Disc Golf Ass'n, Inc. v. Champion Discs, Inc.

• Decision Date: 15 September 1998
• Docket Number: No. 97-16430,97-16430
• Citation: 158 F.3d 1002,48 USPQ2d 1132
• Parties: , 98 Cal. Daily Op. Serv. 7185 DISC GOLF ASSOCIATION, INC., Plaintiff-Appellant, v. CHAMPION DISCS, INC., a California Corporation, Defendant-Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1002

158 F.3d 1002

48 U.S.P.Q.2d 1132, 98 Cal. Daily Op. Serv. 7185

DISC GOLF ASSOCIATION, INC., Plaintiff-Appellant, v. CHAMPION DISCS, INC., a California Corporation, Defendant-Appellee.

No. 97-16430.

United States Court of Appeals Ninth Circuit.

Argued and Submitted Aug. 11, 1998.

Decided Sept. 15, 1998.

Daniel V. Thompson, Thompson & Howison, Dallas, Texas, for plaintiff-appellant.

John A. Rafter, Jr. (argued), Edward M. Jordan (on the brief), Lyon & Lyon, Los Angeles, California, for defendant-appellee.

Appeal from the United States District Court for the Northern District of California; James Ware, District Judge, Presiding. D.C. No. CV 96-21046-JW.

Before: BRUNETTI, TASHIMA, and GRABER, Circuit Judges.

GRABER, Circuit Judge:

Disc Golf Association, Inc. (DGA), brought this action against Champion Discs, Inc. (Champion), alleging trademark and trade dress infringement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The district court granted summary judgment in favor of Champion on the ground that DGA's claimed trademark or trade dress, a parabolic chain design, is functional as a matter of law and, therefore, is not entitled to Lanham Act protection. ¹

DGA appeals, claiming two errors: (1) that the district court erred when it granted summary judgment in Champion's favor, and (2) that the district court abused its discretion when it awarded copying costs to Champion for 14,000 discovery documents. We hold that (1) the district court did not err when it granted summary judgment in Champion's favor because, on this record, the parabolic chain design as to which DGA claims trademark or trade dress protection is functional and, therefore, is not entitled to protection under section 43(a) of the Lanham Act; and (2) the district court abused its discretion when it awarded the copying costs to Champion, because Champion copied the documents after the district court already had granted summary judgment in its favor.

FACTS AND PRIOR PROCEEDINGS

DGA and Champion manufacture disc entrapment devices that are used in the game of disc golf. Disc golf is played like conventional "ball golf," but with flying discs, such as Frisbees, instead of clubs and golf balls. The devices manufactured by DGA and Champion serve as targets for the flying discs and constitute the "holes" on a disc golf course. A "hole" is completed when the target "catches" the disc, that is, when the disc hits the parabolic chain configuration and falls into a basket below.

Disc golf is played throughout the United States and abroad, both competitively and recreationally. Tournaments are commonplace. The Professional Disc Golf Association, founded in 1976, writes the rules governing how to play the game and establishes technical specifications for disc golf equipment, including targets.

In the mid-1970s, DGA's president, Edward Headrick, invented the DISC POLE HOLE(R), a disc golf target consisting of a central pole, a basket that surrounds the pole, and a set of chains that hangs above the basket. ² The upper ends of the chains are attached to a circular bracket that is affixed to the top of the pole; the chains' lower ends are attached to a collar that is mounted on the pole within the confines of the basket. Because the diameter of the circular bracket significantly exceeds the diameter of the collar below, the chains naturally hang in a parabolic shape. DGA obtained U.S. Patent No. 4,039,189 for the DISC POLE HOLE(R) in 1977 (Patent '189) and, as a result, became the dominant manufacturer of disc golf targets. In fact, DGA has supplied equipment to 395 of the 514 disc golf courses operating in the United States.

Patent '189 expired in 1994. A year later, in 1995, Champion began marketing the DISCATCHER PRO, a disc golf target that also uses a parabolic chain design. DGA filed this action to assert trademark or trade dress rights only in the parabolic chain design. As noted, the district court entered summary judgment in favor of Champion.

