Sharper Image Corporation v. Target Corp.
Alan L. Barry, Amy Gast O’Toole, Heather A. Boice,Bell, Boyd & Lloyd, Chicago, IL, David L. Aronoff,Gail I. Jenkins, Thelen, Reid & Preist, Los Angeles,CA, e. robert (bob) wallach, Law Offices of e. robert(bob) wallach, Patrick M. Ryan, Brian P. Hennessy,Thelen Reid & Priest LLP, San Francisco, CA, forPlaintiff.
ORDER ADDRESSING CROSS-MOTIONS FORSUMMARY JUDGMENT
CLAUDIA WILKEN, District Judge.
*1 Defendants Target Corporation, Ionic Pro, LLC,Qwik Cook, Inc. d/b/a Home Trends, Ideal Products,LLC (Ideal Products), Sylmark, Inc. (Sylmark),Sylmark, LLC, Factories2U, LLC and Chaim MarkBess (collectively, Defendants) move for summaryadjudication of Plaintiff Sharper Image Corporation’sclaims of patent infringement, trade dress infringementand unfair competition and of Defendants’counterclaims for non-infringement of the assertedpatents. Plaintiff opposes the motion, and separatelymoves to strike portions of it. Defendants move tostrike the opposition. [FN1] Plaintiff separately movesto strike, under California Code of Civil Procedure §425.16, Defendants’ tort and State law counterclaims,and in the alternative moves for judgment on thepleadings of the counterclaims, and for partial summaryadjudication on its utility patent infringement claim.Defendants oppose those motions, and purportedlycross-move for summary judgment. [FN2] Plaintiffseparately moves for leave to file a Third AmendedComplaint (TAC) and to join additional defendants.Defendants oppose the motion.
FN1. Both parties’ motions to strike aredenied; the arguments therein go toward theweight and import of the evidence, and do notprovide the Court with any reason to strike theinitial filings.
FN2. Plaintiff has filed an “ex parte motion tocompel” Defendants to withdraw the replyDefendants filed in support of their purportedcross-motion. Defendants oppose the ex partemotion to compel. The Court denies Plaintiff’spurported ex parte motion. However, theCourt strikes Defendants’ reply; becauseDefendants separately filed their own motionfor summary judgment, they are not entitled tofile an additional cross-motion and reply.
These matters were heard on January 27, 2006. Havingconsidered the papers filed by the parties and oralargument on the motions, the Court grants in partDefendants’ motion for summary adjudication of patentand trade dress infringement, as described below. TheCourt grants Plaintiff’s motion for summaryadjudication of Defendants’ tort and State lawcounterclaims. The Court grants Plaintiff leave to joinMr. Spiegel as a defendant, but otherwise denies themotion for leave to amend.
Plaintiff is a corporation with its principal place ofbusiness in San Francisco, California. Plaintiffmanufactures its own line of consumer products, knownas the Sharper Image Design products, which it sells towholesale and retail customers through a multi-channeldistribution system. One of Plaintiff’s recent, highlysuccessful products is the Ionic Breeze Quadra (IBQ)air purifier, which purports to clean air without the useof filters, by using wire electrodes to charge airborneparticulates, which are then attracted tooppositely-charged plates.
Ionic Pro, LLC is the manufacturer of a cheaper,competing filter-less air purifier, the Ionic Pro. IdealProducts, LLC is a sister company, and shares someemployees with Ionic Pro, LLC. Sylmark, LLC is theparent corporation of both Ionic Pro, LLC and IdealProducts, LLC. Sylmark and Sylmark, LLC (referred tocollectively as “the Sylmark entities”) share commonowners, and both provide services to Ionic Pro, LLC.Specifically, Sylmark’s employees provide customerservice support for sales of Ionic Pro. Barry Decl., Ex.G, IP 5767. Chaim Mark Bess is the former Presidentof Ionic Pro, LLC and former co-President of Sylmark.Proposed defendant Peter Spiegel is the ManagingDirector of Sylmark, LLC and former Chief StrategicOfficer of Ionic Pro, LLC.
Defendants Target, Home Trends and Factories2U areretailers of the Ionic Pro.
*2 Additional facts are set forth in the discussionsection below.
Summary judgment is properly granted when nogenuine and disputed issues of material fact remain, andwhen, viewing the evidence most favorably to thenon-moving party, the movant is clearly entitled toprevail as a matter of law. Fed.R.Civ.P. 56; CelotexCorp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548,91 L.Ed.2d 265 (1986); Eisenberg v. Ins. Co. of N. Am.,815 F.2d 1285, 1288-89 (9th Cir.1987).
The moving party bears the burden of showing thatthere is no material factual dispute. Therefore, the courtmust regard as true the opposing party’s evidence, ifsupported by affidavits or other evidentiary material.Celotex, 477 U.S. at 324; Eisenberg, 815 F.2d at 1289.The court must draw all reasonable inferences in favorof the party against whom summary judgment is sought.Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986);Intel Corp. v. Hartford Accident & Indem. Co., 952F.2d 1551, 1558 (9th Cir.1991).
Material facts which would preclude entry of summaryjudgment are those which, under applicable substantivelaw, may affect the outcome of the case. Thesubstantive law will identify which facts are material.Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248,106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
Where the moving party does not bear the burden ofproof on an issue at trial, the moving party maydischarge its burden of production by either of twomethods. Nissan Fire & Marine Ins. Co. ., Ltd., v. FritzCos., Inc., 210 F.3d 1099, 1106 (9th Cir.2000).
The moving party may produce evidence negating anessential element of the nonmoving party’s case, or,after suitable discovery, the moving party may showthat the nonmoving party does not have enoughevidence of an essential element of its claim ordefense to carry its ultimate burden of persuasion attrial.
If the moving party discharges its burden by showingan absence of evidence to support an essential elementof a claim or defense, it is not required to produceevidence showing the absence of a material fact on suchissues, or to support its motion with evidence negatingthe non-moving party’s claim. Id.; see also Lujan v.Nat’l Wildlife Fed’n, 497 U.S. 871, 885, 110 S.Ct.3177, 111 L.Ed.2d 695 (1990); Bhan v. NME Hosps.,Inc., 929 F.2d 1404, 1409 (9th Cir.1991). If the movingparty shows an absence of evidence to support thenon-moving party’s case, the burden then shifts to thenon-moving party to produce “specific evidence,through affidavits or admissible discovery material, toshow that the dispute exists.” Bhan, 929 F.2d at 1409.
If the moving party discharges its burden by negatingan essential element of the non-moving party’s claim ordefense, it must produce affirmative evidence of suchnegation. Nissan, 210 F.3d at 1105. If the moving partyproduces such evidence, the burden then shifts to thenon-moving party to produce specific evidence to showthat a dispute of material fact exists. Id.
*3 If the moving party does not meet its initial burdenof production by either method, the non-moving partyis under no obligation to offer any evidence in supportof its opposition. Id. This is true even though thenon-moving party bears the ultimate burden ofpersuasion at trial. Id. at 1107.
Where the moving party bears the burden of proof onan issue at trial, it must, in order to discharge its burdenof showing that no genuine issue of material factremains, make a prima facie showing in support of itsposition on that issue. UA Local 343 v. Nor-CalPlumbing, Inc., 48 F.3d 1465, 1471 (9th Cir.1994).That is, the moving party must present evidence that, ifuncontroverted at trial, would entitle it to prevail on thatissue. Id.; see also Int’l Shortstop, Inc. v. Rally’s, Inc.,939 F.2d 1257, 1264-65 (5th Cir.1991). Once it hasdone so, the non-moving party must set forth specificfacts controverting the moving party’s prima facie case.UA Local 343, 48 F.3d at 1471. The non-moving party’s”burden of contradicting [the moving party's] evidenceis not negligible.” Id. This standard does not changemerely because resolution of the relevant issue is”highly fact specific.” Id.
I. Infringement of ’484 (Utility) Patent
Defendants move for summary adjudication ofnon-infringement of the ’484 patent. Plaintiff hasaffirmed that it does not allege that Defendants’second-generation Ionic Pro infringes the ’484 patent,and covenants not to sue Defendants for suchinfringement. Barry Decl. ¶ 8. Accordingly, the Courtgrants Defendants’ motion for summary adjudication ofnon-infringement and dismisses with prejudice any ’484patent infringement claims based on thesecond-generation Ionic Pro. With respect to thefirst-generation Ionic Pro, however, Plaintiff opposesDefendants’ motion for summary adjudication, andseparately moves for summary adjudication of its claimof infringement of the ‘ 484 patent.
A. Factual Background
Plaintiff is the assignee of U.S. Patent No. 6,709,484(the ’484 patent), issued on March 23, 2004. The ’484patent’s asserted claims pertain to a method for cleaningthe emitter electrodes of an “electro-kineticelectro-static air conditioner.” Of the asserted claims,only Claim 29 and 32 are independent. Claim 29discloses,
A method for cleaning an emitter electrode with anelectrode cleaning mechanism, … the methodcomprising:
(a) rotating the housing from the upright position sothat the electrode cleaning mechanism travels, froman initial position, along the emitter electrode andfrictionally removes debris from the emitterelectrode; and
(a) rotating the housing generally back to the uprightposition so that the electrode cleaning mechanismtravels back to the initial position.
