the Antioch Company v. Western Trimming Corporation

*The Honorable R ichard M ills, United States District Judge for the
Central District of Illinois, sitting by designation.
1
RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
ELECTRONIC CITATION: 2003 FED App. 0368P (6th Cir.)
File Name: 03a0368p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
_________________
THE ANTIOCH COMPANY,
Plaintiff-Appellant,
v.
WESTERN TRIMMING
CORPORATION,
Defendant-Appellee.
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No. 02-3380
Appeal from the United States District Court
for the Southern District of Ohio at Dayton.
No. 98-00236—Walter H. Rice, Chief District Judge.
Argued: September 10, 2003
Decided and Filed: October 20, 2003
Before: MOORE and GILMAN, Circuit Judges; MILLS,
District Judge.*
2 Antioch Company v.
Western Trimming Corp.
No. 02-3380
_________________
COUNSEL
ARGUED: John B. Pinney, GRAYDON, HEAD &
RITCHEY, Cincinnati, Ohio, for Appellant. John E. Kelly,
KELLY, BAUERSFELD, LOWRY & KELLY, Woodland
Hills, California, for Appellee. ON BRIEF: John B. Pinney,
GRAYDON, HEAD & RITCHEY, Cincinnati, Ohio, Thomas
W. Flynn, WOOD, HERRON & EVANS, Cincinnati, Ohio,
Steven D.A. McCarthy, BIEBEL & FRENCH, Dayton, Ohio,
for Appellant. John E. Kelly, John D. Bauersfeld, KELLY,
BAUERSFELD, LOWRY & KELLY, Woodland Hills,
California, Charles J. Faruki, Gerald S. Sharkey, FARUKI,
IRELAND & COX, Dayton, Ohio, for Appellee.
_________________
OPINION
_________________
RONALD LEE GILMAN, Circuit Judge. This appeal
involves the question of whether, as a matter of law, the
Antioch Company’s scrapbook album configuration is
functional and therefore ineligible for trade dress protection.
By seeking trade dress protection for its album design,
Antioch is trying to bar Western Trimming Corporation
(Westrim) from selling “knock-off” copies of the album
format under the Westrim trademark. For the reasons set
forth below, we AFFIRM the district court’s grant of
summary judgment for Westrim.
I. BACKGROUND
A. Factual background
Antioch produces and markets a scrapbook album under the
trademark “CREATIVE MEMORIES” that has several

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distinctive features. The album utilizes a dual strap-hinge
design that permits the pages to lie flat when the album is
open, facilitates the turning of the pages, and enables the easy
insertion of additional pages. Another design element of the
CREATIVE MEMORIES album is its spine cover that
conceals the dual strap-hinge, which causes it to be known as
a “closed back” or “bookshelf” album. A third element of
Antioch’s album is the laminated, padded album covers.
Finally, the CREATIVE MEMORIES album pages have
ribbed edges that provide reinforcement, keep them separated,
and hold the staples together. Antioch seeks trade dress
protection for the CREATIVE MEMORIES album that
encompasses these above-described features.
In 1997, Westrim, a competitor of Antioch in the hobby and
craft industry, decided to copy the Antioch strap-hinge album
in order to provide its customers with the functional benefits
of the design. After determining that Antioch’s patents that
potentially covered the features in question had expired,
Westrim developed and marketed its own version of the strap-
hinge albums—the “Cherished Line” — under its existing
“MEMORIES FOREVER” trademark. Through the use of its
own distinctive logo and scroll work on the album covers,
Westrim links the Cherished Line to its other photo,
scrapbook, and related accessories in the MEMORIES
FOREVER product line.
B. Procedural background
Westrim presented the Cherished Line products at a craft
industry trade show on June 5, 1998. Antioch filed suit three
days later, alleging trademark and trade dress infringement
violations under the Lanham Act, 15 U.S.C. §§ 1051–1127,
as well as various state-law claims for trademark
infringement, unfair competition, and deceptive trade
practices. It essentially protested Westrim’s sale of an album
that was virtually identical to its own. In addition, Antioch
sought to immediately enjoin Westrim from introducing the
4 Antioch Company v.
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No. 02-3380
Cherished Line albums into the U.S. market pending
resolution of the litigation.
