*1 CPG PRODUCTS
CORPORATION, Appellee,
v. LUGGAGE, INC., Appellant.
PEGASUS 84-866,
Nos. 84-880 and 84-972. Appeals,
United States Court of
Federal Circuit.
Oct.
ISSUE Whether the district court erred in enter- ing the decision judgments appealed from. *3 OPINION James, Franklin, Harold James & New Appeal A. Nos. and 84-866 84-880 City, argued appellant.
York for himWith Myron on brief were Amer and and Richard N. conclusions entered the district respecting patent Friedman. in- fringement form such a fully adequate and Steven Pokotilow, Blum, B. Kaplan, compelling basis for place affirmance as to Friedman, Beran, & Silberman New York on the borders of frivolity appeals from City, argued appellee. for With him on patent infringement portion of the were I. Kaplan, MeRoy brief Harold L. judgment and the decision denying Pega- Lillehaugen Aufrichtig. and Peter D. 60(b) sus’ Rule motion. Respecting patent infringement, Pegasus MARKEY, Before Judge, Chief (a) asserts that: (Pela- the named inventor RICH, FRIEDMAN and Judges. Circuit vin) inventor; was not the (b) true mode”; does not disclose the “best MARKEY, Judge. Chief (c) claims 2 & are anticipated 3 by United 3,071,220 States Patent No. to O’Neil appeal 84-866, Pegasus In Luggage, No. (O’Neil patent), and the other claims “are (Pegasus) Inc. appeals portion from the [sic, obvious thereover” “in view of the judgment of the United States District (d) patent”]; O’Neil its does not Florida, Court for the Southern District of infringe suit; (e) in claims Division, holding Miami it liable for in- royalty unsupported. rate is fringement of claims 3-5 of United States Respecting competition unfair under 3,730,308 (the Patent No. patent), ’308 43(a), Pegasus argues (f) that § Lark’s Luggage Corporation (Lark), Lark a divi- proven. case (CPG), sion of Corporation CPG Products enjoining Pegasus and further from acts of (a) Inventorship under the Lanham Act Pegasus raised this issue for the 43(a), 1125(a)(1983). 15 U.S.C. See 221 § 60(b) first time in its Rule motion for relief USPQ (S.D.Fla.1983). 766 judgment, asserting from that Pelavin re 84-880, appeal In No. appeals suggestion lug ceived the Pellón in use 60(b), from a denial of its Rule Fed.R. gage Company, from the Pellón and that Civ.P., motion for judg- relief from final “entrepreneur district court confused ment. ship inventorship,” citing Morgan v. Hirsch, 1449, USPQ (Fed. 221 F.2d appeal 84-972, In cross-appeals No. CPG Cir.1984). portion judgment from the denying (a) 60(b)motion, In Pegasus alleged its claims its Rule patent infringe- for increased “surprise”, “newly discovered evidence” damages 284, ment under 35 U.S.C. “misrepresentation or other miscon- (b) attorney fees under 35 U.S.C. offered, duct party.” of an adverse It how- foregoing appeals were consolidated ever, nothing allega- in support of those 18, response April to an 1984 motion of tions save the naked assertions of counsel. CPG. us, Pegasus points nothing Before in the Appeal Nos. 84-866 and We affirm record to indicate that the district court in 84-880, Appeal and reverse and remand in any deny- its manner abused discretion International, 84-972. the motion. No. See Smith Co., 1572, Tool anticipate F.2d either or would rendered Hughes have v. Inc. 889, (Fed.Cir.1985). any set 1579, USPQ 895-94 obvious construction forth litigate an the claims in suit. attempt is- Pegasus’ present improper raise at trial is it failed to sue
unavailing. (d) Infringement Pegasus says its of adhesive use (b) Best Mode precludes infringement. literal Pegasus first raised this Similarly, argues It because the ’308 is for new trial post-trial motions issue its following that he sued Pelavin’s assertion Fed.R.Civ.P., the denials of under Rule to secure the multi did use adhesive support of us. which are not before wall, in layer construction of the court should hear de notion that this fringement if adhesive be is avoided disclosed the Pelavin termine whether any purpose. Pegasus invokes used *4 mode”, Pegasus that the dis asserts “best recognized prosecu the rule of law that a on determined that issue its trict court history estoppel precludes patentee’s tion denying the 59 merits in Rule motions. voluntarily claiming litigation in what it groundless. The district assertion up is not gave prosecution. in That rule Pegasus’ motion, carefully considered court facts, applicable present no to the where memoranda, and counsel’s response, CPG’s prosecution history estoppel exists. such determining in that a new trial was not Pegasus The district court found that not required. That action does constitute its also does not use adhesive to secure determination of the consideration and construction; multi-layer adhesive it uses issue on its merits sufficient “best mode” (to align manufacturing process in its appeal. Pegasus render to on to it available them, layers as Lark the until it secures otherwise, appellants If the could rule were does, by stitching). The district mechanical “appealable” create substantive issues such mi- court said that such use was “of merely listing post-judgment them in mo ef- consequence inconsequential nor tions for new trial. fect,” finding preclude that not to its Pegasus improperly us asserts before infringement properly had literal been very allegations at trial— the made —none error in Pegasus has shown no shown. 59 which formed the basis of its Rule mo attempted to finding; that nor has even sum, no tions. there was and is basis alternative controvert the district court’s Pegasus’ presentation for “best under the doctrine Min proposition mode” court. this Cf. equivalents. Mfg. Mining nesota & v. Eco Chemi Co. cal, Inc., 1265-66, 1256, 757 F.2d 225 (e) Royalty Reasonable USPQ 350, (Fed.Cir.1985). 357 Pegasus says district that
(c) Anticipation/Obviousness
“pre
royalty
ruling on a
rate was
court’s
pre
Pegasus
not
that
mature” because
"was
The district court found
to,
to,
attempt
no
deal with
patent
pared
disclo
and made
O’Neil
“does
contain
damages” at
But CPG
issue of
trial.
sure of
use of
or Pellon-like
Pellón
trial, present
stiffening
“deal
the issue” at
interlining
an
or
did
materials as
voluntarily
it would not
layer
of a
construc
evidence
the walls
royalty.
than
points
grant
a license for less
tion.”
to no error
20%
by Pe
cannot be
finding.
