Petition for Writ of Certiorari — Lanard Toys, Inc. v. General Motors Corp (No. 06-1589)
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Al
No.
In the Supreme Court of the Gnited States
LANARD TOYS, INC., and LANARD Toys, LTD..
Petitioners,
GENERAL MOTORS CorP. and AM GENERAL, LLC,
Respondents.
On Petition for a Writ of Certiorari
to the United States Court of Appeals
for the Sixth Circuit
PETITION FOR A WRIT OF CERTIORARI
JOuUN A. WEST Roy T. ENGLERT, JR.*
LORE KRAFTE GARY A. ORSECK
CARRIE A. SHUFFLEBARGER =DAMON W. TAAFFE
Greenebaum Doll & Robbins. Russell, Englert.
McDonald PLLC Orseck & Untereiner LLP
2900 Chemed Center ISOLK Street, N.W.
255 East Fifth Street Suite 41 1
Cinemnat, OH 45202 Washington. D.C. 20006
(S13) 455-7600 (202) 775-4500
* Counsel of Record
QUESTION PRESENTED
in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532
U.S. 23 (2001), this Court ruled (1) that a product design feature
is functional, and cannot be protected under trade dress law, if
it is “essential to the use or purpose of the article or if it affects
the cost or quality of the article,” and (ii) that, in making the
functionality determination, “there 1s no need * * * to engage
* * * in speculation about other design possibilities.” Jd. at 32.
The United States Court of Appeals for the Fifth Circuit has
since held that the “availability of alternative designs 1s
irrelevant” to whether a design feature is functional, whereas the
United States Court of Appeals for the Federal Circuit has since
held that the availability of alternative designs 1s a “legitimate
source of evidence to determine whether a feature is functional.”
The question presented is whether the Sixth Circuit panel,
in holding that there is no genuine dispute of material fact that
certain design elements of respondents’ military vehicle are
nonfunctional, erred in considering the availability of alternative
product designs.
(1)
ii
PARTIES TO THE PROCEEDING
Petitioners are Lanard Toys, Inc., and Lanard Toys
Limited, defendants-appellants in the courts below. Respon-
dents are General Motors Corporation and AM General, LLC,
plaintiffs-appellees in the courts below.
RULE 29.6 STATEMENT
Neither Lanard Toys, Inc., nor Lanard Toys Limited is a
subsidiary or affiliate of a publicly owned corporation.
iil
TABLE OF CONTENTS
Page
COL Fe a kde e ERROR MEE Aiea kG 5 0 be Ad nee dee eee (1)
PARTIES FOP PEE: CROCUS nv nec ca cncvass (11)
Kat EU RR EIS | Akw Rosas ERAS ROS OES (11)
TOs Ae FOG Re 6 Kn eo eRe Kee vi
Po eee rer eee reer inn y pee rr 1
PR NORE, ook Ck aA CR Oe ee l
STATUTORY PROVISIONS INVOLVED ............ l
RA FEE SES a ee eR eo eke ae l
A. Trade Dress and the Functionality Doctrine ..... 2
B. Factual Background of the Present Case ........ 6
A. NE PENI vcd 345 da howe hee wae 10
REASONS FOR GRANTING THE WRIT ............ 13
1. THE CIRCUITS ARE DEEPLY SPLIT ON
THE APPLICATION OF THE
FUNCTIONALITY TEST AS SET FORTH IN
pct) er ee eet Te eer See 13
A. Before TrafFix, Lower Courts Were
Confused About Whether A Competitive-
Need Analysis Was Appropriate For
Traditional Design Features ............ 14
1V
. TABLE OF CONTENTS—continued
Page
B. The 7rafFix Decision Makes Clear That
Different Tests Apply In Cases Of
Traditional And Aesthetic Functionality .. 17
we rrr ree Por 18
ll. THE SIXTH CIRCUIT’S OPINION
MISCONSTRUES TRAFFIX AND
DANGEROUSLY WEAKENS THE
FUNCTIONALITY REQUIREMENT ....... 23
lil. THE CIRCUIT CONFLICT CONCERNS A
MATTER OF OVERRIDING IMPORTANCE
AS TO WHICH NATIONAL UNIFORMITY IS
EEE Sao oe ner G a sw KS OR KEARNS 27
CORRE Siig chs stan eRe Red SNA CuRE RENNES 28
APPENDIX A
General Motors Corp. v. Lanard Toys, Inc., 468 F.3d
PT AO oo kon no dca ea hee see n's la
APPENDIX B
Judgment and Permanent Injunction, General Motors
Corp. v. Lanard Toys, Inc., Nos. 01-71103, 03-7273 1
CRae: NP Ed, BD cose ce As 23a
7
TABLE OF CONTENTS—continued
Page
APPENDIX C
Order denying rehearing, General Motors Corp. v.
Lanard Toys, Inc., No. 05-2085 (6th Cir. Jan. 31,
WEP eR ss hs 2nd FORCE Kans ER OA ES 45a
APPENDIX D
Deposition of Robert J. Gula (excerpts), General Motors
Corp. v. Lanard Toys, Inc., Nos. 01-71103, 03-7273 1
Ce ee | er an rare a 47a
APPENDIX E
Declaration of Robert J. Gula, General Motors Corp. v.
Lanard Toys, Inc., Nos. 01-71103, 03-72731 (E.D. Mich.
EE BNE oa ois Kd UNE RET ESOS 55a
APPENDIX F
a i ee 58a
BIS ee itn ee 63a
tt ak.) |, Shr errr amr REE ER 66a
PAP SES i 5 8 4a Ke eae ee eee aaa ee 75a
Vi
TABLE OF AUTHORITIES
Page(s)
Cases:
AM General Corp. v. DaimlerChrysler Corp., 311 F.3d
TU Ea 6 565 a ee see ee ees 7,9
Antioch Co. v. Western Trimming Corp., 347 F.3d 150 (6th
EE ros cS GNA a SRA a SARE OA RISD 20
Application of Deister Concentrator Co., 289 F.2d 496
CL i Gk A eh sea t/a kk ben a A RS 14
Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
EO ae cad ass awn ie Caw ea hero 5, 27
Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234
(ERB ASR groper Saar isa Eran rere NES, Crear at 5
Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85 (S.D.
tote Le cs Lal a eae gen oe eee aS 16
Eppendorf-Netheler-Hinz GmBH v. Ritter GmBH, 289
Pe ee CP GOED «wks sen os vk eee 1, 6, 18, 19
In re Morton-Norwich Products, Inc., 671 F.2d 1332
DR ely che. Saas oak bik 14, 15, 18
Invisible Fence, Inc. v. Technologies, Inc., 2007 WL
rence St Re eR Ge |) ern eereer 20
Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456
RUINED 60 ok 0 oa KAA RRR 5. 5, 16
Kellogg Co. v. National Biscuit Co.,
ER MEE Se ere rere emer 5
Vil
TABLE OF AUTHORITIES—continued
Page(s)
LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71 (2d Cir.
"RR Nee enetereperar spe Se Eaten re ORCS, 15
Maharishi Hardy Blechman Lid. v. Abercrombie & Fitch
Co., 292 F. Supp. 2d 535 (S.D.N.Y. 2003) ......... 2
Marketing Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d
pig gt Ey.) Naren penetrate toma 17
New Colt Holding Corp. v. RJG Holdings of Florida, Inc.,
312 F. Supp. 2d 195 (D. Conn. 2004) ............ 20
Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159
kc awry BER Oren se Pet 3-5, 16, 23, 24
Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964) . 5
Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417 (Sth Cir.
MN os, 8s arn asd ur Sd cA EO ee ee ae 15
Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp.
ee Ee a SOE. sc boca KA aan bens 20
TrafFix Devices, Inc. v. Marketing Displays, Inc.,532 U.S.
PMO 04 646 nnd Ses Paka cole sd a eee passim
Two Pesos, Inc. v. Taco Cabana, Inc.,
PRs PR EEE cok ak oe ea ask eA pee 23
Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268
Ee OM GEE 556s 0 SNS eK a ere awe 6, 19, 20
Vill
TABLE OF AUTHORITIES—continued
Page(s)
Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S.
PS Eevee peneere arineny Somarie abere enrages 3, 24, 26
Statutes:
bo Sia © AOE 6s Si hoe ae eee tie 3
te OTN aks on a ka eee kes eee 27
ee tas OPO RED skwii ew SaNece ee keene a Ta is
EP Shae i COMER coo eee eee eee eee 4, 12, 26
Miscellaneous:
Margreth Barrett, Consolidating the Diffuse Paths to
Trade Dress Functionality: Encountering TrafFix on
the Way to Sears, 61 WASH. & LEE L. REv. 79
ONE. Sis acds Canrcte bea cleeReeeneaee 21
MICHAEL GREEN & GREG STEWART, HUMVEE AT WAR
CSG 6 Ka wks als Sb en elew nena een 7,8
Siegrun D. Kane, Trademarks Just Ain't What They Used
fo Be, S42 FEST AT POA) ves ecckest inv ives 21
1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS
AND UNFAIR COMPETITION (4th ed. 2007) ...... passim
1X
TABLE OF AUTHORITIES—continued
Page(s)
Vincent N. Palladino, Trade Dress Functionality after
TrafFix: the Lower Courts Divide Again, 93
TRADEMARK REP. 1219 (20038) .. 0.2... 2.22200 21
Justin Pats, Conditioning Functionality: Untangling the
Divergent Strands of Argument Evidenced by Recent
Case Law and Commentary, 10 MARQ. INTELL. PROP.
el GS ree 21
RESTATEMENT (FIRST) OF TORTS (1938) ........... 14, 16
Mark Alan Thurmon, The Rise and Fall of Trademark
Law’s Functionality Doctrine, 56 FLA. L. REV. 243
I a er a eke eave ae ees 2,6
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
rea a ae 27
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY
YS 23
PETITION FOR A WRIT OF CERTIORARI
OPINIONS BELOW
The majority and concurring opinions of the Sixth Circuit
(App., infra, 1a-22a) are reported at 468 F.3d 405. The district
court’s order granting summary judgment for General Motors
and AM General on trademark and trade dress infringement
(App., infra, 23a-44a) is unreported.
JURISDICTION
The judgment of the court of appeals was entered Octo-
ber 25, 2006. The order of the court of appeals denying rehear-
ing was entered January 31, 2007. App., infra, 45a-46a. On
March 29, 2007, Justice Stevens extended the time within which
to petition for a writ of certiorari to and including May 31, 2007.
This Court’s jurisdiction is invoked under 28 U.S.C. § 1254(1).
STATUTORY PROVISIONS INVOLVED
Relevant statutory provisions are set forth at App., infra,
58a-76a.
STATEMENT
This case highlights the stark division among the courts of
appeals as to whether the existence of alternative product de-
signs is relevant to determining whether a product design
feature is “functional,” and therefore ineligible for trade dress
protection. By holding there is no genuine dispute of material
fact that a set of design features was nonfunctional — based sole-
ly on evidence that different, similarly functional design options
were available — the Sixth Circuit joined the Federal Circuit in
misconstruing this Court’s ruling that “speculation about other
design possibilities” has no bearing on the functionality ques-
tion. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532
U.S. 23, 33-34 (2001). In so doing, it deepened the split among
the courts of appeals, with the Fifth Circuit reaching the
opposite conclusion that, under 7ra/Fix, “(t]he availability of
alternative designs is irrelevant.” Eppendorf-Netheler-Hinz
GmBH v. Ritter GmBH, 289 F.3d 351, 357 (5th Cir. 2002).
ceasing reueceunemanie ae sietnpcciaeasptanitudecannaunuaneiiiigueeienemas
a a a ie a a iat
2
District courts and commentators have lamented the
increasingly unsettled state of the law governing functionality.
See, e.g., Maharishi Hardy Blechman Ltd. v. Abercrombie &
Fitch Co., 292 F. Supp. 2d 535, 546 (S.D.N.Y. 2003) (“TrafFix
bears strongly on the import of alternative designs to the
question of functionality, but the exact holding of 7rafFix on
this point is highly elusive.”); Mark Alan Thurmon, The Rise
and Fall of Trademark Law’s Functionality Doctrine, 56 FLA.
L. REV. 243, 244, 326 (2004) (“Trademark law’s functionality
doctrine is a mess, and the responsibility for this mess rests
squarely with tiie United States Supreme Court.”).
The confusion surrounding this critically important issue
led the Sixth Circuit panel to conclude that the structural design
elements of respondents’ “Humvee” military vehicle were
nonfunctional, simply because other manufacturers had
succeeded in building similar military vehicles with somewhat
different designs. In addition to placing the Sixth Circuit in
direct conflict with the Fifth, that holding runs counter to this
Court’s trade dress jurisprudence. This case provides an
excellent opportunity for the Court to resolve the disagreement
among the circuits and to clarify the extent to which product
designs can be protected under trade dress law.
A. Trade Dress and the Functionality Doctrine
1. Though monopolies are disfavored under the law,
trademark rights are exceptions. See | J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 1:32
(4th ed. 2007). Granting monopoly rights in a trademark 1s not
anticompetitive because only the brand is protected, while the
right to copy the underlying product is unaffected. Thus,
consumers benefit in two ways: they can identify the products
made by the sellers they prefer (because the brand cannot be
copied), and they have access to competitively priced
alternatives (because the trademark does not grant monopoly
rights in the goods themselves).
“Trade dress” traditionally referred to the overall
appearance of a product’s packaging. See | J. THOMAS
3
MCCARTHY, supra, § 7:75. It is proiectible under trademark
law for the same reason word marks and logos are protectible:
to “prevent consumer confusion and protect the value of
identifying symbols.” /d. § 6:3. Over the years, the definition
of trade dress has expanded to include the shape and design of
the product itself. /d. § 8:5. Extending the trademark monopoly
to product design, however, creates a significant risk of
inhibiting competition by granting monopoly nghts in the
underlying goods themselves. For this reason, although the law
does recognize the ability of product design to function as a
source indicator, it also takes pains to guard against improper
protection of product design that would confer patent-like rights
without the limited term and rigorous review such rights
require. It does this through the functionality doctrine, which
permits the copying of functional features regardless of
secondary meaning or likelihood of confusion. See Qualitex
Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164-165
(1995). Because a functional design element is not protectible
under the Lanham Act, it may be copied by anyone — not just
direct competitors. See 15 U.S.C. § 1052(e)(5). This means
that, if the design elements of the military Humvee are
functional, they could be copied not only by the manufacturer’s
direct competitors, but also by Lanard and other toy and hobby
manufacturers.
This Court has cautioned against “misuse or overextension
of trade dress [protection].” 7rafFix, 532 U.S. at 29 (citing
Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205,
213 (2000)). First, the Court has noted that “[t]rade dress
protection must subsist with the recognition that in many
instances there is no prohibition against copying goods and
products,” because “[a]llowing competitors to copy will have
salutary effects in many instances.” Traf/Fix, 532 U.S. at 29.
When multiple competitors are able to offer products that
feature the same functional design elements, the resulting price
competition inures to consumers’ benefit.
Second, “[i}t is the province of patent law, not trademark
law, to encourage Innovation by granting inventors a monopoly
4
Over new product designs or functions for a limited time * * *,
after which competitors are free to use the innovation.”
Qualitex, 514 U.S. at 164 (1995). Because the law generally
disfavors monopolies, patent applications are subject to rigorous
scrutiny, and the period of exclusive rights is limited. After that
period, competitors are free to appropriate the innovation
however they wish.
The functionality doctrine polices the boundary between
the domains of trade dress and patent law. “Ifa product’s func-
tional features could be used as trademarks * * * a monopoly
over such features could be obtained without regard to whether
they qualify as patents and could be extended forever.”
Qualitex, 514 U.S. at 164-165. And, because producers have
every incentive to characterize their designs as nonfunctional
(and thereby obtain exclusive rights in perpetuity), the party
seeking trade dress protection bears the burden of proving that
the matter sought to be protected is not functional. 15 U.S.C.
§ 1125(a)(3). The functionality doctrine thus prevents manu-
facturers from using trade dress law to circumvent the strictures
of the patent process.
The doctrinal division of labor therefore may be stated as
follows: If a product feature is functional, a producer seeking
exclusive use of it must obtain a patent, which will eventually
expire. In contrast, trade dress protection extends indefinitely,
but cannot cover a functional product attribute.
2. The 7rafFix opinion, issued in 2001, provides the
Court’s most recent analysis of the functionality doctrme. In
that case, plaintiff Marketing Displays, Inc. (“MDI”) had ob-
tained a patent for a type of wind-resistant roadside sign that
used a dual-spring design. After the patent expired, defendant
TrafFix Devices began manufacturing dual-spring signs that
looked like MDI’s, and MDI sued for trade dress infringement.
The district court granted summary judgment for defendant
TrafFix, holding that the dual-spring design was functional and
thus ineligible for trade dress protection. 7rafFix, 532 U.S. at
26. The Sixth Circuit reversed, citing the “competitive need”
5
test, under which a feature was deemed functional only if its
exclusive use would “put competitors at a significant non-
reputation-related disadvantage.” Qualitex, 514 U.S. at 165.
