I.P. Lund Trading Aps v. Kohler Co.

• Decision Date: 06 October 2000
• Docket Number: No. CIV. A. 97-10427-NG.,CIV. A. 97-10427-NG.
• Citation: 118 F.Supp.2d 92
• Parties: I.P. LUND TRADING ApS and Kroin Inc., Plaintiffs, v. KOHLER CO. and Robern, Inc., Defendants.
• Court: U.S. District Court — District of Massachusetts

118 F.Supp.2d 92

I.P. LUND TRADING ApS and Kroin Inc., Plaintiffs, v. KOHLER CO. and Robern, Inc., Defendants.

No. CIV. A. 97-10427-NG.

United States District Court, D. Massachusetts.

October 6, 2000.

Cornelius J. Moynihan, Jr., Steven N. Fuller, David H Gibbs, Jason C. Kravitz, Nixon Peabody, Allison E. Picott, Jason Kravitz, Nixon Peabody, Boston, MA, for Plaintiffs.

Hugh Latimer, Karyn Ablin, Wiley, Rein & Fielding, Washington, DC, Stephen H. Lash, Jager, Smith, Stetler & Arata, Boston, MA, for Defendants.

MEMORANDUM AND ORDER

GERTNER, District Judge.

I. INTRODUCTION

This case goes to the heart of the question: What is the scope of trade dress protection that a product design may be afforded under the Lanham Act?¹ I.P. Lund Trading ApS ("Lund") and Kroin Incorporated ("Kroin") seek protection for what courts often call a "product configuration," here a bathroom faucet known as the VOLA ("VOLA").² The VOLA was designed by a Danish inventor nearly thirty years ago. Lund has owned and marketed the product since its inception. Kroin is its exclusive distributor in the United States.

Defendant Kohler Company ("Kohler") designed a similar product called the Falling Water faucet ("Falling Water I"). Kohler and its subsidiary, Robern, Inc. ("Robern"), started selling the Falling Water I in February 1996.³

Lund initiated this action by seeking permanent injunctive relief and monetary damages against Kohler for: (1) infringement of its distinctive trade dress and unfair competition under 15 U.S.C. § 1125(a); (2) dilution of its famous trade dress under 15 U.S.C. § 1125(c); (3) dilution of trade dress under various state anti-dilution statutes; and, (4) unfair and deceptive trade practices under several state statutes. In a nutshell, Lund is seeking indefinite protection of its unpatented faucet design against copying and reproduction by its competitors.

Discovery is complete. Kohler moves for summary judgment on a multitude of grounds. Kohler's first motion for summary judgment argues that Lund has failed to produce evidence from which a jury could find that the VOLA design acquired "secondary meaning," and therefore, the design is not protectable as trade dress. In addition, Kohler filed three other motions for summary judgment based on: (1) the alleged functionality of the VOLA design, which Kohler argues, requires Lund to seek protection in a design patent, for a limited term, rather than trademark protection; (2) Lund's alleged failure to establish dilution of its design; and, (3) Lund's alleged failure to establish infringement and unfair competition under state law. The parties presented voluminous materials to the Court in support of their positions on summary judgment. On July 19, 2000, a hearing was held.

Having considered the entire record before me, I now conclude that there exists no genuine issue of material fact as to whether the VOLA has acquired secondary meaning; it has not. Thus, three of Kohler's motions for summary judgment, which hinge on that finding (for failure to establish secondary meaning, infringement, and dilution [docket ## 239, 241, and 243]) are GRANTED as to Counts I-VIII of Lund's Amended and Supplemental Complaint. As to Counts IX-XIII, the parties failed to adequately brief Lund's non-trademark theories of liability brought under state unfair and deceptive trade practices statutes. The parties have until November 2, 2000, to file supplementary briefs on those claims. Kohler's Motion for Summary Judgment of Functionality [docket # 237] is DENIED. Lund's Motion to Exclude Testimony by Defendants' "Expert" Witnesses [docket # 230] and Motion to Compel [docket # 275] are MOOT.

II. BACKGROUND

A. Factual Context

Lund is a family-owned Danish corporation, established in 1873. It manufactures high-end kitchen and bathroom faucets, fixtures, and accessories. The VOLA faucet was designed by the distinguished architect Professor Arne Jacobsen ("Jacobsen") in 1968. It has won numerous design awards, including the Danish ID prize for industrial design innovation, and the Danish Classic ID prize (awarded to products whose designs have survived and thrived for twenty-five years without significant design modification).

The VOLA faucet design has remained virtually unchanged throughout the past thirty years. Since 1969, the year the VOLA products were introduced, Lund has sold more than 600,000 VOLA faucets throughout the world. The VOLA line of sanitary fittings is Lund's principal source of revenue.

