Epic Metals Corp. v. Souliere

Citation99 F.3d 1034
Decision Date06 November 1996
Docket NumberNo. 95-2848,95-2848
PartiesEPIC METALS CORP., a Pennsylvania Corporation, Plaintiff-Counter-Defendant-Appellee, v. Frank SOULIERE, Sr.; Condec, Inc., a Florida corporation, Defendants-Counter-Claimants-Appellants.
CourtUnited States Courts of Appeals. United States Court of Appeals (11th Circuit)

Frank R. Jakes, Johnson, Blakely, Pope, Bokor, Ruppel & Burns, P.A., Tampa, FL, for Epic Metals Corp.

Appeal from the United States District Court for the Middle District of Florida.

Before COX, Circuit Judge, HILL, Senior Circuit Judge, and VINING *, Senior District Judge.

HILL, Senior Circuit Judge:

Epic Metals Corporation (Epic) brought this action against Condec, Inc. (Condec) and its president, Frank Souliere, alleging trade dress infringement of EPICORE, Epic's composite steel floor deck profile, in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). 1 Following a bench trial, the magistrate judge 2 concluded that Condec had infringed upon Epic's trade dress. Asserting that this conclusion is not supported by the evidence presented at trial, Condec appeals. We agree and reverse Condec's liability on this claim. In all other respects, we affirm. 3

I. BACKGROUND

Steel decking, together with wire mesh, poured concrete, and frequently rebar, form a composite steel deck system. The steel deck component provides a form for the poured concrete. As the concrete hardens, the steel deck lends positive reinforcement and structural support. Up until the late 1960's, a generic form of steel deck, called Type B steel deck, was commonly used by the construction industry.

In 1968 Epic developed EPICORE as an alternative to Type B deck. Although Epic owns a federally registered trademark for the name EPICORE, EPICORE is not patented. Its profile, as viewed from the end of the sheet steel after it has been formed, by bending, into EPICORE, is twenty-four and one-half inches wide, two inches deep, with dovetail-bent troughs spaced six and one-eighth inches on center. EPICORE's roll-formed sheets are characterized by these dovetail ribs, whose formation requires that the steel sheeting be bent over ninety degrees: 4

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The tooling required to form the steel into this profile is more complex than that required to form Type B decking. In addition the dovetail ribs take more sheet steel to form. As a result EPICORE uses thirty percent more raw steel sheeting than Type B decking. Thus, as to both labor and material, EPICORE is more expensive to produce. 5

Dovetail is defined as "resembling a dove's tail ... the flaring tendon and a mortise into which it fits tightly making an interlocking joint between two pieces." Webster's Seventh New Collegiate Dictionary, G. & C. Merriam Company (Springfield, MA 1965). When concrete is poured onto EPICORE, its dovetail ribs, together with the concrete, create the flaring tendon and a mortise. After the concrete hardens, the EPICORE composite floor system becomes an interlocking joint. It is illustrated as:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

A three-dimensional cross-section of EPICORE is depicted as:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

For a ten-year period, Condec's president, Souliere, was an Epic distributor. 6 In late 1988, Souliere and Condec developed its own steel deck product with a dovetail profile. They named it CONDEC. Souliere and Condec do not deny that CONDEC's profile mimics EPICORE's profile. Both have the same dimensions. Both have dovetail ribs bent over ninety degrees. Epic claims that, at first glance, and from a distance, CONDEC appears identical to EPICORE. Upon closer inspection, however, Epic contends that CONDEC is inconsistent in shape, angle, and size to EPICORE, and, to an expert's eye, contains many noticeable imperfections. Thus, Epic claims that CONDEC's structural performance is significantly inferior to EPICORE, by as much as twenty-five percent.

In this litigation, Epic claims that its purpose was to produce a steel deck product that was unique in the industry, in hopes that EPICORE's distinctive dovetail profile, albeit more expensive to produce, would be easy to identify and synonymous with the Epic company name. 7 Epic contends that, because of the close similarities in the dovetail profiles, a purchaser and user can easily mistake one product for the other, causing confusion in the marketplace. Epic filed suit, claiming trade dress infringement. Based upon a finding of fact that EPICORE's dovetail configuration was primarily non-functional, an element essential to a finding of infringement liability, the magistrate judge awarded Epic damages of $412,131 8 plus costs and permanent injunctive relief. This appeal follows.

