Asics Corp. v. Target Corp., Civ. 03-3486(RHK/AJB).
| Decision Date | 04 August 2003 |
| Docket Number | No. Civ. 03-3486(RHK/AJB).,Civ. 03-3486(RHK/AJB). |
| Citation | 282 F.Supp.2d 1020 |
| Parties | ASICS CORPORATION and ASICS Tiger Corporation, Plaintiffs, v. TARGET CORPORATION, Defendant. |
| Court | U.S. District Court — District of Minnesota |
Michael R. Friscia and David J. Sprong, Wolff & Samson P.C., West Orange, New Jersey; R.J. Zayed and Joel D. Leviton Fish and Richardson P.C., P.A., Minneapolis, Minnesota; Heidi E. Harvey, Fish & Richardson P.C., Boston, Massachusetts, for Plaintiffs.
Tim F. Williams, Wellington M. Manning, Jr., and Timothy D. St. Clair, Dority & Manning, P.A., Greenville, South Carolina; James R. Steffen and Lianne C. Knych, Faegre & Benson, Minneapolis, Minnesota, for Defendant.
This matter comes before the Court on Plaintiffs' Motion for a Preliminary Injunction. Plaintiffs' ASICS Corporation and ASICS Tiger Corporation (collectively, "ASICS") have sued Defendant Target Corporation ("Target") alleging that Target's PROSPIRIT brand "Wyat" running shoes infringe ASICS' "stripe design" trademark. ASICS has moved for a preliminary injunction asserting that "the continued sale of the infringing shoes will cause further confusion in the marketplace and cause further irreparable harm to ASICS' reputation, business, and goodwill." (Pls.' Mem. Supp. Prelim. Inj. at 2.) For the reasons set down below, the Court will deny the Motion.
ASICS is in the business of designing, manufacturing, and marketing athletic and fashion footwear, related apparel, and accessory products. (Bourne Decl. ¶ 5.) It identifies its shoes with a stripe design running along the side ("the Stripe Design"). The Stripe Design consists of
two lateral strip members ... substantially parallel to one another and two longitudinal strip members ... substantially parallel to one another, the pairs of lateral and longitudinal strip members crossing each other to form cross-points in a center of the side portion of the shoe between its opposite ends and generally centrally between [the eyelets and sole].
(Williams Decl. Ex 1 (U.S. Patent No. 5,553,279) at col. 3, 11. 25-48.) In 1972, ASICS obtained U.S. Trademark Registration No. 937,464 for the Stripe Design on many types of shoes.1 (Bourne Decl. ¶ 11.) The Stripe Design was first used in commerce in 1966. (Id.) Since that time, ASICS and its predecessors have used it on virtually all their footwear products. (Id. ¶ 7.)
Since 1990, ASICS has sold approximately 65 million pairs of athletic shoes in the United States bearing the Stripe Design. (Id. ¶ 14.) ASICS' total net footwear revenue during that time has been in excess of $2 billion. (Id. ¶ 14.) ASICS shoes are generally considered to be of high quality (id. ¶ 6) and its running shoes range in price from $65 to $110. (Id. at EX. 34.)
In April 2003, Target stores nationwide began selling a shoe called the "Wyat" as one of several low-cost athletic shoes offered for sale at Target stores under Target's PROSPIRIT brand. (Koller Decl. ¶¶ 4, 9.) The "Wyat" shoe has breathable side panels crossed by one wide horizontal support (displaying two colored stripes) and two slanting vertical supports (each also displaying colored stripes). (Id. ¶ 6.) The full retail price of the "Wyat" is $24.99. (Id. ¶ 3.) Target does not sell any ASICS footwear or any footwear under other brands marketed as high-performance footwear, such as Nike, New Balance, or Reebok. (Id.)
Whether preliminary injunctive relief should be granted depends on an evaluation of the following factors: (1) the threat of irreparable harm to the movant; (2) the state of the balance between this harm and the injury that granting the injunctive relief will inflict on other parties litigant; (3) the probability that the movant will succeed on the merits; and (4) the public interest. See Dataphase Sys., Inc. v. C.L. Sys., Inc., 640 F.2d 109, 113 (8th Cir.1981). "When applying the Dataphase factors, as they have come to be called, a court should flexibly weigh the case's particular circumstances to determine whether the balance of equities so favors the movant that justice requires the court to intervene." Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 601 (8th Cir.1999) (internal quotation marks and citations omitted). The party requesting preliminary injunctive relief bears the "complete burden" of proving all the factors listed above. Gelco Corp. v. Coniston Partners, 811 F.2d 414, 418 (8th Cir.1987).
