Keene Corp. v. Paraflex Industries, Inc.
| Decision Date | 06 August 1981 |
| Docket Number | No. 80-2242,80-2242 |
| Citation | 211 USPQ 201,653 F.2d 822 |
| Parties | KEENE CORPORATION, Appellant, v. PARAFLEX INDUSTRIES, INC., Sim-Kar Lighting Fixtures Co., Inc. |
| Court | U.S. Court of Appeals — Third Circuit |
Goldberg & Carlin, Newark, N. J., and Anderson, Russell, Kill & Olick, P. C., New York City, for appellant; Nicholas L. Coch (Argued), John E. Daniel, Philip R. Carlin, Newark, N. J., of counsel.
Scarpone & Edelson, P. A., Newark, N. J., for appellees; James A. Scarpone, Newark, N. J. (argued), of counsel.
Before HUNTER, SLOVITER and WISDOM, * Circuit Judges.
We must in this case consider the scope and meaning of the doctrine of aesthetic functionality pursuant to which the manufacturer of a product is deprived of the right to enjoin imitations of the product's design or configuration.
The facts are relatively straightforward. Keene Corporation (Keene), appellant, manufactures and markets a non-residential lighting fixture, the "Wall Cube", an outdoor wall-mounted luminaire. Luminaires of this type are intended to be mounted (typically 15 to 20 feet in the air) on the outside walls of commercial buildings, such as factories and apartment buildings, to illuminate the adjacent area. The design of the exterior housing of Keene's Wall Cube consists of two oblong right triangular solids, one being a bronze colored metal housing and the other being a slightly smaller glass lens. The two parts are joined along the plane opposite the right angle of each triangular solid to form an object approximating a rectangular solid. When mounted, the glass lens forms the bottom and front of the luminaire, while the metal housing forms the top and back. The design of the Wall Cube is not patented.
In 1979 appellee, Paraflex Industries, Inc. (Paraflex), began to market the housing of an outdoor wall-mounted luminaire which is nearly identical to and was admittedly copied from the exterior of the Keene Wall Cube. Paraflex imports the glass lens and metal housing manufactured for it in Taiwan and sells these parts to electrical manufacturers such as appellee Sim-Kar Lighting Fixture Co., Inc. who supply the electrical parts, and assemble and market the finished product under their own names. For convenience, the look-alike unit will be referred to as the Paraflex unit.
In this action Keene seeks to enjoin marketing of the Paraflex luminaire, alleging false representation of goods, common law trademark infringement and unfair competition under section 43(a) of the Lanham Trade-Mark Act, 15 U.S.C. § 1125(a) (1976) and New Jersey state law. 1 It is conceded that Paraflex copied Keene's Wall Cube, that the exteriors of the two products are virtually identical, and that the Keene unit had acquired a secondary meaning in that it had come to be recognized in the industry as a Keene product. To avoid confusion of source and to prevent palming off, the district court preliminarily and then permanently ordered Paraflex to affix to its luminaire a metal plate containing the statement that the fixture was "Made in Taiwan" for one of Paraflex's customers and that it was "Not a Product of Keene Corporation." The court refused to enter an order either preliminarily or permanently enjoining Paraflex from copying the design of the Keene unit, because the court concluded that there was a functional aspect to the design of the Keene luminaire and therefore its exclusive appropriation by Keene was precluded by the doctrine of aesthetic functionality.
Before turning to the specific findings in this case, it will be useful to review the rationale for and application of the doctrine of aesthetic functionality. One of the essential elements of the law of trademarks, even at common law where it was part of the law of unfair competition, was the principle that no legal protection would be available for products or features that were functional. See 1 J. McCarthy, Trademarks and Unfair Competition § 7.23 (1973); Note, Unfair Competition and the Doctrine of Functionality, 64 Colum.L.Rev. 544, 552 (1964). The purpose of the rule precluding trademark significance for functional features is to prevent the grant of a perpetual monopoly to features which cannot be patented. Sylvania Electric Products v. Dura Electric Lamp Co., 247 F.2d 730, 732 (3d Cir. 1957). If this area of the law were to be compartmentalized, one could ascribe to the patent laws protection of those utilitarian features which Congress has chosen to protect, and to the trademark law protection of fanciful or arbitrary features which have achieved recognition as indicia of origin. Products or features which have not qualified for patent protection but which are functional are in the public domain, and are fair game for imitation and copying. Our natural inclination to disapprove of such conduct must give way to the public policy favoring competition, even by slavish copying, of products not entitled to federal patent protection.
The focal question is whether certain features or products are functional, and hence not susceptible of exclusive appropriation. Where the feature is essential to the utility of the item, as was the blue dot on the Sylvania photographic flash-bulbs which served to indicate in the course of manufacture those bulbs which were defective and to indicate to the consumer those bulbs which later developed air leakage and were unsuitable for use, it is now well-established that the functionality prevents the acquisition of a trademark in that feature. See Sylvania Electric Products v. Dura Electric Lamp Co., supra. The concept of functionality has not been limited, however, to those features that are strictly utilitarian. A more expansive approach was taken in the Restatement (First) of Torts:
§ 742. Functional and Non-Functional Features.
A feature of goods is functional ... if it affects their purpose, action or performance, or the facility or economy of processing, handling or using them; it is non-functional if it does not have any of such effects.
Restatement of Torts § 742 (1938). 2 This expansive view of functionality is further reflected in the comment to that Restatement section where there is a reference to aesthetic functionality.
