# Amicus Curiae Brief — TrafFix Devices, Inc. v. Marketing Displays, Inc.

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385014_0361%3A13

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2001
- **Citation:** 532 U.S. 23

## Text

Supreme Court, U.S. |
(C FILED
Ly
No. 99-1571 | wus 2.4 2000
IN THE |

ee ERK
Supreme Court of the Yuiter States —

TRAFFIX DEVICES, INCORPORATED

Petitioner,

—against—

MARKETING DISPLAYS, INCORPORATED,
Respondent.

ON WRIT OF CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR THE SIXTH CIRCUIT
SS ES SD,

BRIEF OF THE HOLMES GROUP, INC.

AS AMICUS CURIAE IN
SUPPORT OF PETITIONER

a Tc I a aaa

JAMES W. DABNEY
Counsel for Amicus Curiae
1155 Avenue of the Americas
New York, New York 10036
Marcia H. Sundeen (212) 790-9090
Carol M. Wilhelm

PENNIE & EDMONDS LLP
New York, New York

Of Counsel
August 24, 2000

ahs

**

QUESTION PRESENTED

Petitioner sells wind-resistant traffic signs exemplified
by the product depicted at 971 F. Supp. 277 (the “Accused
Signs”). An integral part of the Accused Signs is an assembly
of two vertically arranged, spaced-apart coil springs attached
to and extending upwardly from the signs’ base member. The
configuration of the Accused Signs, including the configuration
of the dual-spring assembly incorporated in those signs,
admittedly is in the public domain under federal patent law,
having been disclosed in a now-expired patent formerly owned
by Respondent.

Notwithstanding the expiration of Respondent’s patent,
and notwithstanding that the configuration of the Accused Signs
replicates a form in which Respondent made and sold its
formerly patented invention during the term of Respondent’s
now-expired patent, the Court of Appeals held that Respondent
could properly sue to enjoin Petitioner from selling the Accused
Signs, on a theory that the configuration of the Accused Signs
was subject to regulation as “trade dress” under certain recent
lower federal court interpretations of Section 43(a) of the
Trademark Act of 1946, as amended 15 U.S.C. § 1125(a) (the
“Lanham Act”).

As phrased by the Petitioner, the question presented is
“whether federal trade dress protection extends to a product
configuration covered by an expired utility patent” (Pet. at i).
When expressed in terms of the language actually used in

TABLE OF CONTENTS

Section 43(a) of the Lanham Act, the question presented by this
case IS: PAGE

Does the configuration of the Accused Signs
constitute a mere “symbol” or “device” used pp

“on” or “in connection with” “goods” sold by

Petitioner, as those terms are used in 1$ U.S.C. ccc cccccceces
ae a br |. THE DECISION BELOW CONFLICTS
ccuse¢@ ol WITH PREVIOUS DECISIONS OF
inseparable part of the “goods” themselves? I
A. Federal Patent Law Creates
“Public Property” Which All
Have a Federal Right to Copy
EEE EEE
B. Trademark Law Rightly Requires
That Competitors Place Identifying
| Words or Symbols on Products ©
Whose Configuration Resembles a
Ee

od The Decision Below Improperly
Circumscribes Petitioner’s and the
Public’s Federal Right to
ence ccc cctedsccecc<

UBD EDU PRREBEINIED onc ccc cc cccccccccccccess i

PAGE
Il. THE CONFIGURATION OF THE
ACCUSED SIGNS IS NOT A
MERE "SYMBOL" OR "DEVICE"
SUBJECT TO REGULATION
RD TRAE IGE cc cccccccccccccccoseccoss 25
COTES oc ccccccccccccccccccesesovscevesce 30

iv

TABLE OF AUTHORITIES

PAGE
Cases
Aronson v. Quick Point Pencil Co.,
SP TED evddecvocchcnccccecuésuses 13
Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
SPs CUP UD Sa cccncececcucanens 3, 6,7, 8, 9,
10, 14, 15
21, 22, 24
28, 31
Brulotte v. Thys Co.,
Pe PED ndcdcdecoccesadsadvceneens 11,13
Clamp Mfg. Co. v. Enco Mfg. Co.,
870 F.2d 512 (9th Cir.),
cert. denied, 493 U.S. 872 (1989) ...........6.45. 4

Coates v. Merrick Thread Co.,

PED éccbuGcccekseddvectenctes 2,11
Compco Corp. v. Day-Brite Lighting, Inc.,

Pe ED £6 be cheeecedscsocdcs 2, 12, 15,

18, 19

In re Deister Concentrator Co.,
ee GEED co cecccctescseccess

PAGE

Dole v. United Steelworkers of America,

Se ED cde deeveecscnsacuccccensese 29
Fabrica Inc. v. El Dorado Corp.,

697 F.2d 890 (9th Cir. 1983) ...........- cee eeee 16
Fairbanks v. Jacobus,

8 F. Cas. 951 (C.C.S.D.N.Y 1877) ..........0455. 26
Ferrari S.p.A. Esercizio v. Roberts,

944 F.2d 1235 (6th Cir. 1991),

cert. denied, 505 U.S. 1219 (1992)........... 4, 8,21
Goldstein v. California,

GE PEED cecccccccccccaccceceeses 3, 10
Goodyear Tire & Rubber Co. v.
Hercules Tire & Rubber Co.,

162 F.3d 1113 (Fed. Cir. 1998) ............25005- 5
Graham v. John Deere Co.,

BP A DEED oc ccascccccccccccecesesevecs 11
Guardian Life Ins. Co. v.
American Guardian Assur. Co.,

943 F. Supp. 509 (E.D. Pa. 1996) ................ 21

vi

PAGE

Holmes Group, Inc. v. Vornado
Air Circulation Sys., Inc.,

93 F. Supp. 2d 1140 (D. Kan.),

appeal docketed, No. 00-1286 (Fed. Cir.2000) ...... 6
Hunter Douglas, Inc. v. Harmonic Design, Inc.,

153 F.3d 1318 (Fed. Cir. 1998),

cert. denied, 525 U.S. 1143 (1999) ................ 9
Imagineering, Inc. v. Van Klassens, Inc.,

53 F.3d 1260 (Fed. Cir. 1995), cert. denied, ....... 22
Interpart Corp. v. Italia,

FUE Cee Ge EEED cc ccccecccccseccss 14
Kellogg Co. v. National Biscuit Co.,

PE ED 9000 6s 4eanusseduandedves 2, 11
Kohler Co. v. Moen, Inc.,

EE CUED Siccccecccccesices 3,21
McLean v. Fleming,

EE OE re ee 26
Midwest Indus., Inc. v. Karavan Trailers, Inc.,

175 F.3d 1356 (Fed. Cir.),

cert. denied, 120 S. Ct. 527 (1999) ............. 9,24
In re Morton Norwich Prods., Inc.,

Bre Cee CU ees CUED cccccccceccceseces 6

Vii

Qualitex Co. v. Jacobson Products Co.,

S14 U.S. ISD (IDDS) 2. nercnscccccscvess

Russello v. United States,

464 U.S. 16 (1983) ... 6... cee eee eee

Scotch Whiskey Ass'n v. Majestic Distilling Co.,
958 F.2d 594 (4th Cir.),

cert. denied, 505 U.S. (1992) ..........55.

