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United States District Court, S.D. New York

June 23, 2004.


The opinion of the court was delivered by: ROBERT SWEET, Senior District Judge


Defendants Chrisha Creations Limited ("Chrisha") and Quay Richerson ("Richerson") have moved to dismiss the complaint of plaintiff Gemmy Industries Corporation ("Gemmy") pursuant to Fed. R. Civ. P. 12(b)(6), and for summary judgment dismissing the Gemmy complaint pursuant to Fed.R.Civ.P. 56. For the reasons set forth below, the motion is granted.

Prior Proceedings

  Gemmy commenced this action in the United States District Court for the District of Kansas on October 21, 2003, by filing its complaint followed by the First Amended Complaint on November 17, 2003, alleging nine causes of action: copyright infringement, unfair competition, violation of the Uniform Trade Secrets Act, violation of fiduciary duty, breach of implied contract, patent infringement, injunction and attorneys' fees, arising out of the defendants' sale of self-inflating outdoor decorations (the "Kansas action"). Chrisha filed its complaint seeking injunctive relief against Gemmy in this Court on November 12, 2003 (the "New York action"). On January 28, 2004, the Honorable John W. Lungstrum, Chief Judge, transferred the Kansas action to this Court and on March 5, 2004, the New York action and the Kansas action were consolidated under the caption of the Kansas action (the "consolidated action"). Gemmy in the Kansas action moved for a preliminary injunction and Chrisha and Richerson moved to dismiss and for transfer and for summary judgment. Motion practice and discovery ensued. Gemmy discontinued its action against Alsto.

  On February 11, 2004, a hearing was held on Chrisha's motion. Additional materials were submitted on February 27, 2004, March 15, 2004, and April 9, 2004.

  The Facts

  The following facts are established by the Chrisha Statement of Undisputed Material Facts, the affidavits and depositions submitted, and are undisputed except as noted below.

  Gemmy is a Texas corporation with its principal place of business in Irving, Texas, and sells self-inflating outdoor decorations among other products for 20 years. Chrisha is a Rhode Island corporation with its principal place of business in Greenville, Rhode Island, and has been selling toys, holiday and seasonal accessories, decorations and costumes for 17 years. Richerson is a resident of Sisters, Oregon and president of LSA of Oregon, Inc. and has been an independent sales representative for Chrisha since 1988, and acted in a similar capacity for Gemmy in 1999 until the fall of 2003. Gemmy and Chrisha sell their products to retailers or distributors who in turn sell the products to the consumer.

  In August 2000, Gemmy began developing a prototype for a new product, a line of inflatable outdoor decorations. The initial prototype was inflated by a hair dryer through a long tube. In October 2000, Gemmy showed the prototype at a meeting for approximately thirty representatives of retailers. Some of those representatives requested and were provided with quote sheets. The quote sheet provided specifications on the prototype, including an estimated price for the produce, measurements, and sometimes weights. No sales orders for the prototype were taken or provided at that time.

  In January 2001, the prototype was altered in that the hair dryer was replaced with a box fan that inflated the prototype through a long tube.

  The first airblown inflatable figures were shipped in May 2001. Each airblown inflatable is made up of a base containing a fan unit, an inflatable body attached to the base, and a string of enclosed lights extending through the inflatable body.

  Gemmy obtained Copyright Registration No. VA 1-151-537 for the airblown stationary Santa with Ho Ho Ho on November 12, 2002, Copyright Registration No. VA 1-103-387 for the airblown stationary Snowman on May 2, 2001, and Copyright Registration No. VA 1-103-392 for the Airblown Stationary Pumpkin-Vertical on May 2, 2001, and Copyright Registration No. VA 1-199-889 for the Airblown Polar Bear on March 13, 2003.

  Gemmy's airblown inflatables are sold in distinctive boxes. The shape and die cut of Gemmy's distinctive boxes is accurately depicted in Exhibits G and H. Exhibit G depicts the inside of Gemmy's box and Exhibit H depicts the outside of Gemmy's box.

  An employee of Gemmy took pictures of Chrisha's box. Exhibit I depicts the inside of Chrisha's box and Exhibit J depicts the outside of Chrisha's box. These photographs are true and accurate representations of the actual box in which Chrisha's inflatable figures are sold.

  Tsai Chin-Cheng filed for a patent on January 9, 2002 and obtained United States Patent 6,644,843 entitled Inflatable Figure Assembly (the "'843 Patent"). The `843 Patent issued on November 11, 2003 and is directed generally to the products described herein as Gemmy's airblown products. Exhibit K is a true and correct copy of the '843 Patent. The '843 Patent was assigned to Gemmy on January 21, 2003. Tsai Chin-Cheng is the true and correct inventor of the invention claimed in the '843 Patent.

  In the spring of 2000, Richerson began representing Gemmy by making sales primarily to Fred Meyer and Kroger retailers and had access to Gemmy's airblown inflatable product line.

  Daniel G. Flaherty, the president of Gemmy ("Flaherty") has claimed that the information obtained by Richerson was confidential. Richerson has denied any confidentiality, and no document setting forth any confidentiality agreement has been submitted.

