Two 7th Circuit trade dress/functionality decisions
The same panel of the Seventh Circuit, with the same judge writing, decided two separate product configuration trade dress cases on the same day, both involving registered, incontestable dresses, and both on functionality grounds (what are the odds?). In Jay Franco & Sons, Inc. v. Franek, No. 09-2155 (7th Cir. Aug. 11, 2010), the court (Easterbrook, J.) held that registered, incontestable trade dress consisting of a round-shaped beach towel was functional, because it allowed tan-seeking users to pivot to follow the sun without moving the towel. The court cited not only the registrant’s own promotional materials, but also a third-party utility patent claiming the round shape for a beach towel. The court also thought the design was aesthetically functional because the round shape was pleasing, and there aren’t many other pleasing alternative shapes.
And in Specialized Seating, Inc. v. Greenwich Industries, L.P., No. 07-1435 (7th Cir. Aug. 11, 2010), the court (again, Easterbrook, J.) held that the registered, incontestable trade dress consisting of the design of a metal folding chair was functional. The plaintiff itself had obtained four utility patents on different aspects of the chair, and together they covered every element covered in the trade dress. Because that finding alone invalidated the trade dress, the court did not reach the issue of whether the registrant defrauded the PTO by “neglecting” to mention three of its patents to the trademark examining attorney.
4th Circuit “tied product” contributory infringement decision
In Georgia Pacific Consumer Prods., PL v. Von Drehle Corp., No. 09-1942 (4th Cir. Aug. 10, 2010), the plaintiff GP manufactured the touchless “enMotion” paper towel dispenser for commercial customers. It then leased the dispensers to its distributors with the right to sublease them to its commercial customers, but only for use with GP’s expensive “enMotion” paper (which did not sport any trademarks that users could see when using the dispenser). The defendant manufactured cheap replacement rolls and specifically targeted its sales to establishments who were “subleasing” the “enMotion” dispensers. Analogizing this fact pattern to a branded COKE soda fountain in which an establishment uses generic cola, the Fourth Circuit held that the defendant committed contributory infringement, because end users would be likely to think that the paper being dispensed from the “enMotion” dispenser was “enMotion” paper.