Bodum USA, Incorporated v. A Top New Casting Incorporated
Opinion
Bodum USA, Inc. ("Bodum") produces and sells what design magazines and art museums have recognized as an iconically designed houseware product-the Chambord French press coffeemaker. Bodum sued A Top New Casting, Inc. ("A Top") for selling a French press that Bodum claimed infringes on its unregistered trade dress in the Chambord. After a five-day trial, a jury returned a verdict in favor of Bodum, finding that A Top had willfully infringed on Bodum's trade dress in the Chambord and awarding Bodum $ 2 million in damages. The district court denied A Top's post-trial motion for judgment as a matter of law, in which A Top argued that Bodum failed to prove the Chambord design was nonfunctional. A Top also moved for a new trial because the court excluded evidence of various utility patents covering French press coffeemakers; the district court denied this motion as well. We affirm.
I. Background
Plaintiff-appellee Bodum has been selling French press coffeemakers since the 1970s. A French press is a nonelectric coffeemaker consisting of a cylindrical carafe and a plunger attached to a filter screen. The user adds boiling water to coffee grounds in the carafe and, after the grounds have steeped, presses the filter down slowly through the carafe to separate *489 the used grounds from the brewed coffee.
Bodum began distributing the Chambord, its flagship French press, in 1983. The Chambord's design originated in France in the 1930s and is based on the towers of the Chambord Chateau, a castle in France's Loire Valley. Its features include a metal cage with a band around the top of the carafe, metal pillars ending in four curved feet, a C-shaped handle, and a domed lid topped with a spherical knob. Bodum's Chambord French press is pictured below:
Bodum acquired exclusive rights to distribute the Chambord in 1991 and has spent millions of dollars promoting it in print and television advertisements and at trade shows worldwide. Bodum sells the Chambord in department stores, at Starbucks coffee shops, and online, including through Amazon. The Chambord design has been recognized as classic by such institutions as Phaidon Design Classics and the Museum of Modern Art. Bodum actively polices whatever it believes to be infringement of this design; it has sent dozens of cease-and-desist letters over the past twenty-five years and has filed lawsuits against alleged infringers when they did not stop selling their products in response to Bodum's requests.
In 2014, defendant-appellant A Top began selling a competing French press coffeemaker called the SterlingPro exclusively through Amazon. The SterlingPro is similar in appearance to the Chambord, with the same metal cage, metal pillars ending in curved feet, C-shaped handle, and domed lid topped with a spherical knob. The two coffeemakers are pictured side-by-side below, with the Chambord on the left and the SterlingPro on the right:
*490
Bodum filed a complaint against A Top in the Northern District of Illinois on March 7, 2016, bringing claims for trade dress infringement under the Lanham Act,
The jury returned a verdict in Bodum's favor, finding that A Top willfully infringed on Bodum's Chambord trade dress and awarding Bodum $ 2 million in damages. A Top timely moved for judgment as a matter of law under Federal Rule of Civil Procedure 50 and for a new trial under Rule 59. As relevant here, A Top claimed that it was entitled to judgment as a matter of law because Bodum had failed to prove its Chambord trade dress elements were nonfunctional. And A Top said it was at least entitled to a new trial because the district court erred in excluding evidence under Rule 403 of utility patents that, it said, disclosed the Chambord's trade dress features (demonstrating the functionality of those features). The district court denied both motions on June 6, 2018.
On August 21, 2018, the district court granted Bodum's motion for enhanced damages, awarding prejudgment interest and doubling the damages award to $ 4 million, and it denied Bodum's motion for attorney's fees. Further, the court granted Bodum's request for a permanent injunction to prevent A Top from continuing to sell its infringing SterlingPro products. The district court entered final judgment on August 23, and A Top timely appealed.
II. Discussion
A Top pursues two arguments on appeal. First, A Top says that it is entitled to judgment as a matter of law because Bodum did not meet its burden of demonstrating that the elements of the claimed Chambord trade dress were nonfunctional (as required for it to be enforceable under the Lanham Act). Second, A Top claims that it is entitled to a new trial because the district court improperly excluded several utility patents from evidence under Rule 403.
*491 A. Functionality of the Chambord Trade Dress
We review de novo the denial of a Rule 50 motion for judgment as a matter of law.
Thorne v. Member Select Ins. Co.