The court of appeals reasoned that it took “little imagination to
conceive of a hidden dual-spring mechanism or a tri or quad-
spring mechanism that might avoid infringing [MDI’s] trade
dress.” TrafFix, 532 U.S. at 27 (internal quotation marks omit-
ted). Because there were possible configurations other than
MDI’s dual-spring design, the court of appeals concluded that
the dual spring was not competitively necessary, so it was
nonfunctional in the relevant sense.
This Court reversed, holding that MDI’s dual-spring design
was functional despite the availability of alternatives. It
explained that although the “competitive need” test is proper in
cases of “aesthetic functionality” — in which mere appearance
actually serves a function — competitive need is “incorrect as a
comprehensive definition.” TrafFix, 532 U.S. at 32-33. The
Court did not intend for that test to displace the so-called
traditional test, in which a design feature is considered
functional “if it is essential to the use or purpose of the article
or if it affects the cost or quality of the article.” /d. at 32
(quoting Jnwood Laboratories, Inc. v. Ives Laboratories, Inc.,
456 U.S. 844, 850 n.10 (1982)).
In reaffirming the /nwood test as the definiiive standard for
determining whether a product design feature may be protected
as trade dress, the Court underlined its longstanding
commitment to the principles that trademark protection cannot
be granted 1n derogation of the constitutional scheme, and that
the purpose of trade dress protection is to promote — not stifle —
competition. See Ke//logg Co. v. National Biscuit Co., 305 U.S.
111 (1938) (plaintiffs patent in the pillow-shaped form of
shredded wheat having expired, competitors were not prevented
from selling the cereal in the same functional shape). See also
Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964);
Compco Corp. v. Dav-Brite Lighting, Inc., 376 U.S. 234 (1964):
Inwood, 456 U.S. at 857; and Bonito Boats, Inc. v. Thunder
Craft Boats, Inc., 489 U.S. 141, 160 (1989).
6
Importantly, the Court in 7rafFix made a special point of
clarifying that, under the traditional test, “[t]here is no need
* * * to engage, as did the Court of Appeals, in speculation
about other design possibilities, such as using three or four
springs which might serve the same purpose.” TrafFix, 532
U.S. at 33. MDI’s dual-spring design was functional, because
it “is not an arbitrary flourish in the configuration of MDI’s
product; it is the reason the device works. Other designs need
not be attempted.” /d. at 34.
3. Unfortunately, the Court’s instruction in 7rafFix that
“[t]here is no need * * * to engage * * * in speculation about
other design possibilities” has spawned more confusion among
the lower courts than it dispelled. The Fifth Circuit understands
the statement to mean that, under the traditional test, “{t]he
availability of alternative designs is irrelevant.” Eppendorf, 289
F.3d at 355. In contrast, the Federal Circuit “do[es] not read the
Court’s observations in 7rafFix as rendering the availability of
alternative designs irrelevant”; rather, the availability of alter-
native designs 1s “a legitimate source of evidence to determine
whether a feature is functional.” Valu Engineering, Inc. v.
Rexnord Corp., 278 F.3d 1268, 1276 (Fed. Cir. 2002); accord |
J. THOMAS MCCARTHY, supra, § 7:75 (“In the author’s view,
the observations by the Supreme Court in 7rafFix do not mean
that the availability of alternative designs cannot be a legitimate
source of evidence to determine in the first instance if a
particular feature is in fact ‘functional.””).
In the words of one commentator, “[t]he current division
and confusion in the lower federal courts is much more
significant than the minor split * * * that led the Supreme Court
to intervene in 7rafFix.” Mark Alan Thurmon, 7he Rise and
Fall of Trademark Law's Functionality Doctrine, 56 FLA. L.
REV. 243, 334 (2004).
B. Factual Background of the Present Cas®
1. In the early 1980s, the United States government
solicited proposals for a new High Mobility Multipurpose
Wheeled Vehicle, which the government called an “HMMWV”
7
(or a “Humvee,” in military slang) to be used by the Armed
Forces. AM General was one of three companies awarded
“Phase I” contracts, under which the government paid them to
develop Humvee prototypes to be tested by the military. 4M
General Corp. v. DaimlerChrysler Corp., 311 F.3d 796, 808
(7th Cir. 2002).
Pursuant to the contract, AM General designed its proto-
type to detailed and precise military performance specifications
supplied by the government. During the testing phase, the
military raised various performance issues with respect to AM
General’s prototype. In response, AM General’s engineers
made numerous design modifications, including significant
changes to the design of the vehicle’s nose grille. /bid. The
government awarded the Humvee contract to AM General in
1983. Ibid.
Although AM General did not initially identify the design
elements in which it claims exclusive nghts, AM General’s pro-
totype embodied each of the five design elements that the Sixth
Circuit would eventually decide constituted respondents’
protectible trade dress: the grille, the slanted and raised hood,
the split windshield, the rectangular doors, and the squared
edges. MICHAEL GREEN & GREG STEWART, HUMVEE AT WAR
28 (2005). It is unlikely that a contractor bidding on a military
project would spend money to add mere ornamental flourishes
to its design, but in any event it is clear that these five design
elements were critically functional to an effective military
combat vehicle:
¢ Grille. A vehicle’s grille must protect the radiator
behind it while simultaneously allowing air to pass
freely through it. The grille at issue here consists of
a series of vertical openings sized to allow maximum
airflow while protecting the radiator from damage.
The grille’s initial appearance was quite different
from the one ultimately put into production. The
early prototype had narrow, horizontal openings; the
8
vertical opening design came later. /d. at 26, 28.'
Shorter vertical slats are stronger than longer hori-
zontal ones, which is important for a combat vehicle
that might be overturned or have debris land on it.
The grille is set high on the Humvee, allowing for
maximum ground clearance and superior mobility.
The lights are set wide for broader illumination than
the Humvee’s predecessors, and high so as not to be
obstructed by bmish or high water.
¢ Slanted and raised hood. The Humvee’s hood is
sloped to enhance visibility. The opening on the front
part of its hood is a continuation of the grille, allow-
ing air to circulate even when the nose is against a
solid object (such as a wall) or under water. As with
the grille, the hood is raised to maximize underbody
clearance. See http://www.amgeneral.com/
vehicles hmmwv_features.php.
* Split windshield. The split windshield design
incorporates two separate panels of glass. If one
panel is shattered, visibility remains through the other
panel. The supporting divider may strengthen the
windshield frame, including enhancing its ability to
support the weight of the Humvee if it flips over in
combat. Weapons, cameras, sensors, and other
equipment can be attached to the divider. See
http://www.emx-inc.com/EMX_Accessories.html.
* Rectangular doors. The rectangular shape of the
Humvee doors maximizes the opening area for rapid
ingress and egress of soldiers wearing body armor,
helmets, and packs, and carrying nfles. The shape
also allows the military’s armored version of the
' It is unlikely that this change was made for ornamental rather than
functional reasons, because the accelerated time frame for testing the
prototype left barely enough time to test for reliability and durability. /d
at 23-26.
9
doors to be interchangeable (left to right side of
vehicle and vice versa) and adds strength to the
Humvee. Http://www.amc.army.mil/amc/pa/
releases04/tardec.html. Adding armor panels to rec-
tangtlar doors is also easier and cheaper than adding
them to irregularly shaped ones.
* Squared edges. The squared edges obviously
maximize the interior space within the overall size
parameters of the Humvee. As with the rectangular
doors, the squared edges facilitate the addition of
armor plates or panels.
2. In 1993, AM General applied for a federal trademark
registration for the grille design. Registration was twice refused
on the ground that the grille did not serve as a source identifier
and was likely to be confused with existing registrations for the
grille configuration for the JEEP Wrangler. AM General, 311
F.3d at 809. AM General was finally granted a trademark
registration for the grille design in 1996. /hid.
Shortly after the first Gulf War, in an effort to capitalize on
the popularity of the Humvee, AM General introduced a com-
mercial vehicle, which it called the Hummer. /d. at 808. The
Hummer is a modified version of the military vehicle. In 1999,
AM General transferred to GM all rights in the civilian Hummer
vehicle, and licensed back from GM the right to continue using
the grille on the military Humvee, as required by the military
specifications. /d. at 810. Soon after acquiring nghts to the
civilian Hummer vehicle (now known as the “H1”), GM
unveiled the new H2, a less expensive and smaller vehicle. The
H2 differed in many respects from its predecessor, incorporating
luxury features not available on the HI or, of course, on its
military counterpart. /bid. The H2 — and, later, the H3 — did
not, for example, incorporate the split windshield designed for
the military vehicle. At the time this action commenced, AM
General claimed ownership of the military vehicle trade dress
by virtue of a “Confirmatory Trademark Agreement” executed
after this litigation began. GM claimed ownership of the civilian
10
vehicle trade dress, and both parties asserted rights in an
unspecified, shared trade dress common to both.
3. In 1992, petitioner Lanard, a company that manufac-
tures and sells an assortment of military-themed toys, began
selling a toy vehicle called the Mudslinger, modeled after the
military Humvee. App., infra, 2a-3a. The toy’s packaging
included the phrase “Hyper Humvee.” /bid. AM General’s
licensing agent protested Lanard’s use of the word “Humvee”
and also suggested that replicas might infringe its trade dress.
Though Lanard believed “Humvee” was a generic military
designation, it agreed to remove the term from packaging for the
toy modeled after that military vehicle and to refrain from
challenging AM General’s ownership of the mark HUMVEE.
Lanard has never produced or sold replicas of the civilian
Hummer.
In 1997, Lanard sought a license to use the Humvee and
Hummer names on its toy vehicles, but AM General refused.
!bid. Lanard then contacted AM General’s new licensing agent,
enclosing photos of the toy vehicles and again seeking a license
to use the names. AM General responded a year and a half
later, demanding that Lanard stop selling certain of its military
vehicles because of an infringing “nose design.” /bid.
Subsequent efforts to resolve the matter through negotiation
were unsuccessful.
C. Procedural History
1. In March 2001, nine years after Lanard began selling
toy military vehicles modeled after the Humvee and at least
eight years after AM General first had notice of such sales, GM
filed suit against Lanard in the United States District Court for
the Eastern District of Michigan, claiming infringement of the
Hummer’s trade dress. In June 2003, Lanard filed a complaint
against AM General in the same court, seeking a declaratory
judgment as to AM General’s rights in the Humvee vehicle and
grille design. App.. infra, 3a. After AM General asserted coun-
terclaims for infringement, the cases were treated as consoli-
dated for purposes of discovery, summary judgment, and trial.
I]
During discovery, Lanard deposed Robert J. Gula, then-
Senior Vice President of Engineering and Product Development
for AM General, and formerly the Deputy Project Manager for
the Humvee operation. Gula testified that the shape of the
Humvee “was basically a byproduct of a vehicle that was de-
signed to meet a performance specification,” and that “the shape
of the vehicle was a result of what it took to meet those require-
ments.” App., infra, 52a, 54a.
Apparently recognizing that Gula’s testimony amounted to
a concession that the claimed trade dress elements of the Hum-
vee were functional, GM and AM General prepared a declara-
tion for Gula’s signature (App., infra, 55a-57a) later that same
day, asserting that the same performance standards could be
achieved (and had been achieved by other manufacturers)
through one or more alternative design options:
The Government’s requirements could have been met with
any number of different vehicle appearances. * * * AM
General’s prototype could have had a different appearance
and still functioned in the same way. That is because the
exterior appearance and styling of the vehicle is not essen-
tial to the use or purpose of the vehicle. Indeed, not using
the same appearance and styling as AM General’s proto-
type did not impede Chrysler or Teledyne from meeting
the Government’s technical specification or from compet-
ing for the Government contract.
App., infra, 57a.
In April 2004, GM and AM General (jointly) and Lanard
each moved for summary judgment. To carry their statutory
burden of proving the nonfunctionality of their unregistered
product design,» GM and AM General relied exclusively on
Gula’s rehabilitative declaration emphasizing the availability of
alternative designs. Respondents submitted no additional evi-
~ Respondent GM owns a federal registration for the grille design only.
When a design is registered. the burden of proof regarding functionality shifts
to the party challenging the validity of the trade dress rights.
12
dence of any kind, and the record therefore contains no evidence
whatever that the claimed features are incidental, arbitrary, or
ornamental, or that they are not “the reason the device works.”
TrafFix, 532 U.S. at 33.
The district court mistakenly believed that functionality is
a defense to infringement of an unregistered trade dress and that
Lanard had the burden of proof on that issue. See 15 U.S.C.
§ 1125(a)(3) (“the person who asserts trade dress protection has
the burden of proving that the matter sought to be protected is
not functional’). App., infra, 28a. The court granted GM’s and
AM General’s motion with respect to the Mudslinger vehicle.
Ibid. After a jury trial on Lanard’s laches defense and on
damages, the jury awarded GM an 8% royalty on sales of the
toy vehicle, as well as Lanard’s profits.
2. On appeal, although acknowledging that the district
court had erred in treating functionality as a defense rather than
requiring plaintiffs to prove nonfunctionality as an element of
the infringement claim, the Sixth Circuit affirmed the summary
judgment ruling. With respect to the validity of the asserted
trade dress elements, the only question at issue here, the panel
first determined that the trade dress consisted of the vehicle’s
grille, slanted and raised hood, split windshield, rectangular
doors, and squared edges. Then, after stating that the availability
of other potential designs was “insufficient evidence” of
nonfunctionality, the panel nonetheless concluded that
respondents’ design is nonfunctional, basing its decision on
Gula’s declaration as to the availability of alternatives, which
was the on/y evidence in the record on that point. App., infra,
| 3a-1 4a.
Further underscoring the absence of any evidence of
nonfunctionality in the record, and its confusion regarding the
functionality doctrine, the pancl went on to say that GM and
AM General had met their burden of proving the
nonfunctionality of the unregistered product design because “the
plain appearance of the vehicle shows that the elements which
comprise its trade dress are inherently non-functional.” App..,
infra, 14a (emphasis added). For, although [t]he military un-
13
doubtedly had function in mind while designing the Humvee,”
the exterior appearance and styling of the vehicle were “more
likely an unrelated afterthought.” App., infra, 14a.
REASONS FOR GRANTING THE WRIT
The Court should grant review of the Sixth Circuit’s deci-
sion for at least three reasons. First, the lower courts are sharp-
ly divided over the question whether the availability of design
alternatives is relevant to assessing a design feature’s function-
ality. Commentators agree that this Court’s pronouncement in
TrafFix is the source of that confusion. Second, the Sixth
Circuit’s opinion conflicts with this Court’s precedents. In rely-
ing on the availability of alternative design choices as the basis
for its determination of nonfunctionality, the Sixth Circuit de-
parted from the principle that, 1f a design feature is “the reason
the device works,” then “other designs need not be attempted.”
TrafFix, 532 U.S. at 34. The panel also invoked as a basis for
its holding the novel concept of “inherent[ | nonfunctional|[ity],”
which, if not set straight, could drastically erode the function-
ality limitation on trade dress protection. Third, a clear and
uniform test for functionality 1s critically important; not only
does it demarcate the bounds of trademark law, but a split
involving the Federal Circuit (which controls the Patent and
Trademark Office’s standards for registering a mark) has
particularly troubling consequences for the consistent
application of trade dress doctrine across the country.
I. THE CIRCUITS ARE DEEPLY SPLIT ON THE
APPLICATION OF THE FUNCTIONALITY TEST
AS SET FORTH IN TRAFFIX.
The basic reason why lower courts are at odds in their
understanding of the 7rafFix standard for functionality is that
they disagree over the extent to which that decision effected a
change in the law. To understand their confusion, one must first
appreciate the legal landscape before 7rafFix was decided.
14
A. Before TrafFix, Lower Courts Were Confused
About Whether A Competitive-Need Analysis
Was Appropriate For Traditional Design
Features
The evolution of the functionality doctrine over the last
several decades reflects a pattern of lower courts moving toward
a functionality test based on “competitive need” — a standard
that considers the availability of alternative designs — and strain-
ing to fit this Court’s guidance into that model. The Court,
however, has never embraced a competitive-need test for func-
tionality with respect to traditional products, although it has
applied it in cases of aesthetic functionality. As the brief history
recounted below makes clear, 7rafFix corrected the Sixth
Circuit and other lower courts that had mistakenly applied the
aesthetic functionality test in cases of traditional functionality,
where analysis of competitive need has no place — and where
the availability of alternative designs is therefore irrelevant.
|. In 1938, the Restatement of Torts outlined a claim for
“Imitation of Appearance.” To prove that a defendant’s
imitation was unprivileged, the plaintiff was required to show
that a product’s features were nonfunctional, and a “functional
feature” was defined to be one that “affects [the product’s]
purpose, action or performance, or the facility or economy of
processing, handling or using [it].”. RESTATEMENT (FIRST) OF
TORTS § 742 (1938). That definition of functionality was very
broad, essentially equating to usefulness, and many lower courts
— most notably the Court of Customs and Patent Appeals
(“CCPA”)—added glosses to the formulation, eventually reduc-
ing It to the question “whether the law permits * * * a monop-
oly” like the one a plaintiff seeks to gain through its infringe-
ment claim. Application of Deister Concentrator Co., 289 F.2d
496, 499 (CCPA 1961).
