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

a

No. 99-1571 OCT - 6 2000

In The

Sipreme Court of the United States

—_ a —

TRAFFIX DEVICES, INCORPORATED,

Petitioner,

MARKETING DISPLAYS, INCORPORATED,

Respondent.

-——--——_ - ——._—_- — @ —__- —_ --— --

On Writ Of Certiorari To The

United States Court Of Appeals

For The Sixth Circuit

———__-—___——__ @ —___ -—__-- — —

BRIEF OF THOMAS & BETTS CORPORATION

AS AMICUS CURIAE IN SUPPORT OF RESPONDENT

— oo — a

Sipnry Davip*

Roy H. Werner

Lerner, Davip, LITTENBERG,

KrumMHo.z & Mentriik, LLP

600 South Avenue West

Westfield, NJ 07090-1497

82 E. Allendale Road eeu “ails pcg ord

Saddle River, NJ 07458 nets

Tel: (201) 934-9800 Counsel for Amicus Curiae

Fax: (201) 934-8681 Thomas & Betts Corporation

*Counsel of Record

On the Brief:

James D. Hay

Lewis & McKenna

COCKLE LAW BRIEF PRINTING CO). (800) 225-494

OR CALL COLLECT (402) 42-2831

SBEST AVAILABLE COPY

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES .............ccccseeeeees ii

INTEREST OF THE AMICUS CURIAE ............. 1

SUMMARY OF ARGUMENT...............000e eee 3

SDE Ae inedbatndadcedcdsvecesescvedeccicese 5

I. THE PURPORTED RIGHT TO COPY

APPEARS NOWHERE IN THE CONSTITU-

TION OR ANY PATENT STATUTE ......... 5

Il. THE ARGUMENTS OF PETITIONER AND ITS

AMICI ARE PREMISED ON AN OUTDATED

AND/OR INCORRECT VIEW OF THE PAT-

BEES ROE cece resccenconcccuvecvccesesences 7

III. PREEMPTION DECISIONS BY THIS COURT

ARE FAR FROM DISPOSITIVE .............. 12

IV. PETITIONER PROVIDES NO REASON TO

DESTROY ONLY THE LANHAM ACT TRADE

DRESS RIGHTS OF FORMER PATENT

PED coc beccsccncesccencvessevessccesees 15

V. THE EXTREME VIEWS ESPOUSED BY PETI-

TIONER AND ITS SUPPORTERS ARE UNSUP-

PORTED AND UNWISE.................0005. 19

VI. CONCERNS REGARDING THE PURPORTED

EASE OF ESTABLISHING SECONDARY

MEANING ARE UNFOUNDED.............. 24

VII. THIS CASE DOES NOT INVOLVE DESIGN

PATENTS, BUT IF IT DID, THE ARGUMENTS

IN FAVOR OF A SEPARATE DEFENSE

WOULD BE EVEN WEAKER................ 25

GPU NEINE cvcccscccccecsncecocsccccsecevesesses 28

TABLE OF AUTHORITIES

Page(s)

Cases

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489

US. 060 (IGGED oc ccccvccccssonsessceses 12, 14, 17, 22

Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S.

254 (19GE) .... -cccccccecvevesvsccccsessecues 12, 13, 14

Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661 (1990) ....

Ferrari S.P.A. Esercizio v. Roberts, 944 F.2d 1235 (6th

Che. BODE) .cccccccccveccscossedueuesenenueaenee

Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.) 511

oy SPP

Heinle, In re, 342 F.2d 1001 (C.C.P.A. 1965).......

Honeywell, In re, 497 F.2d 1344 (C.C.P.A. 1974)....

Kellogg Co. v. National Biscuit Co., 305 U.S. 111

(IGGED oo ccccccccccceseccccesescecseseuneeneenen

King Instruments Corp. v. Perego, 65 F.3d 941 (Fed.

Ss. Pe ttstst‘=‘SOCS:S—‘C:S:

Krueger Int'l, Inc. v. Nightingale Inc., 915 F. Supp.

595 (S.D.N.Y. 1996) oc cccccccccvcvescccccseces

Leatherman Tool Group, Inc. v. Cooper Indus., Inc.,

131 F.3d 1011 (Fed. Cir. 1997)...............45.

Midwest Indus., Inc. v. Karavan Trailers, Inc., 175

F.3d 1356 (Fed. Cir.), cert. denied, 120 S. Ct. 527

tic, ee ee

Mogen David Wine Corp., In re, 328 F.2d 925

GORA. WED... cccccsessvestuvsesseuunenee 11,

Mogen David Wine Corp., In re, 372 F.2d 539

COPA. WEF) oo cccccccvcccoccsecvccavsvssenwen

10

so oe

26, 27

iii

TABLE OF AUTHORITIES - Continued

Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159

PRPC UEEREERbebebecesecccoceeccceesce 14, 17

Regional Rail Reorg. Act Cases, 419 U.S. 102 (1974) ..... 7

R.M. Smith, Inc., In re, 734 F.2d 1482 (Fed. Cir.

DP PUECRSRRGGEOESEDS6eS eee cccccocesccooceece 28

Ruckelshaus v. Monsanto Co., 467 U.S. 986 (1984)...... 7

Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249

DEES ELISE EE IESE EES OOTP ET TEST TT TTT 12

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225

PU MUCPERSGRRESGEC eS e60ees ccc cceeess 12, 13, 14, 18

Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1896) .... 12

Studiengesellschaft Kohle mbH v. Northern

Petrochemical Co., 784 F.2d 351 (Fed. Cir. 1986) .... 11

Thomas & Betts Corp. v. Panduit Corp., 34

U.S.P.Q.2d (BNA) 1607 (7th Cir. 1994)............. 22

Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277

(7th Cir.), cert. denied, 525 U.S. 929 (1998)..... passim

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763

CN sce eeececccces 17

Vornado Air Circ. Sys., Inc. v. Duracraft Corp., 58

F.3d 1498 (10th Cir. 1995), cert. denied, 516 U.S.

en cc cc sc ccccecocescs 19, 21

W.T. Rogers Co. v. Keene, 778 F.2d 334 (7th Cir.

ee oo es ceeds cecccesecececees 26

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 120 S. Ct.

