The Yankee Candle Company, Inc. v. The Bridgewater Candle Company, LLC

Yankee Candle Company (“Yankee”), a leading manufacturer of scented candles, sued competitor Bridgewater Candle Company (“Bridgewater”) on counts of copyright infringement and trade dress infringement under federal law, as well as on state claims of common law trade dress infringement, tortious interference, and deceptive trade practices under Mass. Gen. Laws ch. 93A. The district court granted summary judgment to Bridgewater on all claims except those of tortious interference and violation of 93A. Yankee Candle Co. v. Bridgewater Candle Co., 99 F.Supp.2d 140 (D.Mass.2000) [hereinafter Yankee I ]. In a later memorandum, the district court determined that Yankee’s evidentiary support for its federal copyright and trade dress claims was irrelevant with respect to the state claim for tortious interference, *32 and substantially limited Yankee’s ability to introduce such evidence. Yankee Candle Co. v. Bridgewater Candle Co., 107 F.Supp.2d 82, 86-87 (D.Mass.2000) (memorandum) [hereinafter Yankee II ]. The court also concluded that the alleged actionable behavior was not committed “primarily and substantially” in Massachusetts, and granted Bridgewater summary judgment on Yankee’s 93A claim. Id. at 88-89. Yankee then stipulated as to the voluntary dismissal of its tortious interference claim so that it could appeal.

On appeal, Yankee challenges: (i) the grant of summary judgment on its copyright claims; (ii) the grant of summary judgment on its federal trade dress claims; (iii) the district court’s decision to narrow the scope of trial and severely limit allowable evidence; and (iv) the grant of summary judgment on the 93A claim. For the reasons explained herein, we affirm the opinions of the district court.

I. Copyright Claims

Our review of the entry of summary judgment is de novo. Domínguez-Cruz v. Suttle Caribe, Inc., 202 F.3d 424, 428 (1st Cir.2000); see also Folio Impressions, Inc. v. Byer Calif., 937 F.2d 759, 766 (2d Cir.1991) (appropriate to review district court’s evaluation of substantial similarity de novo when only visual comparisons are required).

A. The District Court Approach

Yankee claims that Bridgewater has infringed its copyright on the labels of nine candle fragrances. 1 The district court, proceeding in the following manner, concluded that Bridgewater’s labels were non-infringing as a matter of law. First, applying the doctrines of “merger” and “scene-a-faire,” the court determined that, to prevail, Yankee had to show that Bridgewater’s labels were “nearly identical” to Yankee’s. Yankee I, 99 F.Supp.2d at 145. Second, in making this comparison, the district court ignored “certain similarities” that it viewed as “crude, physical elements” not entitled to copyright protection, such as the label’s rectangular shape, its gold border, and the use of a full-bleed style of photography. 2 Id. at 148. Third, the court applied the “ordinary observer” test to the remaining elements of the copyrighted label, ultimately concluding that no reasonable juror could conclude that any of the Bridgewater labels were substantially similar to the corresponding Yankee label. Id. at 148-50.

Yankee claims that the district court erred by ignoring its proffered evidence of actual copying. As a result, says Yankee, the court incorrectly engaged in a point-by-point comparison of protected elements as opposed to a broader determination based on the “total look and feel” of the entire label. Yankee also argues that the district court was over-enthusiastic in determining which elements of the labels were not protected, and thus used an improper baseline for its determination of substantial similarity. For purposes of this appeal, we assume that Yankee provided sufficient evidence of actual copying to survive summary judgment. 3 After ap *33 plying the relevant law, we conclude that even if Bridgewater actually copied Yankee’s labels, the merger doctrine operates so that no reasonable juror could have found Bridgewater’s labels to be “substantially similar” to those of Yankee. We therefore affirm the grant of summary judgment on this basis.

B. Applicable Law

To prevail on a claim of copyright infringement, the plaintiff must show both ownership of a valid copyright and illicit copying. Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 368 (1991); Matthews v. Freedman, 157 F.3d 25, 26-27 (1st Cir.1998). There is no dispute here as to the first prong of this test; Yankee retains valid copyrights on the nine candle labels at issue. The second question is a more complicated one.

This Court conducts a two-part test to determine if illicit copying has occurred. First, a plaintiff must prove that the defendant copied the plaintiffs copyrighted work, either directly or through indirect evidence. Segrets, Inc. v. Gillman Knitwear Co., 207 F.3d 56, 60 (1st Cir.2000). Second, “the plaintiff must prove that the copying of the copyrighted material was so extensive that it rendered the infringing and copyrighted works ‘substantially similar.’ ” 4 Id.; see also SkinderStrauss Assocs. v. Mass. Continuing Legal Educ., Inc., 914 F.Supp. 665, 672 (D.Mass.1995) (“Even evidence of actual copying may be insufficient, however, if this copying was not substantial.”). Because we assume, for purposes of this appeal, that actual copying has taken place, we move directly to the second prong.

