CHAPTER 3 - § 3.05

• Jurisdiction: United States

§ 3.05 THE FUNCTIONALITY DOCTRINE PRIOR TO 1992

Functionality was handled very differently by the various circuit courts prior to the Supreme Court decision in Two Pesos. This disparate treatment created many incentives for forum shopping with regard to functionality, on issues such as scope (e.g., whether or not "aesthetic functionality" has been rejected by the circuit) and burdens of proof (e.g., which party bears the burden of proof on the issue with regard to registered and unregistered trade dress). To some extent, the different applications of the functionality doctrine among the circuit courts still leads to some forum shopping concerns, but the Supreme Court's addressing of functionality in TrafFix Devices has created a degree of uniformity on the issue.¹²²

One of the first true "product configuration" cases that addressed the concept of functionality was LeSportsac, which dealt with the design of lightweight luggage and bags.¹²³ Although they look somewhat different than they did in the 1980s, an example of one such bag is shown below.

There the district court found that certain bags being sold by K-Mart infringed LeSportsac's trade dress in the bags, and granted a preliminary injunction; K-Mart then appealed to the Second Circuit.¹²⁴ In upholding the injunction, the Second Circuit noted: "Most trade dress infringement actions involve the packaging or labeling of goods [citations omitted]. Recently, however, we have recognized that the design of a product itself may function as its packaging, serving to distinguish it from other products, and hence be protectable trade dress under § 43(a)."¹²⁵

Interestingly, the Second Circuit held in LeSportsac that the burden of proving functionality rested with the defendant.¹²⁶ As we will see in future chapters, this precept was subsequently changed, both at common law and in the Lanham Act, but it is interesting to note the court's stance on functionality during this time period. While noting the passage as dicta, the Second Circuit quoted the Supreme Court decision in Inwood Labs for the formulation of functionality: a feature that "is essential to the use or purpose of the article or [that] affects the cost or quality of the article."¹²⁷ The Second Circuit criticized K-Mart for attacking the individual features of LeSportsac's trade dress as each being functional (e.g., hollow rectangular zipper pull, cotton carpet tape, use of repeating logo), noting that K-Mart "misconceive[d] the scope of the appropriate inquiry."¹²⁸ With the burden squarely on K-Mart, the Court found that when the trade dress was viewed as a whole, the district court's finding of non-functionality was not clearly erroneous.¹²⁹

In general, courts during this period (in accord with the Supreme Court decision in Inwood Labs) held that functional features were those features that were essential to the use or purpose of a product or that affected the cost or quality of the product.¹³⁰ Prior to Inwood, courts relied on the Supreme Court definition from Kellogg: a functional feature is one where cost...