Predator International, Inc. v. Gamo Outdoor USA, Inc.
Predator International, Inc. v. Gamo Outdoor USA, Inc.
Opinion of the Court
This matter is before the Court on the motions for summary judgment filed by defendants Gamo Outdoor USA, Inc. (“Gamo USA”) [Docket No. 182] and Industrias El Gamo, S.A. (“Gamo Spain”) [Docket No. 183]. The motions are fully briefed and ripe for disposition.
I. BACKGROUND
Plaintiff Predator International, Inc. (“Predator”) began selling airgun pellets with a red polymer tip called “Predator Premium Hunting Pellets” in 2002. Lee Phillips and Tom May developed the pellets starting in the late 1990s. They created the prototypes by taking red polymer tips off of live ammunition sold by other companies and inserting them onto lead pellet bodies. From 2002 until 2006, Predator sold less than $300,000 worth of the pellets, never realizing a profit during that time period. In 2007, Jay Cogswell and Dick Dixon purchased Predator and began selling the pellets under the name POLYMAG. The new owners also changed the color of the tin in which the pellets were sold from green and white to black and white. Under the new ownership, the sale of POLYMAGs increased.
In 2009, Gamo USA, a Predator competitor in the airgun pellet market, introduced the RED FIRE, an airgun pellet with a red polymer tip. Gamo USA contends that it chose red “in order to coincide with its red corporate logo.” Docket No. 182 at 5, ¶ 25. Predator disputes this, though does not dispute that the color red is “a major component of the Gamo brand.” Docket No. 182 at 5, ¶ 25; Docket No. 198 at 7, ¶ 25. Gamo avers that the “red used in the RED FIRE tip is visibly distinguishable from the shade of red used in the POLYMAG tip,” and that the “RED FIRE red is ‘a bit more translucent.’ ” Docket No. 182 at 5, ¶ 26. Predator responds by asserting that “[t]hey are both red, period” but does not specifically deny that the reds are visible distinguishable. Docket No. 198 at 7, ¶ 26 (“How different the reds are is a question of fact for the jury.”).
Both RED FIRE and POLYMAG pellets are sold in large retail sporting goods stores. They are not sold in bulk, but rather in individual unit packages. Each company packages its product differently. POLYMAG pellets are sold in a metal tin which has a black and white label that prominently says “Predator POLYMAG.” When viewing the package, the POLYM-AG pellets are not visible inside the tin, and the tins are stacked when sold in stores. RED FIRE pellets are sold in a clear plastic tin, which reveals the pellets inside. The RED FIRE tin is shrink wrapped onto a cardboard backing which allows the package to be hung for purposes of display. “Gamo RED FIRE” along with the Gamo logo and a depiction of flames are prominently displayed on the cardboard backing.
Purchasers of polymer tipped airgun pellets are more sophisticated consumers than consumers of non-polymer tipped pellets and take greater care when buying polymer tipped pellets. See Docket No. 198 at 9, ¶ 49 & 10, ¶ 53. RED FIRE and POLYMAG pellets are at the high-end of airgun pellets, and their consumers consider them to be premium products.
In regard to Gamo Spain’s involvement in the aforementioned sale and marketing of RED FIRE pellets, Gamo Spain sells the RED FIRE pellets to Gamo USA for sale in the United States. Predator admits that Gamo Spain, which is a distinct legal entity from Gamo USA, does not direct Gamo USA’s marketing of RED FIRE pellets in the U.S. Gamo Spain was not involved in the decisions surrounding RED FIRE’s U.S. packaging and product description. Nor is there evidence that Gamo Spain was involved in the decision to use red polymer tips on the RED FIRE.
Predator initiated this action against defendants on April 28, 2009. Predator alleges that defendants are infringing Predator’s protected trade dress in the color of the POLYMAG’s polymer tip
II. STANDARD OF REVIEW
Summary judgment is warranted under Federal Rule of Civil Procedure 56 when the “movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-50, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Concrete Works, Inc. v. City & County of Denver, 36 F.3d 1513, 1517 (10th Cir. 1994); see also Ross v. The Board of Regents of the University of New Mexico, 599 F.3d 1114, 1116 (10th Cir. 2010). A disputed fact is “material” if under the relevant substantive law it is essential to proper disposition of the claim. Wright v. Abbott Labs., Inc., 259 F.3d 1226, 1231-32 (10th Cir. 2001). Only disputes over material facts can create a genuine issue for trial and preclude summary judgment. Faustin v. City & County of Denver, 423 F.3d 1192, 1198 (10th Cir. 2005). An issue is “genuine” if the evidence is such that it might lead a reasonable jury to return a verdict for the nonmoving party. Allen v. Muskogee, 119 F.3d 837, 839 (10th Cir. 1997). When reviewing a motion for summary judgment, a court must view the evidence in the light most favorable to the non-moving party. Id.; see McBeth v. Himes, 598 F.3d 708, 715 (10th Cir. 2010).
