Amicus Curiae Brief — Van Klassens, Inc. v. Imagineering, Inc.

AUG 21 1986 (n )

No. 95-127

In The

Supreme Court of the United States

October Term, 1995

VAN KLASSENS, INC.

AND

ROBERT LUKINGBEAL,

Petitioners,

Vv.

IMAGINEERING, INC.,

Respondent.

Petition for Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

MOTION OF PASS & SEYMOUR, INC.

TO FILE AN AMICUS CURIAE BRIEF IN

SUPPORT OF PETITION FOR WRIT OF CERTIORARI

AND AMICUS CURIAE BRIEF

Paul F. Kilmer, Esq.*

Thomas W. Brooke, Esq.

GADSBY & HANNAH

1747 Pennsylvania Avenue, N.W.

Suite 800

Washington, D.C. 20006

202/429-9600

Attorneys for Pass & Seymour, Inc.

*Counsel of Record

Balmar Legal Publishing Services, Washington, D.C. (202) 682-9812

SBEST AVAILABLE COPY

CE OI A! TI ey ey oe ere |=

No. 95-127

In The

Supreme Court of the Hnited States

October Term, 1995

VAN KLASSENS, INC.

AND

ROBERT LUKINGBEAL,

Petitioners,

Vv.

IMAGINEERING, INC.,

Respondent.

Petition for Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

MOTION FOR LEAVE TO FILE BRIEF AND BRIEF

OF PASS & SEYMOUR, INC., AS AMICUS CURIAE

IN SUPPORT OF THE PETITION

Pass & Seymour, Inc., (hereinafter “Pass & Seymour’)

hereby moves, pursuant to Rule 37.2 of the Rules of this Court,

for leave to file the attached Brief Amicus Curiae in support of

the Petition for Certiorari. Counsel for Van Klassens, Inc., and

Robert Lukingbeal (hereinafter collectively “Van Klassens’’)

has consented to the filing of this brief. A copy of the consent

letter is filed concurrently with the Clerk of the Court. However,

counsel for the Respondent has withheld consent.

Pass & Seymour is a manufacturer of electrical plugs and

connectors, some of which have been designed based in part

upon expired patents previously held by other companies. On

2

or about October 20, 1994, Hubbell Incorporated (hereinafter

“Hubbell”), another manufacturer of electrical plugs and con-

nectors, filed a complaint in the United States District Court for

the Southern District of New York (Civil Action No. 94 CIV.

7631) alleging, inter alia, that Pass & Seymour had infringed

the trade dress rights of Hubbell in product configurations for

plugs and connectors.

Upon review of the underlying facts, it was discovered that

Hubbell had been granted two design patents for plugs and

connectors identical or similar to the alleged product configura-

tion trade dress on which Hubbell based its claims against Pass

& Seymour. In addition, it was found that Hubbell had been

granted a utility patent for plugs and connectors in which the

“best mode” for practicing the invention recited a product

configuration substantially similar to that at issue before the

District Court. It was further determined that both of the design

patents and the utility patent had expired.

Pass & Seymour subsequently filed a Motion to Dismiss

the trade dress portion of Hubbell’s case based upon the deci-

sions of this Court in Sears Roebuck & Co. v. Stiffel Co., 376

U.S. 225 (1964); Compco Corp. v. Day-Brite, 376 U.S. 234

(1964); and Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489

U.S. 141 (1989), among others. While Pass & Seymour’s

Motion to Dismiss was under advisement, this Court issued its

decision in Qualitex Co. v. Jacobson Products Co., Inc.,__U.S.

__, 115 S.Ct. 1300 (1995). That decision and the relevant

language therein relating to the public domain status of the

subject matter of expired patents was brought to the attention of

the District Court by Pass & Seymour.

Despite the precedents of this Court, the District Court in

Hubbell ruled that Hubbell could claim trade dress rights in a

product configuration which was the subject matter of expired

design and utility patents. During the course of that decision,

the District Court indicated that the discussion by this Court in

ee a ee

ee

3

Qualitex regarding the public domain status of expired patents

was ambiguous and might not apply to expired design patents.

The initial decision of the District Court in the Hubbell action

forms part of the appendix to the Brief of Pass & Seymour.

In a subsequent order, the District Court refused to certify

the product configuration issue to the Second Circuit. A copy

of that decision is also in the appendix to the Brief of Pass &

Seymour.

Due to decisions such as that of the District Court in the

Hubbell action, Pass & Seymour, along with many other com-

panies, can no longer rely upon the “public domain” status of

expired or invalidated patents in making decisions regarding the

design and manufacture of products. The decision of the United

States Court of Appeals for the Federal Circuit in Van Klassens,

Inc. v. Imagineering, Inc., presents a situation parallel to that

faced by Pass & Seymour in the Hubbell action. A determina-

tion by this Court that Imagineering was wrongly decided by

the Federal Circuit would likely lead to the dismissal of all of

Hubbell’s trade dress claims against Pass & Seymour.

In short, the issues raised by Petitioners affect directly the

vital interests of Pass & Seymour in the action brought by

Hubbell before the United States District Court for the Southern

District of New York. Petitioners’ assertions and this Court’s

treatment of those assertions will also affect the future ability of

Pass & Seymour and others to determine whether they may rely

upon the subject matter of expired or invalidated patents in

bringing products to the marketplace.

For these reasons, Pass & Seymour respectfully requests

leave to file the attached brief, and urges this Court to grant Van

Klassens’ Petition and reverse the decision below.

Respectfully Submitted:

Paul F. Kilmer*

Thomas W. Brooke

GADSBY & HANNAH

1747 Pennsylvania Avenue, N.W.

Suite 800

Washington, D.C. 20006

(202)429-9600

*Counsel of Record

i

TABLE OF CONTENTS

il

TABLE OF AUTHORITIES

Cases Page(s)

American Safety Table Co., Inc. v. Schreiber,

269 F.2d 255 (2d Cir.), cert denied, 361 U.S.

je gi, - Pn Merap emer tec e URE peas le 2

Arkansas Electric Cooperative Corp. v. Arkansas

Public Service Comm’n,

SOL US Sia SOUR ce ee eee 4

Bonito Boats v. Thundercraft Boats, Inc., 489 U.S.

eS tA oe OR pee ee 1,4,5

Brunswick Corp v. Spinit Reel Co.,

832 F.2d 513 (10th Cir. 1987) ......... 3,4

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

Ue ee eo ek oe ee ew a was 1,3, 4,5

Conopco, Inc. v. May Department Stores Com-

pany, 32 USPQ2d 1225 (Fed. Cir. 1994),

Cort. GON Ni a AR 6 Ko hae 5

Duraco Products, Inc. v. Joy Plastic Enterprises,

Lid., 40 F.3d 1431 (3rd Cir. 1994) ....... Oe

Graham v. John Deere Co. of Kansas City, 282

UD. 5 Ck oe ae a es 2

Hubbell Incorporated v, Pass & Seymour, Inc., 94

Civ. 7631, Opinion May 18,1995 ....... 6

Hubbell Incorporated v. Pass & Seymour, Inc., 94

Civ. 7631, Opinion, August 3,1995 ...... 6

Kellogg Co. v. National Biscuit Co.,

mee OS, REE See on se ers 1,6

Kohler Co. v. Moen, Inc., 12 F.3d 632

‘Goi 5) Pere ee eae ee 3,4,5

iii

Cases Page(s)

L.A. Gear Inc. v. Thom McAn Shoe Co.,998 F.2d

1117 (Fed. Cir.), cert. denied, US. _,

SR eee Pe CAPS oe ee ae 5

Lon Tai Shing Co, Ltd. v. Koch + Lowy, 19

USPQ2d 1081, 1105 (S.D.N.Y. 1990) ..... 2

Merchant & Evans v. Roosevelt Bldg. Products,

TGS FAG Gre CG NOPE we ee 2

Qualitex Co. v. Jacobson Products Co, Inc., U.S.,

EAe RUE ec Pee ee 5,6

Sears, Roebuck & Co., 376 U.S. 225 (1964) ..... 1,3, 4,5

Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169

ae a aaa ig 1

Stuart Hali Co., Inc v. Ampad Corp, 34 USPQ2d

Pe es Sais ke ce es te 5

Two Pesos, Inc. v. Taco Cabana, Inc., U.S. _,

ERS ey We I eo Sh ec cree 6 bs 5

Versa Products Co., Inc. v. Bifold Co., 50 F.3d

RPP CU le SOE sk ee cle Gas » Ge

Vornado Air Circulation Systems, Inc. v. Duracraft

Corp., 35 USPQ2d 1332 (10th Cir. 1995) ... .1,3,5,7

Wallace International Silversmiths, Inc.v.

