Publications Intern., Ltd. v. Landoll, Inc.

• Decision Date: 16 December 1998
• Docket Number: No. 98-1490,98-1490
• Citation: 164 F.3d 337
• Parties: PUBLICATIONS INTERNATIONAL, LTD., Plaintiff-Appellant, v. LANDOLL, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 337

164 F.3d 337

49 U.S.P.Q.2d 1139

PUBLICATIONS INTERNATIONAL, LTD., Plaintiff-Appellant, v. LANDOLL, INC., Defendant-Appellee.

No. 98-1490.

United States Court of Appeals, Seventh Circuit.

Argued Nov. 5, 1998.

Decided Dec. 16, 1998.

Wayne B. Giampietro (argued), Michael J. Merrick, Witwer, Burlage, Poltrock & Giampietro, Chicago, IL, for Plaintiff-Appellant.

James D. Zalewa (argued), Mark J. Liss, Tamara A. Miller, Leydig, Voit & Mayer, Chicago, IL; William D. VanTilburg, Troth & Vantilburg, Ashland, OH, for Defendant-Appellee.

Before POSNER, Chief Judge, and FLAUM and MANION, Circuit Judges.

POSNER, Chief Judge.

Both parties, PIL and Landoll, are publishers of cookbooks and children's books. PIL, the plaintiff, contends that its books have a distinctive "trade dress" which Landoll has copied in violation of section 43(a)(1) of the Lanham Act, 15 U.S.C. § 1125(a)(1), and of parallel state statutes unnecessary to discuss separately. The district judge granted summary judgment for Landoll.

The term "trade dress" refers to the appearance of a product when that appearance is used to identify the producer. To function as an identifier, the appearance must be distinctive by reason of the shape or color or texture or other visible or otherwise palpable feature of the product or its packaging. If it isn't distinctive, it won't be associated in the mind of the consumer with a specific producer. If it is distinctive, and if as a result it comes to identify the producer, the danger arises that the duplication of this appearance, this "trade dress," by a competing seller will confuse the consumer regarding the origin of the product; the consumer may think it the product of the producer whose trade dress was copied. Trade dress thus serves the same function as trademark, and is treated the same way by the Lanham Act and the cases interpreting it. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992); Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 608 (7th Cir.1986); 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 8:1, pp. 8-3 to 8-4 (4th ed.1998).

The courts have struggled to articulate a standard for when a trade dress is sufficiently distinctive to be entitled to the prima facie protection of the Lanham Act. See, e.g., Dunn v. Gull, 990 F.2d 348, 351 (7th Cir.1993); Insty*Bit, Inc. v. Poly-Tech Industries, Inc., 95 F.3d 663, 672 (8th Cir.1996); Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431, 1448-51 (3d Cir.1994); Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1008-09 (2d Cir.1995); Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A.1977). This struggle is mirrored in the district judge's opinion and in the briefs of the parties. But efforts to define intuitive concepts such as "distinctiveness" are often both futile and unnecessary. We use with perfect clarity many words that we can't define, such as "time," "number," "beauty," and "law." Everyone can recognize when a product has a "distinctive" appearance, without having been tutored in the meaning of "distinctiveness." But "beyond stating the principles to be applied there is little to be said except to compare the impression made by the two" trade dresses. Joseph Schlitz Brewing Co. v. Houston Ice & Brewing Co., 250 U.S. 28, 30, 39 S.Ct. 401, 63 L.Ed. 822 (1919) (Holmes, J.). So let us consider the principles, or considerations, applicable to the decision. On the one hand, a seller should be encouraged to make his products recognizable by consumers at a glance as his product and not that of another seller. This way the seller will be able to appropriate the benefits of making a product that consumers like, and so he will have an incentive to make a good product. Other sellers won't be able to free ride on his efforts by tricking the consumer into buying an inferior product from them in the belief that it is the product of the seller whom they have grounds to trust.

