*

Honorable Robert L. Vining, Jr., Senior U.S. District Judge

for the Northern District of Georgia, sitting by designation. 

 1The amended complaint alleged five counts: trade dress

infringement (Count I); copyright infringement of promotional

brochure 1 (Count II); copyright infringement of promotional

brochure 2 (Count III); reverse passing off in violation of §

43(a) of the Lanham Act (Count IV); and unfair competition under

state law (Count V). The magistrate judge awarded damages and

permanent injunctive relief on Counts I, II, and III. Condec

does not appeal the magistrate judge's dismissal of Counts IV and

V. 

 2The parties consented to proceed before the magistrate

judge. 28 U.S.C. § 636(c), Fed.R.Civ.P. 73. 

United States Court of Appeals,

Eleventh Circuit.

No. 95-2848.

EPIC METALS CORP., a Pennsylvania Corporation, Plaintiff-CounterDefendant-Appellee,

v.

Frank SOULIERE, Sr.; Condec, Inc., a Florida corporation,

Defendants-Counter-Claimants-Appellants.

Nov. 6, 1996.

Appeal from the United States District Court for the Middle

District of Florida. (No. 92-744-civ-T-17C), Elizabeth Jenkins,

Judge.

Before COX, Circuit Judge, HILL, Senior Circuit Judge, and VINING*

,

Senior District Judge.

HILL, Senior Circuit Judge:

Epic Metals Corporation (Epic) brought this action against

Condec, Inc. (Condec) and its president, Frank Souliere, alleging

trade dress infringement of EPICORE, Epic's composite steel floor

deck profile, in violation of § 43(a) of the Lanham Act, 15 U.S.C.

§ 1125(a).1 Following a bench trial, the magistrate judge 2

concluded that Condec had infringed upon Epic's trade dress.
 3

A second issue raised by Condec on appeal, that the

magistrate judge abused her discretion in denying its

newly-appointed counsel a second continuance of trial, is without

merit. Her award of damages and injunctive relief as to Counts

II and III is affirmed without opinion. See 11th Cir.R. 36-1. 

 4In contrast, in forming Type B deck ribs, the sheet steel

bending is not reversed and is bent approximately sixty degrees. 

Asserting that this conclusion is not supported by the evidence

presented at trial, Condec appeals. We agree and reverse Condec's

liability on this claim. In all other respects, we affirm.3

I. BACKGROUND

Steel decking, together with wire mesh, poured concrete, and

frequently rebar, form a composite steel deck system. The steel

deck component provides a form for the poured concrete. As the

concrete hardens, the steel deck lends positive reinforcement and

structural support. Up until the late 1960's, a generic form of

steel deck, called Type B steel deck, was commonly used by the

construction industry.

In 1968 Epic developed EPICORE as an alternative to Type B

deck. Although Epic owns a federally registered trademark for the

name EPICORE, EPICORE is not patented. Its profile, as viewed from

the end of the sheet steel after it has been formed, by bending,

into EPICORE, is twenty-four and one-half inches wide, two inches

deep, with dovetail-bent troughs spaced six and one-eighth inches

on center. EPICORE's roll-formed sheets are characterized by these

dovetail ribs, whose formation requires that the steel sheeting be

bent over ninety degrees:4

CA(96)5736-1,SIZE-15 PICAS,TYPE-PDI

The tooling required to form the steel into this profile is more
 5

Epic has approximately a two percent share of the United

States composite steel deck market. It sells EPICORE directly

and through a network of independent distributors and

concentrates on those responsible for specifying construction

materials and systems, i.e., engineers and architects. 

 61972-75 and 1980-87. 

complex than that required to form Type B decking. In addition the

dovetail ribs take more sheet steel to form. As a result EPICORE

uses thirty percent more raw steel sheeting than Type B decking.

