Blumenthal Distributing, Inc. v. Herman Miller, Inc., No. 18-56471 (9th Cir. 2020)
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HM filed suit alleging infringement of HM's rights in the EAMES and AERON trade dresses under the Lanham Act. The jury found in favor of HM as to the Eames chairs and awarded infringement and dilution damages. As to the Aeron chair, the jury found in favor of OSP.
The Ninth Circuit held that for a product's design to be protected under trademark law, the design must be nonfunctional. The panel affirmed the district court's judgment in favor of HM on its causes of action for the infringement of its registered and unregistered EAMES trade dresses and rejected OSP's argument that the utilitarian functionality of the Eames chairs' component parts renders their overall appearances functional as a matter of law; reversed the judgment in favor of OSP regarding the Aeron chair because the functionality jury instruction does not accurately track the panel's functionality caselaw; reversed the judgment in favor of HM on its cause of action for dilution because there was legally insufficient evidence to find that the claimed EAMES trade dresses were famous under 15 U.S.C. 1125(c)(2)(A); and remanded for a new trial.
Court Description: Lanham Act The panel affirmed in part and reversed in part the district court’s judgment after a jury trial on claims of infringement of trade dresses in Eames and Aeron chairs and remanded for a new trial. The jury found that Henry Miller, Inc. (“HM”)’s registered and unregistered Eames trade dresses were protectable, and that Blumenthal Distributing, Inc. (“OSP”) willfully infringed and diluted them. HM was awarded infringement and dilution damages, and OSP was enjoined from continuing its unlawful activities. The jury found that HM’s registered and unregistered claimed Aeron trade dresses were unprotectable because they were “functional,” and the district court entered judgment holding invalid HM’s trademark registration for the Aeron chair. In its opinion and a concurrently-filed memorandum disposition, the panel affirmed the judgment in favor of HM on its causes of action or the infringement of its registered and unregistered Eames trade dresses; reversed the judgment in favor of HM on its cause of action for dilution; and reversed the judgment in favor of OSP regarding the Aeron chair and remanded for a new trial. In Part II of its opinion, addressing functionality, the panel held that for a product’s design to be protected under trademark law, the design must be nonfunctional. Utilitarian BLUMENTHAL DISTRIB. V. HERMAN MILLER 3 functionality is based on how well the product works, and aesthetic functionality is based on how good the product looks. A claimed trade dress has utilitarian functionality if it is essential to the use or purpose of a product or affects its cost or quality. Under the Disc Golf test, the court considers: (1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture. A claimed trade dress has aesthetic functionality if it serves an aesthetic purpose wholly independent of any source-identifying function, such that the trade dress’s protection under trademark law would impose a significant non-reputation-related competitive disadvantage on its owner’s competitors. When a claimed dress is defined as the “overall appearance” of a product, the tests for utilitarian and aesthetic functionality must be applied with extra care. A product’s “overall appearance” is functional, and thus unprotectable, where the whole product is “nothing other than the assemblage of functional parts,” and “even the arrangement and combination” of those parts is designed to make the product more functional. The standard for whether a claimed trade dress consisting of an “overall appearance” is functional is whether protecting the trade dress threatens to eliminate a substantial swath of competitive alternatives in the relevant market. As to the Eames chairs, the panel held that the utilitarian functionality of their various features did not make their overall appearances functional as a matter of law. As to the Aeron chairs, the panel held that the jury erred in instructing the jury on functionality because being part of the actual benefit that consumers wish to purchase when they 4 BLUMENTHAL DISTRIB. V. HERMAN MILLER buy the product is not proof that a feature is functional. Further, the instruction did not capture the concepts that a feature that provides a utilitarian benefit is not functional unless the Disc Golf factors weigh in favor of finding it so; or that a feature that provides an aesthetic benefit is not functional unless that benefit is wholly independent of any source-identifying function and the feature’s protection would put competitors at a significant non-reputation-related disadvantage. The panel reversed and remanded for a new trial on HM’s Aeron-related claims. In Part III, addressing fame, the panel held that to prevail on trade dress dilution, HM was required to prove that its claimed trade dresses were “famous” before OSP began selling its accused chairs. The panel held that the Trademark Dilution Revision Act of 2006 eliminated the concept of niche fame and defined fame as being “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002), interpreting the Federal Trademark Dilution Act of 1995, which preceded the TDRA of 2006, held that fame among the general consuming public requires “a household name.” Applying this standard, the panel held that HM fell short of its burden to supply legally sufficient evidence of the fame of its claimed Eames trade dresses. The panel therefore reversed the judgment against OSP for trade dress dilution. Concurring in part and dissenting in part, Judge Friedland joined most of the majority’s opinion but dissented as to Part III because she disagreed with the conclusion that there was insufficient evidence to sustain the jury’s verdict in favor of HM on its claim for dilution of its Eames trade dresses. BLUMENTHAL DISTRIB. V. HERMAN MILLER 5
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