’484 patent 18:66-19:10. Claim 32 is the same exceptthat it discloses “generally inverting” the housinginstead of “rotating” the housing. Id. at 20:4-10.
*4 Plaintiff accuses Defendants of infringing the ’484patent due to their recommended method of cleaningthe first-generation of the Ionic Pro. Sylmark wasresponsible for designing the Ionic Pro Owner’s Guide.Barry Decl., Ex. K, IP-2287. The Owners’ Guidedistributed with the first-generation Ionic Prorecommended that users clean the “internal ionizingwires” “after every eight to ten days of use or wheneveryou hear excessive noise.” Barry Decl., Ex. E, Owner’sGuide at 9. In order to do so, the Owners’ Guideinstructed users to “tilt the unit upside down for a fewseconds and then right side up again to allow theinternal wire cleaner to work.” Inverting the Ionic Procaused a cleaning plate to slide along the wire emitterelectrodes. Spiegel Decl. ¶ 7. Mr. Spiegel alsospecifically recommended in an email that Wal-Martshould clean the first-generation Ionic Pro units byrotating them upside down. Barry Decl., Ex. H, IP8584.
According to Mr. Spiegel, early feedback from sales ofthe 7 first-generation Ionic Pro “indicated thatconsumers either did not read the instructions forinverting the purifier to clean the emitter electrodes, orthat they were unwilling to go to the trouble ofphysically lifting and inverting the Pro just to clean theemitter electrodes.” Spiegel Decl. ¶ 8. In order toovercome this consumer resistence, Ionic Pro, LLCdeveloped a second-generation product with a “newcleaning mechanism that works without physicallyinverting the air purifier.” Spiegel Decl. ¶ 9. Internalcompany emails suggest an additional motivation forthe new design, however. Plaintiff had already broughtits patent infringement charges, and in a May 26, 2004email, Paul Shellhammer reported that Ionic Pro, LLChad “turned both Patent challenges into positivechanges.” Barry Decl., Ex. G, IP 11037, May 26, 2004Email from Paul Shellhammer to Yu Shen. The newmechanism is described and claimed in U.S. Patent No.6,855,190 (the ’190 patent), of which SylmarkHoldings, Ltd. is the assignee. The application for thispatent was filed on April 12, 2004, and the PTO issuedit on February 15, 2005.
Manufacturing of the first-generation Ionic Pro ceasedin early February, 2004. Spiegel Decl. ¶ 7. However, asDefendants conceded at the hearing, Ionic Pro, LLCcontinued to ship its first-generation product after the’484 patent was issued. Between February and June,2004, Mr. Spiegel admits that orders were filled fromthe existing inventory of first-generation products.Barry Decl., Ex. B, Spiegel Dep. 249:15-17. In April,2004, Sylmark employees insured that manualsaccompanied Ionic Pro units. Barry Decl., Ex. B, IP8414. A May 13, 2004 email exchange among Sylmarkemployees shows that the Ionic Pro continued to beadvertised after the ’484 patent issued. See Barry Decl.,Ex. G, IP 5758 Email from Joel Chamberlain to RickShiu (noting Ionic Pro advertisement and offeringproduct for sale). A June 23, 2004 email from aSylmark employee stated that the company “only startedmaking [second-generation Ionic Pros] a week ago.”Barry Decl., Ex. L.
*5 Plaintiff identifies evidence of two Ionic Pro userswho directly infringed the asserted method claims afterthe patent issued. [FN3] On August 29, 2004, an IonicPro customer wrote the manufacturer to say that shenoticed “when I turn the unit upside down I have toreally shake it to make whatever slides up and downmove. I’m sure it’s gummy inside” due to her smoking.Barry Decl., Ex. H, Email from Marlaine to Inbox. OnJune 7, 2004, another Ionic Pro customer wrote tocomplain that the red light kept going on, explaining,”The first couple of times this happened we cleanedeverything as per the instruction, even though theblades were not dirty.” Id., Email from CherylWelsh-Carrier to Inbox. Defendants object to use ofthese customers’ emails to prove direct infringement onthe grounds that they are not authenticated. Thisobjection is sustained, and the Court does not considerthe consumer statements for the truth of the mattersasserted therein.
FN3. A user also submitted a review toAmazon.com on March 21, 2004, two daysbefore the ’484 patent issued, including thestatement “cleaning is very easy.” Barry Decl.,Ex. H, IP 12322.
On July 26, 2004, Plaintiffs’ counsel ordered two IonicPro air purifiers, one first-generation and onesecond-generation, from Target. The first-generationproduct arrived just two days later. Barry Decl. ¶ 15.The second-generation version was not delivered untilOctober, 2004. Id. ¶ 7. Factories 2U sold several IonicPros in late August and early September, but the salesrecords do not indicate that these were first-generationproducts. Barry Decl., Ex. I, Factories 2U, LLC, Salesby Item Detail, January through December 2004. Thereis no evidence showing that any of these products wasaccompanied by an Owners’ Manual.
On August 23, 2004, in connection with Plaintiff’smotion for a preliminary injunction, Mr. Spiegeldeclared to the Court that he believed that all Ionic Prounits being sold at that time by his company or otherDefendants were second-generation products. August23, 2004 Spiegel Decl. However, he acknowledged inhis deposition that other retailers may have beencontinuing to sell first-generation Ionic Pros at thattime. Spiegel Dep. 252:14.
The parties dispute which entities and individualsparticipated in selling or offering for sale thefirst-generation Ionic Pro. The purpose of IdealProducts is to “open up the retail trade for theinfomercial products, the wholesale trade, in otherwords, to sell to mass merchandisers, the carriage trade,that group.” Barry Decl ., Ex. C, McConnell Dep.21:19-22. As evidence that Ideal Products sold theIonic Pro product, Plaintiff points to the testimony ofAndrew Parker, Senior Vice President for SharperImage Design, and Estelle Cohen, former CFO forSylmark. Mr. Parker states that in February, 2004, hesaw the Ionic Pro product for sale in a booth rented byIdeal Products. Parker Decl. ¶ 6. Ms. Cohen testified,”If Ideal Products sold” Ionic Pro products, “then itwould be reflected on the Ideal Products’ financialstatements.” Barry Decl ., Ex. U., Cohen Dep.215:20-22. Plaintiff notes that Defendants produced a2004 projected sales chart for the Ionic Pro labeled,”Ideal Product, L.L.C. Ionic Pro.” Barry Decl., Ex. XX.Mr. Shellhammer, its author, testified that he mistakenlylabeled the sales chart using an Ideal Products templateand neglected to change the name. Shellhammer ReplyDecl. ¶ 3.
*6 Plaintiff also accuses Mr. Bess, who served aspresident of Ionic Pro, LLC until June, 2005 and holdsa minority interest in its parent company. He testifiedthat, other than his formal duties as a company officer,he had “almost no involvement” with the Ionic Pro,which was developed and managed by Mr. Spiegel.Rosenblatt Decl ., Ex. M., Bess Dep. 104-05. Mr. Bessdid attend a meeting with outside counsel in which itwas decided that a disclaimer would be added to theIonic Pro box stating that it was not a Sharper Imageproduct. Barry Decl., Ex. TT, Bess Dep. 19:18-20:12.He also participated in a sales meeting with prospectiveretailer Wal-Mart in September, 2004. Barry Decl., Ex.UU, IP 9098-9100. Also in September, 2004, Mr. Besswas included in an email exchange in which he statedthat he would “steal a container [of Ionic Pros] at thefactory for Harriet Carter (1100). They have almost 500backorders, and may put us on the front cover forChristmas if we can solve this problem.” Id. at IP 9144.Finally, at an unspecified time, Mr. Bess was involvedin analyzing the effectiveness of an Ionic Proadvertisement that ran in USA Today. Barry Decl., Ex.WW, 45, 51.
B. Applicable Law
Title 35 U.S.C. § 271(b) provides, “Whoever activelyinduces infringement of a patent shall be liable as aninfringer.” Absent direct infringement, there can be noinducement of infringement. Met-Coil Sys. Corp. v.Korners Unlimited, Inc., 803 F.2d 684, 687(Fed.Cir.1986) (citing Stukenborg v. Teledyne, Inc.,441 F.2d 1069, 1072 (9th Cir.1971)). Circumstantialevidence is sufficient to establish direct infringementand inducing infringement, and “may also be morecertain, satisfying and persuasive than direct evidence.”Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261,1272 (Fed.Cir.1986) (quoting Michalic v. ClevelandTankers, Inc., 364 U.S. 325, 330, 81 S.Ct. 6, 5 L.Ed.2d20 (1960)). In Arthrocare Corp. v. Smith & Nephew,Inc., 406 F.3d 1365, 1377 (Fed.Cir.2005), the courtfound “strong circumstantial evidence” that usersdirectly infringed a patent, including both testimonyregarding the intended infringing design and salesliterature instructing customers to follow an accusedmethod. See also Golden Blount v. Robert H. PetersonCo., 438 F.3d 1354 (Fed.Cir.2006) (finding directinfringement could be inferred from evidence of salesof unassembled product with instructions to users forcreating infringing configuration).
Intent is also a required element of inducedinfringement. To be liable for inducing infringement,the alleged infringer “must be shown … to haveknowingly induced infringement.” Manville Sales Corp.v. Paramount Sys., Inc., 917 F.2d 544, 553(Fed.Cir.1990) (emphasis in original).