Thus, as to both labor and material, EPICORE is more expensive to

produce.5

Dovetail is defined as "resembling a dove's tail ... the

flaring tendon and a mortise into which it fits tightly making an

interlocking joint between two pieces." Webster's Seventh New

Collegiate Dictionary, G. & C. Merriam Company (Springfield, MA

1965). When concrete is poured onto EPICORE, its dovetail ribs,

together with the concrete, create the flaring tendon and a

mortise. After the concrete hardens, the EPICORE composite floor

system becomes an interlocking joint. It is illustrated as:

CA(96)5736-2,SIZE-14 PICAS,TYPE-PDI

A three-dimensional cross-section of EPICORE is depicted as:

CA(96)5736-3,SIZE-12 PICAS,TYPE-PDI

For a ten-year period, Condec's president, Souliere, was an

Epic distributor.6

 In late 1988, Souliere and Condec developed its

own steel deck product with a dovetail profile. They named it

CONDEC. Souliere and Condec do not deny that CONDEC's profile

mimics EPICORE's profile. Both have the same dimensions. Both

have dovetail ribs bent over ninety degrees. Epic claims that, at

first glance, and from a distance, CONDEC appears identical to
 7

Ironically, in the late 1960's, two other companies were

already manufacturing steel decking configured in a dovetail

profile, Finestra and H.H. Robertson. By the early 1970's, both

companies ceased production. A third company, Elixir, sold

dovetail steel decking for five years in the late 1980's. Since

this action began, a fourth company, Consolidated Systems

Incorporated (CSI), has begun production, and, perhaps, is

monitoring this appeal very closely. 

 8The magistrate judge calculated this figure on the basis of

Epic's lost profits from 1988 through the date of trial in

November 1994. 

EPICORE. Upon closer inspection, however, Epic contends that

CONDEC is inconsistent in shape, angle, and size to EPICORE, and,

to an expert's eye, contains many noticeable imperfections. Thus,

Epic claims that CONDEC's structural performance is significantly

inferior to EPICORE, by as much as twenty-five percent.

In this litigation, Epic claims that its purpose was to

produce a steel deck product that was unique in the industry, in

hopes that EPICORE's distinctive dovetail profile, albeit more

expensive to produce, would be easy to identify and synonymous with

the Epic company name.7

 Epic contends that, because of the close

similarities in the dovetail profiles, a purchaser and user can

easily mistake one product for the other, causing confusion in the

marketplace. Epic filed suit, claiming trade dress infringement.

Based upon a finding of fact that EPICORE's dovetail configuration

was primarily non-functional, an element essential to a finding of

infringement liability, the magistrate judge awarded Epic damages

of $412,1318 plus costs and permanent injunctive relief. This

appeal follows.

II. ISSUE ON APPEAL

In concluding that Epic prevailed on its claim of trade dress
 9

Section 43(a) provides:

(a) Any person who shall affix, apply, or annex, or use

in connection with any goods or services, or any

container or containers for goods, a false designation

of origin, or any false description or representation,

including words or other symbols tending falsely to

describe or represent the same, and shall cause such

goods or services to enter into commerce, and any

person who shall acknowledge of the falsity of such

designation of origin or description or representation

cause or procure the same to be transported or used in

commerce or deliver the same to any carrier to be

transported or used, shall be liable to a civil action

by any person doing business in the locality falsely

indicated as that of the origin or in the region in

which said locality is situated, or by any person who

believes that he is or is likely to be damaged by the

use of any such false description or representation. 

15 U.S.C. § 1125(a) (1988). 

infringement under § 43(a) of the Lanham Act, did the magistrate

judge clearly err in finding that the dovetail configuration of

EPICORE's steel decking profile was primarily non-functional?

III. STANDARD OF REVIEW

 The validity of Epic's claim of protectable trade dress under

the Lanham Act is a mixed question of law and fact. To determine

whether trade dress has been infringed is a question of law subject

to de novo review. United States v. Miller, 71 F.3d 813, 816 (11th

Cir.1996). The issue of functionality is a question of fact. John

H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 982 (11th

Cir.1983). The magistrate judge's conclusion that the EPICORE

dovetail profile trade dress is primarily non-functional is subject

to a clearly erroneous standard of review. United States v. Gecas,

50 F.3d 1549, 1556 (11th Cir.1995).

IV. DISCUSSION

 Section 43(a) of the Lanham Act9 creates a federal cause of
action for trade dress infringement. AmBrit, Inc. v. Kraft, Inc.,