A. Gamo USA’s Motion for Summary Judgment
1. Trade Dress
Plaintiffs trade dress claim arises out of Section 43(a) of the Lanham Act. See 15 U.S.C. § 1125(a). “Under § 43(a) of the Lanham Act, a plaintiff has a cause of action against any person whose use of a word, symbol or device is likely to cause confusion regarding the source or origin of the plaintiffs goods.” Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 977 (10th Cir. 2002) (citing 15 U.S.C. § 1125(a)(1)(A); Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000)). A product’s trade dress consists of its “overall image and appearance, and may include features such as size, shape, color or color combinations, texture, graphics, and even particular sales techniques.” Id. (citation omitted). To ultimately succeed on its trade dress claim, Predator must demonstrate the following: “(1) The trade dress is inherently distinctive or has become distinctive through secondary meaning; (2) There is a likelihood of confusion among consumers as to the source of the competing products; and (3) The trade dress is nonfunctional.” General Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 1227 (10th Cir. 2007) (citations omitted); see 15 U.S.C. § 1125(a).
Predator seeks trade dress protection for the red color of the POLYMAG’s polymer tip and for no other feature or combination of features of its pellets. Docket No. 182 at 2, ¶ 1; Docket No. 198 at 3, ¶ 1; see Vomado Air Circulation Sys. v. Duracraft Corp., 58 F.3d 1498, 1502 (10th Cir. 1995) (“[T]rade dress analysis may be applied to a single feature or a combination of features.”); 1 McCarthy on Trademarks and Unfair Competition (“McCarthy on Trademarks ”) § 8:1, 8:3 (4th ed.) (“While trade dress is most often defined as a totality of elements, there is no reason why the plaintiff cannot define a list of elements consisting of less than the totality of features appearing on a package or container.”). Predator admits that the color red is not inherently distinctive, see WalMart Stores, Inc. v. Samara Bros. Inc., 529 U.S. 205, 212, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000) (“design, like color, is not inherently distinctive”), but argues that its use of red has acquired secondary meaning in the airgun pellet market. “[0]ver time, customers may come to treat a particular color on a product or its packaging ... as signifying a brand.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995).
“A plaintiff may establish secondary meaning ‘through the use of direct evidence, such as consumer surveys or testimony from consumers.’ ” Donchez v. Coots Brewing Co., 392 F.3d 1211, 1218 (10th Cir. 2004) (citation omitted). A plaintiff may also rely upon “ ‘circumstantial evidence regarding: (1) the length and manner of its use, (2) the nature and extent of advertising and promotion of the mark and (3) the efforts made in the direction of promoting a conscious connection, in the public’s mind, between the name or mark and a particular product or venture.’ ” Id. (citations omitted). Here, Predator relies on circumstantial evidence. See Docket No. 198 at 12.
Predator asserts that a jury could find that the red color of the POLYMAG’s tip has attained secondary meaning by relying on evidence that it “has taken significant steps to promote the distinctive red colored tip featured on the POLYMAG.” Docket No. 198 at 12. The only evidence Predator identifies in support of this contention is that the pellet’s advertisement and Predator employees’ business cards contain a color photograph of the pellet.
Predator has also failed to identify any evidence that, during the seven years it exclusively used red tips on airgun pellets,
Predator contends that a jury could consider “that Gamo intentionally copied Predator’s trade dress,” Docket No. 198 at 13, noting that the Tenth Circuit has stated that “ ‘proof of intentional copying’ is an indication that Predator’s trade dress has acquired secondary meaning.” Id. at 13-14 (quoting Sally Beauty, 304 F.3d at 978). In Marker Int’l v. DeBruler, 844 F.2d 763 (10th Cir. 1988), the Tenth Circuit concluded that defendant’s intentional copying of plaintiffs trademark was sufficient to establish secondary meaning where the defendant in Marker Int’l “stated that he continued to use [the disputed mark] because [plaintiff] had a reputation for quality products and he believed people might associate that reputation with” defendant’s products. 844 F.2d at 764. The Tenth Circuit deemed this an admission by defendant that plaintiffs mark had achieved secondary meaning. Id. Even assuming intentional copying, there is little support for the proposition that copying alone, regardless of the reason for such copying, would be sufficient to establish secondary meaning. See Winning Ways, 913 F.Supp. at 1472 (“The court finds as a factual determination that Holloway copied the Clipper and Victory to take advantage of those jackets’ popular styles and not their source identification.”); see also Continental Laboratory Products, Inc. v. Medax Int’l, Inc., 114 F.Supp.2d 992, 1010 (S.D.Cal. 2000) (“[M]any courts have refused to infer secondary meaning from mere intentional copying. Instead, intentional copying supports a finding of secondary meaning only where the defendant intended to confuse consumers and pass off its product as the plaintiffs.”).
