United States District Court, S.D. New York
OPINION AND ORDER
JESSE M. FURMAN, District Judge.
Plaintiffs in this case - Barefoot Contessa Pantry, LLC, Ina Garten, and Ina Garten, LLC (together, "Plaintiffs" or "Barefoot Contessa") - are well known in the world of food and cooking for, among other things, an Emmy-winning TV show on the Food Network, several bestselling cookbooks, and several lines of high-end food products. On February 17, 2015, they filed a complaint and a motion for a temporary restraining order and preliminary injunction against Defendants Aqua Star (USA) Co. ("Aqua Star"), O.F.I. Imports, Inc. ("OFI") (now doing business as Contessa Premium Foods), Red Chamber Co. ("Red Chamber"), and Contessa Premium Foods, Inc. ("Contessa Premium") (together, "Defendants"), alleging, inter alia, trademark and trade dress infringement under the Lanham Act. (Docket Nos. 1, 6). Plaintiffs seek injunctive relief primarily based on Defendants' sale of frozen dinners - labeled "Contessa Chef Inspired" - with packaging almost identical to the packaging of frozen dinners that had been sold under the name "Barefoot Contessa" pursuant to a licensing agreement between Barefoot Contessa and Defendants' predecessor-in-interest, Contessa Premium (the "Frozen Dinner Trade Dress"). Plaintiffs also allege that Defendants have breached an agreement and violated the Lanham Act by continuing to sell or allow to be sold frozen entrees under the "Barefoot Contessa" name. Defendants filed their opposition to Plaintiffs' motion on February 23, 2015, and the Court held oral argument on February 24, 2015.
At a hearing held yesterday - February 25, 2015 - the Court granted Plaintiffs' motion for a temporary restraining order, for reasons to be stated in a written opinion to follow, and scheduled a preliminary injunction hearing for March 11, 2015. This is the written opinion.
In assessing Plaintiffs' motion for a temporary restraining order, the Court has reviewed all submissions by the parties, including their initial memoranda, accompanying declarations, and supplemental memoranda submitted after the initial hearing on February 24, 2015. The Court has also considered the oral arguments of counsel at the hearings held on February 24 and 25, 2015. For present purposes, the facts relevant to this case can be summarized briefly, and - like the legal conclusions following them - are without prejudice to any subsequent findings made after a full preliminary injunction hearing. See Energybrands, Inc. v. Beverage Mktg. USA, Inc., No. 02-CV-3227 (JSR), 2002 WL 826814, at *1 (S.D.N.Y. May 1, 2002).
In 2008, after litigation before the United States Patent and Trademark Office between Barefoot Contessa and Contessa Premium, a former food producer that owned the Contessa trademark in connection with certain frozen foods (Decl. Carolyn C. Mattus Supp. Defs.' Opp'n Pls.' Mot. TRO & Prelim. Inj. (Docket No. 18) ("Mattus Decl."), Ex. D, ¶ 8; see id., Exs. B-F, I), the two parties entered into a settlement agreement. (Decl. Ina Garten Supp. Pls.' Mot. TRO & Prelim. Inj. (Docket No. 9) ("Garten Decl."), Ex. C (the "Settlement Agreement"). Pursuant to that agreement, Barefoot Contessa agreed not to register or use its Barefoot Contessa trademarks in connection with frozen meals or frozen seafood, and Contessa Premium agreed to refrain from engaging in certain activities that could create confusion between the two brands, including using its trademarks in connection with cookbooks and "us[ing] or register[ing] any word or design element in combination with CONTESSA that would be likely to create consumer confusion between Contessa Premium and Garten." (Settlement Agreement §§ 2(c); id., 3(c), (e)). Contessa Premium and Barefoot Contessa then decided to conduct business together. Specifically, the companies entered into a licensing agreement (the "Licensing Agreement"), pursuant to which Barefoot Contessa granted Contessa Premium a license to use certain of its intellectual property in connection with a line of frozen dinners to be manufactured and marketed by Contessa Premium. (Garten Decl., Ex. D). The two entities then developed a line of Barefoot Contessa frozen dinners bearing Ina Garten's likeness, the Barefoot Contessa logo, and the Frozen Dinner Trade Dress. (Garten Decl., Ex. E).
