Marketing Displays, Inc. v. Traffix Devices, Inc.

• Decision Date: 12 June 1997
• Docket Number: Civil Action No. 95-40230.
• Citation: 971 F.Supp. 262
• Parties: MARKETING DISPLAYS, INC., Plaintiff, v. TRAFFIX DEVICES, INC., Defendant.
• Court: U.S. District Court — Eastern District of Michigan

Page 262

971 F.Supp. 262

MARKETING DISPLAYS, INC., Plaintiff, v. TRAFFIX DEVICES, INC., Defendant.

Civil Action No. 95-40230.

United States District Court, E.D. Michigan, Southern Division.

June 12, 1997.

Order Denying Reconsideration July 9, 1997.

John A. Artz, Frank A. Angileri, Brooks & Kushman, Southfield, MI, for Marketing Displays, Inc.

Jeanne-Marie Marshall and Richard W. Hoffman, Reising, of Ethington, Barnard, Perry & Milton, Troy, MI, for Traffix Devices, Inc.

MEMORANDUM OPINION AND ORDER

GADOLA, District Judge.

Before the court are cross-motions for summary judgment pursuant to Federal Rule of Civil Procedure 56. Plaintiff, Marketing Displays, Inc. ("MDI") and defendant, TrafFix Devices Inc. ("TrafFix"), filed their respective motions on February 28, 1997. This court heard oral argument on May 28, 1997. For the reasons set forth below, this court will grant TrafFix's motion for summary judgment and deny MDI's motion for summary judgment.

Background

MDI manufactures and sells, inter alia, spring-mounted wind-resistant sign stands. MDI has been manufacturing and selling these sign stands since 1968 under the trademark WINDMASTER. The first sign stand sold under the WINDMASTER mark was a business-type wind-resistant sign stand that was used to display advertisements, such as those seen at gas stations.

In the mid 1970's MDI modified its business-type wind-resistant sign stands in order to utilize the wind-resistant concept for traffic warning signs. The traffic-type wind-resistant sign stands were used to hold signs such as "ROAD WORK AHEAD" and "ROAD CONSTRUCTION AHEAD". These traffic-type, spring-mounted wind-resistant sign stands were then sold under the same mark WINDMASTER in the traffic control field.¹

MDI's WINDMASTER sign stands have been protected by two utility patents: United States Patent Number 3,646,696 and 3,662,482 (hereinafter the "'696" and "'482" patents, respectively). In obtaining the '696 patent MDI argued, before the United States Patent Office, that its dual spring design had benefit over the prior art. Moreover, MDI has, on at least one occasion, brought suit to enforce those patents against an alleged infringer who was manufacturing a sign stand containing a dual spring configuration like the one at issue here. In that 1978 case,² MDI succeeded in obtaining an injunction against the infringer from manufacturing such a dual spring design.

MDI has also granted patent licenses to third-parties having the dual spring configuration at issue here. For instance, MDI licensed Eastern Metal, under its utility patents, to sell sign stands incorporating the dual spring configuration at issue here in exchange for royalties and rights to use Eastern Metal's patents. Upon expiration of MDI's patents in 1989, Eastern Metal stopped paying royalties.

While the '696 and '482 patents were in force, MDI clearly and consistently marked its sign stands with the patent numbers which served to put the public on notice of MDI's rights. In addition, MDI has consistently identified those patents in its WINDMASTER product literature.

The WINDMASTER line of stands has enjoyed commercial success, selling over twenty million dollars to date. In 1986, Jack Kulp founded TrafFix to manufacture and sell traffic-type sign stands and related products. Thereafter, TrafFix sent one of MDI's WINDMASTER sign stands to Korea to be "reverse engineered." TrafFix effectively copied the WINDMASTER sign stand as the product configurations of the parties' products are virtually identical. (See Figure 1). In 1994, TrafFix began selling that product under the WINDBUSTER trade name. Thereafter, on July 11, 1995, MDI filed the instant action.

MDI brought this action against TrafFix alleging that TrafFix's WINDBUSTER spring-mounted wind-resistant sign stands infringed upon MDI's WINDMASTER trademark and trade dress rights and constituted unfair competition, pursuant to the Lanham Act.