As a general rule, “inducement of infringement under§ 271(b) does not lie when the acts of inducementoccurred before there existed a patent to be infringed.”Nat’l Presto Indus., Inc. v. W. Bend Co., 76 F.3d 1185,1196 (Fed.Cir.1996).
1. Ionic Pro, LLC and Sylmark Entities
*7 With respect to Defendants Ionic Pro, LLC and theSylmark entities, neither Plaintiff nor Defendants areentitled to summary judgment on the issue ofinducement of infringement. Defendants do not denythat a user who followed the cleaning instructionsaccompanying the first-generation Ionic Pro woulddirectly infringe once the ’484 patent was issued.Defendants nevertheless contend that they cannot beliable for inducing infringement because Plaintiff hasintroduced no evidence that any Ionic Pro users indeeddirectly infringed.
In Moleculon Research, the plaintiff met its burden ofshowing infringement of a puzzle method claim under§ 271(b) by showing “circumstantial evidence ofextensive puzzle sales, dissemination of an instructionsheet teaching the method of restoring the preselectedpattern with each puzzle, and the availability of asolution booklet on how to solve the puzzle.” 793 F.2dat 1272. Here, there is similar circumstantial evidencethat Ionic Pro users infringed after the patent wasissued: the Owner’s Guide instructed users to invert theproduct to clean the wires, which providescircumstantial evidence that those who followed theproduct instructions infringed the ’484 patent. Themarket research showing that consumers were unwillingto clean the first-generation Ionic Pro by inverting it isevidence that some, and possibly many, consumers didnot infringe. Based on the evidence, however, areasonable trier of fact could also draw the inferencethat at least some customers did follow the instructions.Therefore, the Court finds that a disputed issue ofmaterial fact exists as to whether Ionic Pro usersdirectly infringed the asserted claims of the ’484 utilitypatent.
Defendants also contend that, in the time period afterthe patent issued, no evidence shows that they actedwith the necessary intent to be held liable forinducement. With respect to Ionic Pro, LLC andSylmark, the evidence contradicts Defendants’assertions. These entities undisputedly learned of the’484 patent when Plaintiff filed suit. Sales records showthat Ionic Pro, LLC continued to sell what Mr. Spiegeladmits was first-generation product for months after the’484 patent was issued. After the ’484 patent was issued,but before the second-generation product was available,Sylmark employees advertised the product for sale andinsured that instruction manuals were included with theproduct. Therefore, those sales of first-generationproduct, in combination with the instruction manualsdesigned in part by Sylmark, are some evidence of aknowing intent to induce infringement. Disputed issuesof fact thus preclude summary adjudication of Plaintiff’sutility patent infringement claims against Ionic Pro LLCand the Sylmark entities.
With respect to the retail Defendants, however,Plaintiff has not identified evidence of intent sufficientto withstand summary judgment. There is no evidencethat Factories 2U, Target or Qwik Cook knowingly soldthe instruction manual with first-generation productsafter they were made aware of Plaintiff’s claims ofinfringement. For this reason, Court denies Plaintiff’smotion for summary judgment of infringement of the’484 patent by Defendants Factories 2U, Target andQwik Cook, and grants Defendants’ motion forsummary adjudication with respect to these retailers.
2. Ideal Products
*8 Defendants move for summary adjudication ofPlaintiff’s claims against Defendant Ideal Products, onthe grounds that there is no evidence that Ideal Productswas involved in the sale or manufacture of the IonicPro.
Neither Mr. Parker’s nor Ms. Cohen’s testimony isdirect evidence that Ideal Products sold the Ionic Pro ata time when doing so could constitute inducement ofinfringement of the ’484 utility patent, i.e. after March23, 2004. Mr. Parker says only that he observed theIonic Pro in an Ideal Products sales booth in February,2004. Ms. Cohen had left the company by the time the’484 patent was issued. Nevertheless, Mr. Parker’stestimony is evidence that Ideal Products at some pointsold the Ionic Pro or offered it for sale. Because IdealProducts’ admitted purpose is to promote the trade ofSylmark products such as the Ionic Pro, Mr. Parker andMs. Cohen’s testimony would allow the trier of fact todraw a reasonable inference that Ideal Productscontinued to offer to sell the Ionic Pro after the March23 patent issue date. For this reason, the Court deniesDefendants’ motion for summary adjudication withrespect to Ideal Products.
2. Chaim Mark Bess
Defendants move for summary adjudication ofPlaintiff’s claims against Mr. Bess, on the grounds thathe lacks sufficient involvement with Ionic Pro to beheld liable for any of Plaintiff’s claims against him.
Plaintiff claims that the Court should “pierce thecorporate veil” and hold Mr. Bess liable under the alterego theory. The Court may pierce the corporate veilonly where the following two conditions are met: “(1)there is such a unity of interest and ownership that theindividuality, or separateness, of the said person andcorporation has ceased, and (2) an adherence to thefiction of the separate existence of the corporationwould sanction a fraud or promote injustice.” SEC v.Hickey, 322 F.3d 1123, 1128 (9th Cir.2003) (citationsand quotation marks omitted).
Plaintiff has failed to show any evidence to justifypiercing the corporate veil. Plaintiff’s allegations ofdeceit are directed generally toward “Mr. Bess and hisassociates,” and therefore do not show that theseparateness between Mr. Bess, specifically, and theDefendant corporations had ceased. Accordingly, it isnot appropriate to pierce the corporate veil and holdMr. Bess liable for all of his company’s actions.
Plaintiff has also failed to raise a dispute of factregarding the question of whether Mr. Bess personallyshould be held liable for inducement of infringement.Although the evidence shows that Mr. Bess understatedhis own involvement in the development and marketingof the Ionic Pro, it does not show that Mr. Bess wasactively involved in developing and marketing thefirst-generation Ionic Pro, with the knowledge that thiswould induce the infringing acts, after the issuance ofthe ’484 patent.
Therefore, the Court grants Defendants’ motion forsummary djudication of Mr. Bess’ liability forinfringement.
II. Infringement of ’494 (Design) Patent
A. Factual Background
Plaintiff is also the assignee of U.S. Design Patent No.433,494 (the ’494 patent). The ’494 patent was issuedon November 7, 2000 and claims an ornamental designfor an air purifier.
Tristan Christianson, a co-inventor of the patent andPlaintiff’s Rule 30(b)(6) designee on the topics of thedesign and selection of trade dress for IBQ, testifiedthat there were only three aspects of the design that “didnot arise from functional need”: the scalloped cut-outson either side of the body, the curved button below thehandle and the handle itself. Rosenblatt Decl., Ex. AA,Christianson Dep. 198:2-10. In prior briefing beforethis Court, however, Mr. Christianson had explainedthat, viewing the ’494 patent as a whole, the followingfeatures were part of the claimed ornamental design:”an overall tower-shape, size, shape and configuration(see Figures 1 through 6); (b) an oval cross-section; (c)a circular base, which is not flush with the bottom of theair cleaner’s housing; (d) numerous (approximately 50)sleek, smooth horizontal inlet and outlet vents locatedalong the front and back of the air purifier’s tower thatare interrupted by a vertical seam; and (e) operationalcontrols that are situated at the top of the housing,which is slightly sloped downward.” Docket No. 60,May 18, 2004 Declaration of Tristan Christianson.
Andrew J. Parker, Senior Vice President of SharperImage Design, declares that the following features ofthe IBQ are “ornamental in nature and selected to createa visually attractive product”: the rounded tower shape;the downward slant of the top and upper surface; theclean design lines of the top surface, including therecessed handle; the cross-sectional shape creating anarrow, tapered impression; the horizontal orientationand arrangement of the vents; the wrapping around tothe sides of the vents; the narrow, vertical airflow band;and the vertical band separating front vents from therear vents. Parker Decl. ¶¶ 3-11. Mr. Parker identifiesother competitors’ air purifiers that do not include someof those features; for instance, Duracraft air purifiersare short and boxy. Id. ¶ 4.
B. Applicable Law and Analysis
Determining whether a design patent is infringedrequires (1) construction of the patent claim and (2)comparison of the construed claim to the accusedproduct. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571,1577 (Fed.Cir.1995).
1. Construction of the ’494 Patent
“In construing a design patent claim, the scope of theclaimed design encompasses ‘its visual appearance as awhole,’ and in particular ‘the visual impression itcreates.’ ” Contessa Food Prods., Inc., v. Conagra, Inc.,282 F.3d 1370, 1376 (Fed.Cir.2002) (citing Durling v.Spectrum Furniture Co., 101 F.3d 100, 104-05(Fed.Cir.1996)). If the design contains both functionaland non-functional elements, then “the scope of theclaim must be construed in order to identify thenon-functional aspects of the design.” OddzOn Prods.,Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405(Fed.Cir.1997) (citing Lee v. Dayton-Hudson Corp.,838 F.2d 1186, 1188 (Fed.Cir.1988)). However, thefact that a particular feature of a design performs afunction does not mean that the feature cannot be partof a claimed design; as the Federal Circuit hasexplained in relation to a dispute over a design patentfor shoes,
*10 There is no dispute that shoes are functional andthat certain features of the shoe designs in issueperform functions. However, a distinction existsbetween the functionality of an article or featuresthereof and the functionality of the particular designof such article or features thereof that perform afunction. Were that not true, it would not be possibleto obtain a design patent on a utilitarian article ofmanufacture, or to obtain both design and utilitypatents on the same article.
