CHAPTER 3 - § 3.03

• Jurisdiction: United States

§ 3.03 EXAMPLE CASE 2: FUDDRUCKERS INC. V. DOC'S B.R. OTHERS, INC. (9TH CIR. 1987)

Fuddruckers, a chain of upscale hamburger restaurants, claimed trade dress protection in the "total visual image of its restaurant services."⁵² One of the distinguishing features of the restaurant was the food preparation area, which was visible to customers.⁵³ Another claimed feature was that various food items were stored in bulk in the main part of the seating area.⁵⁴ These items included cartons of beer, produce, and other items.⁵⁵ Iced tea was served from a container that looked like a trash can. Condiments were served out of large, black, round crocks.⁵⁶ In addition, the interior design also included the walls covered in white tile, neon signs throughout the restaurant, checked flooring and tablecloths, and a bakery called "Mother Fuddruckers."⁵⁷ The images below show the exterior and interior of Fuddruckers restaurants (the lower picture shows the condiment area and the open kitchen).

The defendant, Doc's, was started by two brothers who had previously sought to open their own Fuddruckers franchise.⁵⁸ The interior of Doc's copied many of the elements of Fuddruckers trade dress, including exposed food preparation areas, white tiling, neon, and a bakery called "Mother Other's."⁵⁹ Moreover, a number of witnesses testified that they thought the restaurants "looked very much alike."⁶⁰ Despite these similarities, Fuddruckers lost at the district court level, and appealed to the Ninth Circuit.⁶¹

By way of background, brothers Gerald and Doug Koppes approached Fuddruckers in 1982-83 about opening Fuddruckers franchises in Los Angeles, Denver, and Phoenix.⁶² The Koppes brothers were unable to gain a franchise, so they proceeded to open Doc's B.R. Others in Phoenix after they heard that Fuddruckers would soon be expanding into New Mexico, Arizona, and Colorado.⁶³ There was evidence that the Koppes and their designers had visited at least two Fuddruckers during the planning of their Doc's project.⁶⁴

As noted above, the interior of Doc's had a similar look to that of Fuddruckers.⁶⁵ Differences between the restaurants included black and white floors instead of brown and white floors, different logos, and large-screen TVs at Doc's and not Fuddruckers.⁶⁶ Notwithstanding these differences, there was testimony that Fuddruckers personnel received "more than one hundred questions about whether Doc's and Fuddruckers had common owners."⁶⁷

At the district court level, the jury found no likelihood of confusion between Fuddruckers and Doc's, and also that the Fuddruckers had not obtained secondary meaning in the Phoenix area.⁶⁸ A large part of the problem for Fuddruckers was the district court's failure to understand functionality and likelihood of confusion in the trade dress context and to issue appropriate jury instructions. For example, in one opinion, the district court held that even if likelihood of confusion were found, the court would be required to parse out functional elements from the trade dress to fashion a remedy:

If there is no likelihood of confusion by the ordinary consumer as to the overall trade dress, the defendant restaurant is not infringing on the trade dress of the plaintiff restaurant [citations omitted]. If there is a likelihood of confusion, then the defendant is infringing on plaintiff's trade dress and the Court then must analyze the individual components of the trade dress in order to fashion a remedy to alleviate the likelihood of confusion.⁶⁹

In that same opinion, the district court found eighteen features of Fuddruckers restaurants to be functional, including the white tile, neon signs, trash can for serving iced tea, and oversized condiment bar.⁷⁰ Thus, while the district court purported to examine Fuddruckers's trade dress as a whole, it is clear from the analysis that it did not do so. The district court also failed to issue any instructions to the jury on functionality, an omission found to be clear error on appeal.⁷¹ The Ninth Circuit also found reversible error in a jury instruction which asked the jury to determine whether there was "a likelihood that consumers would believe that Doc's was owned and franchised by Fuddruckers."⁷² In particular, the Ninth Circuit pointed out that such an instruction failed to account for confusion as to source—that customers believed there was some association between the two restaurants which was not limited to common ownership.⁷³

In addressing all these concerns, the Ninth Circuit began by stating that "a plaintiff seeking to recover for trade dress infringement under section 43(a) must show that its trade dress is protectable and that defendant's use of the same or similar trade dress is likely to confuse consumers."⁷⁴ The specific test applied by the Ninth Circuit was "whether there is a likelihood of confusion resulting from the total effect of the defendant's package on the eye and mind of an ordinary purchaser."⁷⁵

The court found that a "restaurant's décor, menu, layout and style of service may acquire the source-distinguishing aspects of protectable trade dress such that their...