  Chrisha did not at any time copy the construction of any Gemmy product. William Machala, the president of Chrisha ("Machala") initiated the construction and design of Chrisha's inflatable products in 2001 and commissioned what became the first construction of a Chrisha prototype inflatable product. He instructed Shirley Lin, vice general manager at Shanghai Toy Art requesting that Toy Art create a snowman design for Chrisha's inflatable snowman product based on the design of a plush toy snowman that Chrisha has been selling since 2000.

  Chrisha's Santa, Snowman and Pumpkin inflatable designs were independently created by and for Chrisha by Great Success Toys and Shanghai Toy Art located in China ("Toy Art"). Chrisha has been selling these inflatable products that were independently created for Chrisha since approximately 2002.

  Gemmy's copyright registrations pertaining to its Snowman, Pumpkin and Santa Clause inflatable body designs are annexed to its complaints. The copyright certificates do not indicate that Gemmy's works are derivative works or the specific aspects or elements of expressions contained within the "three dimensional sculptures" for which copyright is sought.

  Chrisha's Snowman Inflatable Design

  Chrisha's design for its inflatable Snowman placed at issue in this action by Gemmy was independently created for Chrisha by Toy Art pursuant to Machala's instructions.

  The Gemmy and Chrisha Snowmen possess certain stereotypical attributes: black eyes, smiling faces, rosy cheeks. Chrisha's Snowman has a three dimensional face with a long pointed carrot nose, and eyes like coal. The Gemmy Snowman face is printed onto the fabric and is not three dimensional. The Chrisha Snowman is wearing a tall black top hat with a red ribbon. The Gemmy Snowman is wearing a short-cropped hat that looks like a derby, and is carrying a rather large inflatable candy cane. The Chrisha Snowman wears a long red and white striped scarf, while the Gemmy Snowman wears a shorter green and red striped scarf.

  The Chrisha Snowman's mouth is three dimensional in the form of an open lipped smile with lips open approximately one inch. The Gemmy Snowman has a single line as a smile depicting a closed mouth and its body design is the three round snow balls, each becoming smaller approaching the head. The Chrisha Snowman's body has no clear delineation or reference to three snow balls. Both Snowmen are wearing gloves, but the Chrisha Snowman's gloves are green with cuffs, and Gemmy's Snowman's gloves are blue with no cuffs.

  No evidence has been presented to establish that Chrisha had access to the Gemmy Snowman.

  Machala prepared a sketch for Toy Art to create the Chrisha three stack pumpkin inflatable product indicating that each pumpkin face in the three stack pumpkin inflatable product should look different, that a stem should be placed on the top pumpkin, and that it should look like the Chrisha plush pumpkin design.

  The Chrisha three stack is a straight up vertical inflatable pumpkin. The Gemmy inflatable stack pumpkin consists of four jack-o-lanterns, all of the same size in a crooked stack. Two jack-o-lanterns lean on an angle with the third one leaning to one side and the fourth one on top, creating a zig-zag design. The cut out, rigid-looking mouth, nose and ears contained on the Gemmy pumpkin stack are what appears to be stereotypical jack-o-lantern/Halloween designs and the pumpkins are, of course, orange. The Chrisha pumpkins are three vertically stacked straight up jack-o-lanterns, one upon the next, the bottom one being the largest and the top one being the smallest. The noses depicted on the Chrisha inflatable body designs are all sharp-angled triangles, while the Gemmy pumpkins' noses appear to be elongated triangles or circular. The Chrisha pumpkins have two green leaves on each pumpkin with a brown vine stem coming out of the very top pumpkin only. Gemmy's crooked stacked pumpkin design does not contain any leaves and contains three brown stems.

  The bottom pumpkin on the Chrisha pumpkin has triangular eyes and one space on the bottom and one space on the top creating a design which appears to look like the pumpkin which is missing two teeth. The bottom pumpkin on the Gemmy pumpkin has circular eyes and a circular nose, a smiley face with one space in the center underneath the mouth.

  The faces of each pumpkin in the Chrisha pumpkin stack are different from each other. The faces on the Gemmy pumpkins in the stack are identical. The Chrisha top pumpkin stack has a silly face with its tongue hanging out, a squiggly line for a mouth, and heart shaped dimples. The Gemmy inflatable pumpkin product has no such face.

  No evidence has been presented to establish that Chrisha had access to the Gemmy pumpkin.

  Machala instructed Toy Art to create Chrisha's Santa inflatable product based upon a Santa chair created exclusively for Wal-Mart which in turn was based upon a Chrisha plush toy Santa product which Chrisha had been selling since at least January 2000.

  The Santa chair created for Wal-Mart was originally based upon Chrisha's Santa plush toy product line bearing Product No. H.S. 7044.

  The Gemmy and Chrisha Santa Clauses contain many of the stereotypical features common to all Santa Clauses, which depict a jolly, rotund, elderly gentlemen, wearing a traditional red suit, black belt, floppy red Christmas hat with a pompom at the end, trimmed in white, black boots, white beard and requisite noses like cherries.