CPG’s evidence
“undealt”
Nor has it shown error
omission,
bitterly that
however
gasus’
district court’s view that the O’Neil
It
may
be rued.
patentability
omission
now
conclusion of
“reinforces the
pro
appellate
among
purposes
Utterly uncon
by the Examiner”.
reached
produced
scenario
argument
cess to
vincing
Pegasus’
that the “re
re-write
among the
Nor is it
appellant at trial.
an
tips” disclosed in the O’Neil
silient
1011
903, 909,
982,
such
USPQ
(Fed.
roles of this court
entertain
efforts
750 F.2d
223
986
Cir.1984); Atari,
re-writing.
Inc. v.
A Group,
at
JS &
Inc.,
1422, 1439-40,
USPQ
747 F.2d
223
Pegasus incorrectly says that “the facts
(Fed.Cir.1984).
1086-87
inadequate
support
record are
Under
substantive law of the Elev-
any royalty
determination of
rate.” It is
Circuit, analysis
enth
of trade
however,
dress in-
not,
royalty
Pegasus’
rate but
fringement under
of the Lanham
protestation
unsupported by
close,
Act involves a
factual evaluation of
Similarly, Pegasus
record.
has shown no
image
product
“the total
of a
may
concluding
that the district
basis
size,
include
shape,
features such as
color
awarding
pre-judg-
abused its discretion
combinations, texture,
or color
graphics, ment interest.
particular
techniques.”
even
sales
John H.
Checks, Inc.,
Harland
v.Co. Clarke
(f)
Competition
Unfair
966, 980,
USPQ 515,
F.2d
(11th
(i)
Section
Cir.1983), citing Original Appalachian
Pegasus suggests that the district court Artworks,
Inc.,
Toy Loft,
Inc. v.
684 F.2d
findings
should have entered
and conclu 821, 831,
USPQ
(11th Cir.1982).
sions different from those it did enter in
record,
As is evident from the total
respect
of the count for unfair
district court
image
considered the total
43(a).1
might,
under
Whether we
were
light
the Lark
legal prin-
trial,
sitting at
we
have reached different
ciples ennunciated in Harland and Origi-
not,
however,
and conclusions is
*5
Appalachian
nal
Artworks.
Original
the test.2 See The American
The Eleventh
in
Circuit Harland did not
Jenkins,
459,
Corp.
(Fed.
v.
774 F.2d
462
require
plaintiff
that a
establish non-func-
Cir.1985), citing
City
Anderson v.
tionality of all features in common relied
-
-,
City,
Bessemer
U.S.
105 S.Ct. on;
required
plaintiff to establish that
1504, 1511,
(1985).
1012
(2d Cir.1981).
950,
USPQ 1,
There,
946,
3
F.2d
210
43(a).” Id.
under
§
Chemical,
Moreover,
as noted Chevron
of utilitarian
here,
consisted
dress
trade
43(a) analysis
question
principal
found
features
and ornamental
features
public
likely
to be
or not the
been “distinctive
“is whether
to have
district court
confused,
the first
Finding
rather
than whether
J.3.
and memorable”.
secondary
acquired
has
trade dress
comer’s
“many
noted that
court in Harland
703,
USPQ
212
at
F.2d at
meaning.” 659
prod-
Memory Stub
Harland’s
features of
concept and location
as the
uct—such
stub,
lines for record-
carry-around
Appalachian,
Original
As stated
stub, the vertical
on the
ing information
of an action under
essential element
“[t]he
stub,
the horizontal
perhaps
size
plaintiff
proof
clearly are func-
size of the stub
infringement by the defendant cre-
alleged
well—
983-84,
USPQ at 530-
219
at
tional.” Id.
part
on the
of confusion
ates a likelihood
nonetheless,
held,
that the
court
31. The
goods.”
source of the
consumers as to the
that other
determination
district court’s
A
831,
USPQ at 753.
684 F.2d at
non-functional”
“primarily
features were
of confusion “rests on
finding of likelihood
review,
on
and that
could not be overturned
variety
factors includ-
of a
an evaluation
finding
supported a
that determination
intent,
similarity of
ing the defendant’s
43(a). Id. at
under
product,
sim-
design,
similarity of
987,
USPQ
at 531.
purchasers, the
ilarity
outlets and
of retail
media,
advertising
and actual
similarity of
the district court
Pegasus argues that
Chemical, supra, 659
meaning”
“secondary
with
confusion. Chevron
to find
failed
832,
USPQ
at 754.