,
The Lanham Act permits a civil action against any person who uses "any word, term, name, symbol, or device" "in connection with any goods or services" in a manner which "is likely to cause confusion" as to the source of those goods or services.
At trial, Bodum was required to prove a number of elements for the jury to find trade dress infringement-that it owns a valid trade dress in the Chambord design, that the trade dress is not functional, and that A Top's SterlingPro was likely to cause consumer confusion as to its source.
See
Trademark protection for trade dress, unlike patent and copyright protection, has no time limit; the Act therefore does not protect features that are necessary for the use of a product, so as to prevent one competitor from maintaining a "perpetual and exclusive right to a useful product feature."
In deciding whether a trade dress element is functional, we consider several factors:
(1) the existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item's design element; (2) the utilitarian properties of the item's unpatented design elements; (3) advertising of the item that touts the utilitarian advantages of the item's design elements; (4) the dearth of, or difficulty in creating, alternative designs for the item's purpose; (5) the effect of the design feature on an item's quality or cost.
Ga.-Pac. Consumer Prods. LP v. Kimberly-Clark Corp.
,
Bodum claims trade dress protection in the overall appearance of the Chambord and identifies the following specific elements as contributing to that distinctive look: the metal band surrounding the carafe that forms support feet and the handle attachment, the domed lid, the rounded knob atop the plunger, and the C-shaped handle.
See
Comput. Care v. Serv. Sys. Enters., Inc.
,
A Top argues Bodum failed to establish that the claimed Chambord features are not essential to its use and that these features do not affect the coffeemaker's cost or quality. However, in its argument, A Top consistently elides the distinction between a product's "function" in the everyday meaning of the term and "functional" as a term of art used in trade dress law. Bodum does not claim that any French press coffeemaker with a handle, a domed top, or metal around the carafe infringes on its trade dress. Rather, it is the overall appearance of A Top's SterlingPro, which has the
same
shaped handle, the
same
domed lid, the
same
shaped feet, the
same
rounded knob, and the
same
shaped metal frame as the Chambord, that Bodum objects to. Thus, to establish it has a valid trade dress, Bodum did not have to prove that something like a handle does not serve any function. It merely needed to prove that preventing competitors from copying the Chambord's particular design would not significantly disadvantage them from producing a competitive and cost-efficient French press coffeemaker.
See
Arlington Specialties
,
When properly framed in this manner, Bodum presented sufficient evidence for a reasonable jury to conclude that the Chambord's overall look was nonfunctional. First, regarding the utilitarian properties of the Chambord's design elements,
see
Ga.-Pac. Consumer Prods.
,
A Top's expert, Peter Bressler, agreed. He "didn't see particularly great advantage in the design of the handle, but [he] saw an advantage in having a handle." Whether it is more advantageous for a French press to have
a handle
, however, is not the pertinent inquiry; the question is whether there is an advantage to having
this designed handle
, to which Mr. Bressler agreed there is not. The same is true of the feet: Mr. Bressler testified he "didn't see a particular advantage in the design of the feet, but [ ] saw the fact that it had feet, which, to [him], was a utilitarian advantage." Again, this does not speak to any advantages of the
design
of the feet. Overall, Mr. Bressler testified that "[t]he utilitarian advantages ... are not that clear." This evidence weighs in favor of nonfunctionality because it supports that the claimed Chambord features are "merely ornamental" and are not necessary to make the Chambord work better as a French press coffeemaker.
Arlington Specialties
,
Next, A Top argues that Bodum admitted the Chambord design was functional in its advertising and thus failed to meet its burden of proving nonfunctionality.
See
Ga.-Pac. Consumer Prods.
,
Additionally, Bodum introduced a plethora of evidence regarding the availability of alternative designs, which supported the Chambord's lack of functionality.
Finally, we must consider the cost or quality advantage test of functionality.
