Petition for Writ of Certiorari — Publications International, Ltd. v. Landoll, Inc.

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Supreme Court, U.S.

FILED

981492 MarR 461999

No.

IN THE

Supreme Court of the Gnited States

OCTOBER TERM, 1998

PUBLICATIONS INTERNATIONAL, LTD.,

‘ Petitioner,

LANDOLL, INC.,

Respondent.

On Petition for a Writ of Certiorari to the United

States Court of Appeals for the Seventh Circuit

PETITION FOR A WRIT OF CERTIORARI

WAYNE’B. GIAMPIETRO

Counsel of Record

MICHAEL J. MERRICK

WITWER, POLTROCK

& GIAMPIETRO

125 South Wacker Drive

Suite 2700

Chicago, Illinois 60606

(312) 332-6000

Attorneys for Petitioner

Midwest Law Printing Co., Chicago 60610, (312) 321-0220

? (¢

QUESTIONS PRESENTED

1. Did the Court of Appeals find the trade dress of

Petitioner’s cookbooks and children’s books to be insuf-

ficiently distinctive for trade dress protection without

applying any standard of law?

2. Does the decision of the Court of Appeals conflict

with decisions of the other Circuits as to the standards

for distinctiveness of trade dress and the burden of

proof on the issue of functionality of trade dress?

3. Did the Court of Appeals improperly apply the

concept of aesthetic functionality to utilitarian cook-

books and children’s books?

PARTIES TO THE PROCEEDING

Publications International, Ltd., brought this proceed-

ing against Landoll, Inc. Publications International,

Ltd., has no parent company, nor is it a non-wholly

owned subsidiary of any other company or corporation.

iii

TABLE OF CONTENTS

PAGE

QUESTIONS PRESENTED ................. i

PARTIES TO THE PROCEEDING ............ ii

TABLE OF CITED AUTHORITIES ............ iv

NURI oe 1

STATEMENT OF JURISDICTION ............ 1

CONSTITUTIONAL AND STATUTORY

Pas vaste INVOLVED ............°°. 1

Diemer. OP Se CARE ee 2

REASONS FOR GRANTING THE WRIT........ 6

THERE IS NO ASCERTAINABLE UNIFORM

STANDARD OF DISTINCTIVENESS TO DE-

TERMINE WHETHER ANY TRADE DRESS

IS ENTITLED TO PROTECTION .......... 6

II.

THERE IS HOPELESS CONFUSION AMONG

THE CIRCUITS REGARDING FUNCTION-

MENON G ey Ce ie ee a cr 13

alee oa ca 4 ORI RR ea ty SD 18

TABLE OF CITED AUTHORITIES

Cases PAGE(S)

Abercrombie & Fitch Co. v. Hunting World,

ine., 687 F 3a 4 Gnd Cit. T9876) oc ce ccse 9

Ambrit, Inc. v. Kraft, Inc., 812 F.2d 1531

CT 5GN Eee. TO eka ko ce ee ee ewes 14

American Greetings Corp. v. Dan-Dee Imports,

Inc., 807 F.2d 1136 (3rd Cir. 1986) ........ 17

Boston Beer Co. v. Slesar Bros. Brewing Co.

Ene., 9 FBG 116 CAR Rae eS A a ek ee ee 11

Bristol-Myers Squibb Co. v. McNeil-P.P.C.,

Inc., 973 F.2d 1033 (2nd Cir. 1992) ........ 11

Brunswick Corp. v. Spinit Reel Co.,

S32 © 20 615 (10th Cit, 1967) oo eee ce vk 17

Children’s Factory, Inc. v. Benee’s Toys, Inc.,

160 F.3d 489 (8th Cir. 1998) ............. 12

CIBA-GEIGY Corp. v. Bolar Pharmaceutical

Co., 747 F.2d 844 (8rd Cir. 1984)........ 13-14

Computer Care v. Service Systems Enterprises,

Inc., 982 F.2d 1063 (7th Cir. 1992) .... 8, 13, 14

Dairy Queen, Inc. v. Wood, 369 U.S. 469,

82 S.Ct. 894, 8 L.Ed.2d 44 (1962) ......... 11

Disc Golf Ass’n v. Champion Discs, Inc.,

156 F.3d 1002 (9th Cir. 1998) .......0..%% 17

Ea eo eee oe

)