On the other hand, a seller should not be allowed to obtain in the name of trade dress a monopoly over the elements of a product's appearance that either are not associated with a particular producer or that have value to consumers that is independent of identification. In the lingo of unfair competition, elements of the latter type--elements whose value is not merely signification--are a product's "functional" features; They can be either utilitarian in the narrow sense of that word, or aesthetic. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 164-65, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995); Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 297-98 (7th Cir.1998); W.T. Rogers Co. v. Keene, 778 F.2d 334, 338-40, 343 (7th Cir.1985). Wine is sold corked. The cork is a functional feature of the product, because it enables the wine to age properly; and so the first seller of wine could not claim that the cork was his trade dress. Mink coats are normally sold dyed. The dye does not make the coat any warmer, but it makes it more beautiful, and, once again, it could not be claimed as trade dress by the first furrier to have hit on the idea. Functional improvements may be patentable, or protected as trade secrets, but they cannot be appropriated in the name of trade dress even if they are distinctive.

It would be arbitrary as well as puritanical and even philistine to deny that one function of modern consumer packaging is to be beautiful, the motivation being sometimes a hope that the consumer will infer the quality of the product from the beauty of the package and sometimes a hope that the consumer will derive utility (and so be willing to pay more) from the packaging directly, as when a consumer displays a shapely bottle of champagne to his dinner guests. A producer cannot in the name of trade dress prevent his competitors from making their products as visually entrancing as his own. Ordinarily there is a sufficient variety of pleasing shapes, sizes, colors, and ornamentation to enable beauty without sacrificing differentiation. But if consumers derive a value from the fact that a product looks a certain way that is distinct from the value of knowing at a glance who made it, then it is a nonappropriable feature of the product.

So there cannot be an objection in principle to the concept of aesthetic functionality as a limitation on the legal protection of trade dress. And notice how the "utilitarian" and the "aesthetic" merge in the case put earlier of corking. The cork improves the taste of the wine; the dye enhances the beauty of the mink coat; taste is akin to beauty. But the critics who argue that in application the concept is mischievously vague certainly have a point, see, e.g., 1 McCarthy, supra, §§ 7:80, 7:81, though not one necessary to labor further here.

Formally, distinctiveness and functionality are separate issues. While the burden of proving distinctiveness is of course on the plaintiff, some courts, including our own, hold that functionality is an affirmative defense and so the burden of proof rests on the defendant. E.g., Thomas & Betts Corp. v. Panduit Corp., supra, 138 F.3d at 297; Knitwaves, Inc. v. Lollytogs Ltd., supra, 71 F.3d at 1006. Other courts place the burden on the plaintiff. E.g., Versa Products Co. v. Bifold Co., 50 F.3d 189, 199 (3d Cir.1995); Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 869 (8th Cir.1994). Others have passed. E.g., Tools USA & Equipment Co. v. Champ Frame Straightening Equip., Inc., 87 F.3d 654, 657 n. 2 (4th Cir.1996); TEC Engineering Corp. v. Budget Molders Supply, Inc., 82 F.3d 542, 546 n. 3 (1st Cir.1996). The uncertainty is limited to unregistered trademarks or trade dress (PIL's trade dress is unregistered); registration creates a presumption of validity, implying that the defendant has the laboring oar on all issues relating to validity, including functionality, as held in Aromatique, Inc. v. Gold Seal, Inc., supra, 28 F.3d at 869.

Very little turns on resolving the circuit conflict, both because evidence of functionality is equally available to both parties and because functionality and distinctiveness are intertwined issues. Functional features are by definition those likely to be shared by different producers of the same product and therefore are unlikely to identify a particular producer. The principal exception is for new products. If a product is truly new, its functional features may be new too and so may help distinguish it from other products and thus identify the producer. Nevertheless, these features cannot be appropriated; otherwise, competitors would be prevented from duplicating the new product even to the extent permitted by the branches of the law of intellectual property that protect innovation rather than designations of source. The first producer of an automobile designed a product that had a distinctive appearance; but if its distinctiveness was due to the fact that it had an engine in front instead of horses, and a crank, radiator grill, and steering wheel, the producer would not be able to claim that this combination of functional features constituted trade dress; for that would give him a monopoly of the production of automobiles, and trademark law is not intended to confer product monopolies. W.T. Rogers Co. v. Keene, supra, 778 F.2d at 339.

There isn't much more to be said at the level of doctrine about the issue in this case, except that a grant of summary judgment on the basis either that the plaintiff's trade dress is not distinctive or that its distinctiveness rests on functional features of the dress is proper only if no reasonable trier of fact could conclude otherwise. See, e.g., Thomas & Betts Corp. v. Panduit Corp., supra, 138 F.3d at 297-300; Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 952 (7th Cir.1992); OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1408 (Fed.Cir.1997). For while it is true that distinctiveness is not really an issue...