Scott Paper Co. v. Marcalus Co.,
326 U.S. 249 (1945) ...... cece eee ee eees

Sears, Roebuck & Co. v. Stiffel Co.,

376 U.S. 225 (1964) ..........45- veeeees

Singer Mfg. Co. v. June Mfg. Co.,

163 U.S. 169 (1896) .........2- ee eee eee

Thomas & Betts Corp. v. Panduit Corp.,
138 F.3d 277 (7th Cir.),

cert. denied, 525 U.S. 929 (1998) .........

Thomas & Betts Corp. v. Panduit Corp.,

34 U.S.P.Q. 2d 1607 (7th Cir. 1994) ......

Vili

22, 23

Thomas & Betts Corp. v. Panduit Corp.,
65 F.3d 654 (7th Cir. 1995),
cert. denied, 516 U.S. 1159 (1996) ................ 4

Two Pesos, Inc. v. Taco Cabana,
ERR SR Ra ree 30

Villeroy & Boch Keramische
Werke K.G. v. THC Systems, Inc.,
Se ee ED GOED ve ccvcccccvescccecces 6

Vornado Air Circulation Systems, Inc.
v. Duracrafi Corp.,
58 F.3d 1498 (10 Cir. 1995),

cert. denied, 516 U.S. 1067 (1996) ........... 4, 7,9,
10, 20, 23

Wal-Mart Stores, Inc. v. Samara Bros., Inc.,

Re 26,
Winner Int'l LLC v. Omori Enterprises, Inc.,

60 F. Supp. 2d 62 (E.D.N.Y. 1993) .............. 21
Statutes
TE Jc hcececedussuueesavenseseuens 28
PUT cctendacdeandsbeee veecsacunséeaeed 24
I ae cecclidddvi cosh eaucbecandest 5, 22

ix

1S U.S.C. § 1091(c) ....... ccc cceeecccecces
ISUG.C. $1006 20... ccc cccscccccsccccess

SP Cot BL). = PP rrererrrrrrie ree

IS UBC. $1927 20... cccccccccscccccsccees
15 U.S.C. § 1057(b) o.oo. cece ccc e ccc eeeees

Trademark Law Revision Act
of 1988, Pub. L. No. 100-667,

§ 132, 102 Stat.3946 (1988) .............005-.

Miscellaneous

3 R. Callmann, The Law of Unfair Competition,
Trademarks & Monopolies

§ 19.04(4th ed. 1998)... 0... ccc e cee eee ees

Dabney, State Law Protection of
Intellectual Creations: Privacy and
Preemption,

38 Syracuse L. Rev. 653, 663 (1987)...........

10, 20, 21,
23, 27, 28,
29, 30

8, 10, 25

iene

Dabney, Unfair Competition
After Bonito Boats, C461 ALI-ABA 47 (1989) ..........

Lange, Recognizing the Public Domain,
44 Law & Contemp. Probs. 147, 147 (1983) ............

Patry, The Enumerated Powers

Doctrine and Intellectual Property: An

Imminent Constitutional Collision,

67 Geo. Wash. L. Rev. 359,

IE 0's 6cb00 44 bebaends biesnkwisatawees

Reichman, Design Protection
and the New Technologies,
Se es ee GG SUED Kc cccecccctsccescoecs

1 J. McCarthy, Trademarks and Unfair
Competition § 7.62 at 7-135 (4th ed. 2000) .............

Restatement of Torts § 742 (1938) ................05.

Restatement (Third) of Unfair
CE «0 Scateonkued onde sieeeenes

xi

The Holmes Group, Inc. (“Holmes”) respectfully submits
this brief as amicus curiae in support of the Petitioner. Both
parties have consented to the submission of this brief through
letters filed with the Clerk of the Court. Counsel for Holmes
authored this brief in its entirety. No other person or entity has
made any monetary contribution to the preparation or
submission of this brief.

INTEREST OF AMICUS CURIAE

Holmes manufactures and sells numerous models of
household fans, air cleaners, humidifiers, lamps, and kindred
goods. Some HOLMES” product models embody original
designs on which Holmes holds issued or pending patents.
Product differentiation is one way in which Holmes competes
with rivals and appeals to that segment of consumer households
which values unusual or memorable design in household
products and is prepared to pay a premium for it.

Product differentiation is not, however, the only way in
which Holmes competes with rivals. In addition to offering
lines of highly differentiated products, Holmes also offers lines
of more conventionally-designed HOLMES* products which are
marketed primarily on the basis of price, brand name, service,
and other factors besides originality of design. Price
competition in the sale of similar or “commodity” products,
embodying unpatented designs, is often the most important
form of competition to price-conscious consumers.

Holmes’s ability to design and bring new products to
market, and Holmes’s ability to engage in price competition in

the sale of similar products embodying unpatented designs, both
depend crucially on Holmes’s ability to use publicly known,
unpatented design and utilitarian ideas in general circulation,
and to do so without risking the kind of hugely costly, complex,
and highly unpredictable litigation which this case well
exemplifies.

In holding that Petitioner could be held liable under 15
U.S.C. § 1125(a) for making and selling the Accused Signs,
regardless of what trademarks or symbols Petitioner might place
on those signs, the Court of Appeals acted contrary to numerous
decisions of this Court holding repeatedly, in various contexts,
that a competitor in Petitioner’s position has a “federal right to
copy and to use” subject matter disclosed in an expired patent,
Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141,
165 (1989), “including the right to make it in precisely the
shape it carried when patented.” Sears, Roebuck & Co. v. Stiffel
Co., 376 U.S. 225, 230 (1964).

In case after case dealing with “unfair competition” claims
indistinguishable, in principle, from the so-called “trade dress”
claim asserted by Respondent here, this Court has repeatedly
held that a first or “original” producer of goods embodying an
unpatented design cannot exclude rivals from using or copying
the design, but can require only that rivals refrain from
“palming off their copies as the original.” Compco Corp. v.
Day-Brite Lighting, Inc., 376 U.S. 234, 257 (1964). Accord
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119-22
(1938); Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 184
(1896), Coates v. Merrick Thread Co., 149 U.S. 562, 572-73
(1893).

“In regard to mechanical configurations, Congress ha{s]
balanced the need to encourage invention and originality of
invention against the need to ensure competition in the sale of
identical or substantially identical products.” Goldstein v.
California, 412 U.S. 546, 569 (1973). The idea that 15 U.S.C.
§ 1125(a) outlaws “competition in the sale of identical or
substantially identical products,” Goldstein, 412 U.S. at 569, on
a theory that the mechanical configuration of a product
somehow constitutes “trade dress,” has been aptly characterized
as a judicial “fiction”' which some lower federal courts have
recently adopted in order to make an “end run around
Sears/Compco.”’ It is also a “fiction” which has no textual
basis in 15 U.S.C. § 1125(a) and “notoriously lacks the support
and endorsement of the Supreme Court.” Kohler Co. v. Moen,
Inc., 12 F.3d 632, 644 (7th Cir. 1993) (Cudahy, J., dissenting).