In 1982, the CCPA pushed its functionality reasoning to
its natural conclusion: if “the effect upon competition is really
the crux of the matter,” then the test for functionality is whether
other producers have a competitive need for the design feature
in question. /n re Morton-Norwich Products, Inc., 67\ F.2d
15
1332, 1341 (CCPA 1982). In Morton-Norwich, the court held
that a spray bottle design was not legally functional, reasoning
that the basis of the functionality doctrine is “not the right to
slavishly copy articles which are not protected by patent or
copyright, but the need to copy those articles, which is more
properly termed the right to compete effectively.” /d. at 1339.
It noted that “[t]he evidence, consisting of competitor’s molded
plastic bottles for similar products, demonstrates that the same
functions can be performed by a variety of other shapes with no
sacrifice of any functional advantage. There is no necessity to
copy appellant’s trade dress to enjoy any of the functions of a
spray-top container.” /d. at 1342. Thus, the Morton-Norwich
“competitive need” test for functionality explicitly examined the
availability to competitors of functionally equivalent designs.
Id. at 1341-1342.
2. Later that year, this Court decided /nwood Labora-
tories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982).
Although Jnwood was not a case about functionality, the Court
observed in a footnote that, “[i]Jn general terms, a product
feature is functional if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article.” /d. at
850 n.10. In the years following /nwood, many courts of
appeals read /nwood not to preclude a competitive-need
analysis. The Second Circuit took the lead, characterizing the
Inwoed “cost or quality” language as dictum, and applying
Morton-Norwich. See LeSportsac, Inc. v. K Mart Corp., 754
F.2d 71, 76-77 (2d Cir. 1985); see also Sicilia Di R. Biebow &
Co. v. Cox, 732 F.2d 417, 429 (Sth Cir. 1984) (“The ultimate
inquiry concerning functionality * * * is whether characterizing
a feature or configuration as protected ‘will hinder competition
or impinge upon the rights of others to compete effectively in
the sale of goods.’” (quoting Morton-Norwich, 671 F.2d at
1342)).
3. In 1995, this Court’s Qualitex decision lent some sup-
port to the lower courts’ belief that /nwood did not foreclose the
competitive-need analysis set forth in Morton-Norwich. In
Qualitex, the issue was whether plaintiff could enjoy trade dress
16
protection of the particular green-gold color it used on its dry
cleaning press pads. The Court held that a mere color can, if it
has taken on secondary meaning, meet the basic legal
requirements for a trademark. 5/4 U.S. at [66. fn so doing, it
used language that could be interpreted to equate the Inwood
“essential to the use or purpose” or “affect[ing] the cost or
quality of the article” standard with competitive need:
This Court * * * has explained that, “in general terms, a
product feature is functional,’ and cannot serve as a
trademark, “if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article,” that
is, if exclusive use of the feature would put competitors at
a significant non-reputation-related disadvantage.
Id. at 165 (quoting Jnwood, 456 U.S. at 850 n.10). The “sig-
nificant non-reputation-related disadvantage” test of competitive
need was one that had long been used in cases of aesthetic
functionality, because the traditional “essential to the use or
purpose * * * or * * * affect[ing] the cost or quality” test does
not work well in that setting. For example, if farmers prefer to
match the color of their loaders to the color of their tractors, a
competitor entering the market might have a competitive need
to copy “John Deere green” even though that color would not
render the equipment more useful. See Deere & Co. v.
Farmhand, Inc., 560 F. Supp. 85, 97-98 (S.D. Iowa 1982). For
that reason, aesthetic functionality has always been evaluated in
terms of competitive need. See RESTATEMENT (FIRST) OF
TORTS § 742 cmt. a (1938) (“The determination of whether or
not [aesthetic] features are functional depends upon * * *
whether prohibition of imitation by others will deprive the
others of something which will substantially hinder them in
competition.”). The language in Qualitex, however, could be
read as the Court’s endorsement of the competitive-need
standard in cases of both aesthetic and traditional functionality.
17
B. The TrafFix Decision Makes Clear That Different
Tests Apply In Cases Of Traditional And
Aesthetic Functionality
As explained above, the question in 7rafFix was whether
plaintiff, a manufacturer of temporary roadside signs capable of
withstanding gusts of wind, could invoke trade dress rights to
prevent a competitor from imitating its dual-spring design. The
Sixth Circuit held that the dual-spring design was not functional,
reasoning that, because various other spring configurations
might accomplish the same end as plaintiff's design, the dual-
spring design was not one whose exclusive use would “put com-
petitors at a significant non-reputation-related disadvantage.”
Marketing Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929,
940 (6th Cir. 1999) (quoting Qualitex, 514 U.S. at 165). In
other words, the Sixth Circuit read Qualitex to endorse a
competitive-need analysis in cases of traditional functionality.
This Court reversed, holding that the competitive-need
standard is “incorrect as a comprehensive definition” of func-
tionality. TrafFix, 532 U.S. at 33. It explained that, although
“lijt is proper to inquire into a ‘significant non-reputation-
related disadvantage’ in cases of esthetic functionality, the
question involved in Qualitex,” that test “did not purport to dis-
place the th[e] traditional rule” set forth in Jnwood. /bid. \n-
stead, “[w]here the design is functional under the /nwood
formulation there is no need to proceed further to consider if
there is a competitive necessity for the feature.” /bid.
The Court had little trouble concluding that MDI’s dual-
spring design was functional, because it “provides a unique and
useful mechanism to resist the force of the wind.” /bid. The
Court made clear that “[t]here is no need * * * to engage, as did
the Court of Appeals, in speculation about other design
possibilities, such as using three or four springs which might
serve the same purpose. * * * The dual-spring design is not an
arbitrary flourish in the configuration of MDI’s product; it 1s the
reason the device works. Other designs need not be attempted.”
lhid.
18
C. The Ensuing Chaos
Unfortunately, the explanation of functionality in 7rafFix
has, if anything, spawned more confusion than it dispelled.
Within a year after that decision, the courts of appeals had once
again split on one of the questions 7rafFix sought to answer:
what evidentiary role, if any, the availability of alternative
product designs should play in assessing functionality.
1. In Eppendorf-Netheler-Hinz GmBH vy. Ritter GmBH,
289 F.3d 351 (Sth Cir. 2002), plaintiff Eppendorf was a
manufacturer of pipette tips that accurately dispensed small
volumes of liquid for medical purposes. Eppendorf sued Ritter
for infringement of certain asserted trade dress elements, such
as the plastic fins on the pipette tips. /d. at 354. At trial, which
took place before this Court decided 7rafFix, Eppendorf’s
expert argued that the design features were nonfunctional
because “the appearance and number of fins could be changed
without affecting the function of the fins.” /d. at 357. The jury
found the features to be nonfunctional, and on appeal Eppendorf
defended the verdict on the ground that “the evidence clearly
established ‘that there were alternative designs to each of the
eight non-functional features.” /bid.
The Fifth Circuit reversed the finding of nonfunctionality.
It explained that, although Eppendorf’s argument involving
alternative designs was “consistent with this court’s [previous]
utilitarian definition of functionality,” it is “unpersuasive in
light of the Court’s discussion of functionality in 7rafFix.”
Ibid” It read TrafFix as establishing two tests for functionality:
one for traditional products, and one for aesthetically functional
products. Under the traditional test for functionality, “a product
feature is functional, and cannot serve as a trademark, if it is
* In this context, a “utilitarian” feature is one for which copying is a
competitive necessity. See Morton-Norwich, 671 F.2d at 1339
(“‘Utilitarian® means ‘superior in function (de facto) or economy of
manufacture.” which ‘superiority’ is determined in light of competitive
necessity to copy.”).
19
essential to the use or purpose of the article or if it affects the
cost or quality of an article.” /d. at 355 (quoting TrafFix, 532
U.S. at 32). “Under this traditional definition,” it reasoned, “if
a product feature is ‘the reason the device works,’ then the
feature is functional. The availability of alternative designs is
irrelevant.” Ibid. (emphasis added). Because Eppendorf’s
expert conceded that “fins of some shape, size, or number are
necessary to provide support for the flange and to prevent
Geformation of the product,” the Fifth Circuit held that they are
“essential to the operation of the Combitips,” and therefore
“functional as a matter of law.” /d. at 358. Thus, in its view of
the law, “[a]lthough alternative designs are relevant to the
utilitarian [/.e., competitive-need] test of functionality, alterna-
tive designs are not germane to the traditional test for function-
ality.” Jd. at 358.
2. The Federal Circuit sees things quite differently. In
Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268 (Fed.
Cir. 2002), the Trademark Trial and Appeal Board had
sustained Rexnord’s challenge to Valu’s registration of trade
dress relating to its designs of conveyor guide rails, holding that
the shapes were functional under the four Morton-Norwich
“competitive need” factors, one of which explores the
availability of alternative designs. /d. at 1272. The Federal
Circuit affirmed the Board’s finding of functionality and, in
particular, its examination of alternative design possibilities
under the Morton-Norwich analysis.
Unlike the Fifth Circuit, which read 7rafFix as foreclosing
the competitive-need approach to functionality that considered
alternative design possibilities, the Federal Circuit “d[id] not
understand the Supreme Court’s decision in TrafFix to have
altered the Morton-Norwich analysis.” Jd. at 1276. The Federal
Circuit opined that
the Morton-Norwich factors aid in the determination of
whether a particular feature 1s functional, and the third
factor focuses on the availability of “other alternatives.”
* * * Nothing in 7rafFix suggests that consideration of
alternative designs 1s not properly part of the overall mix,
20
and we do not read the Court’s observations in 7rafFix as
rendering the availability of alternative designs irrelevant.
Rather, we conclude that the Court merely noted that once
a product feature 1s found functional based on other
considerations there is no need to consider the availability
of alternative designs, because the feature cannot be given
trade dress protection merely because there are alternative
designs available. But that does not mean that the
availability of alternative designs cannot be a legitimate
source of evidence to determine whether a feature is
functional in the first place.
Ibid. The Federal Circuit noted that its view was in accord with
that of a leading treatise. See | J. THOMAS MCCARTHY, supra,
§ 7:75 (“In the author’s view, the observations of the Supreme
Court in 7rafFix do not mean that the availability of alternative
designs cannot be a legitimate source of evidence to determine
in the first instance if a particular feature is in fact
‘functional.’”).
3. In the years since the Federal Circuit decided Valu
Engineering, numerous courts have noted the division of
authority on the evidentiary role, if any, that alternative designs
play in assessing functionality. See Antioch Co. v. Western
Trimming Corp., 347 F.3d 150, 156 (6th Cir. 2003) (noting the
split among the Fifth and Federal Circuits and holding that, “‘at
the very least, a court is not required to examine alternative
designs when applying the traditional test for functionality”);
Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d
130, 135 n.4 (D. Mass. 2003) (characterizing the relevance of
the availability of design alternatives as a “hotly contested ques-
tion” in the Fifth, Sixth, and Federal Circuits); /nvisible Fence,
Inc. v. Technologies, Inc., 2007 WL 273129, *4-5 (N.D. Ind.
Jan. 26, 2007) (noting the split among the Fifth, Sixth, and
Federal Circuits); New Colt Holding Corp. v. RJG Holdings of
Florida, Inc., 312 F. Supp. 2d 195, 213-214 (D. Conn. 2004)
(same).
The secondary literature likewise has chronicled the in-
creasingly diverse functionality landscape, and called for this
21
Court to issue further guidance. See Vincent N. Palladino,
Trade Dress Functionality after TrafFix: the Lower Courts
Divide Again, 93 TRADEMARK REP. 1219, 1219-1220 (2003)
(there 1s a “new split of authority” over whether “evidence
concerning the availability of alternative designs [is] relevant’);
Justin Pats, Conditioning Functionality: Untangling the Diver-
gent Strands of Argument Evidenced by Recent Case Law and
Commentary, 10 MARQ. INTELL. PROP. L. REV. 515, 520 (2006)
(a “great deal of variance has surfaced” in the courts of appeals
since 7rafFix, with some courts considering alternative designs
as part of a competitive-need analysis, and others eschewing
them under the /nwood test); Margreth Barrett, Consolidating
the Diffuse Paths to Trade Dress Functionality: Encountering
TrafFix on the Way to Sears, 61 WASH. & LEE L. REV. 79, 83,
129-135 (2004) (noting the “considerable disagreement * * *
among * * * scholars and the courts of appeals over precisely
how the Supreme Court intended its functionality standard to be
interpreted and applied,” including whether “to exclude evi-
dence of alternatives from the initial functionality deter-
mination”); Siegrun D. Kane, Trademarks Just Ain't What They
Used to Be, 842 PLI/PAT 261, 272 (2005) (“There is an ongoing
debate about whether 7rafFix changed the longstanding
principle that the availability of alternative designs constitutes
evidence of nonfunctionality.”).
4. In the present case, the Sixth Circuit adopted reasoning
indistinguishable from the Federal Circuit’s. The court purport-
ed to adopt a position between the Fifth Circuit’s position and
the Federal Circuit's — it took note of the existence of alterna-
tive designs, but called them “insufficient evidence for non-
functionality” because the “mere existence of other potential
designs 1s no defense to a design’s functionality.” App., infra,
[3a (emphasis added). Having said that, however, the panel
went on to assign the presence of alternatives precisely the
dispositive role it professed to disclaim. The on/v evidence of
nonfunctionality in the record was the Gula declaration, which
asserted that the Humvee’s gnille, slanted and raised hood, split
windshield, rectangular doors, and squared edges were “not
22
essential to the use or purpose of the vehicle,” insofar as the
government’s performance requirements “could have been met
with any number of different vehicle appearances.” App., infra,
57a. If this case had been heard in the Fifth Circuit, it would
have come out the other way. Because the Fifth Circuit would
have found no evidence of nonfunctionality whatever in the
Gula declaration, it would have held that GM could not meet its
burden. The Court should step in to resolve the circuit split to
ensure uniform outcomes in the courts below.
It is particularly bizarre that the Sixth Circuit affirmed a
grant of summary judgment to respondents based on the Gula
declaration alone. That document (App., infra, 55a-57a) — a
four-page, litigation-driven testimonial from AM General’s
Senior Vice President — at most showed the availability of
alternative designs. Not a word of it remotely supported the
proposition that the design features at issue are nonfunctional.
Even if true that the Humvee “could have had a different
appearance and still functioned in the same way” (App., infra,
57a), the record was utterly devoid of evidence that any of the
elements identified by the court was “an arbitrary flourish in the
configuration of” the Humvee. TrafFix, 532 U.S. at 34. To the
contrary, as AM General’s own website makes abundantly
clear, these features are “the reason the [vehicle] works.” /bid.
Only by adhering to the same preconceptions it followed in
TrafFix, which led to a reversal in this Court, could the Sixth
* Evidence supporting the nonfunctionality of the grille, which is the
subject of a federal registration, must be analyzed differently from
evidence supporting the other four elements of the product design.
Because a federal registration for a design feature is presumably granted
only upon a showing of nonfunctionality, the registration itself may be
considered evidence. However, there are two problems with looking to
the registration as evidence of nonfunctionality in this case. First, the
registration was issued upon a lesser showing than the one established in
TrafFix. See infra at 27-28. Second, even an incontestably registered
mark remains subject to the functionality defense (see 15 U.S.C.
§ 1115(b)(8)), but Lanard has been deprived of its statutory right to
defend itself on these grounds. See infra at 26.
a3
Circuit have believed that a declaration suggesting the
availability of alternative designs sufficed to meet plaintiffs’
burden of establishing nonfunctionality. This Court should
once again review the Sixth Circuit’s excessive enthusiasm for
granting trade dress protection to functional design elements.
ll. THE SIXTH CIRCUIT’S OPINION
MISCONSTRUES TRAFFIX AND DANGEROUSLY
WEAKENS THE FUNCTIONALITY
REQUIREMENT
In two distinct ways, the Sixth Circuit’s opinion in this
case threatens to erode the high evidentiary requirement this
Court has imposed for parties attempting to prove that their
product designs are nonfunctional. First, allowing plaintiffs to
use evidence of alternative design possibilities in support of
their nonfunctionality arguments makes it considerably easier
for them to gain exclusive use of design features without resort
to the rigorous patent review process. Second, by describing the
Humvee’s design elements as “inherent/y non-functional” (Pet.
App., infra, 14a (emphasis added)) — a novel and nonsensical
classification — the opinion below risks setting a precedent that
relieves plaintiffs of their burden of adducing factual support
for their nonfunctionality arguments.
