Pattishall IP Blog

February 7, 2014

Utilitarian Shape of Hookah Not Subject to Copyright Protection, Even if Distinctive, Ninth Circuit Holds

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:27 pm

SIA-LRBy: Seth I. Appel, Associate

Inhale Inc.’s efforts to protect the shape of its hookah under copyright law went up in smoke, as the Ninth Circuit affirmed summary judgment in favor of Starbuzz Tobacco, Inc.  Inhale, Inc. v. Starbuzz Tobacco, Inc., 739 F.3d 446 (9th Cir. 2014).[1]

Inhale, a designer and manufacturer of smoking products, sold the hookah[2] shown below:

Hooka

It obtained a U.S. copyright registration for this product.

Inhale sued Starbuzz for copyright infringement in the U.S. District Court for the Central District of California, alleging that Starbuzz sold a similar hookah.  Inhale’s claim was based entirely on the shape of Starbuzz’s hookah.  For purposes of the lawsuit, Inhale disclaimed copyright protection to the skull-and-crossbones graphic.

The district court granted Starbuzz’s motion for summary judgment in 2012, holding that Inhale did not own a valid copyright in the shape of its hookah, notwithstanding its registration.  Last month the Ninth Circuit Court of Appeals affirmed.

The Copyright Act generally protects “original works of authorship,” including sculptural works.  But it does not protect “useful articles.”  Under the Copyright Act, a “useful article” is “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”  17 U.S.C. § 101.

Individual design elements of a useful article may be subject to copyright protection, to the extent that they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  17 U.S.C. 101.  Such protectable elements may be either physically separable or conceptually separable.

Inhale argued that the shape of its hookah was conceptually separable from its utilitarian features, but the Ninth Circuit disagreed.  It explained:  “The shape of a container is not independent of the container’s utilitarian function—to hold the contents within its shape—because the shape accomplishes the function.”  739 F.3d at 449.

The court, citing Copyright Office practice, rejected Inhale’s contention that the distinctiveness of the hookah shape affected the separability analysis.  The court observed:

Although Inhale’s water container, like a piece of modern sculpture, has a distinctive shape, “the shape of the alleged ‘artistic features’ and of the useful article are one and the same.”

739 F.3d at 449 (quoting Compendium of Copyright Office Practices II, § 505.03).

The Ninth Circuit also affirmed the district court’s award of attorneys’ fees to Starbuzz under 17 U.S.C. § 505, and further awarded Starbuzz its attorneys’ fees on appeal.

The Ninth Circuit’s decision is a blow to producers of creative works that have utilitarian functions, including other sculptural works such as bottles and vases.  In view of this decision, it may be harder for such entities to address copying by competitors – at least under copyright law.

*     *     *

Seth I. Appel is an associate attorney at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Appel’s practice focuses on litigation, transactions, and counseling with respect to trademark, trade dress, copyright and Internet law.


[1] http://scholar.google.com/scholar_case?case=621471655821174883

[2]A hookah is a device for smoking tobacco, in which the smoke passes through a water basin, which filters and cools the smoke before it is inhaled by the user.  See http://en.wikipedia.org/wiki/Hookah.

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June 5, 2013

Flea Market Operator Hit for Over $5 Million for Permitting Sale of Counterfeit Products

Filed under: Counterfeiting, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:41 pm

By Janet Marvel, Partner

The Sixth Circuit, in a case of first impression, held that a flea market operator can be contributorily liable for counterfeiting carried on by vendors renting stalls at his market.  The case illustrates that contributory infringement can be a valuable tool against counterfeiting when the primary infringers are small, numerous, anonymous or (individually) commercially insignificant.

In Coach, Inc. v. Goodfellow, 2013 WL 2364091 (6th Cir. May 31, 2013), the appellate court affirmed a jury award of over $5 million dollars in damages, and a grant of $186,666.61 in attorneys’ fees against Goodfellow, the operator of a flea market at which counterfeit goods were sold.  The district court had granted summary judgment on liability, which Goodfellow failed to contest.  While Goodfellow technically had forfeited his ability to appeal the liability ruling, the court nonetheless used its discretion to render an opinion on liability.

