Taking on issues of functionality and fame relating to trade dress rights, the US Court of Appeals for the Ninth Circuit affirmed in part and reversed in part the district court’s judgment after a jury trial on claims of infringement and dilution of trade dress rights in furniture. The Ninth Circuit distinguished utilitarian functionality from aesthetic functionality, and reaffirmed the high burden on the proponent of dilution to establish that the mark has become a “household name.” Blumenthal Distributing, Inc. DBA Office Star v. Herman Miller, Inc., Case Nos. 18-56471, -56493 (9th Cir. June 25, 2020) (Korman, J.).
In 2013, Herman Miller accused Office Star Products (OSP) of selling unauthorized replicas of its Eames lounge chair and Aeron ergonomic office chair, and filed suit against the company for infringement and dilution of its claimed registered and unregistered trade dress rights in the chairs. A jury found that both the registered and unregistered Eames chair trade dress rights were protectable and that OSP willingly infringed and diluted those rights, resulting in an injunction against OSP along with almost $6.5 million in damages. The jury found the Aeron trade dress rights to be “functional” and thus unprotectable, however, and as a result the district court held Herman Miller’s US trademark registration for the Aeron chair invalid. Both parties appealed.
The Ninth Circuit first tackled the issue of functionality in trade dress, explaining that a product’s design may only be protected under trademark law if the design is nonfunctional with respect to the way the product works (utilitarian functionality) and based on how the product looks (aesthetic functionality). As to the Eames chair, with Herman Miller’s rights in the “overall visual appearance” of the chair in question, the Court clarified that a product’s “overall appearance” is functional, and thus unprotectable, where the whole product is “nothing other than the assemblage of functional parts.” Here, the Court found easily that Herman Miller introduced “abundant evidence” demonstrating that the Eames chair’s overall appearance resulted from non-utilitarian design choices, and pointed to testimony regarding the sculptural design aesthetics of the chair’s namesake designers, Charles and Ray Eames, as well as the lack of any utilitarian purpose of certain design features, such as trapezoidal shaped armrests and unique stitching patterns. The Court affirmed the earlier judgment in favor of Herman Miller on its causes of action for the infringement of its registered and unregistered Eames chair trade dress.
On the Aeron chairs, the Ninth Circuit reversed and remanded for a new trial after finding that the district court judge erred in instructing the jury that a design feature is functional if it is part of the actual benefit that consumers wish to purchase when they buy the product. The Court found this instruction to be contrary to existing case law, and explained that even if a design feature is part of the actual benefit sought by consumers when they buy the product, that is not proof that the design feature is functional.
Closing out its opinion, the Ninth Circuit turned to the issue of fame and reversed the lower court’s judgment in favor of Herman Miller on its cause of action for dilution. The Ninth Circuit’s interpretation of the Trademark Dilution Revision Act of 2006 sets a high bar for establishing trademark fame only when a mark is “widely recognized by the general consuming public of the United States” and has become a “household name.” Under this standard, the Court concluded that Herman Miller failed to meet its burden of proof with sufficient evidence of fame of the claimed Eames trade dress. Even taken in the light most favorable to Herman Miller, the Court determined that Herman Miller’s $500,000 in annual advertising spend, along with appearances of the chairs in museums, television shows and movies, still did not meet the Ninth Circuit’s fame standard established in Thane Int’l, Inc. v. Trek Bicycle Corp.
While agreeing with the majority in affirming the judgment in favor of Herman Miller on its causes of action for trade dress infringement, Judge Friedland dissented from the Court’s conclusion that there was insufficient evidence to sustain the jury’s verdict in favor of Herman Miller on its claim for dilution of the Eames trade dress. Citing “misguided” analysis of Thane, Judge Friedland opined that the evidence of fame presented by Herman Miller was stronger than that in Thane given the ubiquitous presence of the Eames chair in office environments, “countless” appearances in movies and TV, and the chair’s iconic, museum-worthy design.