PaF Srl v. Lisa Lighting Co., Ltd.

• Citation: 712 F. Supp. 394
• Decision Date: 02 May 1989
• Docket Number: No. 88 Civ. 6006 (BN).,88 Civ. 6006 (BN).
• Parties: PAF S.r.l., an Italian corporation, and Koch + Lowy, a New York corporation, Plaintiffs, v. LISA LIGHTING CO., LTD., a New York corporation, Dac Wire Corp., a New York corporation, and Hunter-Melnor, Inc., a Delaware corporation, Defendants.
• Court: U.S. District Court — Southern District of New York

712 F. Supp. 394

PAF S.r.l., an Italian corporation, and Koch + Lowy, a New York corporation, Plaintiffs, v. LISA LIGHTING CO., LTD., a New York corporation, Dac Wire Corp., a New York corporation, and Hunter-Melnor, Inc., a Delaware corporation, Defendants.

No. 88 Civ. 6006 (BN).

United States District Court, S.D. New York.

May 2, 1989.

COPYRIGHT MATERIAL OMITTED

Lerner, David, Littenberg, Krumholz & Mentlik, Westfield, N.J. (Lawrence I. Lerner, pro hac vice, and Charles P. Kennedy, of counsel), and Piliero & Goldstein, New York City (Robert D. Piliero, of counsel), for plaintiffs.

Temko & Temko, New York City (Charles E. Temko, of counsel), for defendants.

OPINION AND ORDER

BERNARD NEWMAN, Senior Judge, United States Court of International Trade, sitting as a District Court Judge by designation:

INTRODUCTION

This is an action for trade dress infringement and unfair competition. PAF S.r.l. ("PAF"), an Italian company, and Koch + Lowy ("K & L"), a New York corporation, plaintiffs herein, are respectively the manufacturer and exclusive United States distributor of the "DOVE" lamp. Defendant Hunter-Melnor, Inc., Kenroy International Division ("KI"), a Delaware corporation, imports the "SWAN" lamp from Taiwan and distributes it throughout the United States at wholesale in competition with plaintiffs' Dove lamp. Defendants Lisa Lighting Co.¹ and Dac Wire Corp., both New York corporations, are retail outlets that sell the Swan lamp.

Plaintiffs allege that the Swan is a "knockoff" of the Dove lamp. They assert claims under the Lanham Act § 43(a), 15 U.S.C. § 1125(a) (1982),² for false designation of origin and under N.Y.Gen.Bus.Law § 368-d (McKinney 1984) for dilution of a trademark. Complaint ¶¶ 22-23, 28, 29. In addition, plaintiffs plead a common law claim for unfair competition. Complaint ¶¶ 24-25.

Plaintiffs seek (1) permanent injunctive relief, (2) recall and destruction of the infringing lamps, (3) compensatory damages, (4) an accounting of defendants' profits realized in connection with the sale of the Swan, with an award in such amount to plaintiffs, and (5) attorney's fees.

The court has jurisdiction of this matter pursuant to 15 U.S.C. § 1121 (1982), 28 U.S.C. § 1338 (1982), and under the general doctrine of pendent jurisdiction. In accordance with Fed.R.Civ.P. 65(a)(2), the trial of the action on the merits was consolidated with the hearing of the application for a preliminary injunction. This action was tried to the court without a jury.

For the reasons set forth below, the court concludes that plaintiffs have sustained their burden of proof under the federal statute. The evidence leaves no doubt that the subject of this lawsuit, the Dove lamp, is in fact a highly distinctive design. Moreover, plaintiffs have established that (1) the Dove lamp has acquired secondary meaning in the marketplace, and (2) consumers are likely to be confused as to the source of the Swan lamp. Additionally, the court finds that KI violated section 43(a) of the Lanham Act by importing and selling lamps confusingly similar to plaintiffs' Dove lamp and that it did so intentionally. Consequently, plaintiffs are entitled to permanent injunctive relief.³

Further, under 15 U.S.C. § 1117(a) (Supp. IV 1986), plaintiffs are entitled to recover KI's profits, costs of the action and reasonable attorney's fees. Since plaintiffs did not adduce sufficient evidence at trial to prove damages, no compensatory damages will be awarded.

As to defendant Dac Wire, since its participation in the infringement was de minimus (Dac sold only 13 lamps) and because it returned all unsold lamps to KI, Dac Wire, while enjoined from further infringement, will not be required to pay damages, profits, attorney's fees or costs in this action.

