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FERRARI S.P.A. ESERCIZIO FABRICHE AUTOMOBILI E CORSE v. CARL ROBERTS

944 F.2d 1235 (6th Cir. 1991)

RYAN, Circuit Judge

This is a trademark infringement action brought pursuant to the Lanham Act, 15 U.S.C. @ 1051, et seq. The principal issue is whether the district court correctly [**2] concluded that plaintiff Ferrari enjoyed unregistered trademark protection in the exterior shape and appearance of two of its automobiles and, if so, whether defendant Roberts' replicas of Ferrari's designs infringed that protection, in violation of section 43(a) of the Lanham Act. More narrowly focused, the issues are:

- Whether Ferrari's automobile designs have acquired secondary meaning;

- Whether there is a likelihood of confusion between Ferrari's cars and Roberts' replicas;

- Whether the appropriated features of Ferrari's designs are nonfunctional; and

- Whether the injunction granted by the district court is excessively broad.

We must also decide whether the district court, 739 F. Supp. 1138, properly rejected Roberts' request for a jury trial.

We hold that the district court properly decided all of the issues and, therefore, we shall affirm.

I. The Facts

Ferrari is the world famous designer and manufacturer of racing automobiles and upscale sports cars. Between 1969 and 1973, Ferrari produced the 365 GTB/4 Daytona. Because Ferrari intentionally limits production of its cars in order to create an image of exclusivity, only 1400 Daytonas [*1238] were built; of these, only 100 were originally [**3] built as Spyders, soft-top convertibles. Daytona Spyders currently sell for one to two million dollars. Although Ferrari no longer makes Daytona Spyders, they have continuously produced mechanical parts and body panels, and provided repair service for the cars.

Ferrari began producing a car called the Testarossa in 1984. To date, Ferrari has produced approximately 5000 Testarossas. Production of these cars is also intentionally limited to preserve exclusivity: the entire anticipated production is sold out for the next several years and the waiting period to purchase a Testarossa is approximately five years. A new Testarossa sells for approximately $ 230,000.

Roberts is engaged in a number of business ventures related to the automobile industry. One enterprise is the manufacture of fiberglass kits that replicate the exterior features of Ferrari's Daytona Spyder and Testarossa automobiles. Roberts' copies are called the Miami Spyder and the Miami Coupe, respectively. The kit is a one-piece body shell molded from reinforced fiberglass. It is usually bolted onto the undercarriage of another automobile such as a Chevrolet Corvette or a Pontiac Fiero, called the donor car. Roberts marketed [**4] the Miami Spyder primarily through advertising in kit-car magazines. Most of the replicas were sold as kits for about $ 8,500, although a fully accessorized "turnkey" version was available for about $ 50,000.

At the time of trial, Roberts had not yet completed a kit-car version of the Miami Coupe, the replica of Ferrari's Testarossa, although he already has two orders for them. He originally built the Miami Coupe for the producers of the television program "Miami Vice" to be used as a stunt car in place of the more expensive Ferrari Testarossa.

The district court found, and it is not disputed, that Ferrari's automobiles and Roberts' replicas are virtually identical in appearance.

Ferrari brought suit against Roberts in March 1988 alleging trademark infringement, in violation of section 43(a) of the Lanham Act, and obtained a preliminary injunction enjoining Roberts from manufacturing the replica cars. The injunction was later amended to permit Roberts to recommence production of the two models.

Five months later, Roberts filed a voluntary petition in bankruptcy. Despite the Chapter 11 proceedings, the bankruptcy court, in a carefully limited order, lifted the automatic stay and permitted [**5] Ferrari to continue to prosecute this action. Prior to trial, the district court denied Roberts' request for a jury, and the case was tried to the court resulting in a verdict for Ferrari and a permanent injunction enjoining Roberts from producing the Miami Spyder and the Miami Coupe.

II.

Section 43(a) of the Lanham Act creates a civil cause of action for trademark infringement. In relevant part, section 43(a) provides:
" Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--

(1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. . . .

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."

The protection against infringement provided [**6] by section 43(a) is not limited to "goods, services or commercial activities" protected by registered trademarks. It extends as well, in certain circumstances, to the unregistered "trade dress" of an article. "Trade dress" refers to "the image [*1239] and overall appearance of a product." Allied Mktg. Group, Inc. v. CDL Mktg., Inc., 878 F.2d 806, 812 (5th Cir. 1989). It embodies "that arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, intended to make the source of the product distinguishable from another and to promote its sale." Mr. Gasket Co. v. Travis, 35 Ohio App. 2d 65, 72 n. 13, 299 N.E.2d 906, 912 n. 13, 64 Ohio Op. 2d 192 (1973).