Godinger Silver Art Co, Inc., 916 F.2d 76

(2nd Cir. 1990), cert denied, 499 U.S. 976

GRMN baa he x oe i A eo ek a ke 8 5

iV

Statutes

U.S. Constitution, Article 1, Section 8, Clause 8 .. . 2

1S Ue Gee eees ce cs Fd ee ae 3

35 U.S.A SIGE CUA os ed Ha wie oe ae Oe ans

S.791 (DeConcini), H.R. 1179 (Moorhead),

§ 100th Congress, 1st Sess. (1987) ....... 4

Hearings on S.791 Before the Subcommittee

on Patents, Copyrights and Trademarks of

the Senate Committee on the Judiciary,

FOUUn COMe., REL ee CAFE) se ec 4

Miscellaneous

Melissa R. Gleiberman, Note, “From Fast

Food to Fast Cars: Overbroad Protection

of Product Trade Dress Under Section 43(a)

of the Lanham Act,”" 45 Stan.L.Rev. 2037

(IDES) ok wake 6 oie eee ek a Pe 3,4

John B. Pegram “Trademark Protection of Product

and Container Configurations,”81

The Trademark Reporter,1 (1991) ....... 3,4

No. 95-127

In The

Supreme Court of the Hnited States

October Term, 1995

VAN KLASSENS, INC.

AND

ROBERT LUKINGBEAL,

Petitioners,

V.

IMAGINEERING, INC.,

Respondent.

Petition for Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

MOTION OF PASS & SEYMOUR, INC.

TO FILE AN AMICUS CURIAE BRIEF IN

SUPPORT OF PETITION FOR WRIT OF CERTIORARI

AND AMICUS CURIAE BRIEF

Ignoring or circumventing the precedents of this Court in

the trade dress field! has been characterized in a recent decision

of the Tenth Circuit as “a veritable jurisprudential art form in

recent years.” Vornado Air Circulation Systems, Inc. v. Durac-

raft Corp., 35 USPQ2d 1332, 1337 (10th Cir. 1995) and cases

cited therein. This revolt among a number of lower courts has

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

v. National Biscuit Co., 305 U.S. 111 (1938); Sears, Roebuck & Co., 376

U.S. 225 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234

(1964); Bonito Boats v. Thundercraft Boats, Inc., 489 U.S. 141 (1989).

2

taken place despite the clear dictates of the Constitution, the

patent statute and the precedents of this Court, all of which

require that unpatented creations in the sciences and useful arts

remain in the public domain, free for all to use. Art. I, Sec. 8,

Cl. 8; See 35 U.S.C. §§ 154, 173.2

The Founding Fathers strongly believed that progress of

science and the useful arts depeiads upon restricting the duration

of protection for patentable products to “limited times.” U.S.

Const., Art. I, Sec. 8, Cl. 8. This formula of limited protection

is necessary to prevent perpetual monopolies of inventions.

Graham v. John Deere Co. of Kansas City, supra; Merchant &

Evans v. Roosevelt Bldg. Products, 963 F.2d 628, 633 (3rd Cir.

1992). The patent system incorporates this idea and further

requires that patent protection be afforded only when a product

is both novel and non-obvious to a person skilled in the particu-

lar field of the alleged invention (often referred to as one “skilled

in the art”)>. If a product is not novel or is obvious (in light of

prior patents or material in the public domain) to one “skilled in

the art,” then the product may not be protected by patent and,

like the subject matter of expired or invalidated patents, is free

for all to use. 35 U.S.C. §101 et seq.

This Court has consistently ruled that common law pre-

cepts of unfair competition and state statutes that seek to protect

~ The right to imitate industrial products is essential to free and fair

competition. American Safety Table Co., Inc. v. Schreiber, 269 F.2d 255,

271-272 (2d Cir.), cert denied, 361 U.S. 915 (1959) (“[I]}mitation is the life

blood of competition. It is the unimpeded availability of substantially

equivalent units that permits the normal operation of supply and demand to

yield the fair price society must pay for a given commodity...Unless such

duplication is permitted, competition may be unduly curtailed with the

possible result of development of undesirable monopolic conditions.”);

Graham v. John Deere Co. of Kansas City, 282 U.S. 1,6 (1966) (Congress

9

“may not create patent monopolies of unlimited duration.”)

3 See Bonito Boats, 489 U.S. at 148 and 150; Lon Tai Shing Co, Lid. v.

Koch + Lowy, 19 USPQ2d 1081, 1105 (S.D.N.Y. 1990).

3

designs must give way to the goals of the patent clause of the

Constitution and the federal statutes which implement it*. In

fact, were the claims of Imagineering in the current action based

solely upon state law, those assertions should not have survived

a motion to dismiss since this Court has unequivocally held that

the subject matter of an invalidated design patent is incapable

of forming the basis for common law or other State claims for

unfair competition. See, Sears, supra, Compco, supra.

The lower courts have finessed this situation by placing

reliance on Section 43(a) of the Trademark Act of 1946 (As

Amended) (15 U.S.C. §1125(a)) for their recent grants of un-

limited protection to product configurations. See Brunswick

Corp v. Spinit Reel Co., 832 F.2d 513 (10th Cir. 1987); Kohler

Co. v. Moen, Inc., 12 F.3d 632 (7th Cir. 1993). However,

Section 43(a) was never intended to usurp the role of the patent

clause of the Constitution or its implementing legislation. The

original intent of Section 43(a) was to prevent the use of false

designations of geographic origin. Vornado, 35 USPQ2d at

1335. Solely through judicial interpretation, that statute has

become a federal common law of unfair competition. Jd. The

broad interpretation of a statute originally narrowly drawn to

address a particular limited wrong (false geographic indications

of origin) is hardly a compelling basis on which to overturn the

intent of the framers of the Constitution or the specific limita-

tions placed on protection of inventions by the patent law. 35

U.S.C. §101 et seqg.; See Vornado, supra; John B. Pegram

“Trademark Protection of Product and Container Configura-

tions,” 81 The Trademark Reporter, 1 (1991) (hereinafter “Pe-

gram”) and Melissa R. Gleiberman, Note, “From Fast Food to

Fast Cars: Overbroad Protection of Product Trade Dress Under

Section 43(a) of the Lanham Act,” 45 Stan.L.Rev. 2037 (1993)

(hereinafter “Gleiberman”).

+ Note 1, supra

4

The lower courts which have circumvented this Court’s

Sears/Compco line of precedents have largely ignored the result

which those decisions sought to prevent (i.e. a perpetual monop-

oly in product configurations otherwise in the public domain),

in favor of permitting trade dress protection based upon the

difference in the process for determining patent and trademark

infringement and different goals of the patent and trademark

systems’. However, after Bonito Boats, scholars began to note

that the lower courts were permitting precisely what this Court

has consistently sought to prevent — a restraint on fair compe-

tition in the form of trade dress protection for product configu-

rations that is potentially infinite in duration®.

