Unsolicited Media Coverage of the Product
Plaintiff has produced a very substantial amount of unsolicited media coverage of its Mission Collection (290 appearances in print media). Am. Audi Aff., Ex. B. About 30% of this coverage has concerned the pieces at issue. Am. Audi Aff. P 10. Additionally, Stickley furniture, including the Mission Collection, has been featured in movies and television shows like "A River Runs Through It," "Dead Again," "Thirtysomething," "Mad About You," "Bob," and "Grace Under Fire." Am. Audi Aff. P 11.
Defendants contend that the proffered coverage is entitled to little weight because many of the articles were dated after Canal Dover entered the Mission market. It is true that plaintiff must demonstrate that its dress had acquired secondary meaning in the minds of the consuming public at the time that the defendants adopted the allegedly infringing dress. See PaperCutter Inc. v. Fay's Drug Co., 900 F.2d 558, 564 (2d Cir. 1990) (citing cases). However, no less than 250 of the proffered appearances in print media were published prior to defendants' use of the allegedly infringing dress. Am. Audi Aff. Ex. B. This factor weighs in favor of the plaintiff.
The Mission Collection as a whole accounts for approximately 74% of Stickley's sales. Al. Audi Aff. P 4; Am. Audi Aff. P 12. In 1989 this figure stood at 18%. Am. Audi Aff. P 12. By the end of 1992 this figure had risen to 56% and in 1993 it stood at 65%. Id. The pieces at issue here rank in the top ten for sales of pieces in Stickley's Mission Collection and, together, produced over $ 3.4 million in sales in 1994. Al. Audi Aff. P 4. This factor favors the plaintiff.
Attempts to Plagiarize the Dress
Intentional copying of plaintiff's dress is the most persuasive factor in favor of finding secondary meaning. Centaur, 830 F.2d at 1224; LeSportsac, 607 F. Supp. at 185. Intentional copying may be inferred where competitors are selling identical products in the same market. 20th Century Wear, Inc. v. Sanmark-Stardust, Inc., 747 F.2d 81, 91 (2d Cir. 1984), cert. denied, 470 U.S. 1052, 84 L. Ed. 2d 818, 105 S. Ct. 1755 (1985).
For the reasons discussed in Part A of the Court's Decision under "Defendants' Bad Faith," the Court finds that this factor favors the plaintiff.
Length and Exclusivity of the Dress's Use
No other furniture manufacturers were commercializing the same furniture in 1989 when Stickley introduced its Mission line. Defendants began selling their Mission-style furniture in April 1993. Bassett began selling its Mission-style line in 1991. Therefore, plaintiff's dress enjoyed relatively short exclusive use. However, "no absolute time span can be posited as a yardstick in cases involving secondary meaning." Centaur, 830 F.2d at 1225. Although "a product design may take longer than a wordmark to acquire secondary meaning," PAF S.R.L. v. Lisa Lighting Co., Ltd., 712 F. Supp. 394, 407 (S.D.N.Y. 1989), the Arts and Crafts mania and the associated widespread publicity of Mission furniture, prominently featuring Stickley's pieces, leads the Court to conclude that this factor weighs in favor of the plaintiff.
Since a balancing of the above factors favors the plaintiff, the Court finds that plaintiff has succeeded in demonstrating a likelihood that its trade dress is protectible under the Lanham Act, having acquired distinctiveness through secondary meaning. The Court must next evaluate whether defendants may insulate themselves from the issuance of a preliminary injunction by demonstrating that the dress at issue is functional.
Defendants may defeat plaintiff's claims under § 43(a) of the Lanham Act if they demonstrate that the trade dress allegedly infringed is merely "functional." Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76, 79 (2d Cir. 1990). In the Second Circuit, functionality is a defense that must be pleaded and proved by defendant. LeSportsac, 754 F.2d at 76. Dress may be functional either in the "utilitarian" sense or the "aesthetic" sense.