Duraco Products, Inc. v. Joy Plastic Enterprises,

Ltd., 40 F.3d 1431 (8rd Cir. 1994) ......... 12

Feltner v. Columbia Pictures Television, Inc.,

523 U.S. 340, 118 S.Ct. 1279, 140 L.Ed.3d

GSS CID 6 SER ER ih SR ks 11

Fisher Stoves, Inc. v. All Nighter Stove Works,

Inc., 626 F.2d 193 (1st Cir. 1980) ......... 13

Fun-Damental Too, Ltd. v. Gemmy Industries

Corp., 111 F.3d 993 (2nd Cir. 1997) ..... 11, 14

Hartford House, Ltd. v. Hallmark Cards, Inc.,

846 F.2d 1268 (10th Cir. 1988), cert. denied,

488 U.S. 908, 109 S.Ct. 260, 102 L.Ed.2d

TA LAWNS ks Va ee pk eae ens 16

Hupp v. Siroflex, 122 F.3d 1456

COU, SOL 66. Oi IER chek as wees 11

I.P. Lund Trading Aps. v. Kohler Co.,

163. F.80 27 Cet Cis. 1006) Fie. 12, 14

Imagineering, Inc. v. Van Klassens, Inc.,

53 F.36 1260 Cred: Cir. 1906) 0 6 he a 11

In re Morton-Norwich Products, Inc..,

G1 FBG. 1SSR Ae is BO in a hc hha oe 15

Insty*Bit, Inc. v. Poly-Tech Industries, Inc.,

95 F.3d 66S (6th Cir. 1006) 42 6 oo boc 6 ed's 12

International Jensen, Inc. v. Metrosound

U.S.A., Inc., 4 F.3d 819 (9th Cir. 1993) ..... 12

Inwood Laboratories, Inc. v. Ives Laboratories,

456 U.S. 844, 102 S.Ct. 2182, 72 L.Ed.2d

GOS (Rees: kk bee ee ese

Knitwaves, Inc. v. Lollytogs Ltd.,

71 F.3d 996 (2nd Cir. 1996) ............

Kwik-Site Corp. v. Clear View Mfg. Co.,

758 F.2d 167 (6th Cir. 1985) ...........

LeSportsac, Inc. v. Kmart Corp.,

464 F207) (2nd Cit. 2B0B) onic a eek a's

Nora Beverages, Inc. v. Perrier Group of

America, Inc., 164 F.3d 736 (2nd Cir.

SOO 5 Sick ee AA ee ee ae

Paddington Corp. v. Attiki Importers &

Distributors, Inc., 996 F.2d 577

CRE CAP. SOO) e's 6S eee Be Se aes

Pebble Beach Co. v. Tour 18 Ltd.,

155 F.3d 526 (6th Cir. 1998) ...........

Rachel v. Banana Republic, Inc.,

831 F.2d 1603 (9th Cir. 1987) ..........

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

Inc., 165 F.3d 120 (2nd Cir. 1998) ......

Sassafras Enterprises, Inc. v. Roshco, Inc.,

915 F. Gupp. 1 (ND: Ti. 1906) 3. i. es

Schwinn Bicycle Co. v. Ross Bicycles, Inc.,

870 F.2d 1176 (7th Cir. 1989) ..........

Vii

Sega Enterprises, Ltd. v. Accolade, Inc.,

077 F.2d 1510 (Oth Cir. 1992) ..........%. 16

Shakespeare Co. v. Silstar Corp.,

LLG Bape ae Geet OO, AT) okay 6 oe an oe bs 13

Sunbeam Products Inc. v. West Bend Co.,

123 F.3d 246 (5th Cir. 1997), cert.

denied, 118 S.Ct. 1795, 140 L.Ed.2d

Ge TR ons idk Oe i heh ke ek 9, 14, 18

Taco Cabana, Inc. v. Two Pesos, Inc.,

OS9 P38 17278 th Ole, 2008) 04. 8

Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763, 112 S.Ct. 2753, 120

ee Me AS OD es sc oo 0 8 os 6, 8, 9

University of Florida v. KPB, Inc.,

SO FBG t7m (Adee Cit. LOGE) i es os aes 9

Vornado Air Circulation Systems, Inc. v.

Duracraft Corp., 58 F.3d 1498 (10th Cir.

1995), cert. denied, 516 U.S. 1067, 116

S.Ct. 753, 183 L.Ed.2d 700 (1996) ...... 12. 13

Vuitton et Fils S.A. v. J. Young Enterprises,

Inc., 644 F.2d 769 (9th Cir. 1981) ......... 17

Wiley v. American Greeting Cards Corp.,

Te Beth: AOU CAGt CIE, DUO) hs esac ys 11-12

Woodsmith Publishing Co. v. Meredith Corp.,

904 F.2d 1244 (8th Cir. 1990) ............ 14

Vill

WSM, Inc. v. Tennessee Sales Co.,

708 F.2a 10664 (6th Civ. 1968) so hs ee ees 18

Constitutional Provision

U.S. Canst., Ane: Fe. 6. does See ® 1, 7-10

Statute

1S UB. SLI ice ee ee & oe 8 cee 1-2, 6

OPINIONS BELOW

The opinion of the Court of Appeals is reported at 164

F.3d 337, and is reproduced at page 1 of the Appendix

to this Petition. The opinion of the district court is

reported at 45 U.S.P.Q. 2d 1277, 1997 WL 769349 and

is reproduced commencing at page 13 of the Appendix

to this Petition.

