UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
No. 00-60875
EPPENDORF-NETHELER-HINZ GMBH,
Plaintiff - Appellee - Cross-Appellant,
v.
RITTER GMBH; RK MANUFACTURING, INC.,
Defendants - Appellants - Cross-Appellees.
No. 01-60658
EPPENDORF-NETHELER-HINZ GMBH,
Plaintiff - Appellee,
v.
RITTER GMBH; RK MANUFACTURING, INC.,
Defendants - Appellants,
Appeals from the United States District Court
for the Southern District of Mississippi
April 22, 2002
Before JONES and DeMOSS, Circuit Judges, and FELDMAN,1 District
Judge.
EDITH H. JONES, Circuit Judge:
1
United States District Judge of the Eastern District of Louisiana,
sitting by designation.
Defendants-Appellants Ritter GMBH and RK Manufacturing,
Inc., appeal the district court’s judgment that they infringed upon
Eppendorf-Netheler-Hinz GMBH’s trade-dress rights in violation of
the Lanham Act, 15 U.S.C. § 1125(a). For the reasons discussed
below, we conclude that Eppendorf failed to carry its burden of
proof on the issue of non-functionality, and reverse the judgment
of the district court.
I. BACKGROUND
Eppendorf is a German company which manufactures medical
and laboratory equipment. At issue in this case is Eppendorf’s
line of disposable pipette tips2 and dispenser syringes capable of
accurate and rapid “multiple dispensing” of liquids. Eppendorf’s
disposable pipette tips are sold in the United States marked with
the word-marks “COMBITIPS,” “EPPENDORF” and “EPPENDORF COMBITIPS”
(hereinafter referred to as “Combitips”). Eppendorf manufactures
eight Combitip sizes, from .05 milliliters to 50 milliliters. All
eight sizes are designed to fit into the “Combitip Dispenser
Syringe”. By attaching a Combitip to the dispenser syringe, a user
can rapidly dispense liquids in precisely measured aliquots.
Ritter is a German manufacturer specializing in
injection-molded plastic products. In the early 1990s, Ritter
2
Pipette tips attach to dispenser syringes, and are frequently
replaced to avoid contamination. Pipette tips are commonly known in the
marketplace as “tips”.
2
began manufacturing disposable pipettes virtually identical to the
Combitips. At that time, there was a large American market for
disposable pipettes, and the market was dominated by Eppendorf.3
Ritter, through its American distributor, RK Manufacturing, Inc.,
entered the American market in March of 1994. Ritter’s disposable
pipettes were marked with the word-mark “RITIPS” (hereinafter
“Ritips”) and distributed in boxes marked with Ritips and Ritter’s
name. Ritter also introduced its own dispenser syringe, known in
the market as the “Ripette”. However, the Ritips were compatible
with Eppendorf’s Combitip Dispenser Syringe, and the Ritips were
marketed as a “direct replacement” for Combitips. Ritter priced
its Ritips below Eppendorf’s Combitips in an attempt to acquire
market share from Eppendorf.
In June of 1998, Eppendorf filed suit in the Eastern
District of New York against Ritter and RK, asserting various
trademark and trade dress infringement claims under § 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a). Eppendorf’s suit was transferred
to the Southern District of Mississippi. Eppendorf alleges that
Ritter infringed on its trade dress rights by “slavishly
mimick[ing]” the design and trade dress of the “entire family of
Eppendorf [Combitips].” Second Amended Complaint at 6. Eppendorf
3
According to the trial testimony, Eppendorf had sold over 10 million
Combitips in the United States by 1989. Over the past 20 years, Eppendorf has
sold almost 150 million Combitips.
3
contends that Ritter infringed upon eight elements of the
Combitips’s trade dress: (1) the flange on top of the tip; (2) the
fins connecting the flange to the body of the tip; (3) the plunger
head; (4) the plunger; (5) the length of the tips; (6) the eight
sizes of the tips; (7) the coloring scheme on the tips; and (8) the
angle of the stump on the tips. Eppendorf also contends that
Ritter willfully and intentionally infringed upon its trade dress
rights.
