Landscape Forms, Inc. v. Columbia Cascade Co.

Opinion

 [***1790]   [*252]  OAKES, Senior Circuit Judge:

Columbia Cascade Company ("Columbia") appeals from an April 7, 1995, order of the United States District Court for the Southern District of New York, John E. Sprizzo, Judge, granting a preliminary injunction prohibiting Columbia from advertising or selling a particular line of its outdoor furniture in the United States. In issuing the injunction, the district court found that Landscape Forms, Inc. ("Landscape") had shown a likelihood of success on the merits of its claim that Columbia's "Colonnade" furniture line infringed the trade dress of the "Petoskey" furniture line produced by Landscape, in [**2]  violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). We find that the district court failed to consider whether the design of the Petoskey furniture was "functional" and thus not protectable trade dress, and we remand for consideration of that issue.

Background

Columbia and Landscape manufacture and sell site furnishings typically found in  [***1791]  parks, airports and large office complexes. Both companies sell these furnishings to the same markets in the United States, namely, large commercial and municipal entities. The Petoskey furniture at issue in this case was originally designed by the Beckett & Raider architectural firm for a marina in Petoskey, Michigan. An executive of Landscape saw the furniture installed at the marina, and Landscape subsequently contracted with Beckett & Raider to help design and develop the Petoskey Collection, which Landscape introduced in the fall of 1989.

The Petoskey furniture has a modern appearance. It is made of three-inch metal tubing which is bent to form the legs and the support for the furniture. The most notable pieces in the collection are the benches, which are shaped and curved to fit the human form and which are supported on only [**3]  two or three legs, giving them the appearance of being suspended in air.

In the late spring of 1993, Columbia's sales department reported to management that there was considerable interest in the style of furniture offered only by Landscape in its Petoskey line. Columbia's customers evidently asked its sales representatives if Columbia could produce similar-looking furniture at a competitive price. In response, Columbia designed its Colonnade line, which emulated the design of the Petoskey furniture. Columbia began marketing the line in industry trade catalogs and through its brochures in early 1994.

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