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Spend some time, and read the whole thing. I'll give you a couple cliffs notes, but it's well worth the read...
http://www.leagle.com/decision/19826...ARMHAND,%20INC.
DEERE & CO. v. FARMHAND, INC.
CIV. NO. 79-503-E.
560 F.Supp. 85 (1982)
DEERE & COMPANY, Plaintiff, v. FARMHAND, INC., Defendant.
United States District Court, S.D. Iowa, C.D.
June 30, 1982.
Cliff's Notes...
Deere alleges that Farmhand's use of the color John Deere green and embodiment of similar features in its Models F-248 and F-258 loaders, alone or in conjunction with its use of the name "John Deere" in its advertising, constitutes a false description or representation of origin within the meaning of 15 U.S.C. §
There was abundant evidence at trial to the effect that farmers desire to "match" their loaders to their tractors. The Court is persuaded that this is, in fact, true. The most convincing evidence in this regard came from the representatives of Deere. Mr. Roy Harrington, Deere's manager of livestock equipment in the Product and Market Planning Department, stated that it was his responsibility9 to know farmers' needs and desires with respect to loaders. In a memo to John Nolan, a Deere patent attorney, Mr. Harrington stated:
Farmers leave loaders on their tractors for a significant amount of time and much prefer that they are painted the same color.... The ability of Farmhand to sell exactly our color undoubtedly causes us to lose some loader sales.
Whether the color John Deere green alone is capable of protection under 15 U.S.C. 1125(a) presents an interesting question.19 Plaintiff maintains that the color serves no function and thus, meets the first requirement under the Fruehauf decision. Defendant contends that color is aesthetically functional because farmers prefer to match the color of their loader to that of their tractor.
With respect to the question of color, the Court again looks to McCarthy for the general rule. According to this treatise, "color, per se, is not capable of appropriation as a trademark. That is, one seller cannot feature a certain color in its packaging and claim that `This is my color. No one else in the trade can use this color.' But color may be an essential element in an arbitrary arrangement of symbols and words." McCarthy,
[560 F.Supp. 97]
Trademarks and Unfair Competition, Sec. 7:16 (1973). One reason for the general rule that denies a manufacturer's appropriation of a particular color is that there are only a limited number of colors and shades of colors available. Another reason given by McCarthy is that infringement actions would soon denigrate into questions of shade confusion.20
Farmhand argued that, even if color were capable of protection under Section 43(a), the doctrine of "aesthetic functionality" bars the relief sought by Deere. The doctrine of aesthetic functionality defines functionality in terms of consumer acceptance. The doctrine apparently began with
[560 F.Supp. 98]
Pagliero v. Wallace China, 198 F.2d 339, 343 (9th Cir.1952), wherein the Court stated:
If the feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or a copyright.
The Court concludes that the doctrine of aesthetic functionality should apply to the dispute now before the Court. The Court has found that farmers prefer to match their loaders to their tractor just as the lighting fixture in Keene was designed to match the architecture of the building on which it was mounted.23
Fruehauf holds that the determinative question on the issue of functionality is whether protection against imitation will hinder the competitor in competition, Fruehauf, supra, at 1218. The Court has found that protection of John Deere green and the features that are common to both products would hinder Farmhand in competition. Defendant's Exhibits 175 and 178 are very strong evidence that Deere in fact believes that this is true.
Functional features in products are available for copying in our society unless they are covered by patents. The difficulty in a case such as this is in distinguishing personal notions of what is "fair" from the societal objectives in the law of unfair competition. It is not only fair to imitate non-patented functional products,24 it is necessary to our form of economy.
IT IS HEREBY ORDERED that the Clerk of Court shall enter judgment in favor of the defendant with respect to the allegations of plaintiff's Complaint. The Court hereby denies plaintiff's request for an injunction and damages.
IT IS FURTHER ORDERED that the judgment shall contain a declaration as follows: The color John Deere green and the configuration of the John Deere 148 and 158 loaders are functional as that term is used in § 43 of the Lanham Act, 15 U.S.C. § 1125(a). Deere has not established that a secondary meaning exists for the color John Deere green or the configuration of its loader as that phrase is interpreted under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Deere has failed to establish that there is a likelihood of confusion between the Deere 148 and 158 loaders and the Farmhand F-248 and F-258 loaders as that phrase is interpreted under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
http://www.leagle.com/decision/19826...ARMHAND,%20INC.
