US Supreme Court Briefs


No. 99-1571

IN THE SUPREME COURT OF THE UNITED STATES

TRAFFIX DEVICES, INC.,
Petitioner.

V.

MARKETING DISPLAYS, INC.,
Respondent.


BRIEF FOR THE RESPONDENTS



Filed Oct 10, 2000


This is a replacement cover page for the above referenced brief filed at the U.S. Supreme Court. Original cover could not be legibly photocopied


STATEMENT PURSUANT TO RULE 29.6

Respondent, Marketing Displays, Inc., has no parent corporation and no publicly held company owns 10% or more of its stock.



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i
Contents
Page
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24
ii

TABLE OF CONTENTS


Statement Pursuant to Rule 29.6

Table of Contents

Table of Cited Authorities

Table to Lodging Appendix

Introduction

Counter Statement of the Case

A. The MDI Patent Litigation: Sarkisian v.
Winn-Proof Corp

B. The Unfair Competition Case: MDI v.
TrafFix

Summary of the Argument Argument

I. The Laws Of Unfair Competition Do Not
Conflict With The Patent Laws As Each
Protects Different Rights

A. The Two Bodies Of Law Have
Coexisted For Over Two Centuries


Page



ii

vi

xv

I

2
2
B. Both The Patent Laws And Unfair
Competition Laws Are Constitutionally
Grounded

C. The Policies And Purposes Of Each Body Of
Law Are Significantly Different

D. Trade Dress Rights Do Not Upset The
Constitutional Basis Underlying Patent
Policy

1. Patent Rights Protect Inventions

2. Trade Dress Rights Protect Source
Identifiers

a. Only Distinctive Trade Dress Is
Protectable
b. Trade Dress Must Be
Nonfunctional

c. The Standards For Trade Dress
Infringement Further Protect
Against Patent Policy
Trespass

3. Patent Remedies And Trade Dress
Remedies Are Substantially Different
4

7

10
10
10






Contents
Contents
3
8
4
0

4
2
3
0



3
3


3
3


3
5
iv V




Page
E. It Is Improper To Equate Trademarks
With "Monopolies"

II. The "Right To Copy" Subject Matter
Disclosed In An Expired Patent Is Not
Absolute

A. The Supreme Court Has
Acknowledged That The "Right To
Copy" Has Many Exceptions
1. Unclaimed Subject Matter Was Never Part
of the Patent Grant ...
25
2. Analyzing
Claimed
Subject
Matter
Results In a
Patent-
Like Case ....
26
IV. A Per Se Rule Is
Unwarranted And
Unjustified
27
A. A Per Se Rule Is Improper
Page


35


36


37

37




B. Even If The Supreme Court Cases Can
Be Read Broadly, They Are Factually
Distinguishable

III. The Existence Of An Expired Utility
Patent Does Not Foreclose Trade Dress
Rights In A Product Disclosed Or Claimed
Therein
B. The
Consequences
Of A Per Se
Rule Would Be
Harmful
29
C. A Per Se Rule
Would Create
Other Issues
30
Conclusion



A. The Legal Authorities Do Not Support TrafFix's Position

B. The Existence Of A Patent Has Only Limited Relevance To The Trade Dress
Inquiry

1. The Functionality Doctrine Is The Primary Determinative Test

C. TrafFix Is Unclear As To What Is "Covered" By The Patent


vi
vii
TABLE OF CITED AUTHORITIES CitedAuthorities

Page
Cases:

Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6
(7th Cir. 1992) 24, 25
Application of Penthouse Int'l Ltd., 565 F.2d 679
(C.C.P.A. 1977) 10

Aronson v. Quick Point Pencil Co., 440 U.S. 257
(1979) 15, 16

Ashley Furniture Indus., Inc. v. San giacomo N.A.,
Ltd., 187 F.3d 363 (4th Cir. 1999) 17
Atlantic Thermoplastics Co. v. Faytex Corp., 970
F.2d 834 (Fed. Cir. 1992) 24
Bloomer v. McQuewan, 55 U.S. 539 (1852) 16

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
U.S. 141 (1989) 1, 8, 10, 12, 15, 16, 28,
29

Bristol-Meyers Squibb Co. v. McNeil P.P. C., Inc.,
973 F.2d 1033 (2d Cir. 1992) 23, 24

Compco Corp. v. Day Brite Lighting, Inc., 376 U.S.
234(1964) 1,27,28,29,32

Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979) 11
Page


35
Dawson Chemical Co. v. Rohm & Haas Co., 448
U.S. 176 (1980) 16,

Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376
(7th Cir. 1996) 19

EFS Mktg., Inc. v. Russ Berrie & Co., 76 F.3d 487
(2dCir. 1995) 18

Ferrari S.P.A. Esercizio Fabriche Automobili E.
Corse v. Roberts, 944 F.2d 1235 (6th Cir. 1991)
11

Frisch 's Restaurants, Inc. v. Elby 'S Big Boy, 670
F.2d 642 (6th Cir. 1982) 23, 24

Fun-Damental Too Ltd. v. Gemmylndus. Corp., 111
F.3d 993 (2d Cir. 1997) 20

Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685
F.2d
78 (3d Cir. 1982) 11

Imagineering, Inc. v. Van Klassens, Inc., 53 F.3d
1260 (Fed. Cir.), cert denied, 516 U.S. 929
(1995) 17

In re Am. Nat'l Can Co., 41 U.S.P.Q. 2d 1841
(T.T.A.B. 1997) 22

In reHoneywell, Inc., 8 U.S.P.Q. 2d 1600 (T.T.A.B.
1988) 34





viii ix


Cited Authorities

Page
Inre Mogen David Wine Corp., 328 F.2d 925
(C.C.P.A. 1964)
Cited Authorities
Page

Mana Prods., Inc. v. Columbia Cosmetics Mfg., 65
F.3d 1063 (2d Cir. 1995) 5,18
27




In re Morton-Norwich Prods., Inc., 671 F.2d 1332
(C.C.P.A. 1982)

Insty*Bit, Inc. v. Poly-Tech Indus., 95 F.3d 663 (8th
Cir. 1996), cert. denied, 519 U.S. 1151
(1997)

Markman v. Westview Instruments, Inc., 517 U.S.
370(1996) 23,36,37
22
Midwest Indus., Inc. v. Karavan Trailers, Inc., 175
F.3d 1356 (Fed. Cir.), cert. denied, 120
S.Ct.527(1999) 7,11,27,31
21
Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844
(1982) 8,11,12,19

Kellogg Co. v. Nat'l Biscuit Co., 305 U.S.
111
(1938) 27,
28, 29, 30

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470
(1974) 10

Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996
(2d Cir. 1995) 17, 20

Kohler Co. v. Moen, Inc., 12 F.3d 632 (7th Cir.
1993) 10, 11, 14,17
L. & J. G. Stickley, Inc. v. Canal Dover Furniture Co.,
79 F.3d 258 (2d Cir. 1996)

L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d
1117 (Fed. Cir.), cert. denied, 510 U.S. 908
(1993)
Morton v. Mancari, 417 U.S. 535 (1974)

Pachmayr Gun Works, Inc. v. Olin Mathieson Chem.
Corp., 502 F.2d 802 (9th Cir. 1974)
13


11
Park 'n Fly, Inc. v. Dollar Park & Fly, Inc., 469
U.S. 189 (1985) 8, 13

Patterson v. Kentucky, 97 U.S. 501 (1878)

1
,

2
7
Pebble Beach Co. v. Tour 18, Ltd., 155 F.3d 526 (5th
Cir. 1998)

Publications Int'l Ltd. v. Landoll, Inc., 164 F.3d 337
(7th Cir. 1998)
18
11


18
Qualitex Co. v. Jacobson Products Co., 514 U.S.
159 (1995) 1,7, 9, 14, 17, 19, 20, 33
23






j
x xi


Contents
Pag
e

Sarkisian v. Winn-Proof Corp., 203 U.S.P.Q. 60
(D. Or. 1978), aff'd in part, rev'd in part, 697
F.2d 1313 (9th Cir. 1983) 2, 3, 4,
37

Scott Paper Co. v. MarcalusMfg. Co., 326
U.S. 249
(1945) 27, 28,
30

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225
(1964) 27, 28,
29

Singer Mfg. Co. v. June Mfg. Co., 163 U.S.
169
(1896) 9, 27, 28, 29, 30
Standard Oil Co. v. Fed. Trade Comm 'n, 340 U.S. 231
(1951)

Stuart Hall Co. v. Ampad Corp., 51 F.3d 780 (8th Cir.
1995)

Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246 (5th
Cir. 1997), cert. denied, 523 U.S. 1118 (1998)
Cited Authorities

Page
Truck Equip. Serv. Co. v. Frueha uf Corp., 536 F.2d 1210
(8th Cir. 1976)
11
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763
(1992) 7, 12, 13, 14, 17, 19,20
United Drug Co. v. Theo. Rectanus Co., 248 U.S. 90 (1918)

United States v. Dubilier Container Corp., 289 U.S. 178
(1933)

United States v. Philadelphia Nat 'I Bank, 374 U.S. 321
(1963)
15
26


26


15
United States v. Steffens (The Trade-Mark Cases),
lOOU.S. 82,92 (1879) 12,29, 35
17
Vornado Air Circulation Sys., Inc. v. Duracraft Corp., 58
F.3d 1498 (10th Cir. 1995)

Vuitton etFils S.A. v. J. Young Enters, Inc., 644 F.2d 769
(9th Cir. 1981)
30
31


22


Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th
Cir.), cert. denied, 525 U.S. 929
(1998) 11, 13, 18, 29,
30

Tools USA and Equip. Co. v. Champ Frame Straightening
Equip., Inc., 87 F.3d 654 (4th Cir.
1996) 21


Wal-Mart Stores, Inc. v. Samara Bros., Inc., 120
S. Ct. 1339 (2000) 7,8, 17, 18
Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520U.S.
17 (1997)

W.L. Gore & Assoc., Inc. v. Garlock, Inc., 842 F.2d 1275
(Fed. Cir. 1988)
37


24





xii

Cited Authorities
Page
Statutes:

15 U.S.C. 1051 etseq

15 U.S.C. 1065
15 U.S.C. 1125(a) 8, 11, 17,

15 U.S.C. 1125(a)(1)(A)
15 U.S.C. 1125(a)(3) 31,
15 U.S.C. 1127 13, 14,
35 U.S.C. 101
35 U.S.C. 102
35 U.S.C. 103
35 U.S.C. 112
35 U.S.C. 154(a)(2)
35 U.S.C. 271(a) 16,
35 U.S.C. 283
Pub. L. No. 106-43, 113 Stat. 218
12

12, 16
xiii

CitedAuthorities
P
age

United States Constitution:

Art.I,8,cl.3

Art. I,8,cl.8

Other Authorities:

Andelman, Thomas & Betts Corp v. Panduit Corp.,
14 Berkeley Tech. L.J., 229 (1999) 27
Dratler, Intellectual Property Law: Commercial,
Creative, and Industrial Property, 1O.01[2]
(1991) 23

Dratler, Trade Dress Protection For Product
Configurations: Is There A Conflict
With Patent
Policy?, 24 AIPLA Q. J.427 (1996) 16, 25

H.R. Rep. No. 250, 106th Cong., 1st Sess. (1999)
20,32

Landes and Posner, Trademark Law: An Economic
Perspective, 30 J. Law and Econ. 265 (1987) 14,15

1 Deller, Walker on Patents (Deller's Ed.) (New
York 1937) 15
12

2

18

22

34

17

16

16

16

40

16

24

24

34






Page

Tab
1

Tab
2

Tab
3

Tab
4

Tab
5

Tab
6

Tab
7

Tab
8

xv
xiv

Cited
Authorities
TABLE TO
LODGING
APPENDIX


Page
Opderbeck, An Economic Perspective On Product
Configuration Trade Dress, 24 Seton Hall Legis.
J. 327 (2000)

Restatement (Third) Of Unfair Competition
17 commentb(1995)

S. Rep. No. 79-1333 (1946), reprinted in
1946 U.S.C.C.A.N. 1274

S. Rep. No. 100-515 (1988), reprinted in
1988 U.S.C.C.A.N. 5577

21 James I, c.3, VII Statutes at Large 255

Waltersheid, The Early Evolution of the United
States Patent Law: Antecedents (Part 2), 76
J.P.T.O.S., 849 (1994)
14


20
Figures of U.S. Patent No. 3,646,696

Figures of U.S. Patent No. 3,662,482

MDI "WindMaster" Product Brochure

TrafFix "WindBuster" Product Brochure

U.S. Patent No. 6,048,423

U.S. Patent No. 3,861,281

U.S. Patent No. 3,869,166

U.S. Patent No. 4,801,173
14
13

15
26





1

INTRODUCTION

The existence of an expired patent should not exonerate calculated acts of deception. TrafFix's per se rule would frustrate the purposes of the
Lanham Act by extending the "right to copy" to abolish otherwise protectable product designs at the risk of confusing or misleading consumers. The
right to copy the subject matter of an expired patent is not absolute. It has always and consistently yielded to "other federal statutory protection" or
compelling interests. Compco Corp. v. Day Brite Lighting, Inc., 376 U.S. 234, 238 (1964); Patterson v. Kentucky, 97 U.S. 501, 505 (1878). If MDI's
patents had never existed, neither would have TrafFix's after-the-fact justification for its acts.

Distinctive, nonfunctional trade dress is protectable. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 169 (1995). There is no Constitutional,
statutory, or overriding policy requirement that per se forecloses federal trade dress protection for subject matter disclosed or claimed in an expired
patent. Quite simply, the "law of unfair competition... [is] consistent with the balance stuck by the patent laws." Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141, 166 (1989).

Further, the prohibitive rule urged by TrafFix would not simplify trade dress law, but instead make it more complex and difficult to administer.
The proposed "clear and predictable" rule would turn trade dress cases into patent cases requiring claim interpretation as a prerequisite in determining
the availability of trade dress protection. Under TrafFix's absolute rule, innovation, investment and patent disclosures could be limited--to the
detriment of both intellectual property owners and the public. A proposed rule that conditions trade dress protection on the disclosure of a patent,
creates an unintended relationship between the patent and trademark laws that is not dictated by law or policy.



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2 3


COUNTER STATEMENT OF THE CASE

Petitioner, TrafFix Devices, Inc.'s ("TrafFix"),
statement of the case omits details which are important
for a full consideration by this Court. Accordingly,
Respondent, Marketing Displays, Inc. ("MDI"), offers the
following Counter Statement.

For nearly twenty-five years prior to TrafFix's entry
into the market, MDI had successfully marketed and sold
throughout the United States a spring mounted, wind-
resistant sign stand under the name "WindMaster." (Pet.
App. 2a, 26a, 69a-70a.) MDI began using "WindMaster"
as a trademark in the late 1960s and secured a Federal
Trademark Registration for the mark in 1977
(Registration No. 1,068,875). (J.A. 46.) That registration
is now incontestable. See 15 U.S.C. 1065. MDI began
selling the "WindMaster" sign stands in the late 1960s.
For many years the only "WindMaster" sign stand sold
was a "business-type" product that had a significantly
different "look" from the "traffic-type" "WindMaster"
sign stand trade dress at issue in this case. It was not until
about 1976 that MDI first introduced its "traffic-type"
"WindMaster" sign stand.

A. The MDI Patent Litigation: Sarkisian v. Winn-
Proof Corp.

In 1972, MDI secured two patents on various features
of its business-type "WindMaster" sign stands. These are
U.S. Patent Nos. 3,646,696 and 3,662,482.' (L41, 45.)
The key aspects of the '696 patent, as defined by its
claims, are as follows:

1) Generally parallel "ground engaging members" (to
provide a stable base);

1. Copies of the drawings from the two MDI patents
are included in the Lodging Appendix to this Brief. (Resp.
L. App. Tabs 1-2.)
2) Spaced apart coil springs (to prevent twisting of
the sign frame);

3) An upstanding frame-type sign structure (to hold
large advertisements); and

4) An initial compression between the coils of the
springs (in order to prevent the sign from
fluttering in light winds).

The '482 patent was a continuation-in-part of the '696
patent, and had the following key features recited in the
claims:

1) A geometric relationship -- defined
mathematically in the claims as Wf(Da-Db) < WbDb -- between the
center of gravity of the sign and the length of the legs
which allowed the frame structure to bend over in high
winds without the sign stand tipping over or sliding
along the ground; and

2) "Spring means" connected at two spaced apart
locations.

After a lengthy and expensive court proceeding
through trial and appeal, a sign stand having a similar
appearance to the "WindMaster" traffic-type sign stand
at issue herein was found to infringe both the '696 and
'482 patents under the Doctrine of Equivalents.2 The
infringing sign stands had initial compression between the
coils of the coil springs as required by the '696 patent, and
met the geometric relationship and spaced-apart springs
requirements of the '482 patent. The "look" of the
accused products was not at issue. Indeed, the appearance
and structure of the Winn-Proof sign stands were
completely different than the "business-type" sign stands
depicted and described in the patents.

2. See Sarkisian v. Winn-Proof Corp., 203 U.S.P.Q. 60 (D. Or.
1978), aff'd in part, rev'd in part, 697 F.2d 1313 (9th Cir.
1983).






L
4 5


In the Winn-Proof case, the Court of Appeals for
the Ninth Circuit upheld the District Court's finding of
infringement under the Doctrine of Equivalents and found
that the MDI invention was "unusual and surprising."
Winn-Proof, 697 F.2d at 1318, 1320. The Court of
Appeals particularly noted that if a sign stand satisfied the
geometric formula and relationship set forth in the '482
patent, the base itself could be "virtually weightless" -- that
is, the sign did not have to rely upon the weight of the
base for stability in high winds as previous sign stands
required. Id.

B. The Unfair Competition Case: MDI v. TrafFix

TrafFix's unfair competitive acts were the impetus
for the present lawsuit. TrafFix's founder, Jack Kulp, was
a former "WindMaster" distributor and was admittedly
aware that the "WindMaster" trademark and trade dress
were well received in the industry. (Pet. App. 1 la, 70a.)
Mr. Kulp was also aware of the substantial commercial
success enjoyed by the "WindMaster" mark and sign
stands. Id. TrafFix decided to copy the appearance of
MDI's "WindMaster" sign stand by sending one to Korea
for duplication.3 (Pet. App. 3a, 27a, 70a.) In furtherance
of its copying objective, TrafFix then marketed its
identical looking sign stand under the infringing name
"WindBuster" to the same customers and through the
same channels of trade. These actions caused widespread
confusion in the marketplace and threatened MDI's
investment and sales. (Pet. App. 81a-82a.)