In June of 2000, Eppendorf’s claims were tried before a
jury in the Southern District of Mississippi. The jury returned a
verdict for Eppendorf, finding that Ritter and RK infringed upon
Eppendorf’s trade dress rights. The jury also determined that
Ritter and RK willfully violated Eppendorf’s trade dress rights by
marketing the Ritips with an intent to confuse or deceive. The
jury awarded Eppendorf $750,000 in lost profits and $250,000 in
lost licensing fees. The district court entered final judgment for
Eppendorf for $1,000,000 in damages awarded by the jury, and an
additional $750,000 in enhanced damages on the basis of the jury’s
finding of willful infringement. The district court also
permanently enjoined Ritter and RK from selling or marketing in the
United States dispenser syringes or syringes of “a confusingly
similar design” to Eppendorf’s syringes.
4
Ritter and RK now appeal. They contend, inter alia, that
Eppendorf failed to carry its burden of proving that the eight
elements are non-functional. Eppendorf cross-appeals the district
court’s denial of its motion for attorneys’ fees and pre-judgment
interest. For the reasons discussed below, we conclude that
Eppendorf failed to carry its burden of proving non-functionality
and find it necessary to reverse the judgment of the district
court.
II. DISCUSSION
A.
The Lanham Act, 15 U.S.C. § 1125(1), establishes a cause
of action for trade dress infringement. “Trade dress” refers to
the design or packaging of a product which serves to identify the
product’s source. Traffix Devices, Inc. v. Marketing Displays,
Inc., 523 U.S. 23, 28, 121 S.Ct. 1255, 1259 (2001). The purpose of
trade dress protection, like trademark protection, is to “secure
the owner of the [trade dress] the goodwill of his business and to
protect the ability of consumers to distinguish among competing
products.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763,
774, 121 S.Ct. 2753, 2760 (1992) (citation omitted).
Trade dress protection, however, is not intended to
create patent-like rights in innovative aspects of product design.
Trade dress protection, unlike patent law, does not foster
5
innovation by preventing reverse engineering or copying of
innovative product design features. See J. THOMAS MCCARTHY, MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION, § 6:3 (4th ed. 2001) (“Unlike patent
law, the purpose of trademark and trade dress law is to prevent
customer confusion and protect the value of identifying symbols,
not to encourage invention by providing a period of exclusive
rights.”). “Trade dress protection must subsist with the
recognition that in many instances there is no prohibition against
copying goods and products.” Traffix, 523 U.S. at 29, 121 S.Ct. at
1260. Therefore, trade dress protection extends only to
incidental, arbitrary or ornamental product features which identify
the source of the product. If a product feature is functional, it
cannot be protected trade dress. Unless protected by patent or
copyright, functional product features may be copied freely by
competitors in the marketplace. Id. “Allowing competitors to copy
will have salutary effects in many instances. ‘Reverse engineering
. . . often leads to significant advances in technology.’”. Id.
(citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 160, 109 S.Ct. 971 (1989)).
The Lanham Act expressly limits the scope of trade dress
protection by providing that “the person who asserts trade dress
protection has the burden of proving that the matter sought to be
protected is not functional.” 15 U.S.C. § 1125(a)(3). The
requirement of non-functionality “prevents trademark law, which
6
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.” Qualitex Co. v.
Jacobson Products Co., Inc., 514 U.S. 159, 164, 115 S.Ct. 1300,
1304 (1995). “Protection of functional product features is the
province of patent law, which confers a monopoly over new product
designs for a limited time only, after which competitors are free
to copy at will.” Abercrombie & Fitch Stores, Inc v. American
Eagle Outfitters, Inc., 280 F.3d 619, 640 (6th Cir. 2002) (citing
Qualitex, 514 U.S. at 164, 115 S.Ct. 1300).
It is clear that functional product features do not
qualify for trade dress protection. However, the definition of
“functionality” has not enjoyed such clarity. See J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 7:67 (4th ed. 2001)
(discussing the “plethora of definitions” for functionality). In
Traffix, the Supreme Court recognized two tests for functionality.
First, the Court recognized the “traditional” definition of
functionality: “a product feature is functional, and cannot serve
as a trademark, ‘if it is essential to the use or purpose of the
article or if it affects the cost or quality of an article.’”
Traffix, 532 U.S. at 32, 121 S.Ct. 1255 (citations omitted). Under
this traditional definition, if a product feature is “the reason
the device works,” then the feature is functional. Id. at 34. The
availability of alternative designs is irrelevant. Id. at 33-34.