On July 29, 1998, the district court denied Antioch’s
motion for a preliminary injunction, focusing its discussion
primarily on the trademark infringement issue. The district
court found that Westrim adopted Antioch’s album design in
order to achieve its functional benefits, not to confuse
scrapbook enthusiasts about the supplier or source of the
album. In an unpublished opinion, a prior panel of this court
affirmed the district court’s denial of a preliminary injunction,
concluding that Westrim would probably defeat Antioch’s
claim of likelihood of confusion when the case went to trial.
Antioch Co. v. Western Trimming Corp., Nos. 98-3876, 98-
3943, 1999 WL 777556, at *6 (6th Cir. 1999).
Although it found the oversight harmless, the prior panel
acknowledged that the district court had not addressed the
trade dress infringement issue. The panel, nonetheless, drew
several tentative conclusions about the trade dress claim. In
particular, it expressed skepticism regarding the
distinctiveness and attachment of secondary meaning to the
Antioch albums, and also observed that the contested spine
cover was purely functional. Id. at *4.
Following the denial of the preliminary injunction and the
clear indication that Antioch was unlikely to prevail on its
trademark infringement claim, Antioch abandoned that cause
of action. Antioch instead filed an amended complaint on
March 13, 2000, focusing its efforts on its federal and
common law trade dress claims, as well as implied passing-
off claims under § 43(a) of the Lanham Act, 15 U.S.C.
1125(a), and Chapter 4165.02 of the Ohio Revised Code. The
district court granted Westrim summary judgment on the
implied passing-off claims on September 20, 2001. As a
consequence, only the trade dress claims remained.

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Antioch has alleged that Westrim’s Cherished Line albums
infringe on Antioch’s CREATIVE MEMORIES album-
configuration trade dress and page-configuration trade dress.
Westrim moved for summary judgment on several grounds,
one of which was that the album and page configurations
were functional and thus not entitled to trade dress protection.
Adhering to this court’s decision in Marketing Displays, Inc.,
v. TrafFix Devices, Inc., 200 F.3d 929 (6th Cir. 1999), the
district court applied the “competitive-necessity” test to the
trade dress claim. This test evaluates whether use of the
particular album design was dictated by competitive necessity
because the configuration was purely functional. Westrim’s
motion was denied because “the existence of alternative
[album] designs was sufficient to raise a genuine issue of
material fact” concerning the functionality of Antioch’s
album and page configurations. The district court did,
however, invite Westrim to renew its motion for summary
judgment if the Supreme Court, which at the time had under
advisement the TrafFix Devices decision, altered the legal
framework for assessing trade dress protection claims.
In TrafFix Devices, Inc. v. Marketing Displays, Inc., 532
U.S. 23 (2001), the Supreme Court in fact reversed this
court’s prior decision and provided clarification regarding the
appropriate test for evaluating whether a product was
nonfunctional and thereby eligible for trade dress protection.
Based upon the changed landscape after TrafFix Devices,
Westrim renewed its motion for summary judgment in the
district court. The district court subsequently granted
Westrim’s motion in accordance with the Supreme Court’s
TrafFix Devices guidance. Antioch Co. v. Western Trimming
Corp., 196 F. Supp. 2d 635, 643 (S.D. Ohio 2002). From this
decision, Antioch appeals.
6 Antioch Company v.
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No. 02-3380
II. ANALYSIS
A. Standard of review
We review a district court’s grant of summary judgment de
novo. Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623,
629 (6th Cir. 2002). Summary judgment is proper where
there exists no genuine issue of material fact and the moving
party is entitled to judgment as a matter of law. Fed. R. Civ.
P. 56(c). In considering a motion for summary judgment, the
district court must construe the evidence and draw all
reasonable inferences in favor of the nonmoving party.
Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S.
574, 587 (1986). The central issue is “whether the evidence
presents a sufficient disagreement to require submission to a
jury or whether it is so one-sided that one party must prevail
as a matter of law.” Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 251-52 (1986).
