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Re: Would this be applicable to the API issue?

On 2000-06-07 at 12:18 -0400, Chloe Hoffman wrote:

> 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.

It seems to me that there is serious doubt that a web site could ever meet
the non-functionality test.  In the Taco Cabana case, the Court held:

***** BEGIN QUOTE *****
Suggestions that, under the Fifth Circuit's law, the initial user of any
shape or design would cut off competition from [505 U.S. 763, 775]
products of like design and shape are not persuasive. Only nonfunctional,
distinctive trade dress is protected under 43(a). The Fifth Circuit holds
that a design is legally functional, and thus unprotectable, if it is one
of a limited number of equally efficient options available to competitors
and free competition would be unduly hindered by according the design
trademark protection. See Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417,
426 (1984). This serves to assure that competition will not be stifled by
the exhaustion of a limited number of trade dresses.
***** END QUOTE *****

My take on this is that the Debian "swirl" is an open-and-shut issue, and
that the copyright claim could be minimally resolved in a way that would
provide no remedy to Debian's real concerns about public confusion.

> >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).

My argument on the iMac rests primarily on the claim of distinctiveness.  
I think there is very strong argument to be made that the iMac shape is
not _inherently_ distinctive: it is not appreciably different than a
Lear-Siegler ADM3 terminal or an ADDS Regent terminal, for example, and
the shape is simply that of the CRT inside the monitor box.  One might
argue that, since the vast majority of the public has neither seen nor
heard of these ancient terminals and has no idea of the natural shape of a
CRT, then Apple has through advertising bestowed a secondary meaning onto
their shape which is not otherwise inherently distinctive.

> >  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.

Well, I specifically said "taken to its logical extreme."  My point is
that the iMac is not, in my opinion, "inherently distinctive" because the
shape of a CRT in a CRT-shaped case cannot be so regarded.  Given that the
Taco Cabana case starts out from the assumption that its trade dress was
found by the jury to be inherently distinctive and non-functional, it
seems to me that this moves it outside the main sphere of relevance for
both the Debian issue and the Apple iMac claim.

> 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.

As far as I know, the status of a web site which is not the product is
quite nebulous and uncertain at present.  I think there would be serious
problems arguing that a web site constitutes "virtual packaging," since it
seems much more consistent with advertising or collateral literature.  

As I state above, it seems very hard to make out any web site as
non-functional.  There are a fairly limited number of accepted ways to
lay out web pages, and the Debian site is standard in most regards,
including its use of tables, menus, navigation bars, and so on.  If there
is trade dress present, then it must be found in the non-functional
aspects such as the oval-shaped links on the navigation bars, the display
font used to render the "Debian" logo at the top of the page, the choice
of colors on the page, and so on.  Certainly, a claim of likelihood of
confusion must be based upon the cumulative effect resulting from this
series of arbitrary similarities.  However, I am not sure that this can
meet the literal requirements of the non-functionality test.

-- Mike

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