I.P. Lund Trading ApS v. Kohler Co.

• Citation: 11 F.Supp.2d 112
• Decision Date: 05 February 1998
• Docket Number: Civil Action No. 97-10427-NG.
• Parties: I.P. LUND TRADING ApS and Kroin Incorporated, Plaintiffs, v. KOHLER COMPANY and Robern, Inc., Defendants.
• Court: U.S. District Court — District of Massachusetts

11 F.Supp.2d 112

I.P. LUND TRADING ApS and Kroin Incorporated, Plaintiffs, v. KOHLER COMPANY and Robern, Inc., Defendants.

Civil Action No. 97-10427-NG.

United States District Court, D. Massachusetts.

February 5, 1998.

Cornelius J. Moynihan, Jr., Steven N. Fuller, David H Gibbs, Allison E. Picott, Jason Kravitz, Peabody & Brown, Boston, MA, for Plaintiffs.

Hugh Latimer, Wiley, Rein & Fielding, Washington, DC, Stephen H. Lash, Jager, Smith, Stetler & Arata, Boston, MA, for Defendants.

MEMORANDUM AND ORDER

GERTNER, District Judge.

TABLE OF CONTENTS February 5, 1998

                I. INTRODUCTION ......................................................................... 114
                 II. BACKGROUND ........................................................................... 115
                     A. Characteristics of the Products ................................................... 116
                III. DISCUSSION ........................................................................... 116
                     A. Preliminary Injunction Standard ................................................... 117
                     B. Trademarks and Trade Dress ........................................................ 117
                     C. Trade Dress Infringement .......................................................... 119
                        1. Is The VOLA Distinctive? ....................................................... 120
                           a. Inherently Distinctive Product Design ....................................... 120
                           b. The VOLA Has Acquired Secondary Meaning ..................................... 120
                           c. Is There A Likelihood Of Confusion? ......................................... 121
                               i) Whose Confusion Counts? ................................................. 121
                              ii) Eight-Factor Test For Likelihood Of Confusion ........................... 122
                      D. Trade Dress Dilution ............................................................. 124
                         1. The Fame And Distinctiveness Of The VOLA Design ............................... 125
                         2. Dilution By Blurring .......................................................... 125
                         3. Blurring Factors .............................................................. 126
                IV. CONCLUSION ............................................................................ 127
                

I. INTRODUCTION

This case involves the scope of protection accorded trade dress under the new Federal Trademark Dilution Act of 1995 (15 U.S.C. § 1125). I.P. Lund Trading ApS ("Lund") seeks protection for what courts often call a "product configuration," here a bathroom faucet known as the VOLA ("VOLA"). The VOLA was designed by a Danish inventor nearly thirty years ago. Lund has owned and marketed the product since its inception. The faucet is distributed in the United States by Kroin Incorporated ("Kroin"). Defendants Kohler Company ("Kohler") and its subsidiary Robern, Inc. ("Robern"),¹ recently designed a similar product called the Falling Water faucet and started marketing it in 1995.

Plaintiffs seek to enjoin defendants from making, promoting or selling any products having a confusingly similar design to the VOLA, based on sections (a) and (c) of 15 U.S.C. § 1125.² The first section, 1125(a), protects against trade dress infringement, under which the plaintiff is obliged to demonstrate a likelihood of confusion among consumers as to the source of the products.

The second section, 1125(c), protects against trade dress dilution, under the Federal Trademark Dilution Act of 1995. A trade dress dilution claim does not require a finding of a likelihood of confusion among consumers as to the source of the products; rather, it requires that the senior trademark³ be distinctive and famous, and that the junior mark have the effect of lessening the famous mark's identifying and distinguishing capacities. 15 U.S.C. § 1125(c).

Included in the defendants' briefs is a significant constitutional challenge, but one that cannot be resolved on the papers before me. Defendants argue that the extension of the dilution statute to this trade dress claim is unconstitutional under the Patent Clause of the United States Constitution, U.S.C. Const art. I, § 8, cl. 8.⁴ Such an extension, they suggest, has the effect of providing potentially unlimited protection to the product design of a competitor, and does so without proof of any likelihood of source confusion. The Constitution, defendants argue, mandates that patent protection gives to the "author and inventor" exclusive rights "for limited Times" only. Id.

Broadly speaking, the preliminary injunction stage is an inappropriate setting to address such constitutional issues, especially those that are, to a degree, issues of first impression. Accordingly, I invite the parties, and any amici, to file additional memoranda of law on the question of whether the federal dilution statute impermissibly extends patent protection beyond a limited time. A status conference shall be held on February 11, 1998, at 2:00 p.m., in courtroom 4 on the 12th floor, to consider these and other issues.

