By Linda Panszczyk, J.D.
Sufficient evidence at trial supported finding that trade dress of iconic French press coffeemaker was nonfunctional; verdict against rival upheld.
Bodum USA, Inc. (Bodum), which produces and sells what is recognized as an iconically designed houseware product, the Chambord French press coffeemaker, met its burden of proving at trial that the elements of the claimed Chambord trade dress were nonfunctional. Further, competitor A Top New Casting, Inc. (A Top) was not entitled to a new trial on the ground that the district court improperly excluded several utility patents from evidence, according to the U.S. Court of Appeals for the Seventh Circuit (Bodum USA Incorporated v. A Top New Casting Inc., June 12, 2019, Flaum, J.).
Bodum began selling French press coffeemakers in the 1970s and began distributing its flagship French press, the Chambord, in 1983. The Chambord's features include a metal cage with a band around the top of the carafe, metal pillars ending in four curved feet, a C-shaped handle, and a domed lid topped with a spherical knob. Bodum acquired exclusive rights to distribute the Chambord in 1991 and has spent millions of dollars promoting it in print and television advertisements and at trade shows worldwide. Bodum sells the Chambord in department stores, at Starbucks coffee shops, and online, including through Amazon. The Chambord design has been recognized as classic by such institutions as the Museum of Modern Art. In 2014, defendant-appellant A Top began selling a competing French press coffeemaker called the SterlingPro exclusively through Amazon. The SterlingPro is similar in appearance to the Chambord, with the same metal cage, metal pillars ending in curved feet, C-shaped handle, and domed lid topped with a spherical knob.
In 2016, Bodum filed a lawsuit against A Top in district court for selling a French press that Bodum claimed intentionally infringed on its unregistered trade dress in the Chambord, bringing claims for (1) trade dress infringement under the Lanham Act, (2) common law unfair competition; and (3) violation of the Illinois Uniform Deceptive Trade Practices Act. The district court previously denied A Top's motion for judgment as a matter of law, in which A Top argued that Bodum failed to prove the Chambord design was nonfunctional. In 2018, a jury reached a verdict in Bodum's favor and awarded $2 million (later doubledby the court to $4 million) in damages. Following trial, the district court denied A Top's motion for judgment as a matter of law based on functionality. A Top also moved for a new trial because the court excluded evidence of various utility patents covering French press coffeemakers and the district court denied that motion as well. The appellate court affirmed both denials.
On appeal, A Top claims that (1) it is entitled to judgment as a matter of law because, at trial, Bodum did not meet its burden of demonstrating that the elements of the claimed Chambord trade dress were nonfunctional, which is required under the Lanham Act, and (2) it is entitled to a new trial because the district court improperly excluded several utility patents from evidence.
Functionality of the Chambord trade dress. At trial, Bodum was required to prove a number of elements for the jury to find trade dress infringement, but the only one at issue on appeal is Bodum's proof on the functionality of its claimed trade dress. A product feature is considered 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 the article. Even if a claimed trade dress does not satisfy this first test, it can still be functional if it is a competitive necessity. Where, as here, the claimed trade dress is unregistered, the burden is on the party asserting protection to prove that the trade dress is not functional.
In deciding whether a trade dress is functional, the courts consider five factors, including: (1) the existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item’s design element; (2) the utilitarian properties of the item’s unpatented design elements; (3) advertising of the item that touts the utilitarian advantages of the item’s design elements; (4) the dearth of, or difficulty in creating, alternative designs for the item’s purpose; and (5) the effect of the design feature on an item’s quality or cost. No one factor is dispositive, however,
Bodum claimed trade dress protection in the overall appearance of the Chambord and identified the following specific elements as contributing to that distinctive look: the metal band surrounding the carafe that forms support feet and the handle attachment, the domed lid, the rounded knob atop the plunger, and the C-shaped handle. Bodum did not claim a trade dress in the cylindrical carafe or the plunger, as it acknowledges those elements are functional for a French press coffeemaker.
