US Supreme Court Briefs

No. 99-1571

In The
Supreme Court of the United States


TRAFFIX DEVICES, INCORPORATED,

Petitioner,
v.


MARKETING DISPLAYS, INCORPORATED,

Respondent.



On Writ of Certiorari to the
United States Court of Appeals
for the Sixth Circuit


BRIEF FOR PETITIONER




JEANNE-MARIE MARSHALL
RICHARD W. HOFFMANN
REISING, ETHINGION, BARNES,
KISSELLE, LEARMAN &
MCCULLOCH, P.C.
201 W. Big Beaver-Suite 400
Troy, Michigan 48084
(248) 689-3500
JOHN G. ROBERTS, JR.*
GREGORY G. GARRE
HOGAN & HARTSON L.L.P.
555 Thirteenth Street, N.W.
Washington, D.C. 20004
(202) 637-5810



* Counsel of Record counsel for Petitioner


QUESTION PRESENTED

Whether federal trade dress protection extends to a product configuration-such as the one at issue in this case-covered by an expired utility patent.
































(i)



Pag
e
I




11


V


I

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2

2

4

9

1
2




1
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1
2



1
7
TABLE OF CONTENTS


PARTIES To Fill PROCEEDING AND
RULE 2t~.6 s I xiiMEN1

The caption contains the mc'. ~1t dli parties that appeared
in the Sixth Circuit. Pehitiovtcr I ralVix Devices, Inc. has
no parent companies or subsid~.irics
QUESTION PRESENTED PARTIES TO THE
PROCEEDING AND RULE 29.6

STATEMENT

TABLE OF AUTHORITIES

OPINIONS BELOW JURISDICTION

CONSTITUTIONAL AND STATUTORY PRO VIS IONS
INVOLVED

INTRODUCTION

STATEMENT OF THE CASE

SUMMARY OF ARGUMENT

ARGUMENT

I. AS THIS COURT HAS REPEATEDLY RECOG-
NIZED, THE PATENT SYSTEM ESTABLISHES
A PUBLIC RIGHT TO COPY ANT) USE THE
SUBJECT OF EXPIRED PATENTS

A. The Patent System Was Founded To Bring
Discoveries Into The Public Domain And Thus
Promote The Progress Of Useful Arts

B. This Court Has Repeatedly Affirmed That The
Public Is Entitled To Copy And Use The Subject Of
Expired Patents
(iii)
(ii)






i
v
TABLE OF AUTHORITIES
TABLE OF CONTENTS-Continued

Page
Page
Cases:

C. The Public's Right To Copy And Use The
Subject Of Expired Patents Extends To
MDI's Patented, Dual-Spring Sign Stand

II. FEDERAL TRADE DRESS LAW DOES
NOT-AND COULD NOT-DEFEAT THE
PUBLIC'S RIGHT TO COPY AND USE PROD-
UCT CONFIGURATIONS THAT ARE THE
SUBJECT OF EXPIRED PATENTS

A. Product Configuration Trade Dress Lacks
The Constitutional And Historical Footing
Of The Public's Right To Copy From Expired
Patents

B. In Establishing A National Trademark Code,
Congress Did Not Intend To Override The
Public's Right To Copy From Expired
Patents

C. Construing The Lanham Act To Defeat The
Public's Right To Copy From Expired
Patents Would Raise Grave Constitutional
Concerns

III. THE PUBLIC'S RIGHT TO COPY FROM EX-
PIRED PATENTS SHOULD NOT BE SUBOR-
DINATED TO A FACTBOUND, "COMPETI-
TIVE NEED" INQUIRY

CONCLUSION
21





24



24



28



33
Aronson v. Quick Point Pencil Co., 440 U.S.
257 (1979) 35
Besser v. Merrilat Culvert Core Co., 243 F. 611
(8thCir. 1917) 31
Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
489 U.S. 141 (1989) passim
Bowen v. Massachusetts, 487 U.S. 879 (1988) 28
Coats v. Merrick Thread Co., 149 U.S. 562
(1893) 21
College Say. Bank v. Florida Prepaid Post-
seconda,y Educ. Expense Bd., 119 5. Ct.
2219(1999) 36
Compco Corp. v. Day-Bright Lighting, Inc., 376
U.S. 234 (1964) 20,34
County of Yakima v. Confederated Tribes &
Bands of the Yakima Indian Nation, 502 U.S.
251 (1992) 29
Disc Golf Ass 'n v. Champion Discs, Inc., 158
F.3d 1002 (9th Cir. 1998) 41
Duraco Prods., Inc. v. Joy Plastic Enters., Ltd.,
40 F.3d 1431 (3d Cir. 1994) 27,33
Edward JL DeBartolo Corp. v. Florida Gulf
Coast Bldg. & Constr. Trades Council, 485
U.S. 568 (1988) 33
Gibbons v. Ogden, 22 U.S. (9 Wheat) 1(1824) 36
Goodyear Atomic Corp. v. Miller, 486 U.S. 174
(1988) 28
Graham v. John Deere Co., 383 U.S. 1(1966) 13,14,15
Grant v. Raymond, 31 U.S. (6 Pet.) 218 (1832) 12,14
Graver Tank & Mfg. Co. v. Linde Air Prods.
Co., 339 U.S. 605 (1950) 23
Grubart v. Great Lakes Dredge & Dock Co.,
513 U.S. 527 (1995) 41
37

45
APPENDIX

DUAL-SPRING TRAFFIC SIGN STANDS
STATUTORY ADDENDUM
(v)





vi vii


TABLE OF AUTHORITIES-Continued
Pag
e
I.?. Lund Trading ApS v. Kohler Co., 163 F.3d
27(lstCir. 1998) 36
Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.
844 (1982) 28,32,39,40
Jones v. United States, 120 5. Ct. 1904 (2000) 33
Kellogg Co. v. National Biscuit Co., 305 U.S.
111 (1938) passim
- Kendall v. Winsor, 62 U.S. (21 How.) 322
(1858) 13,14,16
Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470
(1974) 16,34,35
Kohler Co. v. Moen Inc., 12 F.3d 632 (7th Cir.
1993) 36,40,42
Lea thernian Tool Group, Inc. v. Cooper Indus.,
Inc., 199 F.3d 1009 (9th Cir. 1999) 27,32
Machine Co. v. Murphy, 97 U.S. 120 (1877) 23
Markman v. Westview Instruments, Inc., 517
U.S. 370(1996) 44
North American Co. v. SEC. 327 U.S. 686
(1946) 36
Park N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189 (1985) 25
Pennockv. Dialogue, 27 U.S. (2 Pet.)
1(1829). 13,14,17,43
Pfaffv. Wells Elecs., Inc., 525 U.S. 55 (1998) 15
Qualitex Co. v. Jacobson Prods. Co., 514 U.S.
159 (1995) passim
Sarkisian v. Winn-Proof Corp., 697 F.2d 1313
(9th Cir.), cert. denied, 460 U.S. 1052 (1983) 6,22,23
Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S.
249 (1945) passim
Sears, Roebuck & Co. v. Stifel Co., 376 U.S.
225 (1964) passim
Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169
(1896) passim
TABLE OF AUTHORITIES-Continued
Pag
e
Tennessee Valley Auth. V. hill, 437 U.S. 153
(1978) 29
Thomas & Betts Corp. v. Panduit Corp., 935 F.
Supp. 1399 (N.D. Ill. 1996), rev'd, 138 F.3d
277 (7th Cir.), cert. denied, 525 U.S. 929
(1998) 37,41,42,43
Truck Equip. Serv. Co. v. Fruehauf Corp., 536 F.2d
1210 (8th Cir.), cert. denied, 429 U.S.
861 (1976) 27
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763 (1992) 25,30,3 1
United States v. Dubilier Condenser Corp., 289
U.S. 178, amended, 289 U.S. 706 (1933)
15,21
United States v. Masonite Corp., 316 U.S. 265
(1942) 14
United States v. Steffens (The Trade-Mark
Cases), 100 U.S. 82 (1879) 13,24,25
Versa Prods. to. v. B fold Co. (Mfg.) Ltd., 50
F.3d 189 (3d Cir.), cert. denied, 516 U.S. 808
(1995) 44
Vornado Air Circulation Sys., Inc. v. Duracraft
Corp., 58 F.3d 1498 (10th Cir. 1995), cert.
denied, 516 U.S. 1067 (1996) 9,37,38,42
Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
120 S. Ct. 1339 (2000) 4,11,26,42,43
Warner-Jenkinson Co. v. Hilton Davis Chem.
Co., 520U.S. 17 (1997) 23
Winans v. Denmead, 56 (15 How.) U.S. 330
(1853) 23
Zip Dee, Inc. v. Dometic Corp., 931 F. Supp.
602 (N.D. Ill. 1996) 37

Constitution:
U.S. Const. art. I, § 8, cI. 3 36





viii

TABLE OF AUTHORITIES-Continued
Page
U.S. Const. art. I, § 8, ci. 8 passim

Statutes:
15 U.S.C. § 1057(b) 26
15U.S.C.§1065 26
15U.S.C.§1114 26
15U.S.C. § 1125(a) 2,26
15 U.S.C. § 1125(a)(3) 10,26,30,32
1SU.S.C.§1127 26
28 U.S.C. § 1254(1) 2
28 U.S.C. § 1291 2
28 U.S.C. § 1292(a)(1) 2
35 U.S.C. § 101 5,10,21,30
35U.S.C.§102 5
35 U.S.C. § 103 5
35 U.S.C. § 112 15,16
35 U.S.C. § 154 31,40
35 U.S.C. § 154(a)(1) 5
35 U.S.C. § 171 32
35 U.S.C. § 173 31,40
35U.S.C.§ 292 44

Legislative Materials:
S. Rep. No. 79-1333 (1946) 29,30
S. Rep. No. 100-515 (1988) 30
H.R. Rep. No. 106-250 (1999) 30

Other:

Elizabeth Fleet, Madison 's "Detached Memo
randa," 3 Win. & Mary Q. 534 (1946) 15
Felix Frankfurter, Some Reflections on the
Reading of Statutes, 47 Colum. L. Rev. 527
(1947) 28
ix

TABLE OF AUTHORITIES Continued
Page
Todd R. Geremia, Protecting the Right to Copy:
Trade Dress Claims for Configurations in
Expired Utility Patents, 92 Nw. U. L. Rev.

779 (1998) 37,42
J. Thomas McCarthy, McCarthy on Trademark & Unfair
Competition (4th ed. 1996) 8,9,26,27,39
J. Thomas McCarthy, Lanham Act § 43(a).~ The Sleeping
Giant Is Now Wide Awake, 59 Law
& Contemp. Probs. 45 (1996) 42
Willajeamie F. McLean, Opening Another Can
of Worms: Protecting Product Configuration
as Trade Dress, 66 U. Cm. L. Rev. 119
(1997) 26
Peter Meinhardt, Inventions, Patents & Monop-
oly (London 1946) 13
Kevin E. Mohr, At the Interface of Patent and
Trademark Law: Should a Product Configu-
ration Disclosed in a Utility Patent Ever
Qualfy for Trade Dress Protection?, 19
Hastings Comm. & Ent. L.J. 339 (1997) 30,31,40
Beverly W. Pattishall, The Constitutional Foun-
dations of American Trademark Law, 78
Trademark Rptr. 456 (1988) 25
Herbert F. Schwartz, Patent Law & Practice (2d
ed. 1995) 16
The Republic of Letters (James Morton Smith
ed. 1995) 14
Restatement (Third) of Unfair Competition
(1995) 26
Edward C. Walterscheid, Patents & Manufac-
turing in the Early Republic, 80 J. Pat. &
Trademark Off. Soc'y 855 (1998) 12
Webster's II New University Dictionary (1994) 30





IN TILE



~upremc Elourt of tbt ~1uiteb ~'tate~

No. 99-1571


TRAFFIX DEVICES, INCORPORATED,

Petitioner,
V.


MARKETING DISPLAYS, INCORPORATED,

Respondent.



