United States District Court, D. New Jersey
MEMORANDUM AND ORDER
G. SHERIDAN, U.S.D.J.
matter comes before the Court on Defendants Imagine This
Company (hereinafter, "ITC") and Twelve, Inc.'s
Motion for Summary Judgment. (ECF No. 99). Having previously
dismissed Counts I through V of Plaintiff Pet Gift USA,
LLC's Complaint with prejudice (ECF No. 72), Defendants
now seek summary judgment dismissal of Plaintiffs remaining
claim, Count VI, which alleges trade dress infringement under
N.J.S.A. § 56:4-1. For the reasons discussed herein,
Defendants' motion for summary judgment is granted.
Pet Gifts, a sole proprietorship that designs and produces
animal-themed products, including dog bone and paw magnets,
brought this lawsuit against Defendant ITC, alleging trade
dress infringement. Pet Gifts describes its magnet trade
a) the dimensions of the packaging including the header card;
b) shaped to correspond to the bone or paw shaped magnets; c)
paw shaped magnets are 5.5" x 5.5" and Bone shaped
magnets are 2.25" x 7"; d) thickness is .30 mil; e)
humorous slogans provided by Plaintiff; f) the paw magnets
are black with a white border and white lettering inside the
magnet, the bone magnet are [sic] white with a black border
including black "swoosh" symbol and red heart, the
header cards are black offset with white lettering with
"made in America" printed on the front, as well as
"Instructions For Use" on the back.
(Defendants' Statement of Material Facts [SOMF] at ¶
66). At deposition, Pet Gifts' co-owner, Elicia Kessler,
described the trade dress more simply as "a
black-and-white header card, a poly bag, stapled on the
outside corners by people with disabilities ... we were
identified in the marketplace with this magent in a
black-and-white header card attached to a poly bag."
(Id. at ¶ 68; ECF No. 99-8, "Kessler
Deposition" at 103-04).
the early 1990s, ITC has sold outdoor novelty car magnets,
which it designs and produces at its printing facility.
(Id. at ¶¶ 6-7). According to ITC, in
2005, it added dog bone and paw shaped car magnets to its
production line, which were sold shortly thereafter.
(Id. at ¶¶ 10-12). "The paw prints
consisted of a black paw on a white background, while the
bone magnets are depicted in white with [a] black
outline." (Id. at ¶ 15). Within these
magnets, ITC included humorous slogans, such as: "My Cat
Tolerates Me, " "My Dog Loves Me, " and
"I Hate My Cat." (Id.). In late 2005, ITC
also prepared a four-page sales brochure, which depicted the
various pet-themed magnets that ITC had to offer.
(Id. at ¶ 16). The 2005 brochure was part of a
marketing effort by ITC to expand its sale to new commercial
consumers, primarily retailers. (Id. at ¶ 17).
As a result of its marketing efforts, ITC distributed bone
and paw shaped magnets beginning in 2005; some of these
orders were customized, with unique or personalized phrases
placed within the magnet, while others were stock items.
(Id. at ¶ 20). According to ITC, many of its
bone and paw shaped magnets were unpackaged and delivered in
bulk; however, in late 2005, it began packaging its products,
using a shrink-wrapped transparent plastic affixed with a
header card that said, "I Love My Pet Magnets."
(Id. at ¶ 25). An image of this packaging is
February 2007, ITC's co-owner, Beverly Moss, met Kessler
at the Henrico Pet Expo in Virginia. (Id. at ¶
34). According to ITC, Kessler had learned that another
company involved in the novelty pet magnet business purchased
its magnets from ITC. (Id. at ¶ 33). During
this communication, the parties discussed the possibility of
Pet Gifts purchasing magnets directly from ITC. (Id.
at ¶ 34). Over the next few months, ITC and Pet Gifts
exchanged emails, regarding orders for pet magnets from
ITC's 2005 Brochure. (Id. at ¶ 37). On
April 23, 2007, Pet Gifts placed its first order from ITC for
bone shaped car magnets. (Id. at ¶ 44). Prior
to preparing the order, ITC sent Pet Gifts a proof sheet to
ensure that the magnets would be printed in accordance with
Pet Gifts' specifications. (Id. at ¶ 45).
According to ITC, the proof sheet also included language that
stated, "Imagine This Company was reserving for itself
the rights and designs that it sells." (Id. at
¶ 46). Pet Gifts, however, claims that this language was
illegible and it did not understand the proof sheet as
reserving ITC with the rights to Pet Gifts' designs.
(Plaintiffs SOMF at ¶ 42).
Pet Gifts sought ITC's assistance in printing a paper
header card from which Pet Gifts magnets could hang.
(Defendants' SOMF at ¶ 51). The design was a black
header card, with white font, that said "Magnetic
Pedigrees, " attached to the header card was a
transparent plastic poly bag, which would contain the magnet.
(Id. at ¶¶ 52-53). An example of this
packaging is depicted below:
months later, in August 2007, ITC changed the packaging of
its magnets, now utilizing a single sheet of rigid vinyl,
finished with a dark blue header and white font, the magnet
is inserted within the rigid vinyl, no plastic poly bag is
used. (Id. at ¶¶ 73-74). An example of
this packaging is provided below:
ITC's name is placed not only on the magnet itself, but