703.” Id. at
non-functional F.2d at
respect to PERMAMATIC’s
not,
affirmed
Appalachian
had
at
Original
Eleventh Circuit
features. The
decision,
factual and must be
district court’s
“is
the time of the
meaning
secondary
clearly erroneous. Dallas
upheld
whether
unless
addressed
shown,
Harland,
Emblem,
su
1013 5) (a (Exhibit being E.l demonstration Conclusion Lark conflict with court). J.3, i.e., before It heard Finding supra, though not conducted this it was subject examination testimony to cross copying based on the view that of utilitari- the demean- opportunity had the to observe an or functional features alone is sufficient affirming In the dis- or of the witnesses. support finding a that likelihood of con- case, trict in a similar the Eleventh court present Nor, fusion was and intended. as- stated, “Intent confuse custom- Circuit suming arguendo [to that the district court did noted, ers], district court must often as the factors, not consider all relevant would that proved by be circumstantial evidence”. independent circumstance constitute an ba- Jellibeans, v. Clubs Skating Inc. Geor- reversing sis for University its deicsion. 843, 10, Inc., 833, USPQ F.2d 222 gia, 716 Ass’n, Georgia supra, Athletic F.2d 756 (1983). 1542-43, USPQ at at 1128. infringement is Patent not the un Harland, As noted trade dress “a 43(a), competition envisaged fair complex composite of features” which patent to a utilitarian features attributable together, sepa- must “be considered ed structure cannot in themselves and 980, rately.” USPQ 711 F.2d at at alone create trademark distinctiveness. guid- The district court here followed that particular this The district did not in Pegasus ance used features legal prin those gainsay case fundamental color, trim, shape such as of trim to ciples presence when noted that create “medium Finding a for confusion”. coupled such features “when with non J.4. If the district refer- court included a features,” J.2, Finding functional intention unique concept”, ence to “Lark’s functional ally image a created distinct total intended J.4, Finding presence because it saw a public, i.e., to confuse the to create a false concept image lug- the total of the designation origin as to source gage, such inclusion not in a was this case Pegasus’ luggage. Finding J.4. Cf. substitution of law for un- that of competition. fair concluded,
The district court follow ing physical comparison respective of the case, this the district court found lines, Pegasus copied had Lark’s ornamental embellishments “memo (which “not features” utilitarian distinctive”, and that fea rable and those perfectly free to do absent “clearly adopted by Pega been tures had protection, Harland, Lark’s see an intent to sus with cause likelihood 529), USPQ F.2d at at “but also purchasing public.” That confusion non-functional features the PERMA- finding has not been shown to been have MATIC construction.” Conclusion E.l. clearly erroneous. on, saying district court then went copying likely to confuse the “[s]uch *7 (ii) Injunction public origin the the about of PEGASUS luggage adopting by construction all the record, present of On the and under design PER embellishments of LARK’s standards, there appropriate appellate the added) luggage.” (Emphasis MAMATIC holding is no either that dis basis the E.l. Conclusion judgment compe trict court’s on the unfair (“such of tition count was the result reversible language of E.l Conclusion error, that the its copying”) may in or district abused have been inartful. Read context, however, granting injunctive in relief full it is clear that the discretion against competi that design Lark’s em- continuance of unfair district court considered non-functional, injunction not to tion. The district did primarily be court’s bellishments Pegasus’ preclude competition fair and did un copying of fea- not and viewed those gen public”. governing right the “likely to confuse the dermine the laws tures as compete copy products and to the Findings erally conclusions must be viewed to and (absent patent infringement whole, necessary of it is not to read others as a interpreted, injunc- that Properly con- conduct. origin). of On the indication false in record this case prohibiting its was on the total injunction, tailored tion trary, it 1700 series selling eminently proper.4 from “the fair Pegasus any luggage which looks luggage or of look, urges inappropriate- Pegasus us to Pegasus remains in Thus thereto”. similar separately and to ly, at individual features can use col- luggage business and the injunction the judgment the review trim, design or, trim, shape of or other vacuum, in a against unfair chooses, except such com- it embellishment i.e., though never been a trial as there had design elements of those as bination witnesses, heard in which district court looks similar to luggage that may result compared credibility, and in their evaluated means employed it as its series the 1700 luggage lines of respective entireties public.3 confusing making findings, reaching its its before free that remain to arguing it must conclusions, issuing injunction. its We others, by and tan colors used use black authority. no such have shape present trim is of its and that Lark’s, Pegasus from ar- slightly different B. No. Appeal 84-972 injunc- an different case and attacks gues a designers are Pegasus’ issued. tion never (a) Infringement Patent Willful color, using as a from black precluded not trim, variety of leather or a wide or tan court, As found the district Pelavin trim, creating that shapes of spring spoke Seymour with to the of confusion not lead likelihood will (Friedman), Pega- President of Friedman Indeed, from the 1700 series. that resulted sus, Luggage in New at the Dealers’ Show pat- against injunction compliance with York, City, and told Friedman York New part infringement may itself remove ent patent. infringing ’308 Fried- he was problem, extent designer’s to the of even to he was unaware where man said patented construction contributed copy patent. of a United States obtain image luggage. of the 1700 series the total not con- Friedman also said he would have infringing if the was