In sum, although Predator correctly points out that “[w]hether a trade dress has acquired secondary meaning is a question of fact and thus generally should not be decided at the summary judgment stage,” Sally Beauty, 304 F.3d at 978 (citations and quotations omitted), a factfinder must nevertheless have sufficient evidence upon which to base a ruling in plaintiffs favor in order to survive summary judgment. Here, the evidence at most shows that Predator exclusively used red tips for a period of time and that Gamo USA then copied the red tip. That is not evidence of secondary meaning.
Although evidence relevant to secondary meaning and likelihood of confusion will often overlap, see 2 McCarthy on Trademarks § 15:11, they are distinct legal elements. Without a showing of secondary meaning, there is no trade dress protection and the analysis need not proceed to address likelihood of confusion. See B & B Hardware, Inc. v. Hargis Industries, Inc., 569 F.3d 383, 389 (8th Cir. 2009) (“In the prior action, the jury determined only that B & B’s mark was descriptive and had not obtained a secondary meaning. With this determination, there was no need to address the second element of a trademark infringement claim— whether there was a likelihood of confusion between the two marks.”); Boston Beer Co. Ltd. Partnership v. Slesar Bros. Brewing Co., Inc., 9 F.3d 175, 183 (1st Cir. 1993) (“The district court found that appellant’s marks were not entitled to trademark protection because they had not attained secondary meaning. Accordingly, that court did not need to address the question of likelihood of confusion.”); Thompson Medical Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985) (“If the district court rules that [the term] has not acquired secondary meaning, the mark cannot be protected and the inquiry properly concludes.”); see also Storck USA, L.P. v. Farley Candy Co., Inc., 797 F.Supp. 1399, 1410 n. 11 (N.D.Ill. 1992). Because there is no evidence of secondary meaning, the Court will grant summary judgment to Gamo USA on Predator’s trade dress claim.
2. Copyright
Predator asserts a copyright infringement claim against Gamo USA pursuant to the United States Copyright Act, 17 U.S.C. §§ 101 et seq. To establish a claim for copyright infringement, Predator must show “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
Predator registered language found on its website with the Copyright Office. See Docket No. 182-8. Predator’s website informs readers that the POLYMAG “was designed specifically to be the most effective and efficient airgun hunting ammunition available.” Docket No. 182-8 at 2. The website further describes the pellet as follows:
Experience better accuracy, deeper penetration and higher velocity with Predator’s revolutionary new hunting Polym*1063 ags ™ (polymer tip pellet). Hollow point design creates instant expansion on impact allowing for the taking of larger animals. Hard polymer tip provides excellent flight characteristics.
Id. at 3. The website also included the following description:
The Predator Polymag tm (polymer tip pellet) features a traditional hollow point design in a standard airgun application. The aerodynamic shape and hard polymer tip provide excellent flight characteristics. Other features include:
• Higher Velocity & Flat Trajectory
• Very Accurate and Efficient
• Allows for Deeper Penetration
• Instant Expansion on Impact
• Light Weight (.177 cal weighs 8 gr, .22 weighs 16 gr)
Id. at 4.
Upon introduction of the RED FIRE, Gamo USA also contended that its pellet was “designed specifically to be the most effective and efficient air gun hunting ammunition available.” Docket No. 9-9 at 2.
You will experience better accuracy, deeper penetration and higher velocity with these revolutionary new hunting polymer tipped pellets. The hollow point design creates instant expansion on impact allowing for the taking of larger animals. The hard polymer tip provides excellent flight characteristics as well....
Id. Gamo USA listed the RED FIRE’s specifications as follows:
Higher Velocity & Flat Trajectory
Accurate and Efficient
Allows for Deeper Penetration
Instant Expansion on Impact
Light Weight
.177 cal weighs 8 gr, .22 weighs 16 gr Id.
