I.P. Lund Trading ApS v. Kohler Co.

BOUDIN, Circuit Judge,

concurring.

Ordinarily the creator of something new— a useful device, a pharmaceutical drug, an ornament, a painting — owns any such object that he or she makes but can prevent its replication by others only pursuant to the patent and copyright laws. A central limitation on patent and copyright protection, stemming from the Constitution itself, is that it is limited in time. See U.S. Const. art. I, § 8, cl. 8; 35 U.S.C. §§ 101 , 154 (20-year utility patent); 35 U.S.C. §§ 171 , 173 (14-year design patent); 17 U.S.C. §§ 302-304 (various limited-time copyrights). After the period of protection expires, copying by others is allowed. This case presents, in addition to other problems, the threat that the permanent injunction sought may prevent the Lund faucet from being duplicated forever.

In substance, Lund created a faucet configuration called VOLA that involves a downward curving water pipe protruding from a wall (rather than the sink itself) and a similarly protruding control rod to regulate both water flow and temperature (instead of the usual pair of spigots). The concept of a wall-based mechanism, and the size and shape and relative proportions of the pipe and control rod, are pleasing to customers. The resulting VOLA faucet configuration is successful and recognized in the trade.

Lund has now obtained a preliminary injunction against Kohler forbidding Kohler from selling Kohler’s own faucet system that embodies the same concept and a similar but not identically shaped pipe and control rod. What Lund regards as the scope of its “monopoly” is not entirely clear: all we know is that this Kohler faucet system has been enjoined. What will be assumed, or else the legal problems would be even greater than they are, is that the concept of a water pipe and control rod protruding from a wall is not sought to be prohibited but only one whose •shape and size are similar to VOLA. 1 Even so, a serious problem exists because the assumed protection (if the preliminary injunction matures into a permanent one) could be perpetual.

Lund says that this perpetual protection of its design is permitted because its source is not a design patent 2 — Lund has not sought one — but rather the trademark laws. Trademarks are ordinarily conceived as names (ie.g., Kodak) or marks (the AT & T striped *52 circle logo), but trademarks also include so-called “trade dress,” see 15 U.S.C. § 1127 ; and this in turn includes the ornamental design of an article where the design performs the traditional “source signaling” function of trademarks. Usually, this is achieved by the “wrapping” (e.g., the classic Coca Cola bottle) or some ornament affixed to the product (the star symbol on the Mercedes hood); but the design of the product itself can sometimes qualify. 3

A permanent restriction on copying the design of a product might still seem offensive to patent and copyright policy, but at least this protection can be explained where the replication would otherwise confuse buyers as to source, traditionally the concern of trademark protection. The difficulty in this case arises because Congress has removed the requirement of confusion for protection of “famous” trademarks and said that, in the alternative, they will be protected against “dilution” even where no confusion exists as to source. 15 U.S.C. § 1125 (e). Congress was worried that even without customer confusion as to source a famous trade name or mark, like “Kodak,” could be blurred or degraded by being attached by others to their own products (e.g., sports clothing, dog food). See 141 Cong. Rec. S19306, S19310 (daily ed. Dec. 29, 1995) (statement of Sen. Hatch).

By contrast to a trademark consisting of a name or insignia, a product design will not often qualify as a trademark inviting protection from dilution. A trade name or device usually identifies source, but the design of the product itself in most cases makes the product more efficient, attractive, or both. If more efficient, trademark protection is foreclosed altogether under the “functionality” doctrine, see Qualitex, 514 U.S. at 164, 115 S.Ct. 1300 ; Two Pesos, 505 U.S. at 775 , 112 S.Ct. 2753 ; and if attractiveness is the primary function, the product design does not normally qualify as a candidate to achieve secondary meaning and thus trademark status. See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 , 851 n. 11, 102 S.Ct. 2182 , 72 L.Ed.2d 606 (1982).

But conceivably in some rare case a product design might have source signaling as its main function (perhaps the old 1950’s Cadillac tail fin might be an instance) and be copied by a competitor (say, for Volkswagen Beetles) without any risk of customer confusion. At that point, if the new trademark statute is taken literally, Cadillac might then claim a permanent monopoly on its tail fin design, subject only to a showing that Volkswagen’s use threatened to “dilute” the strength of that tail fin as a Cadillac trademark. See 15 U.S.C. § 1125 (c). One may wonder whether Congress ever contemplated such a result, but the statute’s language arguably permits it or at least does not explicitly foreclose the possibility.