On Writ of Certiorari to
the United States Court of Appeals
for the Sixth Circuit


BRIEF FOR PETITIONER


OPINIONS BELOW

The opinion of the Sixth Circuit is reported at 200 F.3d 929
and reproduced in the appendix to the petition for certiorari
("Pet. App.") at la. The June 2, 1997 opinion of the District
Court for the Eastern District of Michigan is reported at 967
F. Supp. 953 and reproduced at Pet. App. 68a. The June 12,
1997 opinion of the District Court is reported at 971 F. Supp.
262 and reproduced at Pet. App. 25a.

JURISDICTION

The judgment of the Sixth Circuit was entered on December 29, 1999. Pet. App. la. The jurisdiction of the Sixth


2

Circuit was based on 28 U.S.C. §§ 1291 and 1292(a)(l). This
Court has jurisdiction under 28 U.S.C. § 1254(1).

CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOLVED

The Patent Clause of the United States Constitution grants
Congress the power "[tjo promote the Progress of Science
~and useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and
Discoveries." U.S. Const. art. I, § 8, ci. 8.

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),
provides in part:

(I) Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce
any word, term, name, symbol, or device, or any combi-
nation thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading rep-
resentation of fact, which-

(A) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person ***

shall be liable in a civil action by any person who believes
that he or she is or is likely to be damaged by such act.

The full text of Section 43(a) and other pertinent statutory
provisions are reprinted in the addendum to this brief.

INTRODUCTION

Our patent system rests on a "carefully crafted bargain."
Bonito Boats, inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 150-151 (1989). An inventor "who is willing to reveal
to the public the substance of his discovery" may obtain, in
the form of a patent, a limited "right to exclude others from
3
making using, or selling the invention" Id. at 150 (quotations
omitted) But once the patent expires, "the invention inures
to the people, who are thus enabled without restriction to
practice it and profit by its use." Id. at 151 (same). The
bargainvie~~~
by the Framers as vital to fostering inven-
tion in the new Republic without stifling competitio~.....js
guarded by the Constitution which, while authorizing Congress
to grant patents, provides that they must be for "limited
Times." U.S. Const. art. I, § 8, ci. 8 (emphasis added). To
enforce this bargain, this Court has "long held that after the
expiration of a federal patent, the subject matter of the patent
passes to the free use of the public as a matter of federal law."
Bonito Boats, 489 U.S. at 152.

In this case, it is necessary for the Court, again, to enforce
the patent bargain, and ensure that the public's right to copy and
use the subject of expired patents is not thwarted. Respondent
manufactures and sells a highway traffic sign stand that for years
enjoyed utility patent protection During this period, respondent
successfully enforced its patent monopoly to prevent the
competition from using its invention and selling a virtually
identical sign stand. Then respondent's patents expired. At that
point, petitioner sought to manufact~e a traffic sign stand with
the same basic configuration as the one utilized by respondent
and covered by its expired patents, but with certain
improvements that petitioner eventually patented. No longer
armed with its patent monopoly, respondent brought this action
to enjoin the sale of petitioner's sign stand under Section 43(a) of
the Lanham Act, claiming that petitioner had infringed
responden~'~ "trade dress" in the form of the patented device
itself

Compared to patent law, federal trade dress law is of recent
vintage and stands on a different constitutional footing. Federal
trade dress law has evolved only over the past few decades and
largely as a result ofjudici~j interpretation of the Lani-jam
Act-a product of the exercise of Congress' general Commerce
Clause authority. The concept of protectible





4
S
trade dress "originally included only the packaging, or 'dressing,'
of a product, but in recent years has been expanded by many
courts of appeals to encompass the design of a product" and, at
its extreme, even just a product's shape or configuration. Wal-
Mart Stores, Inc. v. Samara Bros., Inc., 120 5. Ct. 1339,
1342 (2000). The basic question in this case is whether, or
under what circumstances, federal trade dress protection
extends under the Lanham Act to a product configuration that
is the subject of an expired utility patent.

The resolution of this issue has profound consequences for
the patent bargain, the public's right to copy from expired
patents, and a patent system that has proven to be one of the
most successful engines ever devised for promoting scientific
innovation without impeding the sort of "imitation and
refinement through imitation" that is '~the very lifeblood of a
competitive economy." Bonito Boats, 489 U.S. at 146.

STATEMENT OF THE CASE

Respondent Marketing Displays, Inc. ("MDI") has manu-
factured and sold a commercially successful traffic sign stand
since the mid-I 970s under the registered trademark WIND-
MASTER. WINDMASTER traffic sign stands-used to
display signs such as ROAD WORK AHEAD-have a single
upright attached to four legs, with a narrowly spaced, dual-
spring base connecting the upright to the legs. See Appendix
("App.") la. Due to the operation of the dual-spring base in
conjunction with other components of the device, the sign
stand is able to stay upright in windy conditions and deflect
blows from oncoming traffic. The discovery that is the basis
for the sign stand's success was conceived by MDI's president,
Robert Sarkisian, in the mid1960s and is the subject of two
utility patents issued by the United States Patent and
Trademark Office ("PTO")-U.S. Patent Numbers 3,646,696
and 3,662,482, or the '696 and '482 patents. The last of
these patents expired in 1989, 17 years after it was issued.
Pet. App. 2a-3a, 26a-27a.
Utility patents may be issued for any novel, useful, and
nonobvious process, machine, manufacture, or composition of
matter. See 35 U.S.C. §§ 101-103. They secure a limited
monopoly on the use of the invention, expressed in terms of
"the right to exclude others from making, using, offering for
sale or selling the invention throughout the United States"
during the life of the patent. Id. § 1 54(a)(l). MDI's patents
claim a "display device comprising an unanchored base" and
spaced-apart "ground-engaging means"-what we would call
legs-with "a spring structure mounting the frame structure onto
the base, said spring structure comprising spring means
connected at least at two spaced apart locations between the
lower end of the frame structure and the base." '482 Patent,
L49~
696 Patent, L44.' They also set forth the basic formula
according to which the device functions, which, among other
things, limits placement of the dual-spring base in relation to
other elements of the stand and its center of gravity. See '482
Patent, L50; '696 Patent, L43; J.A. 181, 183-184.

The file history of MDI's patents touts the utilitarian sig-
nificance of the stand's unique, dual-spring base:

One of the novel points of structure in the present inven-
tion is the provision of a pair of spring connections as
opposed to a single spring connection[.j * * * The reason for
providing two spaced apart spring connections is to force
the sign to deflect in a direction along the longitudinal axis
of the base and to prevent twisting of the sign frame. Thus,
it is not a matter of choice whether one or two springs are
used in [the] invention. [See J.A. 220 (File History of '696
Patent).]

During the life of the patents, MDI advertised its traffic sign
stands and labeled them as being "[c]overed by" the


The '696 and '482 patents, along with various other record
materials containing diagrams or photographs are included in
the parties' Rule 32 Lodging, cited as "L ."





6

'696 and '482 patents. L85 (MDI brochure); see L56, L75,
L81, L91; J.A. 208. In addition, MDI enforced its patent
monopoly by enjoining a competitor (Winn-Proof) from
selling a "spring mounted sign stand" virtually identical to
MDI's traffic sign stand. Sarkisian v. Winn-Proof Corp., 697
F.2d 1313, 1316 (9th Cir.), cert. denied, 460 U.S. 1052
(1983). See id. at 1315; App. la. In upholding the injunction,
the Ninth Circuit observed that the dual-spring base is a
"crucial element[]" of the device, and agreed with the district
court "that the pair of springs used in the accused sign stand
was the equivalent of the pair of 'spaced apart' coil springs
described in the claims of Sarkisian's '696 patent." 697 F.2d at
1319-20 n.I5, 1322. The court similarly found that both
MDI's and Win-Proof's sign stands "utilizeEd]" the invention
described in the patents "in fashioning the bases of their
respective devices" and, thus, "function[] in precisely the same
way" as the patented invention. Id. at 1322.

MDI's patents expired in 1989. TrafFix's president, an
inventor with several patents in his own right, knew that
MDI's patents had expired, and understood that after expira-
tion of a patent the subject matter of the patent enters the
public domain. TrafFix accordingly arranged to reengineer a
traffic sign stand utilizing the same basic configuration-a dual-
spring base attached to four spaced-apart legs and an
upright-that is covered by the '696 and '482 patents and is the
reason the sign stand is so stable. At the same time, however,
TrafFix sought to improve MDI's product. Thus, for example,
TrafFix developed and eventually patented (U.S. Patent
Number 5,611,509) a step-and-drop leg that eliminates the
need to bend over and release each leg individually, as is
required in operating MDI's sign stand. In addition, TrafFix
made improvements (also later patented) in the brackets used
to display signs on its stand. TrafFix's version of the popular
dual-spring sign stand bears the TrafFix label. See Pet. App.
3a; J.A. 252-253.
7
TrafFix brought its sign stand to market in 1994, and began
selling it the following year under the WINDBUSTER mark.
Pet. App. 3a~4a.2 Just as it had done in the case of Win-
Proof, MDI moved to block TrafFix's entry into the market.
But this time-since its patent monopoly had expired-MDJ
turned to federal trademark law. In July 1995 M7.DI filed this
action under the Lanham Act, claiming that TrafFix's use of
the WINDBUSTER mark infringed its WINDMASTER mark;
that TrafFix's use of the basic configuration utilized by MDJ's
traffic sign stand infringed MDI's unregistered trade dress; and
that TrafFix had thereby engaged in unfair competition.
TrafFix Counterelalmed, and both parties moved for
summaryjudgmen~ On January 13, 1997, the District Court
granted summary judgment for MDI on the trademark claim,
and issued an amended opinion in support of its order on June
2, 1997. Id. 4a, 68a. On June 12, 1997, the District Court
granted summary judgment for TrafFix on MDI's trade dress
and unfair competition claims. Id. 4a, 25a.

In support of its trade dress infringement claim-the only
claim at issue here-.-MDjI touted what it described as the
"unique and distinctive dual-spring design" of its sign stand.
MDI's Mem. In Supp. Of Its Mot. For Summ. J. That Def. 's
Spring-Mounted Sign Stands Infringe MDI's Trade Dress
Rights, Dkt. No. 70, at 1-2. It similarly argued that, "[d]ue to
the long period of exclusive use" (as a result of the expired
patents) and promotional efforts during that period, people
"associate MDI's product configuration-~~~ dual-spring
design-with MDI." Id. 3. See also id. ("The dual-spring design
ofMDI's ***
sign stands has become so widely
known that people immediately associate the dual spring
design with MDI."); MDI's Reply To TrafFix's Br. In Opp. To
MDI's Mot. For Sumnm. J., Dkt. No. 88, at 3 (arguing that

2 TrafFix applied for registration of the WINDBUSTER
mark in 1994. The PTO allowed the application and issued a
registration in 1996, after the requisite notice period. See Pet.
App. 3a-4a.





8 9


alleged trade dress is strong on the ground that "those in the
industry have come to associate the look of the dual spring
design as coming from MDI"); Pet. App. 29a & n.6, 60a.

In rejecting MDI's trade dress claim, the District Court began
with the "well established [rule] that in the case of an expired
patent, the federal patent laws *** create a federal right to
'copy and use.'" Id. 46a-47a (quoting Bonito Boats, 489 U.S.
at 165). The court also observed that" 'one cannot argue that
a shape is functionally advantageous in order to obtain a
utility patent and later assert that the same shape is non-
flmctional in order to obtain trademark protection.'" Id. 49a
(quoting I J. Thomas McCarthy, McCarthy on Trademarks &
Unfair Competition § 7:89 (4th ed. 1996)). Against this
backdrop, the District Court viewed the
"expired utility patents [as] especially strong
evidence of the usefulness of the dual-spring desi~"-"the most
utilitarian aspect of MDI's sign stands"-and held that the
alleged "trade dress is functional as a matter of [trademark]
law," and thus not protected by the Lanham Act. Id. 55a
(emphasis in original).3 In so holding, the District Court also
concluded that cloaking MDI's product configuration with
trade dress protection would hinder competition. Id. 54a.

