Craft Smith v. EC Design ( 2020 )

FILED
United States Court of Appeals
PUBLISH Tenth Circuit
UNITED STATES COURT OF APPEALS August 11, 2020
Christopher M. Wolpert
FOR THE TENTH CIRCUIT Clerk of Court
_________________________________
CRAFT SMITH, LLC, a California limited
liability company,
Plaintiff Counterclaim Defendant -
Appellee,
v. No. 19-4087
EC DESIGN, LLC, a California limited
liability company,
Defendant Counterclaimant -
Appellant,
and
MICHAELS STORES, INC., a Delaware
corporation,
Counterclaim Defendant - Appellee.
_________________________________
Appeal from the United States District Court
for the District of Utah
(D.C. No. 2:16-CV-01235-DB)
_________________________________
Juliette P. White (Kristine M. Johnson and Alan S. Mouritsen with her on the briefs), of
Parsons Behle & Latimer, Salt Lake City, Utah, for Defendant Counterclaimant-
Appellant.
R. Parrish Freeman (Charles J. Veverka and Daniel R. Barber with him on the brief), of
Maschoff Brennan P.L.L.C., Park City, Utah, for Plaintiff Counterclaim Defendants-
Appellees.
_________________________________
Before HARTZ, PHILLIPS, and MORITZ, Circuit Judges.
_________________________________
PHILLIPS, Circuit Judge.
_________________________________
Since 2007, EC Design, LLC, has been selling its popular personal organizer,
the LifePlanner. In 2015, Craft Smith, Inc., wanting to enter the personal-organizer
market, reached out to EC Design about a possible collaboration. Failing to join
forces with EC Design, Craft Smith, with input from Michaels Stores, Inc., designed
and developed a personal organizer to sell in Michaels stores, leading to this action in
Utah federal district court. EC Design has asserted that the Craft Smith and Michaels
product infringes on the LifePlanner’s registered compilation copyright and
unregistered trade dress. The district court disagreed, granting summary judgment in
favor of Craft Smith and Michaels (collectively, the Appellees) on both issues. On
the copyright issue, the district court concluded that EC Design does not own a valid
copyright in its asserted LifePlanner compilation. Though we disagree with how the
court framed this issue, we affirm because no reasonable juror could conclude that
the allegedly infringing aspects of Appellees’ organizer are substantially similar to
the protected expression in the LifePlanner compilation. On trade dress, the district
court held that EC Design had failed to create a genuine issue of material fact over
whether the LifePlanner’s trade dress had acquired secondary meaning. We agree.
Accordingly, exercising jurisdiction under 28 U.S.C. § 1291, we affirm the
district court’s grant of summary judgment in favor of Appellees on both claims.
2
BACKGROUND
I. EC Design’s LifePlanner
Erin Condren, EC Design’s founder, designed the LifePlanner personal
organizer to help users better plan their lives. To do so, the LifePlanner provides
users with weekly and monthly calendars, which are color-coded and laid out
helpfully. In addition to the calendars, the LifePlanner has colorful artwork, spaces
for the user to write notes, inspirational quotations, and various other textual
elements, all of which are interspersed throughout the entire planner. All these
features are bound together by a single metal coil and enclosed between plastic-
laminated front and back covers. And every year, users can select a LifePlanner to
their liking from one of EC Design’s many color/art options.
The LifePlanner contains three labeled sections—introductory, monthly, and
notes.1 The introductory section comprises a notes page, an ownership page, and a
two-page spread of monthly thumbnail calendars. After the thumbnail calendars
comes another two-page spread containing “an inspirational statement spanning the
top of both pages” and six different-colored boxes on each page. App. vol. 18 at
4784. The introductory section ends with a lined page for notes. The monthly section
follows. It contains color-coordinated tabs for each month, inspirational quotations to
start each month, monthly calendars spread over two pages (with space on one side
for notes), weekly calendars (horizontal or vertical layout), and a notes page. The
1
This discussion refers specifically to the 2015/2016 LifePlanner—the version
EC Design asserts Appellees infringed.
3
LifePlanner concludes with the notes section, which is signaled by a different color
from the previous months and is labeled “NOTES.” Id. at 4792–93. Several lined,
graphical, and blank pages follow, along with a two-page spread of the next year’s
calendar, with rectangular boxes at the bottom for notes. The notes section concludes
with several pages of stickers, a cutaway folder, and a pocket to place things.
Though this overall layout has stayed relatively constant, each passing year
brings a variety of changes, distinguishing each year’s LifePlanner from previous
versions. Some changes occur every year—new text/artwork and updated calendars.
Additional changes are made occasionally to the organizer’s fundamental layout and
look. These new offerings often reflect customer surveys, for instance, 2015’s
horizontal weekly calendar layout and hardbound-cover version.
Through the years, EC Design has registered trademarks in “LifePlanner,”
“Erin Condren,” and the asterisk symbols adorning all its products. For the
LifePlanner specifically, EC Design has registered three copyrights in the 2016/2017
version.2 Only one of those registrations relates to this appeal: U.S. Registration No.
VA 2-072-725 (‘725 Registration), which ties to the “2016/2017 Vertical LifePlanner
2
In this appeal, we assume that the registered 2016/2017 LifePlanner is a
derivative work of the unregistered 2015/2016 LifePlanner, meaning that EC Design
has satisfied the registration requirement—a statutory prerequisite for bringing a
copyright-infringement action. See 17 U.S.C. § 411(a); Fourth Estate Pub. Benefit
Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 886 (2019). Because we affirm, we do
not consider Appellees’ alternative basis for affirming, which argues that EC Design
failed Fourth Estate’s registration requirement by not registering the 2015/2016
LifePlanners.
4
Compilation.”3 App. vol. 16 at 4214. This registration covers “2-D artwork,
compilation of introductory and section phrases, graphics” and excludes “[c]alendar
arrangement and calendar text.” Id.
II. Craft Smith Enters the Personal-Organizer Market
In October 2015, Craft Smith took steps towards entering the personal-planner
market.4 At that time, Craft Smith reached out to Michaels—Craft Smith’s biggest
customer—about creating a new spiral-bound organizer that would be “like . . . the
current Erin Condren Life Planner.”5 App. vol. 32 at 8448, 8512. As this comment
3
The other two registrations—the “LifePlanner Horizontal Layout
2016/2017,” U.S. Registration No. VA 2-024-598 and the “LifePlanner Vertical
Layout 2016/2017,” U.S. Registration No. VA 2-024-599—cover “2-D artwork, Text
[cover/title page artwork; additional text & artwork throughout calendar].” App. vol.
14 at 3757 (Horizontal Layout); App. vol. 15 at 3979 (Vertical Layout). But these
registrations exclude “2-D artwork, Text [functional elements; calendar elements;
title page text].” App. vol. 14 at 3757 (Horizontal Layout); App. vol. 15 at 3979
(Vertical Layout). Notably, though the title of each registration contains the word
“layout,” these registrations do not cover the LifePlanner’s layout. See App. vol. 14
at 3757; App. vol. 15 at 3979.
