Last week, the U.S. Court of Appeals for the Fifth Circuit issued an opinion in Beatriz Ball, LLC v. Barbagallo Company, LLC, Case No. 21-30029 (July 12, 2022), reversing and remanding a district court’s decision after a three-day bench trial.
Beatriz Ball sued Barbagallo Company for copyright and unregistered trade dress infringement over a dinnerware collection displaying some distinguishing features. The district held that (1) Plaintiff lacked standing to sue for copyright infringement because the registrations incorrectly listed the owner as “Beatriz Ball Collection” instead of Beatriz Ball, LLC, and (2) Plaintiff failed to prove “secondary meaning” to establish unregistered trade dress protection. Beatriz Ball appealed.
On the copyright claim, the Fifth Circuit concluded that the error in Plaintiff’s copyright registration—namely, listing the name under which it does business (Beatriz Ball Collection) rather than its legal entity name (Beatriz Ball, L.L.C.)—was an innocent error. The Court held the innocent error falls within the scope of the Copyright Act’s safe harbor provision, 17 U.S.C. § 411(b)(1), and that it did not undermine Plaintiff’s standing to assert copyright infringement.
On the trade dress claim, the Court held that the district court clearly erred in analyzing three of the seven factors for determining whether the collection had acquired secondary meaning. On the “volume of sales” factor, the Court held the district court failed to consider evidence regarding the volume of overall sales attributable to the collection. On the “nature of use” factor by media, the Court held the district court erred by failing to consider third party advertisements or publications that did not refer to the collection by name. On the “intent” factor, the Court held the district court incorrectly failed to address intent directly and instead only partially analyzed widespread use in the industry of similar designs. The Court further held that a visual comparison of the alleged trade dress features in the competing products can create an inference of copying. The Court ultimately concluded that this “sum of errors” required reversal of the district court’s decision on the trade dress claim.
The Court reversed and remanded for further proceedings consistent with its opinion.