Atlas Equipment Co LLC v. Weir Minerals Australia LTD, et al, No. 09-36151 (9th Cir. 2011)

 Annotate this Case
Download PDF
FILED NOT FOR PUBLICATION UNITED STATES COURT OF APPEALS JAN 06 2011 MOLLY C. DWYER, CLERK U .S. C O U R T OF APPE ALS FOR THE NINTH CIRCUIT ATLAS EQUIPMENT CO LLC, a Washington limited liability company, No. 09-36151 D.C. No. 2:07-cv-01358-TSZ Plaintiff - Appellee, MEMORANDUM * and ATLAS EQUIPMENT MANUFACTURING LTD., aka Hebei Atlas Equipment Manufacturing, Ltd.; et al., Third-party-defendants Appellees, v. WEIR MINERALS AUSTRALIA LTD, an Australian public company; et al., Defendants-third-partyplaintiffs-cross-claimants - Appellants. ATLAS EQUIPMENT CO LLC, a Washington limited liability company, No. 10-35051 D.C. No. 2:07-cv-01358-TSZ Plaintiff - Appellant, * This disposition is not appropriate for publication and is not precedent except as provided by Ninth Cir. R. 36-3. and ATLAS EQUIPMENT MANUFACTURING LTD., aka Hebei Atlas Equipment Manufacturing, Ltd.; et al., Third-party-defendants Appellants, v. WEIR SLURRY GROUP INC, a Wisconsin corporation; et al., Defendants-third-partyplaintiffs-cross-claimants - Appellees. Appeal from the United States District Court for the Western District of Washington Thomas S. Zilly, Senior District Judge, Presiding Argued and Submitted December 6, 2010 Seattle, Washington Before: BEEZER, O SCANNLAIN, and PAEZ, Circuit Judges. In No. 09-36151, Weir appeals the district court s order granting summary judgment to Atlas Equipment on Weir s trade dress claim. Weir contends that the court applied an erroneous legal standard in analyzing functionality and that there exists a triable issue of material fact. In No. 10-35051, Atlas appeals the district 2 court s order denying in part its motion for attorneys fees. We have jurisdiction under 28 U.S.C. § 1291, and we affirm in both matters. We typically consider four factors in determining whether a product feature is functional: (1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, (4) and whether the particular design results from a comparatively simple or inexpensive method of manufacture. Disc Golf Ass n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998). A product feature need only have some utilitarian advantage to be considered functional. Id. at 1007. Moreover, once a court determines that a particular trade dress is functional, it need not continue to address whether there are alternative designs. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33-34 (2001). Atlas presented undisputed evidence that each of the elements of Weir s purported trade dress has a utilitarian advantage. Weir presented no evidence concerning advertising or cost of production that raised a material triable issue of fact about the functionality of the individual features that comprise its purported trade dress. Accordingly, the district court properly concluded that Weir s purported trade dress was functional as a matter of law based on the undisputed facts on the record, and there was no need for the court to consider further evidence 3 of alternative designs. Id. In addition, because the overall configuration of the slurry pump is nothing other than the assemblage of functional parts, there is no separate trade dress protection for the appearance of the pump as a whole. Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1013 (9th Cir. 1999). Although Weir s claims were ultimately unsuccessful, we agree with the district court that this was not an exceptional case under the Lanham Act, 15 U.S.C. § 1117(a), because Weir did not act unreasonably or in bad faith. See Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966, 973 (9th Cir. 2007) (denying attorneys fees to a prevailing plaintiff). The district court therefore did not abuse its discretion in denying attorneys fees to Atlas. We do not address Atlas s request for attorneys fees for this appeal, as any such request must be made by separate motion. Ninth Cir. R. 39-1.6. In No. 09-36151, AFFIRMED. In No. 10-35051, AFFIRMED. 4

Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You should read the full case before relying on it for legal research purposes.

This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.