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

Filing 1423

BRIEF regarding Apple's Renewed Objection to 1327 Preliminary Jury Instruction No. 21 by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd.(a Korean corporation), Samsung Telecommunications America, LLC(a Delaware limited liability company). (Maroulis, Victoria) (Filed on 7/27/2012) Modified text on 7/30/2012 (dhm, COURT STAFF).

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
 [e-mail]
50 California Street, 22nd Floor
 San Francisco, California 94111
Telephone: [phone]
 Facsimile: [phone]
 Kevin P.B. Johnson (Cal. Bar No. 177129)
[e-mail]
 Victoria F. Maroulis (Cal. Bar No. 202603)
[e-mail]
th
 555 Twin Dolphin Drive 5 Floor
Redwood Shores, California 94065
 Telephone: [phone]
Facsimile: [phone]

Michael T. Zeller (Cal. Bar No. 196417)
 [e-mail]
865 S. Figueroa St., 10th Floor
 Los Angeles, California 90017
Telephone: [phone]
 Facsimile: [phone]
 Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
 AMERICA, INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC



UNITED STATES DISTRICT COURT



NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

 APPLE INC., a California corporation,



CASE NO. 11-cv-01846-LHK

Plaintiff,
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,

Defendants.


SAMSUNG’S BRIEF REGARDING
APPLE'S RENEWED OBJECTION TO
PRELIMINARY INSTRUCTION NO. 21






02198.51855/4875698.3

Case No. 11-cv-01846-LHK
SAMSUNG‘S BRIEF REGARDING APPLE'S RENEWED OBJECTION TO [TENTATIVE] PRELIMINARY
INSTRUCTION NO. 21 AND PROPOSED PRELIMINARY INSTRUCTION NO. 21

1

Less than three days ago, the Court properly rejected Apple‘s objections to Instruction No.

2 21 (―Summary of Trade Dress Contentions‖) in the Court‘s July 23, 2012 Tentative Preliminary
3 Jury Instructions.

Apple now rehashes its objections, essentially repeating the same complaints

4 that the Court previously overruled.

The language Apple objects to comes directly from the

5 Ninth Circuit Model Jury Instruction 15.2 and is supported by case law, including Supreme Court
6 precedent, regarding product configuration trade dress.

Apple's objections are substantively

7 meritless and seek to interject error into these proceedings.
Apple objects to the instruction that ―trade dress concerns the overall visual impression

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9 created in the consumer‘s mind when viewing the non-functional aspects of the product and not
10 from the utilitarian or useful aspect of the product.‖
11 Circuit Model Instruction 15.2.

This language comes verbatim from Ninth

Indeed, this language is specifically directed to product

12 configuration cases such as this one.

As explained in the comments to Model Jury Instruction

13 15.2, ―[i]n such cases, because the source identifying aspect is part of the physical product itself,
14 functionality is an important issue.‖ Thus, as required by the Supreme Court's rulings on the
15 scope of trade dress protection in product configuration cases, this instruction correctly advises the
16 jury that product configurations have utilitarian, useful or functional aspects of the product and
17 that in evaluating the claimed trade dress it must focus on any source identifying aspects of the
18 product configuration.

See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 213

19 (2000) (―In the case of product design, as in the case of color, we think consumer predisposition to
20 equate the feature with the source does not exist.

Consumers are aware of the reality that, almost

21 invariably, even the most unusual of product designs—such as a cocktail shaker shaped like a
22 penguin—is intended not to identify the source, but to render the product itself more useful or
23 more appealing.‖); TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2003)
24 ("And in Wal-Mart, supra, we were careful to caution against misuse or overextension of trade
25 dress.

We noted that 'product design almost invariably serves purposes other than source

26 identification.'"); see also Ashley Furn. Indus., Inc. v. Sangiacomo N.A. Ltd, 187 F.3d 363, 37027 373 (4th Cir. 1999) (―the trade dress in such [product configuration] cases is not the product itself,
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02198.51855/4875698.3

Case No. 11-cv-01846-LHK
-1SAMSUNG‘S BRIEF REGARDING APPLE'S RENEWED OBJECTION TO [TENTATIVE] PRELIMINARY
INSTRUCTION NO. 21 AND PROPOSED PRELIMINARY INSTRUCTION NO. 21

1 but rather nonfunctional aspects of the product that, taken together, make up its total image.‖)
2 (citing Stuart Hall Co. v. Ampad Corp., 51 F.3d 780, 788 (8th Cir.1995)).1
3

Apple is also incorrect in claiming that the language from the Model Instruction is

4 inconsistent with Clicks Billiards, Inc. v. Sixshooters Inc., 251 F.3d 1252 (9th Cir. 2001), and Taco
5 Cabana, Int'l Inc. v. Two Pesos, Inc., 932 F.2d 1113 (5th Cir. 1991).

The language Apple cites

6 from those cases goes to the issue of whether trade dress can be protected if, taken as a whole, the
7 collection of trade dress elements is not functional even where some elements are functional.
8 That issue is separately addressed in paragraph 3 of the Model Instruction, which is adopted in
9 paragraph 3 of the Court's Preliminary Instruction No. 21.