Avia Group Int’l, Inc., v. L.A. Gear Cal., Inc., 853F.2d 1557, 1563 (Fed.Cir.1988).
Defendants urge the Court to adopt a construction ofthe design patent based only on those aspects of thedesign which Mr. Christianson testified did not arisefrom functional need, specifically the scalloped cut-outson the sides, the crescent-shaped curved button belowthe handle and the recessed handle itself. [FN4]Plaintiff, on the other hand, asks the Court to relyexclusively on the declaration of Mr. Parker and hismuch broader view of the design’s ornamental featuresin order to determine the scope of the patented design.
FN4. Plaintiff moves to strike the portions ofDefendants’ motion which rely on Mr.Christianson’s testimony for the purpose ofconstruing the ’494 patent’s claim, arguing thatsuch extrinsic, inventor testimony cannot beconsidered. Plaintiff’s motion to strike isdenied. While Mr. Christianson’s testimony isnot, in itself, evidence of the properconstruction of the claim, it is relevant to theCourt’s determination of which features areornamental in nature and which are functional,an inquiry which must precede construction ofclaimed design and which is not answered bythe patent itself. See Key Pharms. v. HerconLabs. Corp., 161 F.3d 709, 716-17(Fed.Cir.1998) (noting that district courtsproperly consider extrinsic evidence to resolvequestions in claim construction not answeredby the intrinsic evidence of the patent and itsfile history). Mr. Christianson’s testimony isconsistent with the intrinsic evidence of thepatent itself; all of the ornamental features heidentifies are clearly visible in the patentdrawings.
The Court finds that all of the features identified by thedeclarants are significant parts of the “overall visualimpression” given by the patented design. Mr.Christianson’s and Mr. Parker’s testimony is notnecessarily inconsistent. The fact that some of thefeatures described by Mr. Parker provide the IBQ withfunctional as well as aesthetic advantages (and thuswere not listed as “purely” ornamental by Mr.Christianson) does not mean that those features arepurely functional. Furthermore, the three ornamentalattributes specifically identified by Mr. Christianson,considered in isolation, do not encompass, as theconstruction of a design patent must, an overall visualimpression of the design (which Mr. Christiansonhimself testifies to be a “sleeker, more sculpturedappearance”). Christianson Dep. 199:2-3. On the otherhand, those distinctive, purely ornamental featuresidentified by Mr. Christianson are also part of thedesign’s overall visual impression.
Therefore, the Court gives the following claimconstruction to the ’494 patent. The ’494 patent isdirected toward an ornamental design for a tower-typeair purifier. The housing has a narrow and tall shapewith an oval cross-section, as shown in Figure 1, fixedon top of a circular base which is bigger than thebottom of the housing, see Fig. 2. Figures 1, 2 and 5show many horizontal vents which are located along thefront and back of the tower, separated by scallopedcut-outs on either side of its body. A crescent-shapedcontrol button is located on top of the unit, below thehandle. Figures 1 and 7. As seen from the perspectiveof Figures 5 and 6, the top of the unit is slanteddownward. A boomerang-shaped handle (see Fig. 7) islocated in a recessed cavity and protrudes up from thetop. See Figs. 5 and 6.
The trier of fact need not find that the patented andaccused designs are identical in order to find designpatent infringement. Braun Inc. v. Dynamics Corp. ofAm., 975 F.2d 815, 820 (Fed.Cir.1992). Comparison ofthe accused product “includes two distinct tests, both ofwhich must be satisfied in order to find infringement:(a) the ‘ordinary observer’ test, and (b) the ‘point ofnovelty’ test.” Contessa Food Prods., Inc., v. Conagra,Inc., 282 F.3d 1370, 1377 (Fed.Cir.2002). Because theCourt finds that Plaintiff has failed to raise a disputedissue of material fact under the point of novelty test, itneed not decide whether the Ionic Pro infringes underthe ordinary observer test.
*11 The point of novelty test requires that the accusedproduct “contain substantially the same points ofnovelty that distinguished the patented design from theprior art.” Goodyear Tire & Rubber Co. v. HerculesTire & Rubber Co., Inc., 162 F.3d 1113, 1118(Fed.Cir.1998) (citing L.A. Gear, Inc., v. Thom McAnShoe Co., 988 F.2d 1117, 1125 (Fed.Cir.1993)). Thepurpose of the point of novelty test is to focus only onthose aspects of a design which render it different fromprior art designs. Winner Int’l Corp. v. Wolo Mfg.Corp., 905 F.2d 375, 376 (Fed.Cir.1990), overruled onother grounds by Cardinal Chem. Co., v. Morton Int’l,508 U.S. 83, 92 n. 12, 113 S.Ct. 1967, 124 L.Ed.2d 1(1993), (citing Litton Sys., Inc., v. Whirlpool Corp., 728F.2d 1423, 1444 (Fed.Cir.1984)).
Plaintiff objects to Defendants’ use of prior art notcited by Plaintiff to the PTO during prosecution,specifically U.S. Patent No. Des. 389,567 (the Gudefinpatent) and U.S. Patent No. Des. 375,546 (the Leepatent), in order to establish the ’494 patent’s points ofnovelty. Plaintiff relies on Bernhardt, LLC v.Collezione Europa USA, Inc., in which the FederalCircuit held that to satisfy the points of novelty test ina design patent infringement case, the patentee must “atminimum” introduce as evidence “the design patent atissue, its prosecution history, and the relevant prior artreferences cited in the prosecution history.” 386 F.3d1371, 1384 (Fed.Cir.2004). However, nothing inBernhardt suggests that prior art not cited duringprosecution may not also be considered in determiningwhich aspects of a design are novel.
Plaintiff also argues that design patent features arepoints of novelty if the particular combination offeatures is not found in the prior art. Plaintiff relies onan overly-broad interpretation of RubbermaidCommercial Prods., Inc., v. Contico Int’l, Inc., 836F.Supp. 1247, 1259 (W.D.Va.1993), where the courtstated (in the context of a challenge to a design patent’svalidity, not infringement), that the overall arrangementof individual elements could be considered a point ofnovelty. The Rubbermaid court’s approach has sincebeen abrogated by the Federal Circuit’s decision inLawman Armor Corp. v. Winner Int’l, LLC, 437 F.3d1383 (Fed.Cir.2006) that a new combination ofelements shown in the prior art could not, in itself,constitute a “point of novelty” in the new design. [FN5]
FN5. After the hearing on their motions, bothparties submitted short supplemental briefsaddressing the Federal Circuit’s recent holdingin Lawman.
Plaintiff fails to identify points of novelty in light of theuncited prior art Gudefin and Lee patents. Of theelements of the claimed design, as construed by theCourt, virtually none of those proffered by Plaintiff aspoints of novelty are, in fact, new. The Lee designshows a round cross-section with horizontal vents thatwrap around both the front and back of the housing.The Gudefin design shows a narrow and tall housingshape, fixed on top of a circular base which is biggerthan the bottom of the housing, with many vents locatedon the front and back of the unit, separated on the sidesby solid portions with no vents. The Gudefin designalso places the controls on the top of the unit, and thetop of the unit angles downward. See Gudefin PatentFigs. 3 and 5. Thus, only the following elements of the’494 patented design, as construed by the Court, remainas potential points of novelty: the oval cross-section;the scalloped cut-outs separating the vents on eitherside of the body; the crescent-shaped control button;and the boomerang-shaped handle located in a recessedcavity and protruding from the top. Of these, the onlyelement arguably shared by the Ionic Pro is theplacement of the handle in a recessed cavity. Otherwise,the Ionic Pro does not share the IBQ’s points of novelty:its cross-section (rounded like Gudefin’s) is guitar-pickrather than oval-shaped; its vents are separated by anarrow, solid seam rather than scalloped cut-outs; itscontrol button is round; and its handle is formed by tworound holes, which do not protrude from the top.
*12 The Court finds that Plaintiff has failed tointroduce a triable issue of material fact under therequired point of novelty test. Accordingly, the Courtgrants Defendants’ motion for summary adjudication ofPlaintiff’s claim of design patent infringement.
III. Trade Dress Infringement
Defendants also move for summary adjudication ofPlaintiff’s claim of trade dress infringement.
A. Factual Background
Plaintiff claims that its trade dress consists of thecombined use of the following five elements: (1)upright, rounded tower shape; (2) number, arrangementand design of its sleek, smooth, horizontal wrap-aroundvents; (3) slanted top; (4) placement and design of thehandle for the removable collector grid; and (5) design,placement and designation of the operational controls.
According to Jeffrey Forgan, a Sharper Image CFO,Plaintiff has conducted an “extensive advertising andmarketing campaign” for the IBQ using its trade dress.Forgan Decl. ¶ 3. The IBQ is featured prominently inevery Sharper Image catalog, a publication into whichPlaintiff puts substantial resources. Id. ¶ 6. Plaintiff hasspent huge amounts of money advertising the IBQ innewspapers, magazines and informercials. Id. ¶¶ 8-9.The IBQ has also received unsolicited media coverage,including appearances in two popular television shows.Id. ¶ 11. Defendants’ and other competitors’advertisements and infomercials have featured the IBQwithout identifying it by name. Id. ¶ 12.