STATEMENT OF JURISDICTION

The judgment of the Court of Appeals for the Seventh

Circuit was entered on December 16, 1998. No petition

for rehearing was filed. This Petition for Writ of Cer-

tiorari is filed within ninety days of the entry of the

Court of Appeals’ judgment. The jurisdiction of this

court rests on 28 U.S.C. §1254(1).

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

Amend. VII to the United States Constitution

In suits at common law, where the value in contro-

versy shall exceed twenty dollars, the right of trial by

jury shall be preserved, and no fact tried by a jury,

shall be otherwise reexamined in any Court of the

United States, than according to the rules of the com-

mon law.

The Lanham Act, 15 U.S.C. §1125. False designa-

tion of origin, false descriptions, and dilution for-

bidden

(a) Civil Action

(1) Any person who, or in connection with any goods

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

merce 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 mis-

leading representation of fact, which—

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

take, 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, mis-

represents 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 be-

lieves that he or she is or is likely to be damaged by

such act.

STATEMENT OF THE CASE

Petitioner, Publications International, Ltd., respect-

fully prays that a writ of certiorari issue to review the

judgment of the United States Court of Appeals for the

Seventh Circuit affirming the decision of the United

States District Court for the Northern District of IIli-

nois, granting summary judgment for defendant.

This cause was brought by plaintiff pursuant to the

Lanham Act, 15 U.S.C. §1125, alleging defendant had

infringed the trade dress of plaintiff's cookbooks and

children’s storybooks. The district court granted defen-

dant’s motion for summary judgment and entered judg-

ment for defendant, which judgment was affirmed by

the Court of Appeals.

btn eee icc cs aaa

Seles a

Petitioner (hereinafter referred to as “PIL”) has been

in the business of publishing books for nearly twenty-

five years. Cookbooks have been one of its specialties.

In 1993, it began producing large, heavy cookbooks con-

taining 684 pages, a page size (trim size) of 84%" x 11",

with padded, high-gloss covers and page edges gilded in

gold. No one had ever published cookbooks in that for-

mat before. These books instantly became hugely suc-

cessful. PIL selected that trade dress because it was

distinctive, unique and arbitrary. It was chosen to dis-

tinguish and identify the books as coming from PIL.

When these cookbooks were first produced, one of

Plaintiff's officers observed that PIL had succeeded in

producing the “Mother of All Cookbooks.” Shortened to

its acronym “M.O.A.C.,” they have been uniformly de-

scribed by that catch-phrase internally at PIL and by

its customers, many of whom order them by the use of

that term. Similarly, the children’s line of books is uni-

formly referred to as “Treasuries” by both PIL and its

customers.

Between their introduction in 1993, and mid-Febru-

ary, 1997, PIL had sold nearly three million copies of

the cookbooks containing this trade dress for gross

sales of over twenty-three million dollars. Wishing to

build on the huge success of these cookbooks, in 1994

PIL adapted this trade dress for its line of children’s

storybooks, reducing the page size slightly, and reduc-

ing the number of pages in the book to 384 pages. In all

other respects the trade dress was the same. Those

books were hugely successful as well. Between their

introduction in late 1994 and early 1997, PIL sold over

two million copies of these children’s treasuries with

gross sales of over thirteen million dollars.

Early in 1995, Respondent Landoll began publishing

cookbooks and children’s books containing the identical

trade dress of PIL’s books. They were the same page

size, same page count, having padded, high-gloss cov-

ers, with the page edges gilded in gold. Landoll used

the same printer for its books as PIL was using—a

printer with whom Landoll had never before done busi-

ness. Not surprisingly, Landoll’s books had the same

look and feel as PIL’s books. PIL then brought this

action under the Lanham Act seeking injunctive relief

and damages.

Landoll filed a motion for summary judgment, based

upon the single assertion that since PIL’s trade dress

was not inherently distinctive, Landoll had the freedom

to slavishly copy that format. Acknowledging the confu-

sion as to the appropriate test to be applied in deciding

the issue of trade dress in the context of product con-

figuration, the district court concluded PIL’s alleged

trade dress was not sufficiently “unique, unusual or

unexpected” in the book market to “automatically be

perceived .. . as an indicator of origin” finding it to be

a mere refinement of existing ornamentation. Although

stating that it was not ruling upon the issue of func-

tionality, the district court nevertheless found that the

elements of Plaintiff's claimed trade dress make the

product more desirable to consumers, a “deluxe” prod-

uct, thereby rendering them functional and not entitled

to trade dress protection. (Appendix, 34) The district

court therefore entered summary judgment for Landoll.

