
(2) immaterial. 17 U.S.C. § 411(b)(1); 4 see One Treasure, Ltd., Inc. v.
Richardson, 202 F.App’x 658, 660 (5th Cir. 2006) (unpublished) (per
curiam); 2 MELVILLE NIMMER, NIMMER ON COPYRIGHT § 7:20 (2021).
The mistakes on Beatriz Ball’s copyright registrations are
quintessential examples of the unknowing errors § 411(b)(1) is meant to
excuse. Nonlawyer employees mistakenly listed the company’s trade
name—instead of its proper corporate designation, Beatriz Ball, LLC—on
the copyright applications. Everything in the record suggests that this was an
innocent, inadvertent error made by workers unfamiliar with the legalese and
4
This provision states:
(b)(1) A certificate of registration satisfies the requirements of this section and
section 412, regardless of whether the certificate contains any inaccurate information,
unless—
(A) the inaccurate information was included on the application for copyright
registration with knowledge that it was inaccurate; and
(B) the inaccuracy of the information, if known, would have caused the Register of
Copyrights to refuse registration.
17 U.S.C. § 411(b)(1).
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misled by inconsistent instructions from the Copyright Office. The Supreme
Court explained earlier this year that “[l]ack of knowledge of either fact or
law can excuse an inaccuracy in a copyright registration.” Unicolors, Inc. v.
H&M Hennes & Mauritz, L. P., 142 S. Ct. 941, 945 (2022). Because these
employees had no idea the applications were inaccurate, the registrations can
support Beatriz Ball’s infringement action. See id.
Courts routinely use § 411(b)(1) to overlook similar good faith errors
and allow suits to proceed under the proper claimant’s name. See Jules
Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146, 1155–56 (9th Cir.
2010) (sole shareholder named instead of corporation); Thomas Wilson & Co.
v. Irving J. Dorfman Co., Inc., 433 F.2d 409, 412 (2d Cir. 1970) (president of
corporation named instead of corporation); Morelli v. Tiffany & Co.,
186 F. Supp. 2d 563, 565 (E.D. Pa. 2002) (owner named instead of
corporation); see also One Treasure, 202 F.App’x at 660 (“Courts have
repeatedly excused a wide range of errors, . . . including misidentification of
copyright claimant[.]”); Nimmer, supra, at § 7:20 (“[C]ases have forgiven
even . . . erroneous statements as to the identity of the author, or of the
copyright claimant.”). 5
5
Deciding standing under § 411(b)(1) here does not require referring the issue to
the Register of Copyrights pursuant to § 411(b)(2), which requires the Register to
determine materiality only if there is an allegation that the misstatement was both material
and knowing. 17 U.S.C. § 411(b)(2) (“[A]ny case in which inaccurate information
described under paragraph (1) [knowing and material misstatement] is alleged.”); see
Nimmer, supra, § 7:20 (explaining that § 411(b)(2) applies when “parties to a case allege
deliberate misstatement in the registration certificate”). This is how courts have
consistently interpreted the requirement. Compare Jules Jordan Video, 617 F.3d at 1156 (no
allegation the misstatements were knowing and no referral to the Copyright Office);
Thomas Wilson & Co., 433 F.2d at 412 (same); Morelli, 186 F. Supp. 2d at 565–66 (same),
with DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 623–24 (7th Cir. 2013)
(allegation of knowing and material misstatement referred to the Register). The statute
does not require the Register to make materiality determinations even if the misstatements
were, as here, made unknowingly. And because unknowing misstatements do not defeat
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The identity error in this case is the precise situation § 411(b)(1)
addresses. Beatriz Ball, LLC had standing 6 to bring this suit as the actual
copyright holder pursuant to that provision. Accordingly, we need not
discuss whether the assignment to Beatriz Ball, LLC should have been
interpreted under state or federal law or whether it authorized the assignee
to pursue infringement claims predating the assignment. See Prather v. Neva
Paperbacks, Inc., 410 F.2d 698, 699–700 (5th Cir. 1969); Di Angelo
Publications, Inc. v. Kelley, 9 F.4th 256, 260 (5th Cir. 2021); Hacienda Recs.,
L.P. v. Ramos, 718 F.App’x 223, 233 (5th Cir. 2018) (unpublished).
