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July 7, 1995

L. & J.G. STICKLEY, INC., Plaintiff,
CANAL DOVER FURNITURE CO., INC. and CHARLES F. KUDER, individually, Defendants.

The opinion of the court was delivered by: FREDERICK J. SCULLIN, JR.


 This is an action for trade dress infringement, false advertising, and "palming off" pursuant to section 43(a) of the Lanham Act, 15 U.S.C. ยง 1125(a). Plaintiff also pleads common law actions alleging unfair competition and dilution. *fn1"

 L. & J.G. Stickley, Inc. ("Stickley"), a furniture manufacturer, claims that several pieces of the Stillwater and Stonehouse lines of furniture manufactured by defendant Canal Dover Furniture, Co., Inc. ("Canal Dover"), infringe the trade dress of six pieces in Stickley's Mission Collection. *fn2" On April 24, 1995, the Court granted plaintiff's motion for a temporary restraining order. *fn3" Presently before the Court is plaintiff's motion for a preliminary injunction. On May 8, 1995, the Court held a hearing on the preliminary injunction motion pursuant to Fed. R. Civ. P. 65(b) , at which the Court reserved decision. *fn4"

 Factual Background

 Plaintiff L. & J.G. Stickley, Inc. is the successor by merger to eight furniture manufacturing entities, the earliest of which was formed in 1884. *fn5" Complaint, Ex. B at 4. The two most important of these entities for present purposes are the Craftsman Shops of Gustav Stickley and L. & J.G. Stickley, formed by Leopold and J.G. Stickley in 1900.

 With the exception of the Sideboard, the particular pieces at issue in the case at bar were designed in the early 1900s by Gustav Stickley ("G. Stickley") and Harvey Ellis, a designer who worked for G. Stickley. The pieces are examples of "Mission furniture" manufactured in the "Craftsman style," an outgrowth of the Arts and Crafts Movement of that time. Defs' Opp. Memo., Ex. C at 5, Ex. D. at 2. The original pieces were manufactured in G. Stickley's Craftsman Shops, which operated in Eastwood, New York, between 1898 and 1916.

 Consistent with the philosophy of the Arts and Crafts Movement, G. Stickley published construction plans for his furniture in a monthly magazine called The Craftsman (1901-1916), and therein encouraged others to build the furniture for themselves. Defs' Hearing Ex. B at 3. Due to the popularity of Mission furniture, G. Stickley contended with many copyists and competitors, one of whom was L. & J.G. Stickley. Defs' Opp. Memo. at 4-5. In 1916 the Craftsman Shops, L. & J.G. Stickley, and two other Stickley entities were absorbed into a single entity, Stickley Associated Cabinet Makers, the direct ancestor of today's L. & J.G. Stickley, Inc.

 During the 1920s Mission furniture fell out of style and Stickley and its various copyists and competitors stopped manufacturing and selling it. By the mid-1920s sales of Mission furniture ceased completely. Aminy Audi Aff. P 4 (hereinafter "Am. Audi Aff."). In the 1980s the popularity of original Mission furniture experienced a rapid and powerful resurgence, as evidenced by Barbara Streisand's 1988 purchase of an original G. Stickley sideboard for $ 363,000.

 In response to Mission furniture's rapidly expanding popularity L. & J.G. Stickley, Inc., in 1989, began manufacturing its Mission line which included many classic as well as newly designed pieces (hereinafter "Mission Collection"). Am. Audi Aff P 6; Alfred Audi Aff. P 3 (hereinafter "Al. Audi Aff."). At the time of its introduction in 1989, no other furniture being manufactured had a look or appearance similar to the pieces in Stickley's Mission Collection. Am. Audi Aff. P 3; Al. Audi Aff. P 8. The first Mission-type furniture to enter the market following Stickley's reintroduction was the Legend line by Bassett Furniture Industries, Inc., in 1991. Kuder Aff. P 2.

 The classic pieces reintroduced by Stickley in its Mission Collection were painstaking line-by-line reproductions of G. Stickley originals. Because such attention to detail requires labor intensive production techniques, the furniture is costly to produce. As a result, Stickley presently occupies the "high end" of the market in the Mission furniture renaissance. Kuder Aff. P 3; Am. Audi Aff., Ex. B. All six pieces at issue in the case at bar are from the Mission Collection.

 Defendants contend that in the process of seeking designs and suppliers in 1992, they happened upon "a number of history books relating to furniture designs, and from one of those books . . . chose the spindle chair of Gustav Stickley as . . . one which would go well with [their] other dining room furniture." Kuder Aff. P 7. Thus, defendants maintain that they designed the Stillwater Spindle Chair based upon the G. Stickley design found in these books. Canal Dover did not seek to make an exact line-by-line reproduction of the G. Stickley chair, but a chair whose production costs would allow defendants to occupy the "upper-middle price line" of Mission-style furniture. Kuder Aff. PP 3, 7-8. Canal Dover first introduced the Stillwater Spindle Chair at the April 1993 High Point Market trade show. Because of the success of the Stillwater chair, Canal Dover has expanded the Stillwater line to include the other pieces at issue.