  The Chrisha Santa has ears, wide open eyes, with the "whites" showing. The Gemmy Santa has eyes that are black dots. The Gemmy Santa has one arm up and one down. The Chrisha Santa has arms crossed in the front of Santa's body with the greeting "Ho Ho Ho," written in green letters. The Gemmy Santa's beard is free-flowing. The Chrisha Santa's beard is more formed and shorter. The Gemmy Santa is stocky. The Chrisha Santa is narrowed. The boots on Chrisha's Santa are sewn together. The legs of the Gemmy Santa are apart, with white material separating them. The Chrisha Santa has white cuffs. The Gemmy Santa does not. Chrisha's Santa has black gloves. The Gemmy Santa has green gloves. The Chrisha Santa's hat is puffed up. The Gemmy Santa's hat is not.

  No evidence has been presented to establish that Chrisha had access to the Gemmy Santa.

  Although the First Amended Complaint contains no claim with respect to an inflatable polar bear, an issue was raised at the hearing by the introduction of the Gemmy Polar Bear which, like the Chrisha Polar Bear, and polar bears generally, has white fur, a stout body and a black nose. Both Polar Bears have a red snowflake sweater and hat.

  However, the Chrisha Polar Bear has large round blue eyes and a large round black nose. The Gemmy Polar bear has small black triangle eyes, a small triangle nose and black lines detailing a perimeter of a mouth and nose markings. The Gemmy Polar Bear has black lines on all four paws and an elongated snout. The Chrisha Bear has a wide head and wide three dimensional snout. The Chrisha Polar Bear's snowflake pattern is distinct and is the snowflake pattern that Chrisha uses on all of its products that contain a snowflake pattern. The Chrisha Polar Bear has a hat tilted on one side exposing the right ear of the figure in its entirety. The Gemmy Polar Bear has a hat that is almost straight up and shorter. The Chrisha Polar Bear has ears that are attached to its head and only one ear, the right one, is exposed. The Gemmy Bear has two ears showing and the ears are attached to the hat.

  No evidence has been submitted to establish that Chrisha had access to the Gemmy Polar Bear.

  Chrisha packages its inflatable in boxes which carry the product brand name "8' of Big Fun" in purple and white wide-lettered font on the front panel of the box with color photographs of the Chrisha product contained in each box on the front and back panel of the box.

  The application for the '843 Patent was filed on January 9, 2002 and it was issued on November 11, 2003.

  The products that Gemmy claims infringe on the '843 Patent employ a one-fan system architecture. Except for the fact that different figures are involved (a Santa, a Snowman, a Pumpkin), the architecture is identical. No evidence has been established that the Chrisha one-fan system has, on or after November 11, 2003, been made, used, sold or offered for sale in the United States, or imported into the United States.

  Richerson is the president of LSA of Oregon Inc. LSA of Oregon, Inc. is an independent sales representative for Chrisha and has been acting as an independent sales representative for Chrisha since 1996. Prior to 1996, Richerson was employed by Lee Sherman & Associates, Inc. Lee Sherman & Associates was an independent sales representative for Chrisha since approximately 1988.

  In the spring of 1990, Richerson accepted a position as Gemmy's sales representative in the State of Oregon and began representing Gemmy as an independent sales representative. Gemmy knew of the Richerson relationship with Chrisha as well as approximately fifteen other manufacturers.

  Gemmy did not request and Richerson did not execute any non-disclosure agreement, non-compete agreement or confidentiality agreement prior to acting as a sales representative for Gemmy.

  According to Richerson, no confidential information was provided to him at either of the meetings referenced by Flaherty. At the meeting referenced by Flaherty, approximately fifteen sales representatives from all over the country, in addition to Richerson, attended and were instructed to use the information provided to market Gemmy's products to Gemmy's customers. According to Richerson, no information regarding any zip-off attachment was ever provided to him.

  When Richerson was terminated by Gemmy, Gemmy did not ask that Richerson return any information to it.

  Summary Judgment Is Appropriate

  Summary judgment is granted only if there is no genuine issue of material fact, and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Silver v. City Univ., 947 F.2d 1021, 1022 (2d Cir. 1991); see generally 11 James Wm. Moore, et al., Moore's Federal Practice § 56.11 (3d ed. 1997 & Supp. 2004). The court will not try issues of fact on a motion for summary judgment, but, rather, will determine "whether the evidence presents a sufficient disagreement to require submission to a [factfinder] or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986). "The party seeking summary judgment bears the burden of establishing that no genuine issue of material fact exists and that the undisputed facts establish her right to judgment as a matter of law." Rodriguez v. City of New York, 72 F.3d 1051, 1060-61 (2d Cir. 1995). In determining whether a genuine issue of material fact exists, a court must resolve all ambiguities and draw all reasonable inferences against the moving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Gibbs-Alfano v. Burton, 281 F.3d 12, 18 (2d Cir. 2002). Thus, "[s]ummary judgment may be granted if, upon reviewing the evidence in the light most favorable to the non-movant, the court determines that there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law." Richardson v. Selsky, 5 F.3d 616, 621 (2d Cir. 1993).

