Yurman Design, Inc. Plaintiff-Appellee-Cross-Appellant v. Paj, Inc., Doing Business as Prime Art & Jewel, Defendant-Appellant-Cross-Appellee

Defendant PAJ, Inc. (“PAJ”) appeals from a judgment entered by the United States District Court for the Southern District of New York (Sweet, J.), following a jury verdict that found PAJ liable to plaintiff Yurman Design, Inc. (“Yurman”) on *107 claims of (1) copyright infringement, (2) trade dress infringement under the Lan-ham Act, and (3) unfair competition under New York law — all of these claims arising out of PAJ’s manufacture and sale of jewelry featuring the use of twisted, multi-strand cable together with other design elements, including gemstones. Yurman cross-appeals post-trial rulings by the district court (1) refusing to award attorneys’ fees on the Lanham Act claim, and (2) vacating the jury’s award of punitive damages on the state law unfair competition claim.

On the appeal, we affirm the judgment as to the copyright claims but reverse as to the Lanham Act and state law unfair competition claims. That resolution moots the cross-appeal.

BACKGROUND

Yurman, a firm based in New York City, has been designing, manufacturing and marketing fine jewelry since approximately 1982. Its president and founder, David Yurman, has made the firm famous for its lines of twisted cable pieces. The firm markets its jewelry products under the brand name DAVID YURMAN®.

PAJ, founded in 1978, is a smaller jewelry company based in Dallas, Texas. PAJ entered the cable jewelry market in 1998. In the fall of that year, Yurman advised PAJ in a letter that PAJ was producing and selling a line of costume jewelry that copied Yurman designs, and demanded that PAJ cease and desist. PAJ failed to respond to the cease and desist letter by a two-week deadline, and Yurman filed this suit alleging copyright, Lanham Act, and state law unfair competition violations. As to the copyright claims, Yurman charged that PAJ had infringed five Yurman copyrights in earring and bracelet designs by marketing five jewelry pieces with substantially similar designs. Yurman also alleged that a single trade dress was discernible in its five copyrighted designs as well as in 13 other Yurman bracelets, earrings and rings, and that 21 PAJ pieces violated the Lanham Act because their similarities to this trade dress were likely to cause confusion concerning the jewelry’s source. Finally, Yurman alleged that PAJ violated New York’s unfair competition law because the trade dress violation was committed in bad faith and caused actual confusion among consumers.

On November 1, 1999, following a seven day trial, the jury returned a special verdict largely favorable to Yurman. On the copyright claims, the panel concluded that four PAJ products infringed four Yurman copyrighted designs. As to copyright damages, the Copyright Act affords a plaintiff the option of seeking either actual damages suffered plus profits earned by the infringer or “statutory damages.” 17 U.S.C. § 504. Yurman elected to seek statutory damages, which at the time allowed an award of up to $100,000 per work infringed if the violation was willful, or up to $20,000 per work if it was not. See 17 U.S.C.A. §§ 504(c)(l)-(2) (West 1996 & Supp.1999). 1 The jury found that PAJ had infringed each of Yurman’s four copyrights willfully, and awarded a total $275,000. By way of injunctive relief for those copyright violations, Judge Sweet prohibited PAJ from manufacturing or selling its four infringing products, and ordered the company to destroy all infringing pieces within its control. See Yurman Design v. PAJ, Inc., 93 F.Supp.2d 449, 466 (S.D.N.Y.2000).

On the Lanham Act claim, the jury found that Yurman’s trade dress was distinctive as to the jewelry’s source, and that *108 twenty PAJ bracelets, earrings and rings infringed the trade dress because they were likely to cause confusion concerning the source of PAJ’s jewelry. Because the panel further found that PAJ violated Yur-man’s trade dress in bad faith, and actually caused confusion in the minds of consumers, the jury also found that PAJ violated New York’s unfair competition law. Although the jury declined to require PAJ to disgorge any profits it made in connection with the trade dress and unfair competition violations, the panel did award Yur-man $800,000 in punitive damages based on the state law claim.