Goodfellow received a letter from Coach in January, 2010, from the district attorney in March, and was served with the complaint in June.  Police raided the market in April, March and June.  In response, Goodfellow distributed pamphlets telling vendors not to counterfeit, and held a voluntary meeting with some vendors, many of whom did not speak English.  He also posted signs saying “counterfeit is prohibit,” but these were meant to address counterfeit currency.  While he claimed to have ejected 16 vendors over a one year period, the court held that “this effort, if believed, is hardly compelling evidence of a reasonable response….”   Goodfellow claimed to believe other counterfeit goods were genuine, but did not check.  He did not train his employees to recognize counterfeits.  Vendors did not sign any agreements that they would not sell counterfeit goods.

The court found that Goodfellow’s remedial measures fell short.  It approved the district court’s conclusion that Goodfellow had engaged in “ostrich-like practices.”  According to the court, Goodfellow “continued to supply flea market resources to vendors with knowledge of and willful blindness toward ongoing infringing activities, thereby facilitating continued infringing activity.”

This supported the court’s finding that Goodfellow was contributorily liable.

Goodfellow equated his anti-counterfeiting efforts with those of eBay, which the court found acceptable in Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010).   There Tiffany sued eBay for contributory liability for sale of counterfeit Tiffany jewelry on the eBay website.  Perhaps the most important distinction between the flea market bricks-and-mortar contributory infringement standard and that imposed on eBay is the speed with which items are listed and the sheer number of them.  The court in Tiffany held that eBay’s general knowledge that counterfeiting was occurring on its site did not create liability.  Specific knowledge (which Goodfellow had, but eBay did not) was required.  It didn’t hurt that eBay spent millions on anti-counterfeiting and had a sophisticated program for dealing with it.

Courts impose contributory liability on those who know about and facilitate counterfeiting, as well as those who would simply “stick their heads in the sand,” refusing to recognize or police it.  Increasingly, liability applies not only to those who sell goods, but also those that offer services.  Manufacturers and licensors suffering from numerous small scale counterfeits would do well to add actions for contributory counterfeiting and trademark infringement to their arsenals.

*     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Sixth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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January 31, 2013

Hear This: Court Denies Motion for Summary Judgment in Dispute over Headphone Trademarks Between Dolby Labs and Monster, Inc.

Filed under: Licensing, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:02 pm

JAWby Jeffrey A. Wakolbinger

From a dispute involving trademarks used in connection with headphones, we are reminded how inherently difficult it is to defeat a likelihood-of-confusion claim on summary judgment.

I.   The Parties

Monster, Inc., is a consumer electronics company, which sells a variety of goods to musicians and home-audio enthusiasts in connection with the following registered trademarks:

Monster3

Dolby Laboratories specializes in audio-signal processing.  It licenses its technologies to manufacturers of audio/visual equipment and to content producers, who display Dolby’s trademarks on their products.  Many people may be familiar with the Dolby Double-D symbol from noise-reduction technologies used during the cassette-tape era.  More recently, most people have almost certainly encountered the following trademark on television broadcasts, DVD cases, home-theater equipment, and cinema screens:

Dolby

Both parties either sell headphones or license technology used for headphones.  Monster sells a variety of higher-end headphones, which retail between $100 and $299 per pair.  Dolby developed a headphone technology that purports to deliver 7.1-channel surround sound to a single pair of headphone transducers and licenses this technology to manufacturers who display Dolby’s logo on their products.  Monster and Dolby use the following trademarks, respectively:

Headsets

Dolby’s headphone mark has been registered since 2002.[1]  Monster applied to register its mark in 2008.  After Dolby opposed registration of Monster’s application, Monster filed suit in the Northern District of California, seeking a declaratory judgment that its headphone trademark did not infringe Dolby’s and that Dolby had abandoned its mark by failing to exercise sufficient control over its licensees.  Dolby counterclaimed for infringement.  Both parties moved for summary judgment. (more…)

January 11, 2013

Air Force 1 trade dress dispute held moot – Nike wins at Supreme Court, but at what cost?

