29 - MTD Oppn

7/30/2019 29 - MTD Oppn

1/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

PLS OPP TO DEFS MOTION TO DISMISSCASE NO. CV 12-05072 MMC

JOHN W. SPIEGEL (SBN: 78935)[email protected], TOLLES & OLSON LLP355 South Grand Avenue, Thirty-Fifth FloorLos Angeles, CA 90071-1560Telephone: (213) 683-9100Facsimile: (213) 687-3702

JONATHAN H. BLAVIN (SBN: 230269)[email protected] MAX CREED (SBN: 272595)[email protected], TOLLES & OLSON LLP560 Mission Street, 27th FloorSan Francisco, CA 94105Telephone: (415) 512-4000Facsimile: (415) 512-4077

Attorneys for Plaintiff

EMECO INDUSTRIES, INC.

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN FRANCISCO DIVISION

EMECO INDUSTRIES, INC.

Plaintiff,

v.

RESTORATION HARDWARE, INC., GARYFRIEDMAN, and DOES 1-10.

Defendants.

CASE NO. CV 12-05072 MMC

PLAINTIFFS OPPOSITION TODEFENDANTS MOTION TO DISMISS

Date: December 14, 2012Time: 9:00 a.m.Courtroom: 7Judge: Honorable Maxine M. Chesney

Case3:12-cv-05072-MMC Document29 Filed11/19/12 Page1 of 33

7/30/2019 29 - MTD Oppn

2/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

TABLE OF CONTENTS

Page

- i - PLS OPP TO DEFS MOTION TO DISMISSCASE NO. CV 12-05072 MMC

I. INTRODUCTION...............................................................................................................1

II. BACKGROUND .................................................................................................................2

A. Emeco and Its Iconic Navy Chair Collection .......................................................2

B. Restoration Hardware Has Replicated the Navy Chair Collection.......................4

C. Pre-Lawsuit Communications and Procedural Background....................................7

III. STANDARD OF REVIEW.................................................................................................8

IV. ARGUMENT.......................................................................................................................8

A. Emeco Has Adequately Pled a Claim for Trade Dress Counterfeiting andInfringement ............................................................................................................8

1. Restoration Hardwares Argument Regarding the Registered NavyChair Outline Is Immaterial and Legally Meritless ..................................8

2. Emecos Trade Dress Claim Rests Independently in FederalRegistration and Common Law Trade Dress Rights .................................11

3. Emeco Has Adequately Put Restoration Hardware on Notice As tothe Claimed Trade Dress at Issue ..............................................................12

4. Emeco Has Adequately Alleged Secondary Meaning and Non-Functionality for Its Navy Chair Trade Dress ........................................15

B. Emeco Has Adequately Pled a Claim for Trademark Counterfeiting andInfringement ..........................................................................................................17

1. Emeco Has Adequately Pled a Claim for Trademark Counterfeiting .......17

2. Restoration Hardwares Trademark Fair Use Argument Is

Improper on a Motion to Dismiss, and in Any Event Baseless .................183. Emecos Trademark Claim Rests Independently in Federal

Registration and Common Law Trade Dress Rights .................................20

C. Emeco Has Adequately Pled a Claim for Federal Dilution...................................21

D. Emeco Has Adequately Pled a Claim for Common Law Trade DressInfringement ..........................................................................................................22

E. Emeco Has Adequately Pled a Claim for Common Law TrademarkInfringement ..........................................................................................................23

1. Restoration Hardwares Fair Use Argument Fails.................................23

2. Emeco Has Adequately Put Restoration Hardware on Notice of Its

Common Law Trademark Rights ..............................................................23F. Emeco Has Adequately Pled a Claim for Dilution Under California Law............23

1. Emecos Claim Rests on the Common Law and May Rely on OtherStatutory Provisions...................................................................................23

2. Restoration Hardwares Fair Use Argument Fails.....................................24

3. Emeco Has Adequately Put Restoration Hardware on Notice As toWhat Is Claimed As Trademark and Trade Dress Dilution.......................25


7/30/2019 29 - MTD Oppn

3/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

TABLE OF CONTENTS(continued)

Page

- i i - PLS OPP TO DEFS MOTION TO DISMISSCASE NO. CV 12-05072 MMC

G. The Court Should Not Dismiss Emecos Remaining Claims (Claims 4-7)...........25

V. CONCLUSION..................................................................................................................25


7/30/2019 29 - MTD Oppn

4/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

TABLE OF AUTHORITIES

Page

- iii- PLS OPP TO DEFS MOTION TO DISMISSCASE NO. CV 12-05072 MMC

FEDERAL CASES

Adidas-Salomon AG v. Target Corp.,228 F. Supp. 2d 1192 (D. Or. 2002) ..........................................................................................9

Apple Inc. v. Samsung Elecs. Co.,768 F. Supp. 2d 1040 (N.D. Cal. 2011)...................................................................................15

Armstrong Cork Co. v. Armstrong Covers Co.,434 F. Supp. 860 (E.D. Mo. 1977) ..........................................................................................14

Ashcroft v. Iqbal,556 U.S. 662 (2009)...................................................................................................................8

Autodesk, Inc. v. Dassault Systemes SolidWorks Corp.,2008 WL 6742224 (N.D. Cal. Dec. 18, 2008)...................................................................13, 18

Axis Imex, Inc. v. Sunset Bay Rattan, Inc.,2009 WL 55178 (N.D. Cal. Jan. 7, 2009)................................................................................17

Burberry Ltd. v. Euro Moda, Inc.,2009 WL 1675080 (S.D.N.Y. June 10, 2009) .........................................................................11

Byrnes & Kiefer Co. v. Flavoripe Co.,1986 WL 15550 (W.D. Pa. Aug. 20, 1986).............................................................................19

Cairns v. Franklin Mint Co.,292 F.3d 1139 (9th Cir. 2002) .................................................................................................18

Coach, Inc. v. Abners Fashion,

2009 WL 4810179 (C.D. Cal. Dec. 7, 2009) ...........................................................................10

Coach, Inc. v. Horizon Trading USA Inc.,2012 WL 5451274 (S.D.N.Y. Nov. 7, 2012)...........................................................................10

Coach, Inc. v. Siskiyou Buckle Co.,2012 WL 1532489 (D. Or. Apr. 27, 2012) ........................................................................10, 17

Consol. Cigar Corp. v. Monte Cristi de Tabacos,58 F. Supp. 2d 188 (S.D.N.Y. 1999) .......................................................................................10

Crystal Entmt & Filmworks, Inc. v. Jurado,643 F.3d 1313 (11th Cir. 2011) ...............................................................................................12

David White Instruments, LLC v. TLZ, Inc.,2003 WL 21148224 (N.D. Ill. May 16, 2003)...................................................................12, 17

Deep Water Bail Bonds v. Bavouset,2007 WL 4916961 (C.D. Cal. Sept. 24, 2007) ........................................................................22

DocMagic, Inc. v. Ellie Mae, Inc.,745 F. Supp. 2d 1119 (N.D. Cal. 2010)...................................................................................16


7/30/2019 29 - MTD Oppn

5/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

TABLE OF AUTHORITIES(Continued)

Pag

- i v -PLS OPP TO DEFS MOTION TO DISMISS


Dynamic Fluid Control (PTY) Ltd. v. Intl Valve Mfg., LLC,790 F. Supp. 2d 732 (N.D. Ill. 2011).................................................................................12, 17

eAdGear, Inc. v. Liu,2012 WL 2367805 (N.D. Cal. June 21, 2012).........................................................................25

Entrepreneur Media, Inc. v. Smith,279 F.3d 1135 (9th Cir. 2002) .................................................................................................16

Fortune Dynamic, Inc. v. Victorias Secret Stores Brand Mgmt., Inc. ,618 F.3d 1025 (9th Cir. 2010) ...........................................................................................19, 20

Gallup Inc. v. Bus. Research Bur. (PVT) Ltd.,2009 WL 941756 (N.D. Cal. Apr. 6, 2009) .............................................................................22

Gross v. Bare Escentuals Beauty, Inc.,641 F. Supp. 2d 175 (S.D.N.Y. 2008) .......................................................................................9

Guess?, Inc. v. Tres Hermanos,993 F. Supp. 1277 (C.D. Cal. 1997) ..........................................................................................9

Hard Rock Cafe Licensing Corp. v. Pac. Graphics, Inc.,776 F. Supp. 1454 (W.D. Wash. 1991) .....................................................................................9

Huene v. U.S. Dept of the Treasury,2012 WL 1681969 (E.D. Cal. May 14, 2012) .........................................................................24

