Atlas Equipment Co LLC v. Weir Minerals Australia Ltd

FILED
NOT FOR PUBLICATION JAN 06 2011
MOLLY C. DWYER, CLERK
UNITED STATES COURT OF APPEALS U .S. C O U R T OF APPE ALS
FOR THE NINTH CIRCUIT
ATLAS EQUIPMENT CO LLC, a No. 09-36151
Washington limited liability company,
D.C. No. 2:07-cv-01358-TSZ
Plaintiff - Appellee,
and MEMORANDUM *
ATLAS EQUIPMENT
MANUFACTURING LTD., aka Hebei
Atlas Equipment Manufacturing, Ltd.; et
al.,
Third-party-defendants -
Appellees,
v.
WEIR MINERALS AUSTRALIA LTD,
an Australian public company; et al.,
Defendants-third-party-
plaintiffs-cross-claimants - Appellants.
ATLAS EQUIPMENT CO LLC, a No. 10-35051
Washington limited liability company,
D.C. No. 2:07-cv-01358-TSZ
Plaintiff - Appellant,
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Cir. R. 36-3.
and
ATLAS EQUIPMENT
MANUFACTURING LTD., aka Hebei
Atlas Equipment Manufacturing, Ltd.; et
al.,
Third-party-defendants -
Appellants,
v.
WEIR SLURRY GROUP INC, a
Wisconsin corporation; et al.,
Defendants-third-party-
plaintiffs-cross-claimants - Appellees.
Appeal from the United States District Court
for the Western District of Washington
Thomas S. Zilly, Senior District Judge, Presiding
Argued and Submitted December 6, 2010
Seattle, Washington
Before: BEEZER, O’SCANNLAIN, and PAEZ, Circuit Judges.
In No. 09-36151, Weir appeals the district court’s order granting summary
judgment to Atlas Equipment on Weir’s trade dress claim. Weir contends that the
court applied an erroneous legal standard in analyzing functionality and that there
exists a triable issue of material fact. In No. 10-35051, Atlas appeals the district
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court’s order denying in part its motion for attorneys’ fees. We have jurisdiction
under 28 U.S.C. § 1291, and we affirm in both matters.
We typically consider four factors in determining whether a product feature
is functional: “(1) whether the design yields a utilitarian advantage, (2) whether
alternative designs are available, (3) whether advertising touts the utilitarian
advantages of the design, (4) and whether the particular design results from a
comparatively simple or inexpensive method of manufacture.” Disc Golf Ass’n,
Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998). “A product
feature need only have some utilitarian advantage to be considered functional.” Id.
at 1007. Moreover, once a court determines that a particular trade dress is
functional, it need not continue to address whether there are alternative designs.
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33-34 (2001).
Atlas presented undisputed evidence that each of the elements of Weir’s
purported trade dress has a utilitarian advantage. Weir presented no evidence
concerning advertising or cost of production that raised a material triable issue of
fact about the functionality of the individual features that comprise its purported
trade dress. Accordingly, the district court properly concluded that Weir’s
purported trade dress was functional as a matter of law based on the undisputed
facts on the record, and there was no need for the court to consider further evidence
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of alternative designs. Id. In addition, because the overall configuration of the
slurry pump is “nothing other than the assemblage of functional parts,” there is no
separate trade dress protection for the appearance of the pump as a whole.
Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1013 (9th Cir.
1999).
Although Weir’s claims were ultimately unsuccessful, we agree with the
district court that this was not an “exceptional” case under the Lanham Act, 15
U.S.C. § 1117(a), because Weir did not act unreasonably or in bad faith. See
Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966, 973 (9th Cir. 2007) (denying
attorneys’ fees to a prevailing plaintiff). The district court therefore did not abuse
its discretion in denying attorneys’ fees to Atlas. We do not address Atlas’s
request for attorneys’ fees for this appeal, as any such request must be made by
separate motion. Ninth Cir. R. 39-1.6.
In No. 09-36151, AFFIRMED. In No. 10-35051, AFFIRMED.
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