Filed under: Litigation, Trade Dress, Uncategorized — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:41 am

UW low res

by Uli Widmaier

A sues B for infringing its registered mark.  B counterclaims for cancellation of A’s registration.  A executes a comprehensive covenant not to sue B in the future for using any colorable imitation of A’s mark, and moves to dismiss the lawsuit with prejudice.  B, intent on pursuing its counterclaim, opposes the motion.  The district court holds that the case is moot, and grants A’s motion.  The Court of Appeals affirms, as does the Supreme Court.  Case over.

This is the short version of Already, LLC, v. Nike, Inc., decided unanimously by the Supreme Court on January 13, 2013.  See — U.S. –, No. 11-982 (U.S. January 9, 2013).  To put some meat on the factual bones:  Nike was the plaintiff, Already was the defendant, the mark was the trade dress of Nike’s famous Air Force 1 shoe, for which Nike has a federal registration.  Already sold shoes that Nike felt infringed the Air Force 1 trade dress.  Nike sued, Already counterclaimed.  Nike then reconsidered, successfully mooting the case via a unilateral covenant not to sue.  “The covenant promised that Nike would not raise against Already or any affiliated entity any trademark or unfair competition claim based on any of Already’s existing footwear designs, or any future Already designs that constituted a “colorable imitation” of Already’s current products.”  Already, slip op. at 2.

The Supreme Court’s decision clarifies (to a degree) the burden for showing the existence or absence of an actual controversy where a plaintiff seeks to moot a defendant’s counterclaim via a unilateral covenant not to sue.  But its importance lies just as much, if not more, in the barriers the Court erects against future uses of covenants not to sue, and in the insight it provides into the Justices’ thinking about trademarks and about basic competitive fairness.

The opinion was written by Chief Justice Roberts.  Justice Kennedy wrote a concurrence, which Justices Thomas, Alito, and Sotomayor joined.

I.    The Holding:  Burdens and Burden-Shifting

Both the district court and the Second Circuit held that, once Nike had executed the covenant not to sue, the burden was on Already to show that the case had not become moot.  Slip op., Kennedy concurrence at 1.  This was “wrong.”  Id.  “Under our precedents, it was Nike’s burden to show that it could not reasonably be expected to resume its enforcement efforts against Already.”  Slip op. at 5, quoting Friends of the Earth, Inc., v. Laidlaw Environmental Services (TOC), Inc., 528 U.S. 167, 190 (2000) (quotation marks omitted).  In other words, the “voluntary cessation doctrine” articulated in Friends of the Earth applies to Nike, who in this situation was the party who voluntarily ceased the allegedly wrongful conduct (i.e. a lawsuit based on an allegedly invalid registration) .  Id. at 5-6.  This burden imposed on Nike by the doctrine is a “formidable” one.  Id. at 6. (more…)

October 15, 2012

Motley Crue Successfully Moves for Dismissal of Suit Involving Copyright in “Too Fast for Love” Album Artwork

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:17 am

by Jeffrey A. Wakolbinger

On October 9, 2012, Judge Grady, in the United States District Court for the Northern District of Illinois, dismissed a copyright-infringement action against rock band Mötley Crüe for lack of personal jurisdiction.[1]

The suit was brought by Ron Toma, who owns copyrights in certain photographs of band members Vince Neil, Nikki Sixx, Mick Mars, and Tommy Lee.  One of those photographs was a close up of singer Vince Neil’s waist area, featuring a prominent studded belt buckle (the “Belt Buckle Image”).