1. A return to first principles makes clear that the Sixth
and Federal Circuits broke with this Court’s precedents in
concluding that evidence of alternative designs is relevant to an
assessment of functionality. As this Court has explained, the
purpose of trade dress protection, like trademark protection, is
“to ‘secure to the owner of the {trade dress] the goodwill of his
business and to protect the ability of consumers to distinguish
among competing producers.*” Zwo Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 774 (1992) (citation omitted). It
accomplishes this by granting producers the exclusive right to
use product designs whose on/y purpose is to identify the
producer of the good, /.¢., ones that have no function. If a
design is functional, exclusive use of it must come, if at all,
through the patent process. See Qualitex, 514 U.S. 159 at 164
(“It is the province of patent law, not trademark law, to
24
encourage innovation by granting investors a monopoly over
new product designs or functions for a limited time * * *, after
which competitors are free to use the innovation.”).
“If a product’s functional features could be used as trade-
marks, * * * a monopoly over such features could be obtained
without regard to whether they qualify as patents and could be
extended forever.” Qualitex, 514 U.S. at 164. That is why the
Court has regularly cautioned against “misuse or over-extension
of trade dress [protection].” TrafFix, 532 U.S. at 29 (citing
Wal-Mart, 529 U.S. at 213). Thus, if trade dress law is to serve
its purpose of enabling reputation-based competition without
also risking an end run around the strictures of patent law for
useful features, it is critical to have a meaningfully broad, fact-
based definition of functionality.
The need to limit the scope of trade dress protection
explains the breadth of the traditional functionality test set forth
in /nwood and reaffirmed in TrafFix: “a product feature is
functional if it essential to the use or purpose of the article or if
it affects the cost or quality of the article.” 7rafFix, 532 U.S. at
32. Under that formulation, if a product design is “the reason
the device works” (id. at 34), it is not eligible for trade dress
protection, which extends only to features that are “arbitrary
flourish[es].” /bid. It is true that the proponent of trade dress
protection faces a high bar, because “product design almost in-
variably serves purposes other than source identification.” /d.
at 29. But that 1s as it should be — whether a feature’s asserted
usefulness qualifies it for protection is the province of patent,
not trade dress law.
Because design features can be functional without being
competitively necessary, the existence of alternative product
designs — which gives insight only into competitive need — 1s ir-
relevant to assessing a product’s functionality. Reliance on the
availability of alternatives would be akin to allowing trademark
protection for the word “car” as long as the alternative “auto”
is available. But that deviates sharply from the longstanding
imperative that trademark law does not protect what must by its
nature and purpose be available to alkcompetitors. It does not
25
matter how many synonyms exist for a particular generic
designation; all are in the public domain. By the same token, no
matter how many alternatives exist for a particular useful
design, all must remain in the public domain and available to
competitors.
Only evidence that a design feature is a mere arbitrary
flourish is evidence of nonfunctionality. The Sixth Circuit erred
in concluding otherwise, as did the Federal Circuit before it. By
allowing plaintiffs to point to alternative designs as evidence of
nonfunctionality, those courts impermissibly lower the bar to
obtaining trade dress protection.
2. The Sixth Circuit’s opinion also threatens to weaken
the functionality requirement with its remarkable statement that
“the plain appearance of the vehicle shows that the elements
which comprise its trade dress are inherently non-functional.”
App., infra, 14a (emphasis added). The classification of the
design features at issue here as falling within that novel
doctrinal category implies that, in the panel’s view, the features
are by their very nature incapable of serving any function. See
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY
(UNABRIDGED), at 1163 (1986) (defining “inherent” to mean
“structural or involved in the constitution or essential character
of something”).
As applied to the grille, split windshield, rectangular
doors, squared edges, and raised hood of a military vehicle, the
“inherently non-functional” label is simply a way to substitute
the court’s preferred conclusion for any analysis whatever of
the inconvenient facts.” The Sixth Circuit effectively ruled that
* This is especially grievous with respect to the grille, as the Sixth
Circuit's substitute for establishing nonfunctionality robs competitors of
their statutory right to rebut the presumption of validity of a registered
mark on functionality grounds. The Lanham Act provides that the
functionality of a design feature is a defense that can be asserted at any
time, even after a registration has become incontestable. See 15 U.S.C.
§ 1115(b)(8). If. however, a feature is “inherently nonfunctional,” 1.e.,
incapable ot serving a function, then challenging the validity of the mark
26
the grille design is incapable of protecting the vehicle’s radiator
while allowing air to pass freely through it; the split windshield
is incapable of adding strength to the windshield and frame,
enhancing the vehicle’s ability to support its own weight if
flipped upside down; the rectangular doors are incapable of
maximizing the opening area for fast ingress and egress of
soldiers wearing gear and carrying rifles; the squared edges are
incapable of maximizing space within the overall size
limitations of the vehicle; and the slanted and raised hood is
incapable of providing greater visibility and wheel clearance.
On a doctrinal level, the notion of “inherently non-
functional” product design has no place in trade dress law.
“{P]roduct design almost invariably serves purposes other than
source identification,’ which is why “consumer predisposition
to equate the feature with the source does not exist.” Wal-Mart,
529 US. at 213. Just as product “design * * * is not inherently
distinctive” (id. at 212), it cannot be inherently nonfunctional.
Instead, much as a party attempting to register a mark must
prove that it has acquired secondary meaning (ibid. ), a plaintiff
claiming trade dress infringement bears the burden of proving
nonfunctionality. See 15 U.S.C. § 1125(a)(3). The Sixth
Circuit’s language to the contrary is doctrinally untethered.
Most significant for present purposes, however, is the fact
that the “inherently non-functional” description of the
Humvee’s trade dress elements threatens to give other federal
courts license to relieve plaintiffs of the burden of factually
proving nonfunctionality. It similarly threatens to deprive
defendants of their ability to show that the features are indeed
functional; after all, there is no contrary evidence that could
ever overcome an “inherent” characteristic. Each potential
development would make it easier for plaintiffs to show
nonfunctionality, which risks allowing trademark law to “make
on functionality grounds is literally impossible. Therefore, the present
split in the circuits not only precludes uniformity of case law, it
effectively negates even that uniformity meant to be effected by federal
statute.
27
an ‘end run’ around the strict requirements of utility patent law
by giving equivalent rights to exclude.” 1 J. THOMAS
MCCARTHY, supra, § 7:64.
fil, THE CIRCUIT CONFLICT CONCERNS A MAT-
TER OF OVERRIDING IMPORTANCE AS TO
WHICH NATIONAL UNIFORMITY IS REQUIRED
This Court has underscored the importance of a uniform
national rule in the realm of intellectual property. See Bonito
Boats, 489 U.S. at 162 (“one of the fundamental purposes
behind the Patent and Copyright Clauses of the Constitution
was to promote national uniformity in the realm of intellectual
property”). The circuit split following 7rafFix shows that there
is in fact no national uniformity with respect to the critical issue
of when an unpatented design feature may be protected under
trade dress law; to the contrary, it has troubling implications for
the registrability and enforcement of product design trade dress.
Once a trademark registration is registered in the Patent
and Trademark Office, it is presumptively valid, and the burden
shifts te any challenger to prove (for example) that the
registered design is functional. See 15 U.S.C. § 1057(b).
However, because the Patent and Trademark Office is bound by
the decisions of the Federal Circuit (TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE § 101.03), federal
trademark registration for a product design will necessarily be
issued or refused based on the Federal Circuit’s interpretation
of the 7rafFix test. As explained above, that court permits
plaintiffs to point to the availability of alternative designs as
evidence of nonfunctionality, which makes it easier for
plaintiffs to prove nonfunctionality in the Federal and Sixth
Circuits than in the Fifth Circuit. If a product design
registration is granted due in part to the existence of
alternatives, but the owner seeks to enforce that registration in
the Fifth Circuit, that court will have to choose between giving
effect to the statutory presumptions and applying its own
understanding of this Court’s TrafFix test. Hence, at least in
some jurisdictions, the circuit split creates an unacceptable
disconnect between the standard for establishing that a product
28
design is nonfunctional for registration purposes, and the
standard for establishing that it is nonfunctional for
enforcement purposes.
Clear instructions from this Court with respect to inter-
pretation of the “essential to the use or purpose” prong of the
functionality test are therefore necessary to ensure a uniform
national rule in the realm of intellectual property.
CONCLUSION
The petition for a writ of certiorari should be granted.
Respectfully submitted.
JOHN A. WEST ROY T. ENGLERT, JR.*
LORI KRAFTE GARY A. ORSECK
CARRIE A. SHUFFLEBARGER DAMON W. TAAFFE
Greenebaum Doll & Robbins, Russell, Englert,
McDonald PLLC Orseck & Untereiner LLP
2900 Chemed Center 1801 K Street, N.W.
255 East Fifth Street Suite 411
Cincinnati, OH 45202 Washington, D.C. 20006
(513) 455-7600 (202) 775-4500
* Counsel of Record
MAY 2007
la
APPENDIX A
United States Court of Appeals
FOR THE SIXTH CIRCUIT
No. 05-2085
GENERAL MOTORS CORP. and AM GENERAL, LLC,
Plaintiffs-Appellees,
Vv.
LANARD TOYS, INC. and LANARD TOYS LTD.,
Defendants-Appellants.
ARGUED: July 19, 2006.
DECIDED: Oct. 25, 2006.
Before: MARTIN and RYAN, Circuit Judges; MARBLEY,
District Judge.”
RYAN, J., delivered a separate concurring opinion.
OPINION
BOYCE F. MARTIN, JR., Circuit Judge.
The district court, in a trademark and trade dress
infringement suit filed against Lanard Toys by General Motors
* The Honorable Algenon L. Marbley, United States District
Judge for the Southern District of Ohio, sitting by designation.
2a
Corporation, granted summary judgment for General Motors on
its claims while denying Lanard’s motion for summary
judgment based on the affirmative defenses of laches and
estoppel. Lanard now appeals those decisions. The dispute is
over a series of toy vehicles produced by Lanard called “THE
CORPS! ATK” which resemble the Hummer vehicle produced
by General Motors. Based on the following discussion, we
affirm the district court’s decisions.
I.
A. Development of Hummer
In the 1980s, the United States government commissioned
AM General to produce a high mobility military vehicle. The
result was called the High Mobility Multi-Wheeled Vehicle or
HMMWY, which was commonly referred to as the “Humvee.”
After garnering recognition through its use in the first Gulf War,
AM General decided to introduce a civilian version of the
Humvee in 1992, known as the Hummer. The design of both
the Humvee and Hummer included a front grille with seven
vertical pill-capsule shaped slots, bookended by round
headlights of approximately equal size to the slots. AM General
received a registered trademark for the grille design on March
5, 1996. AM General never sold more than 900 Hummers in
any calendar year from 1992 to 1999, in part due to a price tag
of over $100,000. In December of 1999, AM General
transferred the Hummer brand to General Motors as well as all
intellectual property rights in the civilian vehicle while
maintaining all rights in the Humvee name and the military
vehicle. After the transfer, General Motors created the H2, a
smaller version of the Hummer.
B. Lanard’s interactions with the Humvee/Hummer
brands
In 1992, Lanard Toys, Inc. began selling a toy vehicle called
the “MUDSLINGER.” It was modeled after the Humvee
military vehicle, including a similar grille design to that of the
Humvee. The box for the MUDSLINGER labeled the toy as a
3a
“Hyper Humvee.” Lanard’s sales records show that the
MUDSLINGER had limited sales between 1992 and 1996,
including no sales for the years of 1994 and 1996. In July 1993,
AM General contacted Lanard regarding the use of their
trademarked name of “Humvee” on its toys. After
correspondence between the two parties, Lanard agreed to stop
using the “Humvee” name on its toys, but continued to
manufacture the MUDSLINGER toy. There is dispute between
the parties as to whether Lanard agreed with AM General that
Lanard could continue to manufacture MUDSLINGER toys.
In February 1997, Lanard contacted AM General regarding
putting the “Humvee” name back on its toys. Lanard, at the
time, was producing a number of military vehicle toys,
including the “THE CORPS! ATK” vehicle at issue in this
case. The ATK vehicle has a similar design to that of the
MUDSLINGER vehicle. In response to Lanard’s letter, AM
General sent a cease-and-desist letter to Lanard to stop using all
of AM General’s trademarks. Lanard responded by stating that
it did not use either the Hummer or Humvee names on its
packaging.
In November 1998, AM General sent a demand letter to
Lanard regarding the ATK vehicle’s “nose design.” Lanard
responded by refusing to comply with the demand to stop
producing the toy. In November 2000, General Motors
contacted Lanard to inform it that Lanard’s military toy vehicles
infringed on the Hummer vehicle produced by General Motors.
Lanard again rejected that contention and continued to produce
its toys. On March 20, 2001, General Motors filed suit claiming
that Lanard’s toys infringed on its rights to the Hummer vehicle
and grille design.
C. Procedural History
General Motors’s complaint alleged that Lanard’s toys
infringed on its Hummer vehicle and grille design, resulting in
trademark infringement, trade dress infringement, dilution, and
common law trademark infringement. On July 16, 2003, Lanard
filed a complaint against AM General seeking a declaratory
4a
judgment as to AM General’s rights in the Humvee vehicle and
grille design. AM General, on September 29, 2003, filed a
counterclaim against Lanard for infringement on its Humvee
trade dress. In April 2004, all parties moved for summary
judgment and the district court granted summary judgment for
AM General and General Motors on their trade dress and
trademark infringement claims. The district court dismissed all
of Lanard’s defenses except for laches and estoppel.
From March 8 to 10, 2005, a jury trial was held on damages
and the issue of laches and estoppel. The jury awarded damages
to General Motors as a eight percent royalty on sales of the
ATK ($340,330), plus over $900,000 from Lanard’s profits.
Acting in an advisory capacity, the jury denied Lanard’s laches
and estoppel defenses. Lanard filed a timely appeal to this
Court on August 10, 2005.
II.
A. Summary Judgment Standard
This Court reviews a district court’s decision to grant
summary judgment de novo. Bennett v. City of Eastpointe, 410
F.3d 810, 817 (6th Cir. 2005). Summary judgment is only
appropriate “if the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to any
material fact and that the moving party is entitled to a judgment
as a matter of law.” Fed.R.Civ.P. 56(c). “The burden 1s
generally on the moving party to show that no genuine issue of
material fact exists, but that burden may be discharged by
‘showing-that is, pointing out to the district court-that there is
an absence of evidence to support the nonmoving party's case."”
Bennett, 410 F.3d at 817 (quoting Celotex Corp. v. Catrett, 477
U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). “In
reviewing a summary judgment motion, credibility judgments
and weighing of the evidence are prohibited. Rather, the
evidence should be viewed in the light most favorable to the
non-moving party.” /d. (citing Anderson vy. Liberty Lobby, Inc.,
477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)).
Sa
“Thus, the facts and any inferences that can be drawn from
those facts, must be viewed in the light most favorable to the
non-moving party.” /d. (citing Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89
L.Ed.2d 538 (1986)).
B. Trademark Infringement Claim
To demonstrate trademark infringement, the plaintiff must
show that the use of the allegedly infringing trademark “‘is likely
to cause confusion among consumers regarding the origin of the
goods offered by the parties.” Daddy ’s Junky Music Stores, Inc.
v. Big Daddy's Family Music Center, 109 F.3d 275, 280 (6th
Cir.1997) (citing 15 U.S.C. § 1114). In order to determine
confusion, this Court examines the eight so-called Frisch
factors: “(1) strength of the plaintiff's mark, (2) relatedness of
the goods or services, (3) similarity of the marks, (4) evidence
of actual confusion, (5) marketing channels used, (6) likely
degree of purchaser care, (7) the defendant’s intent in selecting
its mark, and (8) likelihood of expansion of the product lines.”
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d
539, 548 (6th Cir. 2005) (citing Frisch's Rests., Inc. v. Elby’s
Big Boy of Steubenville, Inc.,670 F.2d 642, 648 (6th Cir. 1982),
cert. denied, 459 U.S. 916, 103 S.Ct. 231, 74 L.Ed.2d 182
(1982)). “These factors imply no mathematical precision, but
are simply a guide to help determine whether confusion is
likely.” /d. (citing Homeowners Group, Inc. v. Home Mktg.
Specialists, Inc.,931 F.2d 1100, 1107 (6th Cir. 1991)). As we
have noted:
This Circuit considers the question of whether there is
a likelihood of confusion a mixed question of fact and
law. Factual findings must be made with respect to the
likelihood of confusion factors set out above.
However, the further determination of whether a given
set of foundational facts establishes a likelihood of
confusion is a legal conclusion. Because this case is
presented to us after a grant of summary judgment, our
task is to determine whether the Distnct Court
6a
correctly held that no genuine issues of material fact
were presented regarding the likelihood of confusion
factors.
Id. at 548 n. 11 (citing Homeowners Group, 931 F.2d at 1107).
1. The District Court’s Treatment of the Frisch Factors
The district court held that Lanard’s ATK vehicle grille
design infringed on the Hummer Nose Design trademark
(Trademark No. 1,959,544). Lanard’s primary objection to the
summary judgment against them on the infringement of the 544
trademark was the failure by the district court to discuss any of
the Frisch factors in its judgment. “[N]ot all of these factors
may be particularly helpful in any given case. But a thorough
and analytical treatment must nevertheless be attempted.”
