Herman Miller Inc. v. Palazzetti Imports and Exports Inc.

• Decision Date: 01 November 2000
• Docket Number: Nos. 98-2363,s. 98-2363
• Parties: (6th Cir. 2001) Herman Miller, Inc., Plaintiff-Appellant/Cross-Appellee, v. Palazzetti Imports and Exports, Inc., Defendant-Appellee/Cross-Appellant. ; 99-1019 Argued:
• Court: U.S. Court of Appeals — Sixth Circuit

Page 298

270 F.3d 298 (6th Cir. 2001)

Herman Miller, Inc., Plaintiff-Appellant/Cross-Appellee, v. Palazzetti Imports and Exports, Inc., Defendant-Appellee/Cross-Appellant.

Nos. 98-2363; 99-1019

UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT

Argued: November 1, 2000

Decided and Filed: October 22, 2001

Appeal from the United States District Court for the Eastern District of Michigan at Ann Arbor, No. 96-60277

[Copyrighted Material Omitted]

[Copyrighted Material Omitted] Randall G. Litton, Douglas H. Siegel, PRICE, HENEVELD, COOPER, DEWITT & LITTON, Grand Rapids, Michigan, for Plaintiff-Appellant/Cross-Appellee.

Samuel D. Littlepage, Jeffrey M. Petrash, DICKINSON WRIGHT, PLLC, Washington, D.C., K. Scott Hamilton, Dickinson, Wright, Moon, Van Dusen & Freeman, Detroit, MI, for Defendant-Appellee/Cross-Appellant.

Before: KEITH, BOGGS, and COLE, Circuit Judges.

OPINION

BOGGS, Circuit Judge.

"Beware of imitations," warned a poster designed by Charles Eames for Herman Miller, Inc. in 1963. The poster instructed furniture customers to "enjoy the comfort of the real thing designed by Charles Eames for Herman Miller, Inc." Over thirty years later, Herman Miller, Inc. ("Herman Miller") filed a complaint in federal district court against a furniture company, Palazzetti Imports & Exports, Inc. ("Palazzetti"), that it claims is producing imitations of a lounge chair and ottoman that Eames and his wife Ray designed for Herman Miller in 1956.

A jury returned a verdict in favor of Herman Miller on three of its claims: trademark infringement and dilution, unfair competition, and right of publicity. The district court dismissed Herman Miller's remaining two claims: trade dress infringement and dilution and false advertising. Both parties have appealed certain aspects of the district court's decisions.

Herman Miller appeals the dismissal of its trade dress and false advertising claims as well the damages limitation imposed by the district court on Herman Miller's trade dress claims. In addition, it challenges a portion of the permanent injunction entered by the district court against Palazzetti, which allows Palazzetti to "fairly identify" Charles and Ray Eames as the original designers of the furniture reproduced by Palazzetti.

Palazzetti cross-appeals the district court's denial of Palazzetti's motion for summary judgment on Herman Miller's right of publicity claim, as well as the geographic extent of the permanent injunction entered in favor of Herman Miller on the same claim.

For the following reasons, we affirm in part and reverse in part.

I. Facts

A. Herman Miller and the Eameses

Herman Miller has been manufacturing home and office furniture since 1905, originally as the Star Furniture Company and, after 1923, as the Herman Miller Furniture Company. From the mid-1940s until their deaths, Herman Miller had a business and personal relationship with noted California designer Charles Eames and his wife Ray Eames (and thereafter with the Eames estate). From 1961 to 1998, Herman Miller sold over $377 million of furniture designed by the Eameses.

In 1949, Herman Miller, Charles Eames, and the Evans Product Company signed an agreement giving Herman Miller all of Evans's rights to trademarks, trade names, trade secrets, and processes used in connection with Eames-designed furniture. From then on, Charles and Ray Eames designed furniture exclusively for Herman Miller. In 1990, Herman Miller signed an agreement with the Eames estate affirming that Herman Miller is the legal and equitable owner of rights to the EAMES¹ trademark, trade dress rights related to a lounge chair and ottoman designed by the Eameses, and rights of publicity in the names and likenesses of Charles and Ray Eames.

Charles and Ray Eames designed a number of pieces of furniture during their relationship with Herman Miller, including a chair known colloquially as the "potato chip chair" and a table known as the "surfboard table." In 1956, Charles and Ray Eames designed a lounge chair and ottoman of leather and wood. Herman Miller claims that this is "the most famous" of the pieces of furniture designed by the Eameses for Herman Miller. The frames of the chair and ottoman were fabricated of curved, molded sheets of rosewood plywood, and the upholstery was cushioned leather. The chair tilts and is mounted on a swivel base.