The photograph was taken by Michael Pinter in 1981 and used as the cover artwork for Mötley Crüe’s debut album, “Too Fast for Love.”  Toma acquired the copyright in that image in 2008 through assignment.  In September 2011, he filed a complaint in the Northern District of Illinois against Motley Crue, Inc., alleging that the defendants infringed his copyright in the Belt Buckle Image by projecting it on screen during live performances.  He later amended the complaint to add the band’s touring company, Red White & Crue, Inc, as a defendant.  The only specific example of alleged infringement in the complaint is a link to a YouTube video showing live footage from a concert in Las Vegas, during which the Belt Buckle Image was displayed on a screen while the band performed the title track of the album.  Defendants moved to dismiss the complaint for lack of personal jurisdiction.

Toma asserted the defendants were subject to general and specific jurisdiction in Illinois.  Relying on a declaration submitted by bass player, Nikki Sixx, Defendants asserted that they had no physical or legal presence in Illinois.  Toma argued otherwise, citing the band’s performances in Illinois, relationships with Illinois vendors, album and merchandise sales in Illinois, and activities related to a settlement agreement resolving a prior lawsuit with Toma in Illinois.  (This was actually Toma’s third suit against the band, notwithstanding that he apparently was a fan—his declaration stated that he attended Mötley Crüe concerts in Illinois in 1997, 1998, 2000, 2005, and 2006.)  The court found these contacts to be “extensive in the aggregate” but not “continuous and systematic” as required to meet “the demanding standard required to subject the defendants to general jurisdiction in Illinois.” (more…)

October 10, 2012

Pattishall Client Prevails On Counterfeiting and Infringement Claims Over Marks for Vehicle Braking Systems; Court Awards Over $13 Million in Damages, Attorneys’ Fees, Costs and Sanctions

Pattishall client Robert Bosch LLC (“Bosch”) was awarded judgment of over $13 Million by default on its claims of counterfeiting, infringement, unfair competition, and false advertising after nearly three years of litigation and “extensive and cumbersome discovery” in Robert Bosch LLC v. A.B.S. Power Brake, Inc., Case No. 09-14468 (E.D. Mich. August 2, 2012).  Pattishall attorneys Belinda Scrimenti, Bradley Cohn, Thad Chaloemtiarana, and Jeffrey Wakolbinger represented Bosch in this litigation in the United States District Court for the Eastern District of Michigan before the Honorable Patrick J. Duggan.

Specifically, Judge Duggan:

  • awarded Bosch $12,875,997.96; consisting of $3,931,220 in defendant’s profits (which the court trebled to $11,793,660), $993,309.00 in reasonable attorneys’ fees, and $89,028.96 in costs;
  • awarded Bosch $142,082.52 as a judgment for previously entered sanctions;
  • enjoined defendants from future use of Bosch’s HYDRO-BOOST and HYDRO-MAX marks in connection with hydraulic vehicle braking systems or remanufactured, reconditioned or rebuilt Bosch products; and
  • ordered the defendants to destroy all infringing products and promotional materials.

The Court’s opinion highlighted the difficulty of assessing actual damages given the actions of the defendants in discovery and found the Pattishall team’s method for estimating damages to be reasonable.  Relying on survey evidence of law firms nationwide, Judge Duggan also found Pattishall’s Chicago-based attorneys’ fees request reasonable and consistent with rates of comparably-situated firms in Detroit with large intellectual property practices under the traditional lodestar analysis.

The defendants’ alleged violations covered a range of activities, including manufacturing of counterfeit products sold under Bosch’s trademarks, use of identical and similar infringing marks on generic products, sale of refurbished Bosch products that failed to meet genuine Bosch specifications, and false advertising of refurbished hydraulic brake products as new, genuine Bosch products.

