U.S Supreme Court
TrafFix Devices, Inc. v. Marketing Displays, Inc.
532 U.S. 23
2001
Justice
Kennedy, delivered the opinion of the Court.
Temporary
road signs with warnings like "Road Work Ahead" or "Left
Shoulder Closed" must withstand strong gusts of wind. An inventor named
Robert Sarkisian obtained two utility patents for a mechanism built upon two
springs (the dual-spring design) to keep these and other outdoor signs upright
despite adverse wind conditions. The holder of the now-expired Sarkisian
patents, respondent Marketing Displays, Inc. (MDI), established a successful
business in the manufacture and sale of sign stands incorporating the patented
feature. MDI's stands for road signs were recognizable to buyers and users (it
says) because the dual-spring design was visible near the base of the sign.
This
litigation followed after the patents expired and a competitor, TrafFix
Devices, Inc.,sold sign stands with a visible spring mechanism that looked like
MDI's. MDI and TrafFix products looked alike because they were. When TrafFix
started in business, it sent an MDI product abroad to have it reverse
engineered, that is to say copied. Complicating matters, TrafFix marketed its
sign stands under a name similar to MDI's. MDI used the name
"WindMaster," while TrafFix, its new competitor, used
"WindBuster."
MDI
brought suit under the Trademark Act of 1946 (Lanham Act), 60 Stat. 427, as
amended, 15 U. S. C. § 1051 et seq., against TrafFix for
trademark infringement (based on the similar names), trade dress infringement
(based on the copied dual-spring design), and unfair competition. TrafFix
counterclaimed on antitrust theories. After the United States District Court
for the Eastern District of Michigan considered cross-motions for summary
judgment, MDI prevailed on its trademark claim for the confusing similarity of
names and was held not liable on the antitrust counterclaim; and those two
rulings, affirmed by the Court of Appeals, are not before us.
I
We are
concerned with the trade dress question. The District Court ruled against MDI
on its trade dress claim. 971 F. Supp. 262 (ED Mich. 1997). After determining
that the one element of MDI's trade dress at issue was the dualspring
design, id., at 265, it held that "no reasonable trier of
fact could determine that MDI has established secondary meaning" in its
alleged trade dress, id., at 269. In other words, consumers
did not associate the look of the dualspring design with MDI. As a second,
independent reason to grant summary judgment in favor of TrafFix, the District
Court determined the dual-spring design was functional. On this rationale
secondary meaning is irrelevant because there can be no trade dress protection
in any event. In ruling on the functional aspect of the design, the District
Court noted that Sixth Circuit precedent indicated that the burden was on
MDI to prove that its trade dress was nonfunctional, and not on TrafFix to show
that it was functional (a rule since adopted by Congress, see 15 U. S. C. §
1125(a)(3) (1994 ed., Supp. V)), and then went on to consider MDI's arguments
that the dual-spring design was subject to trade dress protection. Finding none
of MDI's contentions persuasive, the District Court concluded MDI had not
"proffered sufficient evidence which would enable a reasonable trier of
fact to find that MDI's vertical dual-spring design is non functional."
971 F. Supp., at 276. Summary judgment was entered against MDI on its trade
dress claims.
The Court
of Appeals for the Sixth Circuit reversed the trade dress ruling. 200 F. 3d 929
(1999). The Court of Appeals held the District Court had erred in ruling MDI
failed to show a genuine issue of material fact regarding whether it had
secondary meaning in its alleged trade dress, id., at 938, and
had erred further in determining that MDI could not prevail in any event
because the alleged trade dress was in fact a functional product
configuration, id., at 940. The Court of Appeals suggested the
District Court committed legal error by looking only to the dual-spring design
when evaluating MDI's trade dress. Basic to its reasoning was the Court of
Appeals' observation that it took "little imagination to conceive of a
hidden dual-spring mechanism or a tri or quad-spring mechanism that might avoid
infringing [MDI's] trade dress." Ibid. The Court of
Appeals explained that "[i]f TrafFix or another competitor chooses to use
[MDI's] dual-spring design, then it will have to find some other way to
set its sign apart to avoid infringing [MDI's] trade dress." Ibid. It
was not sufficient, according to the Court of Appeals, that allowing exclusive
use of a particular feature such as the dual-spring design in the guise of
trade dress would "hinde[r] competition somewhat." Rather,
"[e]xclusive use of a feature must `put competitors at a significant non-reputation-related
disadvantage' before trade dress protection is denied on functionality
grounds." Ibid. (quoting Qualitex Co. v. Jacobson
Products Co., 514 U. S. 159, 165 (1995)). In its criticism of the
District Court's ruling on the trade dress question, the Court of Appeals took
note of a split among Courts of Appeals in various other Circuits on the issue
whether the existence of an expired utility patent forecloses the possibility
of the patentee's claiming trade dress protection in the product's design. 200
F. 3d, at 939. Compare Sunbeam Products, Inc. v. West
Bend Co., 123 F. 3d 246 (CA5 1997) (holding that trade dress
protection is not foreclosed), Thomas & Betts Corp. v. Panduit
Corp., 138 F. 3d 277 (CA7 1998) (same), and Midwest
Industries, Inc. v. Karavan Trailers, Inc., 175 F. 3d
1356 (CA Fed 1999) (same), with Vornado Air Circulation Systems,
Inc. v. Duracraft Corp., 58 F. 3d 1498, 1500 (CA10
1995) ("Where a product configuration isa significant inventive
component of an invention covered by a utility patent . . . it cannot receive
trade dress protection"). To resolve the conflict, we granted certiorari.
