Two recent federal court rulings rejecting the protectability of
alleged trade dress in product configurations should make
plaintiffs think twice before pursuing such claims. In both cases,
the plaintiffs lost at summary judgment and now face the prospect
of paying defense counsel fees and the costs incurred in defending
against the claims.
The first case involves the alleged trade dress in the
"cubist" appearance of a mechanical hoist used in
commercial construction and maintenance, such as window washing. On
February 7, the Ninth Circuit Court of Appeals affirmed the lower
court decision in the case, which rejected the trade dress claim on
the basis that the product configuration was functional and, in
turn, granted a substantial award of attorneys' fees and costs
to the defendant. See Tractel, Inc. v. Wuxi Shenxi Construction
Machinery Co., Ltd., Case No. 10-17007 (9th Cir. Feb. 7,
2012).
In its decision, the appellate court noted the plaintiff's
"fundamental misunderstanding...that the presumption of
functionality can be overcome on the basis that its product is
visually distinguishable from competing products." As the
court explained, uniqueness alone is "insufficient to warrant
trade dress protection." Rather, the plaintiff must
demonstrate some "evidence of fanciful design or
arbitrariness," which was not met by the asserted elements,
such as "rectangular" components, "right
angles," and "cube shaped" housing, all mechanical
aspects of the industrial machinery at issue. The court recounted
the plaintiff's own witness testimony as having "honestly
laid out the functional nature of the design," without any
evidence "like engineering notebooks or testimony from the
designers about design or aesthetics." According to the court,
the plaintiff's hoist is, "at bottom, a utilitarian
machine with no indication that the visual appearance of its
rectangular exterior design is anything more than the result of a
simple amalgamation of functional component parts."
Based on the plaintiff's "utter failure of proof" to
support non-functionality, the appellate court affirmed the lower
court's finding that the case is "exceptional" for
purposes of awarding defense counsel fees. Those fees, largely
affirmed by the appellate court, amounted to nearly $850,000. In
affirming the award, the court noted that, just months before
summary judgment briefing, another district court had rejected
plaintiff's proposed trade dress on functionality grounds. That
decision, the Ninth Circuit found, should have put plaintiff
"on notice" that it did not have a colorable claim.
Finally, the appellate court largely affirmed the grant of over
$80,000 in defense costs, pushing the total award to defendant to
nearly $1M.
In the other recent trade dress decision, this one involving the
shape of tequila bottles, the court again found the plaintiff's
claimed trade dress unprotectable, and again granted summary
judgment to the defendant. See E&J Gallo v. Proximo
Spirits, Inc., Case No. 10-411 (JLT) (E.D. Cal. Jan. 30,
2012). At the outset of its decision, the court noted the
inconsistency in plaintiff's claimed trade dress, which focused
on the trapezoidal shape of plaintiff's tequila bottle, but
also "sporadically" included other features such as color
scheme, wooden enclosure top, and other packaging elements. The
court analyzed both (1) the "broader trade dress,"
including the bottle shape and other elements, and (2) the bottle
shape alone. In both instances, the court found that the claimed
trade dress was not protectable. The court noted that the broader
trade dress claimed by plaintiff does not actually appear in the
marketplace -- it includes, and excludes, elements from
plaintiff's products found in the market. And with respect to
the bottle, the court noted the lack of distinctiveness in
plaintiff's shape, reproducing a chart depicting a full bar of
trapezoidal-shaped tequila bottles found in the market. The court
also found a total lack of evidence to support any claim of
protectability through secondary meaning. As a result, the court
granted judgment against plaintiff on its trade dress claim, and
the defendant has now filed a request for over $75,000 in costs
from plaintiff.
If nothing else, these decisions should remind plaintiffs that
product configuration trade dress claims cannot serve as a
"catch-all" where other intellectual property protections
are unavailable. Caution must be exercised to be certain that the
required elements of a claim are met in order to avoid what can be
costly consequences.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