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September 27, 2012

Publication of Noelia’s Secret Wedding Photos Not Fair Use, Ninth Circuit Finds

Filed under: Copyright, First Amendment, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:10 pm

By: Seth I. Appel

The Ninth Circuit Court of Appeals held that a gossip magazine’s publication of photographs of a secret celebrity wedding did not constitute fair use under the Copyright Act.  Monge v. Maya Magazines, Inc., 688 F.3d 1164 (9th Cir. Aug. 14, 2012).

Noelia Lorenzo Monge, the Puerto Rican pop singer and model known to the world as Noelia, married her manager, Jorge Reynoso, in January 2007.  The couple attempted to keep their marriage a secret to maintain Noelia’s image as a single sex symbol.  Only the minister and two chapel employees witnessed the wedding ceremony.  For two years Noelia and Reynoso succeeded in keeping their marriage a secret, even from their families.

In the summer of 2008, Oscar Viqueira, a paparazzo who worked as a driver and bodyguard for Noelia and Reynoso, discovered a memory chip containing photographs of the wedding night.  Viqueira sold the photos to Maya Magazines for $1,500, without Noelia’s or Reynoso’s permission.

Maya published three photos of the wedding ceremony, and three additional photos from the wedding night, in Issue 633 of TVNotas Magazine.  Until then, the photos had been unpublished.  The TVNotas cover headline stated:  “The Secret Marriage of Noelia and Jorge Reynoso in Las Vegas.”  The photo spread inside referred to the “first and exclusive photos of the secret wedding.”  Issue 633 was the first time the public learned of the wedding – including Reynoso’s mother, who berated her son for getting married without telling her.

Noelia and Reynoso promptly registered the copyrights in five of the photos and then brought suit against Maya for copyright infringement.  The Central District of California granted summary judgment in favor Maya based on fair use.  2010 WL 3835053 (Sept. 30, 2010).  The Ninth Circuit reversed.

Fair use is an affirmative defense to copyright infringement.  The fair use doctrine, the Ninth Circuit explained, presumes that unauthorized copying has occurred but protects such copying under certain circumstances.  Section 107 of the Copyright Act enumerates four factors for courts to consider in evaluating a fair use defense:

(1)       the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2)       the nature of the copyrighted work;

(3)       the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4)       the effect of the use upon the potential market for or value of the copyrighted work. (more…)

September 10, 2012

When Does the First Amendment Trump Trademark Law? 11th Circuit Adopts Rogers v. Grimaldi Test

Filed under: Constitution, First Amendment, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:08 pm

By Janet Marvel, Partner

In 1989, the Second Circuit adopted a balancing test to weigh the value of an artist’s First Amendment rights against the value of trademarks depicted in the artist’s work.  Rogers v. Grimaldi, 875 F.2d 994 (9th Cir. 1989).  In June of this year, the 11th Circuit adopted essentially the same test in University of Alabama Board of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. June 11, 2012).

Some Background

In Rogers v. Grimaldi, 875 F.2d 994 (9th Cir. 1989), Ginger Rogers sued over an Italian film titled “Ginger and Fred,” which was about two cabaret performers who imitated Ginger Rogers and Fred Astaire.  Ms. Rogers alleged violations of her rights under the federal trademark statute (the Lanham Act) and of her right of publicity under state law.  The district court dismissed the claim and the Second Circuit affirmed.  The court stated that enjoining the distribution of artistic works does not violate the First Amendment where the public interest in avoiding consumer confusion outweighs the public interest in free expression.  For movie titles, the court stated that unless the title had no artistic relevance to the underlying work or was expressly misleading, no injunction should issue.  Other courts have adopted similar tests, including the Sixth Circuit, in ETW v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003), where the court permitted defendant’s use of Tiger Woods’ name on the inside flap of an envelope containing an art print featuring his image, and in the narrative description for the print.  See also ESS Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (scene in a video game featuring trademark of plaintiff’s entertainment club did not infringe plaintiff’s trademark rights).