The Sixth Circuit affirmed the District Court ruling on the
trademark infringement claim, but reversed as to trade dress.
With respect to the latter claim, the Court of Appeals ac-
knowledged that "[a] circuit split exists as to whether a utility
patent disclosure forecloses trade dress protection." Id. 1 8a.
"The Fifth, Seventh, and Federal Circuits have held or


The District Court found "untenable" MDI's argument
that the expired patents did not sufficiently disclose the
configuration of MDI's traffic sign stand, or the alleged trade
dress, given that "MDI has, in the past, enforced its rights in
its *** patents by enjoining the manufacture of a product
configuration virtually identical to that being alleged to
constitute trade dress in the instant case." Pet. App. 49a
(emphasis added).
strongly suggested that a utility patent disclosure does not
prevent trade dress protection." Id. But "the Tenth Circuit
*** has held that '[wjhere a product configuration is a
significant inventive component of an invention covered by a
utility patent * * * it cannot receive trade dress protection
under section 43(a).'" Id. 19a (quoting Vornado Air Circu-
lation Sys., Inc. v. Duracrafi Corp., 58 F.3d 1498, 1500
(10th Cir. 1995), cert. denied, 516 U.S. 1067 (1996)). The
Sixth Circuit then dismissed the Tenth Circuit
position.-which is grounded on "the public policy underlying
patent law of releasing protected designs after a period of
time"-and, instead, aligned itself with the circuits allowing
federal trade dress protection in this context. Id.

In particular, the Sixth Circuit concluded that the District
Court should have applied "a functional analysis of the trade
dress unencumbered by any presumptions" stemming from
the expired patents and, instead, focused on whether use of
"the particular product configuration is a competitive neces-
sity." Id. 19a-20a (emphasis added). The court also criticized
the District Court for focusing on the utility of the
configuration covered by the expired patents, rather than the
product's "entire look." Id. 19a. Even though the dual-spring
base is the only component that distinguishes MDI's sign
stands from the competition-"every other competitor uses
the other elements of a single upright, four leg members
extending out at angles, and a sign"-the Sixth Circuit held
that the expired utility patents covering this configuration did
not preclude trade dress protection. Id. 20a.

This Court granted certiorari. 120 5. Ct. 2715.

SUMMARy OF ARGUMENT

To promote the progress of useful arts, the
patent system is built around a simple concept, or
bargain: in exchange for the limited monopoly conferred by a
patent, the public is entitled to copy and use the subject of the
patent when it expires. This bargain is embodied in our
Constitution and





10
1.1

patent laws. To enforce it, this Court has long held that "on
the expiration of a patent the monopoly created by it ceases
to exist, and the right to make the thing formerly covered by
the patent becomes public property." Singer Mfg. Co. v. June
Mfg. Co., 163 U.S. 169, 185 (1896). That includes "the right
to make the machine in the form in which it was constructed
during the patent." Id. The Court has repeatedly reaffirmed
this principle and, in particular, held that trademark and
unfair competition law may not be applied to defeat the
public's right to copy from expired patents in the name of
protecting against consumer confusion. Under these settled
principles, the public's right to copy plainly extends to the
product configuration in this case-the dual-spring sign stand
that is the subject of MDI's expired utility patents.

The question presented is whether the law of federal trade
dress-found in Section 43(a) of the Lanham Act-trumps the
public's right to copy in these circumstances. It does not, and
could not. To begin with, Congress has expressed no intent to
repeal, or even just curtail, the public's right to copy from
expired patents. Just the opposite. One of the purposes of the
Lanham Act was to codify the conrmon law of trademark and
unfair competition; a settled feature of that law-carved by
decisions like Singer-was that it could not be invoked to
prevent the copying of a product configuration that is the
subject of an expired patent. Moreover, as this Court has
recognized, Qualitex Co. v. Jacobson Prods. Co., 514 U.S.
159, 164-165 (1995), and Congress recently made express,
the Lanham Act does not confer trade dress protection on
"functional" products or features. 15 U.S.C. § 1 125(a)(3).
By definition, a device that qualifies for utility patent
protection is "useful" and, at least in a lay sense, functional.
35 U.S.C. § 101. And for most if not all utility-patented
devices--including the dual-spring sign stand involved in this
case-function dictates form.

A contrary construction would raise
grave constitutional concerns. Because of the
Constitution's "limited Times"
proviso, "Congress may not create patent monopolies of
unlimited duration." Bonito Boats, 489 U.S. at 146.
It may not do so by creating timeless
patents, and it may not do so by cloaking
the subject of expired patents with perpetual trade dress
protection. The Court has already recognized that States may
not attempt to continue the patent "monopoly by resorting
to trademark law," Scott Paper Co. v. Marcalus Mfg. Co., 326
U.S. 249, 256 (1945); Congress is no more free to do so.
Trademark law is a product of Congress' general Commerce
Clause power, which, while far-reaching, does not authorize
Congress to override other provisions of the Constitution.
Congress retains leeway to protect against consumer
confusion caused by the similarity of goods by requiring
producers, for example, to label their own goods or use
distinctive packaging. But it may not prevent the public from
copying a product that is the subject of an expired patent;
that would "substantially," and thus impermissibly, upset the
patent bargain. Bonito Boats, 489 U.S. at 167.

The public's right to copy from expired patents should not
be subordinated to a factbound inquiry-dressed in terms of
functionality-into whether there is a "competitive need" to
copy a particular configuration, at a particular point in time,
in a particular market. This inquiry is not supported by this
Court's trademark decisions, let alone a common sense
construction of functionality. And it is a recipe for confusion,
litigation, and the equally disruptive threat of litigation. As
this Court recently recognized, "[c]ompetition is deterred
*** not merely by successful suit but by the plausible threat
of successful suit." Wal-Mart Stores, Inc. v. Samara Bros.,
Inc., 120 5. Ct. at 1345. Under an indeterminate,
"competitive need" functionality regime, virtually no
producer could rule out expensive Lanham Act litigation (or
liability) for copying the subject of an expired patent. This
would not only stifle the kind of "imitation and refinement
through imitation" this Court has called "the very lifeblood of
a competitive economy," but would discourage activity "nec





12 13


essary to invention" itself Bonito Boats, 489
U.S. at 146. Not to mention that there is no exception to the
Constitution's "limited Times" provision based on the
purported lack of competitive need for the public to use the
subject of a particular patent.

Instead of embracing this indeterminate and counterintuitive
concept of functionality, the Court should adhere to the clear,
predictable rule it has applied for more than a century:
"after the expiration of a federal patent, the subject matter of
the patent passes to the free use of the public as a matter of
federal law." Id. at 152. That includes the subject matter of
MDI's expired patents and, thus, the dual-spring sign stand that
was the subject of the Winn-Proof litigation, and is now at
issue here. The judgment below should be reversed.

ARGUMENT

I. AS THIS COURT HAS REPEATEDLY RECOG-
NIZED, THE PATENT SYSTEM ESTABLISHES
A PUBLIC RIGHT TO COPY AND USE THE
SUBJECT OF EXPIRED PATENTS.

A. The Patent System Was Founded To Bring Dis-
coveries Into The Public Domain And Thus Pro-
mote The Progress Of Useful Arts.

"To promote the progress of useful arts,
is the interest and policy of every
enlightened government," and the Framers
appreciated that it was in the interest of ours. Grant
v. Raymond, 31 U.S. (6 Pet.) 218, 241 (1832) (Marshall,
C.J.). See Edward C. Walterscheid, Patents & Manufacturing
in the Early Republic, 80 J. Pat. & Trademark
Off. Soc'y 855, 860-861 (1998). In establishing
our National Charter, the Framers-on James Madison's
motion in 1787-specifically empowered Congress "[t]o
promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries." U.S.
Const. art. I, § 8, cl. 8. 'While little discussion was devoted
to the Patent Clause during the
debates on the Constitution, there has never been any senous
dispute on this Court as to its import or meaning.

"The clause is both a grant of power and a limitation."
Graham v. John Deere Co., 383 U.S. 1, 5 (1966). It author-
izes Congress to grant patents-"an equivalent form of
monopoly"-in discoveries. Id. at 7. But at the same time, it
limits that authority in significant respects. First, the author-
ity must be exercised in furtherance of "the stated constitu-
tional purpose," id. at S-6---promotion of science and useful
arts. "This is the standard expressed in the
Constitution and it may not be ignored." Id.
(emphasis in original). See United States v. Steffens (The
Trade-Mark Cases), 100 U.S. 82, 93-94 (1879);
Kendall v. Winsor, 62 U.S. (21 How.) 322, 328
(1858). Second, the authority may only be used to
grant patents for "limited Times." "Congress may not create
patent monopolies of unlimited duration." Bonito Boats, 489
U.S. at 146. See Penndck v. Dialogue, 27 U.S. (2 Pet.) 1, 16-
17 (1829) (Patent Clause "contemplates" that an "exclusive
right shall exist but only for a limited period") (Story, J.).

The decision to limit Congress' patent power in this fashion
was by no means fortuitous. The Patent Clause "was written
against the backdrop of the practices-eventually curtailed by
the Statute of Monopolies-of the Crown in granting
monopolies to court favorites in goods or businesses which had
long before been enjoyed by the public." Graham, 383 U.S. at
5 (citing Peter Meinhardt, Inventions, Patents & Monopoly at
30-35 (London 1946)). Indeed, given this expenence, not to
mention the "monopoly on tea that sparked the
Revolution," the founding Americans "had
an instinctive aversion to monopolies." Id. at
7. Thomas Jefferson-who this Court has called the
"moving spirit" behind our patent system, in light of "his
active interest and influence in the early development of
[that] system"-viewed the "limited private monopoly"
conferred by a patent as nothing less than a " 'public * * *
embarrass-





14 15


ment.'~~ Graham, 383 U.S. at 7, 9 (quoting Jefferson).4 But
Jefferson, like the Framers, eventually if begrudgingly came
to the view that it was a necessary embarrassment.

The "limited and temporary monopoly" conferred by a
patent is "at once the equivalent given by the public for
benefits bestowed by the genius and meditations and skill of
individuals, and the incentive to further efforts for the same
important object." Kendall, 62 U.S. (21 How.) at 327-328.
See Graham, 383 U.S. at 9; see also Sears, Roebuck & Co. v.
Stffel Co., 376 U.S. 225, 229 (1964) (patents "are
meant to encourage invention by rewarding the inventor with
the right, limited to a term of years fixed by the patent, to
exclude others from the use of his invention"); Grant, 31
U.S. (6 Pet.) at 241-242 (The patent "is the reward stipulated
for the advantages derived by the public for the exertions of
the individual, and is intended as a stimulus to those
exertions.") (Marshall, C.J.). The stimulation of what Justice
Story called the "efforts of genius" served the "main object"
of the Patent Clause-"to promote the progress of science and
useful arts." Pennock, 27 U.S. (2 Pet.) at 19 (quotation
omitted). The patent monopoly is "merely a
means to that end." United States v. Masonite Corp., 316
U.S. 265, 278 (1942).
But the patent monopoly-so at odds with
America's "instinctive aversion to
monopolies," Graham, 383 U.S. at 7-is not freely
given. From the first patent laws, it has been
extended only "on the condition that
[the inventor] make full disclosure for the
benefit of the public of the manner of
making and using the invention, and that
upon expiration of the patent the public be
left free to use the invention." Scott Paper
Co. v. Marcalus Mfg. Co., 326 U.S. at 255. See also
Pfaffv. Wells Elecs., Inc., 525 U.S. 55, 63-64 (1998);
United States v. Dubilier Condenser Corp., 289 U.S.
178, 186-187 (1933). Thus, in defending the
patent monopoly later in his life, Madison himself wrote
that it was "considered as a compensation for a
benefit actually gained to the community as a purchase of
property which the owner might otherwise withhold from
public use." Elizabeth Fleet, Madison 's "Detached
Memoranda," 3 Win. & Mary Q. 534, 551 (1946)
(reproducing Madison's manuscript). This
forms the "carefully crafted bargain"
that has always underlay our patent
system. Bonito Boats, 489 U.S. at I50-l5l.~

"To this end the law requires such
disclosure to be made in the application
for patent that others skilled in the
art may understand the invention and how
to put it to use" after the patent expires.
Dubilier Condenser, 289 U.S. at 187 (footnote
omitted). See Bonito Boats, 489 U.S. at 147; 35 U.S.C.