As the foregoing makes clear, Gamo USA used the same language to describe the RED FIRE’s features as Predator had previously used to describe the POLYMAG. Gamo USA contends, however, that the language is not subject to copyright protection pursuant to the merger doctrine. “[W]hen ‘a given idea is inseparably tied to a particular expression,’ the convention is that there is ‘merger’ between the two.” R.W. Beck, Inc. v. E3 Consulting, LLC, 577 F.3d 1133, 1144 (10th Cir. 2009) (quoting 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03(B)(3), at 13-86.). The doctrine serves to prevent courts from “unwittingly granting] protection to an idea by granting exclusive rights to the only, or one of only a few, means of expressing that idea.” Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 838 (10th Cir. 1993) (citation omitted); see Health Grades, Inc. v. Robert Wood Johnson University Hosp., Inc., 634 F.Supp.2d 1226, 1235 (D.Colo. 2009) (“This doctrine arises from the rule that copyright protection extends only to the author’s original expression, and not to the ideas embodied in that expression.”); see also 17 U.S.C. § 102(b) (“In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”).
This case is distinguishable from those upon which Gamo USA relies, where,
3. State Law Claims
Predator has also asserted Colorado Consumer Protection Act (“CCPA”), unjust enrichment, and unfair competition claims against Gamo USA.
Predator’s unjust enrichment claim rests solely on the allegations of trade dress
As to its unfair competition claim, Predator “concedes that to the extent its unfair competition claim is based upon the improper use of copyrighted material, as opposed to infringement of trade dress, it has already been dismissed.” Docket No. 255 at 4 (citing Docket No. 238). Predator’s unfair competition claim is therefore limited to its allegations of trade dress infringement. See HealthONE of Denver, Inc. v. UnitedHealth Group Inc., 805 F.Supp.2d 1115, 1123 (D.Colo. 2011) (“The common law tort of unfair competition ... protects against ‘copying of nonfunctional aspects of consumer products which have acquired secondary meaning such that they operate as a designation of source.’ ”) (quoting Bonito Boats v. Thunder Craft Boats, 489 U.S. 141, 158, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989)). As noted above, there is no evidence that the red tip of the POLYMAG has acquired secondary meaning. Therefore, the Court will also grant summary judgment on Predator’s unfair competition claim.
In seeking summary judgment on the CCPA claim, Gamo USA simply relies on its arguments supporting summary judgment on the trade dress and copyright claims. Therefore, the Court will deny Gamo USA’s request for summary judgment on the CCPA claim to the extent that claim relies on alleged copyright infringement.
B. Gamo Spain’s Motion for Summary Judgment
For the foregoing reasons, Gamo Spain is entitled to summary judgment on Predator’s trade dress, unjust enrichment, and unfair competition claims. The question becomes whether Gamo Spain is entitled to summary judgment on Predator’s Copyright Act and CCPA claims.
Predator contends that, because Gamo Spain, a foreign company, sells Red Fire pellets to Gamo USA, it can be held liable for copyright infringement. “It is well established that copyright laws generally do not have extraterritorial application.” Update Art, Inc. v. Modiin Pub., Ltd., 843 F.2d 67, 73 (2d Cir. 1988). Predator, however, contends that Gamo Spain can be held liable pursuant to § 602(a)(1) of the Copyright Act, which provides that “[[Importation into the United States, without the authority of the owner of copyright under this title, of copies ... of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies ... under section 106, actionable under section 501.” 17 U.S.C. § 602(a)(1). Predator argues that Gamo Spain imports and sells infringing products through Gamo USA, which is simply a “strawman” for Gamo Spain. See Docket No. 205 at 25. Predator, however, identifies no evidence in support of that argument. As the record stands, it is Gamo USA that imports and sells RED FIRE pellets in the U.S.
Furthermore, even assuming the sale of these products to an American company was sufficient to support liability,
In order to establish a CCPA claim, Predator must show, inter alia, that it “suffered injury in fact to a legally protected interest.” Hall v. Walter, 969 P.2d 224, 235 (Colo. 1998). The only two legally protected interests identified by Predator were trade dress and copyright. For the foregoing reasons, the record is devoid of evidence sufficient to support either theory of recovery against Gamo Spain.