The district court, in considering Yur-man’s request for equitable relief on the trade dress and state law claims, identified a hole in Yurman’s case that it found problematic, and that we conclude is fatal: “try as it might, the Court [could not] divine precisely what [Yurman’s] specific trade dress was.” Yurman Design, 93 F.Supp.2d at 466. Recognizing that Yur-man’s “inability to articulate the trade dress” posed “significant problems, for the Court in issuing an injunction,” Judge Sweet devised what he called an “imperfect solution.” Id. The injunction bars PAJ from manufacturing or selling its 20 infringing products, and orders the company to destroy all infringing pieces within its control. See id. at 466.

After the verdict, PAJ moved for judgment as a matter of law under Rule 50(b) on each of the claims and to set aside the jury’s damages determinations. In a published opinion, the district court declined to disturb any of the liability findings, or the award of statutory damages on the copyright claims, but did vacate the state law punitive damages award. See id. at 455-63.

Yurman cross-moved for attorneys’ fees under the Copyright Act and the Lanham Act. Judge Sweet granted an award of fees on the copyright claims but denied an award on the Lanham Act claim. See id. at 463-65.

DISCUSSION

PAJ’s appeal chiefly concerns the district court’s denial of its Rule 50(b) motion for judgment notwithstanding the verdict on all of the jury’s liability determinations. In light of our disposition of that appeal, we need not consider Yurman’s cross-appeal regarding attorneys’ fees and punitive damages.

We review the denial of a Rule 50 motion de novo. See Diesel v. Town of Lewisboro, 232 F.3d 92, 103 (2d Cir.2000). The motion may not be granted unless “the evidence is such that, without weighing the credibility of the witnesses or otherwise considering the weight of the evidence, there can be but one conclusion as to the verdict that reasonable [persons] could have reached.” This is Me, Inc. v. Taylor, 157 F.3d 139, 142 (2d Cir.1998) (internal quotation marks omitted). This standard will be met “[o]nly if there is such a complete absence of evidence supporting the verdict that the jury’s findings could only have been the result of sheer surmise and conjecture, or such an overwhelming amount of evidence in favor of the movant that reasonable and fair minded men could not arrive at a verdict against” the moving party. Diesel, 232 F.3d at 103.

We consider, in order, PAJ’s challenges to the judgment under the Copyright Act, the Lanham Act and New York’s unfair competition law.

I

A. Copyright Liability

To prevail on a claim of copyright infringement, the plaintiff must demon *109 strate both (1) ownership of a valid copyright and (2) infringement of the copyright by the defendant. See Hamil America, Inc. v. GFI, 193 F.3d 92, 98 (2d Cir.1999). PAJ argues that Yurman failed to establish either element with respect to any of Yurman’s four claims of infringement, and further, that Yurman’s copyrights are invalid under the “merger doctrine.” We disagree with all of these contentions.

1. Validity of the Copyrights

Under the Constitution and by statute, copyright validity depends upon originality. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345-47, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); U.S. Const. art. I, § 8, cl. 8 (authorizing Congress to “promote the Progress of ... useful Arts, by securing for limited Times to Authors ... the exclusive Right to their respective Writings”); 17 U.S.C. § 102. “Originality” in this context “means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.” Feist Publications, Inc., 499 U.S. at 345, 111 S.Ct. 1282. The “requisite level of creativity is extremely low; even a slight amount will suffice.” Id.

Because all four Yurman designs at issue are registered in the United States Register of Copyrights, there is a statutory presumption that the copyrights are valid. See Hamil America, 193 F.3d at 98; 17 U.S.C. § 410(c). PAJ, which bears the burden of proving the invalidity of a registered copyright, see Hamil America, 193 F.3d at 98, was required to show that there was “such an overwhelming amount of evidence” of nonoriginality “that reasonable and fair minded men could not” have found the four Yurman designs to be original. Diesel, 232 F.3d at 103 (internal quotation marks omitted); see Granite Computer Leasing Corp. v. Travelers Indem. Co., 894 F.2d 547, 551 (2d Cir.1990) (“A verdict should be directed [in favor of the party with the burden of proof] only if the evidence in favor of the movant is so overwhelming that the jury could rationally reach no other result.”).