Humboldt Wholesale, Inc. v. Humboldt Nation Distr., LLC,

2011 WL 6119149 (N.D. Cal. Dec. 8, 2011)...........................................................................15

In re Dual-Deck Video Cassette Recorder Antitrust Litig.,11 F.3d 1460 (9th Cir. 1993) ...................................................................................................19

In re Portal Software, Inc. Sec. Litig.,2006 WL 2385250 (N.D. Cal. Aug. 17, 2006) ........................................................................16

Innovation Ventures, LLC v. N2G Distrib., Inc.,635 F. Supp. 2d 632 (E.D. Mich. 2008) ..................................................................................12

Katz v. China Century Dragon Media, Inc.,2011 WL 6047093 (C.D. Cal. Nov. 30, 2011) ........................................................................16

KP Permanent MakeUp, Inc. v. Lasting Impression I, Inc. ,408 F.3d 596 (9th Cir. 2005) ...................................................................................................18

Levi Strauss & Co. v. Shilon,121 F.3d 1309 (9th Cir. 1997) ...................................................................................................7

Lewis Mgmt. Co. v. Corel Corp.,1995 WL 724835 (S.D. Cal. June 28, 1995) ...........................................................................19


7/30/2019 29 - MTD Oppn

6/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28


Pag

- v -PLS OPP TO DEFS MOTION TO DISMISS


Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC,507 F.3d 252 (4th Cir. 2007) ...................................................................................................18

Mattel, Inc. v. MGA Entmt, Inc.,782 F. Supp. 2d 911 (C.D. Cal. 2011) .....................................................................................24

Millennium Labs., Inc. v. Ameritox, Ltd.,2012 WL 4863781 (S.D. Cal. Oct. 12, 2012) ..........................................................................17

Nailtiques Cosmetic Corp. v. Salon Sciences, Corp.,1997 WL 244746 (S.D. Fla. Jan. 10, 1997)...............................................................................9

Name LLC v. Arias,2010 WL 4642456 (S.D.N.Y. Nov. 16, 2010).........................................................................16

Network Automation, Inc. v. Advanced Sys. Concepts, Inc.,638 F.3d 1137 (9th Cir. 2011) .................................................................................................10

New Colt Holding Corp. v. RJG Holdings of Fla., Inc.,312 F. Supp. 2d 195 (D. Conn. 2004)......................................................................................12

Pan Am. World Airways, Inc. v. Flight 001, Inc.,2007 WL 2040588 (S.D.N.Y. July 13, 2007) ............................................................................9

Pepe (U.K.) Ltd. v. Ocean View Factory Outlet Corp.,770 F. Supp. 754 (D. P.R. 1991) .............................................................................................14

Perfect 10, Inc. v. Megaupload Ltd.,

2011 WL 3203117 (S.D. Cal. July 27, 2011) ..........................................................................22

PetMed Express, Inc. v. MedPets.Com, Inc.,336 F. Supp. 2d 1213 (S.D. Fla. 2004) ....................................................................................18

Playboy Enters., Inc. v. Netscape Commcns Corp.,354 F.3d 1020 (9th Cir. 2004) .................................................................................................23

Porter v. Jones,319 F.3d 483 (9th Cir. 2003) .....................................................................................................8

Publns Intl, Ltd. v. Landoll, Inc.,164 F.3d 337 (7th Cir. 1998) ...................................................................................................15

Rose Art Indus., Inc. v. Swanson,235 F.3d 165 (3d Cir. 2000) ....................................................................................................14

Sanders v. Kennedy,794 F.2d 478 (9th Cir. 1986) .....................................................................................................8


7/30/2019 29 - MTD Oppn

7/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28


Pag

- v i -PLS OPP TO DEFS MOTION TO DISMISS


Saul Zaentz Co. v. Wozniak Travel, Inc.,627 F. Supp. 2d 1096 (N.D. Cal. 2008)...................................................................................24

Shell Trademark Mgmt. B.V. v. Warren Unilube, Inc.,765 F. Supp. 2d 884 (S.D. Tex. 2011).....................................................................................15

Smith & Hawken, Ltd. v. Gardendance, Inc.,2004 WL 2496163 (N.D. Cal. Nov. 5, 2004) ..........................................................................13

Solid Host, NL v. Namecheap, Inc.,652 F. Supp. 2d 1092 (C.D. Cal. 2009) ...................................................................................16

Stix Prods., Inc. v. United Merchants & Mfrs, Inc.,295 F. Supp. 479 (S.D.N.Y. 1968) ..........................................................................................14

Tenore v. Campbell,2008 WL 2477394 (N.D. Cal. June 18, 2008).........................................................................15

Time, Inc. v. Petersen Publg Co.,173 F.3d 113 (2d Cir. 1999) ....................................................................................................12

United States v. Guerra,293 F.3d 1279 (11th Cir. 2002) .........................................................................................11, 18

United States v. Lam,677 F.3d 190 (4th Cir. 2012) ...................................................................................................10

Vision Sports, Inc. v. Melville Corp.,

888 F.2d 609 (9th Cir. 1989) .....................................................................................................9

Vision Tech. Design & Mfg., Inc. v. Gen. Wire Spring Co.,2007 WL 2069945 (E.D. Cal. July 17, 2007) ..........................................................................21

Volkswagen AG v. Verdier Microbus and Camper, Inc.,2009 WL 928130 (N.D. Cal. Apr. 3, 2009).........................................................................9, 13

Vuitton Et Fils S.A. v. J. Young Enterprises, Inc.,644 F.2d 769 (9th Cir. 1981) ...................................................................................................15

Webceleb, Inc. v. Procter & Gamble Co.,2012 WL 460472 (S.D. Cal. Feb. 13, 2012)............................................................................19

Whitney v. Wurtz,2006 WL 83119 (N.D. Cal. Jan. 11, 2006)..............................................................................22

Zobmondo Entmt, LLC v. Falls Media, LLC,602 F.3d 1108 (9th Cir. 2010) .................................................................................................15


7/30/2019 29 - MTD Oppn

8/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28


Pag

- vii -PLS OPP TO DEFS MOTION TO DISMISS


STATE CASES

M.A.C. Prods., Inc. v. BBK Performance, Inc.,2002 WL 1938956 (Cal. Ct. App. Aug. 22, 2002) ..................................................................24

STATUTES AND RULES

15 U.S.C. 1057(b)..................................................................................................................................15 1114(1)........................................................................................................................7, 11, 21 1115(a) ..................................................................................................................................15 1116 ................................................................................................................................11, 21 1116(a)..................................................................................................................................10 1116(d)(1)(A) .......................................................................................................................10 1117(a)..................................................................................................................................10

1117(b)..................................................................................................................................10 1117(c)..................................................................................................................................10 1125(a)..................................................................................................................7, 11, 14, 21 1125(c)....................................................................................................................................7

28 U.S.C. 1367............................................................................................................................25

Cal. Bus. & Prof. Code 14247 ..............................................................................................................................23, 24 14330 ..............................................................................................................................23, 24 17200 et seq. ...................................................................................................................7, 25

Fed. R. Civ. P.

Rule 8(a)(2)................................................................................................................................8Rule 10(c) ................................................................................................................................21Rule 12(b)(6) .............................................................................................................................8


7/30/2019 29 - MTD Oppn

9/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

- 1 - PLS OPP TO DEFS MOTION TO DISMISS


I. INTRODUCTION

Plaintiff Emeco Industries, Inc. (Emeco) has filed a highly-detailed, 28-page Complaint

exhaustively setting forth the flagrant acts of trade dress and trademark counterfeiting and

infringement of Defendants Restoration Hardware, Inc., Gary Friedman, and Does 1-10

(Restoration Hardware). As the Complaint alleges, Restoration Hardware has copied, verbatim

the iconic and protected design of Emecos Navy Chair collection and has used the near-

identical Naval Chair name to designate its replicas. Below is a side-by-side comparison of

Emecos Navy Chair and Restoration Hardwares Naval Chair.

Emecos Navy Chair Restoration Hardwares Naval Chair

Dkt. No. 1 (Compl.) 33. Restoration Hardware has distributed millions of catalogs featuring

its counterfeit products and has prominently displayed them on its website, listing them for sale at

a fraction of what the Emeco originals cost. Restoration Hardwares conduct is not only willful,

but is part of an established business practice of profiting off of others designs and trademarks.

Restoration Hardware ignored Emecos repeated notices to cease its conduct, and only after

Emeco filed suit did it represent that it had ceased selling the chairs, effectively conceding its

wrongdoing. Emeco has filed a motion for a preliminary injunction, set for hearing on December

14, 2012, to ensure the cessation of Restoration Hardwares conduct and to obtain corrective

notice to the millions of consumers who saw its catalog and website. See Dkt. No. 10.