  A material fact is one that would "affect the outcome of the suit under the governing law," and a dispute about a genuine issue of material fact occurs if the evidence is such that "a reasonable [factfinder] could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248; R.B. Ventures, Ltd. v. Shane, 112 F.3d 54, 57 (2d Cir. 1997). The Court is "to grant summary judgment where the nonmovant's evidence is merely colorable, conclusory, speculative or not significantly probative." Schwimmer v. Kaladjian, 988 F. Supp. 631, 638 (S.D.N.Y. 1997) (citing Anderson, 477 U.S. at 249-50). No Copyright Violation Has Been Established

  It is an axiom of copyright law that the protection granted to a copyrightable work extends only to the original elements, if any, of the expression of the idea and never to the idea itself. Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905 at 912 (2d Cir. 1980). The stereotypical features of a Santa, Pumpkin and Snowman are not protected by copyright as a matter of law. Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498 (2d Cir. 1982); Funrise Canada (HK) Ltd. v. Zauder Bros., Inc., 99-CV-1519, 1999 WL 1021810, at *16 (E.D.N.Y. July 2, 1999); Sun Hill Indus. v. Easter Unlimited, 831 F. Supp. 1024, 1026 n. 1 (S.D.N.Y. 1993), aff'd in part, rev'd in part, 48 F.3d 1193 (Fed. Cir. 1995); Russ Berrie & Co. Inc. v. Jerry Elsner Co., Inc., 482 F. Supp. 980, 986 (S.D.N.Y. 1980).

  Where the work claimed to be protected and the accused work express the same idea, the similarity that inevitably stems solely from the commonality of the subject matter is not actionable. In other words, where the similarity is because both items contain stereotypical features common to the subject matter, there is no valid copyright claim and summary judgment should be granted. Attia v. Society of The New York Hospital, 201 F.3d 50, 53 (2d Cir. 1999); Mattel, Inc. v. Azrak-Hamway Int'l, Inc., 724 F.2d 357, 360 (2d Cir. 1983); Eden Toys, Inc., 675 F.2d at 500; Durham Industries, Inc., 630 F.2d at 913; Herbert Rosenthal Jewelry Corp. v. Honora Jewelry Co., 509 F.2d 64, 65-66 (2d Cir. 1974); Great Importations, Inc. v. Caffco Int'l, Inc., 95 Civ. 0514, 1997 WL 41411, at *4, *6 (S.D.N.Y. July 24, 1997); Gund, Inc. v. Smile Int'l, Inc., 691 F. Supp. 642, 645 (E.D.N.Y. 1988).

  Any similarity between the Chrisha inflatable figures placed at issue and Gemmy's stems solely from the fact that both items contain stereotypical features common to the subject matter. Indeed, the significant differences between the figures, despite the fact that they express the same idea, have been noted above.

  The First Amended Complaint does not purport to state a claim for copyright infringement based upon any claimed copyright protection in any Polar Bear inflatable figure. However, Gemmy submitted its Polar Bear inflatable at the hearing on this motion. Since this Polar Bear is not alleged or attached to any of the Gemmy complaints in this action, this product can be disregarded.

  In any case, the elements and stereotypical features of a polar bear are known (as in the case of a Santa Pumpkin and Snowman) are in the public domain, and are not protected. The only similarities, if any, between Chrisha's inflatable Polar Bear and Gemmy's inflatable Polar Bear end with these stereotypical features. Further evidence demonstrates the independent creation of its polar bear inflatable based on a plush ice bear design that Chrisha has been selling since at least 1989.

  Indeed, the date of Gemmy's claimed copyright registration, February 14, 2003, and the date of first publication claimed in the copyright of January 6, 2003, are well after Chrisha's 1989 catalogue and both dates are after Chrisha's independently created artistic drawing for its inflatable polar bear which is dated October 12, 2002.

  In addition, the Gemmy inflatable Santa submitted at the time of the hearing is not the Gemmy inflatable Santa that Gemmy placed at issue in the amended complaint. This Santa inflatable figure has not ever been placed at issue in this action, and Gemmy has made no claim in any pleading of copyright protection or copyright infringement with respect to this Santa inflatable figure. The Gemmy Santa with the vertical "Ho Ho Ho" sign has the same features as the Gemmy Santa attached as Exhibit A to the First Amended Complaint except for a vertical "Ho Ho Ho" sign, while the Gemmy Santa that Gemmy placed at issue in its amended complaint does not. The differences between Chrisha's Santa and this "new" Gemmy Santa are fully detailed in the affidavit of Machala and the memorandum of law in support of summary judgment filed by Chrisha and Richerson. The distinctions noted above between the Gemmy Santa that was claimed in its First Amended Complaint and Chrisha's Santa also apply to the Gemmy Santa submitted at the hearing.

  Moreover, the copyright registration date on Gemmy's claimed copyright certificate for its "new" Santa is November 12, 2002, a date that is later than Chrisha's artistic drawing for its inflatable Santa figure (September 2002). Furthermore, the copyright registration contains a claimed first publication date by Gemmy for its inflatable Santa of October 23, 2001 in China. This date is over one year after Chrisha had been selling its plush Santa with the horizontal "Ho Ho Ho" greeting (January 2000) upon which Chrisha's inflatable Santa is based.

