Secalt S.A. v. Wuxi Shenxi Construction MacHinery Co.
668 F.3d 677
| 9th Cir. | 2012Background
- Tractel alleges trade dress protection for the Tirak traction hoist design against Jiangsu in the Ninth Circuit; hoist design features include a cube-shaped gear box with fins, an offset cylindrical motor with vertical fins, a top cap and control arrangement, a rectangular control box, and a rectangular frame.
- District court granted summary judgment to Jiangsu, finding Tractel failed to show the claimed trade dress was nonfunctional.
- The court also held the case to be exceptional under the Lanham Act and awarded attorney’s fees to Jiangsu.
- Tractel’s claims include trade dress infringement under the Lanham Act, federal unfair competition, and related state-law claims.
- The court considers whether the overall exterior appearance is nonfunctional, applying the Disc Golf and Inwood functionality framework, and ultimately affirms summary judgment on functionality and the exceptional-case fee award, while remanding certain costs.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Tirak’s exterior design is nonfunctional | Tractel argues nonfunctional, ornamental design | Jiangsu argues design is de jure functional | Design is functional; no nonfunctional trade dress found |
| Use of a design patent to support nonfunctionality | Design patent supports nonfunctionality | Patent does not establish nonfunctionality for trade dress | Design patent insufficient alone to prove nonfunctionality |
| Whether the case is exceptional under §1117(a) | Tractel contends not exceptional | Case was exceptional due to lack of evidence of nonfunctionality | Court affirmed exceptional designation and fee award to Jiangsu |
| Reasonableness of attorney’s fees and costs | Fees and costs excessive/not properly itemized | Fees reasonable; costs properly taxable | Remand for reasonableness review of costs; fees affirmed |
Key Cases Cited
- TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (Supreme Court 2001) (functional analysis framework for trade dress)
- Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (Supreme Court 2000) (design not inherently distinctive; function considerations apply)
- Leatherman Tool Grp. v. Cooper Indus., 199 F.3d 1009 (9th Cir. 1999) (overall product configuration must be nonfunctional)
- Disc Golf Ass'n v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998) (Disc Golf factors for functionality)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (Supreme Court 1982) (competitive necessity vs. functionality)
- Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1019 (Fed. Cir. 1985) (design decisions tied to functional purposes)
- Kerr v. Screen Extras Guild, Inc., 526 F.2d 67 (9th Cir. 1975) (Kerr factors for fee awards)