Ferrari's Lanham Act claim in this case is a "trade dress" claim. Ferrari charges, and the district court found, that the unique and distinctive exterior shape and design of the Daytona Spyder and the Testarossa are protected trade dress which Roberts has infringed by copying them and marketing his replicas.

Roberts asserts that there has been no infringement under section 43(a) for a number of reasons: (1) the design of Ferrari's vehicles are protected only [**7] under design patent law, see 35 U.S.C. @ 171, and not the Lanham Act; (2) there is no actionable likelihood of confusion between Ferrari's vehicles and Roberts' replicas at the point of sale; and (3) the "aesthetic functionality doctrine" precludes recovery.

We shall take up each argument in turn.

III.

To prove a violation of section 43(a), Ferrari's burden is to show, by a preponderance of the evidence:

1) that the trade dress of Ferrari's vehicles has acquired a "secondary meaning,"

2) that there is a likelihood of confusion based on the similarity of the exterior shape and design of Ferrari's vehicles and Roberts' replicas, and

3) that the appropriated features of Ferrari's trade dress are primarily nonfunctional.

See Kwik-Site Corp. v. Clear View Mfg. Co., Inc., 758 F.2d 167, 178 (6th Cir. 1985).

A. Secondary Meaning

To acquire a secondary meaning in the minds of the buying public, an "article of merchandise when shown to a prospective customer must prompt the affirmation, 'That is the article I want because I know its source,' and not the negative inquiry as to 'Who makes that article?' In other words, the article must proclaim its [**8] identification with its source, and not simply stimulate inquiry about it." West Point Mfg. Co. v. Detroit Stamping Co., 222 F.2d 581, 595 (6th Cir.) (citation omitted), cert. denied, 350 U.S. 840, 100 L. Ed. 749, 76 S. Ct. 80, 107 U.S.P.Q. (BNA) 362 (1955). Arguably, secondary meaning in this case can be presumed from Roberts' admissions that he intentionally copied Ferrari's designs. Roberts told Vivian Bumgardner, an investigator who recorded her conversations with Roberts, that "we put this whole body right on it and it looks just like a real car, I mean they can't tell by looking. . . . We build and sell the same car, reproduce it." The intent to copy was also shown by Roberts' use of the distinctive Ferrari prancing horse logo on the front parking lights of the Daytona Spyder and in advertising brochures. The original Miami Coupe brochure even copied the Ferrari name by referring to the Roberts' car as the "Miami Testarossa." The evidence of intentional copying shows the strong secondary meaning of the Ferrari designs because "there is no logical reason for the precise copying save an attempt to realize upon a secondary meaning that is in existence." Audio Fidelity, Inc. v. High Fidelity Recordings, Inc., 283 F.2d 551, 558 (9th Cir. 1960). [**9]

Ferrari, however, need not rely on a presumption of secondary meaning because the evidence at trial showed that the exterior design of Ferrari's vehicles enjoyed strong secondary meaning. Lawrence Crane, Art Director of Automobile magazine, testified that the shape of a Ferrari "says Ferrari to the general populous (sic)" and that "because it's so instantly recognizable . . . we've used even just portions of Ferraris, the Testarossa, for instance, and people recognize it, and our sales are changed." William Moore, Editor of Kit Car Illustrated, and a witness for Roberts, [*1240] conceded that car replica manufacturers frequently copy Ferraris because the "special image" associated with Ferrari creates a market for cars which look like Ferraris. The testimony of Crane and Moore was supported by survey data which indicated that of survey respondents shown photographs of Ferrari's cars without identifying badges, 73% properly identified a photograph of Daytona Spyder as manufactured by Ferrari and 82% identified the Testarossa as a Ferrari product. Such survey evidence, combined with intentional copying and the widespread publicity surrounding Ferraris, convinced the court in a separate [**10] action brought by Ferrari against Roberts' former partner to enjoin him from producing replicas of the Daytona Spyder identical to those produced by Roberts, that the Ferrari vehicle design has a secondary meaning:

"In light of defendants' close intentional copying, their failure to introduce any evidence to show that such copying was for any purpose but to associate themselves with the reputation and marketability of the Ferrari DAYTONA SPYDER, the large amount of recognition of said design with Ferrari shown in continuous magazine articles and books about the DAYTONA SPYDER long after the cessation of its manufacture, the showings of the Ferrari DAYTONA SPYDER at vintage car shows, the highly publicized sales of said car by Ferrari customers, and the percentages of recognition in both the plaintiff's and the defendants' surveys, . . . the court finds the evidence thorough and convincing that the Ferrari DAYTONA SPYDER design has achieved a strong secondary meaning."
Ferrari S.P.A. v. McBurnie, 1989 U.S. Dist. LEXIS 13442, 11 U.S.P.Q.2D (BNA) 1843, 1846-47 (S.D. Cal. 1989).

