## Facts

- Yankee Candle Co. marketed scented candles in a “Housewarmer” line using coordinated labels, a “Vertical Design System” for retail shelving/display, selected candle sizes/styles, and a catalog layout.
- Yankee claimed a “combination” trade dress (labels + sizes/styles + shelving/display system + catalog layout) and also claimed protectable trade dress in the Housewarmer labels alone.
- Yankee asserted copyright in the labels for nine candle fragrances featuring largely realistic imagery tied to the scents (e.g., fruits and flowers).
- Bridgewater Candle Co., a competitor, sold scented candles that Yankee alleged copied Yankee’s labels and overall product presentation.
- Yankee sued for federal copyright infringement, federal trade dress infringement under the Lanham Act, and Massachusetts-law claims including deceptive practices under Mass. Gen. Laws ch. 93A and tortious interference.
- The district court granted summary judgment for Bridgewater on the federal claims and on the ch. 93A claim, and limited IP-related evidence as irrelevant to the remaining tortious-interference claim; Yankee then voluntarily dismissed the remaining tort claim to obtain appellate review.

## Issues

1. Whether Bridgewater’s candle labels were substantially similar enough to infringe Yankee’s copyrighted labels where protectable expression was limited by merger and scènes à faire.
2. Whether Yankee’s asserted trade dress (combination and labels alone) was inherently distinctive or, if treated as product design/configuration, required proof of secondary meaning.
3. Whether Yankee’s evidence was sufficient to permit a reasonable jury to find secondary meaning for the asserted trade dress.
4. Whether the district court abused its discretion by restricting IP-related evidence for the state tort claim and erred in granting summary judgment on the ch. 93A claim for failure to show conduct occurring “primarily and substantially” in Massachusetts.

## Decision

- The First Circuit affirmed the judgment in full.
- The court held that Yankee’s label copyrights were “thin,” requiring a “nearly identical” showing of copying; visual comparison showed the labels were not nearly identical, so summary judgment for Bridgewater was proper.
- The court treated Yankee’s asserted trade dress—both the combination and the labels alone—as product design/configuration under *Wal-Mart Stores, Inc. v. Samara Bros., Inc.*, making it incapable of inherent distinctiveness and protectable only upon proof of secondary meaning.
- The court agreed that Yankee’s secondary-meaning evidence was insufficient to show consumers associated the asserted overall look with Yankee as the source.
- The court found no abuse of discretion in limiting evidence after the federal IP claims were resolved and affirmed summary judgment on the ch. 93A claim because the challenged conduct was not shown to be “primarily and substantially” in Massachusetts.

## Legal Principles

- When copyrighted works largely depict realistic, commonplace subject matter with limited expressive choices, merger and scènes à faire can narrow protectable expression, yielding “thin” copyright.
- For thin-copyright works, infringement requires “nearly identical” copying; lesser degrees of similarity are insufficient as a matter of law.
- Trade dress characterized as product design/configuration is not inherently distinctive and is protectable only upon proof of secondary meaning.
- Secondary meaning requires evidence that consumers perceive the claimed design features as identifying a single source, not merely recognizing the product category or aesthetic appeal.
- A court may limit evidence as irrelevant to remaining claims after dismissal or adverse resolution of related theories.
- Liability under Mass. Gen. Laws ch. 93A requires actionable conduct occurring “primarily and substantially” within Massachusetts.

## Conclusion

The First Circuit affirmed summary judgment for Bridgewater, holding that Yankee’s realistic label designs received only thin copyright protection not met by Bridgewater’s non-identical labels, and that Yankee’s asserted trade dress was product design requiring secondary meaning that the record did not support; the court also upheld evidentiary limits and rejection of the ch. 93A claim for lack of primarily Massachusetts-based misconduct.


Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25 (1st Cir. 2001)