Some lower courts have begun to appreciate the

perniciousness of allowing monopolies in product configura-

tions outside the patent system’. For example, the Court of

Appeals for the Federal Circuit has twice held that the use of a

See, Brunswick, supra; Kohler, supra.

° See Pegram, supra; Gleiberman, supra.

’ The tendency of lower courts to ignore or circumvent the past decisions

of the Supreme Court in this field may be based upon their desire to create a

United States’ counterpart for European-style industrial design law. How-

ever, it is clear that the United States does not currently have an industrial

design statute. Bonito Boats, 489 U.S. at 167-68; See S.791 (DeConcini),

H.R. 1179 (Moorhead), 100th Congress, Ist Sess. (1987) and Hearings on

S.791 Before the Subcomm. on Patents, Copyrights and Trademarks of the

Senate Comm. on the Judiciary, 100th Cong., Ist Sess. (1987). This court

has recognized that “[a] federal decision to forego regulation in a given area

may imply an authoritative federal determination that the area is best left

unregulated, and in that event would have as much pre-emptive force as a

decision to regulate.” (emphasis in original (quoting with approval Arkansas

Electric Cooperative Corp. v. Arkansas Public Service Comm'n, 461 U.S.

375, 384 (1983)). Therefore, the fact that Congress has decided to forege

industrial design protection and has limited patent terms to a fixed number

of years is substantial support for the position that this Court has historically

taken in refusing to use the vehicle of unfair competition law to grant

perpetual protection to product configurations.

5

defendant’s trademark on its goods may be sufficient to dispel

a likelihood of confusion in trade dress actions®. Conopco, Inc.

v. May Department Stores Company, 32 USPQ2d 1225 (Fed.

Cir. 1994), cert denied, _ U.S. __ (1995); L.A. Gear v. Thom

McAn Shoe Co., 988 F.2d 1117 (Fed. Cir.), cert. denied _ US.

_., 114 S. Ct. 291 (1993); see Wallace International Silver-

smiths, Inc. v. Godinger Silver Art Co, Inc., 916 F.2d 76, 80 (2nd

Cir. 1990), cert denied, 499 U.S. 976 (1991). The Tenth Circuit

has gone further by holding that some product configuration

trade dress actions must be barred based upon the unavoidable

conflict which such protection would created with the goals of

the patent system. Vornado, supra. The Third Circuit has

approached the issue somewhat differently, but with the same

result, by questioning whether the approach used in determining

trademark infringement is appropriate where product configu-

rations are at issue. Duraco Products, Inc. v. Joy Plastic Enter-

prises, Lid., 40 F.3d 1431 (3rd Cir. 1994); Versa Products Co.,

Inc. v. Bifold Co., 50 F.3d 189 (3rd Cir. 1995).

The recent return by some lower courts to the principles of

Sears, Compco and Bonito Boats has lead to conflicts among

the Circuits. (compare: Kohler, supra with Vornado, supra?:

Duraco and Versa with Stuart Hall Co., Inc v. Ampad Corp, 34

USPQ2d 1428 (8th Cir. 1995)).

With the advent of this Court’s decision in Qualitex Co. v.

Jacobson Products Co., Inc.,__U.S.__, 115 S.Ct. 1300 (1995),

it seemed that the matter of overbroad-protection for product

configurations should have been laid to rest. In Qualitex, the

unanimous Court used an example drawn from patent law to

illustrate the point that certain configurations are per se func-

® Likelihood of confusion is the standard for assessing trade dress

infringement. Two Pesos, Inc. v. Taco Cabana, Inc.,__U.S.__, 1125 S.Ct.

2753 (1992).

” The dissent in Kohler, 12 F.3d a 644-651 (Cudahy, J. dissenting)

follows much of the reasoning in Vornado, supra.

6

tional, no matter whether the basis asserted for protection is state

or federal unfair competition law:

It is the province of patent law, not trademark law, to

encourage invention by granting inventors a monop-

oly over new product designs or functions for a lim-

ited period of time, 35 U.S.C. §§ 154, 173, after which

competitors are free to use the innovation. If a prod-

uct’s functional features could be used as trademarks,

however, a monopoly over such features could ‘be

obtained without regard to whether they qualify as

patents and could be extended forever.... Functional-

ity doctrine therefore would require, to take an imagi-

nary example, that even if customers have come to

identify the special illumination-enhancing shape of

a new patented light bulb with a particular manufac-

turer, the manufacturer may not use that shape as a

trademark, for doing so, after the patent had expired,

would impede competition — not by protecting the

reputation of the original bulb maker, but by frustrat-

ing competitors’ legitimate efforts to produce an

equivalent illumination-enhancing bulb. See e.g.,

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

119-120 (1938) (trademark law cannot be used to

extend monopoly over the “pillow” shape of shredded

wheat biscuit after the patent for that shape had ex-

pired).

Qualitex, 115 S.Ct. at 1304.

However, within weeks of the Qualitex decision, one dis-

trict court had already determined that the quoted language was

ambiguous and did not prevent trade dress protection for a

product configuration that had been the subject of two expired

design patents and one expired utility patent. Hubbell Incorpo-

rated v. Pass & Seymour, Inc., 94 Civ. 7631, Opinion May 18,

1995, pp. 10-12 (attached as Appendix A) and Hubbell Incor-

7

porated v. Pass & Seymour, Inc., 94 Civ. 7631, Opinion, August

3, 1995 (attached as Appendix B). The Hubbell decision illus-

trates a simple and unfortunate fact: that despite a century of

decisions by this Court holding that monopolies in product

configurations cannot endure beyond the “limited terms” speci-

fied by the Constitution and the patent law, some lower courts

continue to ignore or circumvent those clear precedents. The

exceptions created by the lower courts make adoption of product

configurations hazardous for businesses that rely upon the plain

meaning of the patent law, which specifies that the subject

matter of expired or invalid patents is free for all to use.

Conclusion

The Constitution’s requirement of “limited terms” for pat-

ent protection was intended to inject some certainty into the

process of competition. The bedrock of that commercial cer-

tainty is the principal that patented subject matter which enters

the public domain by means of patent expiration or invalidation

is free for all to use. That basic principal has been seriously and,

from the standpoint of free and fair competition, dangerously

eroded by decisions such as that in Imagineering. The decisions

of the Tenth and Third Circuits in Vornado, supra, Duraco,

supra and Versa, supra stand in clear contrast to the holding in

Imagineering and demonstrate that a conflict exists among the

Circuits on this issue.

There is a compelling need for this Court to inject certainty

and consistency into the field of product configuration protec-

tion by clearly holding that the subject matter of expired or

invalidated patents cannot be resurrected through either the state

or federal law of unfair competition into a perpetual monopoly

on that which should rightfully be in the public domain. For this

reason, it is respectfully submitted that the petition for writ of

certiorari submitted on behalf of Van Klassens Inc. and Robert

Luckingbeal should be granted.

Respectfully Submitted:

Paul F. Kilmer*

Thomas W. Brooke

GADSBY & HANNAH

1747 Pennsylvania Avenue,

N.W.

Suite 800

Washington, D.C. 20006

202/429-9600

* Counsel of Record

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A-1

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

HUBBELL INCORPORATED,

Plaintiff,

- against -

PASS & SEYMOUR, INC. and

LEGRAND, S.A.,

Defendants

OPINION

94 Civ. 7631 (RWS)

APPEARANCES

DARBY & DARBY

Attorney for Plaintiff

805 Third Avenue

New York, NY 10022

By: MARTIN E. GOLDSTEIN, ESQ.

