Antioch Company v. Western Trimming

• Court: Court of Appeals for the Sixth Circuit
• Decided: October 20, 2003
• Docket: 02-3380
• Status: Published

Opinion

RECOMMENDED FOR FULL-TEXT PUBLICATION Pursuant to Sixth Circuit Rule 206 2 Antioch Company v. No. 02-3380 ELECTRONIC CITATION: 2003 FED App. 0368P (6th Cir.) Western Trimming Corp. File Name: 03a0368p.06 _________________ UNITED STATES COURT OF APPEALS COUNSEL FOR THE SIXTH CIRCUIT ARGUED: John B. Pinney, GRAYDON, HEAD & _________________ RITCHEY, Cincinnati, Ohio, for Appellant. John E. Kelly, KELLY, BAUERSFELD, LOWRY & KELLY, Woodland THE ANTIOCH COMPANY , X Hills, California, for Appellee. ON BRIEF: John B. Pinney, Plaintiff-Appellant, - GRAYDON, HEAD & RITCHEY, Cincinnati, Ohio, Thomas - W. Flynn, WOOD, HERRON & EVANS, Cincinnati, Ohio, - No. 02-3380 Steven D.A. McCarthy, BIEBEL & FRENCH, Dayton, Ohio, v. - for Appellant. John E. Kelly, John D. Bauersfeld, KELLY, > BAUERSFELD, LOWRY & KELLY, Woodland Hills, , WESTERN TRIMMING - California, Charles J. Faruki, Gerald S. Sharkey, FARUKI, CORPORATION , - IRELAND & COX, Dayton, Ohio, for Appellee. Defendant-Appellee. - _________________ - N OPINION Appeal from the United States District Court _________________ for the Southern District of Ohio at Dayton. No. 98-00236—Walter H. Rice, Chief District Judge. RONALD LEE GILMAN, Circuit Judge. This appeal involves the question of whether, as a matter of law, the Argued: September 10, 2003 Antioch Company’s scrapbook album configuration is functional and therefore ineligible for trade dress protection. Decided and Filed: October 20, 2003 By seeking trade dress protection for its album design, Antioch is trying to bar Western Trimming Corporation Before: MOORE and GILMAN, Circuit Judges; MILLS, (Westrim) from selling “knock-off” copies of the album District Judge.* format under the Westrim trademark. For the reasons set forth below, we AFFIRM the district court’s grant of summary judgment for Westrim. I. BACKGROUND A. Factual background Antioch produces and markets a scrapbook album under the * The Hon orable R ichard M ills, United States District Judge for the trademark “CREATIVE MEMORIES” that has several Central District of Illinois, sitting by designation.

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distinctive features. The album utilizes a dual strap-hinge Cherished Line albums into the U.S. market pending design that permits the pages to lie flat when the album is resolution of the litigation. open, facilitates the turning of the pages, and enables the easy insertion of additional pages. Another design element of the On July 29, 1998, the district court denied Antioch’s CREATIVE MEMORIES album is its spine cover that motion for a preliminary injunction, focusing its discussion conceals the dual strap-hinge, which causes it to be known as primarily on the trademark infringement issue. The district a “closed back” or “bookshelf” album. A third element of court found that Westrim adopted Antioch’s album design in Antioch’s album is the laminated, padded album covers. order to achieve its functional benefits, not to confuse Finally, the CREATIVE MEMORIES album pages have scrapbook enthusiasts about the supplier or source of the ribbed edges that provide reinforcement, keep them separated, album. In an unpublished opinion, a prior panel of this court and hold the staples together. Antioch seeks trade dress affirmed the district court’s denial of a preliminary injunction, protection for the CREATIVE MEMORIES album that concluding that Westrim would probably defeat Antioch’s encompasses these above-described features. claim of likelihood of confusion when the case went to trial. Antioch Co. v. Western Trimming Corp., Nos. 98-3876, 98- In 1997, Westrim, a competitor of Antioch in the hobby and 3943, 1999 WL 777556, at *6 (6th Cir. 1999). craft industry, decided to copy the Antioch strap-hinge album in order to provide its customers with the functional benefits Although it found the oversight harmless, the prior panel of the design. After determining that Antioch’s patents that acknowledged that the district court had not addressed the potentially covered the features in question had expired, trade dress infringement issue. The panel, nonetheless, drew Westrim developed and marketed its own version of the strap- several tentative conclusions about the trade dress claim. In hinge albums—the “Cherished Line” — under its existing particular, it expressed skepticism regarding the “MEMORIES FOREVER” trademark. Through the use of its distinctiveness and attachment of secondary meaning to the own distinctive logo and scroll work on the album covers, Antioch albums, and also observed that the contested spine Westrim links the Cherished Line to its other photo, cover was purely functional. Id. at *4. scrapbook, and related accessories in the MEMORIES FOREVER product line. Following the denial of the preliminary injunction