The doctrine of aesthetic functionality has been variously articulated and applied by those courts which have had occasion to consider it. The broadest scope to aesthetic functionality, which in turn permits the widest imitation, is illustrated by the Ninth Circuit's decision in Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952), where the court refused to enjoin copying of hotel china with distinctive designs. The court concluded that even though plaintiff may show that the china acquired a secondary meaning, the designs had become "functional". It stated, "If the particular feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or copyright." Id. at 343. 3 Some support for this view, which defines aesthetic functionality in terms of consumer acceptance, may be gleaned from the comment to the Restatement section. 4
The difficulty with accepting such a broad view of aesthetic functionality, which relates the doctrine to the commercial desirability of the feature at issue without consideration of its utilitarian function, is that it provides a disincentive for development of imaginative and attractive design. The more appealing the design, the less protection it would receive. As our ambience becomes more mechanized and banal, it would be unfortunate were we to discourage use of a spark of originality which could transform an ordinary product into one of grace. The doctrine of aesthetic functionality need not be construed in such a manner for it to fulfill its important public policy function of protecting free competition.
Instead, the inquiry should focus on the extent to which the design feature is related to the utilitarian function of the product or feature. When the design itself is not significantly related to the utilitarian function of the product, but is merely arbitrary, then it is entitled to protection as a design trademark if it has acquired the distinctiveness necessary to achieve a secondary meaning. Despite the language used in some of the opinions in this area which suggest a broader scope for the doctrine of aesthetic functionality, in fact the holding of many of those cases is consistent with this view of the doctrine.
In the oft-cited concurrence of Judge Rich to the decision of the Court of Customs and Patent Appeals which held that a distinctive wine decanter could function as a trademark, he concluded that the design of the wine bottle was "of such an arbitrary nature that depriving the public of the right to copy it is insignificant ...." Application of Mogen David Wine Corp., 328 F.2d 925, 933 (C.C.P.A.1964) (emphasis in original). Similarly, the stylized key design featured on the trademark applicant's jewelry was held to be entitled to registration because the key configuration was not dictated by "functional considerations." The court stated:
The stylized key design in the present case may have the function of attracting purchasers, but the shape of the jewelry, like the mark, is arbitrary and nonessential to a functioning piece of jewelry.
Application of Penthouse Int'l Ltd., 565 F.2d 679, 682 (C.C.P.A.1977). The unique exterior design of a bulk commodity semi-trailer which featured a twin hopper design was held to be subject to protection against imitation because its distinctive features were only "incidentally functional." Truck Equipment Service Co. v. Fruehauf Corp. 536 F.2d 1210, 1218 (8th Cir.), cert. denied, 429 U.S. 861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976). As the Second Circuit stated recently, in upholding the...
To continue reading
Request your trial
-
Plasticolor Molded Products v. Ford Motor Co.
...withhold all protection. This alternative has been implicitly adopted in the Third and Sixth Circuits. See Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822 (3d Cir.1981); Schwinn Bicycle Co. v. Murray Ohio Mfg. Co., 470 F.2d 975 (6th Cir.1972) (per curiam).14 Again, we decline to follow, ......
-
Merchant & Evans, Inc. v. ROOSEVELT BLDG. PRODUCTS CO.
...Inc., 724 F.2d 327, 332 (2d Cir.1983). In the Third Circuit, the concept of functionality was articulated in Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822 (3d Cir.1981). In Keene, the Court of Appeals reviewed a District Court's denial of relief to a corporation which manufactured ......
-
Pebble Beach Co. v. Tour 18 I Ltd.
...Ferrari S.P.A. Esercizio Fabriche Automobili E Corse v. Roberts, 944 F.2d 1235, 1240-41 (6th Cir.1991); Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822, 823 n. 1 (3d Cir.1981); see also Kohler, 12 F.3d at 640 n. 10 (noting that the Lanham Act differs in many respects from the state unfai......
-
Brunswick Corp. v. Spinit Reel Co.
...not discourage the "use of a spark of originality which could transform an ordinary product into one of grace." Keene Corp. v. Paraflex Indus., 653 F.2d 822, 825 (3d Cir.1981). Under our test, the claim may still be made that without a particular identifying design or feature a second-comer......
-
A FRAGILITY THEORY OF TRADEMARK FUNCTIONALITY.
...Circuit's approach in Pagliero as an example of overbreadth that it deliberately sought to avoid. Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822, 825 (3d Cir. 1981) (stating that "[t]he difficulty with accepting such a broad view of aesthetic functionality," such as that found in the Ni......
-
Unconstitutional Incontestability? the Intersection of the Intellectual Property and Commerce Clauses of the Constitution: Beyond a Critique of Shakespeare Co. v. Silstar Corp
...note 22, § 7.26 [1] (listing multiple cases). 38. Landes and Posner, supra note 17, at 265. 39. See, e.g., Keene Corp. v. Paralex Indus., 653 F.2d 822, 824 (3d Cir. 1981) ("The purpose of the rule precluding trademark significance is to prevent the grant of a perpetual monopoly to features ......
-
The trouble with trade dress protection of product design.
.... . . would rely on the shape of the head in identifying the brand"). (199) Id. at 660 (quoting Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822 (3d Cir. (200) See id. Prior to Thomas & Betts, the Seventh Circuit generally had allowed trade dress protection for patented features of in......
-
Protecting Nonfunctional Product Configurations as Intellectual Property
...F.3d 1498, 1502-03 (10th Cir. 1995). 6. Mat 1503. 7. See Brunswick Corp., supra, note 4 at 518. 8. Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822,825 (3d Cir. 1981). 9. McCarthy, McCarthy on Trademarks and Unfair Competition,§ 7.27 (1994). 10. 35 U.S.C. § 101. 11. Id.; 35 U.S.C. § 171. ......