Home Builders Assoc. of Greater St. Louis v. L & L Exhibition Mgt, Inc.

• Decision Date: 11 May 2000
• Docket Number: No. 99-3609,99-3609
• Parties: (8th Cir. 2000) HOME BUILDERS ASSOCIATION OF GREATER ST. LOUIS, PLAINTIFF - APPELLEE, v. L & L EXHIBITION MANAGEMENT, INC., DEFENDANT - APPELLANT. Submitted:
• Court: U.S. Court of Appeals — Eighth Circuit

Page 944

226 F.3d 944 (8th Cir. 2000)

HOME BUILDERS ASSOCIATION OF GREATER ST. LOUIS, PLAINTIFF - APPELLEE, v. L & L EXHIBITION MANAGEMENT, INC., DEFENDANT - APPELLANT.

No. 99-3609

UNITED STATES COURT OF APPEALS FOR THE EIGHTH CIRCUIT

Submitted: May 11, 2000

Filed: September 12, 2000

Appeal from the United States District Court for the Eastern District of Missouri. [Copyrighted Material Omitted] Before Bowman, Floyd R. Gibson, ¹ and Loken, Circuit Judges.

Loken, Circuit Judge.

L&L Exhibition Management, Inc. ("L&L"), appeals the district court ² judgment that L&L violated § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), by competing unfairly with the Home Builders Association of Greater St. Louis ("HBA") in marketing and presenting home and garden shows in St. Louis. We affirm.

I. Background

HBA is a nonprofit organization representing the home-building industry in metropolitan St. Louis. HBA members build homes; associate members supply goods and services to home builders. HBA has sponsored home and garden shows in the greater St. Louis area for more than forty years. Since 1981, HBA has held two shows each year, one in the spring called "The St. Louis Builders Home and Garden Show," the other in the fall called "The St. Louis Builders Home and Remodeling Show." The HBA shows are held at the St. Louis Convention Center. The spring show, the largest of its kind in the United States, uses up to 419,000 square feet for more than 500 exhibits. The 1998 spring show drew 60,000 visitors.

L&L is a recently-started Minnesota company that promotes home shows across the country. In 1994, 1995, and 1996, L&L started its first four shows in Minnesota, Colorado, and Indiana. In May 1997, after extensive market research, L&L sponsored its first home show in St. Louis. As it has in other markets, L&L sought to piggyback on the success of the well-established HBA shows. L&L called its show "The Home Improvement & Building Show," a name quite similar to the name of HBA's spring show. L&L marketed its new show as "The St. Louis Home Show," or simply "The Home Show," names that HBA had used in the past and that St. Louis consumers had come to associate with HBA shows. Like the HBA shows, L&L's show was held at the Convention Center, and its advertising suggested it would be a large show. However, by HBA standards, the 1997 L&L show was small, using 80,000 square feet for less than 100 exhibits.

Responding to complaints from visitors who attended L&L's first show thinking it was the more substantial HBA event, Convention Center officials told L&L that advertising for any future shows would have to identify L&L as the sponsor to prevent public confusion. L&L promoted two more St. Louis shows in January and May 1998. Advertising for these shows identified L&L as the event's sponsor, but only in small print in the written ads, and once very quickly at the end of the television and radio ads. Some visitors to the January 1998 show testified that they attended under the mistaken belief it was an HBA event.

HBA filed this complaint in September 1997, alleging unfair competition and trade dress infringement in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and Missouri common law. After a four-day trial, the district court found that HBA's home shows have acquired secondary meaning in the St. Louis market, that L&L's advertising and promotion of its competing shows have confused consumers and building industry exhibitors, and that L&L intentionally created this confusion, as it has done in entering other metropolitan markets, "to trade on the name and goodwill of the pre-existing and well-established show." Based upon these findings, the district court concluded that L&L had violated § 43(a) by engaging in unfair competition. The court entered an injunction ordering L&L (a) to market its St. Louis shows under their full and official names; (b) to print each word of the full name in the same font style and size in all print advertising ; (c) not to market any show as "The Home Show" or "The St. Louis Home Show"; (d) to identify L&L as the show's sponsor in all advertising; and (e) to include the following disclaimer in all advertising: "This is not the St. Louis Home and Garden Show or the St. Louis Builder's Home & Remodeling Show sponsored by the Home Builder's Association of Greater St. Louis." The court further awarded HBA $25,000 in damages plus costs and a reasonable attorney's fee. This appeal followed.

