In the

United States Court of Appeals

For the Seventh Circuit

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No. 03-3932

BRETFORD MANUFACTURING, INC.,

Plaintiff-Appellant,

v.

SMITH SYSTEM MANUFACTURING

CORPORATION,

Defendant-Appellee.

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Appeal from the United States District Court for

the Northern District of Illinois, Eastern Division.

No. 98 C 0287—John F. Grady, Judge.

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ARGUED DECEMBER 3, 2004—DECIDED AUGUST 8, 2005

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Before FLAUM, Chief Judge, and EASTERBROOK and

WILLIAMS, Circuit Judges.

EASTERBROOK, Circuit Judge. Bretford makes a line of

computer tables that it sells under the name ConnectionsTM.

Since 1990 many of these tables have featured one rather

than two legs on each end. The leg supports a sleeve attached to a V-shaped brace, making it easy to change the

table’s height while keeping the work surface stable. Although the sleeve and brace together look like a Y, Bretford

calls it the V-Design table, and we employ the same usage.
2 No. 03-3932

This illustration, from Bretford’s web site, shows the idea:

Between 1990 and 1997 Bretford was the only seller of

computer tables with a V-shaped height-adjustment system.

It sold about 200,000 V-Design tables during that period.

Smith System, one of Bretford’s competitors, decided to copy

the sleeve and brace for its own line of computer tables.

Smith System made its initial sales of the knockoff product

to the Dallas school system in 1997, and this trademark

litigation quickly followed.

Invoking §43(a) of the Lanham Act, 15 U.S.C. §1125(a),

Bretford contends that the V-shaped design is its product’s

trade dress, which Smith System has infringed. It also

contends that Smith System engaged in “reverse passing off ”
No. 03-3932 3

when it incorporated some Bretford hardware into a sample

table that it showed purchasing officials in Dallas. The

parties waived their right to a jury trial, and the district

court held evidentiary hearings and issued opinions over a

number of years. Although at one point the judge found

Smith System liable and awarded damages in Bretford’s

favor, he reversed course in light of Wal-Mart Stores, Inc. v.

Samara Brothers, Inc., 529 U.S. 205 (2000), and Dastar

Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23

(2003). See 286 F. Supp. 2d 969 (N.D. Ill. 2003) (final

decision in Smith System’s favor). The appeal presents two

principal questions: whether Smith System is entitled to

copy Bretford’s design, and, if yes, whether it was nonetheless wrongful for Smith System to use Bretford components

in a sample table shown to the Dallas buyers.

Section 43(a) provides:

(1) Any person who, on or in connection with any

goods or services, or any container for goods, uses in

commerce any word, term, name, symbol, or device,

or any combination thereof, or any false designation

of origin, false or misleading description of fact, or

false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation,

connection, or association of such person

with another person, or as to the origin,

sponsorship, or approval of his or her goods,

services, or commercial activities by another person, or

(B) in commercial advertising or promotion,

misrepresents the nature, characteristics,

qualities, or geographic origin of his or her

or another person’s goods, services, or

commercial activities,
4 No. 03-3932

shall be liable in a civil action by any person who

believes that he or she is or is likely to be damaged

by such act.

. . .

(3) In a civil action for trade dress infringement

under this Act for trade dress not registered on the

principal register, the person who asserts trade

dress protection has the burden of proving that the

matter sought to be protected is not functional.

The Supreme Court held in Wal-Mart that the phrase

“word, term, name, symbol, or device, or any combination

thereof” includes distinctive aspects of a product’s appearance, commonly known as trade dress. The Court added,

however, that a product’s physical design can not be deemed

inherently distinctive, so that to prevail under §43(a) the

producer must demonstrate “secondary meaning”—in other

words, that consumers understand the design elements to

signify the goods’ origin and not just its attributes. Otherwise, the Court thought, it would be too easy to use the

expense and risk of litigation to dissuade rivals from using

their right to reverse-engineer and copy products, which

they may do down to the last detail unless a feature of the

product is protected by patent, copyright, or trademark law.