As a practical litigation matter, the decision below holds
that consumers cannot have access to or purchase inexpensive
reproductions of a product embodying an attractive, memorable,
or proven design -- including even a product whose design is
disclosed in an expired patent -- unless a would-be

' Reichman, Design Protection and the New Technologies, 19 U. Balt.
L. Rev. 6, 115 (1990), quoted in | J. McCarthy, Trademarks and Unfair
Competition § 7.62 at 7-135 (4th ed. 2000).

> Vornado Air Circulation Systems, Inc. v. Duracraft Corp., 58 F.3d
1498, 1505 (10 Cir. 1995), cert. denied, 516 U.S. 1067 (1996) (quoting
Dratler, Trademark Protection for Industrial Designs, 1988 U. Ill. L.
Rev. 887, 916-24). Cf Lange, Recognizing the Public Domain, 44 Law &
Contemp. Probs. 147, 147 (1983) (“the growth of intellectual property in
recent years has been uncontrolled to the point of recklessness”).

manufacturer is prepared to spend years’ and huge sums
litigating such highly contestable issues as (a) what a poll might
be argued to show is the “primary” significance of a product
configuration in the minds of some percentage of some relevant
universe of third-parties;* (b) whether a product, no matter how
clearly marked as to its origin at the time of sale, might
nevertheless be seen in a “post-sale” context and thereby
“confuse” potential future purchasers, or perhaps even casual
observers, of the product outside of its sale setting; and (c)

* In one recent -- and still pending -- case, the parties have so far spent
more than six (6) years litigating the “primary” and “secondary meaning,”
and “functionality” or “nonfunctionality,” of the rounded oval head of an
electrical cable tie disclosed in an expired patent. See Thomas & Betts
Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir.) (reversing summary
judgment for defendant), cert. denied, 525 U.S. 929 (1998); Thomas &
Betts Corp. v. Panduit Corp., 65 F.3d 654 (7th Cir. 1995) (reversing
preliminary injunction granted to plaintiff), cert. denied, 516 U.S. 1159
(1996); Thomas & Betts Corp. v. Panduit Corp., 34 U.S.P.Q. 2d 1607
(7th Cir. 1994) (denying motion for stay of preliminary injunction
granted to plaintiff).

* Cf Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 517 (9th Cir.),
cert. denied, 493 U.S. 872 (1989) (notwithstanding expired patent,
manufacturer of radiator C-clamps enjoined under 15 U.S.C. § 1125(a)
based on clamp design having “secondary meaning”).

* Cf Ferrari S.p.A. Esercizio v. Roberts, 944 F.2d 1235, 1239-48 (6th
Cir. 1991), cert. denied, 505 U.S. 1219 (1992) (over strong dissent,
maker of automotive car bodies enjoined under 15 U.S.C. § 1125(a),
based in part on potential “post-sale confusion” in the minds of
pedestrians seeing cars pass on the street). It may be noted that the
familiar “likelihood of confusion” standard for infringement under 15
U.S.C. § 1125(a) can be more protective than the standard of design
patent infringement under 35 U.S.C. § 271. Cf Goodyear Tire & Rubber
(continued...)

OF A eae ><

whether an integral part of a product’s design might
nevertheless be deemed “non-functional” in the 1980's lingo of
some lower federal courts,° because in the opinion of a judge or
jury, a producer having some level of competence and resources
could compete “effectively” at some price, at some scale, over
some period of time, in some market defined by no particular
standard, by persuading some consumers to change their
existing preferences and purchase products embodying an
“alternative design.”

‘(...continued)

Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1117 (Fed. Cir.
1998) (“if the resemblance is such as to deceive an observer, inducing
him to purchase one supposing it to be the other”) (quoting Gorham Co.
v. White, 81 U.S. (14 Wall.) 511, 528 (1871))

° For a compilation of the various -- and widely divergent and
indeterminate -- redefinitions of “functionality” adopted by the Courts of
Appeals in the 1980's, see Dabney, Unfair Competition After Bonito
Boats, C461 ALI-ABA-47 (1989). In general, the 1980's-era changes in
the meaning of “functionality” sharply constricted its reach. Compare
Restatement of Torts § 742 (1938) with Restatement (Third) of Unfair
Competition § 17 (1995). Cf In re Morton Norwich Prods., Inc., 67|
F.2d 1332, 1340 (C.C.P.A. 1982) (asserting that the definition of
“functionality” in Restatement of Torts § 742 is “so broad as to be
meaningless’).

’ Cf Villeroy & Boch Keramische Werke K.G. v. THC Systems, Inc., 999
F.2d 619, 621 (2d Cir. 1993) (reversing summary judgment for
defendant; hotel china pattern on replacement dishes could be “non-
functional,” because a competitor could theoretically persuade a hotel to
throw all of its existing china away and purchase a whole new set bearing
an “alternative” pattern). Ironically, for a company like Holmes which
offers diverse product models to meet various consumer preferences,
Holmes’s own innovativeness can be pointed to as “evidence” that any
(continued...)

In so heavily qualifying, and pro tanto nullifying, the rights
of producers and consumers to use “publicly known, unpatented
design and utilitarian conceptions,” Bonito Boats, 489 U.S. at
156, the decision below is fundamentally inconsistent with
numerous decisions of this Court holding that federal patent law
creates a “public domain” whose contents are “subject to
appropriation without significant restraint.” /d. This Court
should not labor under any doubt as to the real world
significance of the purported liability rules articulated in the
decision below: those rules represent a very powerful deterrent
to the use or sale of products embodying designs disclosed in
expired patents.

Holmes was recently forced to spend hundreds of
thousands of dollars defending its right to sell HOLMES®
household fan products whose housings incorporated, as an
integral part of their design, curved stator vanes which a
competitor characterized as “trade dress.” See Holmes Group,
Inc. v. Vornado Air Circulation Sys., Inc., 93 F. Supp. 2d 1140
(D. Kan.), appeal docketed, No. 00-1286 (Fed. Cir. 2000).* In
that case as in this, the plaintiff was emboldened by many lower
federal courts’ recent willingness to disregard this Court’s many
decisions construing and enforcing the public domain created

"(...continued)
particular model’s configuration may be challenged in groundless “trade
dress” litigation such as that invited by the decision below.

* The so-called “trade dress” at issue in the case cited in the text is the
exact same mechanical configuration which was held, in Vornado Air
Circulation Systems, Inc. v. Duracraft Corp., 58 F.3d 1498 (10th Cir.
1995), cert. denied, 516 U.S. 1067 (1996), to be ineligible for protection
as “trade dress.”