Before the release of the Ionic Pro, an employee inSylmark’s product development office ordered two IBQair purifiers, explaining that these were “needed forChina,” where Ionic Pros were being manufactured.Barry Decl., Ex. G, IP 5661. As Plaintiff suggests, areasonable inference is that Defendants used those IBQsto assist in manufacturing. Other internal Sylmarkemails show that Ionic Pro manufacturers imitated theinternal working of the IBQ. See, e.g., id. at IP 10306(noting that, although Ionic Pro has three wires and IBQhas two, both products produced the “same result” andused the “same metal piece”). Ms. Cohen testified that,in her personal opinion, the Ionic Pro product “wasmeant to have the same look and feel and samefunctionality as The Sharper Image product.” BarryDecl., Ex. U, Cohen Dep. 70:16-18. Plaintiff also notesthat Defendants used the same or similar marketingtechniques such as offering free shipping.
Plaintiff’s expert, Walter McCullough, conductedconsumer research showing a twenty-one percent levelof “design related confusion” between the IBQ andIonic Pro products. McCullough Decl., Ex. A, Reporton a Test of Source Confusion for the Sharper ImageIonic Breeze Quadra Air Purifier. In addition tocomparing consumer reactions to the IBQ and Ionic Proair purifiers, Mr. McCullough also did a comparisonbetween the IBQ and the Trion Rx, another vented,tower air purifier of the same color that is less similar inshape to the IBQ than is the Ionic Pro. The results ofthe survey showed that three percent of consumers wereconfused about the source of the Trion Rx, twenty-fourpercent were confused about the source of the IonicPro, and thus twenty-one percent were confused by thesimilarity in appearance between IBQ and Ionic Pro,specifically.
*13 Both parties have been contacted on severaloccasions by consumers confused about the source ofthe Ionic Pro. For instance, one consumer wrote toSylmark to complain, “i did not realize that the ionicpro was not part of the sharper image co. that was dueto my own fault i have not used this and would like toknow about returning costs etc [sic].” Barry Decl., Ex.A, IP 14192. An internal memorandum from Mr.Spiegel provided Ionic Pro, LLC sales staff andSylmark customer service employees with answers toquestions regarding the Ionic Pro and IBQ, such as,”Why is the Ionic Pro so much less expensive that theIonic Breeze by Sharper Image?” and “Is the Ionic Proas good as the Ionic Breeze by Sharper Image?”. BarryDecl., Ex. G, IP 5767. Two consumers have tried toreturn an Ionic Pro to Plaintiff for a refund. Arney Decl.¶ 4. Consumer Richard Jankowitz, after watching anIonic Pro infomercial, was confused about the source ofthe product because of the “similarities of the Ionic Proand the Ionic Breeze® Quadra® infomercials as well assimilarities in the appearance of the productsthemselves.” Jankowitz Decl. ¶ 2. Upon ordering anIonic Pro and realizing it was not a Sharper Imageproduct, Mr. Jankowitz felt deceived. Id. ¶ 5.
As direct evidence of consumer association of its tradedress and the Sharper Image source, Plaintiff providestwenty unsworn declarations of consumers, which itsubmitted to the PTO in the context of its application toregister its trademark. Barry Decl., Ex. P. Only thespaces for name and number of years as a SharperImage customer are completed by the declarants; eachform is preprinted to state,
I have purchased air purifiers/air cleaners fromSharper Image, and am aware of the air purifierproduct that is the subject of this application. Iinstantly recognize tower-shaped air cleaners withforward sloping heads and double-sided, crescentshaped, horizontal vents, as products of SharperImage only, and not of any other company in thefield.
Plaintiff also provides sworn statements from SharperImage retailers with similar content. Barry Decl., Ex. Q.
Plaintiff sought and eventually received protection forits trade dress from the Patent Office. At one point, thePTO examining attorney rejected Plaintiff’s attempt toestablish acquired distinctiveness for its trade dressbased on the similarity of the design to others on themarket, referring Plaintiff to twenty examples of “thirdparty use of similar product configurations for tower airpurifiers and air cleaners,” including the accused IonicPro. Rosenblatt Decl., Ex. II, SI-IP 009345. In itsAmendment and Response to the PTO, Plaintiff insistedthat, of the twenty competitors identified by theexamining attorney, “not one of them references aproduct comprised of the same design features as thosefound within Applicant’s product.”
B. Applicable Law
*14 A product’s “trade dress” is its total image andoverall appearance; it may include “features such assize, shape, color, color combinations, texture, orgraphics.” Vision Sports, Inc. v. Melville Corp., 888F.2d 609, 613 (9th Cir.1989) (internal quotation andcitation omitted). Trade dress, including a product’sdesign, may be a protected mark under the Lanham Act.Wal-Mart Stores, Inc., v. Samara Bros., Inc., 529 U.S.205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). Aclaim for infringement of trade dress requires a plaintiffto prove three required elements: (1) distinctiveness, (2)non-functionality and (3) likelihood of confusion.Kendall-Jackson Winery Ltd. v. E. & J. Gallo Winery,150 F.3d 1042, 1046-47 (9th Cir.1998). Defendantsargue that Plaintiff has failed to introduce sufficientevidence to raise a triable issue of material fact oneither distinctiveness or likelihood of confusion. [FN6]
FN6. Defendants also criticize as overbroadPlaintiff’s characterization of its trade dressbecause Plaintiff includes functional elements,but Defendants do not move for summaryadjudication on this ground.
In an action for infringement of unregistered tradedress under § 43(a) of the Lanham Act, “a product’sdesign is distinctive, and therefore protectible, onlyupon a showing of secondary meaning.” Wal-MartStores, 529 U.S. at 216. Whether trade dress hasacquired secondary meaning is a question of fact. LindyPen Co., Inc., v. Bic Pen Co., 725 F.2d 1240, 1246 (9thCir.1984), cert. den., 469 U.S. 1188, 105 S.Ct. 955, 83L.Ed.2d 962 (1985), (citation omitted). In the NinthCircuit, secondary meaning is defined as “the mentalassociation by a substantial segment of consumers andpotential consumers ‘between the alleged mark and asingle source of the product.’ ” Levi Strauss & Co. v.Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir.1985)(quoting in part 1 J. McCarthy, §§ 15:2 at 659 and15:11(B) at 686)). Factors to be assessed in determiningsecondary meaning include whether actual purchasersassociate the product design with its source, the degreeand manner of the plaintiff’s advertising, the length andmanner of the plaintiff’s use of the design and whetherthe plaintiff’s use of the design has been exclusive.Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 517(9th Cir.1989), cert. den., 493 U.S. 872, 110 S.Ct. 202,107 L.Ed.2d 155 (1989). “Extensive use andadvertising over a substantial period of time is enoughto establish secondary meaning.” Id. (citing FirstBrands v. Fred Meyer, 809 F.2d 1378, 1383 (9thCir.1987)); but see Yankee Candle Co. v. BridgewaterCandle Co., 259 F.3d 25, 44 (1st Cir.2001) (findingthat even a plaintiff who relies on circumstantialevidence of secondary meaning must show “someevidence that consumers associate the trade dress withthe source”) (emphasis in original). “Proof of exactcopying, without any opposing proof,” may also besufficient. Transgo, Inc., v. Ajac Transmission PartsCorp., 768 F.2d 1001 (9th Cir.1985) (citing AudioFidelity, Inc., v. High Fidelity Recordings, Inc., 283F.2d 551, 557 (9th Cir.1960).
The only direct evidence identified by Plaintiff ofconsumer association of the combined use of the fiveelements of Plaintiff’s asserted trade dress with theSharper Image source is the twenty unsworn,pre-printed consumer declarations. Even setting asidetheir questionable admissibility and probative value,this small collection of pre-printed declarations is notevidence of a mental association by a “substantialsegment” of consumers. Furthermore, these declarationsdo not address the specific combination of fiveelements which Plaintiff claims constitutes its protectedtrade dress; specifically, the declarants do not mention”placement and design of the handle for the removablecollector grid” or “design, placement and designation ofthe operational controls.” Likewise, the swornstatements of Sharper Image retailers are not probativeof association in the minds of the consuming public. SeeYankee Candle, 259 F.3d at n. 14 (noting that opinionsof retailers and those active in the field not evidence ofviews of the consuming public). Plaintiff produces noconsumer surveys showing association between its tradedress and the Sharper Image brand.
*15 Plaintiff also alleges that Defendants deliberatelycopied the IBQ in designing the Ionic Pro. However,the evidence it cites refers primarily to the internalworkings and performance of the IBQ, rather than to itstrade dress. The only evidence related to appearance isthe “personal opinion” of Ms. Cohen that Ionic Pro wasgenerally designed to “look and feel” similar to theIBQ; this clearly is not sufficient to show that the IBQis distinctive. Furthermore, as described in Section 2below, the Ionic Pro is in fact not an exact copy.