and the clear indication that Antioch was unlikely to prevail on its B. Procedural background trademark infringement claim, Antioch abandoned that cause of action. Antioch instead filed an amended complaint on Westrim presented the Cherished Line products at a craft March 13, 2000, focusing its efforts on its federal and industry trade show on June 5, 1998. Antioch filed suit three common law trade dress claims, as well as implied passing- days later, alleging trademark and trade dress infringement off claims under § 43(a) of the Lanham Act, 15 U.S.C. violations under the Lanham Act, 15 U.S.C. §§ 1051–1127, 1125(a), and Chapter 4165.02 of the Ohio Revised Code. The as well as various state-law claims for trademark district court granted Westrim summary judgment on the infringement, unfair competition, and deceptive trade implied passing-off claims on September 20, 2001. As a practices. It essentially protested Westrim’s sale of an album consequence, only the trade dress claims remained. that was virtually identical to its own. In addition, Antioch sought to immediately enjoin Westrim from introducing the No. 02-3380 Antioch Company v. 5 6 Antioch Company v. No. 02-3380 Western Trimming Corp. Western Trimming Corp.

Antioch has alleged that Westrim’s Cherished Line albums II. ANALYSIS infringe on Antioch’s CREATIVE MEMORIES album- configuration trade dress and page-configuration trade dress. A. Standard of review Westrim moved for summary judgment on several grounds, one of which was that the album and page configurations We review a district court’s grant of summary judgment de were functional and thus not entitled to trade dress protection. novo. Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, Adhering to this court’s decision in Marketing Displays, Inc., 629 (6th Cir. 2002). Summary judgment is proper where v. TrafFix Devices, Inc., 200 F.3d 929 (6th Cir. 1999), the there exists no genuine issue of material fact and the moving district court applied the “competitive-necessity” test to the party is entitled to judgment as a matter of law. Fed. R. Civ. trade dress claim. This test evaluates whether use of the P. 56(c). In considering a motion for summary judgment, the particular album design was dictated by competitive necessity district court must construe the evidence and draw all because the configuration was purely functional. Westrim’s reasonable inferences in favor of the nonmoving party. motion was denied because “the existence of alternative Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. [album] designs was sufficient to raise a genuine issue of 574, 587 (1986). The central issue is “whether the evidence material fact” concerning the functionality of Antioch’s presents a sufficient disagreement to require submission to a album and page configurations. The district court did, jury or whether it is so one-sided that one party must prevail however, invite Westrim to renew its motion for summary as a matter of law.” Anderson v. Liberty Lobby, Inc., 477 judgment if the Supreme Court, which at the time had under U.S. 242, 251-52 (1986). advisement the TrafFix Devices decision, altered the legal framework for assessing trade dress protection claims. B. The legal test for trade dress infringement

In TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), U.S. 23 (2001), the Supreme Court in fact reversed this protects a product’s trade dress from infringement. To court’s prior decision and provided clarification regarding the recover for trade dress infringement, however, the appropriate test for evaluating whether a product was complaining party must “show that the allegedly infringing nonfunctional and thereby eligible for trade dress protection. feature is not ‘functional’ . . . and is likely to cause confusion Based upon the changed landscape after TrafFix Devices, with the product for which protection is sought.” Wal-Mart Westrim renewed its motion for summary judgment in the Stores, Inc., v. Samara Bros., Inc., 529 U.S. 205, 210 (2000) district court. The district court subsequently granted (internal citation omitted); see also Abercrombie & Fitch Westrim’s motion in accordance with the Supreme Court’s Stores, Inc., v. American Eagle Outfitters, Inc., 280 F.3d 619, TrafFix Devices guidance. Antioch Co. v. Western Trimming 641 (6th Cir. 2002) (stating that, under 15 U.S.C. 1125(a)(3), Corp., 196 F. Supp. 2d 635, 643 (S.D. Ohio 2002). From this the plaintiff has the burden of proving nonfunctionality). In decision, Antioch appeals. addition, “a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning.” Wal-Mart Stores, 529 U.S. at 216; see also Gray v. Meijer, Inc., 295 F.3d 641, 645 (6th Cir. 2002) (explaining that trade dress protection is warranted where a product’s trade dress has acquired secondary meaning in the marketplace, its No. 02-3380 Antioch Company v. 7 8 Antioch Company v. No. 02-3380 Western Trimming Corp. Western Trimming Corp.