B. The legal test for trade dress infringement
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),
protects a product’s trade dress from infringement. To
recover for trade dress infringement, however, the
complaining party must “show that the allegedly infringing
feature is not ‘functional’ . . . and is likely to cause confusion
with the product for which protection is sought.” Wal-Mart
Stores, Inc., v. Samara Bros., Inc., 529 U.S. 205, 210 (2000)
(internal citation omitted); see also Abercrombie & Fitch
Stores, Inc., v. American Eagle Outfitters, Inc., 280 F.3d 619,
641 (6th Cir. 2002) (stating that, under 15 U.S.C. 1125(a)(3),
the plaintiff has the burden of proving nonfunctionality). In
addition, “a product’s design is distinctive, and therefore
protectible, only upon a showing of secondary meaning.”
Wal-Mart Stores, 529 U.S. at 216; see also Gray v. Meijer,
Inc., 295 F.3d 641, 645 (6th Cir. 2002) (explaining that trade
dress protection is warranted where a product’s trade dress
has acquired secondary meaning in the marketplace, its

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appropriated features are nonfunctional, and the infringing
product’s trade dress is confusingly similar to its own).
The district court’s grant of summary judgment was based
exclusively on the functionality factor of the trade dress
infringement analysis. It concluded that, as a matter of law,
Antioch’s trade dress was functional. Antioch, 196 F. Supp.
2d at 643. Antioch contends on appeal that the district court
misinterpreted the Supreme Court’s guidance in TrafFix
Devices regarding the appropriate tests for evaluating product
functionality in the trade dress context. In particular, Antioch
argues that the district court erred in reading TrafFix Devices
to preclude consideration of evidence of alternative designs in
order to gauge a product’s functionality. Antioch also attacks
what it perceives as the district court’s exclusive focus on the
functionality of individual components of the CREATIVE
MEMORIES album, rather than evaluating the trade dress of
the album as a whole. We will first review the guiding
principles from TrafFix Devices and then take each of
Antioch’s contentions in turn.
1. Determining product functionality
In the decision underlying TrafFix Devices, this court
evaluated the functionality of a traffic sign stand by
examining whether a key feature was a “competitive
necessity,” i.e., whether the “[e]xclusive use of [the] feature
. . . put[s] competitors at a significant non-reputation-related
disadvantage.” Marketing Displays, 200 F.3d at 940.
(emphasis in original) (internal quotation marks omitted). To
further implement the competitive-necessity test, this court
queried whether there were alternative designs available to
competitors to produce the equivalent product with the same
functional benefits. The availability of alternative designs, in
other words, would indicate that a company was not at a
competitive disadvantage just because a key feature was
monopolized by the originator of the design.
8 Antioch Company v.
Western Trimming Corp.
No. 02-3380
On certiorari, the Supreme Court reversed the Marketing
Displays decision, explaining that this court erred in believing
that the test for functionality was “whether the particular
product configuration is a competitive necessity.” TrafFix
Devices, 532 U.S. at 32 (quoting Marketing Displays, 200
F.3d at 990). The Supreme Court clarified that the principal
basis for assessing the functionality of a product design is the
“traditional rule” originally set forth in a footnote in Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844,
850 n.10 (1982), that “a product feature is functional . . . if it
is essential to the use or purpose of the article or if it affects
the cost or quality of the article.” 532 U.S. at 32-33. Critical
for the present case, the Supreme Court stated that “[w]here
the design is functional under the Inwood formulation there is
no need to proceed further to consider if there is a competitive
necessity for the feature.” Id. at 33. The Court went on to say
that “[t]here is no need . . . to engage . . . in speculation about
other design possibilities . . . which might serve the same
purpose” where functionality is established. Id. In other
words, “[e]ven if there are alternative designs available in the
marketplace, they cannot turn a feature that is functional
under the traditional . . . definition into a non-functional
feature which is the exclusive trade dress property of one
seller.” 1 J. THOM AS MCCARTHY, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 7:75 (4th ed.
2003).
The Supreme Court did not, however, reject the possibility
that the competitive-necessity test might be applicable in
certain contexts. Specifically, the Court stated that “[i]t is
proper to inquire into a significant non-reputation-related
disadvantage in cases of [a]esthetic functionality.” TrafFix
Devices, 532 U.S. at 33 (internal quotation marks omitted).
This concept of “aesthetic functionality” originated from a
comment in the 1938 version of the Restatement of Torts.
