On April 10, 2019, a Texas federal judge granted Sparrow Barns & Events an emergency temporary restraining order and preliminary injunction in a trade dress and copyright infringement case, preventing defendant Ruth Farm from advertising its venue rental business on social media and the internet. Sparrow Barns & Events, LLC v. Ruth Farm Inc., No. 4:19-CV-00067 (E. D. Tex. Apr. 10, 2019) (2019 WL 1560442).)

Sparrow Barns owns a custom-designed barn called the “White Sparrow,” that is used primarily for weddings and other special events. On two separate occasions, the owners of Ruth Farm visited the Sparrow Barns’ venue. During the first visit, the owners of Ruth Farm had booked a private tour with their daughter for her “upcoming wedding,” where the couple took photographs and took hand-written notes while on the tour. The second visit was during a Sparrow Barn open house, where Ruth Farm’s owners had asked detailed questions about the facility’s construction, and had entered a closed-off area of the venue before being asked to leave. Shortly after these two visits, Sparrow Barns learned that Ruth Farm constructed their own wedding venue called the “Nest”, which Sparrow Barns had found to be quite similar to its own venue. After several attempts at a cease and desist and a failed negotiation, Sparrow Barns filed suit against Ruth Farm for trade dress and copyright infringement. Sparrow Barns alleged there were many similarities between the two venues, including: “internal and external shape, decorative columns, vaulted and beamed ceilings, candelabra chandeliers, picturesque haylofts, window arrangements, wooden flooring, large entrance doors, and rustic whitewash paint.” Sparrow Barns further alleged that after the construction of the Nest, customer confusion grew particularly on social media, where users began mistaking the White Sparrow for the Nest in their comments on and tags of the venues.

The above emergency motion on February 18, 2019. In its motion, Sparrow Barns requested the court to:

(a)… [enjoin] Ruth Farm from] from selling, offering for sale, distributing or advertising in commerce its services displaying the trade dress owned by [Sparrow Barns] and (b) [order Ruth Farm to] remove from commerce any advertisement or offer to sale in commerce its services displaying the trade dress owned by [Sparrow Barns] on its website, social media, and accounts with third parties.

In deciding whether to grant the injunction, the court first had to decide whether Sparrow had a substantial likelihood of success on the merits for its trade dress claim. To succeed on a claim for trade dress infringement, a plaintiff must show that the protected trade dress was (1) inherently distinctive, (2) non-functional, and (3) that the defendant’s trade dress will likely lead to customer confusion. The court found for Sparrow on the likelihood of success on the merits. First, the court found the trade dress was inherently distinctive because its “intrinsic nature serves to identify its source as the White Sparrow.” Sparrow Barn’s description of the venue is that it

features a large, open floor plan with exposed, decorative, wrapped and framed, vaulted wooden beams placed laterally across the wooden cathedral ceiling; exposed, decorative, wrapped and framed wooden columns placed vertically along the wooden side walls; tiered exposed bulb candelabra chandeliers; rustic whitewashing of the wooden interior features; and a stylistic, stacked window display along the back wall.

When Ruth Farm had submitted pictures of other white barns to refute the allegation, the court concluded that there were similarities in only one or two of the features between the White Sparrow and the other barns, whereas between White Sparrow and the Nest shared many similarities. As a result, the court found White Sparrow to be inherently distinctive.

Second, the court found that the above features were not functional because none of those features enable the White Sparrow to operate as a wedding venue. “For example, the White Sparrow could host weddings and events with glass chandeliers, laminate flooring, and a different window arrangement.”

Lastly, the court found that there was more than a mere possibility of confusion: that there was evidence of actual customer confusion. The court considered a number of factors in its consideration, including the similarities between the venues, the previous evidence that of Ruth Farm’s intent, close proximity in the greater Dallas area, and the advertising medium utilized by both companies being primarily social media and the internet.

Once the court found the likely success on the merits, the court further found that Sparrow would suffer irreparable injury, the balance of hardships was in Sparrow’s favor, and the public interest would not be dis-served by an injunction. Therefore, the court granted the permanent injunction.

This case is still in the early stages, but serves as a reminder that visual appearances are protected when they can cause confusion in the ordinary customer’s mind, and social media can provide important evidence.