Question: THE ANTIOCH CO. v. WESTERN TRIMMING CORP., 347 F.3D 150 (6TH CIR. 2003)

FACTS The Antioch Company markets scrapbook albums under the mark "CREATIVE MEMORIES." Antioch's albums have several distinctive characteristics, including:

(1) a dual strap-hinge that enables the album to lie flat when open and that facilitates the insertion of additional pages;

(2) a spine cover that disguises the hinge; and

(3) ribbed edges on the album pages that reinforce the page, keep them separated, and cover the staples.

A competitor, Western Trimming Corporation (Westrim), sold "knock-off" copies of Antioch's album. Westrim had begun making its copies after it had determined that Antioch's patents that potentially covered these features had expired. Antioch sued for trade dress infringement, claiming it had protected trade dress in these three features. The trial court granted summary judgment to Westrim, and Antioch appealed. DECISION The appellate court affirmed the decision of the trial court, noting that trade dress protection does not extend to functional products: "Otherwise, ‘trademark law, which seeks to promote competition by protecting a firm's reputation,' would ‘instead inhibit[] legitimate competition by allowing a producer to control a useful product feature.'" Moreover, that control would exist "in perpetuity" as a form of monopoly. To establish trade dress infringement, the plaintiff "must ‘show that the allegedly infringing feature is not "functional" and is likely to cause confusion with the product for which protection is sought.'" The appellate court agreed with the trial court's determination that the three features specified were functional, stating: "The dual strap-hinge design, spine cover, padded album cover, and reinforced pages are all components that are essential to the use of Antioch's album and affect its quality."

Moreover, the court noted, "where the claimed trade dress is actually a type of product, one supplier may not monopolize the configuration to the exclusion of others." Although Antioch argued that Westrim could make other types of albums, such as a post-bound album, which would have much of the same functionality as Antioch's dual strap-hinge album, the court found that "irrelevant." As the U.S. Supreme Court has stated, "[I]f a particular design is functional, other producers do not have ‘to adopt a different design simply to avoid copying it.'"Antioch's design features allowed the album to "function optimally" and met the "functional demands of scrapbook enthusiasts." In addition, by using its own distinctive logo, stickers, face sheet, etc., Westrim sufficiently signaled consumers that its albums were not made by Antioch, despite the functional similarity of the two products. The court also rejected Antioch's argument that Westrim's admitted copying of Antioch's product was somehow wrongful: What Antioch fails to appreciate is that "copying is not always discouraged or disfavored" and can have "salutory effects." "Copying preserves competition, which keeps downward pressure on prices and encourages innovation." As the Supreme Court has advised, "trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products." Unless an intellectual property right protects a product, "competitors are free to copy at will." Thus, the appellate court affirmed the trial court's grant of summary judgment to Westrim.