The specific trade dress here at issue is not shown or
described in either of the two MDI patents which were the
subject of the Winn-P roof litigation. Indeed, MDI's sign
stands themselves were not at issue in the Winn-Proof
litigation.

3. For the Court's convenience, brochures illustrating
MDI's and TrafFix's products are included in the Lodging
Appendix to this Brief. (Resp. L. App. Tabs 3-4.)
In this case, MDI's "WindMaster" trade dress is a
combination of several different features:4

1) Anarrowbase;

2) Four legs in an X-shape configuration;

3) Two closely spaced coil springs;

4) A single upright, for holding a sign; and

5) A traffic-type sign. (Pet. App. 29a.)

Every other competitor in the industry -- except for
TrafFix -- developed their own innovative sign stands
which had different structures and appearances, and yet
which performed equivalently in high winds. Some of
these sign stands also were less expensive than MDI's. These
competitors included Dickie Tool Co., Eastern Metals of
Elmiria, Sign-Up Corp., Korman Signs, Work Area
Protection, and Services & Materials. (Pet. App. 86a-87a;
L38-39.) The competitors' sign stands utilized unique
single spring designs or other resilient mechanisms to
achieve similar utility to MDI's "WindMaster" sign stand.
None of the competitors copied MDI's trade dress,
however, or otherwise tried to "pass off' their goods by
using a confusingly similar trademark.5

To protect its interests, MDI filed suit in the United
States District Court alleging trademark and trade dress
infringement under the Lanham Act, and related acts of
unfair competition.

4. Courts must view the asserted trade dress as a whole, not
as a collection of individual features. Mana Prods., Inc. v.
Columbia Cosmetics Mfg., 65 F.3d 1063, 1069 (2d Cir. 1995). See
the MDI brochure. (Resp. L. App. Tab 3.)

5. Eastern Metals of Elmira does make one sign stand
model which infringes MDI's trade dress, but does so under
license from MDI which inures to MDI's benefit. (J.A. 89.)





6 7


(J.A. 23.) The Sixth Circuit Court of Appeals affirmed the
District Court's finding of trademark infringement and the
dismissal of TrafFix's anti-trust counterclaim. (Pet. App.
la.) The Appellate Court also reversed the District Court's
dismissal of MDI's trade dress claim. The only issue before
this Court is the propriety of MDI's trade dress
infringement claim.

Several findings of the District Court in this case, as
affirmed by the Court of Appeals for the Sixth Circuit
relative to TrafFix's actions and the facts of this case, are
noteworthy:

_ The "WindMaster" trademark was a "strong"
mark, having widespread promotion and
recognition, having been used for over 20 years,
and having associated sign stand sales of over $28
million; (Pet. App. 78a-79a.)

_ TrafFix's "WindBuster" product was "virtually identical"
to the "WindMaster" product and TrafFix's
argument that the two sign stands were different
was found to be "not credible"; (Pet. App. 79a-
80a.)

_ A "clear likelihood of confusion" existed between
the "WindMaster" and "WindBuster" marks;
(Pet. App. 84a) and

_ TrafFix admitted that there were several
competitors who marketed sign stands in direct
competition with both TrafFix and MDI, and
that none of the competitors' sign stands had a
similar spring mechanism or appearance. (Pet.
App. 86a-87a.)

Several statements by the Court of Appeals for the
Sixth Circuit are also noteworthy:

_ Some actual confusion in the marketplace existed
between the MDI and TrafFix sign stands; (Pet. App.
8a-lOa.)
_ TrafFix's explanation of how the "WindBuster"
mark was selected "strained credulity"; (Pet. App. 1 la.)

_ There was "some evidence" suggesting that TrafFix
misled its attorney who rendered an opinion indicating
the name "WindBuster" could be used; (Pet. App. 1 la.)
and

_ Considering the sign stand as a whole, and not just the
dual-spring configuration, a reasonable juror could
conclude that the "WindMaster" sign stand has
obtained secondary meaning in the marketplace.
(Pet. App. 16a.)

SUMMARY OF THE ARGUMENT

TrafFix's position on the issue before this Court is
contrary to the weight of authority and the expressions of
Congress. TrafFix's arguments rest in large part on broad
statements from older Supreme Court opinions which
have not been followed to the extent asserted, and have
even been distinguished. TrafFix's assertion that the
patent laws trump the trademark laws is contrary to
decisions in four of the five Circuit Courts of Appeal
which have ruled on the issue, including the Federal
Circuit. See Midwest Indus., Inc. v. Karavan Trailers, Inc., 175
F.3d 1356 (Fed. Cir.), cert. denied, 120 5. Ct. 527
(1999). TrafFix's position on the competitive-need test
for legal functionality is likewise contrary to the
unanimous decision by this Court in Qualitex, 514 U.S. 159,
as well as the decisions from numerous Courts of Appeal.
It is also contrary to the intent of Congress as evidenced
by the legislative history of the Lanham Act. Finally,
TrafFix's views on trademark/trade dress policies and law
vs. patent policies and law cuts against the clear trend and
standards set forth in Supreme Court decisions over the last
two decades. See Two Pesos, Inc. v. Taco Cabana,
inc., 505 U.S. 763 (1992); Qualitex, 514 U.S. 159;
Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
120 5. Ct. 1339





8 9


(2000); Bonito Boats, 489 U.S. 141; Park 'n Fly, Inc. v.
Dollar
Park & Fly, Inc., 469 U.S. 189 (1985); Inwood Labs., Inc. v.
Ives Labs., Inc., 456 U.S. 844 (1982).

Trademark and trade dress rights are part of the laws
of unfair competition and are codified on the Federal level
in Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
Trade dress rights protect distinctive, nonfunctional
source identifiers. Patent rights protect inventions and
stimulate innovation. These rights do not conflict in any
way. Both the patent laws and Federal trademark and
unfair competition laws are constitutionally grounded, and
have coexisted for centuries without conflict since each
has different policies and purposes, and each protects
different rights and has different remedies.

Trademark and trade dress rights are not
"monopolies." Enforcing trade dress rights in a product,
which is either depicted, described or claimed in an expired
patent will not "perpetuate" or "extend" the patent grant
in any way. TrafFix is not prohibited from fairly
competing against MDI's sign stands in the marketplace,
and MDI is not insulated from competition if MDI's trade
dress is upheld in this case.

TrafFix unquestionably attempted to trade on MDI's
goodwill by infringing its "WindMaster" trademark and
copying its sign stand. Rather than develop its own unique
sign stand as all other competitors have done, TrafFix
thought it would simply take advantage of the tremendous
goodwill and commercial success enjoyed by MDI's sign
stand. Now TrafFix attempts to justify its acts with the
weak excuse that it was only copying MDI's expired
patents. The existence of MDI's expired patents is
irrelevant in this case, however, and cannot be used to
excuse TrafFix's actions. TrafFix would not have been
able to copy MDI's trade dress if the patents had never
existed. The existence of the expired patents does not
extinguish otherwise protectable trade dress rights. Such
an excuse, if adopted, would result in grave consequences
for producers and consumers who rely on
source identifiers, such as trademarks and trade dress, to
distinguish between competitive products.

The requirements of acquired distinctiveness,
nonfunctionality, and likelihood of confusion prevent
trade dress rights from conflicting with patent rights.
Ordinary or commonplace trade dress necessarily lacks
distinctiveness, thereby precluding patent-like protection.
Even if distinctive, however, trade dress is functional and
not protectable if competitors need to use the asserted trade
dress in order to effectively compete in the marketplace. Qualitex,
514 U.S. at 169-70. Finally, the standards of trade dress
infringement and the remedies available provide fertile grounds for
avoiding patent-like protection.

The "right to copy" cannot be expanded to eviscerate
distinctive, nonfunctional source identifiers. It is not an
absolute right. Singer Mfg. Co. v. June Mfg. Co.,
163 U.S. 169 (1896) and its progeny make it clear that the
right to copy is subject to other rights in the form of
trademarks, trade dress, and trade secrets, and other
compelling interests, such as state police powers. No legal
authority supports TrafFix's sought-after absolute right to
copy anything that has entered the public domain via
patent disclosure.

Not only is a per se rule legally unwaffanted and
logically unjustified, it would have calamitous effects on
trade dress owners, litigants and the law of trade dress.
Trade dress rights in existing product shapes could be lost
due to their reference in a patent. Moreover, litigants
attempting to enforce trade dress rights would have to
defeat numerous challenges based on the asserted scope of
claims in expired patents. Every defendant in a trade dress
case would scour the patent universe to find a drawing,
description or claim, which arguably covers the asserted
trade dress. Trade dress actions would turn into
diversionary patent actions and courts would be required
to construe patents and patent claims.





10 11


In sum, TrafFix's position is supported only by a
skewed view of policy, rather than the realities of reason,
case law and the marketplace. The judgment below should
be affirmed.

ARGUMENT

I. THE LAWS OF UNFAIR COMPETITION DO
NOT
CONFLICT WITH THE PATENT LAWS AS EACH
PROTECTS DIFFERENT RIGHTS

A. The Two Bodies Of Law Have Coexisted For
Over Two Centuries

The law of unfair competition has "coexisted with
federal patent protection for almost 200 years, and Congress has
given no indication that [its] operation is inconsistent
with the operation of federal patent laws." Bonito
Boats, 489 U.S. at 166. "Indeed, there are affirmative
indications from Congress that both the law of unfair
competition and trade secret protection are consistent
with the balance struck by the patent laws." Id.
Understanding that the "copyright, patent, and trademark
laws stem from different concepts and offer different
kinds of protection, which are not mutually exclusive,"
alleviates the exaggerated perception of a conflict, and
provides the principal means by which courts can insure
the integrity of both bodies of law. Application of Penthouse
Int'l Ltd., 565 F.2d 679, 683 n.3 (C.C.P.A. 1977). In each
case demonstrating such an understanding, the "courts
have consistently held that a product's different qualities
can be protected simultaneously, or successively, by more
than one statutory means for protection of intellectual property."6
Kohier Co. v. Moen, Inc., 12 F.3d 632,

6. See, e.g., Kewanee Oil Co. v. Bicron Corp.,
416 U.S. 470 (1974), where state protection of trade secrets was
held not to frustrate the objectives of the federal patent law. The
"nature and degree" of state protection "did not conflict" with the
federal policies of encouragement of patentable invention and the
prompt disclosure
(Cont'd)
638 (7th Cir. 1993). In particular, numerous courts have held
"that a product may be entitled to trade dress protection
for distinctive, nonfunctional features, even if the
product is or has been, the subject of a patent."7 Midwest, 175
F.3d at 1364.

In fact, all of the various intellectual property rights,
including patents, copyrights, trademarks, trade dress and trade
secrets, can exist concurrently in the same product without
trespassing on each other. In a computer, for example, patent
protection can be secured on a hardware component (such
as a disc drive), copyright protection can be secured on
the software source code, trademark rights can be secured
on the names of the products and components, trade dress
rights can be secured on its external shape (e.g., Apple's
new "iMac" computer), and trade secret rights can exist in
the manufacture of the microprocessor or hardware
component. The fact that a patent application for the
hardware component mentions the source code, describes
the method of operation, discloses the name of the
product or components, or depicts the external shape and
design of the computer and/or components, should not
negate any of these other rights.

(Cont'd)
of such innovations. See also Inwood Labs., 456 U.S. 844, where
43(a) was held to prohibit a broad range of practices, including
unfair competition.

7. The Federal Circuit supported its statement with the
following case citations: Pebble Beach Co. v. Tour 18, Ltd., 155
F.3d 526. 548. 549 n.16 (5th Cir. 1998); Thomas & Betts Corp. v.
Panduit Corp., 138 F.3d 277, 287-89 (7th Cir.), cert. denied,
525
U.S. 929 (1998); Ferrari SPA. Esercizio Fabriche Automobili E.
Corse v. Roberts, 944 F.2d 1235, 1241 (6th Cir. 1991); Ideal Toy
Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 81 (3d Cir. 1982);
Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604
F.2d 200, 203 (2d Cir. 1979); Truck Equip. Serv. Co. v. Fruehauf
Corp., 536 F.2d 1210, 1214-15 (8th Cir. 1976); and
Pachmayr Gun
Works, Inc. v. Olin Mathieson Chem. Corp., 502 F.2d 802, 806-07
(9th Cir. 1974).






1
~
12 13


The harmonious balance between trade dress rights and
patent law is not upset in this case, and a careful examination of
the purposes, rights and remedies associated with each body of
law reveals that MDI's expired patent rights do not, per se,
foreclose trade dress fights in its "WindMaster" traffic-type sign
stands.

B. Both The Patent Laws And Unfair Competition
Laws Are Constitutionally Grounded

The genesis of patent law is embodied in the Constitution
wherein the framers declared that "[tihe Congress shall have the
power. .. [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, el. 8. Prior to the first
Patent Act, however,

[t]he right to adopt and use a symbol or device to
distinguish the goods or property made or sold by
the person whose mark it is, to the exclusion of the
use of that symbol by all other persons, [had] long
been recognized by the common law and the chancery
courts of England and of this country, and by the statutes of
some of the states.

United States v. Steffens (The Trade-Mark Cases), 100
U.S. 82, 92 (1879). "The law of unfair competition has
its roots in the common-law tort of deceit: its general
concern is with protecting consumers from confusion as to
source." Bonito Boats, 489 U.S. at 157 (emphasis in
original). Acting under the authority of the Commerce Clause,
U.S. Const. art. I, 8, cl. 3, Congress, over 50 years ago,
passed the Lanham Act, 15 U.S.C. 1051 et seq., "to
codify and unify the common law of unfair competition and
trademark protection." Inwood Labs., 456 U.S. at 861 n.2 (J.
White concurring); see also Two Pesos, 505 U.S. at 777-84
(J. Stevens concurring), and 785-87 (J. Thomas
concurring).


Trademark and trade dress laws are within the umbrella of
unfair competition laws codified in the Lanham Act. Two
Pesos, 505 U.S. at 768.

Since, both patent law and the law of unfair
competition are federal laws authorized by the
Constitution, it is assumed that they are "capable of
coexistence, [and] it is the duty of the courts, absent a
clearly expressed congressional intention to the contrary,
to regard each as effective." Morton v. Mancari, 417 U.S.
535, 551 (1974). In other words, "federal trademark
protection cannot be preempted by patent law." Thomas
& Betts, 138 F.3d at 285. Thus, contrary to the dissenting
comments relied upon by TrafFix, the existence of the
constitutionally grounded patent laws and trade dress laws do
not preclude trade dress rights in this case.

C. The Policies And Purposes Of Each Body Of
Law Are Significantly Different

The purposes served by trade dress law are broader
and different than the purposes of patent law, yet both
trade dress law and patent policy seek the same end -- robust and
fair competition. First, the Lanham Act serves to foster
competition by "protect[ing] the ability of consumers to
distinguish among competing producers." Park 'N Fly,
469 U.S. at 198; Two Pesos, 505 U.S. at 774. Second, the
Lanham Act serves to avoid confusion among consumers
as to the source or origin of goods and services.8 The
Lanharn Act also encourages "the maintenance of quality
by securing to the producer the

8. See 15 U.S.C. 1127 (the statute "make[s] actionable
the deceptive and misleading use of marks in . . . commerce" and
"prevent[s] fraud and deception in ... commerce by the use of
reproductions, copies, counterfeits, or colorable imitations of
registered marks."); S. Rep. No. 100-515 (1988), reprinted in
1988 U.S.C.C.A.N. 5577, 5580 (Lanham Act allows consumers
to "identify brands they prefer and [to] purchase those brands
without being confused or misled.")





14 15


benefits of a good reputation." Id. In this regard, the
protection of trademarks and trade dress protects the
investment made by the owner, creates incentives for
continued investment and product improvement by the owner,
and benefits the public by encouraging competitors to develop
alternative, improved, and less expensive products. See Kohier, 12
F.3d at 643-44. Finally, the Lanham Act, maintains healthy
competition by "protect[ing] persons engaged in [federally
regulated] commerce against unfair competition."9 All of
these policies can be summarized as helping to stimulate
competition by providing consumers with a means to
readily identify the sources of goods and services in the
marketplace,'0 and "[tihe heart of our national

9. See 15 U.S.C. 1127 (the statute serves "to protect
persons engaged in Ifederally regulated] commerce against
unfair competition"); S. Rep. No. 79-1333 (1946),
reprinted in 1946 U.S.C.C.A.N. 1274, 1274 ("[W]here
the owner of a trade-mark has spent energy, time, and
money in presenting to the public the product, he is protected in
his investment from its misappropriation by pirates and cheats.
This is the well-established rule of law protecting both the public
and the trade-mark owner.").

10. In economic terms, trademark and trade dress rights
reduce consumer "search costs" by allowing consumers to
distinguish products that, in the absence of a trademark, would
appear identical but in fact have different qualities. Search costs are
factors unrelated to price which include the costs of knowing where
to obtain the product, the costs of knowing the price of the product
at different outlets, and the costs of knowing the quality of the
product relative similar products offered by other producers.
See Qualitex, 514 U.S. at 163-64. High search costs
resulting from a lack of distinctiveness among competing
products inhibits competition because consumers will be
less likely to consider substitute products. In contrast, low
search costs resulting from shorthand source identifiers
such as trademarks permit consumers to obtain more
complete information about a product's relative price and
quality, thereby stimulating producers to keep their price
and quality competitive. Opderbeck, An Economic
Perspective On Product Configuration Trade Dress, 24 Seton
Hall Legis. J. 327, 360 (2000) (citing Landes and Posner,
(Cont'd)
economic policy long has been faith in the value of
competition." Standard Oil Co. v. Fed. Trade Comm'n, 340
U.S. 231, 248 (1951); United States v. Philadelphia Nat'l Bank,
374 U.S. 321, 372 (1963) ("[C]omperition is our
fundamental national economic policy."). Thus, the law
of trade dress directly advances the fundamental economic
policy of the United States.

