Summary Judgment is Sticky Business in Trade Dress Cases

Oct 23, 2020

By: Justin McNaughton, Senior Counsel

The Eleventh Circuit Court of Appeals reversed a Georgia U.S. District Court’s grant of Summary Judgment to Gorilla Glue in a trade dress infringement case brought by J-B Weld over adhesive packaging. In a 42-page decision, the Eleventh Circuit confirmed the prevailing rule regarding trade dress infringement: it’s a sticky business and even if you can find a court to grant summary judgment, it’s probably not permanent.

JB-Weld asserted that it has protectable trade dress in its packaging that Gorilla Glue’s packaging infringes. Note the v-shaped orientation of the tubes, the black bar on the left tube, the red bar on the right tube, and maybe – the four lines of text between the tubes.

The Court set out the three elements required to properly fasten a trade dress infringement claim: (1) “its trade dress is inherently distinctive or has acquired secondary meaning”; (2) “its trade dress is primarily non-functional”; and (3) the defendant’s trade dress is so similar to the plaintiff’s that it is likely to cause confusion.” AmBrit, Inc. v. Kraft, Inc. 812 F. 2d 1531, 1535 (11^th Cir. 1986). The Court next proceeded to give the seven factors required in the Eleventh Circuit to show a likelihood of confusion between two trade dresses: FIRST, you must show . . . just kidding, we aren’t doing that here. You can find the opinion here, if you must.

Instead, let’s compare the packages for fun. You can quickly see a few similarities, but some might not notice the black bar on the left package until reading about it in the Court’s opinion. I noticed the red bar that really doesn’t fit the rest of the Gorilla Glue packaging and the v-orientation. Fortunately, sorting out whether there is a likelihood of confusion between these packages isn’t on my list of things to do this week. I don’t envy the district court though that just got this assignment.

One of the factors in the Eleventh Circuit’s test does cause a moment of pause. Factor number 6 in the Eleventh Circuit’s test focuses on Gorilla Glue’s intent when it created the packaging. At first, that seems perfectly reasonable. If Gorilla Glue intended to copy the package, then the Court should stick it to them. It certainly doesn’t help that an employee from Gorilla Glue appears to have called the package a “knock off” of JB Weld’s package or that there were emails suggesting that the design team intentionally pulled in elements from JB Weld’s packaging.

But is intent really important if the analysis is whether there is a likelihood of confusion? I mean, I imagine that Gorilla Glue also intended to make an aesthetically pleasing package. Sometimes people set out to do things and it just doesn’t happen. I doubt Gorilla Glue’s intentions come into play much when you’re standing in Home Depot trying to figure out how to fix a broken vase.

The Court’s opinion does give a good explanation about the differences between epoxy and methyl methacrylate adhesive. I never knew that before.

Anyway, I can see how someone could miss the whole point as you carefully count all the factors and read through the lengthy opinion. But when you go back, you quickly see the gorilla standing there the whole time: trade dress infringement cases are powerful weapons because they are fact intensive, proving them is really complicated, and they are very expensive to litigate. See Non-Sequitur, Selective Attention Test.

In fact, if I just think about getting one of these claims stuck to my hands, I can feel how hard it is to peel them off. Trade dress infringement certainly is sticky business. Don’t try to take on the 800 pound gorilla by yourself.

Justin McNaughton can be reached at [email protected].

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Summary Judgment is Sticky Business in Trade Dress Cases

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