The Crimson and White

In University of Alabama Board of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. June 11, 2012), the University sued an artist who, for over thirty years, had painted and sold images of plays in University of Alabama football games.  The parties had entered into various licensing agreements, apparently licensing some University of Alabama logos, among other things.  In 2002, the University demanded that the artist take a license for all of his works because they depicted University uniforms in the colors crimson and white, which the University stated were its trademarks.  The artist declined, arguing that he did not need a license to depict University trademarks within his images.

The court separately considered the parties’ respective rights in calendars, and large-size paintings and prints, and “mundane products,” comprising such things as “‘mini-prints,” mugs, cups, flags, and towels. (more…)

August 8, 2012

What Do Kim Kardashian And Your Random Facebook Friend Have in Common? A Right of Publicity That May Be Worth Money

Filed under: Internet, Litigation, Right of Publicity, Social Media — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:44 pm

By Meg C. Lenahan, Summer Associate

Use Facebook? If so, did you know that your right of publicity has been at the center of litigation for over a year?

In March 2011, a class action suit, Fraley v. Facebook, Inc., was filed on behalf of users featured in Facebook’s Sponsored Stories.[1] Sponsored Stories create customized paid advertisements, starring Facebook’s own users based their activity on the site. For example, if your friend Bucky “likes” Rosetta Stone, you might see his profile picture underneath the Rosetta Stone logo on the right side of the page—the portion of the site where advertisements appear.  See below.[2]

Mark Zuckerberg, Facebook founder and CEO, described the feature—which originally gave users a choice to opt out (rather than opt in)—as a “trusted referral” and “the Holy Grail of advertising.”[3] In their complaint, the named plaintiffs in Fraley instead described it as a violation of their publicity rights.[4]

Governed by state law, the right of publicity is an intellectual property right that protects against the unauthorized use of an individual’s identity for commercial purposes and grants that individual the exclusive right to control and profit from commercial use of his or her identity.[5] This means, for example, that Olympic gold medalist Ryan Lochte has the exclusive right to control and profit from any sales of custom-made American flag grills[6] using his image or that Kim Kardashian has the exclusive right to control and profit from use of her name to sell perfume. Even your friend Bucky would have an exclusive right to control and profit from use of his identity in connection with Rosetta Stone advertisements. That is, of course, unless Bucky licensed or transferred his right of publicity to someone else—someone like Facebook. (more…)

June 15, 2012

Recent Cases Show That Utilitarian Functionality Is A Serious – And Common – Impediment To Trade Dress Protection

Filed under: Litigation, Trade Dress — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:14 pm

By Janet Marvel, Trademark Attorney

A product shape or package must be non-functional to qualify for trade dress protection.  Yet a spate of recent cases reveals many plaintiffs who try to expand or lengthen patent protection by alleging that their product features designate source.  Below is a description of recent trade dress protection attempts along with a short refresher on the reasons for the functionality doctrine and how to deal with it.

A mark is functional if it is “essential to the use or purpose of an article or affects the cost or quality of an article.”  TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001).  If a mark fits this test, it is functional, and not protectable.  If it does not, courts may still consider whether there is a competitive necessity to use the product feature.  In other words, courts may consider whether alternative product designs are available, and whether the cost or time involved in using an alternative design makes it impractical.  Id. at 33. See also, In re Becton, Dickinson and Co., 675 F.3d 1368, 1376 (Fed. Cir. 2012).

The functionality bar to trade dress protection exists to prohibit would-be trademark owners from protecting functional features in perpetuity, rather than for the limited time permitted by patent law.  For this reason, the existence of a patent covering a feature claimed to constitute trade dress is the kiss of death for trademark protection.

Four factors have developed to help determine whether an alleged mark is functional.  They vary by circuit, but the Federal Circuit’s list is instructive.  The Federal Circuit and the United States Patent and Trademark Office consider the following in determining functionality:

(1)       the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;

(2)       advertising by the applicant that touts the utilitarian advantages of the design;

(3)       facts pertaining to the availability of alternative designs, and

(4)       facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982).  See also, Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 1275, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002).