7
In addition to the traditional definition, Traffix
recognized a second test for functionality: “a functional feature
is one the ‘exclusive use of which would put competitors at a
significant non-reputation-related disadvantage.’” Id. at 32
(quoting Qualitex, 514 U.S. at 165, 115 S.Ct. 1300). This
“competitive necessity” test for functionality is an expansion of
the traditional test. Id. The Court emphasized, however, that the
“competitive necessity” test is not “a comprehensive definition” of
functionality. Id. at 33. The primary test for functionality is
the traditional test, and there is no need to consider the
“competitive necessity” test where a product feature is functional
under the traditional definition. Id. at 33-35.
Eppendorf correctly argues that before Traffix, this
circuit had adopted a “utilitarian” test of functionality. Under
this utilitarian test, “[t]he ultimate inquiry concerning
functionality [] is whether characterizing a feature or configura-
tion as protected ‘will hinder competition or impinge upon the
rights of others to compete effectively in the sale of goods.’”
Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 429 (5th Cir.
1984) (citation omitted); see also, Pebble Beach Co. v. Tour 18 I
Ltd., 155 F.3d 526, 537-38 (5th Cir. 1998); Sunbeam Products, Inc.
v. West Bend Co., 123 F.3d 246, 255 (5th Cir. 1997). This court’s
“utilitarian” test, with its focus on the ability of competitors to
8
compete effectively in the marketplace, is virtually identical to
the “competitive necessity” test discussed in Traffix.
Accordingly, Traffix supersedes the definition of functionality
previously adopted by this court. The “utilitarian” test, although
still valid as a secondary test, is not a comprehensive definition
of functionality. Traffix, 532 U.S. at 32-33. In light of
Traffix, the primary test for determining whether a product feature
is functional is whether the feature is essential to the use or
purpose of the product or whether it affects the cost or quality of
the product. Id.4
B.
The crucial issue presented by this appeal is whether the
eight design elements of the Eppendorf Combitips are functional as
a matter of law. This case was tried in June of 2000, almost ten
months before the Supreme Court decided Traffix. The district
court, correctly applying this circuit’s utilitarian test of
functionality, instructed the jury as follows:
A design or characteristic is nonfunctional if there are
reasonably effective and efficient alternatives possible.
4
This court noted in Sunbeam that the utilitarian definition of
functionality “lowers the threshold for trade dress protection.” 123 F.3d at 255
n.18. This broad definition of functionality is not consistent with the Court’s
recent discussion of functionality. The Court, in Traffix, cautioned against
“misuse or over-extension of trade dress [protection].” See Traffix, 532 U.S.
at 29, 121 S.Ct. 1255 (citing Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529
U.S. 205, 213, 112 S.Ct. 2753 (1992)). A product feature that satisfies the
traditional definition of functionality is not shielded from functional status
merely because the feature is not a competitive necessity.
9
Hence, a product’s trade dress is functional only, one,
if competitors need to incorporate it in order to compete
effectively because it is essential to the product’s use,
or, two, if it significantly affects the cost or quality
of the article. A design is functional and thus
unprotectable if it is one of a limited number of equally
efficient options available to competitors and free
competition would be significantly disadvantaged by
according the design trademark protection.
Relying on this instruction, the jury determined that the Combitips
were non-functional. Ritter and RK Manufacturing moved for
judgment as a matter of law on the issue of functionality, and the
district court denied the motion.
“We review de novo the district court’s ruling on a
motion for judgment as a matter of law, applying the same legal
standards at the trial court.” Flowers v. Southern Reg’l
Physicians Serv., Inc., 247 F.3d 229, 235 (5th Cir. 2001). In
reviewing a motion for judgment as a matter of law, “we consider
all of the evidence, drawing all reasonable inferences and
resolving all credibility determinations in the light most
favorable to the non-moving party.” Id. (citations omitted).
Judgment as a matter of law will only be granted where the facts
and inferences point “so strongly and overwhelmingly in the
movant's favor that reasonable jurors could not reach a contrary
conclusion.” Omnitech Int'l, Inc. v. Clorox Co., 11 F.3d 1316,
1322 (5th Cir. 1994).
10
Eppendorf contends that the evidence supports the jury’s
finding of non-functionality because “[t]he evidence clearly
established that there were alternative designs to each of the
eight non-functional features.” Appellee’s Brief at 20. Indeed,
there is extensive testimony in the record regarding available
alternative designs for each of the eight elements. For example,
Eppendorf’s expert testified that the number of fins under the
flange “could be increased or decreased or their appearance could
be changed.” Appellee’s Brief at 5. Thus, Eppendorf argues that
the fins are non-functional because alternative designs are
available to competitors in the marketplace.