In an attempt to distract the Court from its own conduct, Restoration Hardware has filed a

Motion to Dismiss (Motion) asserting a laundry list of pedantic, hyper-technical arguments

all of which are immaterial to the substance and viability of Emecos claims and which disregard


7/30/2019 29 - MTD Oppn

10/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



the actual allegations of the Complaint and settled law. The allegations of the Complaint more

than adequately identify the protected trade dress and trademarks at issue and sufficiently plead

claims for statutory and common law counterfeiting, infringement, and dilution. Restoration

Hardwares fair use arguments are not only procedurally improper at the motion to dismiss stage,

but lack any merit as the Complaint alleges that Restoration Hardware is not using the Naval

Chair mark in a purely descriptive sense, but as the name of the product itself, and is acting in

bad faith by attempting to capitalize on Emecos significant goodwill.

Restoration Hardwares Motion should be denied in its entirety.

II. BACKGROUND

A. Emeco and Its Iconic Navy Chair Collection

Founded in 1944 in Hanover, Pennsylvania, Emeco manufactures and markets the iconic

Navy Chair. Compl. 13. Emeco developed the Navy Chair when the United States Navy

commissioned the company during World War II to build a seaworthy, lightweight, and durable

chair suitable for use on warships and submarines. Id.

In the years since, the Emeco Navy Chair has been recognized as a modern masterpiece

of twentieth-century design. Id. 14. It is in the permanent collections of museums around the

world. Id. It is used worldwide in homes, offices, hotels, colleges, and restaurants and regularly

appears in design magazines and books, fashion layouts, and Hollywood films and television

series. Id. The Navy Chair also has been prominently displayed by preeminent designers

including Philippe Starck and Frank Gehry in their own projects. Id.

The Navy Chair is constructed by hand in Hanover, one at a time, through a highly

technical and precise manufacturing process consisting of 77 steps. Id. 15. The chairs undergo

a thermal treatment, making them three times stronger than steel. Id. Each chair is expected to

last for 150 years, and comes with a lifetime guarantee. Id. Emeco has earned an industry-wide

reputation for exclusively manufacturing the Navy Chair through this rigorous process. Id.

16. Emecos unique manufacturing process and its Navy Chair products have attracted the

attention of wide-reaching media outlets, including CNN. Id.


7/30/2019 29 - MTD Oppn

11/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



Emeco has entered into a Joint Venture Partnership with the Coca-Cola Company to

construct a version of the Navy Chair (the 111 Navy Chair) made out of recycled plastic

Coca-Cola bottles. Compl. 17. The 111 Navy Chair is available in various colors, including

red, black, green, orange, and white, and has won several design awards. Id. Below are images

of the 1006 Navy Chair and the 111 Navy Chair.

1006 Navy Chair 111 Navy Chair

Id. 18. In addition, Emeco makes a number of other products as part of its Navy Chair

collection, including the Navy Armchair, the Navy Counter Stool, and the Navy Barstool.

The Navy Armchair The Navy Counter Stool The Navy Barstool

Id. 19. Emeco sells its Navy Chair collection directly to consumers, including through

its website, and through established retail furniture and design stores. Id. 20.

Emeco is the owner of federal registration nos. 2,511,360 and 3,191,187, which cover the

configuration and outline of the Navy Chair, as well as federal registration nos. 3,016,791 and


7/30/2019 29 - MTD Oppn

12/37

7/30/2019 29 - MTD Oppn

13/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



Navy Chair Naval Side Chair

Navy Armchair Naval Armchair

Navy Counter Stool Naval Counter Stool

Navy Barstool


7/30/2019 29 - MTD Oppn

14/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



Navy Barstool Naval Barstool

Id. 33-34. Restoration Hardware prominently marketed and advertised its chairs and stools

with the Naval Chair name in its print catalog and on its website. Id. 36-38. For the last

fiscal year, Restoration Hardware distributed roughly 26.1 million catalogs to consumers. Id.

37. The retail prices of Restoration Hardwares Naval Chair products are more than $300 less

than their Navy Chair counterparts, with, for example, the Navy Chair priced at $450

compared to the Naval Chairs $129 price tag. Id. 32.

The identical nature of the Navy Chair and Naval Chair product lines is not mere

coincidence, but is the result of willful, intentional conduct that is part of Restoration Hardwares

established practice of using others designs and trademarks for financial gain. Id. 44. As

Restoration Hardware itself has stated, euphemistically, in its pre-IPO filings with the Securities

and Exchange Commission, [a]t our core we are not designers, rather we are curators and

composers of inspired design and experiences. Id. 45. Restoration Hardware acknowledges in

these public filings that by [e]xternally discover[ing] and curat[ing] others designs, as opposed

to [i]nternally design[ing] and develop[ing] its own products, it can cut the development

process from 12-18 months lead time to 3-9 months and reduce product costs. Id. Indeed,Restoration Hardware has been the focus of half a dozen copying and infringement actions over

the last decade, with one observer stating, [t]hey should call it Replication Hardware. Id.

47-55.


7/30/2019 29 - MTD Oppn

15/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



C. Pre-Lawsuit Communications and Procedural Background

On September 7, 2012, Gregg Buchbinder, President & CEO of Emeco, expressed

concerns regarding Restoration Hardwares Naval Chair product line to Glenn Krevlin, a

member of the board of directors of Restoration Hardware, and told him that if Restoration

Hardware did not cease its conduct, Emeco would be forced to bring legal action. Id. 39. Per

Mr. Krevlins suggestion, Mr. Buchbinder emailed Mr. Krevlin on September 8, 2012 with

Emecos position and demands. Id. 40. Mr. Krevlin responded, Got it. Id.

Seeing no response from Restoration Hardware, Emecos counsel sent a letter on

September 20 to Restoration Hardwares current CEO, Carlos Alberini, asking the company to

cease and desist its infringing activity. Id. 41. Restoration Hardware modified its website to

remove all references to Naval Chair and replace them with the product name the Aluminum

line, but otherwise refused to cease selling the products. Id. 42. The infringing products

remained for sale and millions of catalogs describing these products as part of the Naval Chair

series already had been circulated to the public. Id.

On October 1, 2012, Emeco filed suit against Restoration Hardware. See Compl. The

Complaint asserts claims for trade dress and trademark counterfeiting and infringement under 15

U.S.C. 1114(1), 1125(a) (Counts I-II); federal dilution under 15 U.S.C. 1125(c) (Count III);

common law trade dress and trademark infringement (Counts IV-V); dilution under California

statutory and common law (Count VI); and violation of the Cal. Bus. & Prof. Code 17200 et

seq. (Count VII). Id. 64-124. On October 10, Emeco filed a motion for a preliminary

injunction. See Dkt. No. 10.1

A hearing on the motion is set for December 14. Dkt. No. 17.

1As noted, Restoration Hardware has since represented to Emeco that it is no longer selling its

Naval Chair products though only after Emeco filed this lawsuit, only after ignoring

repeated cease-and-desist letters from Emeco, and only after distributing millions of catalogsfeaturing the counterfeit products. As explained in Emecos motion for a preliminary injunction,the Court can and should issue a preliminary injunction notwithstanding Restoration Hardwaresrepresentations. As the Ninth Circuit has held, a trademark plaintiff is entitled to effectiverelief; and any doubt in respect of the extent thereof must be resolved in [the plaintiffs] favor asthe innocent producer and against the [defendant], which has shown by its conduct that it is not tobe trusted. Levi Strauss & Co. v. Shilon, 121 F.3d 1309, 1314 (9th Cir. 1997) (quoting WilliamR. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 532 (1924)). Moreover, Restoration Hardwarehas done nothing to provide corrective notice to consumers following its flooding of the


7/30/2019 29 - MTD Oppn

16/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



III. STANDARD OF REVIEW

In a motion to dismiss under Rule 12(b)(6) for failure to state a claim, the complaint must

be construed in the light most favorable to the non-moving party and all material allegations in

the complaint are taken to be true. Sanders v. Kennedy, 794 F.2d 478, 481 (9th Cir. 1986). A

complaint need only satisfy the minimal notice pleading requirements of Rule 8(a)(2) a short

and plain statement to survive a motion to dismiss. See Fed. R. Civ. P. 8(a)(2);Ashcroft v.

Iqbal, 556 U.S. 662, 677-78 (2009); Porter v. Jones, 319 F.3d 483, 494 (9th Cir. 2003).