The rationale of the patent system is different.
Patent law has been an exception to the rule of free
competition for over 350 years, since the Statute of
Monopolies prohibited exclusive grants, subject to an
exception for novel or imported inventions." Thus, the
focus of the patent system is to promote the progress of
Science and useful Arts through "the protection of
producers as an incentive to product innovation." Bonito
Boats, 489 U.S. at 157. The patent system also seeks to
promote disclosure of inventions to stimulate further
innovation. Aronson v. Quick Point Pencil Co., 440
U.S. 257, 262 (1979). In sum, both trade dress protection
and patent policy seek the same end -- robust and fair
competition and the resulting benefit to the public.'2

(Cont'd)
Trademark Law: An Economic Perspective, 30 J. Law and
Econ. 265, 269 (1987)). In sum, "[a] principal economic
function of trademarks and trade dress is to lower search
costs by associating consistent price and quality with a
particular brand name or package design." Id.

11. The Statute of Monopolies created an exception
for any letters patent and grants of privilege for the term
of fourteen years or under, hereafter to be made of the sole
working or making of any manner of new manufactures
within this realm, to the true and first inventor and
inventors of such manufactures." 21 James I, c.3, VII
Statutes at Large 255. Also reprinted in I Deller, Walker on
Patents (Deller's Ed.) at 18-21 (New York 1937).

12. "Trade symbol law seeks that end by specific and
limited means, namely, protecting the reliability of shorthand
source identifiers in the marketplace, while patent law seeks it by
providing
(Cont'd)





16 17


D. Trade Dress Rights Do Not Upset The
Constitutional Basis Underlying Patent Policy

The salient difference between the doctrines of
patent and trade dress law lie in the requirements for
protection. Congress and the courts have developed strict
prerequisites for federal trade dress protection which,
when properly applied, safeguard the integrity of patent
policy.

1. Patent Rights Protect Inventions

The patent laws seek to promote the "progress of
Science and useful Arts" by providing incentives for
innovation and disclosure of new inventions. U.S. Const.
art. I, 8, el. 8; Aronson, 440 U.S. at 262. Not all
inventions are patentable, however. In order to be
awarded a patent, an invention must pass the rigorous
tests of being new, useful, and nonobvious. 35 U.S.C.
101, 102, 103. Bonito Boats, 489 U.S. at 150. Those
inventions meeting these statutory requirements are
granted a limited period of exclusivity. 35 U.S.C.
154(a)(2), 271(a). The right is exclusionary, not
permissive. A patent does not grant its owner the right to
make or market a product. "The franchise which the
patent grants, consists altogether in the right to exclude
every one from making, using, or vending the thing
patented, without the permission of the patentee. This is
all that he obtains by the patent." Bloomer v. McQuewan, 55
U.S. 539, 549 (1852). Furthermore, the boundary of the
exclusive grant "is limited by the ... scope of the patent
claims." Dawson Chemical Co. v. Rohm & Haas
Co., 448 U.S. 176, 221 (1980).



(Cont'd)
incentives for innovation -- one of the mainsprings of
competition in modern commerce." Dratler, Trade Dress
Protection For Product Configurations: Is There A Conflict With
Patent Policy?, 24 AIPLA Q. J.427, 446 (1996).
2. Trade Dress Rights Protect Source Identifiers

Trademarks and trade dress are subjects of the unfair
competition laws codified in 43(a) of the Lanham Act. See
Two Pesos, 505 U.S. at 768; Wal-Mart, 120 5. Ct. at 1342-43. A
trademark is defined in 15 U.S.C. 1127 as including "any
word, name, symbol, or device or any combination thereof..,
used by a person.., to identify and distinguish his or her
goods, including a unique product, from those manufactured or
sold by others and to indicate the source of the goods, even if
that source is unknown."

"Trade dress" is classified as a "symbol" identifier,
and courts have consistently recognized that "symbols"
such as product designs can constitute protectable trade
dress under the Lanham Act.'3

In contrast to the nature of patent rights, trade dress
protection is available only if the elements of (1) acquired
distinctiveness, (i.e., secondary meaning), (2)
nonfunctionality, and (3) likelihood of confusion, are shown. Two
Pesos, 505 U.S. at 769-70. The disparate criteria necessary to
acquire trade dress rights and patent rights safeguards the
constitutional mandate that "discoveries" be protected for
only "limited Times."

a. Only Distinctive Trade Dress Is
Protectable

The first important requirement, namely
distinctiveness --also known as secondary meaning -- helps
protect patent policy
13. See, e.g., Two Pesos, 505 U.S. 763 (1992) (restaurant
appearance); Qualitex, 514 U.S. 159 (1995) (a color); Kohler,
12 F.3d 632 (7th Cir. 1993) (a faucet); Imagineering, Inc. v. Van
Klassens, Inc., 53 F.3d 1260 (Fed. Cir.), cert. denied, 516 U.S.
929
(1995) (furniture); Ashley Furniture Indus., Inc. v. San giacomo NA.,
Ltd., 187 F.3d 363 (4th Cir. 1999) (bedroom furniture); Knitwaves,
Inc. v. Lollytogs, Ltd., 71 F.3d 996 (2d Cir. 1995) (sweaters);
and
Stuart Hall Co. v. Ampad Corp., 51 F.3d 780 (8th Cir. 1995)
(notebooks).





18 19


from trade dress trespass. Acquired distinctiveness
necessarily requires that the product in question be used in
commerce as a source identifier, otherwise, "the trade dress
would not 'cause confusion. .. as to the origin, sponsorship, or
approval of [the] goods,' as [ 43(a)] requires." Wal-Mart,
120 5. Ct. at 1343. Acquired distinctiveness or secondary
meaning typically arises after a long period of exclusive use
in the marketplace, a substantial amount of investment in
advertising, sale, and promotion of the product, and/or a
resulting build up of goodwill and product quality
reputation among consumers. Thomas & Betts, 138 F.3d
at 291.

Conversely, if the trade dress is ordinary or
commonplace, it weighs against a finding of secondary
meaning. See Mana Prods., 65 F.3d at 1069-70. In
addition, industry custom, widespread third-party use, long
disuse, close resemblance to something in the public
domain, or utility can all cut against the likelihood that
consumers will associate a product design with a single
source.'4

In the present case, secondary meaning in the MDI
"WindMaster" traffic-type sign stands has been
established by the significant advertising and sales of the
sign stands, the sole and exclusive use of the sign stands
for over twenty years, and
the build up of an excellent reputation and recognition of
the appearance in the marketplace. The last factor is
shown in part by the admission of two of TrafFix's
principal witnesses who testified that they recognized the
"WindMaster" sign stands solely by the "look" of the Sign
stands. (J.A. 132-137, 138-143.) Prior to achieving
acquired distinctiveness, however, third parties -- including
TrafFix -- were free to use MDI's trade dress and thereby
defeat MDI's rights.'5

b. Trade Dress Must Be Nonfunctional

The requirement that trade dress be nonfunctional
further protects the patent policies from encroachment
by trade dress rights. The functionality doctrine protects against
any anti-competitive consequences or disadvantages of
enforcing trade dress rights under all circumstances -- even
when the trade dress in question was disclosed in an earlier
patent. The functionality doctrine is an independent
means by which trade dress protection can be denied. If
the asserted trade dress is deemed "functional", it cannot
be protected regardless of evidence of actual consumer
identification of source or consumer confusion caused by
an imitator. Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94
F.3d 376(7th Cir. 1996); see also Qualitex, 514 U.S. at
169; and Two Pesos, 505 U.S. at 775.




14. See Mana Prods., 65 F.3d at 1069-70 ("[W]here it
is the custom in a particular industry . . . trade dress done in
that style is likely to be generic"); EFS Mktg., Inc. v. Russ
Berrie & Co., 76 F.3d 487, 489-91 (2d Cir. 1995)
(numerous other producers of the same product made it
unlikely "that they cannot be said to identify [plaintiff] as
their particular source"); L. & J.G. Stickley, inc. v. Canal Dover
Furniture Co., 79 F.3d 258, 264-65 (2d Cir. 1996) (long
disuse created "a high hurdle to a Lanham Act plaintiff');
Publications Int'l Ltd. v. Landoll, Inc., 164 F.3d 337 (7th
Cir. 1998) (Utilitarian "features are by definition those
likely to be shared by different producers of the same
product and therefore are unlikely to identify a particular
producer.")
A product feature is functional 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. 10). Quite
simply, the functionality doctrine serves to assure that
competition will not be stifled by the

15. It would have been relatively easy to make an
identical looking sign stand to MDI's traffic-type sign
stand without infringing MDI's patents by eliminating
initial compression from the coil springs or eliminating
the geometric relationship defined by the claims.





20 21


exhaustion of a limited number of trade dresses." Two Pesos,
505 U.S. at 775. Thus, if constraints limit the available
alternatives to the extent that others need the same trade
dress in order to fairly compete, the product configuration
or feature at issue is functional. Id. On the other hand, if
the number of alternatives is sufficient that appropriation
of one poses no great threat to competition, the trade
dress is nonfunctional.

In Qualitex, the functionality doctrine was held to be
sufficient to prevent a mark from being used anti-
competitively.
The "available alternatives test" for functionality as set
forth in
Qualitex has also been endorsed by Congress'6 and the
Restatement as the definitive inquiry:

[A] design is "functional".. . if the design affords
benefits in manufacturing, marketing, or use of the
goods or services with which the design is used, apart
from any benefits attributable to the design's
significance as an indication of source, that are
important to effective competition by others and that
are not practically available through the use of alternative
designs.

Restatement (Third) Of Unfair Competition 17
comment b (1995) (emphasis added).

The same test has been applied by several Circuit
Courts of Appeals. See, e.g., Fun-Damental Too Ltd. v. Gemmy
Indus. Corp., ill F.3d 993, 1002 (2d Cir. 1997) (design
was nonfunctional based on evidence of two alternative
designs, viable alternatives to certain features, and failure
to show that protection of trade dress would put defendant
at "significant competitive disadvantage"); Knitwaves, 71
F.3d at 1006 (protecting plaintiff's fall motif for sweaters
would not

16. "A functional feature of trade dress is one that is
commonly used by similar businesses, protection of which would
hinder competition." H.R. Rep. No. 250, 106th Cong., 1st Sess.
(1999).
"significantly restrict the number of designs available" to
competitors); Insty*B it, Inc. v. Poly-Tech
Indus., 95 F.3d 663, 673-74 (8th Cir. 1996), cert.
denied, 519 U.S. 1151 (1997) (although some features
of plaintiff's trade dress may have been functional, summary
judgment for defendant denied, where plaintiff "presented
evidence that competing manufacturers have adopted different
design features for their quick-change products"); Tools USA
and Equip. Co. v. Champ Frame Straightening Equip., Inc.,
87 F.3d 654, 659 (4th Cir. 1996) (trade dress of catalog
was nonfunctional, although information in it was
functional, due to availability of alternative formats).

Defining legal functionality in terms of available
alternatives provides an unambiguous test that addresses
TrafFix's concerns in this case. It also makes the presence
or absence of a patent, at best, only one factor in a
functionality inquiry. If there is only one way for a product
feature to induce a particular useful result, or create a
particular ornamental impression, the alternatives test
would render that embodiment unprotectable as trade dress.
However, if a product feature has numerous alternatives (actual
or theoretical) that serve the same useful purpose or provide the
desired ornamental impression, then allowing the patentee to
appropriate one design would not hinder competition in
the relevant product market. To the contrary, it would
prevent others from depriving the trade dress owner of its
investment and goodwill, and denying the public of a
distinctive source identifier necessary for informed and
effective competition.

TrafFix has at times confused the "utility" required to
secure a patent with the functionality doctrine (i.e.,legal
functionality) pertaining to trade dress rights. These two
concepts are significantly different and should not be
confused. Every product has function or utility -- whether
patent protection and/or trade dress protection is being
secured. If a product did not have utility, then there would
be no reason or incentive for the manufacturer to make it,
or for the purchaser to buy and use it. However, the





22 23


doctrine of legal functionality is completely different. It
relates to the need of competitors to copy the product
design in order to compete in the marketplace.'7

c. The Standards For Trade Dress
Infringement Further Protect Against
Patent Policy Trespass

Although the requirements for distinctiveness and
nonfunctionality are sufficient to avoid conflict with
patent policy, the integrity of the patent system is further
shielded by the differing standards for proving infringement
under the patent and trade dress laws. Liability for trade
dress infringement requires a demonstration that the
defendant's conduct creates a "likelihood of confusion"
among the relevant purchasing public. 15 U.S.C. 1
125(a)(1)(A). Mere copying or similarity between product
configurations is not enough. In addition to similarity, the
circumstances in which the trade dress is actually used in
the marketplace must be sufficiently similar to create a
likelihood of confusion. This requirement is embodied in
the various multi-factor tests of the Courts of Appeal. For
example, the Sixth Circuit has identified eight factors as
defining the scope of the likelihood of confusion inquiry:

1. The strength of the plaintiff's mark;

2. the relatedness of the goods;

3. the similarity of the marks;


17. The amicus brief filed on behalf of the
United States asks this Court to rule on the functionality
issue. However, legal functionality depends on numerous
factual questions which must be decided by the trier of fact.
Vuitton et Fils SA. v. I. Young Enters, Inc., 644 F.2d 769 (9th
Cir. 1981); In re Morton-Norwich Prods., Inc.,
671 F.2d 1332 (C.C.P.A. 1982); In re Am. Nat'l Can Co., 41
U.S.P.Q. 2d 1841 (T.T.A.B. 1997). An affirmance of the
Sixth Circuit decision in this case would remand the case to
the District Court for, inter alia, precisely such an analysis.
4. evidence of actual confusion;

5. marketing channels used;

6. likely degree of purchaser care;

7. defendant's intent in selecting the mark; and

8. the likelihood of expansion of the product lines.

Frisch 's Restaurants, Inc. v. Elby 's Big
Boy, 670 F.2d 642, 648 (6th Cir. 1982). Although none of
these factors is determinative, the courts weigh the
evidence produced as to each one in order to reach a
conclusion on the likelihood of confusion issue.

Moreover, for trade dress infringement, the focus is
not on individual trade dress elements, "but rather whether
the two trade dresses' create the same general overall
impression." Bristol-Meyers Squibb Co. v. McNeilPP.C., Inc.,
973 E2d 1033, 1046 (2d Cir. 1992). Because each of the
above factors (as well as others used by the various
Circuits) influences the analysis of trade dress
infringement, "[s]imilarity in overall appearance alone
cannot establish confusion as to source as a matter of law."
L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1130-
31 (Fed. Cir.), cert. denied, 510 U.S. 908 (l993).'~

In contrast, an infringement analysis under the patent
law demands a focused examination of the allegedly
infringing product in light of the patent claims. Markman v.
Westview Instruments, Inc., 517 U.S. 370,373 (1996). The
patent owner's commercial embodiment of the patented
invention is irrelevant

18. "There is perhaps no standard in all of the law that is so
fact dependent and whose application so inevitably proceeds on a
case-bycase basis, as the standard of likelihood of confusion in
trademark law." Dratler, Intellectual Property Law: Commercial,
Creative, and Industrial Property, l0.0l[2] (1991).





24
25
to the infringement analysis. "[The Federal Circuit] has
repeatedly emphasized that an infringement analysis
compares the accused product with the patent claims, not
an embodiment of the claims." Atlantic Thermoplastics Co. v.
Faytex Corp., 970 F.2d 834, 846 (Fed. Cir. 1992).

3. Patent Remedies and Trade Dress
Remedies are Substantially Different

The substantial differences between the remedy
standards
for patent and trade dress infringement help defeat
TrafFix's
assertion that trade dress protection is the equivalent
of a perpetual patent. If a product infringes a patent claim,
complete injunctive relief is the standard remedy. See
WL. Gore
& Assoc., Inc. v. Garlock, Inc., 842 F.2d 1275,
1281 (Fed. Cir.
1988) ("[A]n injunction should issue once infringement
has been
established unless there is a sufficient reason for denying
it.");
35 U.S.C. 271(a), 283. Moreover, a product either
infringes
a patent or it does not, there is no middle ground.

If the same product feature constitutes protectable
trade dress, however, there are numerous circumstances
under which others may use the trade dress without fear of
infringement liability, due to the vagaries of the likelihood
of confusion analysis. For example, any change in
circumstance that eliminates the likelihood of confusion,
abolishes the infringement. Courts can remedy trade dress
infringement by ordering a change in one or more of those
circumstances. Indeed, in appropriate cases, courts have required
the use of disclaimers, house-marks or trade names, changes
in product appearance, or corrective advertising to curtail the
likelihood of confusion. See Frisch 's, 670 F.2d at 645; Abbott
Labs. v. Mead Johnson &

19. Disclaimers and labeling, however, may not be
sufficient. See Bristol-Myers, 973 F.2d at 1047. ("We do not
mean to intimate that the distinctive elements of any trade dress
may be freely appropriated as long as the junior user clearly
identifies the source of the goods.")
Co., 971 F.2d 6, 22 (7th Cir. 1992). None of these remedies
approach the equivalent of an injunctive patent remedy.
Moreover, failing to provide a remedy -- by seeking comfort
in patent policy -- when distinctive nonfunctional trade dress has
been infringed, undermines the policy of trade dress
protection at the cost of consumer confusion and deception.20

In this case, preventing TrafFix from selling its currently-
fashioned "WindBuster" sign stand will not prevent TrafFix from
competing and being successful in the marketplace. Numerous
structural changes could be made to avoid infringing upon MDI's
trade dress rights. Everyone -- especially the public -- would be the
benefactors if such changes were made.

E. It Is Improper To Equate Trademarks With
"Monopolies"

Labeling MDI's efforts to protect its trade dress as an
improper attempt to extend its patent "monopoly" in violation of
the Constitutional mandate reveals bias, not analysis. Patent grants
are often deemed "monopolies," even though they are not in the
economic sense. A monopoly exists when a firm in a defined
market is able to control price and output for a specific product or
service. When used pejoratively, "[t]he term 'monopoly' connotes
the giving of an exclusive privilege for

20. As Professor Dratler put it,

the narrow isthmus of remedies, not the broad plain of policy,
is the ground on which trade dress battles should be
fought. There is no need for sweeping modifications to the
doctrine of distinctiveness, the doctrine of functionality, or
the standard for trademark infringement, in order to
accommodate trade dress protection for product
configurations.

