Appeal from the United States District Court for the Northern District of Illinois, Eastern Division. No. 1:09-cv-02263-Virginia M. Kendall, Judge.
The opinion of the court was delivered by: Evans, Circuit Judge.
Before KANNE, EVANS, and SYKES,Circuit Judges.
This case is about toilet paper. Are there many other things most people use every day but think very little about? We doubt it. But then again, only a select few of us work in the rarefied air inhabited by top-rate intellectual property lawyers who specialize in presenting and defending claims of unfair competition and trademark infringement under the Lanham Act, 15 U.S.C. §§ 1051 et seq. And the lawyers on both sides of this dispute are truly first-rate. Together they cite some 119 cases and 20 federal statutes (albeit with a little overlap) in their initial briefs. We are told that during the "expedited" discovery period leading up to the district court decision we are called upon to review, some 675,000 pages of documents were produced and more than a dozen witnesses were deposed. That's quite a record considering, again, that this case is about toilet paper.
We'll start by introducing the combatants. In the far corner, from an old cotton-producing state (Dixie: "I wish I was in the land of cotton, old times there are not forgotten.") and headquartered in the area (Atlanta) where Scarlett O'Hara roamed Tara in Margaret Mitchell's epic Gone With the Wind, we have the Georgia-Pacific Company. Important to this case, and more than a bit ironic, is that the name of Georgia-Pacific's flagship toilet paper is Quilted Northern. In the near corner, headquartered in the north, in Neenah, Wisconsin (just minutes away from Green Bay), and a long way from the land of cotton, we have the Kimberly-Clark Corporation. Ironically, its signature toilet paper brand is called Cottonelle.
The claim in this case is that a few of Kimberly-Clark's brands of toilet paper are infringing on Georgia-Pacific's trademark design. But again, this case is about toilet paper, and who really pays attention to the design on a roll of toilet paper? The parties, however, are quick to inform us that in a $4 billion dollar industry, designs are very important. Market share and significant profits are at stake. So with that, we forge on.
Georgia-Pacific has been selling toilet paper since 1902. In the early 1990s, it rebranded its toilet paper as Quilted Northern, emphasizing a new diamond-shaped embossed design on the tissue, which gives it the appearance of a quilt. This design-recognizable for the commercials with cartoon quilters -is referred to as the "Quilted Diamond*fn1 Design." To protect the Quilted Diamond Design, Georgia-Pacific applied for and received several trademarks, copyrights, and utility and design patents. Most relevant to this case are trademarks Reg. Nos. 2,710,741; 1,778,352; 1,806,076; and 1,979,345 and utility patents 5,436,057 ('057 patent); 5,573,830 ('830 patent); 5,597,639 ('639 patent); 5,620,776 ('776 patent); and 5,874,156 ('156 patent). The same lattice designs depicted in Georgia-Pacific's trademarks appear in the five utility patents.
Reg. N o. 1,806,076 Reg. N o. 1,979,345
Reg. N o. 2,710,741 Reg. N o. 1,778,352
'057, '156, and '639 patents '776 and '830 patents
In 2008, Georgia Pacific discovered that Kimberly-Clark, one of its main competitors in the toilet paper industry, had redesigned its Cottonelle Ultra bath tissue and Scott Kimberly-Clark Professional. Both products used a quilted design which Georgia-Pacific believed to be very similar to its Quilted Diamond Design.
Georgia-Pacific unrolled this suit against Kimberly-Clark, alleging unfair competition and trademark infringement under the Lanham Act, for Kimberly-Clark's introduction of its redesigned toilet paper.*fn2 Kimberly-Clark moved for summary judgment, arguing that Georgia-Pacific's Quilted Diamond Design is functional and therefore cannot be protected as a registered trademark. The district judge agreed and granted Kimberly-Clark's motion. Georgia-Pacific now appeals.
We review the district judge's grant of summary judgment de novo, viewing all facts in favor of the nonmoving party. Buie v. Quad/Graphics, Inc., 366 F.3d 496, 502 (7th Cir. 2004). Summary judgment is appropriate where the admissible evidence shows that "there is no genuine dispute as to any material fact and ...