II. Trade Dress
Beatriz Ball next challenges the district court’s conclusion that its
“Organic Pearl” trade dress is not protectible under the Lanham Act. The
Lanham Act creates a cause of action for trade dress infringement, which is
analogous to the common law tort of unfair competition. Blue Bell Bio-Med.
v. Cin-Bad, Inc., 864 F.2d 1253, 1256 (5th Cir. 1989). “Trade dress” refers
to a product’s total image and overall appearance. Laney Chiropractic and
Sports Therapy, P.A. v. Nationwide Mutual Ins. Co., 866 F.3d 254, 261
(5th Cir. 2017). “In general, the Act prohibits a manufacturer from ‘passing
off’ his goods or services as those of another maker by virtue of substantial
similarity between the products.” Blue Bell Bio-Med, 864 F.2d at 1256. To
prevail on its trade dress infringement claim, Beatriz Ball must prove that:
(1) its trade dress qualifies for protection; and (2) the trade dress has been
the registrations’ validity, both judicial efficiency and preserving the Register’s limited
resources support courts’ addressing materiality.
6
It goes without saying that this issue is one of statutory rather than Article III
standing. HCB Fin. Corp. v. McPherson, 8 F.4th 335, 339 (5th Cir. 2021) (explaining that
statutory standing is considered an element of the claim addressed at the pleading stage
under Rule 12(b)(6)).
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infringed by demonstrating a likelihood of confusion in the minds of potential
consumers. Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 236
(5th Cir. 2010). Because the district court here determined that Beatriz
Ball’s Organic Pearl collection lacked the acquired distinctiveness of
protectible trade dress, it did not reach the issue of infringement.
Importantly, Beatriz Ball’s trade dress is unregistered. The Supreme
Court has held that, “in an action for infringement of unregistered trade
dress under § 43(a) of the Lanham Act, a product’s design is distinctive, and
therefore protectible, only upon a showing of secondary meaning.” Wal-
Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216, 120 S. Ct. 1339, 1346
(2000). Secondary meaning is established when, “in the minds of the public,
the primary significance of a mark is to identify the source of the product
rather than the product itself.” Id. at 211, 120 S. Ct. at 1343 (internal
quotation marks omitted). Beatriz Ball’s “burden of demonstrating
secondary meaning is substantial and requires a high degree of proof.”
Viacom Int’l v. IJR Cap. Invs., L.L.C., 891 F.3d 178, 190 (5th Cir. 2018)
(internal quotation marks omitted). In the context of trade dress, the Fifth
Circuit has articulated seven factors to consider in determining whether
secondary meaning has been shown:
(1) length and manner of use of the mark or trade dress,
(2) volume of sales, (3) amount and manner of advertising,
(4) nature of use of the mark or trade dress in newspapers and
magazines, (5) consumer survey evidence, (6) direct consumer
testimony, and (7) the defendant's intent in copying the trade
dress.
Amazing Spaces, 608 F.3d at 248 (internal quotation marks omitted).
“Because the primary element of secondary meaning is a mental association
in buyers’ minds between the alleged mark and a single source of the product,
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the determination whether a mark or dress has acquired secondary meaning
is primarily an empirical inquiry.” Id. (internal quotation marks omitted).
Whether Beatriz Ball’s trade dress has acquired secondary meaning is
considered a question of fact reviewed on appeal for clear error. Id. at 234.
The court systematically examined each of the seven factors and found only
the first factor—length and manner of the use of the “trade dress”—
definitely in favor of Beatriz Ball’s claim. Most of the other factors weighed
against the claim as the court saw it, and plaintiff offered no evidence on the
consumer survey factor. Nevertheless, a careful review of the record here
demonstrates that the district court clearly erred in analyzing three of the
factors: volume of sales, the nature of use of Organic Pearl trade dress in
newspapers and magazines, and the defendant’s intent in copying the trade
dress. We take each of these factors individually. 7
A. Volume of Sales
Because the district court perceived that Beatriz Ball only introduced
evidence of total company sales and no evidence of “sales attributable to the
7 The district court determined that the “direct consumer testimony” factor
should be counted against Beatriz Ball, and we agree. Beatriz Ball did not offer direct
consumer testimony at trial and cannot be entitled to a favorable finding on this factor. But
the court erred in considering testimony (offered by corporate salespeople, not consumers)
indicating consumer confusion. Consumer confusion delves into the likelihood of confusion
element of trade dress infringement and is not relevant for purposes of secondary meaning.