On the record before me, the plaintiffs' motion for a preliminary injunction based on their claims of trade dress infringement is DENIED, as plaintiffs are not likely to show a likelihood of confusion among potential consumers. The plaintiffs motion for an injunction based on their claims of trade dress dilution is GRANTED, as plaintiffs are likely to prove dilution by the blurring of the VOLA's trade dress. The constitutional questions are RESERVED for further briefing.

II. BACKGROUND

Lund is a family-owned Danish corporation, established in 1873, which manufactures high-end kitchen and bathroom faucets, fixtures, and accessories. The VOLA faucet was designed by the distinguished architect Professor Arne Jacobsen ("Jacobsen") in 1968. It has won numerous design awards, including the Danish ID prize for industrial design innovation, and the Danish Classic ID prize (awarded to products whose designs have survived and thrived for 25 years without significant design modification).

The VOLA faucet design has remained virtually unchanged throughout the past 28 years. Since 1969, the year the VOLA products were introduced, Lund has sold more than 600,000 VOLA faucets throughout the world. The VOLA line serves as Lund's principal source of revenue.

Co-plaintiff Kroin is the sole American distributor for the VOLA, and Kroin's owner, Larry Kroin, was its first American distributor, starting in 1976. Kroin has since sold thousands of VOLA faucets, amounting to approximately $16 million worth of sales. Between 1988 and 1997, Kroin spent more than $684,000 to advertise the VOLA.

Lund has promoted the VOLA faucet across the world, spending more than $10 million since 1980. Most of the advertisements for the VOLA are print advertisements that appear in prestigious design magazines, including Architectural Record, Interior Design, and Interiors. Hundreds of pictures of the VOLA have appeared as parts of photo spreads in these magazines, and other less specialized magazines, such as Better Homes and Gardens.

Kohler, based in Kohler, Wisconsin, is the largest plumbing fixtures supplier in the United States, with more than $1.5 billion worth of sales in 1996 alone. Kohler sells hundreds of different kitchen and bathroom sanitary fitting designs. On November 22, 1994, Kohler's Purchasing Manager, Jeffrey Klosterman, contacted Lund expressing Kohler's "interest[ ] in the possible purchase of this product [the VOLA] and potentially others that you may have ... for resale under our brand name in the United States." The letter further requests volume pricing, and seeks several samples for testing "under United States regulations."

In January, 1995, Kohler purchased from Lund eight VOLA 121 C faucets "to begin qualification testing." According to Kohler, in September, 1995, the company intended to introduce the new "Vessels" basin, a "high-end sink with no holes (as compared to the normal three-hole sink) ..."⁵ and sought an accompanying faucet for its product. While the VOLA was compatible with the Vessels sink, Kohler claims that an April 1995 test report showed that the VOLA faucets did not comply with federal and state legal "requirements." Specifically, defendants allege that the VOLA did not meet requirements concerning water flow capacity and resistance to hydrostatic pressure.⁶ The plaintiffs dispute these findings, as well as the significance of any such federal, state, or local "requirements."

Robern, before it became a Kohler subsidiary, designed a bathroom sink module which was compatible with the VOLA, known as the MTS Sink Module. Indeed, it sold these modules with VOLA faucets purchased from Kroin. Between January 1993 and September 1995, Robern purchased 218 VOLA faucets directly from Kroin.

In August 1995, Kroin allegedly accused Robern of selling VOLA faucets to Kroin customers for prices lower than what Kroin was charging. Kroin then refused to sell Robern any more VOLA faucets. Shortly thereafter, Kohler acquired Robern. In August, 1996, Robern announced that it would ship MTS Sink Modules with Kohler's Falling Water faucets, which are also compatible with no-hole, freestanding vessel sinks.

The Falling Water faucet was designed by Erich Slothower, a Kohler industrial designer. He testified that while he was aware of the VOLA, and even looked at it carefully before designing the Falling Water, he consciously tried to make his faucet different in appearance than the VOLA.

A. Characteristics of the Products

At first glance, the Falling Water may seem similar in overall appearance to the VOLA. Similarities between the two faucets include the following: (1) both are single-control, wall-mounted faucets; (2) both control handles utilize a thin cylindrical lever to adjust water temperature and volume; (3) both faucets' spouts and aerator holders are of uniform diameter; (4) both spouts bend downward at right angles softened by a...