Yurman’s four copyrighted bracelets and earrings consist of “silver, gold, cable twist, and cabochon cut colored stones.” 2 Appellee’s Brief at 19. Yurman of course concedes that none of those constituent elements, considered alone, is original. What Yurman seeks to protect by copyright is the “artistic combination and integration of these common elements,” i.e., the particular way in which the' elements “are placed, balanced and harmonized” in the four designs. Id. at 18-19.

Copyright law may protect a combination of elements that are unoriginal in themselves. With respect to compilations of facts, for example, protection extends to choices of “selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity.” Feist Publications, 499 U.S. at 348, 111 S.Ct. 1282. The same principles apply to “derivative work[s],” which are “based upon one or more preexisting works.” 17 U.S.C. § 101. Jewelry designs have been viewed as fitting within this latter category. See Diamond Direct, LLC v. Star Diamond Group, 116 F.Supp.2d 525, 529 (S.D.N.Y.2000) (Kaplan, J.) (considering the originality of diamond ring designs). In either case, however, the copyright “extends only to the material contributed by the author *110 of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.” 17 U.S.C. § 103(b); see Feist Publications, 499 U.S. at 348, 111 S.Ct. 1282 (“[C]opyright protection [in a factual compilation] extend[s] only to those components of a work that are original to the author.”).

To rebut the presumption that Yurman’s four designs are original, PAJ offered evidence that some other companies make jewelry that includes twisted cable as a design element, and that some of those jewelry pieces also include gemstones and other elements found in Yurman’s products. This showing misses the point, however: the originality in Yurman’s four designs inheres in the ways Yurman has recast and arranged those constituent elements. We have carefully reviewed the cable jewelry produced by third parties that PAJ submitted to the jury, and cannot conclude that any of Yurman’s four combinations are nonoriginal as a matter of law.

2. Copyright Infringement

To establish infringement, the copyright owner must demonstrate that “(1) the defendant has actually copied the plaintiffs work; and (2) the copying is illegal because a substantial similarity exists between the defendant’s work and the protectible elements of plaintiffs.” Hamil America, 193 F.3d at 99 (internal quotations omitted).

Under the Copyright Act, one may market a product identical to a copyrighted work so long as the second comer designed his product independently. See Feist Publications, 499 U.S. at 345-46, 111 S.Ct. 1282 (“Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying.”). PAJ concedes that it based its four pieces in part on the Yur-man designs, but it offers the qualification that it learned — only later — that the designs it innocently copied had been copyrighted by Yurman. This concession is sufficient to satisfy the “actual copying” element, and the qualification is ineffective to rebut it. See Procter & Gamble Co. v. Colgate-Palmolive Co., 199 F.3d 74, 77 (2d Cir.1999) (per curiam) (“ ‘innocent’ copying is still copying” under copyright law).

While PAJ admits that it did not independently create its designs, it contends nevertheless that the similarities between its products and Yurman’s are not sufficiently “substantial” to trigger liability. PAJ’s “substantial similarity” argument raises a threshold issue as to our standard of review. PAJ cites a line of our cases to support the proposition that review of “substantial similarity” under copyright law is de novo. In each such case, however, we were reviewing judgments entered after a bench trial, and we departed from the “clearly erroneous” standard normally applicable to a trial judge’s factual findings, Fed. R. Civ. Pro. 52(a), “because what is required is only a visual comparison of the works, rather than credibility, which we are in as good a position to decide as was the district court.” Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 766 (2d Cir.1991); see Hamil America, 193 F.3d at 97 (same). Cf. Concord Fabrics, Inc. v. Marcus Bros. Textile Corp., 409 F.2d 1315, 1317 (2d Cir.1969) (per curiam) (“[A]s no part of the decision below turned on credibility, we are in as good a position to determine the question as is the district court.”). However, we have never decided the standard of review applicable to jury findings of substantial similarity where credibility is not at issue. See Segrets, Inc. v. Gillman Knitwear Co., 207 F.3d 56, 63 (1st Cir.2000) (“We have *111 found no Second Circuit cases applying [its judge-made de novo ] standard to a finding of substantial similarity by a jury.”).