The Court of Appeals affirmed. Acknowledging that

the courts have struggled to articulate a standard to

determine when a trade dress is sufficiently distinctive

ct fle natal ill all

ae dietse en pale aa

to be entitled to the protection of the Lanham Act, the

court simply concluded that “efforts to define intuitive

concepts such as ‘distinctiveness’ are often both futile

and unnecessary.” (Appendix, 2) In an opinion that can

only be described as murky, the Court of Appeals found

each of the features of PIL’s trade dress to be “function-

al,”’ but acknowledged that a combination of functional

features may turn out to be distinctive enough for trade

dress protection. (Appendix, 9) Without giving any ex-

planation or applying any discernible test, the court

concluded that neither PIL’s cookbooks nor children’s

books were sufficiently distinctive to be entitled to

trade dress protection” because they were just another

“type of cookbook.” (Appendix, 10, emphasis in original)

! With virtually no evidentiary support in the record, the

Court of Appeals held the various elements of PIL’s cookbooks

to be functional because a) large pages lay flat in the kitchen

while the cook is using the book; b) large print is easy to read;

c) recipe is on one page and the picture of the dish is on the

facing page, making it easier to see what the food is supposed

to look like when completed; d) shiny oilcloth covers makes the

book easier to clean; and e) gilding on the pages masks “bleed-

ing” of the photographs onto the edge of the pages. The court

even went so far as to invoke aesthetic functionality in regard

to the use of gold gilding on the book’s pages. (Appendix, 8)

2 Again, without any support in the record, the court opined

that the children’s books were “functional” because the gilding

prevented “bleeding” of the pictures onto the edges of the

pages, they were easy to clean off children’s dirty fingerprints,

and “children love gold.” (Appendix, 11)

REASONS FOR GRANTING THE WRIT

THERE IS NO ASCERTAINABLE UNIFORM STAND-

ARD OF DISTINCTIVENESS TO DETERMINE WHETH-

ER ANY TRADE DRESS IS ENTITLED TO PROTEC-

TION

Both the district court and the Court of Appeals ac-

knowledged difficulty in conceptualizing what makes a

trade dress sufficiently distinctive to entitle it to pro-

tection under the Lanham Act. 15 U.S.C. §1125(a). In

the end, the Court of Appeals gave up trying to articu-

late the reason for its decision, merely concluding PIL’s

books were “just another type” of book, as dictionaries,

encyclopedias, atlases, law books and comic books are

“types” of books. (Appendix, 10) Such cavalier treat-

ment of serious business issues is simply unacceptable.

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

773, 112 S.Ct. 2753, 2760, 120 L.Ed.2d 615 (1992), this

Court held that a product with an inherently distinctive

configuration is capable of identifying that product as

coming from a specific source and is therefore entitled

to trademark protection, without a showing of second-

ary meaning. Since then, the courts have made a hope-

less jumble of what is sufficiently distinctive to entitle

a product configuration to trade dress protection. The

decision by the Court of Appeals in this case is the cul-

mination of that confusion. Rather than articulate a

basis for its conclusion, the court has simply relied

upon an “intuitive” impression of the product in reach-

ing its result. Unfortunately, everyone’s intuition is not

the same. This approach provides no guidance what-

soever to anyone wishing to assert trade dress rights or

to those wishing to know whether they may copy the

Bie WA Re RRA ane

Mihai SAE EN Seam a SS Sad Pea reaee

features of another’s product or not. Under this ap-

proach, the answer can be given only after extended

and expensive litigation. Moreover, the result of such

litigation under this scenario is variable in each in-

stance and impossible to predict.

The parties both sell their goods nationally. This suit

involves a federal statute, which should be applied to

all throughout the country consistently. Neither the

rights of these parties, nor the rights of any other

national manufacturers, should vary depending upon

which court in which geographical area of the country

happens to hear the case. However, as we discuss

below, currently those rights will be greatly different

depending upon which court happens to consider them.

The courts of appeals have not been able to agree on

a definition of distinctiveness. The Seventh Circuit has

not adopted a definition for inherent distinctiveness in

product configuration trade dress cases. Sassafras En-

terprises, Inc. v. Roshco, Inc., 915 F. Supp. 1, 5 (N.D.