Amazing Spaces, 608 F.3d at 235–236. See id. at 249 (noting that instances of consumer
confusion bear on the merits of trade dress claims, but “do not have relevance as to the
secondary meaning” of the trade dress).
At trial, Beatriz Ball provided testimony of consumer association from its sales
representatives, but this is not direct consumer testimony. Second-hand observations of
consumers may sometimes be relevant to this inquiry, but they are by definition not direct
consumer testimony and are insufficient on their own. This is especially true here, where
the only testimony provided is from interested parties who work with or for the plaintiff.
Thus, even though the district court improperly analyzed this factor, the error is harmless
in the absence of actual consumer testimony.
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Organic Pearl collection,” it determined that the “volume of sales” factor
counted against finding secondary meaning. It reasoned that it could not
evaluate the success of the trade dress in the market without knowing the
volume of sales specific to the Organic Pearl collection. This would have
been an acceptable inference but for the fact that Beatriz Ball offered
evidence of the exact volume of sales attributable to the Organic Pearl
collection.
The most precise version of this evidence is a chart that lists the sales
from the Organic Pearl collection for each year from 2009 to 2019. According
to this chart, Beatriz Ball sold $6.6 million worth of Organic Pearl pieces in
total. The district court declared that the chart was unhelpful since it only
“purported to show the total sales of Plaintiff’s products from 2009 through
September 2019” rather than sales attributable to the Organic Pearl
collection. The court misunderstood that the chart does represent sales
attributable to the Organic Pearl collection.
Admittedly, the chart is not clearly labeled and, perhaps in isolation,
such a mischaracterization would not be clear error. But the chart was not
the sole evidence of Organic Pearl sales. For example, one of Beatriz Ball’s
general managers testified that sales from the Organic Pearl collection from
the last 10 years totaled just over $6.6 million. The same $6.6 million total
was also attributed to the Organic Pearl collection in sworn declarations
during the summary judgment briefing. Thus, the volume of Organic Pearl
sales was solidified in this record.
Accordingly, whether this multimillion-dollar volume of sales
ultimately weighs for or against secondary meaning should be reconsidered.
No current circuit precedent expressly addresses a $6.6 million volume, but
two cases uphold much higher volumes and one rejects a much lower volume
as indicia of secondary meaning. See Bd. of Supervisors for Louisiana State
Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 477 (5th Cir.
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2008) (counting $93 million per year in favor of secondary meaning); Viacom,
891 F.3d at 191 (counting $470 million from two films featuring the trade
dress in favor of secondary meaning); Nola Spice Designs, 783 F.3d at 544
(counting $30,500 over 6.5 years against secondary meaning). On remand,
the district court must decide whether this sales volume over ten years in the
handmade, heirloom-quality tableware market favors finding secondary
meaning.
B. Nature of use of the mark or trade dress in
newspapers and magazines
In considering the “nature of use in newspapers and magazines”
factor, courts consider to what extent third-party media have reported on the
purported trade dress. Nola Spice Designs, 783 F.3d at 546; Viacom, 891 F.3d
at 191; Smack Apparel Co., 550 F.3d at 477. The district court counted this
factor against Beatriz Ball after analyzing the company’s general advertising
and self-promoting efforts, which it had already considered under the
advertising factor. On appeal, Beatriz Ball cites various examples of
publications that featured third-party promotions of Organic Pearl pieces.
This evidence deserves consideration. It is incumbent on the district court
to discern whether these publications “impact[ed] . . . public perception” of
the trade dress. Nola Spice Designs, 783 F.3d at 546. The district court clearly
erred by evaluating the wrong evidence relevant to this factor.
It is also important that the name “Organic Pearl” need not be
associated with Beatriz Ball. What matters is whether the specific features of
the “Organic Pearl” collection are associated with Beatriz Ball. In its analysis
of the “newspaper and magazines” factor, the district court observed that
“very few of the advertisements reference the collection by name and just as
many advertisements highlight Beatriz Ball pieces from other collections.”