Although a jury’s factual findings are subject to “independent review” where such review is constitutionally required, Bose Corp. v. Consumers Union, 466 U.S. 485, 501, 104 S.Ct. 1949, 80 L.Ed.2d 502 (1984) (First Amendment), we think that in copyright cases the Constitution dictates a more deferential standard. The Supreme Court’s holding in Feltner was that “the Seventh Amendment provides a right to a jury trial on all issues pertinent to an award of statutory damages under § 504(c) of the Copyright Act, including the amount itself.” Feltner, 523 U.S. at 355, 118 S.Ct. 1279 (emphasis added). Because de novo review of “substantial similarity” could have the effect of impairing that Seventh Amendment right, we hold that a jury’s findings as to “substantial similarity” are subject to the same deferential review under Rule 50 that applies to other jury findings.

The standard test for substantial similarity between two items is whether an “ ‘ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.’” 3 Hamil America, 193 F.3d at 100 (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) (L.Hand, J.)). If “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work,” then the two products are substantially similar. Hamil America, 193 F.3d at 100; see Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996, 1003 (2nd Cir.1995). The fact-finder must examine the works for their “ ‘total concept and feel.’ ” Hamil America, 193 F.3d at 102 (quoting Knitwaves, 71 F.3d at 1002).

Applying the ordinary observer test, the jury separately found that the four PAJ designs were “substantially similar” to the four Yurman copyrighted pieces. Although PAJ is able to cite several “differences in detail” in each comparison, a finding of substantial similarity is not precluded where differences in detail “do little to lessen a viewer’s overwhelming impression” that the defendant’s products are “appropriations.” Knitwaves, 71 F.3d at 1004; accord Hamil America, 193 F.3d at 102. Applying our own “good eyes and common sense” to each of the comparisons, Hamil America, 193 F.3d at 102, we are unable to say that the jury’s conclusions were “the result of sheer surmise and conjecture.” Diesel, 232 F.3d at 103.

3. The Merger Doctrine

By statute, copyrights protect the particular means of expressing ideas, not the ideas themselves. See 17 U.S.C. § 102(b). So if there is just one way to express an idea, the idea and expression are said to merge, and the expression is not protectable. See Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320, 322 (2d Cir.1996) (“[T]he merger inquiry asks whether all realistic fish mannequins, no matter how artistic they might be, will necessarily be ‘substantially similar.’ And *112 only if this is so, is there no unique expression to protect under the copyright laws.”); CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61, 68 (2d Cir.1994). The test is whether “protection of expression would inevitably accord protection to an idea.” CCC Info. Servs., 44 F.3d at 72 n. 26.

PAJ’s brief contends that Yurman is trying to protect the idea of “using cable design (which is in the public domain), with gemstones (also in [the] public domain), in one or more combinations (also in [the] public domain).” Appellant’s Brief at 59. At least as to Yurman’s copyright claims (as opposed to its trade dress claims), PAJ’s assertion is simply wrong. Yur-man’s position on the copyright claims is that its designs, which express original combinations of unprotectable elements, were infringed by four very similar-looking PAJ designs; Yurman’s copyright claims do not seek protection for the idea of combining twisted cable and gemstones.

B. Copyright Damages

As explained above, the Copyright Act allows plaintiffs to sue for “statutory damages” in lieu of “actual damages and profits.” 17 U.S.C. § 504(c). Yurman elected statutory damages, which ranged (at the time) between $500 and $20,000 per work infringed, and up to $100,000 per work if the infringement was willful. See 17 U.S.C.A. §§ 504(c)(l)-(2) (West 1996 & Supp.1999). 4 The jury found that each of PAJ’s four infringements was willful, and awarded a total of $275,000. PAJ argues that the willfulness finding is unsustainable, and in the alternative that it is excessive. We consider these two arguments in order.

Willfulness in this context means that the defendant “recklessly disregarded” the possibility that “its conduct represented infringement.” Hamil America, 193 F.3d at 97; see Knitwaves, 71 F.3d at 1010 (“Reckless disregard of the copyright holder’s rights ... suffices to warrant award of the enhanced damages.”). A plaintiff is not required to show that the defendant “had knowledge that its actions constitute^] an infringement.” Knitwaves, 71 F.3d at 1010 (internal quotation, marks omitted).

