EZAKI GLICO CO. v. LOTTE INTERNATIONAL AMERICA CORP., Docket No. 20-1817, amicus brief filed 7/29/2021

On July 29, 2021, AIPLA filed an amicus brief in the Supreme Court case, Ezaki Glico Co. v. Lotte International America Corp. (Case No. 20-1817). The issues presented were (1) whether trade dress is “functional” if it is “essential to the use or purpose of the article” or “affects the cost or quality of the article,” as the Supreme Court and nine circuit courts have held, or if it is merely “useful” and “nothing more,” as the U.S. Court of Appeals for the 3rd Circuit held below; and (2) whether the presence of alternative designs serving the same use or purpose creates a question of fact with respect to functionality, where the product’s design does not affect cost or quality and is not claimed in a utility patent.

The brief addresses the Third Circuit’s conclusion that product design trade dress is functional, and therefore not protectable, if it is “useful.” This sweeping conclusion sidesteps the “traditional rule” applied in the Supreme Court cases of Inwood Laboratories, Qualitex and TrafFix that product design trade dress 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.” The decision paints with too broad a brush. It makes all product design trade dress more vulnerable to invalidation because all product design trade dress is “useful” in some way or form.

The brief also questions the Third Circuit’s displacement of what remained of the traditional rule with principles of the separate doctrine of aesthetic functionality. Moreover, because trade dress is typically associated with ubiquitous products (especially the trade dress that is copied), it is likely that a trade dress owner would be forced to defend its trade dress in the Third Circuit under the new rule.

To read the full brief, please download the file.