EEL EEE 6, 24

Zip Dee, Inc. v. Dometic Corp., 931 F. Supp. 602

EERSTE PCM PT TTTTTTEETTTT EY 21, 24

iv

TABLE OF AUTHORITIES - Continued

Page

Statutes, Rutes & OTHer AUTHORITIES

U.S. Constitution, art. I, § 8, cl. 8..... 6.6.6 eee eee eee 6

15 UG.C. © 112Sa) .....ccccccccccccccsccccccees passim

35 U.S.C. § 40 (1946) ...... cc ccccccccccccceccccccees 9

BB UBL. @ BBR. ccccccccccccccccccccccccccosccccese 16

SB UGC. © 1B6..ccccccccccccccccccccccccccccccccces 6

TB UGC. © BFE. cccccccccccccccccccccccccccsccceces 25

J. THomas McCartuy, McCartHy On TRADEMARKS

Anp Unrair Competition (4th ed. 2000)......... 21, 22

INTEREST OF THE AMICUS CURIAE

Thomas & Betts Corporation (“T&B”) respectfully

submits this brief as amicus curiae in support of respon-

dent Marketing Displays, Inc.’

T&B is a manufacturer of electrical components,

including cable ties used for wrapping electrical wires. In

1962, T&B introduced a cable tie having a metal barb

which allowed the long strap of the tie to be easily

inserted into (but not pulled out of) the “head,” thus

holding the wires together tightly. The exterior of the

head of T&B’s cable tie had an oval shape.

T&B has continuously sold its cable tie with the oval-

shaped head since 1962. In 1965, T&B obtained a utility

patent on its cable tie having claims directed to the metal

barb locking device but which nowhere mentioned the

oval-shaped head. However, the oval-shaped head

appeared in the specification. In 1966, T&B obtained a

design patent which disclosed the metal barb, as well as

the overall shape of T&B’s cable tie, including the oval-

shaped head.

While both of T&B’s patents expired by 1982, T&B

continued to sell its barbed cable tie with the oval-shaped

head. In 1994, 32 years after T&B had introduced its cable

tie and 12 years after T&B no longer had any patent

protection, Panduit introduced a cable tie which not only

1 T&B has obtained the written consent of both parties

which have been filed with this brief. This brief was not

authored in whole or in part by counsel for either party, and no

person or entity other than T&B has made a monetary

contribution to the preparation or submission of this brief.

employed the metal barb locking device (which had been

claimed in T&B’s expired utility patent and which had

been shown as part of the overall appearance in T&B’s

design patent), but which also copied the oval-shaped

head.

T&B sued Panduit in the United States District Court

for the Northern District of Illinois, alleging trade dress

infringement under § 43(a) of the Lanham Act, 15 U.S.C.

§ 1125(a). In 1998, the Seventh Circuit rejected Panduit’s

argument that T&B’s expired utility patent provided a

complete and separate defense, and joined other courts in

ruling that a utility patent may constitute nondispositive

evidence of functionality. See Thomas & Betts Corp. v.

Panduit Corp., 138 F.3d 277 (7th Cir.), cert. denied, 525 U.S.

929 (1998) (“T&B”). The Seventh Circuit's decision in T&B

has been repeatedly cited by the Sixth Circuit in the

present case (Pet. App. 18a) and in substantially every

prior brief before this Court, including an amicus brief

filed by Panduit itself.

Panduit has continued to argue that T&B’s expired

utility and design patents constitute a separate and com-

plete defense. T&B, as the owner of what it considers to

be valid and valuable trade dress rights, is of course

interested in having this Court adopt the views advo-

cated by T&B and accepted by the Seventh Circuit in

T&B, and in receiving from this Court a clarification of

the law on this issue where the courts of appeal are in

substantial agreement as to broad principles but may

require “fine tuning” for which this case presents an

appropriate vehicle.

SUMMARY OF ARGUMENT

As enunciated by the Seventh Circuit in T&B and by

most other courts which have considered this issue, util-

ity patents should constitute nondispositive evidence of

functionality. The contention that a “right to copy” cre-

ates a separate and complete nonstatutory defense any

time a claimed trade dress feature appears in any context

in any expired patent, finds no support in the Constitu-

tion or in any statute. (See Part I.) Petitioner’s argument

for a “right to copy” arises out of fundamental miscon-

ceptions as to the nature of patent rights: patentees obtain

only a negative right to exclude, and no affirmative right

to use which can “enure” to the public. (See Part II.)

While Petitioner and its supporters rely on broadly

worded dicta from prior decisions of this Court, the more

recent of those decisions all involved federal preemption

of claims under state law, a doctrine having no relevance

to trade dress claims under the federal Lanham Act. (See

Part III.)

Petitioner's position is also illogical and inconsistent.

Given Petitioner’s view that anything in the “public

domain” is precluded from protection under the Lanham

Act, there is no basis to erect a special defense to Lanham

Act claims only where the trade dress claimant owned the

expired patent. Taking Petitioner's “public domain”

views to their logical conclusion would destroy trade

? The older decisions of this Court are even less pertinent:

they issued before the Lanham Act was even enacted, and are

not inconsistent in result with the majority view of the courts of

appeal. See, e.g., T&B, 138 F.3d at 285-87 (International

Trademark Association (“INTA”) Br. at 10.)

dress protection (i) where any patent owned by any com-

pany or person showed the feature in question in any

context, and (ii) where the feature, although never pat-

ented, could still be found in other “public domain”

materials. Allowing this proposed special defense only

where the trade dress claimant owns the expired patent

would simply punish patent owners for disclosing their

technological contributions in detail, and thereby frus-

trate the objectives of the patent laws. (See Part IV.)