'~ From his diplomatic post in France, Jefferson lobbied Madi-
son to include in the Constitution "a Bill of Rights provision
restricting monopoly." Graham, 383 U.S. at 7. Similarly,
after leaming that the Constitution had been ratified by the
requisite nine States, Jefferson wrote Madison to express his
delight, but added that it would be wise "to abolish * * *
Monopolies, in all cases." 1 The Republic of Letters 545
(James Morton Smith ed. 1995) (July 31, 1788 Ltr. from
Jefferson to Madison). Jefferson continued: "The saying
there shall be no monopolies lessens the incitements to
ingenuity, which is spurred by the hope of a monopoly for a
limited time, as of 14. years; but the benefit even of limited
monopolies is too doubtful to be opposed to that of their
general suppression." Id.
Congress has also established stringent requirements of
patentability-including novelty, usefulness, and
nonobviousness-to ensure that only discoveries warranting
"the special inducement of a limited private monopoly" are
eligible for patent protection. Graham, 383 U.S. at 9. See
Bonito Boats, 489 U.S. at 147-151 (discussing statutory
requirements). As the first steward of the Nation's patent
system, Jefferson played an integral role in shaping those
requirements. Given his natural aversion to monopolies-even
when limited-it is not surprising to find that he "did not
believe in granting patents for small details, obvious
improvements, or frivolous devices." Graham, 383 U.S. at 9.
Instead, he "insist(ed] upon a high level of patentability." Id.





16

§ 112. This information is the consideration for which the
patent is granted, and "[a]s has been many times pointed out,"
it is "dedicat[ed] to the public on the expiration of the patent."
Scott Paper, 326 U.S. at 255; see Part I.B, infra. See also
Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 484
(1974) ("disclosure" is "the quid pro quo of the
right to exclude"); id. at 480. The Patent Act's disclosure
requirements serve the "ultimate goal of the patent
system"-"to bring new designs and technologies into the public
domain." Bonito Boats, 489 U.S. at 151. And, in this way, the
patent laws "benefit *** the public," "doubtless the primary
object in granting and securing the [patent] monopoly" in the
first place. Kendall, 62 U.S. (21 How.) at 327-328.

When all is said and done, the utility patent establishes a
blueprint for the public to copy the invention upon expiration
of the patent. As one commentator has explained:

A utility patent consists of a cover page that lists perti-
nent information, a written description, and one or more
claims. The written description, sometimes referred to as
the specification and drawings, describes the invention,
the preferred embodiment of the invention, and how to
make and use it, so that the public has available the in-
formation needed to practice the invention. On expira-
tion of the patent, the public may practice the invention
freely. The claims of the patent define the metes and
bounds of the patent owner's exclusive rights during the
life of the patent. [Herbert F. Schwartz, Patent Law &
Practice 7-8 (2d ed. 1995) (footnote omitted).]

The patent bargain not only has been part of our patent
system from the organization of our government, it is em-
bodied in and protected by the Constitution. It reflects the
"understanding, implicit in the Patent Clause itself, that free
exploitation of ideas will be the rule, to which the
protection of a federal patent is the exception." Bonito
Boats, 489 U.S. at 151. At the same time, by guaranteeing
that inventions eventually inure to the public, the bargain
serves the express
17

purpose of the Patent Clause. As Justice Story wrote, the
"best" way to promote the progress of useful arts is "by giving
the public at large a right to make, construct, use, and vend the
thing invented, at as early a period as possible." Pennock, 27
U.S. (2 Pet.) at 19. And of course, the bargain honors the
Constitutional commancj~f the utmost concem to Jefferson
and others-that discoveries may only be cloaked with patent
protection for "limited Times," U.S. Const. art. I, § 8, cI. 8,
after which they inure to the people.

For more than two centuries, this system~~firmly rooted in
the Nation's Constitution, laws, and history-.4as successfully
promoted science and the useful arts in this country, perhaps
even beyond the Framers' greatest expectations.

B. This Court Has Repeatedly Affirmed That The
Public Is Entitled To Copy And Use The Subject
Of Expired Patents.

Consistent with this regime, this Court has "long held that
after the expiration of a federal patent, the subject matter of
the patent passes to the free use of the public as a matter of
federal law." Bonito Boats, 489 U.S. at 152; see id. at 165.
Moreover, the Court has repeatedly emphasized that unfair
competition or trademark law may not be applied in a manner
that would defeat the public's right to copy and use the subject
of expired patents, or create what are in effect patent
monopolies of unlimited duration. As the Court put it in Scott
Paper, 326 U.S. at 256 (emphasis added), "any attempted
reservation or continuation in the patentee or those claiming
under him of the patent monopoly, after the patent expires,
whatever the legal device employed, runs counter to the policy
and purpose of the patent laws." Time and again, the Court has
held true to this conviction-...giving effect to the fundamental
bargain underlying our patent system.

In the Singer case, the Court, more than a century ago,
confronted the same basic issue presented here. After Singer's
utility patents expired, a competitor introduced a





18

sewing machine with the same "general
external appearance" as Singer's. 163 U.S. at 170.
Singer sued to enjoin the sale of the machine under state unfair
competition law, arguing that it was confusingly similar to
Singer's. Id. In considering this claim, this Court observed "that
the necessary result of the existence of [Singer's] patents was to
give to the Singer machines, as a whole, a distinctive character
and form which caused them to be known as Singer
machines"-in modem parlance, product configuration trade
dress. Id. at
179. But the Court rejected the notion-l7efloated by MDI
here-that a "manufacturer, on the cessation of the [patent]
monopoly, [has] the right to prevent the making by another of
a like machine in the form in which it was made during the life
of the patents." Id. at 184.

As the Court explained:

It is self-evident that on the expiration of a patent the
monopoly created by it ceases to exist, and the right to
make the thing formerly covered by the patent becomes
public property. It is upon this condition that the patent
is granted. It follows, as a matter of course, that on the
termination of the patent there passes to the public the
right to make the machine in the form in which it was
constructed during the patent. [Id. at 185.]

Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 120
(1938), is to the same effect. In that case, the National Biscuit
Company brought suit under state unfair competition law to
enjoin Kellogg's sale of shredded wheat in the same "generally
known * * * pillow-shaped form" as National Biscuit's cereal. Id.
at 113. National Biscuit had obtained product and process
patents on its shredded wheat cereal. This Court-following
Singer-held that Kellogg had the right to copy the form of the
biscuit upon expiration of the patents. Justice Brandeis wrote
for the Court:

The plaintiff has not the exclusive right to sell shredded
wheat in the form of a pillow-shaped biscuit-the form in
19

which the article became known to the public. That is the
form in which shredded wheat was made under the basic
patent. * * * Hence, upon expiration of the patents the form
** * was dedicated to the public. [id. at 119-120.]

The Court concluded that Kellogg "was free to use the
pillow-shaped form, subject only to the obligation to identify
its product lest it be mistaken for that of the plaintiff" ld. at
120. Kellogg did so by selling its product in "distinctive"
cartons-or packaging~tlat "bear prominently the Kellogg
name." Id. at 121. Even though this result in effect allowed
Kellogg to profit from the "good will" that National Biscuit had
generated in the product during the life of its patents, it was
"not unfair." Id. at 122. "Sharing in the goodwill of an article
unprotected by patent or trade-mark is the exercise of a right
possessed by all-and in the free exercise of which the
consuming public is deeply interested." Id. Unfair competition
law could not defeat that important public right.6

In Sears, Roebuck & Co. v. Stffel Co., 376 U.S. at 230
(emphasis added), the Court explained again, that
"when the patent expires the monopoly created by it expires,
too, and the right to make the article-~including the right to
make it in


6 Citing Singer and Kellogg, the Court in Scott Paper
declared in the same vein:

By the force of the patent laws not only is the invention
of a patent dedicated to the public upon its expiration, but
the public thereby becomes entitled to share in the good
will which the patentee has built up in the patented article
or product through the enjoyment of his patent monopoly.
Hence we have held that the patentee may not exclude the
public from Participating in that good will or secure, to any
extent, a continuation of his monopoly by resorting to the
trademark law and registering as a trademark any particular
descriptive matter appearing in the specifications, drawings
or claims of the expired patent, whether or not such matter
describes essential elements of the invention or claims.
[326 U.S. at 256.]





20
21
precise/v the shape it carried when patented-passes to the
public." The product at issue in Sears,
along with the one in the tandem
decision of Compco Corp. v. Day-Bright Lighting,
Inc., 376 U.S. 234 (1964), was the subject of a patent later
found to be invalid. Nevertheless, in each case, the Court
invoked the constitutional policy giving rise to the right to
copy from expired patents, and held that state unfair
competition law could not be applied in a manner that would
"prohibit the copying of the article itself" Sears, 376 U.S. at
232-233 (emphasis added); see Compco, 376 U.S. at 237.
That result would impermissibly "interfere with the federal
policy, found in Art. I, § 8, cl. 8, of the Constitution and in
the implementing federal statutes." 376 U.S. at 237. If
anything, the public's right to copy an article is only stronger
where-as in this case, and in Singer and Kellogg-it has
enjoyed patent protection and, therefore, the public has
conferred a patent monopoly upon the inventor in exchange
for the right to copy the product upon expiration of the
patent. That is the essence of the patent bargain.

Bonito Boats underscores the continuing vitality of the
Singer line. There, the Court held unconstitutional a state
law making it unlawful to use a particular process to duplicate
an unpatented boat hull-thereby extending indefinite
protection "for subject matter for which patent protection
has been denied or has expired." 489 U.S. at 159 (emphasis
added). As the Court explained, the law at issue "substantially
restricifed] the public's ability to exploit ideas that the patent
system mandates shall be free for all to use," and thus
intolerably altered the "careful balance" underlying the
federal patent system. Id. at 167. In so holding, the Court
was "troubled" by the lower court's statement that "the
patent laws say 'nothing about the right to copy or the right
to use.'" Id. at 164 (quoting decision). "For almost 100
years," the Court admonished, "it has been established that in
the case of an expired patent, the federal patent laws do
create a federal right to 'copy and to use.' " Id. at 165
(emphasis in original). Cases such as
Singer, Kellogg, Sears, and Compco-on which the Bonito
Boats Court specifically relied, see id. at lS2-l53-are
a testament to that.7

C. The Public's Right To Copy And Use The
Subject Of Expired Patents Extends To MDI's
Patented, Dual-Spring Sign Stand.

There can be little doubt that-at least from this patent
perspective-the public's right to copy and use the subject of
expired patents extends to the product configuration in this
case. MDI obtained utility patent protection for its dualspnng
sign stand, arguing successfully that the product met the
stringent requirements of patentability, including "use-
ful[ness]." 35 U.S.C. § 101. In exchange for the disclosures
made in its patent applications, the public granted MDI a 17-
year monopoly on the use of its discovery. During this
period, MDI was free to reap the benefits of its patent mo-
nopoly-and did so. MDI labeled and advertised its sign stand
as being covered by the '696 and '482 patents (discouraging
competition); successfully enforced those patents in the
Winn-Proof litigation to enjoin the sale of a sign stand
"virtually identical" to the one made by TrafFix (eliminating
competition), Pet. App. 49a; and achieved great commercial
success in the traffic sign stand market. But when MDI's
patents expired, as all patents eventually must, MDI had to
live up to its end of the bargain.



~' The Court has affirmed the public's right to copy from
expired patents in numerous other cases, too. See, e.g.,
Dubilier Condenser, 289 U.S. at 187 ("upon expiration of
[the patent], the knowledge of the invention
enures to the people, who are thus enabled
without restriction to practice it and profit by its use"); Coats
v. Merrick Thread Co., 149 U.S. 562, 572 (1893)
("[P]laintiffs' right to the use of the
embossed periphery expired with their
patent, and the public had the same right
to make use of it as if it never had been patented.").