Oratler, Trade Dress Protection For Product Configurations:
Is There A Conflict With Patent Policy?, 24 AIPLA Q. J. 427, 581
(1996).





26 27


buying, selling, working, or using something which the
public once freely enjoyed prior to the grant." United
States v. Dubilier Container Corp., 289 U.S. 178, 186
(1933).21 For most patented inventions, however, there
exist a range of substitutes which prevent the patent owner
from exerting exclusive power to control prices or output in
any market. In this instance, there are at least six competitors
to MDI's "WindMaster" sign stands. (Pet. App. 86a-87a;
L38-39.) Since competitors do not need access to MDI's
asserted distinctive features to compete, recognizing MDI's trade
dress rights will not confer any monopoly power -- odious or
otherwise. Moreover, equating MDI's trade dress rights
with an odious monopoly, implies an adverse value
judgment as to the worth of trademarks in general.

The rights which flow from trademarks are useful and
help both consumers and trademark owners. "In truth, a trade-mark
confers no monopoly whatever in a proper sense, but is
merely a convenient means for facilitating the protection
of one's goodwill in trade by placing a distinguishing mark
or symbol
-- a commercial signature -- upon the merchandise or package in
which it is sold." United Drug Co. v. Theo. Rectanus Co., 248
U.S. 90, 98 (1918). (Pet. Brf. at 30, "unlike patent law --'no
monopoly is involved in trademark protection' ".)

II. THE "RIGHT TO COPY" SUBJECT MATTER
DISCLOSED IN AN EXPIRED PATENT IS NOT
ABSOLUTE

The "right to copy" is a general rule subject to many
exceptions. It is ajudicially created doctrine without
expression in the U.S. Constitution or the Patent Act. It is a
right drawn by negative implication from the "limited
Times" provision of the

21. Such highly objectionable "odious monopolies"
were an
Elizabethan prerogative subject to exploitive abuse in the
hands of
corrupt courtiers. Waltersheid, The Early Evolution of the United
States Patent Law: Antecedents (Part 2), 76 J.P.T.O.S., 849, 863-
65
(1994).
Patent Clause. In fact, there is "no provision of patent
law, statutory or otherwise, that guarantees to anyone an
absolute tight to copy the subject matter of an expired patent."
Midwest Indus., 175 F.3d at 1362 (quoting, In re
Mogen David Wine Corp., 328 F.2d 925, 930 (C.C.P.A.
1964)). The right to copy the subject matter of an expired
utility patent has always yielded to other equally
compelling policies, such as the unfair competition laws or
state police power interests. 22

A. The Supreme Court Has Acknowledged That The
"Right To Copy" Has Many Exceptions

In several older decisions, the Supreme Court used
broad language which TrafFix has interpreted as
completely foreclosing trademark rights in product
features that have been disclosed in a patent. See Singer
Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185
(1896); Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 119-
22(1938); Scott Paper Co. v. MarcalusMfg. Co.,
326 U.S. 249, 256 (1945); Sears, Roebuck & Co. v. St~ffel
Co., 376 U.S. 225 (1964), and Compco, 376 U.S. 234. These
cases, however, have not been read as expansively as TrafFix would
like this Court to do -- and for good reason. None of them
recognize an absolute right to copy. In fact, these cases
recognize that other forms of intellectual property
protection (e.g. trademarks and trade secret protection) -- as
well as unfair competition -- are proper and can co-exist with the
patent law.

Specifically, in Singer, even though the term "Singer"
was held to be generic, the Court required that the defendant
include "a plain and unequivocal indication of the origin of
manufacture"

22. For example, in Patterson, the Supreme Court held
that the "right to copy" was subordinate to state police
powers. 97 U.S. at 505. Other exceptions to the general right to
copy include a "blocking patent on the invention" or "state law. . .
prohibiting the production of a patented invention (such
as a radar detector or a gambling device)." Andelman,
Thomas & Betts Corp v. Panduit Corp., 14 Berkeley Tech.
L.J., 229, 239 (1999).





28 29


on its sewing machines to prevent consumer confusion as
to source. 163 U.S. at 202-04. Similarly, the Court in
Kellogg, concluded that, although "the name 'Shredded Wheat', as
well as the product, the process and the machinery
employed in making the product, had been dedicated to
the public", Kellogg nevertheless had an obligation "to
identify its product lest it be mistaken for that of the plaintiff."
305 U.S. at 117-18, 120. Likewise, in Sears, Justice Black
conceded that a State "may, in appropriate circumstances,
require that goods... be labeled or that other precautionary steps
be taken to prevent customers from being misled as to the source."
376 U.S. at 232. In Compco, the Court held that the "right to
copy" did not extend to designs "entitled to a design patent or
otherfederal statutory protection." 376 U.S. at 248 (emphasis
added). And in Scott Paper, non-descriptive trademarks were
inferentially indicated as being protectable. 326 U.S. at 256.

Moreover, in more recent cases, such as Bonito
Boats, this Court has specifically indicated that these
older cases do not have a broad preclusive effect,
particularly on federal trade dress protection. The Bonito
Boats Court explained, 489 U.S. at 154:

[W]hile Sears speaks in absolutest terms, its
conclusion that the States may place some
conditions on the use of trade dress indicates an
implicit recognition that all state regulation of
potentially patentable but unpatented subject matter
is not ipso facto preempted by the federal patent laws.

489 U.S. at 154. Similarly, trade dress rights do not
impermissibly interfere with the federal patent scheme because
they have traditionally been "limited to protection against
copying of non-functional aspects of consumer products which
have acquired secondary meaning such that they operate as a
designation of source." Id. at 158.
The right to copy thus exists only for items fully in the
public domain, i.e., not protected by any other intellectual
property rights or prohibited by other compelling
interests. Trademark policy, however, has no prohibition against
taking things from the public domain. See, e.g., The Trade-Mark
Cases, 100 U.S. at 94 ("The trade-mark may be, and generally is,
the adoption of something already in existence as the
distinctive symbol of the party using it."). The very existence of
acknowledged trade dress rights establishes that public domain
material may be appropriated as a protectable source
identifier. To say that MDI's trade dress is unprotectable
because it is in the public domain is inapposite to the realities of
trademark and trade dress law.

B. Even If The Supreme Court Cases Can Be Read
Broadly, They Are Factually Distinguishable

The, Bonito Boats, Sears, Compco, Singer,
Kellogg, and Scott Paper cases are all distinguishable
from the case at bar. In Bonito Boats, Sears, and
Compco, the Supreme Court examined the relationship between
federal patent law and a respective state unfair competition
law -- not between federal patent law and federal trademark law. As
such, the holdings of these cases are not determinative of
the present issue. Bonito Boats is further distinguishable as
the state statute at issue in that case granted patent-like rights
"far exceeding any right available under the Lanham Act."
Thomas & Betts, 138 F.3d at 286.

The Singer and Kellogg cases likewise have no
limiting effect on the scope of federal trade dress law.
Unlike the present case, in Singer, the "right to make
the machine in the form in which it was constructed during
the patent" applied because the shape of the machines
were dictated by the various patents covering the machine,
i.e., the machines were legally functional or generic. Similarly, in
Kellogg the Court found that the shape of the shredded wheat
biscuit in which protectable trade dress





30 31


was asserted, was dictated by the patented machines used to
produce it. Thus, the shape was legally functional and
unprotectable. Conversely, the configuration of MDI's
"WindMaster" sign stand is not dictated by the patents as
there are a variety of other competitive alternative sign
stands on the market. Thus, the principles of Singer and
Kellogg do not support TrafFix's absolute right to copy rule.

Additionally, Scott is distinguishable as the case was
decided on the issue of assignor estoppel, and the Court's
discussion of trade dress law therein is merely dicta.
Thomas &
Betts, 138 F.3d at 287.

III. THE EXISTENCE OF AN EXPIRED UTILITY
PATENT DOES NOT FORECLOSE TRADE DRESS
RIGHTS IN A PRODUCT DISCLOSED OR CLAIMED
THEREIN

A. The Legal Authorities Do Not Support TrafFix's
Position

The weight of legal authority and the intent of
Congress both strongly oppose TrafFix's positions and
arguments. Over the last five years, five Courts of Appeal
have had the occasion to address the interaction of trade dress
protection and patent law principles, particularly where an expired
utility patent was involved. The Fifth, Sixth, Seventh, and Federal
Circuits have all held that the existence of a utility patent does not
foreclose trade dress protection in features disclosed
therein. See Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d
246, 256 (5th Cir. 1997), cert. denied, 523 U.S. 1118
(1998). ("[T]he fact that the American Classic Mixmaster
incorporates functional features named in utility patents does not
compel the conclusion that the product configuration is
legally functional"); Thomas & Betts, 138 F.3d at 288
(reversing the district court's misstatement of the law and
holding that "there is no per se prohibition against features
disclosed in a patent
receiving trademark protection after the patent has expired");
Midwest Indus., 175 F.3d at 1362. ("[T]he fact that a
patent has been acquired does not convert what otherwise would
have been protected trade dress into nonprotected matter");
and Marketing Displays, Inc. v. Traf Fix Devices, Inc., 200 F.3d
929 (6th Cir. 1999) ("So long as it is possible to protect the
appearance without protecting the design, a per se rule is not
necessary.")

Only the Tenth Circuit, in the first opinion addressing
the issue, reached an opposite result. Vornado Air
Circulation Sys., Inc. v. Duracraft Corp., 58
F.3d 1498 (10th Cir. 1995), cert. denied, 516 U.S.
1067 (1996). Even Vornado, however, does not support the
broad absolute rule sought by TrafFix. Only subject matter which
comprised "part of a claim" and a "significant inventive aspect" of
the expired patent was prohibited from trade dress protection. Id.
at 1510. In so holding, it is submitted that the Vomado Court
did not recognize that distinctive, nonfunctional product
features can be separated from the utilitarian features
which are the proper subject of a patent. Despite noting
that "availability of equally satisfactory alternatives for a
particular feature" is "often the fulcrum on which Lanham
Act functionality analysis turns", the Vornado Court
ignored any functionality analysis in reaching its result.
Id. at 1507. This is unfortunate for the result may have been
justified if the Court had found a lack of competitive alternatives
to the spiral grill design at issue.

The decisions by the various Circuit Courts of Appeal
upholding trade dress rights were buttressed by Congress in
1999 when it amended the Federal Lanham Act to
acknowledge trade dress rights for nonfunctional aspects of
a product configuration. is U.S.C. l125(a)(3):

Section five amends section 43(a) of the Lanham Act to
provide that in an action for trade dress infringement,
where the matter sought to be protected is not
registered with the U.S. Patent and Trademark Office,
the plaintiff has the burden





32 33


of proving that the trade dress is not functional. A functional
feature of trade dress is one that is commonly used by
similar business, protection of which would hinder
competition. If a mark is registered, there is a
presumption that it is not functional. However, for
plaintiffs of unregistered marks to be given the same
presumption would not promote fair competition or
registration. For example, the owner of a patent that is
about to expire may try to register it as a trademark, which
receives protection as long as the owner uses it in
commerce. This amendment seeks to ensure that marks that
are functional are not registered. Functional marks should
be dealt with under the patent law. Therefore, it should be
incumbent on the plaintiff suing for infringement of an
unregistered mark to prove that the mark is not functional.

H.R. Rep. No. 250, 106th Cong., 1~' Sess (1999)
(emphasis added). With this statutory amendment,
Congress gave specific credence to trade dress protection for
nonfunctional product features -- regardless of the existence of
a patent.

In this case, MDI is not seeking trade dress
protection for the product features which were the subject
matter of its expired patents, but only for the distinctive
nonfunctional aspects of its commercial traffic-type sign
stand. The public is not being deprived of the right to
copy, except to the extent that it must respect "other federal
statutory protection." Compco, 376 U.S. at 248.


B. The Existence Of A Patent Has Only Limited
Relevance To The Trade Dress Inquiry

1. The Functionality Doctrine Is The Priniar
Determinative Test

The existence of a patent does not convert what
otherwise would qualify as protectable trade dress into
nonprotectable subject matter. So long as it is possible -- as
here -- to protect the appearance without unduly hindering
competition, then a per se rule is not necessary. In
fact, the existence of a patent has limited relevance to
the trade dress analysis under roost circumstances.

Although trade dress rights must also be distinctive
and infringed to be protected, the legal functionality test
is the primary factor that ensures that trade dress
protection in product configurations will not unsettle the
foundation of our patent system as surmised by TrafFix.
This Court has unanimously recognized that the ultimate
test of legal functionality is whether the recognition of
trademark rights would significantly hinder competition."
Qua litex, 514 U.S. at 170. Therefore, the question is
one of need, namely whether competitors are able to
effectively compete in the relevant market without need
of the product features defining the asserted trade dress. If
not, then the trade dress is deemed legally functional and
therefore unavailable for protection.

In most cases, there are a wide -- if not infinite --
variety of ways to embody a claimed invention of a
patent. Competitors are thus not limited to any one
particular configuration. In such cases, the existence of a
patent has little, if any, relevance to the trade dress
inquiry. Protecting one competitor's distinctive,
nonfunctional embodiment of the patented device does
not deprive the public of its ability to use and build upon
the teachings of the patent. Only when the product
configuration is completely dictated by the claimed
invention would trade dress





r
34
35
rights be foreclosed. In such cases, the trade dress doctrine
of legal functionality would equate the asserted trade dress
with patentable utility. The patent itself may have some
relevance in such instances to identify those features
where design is dictated by the utilitarian goals of the
claimed invention.

In this case, however, there is strong evidence that
the trade dress of the "WindMaster" traffic-type sign
stands is not legally functional. As set forth in the
materials submitted to both the Trial Court and Court of
Appeals below, and as admitted by TrafFix's President,
Jack Kulp, all of the six other major companies in the
marketplace which make spring-mounted sign stands
compete effectively in the marketplace against the MDI
"WindMaster" sign stands and the TrafFix "WindBuster"
sign stands. (Pet. App. 86a-87a; L38-39.) The competing
sign stands of these companies each have a different
appearance, yet perform equivalently to the MDI
"WindMaster" sign stands.

There also was ample evidence by persons skilled in
the art that a substantial number of alternative designs are
possible, all of which would be equivalent in operation and
performance. (J.A. 101; Pet. App. 19a.) The existence of
actual or potential alternative designs that work equally
well strongly suggests that a particular design is not needed by
competitors to effectively compete on the merits. In re
Honeywell, Inc., 8 U.S.P.Q. 2d 1600 (T.T.A.B. 1988)
(round thermostat cover held nonfunctional).

A review of the legislative history of Pub. L. No. 106-43,
113 Stat. 218, quoted above indicates that Congress recognizes
that trade dress rights can harmoniously exist in the
subject matter of a patent. With the new section 43(a)(3),
together with the legislative history, Congress clearly
expressed that the


functionality doctrine is determinative and resolves any perceived
conflict between the patent and trademark laws.

C. TrafFix Is Unclear As To What Is "Covered" By
The Patent

TrafFix does not specifically define what is
supposedly dedicated to the public when a patent expires.
At different times, TrafFix asserts that anything
"covered" by the patent (Pet. Brief 38), anything which is
the "subject" or "subject matter" of the patent (Pet. Brief 10-
12), or anything which is "described" in the patent (Pet.
Brief 43) is ipso facto unprotectable trade dress and
goes into the public domain. This loose terminology is
unfortunate because the differences between the claims on the
one hand and the written specification and drawings on
the other hand is significant.

1. Unclaimed Subject Matter Was Never Part
of the Patent Grant

TrafFix's proposed absolute rule would preclude from trade
dress protection any material that is disclosed in any way in
an expired utility patent -- whether a necessary part of the
disclosed invention or not. The weight of reason and
authority does not dictate such a rule. A patent protects the
invention defined by the claims, it affords no protection to features
that are merely disclosed. Dawson Chemical, 448 U.S. at
221. Thus, recognizing trade dress rights in disclosed, but
unclaimed, subject matter will not undermine the patent bargain
since inventors neither expect nor receive the right to
exclude others from using such matter. In other words, the
public does not have to wait until the patent expires to practice its
use.

Moreover, trademark/trade dress policy has no
prohibition against taking things from the public domain
(words, terms, symbols, etc.). See, e.g., The Trade-Mark Cases,
100 U.S. at 94. It is permissible so long as the trademark serves
as a





36

unique source identifier. If the trademark is generic, however, then
it cannot be exclusively appropriated since there is a competitive
need to use the term to describe the product. In the same vein,
legally functional trade dress cannot be protected due to a
competitive need for the product feature.

In the case at bar, MDI's claimed trade dress in not
shown in the drawings of either the '696 or '482 patents, nor
described in either of the two specifications (compare Li with
L41-50). Thus, the public was free to make and/or use
MDI's traffic-type trade dress at any time during the pendency of
its patents -- prior to its trade dress acquiring secondary
meaning -- so long as it did not infringe the claims.23

2. Analyzing Claimed Subject Matter Results
In a Patent-Like Case

"The patent claims defines the scope of the patent
grant." Markman, 517 U.S. at 373. Under TrafFix's test, in
every trade dress action, the alleged infringer would seek to
argue that the asserted trade dress -- or portions thereof-- is
covered by one or more expired utility patents. Such an
analysis could turn each case into a lengthy, complicated,
and expensive patent-type proceeding, which would at
least require a Markman-type hearing.24

Following a Markman hearing, the properly construed
claims would then need to be applied to the product trade dress

23. A non-infringing sign stand could have had the same
appearance as MDI's "WindMaster" traffic-type sign stand, but not
include initial compression between the coils of the spring as
required by the '696 patent claims, or meet the geometric
relationship required by the '482 patent claims. (L41-50; J.A.
452-53.)