The positions urged on behalf of Petitioner also fail

to distinguish properly between (i) trade dress features

which constitute all or part of the invention claimed in a

utility patent (which may raise questions of func-

tionality); (ii) nonfunctional features which are only dis-

closed in a utility patent (where the patent should be at

most nondispositive evidence of functionality and should

not bar protection where the disclosure is merely inciden-

tal) (see Part V.1); (iii) features which are neither disclosed

nor claimed in an expired patent, but which were used by

the patentee on its commercial product during the term of

the patent (as to which the patent should be totally irrele-

vant) (see Part V.2); and (iv) features which appear only in

design patents granted for ornamental inventions (in

which the patent may properly be viewed as evidence of

nonfunctionality) (see Part VII).

Petitioner’s extreme positions cannot be justified by

fears that owners of numerous expired patents will

oppress their competitors by claiming trade dress rights

immediately after their patents expire. Petitioner ignores

the heavy burden placed upon any party which is claim-

ing trade dress protection in a product feature, irrespec-

tive of whether an expired patent is in the picture. For

LB _

example, this Court just recently confirmed that those

claiming trade dress rights in unregistered product

designs must always prove secondary meaning. Further-

more, the Seventh Circuit has held that secondary mean-

ing must not primarily stem from the exclusivity created

by a patent. (See Part VI.) These requirements, coupled

with the claimant’s burden of proving a likelihood of

confusion and the recent enactment of 15 U.S.C.

§ 1125(a)(3), which places the burden on the claimant to

prove nonfunctionality, will discourage baseless suits,

increase the number of suits dismissed on summary judg-

ment, and will assure that few claimants will be able to

successfully enforce trade dress rights in product designs.

This Court should thus decline to create the sweep-

ing new nonstatutory defense to Lanham Act claims

urged on behalf of Petitioner, i.e., that any appearance of

a trade dress feature in an expired patent or on a for-

merly patented product constitutes a complete and sepa-

rate defense to a Lanham Act claim.

¢

ARGUMENT

I. THE PURPORTED RIGHT TO COPY APPEARS

NOWHERE IN THE CONSTITUTION OR ANY

PATENT STATUTE

Petitioner repeatedly suggests that the purported

“right to copy” has a basis in the Constitution, or at least

in some patent statute. For example, Petitioner argues

that trademark law is a product of Congress’s power

under the Commerce Clause which “does not authorize

Congress to override other provisions of the Constitu-

tion” (Pet. Br. at 11; see also id. at 10) (“Congress has

expressed no intent to repeal, or even just curtail, the

public’s right to copy from expired patents”). But neither

Petitioner nor its supporters can point to anything in the

“Writings and Discoveries” clause of the Constitution,

art. I, § 8, cl. 8, or any other provision of the Constitution

or any federal statute, which creates any affirmative right

to use an invention upon expiration of a patent.

The closest one comes to teasing such a right out of

the Constitution or any statute is the reference to “limited

times” in the “Writings and Discoveries” clause of the

Constitution, and the limited term set forth in 35 U.S.C.

§ 154. But those provisions can be read far more readily

as simply establishing the right of Congress to create a

scheme in which what is sometimes characterized as “the

public’s natural right not to be excluded” (M. Pollack Br.

at 16-17) is restricted by inventors who are being given

the right to exclude others from their inventions for “lim-

ited times,” and the exercise of that constitutional author-

ity by Congress. In contrast, the right to prevent

confusion in the marketplace is set forth expressly in the

Lanham Act, 15 U.S.C. § 1125(a), and this Court recently

confirmed that the Lanham Act includes claims for trade

dress in the form of product design. See Wal-Mart Stores,

Inc. v. Samara Bros., Inc., 120 S. Ct. 1339 (2000).

Even if one views this issue as a conflict between the

Commerce and the Writings and Discoveries clauses of

the Constitution, Petitioner and its supporters cite no

authority for the proposition that either clause is of such

transcendent importance as to require the other to give

way. And even if a “right to copy” is determined to be

-_

embraced (albeit unstated) in the Patent Code, when con-

fronted with apparently conflicting statutes which are

“capable of coexistence, it is the duty of the courts, absent

a clearly expressed Congressional intention to the con-

trary, to regard each as effective.” T&B, 138 F.3d at 285,

quoting Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1018

(1984), quoting Regional Rail Reorg. Act Cases, 419 U.S. 102,

133-34 (1974).

Petitioner and its supporters cite no such expression

of Congressional intent. On the contrary, the recent statu-

tory recognition of the common law functionality defense

in Lanham Act cases, see 15 U.S.C. § 1125(a)(3), demon-

strates that Congress chose the functionality doctrine as

the vehicle for preventing the Lanham Act from restrict-

ing the right to use utilitarian features of the type which

might be patented.

Il. THE ARGUMENTS OF PETITIONER AND ITS

AMICI ARE PREMISED ON AN OUTDATED

AND/OR INCORRECT VIEW OF THE PATENT

LAWS

A central premise of Petitioner’s position, as echoed

by certain of the amici, is that a patentee enjoys the

“exclusive right to practice” his or her invention during

the term of the patent, but once the patent expires, that

right to practice “enures” to the public. For example:

To encourage innovation, the inventor of a new

and useful advance is given “the exclusive right

to practice the invention for a period of years.”

[Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489

U.S. 141 (1989)] at 151. In exchange, the inventor

must disclose how to make the invention, 35

U.S.C. 112, so that, after the patent expires, “the

knowledge of the invention enures to the peo-

ple, who are thus enabled without restriction to

practice it and profit by its use.” United States v.

Dubilier Condenser Corp., 289 U.S. 178, 187 (1933).

(U.S. Department of Justice (“DOJ”) Br. at 1; see also id. at

7-8 and Pet. Br. at 2-2.)