owned tinued fully free Pegasus thus remains Corporation, only by Luggage the old Lark long purchasers so as not compete, but, subsidiary was a now Lark origin of its likely to deceived to the be (i.e., CPG) Mills it did bother found, General and no goods. The district court . receiving a copy After him to continue. finding, has shown in that error been Pelavin, Friedman, patent from the ’308 image” “total of its 1700 series with admittedly having though lawyer not a Pegasus intended and did create likeli law, knowledge decided that little The in purchasers. of confusion of hood infringed or not patent was not valid against competition merely the junction counsel, and, continued Pegasus course without advice requires that cease that similar to the 1700 series said that looks so review not what the district court at 3. We did, i.e., trial, effectively injunction con- the likelihood of but what as to continue fusing purchasers reads: the district court to ordered. It found Pegasus did have resulted from the 1700 series. competi- By reason acts of unfair its officers, clarify Inc., request in- tion, court to district Luggage, em- servants, successors, appeal difficulty junction, agents, assigns, nor has it on asserted ployees, partic- understanding persons The district court concert and its breadth. and all active parties difficulty them if such ipation them or shall to the controlled remains available *8 hereby enjoined permanently and be and should in future arise. offering selling for from and sale restrained accountings Though ordered court district luggage luggage or 1700 Series of infringement damages resulting from similar thereto. looks competition, Lark is not enti- and from unfair resulting damages from the same to dual tled 4. warned, continually passengers are As airline Services, v. & Stevenson Inc. act. See Stewart may luggage a look "similar”. in broad sense all 635, (11th Cir.1984). Pickard, 644 749 F.2d injunction precluding interpret sale of We
1015 Pegasus’ lug- manufacturing findings (1) 1700 series of no error in the that: Friedman gage.5 was specific allega- informed of Pelavin’s infringement given tion of copy “[although court said that The district (2) patent; of the ’308 Friedman took no sold, Defendant made continued to steps through affirmative consultation sell, luggage make and the accused con- — with counsel or otherwise—to ascertain action is not struction his construed as deliberate____ Pegasus’ whether 1700 in- series clearly record is clear fringed patent; (3) Pegasus the ’308 inquiry that Defendant made no into the deliberately infringing continued because validity infringement LARK’s claim of subsidiary Lark was a of General Mills. ignored Having simply same. made no Each of those merely sup- is not scope patent, ascertain the of the effort to ported compelled However, but is the record. The validity, or its this court [sic] district finding Pegasus’ court’s disregard finds that his does not reach the be- havior on this record level of deliberate indifference or wanton failed to constitute infringement.” thereup- The district court willful and infringement deliberate is on damages on claims for denied CPG’s treble those facts anomalous and clearly thus er- attorney fees. roneous. appears likely It that the district court We therefore remand the issue of in had neither seen nor had called to its atten- damages creased under 35 U.S.C. 284 to Devices, tion Underwater Inc. v. Morrison- the district court for reconsideration in Co., Inc., 1380, 1389-90, 717 Knudsen F.2d light present holding of our appeal on this 569, USPQ (Fed.Cir.), Sep- 219 576 decided Pegasus’ infringement was willful. 23, case, tember 1983. this court generally See The American Original said: Jenkins, 459, Corp. v. 774 F.2d 464-466 Where, here, potential infringer (Fed.Cir.1985); King Corp. Instrument v. has actual notice another’s 853, Otari, USPQ (Fed. 767 F.2d 226 402 rights, duty he has an affirmative to Cir.1985); Rosemount, Inc. v. Beckman exercise due care to determine whether Industries, Inc., 1540, USPQ 727 F.2d 221 infringing. he omit- [Citations (Fed.Cir.1984); sup Devices, Underwater duty includes, an Such affirmative
ted.] 1380, ra, USPQ 717 F.2d alia, duty inter to seek and obtain competent legal from advice counsel be- (b) Attorney Fees any possible the initiation of in- fore fringing activity. The district court made no determination [Citations omitted.] judice the case whether sub is an “ex- finding respect A district court’s ceptional warranting case” an award fact, infringement willful is a attorney fees under 35 U.S.C. 285. We clearly reviewable under the erroneous question therefore include that in our re- 52(a), standard of Rule Fed.R.Civ.P. Un- mand. Devices, 1389, supra, derwater 717 F.2d at USPQ at 576.6 Conclusion The district court’s ultimate find portion judgment of no deliberate or willful and the incompatible applicable findings injunction appealed appeal with the from in No. 84- clearly articulated. has shown 866 is affirmed. court, 5. The district found that Friedman’s testi- ted to the discretion of the district mony respect efforts to merchandise the exercise of which will not be overturned absent severely impeached Rosemount, 1700 series case his showing a clear of abuse. Inc. v. credibility. Instruments, Inc., 1540, Beckman 727 F.2d 1547- 48, 1, (Fed.Cir.1984). USPQ damages 6. When increased are awarded under damages the measure of those commit- *9 1016 States, 15 60(b) U.S.C. ap- Laws of the United Rule motion The denial of the 43(a) 1125(a),” is of the Lanham which No. appeal § § from in 84-880 pealed af- (note 1, supra), designation I Act shall