As to utilitarian functionality, a functional feature is one that "is essential to the use or purpose of the article or [that] affects the cost or quality of the article." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10, 72 L. Ed. 2d 606, 102 S. Ct. 2182 (1982). A feature is essential "only if the feature is dictated by the functions to be performed; a feature that merely accommodates a useful function is not enough." LeSportsac, 754 F.2d at 76. A design feature affects the cost or quality of an article where it "permits the article to be manufactured at a lower cost" or "constitutes an improvement in the operation of the goods." Id. As to their defense of utilitarian functionality, defendants have failed to demonstrate either that plaintiff's dress is "dictated by the functions to be performed" or that plaintiff's dress uniformly causes its products to be manufactured at a lower cost or improves their operation. Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1148 (2d Cir. 1987).
Even trade dress that is non-functional in the utilitarian sense can be "aesthetically functional," and thus fail to merit protection. The focus of this inquiry is whether "trade dress protection upon a particular arrangement of features will hinder competition or impinge upon the rights of others to compete effectively in the sale of goods." Wallace Int'l, 916 F.2d at 79 (quoting Stormy Clime Ltd v. Progroup, Inc., 809 F.2d 971, 976-77 (2d Cir. 1987)) (internal quotations and citations omitted) (emphasis supplied). "[A] 'design is functional because of its aesthetic value only if it confers a significant benefit that cannot practically be duplicated by the use of alternative designs.'" Villeroy & Boch Keramische Werke K.G. v. THC Sys., Inc., 999 F.2d 619, 621 (2d Cir. 1993) (citing Restatement (Third) of Unfair Competition, § 17, cmt. c). In order to prevail in its aesthetic functionality argument defendants must show that without the specific arrangement of features of plaintiff's dress, "it is at a significant competitive disadvantage in making the initial sale." Villeroy, 999 F.2d at 621.
Defendants have not proffered evidence showing that plaintiff seeks protection for the "basic elements of a style that is part of the public domain." Rather the evidence is consistent with plaintiff seeking protection of a "precise expression of a decorative style" that would allow defendants to compete effectively in the same market as long as they did not utilize plaintiff's particular arrangement of elements. Wallace Int'l, 916 F.2d at 81. Thus, for the purposes of this motion, defendants have failed to satisfy their burden of establishing that functionality is likely to constitute a successful defense to plaintiff's cause of action.
The Court finds that, by demonstrating a likelihood of confusion, plaintiff has shown that it will be irreparably harmed if the injunction does not issue. Further, plaintiff has demonstrated that it is likely to succeed at trial in proving that its dress is protectible, having acquired secondary meaning, and that a likelihood of confusion exists. Therefore, it is hereby
ORDERED, that defendants are preliminarily enjoined from
a) displaying, advertising, or shipping furniture which resembles the trade dress of Stickley's Mission Collection furniture including the pieces set forth in Appendix A to this Decision and Order, so as to be likely to cause confusion, mistake, or deception in connection with the source of the furniture; and
b) shipping furniture listed in Appendix B to this Decision and Order. It is further
ORDERED, that the temporary restraining order presently in effect is dissolved upon the entry of this order. It is further
ORDERED, that this preliminary injunction shall be conditioned upon the giving of security by the plaintiff, in addition to the cash bond or certified check already posted, in the sum of fifty thousand & 00/100 Dollars ($ 50,000) cash bond &r certified check for a total of one hundred thousand and 00/100 dollars ($ 100,000) to be placed in the Court registry for the payment of such costs and damages as may be incurred or suffered by any party who is found to have been wrongfully enjoined.
IT IS SO ORDERED.
Dated: July 7, 1995
Syracuse, New York
Frederick J. Scullin, Jr.
U.S. District Judge
89-286 Spindle Settee Oak
91-286 Spindle Settee Cherry
89-376 Spindle Arm Chair Oak
91-376 Spindle Arm Chair Cherry
89-384 Spindle Side Chair Oak
91-384 Spindle Side Chair Cherry
89-354 Harvey Ellis Side Chair Oak
91-354 Harvey Ellis Side Chair Cherry
89-711 Sideboard Oak
Canal Dover Furniture
A-1301 Stillwater Arm Chair
CA-1351 Stillwater Arm Chair
S-1300 Stillwater Side Chair
CS-1350 Stillwater Side Chair
CA-6751 Stillwater Bench
A-6701 Stillwater Bench
Stonehouse Side Chair
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