Versa Products Co., Inc. v. Bifold Co. (Mfg.) Ltd., 94-5064
| Decision Date | 15 February 1995 |
| Docket Number | No. 94-5064,94-5064 |
| Citation | 50 F.3d 189 |
| Parties | VERSA PRODUCTS COMPANY, INC., Appellee, v. BIFOLD COMPANY (MANUFACTURING) LTD., Appellant. |
| Court | U.S. Court of Appeals — Third Circuit |
Norman H. Zivin, (argued), Peter D. Murray, Wendy E. Miller, Cooper & Dunham, New York City, and Robert M. Axelrod Sills, Cummis, Zuckerman, Radin Tischman, Epstein & Gross, P.A., Newark, NJ, for appellant.
Jeffrey Campisi, (argued), Sharkey & Campisi, Roseland, NJ, for appellee.
Before: BECKER and LEWIS, Circuit Judges, and POLLAK, District Judge. *
This is a trade dress infringement action in which plaintiff Versa Products Company, Inc. ("Versa") contends that defendant Bifold Company (Manufacturing) Ltd. ("Bifold") infringed the trade dress of Versa's B-316 directional control valve, a device commonly used in control panels of offshore oil-drilling rigs to facilitate emergency shutdowns, by marketing its Domino Junior valve, which Versa maintains copies the product configuration of the B-316. 1 The action was brought under section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (West Supp.1994), New Jersey's Unfair Competition Law, 56 N.J.S.A. Sec. 4-1 to -2 (1989), and New Jersey's common law of unfair competition. Following a bench trial the district court found that the trade dress of Versa's valves had met the nonfunctionality and distinctiveness requirements of our trade dress jurisprudence, and that there was a likelihood of confusion of the sources of Bifold's Domino Junior and Versa's B-316 valves. Accordingly, the court entered a permanent injunction against Bifold, precluding it from selling its Domino Junior valve (in its present form) anywhere in the United States. Bifold appeals all aspects of the district court's rulings.
We need not reach the nonfunctionality and distinctiveness questions because the appeal may be disposed of on the likelihood of confusion issue, in connection with which we are called upon to determine whether the jurisprudence that lowers the standard to a "possibility of confusion" where the alleged infringer is a "second comer" applies in the trade dress product configuration context. We also must explicate the elements of the confusion standard in this context. We conclude that the lowered standard (applied by the district court) does not apply and that some but not all of the "Scott factors," see Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225 (3d Cir.1978), are pertinent, because of policy considerations applicable in product configuration cases. Applying this approach we conclude that the district court's finding of a likelihood of confusion is clearly erroneous. We will, therefore, reverse the order of the district court and vacate the permanent injunction.
Versa, a New Jersey corporation with subsidiaries abroad, designs and manufactures pneumatic and hydraulic directional control valves. Bifold, an English corporation, competes with Versa and markets a line of control valves and related products and services to the offshore oil industry. Versa alleges that Bifold has engaged in unfair competition in its marketing of the Domino Junior--a valve manufactured by Bifold and adapted to the harsh offshore oil and petrochemical environments--by copying the trade dress, i.e., the distinctive appearance, of the product configuration of Versa's B-316 valve.
The most significant feature of valves designed for offshore applications is their stainless steel composition, used to withstand the corrosive effects of salt air and sour gas fumes. In offshore drilling platforms these valves are typically aligned in small control panels containing up to fifty modular valve bodies with a standard configuration but which, by attaching one of various actuators and making minor adjustments, may be adapted to a variety of applications. The panel design engineers devise the functional specifications of panels around the capacities of particular valves, selecting valves based on their functionality, reliability, availability, and price. The valves themselves are not visible from the front of a control panel when installed; only knobs, buttons, and status indicator actuators protrude.
Versa began producing brass valves (its "V" series) in 1949. Versa dresses the series, consisting at present of an entire line of valves well known in the industry, with contoured lines and shaping that the district court found "form a distinctive product appearance that has been associated with Versa for decades." In the late 1970's Versa designed the B-316 line of stainless steel valves, the subject of this litigation. Versa initially fashioned them of stainless steel bar stock, and the valves were plain and unadorned. Because of the waste of valuable metal associated with the machining process and the substantial manual labor needed to drill each valve individually, Versa converted to a cast version of the valve as soon as sales levels justified the substantial economic investment in a casting mold.
The two versions of the valve serve the same function and are interchangeable. Versa deliberately set about to give the cast version of the B-316 the "Versa look," that is, to have it resemble in appearance the V-series of Versa valves. Versa's desire to have the valve be clearly associated with Versa in the market was a primary impetus for its election to manufacture the cast version of the B-316.
The modular B-316 valve is comprised of a valve body and, optionally, one or more attached actuators used to manipulate the moving parts in the valve body. The valve is a three-way valve, meaning that it has three ports or openings (for the ingress or egress of gas or fluid), which are threaded to 1/4"' NPT, a national standard and industry requirement. The ports open into an inner chamber in the valve body, which houses a spool moved by an actuator (such as a button, knob, or electronically controlled solenoid actuator) to open or close the port, controlling fluid flow.
The configuration and function of the actuators provided with a valve are driven by customer demand; however, the use of certain actuators (most of which Versa purchases from other vendors) is standard with the B-316. Versa has used the same knob actuator for 40 years, although many others are available. It also uses a particular status indicator, which indicates the valve's position; a particular button actuator, which is shrouded to prevent accidental actuation; a self-produced manual latch, which locks the valve spool in the open or closed position; and a self-produced pilot actuator, which responds to pressure in an attached fluid line to control the spool's position.