Finally, Plaintiff points to media coverage (includingits own competitors’ advertisements) and its copiousspending on advertising the Ionic Breeze product.Advertising and media coverage are factors indicatingdistinctiveness. However, evidence of a heavyadvertising campaign is not, in itself, sufficient to allowa reasonable inference of consumer association betweenPlaintiff’s alleged trade dress and its source. In contrastto the product in Clamp Mfg., where the Ninth Circuitfound that a plaintiff could prove distinctiveness,without showing direct evidence of consumerassociation, based on decades of exclusive trade dressuse, Plaintiff has only sold the current version of theIBQ since 2000. Forgan Decl. ¶ 2. Although it is truethat Plaintiff has successfully obtained two consentjudgments permanently enjoining its competitors basedon its allegedly distinctive trade dress, neither of thosejudgments indicates that the trade dress issue wassubject to discovery or dispute. See Barry Decl. Ex. T,Consent Judgment and Permanent Injunction, SharperImage Corp. v. Bluebargain, Inc., No. CV-05-6755AHM (C.D.Cal., September 28, 2005); ConsentJudgment and Permanent Injunction, Sharper ImageCorp. v. Master Household, Inc., No. 03-03257-RMW(N.D.Cal., August 28, 2003). In fact, those cases, inaddition to evidence of Ionic Pro sales, indicate thatPlaintiff has not had exclusive use of its alleged tradedress, but has faced similar-looking competitors almostfrom the beginning.
For these reasons, the Court finds that Plaintiff hasfailed to introduce evidence that would allow areasonable jury to conclude that its trade dress isdistinctive or that a substantial segment of consumersand potential consumers has a mental associationbetween the alleged trade dress and the Sharper Imagesource.
2. Likelihood of Confusion
Although Plaintiff’s failure to show distinctiveness initself would entitle Defendants to summary judgment onthe trade dress infringement claim, the Court finds thatPlaintiff has also failed to show a triable issue ofmaterial fact under the likelihood of confusion prong.
Eight factors are relevant to likelihood of confusion.AMF, Inc. ., v. Sleekcraft, 599 F.2d 341, 348-49 (9thCir.1979). However, summary judgment on likelihoodof confusion is appropriate when marks are sodissimilar that there can be no likelihood of confusion.See Chesebrough-Pond’s, Inc., v. Faberge, Inc., 666F.2d 393, 397-98 (9th Cir.1982) (affirming summaryjudgment of non-infringement where marks clearlydissimilar and conclusory expert affidavit unlikely toassist trier of fact).
*16 Plaintiff’s representation to the PTO that the IonicPro is not “comprised of the same design features as”the IBQ significantly undercuts Plaintiff’s present claimthat the products share similar trade dress. See PetroStopping Centers, L.P. v. James River Petroleum, Inc.,130 F.3d 88, 94 (4th Cir.1997) (noting that trademarkapplicant’s representation to PTO that term in mark wasvery dilute significantly undercut later claim ininfringement action that term was strong mark).
Other than attorney argument and suggestions that theCourt view each air purifier from a distance, Plaintiffoffers no evidence of similarity of trade dress.Defendants do offer evidence of some dissimilarity,based on the testimony of Plaintiff’s own witnesses,such as the IBQ’s guitar-pick shaped cross-section andangled vents. As the initial response from the PTOshows, there are many generally similar tower-type airpurifiers on the market. Given the range of generallysimilar products on the market, Plaintiff’s evidence ofactual confusion is de minimis, and it certainly is notprobative of confusion based on trade dress. Indeed,consumers could easily become confused based ongeneric similarities shared by the other nineteen towerair purifiers identified by the PTO examining attorney.
For these reasons, the Court finds that Plaintiff hasfailed to raise a triable issue of material fact as towhether consumers are likely to be confused by IonicPro’s alleged use of IBQ’s trade dress. Accordingly, onthe bases of both distinctiveness and likelihood ofconfusion, the Court grants Defendants’ motion forsummary adjudication of Plaintiff’s claim for trade dressinfringement.
IV. Plaintiff’s Unfair Competition Claim
Defendants move for summary adjudication ofPlaintiff’s unfair competition claim under CaliforniaBusiness and Professions Code § 17200. At the hearing,Plaintiff explained that its UCL claim was based onlyon Defendants’ alleged trade dress infringement.Because the Court grants Defendants’ motion withrespect to the trade dress issue, it also grantsDefendants’ motion with respect to Plaintiff’s § 17200claim.
V. Defendants’ Counterclaims
Defendants bring counterclaims for tortiousinterference with economic advantage and unfaircompetition under California Business and ProfessionsCode § 17200. Plaintiff moves to strike thosecounterclaims under California’s Code of CivilProcedure § 425.16, which provides for special motionsto strike claims based on the defendant’s right ofpetition or free speech in connection with a publicissue, and for judgment on the pleadings under FederalRule of Civil Procedure 12(c) and, in the alternative, forsummary adjudication, on the grounds that thecounterclaims are barred by three absolute defenses, thelitigation privilege, the competition privilege and theFirst Amendment. Defendants oppose the motion.
A. Factual Background
At issue in Defendants’ tort and State lawcounterclaims are emails sent by Plaintiff to retailersadvising them of this lawsuit, and asking them not tocarry the Ionic Pro product. A sample email, sent July20, 2004 from a Sharper Image employee to an officialat the Boise Cascade/Office Max store, stated, in part,”Sharper Images [sic] wishes to make you aware of theserious legal consequences we expect the distributors ofthe Ionic Pro to suffer because of the direct assault uponSharper Image’s Ionic Breeze Quadra Silent AirPurifier.” Plaintiff’s Request for Judicial Notice (RJN),Ex. 4, Novak Decl., Ex A, SI-IP001199. It warned,”Sharper Image pursues all its legal rights against anyentity or individual which is involved in the furtherpublication of Ionic Pro’s infringing product andfraudulent claims.” Id. The end of the emailed letterlisted Robert Schultz, Vice-President of Business andLegal Affairs for Sharper Image Corporation, and alsoincluded the name and contact information of Plaintiff’soutside general counsel, e. robert wallach. MichelleArney, a Sharper Image Rule 30(b)(6) designee,testified that the purpose of the letters was to “makesure the retailers were aware that this litigation wasongoing and to understand that ultimately they may notbe able to rely on their indemnification from Ionic Pro.”
*17 Plaintiff also contacted various media outlets withits claims of infringement. A form letter for thispurpose, also signed by Mr. Schultz and Mr. wallach,stated, in part,
Sharper Image has been informed that themanufacturers and distributors of the Ionic Proindoor air purifier have provided or will soon providea commercial presentation for viewing on yourstation. We have viewed the Ionic Pro videopresentation and are writing this letter to make youaware of the serious legal consequences we expectthe distributors of the Ionic Pro to suffer…. As youwould expect, Sharper Image pursues all its legalrights against any entity or individual which isinvolved in the further publication of Ionic Pro’sinfringing product and fraudulent claims. We requestthat you give strong consideration to rejecting thismisleading advertisement instead of being a party toits further exposure.
Plaintiff’s RJN, Ex. 5, SI-IP001260.
The letters referred to Plaintiff’s then-pending motionsin this Court for a temporary restraining order and forpreliminary injunctive relief. The Court denied themotion for a preliminary injunction on September 9,2004.
Although the text of the letters to retailers isthreatening, the evidence also shows that Plaintiffhoped for commercial relationships with these retailers.Plaintiff’s Rule 30(b)(6) designee Roger Bensingertestified that “what we wanted was to get Sharper ImageIonic Breeze in” to JC Penney and other retail stores.Novak Decl., Ex. L, Bensinger Dep. 75:6-8.
B. Applicability of Special Motion to Strike
California Code of Civil Procedure § 425.16(b)(1)provides,
A cause of action against a person arising from anyact of that person in furtherance of the person’s rightof petition or free speech under the United States orCalifornia Constitution in connection with a publicissue shall be subject to a special motion to strike,unless the court determines that the plaintiff hasestablished that there is a probability that the plaintiffwill prevail on the claim.
The California legislature recently amended this lawso that it
does not apply to any cause of action brought againsta person primarily engaged in the business of sellingor leasing goods and services … arising from anystatement or conduct by that person if both of thefollowing conditions exist:
(1) The statement or conduct consists ofrepresentations of fact about that person’s or abusiness competitor’s business operations, goods, orservices, that is made for the purpose of obtainingapproval for, promoting, or securing sales or leasesof, or commercial transactions in, the person’s goodsor services, or the statement or conduct was made inthe course of delivering the person’s goods orservices.
The intended audience is an actual or potential buyeror customer, or a person likely to repeat the statementto, or otherwise influence, an actual or potentialbuyer or customer….
Cal. Civ. Proc. § 425.17(c). This exception was”intended to apply to commercial disputes.” Brill MediaCo. v. TCW Group, Inc. ., 132 Cal.App.4th 324, 342,33 Cal.Rptr.3d 371 (2005). Even in the context of acommercial dispute, however, “promises made toinduce settlement of a lawsuit” are not statements offact and do not fall within the exception created by §425.17(c). Navarro v. IHOP Prop., Inc., 134Cal.App.4th 834, 841, 36 Cal.Rptr.3d 385 (2005).
