In Blumenthal Distrib. Inc. d/b/a Office Star v. Herman Miller, Inc.,1 the U.S. Court of Appeals, Ninth Circuit, held that the overall appearance of Herman Miller Inc.’s Eames chairs was eligible for trade dress protection because it was not functional.
Herman Miller Inc. (HM) sells Eames and Aeron chairs, and sued Office Star Products under the Lanham Act for trade dress infringement and dilution for selling “knockoff” versions of the chairs. The district court found that Office Star willfully infringed and diluted the Eames trade dress. Examples of the Eames chairs appear below:
HM’s unregistered, claimed Eames trade dresses consisted of the overall appearances of its Thin Pad and Soft Pad Eames chairs, excluding the chairs’ colors and parts beneath the chairs’ seats. HM’s registered, claimed Eames trade dress was the same, but it excluded the chairs’ upholstery.
On appeal, the Ninth Circuit rejected Office Star’s argument that the infringement verdict should be reversed because the overall design of the Eames chairs was functional. Office Star’s argument that the chairs’ overall appearance was functional because it included functional elements was considered a nonstarter by the court. “As we have long held, a product’s overall appearance is necessarily functional if everything about it is functional, not merely if anything about it is functional,” the Ninth Circuit said.2
The court also rejected Office Star’s argument that HM’s trade dress in the Eames chairs was invalid because it has utilitarian functionality. Under the Disc Golf test for utilitarian functionality, the factfinder considers (1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.3
HM presented “abundant evidence” that the Eames chairs’ overall appearance came from “non-utilitarian design choices,” the Ninth Circuit observed. The jury reasonably could have inferred that the chairs were designed “largely to be distinctive and/or beautiful,” with features that decreased their functionality, such as metal trapezoid armrests used “at the expense of the comfort that a softer surface could have provided.”4 HM’s expert witnesses also testified that the chairs’ designers were “always working to find the exact right look of something” and that “aesthetics were one of the most important considerations” in the design.5
The court reasoned a reasonable jury could have concluded that the remaining Disc Golf factors also favored HM:
HM introduced testimony suggesting that a variety of alternative designs could have achieved the Eames design’s functional advantages, so competitors would not be unreasonably limited in their chair design options if the Eames trade dress were protected. HM also introduced advertising materials that emphasized the Eames chairs’ distinctive appearances through large, artistic photographs and statements touting their appearances as “unmistakable,” “bear[ing] the distinctive stamp of Charles and Ray Eames,” and being “totally different” from other chairs.6
The Ninth Circuit therefore affirmed the jury verdict that Office Star infringed the Eames chairs trade dresses. However, the court reversed the jury finding that Office Star diluted the trade dresses, finding the Eames chairs were not sufficiently famous to sustain HM’s dilution claim as a matter of law. The Eames chairs did not reach the “household name” threshold for fame under the Lanham Act, according to the court.7 The jury’s finding that HM’s Aeron chair trade dress was not protectable was reversed and remanded.
In a partial dissent, Judge Friedland said there was sufficient evidence for the jury to find that the Eames chairs were famous enough to support a dilution claim. Judge Friedland said:
The jury was entitled to deem HM’s experts credible and to infer from their testimony that the general consuming public had become familiar with the Eames chairs through encounters in business environments, pop culture, and museums. And because HM presented evidence that the Eames chairs had a distinctive design, the jury was entitled to find that the consuming public recognized trade dresses central to that design as a signature of chairs made by a leading furniture manufacturer, even if they could not specifically name HM as that manufacturer.8
The Ninth Circuit clarified that a product’s overall appearance is necessarily functional if everything about it is functional, not merely if anything about it is functional. In addition, a product appearance is not functional if its overall appearance came from nonutilitarian design choices where, for example, a variety of alternative designs could have achieved the design’s functional advantages. The court also emphasized that it is important that the advertising promote the utilitarian advantages of the design. Thus, the court provided a road map for product developers to consider when creating their products in a manner that would enable and maximize trade dress protection.
1 Blumenthal Distrib. Inc. d/b/a Office Star v. Herman Miller, Inc., No. 18-56471, 963 F.3d 859 (9th Cir. 2020).
2 Id., 963 F.3d at 867 (citing Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1259, 58 USPQ2d 1881, 1885 (9th Cir. 2001); Leatherman Tool Group Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1011 n.3, 1013, 53 USPQ2d 1196, 1189 n.3, 1200 (9th Cir. 1999)).
3 Id., 963 F.3d at 865 (quoting Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006, 48 USPQ2d 1132, 1135 (9th Cir. 1998)).
4 Id., 963 F.3d at 867.
5 Id., 963 F.3d at 868.
6 Id., 963 F.3d at 868.
7 Id., 963 F.3d at 870–71 (quoting Thane Int’l Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911, 64 USPQ2d 1564, 1575 (9th Cir. 2002)).
8 Id., 963 F.3d at 872 (Friedland, J., dissenting).