appropriated features are nonfunctional, and the infringing On certiorari, the Supreme Court reversed the Marketing product’s trade dress is confusingly similar to its own). Displays decision, explaining that this court erred in believing that the test for functionality was “whether the particular The district court’s grant of summary judgment was based product configuration is a competitive necessity.” TrafFix exclusively on the functionality factor of the trade dress Devices, 532 U.S. at 32 (quoting Marketing Displays, 200 infringement analysis. It concluded that, as a matter of law, F.3d at 990). The Supreme Court clarified that the principal Antioch’s trade dress was functional. Antioch, 196 F. Supp. basis for assessing the functionality of a product design is the 2d at 643. Antioch contends on appeal that the district court “traditional rule” originally set forth in a footnote in Inwood misinterpreted the Supreme Court’s guidance in TrafFix Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, Devices regarding the appropriate tests for evaluating product 850 n.10 (1982), that “a product feature is functional . . . if it functionality in the trade dress context. In particular, Antioch is essential to the use or purpose of the article or if it affects argues that the district court erred in reading TrafFix Devices the cost or quality of the article.” 532 U.S. at 32-33. Critical to preclude consideration of evidence of alternative designs in for the present case, the Supreme Court stated that “[w]here order to gauge a product’s functionality. Antioch also attacks the design is functional under the Inwood formulation there is what it perceives as the district court’s exclusive focus on the no need to proceed further to consider if there is a competitive functionality of individual components of the CREATIVE necessity for the feature.” Id. at 33. The Court went on to say MEMORIES album, rather than evaluating the trade dress of that “[t]here is no need . . . to engage . . . in speculation about the album as a whole. We will first review the guiding other design possibilities . . . which might serve the same principles from TrafFix Devices and then take each of purpose” where functionality is established. Id. In other Antioch’s contentions in turn. words, “[e]ven if there are alternative designs available in the marketplace, they cannot turn a feature that is functional 1. Determining product functionality under the traditional . . . definition into a non-functional feature which is the exclusive trade dress property of one In the decision underlying TrafFix Devices, this court seller.” 1 J. THOM AS MC CARTHY , MC CARTHY ON evaluated the functionality of a traffic sign stand by TRADEMARKS AND UNFAIR COMPETITION § 7:75 (4th ed. examining whether a key feature was a “competitive 2003). necessity,” i.e., whether the “[e]xclusive use of [the] feature . . . put[s] competitors at a significant non-reputation-related The Supreme Court did not, however, reject the possibility disadvantage.” Marketing Displays, 200 F.3d at 940. that the competitive-necessity test might be applicable in (emphasis in original) (internal quotation marks omitted). To certain contexts. Specifically, the Court stated that “[i]t is further implement the competitive-necessity test, this court proper to inquire into a significant non-reputation-related queried whether there were alternative designs available to disadvantage in cases of [a]esthetic functionality.” TrafFix competitors to produce the equivalent product with the same Devices, 532 U.S. at 33 (internal quotation marks omitted). functional benefits. The availability of alternative designs, in This concept of “aesthetic functionality” originated from a other words, would indicate that a company was not at a comment in the 1938 version of the Restatement of Torts. competitive disadvantage just because a key feature was 1 MC CARTHY, supra § 7:79. Although the Supreme Court monopolized by the originator of the design. has never directly addressed aesthetic functionality, Justice Breyer’s opinion in Qualitex Co. v. Jacobson Products Co., No. 02-3380 Antioch Company v. 9 10 Antioch Company v. No. 02-3380 Western Trimming Corp. Western Trimming Corp.