The problem with this argument, which is cobbled

together from broad statements of general principles in

cases having nothing to do with the subtle balancing that

is needed where two equally important federal statutory

schemes are in ostensible conflict, is that the fundamental

premise is incorrect. A patentee does not receive through

the patent any right to practice an invention, let alone an

exclusive right, for a limited period of time or for any

period of time. While the law on this point was arguably

confusing for many years, it is now indisputable that the

only right received through a patent is the negative right

to exclude others from making, using, and selling the

invention defined by the patent’s claims. Indeed, the

owner of an expired patent may be prevented from prac-

ticing his or her own invention by other federal rights

owned by others (including other unexpired patents) as

well as other federal and state regulations.

Since a patent never gives its owner the right to

practice the invention during the patent term, this nonex-

istent right cannot “enure” to the public upon expiration.

All that occurs when a patent expires is that the patent

itself ceases to be an impediment to the public’s practice

of the invention — that is, to the extent the public would

have the right to practice the invention in the absence of

the patent, the expiration of the patent removes that

obstacle.

aE

bettie

1. Prior to 1952, the Patent Act confusingly defined

the rights given by a patent to the patentee as “the

exclusive right to make, use, and vend the invention or

discovery.” 35 U.S.C. § 40 (1946). As explained in King

Instruments Corp. v. Perego, 65 F.3d 941 (Fed. Cir. 1995):

Before the 1952 Act, the Patent Act defined the

bundle of rights in terms of “the exclusive right

to make, use, and vend the invention or discov-

ery.” 35 U.S.C. § 40 (1946). This wording - defin-

ing the grant in terms of the right to make the

invention, rather than the right to exclude

others from making the invention - caused con-

fusion.

The 1952 Act, § 154, clarified that a patent

empowered its owner “to exclude others from

making, using, or selling” the invention. 35

U.S.C. § 154 (1952) (emphasis added)... .

Inventors possess the natural right to exploit

their inventions (subject to the patent rights of

others in a dominant patent) apart from any

Government grant. . . . Thus, the 1952 Act clari-

fied that a patent confers the right to exclude

others from exploiting an invention. It does not

confer the right to exploit the invention already

possessed by the inventor.

Id. at 949.

These principles were reaffirmed in Leatherman Tool

Group, Inc. v. Cooper Indus., Inc., 131 F.3d 1011 (Fed. Cir.

1997):

[T]he federal patent laws do not create any affir-

mative right to make, use, or sell anything. As

the Supreme Court has stated, “[t]he franchise

which the patent grants, consists altogether in

the right to exclude every one from making,

10

using, or vending the thing patented, without

the permission of the patentee.” Bloomer v.

McQuewan, 55 U.S. 539, 548, 14 How. 539, 14

L.Ed. 532 (1852). . . . Therefore, the Supreme

Court made clear that the patent laws provide a

limited right to exclude others from making,

using, or selling a claimed invention for a lim-

ited period of time, but afford no affirmative

right to make, use, and sell a patented inven-

tion.

Id. at 1015.

The ability of a patentee to exploit a patented inven-

tion during its term may be prevented by other private

rights, such as adversely held dominant patents. Like-

wise, legislation may create regulatory and other nonpa-

tent impediments to the exploitation of a patented

invention, e.g., the inventor of a patent on a gun or a drug

may be restricted or prohibited from its use. See, e.g., Eli

Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 669-70 (1990)

(owner of patent on drug may be unable to exploit the

patent for want of FDA approval).

2. Since a patent does not provide the owner with

an affirmative right to use the invention during its term,

it necessarily follows that the expiration of such patent

does not vest in that owner - or in anyone else —- the

affirmative right to use the invention. “The expiration of

a patent right is not a guarantee of a right to use. The

right to make, use, or vend any given thing may be, and

often is, subservient to several patents expiring at differ-

ent times.” In re Heinle, 342 F.2d 1001, 1005 (C.C.P.A.

1965). For example, when a product patent expires, the

particular use of the product may still be prohibited by a

11

later patent. Studiengesellschaft Kohle mbH v. Northern

Petrochemical Co., 784 F.2d 351, 357 (Fed. Cir. 1986).

Thus, just as a patentee is not assured of the right to

practice a patented invention during the patent term, a

patentee likewise enjoys no guarantee that he or she will

be able to practice the patented invention without restric-

tion upon expiration. Accordingly, and notwithstanding

dicta in this Court’s opinions whose origins date back to

an era when the nature of patent rights was sometimes

mischaracterized as providing an affirmative right to

make or use an invention (see supra), it is simply not true

that an inventor obtains any right to practice a patented

invention during the term of the patent. Consequently,

that nonexistent right cannot “enure” to the public upon

expiration of that patent.

3. “Patent expiration is nothing more than the ces-

sation of the patentee’s right to exclude held under the

patent law.” Midwest Indus., Inc. v. Karavan Trailers, Inc.,

175 F.3d 1356, 1362 (Fed. Cir.) (quoting In re Mogen David

Wine Corp., 328 F.2d 925, 930 (C.C.P.A. 1964)), cert. denied,

120 S. Ct. 527 (1999). Thus, for example, during the exis-

tence of the utility patent at issue in T&B, T&B had the

right to exclude others from using a metal barb locking

device in the head of a plastic cable tie. However, T&B’s

utility patent did not give T&B the right to prevent the

use of an oval-shaped head in cable ties, unless that cable

tie had the metal barb and other features claimed in the

utility patent.

Upon expiration of T&B’s utility patent, T&B lost the

right to prevent others from using the metal barb locking

device in the head of a plastic cable tie. But because

12

T&B’s utility patent never gave T&B the right to exclude

others from using oval-shaped heads per se on cable ties

(a feature which was not part of the claimed invention in

the patent, but merely happened to be disclosed inciden-

tally in the specification of T&B’s expired patent), the

expiration of T&B’s patent was a nonevent with respect to

the oval-shaped head. To the extent T&B now has the

right to prevent others from selling cable ties having

oval-shaped heads causing confusion in the marketplace,

that right arises under the Lanham Act (not the patent

laws) as a result of decades of sales and advertising; and

that right was not extinguished by the expiration of

T&B’s patent.

