Unital, Ltd. v. Sleepco Mfg., Ltd.

627 F. Supp. 285, 229 U.S.P.Q. (BNA) 755, 1985 U.S. Dist. LEXIS 12723
CourtDistrict Court, W.D. Washington
DecidedDecember 17, 1985
DocketC84-1196D
StatusPublished
Cited by1 cases

This text of 627 F. Supp. 285 (Unital, Ltd. v. Sleepco Mfg., Ltd.) is published on Counsel Stack Legal Research, covering District Court, W.D. Washington primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Unital, Ltd. v. Sleepco Mfg., Ltd., 627 F. Supp. 285, 229 U.S.P.Q. (BNA) 755, 1985 U.S. Dist. LEXIS 12723 (W.D. Wash. 1985).

Opinion

MEMORANDUM AND ORDER

DIMMICK, District Judge.

The plaintiff, Unital Limited (“Unital”), is seeking the equivalent of a patent mo *288 nopoly on an unpatented, unregistered roof design that did not originate solely with Unital. After hearing oral argument, the Court grants summary judgment to defendants, Sleepco Mfg., Ltd., et al. (“Sleep-co”).

I. JURISDICTION AND CHOICE OF LAW

Unital seeks injunctive and monetary relief from Sleepco for alleged copying of the roof contour of a sleeper cab on a long-haul truck. Sleepco moves for summary judgment.

Unital brings its action under 15 U.S.C. § 1125(a) (1982) of the Lanham Act for false designation of origin and under Washington law for unfair competition by means of common-law trademark infringement and passing off, for violation of consumer protection law, and for misappropriation of trade secrets. Subject matter jurisdiction is based on both the Lanham Act and diversity. Unital’s state claims are joined with its federal claim as provided by 28 U.S.C. § 1338(b).

The gravamen of Unital’s complaint is that Sleepco has unfairly competed with Unital by using Unital’s unregistered trademark. The Lanham Act provides a federal remedy for use of another’s unregistered trademark even though a remedy is also provided by the common law. New West Corp. v. Nym Co. of California, Inc., 595 F.2d 1194, 1198-99 (9th Cir.1979). The intent of Congress in passing the Lanham Act was to regulate commerce by making actionable the deceptive and misleading use of trademarks, whether registered or not, and to protect persons engaged in such commerce against unfair competition. Id. at 1199. As the New West court explained, both statutory and common-law (unregistered) trademark infringements are aspects of unfair competition under the federal statute. Id. at 1201. The present action is for common-law trademark infringement involving goods in both interstate and international commerce. Although the parties are diverse and state law claims are made, the primary source of the rights sued upon is federal law. Id.; accord International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 917 n. 8 (9th Cir.1980), cert. denied, 452 U.S. 941, 101 S.Ct. 3086, 69 L.Ed.2d 956 (1981). Uni-tal has, in any event, relied on federal, not state, substantive law. See 633 F.2d at 917 (where source of right is federal statute and plaintiff invokes federal substantive law, court applies federal law even where jurisdiction is based on diversity).

II. SUMMARY OF FACTS

The undisputed facts in this case are that Unital did not have a patent or registered trademark for the step-with-fin design at issue. (See Appendix A). Unital was asked by its customer Western Star Trucks to improve the roofline of the sleeper cab that Unital supplied to Western Star. Uni-tal’s president, in his deposition, admitted that Western Star requested some work on the appearance of the top of the sleeper cabs. He explained that he and Western Star explored numerous ideas and approaches to come up with something that was very attractive. He described this design effort as a process of going “back and forth.” Western Star approved the final step-with-fin design.

Unital’s evidence shows that the step-with-fin design was meant to serve two primary purposes. First, this design was necessary to fit two bunk beds in a sleeper cab. 1 Second, the design was intended to appeal to customers of Western Star. The president of Unital clearly states these purposes in his deposition; his affidavit adds a tertiary purpose, which was to distinguish Unital cabs from other cabs.

*289 Unital never manufactured the step-with-fin roof. The roof was manufactured by Kelowna Industrial Plastics, a Canadian company not a party to this suit. At first, Western Star ordered these roofs directly from Kelowna. Unital supplied Western Star with the unfinished boxes without roofs. Shortly after the step-with-fin sleeper was sold as part of Western Star trucks, Western Star asked Unital to deal directly with Kelowna to simplify Western Star’s paperwork. Unital then began ordering roofs from Kelowna and selling the assembled unfinished box-with-roof to Western Star.

In 1982, Western Star began buying its sleeper cab boxes (without roofs) from Sleepco. As before, Western Star had Ke-lowna make the fiberglass roofs from Western Star’s plugs and molds. Western Star modified its roof by adding a wedge to the step-with-fin design; this modified design was attached to the sleeper boxes produced by Sleepco. (See Appendix A.) Sleepco did not participate in the design of the modified roof cap. As before, Western Star eventually asked its cab maker, now Sleepco, to buy roofs directly from Kelow-na.

III. LAW GOVERNING TRADEMARK INFRINGEMENT

To determine whether an unregistered, or common-law, trademark exists, the Court must balance two opposing economic interests: the preservation of free competition and the promotion of invention. The Court works within constitutional limits set by Article 1 § 8, cl. 8, which empowers Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Under subsequent federal patent and copyright law, the fundamental right to compete through imitation of a competitor’s product may be only temporarily denied by means of patents, copyrights, or trademark registration. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 228-29, 84 S.Ct. 784, 786-87, 11 L.Ed.2d 661 reh. denied, 376 U.S. 973, 84 S.Ct. 1131, 12 L.Ed.2d 87 (1964); Re Morton-Norwich Products, Inc., 671 F.2d 1332, 1336-37 (C.C.P.A.1982). As a threshold requirement for legal protection, an inventiqn or discovery must be demonstrably genuine “lest in the constant demand for new appliances the heavy hand of tribute be laid on each slight technological advance in an art.” Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58 (1941), quoted in 376 U.S. at 230, 84 S.Ct. at 788. In the present-day patent and copyright system, “uniform federal standards are carefully used to promote invention while at the same time preserving free competition.” Sears, 376 U.S. at 230-31, 84 S.Ct. at 788.

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Bluebook (online)
627 F. Supp. 285, 229 U.S.P.Q. (BNA) 755, 1985 U.S. Dist. LEXIS 12723, Counsel Stack Legal Research, https://law.counselstack.com/opinion/unital-ltd-v-sleepco-mfg-ltd-wawd-1985.