812 F.2d 1531 (11th Cir.1986). Trade dress is defined as "the

total image of a product ... [that] may include features such as

size, shape, color or color combinations, textures, graphics, or

even particular sales techniques." John H. Harland Co., 711 F.2d

at 980, citing Original Appalachian Artworks, Inc. v. Toy Loft,

Inc., 684 F.2d 821, 831 (11th Cir.1982). While the classic trade

dress infringement action involved the packaging or labeling of

goods, the design of the product itself—its configuration—may

constitute protectable trade dress under § 43(a) of the Lanham Act.

Id. In 1976, the Eighth Circuit established a precedent for the

protection of configurations. Truck Equipment Service Co. v.

Fruehauf Corp., 536 F.2d 1210 (8th Cir.), cert. denied, 429 U.S.

861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976). Fruehauf found the

unique exterior design (twin hopper bottomed) of a grain semi-truck

trailer body to be protectable trade dress. See also LeSportsac,

Inc. v. K Mart Corp., 754 F.2d 71 (2d Cir.1985). A feature of a

product can also be protectable trade dress. C. McKenney & G.

Long, Federal Unfair Competition: Lanham Act § 43(a) § 5.01

(1994).

 In order to prevail on a claim for trade dress infringement

under § 43(a), a plaintiff must prove three elements: (1) that the

trade dress of the two products is confusingly similar; (2) that

the features of the trade dress are primarily non-functional; and

(3) that the trade dress is inherently distinctive or has acquired
 10Trade dress that is inherently distinctive is protectable

under § 43(a) without a showing that it has acquired secondary

meaning. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112

S.Ct. 2753, 120 L.Ed.2d 615 (1992). 

 11Epic argues that the magistrate judge improperly placed

the burden of proof upon it as plaintiff to establish the

non-functionality of its trade dress as part of its prima facie

case. Pointing to a split among the circuits, it claims that

that burden should have been placed upon the defendant Condec. 

[The Third, Ninth, and District of Columbia Circuits place the

burden upon the plaintiff. See American Home Products Corp. v.

Barr Laboratories, Inc., 834 F.2d 368 (3d Cir.1987), Sega

Enterprises v. Accolade, Inc., 977 F.2d 1510 (9th Cir.1992); 

Reader's Digest Ass'n. v. Conservative Digest, Inc., 821 F.2d 800

(D.C.Cir.1987). The Second, Seventh, and Tenth Circuits

characterize functionality of trade dress as a defense to be

pleaded and proved by the defendant. Compare LeSportsac, 754

F.2d 71 (2d Cir.1985); Computer Care v. Service Systems

Enterprises, Inc., 982 F.2d 1063 (7th Cir.1992), Brunswick Corp.

v. Spinit Reel Co., 832 F.2d 513 (10th Cir.1987).] The Eleventh

Circuit has not yet decided this issue. See John H. Harland Co.,

711 F.2d at 982 n. 26. We decline to do so now. The proper

placing of the burden of proof becomes important when there is a

lack of evidence. Epic's evidence did not fail to prove

non-functionality; it affirmatively proved functionality. There

is ample, undisputed evidence that requires a finding of

functionality. 

secondary meaning.10 Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716

F.2d 854, 857 (11th Cir.1983); John H. Harland Co., 711 F.2d at

980; AmBrit, 812 F.2d at 1535.

Here the magistrate judge found that Epic established11 all

three elements of it claim and concluded that Condec had infringed

upon Epic's trade dress. On appeal, Condec contends that the

magistrate judge clearly erred in her conclusion with respect only

to the second element, i.e., non-functionality.

 A product's features are protectible as trade dress if they

are primarily non-fucntional. See generally Sicilia Di R. Biebow

& Co. v. Cox, 732 F.2d 417, 426-30 (5th Cir.1984) (discussing the

distinction between features that are functional and those that are
not). "The line between functionality and non-functionality is not

... brightly drawn in every case." Fruehauf, 536 F.2d at 1218.

