Zip Dee, Inc. v. Dometic Corp., 93 C 3200.

• Decision Date: 09 July 1996
• Docket Number: No. 93 C 3200.,93 C 3200.
• Citation: Zip Dee, Inc. v. Dometic Corp., 931 F.Supp. 602 (N.D. Ill. 1996)
• Parties: ZIP DEE, INC., Plaintiff, v. DOMETIC CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Illinois

931 F. Supp. 602

ZIP DEE, INC., Plaintiff, v. DOMETIC CORPORATION, Defendant.

No. 93 C 3200.

United States District Court, N.D. Illinois, Eastern Division.

July 9, 1996.

COPYRIGHT MATERIAL OMITTED

Harry M. Levy, James J. Hill, Emrich & Dithmar; George McAndrews, Stephen F. Sherry, and Patrick J. Arnold, McAndrews, Held & Malloy, P.C., Chicago, IL, for Plaintiff.

William G. McGuinness, David C. Radulescu, Fried, Frank, Harris, Shriver & Jacobson, New York City; and Peter V. Baugher, Kenneth E. Kraus, Schopf & Weiss, Chicago, IL, for Defendant.

MEMORANDUM OPINION AND ORDER

SHADUR, Senior District Judge.

This long and contentious litigation between Zip Dee, Inc. ("Zip Dee") and The Dometic Corporation ("Dometic") has continued to pose so many and varied issues as to assume almost mythic proportions. Unfortunately the myth most often called to mind, as this Court has been called upon to resolve the parties' numerous disputes, has been the fifth of the Labors of Hercules — the cleansing of the Augean Stables. Or perhaps, given the manner in which the same or closely related tasks seem to reappear frequently in somewhat altered guises, the somewhat more elegant reference should be to the punishment visited on Sisyphus.

Let's stay with the latter. This time the boulder that this Court must push up a mountain of legal concepts is Dometic's motion under Fed.R.Civ.P. ("Rule") 56 for partial summary judgment on Zip Dee's trademark infringement claims. This District Court's General Rule ("GR") 12(M) and 12(N)¹ as well as the Rule 56 requirements have been complied with by both parties, so that the motion is fully briefed and ready for decision. For the reasons set forth in this memorandum opinion and order, this latest motion by Domestic is denied.

Summary Judgment Principles

Under familiar Rule 56 principles Dometic has the burden of establishing both the lack of a genuine issue of material fact and that it is entitled to a judgment as a matter of law (Celotex v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 2552-53, 91 L.Ed.2d 265 (1986)). Summary judgment is appropriate only if the record reveals that no reasonable jury could find for Zip Dee on its trademark infringement claims. For purposes of this motion the evidence must be "construed as favorably to Zip Dee as reason and the record permit" (Williams v. Bristol-Myers Squibb Co., 85 F.3d 270, 272 (7th Cir.1996)). So inferences will be taken in the light most favorable to nonmovant Zip Dee, but this Court is "not required to draw every conceivable inference from the record — only those inferences that are reasonable" (Bank Leumi LeIsrael, B.M. v. Lee, 928 F.2d 232, 236 (7th Cir.1991) and cases cited there).

Facts

Because the lawsuit's extensive background has been set out in earlier opinions (see 900 F.Supp. 1004, 1006-08 (N.D.Ill.1995) and 886 F.Supp. 1427, 1429-30 (N.D.Ill. 1995)), a bare review of the facts will suffice for present purposes. Nearly 30 years have passed since, back in 1967, Zip Dee obtained Patent 3,324,869 (the "'869 Patent") for a roll-up recreational vehicle ("RV") awning made of fabric but utilizing a flexible metal cover to protect it from deterioration while in storage.² Initially Zip Dee used a single sheet of flexible metal for the cover, but in 1969 it began to use an awning cover made of a series of metal slats. It is undisputed that the '869 Patent was broad enough to embrace the slatted metal cover design as well as a cover consisting of a single sheet of metal.