24. Patent claim construction is an issue of law to be
determined by the Court. Markman, 517 U.S. at 384. In patent
infringement suits, the district court typically holds a separate
Markman hearing to address the claim construction issue.
37

in the same manner as a patent infringement analysis. Id. This
second step, however, is a question of fact requiring ajury
trial unless waived. Id. Also, if the product trade dress
did not literally fall within the scope of the claims, it would have
to be determined whether it came within the scope of the claims
under the Doctrine of Equivalents -- which also is a fact
question. Warner-Jenkinson Co. v. Hilton Davis
Chemical Co., 520 U.S. 17 (1997). Thus, TrafFix's position, if
adopted, not only would create additional litigation expense,
delays and complexity, but would raise constitutional
issues with respect to the right to a jury trial. It would also
require the Circuit Courts of Appeal to review the district courts'
claim construction thereby undermining the Federal Circuit's
ability to maintain uniformity in patent law precedent.

In this case, MDI spent many years and considerable
resources before receiving an affirmative determination
that the Winn-Proof sign stand infringed the MDI patent
claims under the Doctrine of Equivalents. See Winn-Proof,
697 F.2d at 1321. If no such ruling existed, the parties
herein would be required to endure a similar process to
determine if the trade dress of the "WindMaster" traffic-type
sign stand fell within the scope of the expired patent claims.
Only after such a resolution could the remainder of the trade dress
issues go forward, and the issues of functionality, secondary
meaning, and likelihood of confusion be resolved.

IV. A PER SE RULE IS UNWARRANTED AND
UNJUSTIFIED

A. A Per Se Rule Is Improper

TrafFix urges this Court to adopt a rule essentially
declaring that the subject matter of an expired patent is per se
functional and therefore not the proper subject of trade dress
protection. Such a position is legally erroneous for a variety of
reasons, as indicated above, and ignores the purposes and policies
behind





38 39
these distinct intellectual property rights. Such a rule would force
manufacturers to select between either patent rights or trade dress
rights -- which would run counter to the policy of fostering
competition that underlies each body of law. Moreover, such a
rule would create the nonsensical position that trade dress
protection could be available for a product that was never
disclosed in a utility patent -- although it met the statutory
requirements for patentability -- but not for a product that was
actually disclosed in a utility patent.25

B. The Consequences Of A Per Se Rule Would Be
Harmful

TrafFix's proposed rule of law would upset the
harmonious balance struck between the patent laws and
unfair competition laws. If everyone suddenly had an
unfettered right to copy anything that was the "subject
of' an expired utility patent, many product shapes that
are without question deserving of protection would no
longer qualify for trade dress protection. For almost every famous
product shape that the public has come to rely upon as a
shorthand source identifier, there likely exists a patent
disclosing or depicting the trade dress. For example, the
famous and distinctive shape of the Coca-Cola bottle, the
Volkswagon Beetle, and the Porsche 911 automobile, just
to name a few, are all disclosed in expired utility
patents.26 The Coca-Cola patent, for example, is directed
toward a method of securing a label to

25. Such a ruling also would be contrary to the positions of
the International Trademark Association (INTA) and the American
Intellectual Property Law Association (AIPLA) both of which
represent the great majority of intellectual property practitioners in
the United States. Even the Justice Department in its amicus brief
filed in support of Petitioner does not advocate for a per se rule.
See amicus briefs of INTA, AIPLA and the United States.

26. U.S. Patent No 6,048,423 (Coke bottle); U.S. Patent
No.
3,861,281 (VW Beetle); U.S. Patent Nos. 3,869,166 and
4,801,173 (Porsche 911). (Resp. L. App. Tabs 5-8.)
and claims the "bulbous sidewall region" of the bottle as a
required element of the invention. Because the distinctive
bottle is "covered by", the "subject matter of' and/or
"disclosed in" the patent, according to TrafFix, it cannot
qualify as protectable trade dress. Thus, Pepsi Cola or an
upstart cola company would be free to market its product in a
bottle of the same shape. The resulting consumer confusion
and deceit could be substantial. In addition, the reputation
and goodwill that Coca-Cola built up for almost 100 years
in the unique shape of its bottle would be lost. The resulting
price to be paid by the consuming public and the producers
of America's most famous brands is too great, and
destroys the foundation upon which Lanham Act is based
-- namely, promoting competition by providing consumers
the means to identify the source of goods and services in
the marketplace. A further consequence of TrafFix's
proposed rule would allow competitors to draft patents
disclosing or depicting their rival's trade dress and thereby defeat
the rival's trade dress rights.

Also, as a practical matter, TrafFix's proposed rule
of law would turn every trade dress case into a patent case
by encouraging the accused infringer to search for a
patent or patents disclosing the asserted trade dress as an after-
the-fact justification for possibly deliberate trade dress
infringement. The universe of inventions available in
defense includes any of the more than six million issued
patents. Without further elaboration of the resulting
litigation burden, the consequences are obvious: TrafFix's
clear, predictable rule would move far beyond the "litigation
petri dish" and act as a plague on the courts.27


27. In view of the legal requirements necessary to support a
trade dress claim, TrafFix's assertion that anything less than a per
se absolute rule would lead to a "litigation petri dish" (Pet. Br.
42) and stifle competition is unfounded. To the contrary, as
explained herein, a per se rule would have much more serious and
adverse effects on competition, producers and the public.





40

If TrafFix's position were adopted, the patent
system would suffer significantly, too. The completeness
of patent disclosures would be limited out of concern that
the disclosure may later prevent enforcement of any
trade dress rights in the same type of product which is the
subject of the patent. This would discourage the disclosure
of alternative embodiments and possibly limit the "best
mode" discussion as well. Limiting the description of the
invention might also jeopardize the validity of the patent
in view of 35 U.S.C. 112 which requires full and
complete disclosure. (Pet. Br. App. 6a.) As a result, the
breadth of patents and, hence, their value may be severely
reduced. A per se rule would, thus, similarly be contrary to
the fundamental policies of our patent system.

The calamity invited by examining the relevance of
a patent vis-~-vis the asserted trade dress is avoided by
resort to the simple alternatives test embodied in the
functionality doctrine. If a design is necessary for
effective competition in the relevant market, allowing
one producer to appropriate it for their sole use would
suggest an end run around the principles of the patent system.
Such situations can be readily addressed by denying trade dress
protection for such designs under the functionality
doctrine or appropriately tailoring a remedy for its use by
others. Under a competitive alternatives test of
functionality, the existence of a patent per se is
irrelevant; and the parade of horribles invited by its presence,
is avoided.

C. A Per Se Rule Would Create Other Issues

A broad per se rule declaring that the subject matter of
any expired patent is incapable of trade dress protection because
the public has an absolute right to copy such subject matter
further raises several significant issues:

1. To what extent must the scope of the patent be
commensurate with the asserted trade dress for the per se
rule to apply? Does all of the asserted trade dress have to be
disclosed


41

or claimed, or only most of the features, or only the
dominant features? Also, could multiple patents be
combined to show that all the elements of the
asserted trade dress are free for all to copy?
Ironically, virtually all trade dress comes from the
public domain. Therefore, all trade dress rights
could likely be defeated by combining select
portions of the "public domain" defined by the
expired patent universe.

2. Why should the holding be limited to
patents of the party asserting the trade dress? What
if the trade dress owner acquired the patents from
someone else, or sold the key patent to another prior to
asserting the trade dress rights? Should these facts make
a difference?

3. What rules of law govern the analysis of what is
included in the "subject matter" of the expired patent?
What standards apply for infringement under the
Doctrine of Equivalents? What if the patent
claims are "means-plus-function" or "step-plus-
function" claims? How are method and process
claims to be handled?

4. Why should the policy be limited to expired
patents? All disclosed but unclaimed subject matter
stands in the same position as anything else in the
public domain.

5. Would such a rule eradicate trade dress
rights which were established prior to the patent
being filed?28 Patents are often directed to
improvements of established products, and
"improvement"-type patents typically show and describe
the existing products as the environment for the
new invention.

6. Can producers file patent applications
disclosing their competitor's trade dress to defeat such
rights?

7. Should utility patents be treated differently
from design patents which protect only the
aesthetic appearance of a product?

28. This is precisely what could occur in the Coca-
Cola example cited supra.





A





42

In sum, an adoption of TrafFix's position could create numerous real and unintended consequences, including many which would be extremely
harmful to consumers and competition.

CONCLUSION

The judgment below should be affirmed. Federal trade dress protection can extend to distinctive, nonfunctional product configurations, regardless
of whether they are disclosed or claimed in expired utility patents.

Respectfully submitted,


LISA A. SARKISIAN
MARKETING DISPLAYS, INC.
38271 W. Twelve Mile Road
Farmington Hills, MI 4833 1-
3041
(248) 553-1900


JOHN A. ARTZ
Counsel of Record
JOHN S. ARTZ
ROBERT P. RENKE
ARTZ & ARTZ PC
Attorneys for
Respondent
28333 Telegraph Road
Suite 250
Southfield, MI 48034
(248) 223-9500



that
is, the sign did not have to rely upon the weight of the
base for stability in high winds as previous sign stands
required. Id.

B. The Unfair Competition Case: MDI v. TrafFix

TrafFix's unfair competitive acts were the impetus
for the present lawsuit. TrafFix's founder, Jack Kulp, was
a former "WindMaster" distributor and was admittedly
aware that the "WindMaster" trademark and trade dress
were well received in the industry. (Pet. App. 1 la, 70a.)
Mr. Kulp was also aware of the substantial commercial
success enjoyed by the "WindMaster" mark and sign
stands. Id. TrafFix decided to copy the appearance of
MDI's "WindMaster" sign stand by sending one to Korea
for duplication.3 (Pet. App. 3a, 27a, 70a.) In furtherance
of its copying objective, TrafFix then marketed its
identical looking sign stand under the infringing name
"WindBuster" to the same customers and through the
same channels of trade. These actions caused widespread
confusion in the marketplace and threatened MDI's
investment and sales. (Pet. App. 81a-82a.)

The specific trade dress here at issue is not shown or
described in either of the two MDI patents which were the
subject of the Winn-P roof litigation. Indeed, MDI's sign
stands themselves were not at issue in the Winn-Proof
litigation.

3. For the Court's convenience, brochures illustrating
MDI's and TrafFix's products are included in the Lodging
Appendix to this Brief. (Resp. L. App. Tabs 3-4.)
In this case, MDI's "WindMaster" trade dress is a
combination of several different features:4

1) Anarrowbase;

2) Four legs in an X-shape configuration;

3) Two closely spaced coil springs;

4) A single upright, for holding a sign; and

5) A traffic-type sign. (Pet. App. 29a.)

Every other competitor in the industry o except for
TrafFix o developed their own innovative sign stands
which had different structures and appearances, and yet
which performed equivalently in high winds. Some of
these sign stands also were less expensive than MDI's. These
competitors included Dickie Tool Co., Eastern Metals of
Elmiria, Sign-Up Corp., Korman Signs, Work Area
Protection, and Services & Materials. (Pet. App. 86a-87a;
L38-39.) The competitors' sign stands utilized unique
single spring designs or other resilient mechanisms to
achieve similar utility to MDI's "WindMaster" sign stand.
None of the competitors copied MDI's trade dress,
however, or otherwise tried to "pass off' their goods by
using a confusingly similar trademark.5

To protect its interests, MDI filed suit in the United
States District Court alleging trademark and trade dress
infringement under the Lanham Act, and related acts of
unfair competition.

4. Courts must view the asserted trade dress as a whole, not
as a collection of individual features. Mana Prods., Inc. v.
Columbia Cosmetics Mfg., 65 F.3d 1063, 1069 (2d Cir. 1995). See
the MDI brochure. (Resp. L. App. Tab 3.)

5. Eastern Metals of Elmira does make one sign stand
model which infringes MDI's trade dress, but does so under
license from MDI which inures to MDI's benefit. (J.A. 89.)





6 7


(J.A. 23.) The Sixth Circuit Court of Appeals affirmed the
District Court's finding of trademark infringement and the
dismissal of TrafFix's anti-trust counterclaim. (Pet. App.
la.) The Appellate Court also reversed the District Court's
dismissal of MDI's trade dress claim. The only issue before
this Court is the propriety of MDI's trade dress
infringement claim.

Several findings of the District Court in this case, as
affirmed by the Court of Appeals for the Sixth Circuit
relative to TrafFix's actions and the facts of this case, are
noteworthy:

_ The "WindMaster" trademark was a "strong"
mark, having widespread promotion and
recognition, having been used for over 20 years,
and having associated sign stand sales of over $28
million; (Pet. App. 78a-79a.)

_ TrafFix's "WindBuster" product was "virtually identical"
to the "WindMaster" product and TrafFix's
argument that the two sign stands were different
was found to be "not credible"; (Pet. App. 79a-
80a.)

_ A "clear likelihood of confusion" existed between
the "WindMaster" and "WindBuster" marks;
(Pet. App. 84a) and

_ TrafFix admitted that there were several
competitors who marketed sign stands in direct
competition with both TrafFix and MDI, and
that none of the competitors' sign stands had a
similar spring mechanism or appearance. (Pet.
App. 86a-87a.)

Several statements by the Court of Appeals for the
Sixth Circuit are also noteworthy:

_ Some actual confusion in the marketplace existed
between the MDI and TrafFix sign stands; (Pet. App.
8a-lOa.)
_ TrafFix's explanation of how the "WindBuster"
mark was selected "strained credulity"; (Pet. App. 1 la.)

_ There was "some evidence" suggesting that TrafFix
misled its attorney who rendered an opinion indicating
the name "WindBuster" could be used; (Pet. App. 1 la.)
and

_ Considering the sign stand as a whole, and not just the
dual-spring configuration, a reasonable juror could
conclude that the "WindMaster" sign stand has
obtained secondary meaning in the marketplace.
(Pet. App. 16a.)

SUMMARY OF THE ARGUMENT

TrafFix's position on the issue before this Court is
contrary to the weight of authority and the expressions of
Congress. TrafFix's arguments rest in large part on broad
statements from older Supreme Court opinions which
have not been followed to the extent asserted, and have
even been distinguished. TrafFix's assertion that the
patent laws trump the trademark laws is contrary to
decisions in four of the five Circuit Courts of Appeal
which have ruled on the issue, including the Federal
Circuit. See Midwest Indus., Inc. v. Karavan Trailers, Inc., 175
F.3d 1356 (Fed. Cir.), cert. denied, 120 5. Ct. 527
(1999). TrafFix's position on the competitive-need test
for legal functionality is likewise contrary to the
unanimous decision by this Court in Qualitex, 514 U.S. 159,
as well as the decisions from numerous Courts of Appeal.
It is also contrary to the intent of Congress as evidenced
by the legislative history of the Lanham Act. Finally,
TrafFix's views on trademark/trade dress policies and law
vs. patent policies and law cuts against the clear trend and
standards set forth in Supreme Court decisions over the last
two decades. See Two Pesos, Inc. v. Taco Cabana,
inc., 505 U.S. 763 (1992); Qualitex, 514 U.S. 159;
Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
120 5. Ct. 1339





8 9


(2000); Bonito Boats, 489 U.S. 141; Park 'n Fly, Inc. v.
Dollar
Park & Fly, Inc., 469 U.S. 189 (1985); Inwood Labs., Inc. v.
Ives Labs., Inc., 456 U.S. 844 (1982).

Trademark and trade dress rights are part of the laws
of unfair competition and are codified on the Federal level
in Section 43(a) of the Lanham Act, 15 U.S.C. B 1125(a).
Trade dress rights protect distinctive, nonfunctional
source identifiers. Patent rights protect inventions and
stimulate innovation. These rights do not conflict in any
way. Both the patent laws and Federal trademark and
unfair competition laws are constitutionally grounded, and
have coexisted for centuries without conflict since each
has different policies and purposes, and each protects
different rights and has different remedies.

Trademark and trade dress rights are not
"monopolies." Enforcing trade dress rights in a product,
which is either depicted, described or claimed in an expired
patent will not "perpetuate" or "extend" the patent grant
in any way. TrafFix is not prohibited from fairly
competing against MDI's sign stands in the marketplace,
and MDI is not insulated from competition if MDI's trade
dress is upheld in this case.

TrafFix unquestionably attempted to trade on MDI's
goodwill by infringing its "WindMaster" trademark and
copying its sign stand. Rather than develop its own unique
sign stand as all other competitors have done, TrafFix
thought it would simply take advantage of the tremendous
goodwill and commercial success enjoyed by MDI's sign
stand. Now TrafFix attempts to justify its acts with the
weak excuse that it was only copying MDI's expired
patents. The existence of MDI's expired patents is
irrelevant in this case, however, and cannot be used to
excuse TrafFix's actions. TrafFix would not have been
able to copy MDI's trade dress if the patents had never
existed. The existence of the expired patents does not
extinguish otherwise protectable trade dress rights. Such
an excuse, if adopted, would result in grave consequences
for producers and consumers who rely on
source identifiers, such as trademarks and trade dress, to
distinguish between competitive products.

The requirements of acquired distinctiveness,
nonfunctionality, and likelihood of confusion prevent
trade dress rights from conflicting with patent rights.
Ordinary or commonplace trade dress necessarily lacks
distinctiveness, thereby precluding patent-like protection.
Even if distinctive, however, trade dress is functional and
not protectable if competitors need to use the asserted trade
dress in order to effectively compete in the marketplace. Qualitex,
514 U.S. at 169-70. Finally, the standards of trade dress
infringement and the remedies available provide fertile grounds for
avoiding patent-like protection.

The "right to copy" cannot be expanded to eviscerate
distinctive, nonfunctional source identifiers. It is not an
absolute right. Singer Mfg. Co. v. June Mfg. Co.,
163 U.S. 169 (1896) and its progeny make it clear that the
right to copy is subject to other rights in the form of
trademarks, trade dress, and trade secrets, and other
compelling interests, such as state police powers. No legal
authority supports TrafFix's sought-after absolute right to
copy anything that has entered the public domain via
patent disclosure.

Not only is a per se rule legally unwaffanted and
logically unjustified, it would have calamitous effects on
trade dress owners, litigants and the law of trade dress.
Trade dress rights in existing product shapes could be lost
due to their reference in a patent. Moreover, litigants
attempting to enforce trade dress rights would have to
defeat numerous challenges based on the asserted scope of
claims in expired patents. Every defendant in a trade dress
case would scour the patent universe to find a drawing,
description or claim, which arguably covers the asserted
trade dress. Trade dress actions would turn into
diversionary patent actions and courts would be required
to construe patents and patent claims.