See
TrafFix Devices
,
Joergen Bodum further supported Mr. Anders's opinion in his testimony regarding the many different French presses Bodum produces. For example, Bodum's "Bistro" French press does not have a metal frame, a domed lid, or a C-shaped handle. Mr. Bodum testified that the Bistro is less expensive to produce ("maybe less than half of what it costs to make a Chambord") and less time-consuming to produce because it requires less material than the Chambord. Although the Bistro was a successful first product for the company, Mr. Bodum testified he decided to produce the Chambord, a more complex and expensive product, in addition to the Bistro because he was interested in its iconic French design. Mr. Bodum also discussed the manufacturing costs to produce Bodum's various French press coffeemakers. He explained that the Chambord is neither the cheapest nor the most expensive French press Bodum sells. 3 Thus, Mr. Bodum's testimony supported that the Chambord's overall design conferred no particular cost advantage that made it functional. 4
*495
Indeed, Jian Liang, A Top's CEO, testified that A Top produces another French press with a plastic frame that is less expensive than the metal SterlingPro. This testimony further demonstrates that the Chambord's design does not provide a cost advantage. Contrary to A Top's argument, Bodum provided evidence sufficient for the jury to conclude that the Chambord's appearance is costlier to manufacture than to design around, which supports that the Chambord trade dress is not functional.
See
Thomas & Betts Corp. v. Panduit Corp.
,
Overall, looking at the evidence in the light most favorable to the verdict, Bodum presented sufficient evidence for the jury to have found Bodum's claimed trade dress was nonfunctional. We cannot say the jury was irrational to reach this conclusion, so we affirm the denial of A Top's motion for judgment as a matter of law.
B. Exclusion of Utility Patents Evidence
A Top also appeals a related issue-the district court's decision to exclude evidence of various utility patents, which A Top contends demonstrate the functionality of the claimed Chambord trade dress features. A district court may exclude relevant evidence where its probative value is substantially outweighed by, for example, a risk of unfair prejudice or confusing the issues. Fed. R. Evid. 403. We review evidentiary rulings for abuse of discretion and will reverse "only if no reasonable person would agree with the district court's view."
United States v. Proano
,
As noted above, courts consider "the existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item's design element" in considering whether a claimed trade dress is functional.
Ga.-Pac. Consumer Prods.
,
Evidence of utility patents came up during Mr. Anders's examination. On direct examination, Bodum asked Mr. Anders a total of seven questions about utility patents and showed him one patent that A Top's expert had cited in his report. Mr. Anders testified that, though a utility patent claiming a feature is evidence that this feature is functional in the trade dress sense, he did not find any utility patents covering the Chambord trade dress features. He believed the patent A Top's expert *496 cited only disclosed the plunger rod engaging with the cylindrical walls of the carafe, which Mr. Anders explained is a feature in all French presses and has no bearing on the Chambord trade dress.
On cross examination, A Top asked Mr. Anders many additional questions about patents and showed him approximately ten utility patents. A Top questioned Mr. Anders about whether the patents disclosed the same elements Bodum claims as part of the Chambord trade dress-a domed lid, a handle, and a circular knob atop the plunger. However, counsel only provided Mr. Anders with the pictures from the patents, not the portion of the patents explaining the claims. Mr. Anders testified that he believed utility patents describe the claims in words, not in the illustrations, so he would not agree the patents disclosed any elements of the Chambord trade dress based solely on a review of the pictures.
Bodum's counsel objected to the admission of the patents as evidence. The court provisionally admitted the patents for Bodum's redirect examination of Mr. Anders and then heard arguments on the objection at the next break in the trial. Bodum argued the patents A Top sought to have admitted were irrelevant because they were not patents for any Bodum or A Top product and were not patents of identical designs. Bodum also argued the proposed exhibits were incomplete as they were only a portion of the patents. The district court requested briefing on the issue of whether utility patents for similar but not identical products are relevant to the question of functionality and requested complete copies of each patent.
After reviewing the parties' arguments and the entire patents, the district court excluded them from evidence. The court explained it did not matter that the patents were for other parties' products but it did matter whether the features Bodum claimed as part of its trade dress were disclosed in the patents. The court asked A Top to point to language in any of the patents it sought to admit that claimed as part of the patent "any of the features that [Bodum] says are part of its trade dress." A Top could not, however, find any such language. Though it continued to insist the patents described knobs and domed lids, it could not point to any language in the patents to support this contention. The patent A Top claimed "most illuminating" described: "The system of Claim 1 or the cover means comprising removable cover for the drinking vessel adapted to fit over the top of the vessel, having an opening through which the push rod extends the sliding movement relative to the cover." 6 But A Top was unable to point to a single patent that claimed a domed lid, a C-shaped handle, feet on the bottom of the carafe, or a metallic castle-shaped cage-the design elements Bodum claims as its trade dress.