514 U.S. 159, 170 (1995), proposed in dicta that where an Devices, where the Supreme Court applied Inwood in a aesthetic feature (like color), serves a significant straightforward fashion, without looking at alternative function—such as helping an individual distinguish between designs, and found that the dual-spring design of the traffic a heart pill and a digestive tablet—courts should examine sign stand in question was essential to the stand’s purpose whether the exclusive use of that feature by one supplier because it kept the sign upright during inclement weather. would interfere with legitimate competition. See also 532 U.S. at 33. Although the TrafFix Devices decision does Abercrombie & Fitch Stores, where this court explained that not fully resolve the uncertainties of trade dress protection, the “competitive disadvantage [test] did not displace the these uncertainties do not affect the present case. The traditional functionality standard from Inwood,” but rather traditional Inwood test for functionality is the main rule, and that it was most “adaptable to the problem of aesthetic if a product is clearly functional under Inwood, a court need functionality.” 280 F.3d at 641. not apply the competitive-necessity test and its related inquiry concerning the availability of alternative designs. A leading treatise, on the other hand, opines that “[a]esthetic functionality is an oxymoron,” 1 MCCARTHY , 2. The district court properly applied the traditional supra § 7:81, and reports that a majority of courts have rule for assessing the functionality of Antioch’s rejected the concept. Id. at § 7:80. Because there is no product design and correctly rejected evidence of suggestion that the Antioch scrapbook album is “aesthetically alternative designs functional,” we need not address the validity of the concept any further. The district court’s opinion in the present case conveys the impression that the court understood TrafFix Devices to Since the Supreme Court decided TrafFix Devices, categorically reject the competitive-necessity test in all however, at least one circuit and a leading treatise author have instances. In deciding what test to apply, the district court expressed their views that the availability of alternative stated: designs may be helpful in applying the traditional Inwood test for functionality. See Valu Engineering, Inc. v. Rexnord The Defendant initially argues that, in light of the Corp., 278 F.3d 1268, 1276 (Fed. Cir. 2002) (commenting Supreme Court’s decision in TrafFix Devices, the Sixth that the availability of alternative designs can be “a legitimate Circuit’s competitive need test is no longer applicable. source of evidence to determine whether a feature is This Court agrees, since the Sixth Circuit adopted that functional in the first place”); 1 MCCARTHY, supra, § 7:75 test in its decision in TrafFix Devices, a decision which (stating his personal view that evidence of alternative designs the Supreme Court reversed. Accordingly, this Court can be useful in evaluating whether the design “is essential to will not apply the rejected, competitive need test when the use or purpose of the article”). ruling upon the Defendant’s Renewed Motion for Partial Summary Judgment. As a consequence, the Court will We need not resolve the question of whether evidence of not consider whether alternative designs exist, when alternative designs has a place outside of the competitive- ruling upon that motion. necessity test because, at the very least, a court is not required to examine alternative designs when applying the traditional Antioch, 196 F. Supp. 2d at 640 (internal citations omitted). test for functionality. That much is clear from TrafFix The district court went on to apply the traditional rule that No. 02-3380 Antioch Company v. 11 12 Antioch Company v. No. 02-3380 Western Trimming Corp. Western Trimming Corp.