See, e.g., TrafFix Devices, Inc. v. Marketing Displays, Inc.,

532 U.S. 23, 29 (2001); Bonito Boats, Inc. v. Thunder Craft

Boats, Inc., 489 U.S. 141 (1989); Sears, Roebuck & Co. v.

Stiffel Co., 376 U.S. 225 (1964). Trademark law is designed

to reduce the costs customers incur in learning who makes

the product, and this also helps sellers obtain rewards from

producing goods of consistent quality, for consumers will

find it easier to find and buy goods with which they have

been satisfied in the past. So when trade dress implies the

product’s origin it is protected as a trademark (unless it

also is functional); but when consumers value the feature

for its own sake rather than as a badge of origin, it may be

copied freely.
No. 03-3932 5

The district court found that V-shaped legs do not signal

Bretford as a source. The record supports this conclusion;

indeed, Bretford has no evidence that the leg design

prompts “Bretford” in buyers’ minds. There are no surveys

and no evidence of actual confusion. Both Bretford and

Smith System sell through distributors and field representatives to sophisticated buyers who know exactly where

their goods are coming from.

Many buyers ask for tables with V-shaped legs, and

Bretford insists that this shows that they want its

ConnectionsTM furniture; quite the contrary, this form of

specification does more to imply that the leg design is

functional than to show that anyone cares who makes the

table. In the end, all Bretford has to go on is the fact that it

was the only maker of such tables for eight years and spent

more than $4 million to promote sales. If that were enough

to permit judgment in its favor, new entry would be curtailed unduly by the risk and expense of trademark litigation, for every introducer of a new design could make the

same sort of claim. “Consumers should not be deprived of

the benefits of competition with regard to the utilitarian

and esthetic purposes that product design ordinarily serves

by a rule of law that facilitates plausible threats of suit

against new entrants based on alleged inherent distinctiveness.” Wal-Mart, 529 U.S. at 213.

Originators such as Bretford may receive protection via

design patents, and strictly aesthetic features of products

may be copyrighted. “The availability of these and other

protections greatly reduces any harm to the producer that

might ensue” from limiting trademark protection to features that have acquired secondary meaning. Wal-Mart, 529

U.S. at 214. Bretford did not obtain patent or copyright

protection, so it cannot block Smith System’s copy-cat

tables. Even if the record had evidence of secondary meaning, Bretford likely would lose because the leg design

appears to be functional, but we need not explore that issue.
6 No. 03-3932

When Smith System decided to copy Bretford’s table, it

subcontracted the leg assemblies to a specialized metal

fabricator, whose initial efforts were unsatisfactory. This

left Smith System in a bind when the Dallas school system

asked to see a table. Smith System cobbled a sample together by attaching the leg assembly from a Bretford table

(which Smith System had repainted) to a top that Smith

System had manufactured itself. (Who supplied other

components, such as the cable guides and grommets, is

disputed but irrelevant.) Dallas was satisfied and placed an

order. All of the tables delivered to Dallas included legs

manufactured by Smith System’s subcontractor. Nonetheless, Bretford contends, by using its leg assemblies on even

the one sample, Smith System engaged in reverse passing

off and must pay damages.

Passing off or palming off occurs when a firm puts someone else’s trademark on its own (usually inferior) goods;

reverse passing off or misappropriation is selling someone

else’s goods under your own mark. See Roho, Inc. v. Marquis, 902 F.2d 356, 359 (5th Cir. 1990). It is not clear what’s

wrong with reselling someone else’s goods, if you first buy

them at retail. If every automobile sold by DeLorean

includes the chassis and engine of a Peugeot, with

DeLorean supplying only the body shell, Peugeot has

received its asking price for each car sold and does not

suffer any harm. Still, the Supreme Court said in Dastar

that “reverse passing off” can violate the Lanham Act if a

misdescription of goods’ origin causes commercial injury.