The district court reviewed the jury instruction on whether a patent discloses the "practical advantages" of the design and explained that TrafFix Devices requires that the patent somewhere (not necessarily in the claims portion of the patent) claim the trade dress features in some "significant way." Here, none of the patents did so. Though some of the French presses in the patent pictures had a handle, feet, or something on top of the plunger, the court did not think that "bears on the question of whether it's functional as ... trade *497 dress law defines that term." The court elaborated:
[T]here is a massive potential for jury confusion here if these things are used in the way, frankly, that they were used during the cross-examination of the [ ] expert. You put a picture up there, that's got a handle, it's got a knob, it's got a plunger, it's cylindrical like yours, that's not what the inquiry is. The inquiry isn't whether somebody has drawn this picture before. The inquiry is whether ... the features are claimed in a patent in a way that shows that they have some sort of a function.
The court then concluded: "I don't think it's relevant. If it's relevant, it has teeny teeny probative value, massive potential for jury confusion. It's excluded under Rule 403." The court did not permit A Top to use the patent evidence with its expert and gave the jury a curative instruction: "During the cross-examination of witness Robert Anders, he was shown certain pages from certain patents. I have excluded those patents from the evidence in this case. You are not to consider them for any purpose."
The district court did not abuse its discretion in excluding this evidence. The patents A Top sought to introduce do not claim any of the features that comprise the claimed Chambord trade dress.
See
TrafFix Devices
,
A Top also claims that whether a patent discloses a feature's utility is a question of fact for the jury and, as such, the district court erred in excluding the patents from the jury's consideration. In
Thomas & Betts
, we explained that a "utility patent must be examined in detail to determine whether or not the disclosed configuration is really primarily functional or just incidentally appears in the disclosure of a patent."
This is not one of those extreme cases in which we second-guess the trial judge's *498 weighing of the probative value of the evidence with the potential for jury confusion on a Rule 403 issue. We affirm the court's denial of A Top's motion for a new trial. 7
III. Conclusion
For the foregoing reasons, we AFFIRM the judgment of the district court.
In fact, at oral argument, A Top confirmed that it was not arguing that the SterlingPro did not copy the Chambord, but it instead argued that it "had a right to copy, right down to the last bolt," because Bodum did not have a valid trade dress in the Chambord.
A Top points to two changes Bodum made to the Chambord in response to safety issues the United States Consumer Product Safety Commission raised-reducing the size of the knob and redesigning the lid to fit deeper into the carafe-as evidence the knob and lid are functional. However, Bodum could have reduced the size of the knob and made it a flat disk or redesigned the deep-fitting lid to be flat instead of domed while still remedying these safety concerns. There is no evidence that the appearance of the features as redesigned are necessary for a competitive product, from a use (or cost) perspective.
A Top repeatedly states in its brief that Mr. Bodum testified the Chambord provides a cost advantage. The trial testimony A Top cites for the proposition, however, does not support this assertion. Though Mr. Bodum did answer affirmatively that the Chambord design "gives a cost advantage in manufacturing over other types of French presses," it is abundantly clear from the surrounding answers that Mr. Bodum misspoke in answering this question. Immediately before this answer, Mr. Bodum explained that the Chambord is "one of the most expensive" coffeemakers to manufacture, and immediately after, Mr. Bodum confirmed that the Chambord's design does not "result from the fact that it was so inexpensive to manufacture." A Top's efforts to take Mr. Bodum's misstatement as an admission are therefore unavailing.
A Top relies on
Apple Inc. v. Samsung Electronics Co.
,
A utility patent covers "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."
During argument on the objection, A Top described this as the Banks patent, 5,618,570, which does not appear to be in the record and is not mentioned in either party's appellate briefs.
In its opening brief, A Top cites to the standard of review for a motion for a new trial based on improper jury instructions. However, A Top does not develop an argument based on any problem with the court's instructions, and so we do not address this issue.
See
Ienco v. Angarone
,
Reference
- Full Case Name
- BODUM USA, INCORPORATED, Plaintiff-Appellee, v. a TOP NEW CASTING INCORPORATED, Defendant-Appellant.
- Cited By
- 28 cases
- Status
- Published