firmed. involved, Therefore, firstly, we use. are appeal from in judgment appealed provide patent laws which for with the and the issues 84-972 reversed No. rights others from to exclude time-limited attorney fees are damages and increased making, using selling or inventions covered remanded. here patent claims. The involved patent AFFIRMED-IN-PART, REVERSED Secondly, expires years. than 5 we in less REMANDED-IN-PART. AND 43(a) deals are involved with which basi § partic cally competition, more with RICH, Judge, dissenting part. Circuit competition is unfair ularly which be with designation of ori cause it involves agree the result reached on with false description, representa gin, or all issues but not with that is said false false tion, given have been broad terms which doing so. interpretations where commercial unfair majority’s is the treat- All I dissent from against such un ness is found. Protection case, 43(a)1 aspect of this ment of like competition pat fair is not time-limited “(f) Competition” section of Unfair protec rights. closely ent It is akin to opinion. apply the courts given tion trademarks and with an re- majority opinion, undue principles. H. same John Harland Co. on Rule and failure to heed the liance 966, Checks, 981, Inc., v. 711 F.2d Clarke evidence, persuasive more case creates a 515, Cir.1983). USPQ (11th 219 528 Trad plaintiff-drafted plaintiff for than even purchasers ers not deceive confuse must or highlighting further fact origins merchandise. The about the highlights thereof. But those selected law, aspect of the third involved (1) large findings2 fatally are flawed tempers foregoing, of the with and both to, unsupported by, contrary or even part underlying principle involved in anti case; (2) on un- the evidence in the based marketplace in the trust law: (3) legal principles; contrary sound encouraged copy to that end is to be and law of the Circuit the law Eleventh outright, copying deliberate —even —is adopted circuits as the Eleventh other permitted as beneficial to consumers ex circuit; (4) product Circuit this cept by patent it is forbidden law or where (5) independent judicial thinking; explic it deemed “unfair” because involves self-contradictory. extent some some inherent falsification of kind. or Co., Roebuck Co. v. See Sears & Stiffel 661, 225, 784, 11 L.Ed.2d 376 84 S.Ct. U.S. I. USPQ (1964), Compco Corp. 140 v. 524 aspects country law of Three this Inc., 234, 376 U.S. 84 Day-Brite Lighting, complaint are involved. The contained two 669, USPQ 11 L.Ed.2d S.Ct. counts, one separate distinct and (1964). designa- for “false and one origin descriptions rep- majority, like the false or It seems to me that the tion court, forgotten completely have or arising under Trademark district resentations 43(a), by any person who believes that he Act of action ... 1. The Lanham Trademark 1125(a), any provision likely damaged by use relevant of which to be 15 USC is or is description representation. or reads follows: such fabe [Emphasis mine.] Any person use who shall ... in connection designation any goods ori- ... false issue there are four fact On the description representation, gin, or false findings, designated "J. 1-4” which to be symbols tending including other words or USPQ three 776. The corre- found in at same, represent fabely to describe or 1-3,” "E. sponding law are conclusions of goods enter cause or services to shall such USPQ commerce, at 780-81. shall be liable to a civil into ...
1017
aspect
goods.
Recently,
the third
and have treat-
how
overlooked
[Cases cited.]
ever,
Pega-
recognized
courts have
that
copying done
defendant
the de
ed all
sign
product
may
aof
itself
constitute
assuming
copying
there
sus—
—as
protectable
43(a)
trade dress under
inherently wrong. They
though it were
§
See, e.g.,
the Lanham Act.
Warner
mixing
approved
up by
also
the dis-
have
Bros.,
Inc.,
Gay Toys,
Inc. v.
Most trade actions be common to the dress of these there must be packaging labeling or trade. statute involve Under type something in nature of unfairness or of this are known trade falsification, “packing evidence an intent cases.” *11 origin. I cause confusion as to mislead or Pegasus fly-by-night is no “knock off” in this case and find no evidence intent of artist; it is as substantial as Lark and absence, challenged appellee its when companies apparently steady two com- nothing say. to The trial court has had Pegasus petitors. is not interested in hav- merely The in- inferred intent. of ing purchasers luggage think its is Lark’s. clearly is tent erroneous. gross approaches Its annual million and $8 Friedman, Seymor president, its elect- emphasize I was Finally, return to and president Luggage ed of The and Leather paragraph quoted above which states last Pega- Goods Manufacturers Association. things plaintiff three basic a such as in in employs people factory sus its prove CPG must establish to a claim under prime Florida. It has advertised on time 43(a): confusing similarity, § non-func- expensive TV. Lark makes the more line in tionality of the features common relied If on, of cases. it comes out with a successful secondary and the existence of mean- line, there is no in this purloined reason the law of ing in the features or combina- why Pegasus try plaintiffs country in should not for its tion of on features relied market, subject share of the to the limita- product, which means that those features long tions I have mentioned as it by (origin indi- above—so themselves have trademark (which infringement avoids it has cating) significance in the minds of the here) long it not public. done so does produced by No evidence conduct business so as to mislead secondary meaning CPG to show either purchasing public by some confusion, necessary or likelihood two falsification buying. to whose merchandise it is These elements of its case. my utterly are two different matters and in this CPG’s brief court on the § that, point though Pegasus may even is only pages issue consists of sole- devoted in copying, have done the evidence some ly single to the it contention that is not this case does not show it has more done necessary meaning, secondary show principles than is entitled to do within the it clearly indicates CPG’s awareness of developed and the case law the absence of evidence on that matter. Pegasus Granted that is liable thereunder. Assuming, arguendo, that that contention patent infringement, discussing for all am correct, is there is still no evidence of likeli- it for separately is whether liable unfair hood of confusion. evidence shows 43(a). competition meaning within features, certain common infringement competi- Patent