Thursday, June 16, 2016

Functionality: it's in the bag

Schutte Bagclosures Inc. v. Kwik Lok Corp., No. 12-cv-5541 (S.D.N.Y. Jun. 14, 2016)
Following up from previous post on an earlier ruling. (Thanks to an eagle-eyed correspondent who probably knows way more than anyone else wants to know about plastic bag closures.)  There’s a bit of tacking here—the court finds that Kwik-Lok’s registrations for bag closure designs cover current versions, despite some changes, forcing Schutte to bear the burden of proof on functionality.  That’s Kwik-Lox’s last victory, though. 
The court finds the Kwik-Lok registered bag closures to be functional under Traffix, and just in case under Morton-Norwich too, rejecting the proffered alternative designs (which were produced using 3-D printers, for those of you tracking clever litigation innovations at home) as unproven in their ability to hold up to the kind of rapid automated application required for large-scale production of closed bags.  Apparently these things come in reels, like ticket reels, and work in machines specifically designed to fit the closures.

Schutte on L; Kwik-Lok on R.
Then, to be extra extra sure, the court continued on to find that confusion was unlikely—these are only sold in batches of at least 4000 to sophisticated consumers, in clearly marked packages.  And, as I commented in my initial post, the federal dilution claim failed for want of fame among the general consuming public.  Interestingly, the court then dismissed the state dilution claim as preempted by patent law under Bonito Boats, since the claim was one regarding product configuration trade dress. While states can require labeling for trade dress to avoid confusion, NY dilution law contemplated a flat ban on potentially patentable “publicly known design and utilitarian ideas which were unprotected by the patent laws,” and that’s a no-no.
I don’t recall seeing this reasoning before, but the court cites a few similar cases: Luv N’ Care, Ltd. v. Regent Baby Prods. Corp., 841 F. Supp. 2d 753 (S.D.N.Y. 2012); E. Am. Trio Prods., Inc. v. Tang Elec. Corp., 97 F. Supp. 2d 395 (S.D.N.Y. 2000); Escada AG v. The Limited, Inc., 810 F. Supp. 571 (S.D.N.Y. 1993). 

Query: why not reason similarly about copyright, per Sears/Compco, and invalidate state dilution laws at least as based on copyrightable designs?

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