1 MCCARTHY, supra § 7:79. Although the Supreme Court
has never directly addressed aesthetic functionality, Justice
Breyer’s opinion in Qualitex Co. v. Jacobson Products Co.,

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514 U.S. 159, 170 (1995), proposed in dicta that where an
aesthetic feature (like color), serves a significant
function—such as helping an individual distinguish between
a heart pill and a digestive tablet—courts should examine
whether the exclusive use of that feature by one supplier
would interfere with legitimate competition. See also
Abercrombie & Fitch Stores, where this court explained that
the “competitive disadvantage [test] did not displace the
traditional functionality standard from Inwood,” but rather
that it was most “adaptable to the problem of aesthetic
functionality.” 280 F.3d at 641.
A leading treatise, on the other hand, opines that
“[a]esthetic functionality is an oxymoron,” 1 MCCARTHY,
supra § 7:81, and reports that a majority of courts have
rejected the concept. Id. at § 7:80. Because there is no
suggestion that the Antioch scrapbook album is “aesthetically
functional,” we need not address the validity of the concept
any further.
Since the Supreme Court decided TrafFix Devices,
however, at least one circuit and a leading treatise author have
expressed their views that the availability of alternative
designs may be helpful in applying the traditional Inwood test
for functionality. See Valu Engineering, Inc. v. Rexnord
Corp., 278 F.3d 1268, 1276 (Fed. Cir. 2002) (commenting
that the availability of alternative designs can be “a legitimate
source of evidence to determine whether a feature is
functional in the first place”); 1 MCCARTHY, supra, § 7:75
(stating his personal view that evidence of alternative designs
can be useful in evaluating whether the design “is essential to
the use or purpose of the article”).
We need not resolve the question of whether evidence of
alternative designs has a place outside of the competitive-
necessity test because, at the very least, a court is not required
to examine alternative designs when applying the traditional
test for functionality. That much is clear from TrafFix
10 Antioch Company v.
Western Trimming Corp.
No. 02-3380
Devices, where the Supreme Court applied Inwood in a
straightforward fashion, without looking at alternative
designs, and found that the dual-spring design of the traffic
sign stand in question was essential to the stand’s purpose
because it kept the sign upright during inclement weather.
532 U.S. at 33. Although the TrafFix Devices decision does
not fully resolve the uncertainties of trade dress protection,
these uncertainties do not affect the present case. The
traditional Inwood test for functionality is the main rule, and
if a product is clearly functional under Inwood, a court need
not apply the competitive-necessity test and its related inquiry
concerning the availability of alternative designs.
2. The district court properly applied the traditional
rule for assessing the functionality of Antioch’s
product design and correctly rejected evidence of
alternative designs
The district court’s opinion in the present case conveys the
impression that the court understood TrafFix Devices to
categorically reject the competitive-necessity test in all
instances. In deciding what test to apply, the district court
stated:
The Defendant initially argues that, in light of the
Supreme Court’s decision in TrafFix Devices, the Sixth
Circuit’s competitive need test is no longer applicable.
This Court agrees, since the Sixth Circuit adopted that
test in its decision in TrafFix Devices, a decision which
the Supreme Court reversed. Accordingly, this Court
will not apply the rejected, competitive need test when
ruling upon the Defendant’s Renewed Motion for Partial
Summary Judgment. As a consequence, the Court will
not consider whether alternative designs exist, when
ruling upon that motion.
Antioch, 196 F. Supp. 2d at 640 (internal citations omitted).
The district court went on to apply the traditional rule that

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“product configuration trade dress is functional when it is
essential to the use or purpose of the device or when it affects
the cost or quality of the device.” Id. at 641 (quoting TrafFix
Devices, 532 U.S. at 33).
Antioch argues that the district court misinterpreted TrafFix
Devices by allegedly determining that the competitive-
necessity test was “rejected” and “no longer applicable.” We
opt for a more benign interpretation of the district court’s
opinion; namely, that the district court correctly concluded
that the Supreme Court “rejected” the competitive-necessity
test as the main test and reinstated the Inwood formulation as
the primary method for evaluating functionality. The district
court presumably determined that the competitive-necessity
test was “no longer applicable” to the matter before it because
the Antioch v. Westrim trade dress dispute does not concern
aesthetic functionality. As stated above, the competitive-
necessity inquiry is still viable in limited circumstances that
do not exist in the present case. See TrafFix Devices, 532
U.S. at 33.