22 23


Just as in the case of Singer's sewing machine or National
Biscuit's cereal biscuit, MDI's invention entered the public
domain, and there "passeld] to the public the right to make
[it] in the form in which [MDI's sign stand] was constructed
during the patent[s]." Singer. 163 U.S. at 185. See also
Sears, 376 U.S. at 230 (upon expiration of the patent, the
public has "the right to make the article *** in precisely the
shape it carried when patented"); Kellogg, 305 U.S. at 119-
120 (same). That includes the right to copy and use the
narrowly spaced, dual-spring base of MDI's traffic sign stand,
as well as the overall configuration of the mechanical device
that is the subject of MDI's utility patents. Indeed, the
formula according to which MDI's sign stand functions limits
the configuration of the components of the sign stand in
relation to one another, restricting the overall form that the
device may take and still achieve the patented function of
staying upright in windy conditions. See supra at 5.

The Winn-P roof litigation underscores that the product
configuration at issue here is covered by MDI's expired utility
patents. As discussed, MDI successfully argued in that
litigation that a sign stand essentially identical in appearance
and function to MDI's traffic sign stand-and to TrafFix's sign
stand-infringed MDI's patents. See App. Ia. As MDI argued
in that case, the MDI and accused WinnProof traffic sign
stands, while not identical to the sign stand pictured in those
patents, "contain substantially the same elements, perform in
substantially the same manner, and achieve substantially the
same results as the Sarkisian invention." J.A. 240. Indeed,
MDI claimed that the accused sign stands "were slavish
copies, from the standpoint of function, of the sign stand
described and claimed in the Sarkisian patents." Id. 236
(emphasis added). See id. 183. The Ninth Circuit agreed,
concluding that Winn-Proofs dual-spring sign stands
"achiev[ed] the same results in precisely the same manner" as
the device disclosed in MDI's patents, and, thus, infringed
those patents. 697 F.2d at 1323.
In so holding, the Ninth Circuit applied the "doctrine of
equivalents." See id. at 132 1-22. Under this
fixture of patent law, it is said that "the substantial
equivalent of a thing *** is the same as the thing itself," such
"that if two devices do the same work, in substantially the
same way, and accomplish substantially the same result, they
are the same, even though they differ in name, form, or
shape." Machine Co. v. Murphy, 97 U.S. 120, 125 (1877)
(citation omitted). See Warner-Jenkinson Co. v. Hilton
Davis Chem. Co., 520 U.S. 17, 40-41 (1997); Winans v.
Denmead, 56 (15 How.) U.S.
330, 341 (1853). This doctrine ensures
that producers cannot avoid patent infringement
by altering the "literal detail[s]" of an invention while
nevertheless achieving the same results of the invention in
the same way. Graver Tank & Mfg. Co. v. Linde Air Prods.
Co., 339 U.S. 605, 607 (1950). To permit such "imitation of
a patented invention *** would be to convert the protection of
the patent grant into a hollow and useless thing." Id. That, in
turn, "would foster concealment rather than disclosure of
inventions, which is one of the primary purposes of the
patent system." Id.8

At a minimum, the public's right to copy and use the subject
of expired patents is coextensive with the scope of the
patent monopoly bestowed upon the inventor. Otherwise,
the public would be giving more than it gets, fundamentally
altering the nature of the bargain underlying our patent
system. Accordingly, in this case, the Winn-Proof litigation
establishes beyond doubt that when MDI's patents expired,

~ Of course, the 'form in which [a product] was constructed
during the patent," Singer, 163 U.S. at 185 (emphasis added),
will invariably be the equivalent (or closer) of the invention
disclosed in the patent. Otherwise, an inventor would not be
able to enforce its patent monopoly to enjoin the sale of
equivalent products during the patent period, negating the
principal incentive for seeking patent protection in the first
place. That was true of the products at issue in Singer and
Kellogg and-as the Winn-Proof litigation establishes-it is true
of the product at issue here.





24
25
the public acquired the right to copy and use the dual-spring
sign stands involved in that case-which are "virtually
identical" to the one at issue here. Pet. App. 49a; App. la.
That conclusion may be arrived at either by looking to the
form in which the invention was practiced during the patent,
as this Court did in Singer and Kellogg, or to the invention
claimed and disclosed by MDI in obtaining patent protection
in the first place. As explained next, the law of federal trade
dress does not-and could not-alter this conclusion.

II. FEDERAL TRADE DRESS LAW DOES NOT-AND
COULD NOT-DEFEAT THE PUBLIC'S RIGHT TO
COPY AND USE PRODUCT CONFIGURATIONS
THAT ARE THE SUBJECT OF EXPIRED PATENTS.

A. Product Coufiguration Trade Dress Lacks The
Constitutional And Historical Footing Of The
Public's Right To Copy From Expired Patents.

Compared to patent law, federal trade dress law-an offshoot
of trademark law-is of relatively recent origin, and stands on
a different constitutional footing. The first federal trademark
act was not passed until 1870. It established a means of
trademark registration, but was short-lived. In The Trade-
Mark Cases, 100 U.S. at 93-94, this Court held that the Act
was unconstitutional as an exercise of Congress' patent power.
As the Court explained, "[t]he ordinary trademark has no
necessary relation to invention or discovery.
*** It requires no fancy or imagination, no genius, no
laborious thought. It is simply founded on priority of appro-
priation." Id. at 94. Thus, the Court held that the legislation
was not authorized by "any *** power in the constitutional
provision concerning authors and inventors, and their writings
and discoveries." Id. Instead, to come "within congressional
control," trademark legislation must be authorized as an
exercise of Congress' Commerce Clause authority. Id. at
95. The 1870 Act failed on that account, too, because, in
passing the Act, Congress made no effort to tie the regulation
of trademarks to interstate, foreign, or Indian commerce.9

Over the next 75 years, Congress established limited pro-
tection for marks used in such commerce. See Pattishall,
supra, at 461-462. But this legislation "reflected the view
that protection of trademarks was a matter of state concern
and that the right to a mark depended solely on the common
law." Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.
189, 193 (1985). Meaningful national trademark protection
did not arrive until the passage of the Lanham Act in 1946.
That "Act was intended to make 'actionable the deceptive and
misleading use of marks' and 'to protect persons engaged in ** *
commerce against unfair competition.' " Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 767-768 (1992) (quoting
Act; footnote omitted). It affords "national protection of
trademarks in order to secure to the owner of the mark the
goodwill of his business and to protect the ability of
consumers to distinguish among competing producers." Park
'N Fly, 469 U.S. at 198. Because trademark law is not
concerned with fostering innovation-or, as The Trade-Mark
Cases establish, inventions within the domain of patent
law-Lanham Act protection is renewable for as Iong as a
holder continues to use his mark, "in perpetuity." Qualitex
Co. v. Jacobson Prods. Co., 514 U.S. at 164-165.



~ The Court observed that the common law recognized
"[t]he right to adopt and use a symbol or a device to
distinguish the goods or property made or sold by the person
whose mark it is, to the exclusion of use by all other persons."
100 U.S. at 92. At the time of the founding, the English law
of trademarks generally focused on "deceit, or the likelihood
of deceit, arising out of a latecomer's use of a name or mark."
Beverly W. Pattishall, The Constitutional Foundations of
American Trademark Law, 78 Trademark Rptr. 456, 458
(1988). While the Framers were no doubt aware of this law,
neither the Constitution nor any deliberation records make
any mention of trademarks. See id. at 456.





26

The Lanham Act provides for registration with the PTO of
trademarks-defined as "any word, name, symbol, or device,
or any combination thereof' used by a
producer "to indicate the source of [its] goods," 15
U.S.C. § 1127-and accords significant protection to such
registered marks. See id. §§ 1114, 1057(b), 1065. But the
Act also protects unregistered marks. In particular, Section
43(a) authorizes a civil action for the use by another of "any
word, term, name, symbol, or device, or any combination
thereof *** which is likely to cause confusion *** as to the
origin, sponsorship, or approval of his or her goods." Id. §
1125(a). This Court has interpreted Section 43(a) to protect
against the unauthorized use of another's trade dress, reasoning
"that trade dress constitutes a 'symbol' or 'device' for purposes
of the relevant sections." Wal-Mart Stores, Inc. v. Samara
Bros., Inc., 120 S. Ct. at 1342. In 1999 Congress amended
Section 43(a) and, for the first time, expressly acknowledged
"civil actions for trade dress infringement under this chapter
for [unregistered] trade dress." 15 U.S.C. § 1 125(a)(3).

Trade dress law-like trademark law in general-evolved from
the law of unfair competition. Originally, the concept of trade
dress, as the term suggests, "included only the packaging, or
'dressing,' of a product." Wal-Mart Stores, 120 5. Ct. at 1342
(emphasis added). See Restatement (Third) of Unfair
Competition § 16, cmt. a (1995). "[B]ut in recent years [the
concept] has been expanded by many courts of appeals to
encompass the design of a product," and even just its shape or
configuration. 120 5. Ct. at 1342 (emphasis added). One
commentator has traced this phenomenon to 1976, see
Willajeanne F. McLean, Opening Another Can of
Worms: Protecting Product Configuration as Trade Dress,
66 U. Ci L. Rev. 119, 123 (1997) (citing Truck Equip.
Serv.
Co. v. Frueha uf Corp., 536 F.2d 1210 (8th Cir.), cert.
denied, 429 U.S. 861 (1976)); another to the "early 1980s,"
I McCarthy, supra, § 8.1, at 8-2. But whenever it began,
the notion of federal trade dress protection in a product's
con-
27

figuration-i.e., the article itself-is nascent compared with the
public's right to copy from expired patents.'0

The consequences of this phenomenon are far-reaching, and
bnng federal trademark law into direct conflict with patent law
and the policies underlying that law. Quite unlike product
packaging, labeling, or even ornamental design, there are
typically only a finite number of configurations or shapes that
a product may take. That is especially true in the case of a
utility patented invention, made to perform a particular use or
function. At the same time, cloaking product configurations
with federal trade dress protection does not simply give the
producer a tool to strengthen source identification of its
product, but the perpetual right to use that configuration for
as long as the producer likes, effectively-and indefi-
nitely-taking the configuration out of the public domain. In
the case of a patented invention, this result directly interferes
with the constitutionally grounded and time-honored right of
the public to copy and use the subject of expired patents. And,
as explained next, there is no reason to conclude that
Congress intended Section 43(a), or any other provision of
the Lanham Act, to achieve that result.






10 See also 1 McCarthy, supra, § 8.1, at 8-2 to 8-3
(tracing the evolution of federal trade dress from packaging to
products themselves) Not all lower courts have taken the
last-or at least latest-leap in this judicial trend. See, e.g.,
Leatherman Tool Group, Inc. v. Cooper Indus., Inc., 199
F.3d 1009, 1014 (9th Cir. 1999) ("overall appearance [of a
product itself] is not protectable [under Section 43(a)] as trade
dress, at least as against a competitor which clearly marks its
own product with a distinct name and who uses distinct
packaging"); cf Duraco Prods., Inc. v. Joy Plastic Enters.,
Ltd., 40 F.3d 1431, 1446-47 (3d Cir. 1994).





28
29
B. In Establishing A National Trademark Code,
Congress Did Not Intend To Override The Pub-
lic's Right To Copy From Expired Patents.

When Congress passed the Lanham Act, it did so against the
backdrop of the decades, if not centuries, old under-
standing-grounded in the Constitution, patent laws, and this
Court's own decisions-that the public has the right to copy and
use the subject matter of expired patents. It must be presumed
that Congress knew of that law. See Bowen v. Massachusetts,
487 U.S. 879, 896 (1988) ("the well-settled presumption [is]
that Congress understands the state of existing law when it
legislates"); Goodyear Atomic Corp. v. Miller, 486 U.S. 174,
184-185 (1988) ("We generally presume that Congress is
knowledgeable about existing law pertinent to the legislation it
enacts."). In fact, as far as the public's right to copy product
configurations that are the subject of expired patents is
concerned, there is reason to conclude that Congress
specifically intended to incorporate the settled rule of
decisions such as Singer and Kellogg.

