Sunday, May 23, 2010

Huhtamaki Lifts Cup of Victory Over Dixie Trade Dress Claim

Dixie Consumer Products sued its competitor Huhtamaki Americas in the Northern District of Georgia, claiming a trade dress violation by Huhtamaki over the Dixie Insulair Cup.  Dixie claimed that the bottom white portion of the cup was entitled to trade dress protection.  Judge Timothy Batten disagreed, granting summary judgment to Huhtamaki. The Insulair Cup (pictured, top) has three layers, an inner cup layer which extends to the bottom, a middle insulating layer, and a paper layer outside.  Dixie claimed that the positioning of these layers, creating a white band at the bottom, constituted protectable trade dress.   Dixie started selling the Insulair Cup in 1997.  In 2008, Huhtamaki began selling the competing Comfort Cup.  The Comfort Cup (pictured, bottom) also is comprised of three layers similarly positioned, creating a white band at the bottom. 

Huhtamaki's summary judgment motion raised one major argument, that the element of the cup for which Dixie sought trade dress protection was functional, and under the law there can be no trade dress protection for design elements serving a functional purpose.  As the party seeking protection, Dixie bore the burden of proof because the trade dress at issue was not registered on the principal register.  Dixie pointed out that on February 16, 2010, more than a year after filing, the USPTO approved the mark for publication in the Official Gazette for opposition.  Dixie argued that this was a decision entitled to deference from the court because in reaching that decision the USPTO had rejected Huhtamaki arguments on functionality.  Because no published reasoning from the USPTO was available to support that decision, the court declined to give it any weight, citing a Massachusetts district court opinion, Accord TriMark USA, Inc. v. Performance Food Group Co., 667 F. Supp. 2d 155 (D. Mass. 2009). 

Huhtamaki's claim of functionality relied heavily on the fact that the Dixie Insulair Cup is the subject of several utility patents, especially the Patent No. 6,085,970 (the "'970 patent").  In TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29, 121 S. Ct. 1255 (2001),  the U.S. Supreme Court held that a  utility patent is "strong evidence" that the features claimed to be trade dress are functional.  Furthermore, the court was not moved by the Dixie argument that the trade dress at issue was ornamental.  The court stated that Dixie's argument came down to the assertion that a functional cup added with a functional insulating sleeve resulted in an ornamental feature.  The court rejected this notion, relying on a Ninth Circuit case which held that, where the whole is simply an assemblage of functional parts, where even the arrangement of parts is designed for superior performance, it is semantic trickery to say that there is still some sort of overall appearance that is nonfunctional.  Leatherman Tool Group, Inc. v. Cooper Indus., Inc., 199 F.3d 1009 (9th Cir. 1999).  Ultimately the court decided that the utility patents covered the feature at issue.  This finding was sufficient for summary judgment in favor of Huhtamaki. 

Notwithstanding the sufficiency of the utility patent issue's sufficiency for summary judgment, the court addressed and rejected Dixie's argument that Huhtamaki could have selected numerous alternative non-infringing cup designs, rendering the feature in question nonfunctional.  Huhtamaki demonstrated to the court's satisfaction that the alternative designs proposed by Dixie would cost more or affect the quality of the Comfort Cup.  The court noted also that there are several other examples in the market of insulated cups with a bottom white band below an insulating sleeve. 

Sunday, May 9, 2010

Lowe's Wins Copyright Battle over Light Fixtures

Lowe's won summary judgment against claims brought by a light fixture company over fleur-de-lis shaped light fixtures in the Northern District of Georgia in a ruling by Judge Thomas W. Thrash, Jr.  Bel Air Lighting, Inc. v. Progressive Lighting, Inc., 2010 U.S. Dist. Lexis 23468 (NDGA), decided March 15, 2010.  In this case Progressive claimed that Lowe's had violated Progressive's copyrighted fleur-de-lis light fixture design.  Despite the registered copyright, Judge Thrash found the work to be noncopyrightable, holding that the utilitarian aspects of the fixture were inseperable from the sculptural aspects. 

The facts showed that Progressive had hired a nationally-acclaimed designer of light fixtures, who had come up with a feur-de-lis design for residential light fixtures.  The design was a success, but consumers soon complained that the same fixtures were available at Lowe's for less.  The designer registered a copyright for the design, at first rejected by the Copyright Office, and then granted after reconsideration.  Lowe's had gotten its design from Bel Air Lighting.  In its motion, Lowe's contended that the light fixture design was not copyrightable because the light fixture is a useful article whose artistic features were inseperable from its utilitarian features. 

Progressive admitted that the light fixture was a useful article, which is normally not copyrightable unless its design incorporates artistic features seperable from the utilitarian aspects of the object.  There are two types of seperability, physical and conceptual.  Progressive attempted to argue that the arrangement of the features that create the apperance of a fleur-de-lis was conceptually seperable.  Judge Thrash relied heaviliy on the Eleventh Circuit case Norris Indus. Inc. v. International Tel. & Tel. Corp., 696 F.2d 918, 923 (11th Cir. 1983) in making his decision. 

The court noted that Norris held that conceptual seperability does not extend to functional components of utilitarian articles no matter how artistically designed.  Examples of such features are artistically designed watch faces or a wheel cover that simulates a wire wheel (the object at issue in Norris).  In the opinion, the court cited deposition testimony of the fixture designer admitting that the arms of the fleur-de-lis were used to thread wire through to the light source.  Also, the court quoted the Copyright Offiice Compendium opining that the mere fact that the shape of a useful article is analogous to a work of sculpture or could have been designed differently does not create conceptual seperability, and that therefore in that instance the fact that a light fixture might resemble abstract sculpture would not transform the fixture into a copyrightable work.  Progressive attempted to distinguish Norris by the fact that the object in Norris did not have a registered copyright, and the object in this case did have one.  The court rejected this, noting that a certificate of copyright registration is only prima facie evidence of the validity of the copyright.  The court felt that Lowe's had successfully rebutted the presumption of validity attached to the registered copyright, and granted Lowe's summary judgment motion.