IV. ARGUMENT

A. Emeco Has Adequately Pled a Claim for Trade Dress Counterfeiting andInfringement

1. Restoration Hardwares Argument Regarding the Registered NavyChair Outline Is Immaterial and Legally Meritless

Restoration Hardwares lead-off argument in its Motion focusing on Emecos federal

registration for the outline of the Navy Chair is both immaterial and wrong as a matter of law.

Restoration Hardware argues that Emecos federal registration for the outline of the Navy

Chair, Registration No. 3,191,187 (Compl. Ex. 1), does not support Emecos trade dress claim

because it is for a logo, not for a product configuration. Dkt. No. 22 (Mot.) at 5. But as

Restoration Hardware concedes in the very next paragraph, Emeco has a separate trademark

registration for the configuration of the Navy Chair, Registration No. 2,511,360, which serves

as an independent basis for [Emecos] trade dress counterfeiting and infringement claim. Id. at

6. Thus, even if this argument regarding the registered outline had any merit, which it does not,

Restoration Hardware concedes that it would have no effect on Emecos trade dress claim.

In any event, Restoration Hardwares argument has no legal basis. As the Ninth Circuit

and numerous other courts have held, logos are not limited to trademark claims and can be

included as part of a trade dress claim. As the Ninth Circuit has held,

trade dress involves the total image of a product and may include features such assize, shape, color, color combinations, texture, or graphics. . . . Trade dressprotection is broader in scope than trademark protection, both because it protects

marketplace with millions of catalogs featuring the infringing products, which is a criticalcomponent of Emecos proposed preliminary injunction order.


7/30/2019 29 - MTD Oppn

17/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



aspects of packaging and product design that cannot be registered for trademarkprotection and because evaluation of trade dress infringement claims requires thecourt to focus on the plaintiffs entire selling image, rather than the narrowersingle facet of trademark. . . . Thus, to the extent that [the plaintiffs] cause ofaction focuses upon the look and styling of the [product], along with the colorscheme and graphic display embodied in the VSW logo, it is a trade dress claim.

Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir. 1989) (emphasis added).2 And

as alleged in the Complaint, the Navy Chair outline plays a critical role in the Navy Chair

trade dress and Emeco brand. The outline, which reflects the actual design of the chair, serves as

the companys official logo, as noted above. Compl. 27. It is on the packaging of every Emeco

product, in its advertising and marketing materials, and is displayed at trade fairs.

Restoration Hardware ignores this case law by suggesting that because the Navy Chair

outline may have been registered as a trademark, it cannot serve as the basis for a trade dress

claim. Mot. at 6. Numerous courts have rejected that very argument, holding that where graphic

elements such as a logo that might otherwise be considered trade dress are part of a

registered trademark, that mark should also be entitled to the broader protection afforded to

trade dress. Hard Rock Cafe Licensing Corp. v. Pac. Graphics, Inc., 776 F. Supp. 1454, 1460

(W.D. Wash. 1991) (emphasis added); see Adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d

1192, 1207-08 (D. Or. 2002) (numerous cases address trade dress claims which include

registered trademarks);Nailtiques Cosmetic Corp. v. Salon Sciences, Corp., 1997 WL 244746,

at *2 (S.D. Fla. Jan. 10, 1997) (protection of trademark registration extends to. . . Trade Dress).

Restoration Hardwares argument that there can be no counterfeit(as opposed to

traditional infringement) claim with respect to the Navy Chair outline because Emeco does not

accuse Defendants of using any trademark that is identical with, substantially indistinguishable

2See also, e.g., Volkswagen AG v. Verdier Microbus and Camper, Inc., 2009 WL 928130, at *5-6

(N.D. Cal. Apr. 3, 2009) (holding VW logo to be part of protectable trade dress and that VWhas established a likelihood of success on the merits on its trade dress infringement claim onpreliminary injunction motion); Guess?, Inc. v. Tres Hermanos, 993 F. Supp. 1277, 1285 (C.D.Cal. 1997) (holding that Guess? logos are non-functional protectable trade dress); Gross v. BareEscentuals Beauty, Inc., 641 F. Supp. 2d 175 (S.D.N.Y. 2008) (finding trade dress to includelogos); Pan Am. World Airways, Inc. v. Flight 001, Inc., 2007 WL 2040588, at *11 (S.D.N.Y.July 13, 2007) (Pan Am Globe logo is likely to merit trade dress protection).


7/30/2019 29 - MTD Oppn

18/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

- 1 0 - PLS OPP TO DEFS MOTION TO DISMISS


from, or confusingly similar to the Navy Chair outline (Mot. at 7) is misplaced, for several

reasons. First, as noted, Restoration Hardwares argument does notapply to Emecos registration

for the configuration of the Navy Chair, Registration No. 2,511,360, which serves as an

independent basis for Emecos trade dress counterfeiting claim. Second, the argument at best

only applies to Emecos counterfeiting, as opposed to infringement, trade dress claim. It would

only affect the availability of certain remedies, like statutory damages but notably not Emecos

claim for injunctive relief.3

And the argument is meritless. Whether a product rises to the level of a counterfeit mark,

i.e., a spurious mark that is identical with, or substantially indistinguishable from, a registered

mark is a factual inquiry that cannot be resolved on the pleadings. See Coach, Inc. v. Siskiyou

Buckle Co., 2012 WL 1532489, at *3 (D. Or. Apr. 27, 2012) (citing 15 U.S.C. 1127). And at

any rate, Restoration Hardwares trade dress does not have to be an exact replica of [the]

registered Navy Chair outline to be deemed a counterfeit. United States v. Lam, 677 F.3d

190, 199 (4th Cir. 2012); see also Consol. Cigar Corp. v. Monte Cristi de Tabacos, 58 F. Supp.

2d 188, 196 (S.D.N.Y. 1999) (granting summary judgment for trade dress counterfeiting despite

minor differences in trade dress which would not be apparent to an unwary observer); Coach,

Inc. v. Horizon Trading USA Inc., 2012 WL 5451274, at *5-6 (S.D.N.Y. Nov. 7, 2012) (different

stylization of CC logo still counterfeited Coachs CC marks); Coach, Inc. v. Abners Fashion,

2009 WL 4810179, at *3 (C.D. Cal. Dec. 7, 2009) (products variations from Coach designs do

not defeat evidence of counterfeiting);Burberry Ltd. v. Euro Moda, Inc., 2009 WL 1675080, at

*6-7 (S.D.N.Y. June 10, 2009) (products were counterfeits despite design variations). Such an

3To state a claim for trademark infringement, Emeco must allege (1) that it has a protectible

ownership interest in the mark; and (2) that the defendants use of the mark is likely to cause

consumer confusion. Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137,1144 (9th Cir. 2011) (emphasis added). Congress clearly intended counterfeiting to be a subset ofinfringing activity, rather than a free-standing claim. Cf. 15 U.S.C. 1116(d)(1)(A) (referring toa civil action arising under 1114(1)(a) . . . with respect to a violation that consists of using acounterfeit mark) (emphasis added). Proof of counterfeiting expands the remedies available to atrademark owner, including treble damages and statutory damages. See 15 U.S.C. 1117(b)-(c).But these provisions in no way alter the traditional test for trademark infringement, nor do theyshrink the traditional arsenal of available remedies, including Emecos claim for injunctive reliefand profits and damages. See 15 U.S.C. 1116(a), 1117(a).


7/30/2019 29 - MTD Oppn

19/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



interpretation would allow counterfeiters to escape liability by modifying the registered

trademarks of their honest competitors in trivial ways. United States v. Guerra, 293 F.3d 1279,

1288 (11th Cir. 2002). Here, as the Complaint sufficiently alleges, the image of Restoration

Hardwares Naval Chair, featured on its website and catalog, is identical with, or substantially

indistinguishable from, the registered Navy Chair outline:

Registered Navy Chair Outline Restoration Hardware Website Image

Compl. 1 & Ex. 1.

2. Emecos Trade Dress Claim Rests Independently in FederalRegistration and Common Law Trade Dress Rights

Restoration Hardware challenges Emecos reference in its first cause of action for trade

dress counterfeiting and infringement to its common law rights in the design of its Navy Chair

products (Compl. 66; Mot. at 7). Like the above argument, this claim ultimately is immaterial

as Restoration Hardware acknowledges that the federal registrations are a sufficient basis for

Emecos trade dress claim under 15 U.S.C. 1114(1) and 15 U.S.C. 1116, Mot. at 7-8, which

the Complaint lists as statutory bases for that claim, see Compl. at 18 & 74, 77-78.