  In any case, Gemmy's Santa inflatable figures do not contain any original elements not otherwise found in the public domain and therefore there are no elements that are protected by copyright in Gemmy's inflatable figures. Durham Industries, Inc., 630 F.2d at 910-11 ("The mere reproduction of something in a different medium, such as plastic for example, even though the adaptation of preexisting works to this medium undoubtedly involved some degree of manufacturing skill, does not constitute originality as this court has defined the term. Tomy has demonstrated and the toys themselves reflect no independent creation, no distinguishable variation from preexisting works, nothing recognizably the author's own contribution that sets Tomy's figures apart from the prototypical Mickey, Donald and Pluto . . ."). No Trade Dress Violation Has Been Established

  The Supreme Court has held that if the trade dress protection sought is for product design, plaintiff must show that the mark has acquired a "secondary meaning." Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 213-14, 120 S.Ct. 1339, 1344 (2000). Here, the complaint makes broad allegations that the claims of trade dress relate only to the design of plaintiff's product, rather than words, symbols or even product packaging. Accordingly, the complaint must allege facts sufficient to infer a "secondary meaning." Wal-Mart Stores, 529 U.S. at 216, 120 So. Ct. at 1346. To establish secondary meaning a plaintiff must show that in the minds of the public the primary significance of the product feature or term is to identify the source of the product rather than the product itself. Inwood Labs, Inc. v. Ives Labs, Inc., 456 U.S. 844, 851 n. 11 (1982). Secondary meaning can be established by the following factors: "advertising expenditures, consumer studies, sales, competitors' attempts to plagiarize the mark, and length and exclusivity of the mark's use. No single factor is dispositive." Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 393 (2d Cir. 1995) (citing Thompson Medical Co. v. Pfizer, Inc., 753 F.2d 208, 217 (2d Cir. 1985)); see also Signario v. Ruiz, CV-92-2789, 1992 WL 167246, at *4 (E.D.N.Y. June 29, 1992) ("Evidence of secondary meaning often considered includes surveys, the nature and extent of public exposure to the term, volume of sales, length of time of use, the success of advertising and promotional efforts. and intentional copying.") (citing Papercutter, Inc. v. Fay's Drug Co., Inc., 900 F.2d 558, 564 (2d Cir. 1990)).

  The First Amended Complaint does not allege facts by which the court can infer that any of these factors is present. Instead, the complaint makes conclusory allegations that "the distinctive non functional elements of Gemmy's airblown products have come to be associated by the public with a single source of goods." The complaint does not allege facts sufficient to support the claim of secondary meaning.

  A product feature is functional, and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." TrafFix Devices Inc. Mktg. Displays Inc., 532 U.S. 23, 32, 121 S.Ct. 1255, 1261 (2001); Eastern America Trio Products, Inc. v. Tang Electronic Corp., 97 F. Supp.2d 395, 408-09 (S.D.N.Y. 2000) ("Functional elements of trade dress . . . are not protectable" under the Lanham Act) (citing Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir. 1997)). "A trade dress feature is functional `if it is essential to the use or purpose of the article or it affects the cost or quality of the article,' that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch Co., 292 F. Supp.2d 535, 542-43 (S.D.N.Y. 2003) (quoting Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 166, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995)).

  The complaint here contains only conclusory allegations that Gemmy's trade dress consists of several "nonfunctional" elements. The complaint does not identify each of those alleged nonfunctional elements. Thus, the complaint does not allege facts sufficient to show that the trade dress claimed by Gemmy is nonfunctional.

  Moreover, with respect to the products at issue, a likelihood of confusion does not exist. The Chrisha inflatable product is packaged in a cardboard box, which is clearly labeled as a Chrisha product or, in certain cases, in a box clearly labeled as Chrisha's customer's product (the retailer or distributor) depending on the transaction. Neither Chrisha nor Gemmy sells to the consuming public. Instead, sales from Chrisha and Gemmy are made to retailers or distributors, like Kroeger ("point of sale purchaser") who then in turn sell the item to the consuming public ("post sale purchasers"). Both the point of sale purchaser and the post sale purchaser, however, do not even see the product design of the base, the shape of the fan, the manner by which the lights are attached to the inside of the figure until the product is unpackaged and inflated. Further, when the point of sale purchaser buys airblown inflatables from Chrisha, it obviously knows that it is purchasing a Chrisha product and not a Gemmy product. The point of sale purchaser will receive an invoice from Chrisha, it is contacted by a sales representative of Chrisha and again the packaging on the boxes indicate Gemmy products.