4
Earlier in 2015, Craft Smith and EC Design discussed collaborating on an
organizer but failed to reach a deal. In addition, in July 2016, EC Design and
Michaels began discussions about selling the LifePlanner at Michaels. But this too
ended without a deal. EC Design asserts that its discussions with both Appellees
allowed them to become “highly familiar” with the LifePlanner to “intentionally
copy” it. App. vol. 1 at 43.
5
Per the parties’ request, volumes 31 to 39 of the appendix were filed under
seal, along with the parties’ opening and response briefs. We respect this request. But
for sealed material already made public (i.e., by appearing in the published district
court order), we identify it as needed in this opinion. See Williams v. FedEx Corp.
Servs., 849 F.3d 889, 905 (10th Cir. 2017) (denying a motion to seal after the parties
agreed that the “district court’s summary judgment order may now be unsealed, even
though the order describes and even quotes in it much of the information [the
Appellant] now seeks to keep under seal”). For example, EC Design has redacted all
5
reflects, Craft Smith sought to emulate the LifePlanner with its own product. For
example, it used a LifePlanner sample to obtain pricing estimates from the
manufacturer. As a result, the manufacturer’s quote to Craft Smith was based on the
LifePlanner’s “size,” “quality of spiral,” and “laminated type cover.”6 Id. at 8508,
8512 (noting that the manufacturer’s quote was “based on everything you see in the
EC planner”). Further, Craft Smith designed its organizer with the same “pagination
and sheet counts” as the LifePlanner. Id. at 8508.
By April 2016, Michaels agreed to sell Craft Smith’s new organizer in its
stores—called the Recollections Planner. Soon thereafter, Michaels asked Craft
Smith to compare the Recollections Planner with the LifePlanner to ensure that they
were “not too similar.” App. vol. 32 at 8600. In particular, Michaels sought assurance
from Craft Smith that the organizers had different artwork and quotations. Craft
Smith satisfied itself and Michaels that the artwork and quotations sufficiently
differed from EC Design’s, so, according to EC Design, the review led to no changes.
And in October 2016, the Recollections Planner went on sale at Michaels.
the quotations that appear in this paragraph and the next. But this information appears
in the district court’s order, which is public. See Craft Smith, LLC v. EC Design,
LLC, 388 F. Supp. 1385, 1393–94 (D. Utah 2019). Moreover, the district court’s
order is available in volume 30 of the appendix, which is not sealed.
6
At a deposition, a Craft Smith employee testified that she did not remember
what brand of organizer was used as a sample to obtain the quote, saying only that
Craft Smith might have used a LifePlanner or a different brand’s organizer. This
would be a question of material fact for the jury. For purposes of summary judgment,
we assume Craft Smith used a LifePlanner.
6
III. Procedural Background
On November 29, 2016, soon after the Recollections Planner went on sale, EC
Design notified Craft Smith and Michaels that the Recollections Planner infringed the
LifePlanner’s copyright and trade dress. In response, Craft Smith sought a
declaratory judgment in Utah federal district court that it had infringed neither. EC
Design counterclaimed, joining Michaels to the suit and asserting copyright and
trade-dress infringement claims, along with related state-law claims.7 After
discovery, both sides filed motions for summary judgment on the copyright and
trade-dress claims. The district court granted Appellees’ motion on the copyright and
trade-dress claims, denied EC Design’s motion, and declined to exercise
supplemental jurisdiction over EC Design’s state-law claims after disposing of the
federal claims. EC Design timely appealed, challenging the district court’s grant of
summary judgment against its copyright and trade-dress claims.
DISCUSSION
We review de novo a district court’s grant of summary judgment, using “the
same standard applied by the district court.” Sally Beauty Co. v. Beautyco, Inc., 304
F.3d 964, 971 (10th Cir. 2002) (citation omitted). Summary judgment is appropriate
“if 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). “We view
7
EC Design first filed its own federal complaint in the Central District of
California. But the proper venue was the District of Utah, leading EC Design to
assert its claims against Craft Smith and Michaels as counterclaims in the Utah case.
7
all facts and evidence in the light most favorable to the party opposing summary
judgment.” Blehm v. Jacobs, 702 F.3d 1193, 1199 (10th Cir. 2012) (alteration
omitted) (internal quotation marks and citation omitted).
I. Copyright Infringement
Copyright infringement requires that the plaintiff prove two elements: “(1)
ownership of a valid copyright, and (2) copying of constituent elements of the work
that are original.” Id. (quoting Feist Publ’ns Inc. v. Rural Tel. Serv. Co., 499 U.S.
340, 361 (1991)) (internal quotation marks omitted); see also Enter. Mgmt. Ltd., Inc.
v. Warrick, 717 F.3d 1112, 1117 (10th Cir. 2013) (“There are two elements to a
copyright infringement claim; a plaintiff must show both ownership of a valid
copyright, and copying of protectable constituent elements of the work.” (citations
omitted)). This appeal concerns both elements.
We hold that though EC Design owns a valid copyright in the LifePlanner
compilation (element one), EC Design has failed to raise a genuine issue of material
fact concerning the required substantial similarity between the LifePlanner
compilation’s protected expression and Appellees’ allegedly infringing organizer
(element two). Thus, we affirm the district court’s grant of summary judgment.
A. Element One: Valid Copyright
To meet the first element of a copyright-infringement claim, a plaintiff must
demonstrate ownership of a valid copyright in the allegedly infringed work. See
Blehm, 702 F.3d at 1199; 4 Melville B. Nimmer & David Nimmer, Nimmer on
Copyright § 13.01[A] (2020) [hereinafter Nimmer on Copyright]. Often, a party
8
accomplishes this by producing a certificate of registration from the Copyright
Office. Jacobsen v. Deseret Book Co., 287 F.3d 936, 942 (10th Cir. 2002) (finding
the first element satisfied by a “federally registered copyright” in the accused work);
see also 17 U.S.C. § 410(c) (“In any judicial proceedings the certificate of a
registration . . . shall constitute prima facie evidence of the validity of the copyright
and of the facts stated in the certificate.”).
In this case, EC Design presented the ‘725 Registration certificate to the
district court. The district court reviewed this certificate and concluded that “because
EC’s asserted compilation seeks much broader protection than the scope outlined on
the 2016-2017 LifePlanner registration certificate [‘725 Registration],” the certificate
did not satisfy element one. App. vol. 30 at 8011. But in reaching this conclusion, the
district court misapplied copyright infringement’s first element, which requires only
the existence of a valid copyright in the allegedly infringed compilation work as a
whole. See, e.g., Feist, 499 U.S. at 361 (“The first element is not at issue here;
[plaintiff]’s directory, considered as a whole, is subject to a valid copyright because
it contains some foreword text, as well as original material in its yellow pages
advertisements.” (citation omitted)). To see why this is so, we look to Feist, which
illustrates this principle.