unfair brings question me to the effect of dispose tion in that sense. I will of that those common features on the viewer point first. equally important questions Pega- them, purchaser right ordinary cannot tell copy sus’ or use re- them packing gardless looking at either case whether or copying, and whether did patented not it the Pelavin inven- copy contains fact them. invisibly tion. The contained in invention is III. the structure of the It has no more case. appearance rustproofing effect on than the comprehend order discussion has on the bottom of new car on question, the copying one must have a vis- Callman, appearance of the car. trade- impression ual of what the in this Competition authority, mark in his "Unfair like, case looks to which end I annex to this 4.57, Monopolies,” page says: opinion copies plaintiff's 16 and exhibits plaintiff-competitor pleads the LARK 31. Ex. shows PERMAMAT- Where a Lark and unfair IC made Division both com- Mills, held, Inc.). (now properly courts have petition, CPG owned General identical, 31 shows the case. Suitcases when the acts are Ex. of action for unfair cause bination with other itself, features or by [Citing must be dismissed. parties cases.] when both offer their luggage in a variety words, of colors. But the patent infringement not, trial court did. In other itself, justification There no competition. also The trial the reference court, majority approval, Finding now with treated of Fact J-4 to “LARK’s color.” though it as it were. is an That undesir- Which color? Lark no proprietary has col- able innovation the law. or, the evidence from Lark’s being founder
Now I call attention to the other manufacturers use illustrations the same var- the annexed exhibits. Names are the most ious colors. origin obvious indications of and Ex. 16 *12 judge, J-l, The trial in finding refers to hang-tag key-chain tag bearing shows a or shape “trim and of trim.” trim only The the hanging name LARK from the handle. can see shape, that has straight other than Pegasus The is that evidence also used applied lines margins around obvious hang-tags flying-horse fabric with logo its normally where trim is luggage, used on them, stamps and name on PEGASUS are the four reinforcements, corner and the with a hot die on the the front of case. Its corner are definitely reinforcements of dif- origin-indicators appear also inside the shapes. shape Pegasus The is ferent case, purchaser surely which a would ex- picture. LARK’s, clear from the which is buying expensive amine before this item. clear, not so in having differs a convex representation is
There no false here. curve in the Pegasus middle whereas has a The possible distinguishing other feature curve; just opposite. concave the How luggage of LARK is the what witnesses purchasers could this confuse origin? as to the stripe” referred to as “Gucci common to the Lark line—a of wide band material All that is left is may the handles. be As stripes having with three the colors of the seen, they markedly. differ LARK has flag, disposed vertically top Italian on the lines, rectangular Lug- curved. of or front face the case in line with the gage, specifically packing cases, cars, like parties handle. Both the trial court way very has a of looking much re- alike trademark, stripe have treated the aas gardless of type who makes it. Each is means that it which indicates LARK as the many bound to have features common. origin. stripe No such or similar anyone But really does have much trouble cases, Pegasus’ is used on and the feature telling a Buick from a LARK Cadillac? J-l). (finding trial court so held fancies itself the Cadillac of the field here names, Aside differ, from the Pegasus, Is involved. as the in the Buick stripe, by the used LARK Pega- but business, prevented making to be from a sus, what is else there on a which to base bag many appearance with similar fea- origin claim of indication or or false unfair so, why? tures? If Isn’t way the immitation. As Gertrude Stein would have competitive merchandising customarily said, “A suitcase is a suitcase is a suit- public done? Isn’t that what the wants case.” What color you would have? Black right and has a to? nylon vinyl leather Any- tan or trim? judgment, fact, In my the of one the is free business to se- essentially written Lark’s counsel lect and sell such a combination. Several adopted by judge the trial on the Count Pelavin, patent-in- do. Mr. the inventor of II Unfair Competition are to- issue suit, LARK, instigator former owner of tally unjustified by record in this case the suit, the principal of fact witness for clearly and are So are the con- erroneous. CPG, that many conceded were los- firms issue, clusions of law on also essential- colors, saying “you the same can’t counsel, ly being drafted Lark’s based protection using obtain from a color.” In- deed, they clearly are on erroneous fact find- it is foolish even to think color as case, origin ings legal principles. an indication of in this in com- unsound Perhaps trying say it is to one can ed. IV. advantages of a LARK PER- enjoy all perhaps con- aspect this case money by buying case for less MAMATIC judge is that the trial used roe most cerns case, I have heard a PEGASUS but never primary as- as to misleading false or case, that this either pect origin majority’s at de- the merchandise within notwithstanding the effort emphasized 43(a). purview is clear from nying it. This of § Findings Fact J-2 and J-4 portions of Competi- Law “E. Unfair Conclusion of mine): (all emphasis tion,” pertinent part, paragraph reads: By reason LARK’s 2. has PEGASUS Series crusha- rights utilitarian feature of utilitarian features copied ble, light weight luggage is deformable, pat- and claimed in the suit described unique to LARK PERMAMATIC ent, also the non-functional features but Thus, coupled with when construction. construction. the PERMAMATIC features of the PER- the non-functional copying Such likely confuse construction, in- MAMATIC PEGASUS origin public PEGASUS about and, fact, likely tended confuse construction by adopting all of public origin PEGA- about *13 design the embellishments of LARK’S adopting construction luggage by SUS' luggage. The essential PERMAMATIC design of all of the embellishments of an action under is element (Pela- luggage. PERMAMATIC LARK’s alleged proof by plaintiff the the Tr., 109). vin infringement [patent or trademark?] use of LARK’s color 4. PEGASUS[’] defendant creates a likelihood of con- the copy- in combination with its trim and part on of as to the fusion the consumers unique con- LARK’s of functional goods. [Emphasis and source of the cept creates a medium for confusion and bracketed insertion mine.] may subjected cause a consumer to be to claiming they can the others obtain proposal with This conclusion is LARK’s another luggage PERMAMATIC changes: following the insubstantial through other cheaper name outlets at a 1; (1) (2) likely” line “is for comma in a price. 