Blumenthal Distributing, Inc. v. Herman Miller, Inc.
963 F.3d 859 (9th Cir. 2020) (2020)
Rule of Law:
A product's overall appearance can be protected as nonfunctional trade dress even if it contains individual functional elements, so long as the overall design is not merely an assemblage of functional parts and its protection does not eliminate a substantial swath of competitive alternatives; however, a jury instruction on functionality that broadly states a feature is functional if it is 'part of the actual benefit that consumers wish to purchase' is an incorrect statement of law. Furthermore, for a trade dress dilution claim, 'fame' under the Lanham Act requires a mark to be 'widely recognized by the general consuming public of the United States as a designation of source,' which signifies a high standard of 'household name' recognition, not mere niche or incidental recognition.
Facts:
- Herman Miller, Inc. (HM) developed and introduced the Thin Pad Eames chair in 1958, later followed by a line of Soft Pad Eames chairs, and the Aeron chair in 1994.
- HM has sold hundreds of thousands of Eames chairs and 6.5 million Aeron chairs in the United States by the time of trial.
- Eames and Aeron chairs have been exhibited in American art museums and have appeared in American pop culture.
- HM's claimed trade dresses for the Eames chairs encompass their overall appearances, excluding colors and components beneath the chairs' seats (and upholstery for the registered trade dress).
- HM's claimed trade dress for the Aeron chair encompasses its overall appearance with an oval-shaped lumbar support, excluding the portion beneath the seat and the chair's color (and including the control box for the registered trade dress).
- The Eames chairs' designers, Charles and Ray Eames, prioritized aesthetics in their design, creating distinctive features such as the metal trapezoidal armrests and specific horizontal stitching for upholstery, with evidence suggesting non-utilitarian design choices.
- On December 13, 2013, HM sent a cease-and-desist letter to Blumenthal Distributing, Inc., d/b/a Office Star Products (OSP), accusing OSP of selling 'knockoff' chairs that infringed HM's Eames and Aeron trade dresses.
Procedural Posture:
- Herman Miller, Inc. (HM) filed a lawsuit against Blumenthal Distributing, Inc., d/b/a Office Star Products (OSP) in the United States District Court for the Central District of California, alleging infringement of registered and unregistered Eames and Aeron trade dresses under 15 U.S.C. § 1114 and § 1125(a), and for dilution of these trade dresses under 15 U.S.C. § 1125(c).
- A jury found in favor of HM regarding its registered and unregistered Eames trade dresses, finding them protectable, willfully infringed, and diluted by OSP, leading to HM being awarded $3,378,966 in infringement damages and $3,000,000 in dilution damages, and OSP being enjoined from further unlawful activities.
- The jury found against HM regarding its registered and unregistered Aeron trade dresses, concluding they were 'functional' and thus unprotectable, which resulted in a judgment holding HM's trademark registration for the Aeron chair invalid.
- Both parties timely appealed the district court's judgment to the United States Court of Appeals for the Ninth Circuit; OSP appealed the Eames-related findings (as appellant/cross-appellee), and HM cross-appealed the Aeron-related findings (as appellee/cross-appellant).
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Issue:
Does a product's overall appearance become functional and thus unprotectable as trade dress merely because some of its individual features are functional, or when a jury instruction erroneously defines functionality as any feature that is 'part of the actual benefit that consumers wish to purchase'; and what level of public recognition is required for a trade dress to be considered 'famous' under the Trademark Dilution Revision Act of 2006 for a dilution claim?
