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Re: Would this be applicable to the API issue?

See comments interspered below. Of course, we're talking about U.S. law here so your mileage may vary in other countries. There is certainly no complete harmony (although partial harmony on some aspects is starting to happen) around the world on almost every IP right.

This is not legal advice, no attorney-client relationship is established, etc. etc.

From: Mike Bilow <mikebw@colossus.bilow.com>
To: Andrew Weiss <ajwdsp@cloud9.net>
CC: debian-legal@lists.debian.org, debian-user@lists.debian.org
Subject: Re: Would this be applicable to the API issue?
Date: Mon, 5 Jun 2000 11:54:26 -0400 (EDT)

In general, "trade dress" is a fairly weak concept.

I don't know if I'd go so far as to say it is weak. The case for confusion I would imagine is typically more difficult than for a normal word trademark and it must past the functionality hurdle but other than that it is fairly much like any other trademark. Indeed trade dress can be registered as a trademark at least in the U.S. Taco Cabana won damages - see the U.S. Supreme Court case here http://caselaw.findlaw.com/scripts/getcase.pl?court=us&vol=505&invol=763

As a basis for suit in this case, I would not think trade dress infringement would be the strongest claim (although that doesn't mean it shouldn't be raised). I would think the copyright infringement / breach of contract case is much stronger. Perhaps followed by trademark infringement for the use of the Debian swirl.

 Owens-Corning has
been held, for example, to have a protectable right to make fiberglass
insulation in a distinctive pink color because there is no natural
association with that color and construction material.  On the other hand,
John Deere has been held not to have a protectable trademark interest in
their distinctive green color because there is an obvious and natural
association between the color green and farm equipment.

Color can be a trademark separate and apart from trade dress (although certainly color can be an aspect of trade dress). That's an error in the cited article - Qualitex (the ironing board) case was a trademark case, not a trade dress case. See the U.S. Supreme Court decision in Qualitex here:

I think the Apple/eMachines case is something of an aberration in being
taken seriously.

I am not so sure. I think iMacs have a pretty distinctive shape (trade dress) and when I see them I know they are Apple's. Perhaps it can be argued that the iMac design is "functional" - an aspect of the test not mentioned in the article - that is whether the particular feature(s) of the product are essential to the user or purpose of the article.

 To me, the iMac looks like a case made in the natural
shape of the CRT and given a funny color, which is hardly in itself
sufficient to justify a protectable claim.

But that's not the legal standard. The analysis is whether the shape is functional (perhaps an issue of dispute), is distinctive (iMacs don't look like your run of the mill beige box) and it identifies the source of the goods to which the trade dress is applied (I think a good survey would show most people identify the iMac shape with Apple).

 Taken to its logical extreme,
Apple could use this argument to prohibit anyone else from making a
computer that was not perfectly rectangular and beige.  To make matters
worse for Apple (as you note in the part of your quote I snipped), the
eOne is a Windows machine and therefore very unlikely to be confused by
the public with the iMac, so Apple is reduced to arguing a dilution claim.

Confusion is the lynchpin I think of a suit pertaining to the iMac shape or any trade dress case for that matter. Frankly, I have not seen the alleged infringing eMachines computer nor know whether any consumer would be confused. I can't speculate whether the case is with or without merit. I also think it is overstatement that Apple could prohibit anyone else from selling a computer that was not perfectly rectangular and beige simply from a having a trade dress right in the iMac; the right is not absolute and Apple has to prove all the elements including that its design is not functional and that of confusion given the proliferation of computer shapes. Courts are pretty good at determining what is confusing and what is not.

Also, trade dress would not be the only right I think Apple could assert against eMachines. I think Apple also has design patent on the iMac design - patent number D404,385 which you can look up at http://www.uspto.gov/patft/index.html

More critically with regard to the Debian issue, "trade dress" must be
applied to the actual goods or services themselves.  That is, although
Ferrari may claim a protectable interest in the distinctive shape of their
cars, the cars are the product.  An analogous claim on a web site might be
argued in theory for a product which is a web site, such as Yahoo, but the
Debian web site is not itself a product.  The "swirl" graphic, of course,
is a classic trademark, intended to be affixed to the product itself.

Not sure how you would apply the trade dress to Debian services except to use it on marketing materials like the Debian site. And use of trademark (trade dress) on marketing materials is legitimate trademark use with respect to services. Moreover, I am not sure if it is a slam dunk with respect to Debian "products" either. Perhaps, the Debian site could be considered the "virtual" packaging for the Debian code from debian.org. I am not sure if this issue has been tested in the courts.

The notion of applying a "trade dress" theory to "sales techniques" seems
very far-fetched, at least as I understand those terms.  I suppose this is
theoretically possible, but any case I can think up where this might work
would have stronger claims otherwise.  For example, taking the iMac as an
inspiration, suppose that a used car salesman happens to be named "Barber"
and decides to buy uniforms for all of his salespeople which are red and
white striped, like a barber pole.  He features people dressed in these
odd outfits extensively in his print and television advertising.  His
competitor decides that this is working well, and decides to buy all of
his salespeople uniforms that are blue and yellow striped.  Barber cannot
make much of a "trade dress" claim: he is not painting the cars, and he is
not making the cars to begin with; car salespeople are notorious for
wearing outlandlish attenion-getting clothing; and it is hard to see why
blue and yellow stripes would suggest "Barber" in the same way as red and
white.  Unless Barber has some independent claim (if he, say, uses the
slogan "The Home of the Striped Salespeople") then he has a tough case.

-- Mike

Take a look at the Taco Cabana case. Hopefully it is enlightening.

On 2000-06-05 at 00:11 -0400, Andrew Weiss wrote:

> It seems as if this would bundle the Debian Swirl and the look of Debian's
> website and cover any issues rather than dealing with it as copyright
> infringement and/or trademark infringement.
> Excerpt from an article dealing with Apple sueing Emachines for the eOne: on
> MacWeek News
> Trade dress
> Trade dress is protectable as an unregistered trademark and is a subset of
> trademark law and principles; it is designed to ensure that a product or
> service's shape, appearance, color, packaging or even sales techniques are
> not copied by a competing product.

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