We review the jury’s findings of willfulness under the same deferential Rule 50 standard that applies to factual determinations pertinent to liability. Cf. Hamil America, 193 F.3d at 97 (reviewing a trial judge’s willfulness finding for clear error). Under that deferential standard of review, we cannot disturb the jury’s willfulness findings.

Viewed in the light most favorable to Yurman, the evidence at trial disclosed the following facts. At a meeting in September 1997, PAJ’s chief executive officer, Felix Chen, met with a buyer for Zales Corporation to discuss the possibility that PAJ would'make jewelry for Zales. The Zales buyer, Carrie Beckerich, provided PAJ with certain cable jewelry samples (the “Samples”) and asked whether PAJ could manufacture jewelry products based on the Samples. Beckerich explained that she had obtained the Samples from an Italian manufacturer, Menegatti.

In fact, the Menegatti designs—the Samples—were based on copyrighted Yur-man pieces that Beckerich had earlier provided to Menegatti. Beckerich did not tell PAJ the pedigree of the Samples, but she did mention David Yurman’s name to PAJ representatives. PAJ requested nothing *113 in writing concerning the origin of the Samples, made no inquiry concerning the background of Menegatti, and made no investigation of any kind.

Based on the Samples, PAJ produced a number of jewelry pieces for Zales. In December 1997, Zales returned the PAJ products, explaining that Zales would only be buying cable jewelry from Yunnan, and that the PAJ designs were similar. As Chen testified:

Q: [The Zales buyer] also mentioned to you that she was returning the merchandise to you because it was similar; don’t you recall you said that?

A: Yes. It means cable jewelry.

Q: She said it was similar, didn’t she?

A: She probably said that.

The jury could infer from the return of the goods, and the explanation for it, that PAJ was warned of the potential similarity of the goods and should have taken appropriate steps to check for copyright infringement. Instead, without any investigation of intellectual property issues, PAJ embarked on a heavy advertising program to market the designs under its own label.

PAJ testified that it was unaware of Yurman’s copyrights. But the jury was free to discredit that testimony, or to find that PAJ’s ignorance was due to recklessness. See Hamil America, 193 F.3d at 97 (requiring “particular deference to determinations regarding witness credibility” when reviewing a willfulness determination); accord Knitwaves, 71 F.3d at 1010. PAJ’s Chen, the man who had final decision-making authority over PAJ’s conduct in this case, has been in the jewelry business for 23 years, and has had intellectual property counsel for over twelve years. He attends many of the major jewelry industry trade shows, and knew about Yurman’s cable jewelry designs at all relevant times. Cf. N.A.S. Import, Corp. v. Chenson Enters., 968 F.2d 250, 253 (2d Cir.1992) (similarity of buckle design, in conjunction with close proximity of plaintiffs and defendant’s stores, strongly supported finding of knowing appropriation); Fitzgerald Pub’g Co. v. Baylor Pub’g Co., 807 F.2d 1110, 1115 (2d Cir.1986) (defendant’s position as an experienced publisher treated as a circumstance supporting a finding that defendant had constructive knowledge of its infringement).

This evidence — PAJ’s receipt of the copyrighted designs, its knowledge of Yur-man’s product line, and its failure to investigate the possibility of intellectual property violations after Zales returned the jewelry — provided a sufficient basis for an inference by the jury that the infringements were willful.

Because the jury found that PAJ infringed each of the four Yurman copyrights willfully, the Copyright Act permitted the panel to award between $500 and $100,000 “in its discretion.” 17 U.S.C. § 504(c)(2); see D.C. Comics, Inc. v. Mini Gift Shop, 912 F.2d 29, 34 (2d Cir.1990) (“the court’s discretion and sense of justice are controlling” (internal quotation marks omitted)). Although this is our first opportunity to review an award of statutory damages assessed by a jury, we see no reason to apply a less deferential standard than the standard we use to review calculations by a trial judge.