10 11


In sum, TrafFix's position is supported only by a
skewed view of policy, rather than the realities of reason,
case law and the marketplace. The judgment below should
be affirmed.

ARGUMENT

I. THE LAWS OF UNFAIR COMPETITION DO
NOT
CONFLICT WITH THE PATENT LAWS AS EACH
PROTECTS DIFFERENT RIGHTS

A. The Two Bodies Of Law Have Coexisted For
Over Two Centuries

The law of unfair competition has "coexisted with
federal patent protection for almost 200 years, and Congress has
given no indication that [its] operation is inconsistent
with the operation of federal patent laws." Bonito
Boats, 489 U.S. at 166. "Indeed, there are affirmative
indications from Congress that both the law of unfair
competition and trade secret protection are consistent
with the balance struck by the patent laws." Id.
Understanding that the "copyright, patent, and trademark
laws stem from different concepts and offer different
kinds of protection, which are not mutually exclusive,"
alleviates the exaggerated perception of a conflict, and
provides the principal means by which courts can insure
the integrity of both bodies of law. Application of Penthouse
Int'l Ltd., 565 F.2d 679, 683 n.3 (C.C.P.A. 1977). In each
case demonstrating such an understanding, the "courts
have consistently held that a product's different qualities
can be protected simultaneously, or successively, by more
than one statutory means for protection of intellectual property."6
Kohier Co. v. Moen, Inc., 12 F.3d 632,

6. See, e.g., Kewanee Oil Co. v. Bicron Corp.,
416 U.S. 470 (1974), where state protection of trade secrets was
held not to frustrate the objectives of the federal patent law. The
"nature and degree" of state protection "did not conflict" with the
federal policies of encouragement of patentable invention and the
prompt disclosure
(Cont'd)
638 (7th Cir. 1993). In particular, numerous courts have held
"that a product may be entitled to trade dress protection
for distinctive, nonfunctional features, even if the
product is or has been, the subject of a patent."7 Midwest, 175
F.3d at 1364.

In fact, all of the various intellectual property rights,
including patents, copyrights, trademarks, trade dress and trade
secrets, can exist concurrently in the same product without
trespassing on each other. In a computer, for example, patent
protection can be secured on a hardware component (such
as a disc drive), copyright protection can be secured on
the software source code, trademark rights can be secured
on the names of the products and components, trade dress
rights can be secured on its external shape (e.g., Apple's
new "iMac" computer), and trade secret rights can exist in
the manufacture of the microprocessor or hardware
component. The fact that a patent application for the
hardware component mentions the source code, describes
the method of operation, discloses the name of the
product or components, or depicts the external shape and
design of the computer and/or components, should not
negate any of these other rights.

(Cont'd)
of such innovations. See also Inwood Labs., 456 U.S. 844, where
B 43(a) was held to prohibit a broad range of practices, including
unfair competition.

7. The Federal Circuit supported its statement with the
following case citations: Pebble Beach Co. v. Tour 18, Ltd., 155
F.3d 526. 548. 549 n.16 (5th Cir. 1998); Thomas & Betts Corp. v.
Panduit Corp., 138 F.3d 277, 287-89 (7th Cir.), cert. denied,
525
U.S. 929 (1998); Ferrari SPA. Esercizio Fabriche Automobili E.
Corse v. Roberts, 944 F.2d 1235, 1241 (6th Cir. 1991); Ideal Toy
Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 81 (3d Cir. 1982);
Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604
F.2d 200, 203 (2d Cir. 1979); Truck Equip. Serv. Co. v. Fruehauf
Corp., 536 F.2d 1210, 1214-15 (8th Cir. 1976); and
Pachmayr Gun
Works, Inc. v. Olin Mathieson Chem. Corp., 502 F.2d 802, 806-07
(9th Cir. 1974).






1
~
12 13


The harmonious balance between trade dress rights and
patent law is not upset in this case, and a careful examination of
the purposes, rights and remedies associated with each body of
law reveals that MDI's expired patent rights do not, per se,
foreclose trade dress fights in its "WindMaster" traffic-type sign
stands.

B. Both The Patent Laws And Unfair Competition
Laws Are Constitutionally Grounded

The genesis of patent law is embodied in the Constitution
wherein the framers declared that "[tihe Congress shall have the
power. .. [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, B 8, el. 8. Prior to the first
Patent Act, however,

[t]he right to adopt and use a symbol or device to
distinguish the goods or property made or sold by
the person whose mark it is, to the exclusion of the
use of that symbol by all other persons, [had] long
been recognized by the common law and the chancery
courts of England and of this country, and by the statutes of
some of the states.

United States v. Steffens (The Trade-Mark Cases), 100
U.S. 82, 92 (1879). "The law of unfair competition has
its roots in the common-law tort of deceit: its general
concern is with protecting consumers from confusion as to
source." Bonito Boats, 489 U.S. at 157 (emphasis in
original). Acting under the authority of the Commerce Clause,
U.S. Const. art. I, B 8, cl. 3, Congress, over 50 years ago,
passed the Lanham Act, 15 U.S.C. B 1051 et seq., "to
codify and unify the common law of unfair competition and
trademark protection." Inwood Labs., 456 U.S. at 861 n.2 (J.
White concurring); see also Two Pesos, 505 U.S. at 777-84
(J. Stevens concurring), and 785-87 (J. Thomas
concurring).


Trademark and trade dress laws are within the umbrella of
unfair competition laws codified in the Lanham Act. Two
Pesos, 505 U.S. at 768.

Since, both patent law and the law of unfair
competition are federal laws authorized by the
Constitution, it is assumed that they are "capable of
coexistence, [and] it is the duty of the courts, absent a
clearly expressed congressional intention to the contrary,
to regard each as effective." Morton v. Mancari, 417 U.S.
535, 551 (1974). In other words, "federal trademark
protection cannot be preempted by patent law." Thomas
& Betts, 138 F.3d at 285. Thus, contrary to the dissenting
comments relied upon by TrafFix, the existence of the
constitutionally grounded patent laws and trade dress laws do
not preclude trade dress rights in this case.

C. The Policies And Purposes Of Each Body Of
Law Are Significantly Different

The purposes served by trade dress law are broader
and different than the purposes of patent law, yet both
trade dress law and patent policy seek the same end o robust and
fair competition. First, the Lanham Act serves to foster
competition by "protect[ing] the ability of consumers to
distinguish among competing producers." Park 'N Fly,
469 U.S. at 198; Two Pesos, 505 U.S. at 774. Second, the
Lanham Act serves to avoid confusion among consumers
as to the source or origin of goods and services.8 The
Lanharn Act also encourages "the maintenance of quality
by securing to the producer the

8. See 15 U.S.C. B 1127 (the statute "make[s] actionable
the deceptive and misleading use of marks in . . . commerce" and
"prevent[s] fraud and deception in ... commerce by the use of
reproductions, copies, counterfeits, or colorable imitations of
registered marks."); S. Rep. No. 100-515 (1988), reprinted in
1988 U.S.C.C.A.N. 5577, 5580 (Lanham Act allows consumers
to "identify brands they prefer and [to] purchase those brands
without being confused or misled.")





14 15


benefits of a good reputation." Id. In this regard, the
protection of trademarks and trade dress protects the
investment made by the owner, creates incentives for
continued investment and product improvement by the owner,
and benefits the public by encouraging competitors to develop
alternative, improved, and less expensive products. See Kohier, 12
F.3d at 643-44. Finally, the Lanham Act, maintains healthy
competition by "protect[ing] persons engaged in [federally
regulated] commerce against unfair competition."9 All of
these policies can be summarized as helping to stimulate
competition by providing consumers with a means to
readily identify the sources of goods and services in the
marketplace,'0 and "[tihe heart of our national

9. See 15 U.S.C. B 1127 (the statute serves "to protect
persons engaged in Ifederally regulated] commerce against
unfair competition"); S. Rep. No. 79-1333 (1946),
reprinted in 1946 U.S.C.C.A.N. 1274, 1274 ("[W]here
the owner of a trade-mark has spent energy, time, and
money in presenting to the public the product, he is protected in
his investment from its misappropriation by pirates and cheats.
This is the well-established rule of law protecting both the public
and the trade-mark owner.").

10. In economic terms, trademark and trade dress rights
reduce consumer "search costs" by allowing consumers to
distinguish products that, in the absence of a trademark, would
appear identical but in fact have different qualities. Search costs are
factors unrelated to price which include the costs of knowing where
to obtain the product, the costs of knowing the price of the product
at different outlets, and the costs of knowing the quality of the
product relative similar products offered by other producers.
See Qualitex, 514 U.S. at 163-64. High search costs
resulting from a lack of distinctiveness among competing
products inhibits competition because consumers will be
less likely to consider substitute products. In contrast, low
search costs resulting from shorthand source identifiers
such as trademarks permit consumers to obtain more
complete information about a product's relative price and
quality, thereby stimulating producers to keep their price
and quality competitive. Opderbeck, An Economic
Perspective On Product Configuration Trade Dress, 24 Seton
Hall Legis. J. 327, 360 (2000) (citing Landes and Posner,
(Cont'd)
economic policy long has been faith in the value of
competition." Standard Oil Co. v. Fed. Trade Comm'n, 340
U.S. 231, 248 (1951); United States v. Philadelphia Nat'l Bank,
374 U.S. 321, 372 (1963) ("[C]omperition is our
fundamental national economic policy."). Thus, the law
of trade dress directly advances the fundamental economic
policy of the United States.

The rationale of the patent system is different.
Patent law has been an exception to the rule of free
competition for over 350 years, since the Statute of
Monopolies prohibited exclusive grants, subject to an
exception for novel or imported inventions." Thus, the
focus of the patent system is to promote the progress of
Science and useful Arts through "the protection of
producers as an incentive to product innovation." Bonito
Boats, 489 U.S. at 157. The patent system also seeks to
promote disclosure of inventions to stimulate further
innovation. Aronson v. Quick Point Pencil Co., 440
U.S. 257, 262 (1979). In sum, both trade dress protection
and patent policy seek the same end o robust and fair
competition and the resulting benefit to the public.'2

(Cont'd)
Trademark Law: An Economic Perspective, 30 J. Law and
Econ. 265, 269 (1987)). In sum, "[a] principal economic
function of trademarks and trade dress is to lower search
costs by associating consistent price and quality with a
particular brand name or package design." Id.

11. The Statute of Monopolies created an exception
for any letters patent and grants of privilege for the term
of fourteen years or under, hereafter to be made of the sole
working or making of any manner of new manufactures
within this realm, to the true and first inventor and
inventors of such manufactures." 21 James I, c.3, VII
Statutes at Large 255. Also reprinted in I Deller, Walker on
Patents (Deller's Ed.) at 18-21 (New York 1937).

12. "Trade symbol law seeks that end by specific and
limited means, namely, protecting the reliability of shorthand
source identifiers in the marketplace, while patent law seeks it by
providing
(Cont'd)





16 17


D. Trade Dress Rights Do Not Upset The
Constitutional Basis Underlying Patent Policy

The salient difference between the doctrines of
patent and trade dress law lie in the requirements for
protection. Congress and the courts have developed strict
prerequisites for federal trade dress protection which,
when properly applied, safeguard the integrity of patent
policy.

1. Patent Rights Protect Inventions

The patent laws seek to promote the "progress of
Science and useful Arts" by providing incentives for
innovation and disclosure of new inventions. U.S. Const.
art. I, B 8, el. 8; Aronson, 440 U.S. at 262. Not all
inventions are patentable, however. In order to be
awarded a patent, an invention must pass the rigorous
tests of being new, useful, and nonobvious. 35 U.S.C. BB
101, 102, 103. Bonito Boats, 489 U.S. at 150. Those
inventions meeting these statutory requirements are
granted a limited period of exclusivity. 35 U.S.C.
BB 154(a)(2), 271(a). The right is exclusionary, not
permissive. A patent does not grant its owner the right to
make or market a product. "The franchise which the
patent grants, consists altogether in the right to exclude
every one from making, using, or vending the thing
patented, without the permission of the patentee. This is
all that he obtains by the patent." Bloomer v. McQuewan, 55
U.S. 539, 549 (1852). Furthermore, the boundary of the
exclusive grant "is limited by the ... scope of the patent
claims." Dawson Chemical Co. v. Rohm & Haas
Co., 448 U.S. 176, 221 (1980).



(Cont'd)
incentives for innovation o one of the mainsprings of
competition in modern commerce." Dratler, Trade Dress
Protection For Product Configurations: Is There A Conflict With
Patent Policy?, 24 AIPLA Q. J.427, 446 (1996).
2. Trade Dress Rights Protect Source Identifiers

Trademarks and trade dress are subjects of the unfair
competition laws codified in B 43(a) of the Lanham Act. See
Two Pesos, 505 U.S. at 768; Wal-Mart, 120 5. Ct. at 1342-43. A
trademark is defined in 15 U.S.C. B 1127 as including "any
word, name, symbol, or device or any combination thereof..,
used by a person.., to identify and distinguish his or her
goods, including a unique product, from those manufactured or
sold by others and to indicate the source of the goods, even if
that source is unknown."

"Trade dress" is classified as a "symbol" identifier,
and courts have consistently recognized that "symbols"
such as product designs can constitute protectable trade
dress under the Lanham Act.'3

In contrast to the nature of patent rights, trade dress
protection is available only if the elements of (1) acquired
distinctiveness, (i.e., secondary meaning), (2)
nonfunctionality, and (3) likelihood of confusion, are shown. Two
Pesos, 505 U.S. at 769-70. The disparate criteria necessary to
acquire trade dress rights and patent rights safeguards the
constitutional mandate that "discoveries" be protected for
only "limited Times."

a. Only Distinctive Trade Dress Is
Protectable

The first important requirement, namely
distinctiveness oalso known as secondary meaning o helps
protect patent policy
13. See, e.g., Two Pesos, 505 U.S. 763 (1992) (restaurant
appearance); Qualitex, 514 U.S. 159 (1995) (a color); Kohler,
12 F.3d 632 (7th Cir. 1993) (a faucet); Imagineering, Inc. v. Van
Klassens, Inc., 53 F.3d 1260 (Fed. Cir.), cert. denied, 516 U.S.
929
(1995) (furniture); Ashley Furniture Indus., Inc. v. San giacomo NA.,
Ltd., 187 F.3d 363 (4th Cir. 1999) (bedroom furniture); Knitwaves,
Inc. v. Lollytogs, Ltd., 71 F.3d 996 (2d Cir. 1995) (sweaters);
and
Stuart Hall Co. v. Ampad Corp., 51 F.3d 780 (8th Cir. 1995)
(notebooks).





18 19


from trade dress trespass. Acquired distinctiveness
necessarily requires that the product in question be used in
commerce as a source identifier, otherwise, "the trade dress
would not 'cause confusion. .. as to the origin, sponsorship, or
approval of [the] goods,' as [B 43(a)] requires." Wal-Mart,
120 5. Ct. at 1343. Acquired distinctiveness or secondary
meaning typically arises after a long period of exclusive use
in the marketplace, a substantial amount of investment in
advertising, sale, and promotion of the product, and/or a
resulting build up of goodwill and product quality
reputation among consumers. Thomas & Betts, 138 F.3d
at 291.

Conversely, if the trade dress is ordinary or
commonplace, it weighs against a finding of secondary
meaning. See Mana Prods., 65 F.3d at 1069-70. In
addition, industry custom, widespread third-party use, long
disuse, close resemblance to something in the public
domain, or utility can all cut against the likelihood that
consumers will associate a product design with a single
source.'4

In the present case, secondary meaning in the MDI
"WindMaster" traffic-type sign stands has been
established by the significant advertising and sales of the
sign stands, the sole and exclusive use of the sign stands
for over twenty years, and
the build up of an excellent reputation and recognition of
the appearance in the marketplace. The last factor is
shown in part by the admission of two of TrafFix's
principal witnesses who testified that they recognized the
"WindMaster" sign stands solely by the "look" of the Sign
stands. (J.A. 132-137, 138-143.) Prior to achieving
acquired distinctiveness, however, third parties o including
TrafFix o were free to use MDI's trade dress and thereby
defeat MDI's rights.'5

b. Trade Dress Must Be Nonfunctional

The requirement that trade dress be nonfunctional
further protects the patent policies from encroachment
by trade dress rights. The functionality doctrine protects against
any anti-competitive consequences or disadvantages of
enforcing trade dress rights under all circumstances o even
when the trade dress in question was disclosed in an earlier
patent. The functionality doctrine is an independent
means by which trade dress protection can be denied. If
the asserted trade dress is deemed "functional", it cannot
be protected regardless of evidence of actual consumer
identification of source or consumer confusion caused by
an imitator. Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94
F.3d 376(7th Cir. 1996); see also Qualitex, 514 U.S. at
169; and Two Pesos, 505 U.S. at 775.




14. See Mana Prods., 65 F.3d at 1069-70 ("[W]here it
is the custom in a particular industry . . . trade dress done in
that style is likely to be generic"); EFS Mktg., Inc. v. Russ
Berrie & Co., 76 F.3d 487, 489-91 (2d Cir. 1995)
(numerous other producers of the same product made it
unlikely "that they cannot be said to identify [plaintiff] as
their particular source"); L. & J.G. Stickley, inc. v. Canal Dover
Furniture Co., 79 F.3d 258, 264-65 (2d Cir. 1996) (long
disuse created "a high hurdle to a Lanham Act plaintiff');
Publications Int'l Ltd. v. Landoll, Inc., 164 F.3d 337 (7th
Cir. 1998) (Utilitarian "features are by definition those
likely to be shared by different producers of the same
product and therefore are unlikely to identify a particular
producer.")
A product feature is functional 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. 10). Quite
simply, the functionality doctrine serves to assure that
competition will not be stifled by the

15. It would have been relatively easy to make an
identical looking sign stand to MDI's traffic-type sign
stand without infringing MDI's patents by eliminating
initial compression from the coil springs or eliminating
the geometric relationship defined by the claims.