Iil. 1996). Although it had the perfect opportunity to

adopt a definition in this case, it did not do so, but

instead, opted to decide the case based upon the court’s

visceral impression of the product, instead of allowing

a jury to decide the issue under proper directions after

a trial at which each side was able to fully develop its

evidence. It used a novel theory of functionality as a

substitute for distinctiveness. Rather than decide

whether the books were sufficiently distinctive to be

capable of identifying their source, the court castigated

PIL for not having used a “traditional” trademark to

distinguish its books from those who might copy its

product. (Appendix, 10) Not only is this contrary to the

clear terms of the Lanham Act, but it eviscerates this

Court’s holding that a product with an inherently dis-

tinctive configuration is entitled to protection with no

showing of secondary meaning. Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 773, 112 S.Ct. 2753, 2760,

120 L.Ed.2d 615 (1992).

PIL’s books are unquestionably unique. The combina-

tion of elements PIL uses for its books is arbitrary and

under any standard is inherently distinctive. That they

may incorporate several common design elements found

in other books but combine them in a novel manner

does not render them non-protectable. Taco Cabana,

Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1120 (5th Cir.

1991); Computer Care v. Service Systems Enterprises,

Inc., 982 F.2d 1063, 1069 (7th Cir. 1992). While pur-

porting to recognize this precept, the Court of Appeals

then ignored it in reaching the conclusion that PIL’s

products were just another “type” of book without any

factual basis upon which to rest that statement. Thus,

the decision here is in direct conflict with other courts

which have reached the contrary conclusion. “One could

no more deny protection to a trade dress for using com-

monly used elements than one could deny protection to

a trademark because it consisted of a combination of

commonly used letters of the alphabet.” Paddington

Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d

577, 584 (2nd Cir. 1993).

As a result of the utter confusion between the ap-

proaches of the various courts of appeals as to the defi-

nition of distinctiveness, no manufacturer is able to de-

termine whether its product has a trade dress which is

entitled to protection. Whether it will be entitled to

protect a product configuration will depend upon the

happenstance of which court decides the issue. Compet-

eR iS ha

itors have no reasonable way of determining whether

they are infringing the rights of another. Whether they

are guilty of infringement, and potentially subject to

millions of dollars in damages, depends upon where suit

is filed against them. Such important rights ought not

depend upon who wins the race to the courthouse.

In Two Pesos, Inc. v. Taco Cabana, Inc., supra, this

Court endorsed the classic categories of distinctiveness

set forth in Abercrombie & Fitch Co. v. Hunting World,

Inc., 5387 F.2d 4, 9 (2nd Cir. 1976): (1) generic, (2) de-

scriptive, (3) suggestive, (4) arbitrary or (5) fanciful. 505

U.S. at 768. Since then, several courts have departed

from this test when deciding whether product configura-

tion is entitled to trade dress protection. The evolution-

ary paths are vastly inconsistent. The Fifth Circuit has

adopted the Abercrombie test. Pebble Beach Co. v. Tour

18 Ltd., 155 F.3d 526, 540 (5th Cir. 1998); Sunbeam

Products, Inc. v. The West Bend Co., 123 F.3d 246, 252

(5th Cir. 1997), cert. denied, 118 S.Ct. 1795, 140 L.Ed.2d

936 (1998). The Eleventh Circuit seems to follow Aber-

crombie also. University of Florida v. KPB, Inc., 89 F.3d

773, 776 (11th Cir. 1996). While the Second Circuit uses

the Abercrombie test for a product’s packaging in trade

dress cases it, for a time, appeared to use an entirely

different test in discussing product design and configu-

ration trade dress. In order to qualify for trade dress

protection, the manufacturer of a product was required

to show the design was primarily intended as source

identification, focusing on the intent of the manufacturer,

rather than the reaction of the consumer. Knitwaves,

Inc. v. Lollytogs Ltd., 71 F.3d 996 (2nd Cir. 1995).

The Second Circuit’s two latest decisions on the issue

seem to have adopted a different approach, however. In

Samara Brothers, Inc. v. Wal-Mart Stores, Inc., 165

F.3d 120 (2nd Cir. 1998), the court upheld a jury award

of over a million dollars, based upon a finding that a

line of clothing was sufficiently distinctive to enjoy

trade dress protection, because the evidence at the trial

depicted a “distinctive combination of ingredients” in

the trade dress, warranting Lanham Act protection, as

the design was “likely to be understood as an indicator

of the product’s source.” Similarly, In Nora Beverages,

Inc. v. Perrier Group of America, Inc., 164 F.3d 736

(2nd Cir. 1998), decided at about the same time, the

Second Circuit reversed a summary judgment order

based upon a finding of non-distinctiveness of a bottle

for spring water, and remanded the case for a jury trial

because the plaintiff's evidence that its bottle design

was unique at the time of its introduction into the

market raised a genuine factual dispute which required

a jury trial. This approach is correct. It is consonant

with the prior teaching of this Court, and the majority

of the decisions of the courts of appeals.