But moreover, Restoration Hardware ignores that in addition to 15 U.S.C. 1114(1),

Emeco also lists 15 U.S.C. 1125(a) as an independent statutory basis for its first cause of action,

see Compl. at 18 & 75. Emecos unregistered, common law trade dress rights in its Navy

Chair products are directly relevant to and independently actionable under 15 U.S.C. 1125(a).

See, e.g., Crystal Entmt & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1320 (11th Cir. 2011)

(under 15 U.S.C. 1125(a), the use of anothers unregistered, i.e., common law, trademark can


7/30/2019 29 - MTD Oppn

20/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



constitute a violation of [section 43(a) of the Lanham Act]) (quoting Conagra, Inc. v. Singleton,

743 F.2d 1508, 1512 (11th Cir. 1984)); Time, Inc. v. Petersen Publg Co., 173 F.3d 113, 117 (2d

Cir. 1999) (same).

3. Emeco Has Adequately Put Restoration Hardware on Notice As to the

Claimed Trade Dress at Issue

Restoration Hardwares claim that Emeco has fail[ed] to provide sufficient specificity as

to what it is claiming as protectable trade dress (Mot. at 8-9) is baseless.

Restoration Hardwares argument ignores the actual allegations of the Complaint. Emeco

attached the federal trademark registrations for the Navy Chair configuration and outline (which

display drawings of the design at issue), included in the Complaint images of all of the Navy

Chair products at issue with the identical Restoration Hardware knockoffs, and noted thedesign elements of the Navy Chair collection at issue. Compl. Ex. 1 & 18-19, 25, 33-34.

These allegations are more than sufficient at the pleadings stage to put Restoration Hardware on

notice as to the claimed trade dress. See Dynamic Fluid Control (PTY) Ltd. v. Intl Valve Mfg.,

LLC, 790 F. Supp. 2d 732, 737 (N.D. Ill. 2011) (allegation that trade dress is comprised of a

distinctive shape, contours, and color scheme and photographs of products allegedly

exhibiting its protectable trade dress, were sufficient to put Defendants on notice as to what

[plaintiff] believes is protected);Innovation Ventures, LLC v. N2G Distrib., Inc., 635 F. Supp.

2d 632, 641 (E.D. Mich. 2008) (pictures of [plaintiffs] products and Defendants allegedly

infringing products sufficient; at the motion to dismiss stage, there is no such requirement that

plaintiff be expected to list the elements of the designs);David White Instruments, LLC v. TLZ,

Inc., 2003 WL 21148224, at *8 (N.D. Ill. May 16, 2003) (allegations not vague where

complaint contains photographs and illustrations of the . . . product line).4

4 Indeed, Emeco is entitled to claim the entire design of the Navy Chair product line, whichRestoration Hardware has copied verbatim, as protectable trade dress, without identifying anyspecific elements of the overall design. See, e.g.,New Colt Holding Corp. v. RJG Holdings ofFla., Inc., 312 F. Supp. 2d 195, 206 (D. Conn. 2004) (any lack of clarity in Plaintiffsdescriptions stems from their attempts to claim the entire appearance of the [product] . . . [T]hereis no rule of law known or cited that prohibits a plaintiff from claiming the entire appearance of aproduct as its trade dress. In this sense, Plaintiffs adequately describe the claimed trade dress.).


7/30/2019 29 - MTD Oppn

21/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



But moreover, even if Emeco were required to identify the specific protectable trade dress

elements at the pleadings stage, Emeco has done exactly that. As Emeco alleges in the

Complaint, the design elements of the Navy Chair collection which together are

distinctive, non-functional, and thus protectable include the

rounded bends at the top corners on the upper back of the seat, which also formthe back legs; the rounded curves on the lower back of the seat; the overallconcave curvature of the chair back (when viewed from the back); the number,space, and positioning of the three vertical bars connecting the upper and lowercurves of the back of the seat; the unique, molded seat defined by concave curvesmeeting in the center of the seat to form a triangle butt dip; the pie-shaped crosssection of the tapered front legs; the two curved horizontal bars running betweenthe corresponding front and back chair legs in the chair and armchair versions,and for the stool versions, between the two front legs and two back legs; thepositioning and angle of the curved horizontal bar(s) on the lower base of the seat;

the outward bent of the back legs; the lack of fasteners, yielding a sculpture-like,one-piece design; and the distinct hand brushed finish with the contrastingdirection where the leg meets the seat bottom.

Compl. 25. See, e.g., Volkswagen, 2009 WL 928130, at *5 (each of the elements VW

identifies as its trade dress, including but not limited to the bread loaf design, the V design on

the nose of the vehicle and the placement of the VW Logo within the V, the placement of the

wheels and windows, and the round headlights, are sufficient showing that the sum of the

elements of the [VW Microbus] trade dress are protectable).5

Restoration Hardwares claim that

Emeco does not define what it accuses of being infringing trade dress (Mot. at 9) likewise is

wrong, as Emeco identifies and includes side-by-side pictures of Restoration Hardwares identical

knockoff products next to the Emeco originals. See Compl. 33-34.

Equally baseless is Restoration Hardwares suggestion that it is not clear whether the

claimed trade dress applies to the entire Navy Chair collection that Restoration Hardware has

5The cases Restoration Hardware cites are readily distinguishable. InAutodesk, Inc. v. Dassault

Systemes SolidWorks Corp., 2008 WL 6742224 (N.D. Cal. Dec. 18, 2008), Mot. at 9, the courtdismissed the plaintiffs trade dress claim where it unclear whether a mark and tagline are alsopart of the total image, design, and appearance of the product that constitutes its trade dress. Id.at *5. In Smith & Hawken, Ltd. v. Gardendance, Inc., 2004 WL 2496163 (N.D. Cal. Nov. 5,2004), Mot. at 9, the defendants counterclaim offered no explanation as to the nature, scope orelements making up its allegedly protectable trade dress. Id. at *3 (emphasis added). Here,Emeco has clearly defined the nature, scope, and even specific elements of its trade dress.


7/30/2019 29 - MTD Oppn

22/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



copied (Mot. at 9). In fact, Emeco explicitly alleges that the specified design elements quoted

above apply to the entire Navy Chair collection. Compl. 25 (emphasis added). The

products within the collection do not differ significantly from one another, as Restoration

Hardware misleadingly suggests, Mot. at 9, but all share the same common design elements

explicitly identified in the Complaint and quoted above (Compl. 25) and which are part of

Emecos registrations.6 Any differences between products that do exist are minor; the armchair

version is identical to the chair version but with arms7; the stool versions contain longer legs than

the chair version and have a slightly different base. And where there are slight variations between

the products with respect to the claimed design elements, Emeco expressly has alleged which

elements apply to which Navy Chair products. Compl. 25 (noting two curved horizontal bars

running between the corresponding front and back chair legs in the chair and armchair versions,

andfor the stool versions, between the two front legs and two back legs) (emphasis added).

Moreover, as courts repeatedly have held, a line of products may enjoy sharedtrade dress

rights so long as they have a consistent overall look. Rose Art Indus., Inc. v. Swanson, 235 F.3d

165, 173 (3d Cir. 2000). The design of the products need not be identical, and there may be

slight variations in [the] design so long as the change does not alter the distinctive characteristics

and the trade dress conveys a single and continuing commercial expression. Id.; see also Apple

Inc. v. Samsung Elecs. Co., 768 F. Supp. 2d 1040, 1048 (N.D. Cal. 2011) (The consistent

6That the products in the Navy Chair collection contain minor variations from the drawings of

the Navy Chair registrations does not preclude the application of the registrations to theseproducts. See, e.g.,Armstrong Cork Co. v. Armstrong Covers Co., 434 F. Supp. 860, 871 (E.D.Mo. 1977) ([p]laintiffs rights in the mark . . . are not limited to the exact style shown in its . . .registrations); Stix Prods., Inc. v. United Merchants & Mfrs,, Inc., 295 F. Supp. 479, 486 n.18(S.D.N.Y. 1968) (the specific form in which the mark [is] registered ... cannot be herecontrolling) (quotingNashville Syrup Co. v. Coca Cola Co., 215 F. 527, 530 (6th Cir. 1914));

Pepe (U.K.) Ltd. v. Ocean View Factory Outlet Corp., 770 F. Supp. 754, 758 (D. P.R. 1991)(rejecting technical argument that none of the drawings of the registrations exactly duplicatethe mark PEPE as it appears on plaintiffs marks as actually used in the marketplace). Andeven if that were the case, Emeco expressly alleges that it owns statutory and common law rightsin the trade dress of the entire Navy Chair product line, Compl. 24, rendering RestorationHardwares products actionable under 15 U.S.C. 1125(a) and state law.