———_

by federal patent law, to “enlarge the Lanham Act’s scope of
protection beyond its statutory language and Congressional
intent,” and to fashion perpetual, free-form, judge-made rights
to exclude rivals’ and consumers’ use and enjoyment of
publicly known, unpatented design and utilitarian conceptions
in general circulation."°

As one of the nation’s leading manufacturers of branded
consumer household products, Holmes is vitally interested in
seeing that the public domain, as long recognized and enforced
a by this Court, remains a freely accessible source of design and
utilitarian conceptions. The decision below represents a serious
threat to Holmes’s ability to engage in price competition, to
innovate, and to implement what this Court has often stated in
the “ultimate goal” of the U.S. patent system: making and
selling products embodying design ideas for whose free use,
today, the public long ago paid the price of a patent. Bonito
Boats, 489 U.S. at 151.

* Ferrari S.p.A. Esercizio v. Roberts, 944 F.2d 1235, 1253 (6th Cir.
1991) (Kennedy, J., dissenting), cert. denied, 505 U.S. 1219 (1992).

'° Besides being contrary to decisions of this Court and without basis in
the text of 15 U.S.C. § 1125(a), the liability rules articulated in the
decision below are also perfectly circular; for it is only if courts give
legal recognition to claims like Respondent’s that consumers could be
“trained” to look to the configuration of a product, rather than trademarks
or trade “dress” affixed to the product, for information concerning the
product’s source. See Vornado, 58 F.3d at 1509 (“if copying is allowed,
[consumers] will depend less on product shapes and more on labels and
packaging”).

As set forth more fully below, the Accused Signs sold by
Petitioner do not embody any design that even arguably
constitutes a mere “symbol” or “device” used “on” or “in
connection with” “goods,” as those terms are used in 15 U.S.C.
§ 1125(a). Rather, the Respondent seeks to enjoin Petitioner
from selling the Accused Signs -- goods -- regardless of what
“words,” “symbols,” or “devices” Petitioner may “place . . . on”
those goods. 15 U.S.C. § 1127. Because 15 U.S.C. § 1125(a),
properly interpreted, does not authorize issuance of injunctions
to restrain a competitor from selling “that which the federal
patent laws permit to be copied,” Sears, 376 U.S. at 232, the
decision below should be reversed.

ARGUMENT

The decision below rests on two fundamental errors. The
Court of Appeals’ first error was its failure to cite or respect this
Court’s many decisions holding that federal patent law,
including Art. I, § 8, cl. 8 of the Constitution, creates a “public
domain” whose contents are “public property” which all have
had an affirmative, federal right to copy and to use “without
significant restraint.” Bonito Boats, 489 U.S. at 152, 156, 165.
In simply assuming that Petitioner had no such right,''

'' Notwithstanding this Court’s explicit holding to the contrary in Bonito
Boats, 489 U.S. at 165 (“For almost 100 years it has been well
established that in the case of an expired patent, the federal patent laws
do create a federal right to ‘copy and to use’”), some lower courts
continue to insist that “there is neither a federal right to copy and to use,
be it constitutional or statutory in nature, nor any implied remedy for that
purported right.” Hunter Douglas, Inc. v. Harmonic Design, Inc., 153
(continued...)

apparently on the happenstance that Respondent chose 15
U.S.C. § 1125(a), rather than corresponding state law, as its

vehicle for seeking injunctive relief, the Court of Appeals
clearly was not faithful to this Court’s decisions (Part I, infra).

The Court of Appeals’ second error lay in its disregard for
the text of 15 U.S.C. § 1125(a) and related provisions of the
Lanham Act. 15 U.S.C. § 1125(a) regulates use of “any word,
term, name, symbol, or device, or any combination thereof,”
used “on” or “in connection with” “goods.” The plain meaning
of this language, particularly when read in light of the statutory
definition of “use in commerce,” 15 U.S.C. § 1127, makes clear

(continued)

F.3d 1318, 1325 (Fed. Cir. 1998), cert. denied, 525 U.S. 1143 (1999).
The decision below cites with approval the decision of the Federal
Circuit in Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356
(Fed. Cir.), cert. denied, 120 S. Ct. 527 (1999), which went so far as to
hold that use of a boat trailer winch post configuration disclosed in a
patent could be enjoined on the basis of lowa state law. 175 F.3d at
1364-65.

In sharp contrast, the Tenth Circuit in Vornado Air Circulation Systems,
Inc. v. Duracraft Corp., 58 F.3d 1498 (10th Cir. 1995), cert. denied, 516
U.S. 1067 (1996), accepted and applied the law as stated by this Court,
including that “patent law creates a federal right to copy and to use
product features that are in the public domain, whether under an expired
patent or for lack of patentability in the first place.” 58 F.3d at 1503.
The Vornado decision further “conclude[d] that patent law seeks the
invention and the passing into the public domain of even what trade dres:
law would consider nonfunctional inventions.” /d. at 1508. See also
Patry, The Enumerated Powers Doctrine and Intellectual Property: An
Imminent Constitutional Collision, 67 Geo. Wash. L. Rev. 359, 368 n.54
(1999) (“Although the Federal Circuit still hasn't ‘gotten it,’ . . . the
Tenth Circuit has”).

that to constitute a “symbol” or “device” used “on” “goods” for
purposes of 15 U.S.C. § 1125(a), a claimed “symbol” or
“device” must be physically or conceptually separable from any
“goods” on which it is “placed.” 15 U.S.C. § 1127. By failing
to analyze Respondent’s so-called “trade dress” claim in terms
of the actual language of 15 U.S.C. § 1125(a), the Court of
Appeals overlooked key definitional limitations on what can
and cannot be constituted “trade dress” subject to regulation
under the statute (Part II, infra).

I. THE DECISION BELOW CONFLICTS
WITH PREVIOUS DECISIONS OF THIS COURT.

A. Federal Patent Law Creates “Public Property”

Which All Have a Federal Right to Copy and to Use

In a series of cases dating back to at least Coates v. Merrick
Thread Co., 149 U.S. 562 (1893), this Court has repeated held
that the expiration of a patent does not merely terminate the
patentee’s right to exclude, but vests in the public an
affirmative, “federal right to copy and to use.” Bonito Boats,
489 U.S. at 165. The existence of this right reflects that “[t]o
a limited extent, the federal patent laws must determine not only
what is protected, but also what is free for all to use.” Bonito
Boats, 489 U.S. at 151. See Goldstein v. California, 412 U.S.
546, 569 (1973) (with respect to “mechanical configurations”
federal patent laws “indicat[e] not only which articles in this
particular category Congress wished to protect, but which
configuration it wished to remain free”’).

