Saturday, September 11, 2010

7th Circuit decision re product design trade dress turns on construction of French contract

In a recent decision, the Seventh Circuit ruled that a trade dress dispute involving nearly identical-looking French press coffee makers turned on the construction, under French law, of a French contract between the parties. In Bodum USA, Inc. v. La Cafetiere, Inc., No. 09-1892 (7th Cir. Sept. 2, 2010), the Court ruled that the plaintiff had signed a contract that permitted the defendant to sell the accused design in all countries but France. Since the issue was use in the U.S., the defendant won.

While the court technically sidestepped the issue of whether the design was protectable under the Lanham Act (all but saying that it wasn't), there were three separate opinions totaling 36 pages (the majority by Judge Easterbrook, with concurrences by Judges Posner and Wood) concerning how foreign law should be proved under Fed. R. Civ. P. 44.1. In short, Judges Easterbrook and Posner think not only that Rule 44.1 does not require expert testimony, but that expert testimony is a lousy way to determine foreign law. They think judges should simply research it, like they do any federal or state law. Judge Wood agreed that rule 44.1 doesn't require expert testimony, but she thinks it's a good idea, mostly because in the translated research materials that judges would typically obtain, nuances can sometimes be missed.

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