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Traffix Devices, Inc. V. Marketing Displays, Inc

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Traffix Devices, Inc. V. Marketing Displays, Inc (7)MCCORMICKG2.DOC 7/2/2003 6:01 PM NOTE WILL TRAFFIX “FIX” THE SPLINTERED FUNCTIONALITY DOCTRINE?: TRAFFIX DEVICES, INC. V. MARKETING DISPLAYS, INC. TABLE OF CONTENTS I. INTRODUCTION ....................................................................542 II. CASE RECITATION ................................................................543 A. Facts.............................................................................543 B. The District Court Opinion..........................................544 C. The Sixth Circuit Opinion ...........................................546 D. The Supreme Court Opinion........................................547 III. DEVELOPMENT OF THE FUNCTIONALITY DOCTRINE ............549 A. Trademark Law 101 ....................................................549 B. Purpose of the Functionality Doctrine .........................551 C. Historical Development of the Functionality Doctrine.................................................552 IV. ANALYSIS .............................................................................558 A. Courts of Appeals Split Over the Effect of Expired Utility Patents ................................................558 1. Pre-TrafFix Status of the Law..............................558 2. An Issue Resolved: Prior Patents Not a Per Se Bar.............................................................560 B. Courts of Appeals Split Over Functionality Test.........562 1. Pre-TrafFix Status of the Law..............................562 2. An Issue Resolved: Order of Decision ...................566 3. An Issue Resolved: Aesthetic Functionality and the Competitive Need Test .............................567 541 (7)MCCORMICKG2.DOC 7/2/2003 6:01 PM 542 HOUSTON LAW REVIEW [40:2 4. Issues Unresolved: How to Determine “Essential to the Use or Purpose” and “Affects the Cost or Quality” ....................................................569 C. Post-TrafFix: The Confusion Continues ......................570 D. A Proposal: How to Reduce the Confusion...................574 V. CONCLUSION........................................................................575 I. INTRODUCTION What is the proper role of functionality in trade dress law? Does a current or expired utility patent bar trade dress protection? What is the proper test for functionality? The courts of appeals have long been divided over these questions,1 with little guidance from the occasional U.S. Supreme Court decisions that have addressed the issue.2 The Supreme Court’s recent decision in TrafFix Devices, Inc. v. Marketing Displays, Inc.3 answers some of these questions, but leaves some important questions unanswered.4 TrafFix holds that product features claimed in an expired utility patent are not functional per se.5 However, the Court holds that an expired utility patent is “strong evidence that the features therein claimed are functional.”6 TrafFix calls for a return to the Inwood standard for utilitarian functionality,7 but fails to clarify that test, which will result in different applications of the functionality doctrine by the lower courts. 1. See WILLIAM E. LEVIN, TRADE DRESS PROTECTION § 17:2, at 17-2.1 (2001) (“The circuit courts of appeal have diverged widely as to the proper test to determine the functionality of trade dress.”). 2. Refer to notes 98–132 infra and accompanying text (discussing Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), and the contribution those decisions made to the functionality doctrine). 3. 532 U.S. 23 (2001). 4. See William T. Fryer, III, Trademark Product Appearance Features, United States and Foreign Protection Evolution: A Need for Clarification and Harmonization, 34 J. MARSHALL L. REV. 947, 957 (2001) (instructing that while the TrafFix Court made it clear that “trademark law should not protect utility patent subject matter or non-patented primarily functional features,” it “left open the question of whether the functionality test is sufficient to clearly define the interface between utility patents and trademarks”). 5. 532 U.S. at 29 (concluding that a utility patent is only strong evidence of functionality). 