NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
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DECORATIONS FOR GENERATIONS, INC.,
Plaintiff-Cross Appellant,
v.
HOME DEPOT USA, INC.,
Defendant-Appellant,
and
INTERNATIONAL BUSINESS CORPORATION and MUTUAL ALLIED, LTD.,
Defendants-Appellants,
and
MARK LU,
Defendant.
__________________________
DECIDED: March 8, 2005
__________________________
Before LOURIE, Circuit Judge, ARCHER, Senior Circuit Judge, and PROST, Circuit
Judge.
PROST, Circuit Judge.
The appellants, Home Depot USA, Inc. (Home Depot), International Business
Corporation (IBC) and Mutual Allied, Ltd. (MA), appeal the District Court for the Eastern
District of California’s denial of their motion for judgment notwithstanding the verdict.
Decorations for Generations, Inc. v. Home Depot USA, Inc., No. CIV-S-01-0284 DFL
PAN (E.D. Cal. Sep. 22, 2003) (District Court Opinion). Because the jury’s verdict
finding that the appellants infringed the trade dress of the appellee, Decorations for
Generations, Inc. (DFG), was not supported by substantial evidence, we reverse the
district court’s denial of judgment notwithstanding the verdict.
BACKGROUND
Since 1990, DFG has manufactured a steel Christmas tree stand. DFG chief
executive officer James Boucher designed the stand in 1988 out of scrap steel parts
that he had in his garage. As designed by Boucher and sold by DFG, the stand is
comprised of a one-foot steel pipe (intended to contain the tree base), a six-inch square
plate of flat steel (that serves as a base), and four legs protruding from the corners of
the base and made of 24-inch long steel bars. The stand also includes four screws that
are meant to secure the tree by fitting into apertures that are evenly spaced around the
steel pipe component. In order to evoke Christmas colors, DFG’s stand was colored
green and red, with the base and body of the stand colored green and the rim of the
stand covered by a red plastic covering.
In 1990, Mr. Boucher applied for a design patent for his Christmas tree stand. In
November of 1992, he was granted U.S. Design Patent No. Des. 330,875 based on that
application.
DFG began selling Mr. Boucher’s stand during the holiday season of 1989. In
1993, after receiving outside suggestions, it began selling the stand in an open-topped
white box. Since the modification of the display box, the DFG stand has sold in the
same configuration.
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In 1999, Home Depot designed a heavy-duty Christmas tree stand whose design
was roughly similar to DFG’s stand. Home Depot had arranged through IBC to have the
stand manufactured by MA in China. When Home Depot later discovered that DFG’s
stand was covered by a design patent, it developed another design for its tree stand in
order to avoid infringing the DFG patent.1
In February of 2001, DFG sued Home Depot, MA and IBC for infringement of its
design patent, trade dress infringement under the Lanham Act and unfair competition
under common law and California statute. In September 2002, at the summary
judgment stage of litigation, the district court granted summary judgment to the
appellants on DFG’s patent infringement claim.2 In May of 2003, a jury trial on DFG’s
trade dress and unfair competition claims was held.
Before the jury returned its verdict, the defendants submitted motions for
judgment as a matter of law (JMOL) to the district court. The district court declined to
consider the defendants’ motions in light of the jury’s impending verdict. After the jury
returned its verdict finding for DFG on its trade dress and unfair competition claims and
awarded lost profits, compensatory damages and punitive damages to DFG, the
defendants moved for judgment notwithstanding the verdict. The district court sustained
the jury verdicts on trade dress infringement and unfair competition but reduced the
jury’s compensatory and punitive damages verdicts.
1
Between 1993 and 1999, several other manufacturers made and sold
Christmas stands that were similar to the DFG stand. Those manufacturers are not
parties to this action.
2
DFG is not appealing the district court’s grant of summary judgment on the
design patent claim in this appeal.