Co-plaintiff Kroin is the sole American distributor of the VOLA. Kroin's owner, Larry Kroin, was Lund's first American distributor, starting in 1976. Kroin has since sold thousands of VOLA faucets, amounting to approximately $16 million worth of sales. Between 1988 and 1997, Kroin spent more than $684,000 to advertise the VOLA line of sanitary fittings.⁴

Lund has promoted the VOLA faucet across the world, spending more than $10 million since 1980. Most of the advertisements for the VOLA are print advertisements that appear in prestigious design magazines, including Architectural Record, Interior Design, and Interiors. Hundreds of pictures of the VOLA have appeared as parts of photo spreads in these magazines, and other less specialized magazines, such as Better Homes and Gardens.

Kohler, based in Kohler, Wisconsin, is the largest plumbing fixtures supplier in the United States, with more than $1.5 billion worth of sales in 1996 alone. Kohler sells hundreds of different kitchen and bathroom sanitary fitting designs. On November 22, 1994, Kohler's Purchasing Manager, Jeffrey Klosterman, contacted Lund expressing Kohler's "interest[] in the possible purchase of this product [the VOLA] and potentially others that you may have ... for resale under our brand name in the United States." The letter also requested volume pricing and several product samples for testing "under United States regulations."

In January 1995, Kohler purchased from Lund eight VOLA 121C faucets "to begin qualification testing." According to Kohler, the company intended to introduce (in September 1995) their new "Vessels" basin, a "high-end sink with no holes (as compared to the normal three-hole sink)."⁵ The company sought an accompanying faucet for its product. While the VOLA was compatible with the Vessels sink, Kohler claims that an April 1995 test report showed that the VOLA faucets did not comply with federal and state legal "requirements." Specifically, Kohler alleges that the VOLA did not meet requirements concerning water flow capacity and resistance to hydrostatic pressure.⁶ Lund disputes these findings, as well as the significance of any such federal, state, or local "requirements."

Robern, before it became a Kohler subsidiary, designed a bathroom sink module which was compatible with the VOLA, known as the MTS Sink Module. Robern sold these modules with VOLA faucets purchased from Kroin. Between January 1993 and September 1995, Robern purchased 218 VOLA faucets directly from Kroin.

In August 1995, Kroin accused Robern of selling VOLA faucets to Kroin customers for prices lower than what Kroin was charging. Kroin then refused to sell Robern any more VOLA faucets. Shortly thereafter, Kohler acquired Robern. In August 1996, Robern announced that it would ship MTS Sink Modules with Kohler's Falling Water I faucets, which are also compatible with no-hole, freestanding vessel sinks. After Robern ceased sales of VOLA faucets, however, Robern distributed at least one sales brochure depicting the VOLA faucet alongside the Falling Water I and other lavatory accessories.

The Falling Water I faucet was designed by Erich Slothower, a Kohler industrial designer. He testified (at an earlier hearing on preliminary injunctive relief) that while he was aware of the VOLA, and even looked at it carefully before designing the Falling Water I, he consciously tried to make his faucet different in appearance than the VOLA. However, the Falling Water I shares several features of the VOLA design. Similarities between the two faucets include: (1) both are single-control, wall-mounted faucets; (2) both control handles utilize a thin cylindrical lever to adjust water temperature and volume; (3) both faucets' spouts and aerator holders are of uniform diameter; (4) both spouts bend downward at right angles softened by a curve; and, (5) both faucets offer spouts in almost exactly the same three lengths.

There are also differences. First, the Falling Water I has a tapered and rounded bonnet on the handle, and when the lever on the bonnet is operated to control the water temperature and volume, the entire bonnet moves with it. By contrast, the VOLA handle is shorter; it is a completely uniform cylinder, not tapered; and only the lever moves to control volume, while the lever and cylinder turn clockwise or counter-clockwise to control temperature. Second, the Falling Water I's lever is rounded on the top, while the VOLA's lever is flat. Third, the mounting end of the Falling Water I spout also has a tapered, rounded bonnet, mirroring that of the handle and lever, while the VOLA spout has no bonnet.

After this lawsuit was initiated by Lund, Kohler introduced a re-designed Falling Water faucet ("Falling Water II") in June 1998. Lund concedes that the re-designed Falling Water II does not infringe its VOLA faucet design. The Falling Water II now significantly outsells both the Falling Water I and the VOLA in the United States.

Lund claims the sale of the Falling Water I faucet, and its advertisement in catalogues which also depict the VOLA faucet (indeed, side-by-side), causes confusion among retailers and customers, and dilutes the brand-identity of the VOLA faucet, all in violation of 15 U.S.C. §§ 1125(a) and (c). Kohler argues inter alia, that the VOLA faucet design is not entitled to trademark protection under 15 U.S.C. §§ 1125(a) and (c) because it is not "distinctive" within the meaning of that statute.

To succeed on its...