One of the "purpose[s] of the Lanham Act was to codify
and unify the common law of unfair competition and trade-
mark protection." Inwood Labs., Inc. v. Ives Labs., Inc., 456
U.S. 844, 861 n.2 (1982) (White J., concurring in result). As
discussed, in Singer and Kellogg this Court ruled that-under
our patent system-unfair competition and trademark pro-
tection may not defeat the public's right to copy a product
configuration that is the subject of an expired patent. The
Court reaffirmed that principle in Scott Paper on the eve of
the passage of the Lanham Act. See 326 U.S. at 256. Those
decisions shaped the common law that Congress sought to
codify in the Lanham Act and, in particular, defined the outer
limit of that law in the case of patented inventions. In
codifying that law, the presumption is that Congress sought to
bring the Singer rule with it. See Felix Frankfurter, Some
Reflections on the Reading of Statutes, 47 Colum. L. Rev. 527,
537 (1947) (when a concept "is obviously transplanted
from another legal source, whether the common law or
other legislation, it brings the old soil with it").

Nor is there any indication that in establishing national
trademark protection, Congress sought to disrupt the "care-
fully crafted bargain" underlying the patent system. Bonito
Boats, 489 U.S. at 150-151. As discussed above, and detailed
by the Court in Bonito Boats, from the first Congress forward
the "federal patent laws" have embodied that bargain and, thus,
"create a federal right to 'copy and to use'" the subject of
expired patents. Id. at 165. Extending federal trade dress
protection to product configurations that are the subject of
expired patents would deprive the public of the benefit of its
bargain and effectively repeal that venerable federal right.
Particularly given the absence of any express intent on the
part of Congress to achieve that result, the Court should avoid
construing the Lanham Act in a manner that would do so,
unsettling the foundation of our patent system. See County of
Yakima v. Confederated Tribes & Bands of the Yakima Indian
Nation, 502 U.S. 251, 262 (1992) ("[I]t is a
'cardinal rule *** that repeals by implication are
not favored.' ") (quotation omitted). Accord Tennessee
Valley Auth. v. Hill, 437 U.S. 153, 189 (1978).

The evidence, in fact, is that Congress has never intended
for the Lanham Act to intrude upon the Nation's patent
system, or deprive the public of the fruits of that system.
Thus, for example, in reporting on the bill that became the
Lanham Act, the Senate Committee on Patents sought to
defuse concern that the new federal trademark code would
result in a collateral form of patent or copyright protection.
The Committee wrote that "[t]his bill, as any other proper
legislation on trade-marks, has at its object the protection of
trade-marks, securing to the owner the good will of his
business and protecting the public against spurious and falsely
marked goods." S. Rep. No. 79-1333, at 3 (1946) (emphasis
added). "This can be done," the Committee explained,
"without any misgivings and without fear of





30
31
fostering hateful monopolies," for-unlike patent law-"no
monopoly is involved in trade-mark protection." Id.

Consistent with this beginning, this Court itself has ad-
monished that functional-or "useful," Qualitex, 514 U.S. at
165-product features are not entitled to trademark protection
under Section 43(a). See Two Pesos, 505 U.S. at 775.
Moreover, Congress recently amended Section 43(a) to
provide that in an action for trade dress infringement, the
plaintiff "has the burden of proving that the matter sought to
be protected is not functional," 15 U.S.C. § 1 125(a)(3)
(emphasis added). As the Committee Report accompanying
this amendment explains, "[f]unctional marks should be dealt
with under the patent law." H.R. Rep. No. 106-250, at 7
(1999). Indeed, the Report goes on to observe that the
amendment seeks to discourage owners of patents that are
"about to expire" from attempting to register their invention
as "a trademark, which receives protection as long as the
owner uses it in commerce." Id. Cloaking the subject of an
expired utility patent-such as MDI's dual-spring sign
stand-with trade dress protection would frustrate Congress'
express intent to reserve such protection for marks that are
"not functional." 15 U.S.C. § 1125(a)(3) (emphasis added).ii

This interpretation squares perfectly with patent law. A
touchstone for utility patent protection is that the
invention described in the patent must be "useful" or, at
least in a lay sense, functional. 35 U.S.C. § 101. See
Webster's II New University Dictionary 512 (1994)
("functional" means "[d]esigned for or adapted to a specific
function or use") (emphasis added); Kevin B. Mohr, At the
Interface of Patent and Trademark Law: Should a Product
Configuration Disclosed in a Utility Patent Ever Qua l~fy for
Trade Dress

11 Similarly, in the legislative history to the 1988
amendments of the Lanham Act, Congress indicated that it
only intended Section 43(a) to apply to "nonfunctional
configurations of goods." S. Rep. No. 100-515, at 40
(1988).
Protection?, 19 Hastings Comm. & Ent. L.J. 339, 380
n.161 (1997) ("Within the sphere of intellectual property
law, the term 'functional' generally refers to shapes or
features that have a utilitarian or 'useful' purpose.").'2 And
the particular function, or use, to which a utility patented
invention is dedicated will constrain the form it may take.

In interpreting the Lanham Act, this Court has always
been careful to avoid conferring trademark protection on
"useful product features." Qualitex, 514 U.S. at 164. See
Two Pesos, 505 U.S. at 775. As the Qualitex Court
admonished:

It is the province of patent law, not trademark law, to en-
courage invention by granting inventors a monopoly over
new product designs or functions for a limited time, 35
U.S.C. §§ 154, 173, after which competitors are free to
use the innovation. If a product's functional features could
be used as trademarks, however, a monopoly over such
features could be obtained without regard to whether they
qualify as patents and could be extended forever (because
trademarks may be renewed in perpetuity). [514 U.S. at
164-165 (citations omitted)]

Thus, "even if customers have come to identify the special
illuminationenhancing shape of a new patented light bulb with
a particular manufac~rer the manufact~.er may not use that
shape as a trademark, for doing so, after the patent has


12 The literal definition of "functional" squares with the
maimer in which the "usefulness" requirement has always been
interpreted as a matter of patent law. See, e.g., Besser v.
Merrilat Culvert Core Co., 243 F. 611, 612 (8th Cir. 1917)
("The term 'useful,' as contained in the patent law, when
applied to a machine, means that the machine will accomplish
the purpose Practically when applied in industry. It is to be
given a practical and not a speculative meaning. It means that
the machine will work and accomplish the purposes set forth
in the specifications ** * This has been the interpretati~~ put
upon the term in the patent law from the earliest decisions to
the present time.") (citing cases).





32 33


expired, would impede competition *** by frustrating
competitors' legitimate efforts to produce an equivalent
illumination enhancing bulb." Id. at 165. The same goes for
the product configuration in the Kellogg case. See id. (citing
Kellogg for the proposition that "trademark law cannot be
used to extend monopoly over 'pillow' shape of shredded
wheat biscuit after the patent for that shape had expired").
Here, MDI seeks to eliminate TrafFix's right to produce an
equivalent sign stand to the one claimed in MDI's expired
patents and practiced by it during the life of those patents.
But trademark law does not extend to the form of that
patented device either. See also Inwood Labs., 456 U.S. at
864 ('imitation of a functional feature" is not actionable
"under § 43(a)") (White, J., concurring in result).

As explained in Part III infra, some lower courts (including
the Sixth Circuit below) have construed the concept of
functionality so that it is possible for a product or its features
to be functional in a literal sense-and, thus, be useful and
meet the requirements of utility patent protection-but not in
a legal sense due to factors extraneous to the product itself,
such as the competitive need to imitate it. As a result, as
applied by the lower courts, trademark's functionality
doctrine has not safeguarded the public's right to copy and use
a product configuration that is the subject of an expired
patent. Indeed, in many instances-including the decision
below-the functionality doctrine has been used to frustrate
that right. The public's right to copy from expired utility
patents should not be subordinated to this judge-made and
counter-intuitive concept of "functionality." And nothing in
the Lanham Act suggests that Congress intended that result.

Finally, Congress has repeatedly declined to expand pro-
tection for "industrial design." Bonito Boats, 489 U.S. at 167;
see Leatherman Tool Group, 199 F.3d at 1012; 35 U.S.C. §
171. After recounting the numerous failed bills in this line,
one court observed:
We believe that courts should exercise
restraint so as not to undermine
Congress's repeated determinations not
to afford virtually perpetual protection to product
configurations with an expansive construction of section
43(a). What Congress has, for the great span of this
century, been unwilling to do, should not be effected by
the judiciary. [Duraco Prods., Inc. v. Joy Plastics Enters.,
Ltd., 40 F.3d at 1447 (citation omitted).]

Affording trade dress protection for a product configuration
that is the subject of an expired utility patent-and, thus,
plainly utilitarian or functional in nature-would be even more
out of step with Congress' reticence.

C. Construing The Lanham Act To Defeat The Pub-
lic's Right To Copy From Expired Patents Would
Raise Grave Constitutional Concerns.

There is an even more powerful force that counsels against
construing Section 43(a) of the Lanham Act to reach a
product configuration that is the subject of an expired utility
patent: the Constitution itself. See Jones v. United States,
120 5. Ct. 1904, 1911(2000) (where alternative construction
is possible, Court should construe act to avoid constitutional
problem); Edward J. DeBartolo Corp. v. Florida Gulf Coast
Bldg. & Constr. Trades Council, 485 U.S. 568, 575 (1988).
As discussed, the Patent Clause expressly-and quite pur-
posefully-provides that Congress may only grant exclusive
rights in discoveries for "limited Times." U.S. Const. art. I, §
8, cl. 8. Thus, "Congress may not create patent monopolies
of unlimited duration." Bonito Boats, 489 U.S. at 146.
Congress may not do so directly by issuing patents of unlim-
ited duration and-as this Court's decisions establish-it may
not do so indirectly by cloaking the subject of expired patents
with perpetual trademark protection.

In the Singer line, this Court repeatedly recognized that
extending trademark or unfair competition protection to
product configurations that are the subject of expired patents





34 35


has precisely this effect, and that this result impermissibly
interferes with the "federal policy, found in Art. I, § 8, cl.
8, of the Constitution and in the implementing federal
statutes, of allowing free access to copy whatever the federal
patent and copyright laws leaves in the public domain."
Compco, 376 U.S. at 237. In Scott Paper, moreover, the
Court-citing Singer and Kellogg-declared that a "patentee
may not *** secure, to any extent, a continuation of his
monopoly by resorting to trademark law," because "any
attempted reservation or continuation in the patentee *** of
the patent monopoly, after the patent expires, whatever the
legal device employed, runs counter to the policy and
purpose of the patent laws." 326 U.S. at 256 (emphasis
added). The same conclusion follows when the "legal device"
employed to achieve this result is the law of federal trade
dress.

Of course, this Court has also recognized that-short of
"substantially restricting the public's ability to exploit ideas
that the patent system mandates shall be free for all to use,"
Bonito Boats, 489 U.S. at 167-legislatures may protect
against consumer confusion and seek to promote
competition by, inter alia, requiring producers to label or
package their goods in a particular fashion. See id. at 165;
Kellogg, 305 U.S. at l20~l2l.l3 But especially when a product
is the

13 Similarly, in Kewanee Oil Co. v. Bicron Corp., supra,
the Court held that the patent laws and policies do not
preclude trade secret protection for the subject of patents.
As the Court recognized, however, the public's right to copy
and use information in the public domain is not frustrated by
such laws, since, "[b]y definition, a trade secret has not been
placed in the public domain." 416 U.S. at 484 (footnote
omitted). Moreover, "trade secret law does not forbid the
discovery of the trade secret by fair and honest means, e.g.,
independent creation or reverse engineering." Id. at
490. In addition, "[t]rade secret law and patent law have co-
existed in this country for over one hundred years." Id. at
493. By contrast, this Court has for at least a century
emphasized that trademark or unfair competition law must
yield to patent law in the case of a product configuration
covered by an expired patent. Cf
subject of an expired patent, a legislature may not "prohibit
the copying of the article itself" Sears, 376 U.S. at 232-233
(emphasis added). That would result in the sort of perpetual
patent monopoly the Framers expressly sought to preclude.
In Bonito Boats, the Court reaffirmed this principle when it
observed that the statute at issue there, "[i]n essence,
prohibit[ed] the entire public from engaging in a form of
reverse engineering of a product in the public domain." 489
U.S. at 160. That result impermissibly "restrict[ed] the
public's ability to exploit" a product configuration within the
public domain. Id. at 167.