IRA JAY LEVY, ESQ.

Of Counsel

ZUCKERMAN, SPAEDER, GOLDSTEIN,

TAYLOR & KOLKER

Attorney for Defendants

1114 Avenue of the Americas

New York, NY 10036

By: LISA A. CAHILL, ESQ.

Of Counsel

GADSBY & HANNAH

Of Counsel for Defendants

1747 Pennsylvania Avenue, N.W., Suite 800

Washington, DC 20006

By: PAUL F. KILMER, ESO.

THOMAS W. BROOKE, ESO.

ROBERT F. GARCIA, JR., ESO.

Sweet, D.J.

Defendants Pass & Seymour (“Pass”) and Legrand S.A.

(“Legrand”) have moved to dismiss the federal and common law

trade dress claims of Plaintiff Hubbell Incorporated (“Hubbell”)

pursuant to Fed. R. Civ. Pro. 12(b)(6). In addition, Legrand has

moved to dismiss the action against it for lack of subject matter

jurisdiction, lack of personal jurisdiction and lack of venue. In

the alternative, Legrand moves for a change of venue to the

Northern District to New York. Pass moves to dismiss the

action for lack of venue pursuant to 12(b)(3) or, in the alterna-

tive, to transfer the claims to the Northern District of New York.

Hubbell has moved to dismiss Count II of Pass’ counterclaim

(International Interference with Business Relationships) pursu-

ant to Rule 12(b)(6). For the reasons set further below, all

motions are denied.

The Parties

Plaintiff Hubbell is a Connecticut corporation that manu-

facturers electrical products. Its principal place of business is at

584 Derby Milford Road, Orange, Connecticut.

Defendant Pass is a New York Corporation doing business

in the State of New York and within this judicial district, having

its principal place of business at P.O. Box 4822, Syracuse, New

York.

Defendant Legrand is a corporation organized and existing

under the laws of the country of France.

Prior Proceedings

A complaint was filed in this action on October 20, 1994

(the “original complaint”) and was later amended on December

14,1994. The original complaint included two defendants, New

York City Distributors of Pass and Legrand as defendants.

According to the Plaintiff, after the suit was filed, and before

Hubbell either served or notified the Distributors of the exist-

ence to the lawsuit, Hubbell learned that the Distributors, while

A-3

sellers of Pass’ and Legrand’s product line, did not yet have

available the products at issue. Hubbell filed an amended

complaint (the “complaint”) which does not name the Distribu-

tors.

The complaint alleged three claims: 1) violation of § 32 of

the Trademark Act of 1946, 15 U.S.C. § 1114; 2) violation of §

43(a) of the Trademark Act of 1946 and 3) violation of unfair

competition under the common law of the State of New York.

Pass filed an answer on December 23, 1994, which in-

cluded affirmative defenses and three counter claims. The

counterclaims sought: 1) declaratory relief as the sales of con-

nectors and plugs “out of the box”; 2) damages for intentional

interference with business relationships; 3) cancellation of the

Federal Trademark Registration for the designation “5S965VY.”

The Defendants’ motions were filed in December 1994.

Hubbell’s motion was filed on January 13, 1995. All motions

were argued on February 8, 1995. Defendants submitted a

Supplemental Memorandum on May 15, 1995 and the motions

were considered fully submitted at that time.

The Facts

For the last seventeen years Hubbell has sold various

connectors and plugs in, what it terms, its “famous and highly

distinctive ‘Valise’ Trade Dress, sales of these connectors and

plugs have exceeded 33 million units and $50 million. The

subject of this litigation is a particular connector and plug, which

has been assigned the number 5965VY. This number appears

on the connector. Hubbell claims that this number is a federally

registered trademark of Hubbell.

The plug and connector had a design patent that has ex-

pired. There are no allegations that Defendants began to market

their similar product prior to the expiration of the patent.

According to the complaint, the Defendants recently

changed their line of plugs and connectors such that they are

A-4

“virtually indistinguishable” from the “famous” Hubbell Valise

Trade dress. According to Hubbell, the Defendants further

aggravated the situation by misappropriating Hubbell’s feder-

ally registered trademark 5965VY, and applying it directly to

the virtually indistinguishable product.

Discussion

Motions to Dismiss the Trade Dress Claims Are Denied

On a Rule 12(b)(6) motion to dismiss, the factual allega-

tions of the complaint are presumed to be true and all factual

inferences must be drawn in the plaintiffs’ favor and against the

defendants. See Scheuer v. Rhodes, 416 U.S. 232, 236, 94 S. Ct.

1683, 1686, 40 L. Ed.2d 90 (1974); Cosmas v. Hassett, 886 F.2d

8,11 (2d Cir. 1989}; Dwyer v. Regan, 777 F.2d 825, 828-29 (2d

Cir. 1985). Accordingly, the factual allegations set forth and

considered herein are taken from the Plaintiff's Complaint and

do not constitute findings of fact by the Court. They are pre-

sumed to be true only for the purpose of deciding the present

motion to dismiss.

Rule 12(b)(6) imposes a substantial burden of proof upon

the moving party. A court may not dismiss a complaint unless

the movant demonstrates “beyond doubt that the plaintiff can

prove no set of facts in support of his claim which would entitle

him to relief.” H.J., Inc. v. Northwestern Bell Tel. Co., 492 U.S.

229, 249-50, 109 S. Ct. 2893, 2905-06, 106 L. Ed.2d 195 (1989);

Hishon v. King & Spalding, 467 U.S. 69, 73, 104 S. Ct. 2229,

2232-33, 81 L.Ed.2d 59 (1984); Conley v. Gibson, 355 U.S. 41,

45-46, 78 S. Ct. 99, 101-02, 2 L. Ed.2d 80 (1957).

Section 43(a)(1) of the Lanham Act, 15 U.S.C. §

1125(a)(1) protects trade dress from infringement when:

[a]ny person who, on or in connection with any goods

or services, or any container for goods, uses in com-

merce any word, term, name, symbol, and device, or

any combination thereof, or any false designation of

~

A-5

origin, false or misleading description of fact, or false

or misleading representation of fact, which

(1)is likely to cause confusion, or to cause mis-

take, or to deceive as to the affiliation, connec-

tion, or association of such person with another

person, or as to the origin, sponsorship, or ap-

proval of his or her goods, services, or commer-

cial activities by another person....

15 U.S.C. § 1125(a).

The “trade dress” of a product consists of “its total image”,

composed of “features such as size, shape, color or color com-

binations, texture, [or] graphics.” Paddington Corp. v. Attiki

Importers & Distribs., 996 F.2d 577, 582 (2d Cir. 1993), as

quoted in Merriam-Webster, Inc. v. Random House, Inc., 35

F.3d 65, 70 (2d Cir. 1994). Such trade dress protection has been

extended to product design and may include product configura-

tions. Le Sportsac, Inc. v. K Mart Corp. 754 F.2d 71 (2d Cir.

1985.

As the Second Circuit has explained:

To Prevail on a trade dress claim, the plaintiff must

demonstrate that the product’s appearance has ac-

quired “secondary meaning” — the consuming public

immediately identifies the product with its maker —

and that purchasers are likely to confuse the imitating

goods with the originals. Even if the plaintiff estab-

lishes these elements, the defendant may still avoid

liability by demonstrating that the imitated features

are “functional” — essential to the basic purposes the

article is meant to serve. Two Pesos, Inc. v. Taco

Cabana, Inc., 112 S.Ct. 2753, 2760 (1992); Coach

Leatherware Co. v. Ann Taylor, Inc., 933 F.2d 162,

168 (2d Cir. 1991) (citations omitted).

