## Facts

- Nova Wines, Inc. marketed “Marilyn Wines,” selling wine with Marilyn Monroe branding since the late 1980s and claiming longstanding consumer association between Monroe-themed wine packaging and Nova.
- Tom Kelly Studios, Inc. (TKS) owned rights to nude Marilyn Monroe photographs known as the “Red Velvet Collection,” and Pacific Licensing acted as TKS’s licensing agent.
- Nova previously held a limited license from TKS to use Red Velvet Collection images on wine bottles and sold a related “Velvet Collection” line.
- After Nova’s license expired, Pacific Licensing licensed the same Red Velvet Collection images to Adler Fels Winery LLC for a new wine line called “Red Velvet Collection.”
- Nova alleged Adler Fels’s bottle labels were substantially similar to Nova’s earlier Velvet Collection packaging, including prominent use of Red Velvet images, similar placement and presentation, and comparable overlay/design elements covering parts of the photographs.
- Nova sued asserting, among other theories, federal and state trade dress infringement and unfair competition, and moved for a preliminary injunction to stop Adler Fels from marketing the challenged packaging during the case.

## Issues

1. Whether Nova demonstrated a likelihood of success on its trade dress claims by showing a protectable, nonfunctional, distinctive trade dress in its Velvet Collection packaging and a likelihood of consumer confusion from Adler Fels’s packaging.
2. Whether Nova satisfied the Ninth Circuit requirements for preliminary injunctive relief, including irreparable harm, balance of hardships, and the public interest.

## Decision

- The court granted Nova’s motion for a preliminary injunction.
- The court found Nova made a strong showing of likely success on trade dress infringement, principally because the overall commercial impression of the competing wine packaging was highly similar and likely to confuse consumers as to source, sponsorship, or affiliation.
- Upon finding likely confusion, the court applied the presumption of irreparable harm recognized in Ninth Circuit trademark and trade dress cases.
- The balance of hardships favored Nova given the risk to Nova’s goodwill and the difficulty of quantifying confusion-related harm, while Adler Fels’s disruption was less weighty at the early stage of its product introduction.
- The public interest favored preventing consumer confusion in the marketplace.

## Legal Principles

- A preliminary injunction is a provisional remedy intended to preserve the status quo and prevent irreparable loss before final adjudication.
- In the Ninth Circuit, a plaintiff may obtain preliminary relief by showing probable success on the merits and possible irreparable harm, or serious questions on the merits with hardships tipping sharply in its favor (with consideration of the public interest).
- Trade dress infringement requires proof that the asserted trade dress is nonfunctional, distinctive (inherently or through secondary meaning), and likely to cause consumer confusion.
- Likelihood of confusion is evaluated based on the overall impression of the competing presentations rather than isolated, side-by-side parsing of minor differences.
- In trademark and trade dress cases, a showing of likely consumer confusion generally supports a presumption of irreparable harm.

## Conclusion

The court enjoined Adler Fels from marketing wine using the challenged “Red Velvet Collection” packaging because Nova showed a protectable trade dress in its Monroe-themed bottle presentation and a likelihood of consumer confusion, which supported presumed irreparable harm and justified preliminary relief pending a merits determination.


Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965 (N.D. Cal. 2006)