United States District Court, S.D. New York
June 23, 2004.
GEMMY INDUSTRIES CORPORATION, Plaintiff,
CHRISHA CREATIONS LIMITED, QUAY RICHERSON and ALSTO, Defendants.
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.
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 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
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
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
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.
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
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.
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
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
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
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
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
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
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
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
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
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
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
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.
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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