III. PREEMPTION DECISIONS BY THIS COURT ARE

FAR FROM DISPOSITIVE

Aside from cases which predate the Lanham Act -

Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1896),

Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938), and

Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249 (1945) -

and thus do not and could not address the present situa-

tion where another federal right is involved, and which in

large measure relied om what we would today call func-

tionality (DOJ Br. at 11; INTA Br. at 10), Petitioner and

some of its amici draw much of their arguments from

three post-Lanham Act decisions of this Court: Sears,

Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), Compco

Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964), and

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141

(1989). But Sears, Compco, and Bonito Boats were all

attempts to restrict the sale of utilitarian products

—— ie ae

13

through rights arising under state law. And in each case,

this Court invalidated such claims based upon federal

preemption under the Supremacy clause.

Petitioner and some of its supporters trivialize that

significant fact and even ridicule it (see, e.g., Holmes

Group Br. at 3, 20). In doing so, they denigrate one of the

most fundamental aspects of the federal system as a

whole. Even the DOJ trivializes concerns relating to fed-

eral preemption to buttress its arguments. (DOJ Br. at 18.)

While the DOJ concedes that Sears and Compco involved

state unfair competition laws, the DOJ simply concludes,

with nothing more than conjecture, that this Court would

not have held a state prohibition on copying to be pre-

empted by a federal law, if a federal statute - i.e., the

Lanham Act - could have been invoked to prohibit copy-

ing. (Id.)

First, while the Lanham Act has existed since 1946,

Petitioner itself acknowledges that the scope of § 43(a) of

the Lanham Act was not appreciated as encompassing the

design of a product until much later. (Pet. Br. at 3, 26,

noting that federal trade dress protection for product

designs evolved well after Sears and Compco were

decided.) Moreover, speculating as to whether the plain-

tiffs in Sears and Compco, under their particular facts and

circumstances, might have asserted a claim under the

Lanham Act is useless because the fact is they did not.

Thus, this Court was obligated to deal with the situations

as presented, in which the plaintiffs were only seeking

relief under state law. Nor is the present Petitioner's

decision to sue under the Lanham Act rather than under

state law “wholly extraneous” to Sears and Compco

(Holmes Group Br. at 21) or “happenstance” (id. at 9),

14

given the fact that federal law can preempt state law

claims, but cannot preempt claims arising under another

federal law.

Ironically, while Petitioner and some of its amici

argue that Sears, Compco, and Bonito Boats should be

applied to federal claims under the Lanham Act, nobody

has an adequate response to this Court’s statement in

Compco that a right to copy may be restricted by “other

federal statutory protection. . . . ” Compco, 376 U.S. at 238.

At least two courts of appeal have expressly held that the

Lanham Act is included under the rubric of “other federal

statutory protection,” Ferrari S.P.A. Esercizio v. Roberts,

944 F.2d 1235, 1241 (6th Cir. 1991), and T&B, 138 F.3d at

287, while none have held to the contrary.

In fact, only the DOJ attempts to address Compco’s

“other federal statutory protection” language, arguing

that the functionality doctrine prevents unpatented “util-

itarian conceptions” from receiving trade dress protec-

tion. (DOJ Br. at 19 n.7.) But the DOJ bases its position

primarily on the federal preemption cases, which beg the

question of competing federal rights. Moreover, the func-

tionality doctrine to which the DOJ refers never sug-

gested that all “utilitarian conceptions” be excised from

the scope of the Lanham Act. On the contrary, this Court

has recognized that the only “utilitarian conceptions” so

barred are features which are “essential to the use or

purpose of the article” or which affect the cost or quality

of the article, whereby exclusive use of the feature would

put competitors at a significant nonreputation-related

disadvantage. Qualitex Co. v. Jacobson Prod. Co., 514 U.S.

159, 165 (1995). In fact, the DOJ itself acknowledges that

15

not all details disclosed in a patent are eliminated from

Lanham Act protection. (See infra Part V.)

IV. PETITIONER PROVIDES NO REASON TO

DESTROY ONLY THE LANHAM ACT TRADE

DRESS RIGHTS OF FORMER PATENT OWNERS

Petitioner and some of its amici argue that trade dress

rights under the Lanham Act should be denied only to

former owners of patents, without considering other sce-

narios. But if Petitioner is correct in asserting that all

material disclosed in expired patents must become avail-

able to the public, that should also be true if the feature is

found in an expired patent owned by a third party. More-

over, Petitioner’s view that materials which enter the

public domain must be available to all without restriction

would necessarily apply to subject matter which was

never patented for whatever reason. Taken to its logical

conclusion, Petitioner’s position would effectively

engraft onto the already onerous requirements needed to

obtain trade dress protection (secondary meaning, non-

functionality, and likelihood of confusion) a requirement

of novelty which exists only in the patent laws.

1. This case, like many others, follows a typical

model (Hypothetical 1): Company A obtains a utility

patent containing claims to a specific combination of

elements; Company A sells a commercial product covered

by the patent claims; Company A’s patent expires; Com-

pany B copies Company A’s commercial product; and

Company A asserts trade dress rights against Company B

for a product feature in Company A’s commercial prod-

uct which was at least disclosed (and, in some cases,

16

claimed) in the patent, and which (by this time) has

acquired secondary meaning.

Suppose instead (Hypothetical 2) Company A obtains

a utility patent which later expires; Company C sells a

commercial product and develops trade dress rights in a

feature which happens to have been disclosed in Com-

pany A’s patent; Company B copies Company C’s com-

mercial product; and Company C sues for trade dress

infringement. In both hypotheticals, if Petitioner is cor-

rect, the expiration of Company A’s patent purportedly

vested Company B with an absolute right to exploit what-

ever is disclosed in Company A’s expired patent, a right

which cannot be questioned by Company A in Hypotheti-

cal 1 or by Company C in Hypothetical 2.