5; (3) in line omission of “was intended" copy a verbatim Finding is of LARK’s symbols. I two “R-in-a-circle” have omit- omitting only proposal three “R-in-a-circle” Original to ted at the end a citation the symbols appended PERMAMATIC. to Appalachian Artworks case. Finding proposed by was substance my unwilling I to lend name to the am (1) changes LARK. The made were: “col- jumble and approval patent a of such or and trim” for “ornamental emblishment law, surprised competition and I am unfair (2) [sic]”; “may cause a for consumer” was, doing so. majority to That find (3) public”; “will cause the and omission of however, theory plaintiff, on symbol finding one as in 2. The second CPG, argued the trial proceeded and to upon analysis, truly half is for Pegasus' to motion response judge. gibberish. I know from the record and (this case) jury a is not a “directed verdict” arguments claim- therein that the “others II, Competition, on Unfair at Count ing” having refers to retail no salesmen case, argu- plaintiff’s the close of the Pegasus; they connection with but how ment ran follows: packing persuade a customer that a
would piece [Pegasus] luggage here is [T]his is sold under the name PEGASUS case heart soul of basically copy case es- really a LARK PERMAMATIC invention____ So what we the Pelavin capes meaning of “other me. So does the copy is we have a utilitarian have Pegasus That cases sell less outlets.” to the Count I of the that lead dispute features than LARK cases not namely, infringement. complaint, purchasers are interest- fact in which much purchasers copying origin by of ev- been wholesale reason There’s distinctly feature the Permamat- different ery substantive identifications on the parties, in this case. But did of both particularly ic case Honor, they what stop stripe, that? Your names the LARK at when the trial that, and I in addition to be- judge have done him on entirely took off an irrelevant pointed the factual witnesses lieve that detour: per is the The color se is that out color. THE COURT: —the fact that a cus- per se unique to Lark. trim might tomer look at that and not particular zip- unique to Lark. The you suggest, be confused as does that per Lark____ unique perhaps valance stop vending one who is these items from they point But is that have bearing out some similarities and as a far with the utilitarian structure started out example saying that Luggage this Lark virtually heart soul copy that is costs a whole wheel of a lot more than invention contribution. the Pelavin luggage, you this other let me show this they compounded And have then piece over happens here. What then? Is injury creating a medium for confu- the likelihood of confusion there can sion. you distinguish this? point in the That seems to be the case tied, got where MR. FRIEDMAN [defense counsel]: mind, court’s saying You’re the individual salesman majority tacitly approves issue. The who in the department then works store? I this. I do not. Nor do attribute this line go THE COURT: Yes. I to Sears to reasoning judge; to the trial he buy they a $99 television that advertised. it, merely adopt ready persuaded to made. got there the guy showed me the reasoning was and is CPG’s. The why television buy $285 I should it. *14 provides strong of record evidence this. understanding My is if anybody ever started, trial judge Before the had bought the he lose job. $99 one would his going wanted to know what counsel were example After this irrelevant of typical providing proposed do him about with tactics, merchandising “bait-and-switch” findings law, of fact and conclusions of bearing which have no whatever on a indicating he liked to have them before 43(a) aspect issue or other of this trial. Plaintiff’s said he was counsel accus- case, explain judge counsel tried to to the providing tomed cases them applied that if tactics were such it would trial, rather than before. After after buying lug- result in the customer LARK
hearing arguments at mid-trial from both gage expensive is the because it more on the sides defendant’s motion for a “di- make, Pegasus. persisted: not The court II, 43(a), on rected verdict” Count men- paint I’ll above, you THE COURT: let receiving memo, with tioned and a short I overnight that But have seen it a lot the court reserved decision “until brush. I ways. you time made different Let me show this myself
such as have familiar here, it is one light with the cases that were cited ... dress over not of those but, fully know, that I designer you fact am not as familiar I’m a dresses customer, Well, your buddy. the cases that I I’m regular with were cited as would be____” parties morning important. like to Next probably both it is not presented argument judge further and say MR. FRIEDMAN: ... I can proceed- denied the motion. The case then piece lug- when the consumer sees a toed its termination with defendant’s evi- gage many and that has as differences dence, day. concluded same Lark, particularly Pegasus versus the stripe particularly argument by with the Gucci
During closing counsel identification, pretty it direct is Pegasus on the Lanham Act with the issue, Pegasus Pegasus point say that trying he to make the that hard to is Lark____ key, no or is not That there was likelihood confusion Lark conclusions, it findings and say counsel-drafted Honor, And not to I think.
