UnIntellectual Property (UnIP): Trademark Design and Copyright for Mardi Gras Bead Dog for Jewelry, Clothing and King Cake
The United States Court of Appeals for the Fifth Circuit affirmed the District Court’s grant of summary judgment to Plaintiff on its claim for a declaratory judgment of non-infringement of Defendant’s trademarks, and in doing so affirmed cancellation of those trademarks. The dispute centers around the use of a design that is seen at Mardi Gras in New Orleans. In particular, a “bead dog” is commonly made using the beads that are thrown from the balconies to the revelers below. Defendant, Haydel’s Bakery, had registered two trademarks, one character mark for MARDI GRAS BEAD DOG (which was not used by the Plaintiff) and one design mark, as well as a copyright for what it described as a “stylized dog wearing a beaded necklace, with the dog being formed by a series of spheres designed to look like Mardi Gras style beads. The dog has two eyes and a nose, all formed by smaller beads.” When Haydel’s threatened Plaintiff, Nola Spice Designs, over its jewelry, Nola Spice sought declaratory judgment.
The opinion of the Court is a detailed and reasoned one, worth reading, especially since it provides Appendices showing each of the images at issue. The Court deemed both trademarks as being merely descriptive, in that they were a “rendering of the old time bead dog” and “iconic Mardi Gras symbol.” The Defendant was not able to provide sufficient evidence of secondary meaning.
With respect to the copyright infringement claim, the Court separated the unprotectable elements before applying the substantial similarity test. In doing so, it recognized this was a derivative work, thus focusing only on the material contributed by Defendant, which excluded the body of the dog. Although Defendant tried to convince the Court that the “original contributions include, among other things, the selection and arrangement of a necklace, nose, eyes, and a tail, all made of smaller beads,” the Court cited case law and held that anatomical features on replicas of animals are ideas not entitled to copyright protection. This left little for the Defendant, though the Court recognized that while the idea of eyes, a nose, a tail, and a collar are not protectable, the manner in which Defendant expresses these features may be protectable, as long as that expression is original and not dictated by the underlying idea. Unfortunately for Defendant, with the collar being the protectable element, the Court found that no substantial similarity existed, especially since the cited confusion was likely due to a comparison of the designs as a whole, which included unprotectable elements.
Thus, this is an example of the risk of threatening to enforce unprotectable IP, though likely a tough one to bear for the Defendant who had clearly taken the necessary steps with both the USPTO and US Copyright Office in order to gain registration and the presumptions that go along therewith. That said, it is yet another reminder for those threatened with claims of infringement that just because a mark or design is registered does not mean infringement is a given. Ultimately, I may have to visit New Orleans and analyze this matter further over a Hurricane cocktail or two (which may entirely change my opinion as to this decision, hah).