So too here. Indeed, MDI has attempted to make a great
deal out of the fact that "TrafFix imitated the 'WindMaster'
configuration by sending it to Korea to be copied or 'reverse
engineered,' " Opp. 2, and is essentially suing to prevent its
competition from copying its dual-spring sign stand in the
same fashion. But, as this Court has observed, and the Bonito
Boats Court plainly appreciated, reverse engineering is a "fair
and honest means" of "discovery." Kewanee Oil, 416 U.S. at
476 (emphasis added). What is more, it often leads to
"significant advances in technology." Bonito Boats, 489 U.S.
at 160. This case proves the point. After reengineering
MDI's sign stand, TrafFix made-and patented-significant
improvements to that sign stand. See supra at 6. The
Framers appreciated the virtues of such imitation and, thus,
sought to guarantee a patent system in which it would be
allowed and indeed encouraged. These virtues have not been
lost upon this Court. See Bonito Boats, 489 U.S. at 146
("[I]mitation and refinement through imitation are both
necessary to invention itself and the very lifeblood of a
competitive economy.").



Aronson v. Quick Point Pencil Co., 440 U.S. 257, 266
(1979) ("Enforcement of this royalty agreement is even less
offensive to federal patent policies than state law protecting
trade secrets.").





36 37


Despite all this, MDI argues that the Singer line can be
explained away on the ground that "none of the Court's
opinions confronted the federal patent law vis-~-vis the
federal trademark law." Opp. 6. This distinction does not
withstand scrutiny. As Judge Cudahy put it, "[t]he conflict
posed by the[] state laws [in the Singer line] and the
Laniham Act remains the same: whether trademark can be
used as a back door to protection properly acquired by a ***
patent." Kohler Co. v. Moen Inc., 12 F.3d 632, 647 (7th Cir.
1993) (dissenting) (emphasis in original). The Court has
repeatedly answered that question in the negative. See Part
I.B, supra; see also I.P. Lund Trading ApS v. Kohler Co.,
163 F.3d 27, 53 (1st Cir. 1998) ("Giving
patent-like protection a new name does not
avoid constitutional limitations.") (Boudin, J., concurring)
(citing Bonito Boats, 489 U.S. at 146). That conclusion
cannot depend on whether state or federal trademark law is
invoked to achieve such "back door" protection.

Congress is no more free to use trademark law as a means
of extending the patent monopoly than are the States. The
Lanham Act is a product of Congress' Commerce Clause
authority, not its patent power. While potent, the
Commerce Clause does not empower Congress to override
the express limits in other parts of the Constitution. See
U.S. Const. art. I, § 8, cI. 3; College Say. Bank v.
Florida Prepaid Post-secondary Educ. Expense Bd., 119 5.
Ct. 2219, 2224 (1999); see also Gibbons v. Ogden. 22 U.S.
(9 Wheat) 1, 196 (1824) (Commerce Clause "power, like all
others vested in Congress, is complete in itself, may be
exercised to its utmost extent, and acknowledges no
limitations, other than are prescribed in the Constitution.")
(Marshall, C.J.) (emphasis added); North American Co. v.
SEC, 327 U.S. 686, 704-705 (1946) (Commerce Clause
power "is limited by express provisions in other parts of the
Constitution"). Thus, in establishing trade dress protection
under Section 43(a), the Commerce Clause does not
empower Congress to establish what are, in essence, patent
monopolies of unlimited times.
Of course, as explained, the evidence is that in conferring
federal trademark protection, Congress has specifically
sought to avoid this result. That is all the more reason for
this Court to avoid construing the Lanham Act in a manner
that would create this constitutional conflict.

III.THE PUBLIC'S RIGHT TO COPY FROM EX-
PIRED PATENTS SHOULD NOT BE SUBORDI-
NATED TO A FACTBOUND, "COMPETITIVE
NEED" INQUIRY.

Some lower courts-including the Sixth Circuit below-have
relegated the public's right to copy a product configuration
that is the subject of an expired patent to a finding of
"competitive necessity." Pet. App. 20a.14 This is done
under the guise of "functionality": "[i]f competitors need
to be able to use a particular configuration in order to-
make an equally competitive product, it is [deemed] func-
tional, but if they do not, it may be nonfunctional."
Vornado Air Circulation Sys., Inc. v. Duracrafi Corp., 58
F.3d at 1507. "[U]sefulness in the patent context does not
equal functionality in the trademark context"; instead,
functionality turns solely on "competitive need." Zip Dee,
Inc. v. Dometic Corp., 931 F. Supp. 602, 608 (N.D. III.
1996). See Todd R. Geremia, Protecting the Right to
Copy: Trade Dress Claims for Configurations in Expired
Utility Patents, 92 Nw. U. L. Rev. 779, 781, 801-802
(1998). Under this regime, every patented device
potentially qualifies for trade dress protec14 According to
the Sixth Circuit: "The appropriate question is
whether the particular product configuration is a competitive
necessity. If it affects the cost or the quality or the objective
(nonreputational) desirability of competitors' products
negatively enough, then the trade dress element may be
deemed legally functional." Pet. App. 20a. See also, e.g.,
Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 297
(7th Cir.) ("to be functional in the trade dress sense, the
feature must be necessary to afford a competitor the means
to compete effectively") (quotation omitted), cert. denied,
525 U.S. 929 (1998).





38

tion, and the same device "can switch back and forth
between being functional and nonfunctional with the vagaries
of the marketplace." Vornado, 58 F.3d at 1510 n.20.

The public's constitutionally-based right to copy from
expired patents should not be subordinated to this indetermi-
nate, judge-made inquiry. The functionality doctrine was
developed by courts to prevent trademark law from intruding
on the "province of patent law." Qualitex, 514 U.S. at 164.
Invoking the doctrine to defeat one of the key features of
patent law-the public's right to copy from expired pat-
ents-turns that purpose on its head. More to the point, it
results in the very constitutional problem discussed in the
preceding section: perpetual rights in useful arts. Nothing in
the Constitution, this Court's decisions, or the history of our
patent system suggests that the patent monopoly may be
indefinitely extended for a product, or that the public's right
to copy from expired patents may be frustrated, simply
because of a judicial finding that there is no "competitive
need" for the public to enjoy the fruits of a particular discov-
ery, at a particular point in time, in a particular market.

Quite the contrary. For at least a century, this Court has
treated the expiration of the patent as determinative of the
public's "right to make the thing formerly covered by the
patent." Singer, 163 U.S. at 185. See Bonito Boats, 489 U.S.
at 151 ("upon expiration of [a patent], the knowledge of the
invention inures to the people, who are thus enabled without
restriction to practice it and profit by its use") (quotation
omitted; emphasis added). If anything, the Framers-and
above all Jefferson-were only more resolute when it came to
ensuring that the public would be able to benefit from
discoveries as soon as their limited patent protection lapsed.
See supra at 13-14. And thus, in crafting our Constitution,
the Framers sought to ensure that "exclusive Right[s]" in
discoveries-whether dressed in patent, trademark, or some
other terms-would be available only for "limited Times."
U.S. Const. art. I, § 8, cI. 8. Not for potentially unlimited
-~ 9




times, depending 011 a judicial findiug of .~ purp~ tcd
Li~ k
competitive need to copy and usc a pariiciIai dbCOC1

Nothing in this Court's trademark decisions SUpIh)It
equating functionality solely with competitive need. Instead.
the Court has said that the purpose of thc "functionalily
doctrine" is to prevent trademark law from '~allowing a
producer to control a useful product feature." Qua litcx, 514
U.S. at 164 (emphasis added). By definition, a product that is
the subject of a utility patent is just that-"useful." 35 U.S.C.
§ 101. Similarly, the Court has stated that "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 the article, that is, if exclusive use of
the feature would put competitors at a significant non-
reputation-related disadvantage." Qualitex, 514 U.S. at 165
(quoting Inwood Labs., 456 U.S. at 850 n.l0; emphases
added). As a practical matter, a product feature will not
qualify for utility patent protection unless it is "essential to
the use and purpose of the article." Id.; see supra at 31 &
n.12.15

15 The disjunctive used by the Qualitex Court squares with
how commentators have characterized the functionality
doctrine. For example, according to Professor McCarthy,
"there are two rationales underlying the functionality bar:
(1) accommodation to the principle that there is only one
legal source of exclusive rights in utilitarian features-utility
patent law; and (2) preserving free and effective competition
by ensuring that competitors can copy features that they
need to 'compete effectively.' " I McCarthy, supra, § 7:68,
at 7-147. Both definitions are "relevant and useful in
determining whether the policies of free competition dictate
that a given feature should be a candidate for the right to
exclude that is given by trade dress law." Id. at 7-148. In
product configuration trade dress cases, however, courts have
erred by focusing only on the second rationale. A product
configuration that is the subject of "an engineering-driven
utilitarian design" disclosed in a "utility patent" meets the
first definition and, thus, is functional in the trademark
sense, without regard to whether it also satisfies the second
definition. Id. at 7-150. The spiral fan at issue in the Tenth





40 41


At the same time, this Court has never applied the func-
tionality doctrine to defeat the public's right to copy from
an expired patent. Instead, it has invoked the doctrine to
determine whether unpatented or unpatentable features-e.g.,
color (Qualitex)-qualify for trademark protection. Cf
Inwood Labs., 456 U.S. at 857-858 n.20 (discussing "func-
tionality" of drug "capsule colors"). Whatever the virtues of
applying the functionality doctrine to such unpatented or
unpatentable product features, it should not be invoked to
extend trademark protection to a product configuration that
has qualified for and enjoyed utility patent protection. As
the Qualitex Court itself admonished: "It is the province of
patent law, not trademark law, to encourage invention by
granting inventors a monopoly over new product designs or
functions for a limited time, 35 U.S.C. § § 154, 173, afier
which competitors are free to use the innovation." 514 U.S.
at 164 (emphasis added). The Qualitex Court's
parenthetical citation to the Kellogg case and its light bulb
example only reinforce that conclusion. See id. at 165.

There are compelling practical reasons for not subjecting
the public's right to copy to a competitive-need based,
"functionality" test. This inquiry is multi-faceted, highly
factbound, and, thus, scarcely amenable to summary disposi-
tion. See Kohler Co. v. Moen Inc., 12 F.3d at 649 ("The line
between nonfunctional and functional [under this approach]
is difficult to draw and an obvious source of litigation.")
(Cudahy, J., dissenting); 1 McCarthy, supra, § 7:73, at 7-
166.1 ("Each case of alleged functionality will present a
unique set of facts not easily disposed of either by sweeping
generalities or precise legal rules."); Mohr, supra, at 386-
387 n. 186 (commentators have "criticized this focus on
competiCircuit Vornado case meets this utilitarian
definition, as does the
"new patented light bulb" discussed by this Court in Qualitex.
See id. at 7-150; id. § 7:69, at 7-152 n.3. The same goes
for the patented dual-spring sign stand at issue here.
tive effect as largely unworkable").16 As
this case illustrates, moreover, "competitive
need" is often in the eye of the beholder. The District Court
below found that cloaking MDI's sign stand with trade dress
protection would hinder competition, see Pet. App. 53a-
55a, 65a, whereas the Court of Appeals had a different take,
see id. 20a-2 Ia. On remand. a jury likely would have the
final say, but only after "the gathering of substantial
amounts of data and the expensive testimony of experts."
Mohr, supra, at 426.17

This inquiry, in short, is a recipe for uncertainty,
litigation, and, just as potent, the plausible threat of
litigation. See Grubart v. Great Lakes Dredge & Dock Co.,
513 U.S. 527, 547 (1995) ("the open-ended rough-and-
tumble of factors
*** invites complex argument in a trial court and a virtually
inevitable appeal"). As one commentator has explained,
under this approach, "a patentee's competitors have good

16 While arguing for application of this broader concept
of functionality, the International Trademark Association
recognizes that this inquiry is "complex[]," turns on
"application of various multi-factored tests," is subject to
"no universal standard," and requires consideration of factors
such as "advertising," "economies of manufacture," and even
"the plaintiffs intent." ITA Br. 16-17. That is hardly a
workable standard, if a "standard" at all.
17 In conducting this "functionality" inquiry, the lower
courts have ascribed different weights to the fact that the
product configuration at issue is the subject of an expired
utility patent, ranging from great weight, e.g., Disc Golf Ass
'n v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir.
1998); to some weight, e.g., Thomas & Betts Corp. v.
Panduit Corp., 138 F.3d at 289; to no weight, e.g., Pet.
App. 19a (District Court should have applied "a functional
analysis of the trade dress unencumbered by any presump-
tions" stemming from the expired patent) (emphasis added).
While a "great weight" approach is more
defensible than a "no weight" approach, the
public's right to copy from expired patents should not be
reduced to a multi-factored inquiry in which the touchstone
is competitive need and the existence of an expired patent is
just a factor in the mix.