“product configuration trade dress is functional when it is padded album covers were functional. Id. Finally, the district essential to the use or purpose of the device or when it affects court concluded that Antioch’s claimed trade dress regarding the cost or quality of the device.” Id. at 641 (quoting TrafFix the album’s pages was purely functional because the ribbed Devices, 532 U.S. at 33). edges had the effect of “reinforcing the pages; keeping the pages separated, and thus, permitting air to circulate between Antioch argues that the district court misinterpreted TrafFix them; and holding the staples in place on a particular page.” Devices by allegedly determining that the competitive- Id. necessity test was “rejected” and “no longer applicable.” We opt for a more benign interpretation of the district court’s The dual strap-hinge design, spine cover, padded album opinion; namely, that the district court correctly concluded cover, and reinforced pages are all components that are that the Supreme Court “rejected” the competitive-necessity essential to the use of Antioch’s album and affect its quality. test as the main test and reinstated the Inwood formulation as We thus agree with the district court’s conclusion that there the primary method for evaluating functionality. The district was no genuine issue of material fact regarding the court presumably determined that the competitive-necessity functionality of Antioch’s album under the traditional Inwood test was “no longer applicable” to the matter before it because test. In accordance with TrafFix Devices, the district court the Antioch v. Westrim trade dress dispute does not concern therefore committed no error in rejecting the proffered aesthetic functionality. As stated above, the competitive- evidence concerning the availability of alternative album necessity inquiry is still viable in limited circumstances that designs. do not exist in the present case. See TrafFix Devices, 532 U.S. at 33. 3. The district court correctly concluded that Antioch’s claimed trade dress was functional as a Although the district court’s opinion leaves room for whole conflicting interpretations in its discussion of TrafFix Devices, the outcome of the present case is unaffected Antioch’s remaining contention is that the district court because the court properly applied the traditional rule from misapplied trade dress protection law because it focused on Inwood. It concluded that “the essential feature of the functionality of individual elements of the album’s trade [Antioch’s] claimed product configuration trade dress is its dress rather than the trade dress as a whole. The district court dual strap hinge design, which is unquestionably functional.” reasoned that Antioch’s album and page designs did “not Antioch, 196 F. Supp. 2d at 642. The straps both hold the constitute protectable trade dress since the components of that album together and produce the advertised functional benefits trade dress are functional.” Antioch, 196 F. Supp. 2d at 643. of allowing the pages to lie flat when the album is open, In its opinion, the district court was perhaps too categorical in permitting their easy turning, and enabling the insertion of summarily rejecting Antioch’s argument that the court had to additional pages. Id. Referring to this court’s prior consider whether the overall configuration of the album was skepticism about the distinctiveness of the spine cover, the functional, rather than focusing exclusively on its component district court concluded that Antioch had not raised any parts. Id. at 642 (“This Court cannot agree.”). Antioch, in evidence that would create a genuine issue of material fact as fact, is technically correct that an overall design combination to whether a spine cover was anything other than functional. may be deserving of trade dress protection even if the Id. The district court also determined that the laminated, No. 02-3380 Antioch Company v. 13 14 Antioch Company v. No. 02-3380 Western Trimming Corp. Western Trimming Corp.

individual elements are functional, but errs in its contention The district court relied on the following articulation of this that this principle is applicable to the present case. principle in Leatherman Tool Group, Inc. v. Cooper Industries, Inc., 199 F.3d 1009, 1013 (9th Cir. 1999): In Abercrombie & Fitch Stores, this court acknowledged that the Abercrombie clothing catalog could be considered [W]here the whole is nothing other than the assemblage nonfunctional even though its individual elements were of functional parts, and where even the arrangement and functional: “Even if the elements [of the Abercrombie combination of the parts is designed to result in superior catalog] were all separately functional, . . . A&F’s performance, it is semantic trickery to say that there is arrangement of these features can constitute more than the still some sort of separate “overall appearance” which is sum of its non-protectable parts.” 