II. ISSUE ON APPEAL

In concluding that Epic prevailed on its claim of trade dress infringement under § 43(a) of the Lanham Act, did the magistrate judge clearly err in finding that the dovetail configuration of EPICORE's steel decking profile was primarily non-functional?

III. STANDARD OF REVIEW

The validity of Epic's claim of protectable trade dress under the Lanham Act is a mixed question of law and fact. To determine whether trade dress has been infringed is a question of law subject to de novo review. United States v. Miller, 71 F.3d 813, 816 (11th Cir.1996). The issue of functionality is a question of fact. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 982 (11th Cir.1983). The magistrate judge's conclusion that the EPICORE dovetail profile trade dress is primarily non-functional is subject to a clearly erroneous standard of review. See AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1540 (11th Cir.1986).

IV. DISCUSSION

Section 43(a) of the Lanham Act 9 creates a federal cause of action for trade dress infringement. AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir.1986). Trade dress is defined as "the total image of a product ... [that] may include features such as size, shape, color or color combinations, textures, graphics, or even particular sales techniques." John H. Harland Co., 711 F.2d at 980, citing Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 831 (11th Cir.1982). While the classic trade dress infringement action involved the packaging or labeling of goods, the design of the product itself--its configuration--may constitute protectable trade dress under § 43(a) of the Lanham Act. Id. In 1976, the Eighth Circuit established a precedent for the protection of configurations. Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210 (8th Cir.), cert. denied, 429 U.S. 861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976). Fruehauf found the unique exterior design (twin hopper bottomed) of a grain semi-truck trailer body to be protectable trade dress. See also LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71 (2d Cir.1985). A feature of a product can also be protectable trade dress. C. McKenney & G. Long, Federal Unfair Competition: Lanham Act § 43(a) § 5.01 (1994).

In order to prevail on a claim for trade dress infringement under § 43(a), a plaintiff must prove three elements: (1) that the trade dress of the two products is confusingly similar; (2) that the features of the trade dress are primarily non-functional; and (3) that the trade dress is inherently distinctive or has acquired secondary meaning. 10 Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d 854, 857 (11th Cir.1983); John H. Harland Co., 711 F.2d at 980; AmBrit, 812 F.2d at 1535.

Here the magistrate judge found that Epic established 11 all three elements of it claim and concluded that Condec had infringed upon Epic's trade dress. On appeal, Condec contends that the magistrate judge clearly erred in her conclusion with respect only to the second element, i.e., non-functionality.

A product's features are protectible as trade dress if they are primarily non-functional. See generally Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 426-30 (5th Cir.1984) (discussing the distinction between features that are functional and those that are not). "The line between functionality and non-functionality is not ... brightly drawn in every case." Fruehauf, 536 F.2d at 1218. "The issue of functionality has been consistently treated as a question of fact." John H. Harland Co., 711 F.2d at 982, citing Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769 (9th Cir.1981).

Condec argues that the question of whether Epic's trade dress can be properly characterized as primarily non-functional is the threshold question in any § 43(a) case as, if this question is answered in the negative, the remaining two elements drop away, cf. In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1335 (C.C.P.A.1982), and the trade dress will simply be ineligible for protection. AmBrit, 812 F.2d at 1538. Condec does not appeal the magistrate judge's finding that the two other elements were present here. Therefore, under the facts of this particular case, non-functionality is the only issue. However, as all three elements are necessary for a finding of trade dress infringement, any one could be characterized as threshold.

The only question before us, therefore, is whether the record reflects that the trade dress of EPICORE is primarily non-functional. If, as Condec contends, the dovetail features of Epic's EPICORE product are functional, then Condec was free to copy those dovetail features in the absence of any patent protection. John H. Harland Co., 711 F.2d at 982 (citations omitted). If, however, Condec copied dovetail features of Epic's trade dress that are primarily nonfunctional, then Condec is liable for trade dress infringement under § 43(a). Id. 12

There is no bright line test for functionality. See id. at 983, citing Fruehauf, 536 F.2d at 1218. The Supreme Court has characterized a functional feature as one that "is essential to the use or purpose of the article or [one that] affects the cost or quality of the...

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