In Feist, the defendant copied portions of the plaintiff’s white-pages directory
verbatim, including fake listings inserted to detect copying. Id. at 343–44. In
response, the plaintiff sued for infringement of its compilation copyright in the
directory. Id. at 344. The Supreme Court granted certiorari to decide “whether the
9
copyright in [plaintiff]’s directory protects the names, towns, and telephone numbers
copied by [defendant].” Id. But before reaching this issue, the Court concluded that
the first element of copyright infringement was met, because the plaintiff had
produced its copyright registration and the defendant conceded that the work “as a
whole” was original. Id. at 361. And for a compilation, a valid copyright exists if the
work “as a whole” exhibits “a minimal degree of creativity.”8 Id. at 348, 361; see
also 17 U.S.C. § 103(a) (extending copyright protection to “compilations”); id. § 101
(requiring that a compilation’s originality be judged by looking to the “work as a
whole”); Nimmer on Copyright § 13.01[A] n.5.3 (noting that Feist found element one
satisfied because “the plaintiff’s work as a whole was subject to copyright
protection,” which led the Court to consider “the scope of prohibited copying”—
element two (citing 499 U.S. at 361)). So with element one satisfied, the Feist Court
turned to the real dispute: whether the copying alleged by the plaintiff was prohibited
by copyright law—element two.9 See 499 U.S. at 361–64; see also TransWestern
8
In Discussion Section I.B.1, we explain what is required for a compilation to
obtain copyright protection. We do so there (rather than here) because both EC
Design and Appellees agree that a valid copyright exists in the LifePlanner
compilation, which is all that element one requires. But the parties disagree over the
scope of that copyright. The scope of protection a compilation copyright receives is
informed by determining which aspects of the LifePlanner compilation render it
copyrightable, making the inquiry relevant to element two.
9
In fact, most cases concede element one, leaving the dispute over the scope
of protection afforded by the valid copyright. See, e.g., Feist, 499 U.S. at 361 (“The
first element is not at issue here[.]”); Savant Homes, Inc. v. Collins, 809 F.3d 1133,
1138 (10th Cir. 2016) (“The parties do not dispute that Savant owns a valid
copyright . . . .”); Blehm, 702 F.3d at 1199 (10th Cir. 2012) (“Life is Good does not
10
Pub. Co. v. Multimedia Mktg. Assocs., 133 F.3d 773, 775 (10th Cir. 1998) (“The
second element requires proof that defendants copied plaintiff’s work and that the
elements copied were protected.” (citing Country Kids ‘N City Slicks, Inc. v. Sheen,
77 F.3d 1280, 1284 (10th Cir. 1996))).
Appellees agree that EC Design possesses a valid compilation copyright in the
LifePlanner.10 See Resp. Br. 32 (“It is important to understand that the district court
did not invalidate EC’s copyright registrations, nor did it declare that nothing about
the LifePlanner could be protectable subject matter under the copyright laws. There
is plenty that is protectable.”). And because element one concerns only the existence
of a valid copyright in the allegedly infringed work, we conclude it is satisfied. Of
course, this does not mean that EC Design wins; rather, it just takes us to the next
step, that is, examining the scope of this valid copyright. “The mere fact that a work
is copyrighted does not mean that every element of the work may be protected.”11
Feist, 499 U.S. at 348. We resolve this issue in element two, which we turn to now.
dispute that Mr. Blehm owns a valid copyright . . . .”); TransWestern, 133 F.3d at
775 (“Defendants do not seriously contest that plaintiff has a valid copyright . . . .”).
10
In concluding that EC has not satisfied element one of the copyright-
infringement analysis, Craft Smith follows the district court’s mistaken route.
11
The district court also analyzed the copyrightability of EC Design’s
“asserted compilation” as part of element one and concluded that the compilation was
not entitled to copyright protection. The district court erred by analyzing that
question under element one, because, as explained, the question in element one is
simply whether a valid copyright exists in the LifePlanner compilation as a whole.
But the court’s analysis, while improperly framed, helps resolve element two.
11
B. Element Two: Copying of Original Elements
The second element in a copyright-infringement action “consists of two
components.” Savant Homes, Inc. v. Collins, 809 F.3d 1133, 1138 (10th Cir. 2016).
First, the plaintiff must demonstrate factual copying.12 Id. Second, the plaintiff must
show “substantial similarity between the allegedly infringing work and the elements
of the copyrighted work that are legally protected.” Blehm, 702 F.3d at 1199 (internal
quotation marks and citation omitted) (“This second component . . . determines
whether a defendant’s factual copying constitutes actionable infringement.” (citations
omitted)); see also Jacobsen, 287 F.3d at 942 (considering whether “those elements
that were copied were protected” (citation omitted)).
For the second component, “a court must determine (1) which elements of the
copyrighted work are protectable, and (2) whether these elements are substantially
similar to the accused work.” Savant Homes, 809 F.3d at 1138 (citing Blehm, 702
F.3d at 1200). Summary judgment on this component is proper only “if the
protectable expression in the copyrighted work and the allegedly infringing work is
‘so dissimilar . . . that no reasonable jury could find for the plaintiff on the question
of substantial similarity.’” Blehm, 702 F.3d at 1202–03 (omission in original)
(quoting Sturdza v. United Arab Emirates, 281 F.3d 1287, 1297 (D.C. Cir. 2002))
12
As mentioned supra note 6, EC Design contends that Appellees used the
LifePlanner as a model for the Recollections Planner. Such evidence creates a
genuine issue of material fact over factual copying. See Nimmer on Copyright
§ 13.01[B] (“us[ing] the plaintiff’s [product] as a model, template, or inspiration”
demonstrates factual copying).
12
(citing Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir. 1986); Twentieth
Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1330 (9th Cir. 1983)).
In this case, EC Design has asserted its compilation copyright in the
LifePlanner. So we review this compilation, along with relevant copyright law, to
“distill the protec[ted]” expression in the LifePlanner compilation. Blehm, 702 F.3d
at 1200. And after identifying the protectable expression contained in the LifePlanner
compilation, we consider whether any of that protected expression is “substantially
similar” to the Recollections Planner.
1. Step one: Protectable Expression
“Copyright protection subsists . . . in original works of authorship fixed in any
tangible medium of expression[.]” 17 U.S.C. § 102(a). But “[i]n no case does
copyright protection for an original work of authorship extend to any idea . . .
illustrated . . . or embodied in such work.” § 102(b); see also Blehm, 702 F.3d at
1200 (“[Section 102(b)] enshrines the ‘fundamental tenet’ that copyright ‘protection
extends only to the author’s original expression and not to the ideas embodied in that
expression.’” (quoting Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823,
836 (10th Cir. 1993)) (citing Harper & Row Publ’rs Inc. v. Nation Enter., 417 U.S.
539, 547 (1985); Rogers v. Koons, 960 F.2d 301, 308 (2d. Cir. 1992))).