If indeed there can be no trade dress rights in a

product feature disclosed in an expired patent belonging

to the trade dress owner or anyone else, trade dress litiga-

tion is likely to degenerate into disputes in which the

“prior art” is scoured by the copier in search of any

patent, belonging to anyone, no matter how old, which

happens to disclose the trade dress feature in order to

establish a defense. In full effect, to prevail in a trade

dress claim under the Lanham Act, a claimant would not

only have to prove all existing elements of a claim, but

also that the trade dress feature is novel. In a very real

sense, a patentability statute, 35 U.S.C. § 102, would be

imported into trade dress law. Few if any trade dress

features would survive such an analysis. And each time

this “novelty” defense prevailed, the public would lose

the ability to distinguish between competing products in

the marketplace by virtue of distinctive, nonfunctional

trade dress features.

17

2. The only possible basis for limiting the special

“expired patent” defense urged by Petitioner to owners

of expired patents is the notion that the former patentee

(Company A in both Hypotheticals 1 and 2 above), as

contrasted with an interloper (e.g., Company C in Hypo-

thetical 2 above), was a party to the “carefully crafted

bargain” whereby the patentee received the benefit of the

right to exclude others for a limited period of time. (Pet.

Br. at 2-3, citing Bonito Boats, 489 U.S. at 150-51.) How-

ever, given this Court’s stated aversion to discriminating

against certain categories of trademarks with “special

legal rules,” Qualitex, 514 U.S. at 174, or “superfluous”

requirements, Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.

763, 773-74 (1992), limiting this “expired patent” defense

to patents which were owned by the trade dress claimant

would constitute illogical and counterproductive discrim-

ination against patentees based solely on their having

enriched the art by disclosing an invention in unnecess-

ary detail.

The effect of such discrimination on the patent sys-

tem could be very harmful. For example, if this Court

were to hold that every feature “found” in a patent is

barred from trade dress protection even if it is not part of

the claimed invention (Panduit Br. at 7-10), a view

rejected by the DOJ (see infra Part V), this would prompt

patent applicants to hold back on disclosing incidental

details in their patent application. Even worse, the risk of

possible loss of trade dress rights might convince certain

innovators to forgo patent protection altogether.

3. But even forgoing patent protection might not be

enough to escape from Petitioner’s arguments carried to

18

their logical conclusion. If Petitioner is correct in assert-

ing that material in the “public domain” is ineligible for

protection under the Lanham Act, there would seem to be

no reasoned basis for limiting this rule to only materials

that enter the public domain by way of an expired patent.

Suppose a product feature appeared in Popular

Mechanics, but the person who created the feature never

obtained a patent. If one accepts the arguments of Peti-

tioner that Lanham Act trade dress rights cannot obstruct

access to materials in the public domain, why should

there be a distinction between product features which

entered the public domain upon expiration of a patent

and those which entered the public domain through other

channels such as textbooks, foreign patents, and the like?

Indeed, one of this Court’s decisions relied on heavily by

Petitioner suggests that no such distinction is legitimate.

“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, 376

U.S. at 231.

Here again, the only conceivable basis for this dis-

tinction is the argument that the patentee received the

benefit of the “carefully crafted bargain” which was dis-

cussed above and shown to be wanting. The effect of

distinguishing between features shown in expired patents

and features appearing elsewhere in the public domain is

unnecessary and harmful discrimination against innova-

tors who played by the rules of the patent system and

made valuable public disclosures of technology.

19

V. THE EXTREME VIEWS ESPOUSED BY PETI-

TIONER AND ITS SUPPORTERS ARE UNSUP-

PORTED AND UNWISE

There is no basis to erect any special absolute

“expired patent” defense in Lanham Act trade dress

cases, because the functionality doctrine - properly

applied — should satisfy the concerns raised by Petitioner.

This view is endorsed by the DOJ, which supports Peti-

tioner because it disagrees with the Sixth Circuit’s func-

tionality analysis in this case (DOJ Br. at 12-26), and by

the International Trademark Association (“INTA”), which

supports neither side (INTA Br. at 15-22). Still, at least

one circuit has arguably created such a special defense,

see Vornado Air Circulation Sys., Inc. v. Duracraft Corp., 58

F.3d 1498 (10th Cir. 1995), cert. denied, 516 U.S. 1067

(1996), although a proper functionality analysis in that

case would likely have yielded the same result.

Even if this Court agrees that existing defenses are

inadequate, it should nevertheless resist Petitioner's

extreme arguments urging that (i) every single feature

which happens to be disclosed in a patent - even if not

claimed — becomes ineligible for Lanham Act protection,

even if it is nonfunctional and has acquired secondary

meaning; and (ii) even features which are not disclosed at

all in a patent are disqualified from protection if they

were used by a patentee on its patented commercial

product.

1. An extreme rule whereby features which are only

incidentally disclosed in a patent are disqualified from

protection would be wrong for the reasons already given,

and also because recognizing Lanham Act rights in only

20

distinctive and nonfunctional features will impose only a

miniscule limitation on the otherwise broad right of the

public to practice the subject matter of an expired patent.

Suppose the ABC Chair Co. had a patent on the

original chair; that, for whatever reason, the illustrative

embodiment in the specification of that patent depicted a

purple bow wrapped around one of the legs; that the

patentee always sold its chairs with such a purple bow,

both during and long after the term of the patent; and

that as a result of years of use and advertising, the purple

bow had developed a secondary meaning in the mar-

ketplace, uniquely associating the purple bow with the

patentee. If a competitor then wished to make and sell

chairs after the patent expired (and assuming that there

were no other unexpired patents or other laws restricting

the right to make certain chairs), the competitor could

freely produce countless chairs which would have previ-

ously come within the scope of the claims of the now-

expired patent. The one and only thing the competitor

could not do is sell a chair with a purple bow wrapped

around a leg.