530 U. S. 1260 (2000).
II
It is
well established that trade dress can be protected under federal law. The
design or packaging of a product may acquire a distinctiveness which serves to
identify the product with its manufacturer or source; and a design or package
which acquires this secondary meaning, assuming other requisites are met, is a
trade dress which may not be used in a manner likely to cause confusion as to
the origin, sponsorship, or approval of the goods. In these respects protection
for trade dress exists to promote competition. As we explained just last Term,
see Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529
U. S. 205 (2000), various Courts of Appeals have allowed claims of trade
dress infringement relying on the general provision of the Lanham Act which
provides a cause of action to one who is injured when a person uses "any
word, term name, symbol, or device, or any combination thereof . . . which
is likely to cause confusion . . . as to the origin, sponsorship, or approval
of his or her goods." 15 U. S. C. § 1125(a)(1)(A). Congress confirmed this
statutory protection for trade dress by amending the Lanham Act to recognize
the concept. Title 15 U. S. C. § 1125(a)(3) (1994 ed., Supp. V) provides:
"In a civil action for trade dress infringement under this chapter for
trade dress not registered on the principal register, the person who asserts
trade dress protection has the burden of proving that the matter sought to be
protected is not functional." This burden of proof gives force to the
well-established rule that trade dress protection may not be claimed for
product features that are functional. Qualitex, supra, at 164-165; Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U. S. 763, 775 (1992). And in Wal-Mart, supra, we were careful to
caution against misuse or over extension of trade dress. We noted that
"product design almost invariably serves purposes other than source
identification." Id., at 213.
Trade
dress protection must subsist with the recognition that in many instances there
is no prohibition against copying goods and products. In general, unless an
intellectual property right such as a patent or copyright protects an item, it
will be subject to copying. As the Court has explained, copying is not always
discouraged or disfavored by the laws which preserve our competitive
economy. Bonito Boats, Inc. v. Thunder Craft Boats,
Inc., 489 U. S. 141, 160 (1989). Allowing competitors to copy will
have salutary effects in many instances. "Reverse engineering of chemical
and mechanical articles in the public domain often leads to significant
advances in technology." Ibid.
The
principal question in this case is the effect of an expired patent on a claim
of trade dress infringement. A prior patent, we conclude, has vital
significance in resolving the trade dress claim. A utility patent is strong
evidence that the features therein claimed are functional. If trade dress
protection is sought for those features the strong evidence of
functionality based on the previous patent adds great weight to the statutory
presumption that features are deemed functional until proved otherwise by the
party seeking trade dress protection. Where the expired patent claimed the
features in question, one who seeks to establish trade dress protection must
carry the heavy burden of showing that the feature is not functional, for
instance by showing that it is merely an ornamental, incidental, or arbitrary
aspect of the device.
In the
case before us, the central advance claimed in the expired utility patents (the
Sarkisian patents) is the dualspring design; and the dual-spring design is the
essential feature of the trade dress MDI now seeks to establish and to protect.
The rule we have explained bars the trade dress claim, for MDI did not, and
cannot, carry the burden of overcoming the strong evidentiary inference of
functionality based on the disclosure of the dual-spring design in the claims of
the expired patents.