280 F.3d at 644. Other non-functional. circuits are in agreement. See Publications Int’l, Ltd., v. Landoll, Inc., 164 F.3d 337, 342 (7th Cir. 1998) (“Although In Leatherman, the plaintiff sought trade dress protection for none of the functional features of PIL’s cookbooks can be a multi-purpose pocket knife. The court found that all of the appropriated to serve as a trade dress, it doesn’t follow that elements (tool size, shape of handle, shape of tool blades, the ensemble cannot be.”); Hartford House, Ltd., v. Hallmark etc.) were chosen as part of the engineering design for the Cards, Inc., 846 F.2d 1268, 1272 (10th Cir. 1988) (“A final product, so that even the overall appearance of the tool combination of features may be nonfunctional and thus was functional. See also Tie Tech, Inc., v. Kinedyne Corp., protectable, even though the combination includes functional 296 F.3d 778, 786 (9th Cir. 2002) (refusing to grant trade features.”); Fuddruckers, Inc., v. Doc’s B.R. Others, Inc., 826 dress protection to the overall appearance of a device F.2d 837, 842 (9th Cir. 1987) (“We examine trade dress as a designed to cut through wheelchair-securement webbing that whole to determine its functionality; functional elements that was comprised of separate interlocking functional parts); are separately unprotectable can be protected together as a Eppendorf-Netherler-Hinz GMBH v. Ritter GMBH, 289 F.3d part of a trade dress.”) (internal citation omitted). 351, 358 (5th Cir. 2002) (holding that trade dress protection was unwarranted where the eight design elements of a What Antioch glosses over, however, is that in order to disposable pipette tip were functional and essential to the receive trade dress protection for the overall combination of overall operation of the product). functional features, those features must be configured in an arbitrary, fanciful, or distinctive way. See TrafFix Devices, As in Leatherman, Tie Tech, and Eppendorf, where 532 U.S. at 34, where the Supreme Court rejected the trade engineering necessity influenced the configuration of the dress protection claim because the sign manufacturer “has functional components, the main functional benefit of pointed to nothing arbitrary about the components of its Antioch’s album is the result of an engineering feature—the device or the way they are assembled.” In other words, where dual strap-hinge. Although the district court did not reach the individual functional components are combined in a question of whether Antioch’s array of expired utility patents nonarbitrary manner to perform an overall function, the covered the features of the album’s trade dress, the court did producer cannot claim that the overall trade dress is point out that Antioch’s advertising “touted its patented strap nonfunctional. hinge design as allowing pages to lie flat, as well as permitting pages to be turned and added easily.” Antioch, 196 F. Supp. 2d at 642. The other features of Antioch’s album No. 02-3380 Antioch Company v. 15 16 Antioch Company v. No. 02-3380 Western Trimming Corp. Western Trimming Corp.

work in sync with the dual strap-hinge to provide the user Devices made clear that if a particular design is functional, with the advertised benefits. “[B]uyers are assured the other producers do not have “to adopt a different design product serves its purpose” when they “see[] the operative simply to avoid copying it.” 532 U.S. at 35. Likewise, this mechanism.” TrafFix Devices, 532 U.S. at 34. TrafFix court in Abercrombie & Fitch Stores pointed out that for Devices teaches that where an engineering design feature is “generic product configurations . . . no designer should have the core component of the overall trade dress, a court may a monopoly on designs regarded by the public as the basic focus on the functionality of that key feature. form of a particular item.” 280 F.3d at 638. In TrafFix Devices, the traffic device for which the designer The Seventh Circuit case of Publications Int’l Ltd. v. sought protection was comprised of a dual-spring mechanism, Landoll, Inc., 164 F.3d 337 (7th Cir. 1998), illustrates the four legs, a base, an upright, and a sign. Id. The Supreme principle that trade dress protection is unavailable for overall Court focused exclusively on the dual-spring design as the functional designs that represent a type of product. essential feature of the configuration and dismissed the other Publications International Ltd. (PIL) sought protection for its elements of the claimed trade dress as superfluous. Because cookbook’s trade dress that contained the following the dual-spring design was “the reason the device works,” the functional features: large pages (easier to lay flat on the Court held that the overall product was functional. Id. The counter), large print font (easier to read while cooking), an oil district court in the present case made an apt analogy: cloth cover (easier to clean), large pictures of dishes (to entice the reader to try the recipe), and gilded page edges (to In TrafFix Devices, the Supreme Court held that the eliminate the picture prints “bleeding” over the edge). Id. at dual-spring design was the central component of the 341-42. The Seventh Circuit observed that trade dress claimed trade dress. Herein, this