Our opinion in Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d

986 (7th Cir. 2004), shows how this could occur.

Dastar added that the injury must be a trademark

loss—which is to say, it must come from a misrepresentation of the goods’ origin. Dastar thus had the right (so far as

the Lanham Act is concerned) to incorporate into its videos

footage taken and edited by others, provided that it manufactured the finished product and did not mislead anyone
No. 03-3932 7

about who should be held responsible for shortcomings. No

one makes a product from scratch, with trees and iron ore

entering one end of the plant and a finished consumer

product emerging at the other. Ford’s cars include Fram oil

filters, Goodyear tires, Owens-Corning glass, Bose radios,

Pennzoil lubricants, and many other constituents; buyers

can see some of the other producers’ marks (those on the

radio and tires for example) but not others, such as the oil

and transmission fluid. Smith System builds tables using

wood from one supplier, grommets (including Teflon from

du Pont) from another, and vinyl molding and paint and

bolts from any of a hundred more sources—the list is

extensive even for a simple product such as a table. If

Smith System does not tell du Pont how the Teflon is used,

and does not inform its consumers which firm supplied the

wood, has it violated the Lanham Act? Surely not; the

statute does not condemn the way in which all products are

made.

Legs are a larger fraction of a table’s total value than

grommets and screws, but nothing in the statute establishes one rule for “major” components and another for less

costly inputs. The right question, Dastar holds, is whether

the consumer knows who has produced the finished product.

In the Dastar case that was Dastar itself, even though most

of the product’s economic value came from elsewhere; just

so when Smith System includes components manufactured

by others but stands behind the finished product. The

portion of §43(a) that addresses reverse passing off is the

one that condemns false designations of origin. “Origin”

means, Dastar holds, “the producer of the tangible product

sold in the marketplace”. 539 U.S. at 31. As far as Dallas

was concerned, the table’s “origin” was Smith System, no

matter who made any component or subassembly.

Much of Bretford’s argument takes the form that it is just

“unfair” for Smith System to proceed as it did, making a

sale before its subcontractor could turn out acceptable leg
8 No. 03-3932

assemblies. Businesses often think competition unfair, but

federal law encourages wholesale copying, the better to

drive down prices. Consumers rather than producers are

the objects of the law’s solicitude. If Smith System misled

Dallas into thinking that it could supply high-quality

tables, when its subcontractor could not match Bretford’s

welds and other attributes of Bretford’s V-shaped leg

assemblies, then the victim would be the Dallas school system. (As far as we are aware, however, Dallas is happy with

the quality of the tables it received; it has not complained

about a bait and switch.) As the Court observed in Dastar,

creators of certain artistic works are entitled (along the

lines of the European approach to moral rights) to control

how their work is presented or altered by others. See 539

U.S. at 34-35, citing 17 U.S.C. §106A. See also Lee v. A.R.T.

Co., 125 F.3d 580 (7th Cir. 1997). Bretford’s table is not a

“work of visual art” under §106A (and the definition in 17

U.S.C. §101). Once Bretford sold its goods, it had no control

over how customers used their components: the Lanham Act

does not include any version of the “derivative work” right

in copyright law. See 17 U.S.C. §106(2).

A brief word about state law brings this opinion to a close.

Although Bretford contends that Smith System committed

the tort of unfair competition under both Illinois and Texas

law, its brief does not cite any statute or decision of either

state’s judiciary. A reference to one federal district court’s

understanding of Texas law, in a treatment less than a page

long, does not preserve a contention. What do the Texas

courts themselves say on this subject? It is not our job to do

the legal research that Bretford has omitted. Claims under

state law have been forfeited.

AFFIRMED
No. 03-3932 9

A true Copy:

Teste: 

 ________________________________

Clerk of the United States Court of

Appeals for the Seventh Circuit 

USCA-02-C-0072—8-8-05