SK&F, CO. v. Premo Pharmaceutical Laboratories

• Decision Date: 19 December 1979
• Docket Number: Civ. A. No. 79-3434.
• Citation: 481 F. Supp. 1184
• Parties: SK&F CO., Plaintiff, v. PREMO PHARMACEUTICAL LABORATORIES, INC., Defendant.
• Court: U.S. District Court — District of New Jersey

481 F. Supp. 1184

SK&F CO., Plaintiff, v. PREMO PHARMACEUTICAL LABORATORIES, INC., Defendant.

Civ. A. No. 79-3434.

United States District Court, D. New Jersey.

December 19, 1979.

COPYRIGHT MATERIAL OMITTED

Carpenter, Bennett & Morrissey, Newark, N. J. by Donald R. Dunner, Washington, D. C., for the plaintiff.

Podvey & Sachs, Newark, N. J. by David B. Kirschstein, New York City, for the defendant.

OPINION

BIUNNO, District Judge.

SK&F markets an oral diuretic under the brand name DYAZIDE, and the proofs show without contradiction that it has been so marketed since 1965 in a No. 3 hard gelatin capsule, half maroon and half white. The medication is a prescription drug consisting of 50 mg. of triamterene and 25 mg. of hydrochlorothiazide plus inert ingredients.

The application of triamterene (a previously known substance) for use as a diuretic and hypotensive agent is the subject of United States Patent No. 3,081,230 issued March 12, 1963, and owned by SK&F. A combination of triamterene and hydrochlorothiazide (within specified ranges) is also within the claims of the same patent.

Since late November, 1979, Premo has been marketing to distributors its own so-called generic equivalent under the name "Triam-Thiazide."

This medication has been packaged in a trade dress which concededly imitates as closely as possible the capsule trade dress of SK&F's DYAZIDE.

Promptly after learning of Premo's activity, SK&F filed a complaint, together with supporting affidavits and exhibits, with claims of both patent infringement and unfair competition in the copying of trade dress.

With these papers there was submitted a brief and order to show cause with temporary restraints limited to the patent infringement aspect. When the papers were received, the Court was in the 12th consecutive week of a criminal jury trial which counsel had indicated would likely run to the end of December. On review of the papers the Court felt the draft order should not be entered as submitted for two reasons:

One was that the Court rarely grants an order with temporary restraints without some hearing from both sides on the issue, and the ongoing criminal trial made such a hearing impossible. The other reason was that since there is very limited time available for hearings on preliminary injunctions in the face of an extremely heavy criminal calendar, interests of judicial economy called for a single hearing on the demands in the complaint for preliminary injunction on both the patent infringement and unfair competition aspects.

The patent, on its face, runs out on March 12, 1980. Any preliminary injunction to restrain patent infringement, if granted, could not run beyond that date. After that date Premo will be free to engage in conduct that before then would constitute infringement if the patent be valid.

Since the issue of unfair competition arising out of a copying of trade dress would obviously have continued significance regardless of the outcome of the patent claims, and would be bound to arise in a few months — sooner rather than later — the Court drew and entered its own order to show cause on December 3, 1979, after a full weekend review of the considerable submissions, to encompass both aspects for preliminary injunction. It also provided means for a prompt and short period of discovery and setting a hearing date of December 17, 1979, at 2:00 p. m.

At the conclusion of the hearing at about 9:30 p. m., the Court ruled that the preliminary injunction on unfair competition should be granted, and reserved on the patent infringement issue which is more technical and requires further study.

A number of points are not in dispute and should be listed.

Both these prescription drugs contain 50 mg. of triamterene and 25 mg. of hydrochlorothiazide per capsule. Both are packaged in number three hard gelatin capsules. Both are colored with one-half in maroon and the other half in white. SK&F's capsule has the brand "DYAZIDE" and the logo "SKF" printed on both halves. Premo's capsule has its name and brand printed on both halves. SK&F's capsule has somewhat conical ends, as evidently do the hard gelatin capsules of all its products so packaged. Premo's capsule is the standard one with hemispherical ends.

A number three hard gelatin capsule is quite small, being about a half-inch long. The printing is necessarily very small. The printing on the maroon half, which is black printing for both capsules, is nearly impossible to read against the maroon background. The printing on the white half, having more contrast, is easier to read, but is about the size of the "series" designation on a dollar bill.

On the sole question of trade dress, as embodied in the capsule, the Court finds that Premo's capsule is as close to an exact copy of SK&F's as is possible to come and still argue that there are differences.

If this were a case in which the issue were whether an item of currency such as a ten dollar bill was genuine or counterfeit, the differences here are of the order of printing this year a series designation of 1999 or, on the back of the bill, printing "In Cod We Trust." Such a counterfeit bill, otherwise a perfect copy in all respects, like Premo's capsule, would be fishy.

There is no need to explore the question of intent. Premo claims the right to copy the capsule trade dress as closely as it can. There is no fact issue that the copying imitation was intentional and deliberate.

Premo, of course, has the right to make the claim, and to copy as closely as it thinks it can, intentionally and deliberately. There is no question about its right to make the claim, but, having done so intentionally and deliberately it cannot complain if its conduct turns out to be a calculated risk on which the outcome is adverse.

Putting aside the patent infringement issue, not yet decided, Premo's argument comes down to several specific propositions.

One is that no one can obtain a monopoly in a color or combination of colors. This proposition may be true in a general sense, but it does not follow that the composite of a specific trade dress may be copied with impunity merely because one of the features happens to be color. Trade dress is a complex composite of features. One may be size, another may be color or color combinations, another may be texture, another may be graphics and arrangement and so on. Trade dress is a term reflecting the overall general impact, usually visual, but sometimes also tactile, of all these features taken together. The law of unfair competition in respect to trade dress requires that all of the features be considered together, not separately.

A competitor of American Tobacco Company, for example, could hardly expect to escape an injunctive order if it tried to market cigarettes in a red package with white lettering, under the phonetic brand "PELL MELL" with a coat of arms ribboned in French "Honi Soit Qui Mal Y Pense", and bottomed with the slogan "Wherever People Congregate Particularly." Take a look at a package of these well-known cigarettes and think about small changes like these that could be made that not too many would recognize or notice, and then consider whether barring such an imitation carries any implication that American Tobacco Company has acquired a monopoly in the color "red."

The second point is that Premo claims SK&F has failed to show the development of secondary meaning for its trade dress. This argument is plainly frivolous. It is proven by the submissions, and not denied, that SK&F's DYAZIDE is the only oral diuretic on the U.S. market which is packaged as a hard gelatin capsule. All the competitive prescription drugs are packaged as tablets of one or another shape or finish or color. Not only that, but it has been so marketed, in maroon and white, since 1965, and has achieved the highest volume of sales, both as doses and dollars, of any brand or class of oral diuretics. Since the product is a prescription drug its selection implies a very large number of professional decisions by physicians who have considered all they know of the diagnosed condition, prognosis and treatment of a very large number of specific patients and who have in consequence prescribed DYAZIDE. These individual professional decisions aggregate decisions for millions of patients each with his own complex of ailments and conditions in which DYAZIDE was prescribed rather than some other competitive oral diuretic prescription drug.

It is difficult to conceive of a set of circumstances that could make a stronger case for showing the achievement of secondary meaning. The product itself — the medication within the capsule—is unique in the field of diuretic prescription drugs, and has been sold nationwide in enormous volume for...