II. Discussion

Section 43(a) is a remedial provision in the federal Trademark Act of 1946, known as the Lanham Act. Section 43(a) is broadly worded, providing in relevant part:

(1) Any person who . . . uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any . . . false or misleading representation of fact, which

(A) is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her . . . commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's . . . commercial activities,

shall be liable [to] . . . any person . . . likely to be damaged by such act.

15 U.S.C. § 1125(a). The statute has been broadly construed by the federal courts as "making certain types of unfair competition federal statutory torts." Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 863 (1982) (quotation omitted); see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 776-84 (1992) (Stevens, J., concurring). In amending the Lanham Act, Congress has expressed its satisfaction with this judicial approach to construing § 43(a). See SEN. REP. NO. 100-515, at 40-41 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5603-04. ³

Though § 43(a) did not refer to trademarks, service marks, or trade dress until a 1999 amendment, see footnote 3 infra, it is settled that the statute provides a remedy to persons whose trade dress and unregistered marks are infringed or confusingly imitated by others. See Two Pesos, 505 U.S. at 768, 773. Trademarks and service marks are defined in the Lanham Act. For example, a service mark is "any word [or] name . . . used by a person . . . to identify and distinguish [its] services . . . and to indicate the source of the services." 15 U.S.C. § 1127. Trade dress, on the other hand, is a judicially created term. "The trade dress of a product is the total image of a product, the overall impression created, not the individual features." Woodsmith Pub. Co. v. Meredith Corp., 904 F.2d 1244, 1247 (8th Cir. 1990). The two are equally protected under § 43(a), see Two Pesos, 505 U.S. at 773, but the parameters of the term trade dress, being entirely non-statutory, can be harder to discern.

L&L's principal argument on appeal is that the trade dress of HBA's home shows is not entitled to protection from unfair competition under § 43(a) of the Lanham Act because that trade dress is entirely "functional." In our view, this argument misdirects the relevant inquiry in two important respects. First, this is not truly a trade dress case, and therefore second, the doctrine of functionality is not seriously at issue.

1. Trade Dress. HBA sent the parties down this wrong path when it alleged, in Count II of its complaint, that L&L has infringed the trade dress of HBA's St. Louis home shows. As the above quote from Woodsmith suggests, trade dress refers to the tangible features of a product or its packaging that create a distinctive image, like the decor of the restaurants at issue in Two Pesos. No doubt a trade show sponsor could identify its show to the public by repeatedly using tangible features that provide a distinct image, such as the shape and style of exhibitor booths. But here, the only trade dress to which HBA refers (other than the show names, which we will discuss in detail in a moment) are the location of the shows and the times of year in which they are held. These are not items of trade dress. Though an adroit imitator may of course use similarity of time and location to increase public confusion as to source, the district court properly rejected HBA's attempt to achieve, through its trade dress allegations, a monopolistic right to put on shows in the Convention Center at particular times of the year. Thus, properly viewed, this is not a trade dress case.

2. Functionality. It has long been a defense to a claim of trademark or trade dress infringement that the mark or dress is a "functional" feature of the product. ⁴ The functionality doctrine serves as a buffer between patent law and trademark law by preventing a competitor from monopolizing a useful product feature in the guise of identifying itself as the source of the product. See generally W.T. Rogers Co. v. Keene, 778 F.2d 334, 338-40 (7th Cir. 1985). As the Supreme Court explained in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 (1995):

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, after which competitors are free to use the innovation.

"In general terms, 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." Inwood Labs., 456 U.S. at 850 n.10. In other words, a feature is functional "if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Qualitex, 514 U.S. at 165. "The fact that the feature at issue serves some function is not enough; to be functional in the trade dress sense, the feature must be necessary to afford a competitor the means to compete effectively."...