On or about April 30, 2014, as a result of financial difficulties, Contessa Premium assigned its assets to OFI through its affiliate Aqua Star. (Garten Decl. ¶ 27). The next day, Barefoot Contessa cancelled its license with Contessa Premium; OFI then approached Garten to discuss signing a new licensing agreement, but Garten declined, allegedly out of concern that OFI lacked experience manufacturing frozen dinners. (Garten Decl. ¶¶ 27-28; see also Decl. Charles Handford Supp. Defs.' Opp'n Pls.' Mot. TRO & Prelim. Inj. (Docket No. 19) ¶ 9). On May 23, 2014, however, OFI and Barefoot Contessa entered into a Sell-Through Agreement, pursuant to which OFI was allowed to sell existing Barefoot Contessa frozen dinners that had been manufactured prior to the termination of the Licensing Agreement, but was required to destroy any Barefoot Contessa frozen dinners remaining after October 28, 2014. (Garten Decl. ¶ 29; id., Ex. F). Barefoot Contessa filed this lawsuit and motion shortly after Garten saw Barefoot Contessa frozen dinners on the shelves of local supermarkets, often alongside "Contessa Chef Inspired" frozen dinners bearing virtually identical packaging to the Barefoot Contessa dinners. (Garten Decl. ¶¶ 30-32; see Supplemental Decl. Ina Garten Supp. Pls.' Mot. TRO & Prelim. Inj. (Docket No. 24) ("Garten Supplemental Decl."), Ex. A).
In order to prevail on a claim for temporary injunctive relief, "a plaintiff must establish: (1) the likelihood of irreparable injury in the absence of such an injunction, and (2) either (a) likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation plus a balance of hardships tipping decidedly in its favor." Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 537 (2d Cir. 2005) (internal quotation marks omitted). The Second Circuit has not definitively ruled on whether a Court should consider the additional factors set forth in eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 393 (2006), and Winter v. Natural Res. Defense Council, Inc., 555 U.S. 7, 20 (2008), in evaluating preliminary injunctions in the trademark infringement context. See Salinger v. Colting, 607 F.3d 68, 77-78 (2d Cir. 2010) (holding that a court must consider the balance of hardships and the public interest in granting preliminary injunctive relief, but cabining its holding to copyright cases); N. Am. Olive Oil Ass'n v. Kangadis Food Inc., 962 F.Supp.2d 514, 518 (S.D.N.Y. 2013) (discussing the uncertainty); see also New York Progress & Prot. PAC v. Walsh, 733 F.3d 483, 486 (2d Cir. 2013) (applying the four-factor Winter test to the denial of a preliminary injunction in a First Amendment case). Nevertheless, as the Second Circuit has noted, " eBay strongly indicates that the traditional principles of equity it employed are the presumptive standard for injunctions in any context, " Salinger, 607 F.3d at 78, and some district courts have applied the additional two factors in the trademark and trade dress infringement context as well. See, e.g., VOX Amplification Ltd. v. Meussdorffer, ___ F.Supp. 3d ___, No. 13-CV-4922 (ADS) (GRB), 2014 WL 4829578, at *12 (E.D.N.Y. Sept. 29, 2014); Kind LLC v. Clif Bar & Co., No. 14-CV-770 (KMW) (RLE), 2014 WL 2619817, at *1 (S.D.N.Y. June 12, 2014). Accordingly, the Court will also consider whether the balance of hardships tips in Plaintiffs' favor and whether a temporary restraining order is in the public interest. A. Likelihood of Success on the Merits
Beginning with the merits factor, the Court finds - based on the record currently before it - that Plaintiffs have established a likelihood of success on the merits of their Lanham Act claim for trade dress infringement. In order to establish a valid Lanham Act claim based on trademark or trade dress infringement, a party must show, first, that the trademark or trade dress is valid and entitled to protection, and second, that defendant's use of the trademark or trade dress is likely to cause consumer confusion as to the origin, affiliation or association, or endorsement of defendant's goods or services. See Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, 696 F.3d 206, 216-17 & n.9 (2d Cir. 2012). In this case, the principal dispute between the parties is over who owns the Frozen Dinner Trade Dress.