Ferrari's vehicles would not acquire secondary meaning merely because they are unique designs or because they are aesthetically [**11] beautiful. The design must be one that is instantly identified in the mind of the informed viewer as a Ferrari design. The district court found, and we agree, that the unique exterior design and shape of the Ferrari vehicles are their "mark" or "trade dress" which distinguish the vehicles' exterior shapes not simply as distinctively attractive designs, but as Ferrari creations.

We also agree with the district court that Roberts' admission that he intentionally copied Ferrari's design, the survey evidence introduced by Ferrari, and the testimony of Crane and Moore amount to abundant evidence that the exterior design features of the Ferrari vehicles are "trade dress" which have acquired secondary meaning.

Roberts argues strongly that section 43(a) provides no trademark infringement protection for the exterior design of a product because "automobile designs are to be protected from copying only pursuant to the design patent statute," and Ferrari, during the period relevant to this case, had not protected the Daytona Spyder or the Testarossa with a design patent. We disagree.

Courts have consistently rejected Roberts' argument that the availability of design patent protection precludes [**12] applicability of the Lanham Act for products whose trade dress have acquired strong secondary meaning. Actionable harm results from either infringing a design patent or copying a product with secondary meaning. Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464, 466 (2d Cir.), cert. denied, 350 U.S. 832, 100 L. Ed. 743, 76 S. Ct. 67, 107 U.S.P.Q. (BNA) 362 (1955). See also Audio Fidelity, 283 F.2d at 555. As the court explained in Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689, 692-93 (N.D. Ga. 1977):

" There is no doubt that the plaintiffs' Classic Grill and Flying Lady are attractive objects. As such, they may be deserving of copyright or design patent protection. Their entitlement to trademark recognition, however, depends not on their eye appeal but on their characteristic of identifying the manufacturer of Rolls-Royce motor cars."
Likewise, the distinctive appearance of a Ferrari's exterior shape, as evidenced at trial by surveys and the testimony of car magazine editors and others, entitles Ferrari [*1241] to Lanham Act protection. This trademark protection does not unduly extend the seventeen-year [**13] monopoly guaranteed by the patent laws because the two sources of protection are totally separate:
"Trademark rights, or rights under the law of unfair competition, which happen to continue beyond the expiration of a design patent, do not "extend" the patent monopoly. They exist independently of it, under different law and for different reasons. The termination of either has no legal effect on the continuance of the other."
Application of Mogen David Wine Corp., 51 C.C.P.A. 1260, 328 F.2d 925, 930, 140 U.S.P.Q. (BNA) 575 (1964). Patent and trademark law are completely distinct fields:
" The protection accorded by the law of trademark and unfair competition is greater than that accorded by the law of patents because each is directed at a different purpose. The latter protects inventive activity which, after a term of years, is dedicated to the public domain. The former protects commercial activity which, in our society, is essentially private."
Truck Equip. Serv. Co. v. Fruehauf Corp., 536 F.2d 1210, 1215 (8th Cir.), cert. denied, 429 U.S. 861, 50 L. Ed. 2d 139, 97 S. Ct. 164, 191 U.S.P.Q. (BNA) 588 (1976).

Thus, Lanham Act protection is available to designs which also might have been covered by design patents as long as the designs have acquired secondary meaning. Dallas Cowboys Cheerleaders, 604 F.2d at 204-05; Truck Equip. Serv., 536 F.2d 1210; Mogen David, 51 C.C.P.A. 1260, 328 F.2d 925, 140 U.S.P.Q. (BNA) 575; Rolls-Royce, 428 F. Supp. 689. Ferrari's designs have clearly acquired secondary meaning and thus were entitled to protection.