20 21


exhaustion of a limited number of trade dresses." Two Pesos,
505 U.S. at 775. Thus, if constraints limit the available
alternatives to the extent that others need the same trade
dress in order to fairly compete, the product configuration
or feature at issue is functional. Id. On the other hand, if
the number of alternatives is sufficient that appropriation
of one poses no great threat to competition, the trade
dress is nonfunctional.

In Qualitex, the functionality doctrine was held to be
sufficient to prevent a mark from being used anti-
competitively.
The "available alternatives test" for functionality as set
forth in
Qualitex has also been endorsed by Congress'6 and the
Restatement as the definitive inquiry:

[A] design is "functional".. . if the design affords
benefits in manufacturing, marketing, or use of the
goods or services with which the design is used, apart
from any benefits attributable to the design's
significance as an indication of source, that are
important to effective competition by others and that
are not practically available through the use of alternative
designs.

Restatement (Third) Of Unfair Competition B 17
comment b (1995) (emphasis added).

The same test has been applied by several Circuit
Courts of Appeals. See, e.g., Fun-Damental Too Ltd. v. Gemmy
Indus. Corp., ill F.3d 993, 1002 (2d Cir. 1997) (design
was nonfunctional based on evidence of two alternative
designs, viable alternatives to certain features, and failure
to show that protection of trade dress would put defendant
at "significant competitive disadvantage"); Knitwaves, 71
F.3d at 1006 (protecting plaintiff's fall motif for sweaters
would not

16. "A functional feature of trade dress is one that is
commonly used by similar businesses, protection of which would
hinder competition." H.R. Rep. No. 250, 106th Cong., 1st Sess.
(1999).
"significantly restrict the number of designs available" to
competitors); Insty*B it, Inc. v. Poly-Tech
Indus., 95 F.3d 663, 673-74 (8th Cir. 1996), cert.
denied, 519 U.S. 1151 (1997) (although some features
of plaintiff's trade dress may have been functional, summary
judgment for defendant denied, where plaintiff "presented
evidence that competing manufacturers have adopted different
design features for their quick-change products"); Tools USA
and Equip. Co. v. Champ Frame Straightening Equip., Inc.,
87 F.3d 654, 659 (4th Cir. 1996) (trade dress of catalog
was nonfunctional, although information in it was
functional, due to availability of alternative formats).

Defining legal functionality in terms of available
alternatives provides an unambiguous test that addresses
TrafFix's concerns in this case. It also makes the presence
or absence of a patent, at best, only one factor in a
functionality inquiry. If there is only one way for a product
feature to induce a particular useful result, or create a
particular ornamental impression, the alternatives test
would render that embodiment unprotectable as trade dress.
However, if a product feature has numerous alternatives (actual
or theoretical) that serve the same useful purpose or provide the
desired ornamental impression, then allowing the patentee to
appropriate one design would not hinder competition in
the relevant product market. To the contrary, it would
prevent others from depriving the trade dress owner of its
investment and goodwill, and denying the public of a
distinctive source identifier necessary for informed and
effective competition.

TrafFix has at times confused the "utility" required to
secure a patent with the functionality doctrine (i.e.,legal
functionality) pertaining to trade dress rights. These two
concepts are significantly different and should not be
confused. Every product has function or utility o whether
patent protection and/or trade dress protection is being
secured. If a product did not have utility, then there would
be no reason or incentive for the manufacturer to make it,
or for the purchaser to buy and use it. However, the





22 23


doctrine of legal functionality is completely different. It
relates to the need of competitors to copy the product
design in order to compete in the marketplace.'7

c. The Standards For Trade Dress
Infringement Further Protect Against
Patent Policy Trespass

Although the requirements for distinctiveness and
nonfunctionality are sufficient to avoid conflict with
patent policy, the integrity of the patent system is further
shielded by the differing standards for proving infringement
under the patent and trade dress laws. Liability for trade
dress infringement requires a demonstration that the
defendant's conduct creates a "likelihood of confusion"
among the relevant purchasing public. 15 U.S.C. B 1
125(a)(1)(A). Mere copying or similarity between product
configurations is not enough. In addition to similarity, the
circumstances in which the trade dress is actually used in
the marketplace must be sufficiently similar to create a
likelihood of confusion. This requirement is embodied in
the various multi-factor tests of the Courts of Appeal. For
example, the Sixth Circuit has identified eight factors as
defining the scope of the likelihood of confusion inquiry:

1. The strength of the plaintiff's mark;

2. the relatedness of the goods;

3. the similarity of the marks;


17. The amicus brief filed on behalf of the
United States asks this Court to rule on the functionality
issue. However, legal functionality depends on numerous
factual questions which must be decided by the trier of fact.
Vuitton et Fils SA. v. I. Young Enters, Inc., 644 F.2d 769 (9th
Cir. 1981); In re Morton-Norwich Prods., Inc.,
671 F.2d 1332 (C.C.P.A. 1982); In re Am. Nat'l Can Co., 41
U.S.P.Q. 2d 1841 (T.T.A.B. 1997). An affirmance of the
Sixth Circuit decision in this case would remand the case to
the District Court for, inter alia, precisely such an analysis.
4. evidence of actual confusion;

5. marketing channels used;

6. likely degree of purchaser care;

7. defendant's intent in selecting the mark; and

8. the likelihood of expansion of the product lines.

Frisch 's Restaurants, Inc. v. Elby 's Big
Boy, 670 F.2d 642, 648 (6th Cir. 1982). Although none of
these factors is determinative, the courts weigh the
evidence produced as to each one in order to reach a
conclusion on the likelihood of confusion issue.

Moreover, for trade dress infringement, the focus is
not on individual trade dress elements, "but rather whether
the two trade dresses' create the same general overall
impression." Bristol-Meyers Squibb Co. v. McNeilPP.C., Inc.,
973 E2d 1033, 1046 (2d Cir. 1992). Because each of the
above factors (as well as others used by the various
Circuits) influences the analysis of trade dress
infringement, "[s]imilarity in overall appearance alone
cannot establish confusion as to source as a matter of law."
L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1130-
31 (Fed. Cir.), cert. denied, 510 U.S. 908 (l993).'~

In contrast, an infringement analysis under the patent
law demands a focused examination of the allegedly
infringing product in light of the patent claims. Markman v.
Westview Instruments, Inc., 517 U.S. 370,373 (1996). The
patent owner's commercial embodiment of the patented
invention is irrelevant

18. "There is perhaps no standard in all of the law that is so
fact dependent and whose application so inevitably proceeds on a
case-bycase basis, as the standard of likelihood of confusion in
trademark law." Dratler, Intellectual Property Law: Commercial,
Creative, and Industrial Property, B l0.0l[2] (1991).





24
25
to the infringement analysis. "[The Federal Circuit] has
repeatedly emphasized that an infringement analysis
compares the accused product with the patent claims, not
an embodiment of the claims." Atlantic Thermoplastics Co. v.
Faytex Corp., 970 F.2d 834, 846 (Fed. Cir. 1992).

3. Patent Remedies and Trade Dress
Remedies are Substantially Different

The substantial differences between the remedy
standards
for patent and trade dress infringement help defeat
TrafFix's
assertion that trade dress protection is the equivalent
of a perpetual patent. If a product infringes a patent claim,
complete injunctive relief is the standard remedy. See
WL. Gore
& Assoc., Inc. v. Garlock, Inc., 842 F.2d 1275,
1281 (Fed. Cir.
1988) ("[A]n injunction should issue once infringement
has been
established unless there is a sufficient reason for denying
it.");
35 U.S.C. BB 271(a), 283. Moreover, a product either
infringes
a patent or it does not, there is no middle ground.

If the same product feature constitutes protectable
trade dress, however, there are numerous circumstances
under which others may use the trade dress without fear of
infringement liability, due to the vagaries of the likelihood
of confusion analysis. For example, any change in
circumstance that eliminates the likelihood of confusion,
abolishes the infringement. Courts can remedy trade dress
infringement by ordering a change in one or more of those
circumstances. Indeed, in appropriate cases, courts have required
the use of disclaimers, house-marks or trade names, changes
in product appearance, or corrective advertising to curtail the
likelihood of confusion. See Frisch 's, 670 F.2d at 645; Abbott
Labs. v. Mead Johnson &

19. Disclaimers and labeling, however, may not be
sufficient. See Bristol-Myers, 973 F.2d at 1047. ("We do not
mean to intimate that the distinctive elements of any trade dress
may be freely appropriated as long as the junior user clearly
identifies the source of the goods.")
Co., 971 F.2d 6, 22 (7th Cir. 1992). None of these remedies
approach the equivalent of an injunctive patent remedy.
Moreover, failing to provide a remedy o by seeking comfort
in patent policy o when distinctive nonfunctional trade dress has
been infringed, undermines the policy of trade dress
protection at the cost of consumer confusion and deception.20

In this case, preventing TrafFix from selling its currently-
fashioned "WindBuster" sign stand will not prevent TrafFix from
competing and being successful in the marketplace. Numerous
structural changes could be made to avoid infringing upon MDI's
trade dress rights. Everyone o especially the public o would be the
benefactors if such changes were made.

E. It Is Improper To Equate Trademarks With
"Monopolies"

Labeling MDI's efforts to protect its trade dress as an
improper attempt to extend its patent "monopoly" in violation of
the Constitutional mandate reveals bias, not analysis. Patent grants
are often deemed "monopolies," even though they are not in the
economic sense. A monopoly exists when a firm in a defined
market is able to control price and output for a specific product or
service. When used pejoratively, "[t]he term 'monopoly' connotes
the giving of an exclusive privilege for

20. As Professor Dratler put it,

the narrow isthmus of remedies, not the broad plain of policy,
is the ground on which trade dress battles should be
fought. There is no need for sweeping modifications to the
doctrine of distinctiveness, the doctrine of functionality, or
the standard for trademark infringement, in order to
accommodate trade dress protection for product
configurations.

Oratler, Trade Dress Protection For Product Configurations:
Is There A Conflict With Patent Policy?, 24 AIPLA Q. J. 427, 581
(1996).





26 27


buying, selling, working, or using something which the
public once freely enjoyed prior to the grant." United
States v. Dubilier Container Corp., 289 U.S. 178, 186
(1933).21 For most patented inventions, however, there
exist a range of substitutes which prevent the patent owner
from exerting exclusive power to control prices or output in
any market. In this instance, there are at least six competitors
to MDI's "WindMaster" sign stands. (Pet. App. 86a-87a;
L38-39.) Since competitors do not need access to MDI's
asserted distinctive features to compete, recognizing MDI's trade
dress rights will not confer any monopoly power o odious or
otherwise. Moreover, equating MDI's trade dress rights
with an odious monopoly, implies an adverse value
judgment as to the worth of trademarks in general.

The rights which flow from trademarks are useful and
help both consumers and trademark owners. "In truth, a trade-mark
confers no monopoly whatever in a proper sense, but is
merely a convenient means for facilitating the protection
of one's goodwill in trade by placing a distinguishing mark
or symbol
o a commercial signature o upon the merchandise or package in
which it is sold." United Drug Co. v. Theo. Rectanus Co., 248
U.S. 90, 98 (1918). (Pet. Brf. at 30, "unlike patent law o'no
monopoly is involved in trademark protection' ".)

II. THE "RIGHT TO COPY" SUBJECT MATTER
DISCLOSED IN AN EXPIRED PATENT IS NOT
ABSOLUTE

The "right to copy" is a general rule subject to many
exceptions. It is ajudicially created doctrine without
expression in the U.S. Constitution or the Patent Act. It is a
right drawn by negative implication from the "limited
Times" provision of the

21. Such highly objectionable "odious monopolies"
were an
Elizabethan prerogative subject to exploitive abuse in the
hands of
corrupt courtiers. Waltersheid, The Early Evolution of the United
States Patent Law: Antecedents (Part 2), 76 J.P.T.O.S., 849, 863-
65
(1994).
Patent Clause. In fact, there is "no provision of patent
law, statutory or otherwise, that guarantees to anyone an
absolute tight to copy the subject matter of an expired patent."
Midwest Indus., 175 F.3d at 1362 (quoting, In re
Mogen David Wine Corp., 328 F.2d 925, 930 (C.C.P.A.
1964)). The right to copy the subject matter of an expired
utility patent has always yielded to other equally
compelling policies, such as the unfair competition laws or
state police power interests. 22

A. The Supreme Court Has Acknowledged That The
"Right To Copy" Has Many Exceptions

In several older decisions, the Supreme Court used
broad language which TrafFix has interpreted as
completely foreclosing trademark rights in product
features that have been disclosed in a patent. See Singer
Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185
(1896); Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 119-
22(1938); Scott Paper Co. v. MarcalusMfg. Co.,
326 U.S. 249, 256 (1945); Sears, Roebuck & Co. v. St~ffel
Co., 376 U.S. 225 (1964), and Compco, 376 U.S. 234. These
cases, however, have not been read as expansively as TrafFix would
like this Court to do o and for good reason. None of them
recognize an absolute right to copy. In fact, these cases
recognize that other forms of intellectual property
protection (e.g. trademarks and trade secret protection) o as
well as unfair competition o are proper and can co-exist with the
patent law.

Specifically, in Singer, even though the term "Singer"
was held to be generic, the Court required that the defendant
include "a plain and unequivocal indication of the origin of
manufacture"

22. For example, in Patterson, the Supreme Court held
that the "right to copy" was subordinate to state police
powers. 97 U.S. at 505. Other exceptions to the general right to
copy include a "blocking patent on the invention" or "state law. . .
prohibiting the production of a patented invention (such
as a radar detector or a gambling device)." Andelman,
Thomas & Betts Corp v. Panduit Corp., 14 Berkeley Tech.
L.J., 229, 239 (1999).





28 29


on its sewing machines to prevent consumer confusion as
to source. 163 U.S. at 202-04. Similarly, the Court in
Kellogg, concluded that, although "the name 'Shredded Wheat', as
well as the product, the process and the machinery
employed in making the product, had been dedicated to
the public", Kellogg nevertheless had an obligation "to
identify its product lest it be mistaken for that of the plaintiff."
305 U.S. at 117-18, 120. Likewise, in Sears, Justice Black
conceded that a State "may, in appropriate circumstances,
require that goods... be labeled or that other precautionary steps
be taken to prevent customers from being misled as to the source."
376 U.S. at 232. In Compco, the Court held that the "right to
copy" did not extend to designs "entitled to a design patent or
otherfederal statutory protection." 376 U.S. at 248 (emphasis
added). And in Scott Paper, non-descriptive trademarks were
inferentially indicated as being protectable. 326 U.S. at 256.

Moreover, in more recent cases, such as Bonito
Boats, this Court has specifically indicated that these
older cases do not have a broad preclusive effect,
particularly on federal trade dress protection. The Bonito
Boats Court explained, 489 U.S. at 154:

[W]hile Sears speaks in absolutest terms, its
conclusion that the States may place some
conditions on the use of trade dress indicates an
implicit recognition that all state regulation of
potentially patentable but unpatented subject matter
is not ipso facto preempted by the federal patent laws.

489 U.S. at 154. Similarly, trade dress rights do not
impermissibly interfere with the federal patent scheme because
they have traditionally been "limited to protection against
copying of non-functional aspects of consumer products which
have acquired secondary meaning such that they operate as a
designation of source." Id. at 158.
The right to copy thus exists only for items fully in the
public domain, i.e., not protected by any other intellectual
property rights or prohibited by other compelling
interests. Trademark policy, however, has no prohibition against
taking things from the public domain. See, e.g., The Trade-Mark
Cases, 100 U.S. at 94 ("The trade-mark may be, and generally is,
the adoption of something already in existence as the
distinctive symbol of the party using it."). The very existence of
acknowledged trade dress rights establishes that public domain
material may be appropriated as a protectable source
identifier. To say that MDI's trade dress is unprotectable
because it is in the public domain is inapposite to the realities of
trademark and trade dress law.

B. Even If The Supreme Court Cases Can Be Read
Broadly, They Are Factually Distinguishable

The, Bonito Boats, Sears, Compco, Singer,
Kellogg, and Scott Paper cases are all distinguishable
from the case at bar. In Bonito Boats, Sears, and
Compco, the Supreme Court examined the relationship between
federal patent law and a respective state unfair competition
law o not between federal patent law and federal trademark law. As
such, the holdings of these cases are not determinative of
the present issue. Bonito Boats is further distinguishable as
the state statute at issue in that case granted patent-like rights
"far exceeding any right available under the Lanham Act."
Thomas & Betts, 138 F.3d at 286.

The Singer and Kellogg cases likewise have no
limiting effect on the scope of federal trade dress law.
Unlike the present case, in Singer, the "right to make
the machine in the form in which it was constructed during
the patent" applied because the shape of the machines
were dictated by the various patents covering the machine,
i.e., the machines were legally functional or generic. Similarly, in
Kellogg the Court found that the shape of the shredded wheat
biscuit in which protectable trade dress





30 31


was asserted, was dictated by the patented machines used to
produce it. Thus, the shape was legally functional and
unprotectable. Conversely, the configuration of MDI's
"WindMaster" sign stand is not dictated by the patents as
there are a variety of other competitive alternative sign
stands on the market. Thus, the principles of Singer and
Kellogg do not support TrafFix's absolute right to copy rule.

Additionally, Scott is distinguishable as the case was
decided on the issue of assignor estoppel, and the Court's
discussion of trade dress law therein is merely dicta.
Thomas &
Betts, 138 F.3d at 287.