Although the district court’s opinion leaves room for
conflicting interpretations in its discussion of TrafFix
Devices, the outcome of the present case is unaffected
because the court properly applied the traditional rule from
Inwood. It concluded that “the essential feature of
[Antioch’s] claimed product configuration trade dress is its
dual strap hinge design, which is unquestionably functional.”
Antioch, 196 F. Supp. 2d at 642. The straps both hold the
album together and produce the advertised functional benefits
of allowing the pages to lie flat when the album is open,
permitting their easy turning, and enabling the insertion of
additional pages. Id. Referring to this court’s prior
skepticism about the distinctiveness of the spine cover, the
district court concluded that Antioch had not raised any
evidence that would create a genuine issue of material fact as
to whether a spine cover was anything other than functional.
Id. The district court also determined that the laminated,
12 Antioch Company v.
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No. 02-3380
padded album covers were functional. Id. Finally, the district
court concluded that Antioch’s claimed trade dress regarding
the album’s pages was purely functional because the ribbed
edges had the effect of “reinforcing the pages; keeping the
pages separated, and thus, permitting air to circulate between
them; and holding the staples in place on a particular page.”
Id.
The dual strap-hinge design, spine cover, padded album
cover, and reinforced pages are all components that are
essential to the use of Antioch’s album and affect its quality.
We thus agree with the district court’s conclusion that there
was no genuine issue of material fact regarding the
functionality of Antioch’s album under the traditional Inwood
test. In accordance with TrafFix Devices, the district court
therefore committed no error in rejecting the proffered
evidence concerning the availability of alternative album
designs.
3. The district court correctly concluded that
Antioch’s claimed trade dress was functional as a
whole
Antioch’s remaining contention is that the district court
misapplied trade dress protection law because it focused on
the functionality of individual elements of the album’s trade
dress rather than the trade dress as a whole. The district court
reasoned that Antioch’s album and page designs did “not
constitute protectable trade dress since the components of that
trade dress are functional.” Antioch, 196 F. Supp. 2d at 643.
In its opinion, the district court was perhaps too categorical in
summarily rejecting Antioch’s argument that the court had to
consider whether the overall configuration of the album was
functional, rather than focusing exclusively on its component
parts. Id. at 642 (“This Court cannot agree.”). Antioch, in
fact, is technically correct that an overall design combination
may be deserving of trade dress protection even if the

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individual elements are functional, but errs in its contention
that this principle is applicable to the present case.
In Abercrombie & Fitch Stores, this court acknowledged
that the Abercrombie clothing catalog could be considered
nonfunctional even though its individual elements were
functional: “Even if the elements [of the Abercrombie
catalog] were all separately functional, . . . A&F’s
arrangement of these features can constitute more than the
sum of its non-protectable parts.” 280 F.3d at 644. Other
circuits are in agreement. See Publications Int’l, Ltd., v.
Landoll, Inc., 164 F.3d 337, 342 (7th Cir. 1998) (“Although
none of the functional features of PIL’s cookbooks can be
appropriated to serve as a trade dress, it doesn’t follow that
the ensemble cannot be.”); Hartford House, Ltd., v. Hallmark
Cards, Inc., 846 F.2d 1268, 1272 (10th Cir. 1988) (“A
combination of features may be nonfunctional and thus
protectable, even though the combination includes functional
features.”); Fuddruckers, Inc., v. Doc’s B.R. Others, Inc., 826
F.2d 837, 842 (9th Cir. 1987) (“We examine trade dress as a
whole to determine its functionality; functional elements that
are separately unprotectable can be protected together as a
part of a trade dress.”) (internal citation omitted).
What Antioch glosses over, however, is that in order to
receive trade dress protection for the overall combination of
functional features, those features must be configured in an
arbitrary, fanciful, or distinctive way. See TrafFix Devices,
532 U.S. at 34, where the Supreme Court rejected the trade
dress protection claim because the sign manufacturer “has
pointed to nothing arbitrary about the components of its
device or the way they are assembled.” In other words, where
individual functional components are combined in a
nonarbitrary manner to perform an overall function, the
producer cannot claim that the overall trade dress is
nonfunctional.