Of importance here, copyright protection extends to “compilations,” § 103(a),
which are “work[s] formed by the collection and assembling of preexisting materials
or of data that are selected, coordinated, or arranged in such a way that the resulting
work as a whole constitutes an original work of authorship,” § 101. This definition
13
contains the following three criteria: “(1) the collection and assembly of pre-existing
material, facts, or data; (2) the selection, coordination, or arrangement of those
materials; and (3) the creation, by virtue of the particular selection, coordination, or
arrangement, of an ‘original’ work of authorship.” Feist, 499 U.S. at 357 (discussing
§ 101). The LifePlanner satisfies the first two criteria because (1) it is a “collection
and assembly of preexisting material” and (2) it has been selected, coordinated, and
arranged.
To satisfy the third criteria, the LifePlanner compilation’s selection,
coordination, and arrangement of preexisting material must be (1) original and (2) a
work of authorship. An original work must be “independently created by the
author . . . and . . . possess[] at least some minimal degree of creativity.” Savant
Homes, 809 F.3d at 1138–39 (quoting Feist, 499 U.S. at 345) (internal quotation
marks omitted). In other words, “[t]he required level of creativity is extremely
low[,]” such that “even a slight amount will suffice.” Id. at 1139 (internal quotation
marks omitted) (quoting Feist, 499 U.S. at 345). For compilations, the requisite
originality comes from the “compiler[’s]” “choices as to selection and arrangement,
so long as they are made independently . . . and entail a minimum degree of
creativity.” Feist, 499 U.S. at 348.
In addition to originality, the compilation itself must be a work of authorship
under § 102(a). Feist, 499 U.S. at 357–58 (requiring that compilations qualify as a
§ 102(a) “work of authorship”). Here, EC Design contends that the LifePlanner is
both a “literary work,” § 102(a)(1), and a “pictorial, graphic, or sculptural work,”
14
§ 102(a)(5). Opening Br. 35–37. In other words, EC Design contends that its
“LifePlanner compilation is a literary work with graphic elements.” Id. at 36. Thus,
its compilation copyright will protect the original selection and arrangement of the
literary and graphic components contained therein. We identify those components
next to distill the protected expression of the LifePlanner compilation.
A § 102(a)(1) literary work is a “work[], other than audiovisual works,
expressed in words, numbers, or other verbal or numerical symbols or indicia,
regardless of the nature of the material objects, such as books, . . . in which they are
embodied.” § 101. In this case, EC Design argues that the LifePlanner compilation
qualifies as a literary work because it contains “preexisting phrases, months, weeks,
days, holidays, numbers, and other data and information.” Reply Br. 8. We agree; the
LifePlanner’s original selection, coordination, and arrangement of phrases,
inspirational quotations, holidays, and other numerical data qualify the LifePlanner
compilation as a literary work. Thus, the LifePlanner compilation’s protected
expression includes the specific text selected, as it has been originally arranged
throughout the LifePlanner.
Next, we look to whether the LifePlanner compilation’s protectable expression
includes the LifePlanner’s graphic components. Section 102(a)(5) pictorial or graphic
works are “two-dimensional . . . works of fine, graphic, and applied art.” § 101.
Such works shall include works of artistic craftsmanship insofar as their form
but not their mechanical or utilitarian aspects are concerned; the design of a
useful article . . . shall be considered a pictorial [or] graphic . . . work only if,
and only to the extent that, such design incorporates pictorial [or] graphic . . .
15
features that can be identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article.
Id. A “useful article” has “an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information.” Id. If an item is a “useful article,” we
decide whether its pictorial or graphic features can be separated from it, by employing the
following test:
[A] feature incorporated into the design of a useful article is eligible for
copyright protection only if the feature (1) can be perceived as a two- or
three-dimensional work of art separate from the useful article and (2)
would qualify as a protectable pictorial, graphic, or sculptural work—
either on its own or fixed in some other tangible medium of expression—
if it were imagined separately from the useful article into which it is
incorporated.
Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1007 (2017).
Here, EC Design contends that the LifePlanner’s “banners, color schemes, and
two-dimensional artwork and design” render the LifePlanner a work of authorship
under § 102(a)(5). Reply Br. 5; see also Opening Br. 48 (referencing the
LifePlanner’s “2-D artwork and graphics” as those that qualify for copyright
protection). We need not decide whether the LifePlanner is a useful article regarding
these graphics, because, even if it were, the banners, two-dimensional artwork, and
color schemes can easily be viewed “separate from” the LifePlanner as required by
Star Athletica.13 This renders those graphical components copyrightable elements of
13
We question whether the calendar elements can be viewed “separate[ly]
from” the LifePlanner. But because EC Design does not argue that those are part of
the LifePlanner’s work of authorship, we need not decide that. For similar reasons,
this helps explain why we need not consider whether the LifePlanner is a useful
article.
16
the overarching compilation. In fact, Appellees agree that the LifePlanner’s two-
dimensional “art is separable” and conclude that the art contained in the LifePlanner
qualifies as a work of authorship (they contend this does not matter, because these
components of the LifePlanner were not copied). Resp. Br. 36. Thus, the LifePlanner
compilation’s protectable expression includes—in addition to textual elements—its
original selection and arrangement of the specific two-dimensional artwork and
graphics contained therein.
Before moving to the substantial-similarity test, however, it is important to
keep in mind what is not included in the LifePlanner’s protectable expression.
Because a compilation copyright arises from “the selection, coordination, and/or
arrangement of specific content,” its protectable expression is “limited to the
selection, coordination, and/or arrangement of that specific content, and [does] not
apply to the format and layout itself.” U.S. Copyright Office, Compendium of U.S.
Copyright Office Practices § 313.3(E) (3d ed. 2017) (emphasis added) [hereinafter
Compendium].14 To grant further protection would violate § 102(b)’s dictate that
14
“[T]he Compendium is a non-binding administrative manual that at most
merits [Skidmore] deference . . . .” Georgia v. Public.Resource.Org, Inc., 140 S. Ct.
1498, 1510 (2020) (referring to Skidmore v. Swift & Co., 323 U.S. 134 (1944)). Thus,
we “follow it only to the extent it has the power to persuade.” Id. (quoting Skidmore,
323 U.S. at 140) (internal quotation marks omitted). Here, we find section 313.3[E]
persuasive, because of the statutory direction that copyright law extends not to ideas,
but to expression. Granting copyright protection to the layout and format of a
compilation would extend copyright to the ideas contained in methods of laying out
or formatting information. Doing so would impermissibly expand the scope of such
copyright law beyond the actual expression used (meaning, the specific content found
in the work). And because a compilation’s original expression comes from the
selection, coordination, and arrangement of the specific content expressed, that
17
copyright law does not protect ideas. And because a compilation copyright protects
the selection and arrangement of the specific content used (its expression), “[t]he
protection available for a compilation is ‘thin.’” TransWestern, 133 F.3d at 776
(quoting Feist, 499 U.S. at 349).