Court notes that the protection was not appropriate because “it was the only way essential feature of the Plaintiff’s claimed product the product could look, consistent with its performing each of configuration trade dress is its dual strap hinge design, the product’s functions optimally.” Id. at 342 (emphasis in which is unquestionably functional. original). It denied trade dress protection to PIL because Antioch, 196 F. Supp. 2d at 642. In sum, where one key [e]very producer of a cookbook has to worry about the functional feature is the reason that the product works, cover getting spattered, the cook having difficulty laying whether it is a dual-spring or a dual strap-hinge, then the the book flat and reading small print from a distance, the entire product configuration may be considered functional and photos of the food dishes being too small to entice and not deserving of trade dress protection. inspire, the book as a whole looking cheap, and the pages . . . presenting a ragged appearance because the color In addition, where the claimed trade dress is actually a type pictures that fill them bleed to the end of the page. of product, one supplier may not monopolize the Because of these concerns that are common to all configuration to the exclusion of others. Antioch argues in its publishers of fancy cookbooks, it is not surprising that brief that Westrim could produce other types of albums, like more than one publisher would find it optimal, wholly a post-bound album, which provides many of the same apart from any desire to confuse consumers about the functional benefits as the dual strap-hinge album. That publisher’s identity, to use the very combination of possibility is irrelevant. The Supreme Court in TrafFix features that PIL claims compose its trade dress . . . . No. 02-3380 Antioch Company v. 17 18 Antioch Company v. No. 02-3380 Western Trimming Corp. Western Trimming Corp.

Id. at 342-43. The court went on to point out that PIL was keeps downward pressure on prices and encourages free to adopt a distinctive logo, design, and typeface on its innovation.” Abercrombie & Fitch Stores, 280 F.3d at 640. cookbooks to distinguish them from those of its competitors, As the Supreme Court has advised, “[t]rade dress protection but that it could not monopolize this type of cookbook. Id. at must subsist with the recognition that in many instances there 343. is no prohibition against copying goods and products.” TrafFix Devices, 532 U.S. at 29. Unless an intellectual This case presents an analogous situation. Antioch’s property right protects a product, “competitors are free to original album design brought together several features—the copy at will.” Abercrombie & Fitch Stores, 280 F.3d at 640. dual strap-hinge, the concealed binding, the padded album covers, and the reinforced pages—that allowed the overall Trade dress protection, in sum, is not available for album to function optimally. This type of scrapbook album functional products. Otherwise, “trademark law, which seeks meets the functional demands of scrapbook enthusiasts who to promote competition by protecting a firm’s reputation,” want the ability to easily add pages to their albums, who like would “instead inhibit[] legitimate competition by allowing having the pages turn freely and lie flat when opened, and a producer to control a useful product feature.” Qualitex, 514 who prefer the aesthetic appearance of the covered spine. U.S. at 164. The district court, therefore, did not err in denying Antioch trade dress protection for the CREATIVE Westrim’s use of its own distinctive logo, scrollwork, MEMORIES album. Had the court done otherwise, Antioch stickers, and face sheet provide sufficient signals to scrapbook would have enjoyed a monopoly in perpetuity for this type of buyers that its albums are not made by Antioch, and Antioch scrapbook album, an outcome in conflict with our “laws that has not contended otherwise. See Abercrombie & Fitch preserve a competitive economy.” TrafFix Devices, 532 U.S. Stores, 280 F.3d at 647-48 (holding that even if the overall at 29. Abercrombie catalog trade dress was nonfunctional, no rational trier of fact would confuse it with the American Eagle III. CONCLUSION catalog because of their different styles and the placement of each company’s trademarks “on practically every page”). For all of the reasons set forth above, we AFFIRM the Just as PIL cannot monopolize a particular type of cookbook, decision of the district court. Antioch cannot monopolize a particular type of scrapbook album. We therefore find no reversible error in the district court’s analysis of Antioch’s overall trade dress claim. Affirming the district court’s decision is also consistent with the general public policy behind trade dress protection as elaborated by the Supreme Court and adopted in this circuit. Antioch repeatedly attacks Westrim for slavishly copying the CREATIVE MEMORIES album. What Antioch fails to appreciate is that “copying is not always discouraged or disfavored” and can have “salutory effects.” TrafFix Devices, 532 U.S. at 29. “[C]opying preserves competition, which