A-6

Hubbell has alleged sufficient facts to make out the ele-

ments of a trade dress infringement claim. In count II of the

Complaint Hubbell States:

By its acts alleged herein, defendant has falsely des-

ignated the origin or sponsorship of its electrical

connectors and plugs and has caused and will cause

them to be advertised and sold in commerce, in vio-

lation of § 43(a) of the Trademark Act of 1946, 15

U.S.C. § 1125(a)

Complaint at § 23.

This Count is supported by the allegations of paragraphs

6-11 and 15-19 of the Amended Complaint (which must be

taken as true for the purposes of this motion), which support (1)

the inherently distinctive nature of the Valise Trade Dress; (2)

sales, advertising, extent of use, and exclusivity sufficient to

establish, as an alternative, the existence of secondary meaning

in the Valise Trade Dress; and (3) intentional actions by Pass

and Legrand in violation of these protectable rights likely to

cause confusion among consumers. Pass has not challenged any

of the specific allegations of the Complaint.

The Core issue raised by Defendants in seeking a motion

to dismiss this complaint is that Hubbell is unlawfully seeking

to extend expired patent monopolies for its plugs and connectors

through the device of the Lanham Act.

The different purposes of the two sets of laws supports the

position that trade dress protection is not as a matter of law

unavailable to products for which design patents have expired.

The purpose of the federal design patent law is “to encour-

age the invention of ornamental designs”. Jn re Honeywell Inc.,

497 F.2d 1344, 1348, cert. denied, 419 U.S. 1080 (1974; see

Lon Tai Shing Co. v. Koch and Lowy, 19 USPQ.2d 1981

(S.D.N.Y. 1990).

A-7

More specifically, the Court in Lon Tai Shing explained

that:

More broadly viewed, the patent laws have three

related purposes: “First, patent law seeks to foster and

reward invention; second, it promotes disclosure of

inventions, to stimulate further innovation and to

permit the public to practice the invention once the

patent expires; third, the stringent requirements for

patent protection seek to assure that ideas in the

public.” Aronson v. Quick Point Pencil Co., 440 U.S.

257, 262 (1979).

This stands in clear contrast to the function of the

trademark laws, particularly section 43(a) of the Lan-

ham Act, which “seek[s] to prevent the public from

encountering confusion, mistake, and deception in the

purchase of goods and services and to protect the

integrity of the trademark owner’s product identity.”

In re Honeywell, Inc. 474 F.2d at 1348.

Lon Tai Shing, 19 USPQ.2d at 1106.

These two bodies of law were designed to serve quite

different purposes and may operate separately and without

unavoidable conflict. As noted by the Long Tai Shing Court 19

U.S.P.Q.2d at 1107, this point was underscored in the Supreme

Court cases that represent the highwater mark of patent law

supremacy — the so called Sears-Compco cases. See Sears,

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

Corp. v. Day-Bright Lighting, Inc., 376 U.S. 225 (1964). In

those decisions the Supreme Court held that the patent laws

broadly preempt state trademark and unfair competition law

insofar as it applies to industrial designs. Notwithstanding the

breadth of the “Sears-Compco” cases ... the Supreme Court

recently noted that:

A-8

our decision in Sears clearly indicates that the States

may place limited regulations on the circumstances in

which such designs are used in order to prevent con-

sumer confusion as to source. Thus while “Sears”

speaks in absolutist terms, its conclusion that the

States may place some conditions on the use of trade

dress indicates an implicit recognition that all state

regulations of potentially patentable but unpatented

subject matter is not ipso facto preempted by the

federal patent laws.

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

154 (1989).

The Supreme Court cases cited by both parties and dis-

cussed above involved questions of federal preemption. The

existence of the Lanham Act, a separate and equally viable body

of federal law supports without reservation the notion that the

two bodies of law can, an in fact that Congress intended them

to, co-exist.

The Seventh Circuit addressed the issue presented in this

case and concluded that “[cJourts have consistently held that a

product’s different qualities can be protected simultaneously or

successively, by more than one of the statutory means for

protection of intellectual property.” Kohler Co. v. Moen, Inc.,

12 F.3d 632, 638 (7th Cir. 1993). The Court continued:

[F]ederal trademark protection does not transform the

durational limited monopoly of a design patent into a

perpetual right. As we have noted, federal trademark

protection for a product’s configuration does not cre-

ate a monopoly in the use of the product’s shape.

[Plaintiff] is not “free from effective competition in

the market...” [Plaintiff] simply has the right to pre-

clude others from copying its trademarked product for

the purpose of confusing the public as to its source.

A-9

29 U.S.P.Q. 2d at 1247-48, n.10 (emphasis in original); see W.T.

Rogers Co. v. Keene, 778 F.2d 334 (7th Cir. 1985), recognizing

the absolute distinction between the two types of protection

(trade dress and design patent), Judge Posner reasoned:

provided that a defense of functionality is recognized,

there is no conflict with federal patent law, save

possibly with 35 U.S.C. § 171, which allows a 14-year

patent to be granted for a nonfunctional ornamental

design — a design patent. But the courts that have

considered the issue have concluded, rightly in our

view, that this section does not prevent the enforce-

ment of a common law trademark in a design feature.

See discussion in 1 Chisum, Patents 185 1.04[6]

(1985). The trademark owner has an indefinite term

of protection, it is true, but in an infringement suit

must also prove secondary meaning and likelihood of

confusion, which the owner of a design patent need

not do; there is therefore no necessary inconsistency

between the two modes of protection.

Id. at 337.

The parties have not identified any case in this Circuit on

this issue and the conclusion reached by the Seventh Circuit and

by Magistrate Judge Michael H. Dolinger in this District in Lon

Tai Shing is adopted.

In a different context, involving the ability to obtain trade-

mark protection for a color, the Supreme Court recently noted

that:

It is the province of patent law, not trademark law, to

encourage invention by granting inventors a monop-

oly over new product designs or functions for a lim-

ited period of time, 35 U.S.C. §§ 154, 173, after which

competitors are free to use the innovation. If a prod-

ucts functional features could be used as trademarks,

A- 10

however, a monopoly over such features could be

obtained without regard to whether they qualify as

patents and could be extended forever... Functionality

doctrine therefore would require, to take an imaginary

example, that even if customers have come to identify

the special i shape of a new patented light bulb with

a particular manufacturer, the manufacturer may not

use that shape as a trademark, for doing so, after the

patent had expired, would impede competition — not

by protecting the reputation of the original bulk

maker, but by frustrating competitors’ legitimate ef-

forts to produce an equivalent i bulb. See, e.g., Kellogg

Co., ... 305 U.S., at 119-120...(trademark law cannot

be used to extend monopoly over the “pillow” shape

of shredded wheat biscuit after the patent for that

shape had expired.

Qualitex Co. v. Jacobson Products Co., Inc., 115 S.Ct. 1300,

1304 (1995).

Defendants urge that this dicta in the Qualitex case should

be considered by this Court. This may say no more than that

patents related to function may not be protected past the duration

of the patent.!

In any event, this language from the Supreme Court can be

read to be consistent with the proposition that while Hubbell

cannot assert trade dress claims to protect in toto the design

which was protected by the earlier design patent, the expiration

of the design patent does not preclude a party from seeking to

protect its reputation or avoid consumer confusion over products

if it can demonstrate the required elements of a Lanham Act, or

other non-conflicting unfair competition, claim.

1 The Supreme Court cited the Shredded Wheat case for this proposition.

In that case however, the expired patent had been for the process that

manufactured the “pillow shaped” wheat.

A-ll

Again, the fact that the federal patent and trademark laws

have co-existed for decades, provides support for the proposi-

tion that the protections offered by them can exist together now.

