Bodum USA, Incorporated v. A Top New Casting Incorporated

927 F.3d 486

BODUM USA, INCORPORATED, Plaintiff-Appellee,

v.A TOP NEW CASTING INCORPORATED, Defendant-Appellant.

No. 18-3020

United States Court of Appeals, Seventh Circuit.

Argued May 30, 2019

Decided June 12, 2019

Nicole J. Wing, Hannah Stowe, Attorneys, VEDDER PRICE P.C., Chicago, IL, for Plaintiff-Appellee.

James D. Benak, Joshua A. Redman, Attorneys, TETZLAFF LAW OFFICES, LLC, Chicago, IL, for Defendant-Appellant.

Before Flaum, Manion, and Barrett, Circuit Judges.

Flaum, Circuit Judge.

Bodum USA, Inc. ("Bodum") produces and sells what design magazines and art museums have recognized as an iconically designed houseware product—the Chambord French press coffeemaker. Bodum sued A Top New Casting, Inc. ("A Top") for selling a French press that Bodum claimed infringes on its unregistered trade dress in the Chambord. After a five-day trial, a jury returned a verdict in favor of Bodum, finding that A Top had willfully infringed on Bodum's trade dress in the Chambord and awarding Bodum $ 2 million in damages. The district court denied A Top's post-trial motion for judgment as a matter of law, in which A Top argued that Bodum failed to prove the Chambord design was nonfunctional. A Top also moved for a new trial because the court excluded evidence of various utility patents covering French press coffeemakers; the district court denied this motion as well. We affirm.

I. Background

Plaintiff-appellee Bodum has been selling French press coffeemakers since the 1970s. A French press is a nonelectric coffeemaker consisting of a cylindrical carafe and a plunger attached to a filter screen. The user adds boiling water to coffee grounds in the carafe and, after the grounds have steeped, presses the filter down slowly through the carafe to separate the used grounds from the brewed coffee.

Bodum began distributing the Chambord, its flagship French press, in 1983. The Chambord's design originated in France in the 1930s and is based on the towers of the Chambord Chateau, a castle in France's Loire Valley. Its features include a metal cage with a band around the top of the carafe, metal pillars ending in four curved feet, a C-shaped handle, and a domed lid topped with a spherical knob. Bodum's Chambord French press is pictured below:

Bodum acquired exclusive rights to distribute the Chambord in 1991 and has spent millions of dollars promoting it in print and television advertisements and at trade shows worldwide. Bodum sells the Chambord in department stores, at Starbucks coffee shops, and online, including through Amazon. The Chambord design has been recognized as classic by such institutions as Phaidon Design Classics and the Museum of Modern Art. Bodum actively polices whatever it believes to be infringement of this design; it has sent dozens of cease-and-desist letters over the past twenty-five years and has filed lawsuits against alleged infringers when they did not stop selling their products in response to Bodum's requests.

In 2014, defendant-appellant A Top began selling a competing French press coffeemaker called the SterlingPro exclusively through Amazon. The SterlingPro is similar in appearance to the Chambord, with the same metal cage, metal pillars ending in curved feet, C-shaped handle, and domed lid topped with a spherical knob. The two coffeemakers are pictured side-by-side below, with the Chambord on the left and the SterlingPro on the right:

Bodum filed a complaint against A Top in the Northern District of Illinois on March 7, 2016, bringing claims for trade dress infringement under the Lanham Act, 15 U.S.C. § 1125(a) ; common law unfair competition; and violation of the Illinois Uniform Deceptive Trade Practices Act, 815 Ill. Comp. Stat. § 510/1 et seq. According to Bodum's complaint, A Top intentionally adopted the overall appearance of the Chambord for its SterlingPro product, infringing on its unregistered trade dress in the design. A Top moved for summary judgment on Bodum's claims twice, but the district court denied these motions and the case proceeded to a jury trial on March 28, 2018.

The jury returned a verdict in Bodum's favor, finding that A Top willfully infringed on Bodum's Chambord trade dress and awarding Bodum $ 2 million in damages. A Top timely moved for judgment as a matter of law under Federal Rule of Civil Procedure 50 and for a new trial under Rule 59. As relevant here, A Top claimed that it was entitled to judgment as a matter of law because Bodum had failed to prove its Chambord trade dress elements were nonfunctional. And A Top said it was at least entitled to a new trial because the district court erred in excluding evidence under Rule 403 of utility patents that, it said, disclosed the Chambord's trade dress features (demonstrating the functionality of those features). The district court denied both motions on June 6, 2018.