Daddy’s Junky Music Stores, 109 F.3d at 280. Lanard argues
that no such “thorough and' analytical treatment” was given to
the trademark infringement claim in this case. General Motors
responds by noting that “[t]his Court reviews judgments, not
opinions,” /n re Big Rivers Elec. Corp., 355 F.3d 415, 442 (6th
Cir. 2004), and argues that “there is no need for a detailed
analysis because all factors favor a likelihood of confusion.”
Despite General Motors’s contention, Lanard’s argument
appears to be a correct onc.
Daddy's Junky Music Stores advises a court to conduct a
“thorough and analytical treatment” of the Frisch factors. The
district court may have conducted such a treatment, but it has
given no indication of its analysis and what reasoning it used to
arrive at its conclusion in either its order, or the transcript of the
summary judgment hearing. This leaves a reviewing court little
to work with in determining whether the trademark infringement
' General Motors and AM General present a unified front in
responding to Lanard’s appeal. Therefore, we will refer to both
of the Plaintiffs in this case as General Motors. Where
necessary, we will distinguish between AM General and
General Motors.
Ta
claim was deserving of judgment as a matter of law. Daddy's
Junky Music Stores requires that the district court make express
factual findings as to the Frisch likelihood-of-confusion factors.
109 F.3d at 280. With that said, the district court erred in not
conducting a proper discussion of the Frisch factors. However,
because we review a summary judgment motion de novo, the
district court’s silence is not, standing alone, a reversible error
and we must now conduct a de novo review of the
likelihood-of-confusion factors.
2. Likelihood of Confusion
As discussed supra, there are eight likelihood-of-confusion
factors which we must weigh to determine confusion and,
therefore, trademark infringement. Upon review of the record,
we find there to be sufficient evidence to grant summary
judgment in favor of General Motors on the issue of a
likelihood-of-confusion. The “strength of the mark” factor
heavily favors General Motors, as the trademark in question has
been federally registered and General Motors places the grille
ofa Hummer prominently within a number of its advertisements
for the vehicle. The “similarity of the marks” and the
“defendant’s intent in selecting the mark” both heavily favor
General Motors, as there is undisputed evidence that the design
of the front grille of Lanard’s toys was copied directly from the
Hummer vehicle. Also, the “likely degree of purchaser care”
favors General Motors, as the product in question is a series of
toys. It is highly unlikely that a child or adult, in the selection
of a toy, will carefully evaluate whether the Hummer-like
vehicle is actually from the maker of Hummer or another source
of goods. They will merely recognize the grille shape,
recognize the general shape, and purchase based on that
recognition. The “relatedness of the goods and services” also
weighs in favor of Gencral Motors, as the toy car is quite
closely related to the actual car on which the registered
trademark of the grille is found. The factors of “marketing
channels used” and “likelihood of expansion of product lines”
do not strongly favor either party 1n this case. There appears to
be no evidence of how the marketing for either product might
8a
overlap, and while General Motors states it has considered
making Hummer toys, there is no real proof that the company
is seriously considering this possibility.
The only remaining factor is that of “evidence of actual
confusion.” Lanard argues that a survey used by General
Motors to demonstrate actual confusion was actually focused on
the overall vehicle’s trade dress, not the trademark in the grille,
an assertion which General Motors concedes. The only proof of
actual consumer confusion presented by General Motors ts a
K-Mart purchase order form and a screen-shot from
Amazon.com’s Toys “R” Us section, both of which list
Lanard’s toys as “Humvees.” What General Motors fails to
acknowledge 1s that the mere use of the Humvee name by retail
stores does not inherently mean that Lanard has infringed on the
trademark of the grille design or that the grille design itself is
the reason for the confusion. As General Motors must
acknowledge, the confusion by K-Mart or Toys “R” Us could
stem from the overall exterior of the toys and not necessarily
from the grille design. In order to prove actual confusion, the
confusion must stem from the mark in question-in this case, the
grille design. Given the uncertainty in this evidence, we hold
that the “evidence of actual confusion” factor does not favor
either party, although neither would this factor be determinative
on the overall issue of the likelihood-of-confusion. See Daddy's
Junky Music Stores, 109 F.3d at 284 (“Due to the difficulty of
securing evidence of actual confusion, a lack of such evidence
is rarely significant.”). In sum, the weight of the factors in favor
of a finding a likelihood of confusion convinces us that
summary judgment was appropriate in this case, despite the
district court’s failure to adequately discuss the Frisch factors.
C. Trade Dress Claim
Trademarks and trade dress are separate and distinct causes
of action under the Lanham Act, 15 U.S.C. § 1050 er seg.
Gibson Guitar, 423 F.3d at 547. Trade dress has been described
by the Supreme Court as the “*design or packaging of a product’
which has acquired a ‘secondary meaning’ sufficient ‘to identify
9a
the product with its manufacturer or source.’” /d. (quoting
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28,
121 S.Ct. 1255, 149 L.Ed.2d 164 (2001)).
Trade dress refers to the image and overall appearance
of a product. It embodies that arrangement of
identifying characteristics or decorations connected
with a product, whether by packaging or otherwise,
{that} make[s] the source of the product distinguishable
from another and ... promote[s] its sale. Trade dress
involves the total image of a product and may include
features such as size, shape, color or color
combinations, texture, graphics, or even particular sales
techniques.
Id. at 547 n. 10 (internal citation omitted).
A party seeking to recover for trade dress infringement must
prove by a preponderance of the evidence that (1) the trade
dress is not functional; (2) the trade dress is distinctive in the
marketplace and has acquired “secondary meaning,” thereby
indicating the source of the goods; and (3) the trade dress of the
accused product is confusingly similar. Wal-Mart Stores, Inc.
v. Samara Bros., Inc., 529 U.S. 205, 210, 120 S.Ct. 1339, 146
L.Ed.2d 182 (2000). Lanard is silent on the issue of whether the
trade dress of its toys is confusingly similar to the trade dress
asserted by General Motors and AM General. This silence is
taken as a concession of this element of trade dress
infringement. We must therefore review de novo whether there
was a material issue of fact as to each of the remaining two
elements. The district court held that Lanard’s “CORPS!
ATK” vehicle violated the Hummer/Humvec trade dress as a
matter of law.
1. Elements and Ownership of Trade Dress
Before addressing the application of the trade dress
infringement elements, we must first address Lanard’s challenge
to both the ownership of the Hummer and Humvee trade dress
and what that trade dress is comprised of. Lanard’s argument
10a
can be summed up in two statements. First, neither the district
court, AM General, nor General Motors listed the appropriate
elements constituting the protected trade dress. Second, the
district court inappropriately lumped together the trade dress of
the civilian Hummer vehicle (owned by General Motors) with
the military Humvee vehicle (owned by AM General), thereby
prejudicing many of Lanard’s arguments against trade dress
infringement.
[I]t will not do to solely identify in litigation a combination
as ‘the trade dress.’ Rather, the discrete elements which make
up that combination should be separated out and identified in a
list.” McCarthy on Trademarks § 8:3 (4th ed.2001). General
Motors argues that the trade dress was properly identified as the
“exterior appearance and styling” of the vehicles in question.
However,
focus on the overall look of a product does not permit
a plaintiff to dispense with an articulation of the
specific elements which comprise its distinct dress.
Without such a precise expression of the character and
scope of the claimed trade dress, litigation will be
difficult, as courts will be unable to evaluate how
unique and unexpected the design elements are in the
relevant market.
Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d373,
381 (2d Cir. 1997). General Motors argues that it met that
burden in its summary judgment brief when it identified the
trade dress clements as “the exterior appearance and styling of
the vehicle design which includes the grille, slanted and raised
hood, split windshield, rectangular doors, squared edges, etc.”
While the district court did not repeat this list as the specific
trade dress which Lanard infringed upon, we hold this is
sufficient to fulfill the “discrete elements” requirement of a
trade dress claim.
Lanard’s only dispute that this description by General
Motors ts not an acceptable list of “discrete elements” involves
the “etc.” at the end of the description. In requiring a list of
lla
“discrete elements,” we are looking to avoid “vague and
indeterminate references to the ‘overall appearance’ or ‘look’ of
plaintiff's packaging.” McCarthy on Trademarks § 8:3. In the
end, the question is whether or not “the court and the parties
coherently define exactly what the trade dress consists of and
determine whether that trade dress is valid and if what the
accused is doing is an infringement.” Id. Based on the list of
elements presented by Gencral Motors, it can be understood
exactly what they are looking to protect. The “etc.” marking
must be ignored in such a listing as it does not define any
further element to be included in the trade dress. See William
Strunk, Jr. & E.B. White, The Elements of Style 46 (4th ed.
2001) (“In formal writing, etc. is a misfit.”). Because the listing
is not vague and provides exact details as to what General
Motors secks to protect, we find the elements listed by General
Motors to be sufficient to define exactly what constitutes the
Hummer/ Humvee trade dress.
Lanard’s second argument is that the district court treated
the trade dress claims from AM General and General Motors as
the same. The district court referred in its summary judgment
order to the “Hummer/Humvee Trade Dress” as the trade dress
on which the ATK vehicle infringed. The two plaintiffs also
combined the trade dress claims of the Hummer and the
Humvee throughout their summary judgment brief and
subsequent reply brief. However, the design elements of each
are not identical, as admitted to by an AM _ General
representative: “The HUMVEE contains certain design
elements not present on the Hummer, including, but not limited
to: ‘X’-shaped cross bars on the doors, a slant back with no
windows, mounted weapons or a weapons turret, and a blackout
headlight in the left front hood recess.” While these distinctions
appear to be significant changes to the “exterior appearance and
styling,” they do not change the basic trade dress as defined by
the discrete clements listed above. Both the military Humvee
and the civilian Hummer share common appearance elements
which constitute a trade dress (specifically, the grille, slanted
and raised hood, split windshield, rectangular doors, and
12a
squared edges). The elements listed which were not a part of
the civilian Hummer’s design are also not listed in the discrete
elements which make up the trade dress as alleged by General
Motors/AM General. Therefore, the district court’s combining
of the Hummer and Humvee trade dresses into one trade dress
comprising the common elements between those vehicles 1s
permissible. |
2. Functionality of Trade Dress
Lanard also challenges whether the protected trade dress in
this case is actually nonfunctional, claiming that as a functional!
feature, it cannot be protected under trade dress law. TrafFix
Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29, 121
S.Ct. 1255, 149 L.Ed.2d 164 (2001). A trade dress’s
nonfunctional nature must be proven by the party asserting the
trade dress protection. 15 U.S.C. § 1125(a)(3); TrafFix, 532
U.S. at 29, 121 S.Ct. 1255.
{A] product feature is functional, and cannot serve as a
trademark, if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article, that
is, if exclusive use of the feature would put competitors
at a significant non-reputation-related disadvantage.
Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165, 115
S.Ct. 1300, 131 L.Ed.2d 248 (1995) (internal quotation marks
omitted). Ifa trade dress is found to be functional, the mere fact
that there are other non-infringing designs which would serve
the same functional purpose is no defense to functionality.
Antioch Co. v. Western Trimming Corp., 347 F.3d 150, 155 (6th
Cir.2003).
Lanard’s first objection to the district court’s ruling on this
issue 1s the court’s clear misunderstanding of the role of
functionality in a trade dress claim. The district court, in Its
order, stated that “Lanard’s defense of ‘functionality’ is
dismissed.” This demonstrates an inappropriate shifting of the
burden on the issue of functionality from General Motors to
Lanard. The district court erred in its labeling of the issue of
l3a
functionality as a defense to be proven by Lanard, instead of
requiring General Motors to prove the absence of functionality
as an element of trade dress infringement. However, this error
is not reversible, and we must continue our de novo review of
the issue in order to determine if General Motors has proven its
trade dress to be non-functional.
General Motors, in proving non-functionality, relies heavily
on the declaration of Mr. Robert Gula, Senior Vice President of
Engineering and Product Development for AM General. Gula
testified that the appearance of the Humvee was unrelated to its
function, stating that “AM General’s prototype [of the Humvee]
could have had a different appearance and still functioned the
same way” and that the appearance was “not essential to the use
or purpose of the vehicle.” However, Gula’s first statement 1s
insufficient evidence for non-functionality as the mere existence
of other potential designs is no defense to a design’s
functionality. Antioch, 347 F.3d at 155. What remains is
Gula’s statement that the appearance and styling was “not
essential to the use or purpose of the vehicle.”
Lanard counters General Motors’s proof on this issue by
quoting from Gula’s deposition testimony in which he stated
“{t]he shape [of the Humvee] was basically a byproduct of a
vehicle that was designed to meet a performance specification.”
Gula continued to testify that part of those performance
specifications were “dimensional limitations, maximum width,
maximum height, maximum overall length. [The Army]
dictated approach and departure angle and | think breakover
angle.” These performance-based specifications all seem to
directly affect the “exterior appearance and styling” of the
Humvee. However, Gula later stated in his declaration that
“The Government’s technical specification did not address the
exterior appearance or the styling of the vehicle.”
We conclude that General Motors must prevail on the issue
of functionality. The trade dress in question has been defined
as “the exterior appearance and styling of the vehicle design
which includes the grille, slanted and raised hood, split
14a
windshield, rectangular doors, squared edges, etc.” We fail to
see what function these elements perform. While we understand
that Generaf Motors bears the burden of proof of
non-functionality, the plain appearance of the vehicle shows that
the elements which comprise its trade dress are inherently
non-functional. The statement by Gula regarding “performance
specifications,” which was relied upon by Lanard, does not
contribute to what makes up the Hummer/Humvee trade dress.
In fact, General Motors has managed to significantly alter the
height, width, and length of the Humvee in creating its newer
models of the Hummer while maintaining the same trade dress
as the original military vehicle. The military undoubtedly had
function in mind when designing the Humvee. However, this
does not necessarily mean that the exterior appearance and style
was based on function; rather, it was more likely an unrelated
afterthought.
Lanard repeatedly and dramatically stated during oral
argument that it stakes its entire claim in this case on the issue
of functionality. Unfortunately, this was like picking a show
pony in a thoroughbred race. The district court was correct in
holding that the Hummer/ Humvec trade dress is non-functional.
3. Secondary Meaning
Finally, Lanard argues that an issue of material fact remains
as to whether the allegedly protected trade dress has acquired
secondary meaning. Again, General Motors bears the burden of
proof on the issue of secondary meaning. Wal-Mart Stores, 529
U.S. at 210, 120 S.Ct. 1339. To demonstrate secondary
meaning, the evidence must show that “in the minds of the
public, the primary significance of the trade dress is to identify
the source of the product rather than the product itself.” /nwood
Labs., 456 U.S. at 851, 102 S.Ct. 2182 n. 11. This Court applies
a seven-factor test to determine whether secondary meaning
exists in a trade dress: (1) direct consumer testimony, (2)
consumer surveys, (3) exclusivity, length, and manner of use,
(4) amount and manner of advertising, (5) amount of sales and
number of customers, (6) established place in the market, and
15a
(7) proof of intentional copying. Marketing Displays, Inc. v.
TrafFix Devices, Inc., 200 F.3d 929, 937 (6th Cir. 1999), rev'd
on other grounds, TrafFix Devices, Inc. v. Marketing Displays,
Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001).
Lanard first argues that the district court erred in not
applying the seven-factor test or referring to any of the factors
in either its decision or at the summary judgment hearing.
Additionally, the district court appears to have incorrectly
shifted the burden on this issue by stating that “Lanard’s defense
of ‘secondary meaning’ is dismissed.” Secondary meaning is an
element of trade dress infringement which must be proven by
the plaintiffs, not the defendants. Wa/-Mart Stores, 529 U.S. at
210, 120 S.Ct. 1339. On this issue, the district court erred in
ruling against such a “defense” because Lanard is not required
to present evidence on secondary meaning. That burden falls to
General Motors. However, as this is de novo review, we must
continue to apply the seven-factor test in order to determine if
General Motors has sufficiently proven that the trade dress has
acquired secondary meaning.
In order to prove secondary meaning, General Motors relies
on a number of sources. First, it draws this Court's attention to
a General Motors business report which states that Hummer has
96% brand recognition. The report, dated December |, 1999,
states that 96% of the 228 respondents were able to correctly
identify a picture of the Hummer as in fact being a Hummer. ”
This survey appears to be powerful evidence in that it
essentially forced consumers to look at the “exterior appearance
and styling” and to identify the source of that product. General
Motors also relies on a survey from 2002, conducted in
anticipation of this litigation. This “Marylander survey”
concluded that Hummer’s trade dress had secondary meaning to
almost 77% of the respondents, but its conclusion is slightly
* The survey respondents were looking at a picture of AM
General's civilian Hummer vehicle, not AM General’s military
vehicle or General Motors’s civilian Hummer vehicles.
l6a
misleading. The 77% represents the number of people who,
when they were showed pictures of Hummer vehicles, stated
that a specific make comes to mind, including. Hummer (54%),
Humvee (14%), General Motors (2%), Hoomer (1 %), Hummer
truck (1 %), Military Hummer (1 %), and those who could not
name the make but knew they were all from one company
(15%).* Nevertheless, knowledge that a product comes from a
single source, even without naming that source, is sufficient to
establish secondary meaning. See 15 U.S.C. § 1157.