When a dispute over trade dress or trademark ownership arises between manufacturers and distributors, courts typically "look first to any agreement between the parties regarding trademark rights." Excell Consumer Prods. Ltd. v. Smart Candle LLC, No. 11-CV-7220 (MEA), 2013 WL 4828581, at *22 (S.D.N.Y. Sept. 10, 2013) (internal quotation marks omitted), opinion supplemented on denial of reconsideration, 2014 WL 1796657 (S.D.N.Y. May 5, 2014). In this case, however, the Licensing Agreement between Plaintiffs and Contessa Premium does not answer the question of ownership of the Frozen Dinner Trade Dress. To be sure, Defendants are correct that the licensing agreement "neither claimed nor licensed any other intellectual property" besides certain Barefoot Contessa and Ina Garten marks. (Defs.' Opp'n Pls.' Mot. TRO & Prelim. Inj. (Docket No. 17) ("Defs.' Mem.") 5, 12-13). But nor does the Agreement contain any language purporting to establish it as the exclusive agreement regarding the division of intellectual property between Barefoot Contessa and Contessa Premium, let alone the exclusive agreement regarding Plaintiffs' ownership or non-ownership of intellectual property not mentioned in the Agreement. Accordingly, its silence on ownership of the Frozen Dinner Trade Dress - trade dress that was developed after the agreement was signed ( see Decl. Jennifer Albert Supp. Defs.' Opp'n Pls.' Mot. TRO & Prelim. Inj. (Docket No. 21) ("Albert Decl.") ¶¶ 4-7) - does not defeat Plaintiffs' claim of ownership.
Where disputes as to trademark or trade dress ownership arise between manufacturers and exclusive distributors and no agreement controls, courts often apply four factors to determine superior ownership: "(1) which party invented and first affixed the mark onto the product; (2) which party's name appeared with the trademark; (3) which party maintained the quality and uniformity of the product; and (4) with which party the public identified the product and to whom purchasers made complaints." Tactica Int'l, Inc. v. Atl. Horizon Int'l, Inc., 154 F.Supp.2d 586, 600 (S.D.N.Y. 2001); see also Sengoku Works Ltd. V. RMC Int'l, Ltd., 96 F.3d 1217, 1220 (9th Cir. 1996). In addition to those four factors, "a court may look at which party possesses the goodwill associated with the product, or which party the public believes stands behind the product." Tactica, 154 F.Supp.2d at 600 (internal quotation marks omitted). Neither party disputes that the factors are appropriate here insofar as they implicate considerations relevant to any trade dress dispute between business partners, regardless of their formal relationship.
The first factor - which party invented and first affixed the Frozen Dinner Trade Dress on the products at issue - is the most hotly contested element in this case. Nevertheless, there is ample evidence here to support Plaintiffs' assertion that it was, in fact, they who invented the trade dress at issue, including factors like those the Second Circuit found salient in affirming the district court's finding that the plaintiff invented the trade dress at issue in Technimed. See 462 F.Appx. at 33. Here, as in Technimed, the parties may have "worked together to create the trade dress, " and Defendants may have "devised the final package design, " see id., but "that design was based on key elements first conceived by" Plaintiffs, id., a fact that is clear from a comparison of the striped design and white lettering used in Plaintiffs' previous food products and the similar design used in the Frozen Dinner Trade Dress. ( Compare Garten Decl., Ex. B, with id., Ex. E). Technimed, 462 F.Appx. at 33. Indeed, the ex-CEO of Contessa Premium himself confirms that it "obtained from Barefoot Contessa a distinctive package design that consumers would associate solely with Barefoot Contessa, " in order to avoid confusion with Contessa Premium's regular offerings. (Decl. Donald J. Binotto Supp. Pls.' Mot. TRO & Prelim. Inj. (Docket No. 10) ¶¶ 3-4).
In any event, the Court need not definitively resolve which way the first factor cuts at this early stage of the litigation, because - based on the current record - the remaining factors favor Plaintiffs. Most notably, although neither party has submitted evidence as to who handled consumer complaints, the evidence strongly suggests that consumers identified the Frozen Dinner Trade Dress with Plaintiffs, not with Contessa Premium. ( See Garten Decl. ¶¶ 37, 39 (noting that Barefoot Contessa has received numerous complaints as to the quality of either Barefoot Contessa or Contessa Chefs Inspired meals)). Additionally, that Ina Garten is a bestselling author of nine cookbooks and the host of a long-running Food Network show - and has over 750, 000 followers on Facebook (Garten Decl. ¶¶ 11-13) - suggests that she, not Contessa Premium, possessed the goodwill associated with the frozen meals and associated Frozen Dinner Trade Dress. See Premier Dental Prods. Co. v. Darby Dental Supply Co., 794 F.2d 850, 854 (3d Cir. 1986) (noting that trademark ownership can be established by, among other things, proof that a party gives to the product "the ...