Ashley Furniture Indus. v. Sangiacomon Limited

Decision Date18 May 1999
Docket NumberCA-97-309-2,No. 98-2228,BARGAGLI-STOFF,D,98-2228
Citation187 F.3d 363
Parties(4th Cir. 1999) ASHLEY FURNITURE INDUSTRIES, INCORPORATED, A Wisconsin corporation, Plaintiff-Appellant, v. SANGIACOMO N. A. LIMITED, a New Jersey Corporation; CARLOefendants-Appellees. DREXEL HERITAGE FURNITURE COMPANY, Amicus Curiae. (). . Argued:
CourtU.S. Court of Appeals — Fourth Circuit

Appeal from the United States District Court for the Middle District of North Carolina, at Greensboro.

Frank W. Bullock, Jr. Chief District Judge.

[Copyrighted Material Omitted]

[Copyrighted Material Omitted] COUNSEL ARGUED: D. David Hill, MCANDREWS, HELD & MALLOY, LTD., Chicago, Illinois, for Appellant. Gilbert Julian Andia, Jr., RHODES, COATS & BENNETT, L.L.P., Greensboro, North Carolina, for Appellees. ON BRIEF: John J. Held, Thomas J. Wimbiscus, MCANDREWS, HELD & MALLOY, LTD., Chicago, Illinois, for Appellant. C. Robert Rhodes, James L. Lester, RHODES, COATS & BENNETT, L.L.P., Greensboro, North Carolina, for Appellees. Stephen M. Trattner, John J. Dabney, TRATTNER & ASSOCIATES, Washington, D.C., for Amicus Curiae.

Before MICHAEL, MOTZ, and KING, Circuit Judges.

Reversed and remanded by published opinion. Judge Motz wrote the opinion, in which Judge Michael and Judge King joined.

OPINION

DIANA GRIBBON MOTZ, Circuit Judge:

This case requires us to determine under what circumstances the configuration of a product can constitute inherently distinctive trade dress that is protectable under federal law. Because we conclude that a product's configuration qualifies as inherently distinctive trade dress if it is capable of functioning as a designator of an individual source of the product, we reverse the contrary ruling of the district court and remand for further proceedings.

I.

Ashley Furniture Industries, Inc., and SanGiacomo N.A. Ltd. manufacture home furniture. In this action, Ashley alleges that SanGiacomo copied the design of one of Ashley's bedroom suites, in violation of federal trade dress law and an oral contract between the parties.

Both companies market furniture in the mid-level price range and sell numerous lines of furniture nationwide. Between them, for example, the two companies produce over thirty different bedroom suites. Ashley and SanGiacomo sell their furniture to retailers, who display the furniture of various manufacturers and fill consumers' orders either from inventory or by ordering from the wholesaler.

Generally, those seeking to buy this sort of furniture cannot determine the manufacturer of a piece or set of furniture simply by looking at it. Manufacturers in this market do not carve or emboss their names or trademarks on the exterior of their furniture; instead they rely on hang tags and emblems inside drawers to identify their goods. Often, retailers do not identify the manufacturer or the name of the design to the consumer, refusing even to use the hang tags. Retailers provide pictures of the furniture they offer in flyers, newspapers, and on television, but again these advertisements may not include any reference to the manufacturer.

Ashley and SanGiacomo aggressively compete for customers, and their rivalry has previously led to litigation. In that action, filed in 1993, the parties' roles were reversed: SanGiacomo sued Ashley charging that it had infringed the trade dress of SanGiacomo's bedroom furniture and seeking a declaratory judgment that a design patent obtained by Ashley was invalid as a matter of law. The parties settled the claims during a one-on-one, closed-door negotiation between Carlo Bargagli-Stoffi, the chief executive of SanGiacomo, and Ronald Wanek, the chairman and chief executive of Ashley. Wanek and Bargagli-Stoffi agreed that both sides would walk away from the suit, and that neither company would, in the future, copy the other's furniture designs. Bargagli-Stoffi characterizes this deal as a "gentlemen's agreement" that they would not make any "Polaroid copies" of the other's designs. Although the parties then entered into a written settlement agreement drawn up by counsel, that formal agreement contains no reference to any mutual covenant not to copy.