In sum, the LifePlanner’s protectable expression consists of the selection,
coordination, and arrangement of the specific literary and graphic components that
make up the LifePlanner as a whole.15
2. Step two: Substantial Similarity
Having identified the LifePlanner compilation’s protected expression, we now
ask whether that expression is “substantially similar to the accused work.” Savant
Homes, 809 F.3d at 1140 (internal quotation marks omitted) (quoting Blehm, 702
F.3d at 1202). “Substantial similarity exists when ‘the accused work is so similar to
the plaintiff’s work that an ordinary reasonable person would conclude that the
defendant unlawfully appropriated the plaintiff’s [protectable] expression by taking
material of substance and value.’” Id. (alteration in original) (quoting Blehm, 702
F.3d at 1202). For compilations, “because the copyrightability of a factual
compilation depends upon the originality in selection, coordination or arrangement of
copyright protection cannot extend to different content even if it was similarly
coordinated and arranged. Doing so would protect an idea, rather than expression,
something copyright law does not allow. See § 102(b).
15
Our conclusion comports with the ‘725 Registration, which covers “2-D
artwork, compilation of introductory and section phrases, graphics.” App. vol. 16 at
4214.
18
the facts as a whole work, in an infringement action the court must compare the
allegedly infringing work as a whole” when determining whether the two works are
substantially similar.16 TransWestern, 133 F.3d at 777 (internal quotation marks and
citation omitted).
Here, EC Design argues that the following four bases demonstrate substantial
similarity between the LifePlanner compilation and the Recollections Planner: First,
EC Design argues that Appellees used “the same monthly and weekly calendar forms,
with the same banners and notes sections, and arranged them in the same order[.]”
Reply Br. 15. Second, EC Design points out that “Appellees arranged their infringing
planner compilation into the same three sections: introductory, monthly, and notes,
with the same number of pages in each section.” Id. at 19 (footnote omitted). Third,
EC Design argues that Appellees “selected the same number of sticker pages and
arranged them in the same location in their planner.” Id. And fourth, EC Design
argues that the “two works have the same tab size and font.” Id. From this, EC
Design contends that a jury should resolve the question of whether the two works,
when compared as a whole, are substantially similar. We disagree.
16
For this reason, non-compilation cases that discuss “protected elements” of a
copyright can mislead in the compilation context. A compilation copyright must be
viewed “as a whole,” not broken up into protected/unprotected elements. Cf. Enter.
Mgmt., 717 F.3d at 1119 (discussing element one) (“Any copyrightable work can be
sliced into elements unworthy of copyright protection. . . . We must focus on whether
[plaintiff] has selected, coordinated, and arranged the elements of her [work] in an
original way.” (internal quotation marks and citations omitted)).
19
In listing these similarities, EC Design does not claim that Appellees copied
any of its planner’s artwork or text—the two most significant portions of protected
expression in the LifePlanner compilation. In fact, EC Design does not even claim
that Appellees employed similar artwork or similar text. Instead, EC Design claims
that Appellees have adopted a similar format. But the format of the LifePlanner is not
part of its protectable expression. Rather, EC Design’s protectable expression, for
example, is the selection of the quotations “make room for good things to begin” and
“everything you now know was once unknown” and the quotations’ arrangement on
the pages immediately after the ownership page. App. vol. 18 at 4783 (capitalization
removed).
Copyright law does not protect how EC Design has laid out its LifePlanner,
which is an idea, not expression. See § 102(b); Compendium § 313.3(E). EC Design’s
original idea of arranging a colorful organizer full of quotations and art is not
protectable by copyright. § 102(b) (“In no case does copyright protection for an
original work of authorship extend to any idea . . . embodied in such work.”
(emphasis added)). Instead, copyright protects the selection, coordination, and
arrangement of the specific text and artwork found in the LifePlanner compilation.
Thus, when Appellees used entirely different artwork and text, even if arranged
similarly, it did not copy the LifePlanner’s protected expression. These substantial
differences eliminate the possibility that a reasonable juror could conclude that the
protected elements of the LifePlanner are substantially similar to the Recollections
20
Planner.17 See TransWestern, 133 F.3d at 777 (relying on the “many differences”
between the compilation copyright and the accused work to affirm “the district
court’s finding of no infringement”).18
Thus, because none of the alleged similarities in Appellees’ Recollections
Planner relate to the LifePlanner’s protected expression, no reasonable juror could
conclude that the two products are substantially similar, and we affirm the district
court.19
II. Trade Dress
Next, we consider EC Design’s argument that the district court improperly
took the issue of trade-dress infringement from the jury. Trade dress consists of a
product’s “overall image and appearance, and may include features such as size,
17
Because we conclude that EC Design has failed to allege any similarities
between the Recollections Planner and the protected expression in the LifePlanner,
we do not decide whether the district court erred by applying a “supersubstantial
similarity” test. We disagree with EC Design’s argument that the district court also
erred by focusing on differences between the products instead of their similarities. In
identifying the dissimilarities between the planners, the district court has explained
why no reasonable juror could find substantial similarity between the two planners
after considering them as a whole.
18
In addition to having different content, the two planners arrange their own
content differently. For example, the arrangement of quotations throughout each
organizer is different—for instance, EC Design includes quotations for every month
of the year, while Appellees do so for half the months. This further supports the
district court’s decision granting summary judgment for Appellees.
19
The district court reached this conclusion differently. By reviewing the
asserted compilation for copyrightability in element one, the district court sought to
determine whether the LifePlanner compilation’s protected expression could have
been infringed. While there may be something to say for the district court’s approach,
our precedent requires a different framework—the one we follow here.
21
shape, color or color combinations, texture, graphics, and even particular sales
techniques.” Sally Beauty, 304 F.3d at 977 (citing Two Pesos, Inc. v. Taco Cabana,
Inc., 505 U.S. 763, 764 n.1 (1992)). In this case, EC Design has identified eleven
factors that make up “the trade dress of the LifePlanner.” Opening Br. 61–62. Among
these factors are plastic-laminated front and back covers, coil-bound planner pages,
colored themes throughout, and overall layout. In other words, the LifePlanner trade
dress consists of the “combinations and the total image and overall look and feel”
that the various pieces of the LifePlanner “impart upon the LifePlanner Products and
in the minds of consumers.” App. vol. 30 at 8024 (quoting EC Design’s second
amended complaint in the district court’s order). In addition, the district court
concluded that the LifePlanner possesses product-design trade dress, a conclusion EC
Design does not challenge.
A. The Lanham Act
Section 43(a) of the Lanham Act allows an owner of unregistered trade dress
to bring a claim “for the use by any person of ‘any word, term, name, symbol, or
device, or any combination thereof . . . which . . . is likely to cause confusion . . . as
to the origin, sponsorship, or approval of his or her goods. . . .’” Wal-Mart Stores,
Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000) (omissions in original)
(emphasis added) (quoting 15 U.S.C. § 1125(a)). By creating this private right of
action, Congress has sought to “prevent[] deception and unfair competition.” Two
Pesos, 505 U.S. at 763, 773.
22
To succeed in its section 43(a) action, EC Design “must show: ‘(1) [Its] 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) [Its] trade dress is nonfunctional.’” Savant Homes, Inc.
v. Collins, 809 F.3d 1133, 1147 (10th Cir. 2016) (quoting General Motors Corp. v.
