Summary judgment denied in dispute alleging infringement regarding outdoor garden broom

By Charmaine Little | Nov 6, 2018

SAN DIEGO – A judge in the U.S. District Court for the Southern District of California recently denied motions for summary judgment in case alleging infringement of trade dress rights regarding an outdoor garden broom. 

According to a ruling by U.S. District Judge Roger T. Benitez filed Oct. 10, San Clemente-based H.I.S.C. Inc. and DePalma Enterprises Inc. sued Franmar International Importers Ltd., its owner Maria Rajanayagam and manufacturer Ravi Industries Ltd. regarding trade dress rights for an outdoor garden broom. This came after the defendants, who sell an outdoor garden broom called "The Original Garden Broom," accused the plaintiffs of infringing on its rights when it sold a similar product under the name "The Ultimate Garden Broom" after their partnership ended. 

The court denied the plaintiffs’ motion for summary judgment that would state the defendants’ trade dress is unenforceable and that the plaintiffs never infringed on the defendants’ trade dress rights. The court also denied the plaintiffs' motion for summary judgment concerning Franmar’s counterclaims for unfair competition under 15 U.S.C., common law unfair competition and unfair competition under California Business and Professions Code.

“To succeed on a trade dress infringement claim, the alleged claimant must show … the trade dress serves as a source-identifying role either because it is ‘inherently distinctive’ or has acquired ‘second meaning,’” court filings said. The court ultimately determined this case about product design, which can only be proven by displaying secondary meaning. The plaintiffs argued that the defendants’ Original Broom’s trade dress does not have secondary meaning.  

The plaintiffs depended on Dr. Jacqueline Chorn’s expert report to back their argument that the Original Broom’s trade dress doesn’t have secondary meaning. Still, this wasn’t enough for the court as it determined the report wasn’t admissible. Since the plaintiffs failed to provide admissible evidence that proved a lack of secondary meaning, the court denied their motion for summary judgment on this claim.

Regarding Franmar’s counterclaims, the court said the plaintiffs didn’t display as a matter of law that they are entitled to summary judgment. So their motion was denied as well.

The plaintiffs bought the Original Broom from Franmar from February 2012 through the following July. Using the business name Ultimate Innovations, H.I.S.C. and DePalma sold the Original Broom to its own customers in the U.S. using avenues such as garden shows and the QVC network, court filings said. In July 2012 the defendants told the plaintiffs they wouldn’t sell to them anymore. The plaintiffs subsequently sold the rest of the brooms it bought from the defendants, and then found another source for the garden broom and called it The Ultimate Garden Broom.

Roughly three years later, the defendants sent a letter to QVC via their lawyer informing the network that Ravi owned the exclusive patent for the Original Broom and that Franmar was the only proper distributor of it in North America, court filings said. A few days later, the defendants’ counsel sent the plaintiffs’ counsel a cease and desist letter stating it had the rights to The Original Garden Broom including patents, copyrights, and trade dress. The plaintiffs then sued the defendants for declaratory judgment concerning the copyright and trade dress. Franmar filed its own counterclaim for trade dress infringement and unfair competition.

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