As Beatriz Ball points out, however, “[t]his is not a suit over rights to a name;
it’s a suit over rights to product designs.” For each of the seven factors, “the
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focus is on how [the evidence] demonstrates that the meaning of the mark or
trade dress has been altered in the minds of consumers.” Amazing Spaces,
608 F.3d at 248 (internal quotation marks omitted) (emphasis added).
Accordingly, the features of the design are paramount to developing
secondary meaning in the minds of the consuming public.
C. The defendant’s intent in copying the trade
dress
For this factor, the “relevant inquiry is whether [defendant] intended
to derive benefits from [plaintiff]’s reputation by using the [trade dress].”
Viacom, 891 F.3d at 195–96. “Evidence that a defendant intends to ‘pass off’
its product as that of another can be found through imitation of packaging,
similar distribution methods, and more.” Id. at 196. The district court did
not address intent directly, but rather counted this factor against Beatriz Ball
by finding that there was no “evidence of direct copying by Pampa Bay.”
The district court’s conclusion was partially based on its observation
of “widespread use of the alleged trade dress in the tabletop industry.”
Defendant’s trial exhibits included various products from other
manufacturers, each featuring some type of pearl rim and/or distorted
features. The district court determined that the similarities among the
products showed that the trade dress is not specific to Beatriz Ball. We
disagree.
A company’s trade dress consists of the totality of features and overall
appearance. Blue Bell Bio-Med, 864 F.2d at 1256 (“The ‘trade dress’ of a
product is essentially its total image and overall appearance.” (emphasis
added)). Here, the district court isolated features of the Organic Pearl
collection and found that other products that share one or two of those
features embody the trade dress. But Beatriz Ball’s trade dress claim is not
confined to products that include a pearl rim or that might include some
distortions in the product’s shape. As described, the trade dress exhibits a
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unique combination of features pertaining to the individuality of each piece,
the irregular and unpredictable size and shape of the pearls, the undulated
shape of the body, the metallic shine, and the overall, accurate impression
that each piece was handmade with artisanal quality. None of the products
presented at trial incorporated these elements holistically like the Pampa Bay
products. 8 The district court should have compared the total integration of
features comprising the Organic Pearl trade dress with the Pampa Bay
products. Amazing Spaces, 608 F.3d at 251 (internal quotation marks
omitted) (“The existence of non-distinctive elements does not eliminate the
possibility of inherent distinctiveness in the trade dress as a whole.”). 9
The district court also erroneously relied on testimony suggesting a
difference in quality between the products produced by Pampa Bay and
Beatriz Ball. It determined that this testimony supported its finding that
there was no copying. But the Lanham Act’s purpose is to protect against
infringers who copy a party’s trade dress and infuse the market with lesser
quality versions, thus confusing the relevant consumers and diluting the
plaintiff’s reputation.
Protection of trade dress, no less than of trademarks, serves the
Act’s purpose to secure to the owner of the mark the goodwill
8
Perhaps the closest are the Lenox products, which still lack total incorporation of
the trade dress since most of these products lack the metallic shine and are more uniform
and regular in appearance. Nevertheless, the record shows that Lenox discontinued this
line of products after Beatriz Ball complained of its infringement.
9
“A competitor can use elements of [plaintiff’s] trade dress, but [plaintiff] can
protect a combination of visual elements that, taken together may create a distinctive visual
impression. [Defendant] may enter the upscale Mexican fast-food market, but it may not
copy [plaintiff’s] distinctive combination of layout and design features. [Defendant’s]
imitation reflects not merely components of Taco Cabana’s trade dress, but its distinctive
integration of components.” Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1118
(5th Cir. 1991), aff'd sub nom. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S. Ct.
2753 (1992) (internal citations and quotation marks omitted).
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of his business and to protect the ability of consumers to
distinguish among competing producers. National protection
of trademarks is desirable, Congress concluded, because
trademarks foster competition and the maintenance of quality
by securing to the producer the benefits of good reputation.
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774, 112 S. Ct. 2753, 2760
(1992). Thus, a difference in quality between the products does not support
a finding that there was no copying.
Ultimately, a visual comparison of Pampa Bay’s products to the
Organic Pearl line makes it difficult to deny that there was intent to copy.
