The opinion of the court was delivered by: SHADUR
Sassafras Enterprises, Inc. ("Sassafras") has sued Roshco, Inc. ("Roshco") for trade dress infringement and unfair competition under Lanham Act § 43(a), 15 U.S.C. § 1125(a) (Count I), contending that Roshco's pizza stone set infringes on the trade dress of Sassafras' set containing the same components. Sassafras also asserts that the same conduct on which it pegs its Lanham Act claim also violates four Illinois statutes:
1. the Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/1 to 505/12 (Count II);
2. the Uniform Deceptive Trade Practices Act, 815 ILCS 510/1 to 510/7 (Count III);
3. the Deceptive Advertising Act, 720 ILCS 295/1a (Count IV); and
Roshco has now moved for summary judgment under Fed. R. Civ. P. ("Rule") 56 as to Counts I through IV,
and its motion is fully briefed and ready for decision. For the reasons stated in this memorandum opinion and order, Roshco's motion is granted and this action is dismissed.
Summary Judgment Standards
Familiar Rule 56 standards impose on Roshco the burden of establishing the lack of a genuine issue of material fact ( Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986)). For that purpose this Court is "not required to draw every conceivable inference from the record--only those inferences that are reasonable"--in the light most favorable to Sassafras ( Bank Leumi Le-Israel, B.M. v. Lee, 928 F.2d 232, 236 (7th Cir. 1991) and cases cited there). While the often-encountered need for fact-laden determinations in trade dress infringement cases may block the entry of summary judgment where such material facts are in dispute, that does not of course negate the potential for summary judgment in cases where a movant has plainly satisfied the Rule 56 standards. For that purpose summary judgment is appropriate if the record reveals that no reasonable jury could conclude that the appearance of Sassafras' pizza stone set is either inherently distinctive or has acquired secondary meaning.
What follows in this section will suffice to establish the framework for the discussion of Roshco's motion. Other relevant facts, which fit somewhat better into the substantive legal discussion, will be set out later in the opinion.
Since the late 1970s or early 1980s Sassafras has been marketing and selling a home pizza making set comprising a pizza stone, a wooden-handled metal pizza cutter, a metal rack for the pizza stone and a recipe, use and care booklet (D. 12(m) P17). In 1994 Roshco started to sell a set with the same components (D. App. 137-42)--a set that Sassafras claims infringes on the trade dress of its own set.
More specifically, Sassafras claims a protectible interest in the "total image" of its set (Sassafras Mem. 6):
a brownish-colored stoneware with a smooth texture on top and recognizable circular ridges on the bottom, a metal pizza tray
with notches, a wooden handle metal pizza cutter, and a recipe, use, and care book.
Sassafras does not claim a protectible interest in the packaging of its set.
"Trade dress" has been defined as "the total image of a product, including features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques" ( Roulo v. Russ Berrie & Co., 886 F.2d 931, 935 (7th Cir. 1989) (citation and internal quotation omitted)). While traditional notions in this area covered only the packaging or labeling of a product, protection is now potentially available for the appearance of the product itself, sometimes referred to as "product configuration" (1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition ["McCarthy"] § 8.01 (3d ed. 1995); see also Judge Edward Becker's illuminating opinion in Duraco Prods., Inc. v. Joy Plastic Enter., Ltd., 40 F.3d 1431, 1438-51 (3d Cir. 1994), discussing the potential differences in the legal principles that apply to product configuration cases as compared with other more traditional trade dress situations); cf. Kohler Co. v. Moen, Inc., 12 F.3d 632, 635-36 (7th Cir. 1993) (addressing the potential trademark, rather than trade dress, protection of product configuration)).
But as with trademarks and service marks, a product's appearance is entitled to trade dress protection only if that appearance serves as a signifier of the product's source ( Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 657-58 (7th Cir. 1995)). Otherwise competitors are free to copy the product's configuration down to the minutest detail, no matter how unique or original that product may be. Trade dress law has no interest in stopping that "sincerest of flattery,"
because that branch (or subbranch) of intellectual property law is concerned with protecting "goodwill toward the producer" and not "goodwill toward the article--'the attractive features, of whatever nature, that the product holds for consumers'--which is freely appropriable by second comers" ( Thomas & Betts, 65 F.3d at 660-61, quoting Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 215 (3d Cir. 1995)). As Duraco, 40 F.3d at 1448 has put the matter:
It is not ipso facto "unfair competition," we believe, for one boldly to copy a competitor's product; it is only "unfair competition" to trade off another's good will and in the process dupe customers into mistaking one's product for another's.
So in this case Roshco is free to sell a pizza set that mimics the Sassafras set to a "T"--round, brownish pizza stone, wooden-handled cutter and all--unless Sassafras is able to show
that the appearance of its set is entitled to trade dress protection because it serves as a signifier of the set's source. To do that Sassafras must show that the configuration of its pizza set is either (1) inherently distinctive or (2) has acquired distinctiveness through secondary meaning ( Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 120 L. Ed. 2d 615, 112 S. Ct. 2753 (1992)).
Our Court of Appeals has not explicitly adopted its own specific test for inherent distinctiveness in product configuration trade dress.
Other courts have used a few different variations (see Duraco, 40 F.3d at 1448-49; Nelson/Weather-Rite, Inc. v. Leatherman Tool Group, Inc., 1995 U.S. Dist. LEXIS 16575, No. 93 C 2274, 1995 WL 669091, at *8 (N.D. Ill. Nov. 8)). But in all events the tests and the elements within each test (1 McCarthy § 8.02) (footnote omitted):
are merely different ways to ask whether the design, shape or combination of elements is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicia [sic] of origin--a trademark.
As already stated, Sassafras claims a protectible trade dress in a round brownish stoneware pizza stone with circular ridges on the bottom, a metal rack with notches, a wooden-handled metal pizza cutter and a recipe, use and care book. Of course this Court continues to recognize that "trade dress infringement claims call for consideration not of each facet of the claimed trade dress separately, but rather of their combined effect" (see its opinion in Spraying Sys. Co. v. Delavan, Inc., 762 F. Supp. 772, 782 (N.D.Ill. 1991), aff'd, 975 F.2d 387 (7th Cir. 1992)). But in this instance Sassafras is seeking trade dress protection for a combination of four distinct elements, so that it will be helpful to discuss each individually before turning to the set as a whole.
Sassafras' pizza stone is round and light brown in color. On one side--the side on which the pizza is placed--the surface is smooth, but the flipside has raised ridges in a pattern of four concentric circles, each broken up into eight segments (D. App. 58; P. Ex. F). Of course there is nothing out of the ordinary about the shape or color, so the only arguably distinctive aspect of the pizza stone might be the raised ridges on its underside (Roshco's ...