"The issue of functionality has been consistently treated as a

question of fact." John H. Harland Co., 711 F.2d at 982, citing

Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769

(9th Cir.1981).

Condec argues that the question of whether Epic's trade dress

can be properly characterized as primarily non-functional is the

threshold question in any § 43(a) case as, if this question is

answered in the negative, the remaining two elements drop away, cf.

In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1335

(C.C.P.A.1982), and the trade dress will simply be ineligible for

protection. AmBrit, 812 F.2d at 1538. Condec does not appeal the

magistrate judge's finding that the two other elements were present

here. Therefore, under the facts of this particular case,

non-functionality is the only issue. However, as all three

elements are necessary for a finding of trade dress infringement,

any one could be characterized as threshold.

 The only question before us, therefore, is whether the record

reflects that the trade dress of EPICORE is primarily

non-functional. If, as Condec contends, the dovetail features of

Epic's EPICORE product are functional, then Condec was free to copy

those dovetail features in the absence of any patent protection.

John H. Harland Co., 711 F.2d at 982 (citations omitted). If,

however, Condec copied dovetail features of Epic's trade dress that

are primarily nonfunctional, then Condec is liable for trade dress
 12John H. Harland Co. involved the trade dress of desk-style

checkbooks containing intermediate carry-around stubs, called

Memory Stubs. A panel of this circuit found the Memory Stub

product—such as the concept and location of its carry-around

stub, the lines for recording information on the stub, and the

vertical and horizontal size of the stub—clearly functional. 

However, the decorative box around the information lines on the

stub and the design and color of the carry-around case were

primarily non-functional. 711 F.2d at 983-84. 

 13The Court limited its grant of certiorari in Two Pesos

only to resolve the conflict among the Courts of Appeals on the

question whether trade dress that is inherently distinctive is

protectible under § 43(a) without a showing that it has acquired

secondary meaning. 505 U.S. at 767-69, 112 S.Ct. at 2757. It

declined to grant certiorari on the question of

non-functionality. Id. at n. 6. 

 14We note that, in both cases, the discussion of

non-functionality was dicta. Nevertheless, these tests provide

guidance for our analysis. 

infringement under § 43(a). Id.12

There is no bright line test for functionality. See id. at

983, citing Fruehauf, 536 F.2d at 1218. The Supreme Court has

characterized a functional feature as one that "is essential to the

use or purpose of the article or [one that] affects the cost or

quality of the article." Inwood Laboratories, Inc. v. Ives

Laboratories, Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 2186

n. 10, 72 L.Ed.2d 606 (1982). More recently, the Court stated that

"a design is legally functional, and thus unprotectable, if it is

one of a limited number of equally efficient options available to

competitors and free competition would be unduly hindered by

according the design trademark protection." Two Pesos, Inc. v.

Taco Cabana, Inc., 505 U.S. 763, 775, 112 S.Ct. 2753, 2760, 120

L.Ed.2d 615 (1992).13

 Relying on this authority,14 the magistrate judge found:

While the evidence [of non-functionality] is certainly
not as strong as the other two aspects of plaintiff's trade

dress claim, this court concludes that plaintiff has shown by

a preponderance of the evidence that its Epicore product, with

the dovetail profile, is primarily non-functional. This is so

because it is very clear that other manufacturers need not

incorporate this design into their composite steel deck

products to compete effectively.

 * * * * * *

... [T]he evidence ... shows that there are numerous

alternative composite steel floor deck profiles that compete

with the EPICORE profile.

The magistrate judge, however, then went beyond these tests to

formulate a market share analysis:

... Epic has a very small market share in the composite steel

floor deck industry (about two percent). If the EPICORE

dovetail profile were primarily functional, Epic would

logically have a much larger market share. The fact that no

other competitors other than defendants have deemed it

necessary to simulate plaintiff's product in order to "compete

effectively" demonstrates the non-functionality of the

dovetail rib design. (Emphasis added).

We do not agree that market share is the definitive factor in

evaluating the functionality of EPICORE's dovetail configuration.