Sometime after the '869 Patent expired in 1984, Dometic's predecessor A & E Systems, Inc. ("A & E") began to produce similar awnings complete with the bright and shiny mirror-like finish of the awning covers manufactured by Zip Dee. In 1986 Zip Dee sued A & E in a California District Court, claiming that A & E had both violated the '869 Patent and engaged in common law unfair competition by infringing on Zip Dee's trade dress. Two years later a jury found in Zip Dee's favor on both claims, and the court entered judgment on the verdict and enjoined A & E from further violating Zip Dee's trade dress.³

Dometic acquired A & E in 1988 and, viewing the injunction as applicable only to RV awnings with a slatted metal cover that had a mirror-like finish, began to turn out awnings with slatted metal covers having a dull (matte) finish. Zip Dee had a different understanding: It contended that the injunction covered the overall form and shape of the awnings irrespective of the type of finish, so it instituted a contempt proceeding against Dometic. Zip Dee's take on the scope of the injunction was rejected by the California District Court, which ruled that the injunction related to the totality of Zip Dee's trade dress, expressly including the mirror-like finish.⁴

Zip Dee then tried a different tack. In 1990 it filed an application with the United States Patent and Trademark Office ("Trademark Office" or simply "Office") for a trademark for the "overall configuration of a slatted cover for an awning on a recreation vehicle." Although the Office initially rejected the application, Zip Dee was eventually able to convince the Office that the product configuration was entitled to federal registration. On December 15, 1992 the Office registered Zip Dee's trademark on the slatted awning configuration.⁵

Zip Dee then brought this suit in May 1993, advancing both patent and trademark claims. After three years of pitched battles at every turn, generating no fewer than 11 written opinions by this Court, the litigation continues to inch toward trial. Now Dometic's Rule 56 motion seeks summary judgment on Counts VI, VII, VIII and IX of Zip Dee's Third Amended Complaint ("TAC") — the counts alleging that Dometic infringed Zip Dee's registered trademark and its common law trademark rights in the slatted awning cover configuration.⁶

Dometic advances two related arguments here in support of its motion for summary judgment. First Dometic claims that Zip Dee cannot have an enforceable trademark in the roll-up RV awnings with a slatted metal cover because that would contravene the policies underlying patent law, specifically the public's right to copy and use inventions once a patent expires. Dometic also argues that it is entitled to judgment on Zip Dee's trademark claims because the slatted awning cover is functional and therefore cannot qualify for trademark protection. Neither argument can really be addressed without first setting the stage by discussing the tension between patent and trademark policy at work here, and correspondingly the law that is to be applied.

Policies Underlying Patent and Trademark Law

By now it is axiomatic that the patent and trademark laws protect different interests (see Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 657-58 (7th Cir.1995)). Trademark law is aimed at assisting consumers in identifying the source of goods, a goal served by granting an indefinite monopoly to the user of a particular unique symbol that connects a product with its source (id. at 657). If a symbol is entitled to trademark protection, the holder of that mark has an exclusive right to use the symbol to identify the holder's product and can bar others from using the mark, thus protecting consumers from confusedly thinking that they are buying the manufacturer's product when they are instead purchasing an imitation. Although the granting of such a monopoly might seem counterintuitive to fundamental notions of free market competition, that misperception is dispelled by a rather straightforward explanation (id., footnote omitted):

Allowing a particular producer to monopolize a symbol in this way is no burden on competition, the theory goes, because symbols are a dime a dozen. The only value of the initially arbitrary symbol comes from its association with the producer's products and the good or bad will consumers feel toward that producer is based on the quality of those products. Because the symbol itself adds nothing to the product, consumer desire for products marketed with that symbol must derive solely from the belief that the products bearing the mark originated with the producer for whom the consumers have developed the goodwill. Therefore, the only reason a competitor would copy a mark would be to pass off his product as that of the original producer.

So far so good. But the water gets decidedly murkier when it comes to a product configuration trademark such as the one claimed by Zip Dee here. Product configurations can be trademarked (W.T. Rogers Co. v. Keene, 778 F.2d 334, 337 (7th Cir.1985)) if the manufacturer can show that the configuration is either inherently distinctive or has acquired distinctiveness through secondary meaning, as well as showing the likelihood of confusion (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 2757, 120 L.Ed.2d 615 (1992)). In other words, if the configuration of a product is the vehicle through which consumers connect the source with the product — playing the same role of "source signifier" that a word or symbol does in the more traditional trademark context — then that product configuration may be entitled to trademark protection if there is no conflict with the federal patent laws.

But such conflicts do sometimes occur because of the policies underlying the patent laws, and hence the need for the "may" qualifier. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146, 109 S.Ct. 971, 975, 103 L.Ed.2d 118 (1989) has pointed out that "from their inception, the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of the competitive economy." Bonito Boats, id. at 150-51, 109 S.Ct. at 975 went on to describe that "careful balance":

The applicant whose invention satisfies the requirements of novelty, nonobviousness, and utility, and

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