Urban Gorilla, LLC, 500 F.3d 1200, 1227 (10th Cir. 2007)). The district court
granted summary judgment for Appellees on the first requirement, which leaves
distinctiveness as the sole issue on appeal. And because the LifePlanner has product-
design trade dress, distinctiveness exists only if the trade dress has acquired
secondary meaning. See Wal-Mart, 529 U.S. at 210–11.
This secondary meaning requirement reflects that for product-design trade
dress, “consumer predisposition to equate the feature with the source does not exist.”
Id. at 213. “Consumers are aware of the reality that, almost invariably, even the most
unusual of product designs . . . is intended not to identify the source, but to render the
product itself more useful or more appealing.” Id. So when a competitor copies a
product’s design, its purpose is not necessarily to confuse consumers, but to copy the
aspects of that product that make it more functional. Id. In this way, product-design
trade dress fundamentally differs from product-packaging trade dress, which can be
inherently distinctive, because the very act of “encasing it in a distinctive packaging
[serves] to identify the source of the product.” Id. at 212. As a result, the Court
requires “that, in an action for infringement of unregistered trade dress under
23
[section] 43(a) of the Lanham Act, a product’s design is distinctive, and therefore
protectible, only upon a showing of secondary meaning.” Id. at 216.
B. Secondary Meaning
Secondary meaning requires that the trade dress “have been used so long and
so exclusively by one producer with reference to his goods or articles that, in the
trade and to that branch of the purchasing public, the [trade dress] has come to mean
that the article is his product.” Savant Homes, 809 F.3d at 1148 (alteration in
original) (internal quotation marks omitted) (quoting Water Pik, Inc. v. Med-Sys.,
Inc., 726 F.3d 1136, 1154 (10th Cir. 2013)). In other words, secondary meaning
exists when the trade dress’s “primary significance in the minds of potential
consumers is no longer as an indicator of something about the product itself but as an
indicator of its source or brand.” Vornado Air Circulation Sys., Inc v. Duracraft
Corp., 58 F.3d 1498, 1502 (10th Cir. 1995) (emphasis added). This means that the
“ultimate inquiry is whether in the consumer’s mind the mark denotes a single thing
coming from a single source.” Sally Beauty, 304 F.3d at 978 (quoting Stuart Hall Co.
v. Ampad Corp., 51 F.3d 780, 789 (8th Cir. 1995)). “Whether a trade dress has
acquired secondary meaning is a question of fact and thus generally should not be
decided at the summary judgment stage.” Id. (emphasis added) (citation omitted).
To show secondary meaning, parties can present both “direct evidence, such as
consumer surveys or testimony from consumers, and circumstantial evidence.” Water
Pik, Inc., 726 F.3d at 1154 (internal quotation marks and citation omitted). In this
case, EC Design has provided only circumstantial evidence, which can include:
24
(1) the length and manner of the trade dress’s use; (2) the nature and
extent of advertising and promotion of the trade dress; (3) the efforts
made in the direction of promoting a conscious connection, in the public’s
mind, between the trade dress and a particular product or venture; (4)
actual consumer confusion; (5) proof of intentional copying; or (6)
evidence of sales volume. Sales volume, however, only suggests
secondary meaning when presented in conjunction with other evidence;
standing alone, sales volume may not be indicative of secondary meaning
because it could be related to factors other than source identification.
Savant Homes, 809 F.3d at 1148 (internal quotation marks, alterations, and citations
omitted). EC Design has presented five types of circumstantial evidence listed in
Savant Homes—all but category four, “actual consumer confusion”—along with
evidence of media attention and third-party recognition. It contends that this evidence
should render secondary meaning a jury question. Going further, EC Design also
argues that its evidence of sales volume and intentional copying alone justify sending
this question to a jury given our court’s decision in Sally Beauty. We evaluate both
arguments below, but before doing so, we start with EC Design’s circumstantial
evidence.
1. EC Design’s circumstantial evidence of secondary meaning
Addressing the first category of Savant Homes evidence, EC Design points to
what it deems its long-term, exclusive use of the LifePlanner trade dress. It concedes
that while the asserted “trade dress was first presented in its entirety in the summer of
2015,” it “has used many core elements of the LifePlanner trade dress for much
longer.” Opening Br. 69. For example, EC Design references its use of colorful
themes, a customizable cover, sticker pages, and “a coiled binding” in the
LifePlanner since 2007. Opening Br. 69 (citing App. vol. 35 at 9205). EC Design also
25
contends that it began using colorful organizer tabs in 2011. In addition, EC Design
contends that this use was exclusive, despite some of its competitors using similar
features both before and at the time Appellees first introduced their own organizer to
the market.
For the second and third categories, EC Design points to $600,000 spent on
advertising the LifePlanner (with references to its trade dress) “through social media,
email, and third-party bloggers.” Opening Br. 71 (citing App. vol. 2 at 349). For
example, EC Design paid for social-media posts by influencers, which favorably
reference or picture the LifePlanner. Some posts highlight quotations contained in the
LifePlanner, while others focus on its color or calendar layout. And yet other posts
discuss topics other than the LifePlanner, such as the Super Bowl or Christmas
decorating—showing, perhaps, how the LifePlanner can be used. Further, EC Design
has paid for YouTube ads that show people enjoying a colorful LifePlanner. And
finally, EC Design has sent newsletters to highlight annual updates to the
LifePlanner. These e-mailings, for example, focus on new color options for the
covers, different calendar layouts, and various other ways in which a user can
customize the LifePlanner.
For the fifth category, EC Design points to “evidence that Craft Smith
intentionally copied the design of the LifePlanner in its creation of the Recollections
Planner.” Opening Br. 63. This copying evidence shows that Craft Smith sent the
LifePlanner to its manufacturer, asking for “everything [to be] the same.” App. vol.
32 at 8508. In addition, Craft Smith told its manufacturer that the Recollections
26
Planner should “feel like [the] overall weight of [the LifePlanner] sample.” Id. at
8564.
For the sixth category, EC Design presents evidence of the LifePlanner’s
significant sales. For example, EC Design has sold over 1,549,770 LifePlanners since
2009. And gross revenue from those sales has “total[ed] over sixty five million
dollars[.]” App. vol. 2 at 239.
Finally, in addition to evidence fitting the categories listed in Savant Homes,
EC Design points to third-party reviews of the Recollections Planner, which have
deemed it a “knockoff” or “dupe” of the LifePlanner. Opening Br. 74. These reviews
note similarities between the two planners and contend that “the[ Appellees] hacked
[their planner] from Erin Condren.” App. vol. 25 at 6775. EC Design also directs us
to attention the LifePlanner received from third parties and the media. For example,
Fox Business wrote a story documenting EC Design’s growing success. And in
another article, Buzzfeed recommended that its readers “organise [sic] [their] li[ves]
with an Erin Condren life planner.” App. vol. 21 at 5883.