If so, much turns on how dilution is defined and proved. The federal statute is recent, but state laws have protected against dilution for some time, and under those statutes there is some tendency to assume that dilution is threatened wherever the famous trademark is copied. 4 After all, the concern is with the long-term “whittling away” of the strength of the mark by other unauthorized uses, see L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 30 (1st Cir.1987), and, absent confusion, there may be no immediate damage from any single use. Where only a word or symbol is forever preempted, this protective approach toward the trademark may make sense, and in all events does not *73 pose much risk to the policies of the patent and copyright clauses.

The situation is quite different where design of an article is given permanent protection without any threat of confusion. If buyers prefer articles of that design, then the public pays a price whenever the design cannot eventually be used by other manufacturers. In the case of patents and copyrights, the foreclosure of competition is deemed a price worth paying for a limited time — in order to induce such creations — but only for a limited time. Is this policy of time-limited protection, constitutional at its core, overcome wherever dilution is threatened — even though no confusion can be proved and any impairment of the trademark may be only potential and directed primarily to protecting the seller rather than the public?

One might point to the possible diversion of sales from Lund to Kohler as practical harm in this very case. Yet such diversion does not prove either confusion or dilution: a copied product can easily take sales from the original manufacturer if the copied product is better made or sold at a lower price or the design is slightly better — outcomes generally beneficial to the public. Giving weight to diversion of sales, in the absence of confusion of customers, simply underscores that the protection is generally similar to that afforded for patented articles — save that the protection here may be unlimited in time. Giving patent-like protection a new name does not avoid constitutional limitations. Cf. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 , 109 S.Ct. 971 , 103 L.Ed.2d 118 (1989).

The traditional interest in trademark protection is stretched very thin in dilution cases where confusion is absent and a professed aim is to protect the maker’s investment in the trademark. See H.R.Rep. No. 104-374, at 3 (1995), reprinted in 1995 U.S.C.C.A.N. at 1030. And the threat to the public interest, ordinarily countered by the time limit on patent protection, is acute where a permanent protection is offered not to a word or symbol but to the design of an article of manufacture. In such an instance, it is a difficult constitutional question whether protecting the investment can outweigh the pub-lie interest in replication, a question best deferred unless and until all other preconditions for protection are resolved in favor and decision on this last issue is absolutely necessary. See El Dia, Inc. v. Hernandez Colon, 963 F.2d 488, 494 (1st Cir.1992).

. The complaint and injunction merely describe the main elements of the VOLA faucet, and the latter prevents replication of the VOLA faucet so described without saying what deviations from the VOLA design would avoid the injunction.

. Design patents are issued for designs that are "new, original and ornamental,” 35 U.S.C. § 171 , and are non-functional in a utilitarian sense. See KeyStone Retaining Wall Systems, Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed.Cir.1993). Like ordinary utility patents, design patents are limited in duration. 35 U.S.C. § 173 (1994).

. See Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162, 172 , 115 S.Ct. 1300 , 131 L.Ed.2d 248 (1995); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773-74 , 112 S.Ct. 2753 , 120 L.Ed.2d 615 (1992); Chrysler Corp. v. Silva, 118 F.3d 56 , 58 (1st Cir.1997).

. A number of cases interpreting state antidilution statutes, although not offering much analysis on the issue, come close to assuming that the use of an identical or very similar mark is itself a "dilution” of a famous mark without further proof of adverse effects. See, e.g,, Polaroid Corp. v. Polaroid, Inc., 319 F.2d 830, 836 (7th Cir.1963) (Illinois law); Saks & Co. v. Hill, 843 F.Supp. 620, 625 (S.D.Cal.1993) (California law); Toys "R” Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F.Supp. 1189, 1208 (E.D.N.Y.1983) (New York law); see also 3 McCarthy, Trademarks and Unfair Competition § 24:68, at 24-116 (1998); id. §§ 24:100-24:102, at 24-177-24-186. This does not mean that the federal statute need follow this pattern. Cf. 3 McCarthy, supra, § 24:90, at 24-142, § 24:93-24:94, at 24-160-24-163.