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May 08, 2015 Practice Points

Revelers, Rejoice: Haydel's "Mardi Gras Bead Dog" Unprotectable

Is nothing about New Orleans Mardi Gras sacred?

By Lesli D. Harris

Is nothing about New Orleans Mardi Gras sacred? According to the Fifth Circuit's decision in Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., concerning the New Orleans tradition of the Mardi Gras bead dog, the answer is "No!"

What's a bead dog? As the Fifth Circuit recounted, during Mardi Gras, parade krewes throw beads to paradegoers. For generations, New Orleanians have taken broken Mardi Gras beads and twisted them into a "bead dog" (much like a balloon animal).

In 2008, Haydel's Bakery—baker of the delectable Cajun Kringle®—commissioned an artist to design a giant bead dog that it placed outside of the bakery. Haydel's named it "Mardi Gras Bead Dog." In 2009, the USPTO issued two trademarks to Haydel's—the word mark "MARDI GRAS BEAD DOG" and a design mark for its shape. In September 2012, Haydel's registered a copyright in the design and sold Mardi Gras Bead Dog items, such as miniature plastic sculptures and jewelry. The bakery also licensed the design to the New Orleans SPCA, which then auctioned off giant customized bead dogs for its Paws On Parade fundraiser (think, Chicago's Cows on Parade).

In May 2012, Nola Spice Designs began selling bead dog jewelry made by twisting beads and wires following the traditional method. In October 2012, Haydel's demanded Nola Spice cease and desist sales, claiming that its jewelry infringed Haydel's copyright and trademarks. Rather than cease and desist its bead twisting, Nola Spice sued Haydel's in the Eastern District of Louisiana seeking (1) a declaratory judgment of non-infringement; (2) cancellation of Haydel's marks; and (3) damages under Louisiana's unfair trade practices law. Haydel's counterclaimed for not only trademark infringement, but also trademark dilution, unfair competition, and copyright infringement.

In cross motions for summary judgment, the district court held that Haydel's trademarks for "MARDI GRAS BEAD DOG" and the bead dog design were, at most, descriptive and ordered cancellation. The district court also dismissed the copyright infringement claim.

Affirming the district court in a 38-page opinion, the Fifth Circuit recognized that a traditional bead dog can only be made from Mardi Gras beads and thus, "MARDI GRAS BEAD DOG" is descriptive. As for the design mark, the Fifth Circuit applied the Seabrook Foods test and concluded that because of the similarity between traditional bead dogs and Haydel's design mark, no reasonable juror could find Haydel's design was distinctive. And since Haydel's could not establish secondary meaning for its marks (personally, I associate the bead dog design with New Orleans SPCA, not Haydel's), the Fifth Circuit found that Haydel's had no protectable trademarks and affirmed cancelation.

Shockingly, the Fifth Circuit also sustained dismissal of Haydel's copyright infringement claim. The Fifth Circuit dissected Haydel's bead dog design, opining that it consisted primarily of unprotectable design elements that mimicked a traditional bead dog. It noted that the beaded collar on Haydel's design possibly could be copyrighted, but that the collar's "minimal originality counsels against a finding of substantial similarity" with the NOLA Spice design.

Keywords: intellectual property, litigation, NOLA, New Orleans, Mardi Gras, bead dog, Mardi Gras Bead Dog, copyright, trademark, infringement

Lesli D. Harris is with Stone Pigman in New Orleans, Louisiana.

Copyright © 2015, American Bar Association. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or downloaded or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. The views expressed in this article are those of the author(s) and do not necessarily reflect the positions or policies of the American Bar Association, the Section of Litigation, this committee, or the employer(s) of the author(s).

Lesli D. Harris – May 8, 2015