199 F.3d 1009 (9th Cir. 1999), 98-35147, Leatherman Tool Group v. Cooper Indus., Inc.

Docket Nº:98-35147, 98-35415
Citation:199 F.3d 1009
Party Name:LEATHERMAN TOOL GROUP, INC., an Oregon corporation, Plaintiff-Appellee, v. COOPER INDUSTRIES, INC., an Ohio corporation, Defendant-Appellant.
Case Date:December 17, 1999
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 1009

199 F.3d 1009 (9th Cir. 1999)

LEATHERMAN TOOL GROUP, INC., an Oregon corporation, Plaintiff-Appellee,


COOPER INDUSTRIES, INC., an Ohio corporation, Defendant-Appellant.

Nos. 98-35147, 98-35415

United States Court of Appeals, Ninth Circuit

December 17, 1999

Argued and Submitted May 4, 1999--Portland, Oregon

John D. Vandenberg, David J. Earp and Garth A. Winn, Klarquist Sparkman Campbell Leigh & Whinston, Portland, Oregon, for the defendant-appellant.

J. Peter Staples, Julianne Ross Davis and Bruce W. DeKock, Chernoff, Vilhauer,

Page 1010

McClung & Stenzel, Portland Oregon, for the plaintiff-appellee.

Appeals from the United States District Court for the District of Oregon; Malcolm F. Marsh, District Judge, Presiding. D.C. No. CV-96-01346-MA

Before: William C. Canby, Jr. and Thomas G. Nelson, Circuit Judges, and Jeremy Fogel,1 District Judge.

FOGEL, District Judge:

In this case we must decide when and to what extent the overall appearance of a non-patented product is protectable as "trade dress." Plaintiff Leatherman Tool Group, Inc. ("Leatherman") was first to market with an admittedly ingenious multi-function pocket tool which improves on the classic "Swiss army knife" in a number of respects. Not the least of the improvements was the inclusion of pliers, which, when unfolded, are nearly equivalent to regular full-sized pliers. Leatherman sells its tool under the name "Pocket Survival Tool" ("PST").2 Leatherman apparently largely created and undisputedly now dominates the market for multifunction pocket tools which generally resemble the PST.

Defendant Cooper Industries, Inc. ("Cooper") owns numerous famous tool industry brand names including "Crescent"; it is best known for the Crescent adjustable wrench which was copied widely by other toolmakers in the early part of the 20th century. There is no dispute that at some point Cooper became aware of the PST and of Leatherman's market dominance and set out to compete in that market. There also is no dispute that at a trade show in 1996, Cooper announced a multi-purpose tool which differed in appearance from the PST in only three respects: 1) the Cooper tool was marked with a different name than the PST, 2) the fasteners which held the Cooper tool together differed from the PST fasteners, and 3) the Cooper tool included a serrated blade and certain other small but not particularly visible differences. During development, Cooper internally referred to its competing tool as the "Cooperman." When it was announced, Cooper called its tool the Crescent "Toolzall" (hereinafter "the original Toolzall" or "the Toolzall").

After the trade show, Leatherman filed this action and obtained a preliminary injunction prohibiting Cooper from marketing the original Toolzall. Cooper thereafter developed and marketed a version of the Toolzall ("the second Toolzall") which differed more from the PST.

This action then proceeded to trial by jury. The jury found that the overall appearance of the PST was protectable trade dress and that the original Toolzall infringed that trade dress. The jury found that the second Toolzall did not infringe the trade dress of the PST. Cooper moved for judgment as a matter of law on Leatherman's trade dress claim, arguing that Leatherman did not provide the "entire design" of the PST was nonfunctional. The district court denied Cooper's motion.

The jury awarded no damages as to the trade dress infringement. Pursuant to the finding of infringement, however, the district court entered a permanent injunction precluding Cooper from marketing the original Toolzall. Cooper therefore has appealed that portion of the judgment.

We conclude that the district court should have granted Cooper's motion for judgment as a matter of law on Leatherman's trade dress claim and therefore we reverse the judgment in part. In an unpublished memorandum filed herewith, we affirm the jury's award of damages on certain other claims and remand for further consideration the question of whether those other claims support an award of

Page 1011

attorneys' fees absent trade dress infringement.


"The standard of review for the denial of a motion for judgment as a matter of law after a jury trial is the same as the standard of review for reviewing a jury's verdict:`both the verdict and the denial of the motion must be affirmed if there is substantial evidence to support the verdict.' " Gilbrook v. City of Westminster, 177 F.3d 839, 856 (9th Cir. 1999) (quoting Landes Constr. Co. v. Royal Bank of Canada , 833 F.2d 1365, 1370-71 (9th Cir. 1987)).


Leatherman claimed, and the jury found, a protectable trade dress in "the overall appearance" of the PST.3 Leatherman asserts that the protectable appearance includes:

[T]he combination of multiple features, including: the tool size; the shape of the handles; the shape of the gripping jaws including the selection, shape and placement of the gripping jaw features (needlenose, arcuate gripping surface and cutters); the mirror image of the tool handles; the brushed stainless steel finish on the handles; the selection, arrangement and shape of all of the various tool blades both individually and collectively; the combination and arrangement of all the above features; the proportional sizes of components in relation to each other; and, the type and appearance of the pivot joint on the pliers head.

At first blush it would appear easy to conclude that the jury's finding of trade dress infringement is supported by substantial evidence. Cooper acknowledges it copied the overall appearance of the PST almost exactly. There is no dispute that one must look fairly closely at the products to distinguish them. The fact that Cooper could have chosen to use an appearance which more visibly distinguishes its product from the PST is confirmed by the jury's finding that the second Toolzall did not infringe.

To uphold a finding of infringement here, however, would suggest that the general appearance of almost any unpatented product rarely if ever could be copied faithfully4. That is not the law. Rather, "[t]he physical details and design of a product may be protected under the trademark laws only if they are nonfunctional . . . ." Clamp Manufacturing Co., Inc. v. Enco Manufacturing Co., Inc., 870 F.2d 512, 515 (9th Cir. 1989) (citing Vuitton Et Fils S.A. v. J. Young Enterprises, 644 F.2d 769, 772 (9th Cir. 1981)). The Clamp court went on to explain:

The requirement of nonfunctionality is based "on the judicial theory that there exists a fundamental right to compete through imitation of a competitor's product, which right can only be temporarily denied by the patent or copyright

Page 1012

laws." In re Morton Norwich Products, Inc., 671 F.2d 1332, 1336 (C.C.P.A. 1982) (emphasis in original). If the utilitarian aspects of the product are its essence, only patent law protects its configuration from use by competitors. See Morton-Norwich, 671 F.2d at 1338 40; cf. Vuitton, 644 F.2d at 776-77. "Functional features of a product are features which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product." Vuitton, 644 F.2d at 774. For an overall product con figuration to be recognized as a trademark, the entire design must be nonfunctional. Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1019, 1025 (Fed. Cir. 1985). "[T]he right to copy better working designs would, in due course, be stripped of all meaning if overall functional designs were accorded trademark protection because they included a few arbitrary and nonfunctional features." Id.

Id. at 516 (some internal citations omitted, italics in original, underscoring added).5

The Textron court further explained an important difference between "de facto" and "de jure" functionality:

In essence, de facto functional means that the design of a product has a function, i.e., a bottle of any design holds fluid. De jure functionality, on the other hand, means that the product is in its particular shape because it works...

To continue reading