B. Likelihood of Confusion

1. District Court's Findings

This court has held that in determining likelihood [**16] of confusion in a Lanham Act case, the court should consider the following factors: strength of the plaintiff's mark; relatedness of the goods; similarity of the marks; evidence of actual confusion; marketing channels used; likely [*1242] degree of purchaser care; defendant's intent in selecting the mark; and likelihood of expansion of the product lines. Frisch's Restaurants, Inc. v. Elby's Big Boy, 670 F.2d 642, 648 (6th Cir.), cert. denied, 459 U.S. 916, 74 L. Ed. 2d 182, 103 S. Ct. 231 (1982).

We conclude that aside from the presumption of likelihood of confusion that follows from intentional copying, Ferrari produced strong evidence that the public is likely to be confused by the similarity of the exterior design of Ferrari's vehicles and Roberts' replicas.

2. Roberts' Objections

Roberts disagrees with the legal significance of the district court's findings of likelihood of confusion. He argues that for purposes of the Lanham Act, the requisite likelihood of confusion must be confusion at the point of sale--purchaser confusion--and not the confusion of nonpurchasing, casual observers. The evidence is clear that Roberts assured purchasers of his replicas that they were not purchasing Ferraris and that his customers were not confused about what they were buying.

Roberts also argues that actionable confusion may not be inferred from intentional copying when the intentional copying involves the design of a product as opposed to the copying of a trademark, trade name or trade dress. Implicit, of course, is Roberts' related argument that the exterior shape and design of the Ferrari cars is [**22] not, and cannot be, a trademark or trade dress. We disagree with these contentions.

a. Confusion as to Source

Roberts is correct that, for the most part, similarity of products alone is not actionable; there must also be confusion as to the origin of the product. West Point Mfg., 222 F.2d at 589; see also Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 626 F.2d 193, 195 (1st Cir. 1980). Similarity of products, however, does become actionable when the similarity leads to confusion as to source and the public cares who the source of the product is.

In contrast to West Point, Roberts copied the nonfunctional features of an item having great secondary meaning. Because consumers care that they are purchasing a Ferrari as opposed to a car that looks like a Ferrari, and because Roberts' replicas look like Ferraris, Ferrari presented an actionable claim as to confusion of source.

b. Confusion at Point of Sale

Roberts argues that his replicas do not violate the Lanham Act because he informed his purchasers that his significantly cheaper cars and kits were not genuine Ferraris and thus there was no confusion at the point of sale. The Lanham Act, however, was intended to do more than protect consumers at the point of sale. When the Lanham Act was enacted in 1946, its protection was limited to the use of marks [**25] "likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services." In 1967, Congress deleted this language and broadened the Act's protection to include the use of marks "likely to cause confusion or mistake or to deceive." Thus, Congress intended "to regulate commerce within [its control] by making actionable the deceptive and misleading use of marks in such commerce; [and] . . . to protect persons engaged in such commerce against unfair competition. . . ." 15 U.S.C. @ 1127. Although, as the dissent points out, Congress rejected an anti-dilution provision when recently amending the Lanham Act, it made no effort to amend or delete this language clearly protecting the confusion of goods in commerce. The court in Rolex Watch explicitly recognized this concern with regulating commerce:

"The real question before this Court is whether the alleged infringer has placed a product in commerce that is "likely to cause confusion, or to cause mistake, or to deceive." . . . The fact that an immediate buyer of a $ 25 counterfeit watch does not entertain any notions that it is the real thing has no place in this analysis. Once a product [**26] is injected into commerce, there is no bar to confusion, mistake, or deception occurring at some future point in time."
Rolex Watch, 645 F. Supp. at 492-93 (emphasis in original). The Rolex Watch court noted that this interpretation was necessary to protect against the cheapening and dilution of the genuine product, and to protect the manufacturer's reputation. Id. at 495; see also Mastercrafters, 221 F.2d at 466. As the court explained:
"Individuals examining the counterfeits, believing them to be genuine Rolex watches, might find themselves unimpressed with the quality of the item and consequently be inhibited from purchasing the real time piece. Others who see the watches bearing the Rolex trademarks [*1245] on so many wrists might find themselves discouraged from acquiring a genuine because the items have become too common place and no longer possess the prestige once associated with them."
Rolex Watch, 645 F. Supp. at 495; see also Mastercrafters, 221 F.2d at 466. Such is the damage which could occur here. As the district court explained when deciding whether Roberts' former partner's [**27] Ferrari replicas would be confused with Ferrari's cars:
"Ferrari has gained a well-earned reputation for making uniquely designed automobiles of quality and rarity. The DAYTONA SPYDER design is well-known among the relevant public and exclusively and positively associated with Ferrari. If the country is populated with hundreds, if not thousands, of replicas of rare, distinct, and unique vintage cars, obviously they are no longer unique. Even

if a person seeing one of these replicas driving down the road is not confused, Ferrari's exclusive association with this design has been diluted and eroded. If the replica Daytona looks cheap or in disrepair, Ferrari's reputation for rarity and quality could be damaged. . . ."
Ferrari, 11 U.S.P.Q.2d at 1848.

