Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 1206

Administrative Motion to File Under Seal filed by Apple Inc.. (Attachments: #1 [Public] Apple's Opposition to Samsung's Motions in Limine, #2 Declaration of Joseph Kanada, #3 Exhibit 8, #4 Exhibit 11, #5 Exhibit 13, #6 Exhibit 14, #7 Exhibit 15, #8 Errata 16, #9 Exhibit 17, #10 Exhibit 18, #11 Exhibit 19, #12 Exhibit 20, #13 Exhibit 21, #14 Exhibit 22, #15 Exhibit 23, #16 Exhibit 24, #17 Exhibit 25, #18 Exhibit 26, #19 Exhibit 27, #20 Exhibit 28, #21 Exhibit 29, #22 Exhibit 30, #23 Exhibit 31, #24 Exhibit 32, #25 Exhibit 33, #26 Exhibit 34, #27 Exhibit 35, #28 Exhibit 36, #29 Exhibit 37, #30 Exhibit 38, #31 Exhibit 39, #32 Exhibit 40)(Jacobs, Michael) (Filed on 7/10/2012)

Exhibit 8

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

CASE NO. 11-cv-01846-LHK (PSG)

APPLE INC., a California corporation,

FINAL JURY INSTRUCTIONS

Plaintiff and CounterDefendant,
vs.
SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation; SAMSUNG
TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,
Defendant and
Counterclaimant.

DATED: _______, 2012

Hon. Lucy H. Koh
UNITED STATES DISTRICT JUDGE

1

INSTRUCTION NO. 84—TRADE DRESS—NO LIABILITY FOR COPYING
Trade dress law prohibits the copying of protectable trade dress only in order to prevent the
likelihood of consumer confusion. It does not otherwise prohibit competitors from copying each
other’s products. Nor does it protect a company’s innovation and creativity. Rather, trade dress
law prohibits the copying of source-identifying trade dress only in order to prevent consumer
deception.
Source:
Dastar Corp v. Twentieth Century Fox Film Corp., 539 U.S. 23, 36 (2003) (“reading §43(a) of
the Lanham Act as creating a cause of action for, in effect plagiarism – the use of otherwise
unprotected works and inventions without attribution – would be hard .”); Wal-Mart Stores v.
Samara Brothers, Inc., 529 U.S. 205 (2000) (no cause of action for trade dress violation because
asserted trade dress was not source identifying even though Wal-Mart produced ‘knockoffs’ of
children’s clothes designed and manufactured by Samara Broths, containing only ‘minor
modifications’ of the original designs.); TrafFix Devices, Inc. v. Marketing Displays, Inc., 532
U.S. 23, 29 (2001) (The Supreme Court has been ‘careful to caution against misuse or
overextension” of trademark related protections into areas traditionally occupied by patent and
copyright.”); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n. 11
(1982) (designs cannot be protected under the Lanham Act unless they “identify the source of the
product rather than the product itself”); Bonito Boats v. Thunder Craft Boats, Inc., 489 U.S. 141,
157 (1989) (“The defendant . . . may copy plaintiff's goods slavishly down to the minutest detail;
but he may not represent himself as the plaintiff in their sale.”) (internal quotation marks
omitted); Newton v. Thomason, 22 F.3d 1455, 1463 (9th Cir. 1994) (“must show that, in
selecting [accused] name, Appellees intended to profit by confusing consumer”) (internal
quotation marks omitted); Bretford Manufacturing, Inc. v. Smith System Manufacturing Corp.,
419 F.3d 576, 581 (7th Cir. 2005) (“Businesses often think competition unfair, but federal law
encourages wholesale copying, the better to drive down prices.”).

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INSTRUCTION NO. 93—SECONDARY MEANING—COPYING
To support a finding of secondary meaning, deliberate copying must be an intentional attempt to
capitalize on a company’s reputation or good will. Mere attempts to copy a product are not
necessarily probative since the copier may very well be exploiting a particularly desirable
feature, rather than seeking to confuse consumers as to the source of the product. Thus the
relevant intent is not just the intent to copy but, rather, the intent to “pass off” ones goods as
those of another.
Source:
Bonito Boats v. Thunder Craft Boats, Inc., 489 U.S. 141, 157 (1989) (“The defendant . . . may
copy plaintiff's goods slavishly down to the minutest detail; but may not represent himself as the
plaintiff in their sale.”) (internal quotation marks omitted); Fuddruckers, Inc. v. Doc's B.R.
Others, Inc., 826 F.2d 837, 845-46 (9th Cir. 1987) (“Competitors may intentionally copy product
features for a variety of reasons. They may, for example, choose to copy wholly functional
features that they perceive as lacking any secondary meaning because of those features’ intrinsic
economic benefits.”); M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073, 1085 (9th Cir.
2005) (found no intent because the defendant did not have “any intention of capitalizing on
[plaintiff’s] trademark.”).

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