The designs are not just alike, they are indistinguishable in some cases. When
two product designs are so very similar, an inference of intent is permissible.
Moreover, evidence of deliberate copying can be a weighty factor if it appears
the copying attempted to benefit from the perceived secondary meaning. See
Ferrari S.P.A. v. Roberts, 944 F.2d 1235, 1239 (6th Cir. 1991) (citing Audio
Fidelity, Inc. v. High Fidelity Recordings, Inc., 283 F.2d 551, 558 (9th Cir.
1960)). The district court clearly erred in concluding otherwise.
The sum of errors in the district court’s analysis of secondary meaning
requires reconsideration of the evidence and overall re-weighing of the
factors in accordance with this opinion. In requiring reconsideration on
remand, however, we do not prescribe the outcome of these complex and
interesting claims.
CONCLUSION
For the foregoing reasons, we REVERSE and REMAND the
judgment of the district court for further proceedings as detailed above.
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Gregg Costa, Circuit Judge, specially concurring:
I fully join the court’s opinion, which correctly concludes that Beatriz
Ball has statutory standing and that the secondary meaning analysis should
be reconsidered. I write separately to remark on how our remand of the trade
dress claim reveals a paradox that has perplexed me about bench trials: We
give a trial judge’s detailed and intensive factfinding less deference than a
jury’s unexplained verdict.
If a jury had rejected Beatriz Ball’s trade dress claim—giving no more
explanation than a simple “No” on the verdict form—we would presumably
affirm. After all, we do not hold that Beatriz Ball is entitled to judgment as a
matter of law on this claim. Instead, we remand for the district court to
reassess the trade dress claim because of some errors in its 33 pages
explaining why it found no protectable trade dress.
One might think that having to explain a decision helps insulate it from
review. Isn’t a decision stronger when supported by reasons? One might also
think that appellate judges reviewing trials would be more deferential to their
judicial colleagues, who are steeped in the law, than to lay jurors. See Edward
H. Cooper, Civil Rule 50(a): Rationing and Rationalizing the Resources of
Appellate Review, 63 Notre Dame L. Rev. 645, 650 (1988) (observing
that greater appellate scrutiny of bench trials “seems surprising since judges
are trained professionals who constantly gain experience with . . . our rules of
adversary trial, while jurors ordinarily are amateurs without substantial
experience”). But neither is true.
The requirement that a trial judge explain findings, Fed. R. Civ. P.
52(a)(1), ends up making bench trials more susceptible to reversal. We
review judges’ findings for clear error. Fed. R. Civ. P. 52(a)(6). That
standard defers to the factfinder but not as much as the standard for jury
trials, which allows reversal “[o]nly when there is a complete absence of
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probative facts to support the conclusion reached.” See Lavender v. Kurn,
327 U.S. 645, 653 (1946). In essence, trial judges are rewarded for their time-
consuming and thorough explanations with less deference on appeal. Why
does more work translate to less deference?
As it turns out, it was not always the case that a judge’s findings
received less deference than a jury verdict. Before 1938, the standard of
review applied to a judge’s findings depended on whether the case was at law
(before the judge because the parties waived a jury) or in equity. See 9C
Charles Alan Wright & Arthur R. Miller, Federal
Practice & Procedure § 2571 (3d ed. 2022); Robert L. Stern, Review
of Findings of Administrators, Judges and Juries: A Comparative Analysis, 58
Harv. L. Rev. 70, 79–80 (1944). For an action at law, a judge’s findings
of fact “were as conclusive, upon review, as a verdict of a jury.” Aetna Life
Ins. Co. v. Kepler, 116 F.2d 1, 4–5 (8th Cir. 1941); Stern, supra, at 80 & n.47
(noting that this standard of review was required by Revised Statutes §§ 649,
700 (1875)); see also United States v. U.S. Fid. & Guar. Co., 236 U.S. 512, 527
(1915). In contrast, actions in equity were reviewed for clear error. 1 Stern,
supra, at 80; see D.C. v. Pace, 320 U.S. 698, 701–02 (1944); United States v.
U.S. Gypsum Co., 333 U.S. 364, 395 (1948).