The decision of the court below in this case is directly

contrary to the holdings of the Second Circuit in these

two cases. PIL’s cookbooks and children’s books are

undoubtedly as distinctive as the clothes and bottles

considered by the Second Circuit in Samara Brothers

and Nora Beverages. Had this case been considered by

the Second Circuit, rather than the Seventh, Landoll’s

summary judgment motion would have been denied and

the case set for a trial before a jury.°

* The Seventh Circuit’s decision effectively abrogated PIL’s

Seventh Amendment right to a trial by jury. Trademark cases

(continued...)

Dene) Sa osc Ae ea at

Diy Cet Sts

The First Circuit has stated that inherent distinctive-

ness of a product design should be determined by ref-

erence to whether the design is a “common” basic shape

or design, whether it was unique or unusual in a par-

ticular field, whether a mere refinement of a commonly-

adopted and well-known form of ornamentation for a

particular class of goods or whether it is capable of

creating a commercial impression distinct from ac-

companying words. Wiley v. American Greeting Cards

3 (...continued)

present legal claims triable by a jury as a matter of right.

Dairy Queen, Inc. v. Wood, 369 U.S. 469, 82 S.Ct. 894, 8 L.Ed.

2d 44 (1962). It is well settled that distinctiveness is a ques-

tion of fact to be decided by a jury. Boston Beer Co. v. Slesar

Bros. Brewing Co. Inc., 9 F.3d 175, 180 (1st Cir. 1993); Bristol-

Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1039-

40 (2nd Cir. 1992); Imagineering, Inc. v. Van Klassens, Inc., 53

F.3d 1260, 1263 (Fed. Cir. 1995). It is equally well settled that

functionality is also question of fact to be decided by a jury.

Inwood Laboratories, Inc. v. Ives Laboratories, 456 U.S. 844,

102 S.Ct. 2182, 72 L.Ed.2d 606 (1982); Fun-Damental Too,

Ltd. v. Gemmy Industries Corp., 111 F.3d 993, 1002 (2nd Cir.

1997); Hupp v. Siroflex, 122 F.3d 1456 (Fed. Cir. 1997). The

Seventh Circuit’s decision is tantamount to a rejection of this

proposition, turning the issues of distinctiveness and function-

ality into questions of law. This is an invasion of the province

of the jury.

The right to a jury trial has constitutional implications, as

this Court recently recognized this last term in Feltner v. Col-

umbia Pictures Television, Inc., 523 U.S. 340, 118 S.Ct. 1279,

140 L.Ed.3d 438 (1998), where it was reiterated that the Sev-

enth Amendment guarantee of a jury trial applies not only to

common-law causes of action, but also to “actions brought to

enforce statutory rights that are analogous to common-law

causes of action ordinarily decided in English law courts in the

late 18th century, as opposed to those customarily heard by

courts of equity or admiralty.” PIL has been deprived of its

constitutional right to have those issues tried by a jury.

Corp., 762 F.2d 139 (1st Cir. 1985); J.P. Lund Trading

Aps. v. Kohler Co., 163 F.3d 27 (ist Cir. 1998). The

Eighth Circuit seems to have used this approach as

well in Children’s Factory, Inc. v. Benee’s Toys, Inc.,

160 F.3d 489, 494 (8th Cir. 1998), although it had pre-

viously used the Abercrombie test. Insty*Bit, Inc. v.

Poly-Tech Industries, Inc., 95 F.3d 663, 673 (8th Cir.

1996).

The Third Circuit has developed a highly restrictive

test requiring that the design owner prove that the

product configuration is “(i) unusual and memorable;

(ii) conceptually separable from the product; and (iii)

likely to serve primarily as a designator of origin of the

product. Duraco Products, Inc. v. Joy Plastic Enterpris-

es, Ltd., 40 F.3d 1431, 1449 (3rd Cir. 1994).

Like the Seventh Circuit in this case, the Ninth and

Tenth Circuits seem to have abandoned any attempt to

define distinctiveness, opting instead for language

which merely identifies the result. Thus, the Ninth Cir-

cuit has stated, “a mark or dress is distinctive when it

identifies the particular source of the product or dis-

tinguishes it from other products.” International Jen-

sen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 824

(9th Cir. 1993). Similarly, the Tenth Circuit states that

a product’s features are inherently distinctive “because

their intrinsic nature is such as to almost automatically

tell a customer that they refer to a brand.” Vornado Air

Circulation Systems, Inc. v. Duracraft Corp., 58 F.3d

1498, 1502 (10th Cir. 1995), cert. denied, 516 U.S.

1067, 116 S.Ct. 753, 183 L.Ed.2d 700 (1996).

How is any business to know what its rights are in

this area? This is not a mere theoretical quibble. Mil-

lions of dollars are at stake in many of these cases. See

Samarra Brothers, Inc. v. Wal-Mart Stores, Inc., 165

F.3d 120 (2nd Cir. 1998). This is an issue which cries

out for this Court’s guidance.

Il.