This Court has often used the terms “public domain” and
“public property” to describe the legal relationship of the public
to that which federal patent law determines must be free for all
to use. See, e.g., Graham v. John Deere Co., 383 U.S. 1, 31
n.17 (1966); Brulotte v. Thys Co., 379 U.S. 29, 31 (1964);
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 120 (1938);
Singer Mfg. Co. v. June Mfg Co., 163 U.S. 169, 185 (1896).'?

The “public property” created by federal patent law has
been held to have a number of significant legal characteristics.
Just as the public cannot rightly be excluded or fenced out of
public lands in the public domain, the public co-equally has a
federal right, “[b]y the force of the patent laws,” Scott Paper v.
Marcalus Co., 326 U.S. 249, 256 (1945), to copy and to use
“whatever the federal patent copyright laws leave in the public
domain.” Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S.
234, 237 (1964). “An unpatentable article, like an article on
which the patent has expired, is in the public domain and may
be made and sold by whoever chooses to do so.” Sears,
Roebuck Co. v. Stiffel Co., 376 U.S. 225, 231 (1964).

This Court has also held that the “public property” created
by federal patent law cannot be “subject to private barter, sale,
or waiver.” Scott Paper, 326 U.S. at 257. In Scott Paper, this
Court held that an assignor of a patented invention could not be

? See also Dabney, State Law Protection of Intellectual
Creations: Privacy and Preemption, 38 Syracuse L. Rev.
653, 663 (1987) (“the operative principle of Sears and
Compco is an federal law concept of ‘public domain””).

estopped or precluded from practicing the subject of an expired
patent which anticipated claims of the assigned patent, because:

[T]he patent laws preclude the patentee of an expired
patent and all others including petitioner from
recapturing any part of the former patent monopoly;
for those laws dedicate to all the public the ideas and
inventions embodied in an expired patent. They do
not contemplate that anyone by contract or any form of
private arrangement may withhold from the public the
use of an invention for which the public has paid by its
grant of a monopoly and which has been appropriated
to the use of all .... It follows that the patent laws .
. . preclude the assignor from estopping himself from
enjoying right which it is the policy of the patent laws
to free from all restrictions.

326 U.S. at 256-57 (emphasis added). See also Brulotte v. Thys
Co., 379 U.S. 29, 32 (1964) (“a royalty agreement that projects
beyond the expiration date of the patent is unlawful per se”).
Cf. Aronson v. Quick Point Pencil Co., 440 U.S. 257, 263
(1979) (agreement to pay royalties for use of confidential design
not invalid, because “the design entered the public domain as a
result of the manufacture and sale of the key holders under the
contract”).

In Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,489 U.S.
141 (1989), this Court held yet again, and more explicitly than
in any of its prior decisions, that federal patent law vests
affirmative legal rights in both patentees and the public. Bonito
Boats specifically repudiated the view of federal patent law

12

mo STS

which had been articulated in /nterpart Corp. v. Italia, 777 F.2d
678 (Fed. Cir. 1985), to the effect that “the patent laws say
nothing about the right to copy or the right to use, they speak
poof - terms of the right to exclude.” /nterpart, 777 F.2d at
685.

In holding, contrary to the starting assumption of the
decision below, that a manufacturer had an affirmative, federal
patent law right to reproduce and sell vessel hulls embodying a
publicly known, unpatented design, this Court stated (489 U.S.
at 165):

For almost 100 years it has been well established that
in the case of an expired patent, the federal patent laws
do create a right to “copy and to use.” Sears and
Compco extended that rule to potentially patentable
ideas which fully exposed to the public. The /nterpart
court’s assertion to the contrary is puzzling. . . .

"> Under the law articulated in /nterpart and assumed in the decision
below, “the right to copy [structures disclosed in expired patents] is not
derived in way from the patent law; it is a right which adheres in the
public under the general law except to the extent that the patent law may
remove it.” /n re Deister Concentrator Co., 289 F.2d 496, 501 n.3
(C.C.P.A. 1961). Thus, according to the decision below and others like it
(see note |, supra), federal patent law supposedly imposes no limitation
on the scope of what constitutes “trade dress”; courts supposedly are free
to implement their own personal preferences for, say, non-price
differentiation of prodwets in place of price competition in the sale of
well-labeled, denial products.

13

Recapitulating its past decisions interpreting and applying
the “federal right to copy and to use,” this Court stated in
Bonito Boats:

The defendant . . . may copy plaintiff's goods slavishly
down to the minutest detail; but he may not represent
himself as the plaintiff in their sale.

489 U.S. at 157 (quoting Crescent Tool Co. v. Kilborn &
Bishop Co., 294 F. 299, 301 (2d Cir. 1917) (L. Hand, J.)).

B. Trademark Law Rightly Requires
That Competitors Place Identifying
Words or Symbols on Products Whose

Configuration Resembles a Pre-Existing Product. _

While repeatedly holding that the “public property” created
by federal patent law “can be copied in every detail by whoever
pleases,” Compco, 376 U.S. at 238, this Court, at the same
time, has held that rivals may be required to mark or package
their products “with such indications that the thing
manufactured is the work of the one making it, as will
unmistakably inform the public of that fact.” Singer, 163 U.S.
at 200. This rule was long widely respected by lower federal
courts, as exemplified by the following passage from 1983:

The difference in the protection against imitation
which will be accorded to an article of commerce on
the one hand, and to a package in which the article is
marketed on the other, was long ago noted... . [T]he
law which permits one to market an identical of its

14

—— “~~

Oe tage oe ae

competitor’s product does not give him freedom to
imitate the appearance of the package in which the
article is sold .... [T]he public policy which permits
the imitation of an article of commerce is without
relevance to the dress in which the article is marketed.

Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 895 (9th Cir.
1983) (quoting Audio Fidelity, Inc. v. High Fidelity Recordings,
Inc., 283 F.2d 551, 557 (9th Cir. 1960) (quoting Tas-7-Nut Co.
v. Variety Nut & Date Co., 245 F.2d 3-7 (6th Cir. 1957)).

This Court’s decision in Singer provides an excellent
illustration of this Court’s traditional approach to unfair
competition in the context of product copying. In the Singer
case, the defendant manufactured and sold sewing machines
which were substantially identical in appearance to sewing
machines which the plaintiff had manufactured and sold during
the term of patents held by the plaintiff on various aspects of the
machines. This Court held that, notwithstanding that the
defendant had the right to make and sell machines in the same
form as plaintiff made and sold them during the term of its
expired patents, and notwithstanding that the defendant had a
further right to use the term SINGER as a generic designation
for a class of machines, the defendant was nevertheless liable to
the plaintiff for unfair competition, because it had used
deceptive markings and devices calculated to pass off the
defendant’s copies as originating with the plaintiff.

This Court stated the general principle violated by the
defendant as follows (163 U.S. at 185):

15

But it does not follow, as a consequence of dedication,
that the general power, vested in the public, to make
the machine and use the name imports that there is no
duty imposed, on the one using it, to adopt such
precautions as will protect the property of others and
prevent injury to the public interest, if by doing so no
substantial restriction is imposed on the right of
freedom of use. This principle is elementary and
applies to every form of right and is generally
expressed by the aphorism sic ufere tuo ut alienum
non loedas.