04-1072, -1073, -1091 3
The defendants timely appealed the district court’s denial of their motion for
judgment notwithstanding the verdict. MA and IBC also appeal the district court’s unfair
competition verdict.3 DFG cross-appeals the district court’s reduction of the jury’s
punitive damage award against Home Depot as well as its determination that pre-
judgment interest is not available for Lanham Act violations.4 Because the district
court’s jurisdiction was based in part on 28 U.S.C. § 1338, we have jurisdiction to hear
this appeal under 28 U.S.C. § 1295(a)(1).
DISCUSSION
A. Standard of Review and Choice of Law
For procedural issues not unique to patent law, we apply the standard of review
of the circuit from which the case originates. Sjolund v. Musland, 847 F.2d 1573, 1576
(Fed. Cir. 1988). In the United States Court of Appeals for the Ninth Circuit, a jury
verdict and a denial of a motion for judgment notwithstanding the verdict are reviewed
for substantial evidence. Leatherman Tool Group, Inc. v. Cooper Indus., Inc., 199 F.3d
1009, 1011 (9th Cir. 1999).
For substantive issues not related to patent law, we also apply the law of the
Ninth Circuit. See e.g., Nobelpharma AB v. Implant Innovations, 141 F.3d 1059, 1067
(Fed. Cir. 1998). Because the issues on appeal concern trade dress law, the Ninth
Circuit’s precedent controls for the purposes of this appeal. See Keystone Retaining
3
As the district court noted, the unfair competition claim asserted against
MA and IBC is predicated on a violation of the Lanham Act. Since we find that there
was no Lanham Act violation in this case, the unfair competition claim in this case
becomes moot.
4
Because we reverse the jury’s trade dress verdict, we deny DFG’s cross-
appeals as moot.
04-1072, -1073, -1091 4
Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1447-48 (Fed. Cir. 1993) (applying the
law of the Ninth Circuit in evaluating a trade dress infringement claim).
B. The General Law of Trade Dress
As a concept, trade dress is closely related but not identical to trademark. Like
trademark, trade dress derives its legal protection from § 43(a) of the Lanham Act. But
unlike trademark, trade dress is intended to protect product packaging or design that
has come to be associated by consumers with a specific manufacturer or producer. For
example, while a two-dimensional symbol or drawing may be considered a trademark,
three-dimensional product designs or packaging may, under the right circumstances, be
considered trade dress.
The first inquiry in determining whether a product’s design can be protected as
trade dress under § 43(a) of the Lanham Act is into the functional aspects of the design,
with the parties asserting Lanham Act trade dress claims having to first “establish the
nonfunctionality of the design feature.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529
U.S. 205, 214 (2000). Nonfunctionality is required because the buying public “should
not be deprived of the benefits of competition with regard to the utilitarian and esthetic
purposes that product design ordinarily serves.” Id. at 213. Furthermore, because
functional aspects of a product’s design may gain protection in the form of a patent,
trade dress is an inappropriate vehicle through which to protect them. As the Supreme
Court observed:
The functionality doctrine prevents trademark law, which
seeks to promote competition by protecting a firm’s
reputation, from instead inhibiting legitimate competition by
allowing a producer to control a useful product feature. It is
the province of patent law, not trademark law, to encourage
invention by granting inventors a monopoly over new product
04-1072, -1073, -1091 5
designs or functions for a limited time, 35 U.S.C. §§ 154,
173, after which competitors are free to use the innovation. If
a product's functional features could be used as trademarks,
however, a monopoly over such features could be obtained
without regard to whether they qualify as patents and could
be extended forever (because trademarks may be renewed
in perpetuity).
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,164-65 (1995).
The second inquiry in determining whether trade dress protection is available to a
product’s design is whether or not the product design has achieved secondary meaning
in the minds of consumers. Samara Bros., 529 U.S. at 216. Secondary meaning exists
when “in the minds of the public, the primary significance of [the product design] is to
identify the source of the product rather than the product itself.” Id. at 211 (quoting
Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n. 11 (1982)). Put another
way, “A plaintiff’s trade dress acquires secondary meaning when the purchasing public
associates the dress with a particular source.” Vision Sports, Inc. v. Melville Corp., 888
F.2d 609, 615 (9th Cir. 1989).