  Here, there can be no confusion as to the source of each product from an examination of the Gemmy and Chrisha packaging. The clear labeling of the package negates any finding that post sale purchasers will be confused by the product. The product contains a Chrisha label, and is packed in a box that clearly bears the Chrisha name. Accordingly, Gemmy cannot establish a likelihood of confusion and Count II is accordingly dismissed. See Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 203 (3d Cir.), cert. denied, 516 U.S. 808 (1995) ("clarity of labeling in packaging and advertising will suffice to preclude almost all possibility of consumer confusion as to source stemming from the product's configuration."); Annalee Mobilitee Dolls, Inc. v. Caldor Corp., 95-175-M, 1995 U.S. Dist. LEXIS 8512, at *4-6 (D.N.H. Apr. 14, 1995) (any latent confusion between two dolls is eliminated by clear source disclosures made on packaging, including name of manufacturer, label of product, difference in packaging); Le Sportsac, Inc. v. Dockside Research, Inc., 478 F. Supp. 602, 609 (S.D.N.Y. 1979) (confusion among products is not likely when the name of the manufacturer is clearly displayed). Gemmy has sought to assert a trade dress claim based upon the shape and die cut of the boxes and by Gemmy to package its products.

  The Second Circuit has determined that as a matter of law die cutting is a functional generic element and not entitled to trade dress protection. In Milstein v. Greger, Lawlor, Roth, Inc., 58 F.3d 27 (2d Cir. 1995), the plaintiff sought protection for a die cut photographic greeting card, claiming that the die cut created a distinctive shape of the card. Id. at 34. The court rejected the notion that a party could simply refine the die cutting process and end up with protectable trade dress. Instead, the court held that the die cut of the greeting card was functional and not entitled to trade dress protection. Id. at 34. See also Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 583 (2d Cir. 1993) ("where it is the custom of an industry to package products in a particular manner, it is generic and therefore not inherently distinctive").

  Moreover, such a claim as to a particular die cut of a box is not protectable as a matter of law because:

Just as copyright law does not protect ideas but only their concrete expression, neither does trade dress law protect an idea, a concept, or a generalized type of appearance . . . [the plaintiff's] trade dress cannot qualify for trade dress protection because plaintiff is effectively seeking protection for an idea or concept — die cut photographic greeting cards. It is clear that the first manufacturer to create a die cut photographic product could not have claimed trade dress protection for all die cut photographic designs, since a trade dress described as consisting sell of die-cut photographs would simply "refer to the genus of which the particular product is a species." (citations omitted).
Milstein, 58 F.3d at 32-33.

  Gemmy's packaging consists of a square cardboard box — the consumer does not even see the die cut of the box unless the consumer opens the box, takes out the package and opens the cardboard to display the exact die cut of the box. Any trade dress Gemmy might seek in the cardboard packaging box is generic and functional and not entitled to protection, as a matter of law.

  Gemmy also has asserted that Chrisha's outdoor inflatables contain all the "non functional" elements of the Gemmy airblown inflatables without identifying what these elements are. This is fatal and summary judgment on this basis alone should be granted to Chrisha and Richerson. Landscape Forms v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997); Yurman Design v. Paj, 262 F.3d 101, 115 (2d Cir. 2001); Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp.2d 355, 365-66 (S.D.N.Y. 2003 (plaintiff failed to create any question of fact that its trade dress was non functional where it failed to offer any facts concerning non-functionality). Each of the items depicted by Gemmy is a "functional" element of the airblown product and is not entitled to trade dress protection as a matter of law. Id. (A product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article). Further, these are all functional items that appear inside the inflatable and are not even seen by purchasers at the point of sale.

  In addition, Gemmy creates no material question of fact on the question of whether Chrisha's packaging of its inflatable products in a cardboard box creates a likelihood of confusion as to the source of the inflatable products. Courts in this Circuit determine likelihood of confusion as a matter of law on a motion for summary judgment. Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 918 (2d Cir. 1980) (on motion for summary judgment in unfair competition suit, court may determine absence of likelihood of confusion as a matter of law) (citing Vitarroz Corp. v. River Brand Rice Mills, Inc., 266 F. Supp. 981, 983 (S.D.N.Y. 1967)); see also Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46-47 (2d Cir. 2000); The Swatch Group (U.S.), Inc. v. Movado Corp., 01 Civ. 0286, 2003 WL 1872656, at *5 (S.D.N.Y. Apr. 10, 2003); S.C. Johnson v. Carter Wallace, Inc., 614 F. Supp. 1278, 1318 (S.D.N.Y. 1985). "When a product's brand name is prominently featured on the packaging for the product, `likelihood of confusion is . . . unlikely.'" The Swatch Group (U.S.), 2003 WL 1872656, at *4 (citing Nabisco, Inc., 220 F.3d at 46). It is undisputed that Chrisha's product brand name 8' of Big Fun, in its purple and white wide-lettered font, is prominently displayed on the packaging (the cardboard box) containing the Chrisha inflatable product.