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No. 02-3380
The district court relied on the following articulation of this
principle in Leatherman Tool Group, Inc. v. Cooper
Industries, Inc., 199 F.3d 1009, 1013 (9th Cir. 1999):
[W]here the whole is nothing other than the assemblage
of functional parts, and where even the arrangement and
combination of the parts is designed to result in superior
performance, it is semantic trickery to say that there is
still some sort of separate “overall appearance” which is
non-functional.
In Leatherman, the plaintiff sought trade dress protection for
a multi-purpose pocket knife. The court found that all of the
elements (tool size, shape of handle, shape of tool blades,
etc.) were chosen as part of the engineering design for the
final product, so that even the overall appearance of the tool
was functional. See also Tie Tech, Inc., v. Kinedyne Corp.,
296 F.3d 778, 786 (9th Cir. 2002) (refusing to grant trade
dress protection to the overall appearance of a device
designed to cut through wheelchair-securement webbing that
was comprised of separate interlocking functional parts);
Eppendorf-Netherler-Hinz GMBH v. Ritter GMBH, 289 F.3d
351, 358 (5th Cir. 2002) (holding that trade dress protection
was unwarranted where the eight design elements of a
disposable pipette tip were functional and essential to the
overall operation of the product).
As in Leatherman, Tie Tech, and Eppendorf, where
engineering necessity influenced the configuration of the
functional components, the main functional benefit of
Antioch’s album is the result of an engineering feature—the
dual strap-hinge. Although the district court did not reach the
question of whether Antioch’s array of expired utility patents
covered the features of the album’s trade dress, the court did
point out that Antioch’s advertising “touted its patented strap
hinge design as allowing pages to lie flat, as well as
permitting pages to be turned and added easily.” Antioch, 196
F. Supp. 2d at 642. The other features of Antioch’s album

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work in sync with the dual strap-hinge to provide the user
with the advertised benefits. “[B]uyers are assured the
product serves its purpose” when they “see[] the operative
mechanism.” TrafFix Devices, 532 U.S. at 34. TrafFix
Devices teaches that where an engineering design feature is
the core component of the overall trade dress, a court may
focus on the functionality of that key feature.
In TrafFix Devices, the traffic device for which the designer
sought protection was comprised of a dual-spring mechanism,
four legs, a base, an upright, and a sign. Id. The Supreme
Court focused exclusively on the dual-spring design as the
essential feature of the configuration and dismissed the other
elements of the claimed trade dress as superfluous. Because
the dual-spring design was “the reason the device works,” the
Court held that the overall product was functional. Id. The
district court in the present case made an apt analogy:
In TrafFix Devices, the Supreme Court held that the
dual-spring design was the central component of the
claimed trade dress. Herein, this Court notes that the
essential feature of the Plaintiff’s claimed product
configuration trade dress is its dual strap hinge design,
which is unquestionably functional.
Antioch, 196 F. Supp. 2d at 642. In sum, where one key
functional feature is the reason that the product works,
whether it is a dual-spring or a dual strap-hinge, then the
entire product configuration may be considered functional and
not deserving of trade dress protection.
In addition, where the claimed trade dress is actually a type
of product, one supplier may not monopolize the
configuration to the exclusion of others. Antioch argues in its
brief that Westrim could produce other types of albums, like
a post-bound album, which provides many of the same
functional benefits as the dual strap-hinge album. That
possibility is irrelevant. The Supreme Court in TrafFix
16 Antioch Company v.
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No. 02-3380
Devices made clear that if a particular design is functional,
other producers do not have “to adopt a different design
simply to avoid copying it.” 532 U.S. at 35. Likewise, this
court in Abercrombie & Fitch Stores pointed out that for
“generic product configurations . . . no designer should have
a monopoly on designs regarded by the public as the basic
form of a particular item.” 280 F.3d at 638.
The Seventh Circuit case of Publications Int’l Ltd. v.
Landoll, Inc., 164 F.3d 337 (7th Cir. 1998), illustrates the
principle that trade dress protection is unavailable for overall
functional designs that represent a type of product.