DEERE & CO. v. FARMHAND, INC.
CIV. NO. 79-503-E.
560 F.Supp. 85 (1982)
DEERE & COMPANY, Plaintiff, v. FARMHAND, INC., Defendant.
United States District Court, S.D. Iowa, C.D.
June 30, 1982.
Cliff's Notes...
Deere alleges that Farmhand's use of the color John Deere green and embodiment of similar features in its Models F-248 and F-258 loaders, alone or in conjunction with its use of the name "John Deere" in its advertising, constitutes a false description or representation of origin within the meaning of 15 U.S.C. §
There was abundant evidence at trial to the effect that farmers desire to "match" their loaders to their tractors. The Court is persuaded that this is, in fact, true. The most convincing evidence in this regard came from the representatives of Deere. Mr. Roy Harrington, Deere's manager of livestock equipment in the Product and Market Planning Department, stated that it was his responsibility9 to know farmers' needs and desires with respect to loaders. In a memo to John Nolan, a Deere patent attorney, Mr. Harrington stated:
Farmers leave loaders on their tractors for a significant amount of time and much prefer that they are painted the same color.... The ability of Farmhand to sell exactly our color undoubtedly causes us to lose some loader sales.
Whether the color John Deere green alone is capable of protection under 15 U.S.C. 1125(a) presents an interesting question.19 Plaintiff maintains that the color serves no function and thus, meets the first requirement under the Fruehauf decision. Defendant contends that color is aesthetically functional because farmers prefer to match the color of their loader to that of their tractor.
With respect to the question of color, the Court again looks to McCarthy for the general rule. According to this treatise, "color, per se, is not capable of appropriation as a trademark. That is, one seller cannot feature a certain color in its packaging and claim that `This is my color. No one else in the trade can use this color.' But color may be an essential element in an arbitrary arrangement of symbols and words." McCarthy,
[560 F.Supp. 97]
Trademarks and Unfair Competition, Sec. 7:16 (1973). One reason for the general rule that denies a manufacturer's appropriation of a particular color is that there are only a limited number of colors and shades of colors available. Another reason given by McCarthy is that infringement actions would soon denigrate into questions of shade confusion.20
Farmhand argued that, even if color were capable of protection under Section 43(a), the doctrine of "aesthetic functionality" bars the relief sought by Deere. The doctrine of aesthetic functionality defines functionality in terms of consumer acceptance. The doctrine apparently began with
[560 F.Supp. 98]
Pagliero v. Wallace China, 198 F.2d 339, 343 (9th Cir.1952), wherein the Court stated:
If the feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or a copyright.
The Court concludes that the doctrine of aesthetic functionality should apply to the dispute now before the Court. The Court has found that farmers prefer to match their loaders to their tractor just as the lighting fixture in Keene was designed to match the architecture of the building on which it was mounted.23
Fruehauf holds that the determinative question on the issue of functionality is whether protection against imitation will hinder the competitor in competition, Fruehauf, supra, at 1218. The Court has found that protection of John Deere green and the features that are common to both products would hinder Farmhand in competition. Defendant's Exhibits 175 and 178 are very strong evidence that Deere in fact believes that this is true.
Functional features in products are available for copying in our society unless they are covered by patents. The difficulty in a case such as this is in distinguishing personal notions of what is "fair" from the societal objectives in the law of unfair competition. It is not only fair to imitate non-patented functional products,24 it is necessary to our form of economy.
IT IS HEREBY ORDERED that the Clerk of Court shall enter judgment in favor of the defendant with respect to the allegations of plaintiff's Complaint. The Court hereby denies plaintiff's request for an injunction and damages.
IT IS FURTHER ORDERED that the judgment shall contain a declaration as follows: The color John Deere green and the configuration of the John Deere 148 and 158 loaders are functional as that term is used in § 43 of the Lanham Act, 15 U.S.C. § 1125(a). Deere has not established that a secondary meaning exists for the color John Deere green or the configuration of its loader as that phrase is interpreted under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Deere has failed to establish that there is a likelihood of confusion between the Deere 148 and 158 loaders and the Farmhand F-248 and F-258 loaders as that phrase is interpreted under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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