*18 The letters at issue contain representations of factregarding Plaintiff’s business competitor’s goods.Although those factual representations contain implicitlegal threats, they are far removed from the settlementpromises made in Navarro. Plaintiff’s own witnessestestify that one purpose of the letters was to promoteSharper Image products. The retail recipients wereclearly potential buyers of the IBQ, and the mediarepresentatives were advertisers whose business is toinfluence potential customers. Plaintiff’s argument thatDefendants’ counterclaims attack protected speechactivity is inapposite; § 425.17(c) specifically excludesfrom § 425 .16′s coverage speech activity that wouldotherwise be protected under § 425.16. Plaintiff hasshown no legal basis for its argument that § 425.16′sheightened procedural protections for non-commercialspeech are unconstitutional. Cf. R.A.V. v. City of St.Paul, 505 U.S. 377, 381, 112 S.Ct. 2538, 120 L.Ed.2d305 (invalidating State statute which placed specialprohibitions on certain categories of fighting words).
Accordingly, the Court concludes that § 425.17prevents a special motion to strike in this case.Therefore, the Court considers Plaintiff’s motion to bea motion for judgment on the pleadings, or, in thealternative, for summary adjudication pursuant to Rule56.
C. Litigation Privilege
Defendants assert, and Plaintiff does not dispute, thatthey have presented sufficient evidence to raise materialissues of fact regarding all of the elements of their Statelaw claim for tortious interference with economicadvantage. Therefore, the question for the Court iswhether any of Plaintiff’s proposed defenses applies asa bar.
1. Applicable Law
Under California Civil Code § 47(b), communicationsmade in or related to judicial proceedings are absolutelyimmune from tort liability. The purpose of the privilegeis “to afford litigants … the utmost freedom of access tothe courts without fear of being harassed subsequentlyby derivative tort actions.” Silberg v. Anderson, 50Cal.3d 205, 213, 266 Cal.Rptr. 638, 786 P.2d 365(1990).
The litigation privilege applies to any communications(1) made in a judicial proceeding; (2) by litigants orother participants authorized by law; (3) to achieve theobjects of the litigation; (4) that have some connectionor logical relation to the action. Silberg, 50 Cal.3d at212, 266 Cal.Rptr. 638, 786 P.2d 365; PremierCommunications Network, Inc. v. Fuentes, 880 F.2d1096, 1102 (9th Cir.1987); see also Rubin v. Green, 4Cal.4th 1187, 1194, 17 Cal.Rptr.2d 828, 847 P.2d 1044(1993) (noting that Silberg and other decisionsemphasized the “importance of virtually unhinderedaccess to the courts”). Once these requirements are met,§ 47(b) operates as an absolute privilege. Silberg, 50Cal.3d at 216, 266 Cal.Rptr. 638, 786 P.2d 365. Courtshave applied the litigation privilege to all torts, with theexception of actions for malicious prosecution. SeeEdwards v. Centex, 53 Cal.App.4th 15, 29, 61Cal.Rptr.2d 518 (1997). “Any doubt about whether theprivilege applies is resolved in favor of applying it.”Kashian v. Harriman, 98 Cal.App.4th 892, 913, 120Cal.Rptr.2d 576 (2002).
*19 The first prong of the litigation privilege test isquite broad. It covers “any publication required orpermitted by law in the course of a judicial proceedingto achieve the objects of the litigation, even though thepublication is made outside the courtroom and nofunction of the court or its officers is involved.” Silberg,50 Cal.3d at 216, 266 Cal.Rptr. 638, 786 P.2d 365.
The parties dispute the meaning of the second prong.In Silberg, the California Supreme Court stated that”republications to nonparticipants in the action aregenerally not privileged under section 47(2), and arethus actionable unless privileged on some other basis.”50 Cal.3d at 219, 266 Cal.Rptr. 638, 786 P.2d 365. Forinstance, statements “to the general public through thepress” are not privileged, because the public and presshave no particular connection to the proceeding. SusanA. v. County of Sonoma, 2 Cal.App.4th 88, 93, 94, 3Cal.Rptr.2d 27 (1991); but see Designing Health, Inc.v. Erasmus, 2001 U.S. Dist. LEXIS 25952, *13(C.D.Cal., Apr. 24, 2001) (finding that press release fellwithin California’s litigation privilege). However, thosenon-litigants possessing a “substantial interest in theoutcome of the litigation” are “authorized participants”for purposes of the litigation privilege. Costa v.Superior Court, 157 Cal.App.3d 673, 678, 204Cal.Rptr. 1 (1984); see also Adams v. Superior Court,2 Cal.App.4th 521, 529, 3 Cal.Rptr.2d 49 (1992)(noting that “the privilege is not restricted to the partiesin the lawsuit but need merely be connected or relatedto the proceedings”) (citing Profile Structures, Inc., v.Long Beach Bldg. Material Co., 181 Cal.App.3d 437,442, 226 Cal.Rptr. 192 (1986)). Although Defendantsclaim that authorized participants must have a “formalassociation” with a party to the litigation, thisrequirement is not supported by the case law and hasnot been recognized by other district courts. See, e.g.,eCash Techs. Inc. v. Guagliardo, 127 F.Supp.2d 1069,1076, 1082 (C.D.Cal.2000) (finding allegedly falseletter sent to a third party domain name auction serviceto be privileged under California law). Defendantsattempt to distinguish eCash on the grounds that theletter there was found not to be false or misleading;however, the court made that finding after concludingthat the litigation privilege did apply, reasoning that”even if” the privilege didn’t apply, the tort claim wouldfail. Therefore, the Court concludes that, to meet thesecond prong of the litigation privilege, Plaintiff needonly show that the recipients of its letter possessed a”substantial interest” in the litigation.
The California Supreme Court “has characterized thethird prong of the foregoing [Silberg] test … as being’simply part’ of the fourth, the requirement that thecommunication be connected with, or have some logicalrelation to, the action.” Rothman v. Jackson, 49Cal.App.4th 1134, 1141, 57 Cal.Rptr.2d 284 (1996)(citing Silberg). The ” ‘connection or logical relation’which a communication must bear to litigation in orderfor the privilege to apply, is a functional connection,”i.e., the communication must “function as a necessaryor useful step in the litigation process and must serve itspurposes.” Id. at 1146, 57 Cal.Rptr.2d 284 (emphasisomitted). The test “cannot be satisfied bycommunications which only serve interests that happento parallel or complement a party’s interests in thelitigation,” including vindication in the court of publicopinion. Id. at 1147, 57 Cal.Rptr.2d 284. Instead, the”connection or logical relation” prong of the test “canbe satisfied only by communications which functionintrinsically, and apart from any consideration of thespeaker’s intent, to advance a litigant’s case.” Id. 1148,57 Cal.Rptr.2d 284.
*20 When litigation is not yet underway, statementsmay still meet the requirement of “some connection orlogical relation to the action” if an action is”contemplated in good faith and under seriousconsideration.” Aronson v. Kinsella, 58 Cal.App.4th254, 262, 266, 68 Cal.Rptr.2d 305 (1997). Thus, theprivilege “has been broadly applied to demand lettersand other prelitigation communications by attorneys.”Blanchard v. DIRECTV, Inc., 123 Cal.App.4th 903,919, 20 Cal.Rptr.3d 385 (2004) (citing Rubin v. Green,4 Cal.4th 1187, 1194, 17 Cal.Rptr.2d 828, 847 P.2d1044 (1993) and Knoell v. Petrovich, 76 Cal.App.4th164, 169, 90 Cal.Rptr.2d 162 (1999)); PremierCommunications Network, Inc., v. Fuentes, 880 F.2d1096, 1102 (9th Cir.1987). However, “it is not the merethreat of litigation that brings the privilege into play,but rather the actual good faith contemplation of animminent, impending resort to the judicial system forthe purpose of resolving a dispute.” Eisenberg v.Alameda Newspapers, Inc., 74 Cal.App.4th 1359, 1380,88 Cal.Rptr.2d 802 (1999) (citing Edwards v. CentexReal Estate Corp., 53 Cal.App.4th 15, 35- 36, 61Cal.Rptr.2d 518 (1997) (emphasis in original).
2. Litigation Privilege Analysis
Plaintiff proffers two alternative theories by which thelitigation privilege applies to its letters to retailers andthe media. First, Plaintiff argues that the recipients ofthe letters were “authorized participants” in its existinglitigation against Defendants, because the recipientspossessed a substantial interest in the outcome of thelitigation. Second, Plaintiff argues that potentiallitigation against the recipients was contemplated ingood faith and under serious consideration, and thus theletters were protected pre-litigation communications.Because the Court finds that the first theory providesPlaintiff with absolute immunity from suit, it need notconsider the factual question of whether Plaintiffseriously contemplated suing the retailers and mediaoutlets. [FN7]
FN7. Accordingly, the parties’ variousobjections to evidence regarding SharperImage’s intent in sending the letters are deniedas moot.
Even if Plaintiff’s threats against them were not serious,the retailer and media recipients possessed a substantialinterest in the underlying dispute. At that time, Plaintiffwas seeking injunctive relief which, if granted, wouldhave significantly disrupted the recipients’ businessarrangements with Defendants. Furthermore, even ifPlaintiff did not intend to follow through on its threatsto sue the recipients for infringement, a finding by theCourt that the Ionic Pro likely infringed Plaintiff’spatents would have significantly increased the legalliability of the letter recipients.