The likelihood of success on the merits is not, alone, determinative. See Dataphase, 640 F.2d at 113. Rather, a court must consider the particular circumstances of each case, remembering that, "[a]t base, the question is whether the balance of equities so favors the movant that justice requires the court to intervene to preserve the status quo until the merits are determined." Id. If the threat of irreparable harm to the movant is slight when compared to the likely injury to the other party, the movant carries a particularly heavy burden of showing a likelihood of success on the merits. See Dataphase, 640 F.2d at 113.
ASICS has the burden of demonstrating that it has a likelihood of success on the merits. It argues that the marked similarity between the Stripe Design and a similar stripe pattern on the side of Target's "Wyat" shoe makes it likely that the public will be confused as to the sponsorship, affiliation, and source of Target's shoe. Conversely, Target asserts that ASICS' trademarks do not cover the stripes on the side of Target's shoe. Moreover, it contends that the Stripe Design cannot be used as a trademark because it is functional, and therefore invalid and unenforceable. The Court will address the functionality argument first.
The functionality doctrine prevents a producer from using trademark law to inhibit competition by controlling a useful product feature in perpetuity. "It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, after which competitors are free to use the invention." Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (emphasis added) (internal citation omitted). Generally, "`a product feature is functional,' and cannot serve as a trademark, `if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.'" TrafFix Devices v. Marketing Displays, 532 U.S. 23, 32, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001) (quoting Qualitex, 514 U.S. at 165, 115 S.Ct. 1300, quoting, in turn, Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982)); see also Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 868 (8th Cir.1994). While a functional feature is sometimes described as one the "exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage," Qualitex, 514 U.S. at 165, 115 S.Ct. 1300, "there is no need to ... consider if there is a competitive necessity for the feature" where the design is essential to the article's use or affects its cost or quality, TrafFix, 532 U.S. at 32, 121 S.Ct. 1255.
Target asserts that the Stripe Design is functional because ASICS (1) has claimed the Stripe Design as an element in two recent utility patents, and (2) asserted the functionality of the Stripe Design in its marketing materials. ASICS counters that the Stripe Design is not an element claimed in its utility patents, and that if the primary purpose of the Stripe Design was once functional, it no longer is. The Court will address those arguments in turn.
"A utility patent is strong evidence that the features therein claimed are functional." TrafFix, 532 U.S. at 29, 121 S.Ct. 1255; see also J. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition 7:89 (2003) [hereinafter "McCarthy on Trademarks"] ( that the Court, for emphasis, repeated the phrase "strong evidence" four times and at a fifth point used the similar phrase "strong evidentiary inference of functionality"). The Court must examine a utility patent "closely to ensure that the disclosure of the configuration is primarily functional and not merely incidental." Disc Golf Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir.1998). A utility patent is of "vital significance" to the functionality inquiry. TrafFix, 532 U.S. at 29, 121 S.Ct. 1255.
Here, Target has presented two ASICS utility patents that it asserts include the Stripe Design among the elements claimed: U.S. Patent 5,533,279 ("the '279 patent"), and U.S. Patent 5,430,959 ("the '959 patent"). ASICS flatly denies that the Stripe Design is among the elements claimed.
The '279 patent, for which ASICS is the assignee, claims a shoe having a "skeleton-shaped outer carapace."2 U.S. Patent No. 5,533,279, col. 6, 1. 43. Claim 1 of the patent claims the shoe, where the "skeleton-shaped outer carapace" comprises:
a sole;
a hard and skeleton-shaped outer carapace portion fixed onto said sole for holding and protecting a foot, said outer carapace portion unitedly having a toe reinforcement portion, a heel reinforcement portion, an eyelet portion, a longitudinal reinforcement portion connecting said sole with said eyelet portion, and a lateral reinforcement portion connecting said sole with said heel reinforcement portion in such manner that a cross-point thereof lies at a substantial center along a side portion of said shoe between opposite ends thereof thereby to form a skeleton in association with said toe reinforcement portion, said heel reinforcement portion and said skeleton defining at least four holes around said cross-point; and
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