  As a matter of law, there can be no likelihood of confusion as to the source of origin of the product when the product's brand name is prominently displayed on the packaging for the product. Nabisco, Inc., 220 F.3d at 46 (summary judgment affirmed because prominent use of brand name of the product on the packaging "significantly reduces if not altogether eliminates," the likelihood that consumers will be confused as to the source of the parties' products); S.C. Johnson, 614 F. Supp. at 1318 (since the product name and logo was clearly and prominently displayed on defendant's product, there can be no likelihood of confusion as a matter of law); see also Merriam-Webster, Inc. v. Random House, Inc., 35 F.3d 65, 71 (2d Cir. 1994) (same); Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1045-46 (2d Cir. 1992) (no likelihood of confusion where the product names appear prominently on the packaging for the products.); Durham Industries, Inc., 630 F.2d at 918 (where names of the toys were prominently displayed, the products themselves were visible through the clear packaging, and the coloring of boxes were sufficiently dissimilar, no likelihood of confusion found as a matter of law and summary judgment affirmed); Bose Corp. v. Linear Design Labs, Inc., 467 F.2d 304, 310 (2d Cir. 1972); Le Sportsac, 478 F. Supp. at 609. Chrisha and Gemmy do not sell their inflatable products to consumers but to retailers or purchasing agents of retailers.

  No evidence of confusion by either retailers or consumers has been submitted.

  No Violation of a Trade Secret Has Been Established

  Price lists, product samples and "marketing plans" are all items that are not, as a matter of law, protected as trade secrets. Great Lakes Carbon Corp. v. Koch, 497 F. Supp. 462, 470 (S.D.N.Y. 1980); see also Tactica Int'l, Inc. v. Atlantic Horizon Int'l, Inc., 154 F. Supp.2d 586, 607 (S.D.N.Y. 2001) (information the plaintiff sought to claim as trade secret — information concerning the references of its customers — could easily be recalled by the defendants or obtained by contacting the customers directly and was not a trade secret).

  Gemmy has failed to create any question of material fact that would defeat summary judgment in favor of Chrisha and Richerson. Tactica Int'l, Inc., 154 F. Supp.2d at 607 (employer who failed to produce any evidence showing that its former representatives copied, intentionally memorized, or stole any information could not succeed on a claim for misappropriation of trade secrets); Great Lakes, 497 F. Supp. at 470-71; see also Levine v. Bochner, 132 A.D.2d 532, 533, 517 N.Y.S.2d 270, 271-72 (2d Dep't 1987).

  No Patent Violation Has Been Established

  No facts have been presented by Gemmy contradicting those submitted by Chrisha and Richerson in their affidavits in support of their motion to dismiss or for summary judgment — that no act of alleged infringement was committed by Chrisha or Richerson on or after the date the patent issued on November 11, 2003.

  In addition, Gemmy has admitted that it sold or offered to sell its airblown inflatable products that are the subject of the patent more than one year before it filed its patent application. In his affidavit of November 7, 2003, submitted to the Court in support of Gemmy's motion for a preliminary injunction, Flaherty swore to the truth of the following:

In 2000, Gemmy began developing and marketing a line of self inflating outdoor decorations under the airblown mark (airblown inflatables). Gemmy has been selling its airblown product line since at least October 2000. Each airblown inflatable is made up of a base containing a fan unit, an inflatable body attached to this base and a string of enclosed lights extending through the inflatable body.
Likewise, the First Amended Complaint alleges that Gemmy has been selling its airblown products since at least October of 2000. In his February 9, 2004 declaration, Flaherty now claims that the airblown inflatable product was only a "concept" in October 2000 and not marketed or offered for sale in 2000. Flaherty's deposition testimony, however, establishes that Gemmy's airblown inflatable products were indeed developed, displayed to customers, marketed and quoted to customers for sale in October 2000.

  A party cannot defeat a motion for summary judgment by responding with affidavits that recant earlier sworn testimony, or sworn discovery responses. System Management Arts, Inc. v. Avesta Technologies, Inc., 137 F. Supp.2d 382, 401 n. 13 (S.D.N.Y. 2001); see also Margo v. Weiss, 213 F.3d 55, 60-61 (2d Cir. 2000) ("Plaintiffs cannot defeat a motion for summary judgment by responding with affidavits recanting earlier [deposition] testimony . . . or by filing `supplemental answers' to interrogatories"); The Intimate Bookshop, Inc. v. Barnes & Noble, Inc., 2003 WL 22251312, at *9 (S.D.N.Y. Sept. 30, 2003) (affidavits submitted to the court which contradicted the prior sworn discovery responses were "wholly insufficient to create a genuine issue of material fact," and were not considered by the court). Accordingly, any statements made in the February 9, 2004 Flaherty affidavit contradicting his earlier sworn statements that Gemmy's airblown inflatables were on sale since at least October 2000 fail to create a genuine issue of material fact. Claim 1 of the '843 Patent, the only independent claim, recites (with bracketed notations and underlining added for ease of reference):