The likelihood of consumer confusion between protected trade dress and
allegedly infringing trade dress is only considered once the trade dress in question has
been established to be protected trade dress (i.e., it is non-functional and it has
achieved secondary meaning in the minds of consumers). In the absence of a product
design’s non-functionality or secondary meaning, likelihood of consumer confusion is
irrelevant because without establishing both non-functionality and secondary meaning a
plaintiff asserting a product design trade dress infringement claim cannot prevail. See,
e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992) (holding that to
establish a claim for trade dress infringement, secondary meaning, non-functionality and
04-1072, -1073, -1091 6
likelihood of confusion must all be shown); Talking Rain Beverage Co. v. S. Beach
Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (holding the same).
C. Trade Dress Law in the Ninth Circuit
Our review of the district court’s decision turns on the issue of secondary
meaning. While the Supreme Court laid out the broad outlines of product design trade
dress law in Samara Bros., the Ninth Circuit has further defined the factors to be
considered in making secondary meaning determinations. They include: whether actual
purchasers associate the plaintiff’s trade dress with the plaintiff’s products; the degree
and manner of the plaintiff’s use of the trade dress; whether the use of the trade dress
has been exclusive; and proof of copying. Vision Sports, 888 F.2d at 615; see also,
Levis Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir. 1985) (en banc).
Other Ninth Circuit precedent identifies actual confusion as an indicator of secondary
meaning.5 Am. Scientific Chem., Inc. v. Am. Hospital Supply Corp., 690 F.2d 791, 793
(9th Cir. 1982).
D. DFG’s Trade Dress Infringement Claims
The district court identified six factors to be considered in a secondary meaning
analysis:
(1) purchaser perception; (2) degree and manner of
advertising; (3) demonstrated utility of trade dress in
increasing sales product; (4) length of time and
5
Evidence of actual confusion in the secondary meaning context is not to
be mistaken for the independent likelihood of confusion inquiry that a court must
undertake before finding trade dress infringement. In its jury instructions, the district
court itself underscored this point in issuing different instructions for evidence of actual
confusion under the secondary meaning analysis and the likelihood of confusion
analysis.
04-1072, -1073, -1091 7
exclusivity of use; (5) intentional copying by defendants;
(6) evidence of actual confusion.
District Court Opinion at 8-9.
Regarding the first three secondary meaning factors, the district court found that
DFG had offered “little or no evidence” at trial. District Court Opinion at 9. We concur
with that conclusion. The district court also found, however, that substantial evidence
supported a finding that the presence of the last three factors had been established by
DFG. We agree with the district court that the fourth factor was supported by
substantial evidence but disagree with its conclusion that the fifth and sixth factors were
likewise supported by substantial evidence. We discuss these latter three factors in
turn.
1. Length of Time and Exclusivity of Use
The district court determined that the length of time and exclusivity of use factor
in a secondary meaning analysis had been supported by substantial evidence at trial.
The defendants argue that because the DFG stand was only in stores five to six weeks
a year for only several years, DFG could not satisfy the length of time component of this
factor. Furthermore, they assert that because similar stands were being sold in that
time period, DFG could not show exclusivity of use at trial.
DFG has been selling its tree stand in roughly the same configuration since the
1993 holiday season. Thus, at the time of suit in 1999, DFG had been selling its tree
stand in approximately the same configuration for six years. Even though DFG’s stand
was on display and on sale for only a limited number of weeks out of each year, as the
district court said, “[that] is a sufficient amount of time, year after year, to support a jury
finding” on this factor. We concur.
04-1072, -1073, -1091 8
In addition, the district court found that substantial evidence would support a
jury’s finding of exclusive use for DFG given that the competing stands prominently
displayed their brand names and were different in overall appearance from the DFG
stand. Though this is a close question, the evidence introduced at trial was substantial
enough to support a jury’s finding that DFG had exclusive use of its tree stand design.
Thus, we find that there was substantial evidence introduced at trial to support
the district court’s finding that this factor in the secondary meaning analysis was
satisfied.