The defendant in Singer had affixed to its machines an oval
brass plate a trifle larger than one of exactly the same shape as
one found on the plaintiff's machines, and had located it at the
base of the arm in the same position as the plaintiff placed its
oval plates. The defendant also placed a “device, cast in the
legs thereof, in the same relative position as was the trade-mark
device cast in the legs of the stand which had been adopted by
the Singer Company,” with deceptive and ambiguous
abbreviations on it. /d. at 176-77. The defendant additionally
had placed a “dummy” tension screw on its machines in
precisely the same position as a functioning, and still patented,
tension screw which was utilized in the plaintiff's machines.
Id. at 177. Finally, the defendant had placed very high serial
numbers on its machines intended to convey the “obvious
impression that they were the result of a manufacture long-
established, and as they were marked ‘Singer’ suggesting, by an
irresistible implication that they were machines made the Singer
Company.” /d. at 202.

16

COU Ra peter

On these facts, this Court held that the defendant was liable
for unfair competition. The basis of liability was not that the
defendant had copied the form in which the plaintiff had made
and sold machines during the term of its patent, but rather that
the defendant had placed false and deceptive markings on its
machines which were likely to cause confusion as to the origin
of machines sold by defendants.

C. The Decision Below Improperly Circumscribes
Petitioner’s and the Public’s Federal Right to Copy

and to Use. _

In the present case, the so-called “trade dress” claim of
Respondent is not directed to anything like the type of false
marking which was held, in Singer, to provide a basis of
liability. Rather, the Respondent’s “trade dress” claim is
substantially identical to a claim which this Court specifically
rejected in Singer, namely, “unfair competition in business,
resulting from the form in which defendant makes his
machines.” 163 U.S. at 184. With respect to that purported
basis of liability, this Court held in Singer (163 U.S. at 185;
emphasis added):

It is self evident that on the expiration of a patent the
monopoly created by it ceases to exist, and the right to
make the thing formerly covered by the patent
becomes public property. It is upon this condition that
the patent is granted. It follows, as a matter of course,
that on the termination of the patent there passes to
the public the right to make the machine in the form in
which it was constructed during the patent.

17

Nearly seventy (70) years later, in Compco Corp. v. Day-
Brite Lighting, Inc., 376 U.S. 234 (1964), this Court again
considered a claim of “unfair competition” arising from the
form in which a competitor made and sold its product. The
plaintiff in Compco manufactured and sold lighting fixtures
whose configuration “had, like a trademark, acquired a
‘secondary meaning’ by which that particular design was
associated with Day-Brite.” 376 U.S. at 238. In addition, the
plaintiff in Compco contended that the design embodied in its
products was “nonfunctional,” in that “‘several choices of
ribbing were apparently available to meet the functional needs
of the product,”” but that Compco had “‘chose[n] precisely the
same design used by the plaintiff and followed it so closely as
to make confusion likely.”” 376 U.S. at 236 (quoting 311 F.2d
at 26, 30).

Despite these factual determinations, which were accepted
for purposes of analysis, 376 U.S. at 237, this Court reversed
and vacated the injunction which had been entered against the
defendant in that case, holding (376 U.S. at 237-39):

Day-Brite’s fixture has been held not to be entitled to
a design or mechanical patent. Under the federal
patent laws it is, therefore, in the public domain and
can be copied in every detail by whoever pleases . . .
. Since the judgment below forbids the sale of a copy
of an unpatentable article and orders an accounting for
damages for such copying, it cannot stand.

The plaintiff in Compco was denied relief, not because the
design in question was “functional,”'* but because by operation
of the federal patent laws, the design was “in the public domain
and can be copied in every detail by whoever pleases.”
Compco, 376 U.S. at 238. Compco reiterated that the right to
copy publicly known, unpatented designs was accompanied by
a duty on the part of “those who make and sell copies to take
precautions to identify their products as their own.” 376 U.S.
at 238. But since the purported basis of liability in C. OMpco Was
not any alleged use of false or deceptive marking, but rather
was the mere reproduction of an allegedly “distinctive” and
“nonfunctional” product design, federal patent law was held to
bar the imposition of any liability on the part of defendant.

The so-called “trade dress” claim of Respondent in this
case is indistinguishable, in principle, from the claim which this
Court rejected in Compco. According to the decision below,
Petitioner can be enjoined from selling the Accused Signs if at
a moment in time, the configuration of those signs is deemed to
be “nonfunctional” and the appearance of signs shown by
Respondent is shown to have “secondary meaning” -- the exact
same theory which this Court, in both Sears and Compco, held
was “not enough to support an injunction against copying or an

* In addition to noting the purported availability of “alternative designs,”
376 U.S. at 236, this Court expressly rejected the argument that
competitors could be enjoined from using so-called “nonfunctional”
designs disclosed in an expired or invalid patent. See id. at 238 (“That an
article copied from an unpatented article could be made in some other
way, that the design is ‘nonfunctional’ and not essential to the use of
either article, . . . can{not] furnish a basis for imposing liability for or
prohibiting the actual acts of copying and selling.”).

19

award of damages for copying that which federal patent laws
permit to be copied.” Sears, 376 U.S. at 232.

The only apparent basis for the Court of Appeals’
disregard of this Court’s Sears and Compco decisions was the
Respondent’s choice of 15 U.S.C. § 1125(a), rather than state
law, as a vehicle for re-asserting the theory of “unfair
competition” liability which this Court specifically rejected in
Sears and Compco. The decision below confirms, once again,
that “distinguishing Sears, Compco, and/or Bonito Boats has
become a veritable jurisprudential art form in recent years.”
Vornado Air Circulation Sys., Inc. v. Duracraft Corp., 58 F.3d
1498, 1505 (10th Cir. 1995), cert. denied, 516 U.S. 1067
(1996).

As numerous courts have noted, the standard of liability for
“unfair competition” under 15 U.S.C. § 1125(a) is substantially
the same as, if not identical to, the standard of “unfair
competition” prevalent under the law of most states. Fg,
Scotch Whiskey Ass'n v. Majestic Distilling Co., 958 F.2d 594,
596 (4th Cir.), cert. denied, 50S U.S. 862 (1992); Winner Int'l
LLC v. Omori Enterprises, Inc. 60 F. Supp. 2d 62, 73 (E.D.N.Y.
1993); Guardian Life Ins. Co. vy. American Guardian Assur.
Co., 943 F. Supp. 509, 525-26 (E.D. Pa. 1996). Thus, as has
been noted, “the relation of patent law to state unfair
competition law is exactly the same as its relation to federal
trademark law.” Kohler v. Moen, 12 F.3d 632, 647 (7th Cir.
1993) (Cudahy, J. dissenting). Accord, Ferrari S.p.A.
Escercizio v. Roberts, 944 F.2d 1235, 1253 (6th Cir. 1991)
(Kennedy, J. dissenting ) (“the rationale applied in this trilogy
of cases [Sears, Compco, Bonito Boats] © state unfair

20

competition laws applies with equal force to federal trademark
laws”), cert. denied, 505 U.S. 1219 (1992). The Respondent’s
choice of 15 U.S.C. § 1125(a), rather than state law, as a vehicle
for seeking to enjoin Petitioner from selling the Accused Signs,
was and is wholly extraneous to “the teaching of Sears and
Compco that ideas once placed before the public without the
protection of a valid patent are subject to appropriation without
significant restraint.” Bonito Boats, 489 U.S. at 156.

