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Petitioners, V No. 20-__ IN THE Supreme Court of the United States _________ EZAKI GLICO KABUSHIKI KAISHA, D/B/A EZAKI GLICO CO., LTD. & EZAKI GLICO USA CORP., Petitioners, v. LOTTE INTERNATIONAL AMERICA CORP. & LOTTE CONFECTIONARY CO. LTD., Respondents. _________ On Petition for a Writ of Certiorari to the United States Court of Appeals for the Third Circuit _________ PETITION FOR A WRIT OF CERTIORARI _________ STEVEN M. LEVITAN NEAL KUMAR KATYAL WOMBLE BOND DICKINSON JESSICA L. ELLSWORTH (US) LLP Counsel of Record 1841 Page Mill Road ANNA KURIAN SHAW Suite 200 PATRICK C. VALENCIA Palo Alto, CA 94304 HOGAN LOVELLS US LLP 555 Thirteenth Street, N.W. KATHERINE B. WELLINGTON Washington, D.C. 20004 HOGAN LOVELLS US LLP (202) 637-5600 125 High Street jessica.ellsworth@ Suite 2010 hoganlovells.com Boston, MA 02110 Counsel for Petitioners QUESTIONS PRESENTED The Lanham Act protects trade dress from unlawful copying. Trade dress includes a product’s design, such as the red wax seal on a bottle of Maker’s Mark, the shape of the Chanel No. 5 perfume bottle, and the con- figuration of the Pepperidge Farm Milano cookie. To qualify for trade dress protection, a product’s design cannot be “functional,” among other requirements. At issue in this case is the test for “functionality” in trade dress law and the role of alternative product designs in creating a dispute of fact that prevents summary judgment. This petition presents two questions: 1. Whether trade dress is “functional” if it is “essen- tial to the use or purpose of the article” or “affects the cost or quality of the article,” as this Court and nine circuit courts have held, or if it is merely “useful” and “nothing more,” as the Third Circuit held below. 2. Whether the presence of alternative designs serv- ing the same use or purpose creates a question of fact with respect to functionality, where the product’s de- sign does not affect cost or quality and is not claimed in a utility patent. (i) ii PARTIES TO THE PROCEEDING Ezaki Glico Kabushiki Kaisha, d/b/a Ezaki Glico Co., Ltd. and Ezaki Glico USA Corp., petitioners on re- view, were the plaintiffs-appellants below. Lotte International America Corp. and Lotte Confec- tionary Co. Ltd., respondents on review, were the de- fendants-appellees below. iii RULE 29.6 DISCLOSURE STATEMENT 1. Ezaki Glico USA Corporation is a wholly owned subsidiary of Glico North America Holdings, Inc. Glico North American Holdings, Inc. is a wholly owned subsidiary of Ezaki Glico Kabushiki Kaisha, d/b/a Ezaki Glico Co., Ltd. 2. Ezaki Glico Kabushiki Kaisha, d/b/a Ezaki Glico Co., Ltd. is a publicly traded company, and no publicly traded company owns 10% or more of its stock. iv RELATED PROCEEDINGS U.S. Court of Appeals for the Third Circuit: Ezaki Glico Kabushiki Kaisha v. Lotte Interna- tional America Corp., No. 19-3010 (3d Cir. Jan. 26, 2021), as amended (Mar. 10, 2021) (reported at 986 F.3d 250) U.S. District Court for the District of New Jersey: Ezaki Glico Kabushiki Kaisha v. Lotte Interna- tional America Corp., No. 2:15-cv-05477-MCA- LDW (D.N.J. July 31, 2019) (unreported, avail- able at 2019 WL 8405592) v TABLE OF CONTENTS Page QUESTIONS PRESENTED ....................................... i PARTIES TO THE PROCEEDING ........................... ii RULE 29.6 DISCLOSURE STATEMENT ............... iii RELATED PROCEEDINGS ..................................... iv TABLE OF AUTHORITIES ..................................... vii OPINIONS BELOW ................................................... 1 JURISDICTION ......................................................... 2 STATUTORY PROVISIONS INVOLVED ................ 2 INTRODUCTION ....................................................... 2 STATEMENT ............................................................. 4 A. Trade Dress Functionality ...................... 4 B. Procedural History .................................. 6 REASONS FOR GRANTING THE PETITION ............................................................ 13 I. THE DECISION BELOW CREATES A 9-1 CIRCUIT SPLIT ON THE TEST FOR TRADE DRESS FUNCTIONALITY ......................................... 13 A. There Is A Clear 9-1 Split ..................... 14 B. The Decision Below Is Wrong ............... 20 II. THE DECISION BELOW DEEPENED A CIRCUIT SPLIT ON ALTERNATIVE DESIGNS ............................ 24 A. There Is A Deep Split On Alter- native Designs ....................................... 25 B. The Decision Below Is Wrong ............... 32 vi TABLE OF CONTENTS—Continued Page III. THE QUESTIONS PRESENTED ARE IMPORTANT ......................................... 34 IV. THIS CASE IS A CLEAN VEHICLE TO ADDRESS THE QUESTIONS PRESENTED .................................................. 37 CONCLUSION .......................................................... 