The dual
springs shown in the Sarkisian patents were well apart (at either end of a
frame for holding a rectangular sign when one full side is the base) while the
dual springs at issue here are close together (in a frame designed to hold a
sign by one of its corners). As the District Court recognized, this makes
little difference. The point is that the springs are necessary to the operation
of the device. The fact that the springs in this very different-looking device
fall within the claims of the patents is illustrated by MDI's own position in
earlier litigation. In the late 1970's, MDI engaged in a long-running
intellectual property battle with a company known as Winn-Proof. Although the
precise claims of the Sarkisian patents cover sign stands with springs
"spaced apart," U. S. Patent No. 3,646,696, col. 4; U. S. Patent No.
3,662,482, col. 4, the Winn-Proof sign stands (with springs much like the sign
stands at issue here) were found to infringe the patents by the United States
District Court for the District of Oregon, and the Court of Appeals for
the Ninth Circuit affirmed the judgment. Sarkisian v. WinnProof
Corp., 697 F. 2d 1313 (1983). Although the WinnProof traffic sign
stand (with dual springs close together) did not appear, then, to infringe the
literal terms of the patent claims (which called for "spaced apart"
springs), the WinnProof sign stand was found to infringe the patents under the
doctrine of equivalents, which allows a finding of patent infringement even
when the accused product does not fall within the literal terms of the
claims. Id., at 1321-1322; see generally Warner-Jenkinson
Co. v. Hilton Davis Chemical Co., 520 U. S. 17
(1997). In light of this past ruling—a ruling procured at MDI's own
insistence—it must be concluded the products here at issue would have been
covered by the claims of the expired patents.
The
rationale for the rule that the disclosure of a feature in the claims of a
utility patent constitutes strong evidence of functionality is well illustrated
in this case. The dual-spring design serves the important purpose of keeping
the sign upright even in heavy wind conditions; and, as confirmed by the
statements in the expired patents, it does so in a unique and useful manner. As
the specification of one of the patents recites, prior art "devices, in
practice, will topple under the force of a strong wind." U. S. Patent No.
3,662,482, col. 1. The dual-spring design allows sign stands to resist toppling
in strong winds. Using a dual-spring design rather than a single spring
achieves important operational advantages. For example, the specifications of
the patents note that the "use of a pair of springs . . . as opposed to
the use of a single spring to support the frame structure prevents canting or
twisting of the sign around a vertical axis," and that, if not prevented,
twisting "may cause damage to the spring structure and may result in
tipping of the device." U. S. Patent No. 3,646,696, col. 3. In the course
of patent prosecution, it was said that "[t]he use of a pair of spring
connections as opposed to a single spring connection . . . forms an important
part of this combination" because it "forc[es] the sign frame to
tip along the longitudinal axis of the elongated ground-engaging members."
App. 218. The dual-spring design affects the cost of the device as well; it was
acknowledged that the device "could use three springs but this would
unnecessarily increase the cost of the device." Id., at
217. These statements made in the patent applications and in the course of
procuring the patents demonstrate the functionality of the design. MDI does not
assert that any of these representations are mistaken or inaccurate, and this
is further strong evidence of the functionality of the dual-spring design.
III
In finding
for MDI on the trade dress issue the Court of Appeals gave insufficient
recognition to the importance of the expired utility patents, and their
evidentiary significance, in establishing the functionality of the device. The
error likely was caused by its misinterpretation of trade dress principles in
other respects. As we have noted, even if there has been no previous utility
patent the party asserting trade dress has the burden to establish the
nonfunctionality of alleged trade dress features. MDI could not meet this
burden. Discussing trademarks, we have said "`[i]n general terms, a
product feature is functional,' and cannot serve as a trademark, `if it is
essential to the use or purpose of the article or if it affects the cost or
quality of the article.' " Qualitex, 514 U. S., at
165 (quoting Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U. S. 844, 850, n. 10 (1982)). Expanding upon
the meaning of this phrase, we have observed that a functional feature is one
the "exclusive use of [which] would put competitors at a significant
nonreputation-related disadvantage." 514 U. S., at 165. The Court of
Appeals in the instant case seemed to interpret this language to mean that a
necessary test for functionality is "whether the particular product configuration
is a competitive necessity." 200 F. 3d, at 940. See also Vornado, 58
F. 3d, at 1507 ("Functionality, by contrast, has been
defined both by our circuit, and more recently by the Supreme Court, in
terms of competitive need"). This was incorrect as a comprehensive
definition. As explained in Qualitex, supra, and Inwood,
supra, a feature is also functional when it is essential to the use or
purpose of the device or when it affects the cost or quality of the device.