In such a situation, the public’s right to exploit and

enjoy the invention which was previously disclosed in

the expired patent is restricted, but only to the most

minimal degree. The legitimate competitor surely does

not need to sell its chairs with a purple bow to compete

effectively; on the contrary, assuming there is secondary

meaning in the purple bow (identifying to the public that

the chairs come from the ABC Chair Co.), the only con-

ceivable reason for the competitor to do so is to create

confusion in the marketplace as to the source of the

chairs.

21

Perhaps for this reason, the DOJ, which for fact-

specific reasons supports Petitioner, concedes that “the

expiration of a patent affords the public a virtually unre-

stricted right to copy the invention.” (DOJ Br. at 8

(emphasis added).) The DOJ agrees that mere mention of

a feature in a patent does not necessarily establish func-

tionality (and thus a denial of trade dress protection),

since nonfunctional shapes and configurations may be

described or pictured as an “incidental detail” in utility

patents. (Id. at 14, quoting 1 J. THomas McCartny, McCar-

THY ON TRADEMARKS AND UNFaIR COMPETITION § 7:89, 7-227

(4th ed. 2000).) And the DOJ also cautions against a broad

rule sweeping away Lanham Act protection on “every jot

and tittle of the patentee’s product design,” including

“wholly arbitrary elements that serve no purpose other

than to indicate the product’s origin.” (DOJ Br. at 19.)

The DOJ is correct. To date, not one court of appeals

has adopted the extreme view urged by Petitioner and

certain amici. Even in the one reported appellate decision

in which an arguably separate “expired patent” defense

was recognized, the court required that the feature not

only be claimed but that it must also be a “significant

inventive aspect” of the invention. See Vornado, 58 F.3d at

1510.%

a

® The words of that legal test appear to abandon the well-

established concept of fwhctionality, with which the federal

courts have lotvg been familiar, see Zip Dee, Inc. v. Dometic Corp.,

931 F. Supp. 602, 611 (N.D. Ill. £996), in favor of a “significant

inventive aspect” test which, in actual practice, might collapse

into the functionality doctrine. T&B submits that the result in

Vornado would have been reached with a more exacting

functionality analysis.

22

No other court has even gone so ‘far as to erect a

separate “expired patent” defense, let alone a defense

which applies to incidental features disclosed in a patent.

Early in the T&B litigation, the Seventh Circuit stated:

Panduit’s theory is that when the patent expired

the entire product fell into the public domain

and became freely copyable. That considerably

overstates matters. The patented portion of the

product entered the public domain, but “the

product” did not. Panduit does not contend, for

example, that it could copy the cable tie to the

last detail, including the Thomas & Betts logo

and similar identifying marks. Non-functional

elements of the product’s design can serve a role

similar to logos and therefore may be protected

as trademarks.

Thomas & Betts Corp. v. Panduit Corp., 34 U.S.P.Q.2d (BNA)

1607, 1608 (7th Cir. 1994).4 The same court subsequently

held that a utility patent must be examined in detail to

determine whether the feature is primarily functional or

just incidentally appears in the disclosure of the patent.

T&B, 138 F.3d at 300 (citing McCartny, § 6:10). The Sev-

enth Circuit thus correctly concluded that the right to

copy established in the cases now relied upon by Peti-

tioner “is far from absolute.” T&B, 138 F.3d at 287.

2. Petitioner and certain amici go so far as to urge

that a feature be disqualified from Lanham Act protection

whenever it was used by the patentee on its commercial

product sold under the patent (M. Pollack Br. at 2 (“the

4 The DOJ similarly cautions against an “absolutist”

approach to this issue. (DOJ Br. at 19-20, citing Bonito Boats, 489

U.S. at 154.)

23

public obtains a property right not to be excluded from

full commercial exploitation of the activity formerly prac-

ticed under the patent. . ..” (emphasis added)); Panduit Br.

at 6-7 (urging right to make “the thing formerly covered

by the patents. .. . ”) They assert these rights to exist even

if the feature is neither claimed nor even disclosed in a patent,

if the patentee chose to employ the feature on its patented

commercial product. In the ABC Chair Co. hypothetical

discussed above, they would urge that the purple bow

could not be protected even if it was never disclosed in

the patent as long as the ABC Chair Co. (or perhaps even

a licensee) merely used the feature on its patesited chair

(continuously? often? once? — no one says).

This position fails for all the reasons already given,

plus the fact that, in this scenario, the “carefully crafted

bargain” said to support the patent system has nothing to

do with the feature at issue, which enjoyed no protection

whatsoever under the patent. In full effect, according to

those amici who take this extreme view, the very use of

the feature in commerce which creates trade dress rights

under the Lanham Act would simultaneously destroy

those rights.

3. Contrary to Petitioner’s contentions, no great

advance will be achieved by making draconian changes.

If this Court agrees with the DOJ that trade dress features

which were claimed in expired patents are often so

clearly functional that they should not survive a sum-

mary judgment motion (DOJ Br. at 20), many weak claims

will be dismissed under the current legal framework

employed by the circuits. Changing the law in a quest for

incremental simplicity will defeat legitimate claims, while

24

the need for a whole new set of rules to address a whole

new set of problems will in fact make the desired sim-

plicity illusory.

VI. CONCERNS REGARDING THE PURPORTED

EASE OF ESTABLISHING SECONDARY MEAN-

ING ARE UNFOUNDED

This Court in Wal-Mart recently confirmed that sec-

ondary meaning must always be shown with product

designs. Still, the DOJ expresses concern that the require-

ment of secondary meaning for product configuration

trade dress is “not an effective barrier” against trade

dress which is undeserving of protection (DOJ Br. at 21

n.9) (citing a district court decision which noted that it is

“no great trick to build up secondary meaning in a prod-

uct configuration if [competitors] are kept from utilizing

that configuration for 17 years by the sword and shield of

patent protection.”). Id. at 16 (citing Zip Dee, Inc. v. Dome-

tic Corp., 931 F. Supp. 602, 615 (N.D. Ill. 1996).)