38 APPENDIX APPENDIX A—Third Circuit’s Second Amended Opinion (March 10, 2021) ................. 1a APPENDIX B—District Court’s Opinion (July 31, 2019) ................................................. 20a APPENDIX C—Third Circuit’s Sur Petition for Rehearing (Jan. 26, 2021) ........... 44a APPENDIX D—Statutory Provisions Involved ........................................................... 46a vii TABLE OF AUTHORITIES Page(s) CASES: Agostini v. Felton, 521 U.S. 203 (1997) .............................................. 20 Arlington Specialties, Inc. v. Urban Aid, Inc., 847 F.3d 415 (7th Cir. 2017) ................................ 16 Bd. of Supervisors for Louisiana State Univ. Agric. & Mech. Coll. v. Smack Ap- parel Co., 550 F.3d 465 (5th Cir. 2008) ................................ 15 Blumenthal Distrib., Inc. v. Herman Mil- ler, Inc., 963 F.3d 859 (9th Cir. 2020) .......................... 17, 27 Bodum USA, Inc. v. A Top New Casting Inc., 927 F.3d 486 (7th Cir. 2019) .............. 16, 23, 25, 28 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989) .............................................. 20 Cartier, Inc. v. Sardell Jewelry, Inc., 294 F. App’x 615 (2d Cir. 2008) ............... 23, 28, 29 Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2d Cir. 2012) ................................. 14 Clicks Billiards, Inc. v. Sixshooters Inc., 251 F.3d 1252 (9th Cir. 2001) .............................. 27 Coach, Inc. v. We Care Trading Co., 67 F. App’x 626 (2d Cir. 2002) ....................... 14, 15 viii TABLE OF AUTHORITIES—Continued Page(s) Converse, Inc. v. International Trade Com- mission, 909 F.3d 1110 (Fed. Cir. 2018) ............................ 30 CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647 (4th Cir. 2020) ................................ 15 Diamond Match Co. v. Saginaw Match Co., 142 F. 727 (6th Cir. 1906) .................................... 21 Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197 (11th Cir. 2004) ............................ 18 Eliya, Inc. v. Steven Madden, Ltd., 749 F. App’x 43 (2d Cir. 2018) ............................. 14 Eppendorf-Netheler-Hinz GmbH v. Ritter GmbH, 289 F.3d 351 (5th Cir. 2002) ................................ 31 Frosty Treats, Inc. v. Sony Comput. Ent. Am., Inc., 426 F.3d 1001 (8th Cir. 2005) .............................. 17 Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 1498 (2020) .......................................... 20 Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc., 730 F.3d 494 (6th Cir. 2013) ................................ 32 Home Builders Ass’n of Greater St. Louis v. L&L Exhibition Mgmt., Inc., 226 F.3d 944 (8th Cir. 2000) ................................ 17 In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (C.C.P.A. 1982) ....................... 18, 21 ix TABLE OF AUTHORITIES—Continued Page(s) Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982) ...................................... passim I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27 (1st Cir. 1998) .................................. 18 Leapers, Inc. v. SMTS, LLC, 879 F.3d 731 (6th Cir. 2018) .................... 16, 23, 24 McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d 307 (4th Cir. 2014) .................... 27, 28, 31 Millennium Labs., Inc. v. Ameritox, Ltd., 817 F.3d 1123 (9th Cir. 2016) .................. 17, 27, 34 Moldex-Metric, Inc. v. McKeon Prods., Inc., 891 F.3d 878 (9th Cir. 2018) ........................ passim Neiman Marcus Grp., Inc. v. A’Lor Int’l, Ltd., 22 F. App’x 60 (2d Cir. 2001) ............................... 29 POM Wonderful LLC v. Coca-Cola Co., 573 U.S. 102 (2014) .............................................. 34 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) ...................................... passim Sekhar v. United States, 570 U.S. 729 (2013) .............................................. 22 Sulzer Mixpac AG v. A&N Trading Co., 988 F.3d 174 (2d Cir. 2021) ................................. 15 Tools USA & Equip. Co. v. Champ Frame Straightening Equip. Inc., 87 F.3d 654 (4th Cir. 1996) .................................. 15 x TABLE OF AUTHORITIES—Continued Page(s) TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) ........................................ passim Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) ............................................ 4, 5 U.S. Patent & Trademark Office v. Book- ing.com B.V., 140 S. Ct. 2298 (2020) ...................................... 5, 21 Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268 (Fed. Cir. 2002) ...................... 18, 29 Warner Bros. Inc. v. Gay Toys, Inc., 724 F.2d 327 (2d Cir. 1983) ................................. 23 William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1924) .......................................
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