Thereafter, Champion submitted its Bill of Taxable Costs under N.D. Cal. Civ. Loc. R. 54-1. The cost bill included a charge of $5,161.88 for copying about 14,000 documents. The court clerk initially struck that charge from the cost bill, but the district court reinstated it and taxed DGA the full amount.

FUNCTIONALITY OF THE PARABOLIC CHAIN DESIGN

A. Standard of Review

We review de novo a grant of summary judgment. Warren v. City of Carlsbad, 58 F.3d 439, 441 (9th Cir.1995). Viewing the evidence in the light most favorable to the non-moving party, we must determine whether there are any genuine issues of material fact and whether the district court correctly applied the substantive law. Id.

B. Lanham Act Analysis

To recover for the infringement of a trademark or trade dress ³ under section 43(a) of the Lanham Act, ⁴ DGA had to prove that (1) the parabolic chain design is nonfunctional, (2) the design is inherently distinctive or acquired distinctiveness through a secondary meaning, and (3) there is a likelihood that the consuming public will confuse Champion's DISCATCHER PRO with DGA's product. See International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 823 (9th Cir.1993) (stating the elements of a trademark claim). The district court held that DGA had failed to present a triable Trademark or trade dress protection extends only to product features that are nonfunctional. A product feature is functional "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (internal quotation marks and citation omitted). This court has observed that "[f]unctional features of a product are features which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product." Rachel, 831 F.2d at 1506 (internal quotation marks and citation omitted).

issue of fact as to the first element. DGA argues that the trial court erred, because DGA presented sufficient evidence to create a question of fact on the issue of functionality. See Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir.1987) (holding that functionality is a question of fact, which the plaintiff bears the burden of proving).

The Supreme Court in Qualitex articulated the rationale underlying the requirement of nonfunctionality, which bears particular relevance to this case:

The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. 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, 35 U.S.C. §§ 154, 173, after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

514 U.S. at 164-65, 115 S.Ct. 1300. That is the basic rationale that Champion advances to support its argument for affirmance. It contends that, by claiming trademark or trade dress rights in the parabolic chain design, DGA is impermissibly attempting to extend its expired patent and to maintain monopoly control in perpetuity over the market for disc golf targets.

To determine whether a product feature is functional, we consider several factors: (1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture. International Jensen, 4 F.3d at 823; Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 516 (9th Cir.1989). No one factor is dispositive; all should be weighed collectively. International Jensen, 4 F.3d at 823.

Each of those factors considered separately and all of them considered together demonstrate that the parabolic chain configuration is functional. The record contains no material issue of fact that would permit a contrary conclusion.

(1) Utilitarian advantage

With respect to the factor of utilitarian advantage, the existence of an expired utility patent is weighty evidence of functionality, although that fact alone is not dispositive. See Clamp Mfg., 870 F.2d at 516-17 (holding that an expired utility patent provided strong evidence of functionality, but that the plaintiff had presented sufficient evidence to overcome it). A utility patent must be examined closely to ensure that the disclosure of the configuration is primarily functional and not merely incidental. J.T. McCarthy, McCarthy on Trademarks and Unfair Competition § 7:89, at 7-207 (4th ed.1998).

Notwithstanding Patent '189, DGA argues that issues of fact remain with respect to functionality, for four reasons. First, DGA asserts that Patent '189 does not expressly disclose the functional advantage of the parabolic chain design. DGA contends that the "gist of the invention was the provision of any energy absorbing structure over a basket" Second, DGA argues that there is no utilitarian advantage to its design, because a parabolic chain makes a "hole" harder to complete than does (for example) a straight chain configuration. Thus, DGA contends that the parabolic design actually provides a utilitarian disadvantage. In connection with this argument, DGA asserts that a product feature must provide a superior utilitarian advantage in order to be functional.

and that the use of the...