Whether there is substantial similarity between copyrightable expressions is determined by the “ordinary observer” test. Concrete Mach. Co. v. Classic Lawn Ornaments, 843 F.2d 600, 607 (1st Cir.1988). “The test is whether the accused work is so similar to the plaintiffs work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiffs protected expression by taking material of substance and value.” Id. (quoting Educ. Testing Servs. v. Katzman, 793 F.2d 533, 541 (3d Cir.1986)). The determination of whether an allegedly infringing label is substantially similar to its alleged model or influence is not so simple a task, however, as a'strict visual comparison of the two items. Any comparison between the two works must be informed by a key theoretical foundation of copyright law: that “[i]deas cannot be copyrighted,” id. at 606 (citing Harper & Row, Pubs., Inc. v. Nation Enters., 471 U.S. 539, 547, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985)), and therefore that “[a]n artist ‘can claim to own only an original manner of expressing ideas,’ not the ideas themselves,” id. (quoting Cooling Sys. & Flexibles v. Stuart Radiator, 111 F.2d 485, 491 (9th Cir.1985)). Because of this dichotomy between “idea” and “expression,” only the “protected expression” is relevant to an *34 evaluation of substantial similarity. Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1214 (11th Cir.2000). We must first consider, then, to what extent the Yankee labels are protected expression. 5

In determining what aspects of the Yankee labels are protected under copyright law, we follow essentially the same path as did the district court. We first “dissect” the work to remove those aspects not protected by copyright. Despite Yankee’s argument to the contrary, this Court has indicated that dissection analysis is an appropriate method of evaluating substantial similarity even when actual copying has occurred. “By dissecting the accused work and identifying those features which are protected ... [t]he court can also determine ... those aspects of the work that ... should be considered in the ... comparative analysis under the ordinary observer test.” Concrete Mach., 843 F.2d at 609. Second, we apply the doctrines of merger and scene-a-faire to determine how “substantially similar” the copy must be to infringe. Id. at 609 n. 9 (“For example, the court may find that the idea and expression are so inseparable that copying of the work is not prohibited or that only exact reproduction of the work will justify a finding of infringement”).

There may be a qualification to the dissection test of some importance in certain cases. In Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996, 1003 (2d Cir.1995), the Second Circuit suggested that the dissection test may not fully resolve the legal issues where the copyright holder claims that the copyrighted material is essentially a host of uncopyrightable individual elements that have been arranged in a unique way that qualifies them for copyright protection. Cf. Feist, 499 U.S. at 362, 111 S.Ct. 1282 (copyright available for compilations of unprotectible facts). This Court, however, has been more enthusiastic than the Second Circuit about the use of dissection analysis to disaggregate a visual work into its component elements for the purpose of removing the unprotec-tible elements contained within. Compare Concrete Mach., 843 F.2d at 609, with Knitwaves, 71 F.3d at 1003.

At any rate, we do not necessarily reject this qualification but think that it has no direct application here. Our reasons for thinking that there is nothing very unique in this combination of elements follows from our discussion of the nature of the unprotected elements, the issue to which we turn shortly. Moreover, we are confident that the district court, in removing the “crude, physical elements” described in Parts I.A and I.C, did not over-dissect the Yankee label. The fact that significant copyrightable material remained (prior to the application of the merger doctrine) is, in our minds, persuasive that the appropriate level of dissection occurred. See Leigh, 212 F.3d at 1215 (“As long as the analysis is not overly detached and technical, it can adequately assess both the effect of the protected, original elements of [the work] and the contribution of those elements to the work as a whole.”).