According to the court, to establish it has a valid trade dress, Bodum did not have to prove that something like a handle does not serve any function. It merely needed to prove that preventing competitors from copying the Chambord’s particular design would not significantly disadvantage them from producing a competitive and cost-efficient French press coffeemaker. When properly framed in this manner, the court stressed, Bodum presented enough evidence for a reasonable jury to conclude that the Chambord’s overall look was nonfunctional.
First, regarding the utilitarian properties of the Chambord’s design elements, Bodum’s functionality expert testified about their nonutilitarian nature, indicating that that the only functional parts of the Chambord, the parts that are necessary to make French press coffee, are the plunger and cylindrical shape of the carafe.
Further, A Top argued that Bodum admitted that the Chambord design was functional in its advertising and thus failed to meet its burden of proving nonfunctionality. The CEO of Bodum’s parent company testified regarding Chambord advertisements describing the product as "functional" and also about an interview he gave in which he described Bodum’s products as function driven. However, he explained that these references to functionality were not invoking the term’s legal definition but were merely intended to convey that Bodum’s products work. In fact, Bodum’s advertising for the Chambord never claimed that any of its design features worked better than other options, for instance, never claiming that the handle is an ergonomic shape or that its four curved feet provide stability. Instead, the Bodum advertising focused on the classic look of the Chambord design. Thus, the court noted, a reasonable jury could weigh this evidence against a finding of functionality in the legal trade dress sense.
Additionally, Bodum introduced a large amount of evidence regarding the availability of alternative designs, which supported the Chambord’s lack of functionality, including introducing trial exhibits of competing manufacturers’ French presses featuring different design elements, including those made of different materials, with differently shaped handles, lids, plunger knobs, and frames, those that do not have transparent carafes or do not have feet, and those with differently shaped external structures surrounding the cylindrical carafe.
The court also considered the cost or quality advantage test of functionality. Bodum presented enough evidence from which a jury could conclude that the Chambord’s design conferred no cost or quality advantage that made it functional. Bodum’s expert testified that the Chambord design is complex and that there are simpler ways of doing it. The Bodum expert also explained that plastic is generally cheaper to use than metal in manufacturing, and so plastic-framed French presses would be cheaper to manufacture than the metal-framed Chambord. The CEO of Bodum's parent company also testified as to the many different types of French presses which Bodum produces. Thus, the CEO's testimony supported that the Chambord’s overall design conferred no particular cost advantage that made it functional.
Overall, looking at the evidence in the light most favorable to the verdict, said the court, Bodum presented sufficient evidence for the jury to have found Bodum’s claimed trade dress was nonfunctional, noting that the court could not say that the jury was irrational to reach this conclusion. As a result, the court affirmed the denial of A Top’s motion for judgment as a matter of law.
Exclusion of utility patents evidence. A Top also appealed the district court’s decision to exclude evidence of various utility patents, which A Top contended demonstrate the functionality of the claimed Chambord trade dress features. According to the appellate court, the district court did not abuse its discretion in excluding this evidence. The patents A Top sought to introduce do not claim any of the features that comprise the claimed Chambord trade dress. That the patents disclose a plunger and cylindrical carafe are irrelevant because Bodum does not claim those elements as part of its trade dress. Also, the pictures in the patents showing French presses with handles, domed lids, or knobs are irrelevant to the legal question of functionality because the patents do not claim any of those features as part of the patented invention.
Permitting the jury to view and consider these other patents, said the court, would have caused confusion as to the appropriate inquiry for functionality. The district court excluded the evidence under an evidentiary rule that tasks the judge with balancing the exclusion of relevant evidence with the risk of harm from admission. The district court did not decide the functionality question; it instead determined that the patent evidence, while relevant to the question of functionality, posed too significant a risk of jury confusion. As a result, the appellate court affirmed the lower court's denial of A Top's motion for a new trial.
This case is No. 18-3020.
Attorneys: Nicole J. Wing (Vedder Price PC) for Bodum USA, Inc. James D. Benak (Tetzlaff Law Offices, LLC) for A Top New Casting Inc.
Companies: Bodum USA, Inc.; A Top New Casting Inc.
MainStory: TopStory Trademark IllinoisNews
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