A small market share can reflect enormous revenue and profit in

dollar terms. While market share may be an indicator of

competitiveness, we believe that other factors must be considered

in determining whether the dovetail configuration is functional.

Therefore, we return to the tests suggested in Inwood Laboratories

and Two Pesos and ask: Is the dovetail configuration essential to

EPICORE's use or purpose? Does the dovetail configuration affect

EPICORE's cost or quality? Would free competition be hindered if

we accord the dovetail configuration protection because there are

only a limited number of other options available?

On the functional side, Condec points to Epic's promotional

materials that extol the utilitarian benefits of EPICORE's dovetail
 15We take judicial notice of the right of every company

father to be proud of his product. 

 16Indeed, according to Landis, a difference of as little as

1/16 of an inch in the depth of a dovetail rib would constitute a

substantial difference in the quality of the product, as measured

by the section properties. 

profile. Without the dovetail rib profile, Condec argues, EPICORE

would be reduced to nothing more than a hunk of steel.

On the non-functional side, Epic claims that the dovetail ribs

merely identify it as a company. It contends EPICORE is more

complex and expensive to produce, hence EPICORE is non-functional.

In other words, Epic argues that the dovetail configuration would

be functional only if it resulted from a comparatively simple or

inexpensive method of manufacture. Epic also appears to argue that

the ribs are merely distinctive arrangements of predominantly

ornamental features that do not hinder potential competitors from

entering the same market, with differently dressed versions of the

same product.

The key to this case can be found in the record testimony of

the president of Epic, Donald Landis.15 Landis testified that the

shape of the dovetail rib and its dimensions, especially its depth,

plays a critical role in generating the section properties of the

composite steel deck into which it is incorporated.16 Thereafter,

according to Landis, the section properties of the profile of steel

deck, moment of inertia and section modulus, respectively,

determine how much the product will deflect or sag, and how much

stress the product will tolerate. We can infer from this testimony

that EPICORE's geometric shape enhances its section properties,

which in turn, enhances the quality or strength of the product.
 17The magistrate judge found:

Defendants point to various aspects of Epic's

promotional materials as evidence of the utility of the

dovetail rib configuration. These materials include

the following statements: "there is no other Composite

deck system ... able to match EPICORE's performance",

"EPICORE works more efficiently than other decks

because it is engineered for trouble-free connector

installation, maximum concrete coverage around shear

connectors and greater beam spacing." These materials

also state that "with EPICORE, composite beams can be

lighter in weight, shallower, and spaced further apart,

they use less material, reduce building height, and

save construction time and costs." Additional

advantages are that the profile permits objects to be

hung from the deck during construction and a safe

working platform is also provided. 

See Inwood Laboratories, 456 U.S. at 850 n. 10, 102 S.Ct. at 2186

n. 10. Strength is essential to EPICORE's use or purpose. Id.

Epic's own marketing materials indicate that the concept of a

dovetail configuration is functional. See John H. Harland Co., 711

F.2d at 983 n. 28 (where Harland's marketing materials indicated

that the concept of an intermediate carry-around stub was

functional). Reading from his company's brochure, Landis recited:17

Q: Well, this is the one in the upper left-hand side. It

says:

"The Epicore composite floor system is number one in

composite floor construction."

A: Yes.

Q: Okay. Beneath that, there is another—another line:

"Epicore's unique profile improves performance, lowers

initial and life-cycle costs."

Would you please read the following section, please, down to

the last bullet point?

A: "Epicore's unique profile improves performance, lowers

initial lifecycle costs. An Epicore composite floor slab

combines the structural advantages of a flat slab with the

time cost-saving advantages of a permanent form. An Epicore
slab can support greater loading than a typical reinforced

concrete slab of the same depth. Epicore deck furnishes the

total positive reinforcement for a composite slab and serves

as a permanent form for the concrete. The resulting

advantages are many, both during construction and throughout

the life of the building. Longer spans, no temporary form

work, no positive reinforcing bars, less concrete, less

shoring, no spray-applied fire proofing, a permanent integral

hanger system that eliminates the layout and insertion of

hanging devices before the slabs are poured, and simplifies

the planning, installation, and alteration of ceilings, HVAC

components, and other suspended equipment. A safe working

platform before the concrete is poured when Epicore deck has

been properly designed and installed. Runways and planking

should be used to protect the deck from damages. Increased

present and future flexibility."