THERE IS HOPELESS CONFUSION AMONG THE CIR-

CUITS REGARDING FUNCTIONALITY

The conflict regarding functionality is just as pro-

nounced. As the Court of Appeals in this case acknow]-

edged, the circuits do not agree on which party has the

burden of proving functionality. The court here brushed

that difference of opinion aside as being of little rele-

vance, since both sides have access to the same infor-

mation, and it matters little who introduces the evi-

dence which (presumably) will be introduced in any

event. (Appendix, 5) This is simply untrue, particularly

when dealing with motions for summary judgment,

where which party bears the burden of proof is of the

utmost importance.‘

* The Fourth, Second, Seventh and Tenth Circuits place the

burden of proving functionality on the defendant. Shakespeare

Co. v. Silstar Corp., 110 F.3d 234 (4th Cir. 1997); LeSportsac,

Inc. v. Kmart Corp., 754 F.2d 71, 75-76 (2nd Cir. 1985); Com-

puter Care v. Service System Enterprises, Inc., 982 F.2d 1063,

1068 (7th Cir. 1992); Vornado Air Circulation Systems, Inc. v.

Duracraft Corp., 58 F.3d 1498 (10th Cir. 1995), cert. denied,

516 U.S. 1067, 116 S.Ct. 753, 1383 L.Ed.2d 700 (1996).

The First, Third, Fifth, Sixth, Eighth, Ninth and Eleventh

Circuits place the burden on the plaintiff to show that its

product’s features are nonfunctional. Fisher Stoves, Inc. v. All

Nighter Stove Works, Inc. , 626 F.2d 193 (1st Cir. 1980); CIBA-

GEIGY Corp. v. Bolar Pharmaceutical Co., 747 F.2d 844 (3rd

(continued...)

Of even more importance, however, is the proper defi-

nition of functionality. The courts have been unable to

agree in this area either. All courts agree, and it can

hardly be disputed, that if a feature is functional, it is

likely that all similar articles will have a similar func-

tional feature, and one seller’s feature is not likely to

evoke any response in buyers that it is a unique or

distinctive symbol of origin. J.P. Lund Trading Aps. v.

Kohler Co., 163 F.3d 27 (1st Cir. 1998). Since the policy

of the Lanham Act is to promote competition, protection

will not be accorded a trade dress when to do so pre-

vents another from competing effectively. Fun-Damen-

tal Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993,

1002 (2nd Cir. 1997).

Functionality means that the entire trade dress,

taken as a whole, is functional, not just certain compo-

nent parts. It means that the trade dress is one that

would be found in most or all brands of the product,

even if no producer had any desire to have his brand

mistaken for that of another. Computer Care v. Service

Systems Enterprises, Inc., 982 F.2d 1063, 1068 (7th

Cir. 1992).

In this case, there is no evidence whatsoever that the

number of designs available for cookbooks and chil-

* (...continued)

Cir. 1984); Sunbeam Products, Inc. v. West Bend Co., 123 F.3d

246 (5th Cir. 1997), cert. denied, 118 S.Ct. 1795, 140 L.Ed.2d

936 (1998); Kwik-Site Corp. v. Clear View Mfg. Co., 758 F.2d

167 (6th Cir. 1985); Woodsmith Publishing Co. v. Meredith

Corp., 904 F.2d 1244 (8th Cir. 1990); Rachel v. Banana

Republic, Inc., 831 F.2d 1503 (9th Cir. 1987); Ambrit, Inc. v.

Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986).

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dren’s books is limited, or that extension of trade dress

protection to PIL’s book designs would restrict Landoll’s

ability to produce alternative competitive designs, nor

did the district court so find. In fact, the evidence of

record shows the design possibilities for such books are

virtually infinite. Since no other cookbook or children’s

book has ever used the combination of features found in

PIL’s books until Landoll began copying them, it is im-

possible to conclude that the design of those books is

functional. It is contrary to the purposes of the Lanham

Act to limit protection to those designs of articles only

where the design was useless and wholly unrelated to

the function of the article. The court below lost track of

the fundamental question in all trade dress cases: is

the design sought to be protected essential to effective

competition? Can others compete with PIL in the cook-

book and children’s book field without copying the spe-

cific design of its books or not? If they can, PIL’s trade

dress is not functional. In re Morton-Norwich Products,

Inc., 671 F.2d 1332 (C.C.P.A. 1982).