2. Intentional Copying of Protected Trade Dress
Before the jury rendered its verdict, the district court declined to specifically
instruct the jury that copying functional elements of DFG’s tree stand was no trade
dress infringement. After the jury’s verdict, the district court found only that “[t]here was
considerable evidence that defendants intentionally copied [DFG’s] protectible [sic]
trade dress.” District Court Opinion at 12.
Regarding intentional copying, it is the copying of non-functional elements of a
product’s design that can yield an inference of secondary meaning. Copying functional
elements of a competitor’s design is not a violation of the Lanham Act. Fuddruckers,
Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 844-45 (9th Cir. 1987). We find that the
copied elements of DFG’s tree stand that were identified as being non-functional by the
district court (i.e., the colors, the plastic rim, and the display box) were, in fact, utilitarian
in nature. Furthermore, the key issue in any secondary meaning analysis is whether or
not the consuming public has come to associate a certain product design with a certain
manufacturer—not whether the defendant engaged in any copying whatsoever. As one
04-1072, -1073, -1091 9
district court in the Ninth Circuit correctly stated, “A defendant’s conduct, whether
legitimate or reprehensible, has only a tenuous connection to the perceptions of
consumers and should not relieve a plaintiff of its burden of showing that it has
successfully imbued its design with secondary meaning.” Continental Lab. Prods., Inc.
v. Medax Int’l, Inc., 114 F. Supp. 2d 992, 1012-13 (S.D. Cal. 2000). The only copying
relevant to the intentional copying factor in a secondary meaning analysis is the copying
of protected trade dress. While there was evidence introduced that supported the
conclusion that the defendants had indeed copied utilitarian features of DFG’s tree
stand, there was no evidence introduced that the defendants intentionally copied
protected trade dress that had been perceived by consumers as originating from a
particular manufacturer. Accordingly, we also find that there is no substantial evidence
to support a jury finding that the defendants intentionally copied DFG’s protected trade
dress.
3. Actual Customer Confusion
Finally, on the issue of actual customer confusion, the district court asserted that
even though DFG had presented no evidence of confusion on the part of actual
consumers, it did present evidence of confusion on the part of Home Depot and DFG
employees and associates. The court held that this evidence of confusion could have
allowed the jury to infer that actual consumers were also confused. District Court
Opinion at 12.
DFG indeed presented no evidence of actual customer confusion at trial. As the
district court noted, the only evidence of confusion shown by DFG at trial related to the
confusion of Home Depot and DFG employees. It is clear from Ninth Circuit precedent
04-1072, -1073, -1091 10
that the key question in determining actual confusion for the purposes of a secondary
meaning inquiry is whether consumers or “the relevant buying public” are actually
confused. See Japan Telecom, Inc. v. Japan Telecom Am., Inc., 287 F.2d 866, 874
(9th Cir. 2002) (confusion on the part of the buying public is the key to an actual
confusion inquiry). We are aware of no precedent in the Ninth Circuit that would allow
the confusion of “the relevant buying public” to be inferred by testimony from company
employees or associates. The evidence presented at trial by DFG only shows that a
few Home Depot and DFG employees and associates may have been confused as to
the origins of the tree stands at issue in this case. That evidence is not substantial
evidence of actual customer confusion. We therefore disagree with the district court’s
finding that substantial evidence supported the jury’s finding that this factor had been
satisfied.
In sum, with regards to our secondary meaning analysis, given that the only
factor supported by substantial evidence and established by DFG is the length of time
and exclusivity of use of the DFG product design, we find that substantial evidence does
not support the finding that the DFG tree stand had established secondary meaning in
the minds of consumers.6
6
Since we conclude that substantial evidence does not support the jury’s
finding that the DFG tree stand had established secondary meaning in the minds of
consumers, we decline to address whether substantial evidence supported the jury’s
finding that certain aspects of the tree stand are non-functional.
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CONCLUSION
Because the jury’s finding that the DFG tree stand design had established
secondary meaning in the minds of consumers was not supported by substantial
evidence, we reverse the jury’s verdict of trade dress infringement. Accordingly, MA
and IBC’s appeal regarding the jury’s unfair competition verdict and DFG’s cross-
appeals are denied as moot.
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