 * * * * * *

Q: So when your Concept 2 brochure says that there is no other

composite deck system similarly designed or able to match

Epicore's performance, that's not true?

A: You know, when you say "similarly designed," okay, that's

true, okay. There's no other—when I say similarly designed,

I'm talking about a dovetail-type shape.

Q: It's a disjunctive. It's says "or able to match Epicore's

performance."

Is there anything—there's no other product able to match

Epicore's performance?

A: I believe there is. Today I believe there are lots of

other products. You know, Epicore is like an automobile.

It's like a Cadillac. You can buy a Cadillac; you can buy a

Chevrolet. A Chevrolet can go anywhere that the Cadillac can.

And why do people buy Cadillacs and why do people buy

Chevrolets since there's a big difference in price? They

can't go anywhere—you know, any different.

Further the record reflects that H.H. Robertson, in advertising the

construction specifications of its (now defunct) Keystone product,

extolled the functional virtues of Keystone's dovetail ribs by

stating that in order "[t]o provide a positive keybond with the

concrete the Keystone deck shall have integral pyramidal shaped

ribs, all continuous and complete in cross-section, and spaced not

more than 6 [inches] on center." In remarkably similar language,
 18Perhaps this explains why Epic never applied for a patent. 

 19EPICORE uses thirty percent more steel sheeting with which

to provide its positive key-bond with the concrete. 

Epic, in its copyrighted brochure, later extolled the same

functional virtues of EPICORE by saying "to provide a positive

keybond with the concrete, EPICORE floor form units shall have

continuous dovetail-shaped ribs formed to the following nominal

dimensions...." Landis corroborates this with testimony that the

dovetail profile was based upon sound engineering principles and

that the dovetail rib configuration was one of the keys to Epic's

composite steel deck system. In short, it makes it stronger. See

Inwood Laboratories, Inc., 456 U.S. at 850 n. 10, 102 S.Ct. at 2186

n. 10.

We cannot conclude that the dovetail ribs are meant primarily

for identification purposes—at least three other manufacturers

introduced similarly-designed products into the public domain

before Epic introduced EPICORE.18 Neither are they arbitrary

arrangements of predominately ornamental features. Like the

flaring tendon and mortise by which the corners of drawers are

joined in a piece of fine wooden furniture, a strong interlocking

joint is formed between EPICORE's dovetail rib and its mortise, the

concrete.19 We conclude that Epic cannot appropriate this

functional innovation under the guise of trade dress. John H.

Harland Co., 711 F.2d at 983 n. 28.

In sum there is ample evidence to suggest that EPICORE's

dovetail profile is primarily functional and not protectable trade

dress. We conclude that the magistrate judge's finding is clearly
 20It is plainly obvious that Condec copied Epic's product. 

We empathize with the reaction of the magistrate judge to the

faithless malfeasance of a defendant who copies his employer's

unpatented product while purporting to be its agent. However,

public policy favors competition by all fair means, and that

encompasses the right to copy, very broadly interpreted, except

where copying is lawfully prevented by a copyright or patent ...

and functional shapes are never capable of being monopolized even

when they become distinctive of the applicant's goods. In re

Deister Concentrator Co., 289 F.2d 496, 503-06 (C.C.P.A. 1961). 

erroneous.20 To conclude otherwise would hinder Condec in its

attempt to compete effectively with Epic, Two Pesos, 505 U.S. at

773-75, 112 S.Ct. at 2760, AmBrit, 812 F.2d at 1538, and grant Epic

a lifetime patent—for which it never applied.

V. CONCLUSION

Based upon the foregoing, we conclude that Condec did not

infringe upon Epic's trade dress in violation of § 43(a) of the

Lanham Act. We reverse Condec's liability as to this claim and

remand for further proceedings consistent with this opinion. As to

all other claims, we affirm.

REVERSED and REMANDED in part; AFFIRMED in part.