6. Id. 7. Id. at 33 (referring to the Inwood formulation of functionality as the “traditional rule”). (7)MCCORMICKG2.DOC 7/2/2003 6:01 PM 2003] TRAFFIX DEVICES V. MARKETING DISPLAYS 543 This Note argues that TrafFix is not likely to provide lower courts with enough guidance to resolve the courts of appeals split over the proper legal standard for functionality. Part II of this Note reviews the facts and holdings of the TrafFix decision. Part III examines the historical development of the functionality doctrine in Supreme Court decisions. Part IV provides examples of the varying applications of the functionality doctrine in the courts of appeals, and identifies which principles have been endorsed or rejected by the TrafFix decision. This Note then examines lower court decisions made since TrafFix that have attempted to apply the new and improved functionality doctrine. The cases published after TrafFix have had varying results based on very similar facts and very selective readings of the TrafFix functionality test. The inability of the lower courts to interpret and apply Inwood, and now TrafFix, in a uniform manner calls into doubt the effectiveness of the current state of the functionality doctrine. Finally, this Note proposes that the Second Circuit has identified a structure that would provide enough guidance for courts to properly and uniformly apply the Inwood standard for functionality. II. CASE RECITATION A. Facts Marketing Displays, Inc. (MDI) manufactures and sells temporary mobile traffic signs with warnings like “Road Work Ahead” to the highway construction industry.8 In 1968, MDI president Robert Sarkisian developed and patented a sign stand designed to resist strong winds.9 An important feature disclosed in the utility patent applications was the sign stand’s dual-spring mechanism, which prevents the sign from twisting and breaking under adverse wind conditions.10 To support its application to the U.S. Patent Office, MDI argued that “the sign’s dual spring design had benefit over the prior art.”11 In 1978, MDI succeeded in enjoining a competitor from copying the dual-spring design by claiming that a competitor had infringed MDI’s patents.12 MDI 8. Id. at 25. 9. Id. Although Mr. Sarkisian was the inventor and original patent holder, MDI was assigned the patents until their expiration. Id. 10. Id. 11. Mktg. Displays, Inc. v. TrafFix Devices, Inc., 971 F. Supp. 262, 264 (E.D. Mich. 1997), aff’d in part, rev’d in part, 200 F.3d 929 (6th Cir. 1999), rev’d, 532 U.S. 23 (2001). 12. Id. In arguing its patent infringement claim, MDI specifically referred to the utility of the dual-spring design. Id. (7)MCCORMICKG2.DOC 7/2/2003 6:01 PM 544 HOUSTON LAW REVIEW [40:2 also granted patent licenses allowing other companies to use its dual-spring design in exchange for royalty payments.13 MDI sells its sign stands under the trade name “WindMaster.”14 The WindMaster line has been a commercial success, earning MDI over twenty million dollars in revenue since its introduction.15 TrafFix Devices, Inc. (TrafFix) also manufactures and sells road signs to the highway construction industry.16 After MDI’s last utility patent expired in 1989, TrafFix sent an MDI sign stand to Korea to be reverse engineered.17 In 1995, TrafFix began marketing its copy of MDI’s sign stand under the trade name “WindBuster.”18 The WindBuster sign stand incorporates the same dual-spring design used in the WindMaster stands.19 When MDI realized that TrafFix had copied its dual-spring design and trade name, MDI filed suit against TrafFix for trademark and trade dress infringement, and for unfair competition.20 TrafFix filed a counterclaim based on antitrust theories.21 B. The District Court Opinion The United States District Court for the Eastern District of Michigan issued two separate opinions in an attempt to resolve the case.22 In its first opinion, the district court granted MDI summary judgment on its trademark infringement claim and denied TrafFix’s antitrust counterclaim.23 The district court’s 13. Id. 14. Mktg. Displays, Inc. v. TrafFix Devices, Inc., 967 F. Supp. 953, 955–56 (E.D. Mich. 1997), aff’d, 200 F.3d 929 (6th Cir. 1999), rev’d, 532 U.S. 23 (2001). MDI registered “WindMaster” as a federal trademark in 1977. Id. at 956. 15. 971 F. Supp. at 264. 16. Mktg. Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929, 932 (6th Cir. 1999), rev’d, 532 U.S. 23 (2001). 17. Id. 18. Id. Before using the “WindBuster” name, TrafFix hired a patent attorney to do a trademark search. Id. The attorney advised TrafFix that industry customers would not likely confuse the name with “WindMaster.” Id. TrafFix properly registered “WindBuster” as a federal trademark in 1996. Id. at 932–33. 19. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 26 (2001) (commenting that the TrafFix spring mechanism looked like the MDI mechanism because it had been reverse engineered from the MDI design). 20. Id. The trademark infringement claim was based on the similar names, and the trade dress infringement claim was based on the copied dual-spring design. Id. 21. Id. 22. See Mktg. Displays, Inc. v. TrafFix Devices, Inc., 971 F. Supp. 262, 264–65 (E.D. Mich. 1997), aff’d in part, rev’d in part, 200 F.3d 929 (6th Cir. 1999), rev’d, 532 U.S. 23 (2001). 23. Mktg. Displays, Inc. v. TrafFix Devices,
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