BACKGROUND

The Dove, PX 194, 195,⁴ is a halogen desk lamp manufactured in Italy by PAF. It is sold in five colors: black, white, red, blue, and yellow. The lamp has a cylindrical base which rotates on a circular platform. Such base is black on all models. On the underside of the base appear, so far as pertinent, the PAF studio logo, the name Dove, the names of the lamp's designers, and "Made in Italy." Two parallel curvilinear struts join the base to a long flat slightly curved arm which flares imperceptibly from top to bottom. The head of the lamp, in which is housed a high intensity bulb, has a graceful configuration: rectangular at the base, the head rises from the back to form a gently sloping mound which tapers off in the front. The head is hinged to the arm, allowing the user to adjust it up or down, and is counterbalanced by a concealed weight evenly distributed within the lower portion of the arm itself. At this point, the arm is hinged to the struts, again allowing one to adjust it up or down. From a practical standpoint, the design allows a full range of motion for desk or table lighting. Overall, the aesthetic effect of the lamp evokes the image of a bird descending or rising in flight. See Trial Transcript at 23, 243 hereinafter "Tr. x". For example, the struts, which serve the purpose of conducting electricity from the base to the head, resemble the manner in which a bird's feet extend when it prepares to land. See Tr. 256. The Dove retails from $160 to $200. Tr. 337; see, e.g., PX 106, 116, 123-25.

Defendant KI imported Swan lamps, PX 196, 197,⁵ from a Taiwanese Company, Lon Tai Shing, Ltd. ("LTS"). The Swan is virtually identical in appearance to the Dove, but is sold in only two colors: white and black. Also, the base of the Swan, unlike the Dove, matches the color of the lamp. Thus, a white Swan has a white base while a white Dove has a black base. The underside of the Swan base has no markings disclosing the make, model, manufacturer, or country of origin. The Swan lamp sells at retail for $120. Tr. 337. While ostensibly the differences between the two lamps are minor, the Swan is, in terms of quality, a poor imitation of the Dove. The record is replete with KI's admissions that the Swan has "serious quality problems." Tr. 386.

The genesis of the Dove lamp, and this litigation, was the decision by PAF in 1979 to expand its enterprise from the provincial manufacture and sale of traditional lamps in Italy to a modern design lamp that would sell throughout the world. Tr. 16. To that end, PAF and the Dove have been very successful. The Dove received universal acclaim, was awarded numerous honors, including an Oscar from the French Architects Association, and ultimately has become the second best selling desk lamp in the world. PAF increased in size from a company of fifteen employees in 1984 to over one hundred employees in 1988. This substantial growth has been a direct result of PAF's development of the Dove. Tr. 63; see Plaintiff's Exhibit 166 at 1 hereinafter "PX n"; Tr. 21, 534; see also Declaration of Luigi Giroletti at 4.

From the start, the company's strategic goal was to develop a product that would help make PAF a recognizable name with consumers. Tr. 16-17. Giroletti, managing director of PAF, testified: "Our effort was to have a completely different lamp." Id. "We invested in research ... in machinery, in tooling ... our effort was to identify this lamp with our firm." Tr. 22. To achieve this end, PAF hired two architects, Mario Barbaglia and Marco Colombo, Italian industrial designers, to undertake the design of the new lamp. To the date of trial, PAF had already paid royalties to Messrs. Barbaglia and Colombo in excess of one million dollars. Tr. 17, 62-63; see also PX 1-2 (contract royalty agreement between PAF and the lamp designers).

The results of PAF's efforts were impressive. The Dove lamp made its premiere in September 1985 at the Euroluce International Lighting Exhibition in Milan, Italy, where it became an instant success. Tr. 21. This success was important to PAF because the Euroluce Exhibition is regarded as the preeminent international lighting exhibition, Tr. 24-26, and the Dove won considerable acclaim there from designers, architects, museums and journalists. Tr. 21.

Following the Euroluce Exhibition, the Dove was featured prominently in a complimentary article written by Suzanne Slesin⁶ for the New York Times, entitled "The Slender Minimalist Look Stars at the Milan Fair." N.Y. Times, Sept. 26, 1985, at C1, col. 5 (picture of the Dove lamp covers the width of the page). PX 82. In the article, the Dove is described as having an "attenuated birdlike shape," and both Messrs. Barbaglia and Colombo are mentioned as having designed the lamp for PAF. Id.

PAF enjoyed great success with its new product. The Dove received numerous international awards for its design, and laudatory letters from museums around the world requesting the lamp for exhibition were sent to PAF. Further, the lamp appeared on the cover of the International Design Yearbook for 1985-1986, edited by Phillipe Starke, a famous contemporary French designer. Tr. 46; PX 32; see also PX 82 (N.Y. Times, Sept. 26, 1985, at C1, col. 5, acknowledging Phillipe Starke as one of France's major talents in the field of design). In the United States, the editors of Modern Style chose to include the Dove as part of an eclectic catalog, a source book of interior design dating from the 1930's to contemporary post-modern designs. PX. 17.

In addition to, and as a result of, the significant public attention given the Dove, PAF committed itself to a full scale marketing campaign, expending over ninety percent of its marketing budget to promote the Dove. Tr. 116. PAF's marketing strategy was to target upscale, sophisticated consumers (those who typically would be interested in design), to emphasize the appearance of the product so that people would immediately recognize it, and to make the Dove lamp "the symbol of PAF." Tr. 32, 34, 37-38.

The company implemented a three step program for advertising in the world market. First, PAF advertised in specialty magazines originating in Italy but sold internationally,...