On August 21, 2018, the district court granted Bodum's motion for enhanced damages, awarding prejudgment interest and doubling the damages award to $ 4 million, and it denied Bodum's motion for attorney's fees. Further, the court granted Bodum's request for a permanent injunction to prevent A Top from continuing to sell its infringing SterlingPro products. The district court entered final judgment on August 23, and A Top timely appealed.

II. Discussion

A Top pursues two arguments on appeal. First, A Top says that it is entitled to judgment as a matter of law because Bodum did not meet its burden of demonstrating that the elements of the claimed Chambord trade dress were nonfunctional (as required for it to be enforceable under the Lanham Act). Second, A Top claims that it is entitled to a new trial because the district court improperly excluded several utility patents from evidence under Rule 403.

A. Functionality of the Chambord Trade Dress

We review de novo the denial of a Rule 50 motion for judgment as a matter of law. Thorne v. Member Select Ins. Co. , 882 F.3d 642, 644 (7th Cir. 2018). "Because a jury has rendered a verdict, we view the evidence in the light most favorable to that verdict." Matthews v. Wis. Energy Corp. , 642 F.3d 565, 567 (7th Cir. 2011). In our review, we do not make credibility determinations or reweigh the evidence; we need only determine that there is more than "a mere scintilla of evidence" to support the verdict. May v. Chrysler Grp., LLC , 716 F.3d 963, 971 (7th Cir. 2013) (quoting Hossack v. Floor Covering Assoc. of Joliet, Inc. , 492 F.3d 853, 859 (7th Cir. 2007) ). "In other words, our job is to decide whether a highly charitable assessment of the evidence supports the jury's verdict or if, instead, the jury was irrational to reach its conclusion." Id.

The Lanham Act permits a civil action against any person who uses "any word, term, name, symbol, or device" "in connection with any goods or services" in a manner which "is likely to cause confusion" as to the source of those goods or services. 15 U.S.C. § 1125(a)(1)(A). The Act's protection extends to a product's trade dress, which includes a product design that is so distinctive it identifies the product's source. Arlington Specialties, Inc. v. Urban Aid, Inc. , 847 F.3d 415, 418 (7th Cir. 2017) ; see also TrafFix Devices, Inc. v. Mktg. Displays, Inc. , 532 U.S. 23, 28, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001) ("The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning ... is a trade dress[.]"). As with any other trademark, infringement of a product's trade dress is actionable under the Act. Arlington Specialties , 847 F.3d at 418.

At trial, Bodum was required to prove a number of elements for the jury to find trade dress infringement—that it owns a valid trade dress in the Chambord design, that the trade dress is not functional, and that A Top's SterlingPro was likely to cause consumer confusion as to its source. See id. On appeal, A Top does not dispute that the SterlingPro copies the Chambord. Instead, A Top only challenges Bodum's proof on the functionality of its claimed trade dress.¹

Trademark protection for trade dress, unlike patent and copyright protection, has no time limit; the Act therefore does not protect features that are necessary for the use of a product, so as to prevent one competitor from maintaining a "perpetual and exclusive right to a useful product feature." Id. (citing Qualitex Co. v. Jacobson Prods. Co. , 514 U.S. 159, 165, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) ). The Supreme Court has explained that " ‘a product feature is functional,’ and cannot serve as a trademark, ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.’ " Qualitex , 514 U.S. at 165, 115 S.Ct. 1300 (quoting Inwood Labs., Inc. v. Ives Labs., Inc. , 456 U.S. 844, 850 n.10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982) ). Even if a claimed trade dress does not satisfy this first test, "it can still be functional if it is a ‘competitive necessity,’ that is, if its exclusive use ‘would put competitors at a significant non-reputation-related disadvantage.’ " Arlington Specialties , 847 F.3d at 419 (quoting TrafFix Devices , 532 U.S. at 32–33, 121 S.Ct. 1255 ); see also Specialized Seating, Inc. v. Greenwich Indus., LP , 616 F.3d 722, 727 (7th Cir. 2010) (a design is functional where a product "looks the way it does in order to be a better [product], not in order to be a better way of identifying who made it"). Where, as here, the claimed trade dress is unregistered, it is the burden of the party asserting protection to prove that the trade dress is not functional. 15 U.S.C. § 1125(a)(3).

In deciding whether a trade dress element is functional, we consider several factors:

(1) the existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item's design element; (2) the utilitarian properties of the item's unpatented design elements; (3) advertising of the item that touts the

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