Because this is a case of first impression with us and as the author of the opinion for the court in the Deister ease1 who had to struggle with the problem of when the law does and does not permit the acquisition of trademark rights in aspects of product appearance which have acquired de facto secondary meaning, I wish to say a word about the distinction which I see between this case and the facts of the Deister case and why I reject the solicitor’s argument based on “functionality in ornamentation.”
The Deister opinion points out that the policy question is whether a potentially perpetual monopoly in the thing sought to be registered should be granted. On the facts in that case we held that the law did not permit it. In this field the law is deduced entirely from court decisions. The stated reason, under that law, was that the outline shape of the deck of the shaking table was that it was in essence utilitarian — a shape utilized for reasons of engineering efficiency. The law, however, does not make these decisions easy and actually it is made as we go along on a case to case basis.
The Deister opinion also took note of a distinction between “functional” shapes incapable of being monopolized under the law and those “functional” shapes which might be monopolized “because they are of such an arbitrary nature that the law does not recognize a right in the public to copy them, even if some incidental function is associated with them.” (Emphasis added.)
My view of the bottle shape in the instant case is that it falls into the latter category. The solicitor argues that it has a “decanter” shape and is therefore possessed of a desirable appearance making it suitable for table use when one wants a bottle with a pleasing appearance. But decanters can be of a great variety of shapes. He cites the Restatement of Torts to show that when goods are bought for their aesthetic appearance, their shape contributes to that as*933pect of their value and is “functional.” He then quotes the Restatement:
“The determination of whether or not such features are functional depends upon the question of fact whether prohibition of imitation by others will deprive the others of something which will substantially hinder them in competition.”
The solicitor asserts that if others were prohibited from using the appearance of appellant’s bottle, they would be substantially hindered in competition on the product, namely the specific bottle containing wine.
Whether competition would in fact be hindered is really the crux of the matter. I disagree with the solicitor because I am convinced that others would not be in the least hindered in competition. Others can meet any real or imagined demand for wine in decanter-type bottles — assuming there is any such thing — without being in the least hampered in competition by inability to copy the Mogen David bottle design. They might even excel in competition by producing a more attractive design under the stimulus of a prohibition against copying under the principles of unfair competition law.
The solicitor further quotes the Restatement of Torts:
“A feature is non-functional if, when omitted, nothing of substantial value in the goods is lost.”
He argues that the very existence of the design patent is sufficient evidence of ornamental function, which, I suppose, would be something of value lost when omitted.
This brings us to what is, in my opinion, an essential distinction between engineering function and ornamentation function which should be recognized in passing on these cases which involve the policy question whether the public shall have freedom to copy or not. In Deister, for example, use of the diagonal shape was essential to the enjoyment of the engineering advantages which brought it into being. (At least that was our assumption on the record.) In the instant case, even if we assume some value behind the specific design in an aesthetic sense, it is not in the least essential to use it in order to have a fully functioning bottle or an attractive bottle or even a bottle of the general type of the Mogen David bottle, whether or not considered to be a “decanter.” (Our impression of decanters is that they vary as much in shape and design as wine and liquor bottles in general.)
The Restatement appears to use the terms “functional” and “non-functional” as labels to denote the legal consequence: if the former, the public may copy; and if the latter, it may not. This is the way the “law” has been but it is not of much help in deciding cases. But going behind the labels to the bases for determining which to apply, we see, I believe, that depriving the public of the right to copy Mogen David’s bottle in selling wines and related products (1) does not hinder competition and (2) does not take from the goods (bottled wine) something of substantial value. And that is because, within the rationale of the Deister case, the design of a wine bottle like the one here is of such an arbitrary nature that depriving the public of the right to copy it is insignificant, as a policy matter, in comparison with the vendor’s right to protection from possible confusion in trade.
. In re Deister Concentrator Co., Inc., 289 F.2d 496, 48 CCPA 952.