Home/Fifth Circuit/Sicilia Di R. Biebow & Co. v. Ronald C. Cox and Sales U.S.A., Inc.

Sicilia Di R. Biebow & Co. v. Ronald C. Cox and Sales U.S.A., Inc.

732 F.2d 417, 1984 U.S. App. LEXIS 22353
CourtCourt of Appeals for the Fifth Circuit
DecidedMay 18, 1984
Docket82-1443
StatusPublished
Cited by97 cases

This text of 732 F.2d 417 (Sicilia Di R. Biebow & Co. v. Ronald C. Cox and Sales U.S.A., Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Fifth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Sicilia Di R. Biebow & Co. v. Ronald C. Cox and Sales U.S.A., Inc., 732 F.2d 417, 1984 U.S. App. LEXIS 22353 (5th Cir. 1984).

Opinion

REAVLEY, Circuit Judge:

In this trade dress infringement ease, we must determine the extent to which section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982), 1 incorporates the common law doctrine of functionality. See Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 857 n. 20, 102 S.Ct. 2182, 2190 n. 20, 72 L.Ed.2d 606 (1982). Stated simply, “functionality” privileges the copying of designs or features that are functional. The doctrine acts to separate those configurations that may be protected as property rights or trademarks and those designs that the law will not permit any person to appropriate or monopolize. Determining whether to apply the doctrine, therefore, implicates the competing interests of trademark law — the ability of parties freely to compete in the marketplace and protection of producers’ attempts to establish a distinctive identity.

Other circuits have provided differing definitions of functionality that have resulted in nonuniform application of the doctrine. 2 See Note, The Problem of Functional Features: Trade Dress Infringement Under Section h3(a) of the Lanham Act, 82 Colum.L.Rev. 77, 80-90 (1964) (Note). Although our cases have touched on the doctrine, we now confront for the first time in this circuit the meaning and application of functionality. See Supreme Assembly, Order of Rainbow for Girls v. J.H. Ray Jewelry Co., 676 F.2d 1079, 1083 n. 5 (5th Cir.1982).

1. This Litigation

Sicilia Di R. Biebow & Company (Sicilia) brought suit against Ronald C. Cox (Ron or Cox) and Sales, U.S.A., Inc. (Sales) for patent infringement, breach of contract, and unfair competition under Texas law, seeking damages and injunctive relief. The district court denied preliminary injunctive relief; Sicilia later dismissed its patent claim and amended its unfair competition claim to bring it under section 43(a) of the Lanham Act. After a bench trial on liability, the district court found for Cox and Sales on both claims. We reverse the district court’s judgment dismissing Sicilia’s trade dress infringement claim and affirm the dismissal of Sicilia’s contract claim.

In 1967 Sicilia, a producer of lemon and lime juice, entered into a contract with Smoked Foods Products (Smoked Foods), extending to Smoked Foods the exclusive right to distribute Sicilia lemon juice in the United States. The contract was subject to *423 annual renewal by Sicilia and provided that Smoked Foods was “not to sell, use, represent or be interested in any competing lemon juice products” while the contract was in effect. Moreover, a five-year covenant not to compete would be triggered if Smoked Foods terminated the contract without just cause. The parties amended the contract in 1975 to include lime juice and to require payment in Swiss francs rather than American dollars.

Rolf Biebow served as manager and general partner of Sicilia. Marcus Cox was the principal shareholder and de facto chairman of the board of Smoked Foods. Ron Cox, Marcus’ son, held the nominal title of president, and owned approximately 20 percent of the stock. The primary role of the younger Cox, however, was as owner and manager of U.S. Marketing, Inc., which distributed Sicilia products in the southwest United States. Corporate formalities were observed between the entities, and Smoked Foods sold products to U.S. Marketing at a profit.

Smoked Foods and Sicilia maintained a harmonious relationship for ten years, but it began to deteriorate in 1977. The strength of the Swiss franc relative to the dollar made it more costly for Smoked Foods to purchase Sicilia product. The higher price resulted in a lower sales volume in the American market. During 1978 Marcus suggested that Sicilia either establish a bottling facility in the United States or allow Smoked Foods to bottle Sicilia juice under a royalty arrangement. Sicilia was not willing to make any changes.

In 1978 Ron Cox began preparations to enter the citrus juice business in competition with Sicilia products. He formed Sales, U.S.A., through which he began selling “Pompeii” lemon and lime juice in July 1979, after the contractual relationship between Marcus and Biebow had ended. Ron Cox marketed Pompeii juice, contained in bottles similar to Sicilia’s, to the same brokers he had earlier supplied with Sicilia citrus juice.

Sicilia contends that Sales’ Pompeii bottle infringes the Sicilia bottle design in violation of section 43(a) of the Lanham Act. Sicilia claims that (1) its trade dress is sufficiently distinctive so that a showing of secondary meaning is not required; (2) assuming that secondary meaning is required, the trade dress has acquired secondary meaning; (3) the bottle design is not primarily functional; and (4) the Pompeii trade dress creates the likelihood of confusion in consumers, and thus infringes the Sicilia trade dress.

The Pompeii bottle resembles the Sicilia bottle. We quote from the district court’s comparison of the two designs:

Both Sicilia bottles and Pompeii bottles stand upright on a pedestal-type base and contain four ounces of juice. Sicilia bottles and Pompeii bottles are the same height and the same basic shape. However, Pompeii bottles are slightly more bulbous than Sicilia bottles. Sicilia copied the shape of its bottle from that used by Biebow’s father in his German business since 1956.
Sicilia lemon juice bottles and Pompeii lemon juice bottles are both yellow. Si-cilia lemon juice bottles have green caps; Pompeii lemon juice bottles have yellow caps. Both Sicilia lime juice bottles and Pompeii lime juice bottles are green with yellow caps____ Both Sicilia caps and Pompeii caps have thirty-six serrations.
Both Sicilia bottles and Pompeii bottles are marked with leaf-shaped tags.
The word “Sicilia” appears in capital letters on all bottles of Sicilia products; Pompeii bottles do not display the word “Pompeii”; however, Pompeii bottles display a design resembling a cut lemon or lime with juice flowing from it on the lower one-third of the bottle. The Pompeii design resembles a logo which Smoked Foods had used in advertising Sicilia.

The district court dismissed Sicilia’s trade dress infringement claim. The court found that the Sicilia bottle design was nondistinctive and primarily functional, that Sicilia’s trade dress had not acquired secondary meaning, and that no likelihood of confusion had been established.

*424

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Bluebook (online)
732 F.2d 417, 1984 U.S. App. LEXIS 22353, Counsel Stack Legal Research, https://law.counselstack.com/opinion/sicilia-di-r-biebow-co-v-ronald-c-cox-and-sales-usa-inc-ca5-1984.