Lanard argues that General Motors’s survey evidence ts not
enough to establish secondary meaning. First of all, it argues
that secondary meaning must be proven before the first
allegedly infringing use of the trade dress. See McCarthy on
Trademarks § 15:4; Burke-Parsons-Bowlby Corp. _ v.
Appalachian Log Homes, Inc., 871 F.2d 590, 596 (6th Cir.
1989) (“Secondary meaning must be established prior to other’s
first use of a similar [design].””). Survey evidence from either
1999 or 2002 is therefore not relevant given that Lanard
developed the MUDSLINGER in 1992 and the allegedly
infringing ATK in 1997. General Motors retorts that such a
blanket rule would invalidate all surveys of trade dress
conducted in anticipation of litigation.
This Court has historically favored the use of consumer
surveys as proof of secondary meaning. See Tumblebus, Inc. v.
Cranmer, 399 F.3d 754, 761 n. 9 (6th Cir. 2005); see also Black
& Decker, Inc. v. Pro-Tech Power Inc., 26 F.Supp.2d 834
(E.D.Va.1998) (holding that a 1998 survey showing 85% brand
recognition was strong enough to establish secondary meaning
in 1992). However, the question remains whether we should
ignore all survey evidence conducted post-infringement or
* These numbers do not add up to 77% as respondents were
allowed to name more than one make. The 77% named either
one of those makes which the survey deemed “Hummer/GM
Brands” or did not name a make but said they all came from one
company.
l7a
accept the evidence with the understanding that the survey does
not reflect a pre-infringement world. A court may easily take
into consideration the strength of recognition at the time of the
survey in light of the amount of time passed between that date
and the date of infringement. We have previously taken the
latter course in an unpublished decision. Ashland Oil v.
Olymco, 1995 WL 499466, at **3-5, 1995 U.S.App. LEXIS
24652 (6th Cir. August 21, 1995). This seems to be the
appropriate choice, given the relatively unlikely scenario that a
company has conducted a pre-infringement survey and this
Court’s strong support for survey evidence in evaluating
secondary meaning. In light of the strong statistical evidence
(96% recognition in 1999 and 77% recognition in 2002), we
hold that General Motors’s survey evidence was sufficient to
support secondary meaning. See Ashland Oil, 1995 WL
499466, at 1995 U.S.App. LEXIS 24652 at *9-13 (holding that
50% is generally acceptable for secondary meaning and 38% is
marginal recognition).
Finally, there is a dispute between the parties over whether
the intentional copying of a trade dress constitutes inherent
secondary meaning in that trade dress. The Supreme Court has
stated that “product-design trade dress can never be inherently
distinctive.” Wal-Mart Stores, 529 U.S. at 214, 120 S.Ct. 1339.
Therefore, secondary meaning for any product design trade
dress can not be inherent through evidence of copying. While
Lanard believes the Wal-Mart court completely eliminated
consideration of intentional copying in product design cases,
that is not the case. Intentional copying may be used to show
secondary meaning as the seventh factor in this Court's
seven-factor test, but it is only one of many considerations in
that test and does not alone establish secondary meaning.
Therefore, Lanard’s intentional copying of the Humvee trade
dress is relevant, but not determinative, to the issue of
secondary meaning.
18a
We have now discussed two factors-consumer surveys and
proof of intentional copying-of the seven-factor test required by
TrafFix Devices. 200 F.3d at 937. Because we must focus on
secondary meaning developed before infringement, General
Motors has very little evidence as to the remaining five factors.
Direct consumer testimony is unavailable pre-1992. There was
little “exclusivity, length, and manner of use” of the trade dress
pre-1992. There was no advertising, with the exception of the
presence of the Humvee in the Gulf War. Finally, there was no
sales and no established place in the market for the vehicles at
that time. However, General Motors presents exceptionally
strong survey evidence of recognition of its trade dress along
with the intentional copying by Lanard. Lanard was
unsuccessful in its attempt to discredit the proof offered by
Genera! Motors. Given this strong evidence by General Motors
and Lanard’s inability to present evidence to the contrary on any
of the seven factors, we hold that summary judgment was
appropriate as to the issue of secondary meaning.
General Motors therefore has established that there are no
material issues of fact as to any of the three elements of trade
dress infringement. Therefore, summary judgment was
appropriate as to this issue.
D. The Laches and Estoppel Defenses
Lanard’s final appeal challenges the district court’s decision
denying Lanard summary judgment based on laches and
estoppel defenses.’ Laches is the “negligent and unintentional
failure to protect one’s rights.” Nartron Corp. v.
ST Microelectronics, Inc., 305 F.3d 397, 408 (6th Cir.2002). To
demonstrate a valid estoppel claim, Lanard “must show that it
had been misled by [General Motors/AM General] through
* It should be noted that the burden here shifts from the previous
two appeals because in this appeal of summary judgment,
Lanard was the moving party at the district court, while General
Motors was the non-movant.
19a
actual misrepresentations, affirmative acts of misconduct,
intentional misleading silence, or conduct amounting to virtual
abandonment of the trademark.” Jd. at 412. In its estoppel
defense, Lanard relies on the “silence” and “virtual
abandonment” requirements. Because the application of these
related defenses here turns on AM Gencral’s silence and the
potential abandonment of its claims, we will address both
defenses together. 7
1. Summary Judgment Appeal Post-Jury Verdict
Before we can reach the merits of the laches and estoppel
defenses, we must be sure that an appeal of a summary
judgment can be heard. After denying Lanard’s motion for
summary judgment on laches, the district court submitted the
question of the laches and estoppel defenses to the jury and the
jury rejected Lanard’s defenses. We will generally not rule on
an appeal of summary judgment :f the issue went to trial.
Garrison v. Cassens Transport Co., 334 F.3d 528, 537 (6th Cir.
2003). However, an exception to that rule exists if the summary
judgment was based on a pure question of law rather than on a
material issue of facts, in which case this Court may review the
summary judgment motion. Paschal v. Flagstar Bank, 295 F.3d
565, 572 (6th Cir. 2002). Although the district court did not
provide an explanation for why it denied Lanard’s motion for
summary judgment on laches and estoppel, it subsequently
submitted the question to the jury, thereby insinuating that there
were questions of fact for the jury to answer. We thus reason
from the district court’s ruling that its denial of summary
judgment was not based on a pure question of law, but on
factual disputes over the elements of laches.
Lanard argues that the submission of the question of laches
to a jury is irrelevant because the district court did so “in an
advisory sense.” Because the jury’s determination on this issue
was only advisory, Lanard argues, there was no jury verdict on
the issue of laches and this Court may therefore hear the appeal.
Based on this “advisory” jury determination, we agree. While
a jury may be used to consider factual disputes in a laches
20a
defense, the fact that the jury was used in an advisory manner
suggests that our review of the denial of summary judgment is
appropriate.
2. Elements of Laches
This Court has held that:
[a] party asserting laches must show: (1) lack of
diligence by the party against whom the defense is
asserted, and (2) prejudice to the party asserting it. In
this Circuit, there 1s a strong presumption that a
plaintiff's delay in asserting its rights is reasonable as
long as an analogous state statute of limitations has not
elapsed. In evaluating whether a party has been diligent
in protecting its trademark, we look to the state-law
statute of limitations for injury to personal property.
Here, under Michigan law, that period 1s three years. In
other words, a delay beyond the three-year statutory
period is presumptively prejudicial and unreasonable.
The period of delay begins to run when plaintiff had
actual or constructive knowledge of the alleged
infringing activity.
Nartron, 305 F.3d at 408 (internal quotation marks and citations
omitted). The applicable state statute of limitations in this case
is three years. M.C.L.A. § 600.5805(10).
Lanard believes the facts demonstrate that AM General was
negligent in the protection of its rights and that AM General’s
silence misled Lanard into continuing with the production of tts
toys. Because Lanard was the moving party in the summary
judgment motion on the issue of the defenses, we must view the
facts in the light most favorable to General Motors and AM
General. Additionally, in reviewing the facts, we must keep in
mind that the subject matter of the case before us is Lanard’s
use of the trademarked grille design and the trade dress, not its
use of the term “Humvee.”
AM General was first aware of Lanard’s MUDSLINGER
toy in 1993 when AM General contacted Lanard about the use
2la
of “Hyper Humvee” on its packaging. After Lanard agreed to
discontinue the use of “Hyper Humvee” on its packaging, AM
General’s representative wrote to Lanard on August 26, 1993:
“You state in your telefax that Lanard Toys is redoing its
packaging. If that means that Lanard Toys intends to continue
selling toy vehicles that replicate AM General’s HUMMER
vehicle, we believe that Lanard Toys may still be violating our
client’s rights.” Based on this letter, there appears to be a
material issue of fact as to whether AM General was aware that
Lanard Toys was going to continue making its Humvee-styled
toys without the “Humvee” name. A reasonable fact-finder
could interpret Lanard’s silence to constitute agreement with
AM General that the company would cease making its toys or,
as actually happened, the letter could have been ignored by
Lanard. Considering the language in AM General’s letter and
the failure of Lanard to respond, a jury could believe that AM
General was unaware that Lanard continued making its
Humvec-styled toys.
The partics again contacted each other in 1997, and this
time Lanard initiated the dialogue to make a deal with AM
General to add the name “Humvee” back to the toys, and
included pictures of the toys in question. Based on this Ictter,
there is still a material issue of fact as to whether AM General
took this letter to mean Lanard was already producing the
Humvee-styled toys and wanted to use the “Humvee” name, or
whether the entire production of the toys rested on whether AM
General would allow Lanard to use the name. Because there
remains a question of fact whether AM General delayed in the
exercising of its rights, the district court was correct to deny
summary judgment as to the laches and estoppel defenses and
submit those questions to a jury.
Based on the discussion above, we affirm the decisions of
the district court.
RYAN, Circuit Judge, concurring.
22a
While I concur entirely with my colleagues’ conclusion that
the district court’s judgment must be affirmed, | v. rite separately
to emphasize that | vote to affirm only because I’m satisfied that
there is no “genuine issue of material fact,” under Fed.R.Civ.P.
56, that can preclude judgment for the plaintiff, as a matter of
law, particularly as the term of art “genuine issue” has been
interpreted by the Supreme Court in the Ce/ofex trilogy. See
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91
L.Ed.2d 265 (1986), Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), Matsushita Elec.
Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct.
1348, 89 L.Ed.2d 538 (1986).
] express no view about the sufficiency of the evidence with
respect to any issue in the case.
23a
APPENDIX B
United States District Court
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
Nos. 01-71103, 03-7273 1
GENERAL MOTORS CORP. and AM GENERAL, LLC,
Plaintiffs,
Vv. :
LANARD TOYS, INC. and LANARD TOYS LTD.,
Defendants.
Arthur J. Tarnow, District Judge.
JUDGMENT AND PERMANENT INJUNCTION
1. WHEREAS this Court granted summary judgment in the
above-captioned case on August 27, 2004 resolving numerous
issues in this case prior to tral, which Summary Judgment
Order is attached hereto as Exhibit A;
2. WHEREAS the Court, on March 8, 2005, entered an
Order of Dismissal As To Certain Claims Over Defendants’
| Objections, which is attached hereto as Exhibit B;
3. WHEREAS the Court held trial on March &, 2005
through March 10, 2005 on the remaining issues; and
4. WHEREAS the jury rendered its verdict on March 10,
2005 on these remaining issues,
24a
IT IS HEREBY ORDERED, ADJUGED AND DECREED
that this judgment and permanent injunction is entered as
follows:
A. The defendants used the asserted trademark or trade
dress intentionally knowing that it was an infringement.
B. Judgment is entered against defendants, jointly and
severally, in favor of GM/AMG in the amount of $1,274,141.
C. Defendants have not met their burden of proof on their
laches and estoppel defenses, and those defenses are dismissed
with prejudice.
D. GM/AMG are awarded their costs as the prevailing
party and pre-judgment interest from March 20, 2001, the
amount of which shall be based on the Michigan statutory rate,
to be determined based on the final amount awarded after post-
judgment submissions to the Court.
E. The Court reserves the issue as to whether to adjust the
amount of defendants’ profits awarded to plaintiffs under 15
U.S.C. § 1117(a) which shall be decided by post-judgment
motions to be filed within 10 days of entry of this judgment.
F. The Court also reserves the issue of whether to increase
the award of damages to plaintiffs up to an additional three
times and/or award attorneys’ fees to the plaintiffs, which shall
be decided by post-judgment motions to be filed within 10 days
of entry of this judgment.
G. Pursuant to Fed. R. Civ. P. 65, defendants, their officers,
agents, servants, employees, and attorneys, and those persons 1n
active concert or participation with defendants who receive
notice of this permanent injunction by personal service or
otherwise, are permanently enjoined and restrained from:
(1) Importing, manufacturing, producing, distributing,
circulating, selling, offering for sale, advertising,
promoting or displaying the Corps! ATK vehicle;
(2) Imitating. copying or making any unauthorized use
of the Hummer Nose Design Trademark (U.S.
25a
Trademark Registration No. 1,959,544), as show in
Exhibit C, and/or the trade dress of the
Hummer/Humvee Vehicle, as shown in its entirety
by the Pictures Exhibit D;
(3) Importing, manufacturing, producing, distributing,
circulating, selling, offer for sale, advertising,
promoting or displaying any service or product
using any simulation, reproduction, counterfeit or
copy of, and/or any service that is confusingly
similar to either the Hummer Nose Design
Trademark and/or the trade dress of the
4 Hummer/Humvee Vehicle;
(4) Using any ffalse designation of origin or false
description (including, without limitation, any
letters, symibols, or designs constituting the
Hummer Nose Design Trademark and/or the trade
dress of the WHummer/Humvee Vehicle) or
performing ainy act, which can, or is likely to, lead
members of tthe trade or public to believe that any
service or product manufactured, distributed or sold
by defendanits is in any manner associated or
connected with GM, AMG, the HUMMER® brand,
or the Hummer Nose Design Trademark and/or the
trade dess of the Hummer/Humvee Vehicle, or is
sold, manufactured, licensed, sponsored, approved
or authorized by GM or AMG;
H. This judgment and permanent injunction only deals with
the rights and obligations of the parties in the United States and
is not intended to affect tlhe parties’ claims and defense in other
countries.
{. Should GM or AMG accuse Lanard’s Ultra Corps., Super
Shots and/or Infrared Vehicle, which were part of this case, with
infringement of the Nose Design Trademark and/or trade dress
of the Hummer/Humvee vehicle after the date of this judgment,
GM and/or AMG agree not to pursue any such accusation as a
|
YH RSS SPI EPS EN PARDONS pr na
26a
contest of this Order, but instead shall file a new lawsuit with
respect to such accusations.
J. Defendants and their agents, employees, servants,
attorneys, successors, and assigns, and all others in privity or
acting in concert herewith, shall file with this Court, and serve
upon GM/AMG’s counsel within thirty (30) days of this
judgment, a written report under oath, setting forth in detail the
manner and form in which they have complied with the
permanent injunction.
K. GM/AMG and/or auditors of GM/AMG shall be allowed
to audit and inspect the books, records, and premises of the
defendants for a period of three (3) months after entry of this
judgment and permanent injunction to determine defendants’
compliance with this permanent injunction.
IT 1S SO ORDERED.
Arthur J. Tarnow
United States District Judge
ee
Date: Apr. 12, 2005
27a
EXHIBIT A
United States District Court
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
Nos. 01-71103, 03-7273 1
GENERAL MOTORS CORP. and AM GENERAL, LLC,
| Plaintiffs,
Vv.
LANARD TOYS, INC. and LANARD TOYS LTD.,
Defendants.
Arthur J. Tarnow, District Judge.
ORDER REGARDING
SUMMARY JUDGMENT MOTIONS
Plaintiffs, General Motors Corporation (“GM”) and AM
General, LLC (“AMG”) have moved for summary judgment.
Defendants, Lanard Toys, Inc. and Lanard Toys Limited
(““Lanard”) has also moved for summary judgment. The Court
has considered the briefs and arguments of the parties and is
fully appraised of the issues. For the reasons set forth on the
record on Friday, August 13, 2004, the Court hereby orders:
1. Lanard’s “CORPS! ATK Vehicle” is held to infringe
both the Hummer/Humvee Trade Dress and the Hummer Nose
Design Trademark (U.S. Registration No. 1,959,544).
28a
2. Lanard’s “Mean Machine” is held not to infringe the
Hummer/Humvee Trade Dress or the Hummer Nose Design
Trademark.
3. Lanard’s “Ultra Corps!” toy is held not to infringe the
Hummer/Humvee Trade Dress. The Court also determined that
infringement of the Hummer Nose Design Trademark presents
a jury question.
4. Lanard’s “Super Shots” toy is held to present a jury
question as to infringement of both the Hummer/Humvee Trade
Dress and the Hummer Nose Design Trademark.
5. Lanard’s “Infrared Vehicle” toy is held to present a jury
question as to infringement of both the Hummer/Humvee Trade
Dress and the Hummer Nose Design Trademark.