7 Emeco did not include the arms of the armchair version in its list of claimed common designelements shared by the Navy Chair collection, and thus this minor difference between theproducts is not even at issue in the case.


7/30/2019 29 - MTD Oppn

23/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



overall look standard do[es] not require that the appearance of the series or line of products or

packaging be identical, and a plaintiff generally is permitted to define a product line as it sees

fit.) (quotingRose Art Indus., 235 F.3d at 173); Shell Trademark Mgmt. B.V. v. Warren

Unilube, Inc., 765 F. Supp. 2d 884, 896-97 (S.D. Tex. 2011) (same). The Complaint alleges a set

of core design features and characteristics which are common to the entire Navy Chair

collection and which convey a single and continuing expression of the Emeco Navy Chair

brand in the marketplace.

4. Emeco Has Adequately Alleged Secondary Meaning and Non-Functionality for Its Navy Chair Trade Dress

Restoration Hardwares throw-away, one-line argument that Emeco does not allege facts

sufficient to show that it has established secondary meaning or that the trade dress is non-functional (Mot. at 9) ignores the actual allegations of the Complaint and is without merit.

At the outset, this wholly conclusory argument, without any supporting analysis, should

be rejected as improper. See Tenore v. Campbell, 2008 WL 2477394, at *7 (N.D. Cal. June 18,

2008) (rejecting passing one-line argument as Court cannot properly evaluate [the] claim).

The argument at any rate fails. First, Emecos allegations regarding its registration rights

are sufficient to plead validity (Compl. 22 & Ex. 1), shifting the burden to Restoration

Hardware to prove the absence of secondary meaning and that the trade dress at issue is

functional.8 As the burden of proof lies with Restoration Hardware, Emeco need not make any

detailed allegations as to secondary meaning or non-functionality. See, e.g., Humboldt

Wholesale, Inc. v. Humboldt Nation Distr., LLC, 2011 WL 6119149, at *3 (N.D. Cal. Dec. 8,

2011) (Plaintiff has pled sufficient facts to show . . . protectable mark where it is entitled to a

presumption of validity because it is registered which confers a presumption that the registered

8See Zobmondo Entmt, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010) (citing 15

U.S.C. 1057(b), 1115(a)). This presumption includes that the trade dress has acquiredsecondary meaning, id. at 1113, and is nonfunctional, Vuitton Et Fils S.A. v. J. Young Enters.,Inc., 644 F.2d 769, 775 (9th Cir. 1981). Restoration Hardware therefore bears the burden toshow by a preponderance of the evidence that the mark is not protectable. 602 F.3d at 1114;Publns Intl, Ltd. v. Landoll, Inc., 164 F.3d 337, 339-40 (7th Cir. 1998) (for registered mark,defendant has the laboring oar on all issues relating to validity, including functionality).


7/30/2019 29 - MTD Oppn

24/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



mark has acquired . . . secondary meaning).9 Indeed, because Emecos registrations have

become incontestable, this serves as conclusive proof of secondary meaning. Entrepreneur

Media, Inc. v. Smith, 279 F.3d 1135, 1142 n.3 (9th Cir. 2002).

Even without this burden shifting, Emecos allegations are more than sufficient. As to

secondary meaning, Emeco alleges that the Navy Chair regularly appears in design magazines,

fashion layouts, and Hollywood films and television series, has been prominently displayed by

preeminent designers, and that Emeco has an industry-wide reputation for exclusively

manufacturing the chair, has been featured by several media outlets, and has extensively

advertised and marketed the chair. Compl. 14-16. Emeco further alleges that it has

expended much effort in the form of advertising, promotion, and sales to promote the trade dress

configuration of the Navy Chair product line, and that as a result of such extensive and

exclusive use and promotion, the trade dress configuration has developed secondary meaning as

an indicator that Emeco is the source of the goods. Id. 68-69. These allegations are more

than adequate to allege secondary meaning in the Navy Chair product line. See DocMagic, Inc.

v. Ellie Mae, Inc., 745 F. Supp. 2d 1119, 1140 (N.D. Cal. 2010) (allegations that use of trade

dress was long-standing and exclusive and users knew that those services were being provided

by [plaintiff] based on this trade dress adequately alleges secondary meaning).10

As to non-functionality, the Complaint specifically details the components of the claimed

trade dress which Emeco alleges are non-functional. See Compl. 25 (noting design elements

of the Navy Chair collection that comprise a non-functional aesthetic); id. 67 (protected

9See also, e.g.,In re Portal Software, Inc. Sec. Litig., 2006 WL 2385250, at *3 (N.D. Cal. Aug.

17, 2006) (where defendant has burden of proof on issue, a failure to plead issue cannot sinkplaintiffs claims on the present motion to dismiss); Katz v. China Century Dragon Media, Inc.,

2011 WL 6047093, at *5 (C.D. Cal. Nov. 30, 2011) (same).10See also Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1107 (C.D. Cal. 2009)

(plaintiff not required to adduce evidence to survive a motion to dismiss and existence ofsecondary meaning may be inferred from evidence relating to the nature and extent of the publicexposure achieved by the designation);Name LLC v. Arias, 2010 WL 4642456, at *8 (S.D.N.YNov. 16, 2010) (allegations that plaintiff actively seeks out national and international mediacoverage of its nightclubs and has been featured on several well-known national televisionnews and entertainment shows, . . . . as well as in mainstream entertainment magazines,sufficient to demonstrate distinctiveness or secondary meaning of marks).


7/30/2019 29 - MTD Oppn

25/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



trade dress of the Navy Chair product line is non-functional). As courts have held, the

inquiry into whether a product is functional . . . is fact intensive with multiple factors for the

Court to consider, the Court is to assume that all allegations as to non-functionality are true,

and facts going to that functionality analysis cannot be resolved at the motion to dismiss stage.

Axis Imex, Inc. v. Sunset Bay Rattan, Inc., 2009 WL 55178, at *3 (N.D. Cal. Jan. 7, 2009).11 And

indeed, Emecos pending motion for a preliminary injunction includes substantial evidence and

analysis on the issue of non-functionality. See Dkt. No. 10 at 13-16.

B. Emeco Has Adequately Pled a Claim for Trademark Counterfeiting andInfringement

1. Emeco Has Adequately Pled a Claim for Trademark Counterfeiting

Restoration Hardwares challenge to Emecos trademark counterfeiting claim is meritless.

As noted, this argument at best only applies to Emecos counterfeiting, but not infringement,

claim, and thus would only affect a narrow range of available remedies. Supra at 10 & n.3.

Restoration Hardwares argument also fails on its own terms. At base, Restoration

Hardware claims that because it uses the phrases Introducing 1940s Naval Chair and

Introducing 1940s Aluminum Naval Chair collection, rather than Navy Chair standing alone

(Mot. at 10-11), it is not counterfeiting Emecos marks. As noted, whether a mark rises to the

level of a counterfeit is a factual issue that cannot be resolved on the pleadings. Coach, 2012

WL 1532489, at *3. And here, Emeco clearly has pled sufficient facts. Emeco has alleged that

Naval Chair refers to the name of theproduct as Restoration Hardware concedes, it is called

the Naval Chair collection. Compl. 36-38; Mot. at 10-11. And by changing Navy Chair to

Naval Chair, Restoration Hardware has merely turned a noun term (Navy) of a two-word mark

into its adjectival form (Naval). See Compl. 1 (near-identical Naval Chair name), id. 3

(chairs and stools [have] the confusingly similar Naval Chair name), id. 36-38.

11See also Dynamic Fluid Control, 790 F. Supp. 2d at 737 (allegation that Trade Dress is not

merely functional sufficient given that non-functionality require[s] factual determinations thatare premature on motion to dismiss);David White, 2003 WL 21148224, at *8 (where complaintdid not allege that trade dress is non-functional, finding allegations sufficient as [w]hether atrade dress is functional is not appropriate for consideration on a motion to dismiss);Millennium Labs., Inc. v. Ameritox, Ltd., 2012 WL 4863781, at *3 (S.D. Cal. Oct. 12, 2012).


7/30/2019 29 - MTD Oppn

26/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



The term Introducing is a small-print, stock promotional clause that was clearly not

intended to be the name of the chairs. See id. 36-38. And Restoration Hardwares inconsistent

use of the phrases 1940s and 1940s Aluminum as a preface to Naval Chair is, at best, a

trivial modification to the registered mark. See Guerra, 293 F.3d at 1288 (defendant cannot

escape counterfeit liability by modifying the registered trademarks of their honest competitors

in trivial ways.). As noted, in applying the requisite level of similarity, courts overlook such

minor differences between products in concluding that an accused product is a counterfeit. See

supra at 10-11; PetMed Express, Inc. v. MedPets.Com, Inc., 336 F. Supp. 2d 1213, 1219-20 (S.D.