1. An inflatable figure assembly, comprising:
[(a)] a hollow body made with permeable fabric forming a figure;
[(b)] a base with a central hole;
[(c)] a fastening member securing said hollow body to a circumference of said base;
[(d)] a fan disposed over said central hole to discharge air into the hollow body;
[(e)] at least three fastening protrusions around an edge of said body;
[(f)] at least three legs, each secured in one of said fastening protrusions and supporting said base at a defined height above a surface to allow sufficient air to enter said fan;
[(g)] a first power cord connected to said fan;
[(h)] wherein said hollow body allows air to diffuse through it at a rate no faster than said fan discharges air into said hollow body;
[(i)] a lighting system inside said hollow body, comprising a second power cord extending from a top of said inflatable figure assembly to said fan and a plurality of lighting bodies secured along said second power cord;
[(j)] wherein each of said plurality of lighting bodies further comprises a lower cover with a base, an upper cover with a base, a bulb disposed between said upper and said lower cover and connected to said second power cord; and a fastening piece;
  [(k)] fasteners to secure said base of said lower cover, said base of said upper cover, and said fastening piece together. Comparison of the exemplar of Chrisha's one-fan system with the elements of Claim 1 reveals, at least, one distinct difference between Chrisha's one-fan system and the claimed invention. Chrisha's one-fan system does not have fastening protrusions around an edge of the permeable fabric body as does the claimed invention. Clause (e) of Claim 1 limits the invention of the '843 Patent to inflatable figures that have fastening protrusions around the edge of the permeable fabric body. These fastening protrusions secure the legs of the inflatable figure (clause (f)). Examination of the exemplar of Chrisha's one-fan system reveals that the fastening protrusions that secure the legs are not disposed around the edge of the permeable fabric body, but instead are on the plastic base of the figure.

  The '843 Patent is Invalid Because of the "On Sale" Bar

  The '843 Patent is invalid because the patented invention was "on sale" in the United States more than one year prior to the date of the application for the patent. Under 35 U.S.C. § 102(b), a person is not entitled to a patent if:

The invention was . . . on sale in this country, more than one year prior to the date of the application for patent in the United States.
  The application for the '843 Patent was filed on January 9, 2002. The '843 Patent issued on November 11, 2003. Claim 1 of the '843 Patent includes as elements: (1) a base; (2) a fan unit; (3) an inflatable body attached to the base; and (4) a lighting system extending from the top of the inflatable body to the base. Claims 2 through 10 (the remaining claims of the '843 Patent) depend from Claim 1 and therefore include all of the above referenced elements included in Claim 1.

  The First Amended Complaint alleges that Gemmy is in the business of developing and selling a line of self-inflating outdoor decorations under the "Airblown" mark. Gemmy claims that it has been selling its airblown products "since at least as early as October 2000." Further, Gemmy alleges that:

Each Airblown product contains a base with a fan unit, an inflatable body attached to the base and a string of enclosed lights extending through the inflatable body.
First Amended Complaint ¶ 8. In an apparent attempt to support its claim relating to the strength of its alleged protectable trade dress, Gemmy states that it has been selling its airblown inflatable products that are "made up of a base containing a fan unit, an inflatable body attached to the base and a string of enclosed lights extending throughout the inflatable body" since at least October 2000.

  The "on sale" bar of 35 U.S.C. § 102(b) applies if there was a sale more than one year before the filing date of the patent application in the United States and "the subject matter of the sale or offer to sell fully anticipated the claimed invention or would have rendered the claimed invention obvious by its addition to the prior art." Isogon Corp. v. Amdahl Corp., 47 F. Supp.2d 415, 418 (S.D.N.Y. 1998) (quoting UMC Elec. Co. v. United States, 816 F.2d 647, 656 (Fed. Cir. 1987)). "According to 35 U.S.C. § 102(b), a patent is invalid for anticipation when a single prior art reference discloses, either expressly or inherently, every element or limitation of a claim." Perricone v. Medicis Pharmaceutical Corp., 267 F. Supp.2d 229, 243 (D. Conn. 2003) (citing Electro Med. Sys. S.A. v. Cooper Life Sciences, 34 F.3d 1048, 1052 (Fed. Cir. 1994)). "There must be no difference between the claimed invention and the referenced disclosure, as viewed by a person of ordinary skill in the field of the invention." Id. (quoting Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991)).

  Thus, Claim 1 and Gemmy's line of airblown products on sale since at least October 2000 each contain: (1) an inflatable body (element No. 1); (2) a base (element No. 2); (3) a device attaching the inflatable body to the base (element No. 3); (4) a fan (element No. 4); and (5) a string of lights extending through out the inflatable body (element No. 9).

  Gemmy has expressly acknowledged: (1) by a side-by-side comparison, that element Nos. 1-4 and 9 of Claim 1 of the '843 Patent were incorporated into its airblown products that were on sale since at least October 2000; and (2) the remaining elements, Nos. 5-8 and 10-11 of Claim 1 of the '843 Patent are "virtually identical to Gemmy's Airblown Products." See Hay & Forage Industries v. New Holland North America, Inc., 60 F. Supp.2d 1099, 1119-20 (D. Kan. 1998) ("[p]ut another way, `that which would literally infringe if later in time anticipates if earlier than the date of the invention.'"). Accordingly, the patented invention was on sale more than one year before the application was filed and is invalid under 35 U.S.C. § 102(b).


  For the reasons stated above, the motion of Chrisha and Richerson for summary judgment is granted, and the First Amended Complaint is dismissed.


It is so ordered.

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