6. Lanard’s defenses of “functionality” and no “secondary
meaning” are dismissed.
7. Lanard’s defense of “ownership” is dismissed.
8. All of Lanard’s Affirmative Defenses are dismissed at
summary judgment except for Lanard’s laches and estoppel
defenses.
Therefore,
IT ISORDERED that the Defendants’ Renewed Motion for
Summary Judgment [115] 1s GRANTED IN PART and
DENIED IN PART.
IT IS FURTHER ORDERED that General Motors’ Motion
for Summary Judgment of Infringement of the Hummer Nose
Design Trademark [160] is GRANTED IN PART and DENIED
[IN PART.
IT IS FURTHER ORDERED that Plaintiffs’ Joint Motion
for Summary Judgment of Infringement of the Hummer and
Humvee Vehicle Trade Dress [161] is GRANTED IN PART
and DENIED IN PART.
29a
IT IS FURTHER ORDERED that Plaintiffs’ Joint Motion
for Summary Judgment as to Defendants’ Affirmative Defenses
[162] is GRANTED IN PART and DENIED IN PART.
IT IS FURTHER ORDERED that Defendants’ Renewed
Motion to Strike the Declaration of Charles Ellerbrock [172] is
DISMISSED AS MOOT.
IT 1S FURTHER ORDERED that Plaintiffs’ Motion to File
Reply Bricfs in Excess of Five Pages [180] is GRANTED.
HON. ARTHUR TARNOW
U.S. District Court Judge
Dated: August 27, 2004
30a
EXHIBIT B
United States District Court
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
Nos. 01-71103, 03-72731
GENERAL MOTORS CORP. and AM GENERAL, LLC,
Plaintiffs,
v.
LANARD TOYS, INC. and LANARD TOYS LTD.,
Defendants.
Arthur J. Tarnow, District Judge.
ORDER OF DISMISAL AS TO CERTAIN CLAIMS
OVER DEFENDANTS’ OBJECTIONS
WHEREAS, plaintiffs have accused defendants (hereinafter
‘Lanard”’) of infringement of U.S. Trademark Registration No.
1,959,544 and the Trade Dress of the Hummer/Humvee vehicle
with respect to five toys manufactured and sold by Lanard; and
WHEREAS, the Court on August 27, 2004 ruled with
respect to those five toys as follows:
1. Lanard’s Corps! ATK Vehicle is held to infringe both the
Hummer/Humvee Trade Dress and the Hummer Nose Design
Trademark (U.S. Registration No. 1,959,544).
3la
2. Lanard’s “Mean Machine” is held not to infringe the ©
Hummer/Humvee Trade Dress or the Hummer Nose Design
Trademark.
3. Lanard’s “Ultra Corps!” toy is held not to infringe the
Hummer/Humvee Trade Dress. The Court also determined that
infringement of the Hummer Nose Design Trademark presents
a jury question.
4. Lanard’s “Super Shots” toy is held to present a jury
question as to infringement of both the Hummer/Humvee Trade
Dress and the Hummer Nose Design Trademark.
5. Lanard’s “Infrared Vehicle” toy is held to present a jury
question as to infringement of both the Hummer/Humvee Trade
Dress and the Hummer Nose Design Trademark.
WHEREAS, plaintiff's have requested that the three toys
for which there are remaining questions as to infringement not
be included in tnal for efficiency and to reduce the number of
issues to be tried as Lanard has no current sales of these
products and the amount of sales involved with respect to any
past damages would be small; and
WHEREAS, plaintiffs have agreed to release defendants
from any past liability with respect to said products as a
condition of such dismissal.
WHEREAS, defendants object to this dismissal because
they continue to market the three toys and they will be
prejudiced if they are required to defend a new lawsuit raising
the same claims because they will have incurred substantial
attorneys’ fees to defend the claims in this case and because
they do not believe that any claimed efficiency will offset this -
prejudice;
WHEREAS, the court has determined, over defendants’
objections, that it will allow Plaintiffs to voluntarily dismiss
their claims based on the three toys.
IT IS HEREBY ORDERED as follows:
32a
1. Plaintiffs hereby release defendants for any liability with
respect to infringement of the °544 registration and/or
Hummer/Humvee Trade Dress with respect to sales of Lanard’s
accused Infrared Vehicle, Ultra Corps! and Supper Shots toy
products through the date of this dismissal with prejudice.
2. As a result of this release, plaintiffs’ claims in this case
against these three toys are dismissed with prejudice as to sales
prior to the date of this dismissal and without prejudice to bring
these claims against future sales of these products after the date
of this dismissal.
SO ORDERED.
Dated: March 8, 2005
HON. ARTHUR TARNOW
U.S. District Court Judge.
33a
EXHIBIT C
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APPENDIX C
United States Court of Appeals
FOR THE SIXTH CIRCUIT
No. 05-2085
GENERAL MOTORS CORP. and AM GENERAL, LLC,
Plaintiffs-Appellees,
v.
LANARD TOYS, INC. and LANARD TOYS LTD.,
Defendants-Appellants.
FILED: Jan. 31, 2007
Before: MARTIN and RYAN, Circuit Judges; MARBLEY,
District Judge.”
ORDER
The court having received a petition for rehearing en banc,
and the petition having been circulated not only to the original
panel members but also to all other active judges of this court,
and no judge of this court having requested a vote on the
suggestion for rehearing en banc, the petition for rehearing has
been referred to the original panel.
* The Honorable Algenon L. Marbley, United States District
Judge for the Southern Distnct of Ohio, sitting by designation.
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The panel has further reviewed the petition for rehearing
and concludes that the issues raised in the petition were fully
considered upon the original submission and decision of the
case. Accordingly, the petition is denied.
ENTERED BY ORDER OF THE COURT
Leonard Green, Clerk
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APPENDIX D
United States District Court
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
Nos. 01-71103, 03-72731
GENERAL MOTORS CORP. and AM GENERAL, LLC,
Plaintiffs,
V.
LANARD TOYS, INC. and LANARD TOYS LTD.,
Defendants.
Arthur J. Tarnow, District Judge.
Deposition of ROBERT J. GULA
The Deposition of ROBERT J. GULA,
Taken at 1000 Town Center, 22nd Floor
Southfield, Michigan,
Commencing at 10:08 a.m.,
Friday, April 23, 2004
Before Kathryn L. Janes, CSR-3442, RMR, CRR
1 APPEARANCES
2
3 MARC LORELLI
4 Brooks & Kushman, P.C.
5 1000 Town Center, 22nd Floor
6 Southfield, Michigan 48075
7 (248) 358-4400
8 Appearing on behalf of the Plaintiff, General Motors
9 Corporation.
10
11 PAUL J. PERALTA
12 Baker & Daniels
13 205 West Jefferson Boulevard, Suite 250
14 South Bend, Indiana 46601
15 (574) 234-4149
16 Appearing on behalf of the Plaintiff, AM General, LLC.
17
18 KEVIN D. O’REAR
19 AM General
20 105 North Niles Avenue
21 South Bend, Indian 46617
22 (574) 284-2915
23 Appearing on behalf of the Plaintiff, AM General, LLC.
24
25
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Page 3
1 GREGORY D. HANLEY
2 Wasinger, Kickham & Hanley, P.C.
3 26862 Woodward Avenue, Suite 100
4 Royal Oak, Michigan 48067
5 (248) 414-9900
6 Appearing on behalf of the Defendants.
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Page 4
1 Southfield, Michigan
2 Friday, April 23, 2004
3 10:08 a.m.
4
5 ROBERT J. GULA,
6 Was thereupon called as a witness herein, and after
7 having first been duly sworm to testify to the truth,
8 the whole truth and nothing but the truth, was
9 examined and testified as follows:
10 EXAMINATION
11 BY MR. HANLEY:
12 Q. Good morning, Mr. Gula.
13 A. Hi.
14Q. We just met, my name is Greg Hanley and I’m one of
the
15 attorneys that are representing Lanard Toys, Inc. and
16 Lanard Toys Limited in this case that involves your
17 company, AM General. Your deposition is being
taken
18 pursuant to a special rule of federal procedure that
19 allows us to take the deposition of an entity or a
20 corporation and the corporation responds by
21 designating people such as yourself to testify to
22 certain matters that we’ve asked for testimony on; do
23 you understand that?
24 A. Sure.
25 Q. Allright. Do you understand that you’ve been
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System was added. That was not - that was not
provided on the military vehicle. Pioneer tool kit
was deleted.
BY MR. HANLEY:
That’s all you can recall at this time?
That’s abut all I can recall at the outset of the
program in ‘92.
Did the shape of the vehicle ever change during the
time that AMG was manufacturing?
You're referr'ng to the shape - I need to have
differentiated between the roof and what we call
below
the belt-line area of the vehicle?
Okay. Explain for somebody like me who is not a
technical person the distinction you’re making?
(Whereupon Mr. O’Rear entered the
deposition room at 10:30 a.m.)
The shape of the roof was different on the commercial
vehicle than on the military vehicle. The shape of
the body, which 1s generally defined as everything
below the bottom of the windows, has never changed.
21 BY MR. HANLEY:
aa.
23 A.
24
25
Okay. How did the roof portion change?
Well, as I said, it was changed from a - the military
vehicle had either canvas roof or it had a
ballistically-protected armored roof with a turret.
OAAINOR WH
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10 A.
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12
13
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15
16
17
18
19
20 A.
21
22
23
24
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Page 18
Neither of those were suitable for the commercial
marketplace so we designed a steel roof that had a
different appearance obviously than a canvas roof.
And that was a design that was done from the very
beginning?
Correct.
Okay. All rnght. Were you involved in the design
decisions relating to the shape of the original
military vehicle?
No.
I mean, do you know why that particular shape was
decided upon?
MR. PERALA: Which particular shape are we
taking about?
MR. HANLEY: The shape of the onginal
military vehicle back in 1985.
MR. PERALTA: Are you including everything,
that 1s the roof, the body, everything?
MR. HANLEY: Yes.
The shape was - I was not involved in - | was not
responsible for the design process, but I observed the
design process from the capacity I described. The
shape was basically a byproduct of a vehicle that was
designed to meet a performance specification.
25 BY MR. HANLEY:
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Page 19
And what was the performance specification?
Well, the Army calls it a systems specification, and
it described everything from a requirement that the
vehicle be diesel powered, have an automatic
transmission, the types of differentials, that it be
full-time four-wheel drive, to the level of cooling
performance, the level of acceleration and speed
performance, and the dimensional limitations,
maximum
width, maximum height, maximum overall length. It
dictated approach and departure angle and | think
breakover angle, but I’m not sure of that.
Weight, it defined a maximum curb weight,’
it defined the ride quality, hill-climbing capability,
side-slope capability, fording, water-fording
capability and storage capability. There was a list
of equipment that the vehicle had to be able to stow.
It defined durability and reliability, maintainability
requirements. It defined the weapons that the vehicle
had to be capable of mounting and their - on the
weapons that were fired from the vehicle, | think it
defined the firing ranges, up, down, side to side,
noise, defined pass-by noise, interior noise.
. Anything else?
. Probably a lot of other things that I just can’t
remember.
Omen AMNARWN —
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Page 20
But would it be fair to say that the shape and
configuration that ultimately was decided upon was
driven by the need to satisfy those requirements?
As I said, the shape wasn’t - the shape was a result
of what it took to meet those requirements. There was
no requirement for shape or appearance or anything.
All right. The government didn’t dictate the shape?
No.
AM General ultimately arrived at a vehicle with that
particular shape because of the requirements that you
just listed in detail; would that be correct?
Well, we arrived at a vehicle that met the
requirements that happened to be shaped the way it’s
shaped.
Okay. Okay. Now, when you designed the roof for
the
commercial vehicle, you said that that was different
obviously than what was on the military vehicle, what
were the factors that drove those design decisions?
Cost, we decided to make it a steel roof instead of
aluminum, like the body of the vehicle, time, because
the tooling lead time for a steel roof was shorter
than that of an aluminum roof. It had to match up to
the existing windshield, attach to the windshield in
the same manner that the armored roof attached.
Anything else?
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APPENDIX E
United States District Court
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
Nos. 01-71103, 03-7273 1
GENERAL MOTORS CORP. and AM GENERAL, LLC,
Plaintiffs,
Vic
LANARD TOYS, INC. and LANARD TOYS LTD.,
Defendants.
Arthur J. Tarnow, District Judge. °
DECLARATION OF ROBERT J. GULA
Il, ROBERT J. GULA, declare as follows:
1. I am an adult, more than 18 years old, and competent to
testify. The facts stated in this Declaration are based on my
personal knowledge and the business records of AM General
LLC, which are maintained under my supervision.
2. | am currently the Senior Vice President of Engincering
and Product Development for AM General. | have held this job
since November 1997.
3. I began working for AM General in 1971. In 1981, I was
the “Deputy Project Manager - HMMWV System” for AM
General. My duties included: preparing and maintaining
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schedules for AM General's HMMWV Program, coordinating
the activities of the functional organizations to ensure on-
schedule performance and delivery of contractually compliant
deliverable items; and managing and preparing the Phase |
Technical Proposal submitted to the Government, which
described AM General’s offering for the HMMWV System. In
1988, | became the Director of Engineering at AM General. I
was made Vice President of Engineering in 1992 and Senior
Vice President of Engineering in 1997.
4. In 1979, the Government solicited proposals from
industry because it wanted to replace the U.S. military’s light
vehicle fleet which included: the M561, a six wheel drive
vehicle made by Consolidated Diesel Electric; the M880, a
military derivative of a Dodge pickup truck; and the M151, a
quarter-ton payload truck based on a Ford design. In February
of 1981, the AM General received the Government’s formal
Request for Proposal which asked AM General to submit a
written proposal for a High Mobility Multipurpose Wheeled
Vehicle, HMMWV.
5. On April 27, 1981, AM General submitted to the
Government, AM General’s “Technical Proposal: Solicitation
DAAE07-81-R-4002 (Step One) HIGH MOBILITY
MULTIPURPOSE WHEELED VEHICLE (HMMWV)”
(“Technical Proposal”). [I was primarily responsible for
preparing and submitting the technical volume of this proposal.
The Technical Proposal included drawings of the HMMWV,
which were conceived and prepared by AM General employees
before April 27, 1981.
6. In July 1981, AM General was one of three companies
that received a “Phase I Contract” from the Government. The
Phase | Contract was a fixed-price, best efforts contract that
paid AM General (and two other competing companies) to
develop and submit prototype vehicles that met the
Government’s technical specification. The Government’s
technical specification did not address the exterior appearance
or styling of the vehicle.
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7. The other two companies that received a Phase |
Contract were Chrysler Corporation and Teledyne Continental
Motors. While still following the Government’s technical
specifications, Chrysler and Teledyne developed prototype
vehicles having an exterior appearance and styling different than
each other and AM General’s. The Government’s requirements
could have been met with any number of different vehicle
appearances. The particular appearance and styling of the
prototype vehicles was chosen by the various competing
companies. AM General’s prototype could have had a different
appearance and still functioned the same way. That is because
the exterior appearance and styling of the vehicle is not essential
to the use or purpose of the vehicle. Indeed, not using the same
appearance and styling as AM Gencral’s prototype did not
impede Chrysler or Teledyne from meeting the Government’s
technical specification or from competing for the Government
contract.
8. AM General was awarded the Phase II Production
Contract in 1983 which established AM General as the only
manufacturer for the HMMWV. AM General has sold this
vehicle to the Government continuously since 1985.
9. During my time at AM General, I have also been
involved with design of the civilian Hummer vehicle, now
called the Hummer Hi. Based on the popularity of AM
General’s military vehicle, a demand for a civilian version
arose. Other than the unique military features (such as the
camouflage paint, the fabric doors, the weapon mounts, military
lighting, etc.), the civilian Hummer H1 and the military vehicle
have a similar exterior design appearance. Indeed, the civilian
and military vehicles are manufactured on the same assembly
line with many of the same parts.
! declare under penalty of perjury that the foregoing is true
and correct.
ROBERT J. GULA
Date: 4-23-04
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APPENDIX F
15 U.S.C. § 1114. Remedies; infringement; innocent
infringement by printers and publishers
(1) Any person who shall, without the consent of the registrant--
(a) use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with the
sale, offering for sale, distribution, or advertising of any goods
or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a
registered mark and apply such reproduction, counterfeit,
copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used
in commerce upon or in connection with the sale, offering for
sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion,
or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies
hereinafter provided. Under subsection (b) hereof, the registrant
shall not be entitled to recover profits or damages unless the acts
have been committed with knowledge that such imitation is
intended to be used to cause confusion, or to cause mistake, or
to deceive.
As used in this paragraph, the term “any person” includes the
United States, all agencies and instrumentalities thereof, and all
individuals, firms, corporations, or other persons acting for the
United States and with the authorization and consent of the
United States, and any State, any instrumentality of a State, and
any officer or employee of a State or instrumentality of a State
acting in his or her official capacity. The United States, all
agencies and instrumentalities thereof, and all individuals,
firms, corporations, other persons acting for the United States
and with the authorization and consent of the United States, and
59a
any State, and any such instrumentality, officer, or employee,
shall be subject to the provisions of this chapter in the same
manner and to the same extent as any nongovernmental entity.