The dissent argues that the Lanham Act requires proof of confusion at the point of sale because the eight factor test used to determine likelihood of confusion focuses on the confusion of the purchaser, not the public. The dissent submits that three of the factors, marketing channels used, likely degree of purchaser care and sophistication, and evidence of actual confusion, specifically relate to purchasers. However, [**28] evidence of actual confusion is not limited to purchasers. The survey evidence in this case showed that members of the public, but not necessarily purchasers, were actually confused by the similarity of the products. Moreover, the other five factors, strength of the mark, relatedness of the goods, similarity of the marks, defendant's intent in selecting the mark, and likelihood of product expansion, do not limit the likelihood of confusion test to purchasers.

Since Congress intended to protect the reputation of the manufacturer as well as to protect purchasers, the Act's protection is not limited to confusion at the point of sale. Because Ferrari's reputation in the field could be damaged by the marketing of Roberts' replicas, the district court did not err in permitting recovery despite the absence of point of sale confusion.

3. Product Confusion

Roberts argues that the exterior design features of the Ferrari vehicles are not entitled to Lanham Act protection because only packages in which products are marketed, not products themselves, are covered as protected trade dress. In many cases, the policy of fulfilling consumer demand mandates that trade dress, including packaging [**29] and labeling, but not products, are protected from imitation:

Appellant could not prevent appellee from using railroad sounds in a record, but should be able to prevent duplication of a "form of dress . . . primarily adopted for purposes of identification and individuality," and "unrelated to basic consumer demands in connection with the product" . . ., as distinguished from basic consumer demands or preferences, or attention directed to the container rather than to the product itself.

"The label or ornament is a relatively small and incidental affair, which would not exist at all, or at least would not exist in that shape but for the intent to deceive; whereas the instrument sold is made as it is, partly at least, because of a supposed or established desire of the public for instruments in that form."

Audio Fidelity, 283 F.2d at 556-57 (citations omitted). In this case, where the exterior shape and design of the car is a "form of dress . . . primarily adopted for purposes of identification and individuality," the interest in free competition of cars would not be impeded by protecting the product itself. We are fortified in this conclusion by the large number [**30] of cases extending trademark protection to product designs. Ferrari, 1989 U.S. Dist. LEXIS 13442, 11 U.S.P.Q. 2D (BNA) 1843 (Ferrari [*1246] design); see also Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 772 (9th Cir. 1981) (purse design); Dallas Cowboys Cheerleaders, 604 F.2d 200 (configuration of color and pattern on uniform); Truck Equip. Serv., 536 F.2d 1210 (trapezoidal shape of semi-trailer truck); Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952) (china patterns); Rolex Watch, 645 F. Supp. 484 (Rolex watch design); Zin-Plas, 622 F. Supp. at 419 (shape of tub spouts and shower heads).

Even if a product cannot be protected, Ferrari is correct in asserting that its exteriors qualify as a trade dress. As the court explained in a replication case involving expensive silver patterns, "A product's trade dress ordinarily consists of its packaging. However, the design given a product by its manufacturer also may serve to distinguish it from the products of other manufacturers and hence be protectible trade dress." Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 78-79, 16 U.S.P.Q.2D (BNA) 1555 (2d Cir. 1990), [**31] cert. denied, 499 U.S. 976, 113 L. Ed. 2d 720, 111 S. Ct. 1622 (1991). In this case, the exterior design is the "packaging" that is the distinctiveness of a Ferrari automobile. The evidence is that Ferraris need no labeling; the shape of the vehicles "says Ferrari."

C. Nonfunctionality of Appropriated Features

Trademark law does not protect the functional features of products because such protection would provide a perpetual monopoly of features which could not be patented. Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822, 825 (3d Cir. 1981). A product feature is functional "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n. 10, 72 L. Ed. 2d 606, 102 S. Ct. 2182 (1982). Functionality is a factual determination reviewed only for clear error. LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 77 (2d Cir. 1985).