C. Unprotected Elements of the Yankee Labels

The district court determined that the “rectangular, gold-bordered name plate, [the] full-bleed photos, and [the use of] similarly sized labels,” were “crude, *35 physical elements [that] do not enjoy copyright protection,” and therefore only evaluated the photographic images on the labels for infringement. Yankee I, 99 F.Supp.2d at 148. Yankee contends that its choices to use such elements were “discretionary,” and must be protected by copyright because other choices were possible. We agree with the district court. The “discretion” claimed by Yankee involves (i) the use of a rectangular “title plate” with block lettering on a white background; (ii) the imposition of that title plate, centered, on a photographic representation of the candle fragrance; and (iii) a rectangular border around the photograph. This collection of common geometric shapes with a particular photographic technique is not sufficiently original to qualify for copyright protection. See Atari Games Corp. v. Oman, 979 F.2d 242, 247 (D.C.Cir.1992) (“We do not in any way question the Register’s position that ‘simple geometric shapes and coloring alone are per se not copyrightable.’ ”); Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541, 545 (2d Cir.1959) (circular, rectangular, and octagonal shapes not protected); William S. Geiger Corp. v. Gigi Accessories, Inc., No. 97 Civ. 5034(JSM), 1997 WL 458668, at *2 (S.D.N.Y. Aug.11, 1997) (plaintiff has no right to copyright a geometric shape).

Moreover, the use of a border element is an essentially functional design choice not protected by copyright. See 17 U.S.C. § 101 (providing copyright protection for “works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects”); CMM Cable Rep, Inc. v. Ocean Coast Props., Inc., 97 F.3d 1504, 1519-20 (1st Cir.1996) (copyright law denies protection to forms of expression directed solely at functional considerations). A border is a common method of separating a photograph from a background; the use of gold as the border color is a common method of signifying opulence and quality. See Pubs. Int’l, Ltd. v. Landoll, Inc., 164 F.3d 337, 341 (7th Cir.1998). Likewise, copyright does not provide protection for the particular style of photography chosen by Yankee (full-bleed). To do so would impermissibly narrow the possibilities available to other label designers. See Designer’s View, Inc. v. Publix Super Markets, Inc., 764 F.Supp. 1473, 1479 (S.D.Fla.1991) (medium of artwork not protected by copyright).

D. Merger

Having separated the unprotected title plate, border elements, and style of photography from the photographs themselves, we now turn to the photographs to determine if the Bridgewater labels are infringing. The district court found that for six of the nine labels in question, there was “only one way to express the idea of these fruits and flowers: by depicting their likeness.” And although the district court held that the remaining three labels (French Vanilla, Spiced Apple/Apple Pie, and Cinnamon/Cinnamon Rolls) expressed more subtle ideas open to greater possibilities of representation, even for those depictions “the idea merge[d] with the expression” and therefore allowed for few choices of subject matter. As a result, the district court held that, as a matter of law, there could be no infringement unless Bridgewater’s photographs were “nearly identical” to Yankee’s. Yankee I, 99 F.Supp.2d at 145-46. Yankee claims that the merger doctrine does not apply because infinite ways exist to depict a fruit, flower, or common flavor such as french vanilla. Again, we agree with the district court’s approach.

In Concrete Machinery, we explained the rationale behind the merger doctrine:

*36 Some ideas admit of only a limited number of expressions. When there is essentially only one way to express an idea, the idea and its expression are inseparable and copyright is no bar to copying that expression. [Even] [w]hen the idea and its expression are not completely inseparablé, there may still be only a limited number of ways of expressing the idea.

843 F.2d at 606 (internal citations omitted). In such cases, the plaintiff has the heavy burden of showing “near identity” between the works at issue. Id. at 606-07 (citing Sid & Marty Krofft Television v. McDonald’s Corp., 562 F.2d 1157, 1167 (9th Cir.1977), and Flag Fables Inc. v. Jean Ann’s Country Flags & Crafts, Inc., 730 F.Supp. 1165, 1171 (D.Mass.1990)). This heightened showing “is necessary because, as idea and expression merge, fewer and fewer aspects of a work embody a unique and creative expression of the idea; a copyright holder must then prove substantial similarity to those few aspects of the work that are expression not required by the idea.” Id. at 607 (citing Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 908 (3d Cir.1975)).

In general, the merger doctrine is most applicable where the idea and the expression are of items found in nature, or are found commonly in everyday life. See, e.g., Designer’s View, 764 F.Supp. at 1478. For example, we invoked the merger doctrine in Concrete Machinery where the idea at issue was a “realistic-looking life size deer.” 843 F.2d at 607; see also Leigh, 212 F.3d at 1214-15 (photograph of statue in public domain); Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir.1971) (pin of a “jeweled bee”). As the district court found, six of the labels at issue were fruits and flowers found in nature; the remaining three were representations of common flavors. For the six natural items, there were few associated expressions, of which the most obvious was a realistic representation of the fruit or flower at issue. For the three flavors, the most obvious expression was a realistic representation of a food commonly associated with that flavor. 6 Because the merger doctrine applies, the copyright on Yankee’s labels does not prevent Bridge-water from using the same subject matter on its labels, even if the genesis for Bridgewater’s choice of subject matter was Yankee’s labels.