Under the reasoning of the decision below, the subject
matter of Respondent’s expired patent is anything but “free
from all restrictions.” Scott Paper Co. v. Marcalus Co., 326
U.S. 249, 257 (1945). The Respondent has been held entitled
to claim, not merely a right to exclude use of some “symbol” or
“device” used “on” the Accused Signs, but a right to exclude
Petitioner from selling the Accused Signs at all. In many
respects, the decision below exposes Petitioner to greater
litigation defense costs, greater uncertainty of outcome, and
greater liability for monetary and injunctive relief, than
Petitioner would face if the term of Respondent’s patent had
been extended and this action was one for patent infringement
under 35 U.S.C. 271(a)."*

The conflict between the decision below and past decisions
of this Court is not avoided, and in fact iis magnified, by the
Court of Appeals’ deigning to acknowledge that Petitioner

** Cf. Imagineering, Inc. v. Van Klassens, Inc., 53 F.3d 1260 (Fed. Cir.),
cert. demied, 516 U.S. 909 (1995) (affirming award of $ 1.8 million in
compensatory damages and attorneys’ fees for sale of furniture
embodying unpatented design, and affirming liability for punitive
damages ).

could sell the Accused Signs in their current configuration if,
following a federal court trial, a court or jury concluded that
“the particular product configuration is a competitive
necessity,” 200 F.3d at 940, and so would be legally “non-
functional” in the Court of Appeals’ eyes. Contrary to the
Court of Appeals’ apparent view, the right of the public to use
and enjoy the subject matter of expired patents has never
depended on whether a particular producer can successfully run
any such litigation gauntlet.

Not only did this Court, in Compco, specifically reject
“nonfunctionality” as a justification for enjoining a competitor
from selling goods embodying an unpatented design, 376 U.S.
at 238, but more fundamentally, this Court has repeatedly held
that “the consuming public at large” has an interest in expired
patent subject matter which is not and canmmot be made
dependent on the individual “needs” or equities of a single
producer. Scott Paper, 326 U.S. at 256-57. Furthermore, and
particularly in its 1980's redefinition (see note 6 supra), the
standard of “functionality” is completely unrelated to federal
law standards of patentability. And just as the competitive
significance of an invention is extraneous to whether it qualifies
for patent protection, amd is equally extraneous to the operation
of the federal patent system in placing subject matter in the
public domain. Vornado, 58 F.3d at 1508.

The Court of Appeals’ invocation of the doctrine of
“functionality” begged the question of whether the
configuration of the Accused Signs was subject to regulation
under 15 U.S.C. § 1125(a) in the first instance. It was not, both

“public property” which Petitioner had a “federal right to copy
and to use,” Bonito Boats, 489 U.S. at 165, and because the
configuration of the Accused Signs does not constitute a mere
“symbol” or “device” used “on” or “in connection with”
“goods” as described in Part II, infra.

The Court of Appeals’ position that an expired patent is
merely “evidence” of whether its disclosures and teachings can
be used by a competitor, 200 F.3d at 936, erroneously
presupposes that federal patent law is a “one-way street” which
supposedly vests rights only in patentees, under grants of rights
to “exclude” under 35 U.S.C. § 154, and supposedly gives
nothing to the public when a patent expires. Notwithstanding
the persistence of some lower federal courts in adhering to this
view (see note 11 and accompanying text, supra), it was
explicitly rejected in Bonito Boats, 489 U.S. at 165.

Nor can the decision below be reconciled with this Court’s
decisions on a theory that Bonito Boats, Sears, Compco, and
earlier cases only preclude assertion of “patent-like rights.”
Midwest Trailer, 175 F.3d.at 1363. While those cases surely do
bar assertion of “patent-like rights” in subject matter which
federal patent law places in the public domain, their reasoning
is not limited to claims of “patent-like rights.” On the contrary,
the purported basis of liability in Compco was and is
indistinguishable from that articulated by the Court of Appeals
in the decision below.

23

Il. THE CONFIGURATION OF THE ACCUSED SIGNS
IS NOT A MERE "SYMBOL" OR "DEVICE"

" Al

The Trademark Act of 1946 establishes two separate, and
very different, "registers" of trademarks: The "principal
register," established under Title I of the Act, 15 U.S.C. §§
1051-1072, and the "supplemental register," established under
Title II of the Act, 15 U.S.C. §§ 1091-1096.

The "principal register" was established to strengthen the
rights of trademark owners in the United States. Registration
on the "principal register" constitutes "prima facie evidence of
_.., the registrant's exclusive right to use the registered mark in
commerce on or in connection with the goods or services
specified in the [registration] certificate." 15 U.S.C. § 1057(b).
See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 120 §. Ct.
1339, 1342 (2000).

The "supplemental register,” by contrast, was established
to facilitate the registration in foreign countries of subject
matter which United States law did not recognize as trademark
subject matter, and which was thus ineligible for registration on
the principal register. See Hearings on H.R. 9041 Before the
House Comm. on Patents, 75th Cong., 3d Sess. 180 (1938)
("The primary purpose of this supplemental register is to get
registration abroad"). Registration on the supplemental register
expressly does not imply any exclusive trademark rights in the
United States. 15 U.S.C. § 1094.

24

5?

ene Tiree ~~

The Lanham Act contains two very different definitions of
"trademark," one for the principal register and one for the
supplemental register. For purposes of registration on the
principal register, Section 45 of the Act, 15 U.S.C. § 1127,
defines the term "trademark" as including "any word, name,
symbol, or device, or any combination thereof... ." For
purposes of registration on the supplemental register, Section
23(c) of the Act, 15 U.S.C. § 1091(c), defines the term "mark"
much more broadly, as follows (emphasis added):

For the purposes of registration on the supplemental
register, a mark may consist of any trademark, symbol,
label, package, configuration of goods, name, word,
slogan, phrase, surname, geographical name, numeral,
or device or any combination of any of the foregoing,
but such mark must be capable of distinguishing the
applicant's goods or services.

