Case No.: 11-CV-01846-LHKORDER REGARDING SAMSUNG’S MOTION FOR SUMMARY JUDGMENT
U n i t e d S t a t e s D i s t r i c t C o u r t
F o r t h e N o r t h e r n D i s t r i c t o f C a l i f o r n i a
supported motion for summary judgment “may not rest upon the mere allegations or denials of [that] party’s pleading, but . . . must set forth specific facts showing that there is a genuine issue fortrial.”
Fed. R. Civ. P. 56(e);
see also Liberty Lobby
, 477 U.S. at 250. The opposing party neednot show the issue will be resolved conclusively in its favor.
See Liberty Lobby
, 477 U.S. at 248–49. All that is necessary is submission of sufficient evidence to create a material factual dispute,thereby requiring a jury or judge to resolve the parties’ differing versions at trial.
“It is well established that trade dress can be protected under federal law. The design orpackaging of a product may acquire a distinctiveness which serves to identify the product with itsmanufacturer or source.”
TrafFix Devices, Inc. v. Marketing Displays
, Inc., 532 U.S. 23, 28(2001). To succeed on its trade dress claims, Apple must satisfy three elements: nonfunctionality,distinctiveness, and likelihood of confusion.
Disc Golf Ass’n, Inc. v. Champion Discs, Inc.
,158 F.3d 1002, 1005 (9th Cir. 1998). On its motion for summary judgment, Samsung only arguesthat Apple’s product designs are unprotectable because they are functional. Functionality is afactual question.
Clicks Billiards, Inc. v. Sixshooters, Inc
., 251 F.3d 1252, 1258 (9th Cir. 2001)(citation omitted).The burden of proof of functionality on trade dress claims depends upon whether the tradedress is registered or not. A party asserting protection for unregistered marks “has the burden of proving that the matter sought to be protected is not functional.” 15 U.S.C. §1125(a)(3) (2006). Incontrast, a registered mark enjoys the presumption of validity. However, this presumption can berebutted through “law, undisputed facts, or a combination thereof that the mark is invalid” suchthat registration alone does not protect the trademark holder against summary judgment.
Tie Tech, Inc. v. Kinedyne Corp.
, 296 F.3d 778, 783 (9th Cir. 2002). Apple continues to assert “[t]he iPhonetrade dress (based on the trade dress Registration No. 3,470,983, the unregistered combinationiPhone trade dress, and the unregistered iPhone 3G trade dress)
” as well as “[t]he iPad trade dress(based on unregistered iPad/iPad 2 trade dress).”
ECF No. 902. Apple clarified at the hearing
Although it is unclear whether Apple continues to assert the iPhone 3G as an independent tradedress claim, because Samsung offers arguments challenging the iPhone 3G trade dress, the Courtwill address this issue. MSJ at 6.
Case5:11-cv-01846-LHK Document1158 Filed06/30/12 Page3 of 42