 In 1994 Canal Dover decided to further expand its line of Mission-style furniture to include a representation of a Harvey Ellis chair design from the "history book," which they named the Stonehouse chairs. *fn6" See Kuder Aff. PP 14-17. At the time the designs were selected, defendants claim they were unaware that Stickley produced Harvey Ellis chairs as a part of its Mission Collection. Kuder Aff. P 16. Francher Chair Co. ("Francher"), the manufacturer defendants selected to make the Stonehouse chairs, also manufactured Stickley's Harvey Ellis chairs. *fn7" The Stonehouse chairs were introduced at the 1995 High Point Market trade show.

 Plaintiff purportedly discovered that defendants were manufacturing the Stillwater line after Stillwater pieces appeared on the cover of the March 17, 1995 issue of Furniture Today. Plaintiff first became aware of the Stonehouse line during a visit to Francher on April 3, 1995, during which Paul Terwilliger, Vice President for Manufacturing of Stickley, came across unfinished pieces of Canal Dover's Stonehouse chairs. Terwilliger Aff. PP 5-10. Plaintiff then instituted the present action on April 11, 1995, mailed defendants a cease and desist letter on April 12, 1995, and faxed them a copy of the complaint on April 19, 1995. On April 21, 1995, defendants responded via fax letter refusing to cease and desist, and contesting the legitimacy of the present action. Plaintiffs request for temporary and preliminary injunctive relief followed on April 24, 1995.


 In order to justify preliminary injunctive relief in the Second Circuit, the movant must make a "showing of (a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) [i] sufficiently serious questions going to the merits to make them a fair ground for litigation and [ii] a balance of hardships tipping decidedly toward the party requesting the preliminary relief." Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979).

 Although "a product's trade dress ordinarily consists of its packaging[,] . . . the design given a product by its manufacturer also may serve to distinguish it from the products of other manufacturers and hence be protectible trade dress." Wallace, 916 F.2d at 78. "The trade dress of a product 'involves the total image of a product and may include features such as size, shape, color or color combinations, texture, [or] graphics.'" Stormy Clime Ltd. v. Progroup, Inc., 809 F.2d 971, 974 (2d Cir. 1987) (quoting John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983)) (omission in original). Thus, in order to fully evaluate the trade dress of the products whose dress has allegedly been infringed, the Court must examine the overall look of the pieces as depicted in Plaintiff's Exhibits 1.1A to 1.6A. At the Court's request, plaintiff provided a loose description of the dress that appears in these exhibits. *fn8"

 All of the Stickley pieces at issue are designed in the "residential mission style[,] typically of oak or cherry, having sharp, angular, symmetrical lines creating an overall spartan look and appearance, both collectively and individually." Description of Trade Dress, 1. The most prominent feature of the Spindle pieces *fn9" is the presence of "centrally grouped equidistant spindles on the back rest and side[]" of each piece. The spindles are "inset perpendicular to the top and back rails." Id. "Gently curved corbels" support the arms of the armed pieces. The seat cushions are either "leather or a geometric print fabric" and may be inset or slip style. Id.

 The Harvey Ellis pieces *fn10" are marked by "[a] back rest having three centrally grouped vertical slats and three non-symmetrically spaced horizontal slats." The "vertical slats" are "inserted perpendicular and between the two lower horizontal slats." Id. Plaintiff also makes an "alternative embodiment whereby the vertical back slats are adorned with a contrasting wooden inlay . . ." Id.

 The "Prairie" Sideboard is an "elevated horizontal cabinet" including "a pair of opposed panelled doors with vertical slats." Id. Each door has a bell-shaped metal hardware pull attached to a rectangular metal plate on the door. The doors are "separated by three horizontally stacked drawers, the top two drawers essentially equal in height, the bottom drawer being substantially taller than the top two drawers." Id. Each drawer has two "symmetrically spaced . . . metal hardware pulls" that are slightly bowed. Id. There is also "a solid wooden continuous splash rail along the top back surface of the cabinet."

 A. Irreparable Harm/Likelihood of Success

 It is well settled that where a plaintiff seeks a preliminary injunction in an action under section 43(a) of the Lanham Act, "a showing of likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm, assuming that the plaintiff has a protectible mark." Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir 1988) (citations omitted). A trademark or trade dress is protectible under section 43(a) of the Lanham Act "if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning." Two Pesos, 112 S. Ct. at 2758. Because this is an application for a preliminary injunction, the Court will first address likelihood of confusion and then evaluate protectibility of the dress at issue.

 Likelihood of confusion is determined via an overall balancing of the "Polaroid Factors" first enunciated in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.) (Friendly, J.), cert. denied, 368 U.S. 820, 7 L. Ed. 2d 25, 82 S. Ct. 36 (1961): (1) the strength of the plaintiff's mark or dress; (2) the similarity between the two marks or dresses; (3) the proximity of the products in the marketplace; (4) the likelihood that the prior owner will bridge the gap between the products; (5) evidence of actual confusion; (6) the defendants' bad faith; (7) the quality of the defendants' product; and (8) the sophistication of the relevant consumer group. Paddington Corp. v. Attiki Importers & Distribs., Inc., 996 F.2d 577, 584 (2d Cir. 1993). "The evaluation of the Polaroid factors is not a mechanical process ...

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