(2) Notwithstanding any other provision of this chapter, the
remedies given to the owner of a right infringed under this
chapter or to a person bringing an action under section 1125(a)
or (d) of this title shall be limited as follows:
(A) Where an infringer or violator is engaged solely in the
business of printing the mark or violating matter for others
and establishes that he or she was an innocent infringer or
innocent violator, the owner of the right infringed or person
bringing the action under section 1 125(a) of this title shall be
entitled as against such infringer or violator only to an
injunction against future printing.
(B) Where the infringement or violation complained of is
contained in or is part of paid advertising matter in a
newspaper, magazine, or other similar periodical or in an
electronic communication as defined in section 2510(12) of
Title 18, the remedies of the owner of the right infringed or
person bringing the action under section | 125(a) of this title
as against the publisher or distributor of such newspaper,
magazine, or other similar periodical or electronic
communication shall be limited to an injunction against the
presentation of such advertising matter in future issues of such
newspapers, magazines, or other similar periodicals or in
future transmissions of such electronic communications. The
limitations of this subparagraph shall apply only to innocent
infringers and innocent violators.
(C) Injunctive relief shall not be available to the owner of the
right infringed or person bringing the action under section
1125(a) of this title with respect to an issue of a newspaper,
magazine, or other similar penodical or an electronic
communication containing infringing matter or violating
matter where restraining the dissemination of such infringing
matter or violating matter in any particular issue of such
periodical or in an electronic communication would delay the
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delivery of such issue or transmission of such electronic
communication after the regular time for such delivery or
transmission, and such delay would be due to the method by
which publication and distribution of such periodical or
transmission of such electronic communication is customarily
conducted in accordance with sound business practice, and not
due to any method or device adopted to evade this section or
to prevent or delay the issuance of an injunction or restraining
order with respect to such infringing matter or violating
matter.
(D)(i)(D) A domain name registrar, a domain name registry, or
other domain name registration authority that takes any action
described under clause (11) affecting a domain name shall not
be liable for monetary relief or, except as provided in
subclause (II), for injunctive relief, to any person for such
action, regardless of whether the domain name is finally
determined to infringe or dilute the mark.
(II) A domain name registrar, domain name registry, or other
domain name registration authority described in subclause (1)
may be subject to injunctive relief only 1f such registrar,
registry, or other registration authority has--
(aa) not expeditiously deposited with a court, in which an
action has been filed regarding the disposition of the domain
name, documents sufficient for the court to establish the
court’s control and authority regarding the disposition of the
registration and use of the domain name:
(bb) transferred, suspended, or otherwise modified the
domain name during the pendency of the action, except
upon order of the court; or
(cc) willfully failed to comply with any such court order.
(ii) An action referred to under clause (i)(1) 1s any action of
refusing to register, removing from registration, transferring,
temporarily disabling, or permanently canceling a domain
name--
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(1) in compliance with a court order under section 1 125(d)
of this title; or
(II) in the implementation of a reasonable policy by such
registrar, registry, or authority prohibiting the registration of
a domain name that is identical to, confusingly similar to, or
dilutive of another’s mark.
(iii) A domain name registrar, a domain name registry, or
other domain name registration authority shall not be liable
for damages under this section for the registration or
maintenance of a domain name for another absent a showing
of bad faith intent to profit from such registration or
maintenance of the domain name.
(iv) If a registrar, registry, or other registration authority takes
an action described under clause (ii) based on a knowing and
material misrepresentation by any other person that a domain
name is identical to, confusingly similar to, or dilutive of a
mark, the person making the knowing and material
misrepresentation shall be liable for any damages, including
costs and attorney’s fees, incurred by the domain name
registrant as a result of such action. The court may also grant
injunctive relief to the domain name registrant, including the
reactivation of the domain name or the transfer of the domain
name to the domain name registrant.
(v) A domain name registrant whose domain name has been .-
suspended, disabled, or transferred under a policy described
under clause (ii)(I1) may, upon notice to the mark owner, file
a civil action to establish that the registration or use of the
domain name by such registrant is not unlawful under this
chapter. The court may grant injunctive relief to the domain
name registrant, including the reactivation of the domain
name or transfer of the domain name to the domain name
registrant.
(E) As used in this paragraph--
(i) the term “violator” means a person who violates section
112S(a) of this title; and
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(ii) the term “violating matter” means matter that is the
subject of a violation under section 1 125(a) of this title.
(3)(A) Any person who engages in the conduct described in
paragraph (11) of section 110 of Title 17, and who complies
with the requirements set forth in that paragraph is not liable on
account of such conduct for a violation of any right under this
chapter. This subparagraph does not preclude liability, nor shall
it be construed to restrict the defenses or limitations on rights
granted under this chapter, of a person for conduct not described
in paragraph (11) of section 110 of Title 17, even if that person
also engages in conduct described in paragraph (11) of section
110 of such title.
(B) A manufacturer, licensee, or licensor of technology that
enables the making of limited portions of audio or video content
of a motion picture imperceptible as described in subparagraph
(A) is not liable on account of such manufacture or license for
a violation of any right under this chapter, if such manufacturer,
licensee, or licensor ensures that the technology provides a clear
and conspicuous notice at the beginning of each performance
that the performance of the motion picture 1s altered from the
performance intended by the director or copyright holder of the
motion picture. The limitations on liability in subparagraph (A)
and this subparagraph shall not apply to a manufacturer,
licensee, or licensor of technology that fails to comply with this
paragraph.
(C) The requirement under subparagraph (B) to provide notice
shall apply only with respect to technology manufactured after
the end of the 180-day period beginning on April 27, 2005.
(D) Any failure by a manufacturer, licensee, or licensor of
technology to qualify for the exemption under subparagraphs
(A) and (B) shall not be construed to create an inference that
any such party that engages in conduct described in paragraph
(11) of section 110 of Title 17 is liable for trademark
infringement by reason of such conduct.
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15 U.S.C. § 1115. Registration on principal register as
evidence of exclusive right to use mark; defenses
(a) Evidentiary value; defenses
Any registration issued under the Act of March 3, 1881, or the
Act of February 20, 1905, or of a mark registered on the
principal register provided by this chapter and owned by a party
to an action shall be admissible in evidence and shall be prima
facie evidence of the validity of the registered mark and of the
registration of the mark, of the registrant’s ownership of the
mark, and 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 subject to any conditions or
limitations stated therein, but shall not preclude another person
from proving any legal or equitable defense or defect, including
those set forth in subsection (b) of this section, which might
have been asserted if such mark had not been registered.
(b) Incontestability; defenses
To the extent that the right to use the registered mark has
become incontestable under section 1065 of this title, the
registration shall be conclusive evidence of the validity of the
registered mark and of the registration of the mark, of the
registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the registered mark in commerce. Such
conclusive evidence shall relate to the exclusive right to use the
mark on or in connection with the goods or services specified in
the affidavit filed under the provisions of section 1065 of this
title, or in the renewal application filed under the provisions of
section 1059 of this title if the goods or services specified in the
renewal are fewer in number, subject to any conditions or
limitations in the registration or in such affidavit or renewal
application. Such conclusive evidence of the right to use the
registered mark shall be subject to proof of infringement as
defined in section 1114 of this title, and shall be subject to the
following detenses or defects:
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(1) That the registration or the incontestable right to use the
mark was obtained fraudulently; or
(2) That the mark has been abandoned by the registrant; or
(3) That the registered mark is being used by or with the
permission of the registrant or a person in privity with the
registrant, so as to misrepresent the source of the goods or
services on or in connection with which the mark is used; or
(4) That the use of the name, term, or device charged to be an
infringement is a use, otherwise than as a mark, of the party’s
individual name in his own business, or of the individual
name of anyone in privity with such party, or of a term or
device which is descriptive of and used fairly and in good
faith only to describe the goods or services of such party, or
their geographic origin; or
(5) That the mark whose use by a party is charged as an
infringement was adopted without knowledge of the
registrant’s prior use and has been continuously used by such
party or those in privity with him from a date prior to (A) the
date of constructive use of the mark established pursuant to
section 1057(c) of this title, (B) the registration of the mark
under this chapter if the application for registration is filed
before the effective date of the Trademark Law Revision Act
of 1988, or (C) publication of the registered mark under
subsection (c) of section 1062 of this title: Provided,
however, That this defense or defect shall apply only for the
area in which such continuous prior use is proved; or
(6) That the mark whose use is charged as an infringement
was registered and used prior to the registration under this
chapter or publication under subsection (c) of section 1062 of
this title of the registered mark of the registrant, and not
abandoned: Provided, however, That this defense or defect
shall apply only for the area in which the mark was used prior
to such registration or such publication of the registrant’s
mark; or
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(7) That the mark has been or is being used to violate the
antitrust laws of the United States; or
(8) That the mark is functional; or
(9) That equitable principles, including laches, estoppel, and
acquiescence, are applicable.
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15 U.S.C. § 1125. False designations of origin, false
descriptions, and dilution forbidden
(a) Civil action
(1) Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any
word, term, name, symbol, or device, or any combination
thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact,
which--
(A) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of such
person with another person, or as to the origin, sponsorship,
or approval of his or her goods, services, or commercial
activities by another person, or
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his or
her or another person’s goods, services, or commercial
activities,
shall be liable in a civil action by any person who believes that
he or she is or is likely to be damaged by such act.
(2) As used in this subsection, the term “any person” includes
any State, instrumentality of a State or employee of a State or
instrumentality of a State acting in his or her official capacity.
Any State, and any such instrumentality, officer, or employee,
shall be subject to the provisions of this chapter in the same
manner and to the same extent as any nongovernmental entity.
(3) In a civil action for trade dress infringement under this
chapter for trade dress not registered on the principal register,
the person wo asserts trade dress protection has the burden of
proving that the matter sought to be protected is not functional.
(b) Importation
Any goods marked or labeled in contravention of the provisions
of this section shall not be imported into the United States or
? 67a
admitted to entry at any customhouse of the United States. The
owner, importer, or consignee of goods refused entry at any
customhouse under this section may have any recourse by
protest or appeal that is given under the customs revenue laws
or may have the remedy given by this chapter in cases involving
goods refused entry or seized.
(c) Dilution by blurring; dilution by tarnishment
(1) Injunctive relief
Subject to the principles of equity, the owner of a famous
mark that is distinctive, inherently or through acquired
distinctiveness, shall be entitled to an injunction against
another person who, at any time after the owncr’s mark has
become famous, commences use of a mark or trade name in
commerce that is likely to cause dilution by blurring or
dilution by tarnishment of the famous mark, regardless of the
presence or absence of actual or likely confusion, of
competition, or of actual economic injury.
(2) Definitions
(A) For purposes of paragraph (1), a mark is famous if it is
widely recognized by the general consuming public of the
United States as a designation of source of the goods or
services of the mark’s owner. In determining whether a mark
possesses the requisite degree of recognition, the court may
consider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of advertising
and publicity of the mark, whether advertised or publicized
by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of
goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
‘iv) Whether the mark was registered under the Act of
March 3, i881, or the Act of February 20, 1905, or on the
principal register.
68a
(B) For purposes of paragraph (1), “dilution by blurring” is
association arising from the similarity between a mark or trade
name and a famous mark that impairs the distinctiveness of
the famous mark. In determining whether a mark or trade
name is likely to cause dilution by blurring, the court may
consider all relevant factors, including the following:
(i) The degree of similarity between the mark or trade name
and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the
famous mark.
(iii) The extent to which the owner of the famous mark is
engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to
create an association with the famous mark.
(vi) Any actual association between the mark or trade name
and the famous mark.
(C) For purposes of paragraph (1), “dilution by tarnmtshment”
is association arising from the similarity between a mark or
trade name and a famous mark that harms the reputation of the
famous mark.
(3) Exclusions
The following shall not be actionable as dilution by blurring
or dilution by tarnishment under this subsection:
(A) Any fair use, including a nominative or descriptive fair
use, or facilitation of such fair use, of a famous mark by
another person other than as a designation of source for the
person’s own goods or services, including use in connection
with--
(i) advertising or promotion that permits consumers to
compare goods or services; or
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(ii) identifying and parodying, criticizing, or commenting
upon the famous mark owner or the goods or services of
the famous mark owner.
B) All forms of news reporting and news commentary.
(C) Any noncommercial use of a mark.
(4) Burden of proof
In a civil action for trade dress dilution under this chapter for
trade dress not registered on the principal register, the person
who asserts trade dress protection has the burden of proving
that--
(A) the claimed trade dress, taken as a whole, is not
functional and ts famous; and :
(B) if the claimed trade dress includes any mark or marks
registered on the principal register, the unregistered matter,
taken as a whole, is famous separate and apart from any
fame of such registered marks.
(5) Additional remedies
In an action brought under this subsection, the owner of the
famous mark shall be entitled to injunctive relief as set forth
in section 1116 of this title. The owner of the famous mark
shall also be entitled to the remedies set forth in sections
1117(a) and 1118 of this title, subject to the discretion of the
court and the principles of equity if--
(A) the mark or trade name that is likely to cause dilution by
blurring or dilution by tarnishment was first used in
commerce by the person against whom the injunction 1s
sought after October 6, 2006; and
(B) in a claim arising under this subsection--
(i) by reason of dilution by blurring, the person against
whom the injunction is sought willfully intended to trade
on the recognition of the famous mark; or
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(ii) by reason of dilution by tarnishment, the person
against whom the injunction is sought willfully intended
to harm the reputation of the famous mark.
(6) Ownership of valid registration a complete bar to
action
The ownership by a person of a valid registration under the
Act of March 3, 1881, or the Act of February 20, 1905, or on
the principal register under this chapter shall be a complete
bar to an action against that person, with respect to that mark,
that--
(A)(i) is brought by another person under the common law
or a statute of a State; and
(ii) seeks to prevent dilution by blurring or dilution by
tarnishment; or
(B) asserts any claim of actual or likely damage or harm to
the distinctiveness or reputation of a mark, label, or form of
advertisement.
(7) Savings clause
Nothing in this subsection shall be construed to impair,
modify, or supersede the applicability of the patent laws of the
United States.
(d) Cyberpiracy prevention
(1)(A) A person shall be liable in a civil action by the owner of
a mark, including a personal name which is protected as a mark
under this section, 1f, without regard to the goods or services of
the parties, that person
(i) has a bad faith intent to profit from that mark, including a
personal name which is protected as a mark under this section;
and :
(ii) registers, traffics in, or uses a domain name that--
(1) in the case of a mark that is distinctive at the time of
registration of the domain name, 1s identical or confusingly
similar to that mark;
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(11) in the case of a famous mark that is famous at the time
of registration of the domain name, is identical or
confusingly similar to or dilutive of that mark; or
(111) is a trademark, word, or name protected by reason of
section 706 of Title 18 or section 220506 of Title 36.
(B)(i) In determining whether a person has a bad faith intent
described under subparagraph (a), a court may consider factors
such as, but not limited to
(I) the trademark or other intellectual property rights of the
person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal
name of the person or a name that is otherwise commonly
used to identify that person;
(III) the person’s prior use, if any, of the domain name in
connection with the bona fide offering of any goods or
services;
(IV) the person’s bona fide noncommercial or fair use of the
mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark
owner’s online location to a site accessible under the domain
name that could harm the goodwill represented by the mark,
either for commercial gain or with the intent to tarnish or
disparage the mark, by creating a likelihood of confusion as
to the source, sponsorship, affiliation, or endorsement of the
site;
(V1) the person’s offer to transfer, sell, or otherwise assign the
domain name to the mark owner or any third party for
financial gain without having used, or having an intent to use,
the domain name in the bona fide offering of any goods or
services, or the person’s prior conduct indicating a pattern of
such conduct:
(VII) the person’s provision of material and misleading false
contact information when applying for the registration of the
domain name, the person’s intentional failure to maintain
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accurate contact information, or the person’s prior conduct
indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple
domain names which the person knows are identical or
confusingly similar to marks of others that are distinctive at
the time of registration of such domain names, or dilutive of
famous marks of others that are famous at the time of
registration of such domain names, without regard to the
goods or services of the parties; and
(EX) the extent to which the mark incorporated in the person’s
domain name registration is or is not distinctive and famous
within the meaning of subsection (c) of this section.
(ii) Bad faith intent described under subparagraph (A) shall not
be found in any case in which the court determines that the
person believed and had reasonable grounds to believe that the
use of the domain name was a fair use or otherwise lawful.
(C) In any civil action involving the registration, trafficking, or
use of a domain name under this paragraph, a court may order
the forfeiture or cancellation of the domain name or the transfer
of the domain name to the owner of the mark.
(D) A person shall be liable for using a domain name under
subparagraph (A) only if that person is the domain name
registrant or that registrant’s authorized licensee.
(E) As used in this paragraph, the term “traffics in” refers to
transactions that include, but are not limited to, sales, purchases,
loans, pledges, licenses, exchange
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