The merger doctrine does not, however, allow the identical reproduction of photographs of realistic objects when there are sufficient details in those photographs to make them unique. Concrete Mach., 843 F.2d at 609-10 (finding possibility of infringement of concrete deer based on stylized posture and facial expression). If Bridgewater had scanned 'Yankee’s labels into a computer and reproduced them exactly, it would have certainly infringed Yankee’s copyrights on those labels. Even if Bridgewater had taken its own photographs, but had arranged the subjects in a “nearly identical” manner to that of Yankee, a jury could have found the requisite showing of substantial similarity to support copyright infringement. Moreover, although Yankee does not enjoy copyright protection on the subject matter of its photographs because of the merger doctrine, its choices as to lighting, background, angle and positioning are protect *37 ed. Leigh, 212 F.3d at 1215; Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.1992). We now proceed to compare the specific labels at issue.

E. The Labels

After accounting for the unprotected elements of the Yankee label and the constraints of the merger doctrine, the district court closely examined each of the allegedly infringing labels, and concluded that no reasonable juror could conclude that the Bridgewater label was “substantially similar” to the corresponding Yankee label. Yankee I, 99 F.Supp.2d at 148-50. Although summary judgment is often inappropriate on the question of substantial similarity, Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir.1980), where reasonable minds cannot differ, summary judgment is appropriate, Segrets, 207 F.3d at 62. Our independent review of the labels confirms the district court’s analysis and holding. 7 Therefore we affirm the grant of summary judgment to Bridgewater on Yankee’s copyright claims.

II. Trade Dress Claims

A. Purposes and Scope of Trade Dress Protection

Yankee’s second set of claims, for trade dress infringement, is brought pursuant to § 43(a) of the Lanham Act, which provides protection against the use of “any word, term, name, symbol, or device” that “is likely to cause confusion, or to cause mistake, or to deceive” as to the source of a product. 15 U.S.C. § 1125(a). The Lanham Act extends protection not *38 only to words and symbols, but also to “trade dress,” defined as “the design and appearance of a product together with the elements making up the overall image that serves to identify the product presented to the consumer.” Chrysler Corp. v. Silva, 118 F.3d 56, 58 (1st Cir.1997) (quoting Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir.1997)). The primary purpose of trade dress protection is to protect that which identifies a product’s source. I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 35 (1st Cir.1998). Courts recognize trade dress claims based both on product packaging and on “product design/configuration.” See, e.g., Wal-Mart Stores v. Samara Bros., Inc., 529 U.S. 205, 213-14, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000).

In order for trade dress to be protected under § 43(a), a plaintiff must prove that the dress is: (i) used in commerce; (ii) non-functional; and (iii) distinctive. Lund, 163 F.3d at 36. Distinctiveness may be either “inherent,” that is, the “intrinsic nature [of the trade dress] serves to identify a particular source,” Wal-Mart, 529 U.S. at 210, 120 S.Ct. 1339 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992)), or “acquired,” i.e., the trade dress has acquired a “secondary meaning” whereby the public views its “primary significance ... as identifying] the source of the product rather than the product itself,” id. at 211, 120 S.Ct. 1339 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n. 11, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982)). Finally, to prove infringement of protected trade dress, the plaintiff must show that another’s use of a similar trade dress is likely to cause confusion among consumers as to the product’s source. Lund, 163 F.3d at 43-44.

B. The District Court Analysis

The district court identified three ways in which Yankee claimed that Bridgewater had infringed its trade dress: (i) by copying Yankee’s method of shelving and displaying candles in its stores, called the “Vertical Display System”; (ii) by copying the overall “look and feel” of Yankee’s Housewarmer line of candles; and (iii) by copying the design of Yankee’s merchandise catalog, specifically its one fragrance per page layout. Yankee I, 99 F.Supp.2d at 150-51. The court first held that the Vertical Display System was “manifestly functional,” both in its arrangement of candles by color and in its use of wooden shelving, and concluded that “Yankee cannot invoke the Lanham Act to appropriate such a conventional method of presenting its wares.” Id. at 151-52.

The court then turned to the “look and feel” of the Housewarmer line of candles and the layout of the Yankee catalog. It concluded, with little explanation, that both claims alleged trade dress infringement of a product design/configuration, rather than infringement of product packaging. In accordance with the Supreme Court’s decision in Wal-Mart, the district court thus held that neither aspect of Yankee’s trade dress could be inherently distinctive as a matter of law. Id. at 152-53; see Wal-Mart, 529 U.S. at 213-14, 120 S.Ct. 1339 (holding that product design/configuration trade dress may never be inherently distinctive). The district court therefore turned to a determination of whether a genuine issue of material fact existed with respect to secondary meaning. Yankee I, 99 F.Supp.2d at 153.