The district court found that Ferrari proved, by a preponderance of the evidence, that the exterior shapes and features of the Daytona Spyder and Testarossa were nonfunctional. The court based this conclusion on the uncontroverted [**32] testimony of Angelo Bellei, who developed Ferrari's grand touring cars from 1964-75, that the company chose the exterior designs for beauty and distinctiveness, not utility. Roberts disagrees that Ferrari established nonfunctionality because he believes that the designs are excluded from protection by the "aesthetic functionality doctrine."

The aesthetic functionality test was developed by the Ninth Circuit in Pagliero, 198 F.2d 339. In Pagliero, the court found that the defendant's copying of the plaintiff's designs for hotel china was not actionable because the designs were functional as "an important ingredient in the commercial success of the product" as opposed to "a mere arbitrary embellishment, a form of dress for the goods primarily adopted for purposes of identification and individuality and, hence, unrelated to basic consumer demands in connection with the product. . . ." Id. at 343. As the court explained:

"One of the essential selling features of hotel china, if, indeed, not the primary, is the design. The attractiveness and eye-appeal of the design sells the china. Moreover, from the standpoint of the purchaser china satisfies [**33] a demand for the aesthetic as well as for the utilitarian, and the design on china is, at least in part, the response to such demand. The granting of relief in this type of situation would render Wallace immune from the most direct and effective competition with regard to these lines of china."
Id. at 343-44.

The broad scope of aesthetic functionality defined in Pagliero has been subsequently criticized and limited. Relating functionality to the commercial desirability of the feature regardless of its utilitarian function discourages the development of appealing designs because such designs would be entitled to less protection. Keene [*1247] Corp., 653 F.2d at 825; see also Wallace Int'l Silversmiths, 916 F.2d 76, 16 U.S.P.Q.2D (BNA) 1555. Moreover, Pagliero's "important ingredient" formula has been rejected because "trade dress associated with a product that has accumulated goodwill . . . will almost always be 'an important ingredient' in the 'saleability' of the product." LeSportsac, 754 F.2d at 77. In part because of these concerns, the Ninth Circuit itself later rejected the view that "any feature of a product which contributes [**34] to the consumer appeal and saleability of the product is, as a matter of law, a functional element of that product." Vuitton, 644 F.2d at 773.

Our own circuit seems to have implicitly rejected Pagliero's aesthetic functionality test. In WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084 (6th Cir. 1983), the defendant, who copied plaintiff's amusement park souvenir T-shirts, argued that the design was not protected because of its aesthetic functionality. The court rejected this argument:

"TS' assertion that its use of the involved design is "functional," i.e., "ornamental" or "decorative," is unavailing. . . . That an item serves or performs a function does not mean, however, that it may not at the same time be capable of indicating sponsorship or origin where aspects of the item are nonfunctional. Dallas Cowboys Cheerleaders, [604 F.2d 200]. The district court found that WSM's mark served to indicate source in addition to any "ornamental" function it might also serve. No basis exists for upsetting that finding."
Id. at 1087. Thus, the precedent in this circuit suggests that aesthetic functionality will not preclude a [**35] finding of nonfunctionality where the design also indicates source.

Other circuits also emphasize identification of source in limiting Pagliero. In Keene Corp., the Third Circuit suggested that "the inquiry should focus on the extent to which the design feature is related to the utilitarian function of the product or feature." Keene Corp., 653 F.2d at 825. Thus, trademark law would protect designs not significantly related to a product's utilitarian function which had achieved secondary meaning. Id. The court noted that this view had already received acceptance in cases holding that distinctive features used for identification were entitled to protection where such features were only incidentally functional. Dallas Cowboys Cheerleaders, 604 F.2d at 204; Application of Penthouse Int'l Ltd., 565 F.2d 679, 682, 195 U.S.P.Q. (BNA) 698 (C.C.P.A. 1977); Truck Equip. Serv., 536 F.2d at 1218. The Ninth Circuit also seemed to accept this formulation as a legitimate reading of Pagliero. In Vuitton, the court noted that the designs in Pagliero were adopted because of their aesthetic features and only after extensive [**36] advertising later became associated with the manufacturer. Vuitton, 644 F.2d at 773. That situation differs greatly from this case in which the Ferrari designs were selected for their distinctiveness.

IV.

For the foregoing reasons, the judgment of the district court is AFFIRMED.

 

[**39] KENNEDY, Circuit Judge, dissenting.