Fla. 2004) (concluding that MedPets.Com is a counterfeit of PetMed).12

2. Restoration Hardwares Trademark Fair Use Argument Is

Improper on a Motion to Dismiss, and in Any Event Baseless

Solely on the basis of the complaint, Restoration Hardware argues that the fair use defense

protects it from a trademark infringement claim for using Naval Chair. Mot. at 12. This

defense is improper on a motion to dismiss and at any rate meritless.

To prove a fair use defense, Restoration Hardware must show that: (1) its use of the term

is not as a trademark or service mark; (2) it uses the term fairly and in good faith; and (3) it

uses the term [o]nly to describe its goods or services. Cairns v. Franklin Mint Co., 292 F.3d

1139, 1151 (9th Cir. 2002) (emphasis added). Restoration Hardwares fair use arguments are

premature on a motion to dismiss, particularly given the factual nature of the inquiry.

Autodesk, Inc. v. Dassault Systemes SolidWorks Corp., 2008 WL 6742224, at *5 (N.D. Cal. Dec.

18, 2008); KP Permanent MakeUp, Inc. v. Lasting Impression I, Inc. , 408 F.3d 596, 609 (9th

Cir. 2005); Webceleb, Inc. v. Procter & Gamble Co., 2012 WL 460472, at *3 & n.3 (S.D. Cal.

Feb. 13, 2012) (resolution of whether mark is descriptive under fair use analysis is improper on

12 Restoration Hardware errs in relying solely onLouis Vuitton Malletier S.A. v. Haute DiggityDog, LLC, 507 F.3d 252 (4th Cir. 2007). Although the Fourth Circuit held that the ChewyVuitton and the CV monogram marks, designs, and coloring patterns were not counterfeits ofthe LOUIS VUITTON and LV marks, designs, and coloring patterns, it specifically noted that thedefendant was not selling knock-off LOUIS VUITTON handbags with a counterfeit LV mark.Id. at 269. Emeco has clearly alleged that Restoration Hardware is selling knock-off NavyChairs bearing a substantially indistinguishable mark. Compl. 1.


7/30/2019 29 - MTD Oppn

27/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



motion to dismiss). Further, Restoration Hardwares argument is exclusively devoted to the third

factor and entirely ignores the other two. This alone warrants rejection of the argument.

As to the third factor, the Complaints allegations make clear that Restoration Hardware

is not using Naval Chair only to describe its goods or services. The law is clear that when an

infringer uses a mark in theproduct name, such use is not descriptive of the product as a matter of

law under the fair use doctrine. See id.; see also Lewis Mgmt. Co. v. Corel Corp., 1995 WL

724835, at *6 n.6 (S.D. Cal. June 28, 1995) (use as the name of a product, as opposed to use as

to describe the product, is not descriptive use entitled to the fair use exemption.);Byrnes &

Kiefer Co. v. Flavoripe Co., 1986 WL 15550, at *6 (W.D. Pa. Aug. 20, 1986) (where term is

indeed a part of the product name and not merely used in its descriptive sense this is not a fair

use); Fortune Dynamic, Inc. v. Victorias Secret Stores Brand Mgmt., Inc. , 618 F.3d 1025, 1042

(9th Cir. 2010) (jury could conclude that use of Delicious on a pink tank top did not qualify as

sufficiently descriptive for fair use defense).

In re Dual-Deck Video Cassette Recorder Antitrust Litig., 11 F.3d 1460, 1467 (9th Cir.

1993), on which Restoration Hardware relies, is not to the contrary. The defendant in that case

was not using the mark to designate a product, but, as Restoration Hardware concedes, to

describe a particular input on a receiver. Mot. at 12 (citingIn re Dual-Deck, 11 F.3d at 1467).

By contrast, Emeco has alleged that Restoration Hardwares use of Naval Chair is as a product

name. Compl. 1, 36-38.

More fundamentally, Restoration Hardware misunderstands the requisite level of

descriptive purity under the fair use defense. As the Ninth Circuit explained, the scope of the

fair use defense varies with the level of descriptive purity. Thus, as a defendants use of a term

becomes less and less purely descriptive, its chances of prevailing on the fair use defense become

less and less likely. Fortune Dynamic, 618 F.3d at 1042. Here, the term Naval Chair is not

purely descriptive of the chair Restoration Hardware sells, for it fails to describe the

characteristics, features, or functions of the chair. While a purely descriptive Navy Chair

product would be one, e.g., that is the color navy, Restoration Hardware does not and cannot

argue that its chair has any such purely descriptive characteristics. What Restoration Hardware


7/30/2019 29 - MTD Oppn

28/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



does argue is that the Naval Chair is descriptive ofEmecos historical development of the chair

for the Navy. But this is another way of saying that Restoration Hardware seeks to capitalize on,

and usurp, Emecos own unique role in American history, Compl. 31, which, as explained

below, is a bad faith use that is flatly ineligible for fair use protection. See Fortune Dynamic, 618

F.3d at 1043.

Additionally, Restoration Hardwares fair use defense fails the remaining factors it

entirely ignores. Regarding the first factor, a non-fair use trademark function exists where the

term is used as a symbol to attract public attention, which can be demonstrated by the lettering,

type style, size, and visual placement and prominence of the challenged words. Fortune

Dynamic, 618 F.3d at 1040 (internal quotation marks and citations omitted). Emeco plainly

alleges that Restoration Hardware prominently displayed on its advertising the Naval Chair

product name using all-capitalized, enlarged-font text. See Compl. 36-38; Mot. at 10-11.

As for the second factor requiring good faith use, Emeco clearly alleges bad faith on the

part of Restoration Hardware. A lack of good faith exists where the defendant in adopting its

marks intended to capitalize on plaintiffs good will. Fortune Dynamic, 618 F.3d at 1043. This

is not a high bar for a plaintiff to meet: In Fortune Dynamic, the Ninth Circuit held that the mere

failure to investigate the possibility that a product name was being used as a trademark

demonstrated bad faith. Id. Here, Emeco has alleged that Restoration Hardware did something

far worse; it knew that the mark referred to Emeco as the source of the goods yet willfully used a

counterfeit name without Emecos permission. See Compl. 44-46. Moreover, the fact that the

products themselves are ultimately identical to one another reinforces the conclusion that

Restoration Hardware used the mark to capitalize on Emecos goodwill. Id. 31, 33.

3. Emecos Trademark Claim Rests Independently in Federal

Registration and Common Law Trade Dress Rights

Restoration Hardware similarly challenges Emecos reference in its second cause of action

for trademark counterfeiting and infringement to its common law rights in this trademark in

connection with its furniture. Compl. 80; Mot. at 13. This argument likewise is immaterial as

Restoration Hardware acknowledges that the federal registrations are a sufficient basis for


7/30/2019 29 - MTD Oppn

29/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



Emecos trademark claim under 15 U.S.C. 1114(1) and 15 U.S.C. 1116, Mot. at 13, which are

listed as statutory bases for that claim, see Compl. at 20 & 88, 91. And again, Restoration

Hardware ignores that in addition to 15 U.S.C. 1114(1), Emeco also lists 15 U.S.C. 1125(a),

which specifically applies to common law rights, as an independent statutory basis for its

trademark claims, see Compl. at 20 & 89; supra at 11-12.

Restoration Hardwares claim that the Complaint at times refers to the Navy Chair

trademark common law trademark rights, yet the registrations state The Navy Chair and 111

Navy Chair (Mot. at 13), is pedantic nitpicking. Vision Tech. Design & Mfg., Inc. v. Gen. Wire

Spring Co., 2007 WL 2069945, at *16 (E.D. Cal. July 17, 2007) (denying motion to dismiss

where basis for dismissal is hypertechnical and based on semantics). Emeco sufficiently

alleges that its common law rights refer to the marks as identified in the registrations. See Compl

80 (noting that registrations cover Navy Chair and 111 Navy Chair and that Emeco has

common law rights in these marks). Moreover, Restoration Hardware does not challenge

Emecos allegations that The Naval Chair is confusingly similar with The Navy Chair.

C. Emeco Has Adequately Pled a Claim for Federal Dilution

Emeco has more than adequately pled a claim for federal trademark dilution.