But as another amicus has pointed out (INTA Br. at 12

n.4), any concern that secondary meaning is too easily

proven can be addressed by the Seventh Circuit’s rule

that “evidence establishing secondary meaning must also

show that any connection between the trade dress of the

product and its producer does not primarily stem from

the expired patent.” T&B, 138 F.3d at 294. Such an

approach would assure that products going “off patent”

will not readily be asserted to have qualified for trade

dress protection without a strong showing of secondary

meaning - a showing that can be difficult to make. (See

infra note 5.)

25

VII. THIS CASE DOES NOT INVOLVE DESIGN PAT-

ENTS, BUT IF IT DID, THE ARGUMENTS IN

FAVOR OF A SEPARATE DEFENSE WOULD BE

EVEN WEAKER

The questions presented by the Petitioner and the

Respondent in this case were both expressly limited to

the impact of expired utility patents on trade dress rights

under the Lanham Act. However, at least two amici sup-

porting Petitioner have urged this Court to declare trade

dress features unprotectable if claimed in an “expired

patent” (Panduit Br. at 11; M. Pollock Br. at 2, 21) - any

type of expired patent, utility or design. Should the Court

choose to address the impact of design patents them-

selves on trade dress rights, the Court should conclude

that design patents in and of themselves present no basis

at all for destroying trade dress rights, because design

patents are awarded for designs which are “ornamental,”

not functional. 35 U.S.C. § 171. As this Court explained

long ago in Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.)

511 (1872):

The acts of Congress which authorize the grant-

ing of patents for designs were plainly intended

to give encouragement to the decorative arts.

They contemplate not so much utility as appearance,

and that, not an abstract impression, or picture, but

an aspect given to those objects mentioned in the

acts... . And the thing invented or produced, for

which a patent is given, is that which gives a

peculiar or distinctive appearance to the manufac-

turer, or article to which it may be applied, or to

which it gives form.

Id. at 524-25 (emphasis added).

26

In In re Mogen David Wine Corp., 328 F.2d 925

(C.C.P.A. 1964), the Federal Circuit’s predecessor rejected

the argument that a design patent precluded issuance of a

trademark registration:

In our opinion, trademark rights, or rights

under the law of unfair competition, which hap-

pen to continue beyond the expiration of a

design patent, do not “extend” the patent

monopoly. They exist independently of it, under

different law and for different reasons. The ter-

mination of either has no legal effect on the

continuance of the other. When the patent

monopoly ends, it ends. The trademark rights

do not extend it. We know of no provision of

patent law, statutory or otherwise, that guaran-

tees to anyone an absolute right to copy the

subject matter of any expired patent. Patent

expiration is nothing more than the cessation of

the patentee’s right to exclude held under the

patent law. Conversely, trademarks conceivably

could end through non use during the life of a

patent. We doubt it would be argued that the

patent rights should also expire so as not to

“extend” them [i.e., the trademark rights].

Id. at 930.5 See also W.T. Rogers Co. v. Keene, 778 F.2d 334,

337 (7th Cir. 1985) (35 U.S.C. § 171 “does not prevent the

5 The court in Mogen David remanded for a determination

of whether the decanter had acquired secondary meaning. 328

F.2d at 932. In a subsequent appeal which illustrates the

difficulty which already exists in establishing secondary

meaning even where a patent was present, the court reaffirmed

its foregoing holding, In re Mogen David Wine Corp., 372 F.2d 539,

540 (C.C.P.A. 1967), but concluded on the merits that the

decanter had not acquired secondary meaning. /d. at 541-42.

27

enforcement of a common law trademark in a design

feature”).

In In re Honeywell, 497 F.2d 1344 (C.C.P.A. 1974), the

Patent and Trademark Office (“PTO”) had refused to

register as a trademark the configuration of a thermostat,

features of which appeared in an expired design patent.

The Federal Circuit’s predecessor noted that earlier deci-

sions involving utility patents turned on whether the

subject matter was functional, with the utility patents

providing some evidence of possible functionality. How-

ever, the court rejected the PTO’s argument that the same

principles which apply to utility patents should apply

when federal trademark rights are sought for nonfunc-

tional subject matter disclosed in design patents. Id. at

1348. It reaffirmed Mogen David's clear distinction

between federal trademark and design patent laws, and

concluded that the public interest in protecting against

confusion must prevail over any argument that trade-

mark rights are an “extension” of design patent rights, so

long as the trademark is nonfunctional and serves as a

means to distinguish the owner’s goods from those of

others. Id.

Thus, contrary to what certain amici would have this

Court hold, if a design patent is to have any impact on a

Lanham Act trade dress claim, it should (as with utility

patents) constitute evidence relating to possible func-

tionality; but often the existence of the design patent will

favor the claimant, rather than the accused infringer. As

noted in Krueger Int'l, Inc. v. Nightingale Inc., 915 F. Supp.

595, 605 (S.D.N.Y. 1996), “The existence of a design pat-

ent .. . is relevant to the functionality defense. Because a

design patent is granted only for non-functional designs,

28

it can serve as evidence that a plaintiff's trade dress is not

functional.” See also In re R.M. Smith, Inc., 734 F.2d 1482,

1485 (Fed. Cir. 1984) (“The existence of a design patent

may be some evidence of non-functionality.”).

¢

CONCLUSION

Accordingly, this Court should affirm the judgment

of the court of appeals.

On the Brief:

James D. Hay

Lewis & McKenna

82 E. Allendale Road

Saddle River, NJ 07458

Tel: (201) 934-9800

Fax: (201) 934-8681

Respectfully submitted,

Srpney Davip*

Roy H. Wepner

Lerner, Davip, LITTENBERG,

KruMHOoLz & Mentux, L

600 South Avenue West

Westfield, NJ 07090-1497

Tel: (908) 654-5000

Fax: (908) 654-7866

Counsel for Amicus Curiae

Thomas & Betts Corporation

"Counsel of Record