42 43


reason to doubt whether they are
entitled to reproduce a formerly
patented invention as it is disclosed in
the specifications of a utility patent.
Currently, before replicating configurations
disclosed in expired utility patents, competitors must consult
with the 'vagaries of the marketplace' to ascertain whether
the configuration is functional" and, thus, subject to
imitation. Geremia, supra, at 816 (quoting Vornado, 58 F.3d
at 1510 n.20). After doing so, in most cases competitors,
even with the assistance of legal counsel, would only be able
to hazard a guess as to whether copying a product
configuration covered by an expired patent would subject
them to liability under the Lanham Act. Moreover, it would
be impossible to rule out costly litigation resulting from
competitors seeking to prolong their patent monopolies
under the law of federal trade dress.

The Court has recently acknowledged the stifling effect on
competition of such a litigation petri dish. See Wal-Mart
Stores, 120 5. Ct. at 1345 ("Competition is deterred *** not
merely by successful suit but by the plausible threat of
successful suit."). The effect here is particular unsettling, for
"imitation and refinement through imitation" is "the very
lifeblood of a competitive economy." Bonito Boats, 489
U.S. at 146. See Moen Inc., 12 F.3d at 651 ("The right to
copy
is absolutely essential to the successful long-term
operation of a free and competitive economy.") (Cudahy. J..
dissenting). Indeed, recognizing trade dress protection for the
subject of expired utility patents-contingent on the outcome
of a factbound, competitive-need test-would be like
unleashing "a loose canon on the decks of the good ship
'Free Competition.'" J. Thomas McCarthy, Lanham Act §
43(a): The Sleeping Giant Is Now Wide Awake, 59 Law &
Contemp. Probs. 45, 64 (1996).iB
Competition is not all that will suffer. By discouraging
imitation of patented inventions, the "plausible threat of
successful suit" (Wal-Mart Stores, 120 5. Ct. at 1345) will
stagnate the progress of useful arts. As Justice Story observed
long ago, the "best" way to promote the useful arts is "by
giving the public at large a right to make, construct, use, and
vend the thing invented, at as early a period as possible."
Pennock v. Dialogue, 27 U.S. (2 Pet.) at 19. This be-
lief-embodied in the Patent Clause-has not fallen out of
favor. See Bonito Boats, 489 U.S. at 146 ("refinement
through imitation" is "necessary to invention"); id. at 160
("Reverse engineering of ** * mechanical articles in the public
domain often leads to significant advances in technology.").
In this regard, the march of scientific and technological
advancement in this country is perhaps the greatest reason
of all for not tinkering with the system that our
Constitution, patent laws, and this Court's own precedents
establish and so carefully guard.

All this counsels in favor of adopting a clear, predictable
rule--and this Court already has done so: "after the expira-
tion of a federal patent, the subject matter of the patent
passes to the free use of the public as a matter of federal
law." Bonito Boats, 489 U.S. at 152. As cases such as Singer
and Kellogg establish, that "subject matter" includes "the
form in which [the device] was constructed during the
patent." Singer, 163 U.S. at 185. It also includes the
invention described or claimed in the patent. This redirects
the focus from the indeterminate concept of competitive
need to the patent itself. The patent system "provides a
ready means of discerning the status of the intellectual
property embodied in an article of manufacture or design."
Bonito Boats, 489 U.S.




IS See also Thomas & Betts Corp. v. Panduit Corp., 935
F. Supp. 1399, 1408-09 (N.D. III. 1996) ("If a prospective
competitor must face the threat of Lanham Act litigation
for 'slavishly copying' the invention, * * * [clompetitors would
be hesitant to


take advantage of inventions coming off patent for fear that
the holders of the expired utility patent will argue, as they
do here, that their product has gained secondary meaning
and is protected by the Lanham Act."), rev'd, 138 F.3d 277
(7th Cir. 1998).





44

at 162. Indeed, its disclosure requirements are specifically
designed to ensure that the public is apprised of the scope of
the patent. See Markman v. Westview Instruments, Inc., 517
U.S. 370, 373 (1996) ("It has long been understood that a
patent must describe the exact scope of an invention and its
manufacture to secure to [the patentee] all to which he is
entitled, [and] to apprise the public of what is still open to
them.") (citation omitted); supra at 16.19

This approach is a far more desirable-not to mention
constitutionally grounded and time tested-means of pro-
tecting the patent bargain and the public's right to copy
from expired patents. At the same time, Congress has other
means to protect against consumer confusion caused by the
similarity in goods. For example, it may require producers to
identify their products with "trademarks, labels, or
distinctive dress in the packaging of goods so as to prevent
others, by imitating such markings, from misleading
purchasers as to the source of goods." Sears, 376 U.S. at
232. Cf Versa Prods. Co. v. B~fold Co. (Mfg.) Ltd., 50
F.3d 189, 203 (3d Cir.) ("clarity of labeling in packaging and
advertising will suffice to preclude almost all possibility of
consumer confusion as to source stemming from the
product's configuration"), cert. denied, 516 U.S. 808 (1995).
This is the conventional stuff of trademark law, far removed
from the recently minted concept of "product configuration
trade dress" in the subject of expired utility patents.
45

CONCLUSION

For the foregoing reasons, the judgment below should be
reversed.

Respectfully submitted,
JEANNE-MARIE MARSHALL RICHARD W. HOFFMANN
REISING, ETHINGTON, BARNES, KISSELLE, LEARMAN
& McCULLOCH, P.C.
201 W. Big Beaver-Suite 400
Troy, Michigan 48084
(248) 689-3500

* Counsel of Record
JOHN G. ROBERTS, JR.*
GREGORY G. GARRE
HOGAN & HARTSON L.L.P.
555 Thirteenth Street. N.W.
Washington, D.C. 20004
(202) 637-5810



Counsel for Petitioner






19 Patent law also polices the designation of goods as patent protected. See 35 U.S.C. § 292. In this regard, a producer such as MDI that
labels its product as covered by a patent during the life of the patent should hardly be permitted to take a contrary position-for trade dress purposes-once
the patent expires. The same goes for any representations made to the PTO in order to obtain patent protection in the first place. See Pet. App. 49a.


APPENDIX




I
I
Traffix
DUAL~SPRING TRAFFIC SIGN STANDS



/7

i~'~EM

t







~WTinn Proof

MDI

~Reply Br. for Appellant Cross-Appellee, 6th Cir. Nos. 97-1 148, 2096,
2097, at 21.]

3a

STATUTORY ADDENDUM

15 U.S.C. § 1125 provides in part:

§ 1125. False designations of origin, false descriptions, and dilution forbidden
(a) Civil action

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol,
or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation
of fact, which-

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another
person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by sitch act.

(2) As used in this subsection, the term "any person includes any State, instrumentality of a State or employee of a State or instrumentality of a
State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this
chapter in the same manner and to the same extent as any nongovernmental entity.

(3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts
trade dress protection has the burden of proving that the matter sought to be protected is not functional.


4a

35 U.S.C. § 101 provides:

§ 101. Inventions patentable
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this
title.

35 U.S.C. § 102 provides:

§ 102. Conditions for patentability; novelty and loss of
right to patent
A person shall be entitled to a patent
unless-

(a) the invention was known or used by others in this
country, or patented or described in a printed publication in
this or a foreign country, before the invention thereof by the
applicant for patent, or

(b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on
sale in this country, more than one year prior to the date of
the application for patent in the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate, by
the applicant or his legal representatives or assigns in a
foreign country prior to the date of the application for
patent in this country on an application for patent or
inventor's certificate filed more than twelve months before
the filing of the application in the United States, or

(e) the invention was described in a patent granted on an
application for patent by another filed in the United States
before the invention thereof by the applicant for patent, or
on an international application by another who has fulfilled
the requirements of paragraphs (1), (2), and (4) of section 37
1(c)
Sa

of this title before the invention thereof by the applicant for
patent, or

(f) he did not himself invent the subject matter sought to
be patented, or

(g)( 1) during the course of an interference (conducted
under section 135 or section 291, another inventor involved
therein establishes, to the extent permitted in section 104,
that before such person's invention thereof the invention was
made by such other inventor and not abandoned, suppressed,
or concealed, or (2) before such person's invention thereof,
the invention was made in this country by another inventor
who had not abandoned, suppressed~ or concealed it. In
determining priority of invention under this subsection, there
shall be considered not only the respective dates of
conception and reduction to practice of the invention, but
also the reasonable diligence of one who was first to conceive
and last to reduce to practice, from a time prior to
conception by the other.

35 U.S.C. § 103 provides in part:

§ 103. ConditiOns for patentability; non~obviOUS
subjeCt matter
(a) A patent may not be obtained though
the invention is not identically disclosed or
described as set forth in section 102 of this title, if the
differences between the subject matter sought to be
patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the
art to which said subject matter pertains.
*
*
*
(c) patentability shall not be
negatived by the manner in which the invention
was made. Subject matter developed by another person, which
qualifies as prior art only under one or more of subsections
(e), (f), and (g) of section 102 of this title, shall not preclude
patentability under this section where the subject matter and
the claimed invention were, at the time





6a 7a


the invention was made, owned by the same person or
subject to an obligation of assignment to the same person.
35 U.S.C. § 112 provides in part:

§ 112. Specification
121, or 365(c) of this title, from the date on which the
earliest such application was filed.
(3) Priority.-Priority under section 119, 365(a), or
365(b) of this title shall not be taken into account in
determining the term of a patent.


The specification shall contain a written description of the
invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or
with which it is most nearly connectel, to make an.1 use the
same, and shall set forth the best mode contemplated by the
inventor of carrying out his invention.

The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.

35 U.S.C. § 154 provides in part:

§ 154. Contents and term of patent
(4) Specification and drawing.-A copy of the
specification and drawing shall be annexed to the patent and
be a part of such patent.

35 U.S.C. § 171 provides:

§ 171. Patents for designs

Whoever invents any new, original and ornamental design
for an article of manufacture may obtain a patent therefor,
subject to the conditions and requirements of this title.

The provisions of this title relating to patents for
inventions shall apply to patents for designs, except as
otherwise provided.
(a) In general.-

(1) Contents.-Every patent shall contain a short title of
the invention and a grant to the patentee, his heirs or
assigns, of the right to exclude others from making, using,
offering for sale, or selling the invention throughout the
United States or importing the invention into the United
States, and, if the invention is a process, of the right to
exclude others from using, offering for sale or selling
throughout the United States, or importing into the United
States, products made by that process, referring to the
specification for the particulars thereof.

(2) Term.-Subject to the payment of fees under this
title, such grant shall be for a term beginning on the date on
which the patent issues and ending 20 years from the date on
which the application for the patent was filed in the United
States or, if the application contains a specific reference to
an earlier filed application or applications under section 120,



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