This dichotomy fell by the wayside with the Federal Rules of Civil
Procedure’s merger of law and equity practice. 12A Wright & Miller,
supra, Civ. App. B (2021 ed.) (Supreme Court Order); 4 id. §§ 1004, 1041
(4th ed.). Left to be decided, however, was whether the legal or equitable
standard of review would be the uniform one. 9C id. § 2571. Although the
1
Originally, the findings of equitable chancery courts were reviewed de novo. 9C
Wright & Miller, supra, at § 2571. As the law developed, however, the findings of
equitable courts came to have “great weight with the appellate court but were not
conclusive.” Id.
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decision was not unanimous, the Committee ended up going with “the
broader equity review to the narrower review at law.” Id.; but see Charles E.
Clark & Ferdinand F. Stone, Review of Findings of Fact, 4 U. Chi. L. Rev.
190, 216-17 (1937) (advocating for the review at law).
Rule 52(a) was the result. See Stern, supra, at 80. Adopting “the then
prevailing equity practice,” the rule prescribed—as it does today—that a
trial court’s findings of fact can be set aside for clear error. U.S. Gypsum Co.,
333 U.S. at 394–95; see Fed. R. Civ. P. 52 advisory committee’s note to
1937 adoption. That makes appellate review of judges’ factfinding less
deferential than it is for jury verdicts. See U.S. Gypsum Co., 333 U.S. at 394–
95; 9C Wright & Miller, supra, § 2571. It is also less deferential than
judicial review of agency factfinding, see U.S. Gypsum Co., 333 U.S. at 395;
Stern, supra, 84–86. That means our scrutiny is greater of trial judges than
of any other factfinders we review.
Courts and scholars have attempted to explain this seeming anomaly.
Some go as far to say that the Seventh Amendment requires jury verdicts to
receive more deference than judges’ findings. See Reynolds v. City of Chicago,
296 F.3d 524, 526-27 (7th Cir. 2002) (“[C]ases say that in a federal civil case,
by virtue of the Seventh Amendment, reviewing courts owe more deference
to a jury’s findings than to findings by a judge.”) (citing Pace, 320 U.S. at
701). But that cannot be the case. A constitutional requirement of deference
to jury trials does not preclude the same deference for bench trials. As noted,
the pre-Federal Rules practice provided equal deference for actions at law:
“Where a case is tried by the court, a jury having been waived, its findings
upon questions of fact are conclusive in the courts of review, it matters not
how convincing the argument that upon the evidence the findings should
have been different.” Dooley v. Pease, 180 U.S. 126, 131 (1901).
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So it is by choice that the federal rules afford less deference to bench
trials. But while the Seventh Amendment does not compel the backwards-
seeming rule giving less deference to judges’ findings, it does explain it.
“[O]ur traditional and constitutionalized reverence for jury trial” is why we
trust juries more. Cooper, supra, at 650. As the Supreme Court put it at a
time when only men served on juries: “It is assumed that twelve men know
more of the common affairs of life than does one man, that they can draw
wiser and safer conclusions from admitted facts thus occurring than can a
single judge.” Sioux City & Pac. R.R. Co. v. Stout, 84 U.S. (17 Wall.) 657, 664
(1873). Modern psychology confirms this long-held intuition. See generally
James Surowiecki, The Wisdom of Crowds: Why the Many
Are Smarter Than the Few and How Collective Wisdom
Shapes Businesses, Economies, Societies, and Nations
(2004).
The wisdom of juries comes from their decisions being “made by
persons embodying the underlying sense of fairness of the community, rather
than by a single man, no matter how expert, who might have arbitrary notions
of his own.” See Stern, supra, at 81. The law recognizes this value of
collective decisionmaking in another way. Panels of judges decide cases on
appeal, with more judges the higher a case goes up the judicial hierarchy. Id.
at 82 (recognizing that appellate courts “have the advantage of the
collaboration and interchange of ideas of three or more men”). Collective
wisdom thus favors greater appellate scrutiny of bench trials. While for jury
trials the larger crowd exists at the trial level, for bench trials the larger crowd
is at the appellate stage.
It turns out, then, that there is good reason for the seeming anomaly
of giving less deference to bench trials: Larger and more representative
groups are the ones more likely to reach the correct outcome.
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