IV. CONCLUSION
For the foregoing reasons, it is
ORDERED that the motion for summary judgment filed by defendant Gamo USA [Docket No. 182] is GRANTED in part and DENIED in part. Upon entry of final judgment in this case, judgment shall enter in favor of Gamo USA and against Predator on Predator’s claim for trade dress infringement and state law claims for unjust enrichment and unfair competition. It is further
ORDERED that the motion for summary judgment filed by Gamo Spain [Docket No. 183] is GRANTED and Gamo Spain shall be dismissed from this action. Upon entry of final judgment in this case, judgment shall enter in favor of Gamo Spain and against Predator on all of Predator’s claims.
. The following facts are derived from defendants’ Statements of Undisputed Material Facts and plaintiff's responses thereto. Plaintiff did not include a Statement of Additional Disputed Facts in its response briefs, which this Court’s Practice Standards require when a party believes that additional facts should be considered. Defendants pointed this out in their respective reply briefs, and plaintiff has not sought leave to identify any additional disputed facts.
. Predator does not seek trade dress protection for any other feature of its pellets and admits that "[c]onsumers identify the POLYMAG product based on the numerous combined features of the product, and not solely on the red tip.” Docket No. 182 at 10, ¶ 58; Docket No. 198 at 10, ¶ 58.
. As noted above, Predator limits its trade dress to the color red.
. Predator cites the "close to $900,000 in sales during the seven years in which Predator exclusively” sold a red-tipped airgun pellet. Docket No. 198 at 13; see Docket No. 198 at 15. "The Tenth Circuit has also indicated that duration of exclusive use of a mark may establish secondary meaning.” First Fidelity Bank, N.A. v. Fidelity Bank, 2006 WL 6884605, at *4 (W.D.Okla. April 18, 2006). However, " '[t]o acquire secondary meaning, a descriptive mark must have been used so long and so exclusively by one producer with reference to his goods’ that it has acquired distinctiveness.” Sally Beauty, 304 F.3d at 978 n. 4 (quoting J.M. Huber Corp. v. Lowery Wellheads, Inc., 778 F.2d 1467, 1470 (10th Cir. 1985)) (emphasis in original). The record contains no evidence upon which a jury could conclude that the seven years of use here resulted in the acquisition of distinctiveness. Cf. In re Owens-Coming Fiberglas Corp., 774 F.2d 1116, 1125 (Fed.Cir. 1985) (considering, among other factors, the exclusive use of the color pink since 1956 along with emphasis on that color in the $42,000,000 spent marketing the product).
. Predator cites Ex. 7 to its motion for preliminary injunction as appearing in the docket at Docket No. 9-9. The Electronic Case Filing numbering system has been changed since the filing of plaintiff’s motion. Exhibit 7 now appears at Docket No. 9-8. The Court will cite the current docket numbers.
. Continental Laboratory Products, 114 F.Supp.2d at 1010 n. 14 ("[FJederal courts have refused to infer secondary meaning from deliberate copying of a product design where the defendant uses a different packaging design or conspicuously displays its own trademarks. The principle behind these cases is that a court should not infer that the defendant intended to deceive consumers where it made deliberate efforts to prevent source confusion.”) (citations omitted).
. This exhibit was admitted during a hearing on plaintiff's motion for preliminary injunction [Docket No. 9]. Cf. Fed.R.Civ.P. 65(a)(2) ("[Ejvidence that is received on the motion [for preliminary injunction] and that would be admissible at trial becomes part of the trial record and need not be repeated at trial.”).
. Innovation Ventures, 635 F.Supp.2d at 640 (citation omitted):
In this case, there is evidence that the idea is capable of various modes of expression. Defendants attached pictures of the medical caution statements published on other energy shot labels. Although the medical caution statements are substantially similar, in that they all express the same basic facts, the statements are not identical. Indeed, the word choice and word order differs among the labels. These differences indicate that the idea and expression have not merged and that there is not a standard way of expressing the idea, such that the "scenes a faire” doctrine would apply.
. As the Court noted in ruling on defendants’ motion to dismiss the state law claims, Predator has "disavow[ed] its unjust enrichment claim being based on copyright infringement.” Docket No. 238 at 8.
. Cf. Subafilms, Ltd. v. MGM-Pathe Commc’ns Co., 24 F.3d 1088, 1099 (9th Cir. 1994) (”[T]he mere authorization of acts of infringement that are not cognizable under the United States copyright laws because they occur entirely outside of the United States
Reference
- Full Case Name
- PREDATOR INTERNATIONAL, INC., a Colorado corporation v. GAMO OUTDOOR USA, INC., a Florida corporation, and Industrias El Gamo, S.A., a Spanish corporation
- Status
- Published