July 2003
(Issue No. 1: Decisions published June 16–30)

Preliminary injunction Denied In Dispute Over Bar and Dance Club Trade Dress

Do The Hustle, LLC, et al. v. Rogovich, et al. (S.D.N.Y. June 19, 2003), 2003 U.S. Dist. LEXIS 10445

Court Opinion

Case Snapshot:

Trademark Issue:	Trade Dress
Case Overview:	Trade dress dispute between two 80's-theme bar and dance clubs.
Holding:	Likelihood of success on confusion issue not shown, even though certain particular trade dress elements were copied, because the two establishments were fundamentally dissimilar.
The Dispute:	Plaintiffs' bar/dance club, "Culture Club," is a franchised 1980s theme bar and dance club with locations throughout the U.S., including Tribeca, Manhattan. Plaintiffs' claimed trade dress consisted of: murals on the interior walls with photographs and posters of 1980s popular culture checkerboard patterns on the signs, walls and dance floors De Lorean cars oversized Rubik's Cubes security personnel known as "Peace Patrol" television monitors playing 1980s shows and movies drinks featuring 1980s themes "Pac-Man" logos promotions for being the "Bachelorette Party Headquarters" the double entendre use of the name "Culture Club" Defendants' bar/dance club, "Breakfast Club," is also a 1980s theme bar and dance club, located 30 miles from Manhattan, in Old Bridge, New Jersey. Breakfast Club copied certain of the particular trade dress features used by Culture Club: security guards dressed as "Peace Keepers" the double entendre of "Club" in the two names promotion of identical logos "Bachelorette Party Headquarters" "Bad blood" background: Defendant Rogovich had owned several Culture Club franchises before selling his interests and entering into a non-compete agreement as part of the sale. Rogovich was involved with the formation and creation of Breakfast Club.
Procedural Posture:	Motion for preliminary injunction
Ruling:	Denied

Key Points:

Trade Dress of Bar/Dance Clubs

Record insufficient to establish protectable trade dress.

• Acquired distinctiveness could not be shown because no evidence of secondary meaning was presented.
• Inherently distinctive? –– record insufficient to determine.
  • Some of the trade dress was descriptive: A "significant portion of this trade dress can fairly be described as descriptive, in that the particular features are merely descriptive tools that identify a 1980s theme bar." [p. 28]

 Such descriptive elements are the 1980s theme drinks, television monitors playing 1980s movies and shows, and murals with photographs of 1980s icons.  [p. 28]

• Some of the trade dress was arbitrary, fanciful, or at least suggestive:

 On the other hand, some of the elements of DTH's trade dress are more arbitrary or fanciful, or at least suggestive: 'Bachelorette Party Headquarters,' the De Lorean cars, security officers called 'Peace Patrol' and promotion as 'Bachelorette Party
Headquarters.'   [p. 28]

• Classification of trade dress as inherently distinctive is a very fact intensive inquiry that could not be made without evidence concerning other 1980s theme bar/dance clubs. Whether the trade dress was inherently distinctive depended on "varying perceptions of how basic the particular features are to a 1980s club." [p. 30] This evidence would show how unique the claimed trade dress was, in comparison with features common to this type of theme establishment in general.

No likelihood of confusion shown.

• The "two establishments are fundamentally dissimilar, even if they use certain similar features ...." [p. 36]

• Dissimilarities:
  • Breakfast Club is significantly smaller
  • Breakfast Club has a modest dance floor
  • Breakfast Club mostly caters to local clientele
  • Breakfast Club's more limited use of photos, signs and video equipment as compared to the Culture Club:
    • Culture Club's walls are decorated with painted murals, but Breakfast Club uses a handful of posters.
    • Culture Club has multiple television screens playing movies and shows from the 1980's, but Breakfast Club has one screen that usually features sporting events.
• Defendants' use of some identical trade dress elements which were arbitrary did not matter, in light of the overall dissimilarity between the clubs.

However, as a whole, the use of such features, as well as more generic elements such as a checkerboard dance floor and 1980s theme mixed drinks, coupled with the vastly different overall appearance and scale of the two establishments, makes the likelihood of confusion remote.   [p. 36]

• Less similarity here than in Two Pesos.

 Fundamentally, despite some similarities, the Culture Club appears to have the look and feel of a New York City dance club featuring a 1980s theme, while Breakfast Club looks more like a suburban bar with a small dance floor and some 1980s decorations.  [p. 36]

Analysis

Are particular elements of trade dress poachable as a general matter?

• It is axiomatic that trade dress is the overall appearance of the product, not the specific particular elements that comprise the trade dress.
• Here, because the two establishments were dissimilar in overall appearance, the court found infringement remote and ended its analysis there.
• But, Defendant copied certain particular elements of Plaintiff's trade dress which the court had found to be arbitrary and distinctive.
• Even where the overall trade dress is dissimilar, there still could be confusion if certain distinctive, "signature" elements of the trade dress are copied.
  • For example, patrons at Breakfast Club might think that it was at least affiliated or connected with Culture Club, becuase Culture Club and Breakfast Club both featured security guards dressed as "Peace Keepers" and used the slogan "Bachelorette Party Headquarters."
  • But, without evidence showing that these features were unique to Plaintiffs' Breakfast Clubs and not other bar and dance clubs, this argument could not be proven.
  • The court recognized this at the end of the opinion in discussing the appropriate scope of an inunction under the facts of this case:

[I]f Plaintiffs could succeed in making a case for trade dress infringement, it appears that a curtailing of some, but not all, of the trade dress elements of the Culture Club allegedly copied by Defendants would sufficiently provide all the relief to which the Culture Club would be entitled. [p. 39]

This is a good case for defendants to cite where their trade dress copies certain elements of the Plaintiff's trade dress, but the parties' respective trade dress is basically dissimilar.

The court found infringement remote despite finding bad faith and Defendants' direct copying of certain arbitrary elements of Plaintiffs' trade dress.

• "The bad faith element may weigh in favor of Plaintiffs, since Rogovich was admittedly involved from near the inception of Breakfast Club and was likely responsible for many of the similarities between the two establishments, in violation of the Purchase Agreement." [p. 34]
• It is notable that the bad faith and direct copying of certain arbitrary trade dress elements did not color the court's analysis.