Approximately one year after that settlement, in the fall of 1995, Ashley introduced a neoclassical bedroom suite under the trade name "Sommerset." The suite consists of a headboard, two night stands, an armoire, and a dresser with a mirror. The design of the Sommerset suite combines a "modern" high-gloss polyester look and feel with "classical" elements including a finish that suggests marble or travertine, fluted columns, arches, and entablatures.

According to Ashley's witnesses, the design and overall appearance of the Sommerset suite were unique and unlike any other bedroom furniture ever sold. For example, one Ashley industry expert, a retired home furniture retailer with 25 years of experience, explained:

Based on my experience, the common high gloss polyester finish in all the pieces of the Sommerset suite, in either the Carmelstone or lighter Goatskin finish, combined with the off white moldings and classic columns and flutings, provide a unique and unusual appearance for the Ashley Sommerset bedroom suite. The combination of features provides both a traditional and contemporary appearance. Although these individual features have been used in other bedroom suites, I do not recall seeing the combination of such features in a single bedroom suite. Therefore, the Ashley Sommerset has a unique appearance in the furniture industry . . . [that] distinguishes it from other bedroom suites in either the contemporary or the traditional furniture markets.

Another expert opined that "the overall appearance of Ashley's Sommerset bedroom suite is not a common design in the bedroom furniture market" but rather is "different and distinct from every other bedroom suite on the market or that had previously been on the market" in his 17-year retail home furniture experience. SanGiacomo offered no contradictory evidence.

Retail sales of the Sommerset suite began in March 1996, and it quickly became one of Ashley's best-selling bedroom designs.

In December 1996 or January 1997, SanGiacomo began selling a line of bedroom furniture under the name "La Dolce Vita." This bedroom set, like the Sommerset suite, consists of a headboard, two night stands, an armoire, and a dresser with a mirror. Also like Ashley's Sommerset, SanGiacomo's La Dolce Vita includes a high-gloss marble-like finish, fluted columns, arches, and entablatures. The entire Sommerset suite retails for approximately $2,500; the La Dolce Vita suite retails for approximately $1,800. Ashley asserts that the materials and craftsmanship used in making SanGiacomo's La Dolce Vita furniture are far inferior to those used in making its own Sommerset furniture. In the months that followed introduction of the La Dolce Vita collection, it displaced sales of Ashley's Sommerset suite at many retailers.

Ashley maintains that SanGiacomo's marketing of the La Dolce Vita design infringes upon its rights in the Sommerset design. Accordingly, it filed this action asserting a violation of federal trade dress law, breach of the parties' alleged oral agreement not to copy, and other state law claims. After discovery, Ashley moved for summary judgment on its breach of contract claim and on the issue of whether SanGiacomo copied the Sommerset design. SanGiacomo, in turn, moved for summary judgment on Ashley's trade dress claim. The district court denied Ashley's motion and granted SanGiacomo's. Ashley appeals, asserting that summary judgment should not have been granted on either the trade dress or contract claim.

II.

The trade dress of a product consists of its "total image and overall appearance," including its "size, shape, color or color combinations, texture, graphics, or even particular sales techniques." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992) (quoting district court instruction); Tools USA & Equip. Co. v. Champ Frame Straightening Equip., Inc., 87 F.3d 654, 657 (4th Cir. 1996) (quoting Two Pesos).

In addition to protecting registered trademarks, the Lanham Act protects unregistered marks and trade dress. Specifically, § 43 of the Lanham Act provides that

[a]ny person who, on or in connection with any goods or services . . . uses in commerce any word, term, name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin . . . of his or her goods . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C.A. § 1125(a)(West 1998).

The Supreme Court has explained that "[p]rotection of trade dress, no less than of trademarks, serves the Act's purpose." Two Pesos, 505 U.S. at 774. That purpose is two-fold: § 43(a) seeks (1) "to secure to the owner of the mark the goodwill of his business" and (2) "to protect the ability of consumers to distinguish among competing producers." Id. (quoting Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985)).

Thus, § 43 does not prohibit copying per se. Rather, the statute only prohibits a copy that can be passed off as the product of the originator, thereby confusing the consumer and interfering with the originator's rights in the goodwill of its business. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 157 (1989) (citing Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299, 301 (2d Cir. 1917) (Hand, J.)). By prohibiting copying just in this narrow class of circumstances, the statute protects the substantial public interest in free imitation. "[I]mitation is the life blood of competition" and only the ready "availability of substantially equivalent units . . . yield[s] the fair price society" seeks....

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