AirWair International Ltd. v. Pull & Bear Espana SA

Background

AirWair International Ltd. is a wholly owned subsidiary of Dr. Martens AirWair Group Ltd. AirWair designs, manufactures, markets, and sells Dr. Martens footwear. It owns five registered trade-dress marks involving footwear features, including yellow welt stitching, grooved or ribbed sole edges, contrasting colors, an undersole design, and a heel tab.

ITX, USA, LLC manufactured, marketed, distributed, and sold four shoe and boot styles on the Pull & Bear website. AirWair alleged that the products were confusingly similar to and copied its trade dress. The sales totaled less than $3,000, and sales had stopped approximately two years before the order. AirWair asserted federal and California claims for trademark infringement, trademark dilution, and unfair competition.

Expert-evidence motions

The court applied Federal Rule of Evidence 702, which allows expert testimony when the witness is qualified and the testimony is relevant and reliable. It denied the motions to exclude Susan Schwartz McDonald, Bertrand Guillaume, and Robert L. Klein. The court concluded that criticisms of McDonald’s and Klein’s consumer surveys generally affected the surveys’ weight rather than their admissibility. It also found that Guillaume stated methods supporting his opinions on functionality and secondary meaning.

The court granted the motion to exclude David Franklyn. Although Franklyn had extensive experience as an intellectual-property law professor, he lacked footwear or fashion-industry experience, and his report included legal conclusions about the validity and enforceability of AirWair’s trade dress and compliance with trademark-office requirements.

The court granted in part and denied in part the motion to exclude Caroline de Baëre. It allowed her functionality analysis because of her footwear-design and manufacturing experience. It excluded her analysis of secondary meaning because it relied only on one factor and conjecture, and it excluded her likelihood-of-confusion testimony because she used a side-by-side comparison that did not match how consumers would encounter the products in the marketplace.

ITX’s summary-judgment motion

ITX sought summary judgment on all six causes of action, arguing that AirWair’s trade dress was generic, vague, overbroad, functional, and lacking in secondary meaning. The court denied ITX’s motion because numerous material factual disputes remained.

The court rejected ITX’s attempt to analyze individual features of the registered trade dress separately. It explained that the trade dress must be considered as a whole when evaluating whether it is generic, distinctive, or functional. The court also concluded that the fact that some shoe features have utilitarian functions did not establish that the overall footwear appearance was functional as a matter of law.

The court further held that AirWair’s registrations supplied presumptions of validity and, for the registrations based on acquired distinctiveness, secondary meaning. ITX had not provided concrete evidence sufficient to overcome those presumptions at the summary-judgment stage. The court therefore denied ITX’s motion for summary judgment.

AirWair’s partial summary-judgment motion

AirWair sought summary judgment on ITX’s first counterclaim seeking a declaration of invalidity, third counterclaim seeking cancellation of marks, fifth affirmative defense of invalidity, third affirmative defense involving equitable defenses, and fourth affirmative defense of fair use.

The court denied summary judgment on the invalidity and cancellation issues because genuine factual disputes remained about whether the ‘689 and ‘692 registrations were generic or functional and whether they had secondary meaning. ITX had dismissed portions of its equitable-defense theory involving estoppel, laches, and the statute of limitations, making AirWair’s motion moot as to those portions. The court granted AirWair’s motion on the fair-use defense because ITX did not address that issue in its opposition. It also found no genuine factual dispute concerning ITX’s unclean-hands theory based on alleged fraud in obtaining the registrations.

Accordingly, the court granted in part and denied in part AirWair’s motion for summary judgment.

Other ruling

The court granted the motion to file materials under seal.

Disposition

The court denied the motions to exclude Bertrand Guillaume, Robert L. Klein, and Susan Schwartz McDonald; granted the motion to exclude David Franklyn; granted in part and denied in part the motion to exclude Caroline de Baëre; denied ITX’s motion for summary judgment; granted in part and denied in part AirWair’s motion for summary judgment; and granted the motion to file under seal. Judge Susan Illston signed the order.