That's what Kendall Jackson did when it concluded E&J Gallo Winery's Turning Leaf wines were a deliberate copy of the bottle and label design for its enormously successful Vintners Reserve.
NO INFRINGEMENT FOUND
The evidence revealed obvious copying, but in April a jury in San Francisco said, "No infringement." Does this signal open season on the copying of package designs? Or just another eccentric California jury? Probably neither, but it still holds some key lessons for brand managers.
Too often, a name development company, a design agency or an ad agency is brought in to develop a product's identity without consulting with a promotions firm, PR agency and/or intellectual property law firm.
An attorney who specializes in trademarks, designs and patents can advise an identity innovator how to develop a unique image that can be protected against copying, or advise a me-too marketer how best to copy an innovator without crossing that invisible line of legal protection.
If marketers often struggle to create a successful package design (including a winning product name), lawyers and judges also strain to identify the parts of a product's overall appearance, or "trade dress," that are entitled to protection. What elements are unique or mem-orable or have come to have a place in the hearts of consumers?
The next hurdle is to persuade a judge or jury that the second-comer has copied enough of these elements to trigger an association or unfair ride on the good will of the innovator.
CONFUSION IS A FACTOR
If a design is already registered as a trademark or, in appropriate instances, protected by design patent or copyright, the first hurdle, proving ownership, is already overcome. In a case such as the Kendall Jackson suit, the plaintiff must then prove consumers are likely to be confused.
Consumer surveys to gauge reactions have increasingly become essential, particularly if the aggrieved party has the financial resources to conduct such research. Proof the defendant plagiarized its package design can also be critical, because copyists are generally met with disdain, in subtle and sometimes explicit ways, including having the legal burden of proving that their copying will not cause confusion.
Documents disclosed in the Kendall Jackson case left little doubt Gallo had targeted its smaller competitor when it launched Turning Leaf, the label for which incorporates a grape leaf design reminiscent of Kendall Jackson's.
However, the law has always permitted some forms of copying; it is prohibited only when the pilfered property is protected under one of the statutory or common law bases for protection, namely trademark, copyright, patent or design patent, and when the copying surpasses a threshold of similarity, which differs depending on which legal basis of protection is claimed. Common design elements-grape leaves on wine bottles-are always more difficult to protect than are entirely unexpected and innovative creations.
Gallo obviously succeeded where Kendall Jackson failed in drawing attention away from the product similarities and towards the differences-which are evident on inspecting the two brands. If Gallo did skirt the line between infringing and non-infringing conduct, the verdict may simply reflect the wisdom distilled by a New Jersey court over 50 years ago that the effective copyist employs enough points of similarity to confuse customers yet enough points of difference to confuse the courts.
The temptation to copy or come as close as possible to a successful product tends to vary proportionately with the level of intensity of competition in a given field. The wine industry is a field where there is fierce competition among traditional French and Italian wines and wines from California, Australia, South Africa, Israel, Chile and Argentina. In periods of economic downturn, there are similar incentives to mimic success rather than invest time and effort in new-product development.
The law generally rewards inventiveness by according broader protection to distinctive designs. Deliberate copying is also disfavored. And only five years ago, in a case where the trade dress at issue was nothing more nor less than the decor of a Mexican restaurant, the U.S Supreme Court held that trade dress is no less entitled to protection than ordinary word trademarks.
GUARDING AGAINST BROAD CLAIMS
The jury verdict in Kendall Jackson does nothing to alter the law in these respects, although it may well be that the Kendall Jackson case in some ways reflects a broader trend that has emerged in recent years: a quotidian quotient under which courts have increasingly guarded against overbroad claims of rights in common design elements. In such cases, courts have at times shown a willingness to overlook design similarities if the product names are sufficiently different.
Because of the obvious differences in the trade dress of the two wines in Kendall Jackson, and the absence of the Gallo name on its bottle, the case probably represents no more than one jury's view of a unique set of facts.
However, prudent marketers will note the importance of building brand equity in the most innovative designs possible, and of protecting valuable designs as early as possible, both to ward off potential infringers and ease the evidentiary burdens should litigation ever be required.
Mr. Moskin is a partner at Pennie & Edmonds, New York, an intellectual property law firm. The opinions expressed here are exclusively those of the author and do