III. THE EXISTENCE OF AN EXPIRED UTILITY
PATENT DOES NOT FORECLOSE TRADE DRESS
RIGHTS IN A PRODUCT DISCLOSED OR CLAIMED
THEREIN

A. The Legal Authorities Do Not Support TrafFix's
Position

The weight of legal authority and the intent of
Congress both strongly oppose TrafFix's positions and
arguments. Over the last five years, five Courts of Appeal
have had the occasion to address the interaction of trade dress
protection and patent law principles, particularly where an expired
utility patent was involved. The Fifth, Sixth, Seventh, and Federal
Circuits have all held that the existence of a utility patent does not
foreclose trade dress protection in features disclosed
therein. See Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d
246, 256 (5th Cir. 1997), cert. denied, 523 U.S. 1118
(1998). ("[T]he fact that the American Classic Mixmaster
incorporates functional features named in utility patents does not
compel the conclusion that the product configuration is
legally functional"); Thomas & Betts, 138 F.3d at 288
(reversing the district court's misstatement of the law and
holding that "there is no per se prohibition against features
disclosed in a patent
receiving trademark protection after the patent has expired");
Midwest Indus., 175 F.3d at 1362. ("[T]he fact that a
patent has been acquired does not convert what otherwise would
have been protected trade dress into nonprotected matter");
and Marketing Displays, Inc. v. Traf Fix Devices, Inc., 200 F.3d
929 (6th Cir. 1999) ("So long as it is possible to protect the
appearance without protecting the design, a per se rule is not
necessary.")

Only the Tenth Circuit, in the first opinion addressing
the issue, reached an opposite result. Vornado Air
Circulation Sys., Inc. v. Duracraft Corp., 58
F.3d 1498 (10th Cir. 1995), cert. denied, 516 U.S.
1067 (1996). Even Vornado, however, does not support the
broad absolute rule sought by TrafFix. Only subject matter which
comprised "part of a claim" and a "significant inventive aspect" of
the expired patent was prohibited from trade dress protection. Id.
at 1510. In so holding, it is submitted that the Vomado Court
did not recognize that distinctive, nonfunctional product
features can be separated from the utilitarian features
which are the proper subject of a patent. Despite noting
that "availability of equally satisfactory alternatives for a
particular feature" is "often the fulcrum on which Lanham
Act functionality analysis turns", the Vornado Court
ignored any functionality analysis in reaching its result.
Id. at 1507. This is unfortunate for the result may have been
justified if the Court had found a lack of competitive alternatives
to the spiral grill design at issue.

The decisions by the various Circuit Courts of Appeal
upholding trade dress rights were buttressed by Congress in
1999 when it amended the Federal Lanham Act to
acknowledge trade dress rights for nonfunctional aspects of
a product configuration. is U.S.C. B l125(a)(3):

Section five amends section 43(a) of the Lanham Act to
provide that in an action for trade dress infringement,
where the matter sought to be protected is not
registered with the U.S. Patent and Trademark Office,
the plaintiff has the burden





32 33


of proving that the trade dress is not functional. A functional
feature of trade dress is one that is commonly used by
similar business, protection of which would hinder
competition. If a mark is registered, there is a
presumption that it is not functional. However, for
plaintiffs of unregistered marks to be given the same
presumption would not promote fair competition or
registration. For example, the owner of a patent that is
about to expire may try to register it as a trademark, which
receives protection as long as the owner uses it in
commerce. This amendment seeks to ensure that marks that
are functional are not registered. Functional marks should
be dealt with under the patent law. Therefore, it should be
incumbent on the plaintiff suing for infringement of an
unregistered mark to prove that the mark is not functional.

H.R. Rep. No. 250, 106th Cong., 1~' Sess (1999)
(emphasis added). With this statutory amendment,
Congress gave specific credence to trade dress protection for
nonfunctional product features o regardless of the existence of
a patent.

In this case, MDI is not seeking trade dress
protection for the product features which were the subject
matter of its expired patents, but only for the distinctive
nonfunctional aspects of its commercial traffic-type sign
stand. The public is not being deprived of the right to
copy, except to the extent that it must respect "other federal
statutory protection." Compco, 376 U.S. at 248.


B. The Existence Of A Patent Has Only Limited
Relevance To The Trade Dress Inquiry

1. The Functionality Doctrine Is The Priniar
Determinative Test

The existence of a patent does not convert what
otherwise would qualify as protectable trade dress into
nonprotectable subject matter. So long as it is possible o as
here o to protect the appearance without unduly hindering
competition, then a per se rule is not necessary. In
fact, the existence of a patent has limited relevance to
the trade dress analysis under roost circumstances.

Although trade dress rights must also be distinctive
and infringed to be protected, the legal functionality test
is the primary factor that ensures that trade dress
protection in product configurations will not unsettle the
foundation of our patent system as surmised by TrafFix.
This Court has unanimously recognized that the ultimate
test of legal functionality is whether the recognition of
trademark rights would significantly hinder competition."
Qua litex, 514 U.S. at 170. Therefore, the question is
one of need, namely whether competitors are able to
effectively compete in the relevant market without need
of the product features defining the asserted trade dress. If
not, then the trade dress is deemed legally functional and
therefore unavailable for protection.

In most cases, there are a wide o if not infinite o
variety of ways to embody a claimed invention of a
patent. Competitors are thus not limited to any one
particular configuration. In such cases, the existence of a
patent has little, if any, relevance to the trade dress
inquiry. Protecting one competitor's distinctive,
nonfunctional embodiment of the patented device does
not deprive the public of its ability to use and build upon
the teachings of the patent. Only when the product
configuration is completely dictated by the claimed
invention would trade dress





r
34
35
rights be foreclosed. In such cases, the trade dress doctrine
of legal functionality would equate the asserted trade dress
with patentable utility. The patent itself may have some
relevance in such instances to identify those features
where design is dictated by the utilitarian goals of the
claimed invention.

In this case, however, there is strong evidence that
the trade dress of the "WindMaster" traffic-type sign
stands is not legally functional. As set forth in the
materials submitted to both the Trial Court and Court of
Appeals below, and as admitted by TrafFix's President,
Jack Kulp, all of the six other major companies in the
marketplace which make spring-mounted sign stands
compete effectively in the marketplace against the MDI
"WindMaster" sign stands and the TrafFix "WindBuster"
sign stands. (Pet. App. 86a-87a; L38-39.) The competing
sign stands of these companies each have a different
appearance, yet perform equivalently to the MDI
"WindMaster" sign stands.

There also was ample evidence by persons skilled in
the art that a substantial number of alternative designs are
possible, all of which would be equivalent in operation and
performance. (J.A. 101; Pet. App. 19a.) The existence of
actual or potential alternative designs that work equally
well strongly suggests that a particular design is not needed by
competitors to effectively compete on the merits. In re
Honeywell, Inc., 8 U.S.P.Q. 2d 1600 (T.T.A.B. 1988)
(round thermostat cover held nonfunctional).

A review of the legislative history of Pub. L. No. 106-43,
113 Stat. 218, quoted above indicates that Congress recognizes
that trade dress rights can harmoniously exist in the
subject matter of a patent. With the new section 43(a)(3),
together with the legislative history, Congress clearly
expressed that the


functionality doctrine is determinative and resolves any perceived
conflict between the patent and trademark laws.

C. TrafFix Is Unclear As To What Is "Covered" By
The Patent

TrafFix does not specifically define what is
supposedly dedicated to the public when a patent expires.
At different times, TrafFix asserts that anything
"covered" by the patent (Pet. Brief 38), anything which is
the "subject" or "subject matter" of the patent (Pet. Brief 10-
12), or anything which is "described" in the patent (Pet.
Brief 43) is ipso facto unprotectable trade dress and
goes into the public domain. This loose terminology is
unfortunate because the differences between the claims on the
one hand and the written specification and drawings on
the other hand is significant.

1. Unclaimed Subject Matter Was Never Part
of the Patent Grant

TrafFix's proposed absolute rule would preclude from trade
dress protection any material that is disclosed in any way in
an expired utility patent o whether a necessary part of the
disclosed invention or not. The weight of reason and
authority does not dictate such a rule. A patent protects the
invention defined by the claims, it affords no protection to features
that are merely disclosed. Dawson Chemical, 448 U.S. at
221. Thus, recognizing trade dress rights in disclosed, but
unclaimed, subject matter will not undermine the patent bargain
since inventors neither expect nor receive the right to
exclude others from using such matter. In other words, the
public does not have to wait until the patent expires to practice its
use.

Moreover, trademark/trade dress policy has no
prohibition against taking things from the public domain
(words, terms, symbols, etc.). See, e.g., The Trade-Mark Cases,
100 U.S. at 94. It is permissible so long as the trademark serves
as a





36

unique source identifier. If the trademark is generic, however, then
it cannot be exclusively appropriated since there is a competitive
need to use the term to describe the product. In the same vein,
legally functional trade dress cannot be protected due to a
competitive need for the product feature.

In the case at bar, MDI's claimed trade dress in not
shown in the drawings of either the '696 or '482 patents, nor
described in either of the two specifications (compare Li with
L41-50). Thus, the public was free to make and/or use
MDI's traffic-type trade dress at any time during the pendency of
its patents o prior to its trade dress acquiring secondary
meaning o so long as it did not infringe the claims.23

2. Analyzing Claimed Subject Matter Results
In a Patent-Like Case

"The patent claims defines the scope of the patent
grant." Markman, 517 U.S. at 373. Under TrafFix's test, in
every trade dress action, the alleged infringer would seek to
argue that the asserted trade dress o or portions thereofo is
covered by one or more expired utility patents. Such an
analysis could turn each case into a lengthy, complicated,
and expensive patent-type proceeding, which would at
least require a Markman-type hearing.24

Following a Markman hearing, the properly construed
claims would then need to be applied to the product trade dress

23. A non-infringing sign stand could have had the same
appearance as MDI's "WindMaster" traffic-type sign stand, but not
include initial compression between the coils of the spring as
required by the '696 patent claims, or meet the geometric
relationship required by the '482 patent claims. (L41-50; J.A.
452-53.)

24. Patent claim construction is an issue of law to be
determined by the Court. Markman, 517 U.S. at 384. In patent
infringement suits, the district court typically holds a separate
Markman hearing to address the claim construction issue.
37

in the same manner as a patent infringement analysis. Id. This
second step, however, is a question of fact requiring ajury
trial unless waived. Id. Also, if the product trade dress
did not literally fall within the scope of the claims, it would have
to be determined whether it came within the scope of the claims
under the Doctrine of Equivalents o which also is a fact
question. Warner-Jenkinson Co. v. Hilton Davis
Chemical Co., 520 U.S. 17 (1997). Thus, TrafFix's position, if
adopted, not only would create additional litigation expense,
delays and complexity, but would raise constitutional
issues with respect to the right to a jury trial. It would also
require the Circuit Courts of Appeal to review the district courts'
claim construction thereby undermining the Federal Circuit's
ability to maintain uniformity in patent law precedent.

In this case, MDI spent many years and considerable
resources before receiving an affirmative determination
that the Winn-Proof sign stand infringed the MDI patent
claims under the Doctrine of Equivalents. See Winn-Proof,
697 F.2d at 1321. If no such ruling existed, the parties
herein would be required to endure a similar process to
determine if the trade dress of the "WindMaster" traffic-type
sign stand fell within the scope of the expired patent claims.
Only after such a resolution could the remainder of the trade dress
issues go forward, and the issues of functionality, secondary
meaning, and likelihood of confusion be resolved.

IV. A PER SE RULE IS UNWARRANTED AND
UNJUSTIFIED

A. A Per Se Rule Is Improper

TrafFix urges this Court to adopt a rule essentially
declaring that the subject matter of an expired patent is per se
functional and therefore not the proper subject of trade dress
protection. Such a position is legally erroneous for a variety of
reasons, as indicated above, and ignores the purposes and policies
behind





38 39
these distinct intellectual property rights. Such a rule would force
manufacturers to select between either patent rights or trade dress
rights o which would run counter to the policy of fostering
competition that underlies each body of law. Moreover, such a
rule would create the nonsensical position that trade dress
protection could be available for a product that was never
disclosed in a utility patent o although it met the statutory
requirements for patentability o but not for a product that was
actually disclosed in a utility patent.25

B. The Consequences Of A Per Se Rule Would Be
Harmful

TrafFix's proposed rule of law would upset the
harmonious balance struck between the patent laws and
unfair competition laws. If everyone suddenly had an
unfettered right to copy anything that was the "subject
of' an expired utility patent, many product shapes that
are without question deserving of protection would no
longer qualify for trade dress protection. For almost every famous
product shape that the public has come to rely upon as a
shorthand source identifier, there likely exists a patent
disclosing or depicting the trade dress. For example, the
famous and distinctive shape of the Coca-Cola bottle, the
Volkswagon Beetle, and the Porsche 911 automobile, just
to name a few, are all disclosed in expired utility
patents.26 The Coca-Cola patent, for example, is directed
toward a method of securing a label to

25. Such a ruling also would be contrary to the positions of
the International Trademark Association (INTA) and the American
Intellectual Property Law Association (AIPLA) both of which
represent the great majority of intellectual property practitioners in
the United States. Even the Justice Department in its amicus brief
filed in support of Petitioner does not advocate for a per se rule.
See amicus briefs of INTA, AIPLA and the United States.

26. U.S. Patent No 6,048,423 (Coke bottle); U.S. Patent
No.
3,861,281 (VW Beetle); U.S. Patent Nos. 3,869,166 and
4,801,173 (Porsche 911). (Resp. L. App. Tabs 5-8.)
and claims the "bulbous sidewall region" of the bottle as a
required element of the invention. Because the distinctive
bottle is "covered by", the "subject matter of' and/or
"disclosed in" the patent, according to TrafFix, it cannot
qualify as protectable trade dress. Thus, Pepsi Cola or an
upstart cola company would be free to market its product in a
bottle of the same shape. The resulting consumer confusion
and deceit could be substantial. In addition, the reputation
and goodwill that Coca-Cola built up for almost 100 years
in the unique shape of its bottle would be lost. The resulting
price to be paid by the consuming public and the producers
of America's most famous brands is too great, and
destroys the foundation upon which Lanham Act is based
o namely, promoting competition by providing consumers
the means to identify the source of goods and services in
the marketplace. A further consequence of TrafFix's
proposed rule would allow competitors to draft patents
disclosing or depicting their rival's trade dress and thereby defeat
the rival's trade dress rights.

Also, as a practical matter, TrafFix's proposed rule
of law would turn every trade dress case into a patent case
by encouraging the accused infringer to search for a
patent or patents disclosing the asserted trade dress as an after-
the-fact justification for possibly deliberate trade dress
infringement. The universe of inventions available in
defense includes any of the more than six million issued
patents. Without further elaboration of the resulting
litigation burden, the consequences are obvious: TrafFix's
clear, predictable rule would move far beyond the "litigation
petri dish" and act as a plague on the courts.27


27. In view of the legal requirements necessary to support a
trade dress claim, TrafFix's assertion that anything less than a per
se absolute rule would lead to a "litigation petri dish" (Pet. Br.
42) and stifle competition is unfounded. To the contrary, as
explained herein, a per se rule would have much more serious and
adverse effects on competition, producers and the public.





40

If TrafFix's position were adopted, the patent
system would suffer significantly, too. The completeness
of patent disclosures would be limited out of concern that
the disclosure may later prevent enforcement of any
trade dress rights in the same type of product which is the
subject of the patent. This would discourage the disclosure
of alternative embodiments and possibly limit the "best
mode" discussion as well. Limiting the description of the
invention might also jeopardize the validity of the patent
in view of 35 U.S.C. B 112 which requires full and
complete disclosure. (Pet. Br. App. 6a.) As a result, the
breadth of patents and, hence, their value may be severely
reduced. A per se rule would, thus, similarly be contrary to
the fundamental policies of our patent system.

The calamity invited by examining the relevance of
a patent vis-~-vis the asserted trade dress is avoided by
resort to the simple alternatives test embodied in the
functionality doctrine. If a design is necessary for
effective competition in the relevant market, allowing
one producer to appropriate it for their sole use would
suggest an end run around the principles of the patent system.
Such situations can be readily addressed by denying trade dress
protection for such designs under the functionality
doctrine or appropriately tailoring a remedy for its use by
others. Under a competitive alternatives test of
functionality, the existence of a patent per se is
irrelevant; and the parade of horribles invited by its presence,
is avoided.

C. A Per Se Rule Would Create Other Issues

A broad per se rule declaring that the subject matter of
any expired patent is incapable of trade dress protection because
the public has an absolute right to copy such subject matter
further raises several significant issues:

1. To what extent must the scope of the patent be
commensurate with the asserted trade dress for the per se
rule to apply? Does all of the asserted trade dress have to be
disclosed


41

or claimed, or only most of the features, or only the
dominant features? Also, could multiple patents be
combined to show that all the elements of the
asserted trade dress are free for all to copy?
Ironically, virtually all trade dress comes from the
public domain. Therefore, all trade dress rights
could likely be defeated by combining select
portions of the "public domain" defined by the
expired patent universe.

2. Why should the holding be limited to
patents of the party asserting the trade dress? What
if the trade dress owner acquired the patents from
someone else, or sold the key patent to another prior to
asserting the trade dress rights? Should these facts make
a difference?

3. What rules of law govern the analysis of what is
included in the "subject matter" of the expired patent?
What standards apply for infringement under the
Doctrine of Equivalents? What if the patent
claims are "means-plus-function" or "step-plus-
function" claims? How are method and process
claims to be handled?

4. Why should the policy be limited to expired
patents? All disclosed but unclaimed subject matter
stands in the same position as anything else in the
public domain.

5. Would such a rule eradicate trade dress
rights which were established prior to the patent
being filed?28 Patents are often directed to
improvements of established products, and
"improvement"-type patents typically show and describe
the existing products as the environment for the
new invention.

6. Can producers file patent applications
disclosing their competitor's trade dress to defeat such
rights?

7. Should utility patents be treated differently
from design patents which protect only the
aesthetic appearance of a product?

28. This is precisely what could occur in the Coca-
Cola example cited supra.





A





42

In sum, an adoption of TrafFix's position could create numerous real and unintended consequences, including many which would be extremely
harmful to consumers and competition.

CONCLUSION

The judgment below should be affirmed. Federal trade dress protection can extend to distinctive, nonfunctional product configurations, regardless
of whether they are disclosed or claimed in expired utility patents.

Respectfully submitted,


LISA A. SARKISIAN
MARKETING DISPLAYS, INC.
38271 W. Twelve Mile Road
Farmington Hills, MI 4833 1-
3041
(248) 553-1900


JOHN A. ARTZ
Counsel of Record
JOHN S. ARTZ
ROBERT P. RENKE
ARTZ & ARTZ PC
Attorneys for
Respondent
28333 Telegraph Road
Suite 250
Southfield, MI 48034
(248) 223-9500

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