Herman Miller cites nine different aspects of the lounge chair and ottoman that it claims make the lounge chair and ottoman worthy of trade dress protection:

(1) Smooth curved, molded shells; the lounge chair having three shells, the ottoman, one.

(2) The molded shells being exposed from below the ottoman and from the back, sides, and underside of the chair.

(3) The edges of each molded shell being exposed from the front of the lounge chair and ottoman.

(4) Each of the molded shells being shaped like a flattened "U."

(5) Each molded shell with cushioned upholstery.

(6) Each molded shell having "buttons" that create permanent creases in the upholstery.

(7) The back of the lounge chair consisting of two molded shells, connected in the rear by two exposed bars, each bar being angled to tilt the upper molded shell slightly forward of the lower molded shell.

(8) The angled bars spaced from the shells.

(9) Upholstered armrests that extend downwardly into the chair and that connect the two molded back shells to the molded seat shell.

Herman Miller presents numerous facts related to the lounge chair and ottoman in attempting to support its trade dress claim. It describes unsolicited media attention given to the lounge chair and ottoman when they were designed, including an interview by Arlene Francis of Charles and Ray Eames on NBC's Today Show on March 14, 1956, introducing the lounge chair and ottoman that Charles Eames stated he designed "for Herman Miller." Herman Miller notes that its Eames lounge chair and ottoman won the grand prize at the Milan Triennial, and that its Eames lounge chair and ottoman are on permanent exhibit at several museums.

Descriptions of the lounge chair and ottoman in various books and magazines are also presented during the course of over five hundreds pages of the record. Many of these descriptions specifically identify the Eames lounge chair and ottoman as manufactured by Herman Miller and a number of the publications refer to the relationship between Herman Miller and the Eameses. Herman Miller also cites the Encyclopedia Americana, noting that it shows a photo of a lounge chair and ottoman with the phrase "Herman Miller, Inc." below the photo. The encyclopedia entry states that Charles Eames "developed a series of chairs for the Herman Miller Company during the 1940s and 1950s" and that "[h]is most famous design was a soft leather-upholstered swivel tilt lounge chair and ottoman."

Herman Miller also presents affidavits of design experts, historians, authors, and employees of Herman Miller recognizing Herman Miller as the only source for the lounge chair and ottoman. These affidavits attest to the unique nature and design of the lounge chair and ottoman and the fact that customers associate the Eames lounge chair and ottoman with Herman Miller. Herman Miller also offers evidence from various publications regarding owners of the Eames lounge chair and ottoman. In one interview, Indira Gandhi stated that she would sit in her "Eames chair," referring to her Herman Miller Eames lounge chair and ottoman (although she did not mention Herman Miller specifically). Other articles describe celebrities, such as Barbara Walters, who own Herman Miller Eames chairs and ottomans (some specifically mention Herman Miller and others do not). Furthermore, Herman Miller offers articles mentioning that producers of two television series, the highly rated Frasier and the less highly rated It Takes Two, acquired Herman Miller-manufactured Eames lounge chairs and ottomans to furnish the sets of their shows.

Finally, Herman Miller offers evidence of specific recognition of the distinctiveness of the lounge chair and ottoman. In 1970, the Herman Miller Eames lounge chair and ottoman were declared among the "One Hundred Greatest Products of All Time" by a group of designers. In 1995, the Corporate Design Foundation, a non-profit research and educational organization, included in the premiere issue of its Journal of Business & Design a silhouette of the lounge chair as one of sixteen distinctive corporate "shapes." The declaration was made in the context of a quiz in which readers were asked to match the shape with its identifying company. The correct match for the silhouette of the lounge chair was "Eames lounge chair." Explaining the absence of "Herman Miller" from the answer, the publisher of the quiz stated, "[i]n fact, the EAMES lounge chair and ottoman is so closely associated with Herman Miller, Inc., that the chair was referred to as the EAMES lounge chair. This symbol of Herman Miller was selected over the famous Herman Miller "M" design as an identifying corporate symbol." Also included in the quiz were the CBS eye, the Coca-Cola bottle, the Apple computer apple, the McDonald's arches, the Travelers Insurance Co. umbrella, and Mickey Mouse as a symbol of the Disney Company. B. The Market for Eames Furniture

Herman Miller notes it has produced the Eames lounge chair and ottoman continuously since 1956 and has sold over 100,000 lounge chairs and ottomans. In addition, it points out that the lounge chair and ottoman have gained popularity as collectors' items and antiques and that a strong secondary market has come into existence for Eames lounge chairs and ottomans produced by Herman Miller. Herman Miller produces evidence demonstrating that buyers in this market specifically seek out Herman Miller Eames lounge chairs and ottomans.

In addition to this secondary collectors' market for chairs and ottomans produced by Herman Miller, there is evidence of a market for reproductions of the chair and ottoman...