Most recent trade dress claims have foundered on these factors.  In particular, plaintiffs and trademark applicants have tried to argue around the existence of prior patents – to no avail.  See Seirus Innovative Accessories, Inc. v. Gordini U.S.A., Inc., 2012 WL 368044 (S.D. Cal. Feb. 3, 2012) (court found patent invalid but held that patent nonetheless supported finding of functionality); Great Neck Saw Manufacturers, Inc. v. Star Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D. Wash. 2010), aff’d 432 Fed. Appx. 963 (Fed. Cir. 2011) (utility knife shape found functional based, in part, on prior utility patent); In re Charles N. Van Valkenburgh, 97 USPQ2d 1757 (TTAB 2011) (refusing registration of shape of motorcycle stand: “[W]e look to the features disclosed in the patent which have been incorporated into the present product designs and the teachings of the patent with respect to these features”).

It is irrelevant whether a patent is expired or current.  See Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723 (7th Cir. 2011) (factors for evaluating functionality include the “existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item’s design element”).  Third party patents can block trademark protection.  Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010) (third party utility patents are “excellent cheat sheets” for determining functionality).  While parties have argued that only patent claims should bar trademark protection, courts have not been so constrained.  See In re Becton, Dickinson and Co., 675 F.3d 1368 (Fed. Cir. 2012) (rejecting applicant’s arguments that only patent claims can evidence functionality).  A patent application, even if rejected or abandoned, is evidence of functionality.  Ogosport LLC. v. Maranda Enterprises LLC, 2012 WL 683111 (E.D. Wis. March 2, 2012) (citing plaintiff’s abandoned patent applications but relying on third party patents to support functionality holding); Seirus Innovative Accessories, Inc., 2012 WL 368044 (same).

Similarly, a party’s own advertising is often construed as an admission of functionality.  See Secalt S.A. v. Wuxi Shenxi Construction Machinery Co., Ltd., 668 F.3d 677 (9th Cir. 2012) (plaintiff’s advertisements regarding alleged trade dress in square shape of scaffold hoist stated that the product was square so it would not roll off tables; alleged trade dress found functional); Talking Rain Beverage Co., Inc. v. South Beach Beverage Co., 349 F.3d 601, 604 (9th Cir. 2003) (plaintiff’s advertising encouraging consumers to “Get a Grip.” on water bottle found to weigh in favor of functionality); Poly-Am., L.P. v. Stego Indus., L.L.C., No. 3:08-CV-2224-G, 2011 WL 3206687, at *7 (N.D. Tex. July 27, 2011) (advertising utilitarian benefits of yellow trade dress for vapor barrier nullifies the presumption of validity bestowed on the alleged mark by registration); Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912 (TTAB 2011) (bridge culvert shape advertised as superior for shedding water held functional).

Moreover, while many plaintiffs have tried to argue that there are other ways to make products competitive to theirs, courts have rejected this “alternative designs test.”  See Specialized Seating, Inc. v. Greenwich Industries, L.P., 616 F.3d 722 (7th Cir. 2010) (existence of many alternative designs for folding chair did not mean that the plaintiff’s design was non-functional.  It was not “the only way to do things” but “it represent[ed] one of many solutions to a problem.”)

Many of the recent functionality cases arise from facts that seem to show that plaintiffs have tried to continue protection beyond a patent period.  It is understandable that a party with a successful and unique product would view post-patent copyists as interlopers.  The better way to differentiate against such competitors upon expiration of a patent may be to consider trade dress protection at the time that a patentable product is developed.  If a source-differentiating feature can be added to the product upon its introduction, that feature will have time to develop secondary meaning during the patent period.  When the patent expires, the source identifier will serve to identify its associated product as the original, and likely the market leader.

 *     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

For a printer-friendly version, click here.

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