Pagliero v. Wallace China Co. - 198 F.2d 339 (9th Cir. 1952)

Rule:

Imitation of the physical details and designs of a competitor's product may be actionable, if the particular features imitated are "non-functional" and have acquired a secondary meaning. Where the imitated features are "functional" there is normally no right to relief. "Functional" in this sense might be said to connote other than a trade-mark purpose. If the particular feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or copyright.

Facts:

Appellee, Wallace China Company, was a manufacturer and seller of vitrified hotel china for so many years. Appellee employed artists to create suitable designs for use in its manufacturing business. It claimed to have developed the application of overall patterns to china; and four distinctive designs are alleged to have been first employed by them. Appellant, on the other hand, were Pagliero Brothers doing business as Technical Porcelain and Chinaware Company called Tepco who also manufactures and sells vitrified hotel china to the same dealers and middlemen as does the appellee. Appellee brought an unfair competition action against appellant based on appellant's use of appellee's designs and the names for those designs. The trial court granted the preliminary injunction in favor of appellee in action for unfair competition and trademark infringement, from which appellant sought review.

Issue:

Was the appellant guilty of unfair competition and trademark infringement as the appellee alleged?

Answer:

No.

Conclusion:

The court modified and affirmed the order. The court held that as an essential selling feature of the hotel China, the designs were functional, and appellant's imitation of them was not unfair competition under federal trade dress protection. The question of whether deception had been practiced in appellant's use of the design names and whether they had acquired a secondary meaning was left for a hearing on the merits. Also, the court considered whether appellee had an exclusive right to the designs on the assumption they have not acquired a secondary meaning. The authority for granting relief under such circumstances must be found to exist, if at all, in the Lanham Act. However, the court ruled that said Act grants no such relief. Thus, the preliminary injunction was modified by striking therefrom all reference to the use of the designs by appellant, and as so modified the preliminary injunction stood.