Your to at least consider or this court Lark, buy Pegasus, that, behooves buy don’t they are and realistically for what buy Lark— buy Pegasus them don’t skepticism a modicum them with view my under- That’s THE COURT: caution. standing of the law. argument his concluded then
Counsel had not sus- plaintiff that a statement with V. likelihood of proving its burden tained it, as I read seems opinion, majority confusion, to the evidence pointing the utilitarian with combining to sanction between identifying differences many color, such as features non-functional cases, mentioning extensive ad- packing to make out a case trim, shape of trim its luggage under vertising dress falsification which trade of § horse trade- featuring flying name own origin, as to public mislead would little there was mark, concluded that so as well. intent to do to find judge then of confusion. likelihood which shed it, these views with concluded I functional law as know Under the understanding of the light on his much are in- of a utilitarian features structure mine): (all emphasis issues significance. trademark having capable of one USPQ left to Deister, If was THE COURT: 289 F.2d In re thing, and it, to one thing, 1961), following it is not left too but cases (CCPA I real- being predisposed because signifi- I’m not mention. Trademark numerous to I from yet until hear just know ly do not means, indicating origin or simply, cance just be see it wouldn’t you all. You court’s rest The trial sponsorship. do It has to confusion itself. actual features, con- the utilitarian primarily on is. And that likelihood whatever trary to that law. that. telling you I teaches case was the Harland carefully studied I have Artworks Appalachian [Original case.] case, majority, from on relied the likelihood It’s of confusion herein. There quoted earlier have infringement. the touchstone of has support what nothing opinion in that similarity of in terms of And it talks fact, Har- here. been done similarity design, similarity product, herein, clear, earlier shown made land outlets, you talk even when of retail for a trade requirement “the second utilizing the same kind of of them terms infringement action” “demonstrat- dress *15 day. just I another thing. But that’s ... the trade dress any features of that learn, all. trying to that’s am Harland ‘primarily non-functional’.” are closing made his Plaintiff’s counsel then infringe- dress The trade jury a case. was the case patent aspects of argument on the The court jury. to the issue went ment that he co-counsel rose to state would consistently “functionality has been said competition nothing on the unfair say Therefore, question a of fact.” treated as count. to affirm the that it had court held the course, side sub- on each In due counsel infringement if of trade-dress jury’s verdict and con- proposed of fact mitted on substantial evidence it was based submissions, plaintiff’s of law and clusions correct, they were as instructions were the above, essentially were I discussed charged judge had The trial to be. found judge The trial nev- by the court. adopted defendant fact that the jury that “the the any opinion of kind an on er wrote that are features ... functional utilizes subject. respects to in some or even identical similar plaintiff's prod- ... on features functional too of this all circumstances Under the unfair cannot constitute does not and uct (albeit the forced on practice prevalent es- charged that to He next competition.” many impossible by workloads courts infringe- dress for trade its claim partisan, tablish instances) adopting highly of ment, prove by preponder- “plaintiff must a which the court said was the best evidence that, (1), design the ance of the evidence of likelihood of confusion. There is no of aspects or trade dress Harland’s ... such evidence signifi- in this case. Most product primarily nonfunctional.” cantly, nothing justifies in the case the emphasis.) (My He reiterated that state- “coupling” of patent infringement with re- less three times and then told ment no than spect purely to functional or “utilitarian” it to jury had whether determine features with non-functional features to product trade dress of Harland’s had ac- holding sustain a of competition. unfair quired secondary meaning. a Nowhere did The majority seems not to appreciate judge the trial or the Eleventh Circuit inti- handling that of foregoing points presence mate that the of functional fea- completely unravels the district court’s (a patented tures such as a invention (i.e., LARK’s) rationale in support of its proving on a feature it is at least holding 43(a) competition. unfair § prima functional, Deister, supra) facie can majority says, agreement me, with “coupled” be with non-functional features patent infringement is “not the unfair com- infringing image.” to an create “total petition envisaged 43(a),” § concept of be That unsound law cannot precluded is “not using from black as a found in Harland. color, trim, or tan leather or a variety wide The other Eleventh Circuit case cited shapes of trim.” But district court majority Original Appalachian Art- 43(a) rested its decision compe- unfair Inc., works, Toy supra, Loft, Inc. v. decid- tition on the combination of those very approved ed before and Harland. Like things: “LARK’s color and trim in combi- Harland, no support for what was nation with its copying unique of LARK’s aspects done here. Its trade dress rest on concept” (finding J-4). functional The lat- legal principle the same basic that has not explained J-2, ter element it first complied here, been with stated sentence, reading: “By reason of LARK’s court as follows: “The essential element of rights the utilitarian feature of an proof by action under erushable, deformable, light weight lug- plaintiff alleged infringement by that the gage unique LARK PERMAMAT- defendant creates a likelihood confu- (My emphasis). IC construction.” It cer- part sion on the consumers tainly treated the invention as an essential goods.” source of the The “trade dress” element unique situation there was consisted majority whether or not the do would so. merchandising a technique scheme sales E-l, supra. conclusion See plaintiff devised in connection with “soft-sculpture” sale of dolls. Each doll sold “adoption papers” VI. birth certificate. On anniversary forego any extended discussion sale, birthday card was sent to the doll’s paragraph injunction, “9” the court’s purchaser. buyer an executed “oath 14, 1983, Order, except say Dec. there is of adoption” and the person- doll received a *16 nothing “carefully tailored” about it. al name. Each signed doll’s buttock was injunction shall let the reader look at the appro- a source indicator. Defendant and at Plaintiff’s Exhibit 21 and draw his scheme, priated making only this whole If are own conclusions. there reason- enough changes minor provide some- limitations, they able be found thing argue appeals about. The court the majority opinion, I find incon- which held that the trial of in- court’s injunction sistent with written. fringement of “trade dress” which would confusion, point. perma- One being injunction last create customer a fact part on the finding, clearly major was not nent. It is based in flaw erroneous. There had, moreover, fact, namely, been evidence of actual con- inherent Harland, fusion, utilizing as there had as a ma- been decision. Conclusion jor element 1,May expire on 1990. Will patent will reasons, foregoing For I re- all of the competition unfair con- injunction based on spectfully dissent from decision on Will ever be tinue thereafter? II, alleged Count case “looks packing able to make 43(a) issue. to the 1700 Series? similar”
APPENDIX *18 SERIES LUGGAGE
[PEGASUS] Packing Cases of industrial nylon, trimmed in leather. These designed specially cases are support material reflex they always so resume their shape. former Steel core center handle, removable, plastic lined pocket tapes. and tie inside Black or Bronze with Tan Leather Trim W-7”, H-13", L-22” W-7”, H-16", L-24” 172(6 W-7" H-16" 1.-26”