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15.11 Infringement—Elements—Validity—Trade Dress—Non–Functionality Requirement

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15.11 INFRINGEMENT—ELEMENTS—VALIDITY—TRADE DRESS—NON-FUNCTIONALITY REQUIREMENT

A product feature is functional if it is essential to the product’s use or purpose, or if it affects the product’s cost or quality. It is non-functional if its shape or form makes no contribution to the product’s function or operation. If the feature is part of the actual benefit that consumers wish to purchase when they buy the product, the feature is functional. However, if the feature serves no purpose other than as an assurance that a particular entity made, sponsored or endorsed the product, it is non-functional.

To determine whether a product’s particular shape or form is functional, you should consider whether the design as a whole is functional, that is whether the whole collection of elements making up the design or form are essential to the product’s use or purpose.

You should assess the following factors in deciding if the product feature is functional or non-functional:

1. The Design’s Utilitarian Advantage. In considering this factor, you may examine whether the particular design or product feature yield a utilitarian advantage over how the product might be without that particular design or product feature. If there is a utilitarian advantage from having the particular design or feature, this would weigh in favor of finding the design or feature is functional; if it seems merely ornamental, incidental, or arbitrary it is more likely to be nonfunctional;

2. Availability of Alternate Designs. In considering this factor, you may examine whether an alternate design could have been used, so that competition in the market for that type of product would not be hindered by allowing only one person to exclusively use the particular design or configuration. For this to be answered in the affirmative, the alternatives must be more than merely theoretical or speculative. They must be commercially feasible. The unavailability of a sufficient number of alternate designs weighs in favor of finding the design or feature is functional;

3. Advertising Utilitarian Advantage in the Design. In considering this factor, you may examine whether the particular design or configuration has been touted in any advertising as a utilitarian advantage, explicitly or implicitly. If a seller advertises the utilitarian advantages of a particular feature or design, this weighs in favor of finding that design or feature is functional; and

4. The Design’s Method of Manufacture. In considering this factor, you may examine whether the particular design or feature result from a relatively simple or inexpensive method of manufacture. If the design or feature is a result of a particularly economical production method, this weighs in favor of finding the design or feature is functional; if the feature is essential to the use or purpose of the device or affects its cost or quality, it is more likely functional.

[The plaintiff has the burden of proving non-functionality by a preponderance of the evidence [in order to show that the trade dress is valid and protected from infringement].]

Comment

It is reversible error to fail to give an instruction defining non-functionality in a trade dress case. Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 842–43 (9th Cir.1987). Functionality is a question of fact. Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir.1989).

"The relationship between trademark protection and functionality is well established: ‘The physical details and design of a product may be protected under the trademark laws only if they are nonfunctional....’" Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 782 (9th Cir.2002). For a description of the four-factor test of functionality, see Disc Gold Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006-09 (9th Cir.1998). See also International Jensen v. Metrosound U.S.A., 4 F.3d 819, 822-23 (9th Cir.1993) (setting forth a three-factor test); Talking Rain Beverage Co. Inc. v. South Beach Beverage Co., 349 F.3d 601, 603 (9th Cir.2003) (four factor test from Disc Gold). The definition of functionality is reflected in TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001) (referring to the "traditional rule" set forth in Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10 (1982)).

In the Ninth Circuit, the plaintiff bears the burden of proving nonfunctionality. See Sega Enterprises Ltd., v. Accolade, Inc., 977 F.2d 1510, 1530–31 (9th Cir.1992) (nonfunctionality is a question of fact, which the plaintiff bears the burden of proving); 15 U.S.C. § 1125(a)(3) ("In a civil action for trade dress infringement…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."). However, in some circuits functionality is treated as an affirmative defense. See, e.g., Vaughan Mfg. Co. v. Brikam Int’l, 814 F.2d 346, 349 (7th Cir.1987); Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 974 (2d Cir.1987).

"[I]f exclusive use of a feature would put competitors at a significant non-reputation-related disadvantage, the feature in general terms is functional." Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995). See also Inwood Lab. v. Ives Lab., 456 U.S. 844, 850 n.10 (1982) ("In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article."); Vuitton et Fils S.A. v. J. Young Enters., 644 F.2d 769, 774 (9th Cir.1981) ("Functional features of a product are features ‘which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product."’) (quoting International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 917 (9th Cir.1980), cert. denied, 452 U.S. 941 (1981)).

Functionality usually arises in cases of nonword symbols, such as designs or container shapes. In the Ninth Circuit, functionality involves measuring the effect of a design or physical detail in the marketplace. A functional design has aesthetic appeal, or increases the utility or practicality of the product, or saves the consumer or producer time or money. See Fabrica, Inc. v. El Dorado Corp., 697 F.2d 890 (9th Cir.1983); Traffix Devices, Inc. v. Marketing Displays, Inc. 532 U.S. 23, 29–30 (2001) (noting that it is a "well-established rule that trade dress protection may not be claimed for product features that are functional" and that a prior patent for features claimed as trade dress can be "strong evidence" of functionality which adds "great weight to the statutory presumption" that trade dress features "are deemed functional until proved otherwise by the party seeking trade dress protection" and who will carry a "heavy burden" of showing that the feature "is merely an ornamental, incidental, or arbitrary aspect" of the trade dress rather than functional to the trade dress).

If features of claimed trade dress are all functional, plaintiff must show that the features are combined together in a nonfunctional way to avoid finding of functionality. HWE, Inc. v. JB Research, Inc., 993 F.2d 694, 696 (9th Cir.1993).

On the trademark registration of trade dress and its implications for infringement litigation, see Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 782–83 (9th Cir.2002).