The Court of Appeals found Plaintiff’s trade dress to

be functional because the padded covers and gilded

covers made the books more desirable and “deluxe”

looking, thereby becoming aesthetically functional. (Ap-

pendix, 8) This is absolutely not the test of function-

ality. The Court ignored its own prior holdings in

reaching this conclusion. In Schwinn Bicycle Co. v. Ross

Bicycles, Inc., 870 F.2d 1176 (7th Cir. 1989) function-

ality was described as a design or feature which is

superior in terms of manufacture, accommodation or

utilitarian function or performance. A feature is func-

tional only “if it is one that is costly to design around

or do without rather than one that is costly to have.” It

has long been held that even though individual ele-

ments may be functional, when grouped together the

aggregate may be protected trade dress. Hartford

House, Ltd. v. Hallmark Cards, Inc., 846 F.2d 1268,

1272 (10th Cir. 1988), cert. denied, 488 U.S. 908, 109

S.Ct. 260, 102 L.Ed.2d 248 (1988). Upon what possible

basis can it be held that a distinctive trade dress loses

all protection because it is “aesthetically pleasing?”

Injecting such a nebulous concept into an already con-

fused area insures a reign of chaos. Where millions of

dollars are at stake, such an unfocused, result-oriented

approach simply cannot be tolerated.

The attractiveness of a product’s design does not make

it functional. The question is: Can others effectively

compete without the same design? In determining

whether a product feature is functional, a court may

consider a number of factors including the availability

of alternative designs and whether a particular design

results from a comparatively simple or cheap method of

manufacture. If there are commercially feasible alterna-

tive configurations which actually exist, then it is not

functional. Sega Enterprises, Ltd. v. Accolade, Inc., 977

F.2d 1510, 1513 (9th Cir. 1992). The court below did

not acknowledge, or seem to realize the import of these

decisions.

Several decisions have held the fact that a feature or

combination of features makes the product aesthetically

appealing does not transform a distinctive trade dress

into a functional design. While aesthetic appeal may in

some circumstances become functional, such as on ap-

parel or jewelry, the real question is whether alterna-

tive appealing designs or presentations of the product

Ns eT TE ae Se

can be developed. Brunswick Corp. v. Spinit Reel Co.,

832 F.2d 513, 519 (10th Cir. 1987). In Vuitton et Fils

S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 773

(9th Cir. 1981) the court explicitly rejected an interpre-

tation that would define any feature of a product that

contributes to its consumer appeal and marketability as

a functional element as a matter of law. The question

is whether protection of the trade dress will hinder

competition. A product feature is functional and not

entitled to trade dress protection only if “exclusive use

of the feature would put competitors at a significant

non-reputation-related disadvantage.” Disc Golf Ass’n

v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998).

There is not one iota of evidence in this case that com-

petition will be hindered if others cannot slavishly copy

PIL’s configuration for their cookbooks and children’s

books.

The resurrection of the aesthetic functionality concept

as applied to PIL’s books by the court below conflicts

with the holdings of a majority of the circuits, which

have mandated that to be functional, a product feature

must have a significant relation to the utilitarian func-

tion of the product. American Greetings Corp. v. Dan-

Dee Imports, Inc., 807 F.2d 1136, 1142 (3rd Cir. 1986).

It would be directly contrary to the purposes of the

Lanham Act to deny one protection for its trade dress

because it was more pleasing or attractive than its com-

petitors’. As this Court has recognized, something is

functional if “it is essential to the use of or purpose of

the article or it affects the cost or quality of the arti-

cle.” Inwood Laboratories, Inc. v. Ives Laboratories, 456

U.S. 844, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982). The

ruling below in this case conflicts with the long-held

view that the arbitrary combination of functional fea-

tures is not functional. The ultimate inquiry, of which

the court below lost track, is whether characterizing a

feature or configuration as protected will hinder compe-

tition or impinge upon the rights of others to compete

effectively in the sale of goods. Sunbeam Products Inc.

uv. West Bend Co., 123 F.3d 246 (5th Cir. 1997), cert.

denied, 118 S.Ct. 1795, 140 L.Ed.2d 936 (1998); WSM,

Inc. v. Tennessee Sales Co., 709 F.2d 1084 (6th Cir.

1983). A decision which injects such confusion into the

law of trade dress must not be allowed to stand.

CONCLUSION

This case implicates issues of the utmost public and

commercial importance, involving untold millions of

dollars. Manufacturers are entitled to know what rights

they possess in designing trade dress for their products.

Competitors are entitled to uniform, reasonable rules as

to- what features of their products may be protected

from use by others, and what are in the public domain.

In cases such as this which turn on public perception of

products in a competitive environment, whether the

seller of a product has a right to protect the configura-

tion of that product from predatory copying should be

decided by a jury, not judges. The state of the law in

this area is so unsettled that vast confusion currently

reigns. The time is ripe for this Court to consider these

important issues to provide guidance to the courts and

the public.

Wherefore, petitioner prays that this Court’s Writ of

Certiorari issue and that the judgment below be re-

versed with directions that the district court’s grant of

summary judgment be vacated and this cause remand-

ed for trial by a jury.

Respectfully submitted,

WAYNE B. GIAMPIETRO