Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH

EDITH H. JONES, Circuit Judge.

. . .

Eppendorf is a German company which manufactures medical and laboratory equipment. At issue in this case is Eppendorf’s line of disposable pipette tips and dispenser syringes capable of accurate and rapid “multiple dispensing” of liquids. Eppendorf’s disposable pipette tips are sold in the United States marked with the word-marks “COMBITIPS,” “EPPENDORF” and “EPPENDORF COMBITIPS” (hereinafter referred to as "Combitips"). Eppendorf manufactures eight Combitip sizes, from .05 milliliters to 50 milliliters. All eight sizes are designed to fit into the “Combitip Dispenser Syringe”. By attaching a Combitip to the dispenser syringe, a user can rapidly dispense liquids in precisely measured aliquots.

Ritter is a German manufacturer specializing in injection-molded plastic products. In the early 1990s, Ritter began manufacturing disposable pipettes virtually identical to the Combitips. . . .

In June of 1998, Eppendorf filed suit in the Eastern District of New York against Ritter and RK, asserting various trademark and trade dress infringement claims under Sec. 43(a) of the Lanham Act. . . . Eppendorf’s suit was transferred to the Southern District of Mississippi. Eppendorf alleges that Ritter infringed on its trade dress rights by “slavishly mimicking” the design and trade dress of the “entire family of Eppendorf [Combitips].” . . . The jury returned a verdict for Eppendorf, finding that Ritter and RK infringed upon Eppendorf’s trade dress rights. . . .

Ritter and RK now appeal. They contend, inter alia, that Eppendorf failed to carry its burden of proving that the eight elements are non-functional. . . .

It is clear that functional product features do not qualify for trade dress protection. However, the definition of “functionality” has not enjoyed such clarity. In Traffix, the Supreme Court recognized two tests for functionality. First, the Court recognized the “traditional” definition of functionality: “a product feature is functional, and cannot serve as a trademark, ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of an article.’” Under this traditional definition, if a product feature is “the reason the device works,” then the feature is functional. The availability of alternative designs is irrelevant.

In addition to the traditional definition, Traffix recognized a second test for functionality: “a functional feature is one the ‘exclusive use of which would put competitors at a significant non-reputation-related disadvantage.’” This “competitive necessity” test for functionality is an expansion of the traditional test. The Court emphasized, however, that the “competitive necessity” test is not “a comprehensive definition” of functionality. The primary test for functionality is the traditional test, and there is no need to consider the “competitive necessity” test where a product feature is functional under the traditional definition.

Eppendorf correctly argues that before Traffix, this circuit had adopted a “utilitarian” test of functionality. Under this utilitarian test, “the ultimate inquiry concerning functionality [] is whether characterizing a feature or configuration as protected ‘will hinder competition or impinge upon the rights of others to compete effectively in the sale of goods.’” . . . This court’s “utilitarian” test, with its focus on the ability of competitors to compete effectively in the marketplace, is virtually identical to the “competitive necessity” test discussed in Traffix. Accordingly, Traffix supersedes the definition of functionality previously adopted by this court. The “utilitarian” test, although still valid as a secondary test, is not a comprehensive definition of functionality. In light of Traffix, the primary test for determining whether a product feature is functional is whether the feature is essential to the use or purpose of the product or whether it affects the cost or quality of the product.

The crucial issue presented by this appeal is whether the eight design elements of the Eppendorf Combitips are functional as a matter of law. . . .

Eppendorf contends that the evidence supports the jury’s finding of non-functionality because “the evidence clearly established that there were alternative designs to each of the eight non-functional features.” Indeed, there is extensive testimony in the record regarding available alternative designs for each of the eight elements. For example, Eppendorf’s expert testified that the number of fins under the flange “could be increased or decreased or their appearance could be changed.” Thus, Eppendorf argues that the fins are non-functional because alternative designs are available to competitors in the marketplace.

. . . [T]he design features for which Eppendorf seeks trade dress rights are functional if they are essential to the use or purpose of the Combitips or affect the cost or quality of the Combitips. The availability of alternative designs is irrelevant.

In this case it is undisputed that the Combitips’s fins provide necessary support for the flange. Without the fins, the flange is subject to deformation.

The only testimony offered by Eppendorf to prove non-functionality of the fins related to the existence of alternative design possibilities. Eppendorf’s functionality expert testified that the appearance and number of fins could be changed without affecting the function of the fins. Eppendorf did not prove, however, that the fins are an arbitrary flourish which serve no purpose in the Combitips. Rather, Eppendorf’s experts concede that fins of some shape, size or number are necessary to provide support for the flange and to prevent deformation of the product. Thus, the fins are design elements necessary to the operation of the product. Because the fins are essential to the operation of the Combitips, they are functional as a matter of law, and it is unnecessary to consider design alternatives available in the marketplace.

Likewise, a careful review of the record demonstrates that Eppendorf failed to prove that the remaining Combitip design elements are unnecessary, non-essential design elements. It is undisputed that: (1) The flange is necessary to connect the Combitip to the dispenser syringe; (2) The rings on the plunger head are necessary to lock the plunger into a cylinder in the dispenser syringe; (3) The plunger is necessary to push liquids out of the tip, and the ribs on the plunger stabilize its action; (4) The tips at the lower end of the Combitips are designed to easily fit into test tubes and other receptacles; (5) The size of the Combitip determines the dispensed volume, and size is essential to accurate and efficient dispensing; (6) The color scheme used on the Combitip – clear plastic with black lettering – enables the user easily to see and measure the amount of liquid in the Combitip, and black is standard in the medical industry; and (7) The stumps of the larger Combitips must be angled to separate air bubbles from the liquid and ensure that the full volume of liquid is dispensed. Thus, all eight design elements identified by Eppendorf are essential to the operation of the Combitips.

Eppendorf’s theory of non-functionality focused on the existence of alternative designs. Eppendorf’s design expert summarized Eppendorf’s approach to functionality: “My conclusion was that to achieve the same functional purpose, [the design elements identified by Eppendorf] can be changed significantly, considerably without affecting the overall intended purpose.” Although alternative designs are relevant to the utilitarian test of functionality, alternative designs are not germane to the traditional test for functionality. Each of the eight design elements identified by Eppendorf is essential to the use or purpose of the Combitips, and is not arbitrary or ornamental features. Therefore, no reasonable juror could conclude that Eppendorf carried its burden of proving non-functionality.

CONCLUSION

We conclude that Eppendorf failed to carry its burden of proving non-functionality. . . . Accordingly, we REVERSE the judgment of the district court and RENDER judgment for Ritter and RK Manufacturing. We likewise VACATE the injunction entered by the district court.