See supra.

These claims will not now be dismissed as a matter of law.

A Sufficient Showing of Jurisdiction Has Been Made

In order to demonstrate personal jurisdiction sufficiently to

defeat a motion to dismiss, a plaintiff need only make a prima

facie showing that jurisdiction exists. See Hoffritz for Cutlery,

Inc. v. Amajac, Ltd., 763 F.2d 55, 57 (2d Cir. 1985). Plaintiff’s

complaint and affidavits are to be construed, and any doubts are

to be resolved in the light most favorable to the Plaintiff.

Editorial Musical Latino Americana, S.A. v. Mar International

Records, Inc., 829 F. Supp. 62, 64 (S.D.N.Y. 1993); see also

Scheuer v. Rhodes,, 416 U.S. 232, 236, 94 S.Ct. 1683, 1686

(1974) (on motion to dismiss pleadings are considered in light

most favorable to pleader).

The acts in the complaint attributed to “P&S” are, accord-

ing to Plaintiff, attributed to both Pass and Legrand. This is not

a case built on notions of piercing the corporate veil. The

allegation is that Legrand has independently engaged in the

same alleged wrongful behaviors. Legrand’s motion to dismiss

for lack of subject matter jurisdiction is denied.

To determine personal jurisdiction over a non-domiciliary

in a federal question case, this Court applies the long-arm statute

of the forum state. See Business Trends Analysts v. Freedonia

Group, Inc., 650 F.Supp. 1452, 1455 (S.D.N.Y. 1987); United

States v. First Nat’! City Bank, 379 U.S. 378, 381 (1965).

New York’s long-arm statute provides:

As to a cause of action arising from any of the acts

enumerated in this section, a court may exercise per-

sonal jurisdiction over any non-domiciliary, or his

executor or administrator, who in person or through

A-12

an agent; 1. transacts any business within the state or

contracts anywhere to supply goods or services in the

state; or 2. commits a tortious act within the state....

N.Y.Civ.Prac.L. & R. § 302(a) (McKinney 1993) (“CPLR §

302(a)’”).

Offering one copy of an infringing work for sale in New

York, even if there is no actual sale, constitutes commission of

a tortious act within the state sufficient to imbue this Court with

personal jurisdiction over the infringers. “See Business

Trends,” 650 F. Supp. at 1455-56 (shipment of one copy into

New York; actual sale not necessary); Metropa Co. v. Choi 458

F. Supp. 1052, 1054, (S.D.N. Y.1978) (trademark infringement;

only New York contact of California defendant was mail order

shipment of two wigs); Honda Assocs., Inc. v. Nozawa Trading,

Inc., 374 F. Supp. 886, 888-89 (S.D.N.Y.1974)(Trademark

infringement, actual sale not necessary; only New York contact

of California defendant was mail order shipment of 3 karate

uniforms valued at $37). This Court has jurisdiction even if the

products for sale are offered through independent brokers in

New York. See CPLR 302(a) (“in person or through an agent”);

Heritage House Frame & Moulding Co. v. Boyce Highlands

Furniture Co., 88 F.R.D. 172, 173 (E.D.N.Y. 1980).

Thus allegations that Legrand “has begun or is about to

begin selling in ... this Judicial District the ... plugs and connec-

tors ... [and] although [Legrand] has molded the name Pass &

Seymour/Legrand into its infringing product, the name is indis-

tinguishable except on extremely close examination” is suffi-

cient to assert prima facie jurisdiction.

“While the plaintiff ultimately bears the burden of estab-

lishing the existence of jurisdiction over defendants by a pre-

ponderance of the evidence, the burden should not be imposed

on the plaintiff at the pleading stage...”Soviet Pan Am Travel

Effort v. Travel Comm. Inc., 756 F. Supp. 126, 130 (S.D.N.Y.

1991). In the absence of an evidentiary hearing or further factual

A- 13

development through discovery, the pleadings and affidavits

must be construed in the light most favorable to the plaintiff. /d.

At this stage of the proceedings, the motion is denied.

Motion to Dismiss for Improper Venue is Denied ___

Hubbell alleged venue in this case under 28 U.S.C. §

1391(c) which reads:

For purposes of venue under this chapter, a defendant

that is a corporation shall be deemed to reside in any

judicial district in which it is subject to personal

jurisdiction at the time the action is commenced. Ina

State which has more than one judicial district and in

which a defendant that is a corporation is subject to

personal jurisdiction at the time an action is com-

menced, such corporation shall be deemed to reside

in any district in the State within which it contacts

would be sufficient to subject it to personal jurisdic-

tion if that district were a separate State, and, if there

is no such district, the corporation shall be deemed to

reside in the district within which it has the most

significant contacts.

As the earlier discussion on personal jurisdiction implied.

Pass is subject to personal jurisdiction in this District and thus

venue as to the claims asserted against Pass is properly asserted

in this District at this time. The same holds true for Letrand.

Considering the pleadings before the Court, and given that

neither party has plead the percentage of total sales in the

District, all affidavits and pleadings are construed in the light

most favorable to the Plaintiff and the motion to dismiss for lack

of venue is denied on this record. See Hoffritz,763 F.2d at 57;

Time Products v. Tira Classic Handbags, Inc., 1994 U.S.Dist.

LEXIS 9483, *22 (S.D.N.Y. 1994).

In addition, venue over the claims against Legrand would

be proper under § 1391(d).

A- 14

Motion for Transfer is Denied at this Time

28 U.S.C. § 1404(a) provides:

For the convenience of parties and witnesses, in the

interest of justice, a district court may transfer any

civil action to any other district or division where it

might have been brought.

Factors which determine whether a case should be trans-

ferred under § 1404 are: (1) the place where the operative facts

occurred; (2) the convenience to parties; (3) the convenience of

witnesses; (4) the relative ease of access to sources of proof; (5)

the availability of process to compel attendance of unwilling

witnesses; (6) the plaintiff’s choice of forum; (7) the forum’s

familiarity with the governing law; and (8) trial efficiency and

the interests of justice. Viacom Intern. v. Melvin Simon Prods.,

774 F. Supp. 858, 867-68 (S.D.N.Y. 1991); Don King Prods.,

Inc. v. Douglas, 735 F. Supp. 522, 533 (S.D.N.Y. 1990).

Plaintiff’s choice of forum should not be disturbed unless

Defendants make a clear and convincing showing that the

balance of convenience favors defendants choice. See Time

Products, at *33. A transfer should not be granted “absent a

clear cut and convincing showing by defendant that the balance

of convenience weighs strongly in favor of the transferee

court....” Star Lines, Ltd. v. Puerto Rico Maritime Shipping

Auth., 442 F. Supp 1201, 1207 (S.D.N.Y. 1978).

The core determination under § 1404(a) is the center of

gravity of the litigation, a key test of which is the convenience

of witnesses. Saminsky v. Occidental Petroleum Corp. 373 F.

Supp. 257 (S.D.N.Y. 1974); Essex Crane Rental Corp. v. Vic

Kirsch Const. Co., 486 F. Supp. 529 (S.D.N.Y.1980); 15

Wright, Miller & Cooper, Federal practice & Procedure: Juris-

diction 2d § 3851 (1986. Courts routinely transfer cases when

the principal events occurred, and the principal witnesses are

located, in another district. Viacom Intern, 774 F.Supp. at 868;

A-15

Computer Horizons Corp. v. Knauer 483 F. Supp. 1272

(S.D.N.Y. 1980).

While Pass has indicated that its corporate records and

witnesses are in Syracuse,without further evidence of the proof

required and the witnesses to be called, the balance of the

evidence available at this time does not require the Court to

disrupt the plaintiff’s choice of forum. The motion to transfer

is denied.