We must decide whether this evidence creates a genuine issue of material fact
regarding secondary meaning. But before considering the entirety of EC Design’s
circumstantial evidence, we consider EC Design’s argument that our court’s decision
in Sally Beauty renders the question of secondary meaning one for the jury on the
strength of its evidence of significant sales and intentional copying alone.
27
2. Sally Beauty: Significant sales and intentional copying
In Sally Beauty, our court held that evidence of significant sales volume and
intentional copying created a genuine issue of material fact regarding whether the
plaintiff’s product-packaging trade dress had developed secondary meaning. 304 F.3d
at 970, 977. Based on this holding, EC Design argues that its own evidence of
substantial sales and intentional copying renders the issue of secondary meaning in
the LifePlanner’s product-design trade dress a jury question. But for the reasons
below, we reject this argument. For product-design trade dress, we decline to adopt a
per se rule that evidence of intentional copying and significant sales alone render
secondary meaning a jury question.20
Sally Beauty concerned whether product packaging for the plaintiff’s hair-care
line was distinctive, requiring our court to decide whether the product packaging was
inherently distinctive or had become distinctive due to secondary meaning. See id. at
977. We concluded that “a genuine issue of material fact exists whether [the] trade
dress [was] descriptive.”21 Id. And because a “descriptive trade dress . . . is not
entitled to trade dress protection unless it has acquired secondary meaning in the
20
For reasons discussed infra Discussion Section II.B.3, the principles guiding
the decision in Sally Beauty do apply in the product-design context.
21
“[I]nherent distinctiveness of a trade dress is categorized along the generic-
descriptive-suggestive-arbitrary-fanciful spectrum.” Sally Beauty, 304 F.3d at 977
(citing Two Pesos, 505 U.S. at 768). And descriptiveness is a form of distinctiveness
for product-packaging trade dress. Id. (“A trade dress is descriptive if it conveys an
immediate idea of the ingredients, qualities or characteristics of the goods.” (internal
quotation marks and citation omitted)).
28
marketplace,” we had to decide whether the hair-care line’s trade dress had
developed secondary meaning. Id. (emphasis added).
In analyzing secondary meaning, we started with the principle that oftentimes
a jury should decide the secondary-meaning issue. See id. at 978. This influenced our
view of “the ultimate question” for trade-dress infringement: “whether in the
consumer’s mind the mark denotes a single thing coming from a single source.” Id.
(internal quotation marks and citation omitted). With that, we reviewed the three
categories of evidence presented by the plaintiff to show secondary meaning: (1) “a
history of successful sales,” (2) “intentional copying,” and (3) “long use of the
[relevant] trade dress.” Id.
We began by noting that “[s]tanding alone, sales volume may not be indicative
of secondary meaning because it could be related to factors other than source
identification.” Id. (citation omitted). In other words, circumstantial evidence that can
easily be explained by “factors other than source identification” was not enough to
create a genuine issue of material fact on secondary meaning. See id. For example, a
product might enjoy high sales because the product itself is desirable—not because of
any reason related to its source. Thus, we required further evidence to show that the
product-packaging trade dress had developed secondary meaning. Id. And in Sally
Beauty, this evidence came from the defendant’s intentional copying of the plaintiff’s
product packaging. Id. This evidence, combined with significant sales, created “a
29
genuine issue of material fact” on whether the plaintiff’s product-packaging trade
dress had developed secondary meaning.22 Id.
But why did intentionally copying a package’s design, along with evidence of
significant sales, create an issue of material fact regarding “whether in the
consumer’s mind the [trade dress] denotes a single thing coming from a single
source[?]” Id. at 977 (internal quotation marks and citation omitted). To answer this
question, we consider what intentionally copying packaging shows that sales do not.
As we noted in Sally Beauty, sales volume can be explained by any number of factors
unrelated to the product’s source. Id. at 978. And because trade-dress protection
exists to prevent deception, we required some evidence that the trade dress
infringement caused deception. For product-packaging trade dress, such deception
could be shown by a defendant’s intentional copying, because the “very purpose” of
distinctive product packaging is to identify the source. Wal-Mart, 529 U.S. at 212
(“[T]he very purpose . . . [of] encasing [a product] in a distinctive packaging . . . is
most often to identify the source of the product.”). So, when the defendant in Sally
Beauty copied the appearance of the plaintiff’s packaging, the defendant took
something intimately tied to the plaintiff’s product as a source identifier, not
something that had to do with the product itself. See 304 F.3d at 977–78.
22
In a footnote, we discounted Sally Beauty’s evidence of long-term use,
concluding that it provided “no evidence below or on appeal that its use of trade
dress was substantially exclusive.” Sally Beauty, 304 F.3d at 978 n.4 (citing J.M.
Huber Corp. v. Lowery Wellheads, Inc., 778 F.2d 1467, 1470 (10th Cir. 1985)).
30
But these considerations do not hold when the relevant trade dress is for
product design, as it is here. Because unlike a product’s packaging, a product’s
design often goes directly to its function. See Wal-Mart, 529 U.S. at 213
(“Consumers are aware of the reality that, almost invariably, even the most unusual
of product designs . . . is intended not to identify the source, but to render the product
itself more useful or more appealing.”). So, when a competitor copies a design, it
may have done so for any number of reasons unrelated to deception—in fact, as
recognized by the Supreme Court, most often designs are copied “to render the
product itself more useful or more appealing.” Id. (citation omitted).
This is true here. EC Design’s evidence of intentional copying may be
explained by “factors other than source identification.” Sally Beauty, 304 F.3d at 978
(citation omitted). For example, by choosing a similar calendar layout or size for
their planner, the Appellees likely did so to take advantage of an already popular
layout and size.23 But this relates to the product’s functionality, rather than its source.
Further, Appellees used different cover art and cover types, and did not use anything
like the registered trademark symbols employed on the cover of all EC Design
LifePlanners.
23
EC Design argues that by reaching similar conclusions based on the
evidence, the district court inserted itself in the rightful place of the jury. We
disagree. The district court simply explained why the proffered evidence was not
related primarily to source identification. Our court did the same in Sally Beauty,
when it rejected evidence of sales as insufficient to show secondary meaning because
it “could be related to factors other than source identification.” 304 F.3d at 978
(emphasis added) (citation omitted).
31
Thus, we conclude that EC Design’s evidence of significant sales and
intentional copying fail to create a genuine issue of material fact regarding the
LifePlanner trade dress’s secondary meaning. Likewise, we decline to extend Sally
Beauty’s holding to the product-design trade-dress context. Now, mindful of the
distinctions between product-design trade dress and product-packaging trade dress,
we turn to EC Design’s remaining circumstantial evidence—advertising, consumer
confusion, and length of use.
3. EC Design’s remaining circumstantial evidence
Though secondary meaning is oftentimes a question for the jury, it only
becomes so if the plaintiff’s evidence creates a genuine issue of material fact
regarding whether the relevant trade dress has “the primary significance of . . .
identify[ing] the source of the product rather than the product itself.” Forney Indus.,
Inc. v. Daco of Mo., Inc., 835 F.3d 1238, 1253 (10th Cir. 2016) (internal quotation
marks and citation omitted). As explained in our discussion of Sally Beauty, this
means that the relevant circumstantial evidence must create a fact question whether
trade dress serves primarily as a source identifier in consumers’ minds. 304 F.3d at
977–78 (concluding that for product-packaging trade dress, this can be done with
proof of intentional copying).