The Qualitex decision did not purport to displace this
traditional rule. Instead, it quoted the rule as Inwood had
set it forth. It is proper to inquire into a "significant
non-reputation-related disadvantage" in cases of esthetic functionality,
the question involved in Qualitex. Where the design is
functional under the Inwood formulation there is no need to
proceed further to consider if there is a competitive necessity for the
feature. In Qualitex, by contrast, esthetic functionality was
the central question, there having been no indication that the green-gold color
of the laundry press pad had any bearing on the use or purpose of the product
or its cost or quality.
The Court
has allowed trade dress protection to certain product features that are
inherently distinctive. Two Pesos, 505 U. S., at 774. In Two
Pesos, however, the Court at the outset made the explicit analytic
assumption that the trade dress features in question (decorations and other
features to evoke a Mexican theme in a restaurant) were not functional. Id., at
767, n. 6. The trade dress in those cases did not bar competitors from copying
functional product design features. In the instant case, beyond serving the
purpose of informing consumers that the sign stands are made by MDI (assuming
it does so), the dual-spring design provides a unique and useful mechanism to
resist the force of the wind. Functionality having been established, whether
MDI's dual-spring design has acquired secondary meaning need not be considered.
There is
no need, furthermore, to engage, as did the Court of Appeals, in speculation
about other design possibilities, such as using three or four springs which
might serve the same purpose. 200 F. 3d, at 940. Here, the functionality of the
spring design means that competitors need not explore whether other spring
juxtapositions might be used. The dual-spring design is not an arbitrary
flourish in the configuration of MDI's product; it is the reason the device
works. Other designs need not be attempted.
Because
the dual-spring design is functional, it is unnecessary for competitors to
explore designs to hide the springs, say, by using a box or framework to cover
them, as suggested by the Court of Appeals. Ibid. The
dual-spring design assures the user the device will work. If buyers are assured
the product serves its purpose by seeing the operative mechanism that in itself
serves an important market need. It would be at cross-purposes to those
objectives, and something of a paradox, were we to require the manufacturer to
conceal the very item the user seeks.
In a case
where a manufacturer seeks to protect arbitrary, incidental, or ornamental
aspects of features of a product found in the patent claims, such as arbitrary
curves in the legs or an ornamental pattern painted on the springs, a different
result might obtain. There the manufacturer could perhaps prove that those
aspects do not serve a purpose within the terms of the utility patent. The
inquiry into whether such features, asserted to be trade dress, are functional
by reason of their inclusion in the claims of an expired utility patent could
be aided by going beyond the claims and examining the patent and its
prosecution history to see if the feature in question is shown as a useful part
of the invention. No such claim is made here, however. MDI in essence seeks
protection for the dual-spring design alone. The asserted trade dress consists
simply of the dual-spring design, four legs, a base, an upright, and a sign.
MDI has pointed to nothing arbitrary about the components of its device or the
way they are assembled. The Lanham Act does not exist to reward manufacturers
for their innovation in creating a particular device; that is the purpose of
the patent law and its period of exclusivity. The Lanham Act, furthermore, does
not protect trade dress in a functional design simply because an
investment has been made to encourage the public to associate a particular
functional feature with a single manufacturer or seller. The Court of Appeals
erred in viewing MDI as possessing the right to exclude competitors from using
a design identical to MDI's and to require those competitors to adopt a
different design simply to avoid copying it. MDI cannot gain the exclusive
right to produce sign stands using the dual-spring design by asserting that
consumers associate it with the look of the invention itself. Whether a utility
patent has expired or there has been no utility patent at all, a product design
which has a particular appearance may be functional because it is
"essential to the use or purpose of the article" or "affects the
cost or quality of the article." Inwood, 456 U. S., at
850, n. 10.
TrafFix
and some of its amici argue that the Patent Clause of the
Constitution, Art. I, § 8, cl. 8, of its own force, prohibits the holder of an
expired utility patent from claiming trade dress protection. Brief for
Petitioner 33-36; Brief for Panduit Corp. as Amicus Curiae 3;
Brief for Malla Pollack as Amicus Curiae 2. We need not
resolve this question. If, despite the rule that functional features may not be
the subject of trade dress protection, a case arises in which trade dress
becomes the practical equivalent of an expired utility patent, that will be
time enough to consider the matter. The judgment of the Court of Appeals is
reversed, and the case is remanded for further proceedings consistent with this
opinion.
It is
so ordered.