On January 13, 1997, this court, by memorandum opinion and order³, granted MDI's motion for summary judgment that MDI's WINDMASTER trademark was infringed by TrafFix's use of the confusingly similar mark WINDBUSTER in connection with traffic sign stands. The parties now seek summary judgment as to the issue of whether MDI's alleged trade dress rights in its dual spring configuration sign stands is being infringed by TrafFix's dual spring configuration sign stand.⁴, ⁵

Specifically, MDI asserts that it has trade dress rights in its WINDMASTER sign stand which is comprised of:

(a) a relatively narrow base member;

(b) a pair of vertically arranged closely spaced coil springs attached to the base member;

(c) a plurality of leg members attached to the base member and extending therefrom at angles thereof;

(d) an upright member attached to the coil springs; and

(e) a sign attached to the upright member.

For the purposes of this opinion, however, this court finds that the only element of the alleged trade dress at issue is the pair of vertically arranged closely spaced coil springs (hereinafter "dual spring configuration" or "dual spring design").⁶ See discussion infra, pg. 273.

Legal Standard

Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Summary judgment is appropriate where the moving party demonstrates that there is no genuine issue of material fact as to the existence of an essential element of the non-moving party's case on which the non-moving party would bear the burden of proof at trial. Martin v. Ohio Turnpike Commission, 968 F.2d 606, 608 (6th Cir.1992); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). In considering a motion for summary judgment, the court must view the facts and draw all reasonable inferences therefrom in a light most favorable to the non-moving party. 60 Ivy Street Corporation v. Alexander, 822 F.2d 1432, 1435 (6th Cir.1987). The court is not required or permitted, however, to judge the evidence or make findings of fact. Id. at 1435-36. The moving party has the burden of showing conclusively that no genuine issue of material fact exists. Id. at 1435.

A fact is "material" for purposes of summary judgment where proof of that fact would have the effect of establishing or refuting an essential element of the cause of action or a defense advanced by the parties. Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir.1984). In other words, the disputed fact must be one which might affect outcome of the suit under the substantive law controlling the issue. Henson v. National Aeronautics and Space Administration, 14 F.3d 1143 1148 (6th Cir.1994). A dispute over a material fact is genuine "if the evidence is such that a reasonable jury could return a verdict for the non-moving party." Id. Accordingly, where a reasonable jury could not find that the non-moving party is entitled to a verdict, there is no genuine issue for trial and summary judgment is appropriate. Feliciano v. City of Cleveland, 988 F.2d 649 (6th Cir. 1993).

Once the moving party carries its initial burden of demonstrating that no genuine issues of material fact are in dispute, the burden shifts to the non-moving party to present specific facts to prove that there is a genuine issue for trial. To create a genuine issue of material fact, the non-moving party must present more than just some evidence of a disputed issue. As the United States Supreme Court stated in Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986):

There is no issue for trial unless there is sufficient evidence favoring the non-moving party for a jury to return a verdict for that party. If the [non-moving party's] evidence is merely colorable, or is not significantly probative, summary judgment may be granted.

(Citations omitted); see also Celotex, 477 U.S. at 322-23, 106 S.Ct. at 2552-53; Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 1355-56, 89 L.Ed.2d 538 (1986). Consequently, the non-moving party must do more than raise some doubt as to the existence of a fact; the non-moving party must produce evidence that would be sufficient to require submission of the issue to the jury. Lucas v. Leaseway Multi Transp. Serv., Inc., 738 F.Supp. 214, 217 (E.D.Mich.1990), aff'd, 929 F.2d 701 (6th Cir.1991).

Applicable Law

Section 43 (a) of the Lanham Act which creates a civil cause of action for trademark infringement provides, in relevant part, that:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —

(1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person....

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a). The protection against infringement provided by section 43(a) includes the unregistered "trade dress" of an article. Two Pesos, Inc., v. Taco Cabana, Inc., 505 U.S. 763, 765 n. 2, 112 S.Ct. 2753, 2756 n. 2, 120 L.Ed.2d 615 (1992); Esercizio v. Roberts, 944 F.2d 1235, 1238 (6th Cir. 1991).

To prove a trade dress violation in contravention of section 43(a), a plaintiff must show, by a preponderance of the evidence: 1) that the trade dress has obtained "secondary meaning;" 2) that...