787 F.2d 1208 (8th Cir. 1986), 85-5240, Toro Co. v. R & R Products Co.

Docket Nº:85-5240.
Citation:787 F.2d 1208
Party Name:1986 Copr.L.Dec. P 25,916 The TORO COMPANY, a Delaware corporation, Plaintiff-Appellant, v. R & R PRODUCTS CO., an Arizona corporation, Defendant-Appellee.
Case Date:March 28, 1986
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit
 
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Page 1208

787 F.2d 1208 (8th Cir. 1986)

1986

Copr.L.Dec. P 25,916

The TORO COMPANY, a Delaware corporation, Plaintiff-Appellant,

v.

R & R PRODUCTS CO., an Arizona corporation, Defendant-Appellee.

No. 85-5240.

United States Court of Appeals, Eighth Circuit

March 28, 1986

Submitted Feb. 10, 1986.

Reconsideration Denied May 14, 1986.

Page 1209

Robert T. Edell, Minneapolis, Minn., for plaintiff-appellant.

Brian B. O'Neill, Jeff H. Eckland, Minneapolis, Minn., for defendant-appellee.

Before HEANEY, BOWMAN and TIMBERS, [*] Circuit Judges.

Page 1210

TIMBERS, Circuit Judge.

The Toro Company ("appellant") appeals from a final judgment, as amended June 13, 1985, entered on the jury's verdict in the District of Minnesota, Robert G. Renner, District Judge, said judgment also incorporating an order dated December 10, 1984 dismissing appellant's copyright infringement claim against R & R Products Co. ("appellee") based on appellee's use of appellant's replacement parts numbering system. The jury found that, while appellee had infringed appellant's copyrights in certain replacement part drawings, appellant was entitled to no damages. The jury also found that appellee had not unfairly competed with appellant. Appellant raises a number of issues on appeal, the most significant of which are: whether the court erred in holding that appellant's parts numbering system was not copyrightable; whether the court erred in denying appellant's motion for judgment n.o.v. or a new trial on its unfair competition claim; and whether the court erroneously instructed the jury on the law of unfair competition. We hold that appellant's parts numbering system is not copyrightable because it lacks originality; the jury's verdict of no unfair competition is supported by the evidence; and the court properly instructed the jury on the law of unfair competition. 1 We affirm.

I.

We summarize only those facts believed necessary to an understanding of the issues raised on appeal.

Appellant manufactures and sells a diverse line of professional lawn care machines and a full line of replacement parts for them. Appellee manufactures and sells a limited line of replacement parts designed to fit a number of brands of lawn care machines, including appellant's. Appellee and companies like it represent a fairly recent development in the lawn care industry. By manufacturing and selling only those types of replacement parts that are in high demand--those that wear out frequently--appellee can offer these parts to consumers at a considerable savings. The original manufacturers of the machines, like appellant, must offer a full line of replacement parts to ensure continued sales of their machines. Some of the overhead for manufacturing and stocking the full line of replacement parts is reflected in appellant's higher replacement part prices. 2

Appellee's main sales tool is a catalog that it sends periodically to past and prospective customers. This catalog is central to the instant litigation. The catalog is composed of lists of various original manufacturers' replacement parts indexed according to their original manufacturer part name and part number. In some cases, like appellant's, the part names contain original manufacturer trademarks. Next to each original manufacturer part name and number is the part number for appellee's part which replaces the original manufacturer's part. Along side this is appellee's price. Appellant's part numbers tend to be five or six digit numbers with a hyphen inserted somewhere. Appellee's corresponding part numbers are identical except that they are preceded by the letter "R". Appellee's catalogs also contain certain "exploded" drawings of the parts it offers. At trial appellee admitted that it had "mistakenly" used copies of appellant's parts drawings in two of its catalogs, those for Fall 1982 and Spring 1983. Since then appellee has employed draftsmen to create similar drawings of its own parts. The catalogs also contain a disclaimer, printed at various pages throughout the catalog, stating:

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"All original equipment manufacturer's names, drawings, colors, and part numbers are used for identification purposes only, and we are in no way implying that any of our products are original equipment parts."

Customers wishing to order appellee's parts may either order directly from appellee by mail or purchase the parts from a local dealer who carries them.

On September 2, 1983 appellant commenced the instant action in the district court. The complaint alleged that: (1) appellee, through its catalogs, had infringed appellant's copyrights in its part drawings and parts numbering system; (2) appellee had engaged in unfair competition in violation of Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982), by palming off its parts as appellant's; and (3) appellee had engaged in deceptive trade practices in violation of the Minnesota Deceptive Trade Practices Act, Minn. Stat. Secs. 325D.43-.48 (1981). On October 23, 1984 appellee moved to dismiss that part of appellant's copyright infringement claim based on appellee's use of appellant's parts numbering system. 3 Appellee asserted that the parts numbering system was an uncopyrightable "system" under Sec. 102(b) of the Copyright Act of 1976, 17 U.S.C. Sec. 102(b) (1982) ("1976 Act"). In an order dated December 10, 1984, 4 the court dismissed that portion of appellant's copyright infringement claim based on appellee's use of appellant's parts numbers. The court held that Sec. 102(b) of the 1976 Act precluded copyright protection for systems like appellant's parts numbering system.

A jury trial was held on appellant's remaining claims during the period March 25, 1985 to April 2, 1985. On April 2 the jury returned its verdict in the form of answers to special interrogatories. The jury found that appellee had infringed appellant's copyrights in the parts drawings, but found that appellant was entitled to no damages. The jury also found that appellee had not engaged in unfair competition nor had it violated the Minnesota Deceptive Trade Practices Act. On April 10 appellant moved for judgment n.o.v. or a new trial. Appellant also moved to impound and destroy the infringing catalogs, to enjoin appellee from future infringement, and to award it attorneys' fees. 5 In an order dated June 13, 1985, the court denied appellant's motions and entered a final judgment on the jury's verdict.

In the balance of this opinion we shall address the dismissal of appellant's copyright infringement claim based on its parts numbering system and then review the jury's verdict and the court's instructions on unfair competition.

II.

Turning first to the dismissal of the copyright infringement claim, appellant argues that the court erred in holding that Sec. 102(b) of the 1976 Act...

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