Opinions:
Majority - Korman, District Judge
No, a product's overall appearance does not automatically become functional and unprotectable trade dress merely because some of its individual features are functional, nor does a jury instruction correctly define functionality if it states that a feature is functional when it is 'part of the actual benefit that consumers wish to purchase.' No, the level of public recognition required for 'fame' under the Trademark Dilution Revision Act of 2006 is a high 'household name' standard, and Herman Miller did not present legally sufficient evidence that its Eames chair trade dresses met this standard. The court affirmed the judgment in favor of HM for the infringement of its Eames trade dresses but reversed the judgment for dilution. For Eames chairs, the court rejected OSP's argument that the overall appearance was functional as a matter of law simply because it included some functional elements. It emphasized that an 'overall appearance' is functional only if the entire product is 'nothing other than the assemblage of functional parts' or if protecting it would eliminate a 'substantial swath of competitive alternatives' (citing Leatherman, Clicks Billiards). HM had provided abundant evidence of non-utilitarian design choices for the Eames chairs, such as distinctive and beautiful aesthetics, the trapezoidal armrests, and horizontal stitching, which a jury could reasonably find were not solely utilitarian, especially when considering the Disc Golf factors like alternative designs and advertising emphasizing appearance. For Aeron chairs, the court found the district court's jury instruction on functionality to be erroneous. The instruction's statement that 'If the feature is part of the actual benefit that consumers wish to purchase when they buy the product, the feature is functional' was a misstatement of law, as previously rejected in Au-Tomotive Gold. The instruction also failed to adequately convey that a utilitarian benefit is not functional unless the Disc Golf factors weigh in favor, or that an aesthetic benefit is not functional unless it's wholly independent of source identification and its protection would create a significant competitive disadvantage. This error was presumed harmful, leading to a reversal and remand for a new trial on Aeron-related claims. For the Eames chairs' dilution claim, the court held that the Trademark Dilution Revision Act of 2006 (TDRA) requires 'fame' to be 'widely recognized by the general consuming public of the United States as a designation of source,' thereby eliminating 'niche fame.' Applying its high 'household name' standard from Thane Int’l, Inc. v. Trek Bicycle Corp. (a case interpreting the prior 1995 Act, but deemed applicable to the TDRA standard for general public fame), the court found HM's evidence of Eames chairs' fame—including advertising spend, appearances in specific publications, social media followers, limited distribution, and incidental pop culture/museum appearances—legally insufficient as a matter of law. This evidence was considered weaker than or analogous to the insufficient evidence in Thane, which required truly prominent and renowned status.
Partial concurrence and partial dissent - Friedland, Circuit Judge
Yes, there was sufficient evidence for the jury to reasonably conclude that the Eames trade dresses were famous for dilution purposes. Judge Friedland dissented from the majority's conclusion on dilution, arguing that the evidence, construed in the light most favorable to HM, was sufficient to support the jury's finding of fame. She emphasized the deferential standard for overturning a jury verdict. The jury heard expert testimony that Eames chairs were 'iconic,' 'ubiquitous' in business environments, depicted in 'countless TV shows' and movies, and featured in 'any museum...with a collection of design.' This evidence allowed the jury to infer that the general consuming public became familiar with the distinctive Eames chairs. Unlike the 'TREK' mark in Thane, which was a non-distinctive word with incidental media coverage, the Eames trade dresses involved a visually striking, distinctive product design that consumers would remember. The dissent argued that a higher level of advertising or sales was not required given the cultural significance and widespread visual presence of the chairs, which could lead to recognition of their design as a 'designation of source,' even if the public couldn't specifically name HM.
Analysis:
This Ninth Circuit decision offers critical clarifications on trade dress law. It reinforces that courts must engage in a holistic analysis of 'overall appearance' functionality, balancing individual functional elements against broader design choices and competitive impact, rather than simply deeming a design functional due to the presence of some useful features. The reversal concerning the Aeron chair jury instruction serves as a significant reminder to trial courts regarding the precise articulation of complex legal standards, particularly for functionality. Most notably, the opinion affirms and strictly applies the 'household name' standard for trade dress 'fame' under the TDRA, making it exceptionally difficult for plaintiffs to succeed on dilution claims without truly pervasive, general public recognition that transcends niche markets or cultural prominence. Future plaintiffs will need robust evidence of widespread general public recognition, not just market success or niche cultural impact, to sustain dilution claims.