Publications International Ltd. (PIL) sought protection for its
cookbook’s trade dress that contained the following
functional features: large pages (easier to lay flat on the
counter), large print font (easier to read while cooking), an oil
cloth cover (easier to clean), large pictures of dishes (to entice
the reader to try the recipe), and gilded page edges (to
eliminate the picture prints “bleeding” over the edge). Id. at
341-42. The Seventh Circuit observed that trade dress
protection was not appropriate because “it was the only way
the product could look, consistent with its performing each of
the product’s functions optimally.” Id. at 342 (emphasis in
original). It denied trade dress protection to PIL because
[e]very producer of a cookbook has to worry about the
cover getting spattered, the cook having difficulty laying
the book flat and reading small print from a distance, the
photos of the food dishes being too small to entice and
inspire, the book as a whole looking cheap, and the pages
. . . presenting a ragged appearance because the color
pictures that fill them bleed to the end of the page.
Because of these concerns that are common to all
publishers of fancy cookbooks, it is not surprising that
more than one publisher would find it optimal, wholly
apart from any desire to confuse consumers about the
publisher’s identity, to use the very combination of
features that PIL claims compose its trade dress . . . .

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Id. at 342-43. The court went on to point out that PIL was
free to adopt a distinctive logo, design, and typeface on its
cookbooks to distinguish them from those of its competitors,
but that it could not monopolize this type of cookbook. Id. at
343.
This case presents an analogous situation. Antioch’s
original album design brought together several features—the
dual strap-hinge, the concealed binding, the padded album
covers, and the reinforced pages—that allowed the overall
album to function optimally. This type of scrapbook album
meets the functional demands of scrapbook enthusiasts who
want the ability to easily add pages to their albums, who like
having the pages turn freely and lie flat when opened, and
who prefer the aesthetic appearance of the covered spine.
Westrim’s use of its own distinctive logo, scrollwork,
stickers, and face sheet provide sufficient signals to scrapbook
buyers that its albums are not made by Antioch, and Antioch
has not contended otherwise. See Abercrombie & Fitch
Stores, 280 F.3d at 647-48 (holding that even if the overall
Abercrombie catalog trade dress was nonfunctional, no
rational trier of fact would confuse it with the American Eagle
catalog because of their different styles and the placement of
each company’s trademarks “on practically every page”).
Just as PIL cannot monopolize a particular type of cookbook,
Antioch cannot monopolize a particular type of scrapbook
album. We therefore find no reversible error in the district
court’s analysis of Antioch’s overall trade dress claim.
Affirming the district court’s decision is also consistent
with the general public policy behind trade dress protection as
elaborated by the Supreme Court and adopted in this circuit.
Antioch repeatedly attacks Westrim for slavishly copying the
CREATIVE MEMORIES album. What Antioch fails to
appreciate is that “copying is not always discouraged or
disfavored” and can have “salutory effects.” TrafFix Devices,
532 U.S. at 29. “[C]opying preserves competition, which
18 Antioch Company v.
Western Trimming Corp.
No. 02-3380
keeps downward pressure on prices and encourages
innovation.” Abercrombie & Fitch Stores, 280 F.3d at 640.
As the Supreme Court has advised, “[t]rade dress protection
must subsist with the recognition that in many instances there
is no prohibition against copying goods and products.”
TrafFix Devices, 532 U.S. at 29. Unless an intellectual
property right protects a product, “competitors are free to
copy at will.” Abercrombie & Fitch Stores, 280 F.3d at 640.
Trade dress protection, in sum, is not available for
functional products. Otherwise, “trademark law, which seeks
to promote competition by protecting a firm’s reputation,”
would “instead inhibit[] legitimate competition by allowing
a producer to control a useful product feature.” Qualitex, 514
U.S. at 164. The district court, therefore, did not err in
denying Antioch trade dress protection for the CREATIVE
MEMORIES album. Had the court done otherwise, Antioch
would have enjoyed a monopoly in perpetuity for this type of
scrapbook album, an outcome in conflict with our “laws that
preserve a competitive economy.” TrafFix Devices, 532 U.S.
at 29.
III. CONCLUSION
For all of the reasons set forth above, we AFFIRM the
decision of the district court.

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