The Section 45 definition of "trademark" was based on the
common law definition of "trademark" stated in McLean v.
Fleming, 96 U.S. 245, 254 (1877), wherein the Court held that
"a trademark may consist of a name, symbol, figure, letter, form
or device ... ." At common law, the terms "symbol" and
"device" were well understood as implying something "written,
printed, stamped, painted, stenciled, branded, or otherwise, and
either on the article itself, or on its case, covering, envelope, or
wrapper.” W. Browne, Treatise on the Law of Trademarks § 87
(2d ed. 1885). See Fairbanks v. Jacobus, 8 F. Cas. 951, 952
(C.C.S.D.N.Y 1877) (No. 4,608) (“a trademark . . . is something
different from the article itself which the mark designates”).

25

The much broader definition of "mark" contained in
Section 23(c) of the Act, and in particular, its inclusion of the
phrase "configuration of goods," was based on foreign law:

About configuration of goods, and so forth . . . that
phraseology was used to embrace every kind of
trademark subject matter in foreign countries. The
primary purpose of this supplemental register is to get
registration abroad and in countries where a domestic
registration is required and configuration of goods is
there regarded as trademark subject matter, and if it is
so regarded as trademark subject matter, we should
regard it as such.

Hearings on H.R. 9041 Before the House Comm. on Patents,
75th Cong. 3d Sess. 180 (1938).

Section 43(a) of the Lanham Act was extensively amended
by the Trademark Law Revision Act of 1988, Pub. L. No. 100-
667, § 132, 102 Stat. 3946 (1988). At that time, Congress
imported into Section 43(a) the definition of "trademark"
applicable to the principal register. Section 43(a) was amended
to make actionable certain uses of "any word, term, name,
symbol, or device." 15 U.S.C. § 1125(a). The phrase
"configuration of goods" was not included in the amended
Section 43(a), but only in the amended Section 23(c) dealing
with the supplemental register, 15 U.S.C. § 1091(c).

The omission of the phrase "configuration of goods” from

amended Section 43(a) cannot be regarded as some mere
oversight to be disregarded. "Where Congress includes

26

\

particular language in one section of a statute but omits it in
another section of the same Act, it is generally presumed that
Congress acts intentionally and purposely in the disparate
inclusion or exclusion." Russello v. United States, 464 U.S. 16,
23 (1983).

The Congress well knows how to pass design legislation
protecting the “configuration” of “goods” sold in U.S.
commerce. Over the past 85 years, literally dozens of industrial
design bills have been introduced, and defeated, in the
Congress. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc..,
489 U:S. 141, 167 (1989); Hearings on S.213 Before the
Subcommittee on Patents, Copyrights and Trademarks, Senate
Committee on the Judiciary, 100th Cong., Ist Sess. 11-17
(1987) (Statement of Ralph Oman). Congressional efforts to
enact protection for "configurations of goods" continued after
the 1988 amendments to the Lanham Act.'® In 1998, the
Congress actually passed, and the President signed, a statute
protecting the “design of a useful article,” 17 U.S.C. § 1301(a),
but limited the statute’s scope to “vessel hull[s].” 17 U.S.C. §
1301(b)(2).

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),
does not purport to regulate sales of “goods” per se. Rather the

° See, e.g., H.R. 1790, 102d Cong., Ist Sess. § 1001 (1991)
("The designer or other owner of an original design of a
useful article which makes the article attractive or distinctive
in appearance to the purchasing or using public may secure
the protection provided by this chapter upon complying with
and subject to this chapter").

27

statute distinguishes between "goods," on the one hand, and
"any word, term, name, symbol, or device, or any combination
thereof" used "on or in connection with any goods." 15 U.S.C.
§ 1125(a) (emphasis added). The phraseology "on or in
connection with" clearly assumes that a "mark" is physically or
conceptually separable from the goods and could be taken "off"
while leaving the "goods" intact. That the terms "symbol" and
"device" mean something different from “configuration of
goods" is clear from Section 23(c) of the Act, which refers to
"any trademark, symbol, . . . configuration of goods, . . . or
device.”

The principle noscitur a sociis dictates that "words grouped
in a list should be given a related meaning." Dole v. United
Steelworkers of America, 494 U.S. 26, 36 (1990). Here the
words "symbol" and "device" are the last two of a string of
words which begins: "word, term, name". Each of these first
three words clearly designates something physically or
conceptually separable from goods "on or in connection with
which" they are used. The terms “symbol" and "device" clearly
require a similar interpretation.

The requirement of physical or conceptual separateness is
also evident on the face of the definition of “use in commerce”

contained in 15 U.S.C. § 1127:

For purposes of this chapter, a mark shall be deemed
to be in use in commerce-(1) on goods when-(A) it is
placed in any manner on the goods or their containers
or the displays associated therewith or on the tags or
labels affixed thereto, or if the nature of the goods

28

—_——_— ——

makes such placement impracticable, then on
documents associated with the goods or their sale . . .

As with the language of 15 U.S.C. § 1125(a), the statutory
definition of “use in commerce” specifically distinguishes
between “a mark” and “goods” and identifies a “mark” as
something “placed . . . on the goods.” Here again, the statutory
language makes clear Congress’s intent not to restrict sales of
“goods” per se, but to regulate merely physically or
conceptually separable “marks” which are “placed . . . on the
goods” and which can be readily taken “off” while leaving the
“goods” intact. The“use in commerce” definition of 15 U.S.C.
§ 1127 embodies what historically has been known as the
“affixation” requirement of trademarks. See generally 3 R.
Callmann, The Law of Unfair Competition, Trademarks &
Monopolies § 19.04(4th ed. 1998).

In each of this Court’s recent decisions interpreting 15
U.S.C. § 1125(a), the subject matter in question has been
physically or conceptually separable from the “goods” being
sold by the plaintiff. See Wal-Mart Stores, Inc. v. Samara, 120
S. Ct. 1339 (2060) (appliques used on shirt collar); Qualitex Co.
v. Jacobson Products Co., 514 U.S. 159 (1995) (color used on
ironing board covers); Two Pesos, Inc. v. Taco Cabana, 505
U.S. 763 (1992) (decor used in connection with restaurant
services). Packaging (e.g. , the COCA-COLA bottle) would also
be fully eligible for protection under a physical and conceptual
separability requirement.

The text of 15 U.S.C. § 1125(a) is fully consistent with this
Court’s long and unbroken line of decisions holding that federal

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patent law creates “public property” which all have a “federal
right to copy and to use,” Bonito Boats, 489 U.S. at 152, 165,
but that competitors must mark their products to indicate the
product’s source. Particularly in view of the Congress’s
demonstrated ability to enact design legislation when that it is
its intent, 15 U.S.C. § 1125(a) cannot reasonably or sensibly be
interpreted as affording the kind of broad design protection
which it was held to afford in this case.

CONCLUSION

For the reasons set forth above, the decision of the Court of
Appeals should be reversed.

Dated: August 24, 2000

JAMES W. DABNEY
Counsel for Amicus Curiae

Marcia H. Sundeen 1155 Avenue of the Americas
Carol M. Wilhelm New York, New York 10036
(212) 790-9090

PENNIE & EDMONDS LLP
New York, New York

Of Counsel

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385014_0361%3A13. Public record. Not legal advice.