For product-design trade dress, this task can be difficult, because “even the
most unusual of product designs” often exists “not to identify the source, but to
render the product itself more useful or more appealing.” Wal-Mart, 529 U.S. at 206,
213. Thus, merely providing evidence of the category suggested in Savant Homes is
32
not enough to create a genuine issue of material fact regarding secondary meaning for
product-design trade dress. Instead, to survive a motion for summary judgment, the
plaintiff must offer evidence creating a genuine issue of material fact that the trade
dress serves primarily as a source identifier.24 See Sally Beauty, 304 F.3d 977–78.
Only one piece of circumstantial evidence is necessary to create a genuine issue of
material fact that the trade dress serves as a source identifier, if combined with other
circumstantial evidence—like the intentional copying in Sally Beauty when combined
with sales. But in this case, all of EC Design’s proffered evidence “could be related
to factors other than source identification.” Id. at 978 (citation omitted).
To start, EC Design contends that its length-of-use evidence creates a jury
question over whether the LifePlanner’s trade dress has developed secondary
meaning. But for this to support secondary meaning, the trade dress must “have been
used so long and so exclusively by one producer with reference to [its] goods that it
has acquired [secondary meaning].” Sally Beauty, 304 F.3d at 978 n.4 (internal
quotation marks omitted) (quoting J.M. Huber Corp. v. Lowery Wellheads, Inc., 778
F.2d 1467, 1470 (10th Cir. 1985)). And here, the asserted LifePlanner trade dress has
existed only since 2015. Given that EC Design asserts that the 2017 Recollections
Planner (designed throughout 2016) infringes the LifePlanner’s trade dress, we
24
Our precedent contradicts EC Design’s suggestion in its briefing that
secondary meaning is always a jury question. See Savant Homes, 809 F.3d at 1148–
49 (affirming a grant of summary judgment that held the product had not developed
secondary meaning).
33
decline to find that trade dress only in use for a little over a year has “been used so
long” as to acquire secondary meaning.
Further, after EC Design introduced the LifePlanner in 2007, it has routinely
altered it significantly, including with new colors, artwork, covers, and layout. In
fact, even within a same year, the LifePlanner’s appearance has varied. We fail to see
how a constantly updated product’s design can develop secondary meaning through
long-term use. Moreover, even if such use could be considered “so long,” many
aspects of the LifePlanner trade dress are not exclusive to EC Design. In fact, as the
district court noted, when the Recollections Planner was designed in 2016, several
other competitors were using a variety of the features constituting the LifePlanner
trade dress, including LimeLife and Plum Paper, both of whose colorful planners
used a single coil, colorful tabs, and laminated covers featuring artwork. Thus, EC
Design’s length-of-use evidence fails to create a genuine issue of material fact on
secondary meaning.
Next, we look at EC Design’s advertising evidence. Such advertising must
speak directly to the trade dress or demonstrate an “effort[] to promote a conscious
connection in the public’s mind between [EC Design’s trade dress] and its products.”
Water Pik, 726 F.3d at 1154. But “[a]dvertising that touts a product feature for its
desirable qualities and not primarily as a way to distinguish the producer’s brand is
not only not evidence that the feature has acquired secondary meaning, it directly
undermines such a finding.” Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654,
662 (7th Cir. 1995). And here, EC Design’s evidence shows that it used its
34
advertising to tout the LifePlanner’s desirable features, not to “promote a conscious
connection” between its trade dress and itself as the source. Water Pik, 726 F.3d at
1154. For example, the direct mailer that EC Design sent to consumers touted new
design features that consumers would find “desirable.” Thomas & Betts, 65 F.3d at
662. And many of the paid ads on YouTube and social media similarly highlighted
the LifePlanner’s usefulness in organizing one’s life. And though much of EC
Design’s advertising “featur[ed] the LifePlanner product with recognizable elements
of the trade dress,” Opening Brief at 72, “[s]econdary meaning cannot usually be
proven by advertising that merely pictures the claimed trade dress and does nothing
to emphasize it or call attention to it[,]” Forney, 835 F.3d at 1254 (citation omitted).
Thus, EC Design’s advertising evidence does not create a genuine issue of material
fact regarding secondary meaning, “because it could be related to factors other than
source identification.” Sally Beauty, 304 F.3d at 978 (citation omitted). In fact, the
advertising directly undercuts EC Design’s position, because it most often served to
highlight design features, not to draw a connection in consumers’ minds between the
trade dress and its source.25
Finally, we conclude by considering EC Design’s evidence that third parties
commented that the Recollections Planner was a “knockoff” of the LifePlanner.
25
EC Design’s media-attention evidence fails for similar reasons. While the
evidence provides a compelling look at the company’s success, EC Design does not
explain how this evidence demonstrates that the LifePlanner’s trade dress primarily
serves to “identify the source of the product rather than the product itself.” Forney
Indus., Inc., 835 F.3d at 1253.
35
Opening Br. 74. As support for the relevance of this sort of evidence, EC Design
cites Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d
619 (6th Cir. 2002). In Abercrombie, the Sixth Circuit allowed evidence that
“consumers remark[ed] on the similarity of designs” to show “actual confusion by
consumers.” Id. at 639–40. Actual consumer confusion is the fourth category of
Savant Homes evidence. Here, EC Design has not used this evidence to show actual
consumer confusion, so its reliance on Abercrombie is misplaced.26 And because EC
Design fails to explain how this evidence shows that consumers view the
LifePlanner’s trade dress as a source identifier, we conclude that EC Design’s
evidence of third-party recognition does not create a genuine issue of material fact
over secondary meaning.
In sum, we affirm the district court’s grant of summary judgment in favor of
Appellees, because EC Design has failed to create a genuine issue of material fact
regarding the LifePlanner trade dress’s secondary meaning with any of its proffered
evidence.27
26
In fact, Abercrombie undercuts EC Design’s argument. Unlike the
consumer-response evidence in Abercrombie, which concerned actual confusion, the
consumer-response evidence here shows a lack of consumer confusion—the
consumers readily distinguished between the two organizers.
27
We recognize that this decision may make it more difficult to obtain trade-
dress protection for a product’s design. But this reflects the reality that trade-dress
protection is an awkward fit for product design. See TrafFix Devices, Inc. v. Mktg.
Displays, Inc., 532 U.S. 23, 29 (2001) (noting that the Supreme Court has
“caution[ed] against misuse or overextension of trade dress,” and that this is
especially true for product-design trade dress, because “product design almost
36
CONCLUSION
For the foregoing reasons, we affirm the district court’s order granting
summary judgment to Appellees on both infringement claims and, accordingly,
dismiss this appeal.
invariably serves purposes other than source identification” (quoting Wal-Mart, 529
U.S. at 213)).
37