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By Anandashankar Mazumdar
Absent evidence supporting a claim that its “cubist” appearance was due to anything more than its functional needs, a hoist device was ineligible for trade dress protection, the U.S. Court of Appeals for the Ninth Circuit ruled Feb. 7 (Secalt S.A. v. Wuxi Shenxi Construction Machinery Co., 9th Cir., No. 10-17007, 2/7/12).
Affirming summary judgment of noninfringement, the court also affirmed a finding that this case was exceptional and thus that an award of fees and costs was appropriate, but the court remanded the question of the appropriate amount of the award.
Tractel Inc. of Canton, Mass., and its affiliate Secalt S.A. of Luxembourg are makers of lifting and suspension equipment for building construction and maintenance. One of Tractel's products is the Tirak traction hoist.
In 2008, Tractel was attending a trade show in Las Vegas and came across the booth of a competitor, Jiangsu Shenxi Construction Machinery Co. (misidentified as Wuxi Shenxi in the complaint) of Wuxi, Jiangsu, China, which was displaying similar hoists.
Tractel sued Jiangsu, alleging trade dress infringement and false designation of origin under federal law and Nevada state law. Jiangsu moved for summary judgment, arguing that the alleged trade dress was functional and thus Tractel could not assert exclusive rights.
Judge James C. Mahan of the U.S. District Court for the District of Nevada agreed with Jiangsu, granting its motion and awarding it fees and costs.
Judge M. Margaret McKeown first upheld the summary judgment ruling, after concluding that “Tractel's hoist is, at bottom, a utilitarian machine with no indication that the visual appearance of its … design is anything more than the result of a simple amalgamation of functional component parts.”
In reaching this conclusion, the court applied Leatherman Tool Group Inc. v. Cooper Industries Inc., 199 F.3d 1009, 53 USPQ2d 1196 (9th Cir. 1999), which stated that “[f]or an overall product configuration to be recognized as a trademark, the entire design must be nonfunctional.”
The court rejected Tractel's argument that the overall exterior appearance of the device was nonfunctional because it was intentionally designed to express a “cubist” sensibility.
According to the court, any object must have an exterior appearance, out of necessity, and in this case Tractel had failed to proffer any evidence that any aspect of this appearance was for any reason other than functional ones. The court said:
A piece of industrial machinery with “rectangular” components that meet each other at “right angles,” without more, is wholly insufficient to warrant trade dress protection. It is not enough to say that the design portrays a “cubist” feel—so does a square table supported by four legs. … Except for conclusory, self-serving statements, Tractel provides no other evidence of fanciful design or arbitrariness ….”
The court rejected Tractel's argument that a design patent supported its claim that the appearance of the hoist could constitute trade dress, citing Krueger International Inc. v. Nightingale Inc., 915 F. Supp. 595, 40 USPQ2d 1334 (S.D.N.Y. 1996), which said that design patents could not prove distinctiveness.
According to the court, the party asserting trade dress protection bears the burden of showing that the design in question is ornamental.
Additionally, the court pointed out that the design patent mentioned by Tractel had nothing to do with Tractel's hoist.
Finally, the court noted that Tractel attempted to assert a four-part test for functionality, as set forth in Disc Golf Association v. Champion Discs Inc., 48 USPQ2d 1132 (9th Cir. 1998). However, applying the factors, the court said that they actually weighed against Tractel, noting that “Disc Golf teaches that ‘[a] product feature need only have some utilitarian advantage to be considered functional.' ”
Turning to the lower court's finding of exceptionality under 15 U.S.C. §1117(a), the court said that Tractel's pursuit of its trade dress claim was unreasonable, given that it had failed to offer any “legitimate evidence of nonfunctionality.”
Furthermore, the court said, Tractel had already been handed a ruling of nonfunctionality of the same trade dress in another proceeding before the U.S. District Court for the Northern District of Georgia.
Thus, the court said, Tractel was “on notice” that it faced serious deficiencies in addressing the functionality question. Indeed, the Georgia court characterized Tractel's submissions in that proceeding as “an utter failure” of proof.
“Tractel's action appears to be a conscious … attempt to assert trade dress rights in a non-protectable machine configuration,” the court said, affirming the lower court's finding of exceptionality.
However, the court rejected the lower court's award of fees and costs of $837,000 and remanded the issue for consideration of the reasonableness of the costs asserted by Jiangsu.
The court's opinion was joined by Judges Michael Daly Hawkins and Milan D. Smith Jr.
Tractel was represented by Scott S. Christie of McCarter & English, Newark, N.J. Jiangsu was represented by James C. Martin of Reed Smith, Pittsburgh.
Opinion at http://pub.bna.com/ptcj/1017007Feb7.pdf
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