Located at each end of a valve is a flange, both of which serve as faces to mount the actuators and to provide a flat surface for attachment to the control panels; holes are drilled into the flanges to allow the actuators to be securely mounted. A longitudinal top rib runs along the top of the valve body to allow customers to attach solenoid (computer controlled) actuators, to provide strength, and to serve as a casting gate (an opening in the casting mold through which the molten metal is poured). A smaller bottom rib was added to provide parallelism in the product's appearance and to assist in the casting process. Finally, the valve has three mounting holes which are positioned to provide stable mounting to a panel or other flat surface. Each aspect of the valve serves a specific function essential to the valve's operation, cost, performance, or ease of manufacture. The design of each actuator is functional. Functionality dictates the overall cast design, but does not dictate its external appearance.
The B-316 valve's mold imprints the manufacturer's name ("VERSA") and place of origin ("N.J. U.S.A.") on the valve. Versa also stamps a date code and rivets a metal label displaying the Versa name, logo, and part number onto the valve. Versa currently dominates the United States market for stainless steel valves. Aside from Bifold, only Versa sells cast stainless steel valves; other competitors use a cylindrical bar stock.
As part of Bifold's continuing efforts to expand its product line, in 1985 it introduced the Domino series modular valves. Although originally machined from standard bar stock (like Versa's B-316), the Domino valves became sufficiently successful to warrant the investment needed to design a cast version. An outside casting company designed the cast version of the Domino; Bifold had no involvement in the process. Like a B-316, the Domino valve has three cylindrical ports, a top rib for housing a solenoid feed, flanges, and a range of actuators.
Because the Domino was too large for many of its customers' needs, however, Bifold designed the "Domino Junior" modular valve in 1990, producing it at first from bar stock. 2 In late 1991, eight years after the cast version of the B-316 became available, Bifold introduced its cast version of the Domino Junior. Bifold at the time erroneously believed that Versa had a "monopoly" on the wellhead control panel valve market, and created the cast version of the Domino Junior to "bury Versa."
Bifold was aware of the B-316's appearance and design features because it had seen the product at various trade shows. The district court did not credit Bifold's claims that it designed the Domino Junior as a scaled down version of the Domino and that it did not copy the B-316. 3 It found instead that, before and during its design of the Domino Junior cast mold, Bifold examined and largely copied Versa's B-316 valve, a sample of which it had obtained through its agent in Denmark. For example, the court found that Bifold, which regularly uses metric sizes in its valves, took measurements from the B-316 and used a metric conversion of the B-316's...
To continue reading
Request your trial
-
Aurora World Inc. v. Ty Inc.
...preclude almost all possibility of consumer confusion as to source stemming from the product's configuration.” Versa Products, Inc. v. Bifold Co., 50 F.3d 189, 203 (3d Cir.1995). The court credits Ty's argument that at least some degree of care is exercised when a consumer purchases a plush......
-
Pebble Beach Co. v. Tour 18 I, Ltd.
...characterized as an intent to derive benefit from the goodwill associated with a protectable mark. See Versa Prods. Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 207 (3rd Cir.1995) ("It is not unfair competition to trade off the good will of a product, it is only unfair to deceive consu......
-
A & H Sportswear Co. v. Victoria's Secret Stores, Civil Action No. 94-7408.
...standard have not provided detailed guidance as to the appropriate remedy after a trial on the merits. Versa Prods. Co. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189 (3d Cir.), cert. denied, ___ U.S. ___, 116 S.Ct. 54, 133 L.Ed.2d 19 (1995); Country Floors, 930 F.2d 1056; Merchant & Evans, 963 F.2......
-
A&H SPORTSWEAR CO. v. Victoria's Secret Stores
...should have been available, does not raise an inference that there is no likelihood of confusion. Versa Products Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 205 (3d Cir.1995), cert. denied, ___ U.S. ___, 116 S.Ct. 54, 133 L.Ed.2d 19 (1995), (citation omitted). See also Nugget Distribu......
-
The trouble with trade dress protection of product design.
...765 (1992). Courts may analyze product configuration cases differently than packaging cases. See, e.g., Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 200 (3d Cir. 1995) ("[U]nfair competition law regarding product configurations will diverge substantially in its incidents from the law [of] p......
-
Trade Emblems
...can be more difficult to prove that these trade emblems are distinctive indications of source. Versa Prods. Co., Inc. v. Bifold Co., Ltd., 50 F.3d 189 (3rd Cir. 1995),cert denied, 116 S. Ct. 54 (1995); RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 16, cmt. b (1995). Indeed, even though the Un......
-
Protecting your corporate client's most valuable intangible asset: its name.
...and Duraco Prods. Inc. v. Joy Plastic Enters. Ltd., 40 F.3d 1431 (3d Cir. 1994). See also Versa Prods. Co. Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189 (3d Cir. (33.) The Seventh Circuit in Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654 (7th Cir. 1995), and the Federal Circuit in Elm......
-
Interactive Products Corp. v. A2z Mobile Office Solutions, Inc.: the Sixth Circuit Failed to Conduct a Thorough Analysis in Determining Whether Using a Trademark in the Post-domain Path of a Url Is Trademark Infringement
...Id. 217. Id. at 270, 286. 218. Id. at 270, 289-90. 219. Id. at 290, 291. 220. Id. at 284. 221. Id. (citing Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 204 (3d Cir. 1995)). 222. Id. at 285-86. 223. Id. at 286-88. 224. Id. at 286 (citing Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th Cir. ......