Plaintiff’s Motion to Dismiss Pass’ Counter Claim for Tortious

Interference with Prospective Economic Advantage is Denied

To state a claim under this theory, the complaint must

allege that defendant interfered with business relations existing

between plaintiff and a third party, “either with the sole purpose

of harming plaintiff or ’by means that are dishonest, unfair or in

any other way improper.’” Martin Ice Cream Co. v. Chipwich,

Inc., (S.D.N.Y.1983) 554 F. Supp. 933, 945 (emphasis in origi-

nal)(quoting Robbins v. Ogden (S.D.N.Y. 1980) 490 F.Supp.

801, 811). Where such interference is intended “‘at least in part

to advance the competing interest of the interferer’ the interfer-

ence will be excused unless the means employed include ‘physi-

cal violence, fraud or misrepresentation, civil suits and criminal

prosecutions and some degrees of economic pressure; they do

not, however, include persuasion alone.’”’Strapex Corp. v.

Metaverpa N.V. (S.D.N.Y. 1985) 607 F.Supp. 1047, 1050 (quot-

ing Guard-Life Corp. v. S. Parker Hardware Mfg. Corp. (1980)

50 N.Y.2d 183, 428 N. Y.S.2d 628, 632, 406 N.E.2d 445); Volvo

N. Am. v. Men’s Int’ Professional Tennis Council 857 F.2d 55,

74 (2d Cir. 1988).

According to the counterclaim, Pass has alleged that Hub-

bell “either investigated the allegations made in its initial Com-

plaint and knew that the New York City distributors had not

committed any of the alleged acts of infringement or unfair

competition set forth in the [original] Complaint ... or, alterna-

tively, ... failed to properly investigate adequately the allega-

A- 16

tions... Despite the fact that Hubbell knew or should have known

that the New York City Distributors should have known that the

New York City Distributors have not purchased the plugs ....

Hubbell filed its action naming the ... Distributors as defendants

... Hubbell’s claims ... have injured the contractual and business

relationships between the ... Distributors in that ... [they] have

been improperly and falsely named as defendants.

The elements of the tort have been plead such that the

motion to dismiss is denied.

Conclusion

For the reasons discussed above all motions are denied.

It is so ordered.

New York, N.Y. (s)Robert W. Sweet

May 18, 1995 Robert W. Sweet

U.S.D.J.

B -1

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

HUBBELL INCORPORATED,

Plaintiff

- against -

PASS & SEYMOUR, INC. and

LEGRAND, S.A.,

Defendants.

APPEARANCES

DARBY & DARBY

Attorney for Plaintiff

805 Third Avenue

New York, NY 10022

By: MARTIN E. GOLDSTEIN, ESQ.

IRA JAY LEVY, ESO.

Of Counsel

ZUCKERMAN, SPAEDER, GOLDSTEIN,

TAYLOR & KOLKER

Attorney for Defendants

1114 Avenue of the Americas

New York, NY 10036

By: LISA A. CAHILL, ESQ.

Of Counsel

GADSBY & HANNAH

Of Counsel for Defendants

1747 Pennsylvania Avenue, N.W., Suite 800

Washington, DC 20006

By: PAUL F. KILMER, ESQ.

THOMAS W. BROOKE, ESO.

ROBERT F. GARCIA, JR. ESQ.

B -2

In an opinion dated May 18, 1995 (the “Opinion”), this

Court denied defendants Pass & Seymour, Inc. (“Pass”), and

Legrand, S.A. (“Legrand”) (Pass and Legrand are, collectively,

the (“Defendants”) motions to dismiss plaintiff Hubbell Incor-

porated’s (“Hubbell”) product configuration trade dress claims

against Defendants. Defendants now move this Court to certify

to the United States Circuit Court of Appeals for the Second

Circuit, pursuant to 28 U.S.C. § 1292(b), the following question:

whether the subject matter of an expired design and

utility patent may form the basis for a later product

configuration trade dress action.

For the reasons set forth below, Defendants’ motion will

be denied.

The Parties

Hubbell is a Connecticut corporation that manufactures

electrical products. Its principal place of business is in Orange,

Connecticut.

Pass is a New York corporation doing business in the State

of New York and within this judicial district, having its princi-

pal place of business in Syracuse, New York.

Legrand is a corporation organized and existing under the

laws of France.

Prior Proceedings

The prior proceedings and facts of this action are set forth

in the Opinion, familiarity with which is presumed.

Defendants moved for amendment of the Opinion to allow

for immediate certification of the product configuration trade

dress issues of law in this action to the United States Circuit

Court of Appeals for the Second Circuit. Oral argument on

Defendants’ motion was heard on June 21, 1995. Additional

papers were submitted by the parties, the last of which was

B -3

received on July 21, 1995, and the motion was deemed fully

submitted at that time.

Discussion

28 U.S.C. § 1292(b) provides that a district court may

certify an order for appeal if it concludes (1) that the order

involves a controlling question of law (2) as to which there are

substantial grounds for difference of opinion and (3) that an

immediate appeal from the order may materially advance the

ultimate termination of the litigation 28 U.S.C. § 1292(b): “see

also Klinghoffer v. S.N.C. Achille Lauro Ed Altri-Gestione

Motonave Achille Lauro In Amministrazions Straordinaria 921

F.2d 21, 23 (2d Cir. 1990). The Second Circuit has repeatedly

“urged the district courts to exercise great care in making a §

1292(b) certification.” Westwood Pharmaceuticals, Inc. v. Na-

tional Fuel Gas Dist. Corp., 964 F.2d 85, 89 (2d Cir. 1992).

Certification is limited to extraordinary cases where appellate

review might avoid protracted and expensive litigation. It is not

intended as a vehicle to provide early review of difficuit rulings

in hard cases. Sadowski v. Technical Career Inst., Inc., 1955

U.S. Dist LEXIS 3184, *7; Abortion Rights Mobilization, Inc.

v. Regan, 522 F.Supp. 364, 366 (S.D.N.Y. 1982).

This standard is not met here. As an initial matter, this

Court notes that Hubbell maintains that certain unpatented

features of its product’s configuration, e.g., its yellow color, are

part of its distinctive trade dress. Therefore, even if this Court

were to certify to the Second Circuit the question whether the

subject matter of an expired design patent can receive trade dress

protection, the Second Circuit’s answer to that question would

neither “control” the outcome nor “materially advance the ulti-

mate termination” of this litigation. Even assuming, however,

that the Second Circuit’s answer would control the outcome and

advance the termination of this litigation, there are not “substan-

tial grounds for difference of opinion” as to this Court’s resolu-

tion of the product configuration trade dress issue.

B -4

The parties agree that the precise question at issue in this

case has not yet been considered by either the Supreme Court

or the Second Circuit. Simply because a question of law has not

been authoritatively addressed, however, does not make the

question grounds for a substantial difference of opinion.

Chamarac Properties, Inc. v. Pike, 1994 WL 410902, *2

(S.D.N.Y. 1994); American Tel. & Tel. Co. v. North American

Industries, Inc., 783 F.Supp. 810, 814 (S.D.N.Y. 1992). Nor,

for that matter, does the fact that the parties themselves disagree

as to the interpretation of persuasive authority constitute a

“difference of opinion” sufficient to warrant certification. Thus,

the fact that the parties offer differing interpretations of dicta in

the Second Circuit’s recent decision in Milstein, Inc. v. Greger,

Lawlor, Roth, Inc., 1995 WL 380952 (S.D.N.Y. June 19, 1995)

does not compel certification of the question presented in the

instant case. Milstein was decided after the Opinion at issue in

this motion.