Furthermore, Apple's reliance on

10 these cases – which address trade dress protection for combination restaurant décor – is contrary
11 to the Supreme Court's admonition in Wal-Mart that restaurant décor is inapposite to product
12 configuration cases.

―Two Pesos is inapposite to our holding here because the trade dress at issue,

13 the décor of a restaurant, seems to us not to constitute product design. It was either product
14 packaging—which, as we have discussed, normally is taken by the consumer to indicate origin—
15 or else some tertium quid that is akin to product packaging and has no bearing on the present
16 case.‖

Wal-Mart Stores, Inc., 529 U.S. 205 at 215; see also Yurman Design, Inc. v. PAJ, Inc.,

17 262 F.3d 101, 115 (2d Cir. 2001) (noting that because product design is usually driven by either
18 utility or visual appeal, ―trade dress protection for product design therefore entails a greater risk of
19 impinging on ideas as compared with protection of packaging or labeling.‖).
Apple‘s other objection to the preliminary instruction —―trade dress is the form in which a

20

21 person presents a product or service to the market, its manner of display‖— is also unavailing.
22 This language, too, comes directly from the Ninth Circuit Model Instruction.
23 argues that there is no authority supporting this instruction.

Apple wrongly

Of course, the fact that it is a Ninth

24
25

1

Apple wrongly suggests that Wal-Mart merely stands for the proposition that "a product
configuration is entitled to trade dress protection only if it has acquired secondary meaning."
26
(Renewed Objection at 2.) Apple ignores the Court's rationale for finding that product
27 configuration trade dress as a matter of law is "not inherently distinctive," which goes to the heart
of the language of the Model Instruction that Apple attacks.
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02198.51855/4875698.3

Case No. 11-cv-01846-LHK
-2SAMSUNG‘S BRIEF REGARDING APPLE'S RENEWED OBJECTION TO [TENTATIVE] PRELIMINARY
INSTRUCTION NO. 21 AND PROPOSED PRELIMINARY INSTRUCTION NO. 21

1 Circuit Model Instruction is itself authority, and Apple's mere disagreement with it scarcely
2 sufficient to warrant disregarding it.

In any event, as shown above, binding precedent has

3 repeatedly held that the primary significance of trade dress in product configuration cases is the
4 source identifying aspect of the product rather than the product itself.
5 205 at 211.

See Wal-Mart, 529 U.S.,

As such, how the trade dress of the product at issue is presented in the market and its

6 manner of display is directly relevant.

Indeed, it is the very heart of trade dress and a specific

7 factor in the likelihood of confusion analysis.

See Art Attacks Ink, LLC v. MGA Entertainment

8 Inc., 581 F.3d 1138, 1145 (9th Cir. 2009) ("Trade dress protection applies to 'a combination of any
9 elements in which a product is presented to a buyer.'") (citation omitted); Charles of the Ritz
10 Group Ltd. v. Quality King Distributors, Inc. 832 F.2d 1317, 1319 (2d Cir. 1987) (stating that
11 manner of display of trade dress of the products provided the context for the court‘s analysis on
12 consumer confusion); Restatement (Third) of Unfair Competition § 16, comment a (1995) (―The
13 term ‗trade dress‘ is often used to describe the overall appearance or image of goods or services as
14 offered for sale in the marketplace.‖); Foamation, Inc. v. Wedeward Enter., Inc., 970 F.Supp. 676,
15 685 (E.D. Wis. 1997) (―Trade dress refers to the form in which a producer presents his brand to
16 the market; it may include a label, a package, or even the product itself if its characteristics serve
17 not a functional purpose, but to signify its source.‖) (citing Thomas & Betts Corp. v. Panduit
18 Corp., 65 F.3d 654, 658 (7th Cir. 1995)); Buca, Inc. v. Gambucci's, Inc. 18 F.Supp. 2d 1193, 1208
19 (D. Kan. 1998) (manner of display is factor to be considered in evaluating the likelihood of
20 confusion in trade dress cases).
21

Apple's repeated objection to Preliminary Instruction No. 21 should be overruled again.

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02198.51855/4875698.3

Case No. 11-cv-01846-LHK
-3SAMSUNG‘S BRIEF REGARDING APPLE'S RENEWED OBJECTION TO [TENTATIVE] PRELIMINARY
INSTRUCTION NO. 21 AND PROPOSED PRELIMINARY INSTRUCTION NO. 21

1 DATED: July 27, 2012
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QUINN EMANUEL URQUHART &
SULLIVAN, LLP
By /s/ Victoria F. Maroulis
Charles K. Verhoeven
Victoria F. Maroulis
Kevin P.B. Johnson
Michael T. Zeller
Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
AMERICA, INC., and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

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02198.51855/4875698.3

Case No. 11-cv-01846-LHK
-4SAMSUNG‘S BRIEF REGARDING APPLE'S RENEWED OBJECTION TO [TENTATIVE] PRELIMINARY
INSTRUCTION NO. 21 AND PROPOSED PRELIMINARY INSTRUCTION NO. 21