The jury’s combined award of $275,000 amounts to $68,750 per work infringed, which is within the statutory range. Given the jury’s sustainable finding of willfulness, we decline to alter the remedy. PAJ challenges the award chiefly on the ground that it bears little relationship to the $19,000 in profits PAJ claimed to have earned on the jewelry at issue in this case. But even if PAJ’s accounting is correct, statutory damages are not meant to be merely compensatory or restitution- *114 ary. See N.A.S. Import, 968 F.2d at 252. The statutory award is also meant "to discourage wrongful conduct." Id. That is why the statute permits consideration of $80,000 in additional damages where an infringement is willful.

II

Yurman argued to the jury that its trade dress could be discerned from an entire product line of 18 different Yurman pieces-eight rings, seven bracelets, and three pairs of earrings. The overall impression conveyed by the Yurman designs that are alleged to embody Yurman's trade dress is a structural, almost industrial motif of twisted multi-strand cable, executed with a polished and elegant finish, and set off by gemstones. We need not decide whether these design elements are pro-tectable as trade dress, or whether the overall impression can be expanded upon, because as the district court observed, Yurman itself has never identified the elements that make up its trade dress. We hold for the reasons that follow that this failure to articulate the dress required dismissal of the Lanham Act claim as a matter of law.

Section 45 of the Lanham Act defines "trademark" as "any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer's] goods . .. from those manufactured or sold by others and to indicate the source of the goods. .. ." 15 U.S.C. § 1127. The owner of a trademark may apply to register it by filing inter alia "a drawing of the mark" in the United States Patent and Trademark Office. Lanham Act § 1(a)(1)(B), 15 U.S.C. § 1051(a)(1)(B). Among other privileges, registration of a mark "enables the owner to sue an infringer under § 32, 15 U.S.C. § 1114," and "entitles the owner to a presumption that its mark is valid, see § 7(b), 15 U.S.C. § 1057(b)." Wal-Mart Stores v. Samara Bros., 529 U.s. 205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000).

Yurman has not registered what it seeks to protect as a trademark in this case, so it is proceeding under § 43(a) of the Lanham Act, which prohibits a person from using "any word, term, name, symbol, or device, or any combination thereof" that is "likely to cause confusion . . as to the origin, sponsorship, or approval of his or her goods." 15 U.S.C. § 1125(a).

Although § 43 proscribes "a broader range of practices" than does the cause of action for infringement of registered marks, "the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a)." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). Accordingly, both § 2 and § 43(a) have been construed to embrace not just source-identifying "word marks, such as `Nike,' and symbol marks, such as Nike's `swoosh' symbol, but also `trade dress.'" Samara Bros., 529 U.S. at 209, 120 S.Ct. 1339. Trade dress "originally included only the packaging, or `dressing,' of a product,'~ but it has been expanded to encompass what is at issue in this case: the design or configuration of the product itself. Id.

We exercise "particular `caution,' when extending protection to product designs." Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir.1997) (quoting Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir.1995)). Although the Lanham Act protects marks that "consumers are likely to rely upon in distinguishing goods," Landscape Forms, 113 F.3d at 380, "almost invariably, even the most unusual of *115 product designs such as a cocktail shaker shaped like a penguin-is intended not to identify the source” of the product, “but to render the product itself more useful or more appealing,” Samara Bros., 529 U.S. at 213, 120 S.Ct. 1339. See Restatement (Third) of Unfair Competition § 16 cmt.b at 159 (1995) (“Product designs are more likely to be seen merely as utilitarian or ornamental aspects of the goods.”). And trade dress claims raise a potent risk that relief will impermissibly afford a level of “protection that would hamper efforts to market competitive goods.” Landscape Forms, 113 F.3d at 380; see id. at 379 (“[T]he Lanham Act must be construed in the light of a strong federal policy in favor of vigorously competitive markets.”); Jeffrey Milstein, 58 F.3d at 33. While most trademarks only create a monopoly in a word, a phrase, or a symbol, “granting trade dress protection to an ordinary product design would create a monopoly in the goods themselves.” Landscape Forms, 113 F.3d at 380.

A plaintiff asserting trade dress rights in the design of a product is therefore required to surmount additional hurdles. In any action under § 43(a), the plaintiff must prove (1) that the mark is distinctive as to the source of the good, and (2) that there is a likelihood of confusion between its good and the defendant’s. See Samara Bros., 529 U.S. at 210, 120 S.Ct. 1339. Where the mar