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Just in time for Valentine’s Day, the owners of Los Angeles’ Regal Baking Co. learned they can roll out cookies to their hearts’ content without worrying that a federal court could rule red sprinkles or lacy white icing amount to design piracy. On Jan. 31, U.S. District Judge Consuelo Marshall found that Monaco Baking Co., Regal’s Santa Fe Springs, Calif.-based rival, which sued in August, does not produce inherently distinctive holiday cookies. That means that Monaco, which accused Regal of stealing away its chief designer in a plot to infringe on its cookies’ unique trade dress, can’t enjoin Regal’s cookie sales, as it had tried to do in Seven Lives Inc. dba Monaco Baking Co. v. Regal Baking Co., CV00-08851. In a burst of admitted hyperbole, Regal attorney William Levin, of Laguna Beach, Calif.’s Levin & Hawes, said in a press release: “Because we prevailed, grandmothers, pastry chefs and even competitive baking companies can make cookies in the shape of Valentine’s Day hearts, St. Patrick’s Day four-leaf clovers, or Christmas trees without fear of reprisal.” During the last holiday season, Regal couldn’t so much as market a shortbread shamrock for Hanukkah without court approval under a broad temporary restraining order that Monaco had won. According to a stipulation to the TRO, Regal could sell new non-infringing designs as agreed upon by the warring bakeries. Under a memorable subsection in the stipulation, it was up to the judge to come up with acceptable designs in the event of an impasse. The subsection was never invoked, says Monaco counsel Mona Hanna of Encino’s Michaelman & Robinson, “but we came close a couple of times.” Such cookie-by-cookie approval by the bench was “impractical,” Judge Marshall stated in her 12-page denial of the preliminary injunction. The judge dismissed supporting declarations from, among others, a buyer at the upscale Hearthsong Catalog, whose flagship store is in Berkeley, Calif. The buyer, Jean Byington, supported Monaco’s argument that, for wholesale buyers who put their names on Monaco’s cookies for resale, Monaco’s products had attained secondary meaning under trademark law because “the quality and color of the ‘flow icing’ as well as the use of color and fine detail created by the piped icing” were readily identifiable as the work of Monaco. The judge didn’t buy it. The colors on the Monaco cookies, the judge noted, were either an attempt to imitate the real thing, as in orange for pumpkins, or are traditional, as in red and green for Christmas. And the shapes were just as generic, she added. Among the loose ends the judge tied up was a denial of Monaco’s request for an order to show cause regarding contempt sparked by Regal’s sale of Gingerbread chalets to an Internet retailer while the TRO was pending. Left unresolved was whether Regal had stolen from Monaco the use of a cardboard “inner house” to support the walls of its gingerbread structures. Monaco called it a trade secret but the court noted that Regal has submitted evidence that others use inner houses for stabilization. As to the overall suit, Monaco’s attorneys disagree that Monaco’s case has crumbled. “Trade dress is just one of our causes of action, and we are proceeding with five others,” says Hanna. “We’ve always believed unfair competition is a stronger argument for us.” Meanwhile, Regal is pursuing a $5 million countersuit for damages and, according to Levin, is considering amending in a claim for “wrongful TRO,” first articulated by a San Diego judge in 1998. Qualcomm Inc. v. Motorola Inc. 46 USPQ 2d 1633. The competing bakeries agreed to meet Feb. 15 with a mediator, retired U.S. District Judge John Davies. While he may be best known as a former Olympic swimmer and as the judge who sentenced the police officers who beat Rodney King, Davies also has a background in intellectual property, says Hanna. “It’s not experience with cookies, per se,” she admits, “but that’s a difficult niche.”

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