First, contrary to Restoration Hardwares suggestion, Emeco has adequately identified

which trade dress and trademarks are at issue by incorporating the prior paragraphs of the

Complaint which specifically identify the claimed trade dress and trademarks, and by referencing

the Navy Chair trade dress and trademarks and Restoration Hardwares aforesaid acts,

which clearly refer to its counterpart Naval Chair knockoffs, Compl. 93-95; see also id. 63

(referencing Navy Chair trade dress and trademarks); id. at 8 (section title noting

Restoration Hardwares Unauthorized Use of Emecos Trade Dress and Trademarks). Under

Fed. R. Civ. P. 10(c), Emeco has more than sufficiently identified the trade dress and trademarks

at issue in its dilution claim through this incorporation by reference. See, e.g., Fed. R. Civ. P.

10(c) ([S]tatement[s] in a pleading may be adopted by reference elsewhere in the same

pleading); Whitney v. Wurtz, 2006 WL 83119, at *2 (N.D. Cal. Jan. 11, 2006) (under Rule 10(c),


7/30/2019 29 - MTD Oppn

30/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



the complaint adequately alleges alter ego liability in the other causes of action by incorporating

these allegations by reference into the other causes of action.). Restoration Hardware cannot

plausibly claim not to know what are the trade dress and trademark rights at issue, i.e., the design

of the Navy Chair product line and the Navy Chair and the 111 Navy Chair trademarks.

Restoration Hardwares argument that Emeco has pled no facts showing fame of the

Navy Chair trade dress and trademarks is equally baseless. Emeco alleges that the Navy

Chair has been recognized as a modern masterpiece of twentieth century design, is in the

permanent collections of museums around the world, regularly appears in design magazines,

fashion layouts, and Hollywood films and television series, has been prominently displayed by

preeminent designers, and that the 111 Navy Chair has won several awards. Compl. 14,

17. Emeco also alleges that the Emeco manufacturing process and the Navy Chair product

line have been featured by several media outlets, that Emeco has extensively advertised and

marketed the Navy Chair, and that the Navy Chair product line trade dress and trademarks

are famous. See, e.g., id. 16; 94 (Emecos Navy Chair trade dress and trademarks are

famous and distinctive); id. 29, 65, 81 (same). These allegations are more than sufficient to

satisfy the famous requirement. See, e.g., Gallup Inc. v. Bus. Research Bur. (PVT) Ltd., 2009

WL 941756, at *3 (N.D. Cal. Apr. 6, 2009) (allegation that mark famous because it has been

actively promoted for over seventy years sufficient for dilution claim);Deep Water Bail Bonds

v. Bavouset, 2007 WL 4916961, at *2 (C.D. Cal. Sept. 24, 2007) (where plaintiff did not allege

mark famous, allegation that plaintiff has continuously used mark and has advertised in the

yellow pages sufficient); Perfect 10, Inc. v. Megaupload Ltd., 2011 WL 3203117, at *9 (S.D.

Cal. July 27, 2011) (allegation that marks are valuable and well known sufficient).

D. Emeco Has Adequately Pled a Claim for Common Law Trade Dress

Infringement

Restoration Hardwares argument that Emeco has not adequately identified the trade dress

at issue for its common law claims fails just as its same argument for the registration-based trade

dress claim. As noted, there is no requirement at the pleadings stage that Emeco explicitly

identify all of its claimed trade dress elements, supra at 12-13, and at any rate, Emeco has done


7/30/2019 29 - MTD Oppn

31/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



precisely that. See Compl. 24-25 (Emeco owns statutory and common law rights in the

design and trade dress of the entire Navy Chair product line and identifying claimed design

elements of the Navy Chair collection). Emeco has sufficiently identified its claimed trade

dress for its common law claim.

E. Emeco Has Adequately Pled a Claim for Common Law TrademarkInfringement

1. Restoration Hardwares Fair Use Argument Fails

Restoration Hardware contends that the fair use defense defeats Emecos claim for

common law trademark infringement. Mot. at 15. As explained above, supra at 18-20, the

Complaint alleges that Restoration Hardware is not using the Naval Chair mark descriptively,

nor is it using it in good faith, rendering the fair use defense inapplicable.

2. Emeco Has Adequately Put Restoration Hardware on Notice of ItsCommon Law Trademark Rights

Again without argument, Restoration Hardware asserts that Emeco has not sufficiently

identified the trademarks at issue to support a common law infringement claim. But as detailed

above, Emeco has alleged the existence of a Navy Chair trademark that the California public

widely recognizes as designating Emeco as the source of goods. Compl. 108. Moreover,

because Emeco has clearly alleged a federal claim for trademark infringement, so too must the

state law claims survive. See Playboy Enters., Inc. v. Netscape Commcns Corp., 354 F.3d 1020,

1024 n.10 (9th Cir. 2004) (forging separate analysis of trademark infringement claims under

California law because state law is substantially congruent with federal law).

F. Emeco Has Adequately Pled a Claim for Dilution Under California Law

1. Emecos Claim Rests on the Common Law and May Rely on OtherStatutory Provisions

Restoration Hardware argues that Emecos California law dilution claim should be

dismissed because it cites to Cal. Bus. & Prof. Code 14330, which has been replaced by a

substantively equivalent dilution provision, Cal. Bus. & Prof. Code 14247. As Restoration

Hardware acknowledges (Mot. at 16 n.3), this claim also explicitly relies on California common

law, which provides an independentbasis for the claim regardless of 14330. See, e.g.,M.A.C.


7/30/2019 29 - MTD Oppn

32/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



Prods., Inc. v. BBK Performance, Inc., 2002 WL 1938956, at *3 (Cal. Ct. App. Aug. 22, 2002)

(Because [plaintiff] never alleged that it registered the mark under the California Trademark

Law . . . , the infringement and dilution claims must be based on common law, which remains a

viable alternative to the statutory claims.). Thus, even if Restoration Hardwares argument were

correct, California common law provides a sufficient basis for this claim.

Further, the Complaints citation to 14330 instead of 14247 is not a grounds for

dismissal of the separate statutory basis for the claim, as the substance of the statutory provisions

at issue is equivalent.13 As courts have held in rejecting motions to dismiss claims where a party

cites a wrong statute but otherwise adequately pleads the proper elements of the claim, as

Emeco does here, a plaintiff need not include citations to specific statutes in his or her complaint

in order to state a claim on which relief can be granted. Huene v. U.S. Dept of the Treasury,

2012 WL 1681969, at *6 (E.D. Cal. May 14, 2012) (citing and quotingAlvarez v. Hill, 518 F.3d

1152, 1157 (9th Cir. 2008) (Notice pleading requires the plaintiff to set forth in his complaint

claims for relief, not causes of action, statutes or legal theories. . . . A complaint need not identify

the statutory or constitutional source of the claim raised in order to survive a motion to

dismiss.)). Indeed, where parties have cited to 14330 instead of 14247 in a dilution claim,

courts have simply analyzed the claim under 14247. See Mattel, Inc. v. MGA Entmt, Inc., 782

F. Supp. 2d 911, 1011-12 (C.D. Cal. 2011) (plaintiff asserted dilution claim pursuant to Cal.

Bus. & Prof. Code 14330; court evaluated under Cal. Bus. & Prof. Code 14247).

2. Restoration Hardwares Fair Use Argument Fails

As explained above, the fair use doctrine does not defeat Emecos claim for dilution. See

supra 18-20. As Emeco alleges, Restoration Hardware is not using the Navy Chair trade dress

13 Both provisions provide for injunctive relief for the dilution of marks. See Cal. Bus. & Prof.Code 14330 (dilution of the distinctive quality of a mark . . . shall be a ground for injunctiverelief notwithstanding the absence of competition between the parties or the absence of confusionas to the source of goods or services.); Cal. Bus. & Prof. Code 14247 (party shall be entitledto an injunction against another persons commercial use of a mark or trade name, if such usebegins after the mark has become famous and is likely to cause dilution of the famous mark).See also Saul Zaentz Co. v. Wozniak Travel, Inc., 627 F. Supp. 2d 1096, 1117 (N.D. Cal. 2008)(Under California law, a state cause of action for dilution has existed since 1967. Cal. Code Ann 14330(a) (replaced by Cal. Bus. & Prof. Code 14247).).


7/30/2019 29 - MTD Oppn

33/37

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



and trademarks descriptively, nor is it using them in good faith. See Compl. 28-38.

3. Emeco Has Adequately Put Restoration Hardware on Notice As toWhat Is Claimed As Trademark and Trade Dress Dilution

As described above, Emeco has sufficiently identified the trade dress and trademarks at

issue in its federal dilution claim. See supra 12-14, 21. For those same reasons, Emeco has

adequately put Restoration Hardware on notice

29 - MTD Oppn

Documents