In “Milstein”, the Second Circuit noted that:

although trade dress law may supplement copyright

and patent law by protecting unpatentable product

configurations and novel marketing tech-

niques,...overextension of trade dress protection can

undermine restrictions in copyright and patent law

that are designed to avoid monopolization of products

and ideas. Consequently, courts should proceed with

caution in assessing claims to unregistered trade dress

protection so as not to undermine the objectives to

these other laws.

Hubbell interprets this language to mean that the existence, or

past existence, or patent protection does not preclude trade dress

protection of the same subject matter. Defendants, on the other

hand, interpret this language to mean that trade dress law which

extends protection to patentable subject matter is a per se

“overextension of trade dress protection” which serves to “un-

B -5

dermine restrictions in copyright and patent law that are de-

signed to avoid monopolization of products and ideas.” Both of

these interpretations exceed the limits of what the quoted lan-

guage will bear.

The most that can be inferred from the language quoted

above is that the Second Circuit has recognized that the patent

and trade dress laws serve different objectives. This observa-

tion, however, is neither novel nor controversial. As this Court

observed in the Opinion, the patent laws seek to foster and

reward innovation, promote disclosure of inventions to the

public after the patent has expired, and ensure that ideas in the

public domain remain there for the free use of the public.

Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262 (1979).

The trademark laws, in contrast, seek to protect the public from

experiencing confusion, mistake and deception in the purchase

of goods and services and to protect the integrity of the trade-

mark owner’s product identity. See Park ’N Fly, Inc. v. Dollar

Park and Fly 469 U.S. 189, 198 (1985); Lon Tai Shing Co. v.

Koch & Lowwy, 19 USPQ.2d 1981, 1107 (S.D.N.Y. 1990).

The part of the quoted language that admonishes district

courts to “proceed with caution in addressing claims to unreg-

istered trade dress protection” can be interpreted only as advo-

cating a careful case by case approach in order to ensure that the

objectives of the patent law are not undermined by extending

protection to a product’s trade dress See also Stormy Clime Lid.

v. ProGroup, Inc., 809 F.2d 971, 978 (2d Cir. 1987) (“To avoid

undermining the purpose of the patent laws to place useful

innovations in the public domain after expiration of a limited

monopoly, courts must be sensitive to whether a grant of trade

dress protection would close all avenues to a market that is

otherwise open in the absence of a valid patent.”)

The Court in Milstein” was concerned that a manufacturer

of greeting cards would gain a monopoly on a distinctive type

of greeting card by claiming that the distinctive features of that

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type are part of its protected trade dress. Because the plaintiff

in “Milstein” had never owned a patent on the process for

creating the type of greeting card, the Court did not have reason

to consider whether prior protection under a design patent

precludes protection of the same design features under the trade

dress laws. Nothing in the language quoted above, however, or

any other language in “Milstein,” indicates that a court may

not extend trade dress protection to a previously patented design

feature if it determines, after cautious deliberation, that extend-

ing such protection will serve the objectives of the trade dress

laws without doing violence to the objectives of the patent laws.

Defendants also assert that, in light of its holding in “Mil-

stein,” the Second Circuit, if presented with similar case would

endorse the Tenth Circuit’s recent decision in Vornado Air

Circulation Sys. v. Duracraft Corp., 1995, U.S. App. LEXIS

16255 (10th Cir. 1995). Even assuming that hypothesis to be

true, however, the Tenth Circuit’s holding Vornado does not

support the grant of a motion to dismiss on the facts of the instant

case.

As an initial matter, it should be noted that the question

presented in Vornado was whether the subject matter of an

expired utility patent could receive trade dress protection. The

Court did not take a position, therefore, on whether its ruling

applies equally to design patents. Even if this Court were to

adopt the holding of Vornamdo with respect to design patents,

however, dismissal of Hubbell’s complaint on a Rule 12(b)(6)

motion would be inappropriate. In Vornado, the Court held that:

although a product configuration must be nonfunc-

tional in order to be protected as trade dress under

section 43(a), not every nonfunctional configuration

is eligible for that protection. Where a product con-

figuration is a significant inventive component of an

invention covered by a utility patent, so that without

it the invention cannot fairly be said to be the same

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invention, patent policy dictates that it enter into the

public domain when the utility patents...expire. To

ensure that result, it cannot receive trade dress protec-

tion under section 43(a).

1995 U.S. App. LEXIS 16255 at *3

Implicit in the above quoted language is the idea that,

although “not every nonfunctional configuration is eligible for

[trade dress] protection,” some nonfunctional configurations

are so eligible. Defendants have made no definitive showing

that the product configuration for which Hubbell seeks trade

dress protection is a “significant inventive component” of the

invention covered by Hubbell’s patent, “so that without it the

invention cannot fairly be said to be the same invention.” The

Tenth Circuit’s implicit suggestion that trade dress protection is

not precluded if a product’s configuration was not a “significant

inventive component” of the patented invention calls for the

same cautious, case by case approach urged by the Second

Circuit in Milstein Inc. v. Greger, Lawlor, Roth, Inc., 1995 WL

380952 (S.D.N.Y. 1995). Indeed the Vornado Court noted that:

In future cases, the contribution of a particular configura-

tion to the inventiveness of a patented product may not always

be clear, and we do not wish to rule out the possibility that a

court may appropriately conduct a factual inquiry to supplement

its reading of the patent’s claims and descriptions.

1995 U.S. App. LEXIS 16255 at *39.

Whether or not it would endorse the holding of Vornado,

the Second Circuit’s recommendation in Milstein of a careful

balancing of the separate purposes of patent and trademark law

requires a fully disclosed factual record, which was not available

to the Court at the time the Opinion was issued, nor is it now.

Moreover, Defendants have not addressed the point, raised in

the Opinion, that while Hubbell cannot assert trade dress claims

to protect in toto the design which was protected by its design

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patent, the expiration of that patent does not preclude Hubbell

from seeking to protect its reputation or avoid consumer confu-

sion over its products if it can demonstrate the required elements

of a Lanham Act or other non-conflicting unfair competition

claim.

In the Opinion, this court concluded that the objectives of

the trade dress laws will be served, and the objectives of patent

laws _ will not be undermined, by permitting Hubbell’s trade

address claims to survive Defendants’ motion to dismiss. Hub-

bell carries the ultimate burden, however, of showing either that

its product’s trade dress is inherently distinctive, Two Pesos, Inc.

v. Taco Cabana, Inc., 112 S.Ct. 2753 (1992), or, if the trade

dress is not inherently distinctive, that it “has acquired a secon-

dary meaning— that is, the trade dress identifies the source of

the product— and that there is a likelihood of confusion between

the original trade dress and the trade dress of the allegedly

infringing product.” Wallace Int’! Silversmiths, Inc. v. Godin-

ger Silver Art Co., Inc., 916 F.2d 76, 79 (2d Cir. 1990), cert.

denied, 111 S.Ct 1622 (1991).

For the purposes of resolving Defendants’ motion to dis-

miss, the Court did not examine the sufficiency of Hubbell’s

showings under the above standards. Instead, the Court con-

fined its inquiry to the availability vel non of trade dress protec-

tion for the subject matter of expired design patents. The Court’s

resolution of the question Defendants seek to certify to the

Second Circuit does not lessen Hubbell’s substantive burdens at

trial or, indeed, the burdens it would have to carry to withstand

a motion for summary judgment. Hubbell has, however, alleged

facts sufficient to withstand the instant motion to dismiss.

Conclusion

For all the reasons stated above, Defendants’ motion to

certify the product configuration trade dress issues of law in this

action to the United States Circuit Court of Appeals of the

Second Circuit is denied.

It is so ordered.

New York, N. Y.

August 3, 1995

/s/ Robert W. Sweet

ROBERT W. SWEET

U.S.D.J.