As to the Housewarmer line of candles, the district court determined that the evidence introduced by Yankee had fallen far short of the “vigorous” evidentiary standard required to show secondary meaning in a product design/configuration case. Id. *39 at 153-54 (citing Boston Beer Co. Ltd. P’ship. v. Slesar Bros. Brewing Co., 9 F.3d 175, 181 (1st Cir.1993), and Duraco Prods. Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1453 (3d Cir.1994)). First, Yankee had failed to introduce any survey evidence, which this Court has described as the “preferred” manner of demonstrating secondary meaning. See id. at 154 (citing Boston Beer, 9 F.3d at 182). Second, Yankee had not introduced any circumstantial evidence indicating that the public had made a conscious connection between the trade dress at issue and Yankee as the source of that trade dress. Id.

As for the catalog, the district court simply concluded that “there is no question that Bridgewater’s catalog is indeed Bridgewater’s and not Yankee’s,” and that “[n]o fair minded person, looking at Bridgewater’s document, could possibly view it as an attempt to ‘pass off the Bridgewater catalogue as the Yankee one.” Id. at 155-56.

Lastly, although it had not found any of Yankee’s trade dress sufficiently distinctive to qualify for protection, the district court held in the alternative that “no reasonable juror could conclude that there is a likelihood of confusion, where clearly marked company names are featured on the face of the products and catalogues.” Id. at 156 (citing Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1045 (2d Cir.1992), and Conopco, Inc. v. May Dep’t Stores, 46 F.3d 1556, 1559 (Fed.Cir.1994)).

C. Yankee’s Claims

On appeal, Yankee argues that the district court erred in several ways. First, Yankee contends that the district court ignored its “combination” claim defining its trade dress as the combination of its Housewarmer series of labels, its choice of candle sizes and styles, its Vertical Design System, and its catalog layout. By disaggregating the features of its trade dress, says Yankee, the district court failed to analyze the “look and feel” of the entire Yankee product. Second, Yankee argues that the district court erroneously defined its trade dress as product design/configuration, and in so doing, proceeded directly to the question of secondary meaning without considering that the dress might be inherently distinctive. Third, Yankee argues that it introduced sufficient evidence of secondary meaning to survive summary judgment. Fourth, Yankee argues that it introduced sufficient evidence of likelihood of confusion to survive summary judgment had the district court needed to reach that issue. Although we agree with Yankee that the district court failed to address its combination claim as such and we entertain the possibility that the court incorrectly analyzed Yankee’s claims under a product design/configuration rubric, we ultimately reach the same conclusion as the district court and affirm the grant of summary judgment, albeit using a different analysis. Burns v. State Police Ass’n of Mass., 230 F.3d 8, 9 (1st Cir.2000) (this Court may affirm grant of summary judgment on any ground sufficiently indicated by the record).

1. Yankee’s Trade Dress

We begin by sketching Yankee’s claimed trade dress, which we read on appeal as defined in two possible ways. First, Yankee suggests that its trade dress is a combination of: (i) the Vertical Display System; 8 (ii) the catalog, with an *40 emphasis on its “one fragrance per page” layout; (iii) its candle shapes and sizes; (iv) the quantities of candles it sells as a unit; and (v) the Housewarmer labels, specifically their inclusion of (a) a full-bleed photograph, (b) a superimposed title plate with gold edging and lettering on a white background, (c) a rectangular shape, and (d) a reflective border. 9 Alternatively, Yankee describes its trade dress as the elements common to its Housewarmer labels, of which we have provided greater detail in the copyright section of this opinion.

2. Inherent Distinctiveness

a. The Combination Claim

Yankee argues that the distinct combination of elements comprising its candle sizes and shapes, quantities sold, labels, Vertical Design System, and catalog stem from “arbitrary” choices and are thus “inherently distinctive” and entitled to trademark protection. See Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753 (inherently distinctive marks are entitled to protection). Certain types of trade dress, however, can never be inherently distinctive. Wal-Mart, 529 U.S. at 212-14, 120 S.Ct. 1339 (product design/configuration cannot be inherently distinctive); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (color cannot be inherently distinctive). We find that Yankee’s combination claim falls under the category of product design/configuration, and thus Yankee must prove that the dress has attained secondary meaning in order for it to be protected under the Lanham Act. Wal-Mart, 529 U.S. at 215