Judges tend not to go thru a full likelihood-of-confusion analysis at 12b6 but here you are.

The Court found that the WONDERFUL packaging and Defendant’s packaging do not possess “striking similarity” (sic). The Court notes that while their were similarities . . .

The handling of the third factor, channels of trade was a bit puzzling. Although Pom sells mostly in brick and mortar stores, it, like Defendant, sells on Amazon. Despite two competitors selling the identical product in the identical trade channel, the Court held that channels of trade “tilts slightly on Defendant’s favor (apparently because Defendant doesn’t sell in brick and mortar.

The handling as to whether Plaintiff had adequately pled “non-functionality” is a bit of a muddle as the Court seems to believe that Plaintiff’s allegation was conclusory. However, Plaintiff has pled the ownership of two registered trade dresses (with words and without). The registrations would seem to be incontestable (having been registered in 2014). The trade dress is on the packaging and is not a component or the configuration of the product. The import is that there is no presumption of functionality against packaging trade dress. Yes, the Plaintiff has to allege distinctiveness for both its registered and unregistered claims, but it would seem to have adequately pled secondary meaning for both causes by alleging ownership of incontestable registrations.

The Court then dismissed both causes of action, relying on the failure to pled non-functionality and the failure to plead substantial similarity.


The Center for Countering Digital Hate is a not for profit organization that publishes reports on among other things, hate speech and disinformation on social media. Its reports contain the “big if true” allegations that a small number of social media accounts, such as Twitter, are responsible for a disproportionate percentage of objectionable conduct. For example, it alleges that 12 posters are responsible for two thirds of the anti-vax content on social media. CCDH suggests that social media companies, such as X Corp., could be more effective in policing such content by removing small groups of agitators.

CCDH urges brands to not advertise on sites that promote disinformation. X Corp suggests that these efforts have resulted in reduced advertising levels on Twitter.

CCDH, allegedly, obtains its underlying data in two ways. CCDH reportedly acknowledges that it uses scraping tools to scrape social media sites. It also, allegedly, obtained access to analytical tools from Brandwatch, a market intelligence consultant. Brandwatch, obtains data from Twitter under a contract, and then offers various tools to analyze its database.

On July 20, the Quinn Emmanuel firm send CCDH a letter on behalf of X Corp. asserting that CCDH’s reports were “baseless,” “false or misleading,” and not supported by proper research techniques. Interestingly, the letter does not set forth a specific breach of a specific law by CCDH but does note that the firm is “investigating whether CCDH’s false and misleading claims about Twitter are actionable under Section 43(a) of the Lanham Act.” The letter suggests that X Corp. has “reason to believe that CCDH’s campaign is supported by funding by X Corp.’s commercial competitors. Quinn Emmanuel’s letter and CCDH’s response are here.

On July 31, X Corp, using White and Case in Los Angeles, sued in the CD Cal (text of X Corp complaint against CCDH here).

X Corp. alleges that CCDH breached its terms of services agreement, and also violated the Computer Fraud and Abuse Act (CFAA) by scraping data from Twitter.

I’m puzzled by the third cause, Intentional Interference with Contractual Relations, and the fourth cause, Inducing Breach of Content. The causes appear to allege that CCDH’s allegedly unauthorized use of a Brandwatch password to conduct research, interfered with Brandwatch’s contractual relations with X. Brandwatch is neither a plaintiff nor a defendant in this action. The entity that purportedly loaned its Brandwatch password to CCDH, is a John Doe defendant. If one of Brandwatch’s customers exceeded its contract with Brandwatch by allowing CCDH to use its password-restricted account, I do not immediately see allegations that make clear how that interferes with Brandwatch’s contract with X. CCDH’s behavior seems independent of whether Brandwatch did or didn’t breach its contract with X Corp by, perhaps, not being careful. Note: these are California state claims so I’ll say I’m puzzled and leave it at that.

As an aside, there is no Lanham Act 43(a) cause. The reference in the Quinn letter to 43(a) was interesting. Based on the complaint, a 43(a)(1)(B) false advertising cause is a bit of an uphill battle. Perhaps Twitter can establish itself as an entity proximately injured by CCDH’s misstatements. Are the reports advertisements? CCDH does fund-raise off its reports but the reports seem to be speech. If X Corp’s competitors did fund these reports, that would be interesting. I’m not speaking to the guts of the allegations that the statements are false.

I am reminded of a (losing) Lanham Act 43(c) (dilution) claim in which the NAACP alleged that an anti-abortion group had attributed misleading statements about the NAACP in articles. The dilution claim was dismissed as the group’s articles were treated as protected speech. Radiance v NAACP, 1415-68 (4th Cir 2015).

After remand from the 2d Circuit, SDNY grants Pepsi’s motion for summary judgment on all counts, dismissing Plaintiff’s causes regarding Pepsi’s use of MTN DEW RISE for a caffeinated energy drink, based on plaintiff’s use of RISE for cold brew coffee.

Text of RiseandShine v Pepsi, 1:21-cv-06324-LGS-SLC (SDNY August 2, 2023)

News coverage here.

Prior Second Circuit RiseandShine v Pepsi decision here.

Has Solid 21 achieved secondary meaning in term RED GOLD, a form of gold with high copper content, used for luxury watches. Whether Richemont used the term descriptively will be question for jury, summary judgment denied.


Justia link

Court Description: MEMORANDUM OPINION AND ORDER. Earlier today, the Court entered a Final Default Judgment and Permanent Injunction Order. ECF No. 43. The Court largely adopted the order proposed by Plaintiff DKH Retail Ltd. (“DKH”), with one notable exc eption: The Court declined to adopt DHK’s proposal for a full shut-down of the Defendant storefronts. The Court will now explain its reasons for doing so. For these reasons, the Court largely adopted DKH’s proposed default judgment and permanent injunction but struck the full shut-down order as overbroad. SO ORDERED. (Signed by Judge Jesse M. Furman on 6/12/23) (yv)