Eppendorf’s argument, while consistent with this
circuit’s utilitarian definition of functionality, is unpersuasive
in light of the Court’s discussion of functionality in Traffix. As
explained above, the primary test for functionality is whether the
product feature is essential to the use or purpose of the product
or if it affects the cost or quality of the product. In Traffix,
the Court determined that the dual-spring design on a wind-
resistant road sign was functional because the dual-spring design
“provides a unique and useful mechanism to resist the force of the
wind.” 532 U.S. at 33, 121 S.Ct. at 1262. The Court rejected the
argument that the springs were non-functional because a competitor
11
could use three or four springs which would serve the same purpose.
Id. The Court explained,
There is no need, furthermore, to engage, as did the
Court of Appeals, in speculation about other design
possibilities, such as using three or four springs which
might serve the same purpose. . . . The dual-spring
design is not an arbitrary flourish in the configuration
of [the road sign]; it is the reason the device works.
Other designs need not be attempted.
Id. at 33-34, 121 S.Ct. at 1261. Accordingly, the design features
for which Eppendorf seeks trade dress rights are functional if they
are essential to the use or purpose of the Combitips or affect the
cost or quality of the Combitips. The availability of alternative
designs is irrelevant.
In this case it is undisputed that the Combitips’s fins
provide necessary support for the flange. Without the fins, the
flange is subject to deformation. The only testimony offered by
Eppendorf to prove non-functionality of the fins related to the
existence of alternative design possibilities. Eppendorf’s
functionality expert testified that the appearance and number of
fins could be changed without affecting the function of the fins.
Eppendorf did not prove, however, that the fins are an arbitrary
flourish which serve no purpose in the Combitips. Rather,
Eppendorf’s experts concede that fins of some shape, size or number
are necessary to provide support for the flange and to prevent
deformation of the product. Thus, the fins are design elements
12
necessary to the operation of the product.5 Because the fins are
essential to the operation of the Combitips, they are functional as
a matter of law, and it is unnecessary to consider design
alternatives available in the marketplace. Traffix, 532 U.S. at 33-
34, 121 S.Ct. at 1261.
Likewise, a careful review of the record demonstrates
that Eppendorf failed to prove that the remaining Combitip design
elements are unnecessary, non-essential design elements. It is
undisputed that: (1) The flange is necessary to connect the
Combitip to the dispenser syringe; (2) The rings on the plunger
head are necessary to lock the plunger into a cylinder in the
dispenser syringe; (3) The plunger is necessary to push liquids out
of the tip, and the ribs on the plunger stabilize its action; (4)
The tips at the lower end of the Combitips are designed to easily
fit into test tubes and other receptacles; (5) The size of the
Combitip determines the dispensed volume, and size is essential to
accurate and efficient dispensing; (6) The color scheme used on the
Combitip - clear plastic with black lettering - enables the user
easily to see and measure the amount of liquid in the Combitip, and
black is standard in the medical industry; and (7) The stumps of
5
Additionally, Eppendorf’s experts concede that some of the suggested
alternative designs would slightly increase the cost of the product. This
provides further support for the conclusion that the fins are functional under
the traditional definition of functionality.
13
the larger Combitips must be angled to separate air bubbles from
the liquid and ensure that the full volume of liquid is dispensed.
Thus, all eight design elements identified by Eppendorf are
essential to the operation of the Combitips.
Eppendorf’s theory of non-functionality focused on the
existence of alternative designs. Eppendorf’s design expert
summarized Eppendorf’s approach to functionality: “My conclusion
was that to achieve the same functional purpose, [the design
elements identified by Eppendorf] can be changed significantly,
considerably without affecting the overall intended purpose.”
Although alternative designs are relevant to the utilitarian test
of functionality, alternative designs are not germane to the
traditional test for functionality. Each of the eight design
elements identified by Eppendorf is essential to the use or purpose
of the Combitips, and are not arbitrary or ornamental features.
Therefore, no reasonable juror could conclude that Eppendorf
carried its burden of proving non-functionality.
CONCLUSION
We conclude that Eppendorf failed to carry its burden of
proving non-functionality. Therefore, pursuant to 15 U.S.C. §
1125(a)(3), Eppendorf is not entitled to trade dress protection
because the eight Combitip product features are functional as a
matter of law. Accordingly, we REVERSE the judgment of the
14
district court and RENDER judgment for Ritter and RK Manufacturing.
We likewise VACATE the injunction entered by the district court.
Eppendorf’s cross-appeal is DENIED.
15