In disputing whether the second prong of the litigationprivilege applies here, Defendants rely on cases such asSusan A., where a California court held that statementsto the general public through reporters were notprivileged because the press and the public at large hadno connection with the criminal case being litigated.Here, however, the statements were not broadcast to theentire media through a press release, or to the publicgenerally, but to specific media representatives whocarried advertisements for the Ionic Pro. Although theirinterest in the underlying action may not have been asgreat as that of Ionic Pro retailers, the media outletsfaced a potential disruption if the Court had granted theinjunctive relief sought by Plaintiff. Therefore, theCourt finds that the undisputed evidence shows that therecipients of the letters had a substantial interest inPlaintiff’s lawsuit against Defendants. Because none ofthe other prongs of the litigation privilege is in dispute,the litigation privilege applies as an absolute bar toDefendants’ counterclaims.
VI. Plaintiff’s Motion for Leave to File TAC
*21 Plaintiff moves for leave to file a TAC addingPeter Spiegel, Mehran Gabbay, Sylmark Holdings, Ltd.and Great Products, Ltd. as defendants; adding theIonic Pro Compact as an accused product; and addingallegations of tax fraud as additional bases for Plaintiff’s§ 17200 unfair competition claim. The motion was filedon November 28, 2005, and is based primarily on thetestimony of Ms. Cohen, who was deposed onNovember 10, 2005. Defendants oppose the motion.
A. Factual Background
Mr. Spiegel was significantly involved in thedevelopment of the Ionic Pro. Mr. Bess has testifiedthat he is transferring all of his interest in the Sylmarkentities to Mr. Spiegel. Barry Decl., Ex. F, Bess Dep.113:11-16. According to Mr. Spiegel, an entity calledTetra Partners will soon own ninety percent of theSylmark partnership interests.
According to Ms. Cohen, Sylmark Holdings, an Irishcompany, has the same owners as the Sylmark entities,including Mr. Spiegel. Cohen Dep., 96-97. Mr. Spiegeltestified that Irish company Great Products, which ownsthe rights to Ionic Pro, received a nine percent royaltyon the United States license to sell the Ionic Pro (laterreduced to six percent). Spiegel Dep. 325-326.
Mehran Gabbay is the registered owner ofwww.factoryprices4U.com. Barry Decl. ¶ 9. SinceJanuary 1, 2005, internet users logging onto DefendantFactories2U’s website have been directed towww.factoryprices4U.com, where the Ionic Pro productis being sold. Id. ¶ 8, 3 Cal.Rptr.2d 27. Mr. Gabbay isone of only two employees of Factories2U. Barry Decl.,Ex. G, Gabbay Dep. 7.
In October, 2005, Plaintiff became aware of thecommercial availability of the new “Ionic ProCompact” product. Barry Decl. ¶ 12. Plaintiff assertsthat the Ionic Pro Compact has the same design, shapeand features as the original Ionic Pro.
B. Legal Standard
Federal Rule of Civil Procedure 15(a) provides thatleave of the court allowing a party to amend its pleading”shall be freely given when justice so requires.” Leaveto amend lies within the sound discretion of the trialcourt, which discretion “must be guided by theunderlying purpose of Rule 15 to facilitate decision onthe merits, rather than on the pleadings ortechnicalities.” United States v. Webb, 655 F.2d 977,979 (9th Cir.1981) (citations omitted). Thus, Rule 15′spolicy of favoring amendments to pleadings should beapplied with “extreme liberality.” Id.; DCD Programs,Ltd. v. Leighton, 833 F.2d 183, 186 (9th Cir.1987)(citations omitted).
The Supreme Court has identified four factors relevantto whether a motion for leave to amend should bedenied: undue delay, bad faith or dilatory motive,futility of amendment, and prejudice to the opposingparty. Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct.227, 9 L.Ed.2d 222 (1962). The Ninth Circuit holds thatthese factors are not of equal weight; specifically, delayalone is insufficient ground for denying leave to amend.Webb, 655 F.2d at 980. Further, the “liberality ingranting leave to amend is not dependent on whetherthe amendment will add causes of action or parties.”DCD Programs, 833 F.2d at 186. Rather, the courtshould consider whether the proposed amendmentwould cause the opposing party undue prejudice, issought in bad faith, or constitutes an exercise in futility.Id. (citing Acri v. Int’l Ass’n of Machinists & AerospaceWorkers, 781 F.2d 1393, 1398-99 (9th Cir.1986);United States v. City of Twin Falls, 806 F.2d 862, 876(9th Cir.1986); Howey v. United States, 481 F.2d 1187,1190-91 (9th Cir.1973); Klamath-Lake Pharm. Ass’n v.Klamath Med. Serv. Bureau, 701 F.2d 1276, 1293 (9thCir.1983)).
*22 Prejudice typically arises where the opposing partyis surprised with new allegations which require morediscovery or will otherwise delay resolution of the case.See, e.g., Acri, 781 F.2d at 1398-99; Guthrie v. J.C.Penney Co., 803 F.2d 202, 210 (5th Cir.1986). Theparty opposing the motion bears the burden of showingprejudice. DCD Programs, 833 F.2d at 186; Beeck v.Aquaslide ‘N’ Dive Corp., 562 F.2d 537, 540 (8thCir.1977).
1. Mr. Gabbay and Ionic Pro Compact
Plaintiff asserts that the Ionic Pro Compact, introducedin October, 2005, shares the design, shape and featuresof the original Ionic Pro and thus infringes the ’494patent and the Sharper Image trade dress. Because theCourt grants Defendants’ motion for summaryadjudication of the design patent and trade dress claims,the Court also denies on grounds of futility the motionto add the Ionic Pro Compact as an accused product.
With respect to Mr. Gabbay, there are no claimsremaining in this case which are relevant to hisactivities after January 1, 2005, when Factories2Uceased directly selling the accused products.Furthermore, Plaintiff has known about Mr. Gabbay’sadditional website since January, 2005, and offers nogrounds to justify its delay in adding him as adefendant. Therefore, the Court denies leave to add Mr.Gabbay.
Similarly, with respect to Sylmark Holdings, Ltd., andGreat Products, Ltd., Plaintiff has failed to show thatthese entities were involved or intertwined inDefendants’ activities during the specific time frame forwhich the Court has found that a triable claim forinfringement exists. Instead, it appears that Plaintiffwishes to add these proposed defendants for purposesof its additional § 17200 claim. Because, as describedbelow, the Court denies Plaintiff leave to add claimsbased on the allegedly illegal Sylmark corporatestructure, leave to add Sylmark Holdings, Ltd., andGreat Products, Ltd. is also denied.
2. Mr. Spiegel
On the other hand, Plaintiff has shown evidence thatMr. Spiegel was personally and actively involved inselling the first-generation Ionic Pro after the ’484patent issued. Defendants do not identify any prejudicethat will flow from adding Mr. Spiegel. AlthoughPlaintiff was aware of Mr. Spiegel’s involvement sinceat least July, 2004, when he submitted a declarationdescribing his role, Plaintiff has recent cause to believethat Mr. Spiegel is needed as a named defendant inorder to satisfy any judgment in Plaintiff’s favor.Therefore, the Court grants Plaintiff’s motion to add Mr.Spiegel.
2. Additional Claims
The Court denies Plaintiff leave to amend to add itsproposed additional claims relating to international taxfraud. These proposed additions introduce an entirelynew theory of liability and could substantially delay thisaction. Even assuming, as Plaintiff argues, that all of therelevant information is within Defendants’ possession,another round of case-dispositive motions would beappropriate, and the May 8, 2006 trial date would belost. Such a disruption to the schedule would causeundue prejudice to Defendants. Accordingly, Plaintiff’smotion to add these claims is denied.
*23 For the foregoing reasons, the Court GRANTS inpart Defendants’ motion for summary adjudication(Docket No. 670) of Plaintiff’s claims of infringementof the ’484 utility patent based on the second-generationIonic Pro product; infringement of the ’494 designpatent; infringement of Plaintiff’s trade dress; and unfaircompetition under California Business and ProfessionsCode § 17200. The Court also grants summaryadjudication in Defendants’ favor with respect toPlaintiff’s remaining claims against Mr. Bess and theretail Defendants Target, Qwik Cook d/b/a HomeTrends and Factories2U. Otherwise, the Court deniesDefendants’ motion for summary adjudication.
The Court GRANTS Plaintiff’s motion for summaryadjudication of Defendants’ tort and State lawcounterclaims against it (Docket Nos. 520 and 625).Otherwise, the Court denies Plaintiff’s motion forsummary adjudication.
The parties’ motions to strike based on evidentiaryobjections are denied (Dockets No. 661 and 677), as isPlaintiff’s ex parte application requesting thatDefendants withdraw their reply brief (Docket No.701).
The Court GRANTS in part Plaintiff’s motion for leaveto file a TAC (Docket No. 467). Plaintiff may add Mr.Spiegel as a defendant. Otherwise, Plaintiff’s motion forleave is denied. The TAC must be filed within threedays of the date of this order. Mr. Spiegel may stand onthe Answer already filed.
Remaining for trial are Defendants’ invaliditycounterclaims and Plaintiff’s claim against Mr. Spiegel,Ionic Pro, LLC, Ideal Products, Sylmark and Sylmark,LLC for inducing infringement of its utility patent.
IT IS SO ORDERED.
END OF DOCUMENT