Pagliero v. Wallace China Co., Limited
198 F.2d 339 (1952)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A product feature is functional, and thus may be copied by competitors, if it is an important ingredient in the commercial success of the product, rather than a mere arbitrary embellishment adopted for identification. Imitating such a functional feature, even if it has acquired a secondary meaning, is permissible competition in the absence of patent or copyright protection.
Facts:
- Wallace China Company (Wallace) manufactured and sold vitrified hotel china, for which appearance is a key purchasing factor.
- Wallace developed four distinctive, overall patterns for its china and was the first to use the names “Tweed”, “Hibiscus”, “Shadow-leaf”, and “Magnolia” to denominate them.
- Through extensive advertising, Wallace created a substantial market for its products, and the designs and names became associated with the Wallace brand.
- Pagliero Brothers, doing business as Tepco, a direct competitor, began manufacturing and selling china of substantially identical physical dimensions using the four designs originated by Wallace.
- Tepco also used Wallace's chosen names to identify these designs on its shipping cartons and price lists.
- Tepco's china bears its own name as the manufacturer on the underside of each piece.
- Wallace alleged that its designs had acquired a secondary meaning and that Tepco's china was of inferior quality.
- Neither the designs nor the names were protected by patent, copyright, or trademark registration.
Procedural Posture:
- Wallace China Company filed a complaint in the U.S. District Court against Pagliero Brothers (Tepco) for unfair competition and trademark infringement.
- Wallace sought a preliminary and permanent injunction as well as damages.
- The District Court (trial court) granted a preliminary injunction restraining Tepco from selling china with patterns similar to Wallace's and from using Wallace's trade names for those patterns.
- Tepco, as appellant, appealed the order granting the preliminary injunction to the U.S. Court of Appeals for the Ninth Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does a competitor's imitation of unpatented and uncopyrighted china designs constitute unfair competition when the designs themselves are a primary factor in the product's consumer appeal and commercial success?
Opinions:
Majority - Orr, Circuit Judge
No. A competitor's imitation of unpatented and uncopyrighted china designs does not constitute unfair competition where the designs are functional. A feature is functional if it is an important ingredient in the commercial success of the product. Here, the attractiveness and eye-appeal of the designs are the essential selling features of the china; they satisfy a consumer demand for aesthetics. Because the designs are functional, the interest in free competition permits their imitation, even if they have acquired a secondary meaning. To prohibit imitation would grant Wallace a monopoly on commercially successful designs without a patent. However, the use of the specific names ('Hibiscus,' etc.) is a denominative trademark use, not a functional one, and an injunction against their use may be appropriate pending a full trial on the merits of whether they have acquired secondary meaning and cause deception.
Analysis:
This case establishes a broad interpretation of the functionality doctrine, extending it to aesthetic features that are a primary driver of a product's commercial success. It reinforces the principle that unfair competition law cannot be used to create a perpetual monopoly over unpatented product designs, thereby promoting competition in product features that consumers value. The decision draws a critical distinction between the physical design of a product (which, if functional, can be copied) and the names used to market it (which can be protected as trademarks if they indicate source). This creates a boundary allowing competitors to imitate successful products but not to deceive consumers as to their origin.
Unlock the full brief for Pagliero v. Wallace China Co., Limited