Commodity or icon?
By (In light of a new development in the case, Scott’s encouraged me to recycle something I once posted on my own blog. ‘Coz … it’s new to you ….)
With no discussion, the Eleventh Circuit has affirmed a district court’s holding that the “Hooters Girl” is the product for sale, and not a signifier of origin.
The case is described in this article:
‘Functionality’ of Hooters Girls at Issue in IP Appeal
Judges on the 11th U.S. Circuit Court of Appeals will take a close look at the short-shorts and tight tank tops of the “Hooters Girls” to determine whether the restaurant servers’ scant outfits deserve trade dress protection.
Last December, a U.S. District Court judge in Orlando, Fla., ruled that the “Hooters Girl” persona is “primarily functional” and therefore is not entitled to trade dress protection. U.S. District Judge Anne C. Conway found that the “Hooters Girl” was “the very essence of Hooters’ business,” whose “predominant function is to provide vicarious sexual recreation, to titillate, entice, and arouse male customers’ fantasies.”
Hooters of America Inc. had brought claims of trade dress infringement and dilution and unfair competition against Ker’s Winghouse, a Florida restaurant chain in which the decor and the waitstaff’s wardrobe seemed too familiar to Hooters executives. Ker’s Winghouse restaurants — named after founder, president and former Dallas Cowboys lineman Crawford Ker — feature the “Winghouse Girls.” According to their respective Web sites, there are over 375 Hooters restaurants in 46 states and several foreign countries, whereas there are 17 Ker’s Winghouse restaurants, all in Florida except for one in Texas.
See, here’s the legal issue. Once upon a time, there was only the concept of trademark — which was just, literally, a unique “mark” you placed on your goods to indicate its origin. It’s sole purpose was to show who created the product.
And then companies started to get creative with their marks. Instead of just having, say, the Apple logo, or the Penguin of Penguin Books, Tiffany’s claimed a trademark on the distinctive coloring of its boxes. Harley-Davidson claimed a trademark on the distinctive sound of its engine. But in order to claim trademark protection for these things, they had to show that Tiffany Blue or the Harley-Davidson engine sound were more than decorative, and more than the natural byproduct of a functioning engine — they had to actually signify origin.
(I don’t know anything about engines, but Tiffany’s, I know. And they’re right — if you see a jewelry box with that color blue, you don’t need to see the Tiffany name; you know where that box came from.)
So then the concept of “trade dress” came along. That was the idea that sometimes a trademark goes beyond a mark, or a color, or a sound — the entire visual design and packaging may serve the same purpose, namely, to signify origin. The shape of a Coca-Cola bottle, for example, has trade dress protection; if you saw that bottle in silhouette, without the Coke icon, you’d likely be able to identify it as Coke.
The problem is that the more you extend the concept of trademarks, the more you’re likely to overlap with the actual functional parts of the business. I mean, if Burger King came along and claimed “trade dress” protection for the idea of a restaurant with a counter where you place your order, a lighted up board listing menu choices, and computerized cash registers, it would pretty much knock out anyone who wanted to set up a competing fastfood chain. And it would be wrong, because these aspects of the design of a Burger King restaurant don’t exist to signify source so much as they exist because they are a functional and efficient way for Burger King to do business.
Which brings us to Hooters, who apparently has competition (I, of course, have no first-hand experience with any of this). The competing chain, Winghouse, dresses its servers in black tanks and running shorts, instead of the Hooters white tanks and orange shorts. But otherwise, Winghouse is pretty much, well, Hooters.
So Hooters sued, claiming that busty waitresses in tanks and shorts constitutes a signifier of origin. It’s more than people just happen to know that Hooters puts out such a product/service — people actually recognize these things as a trademark. In other words, the shape of the Hooters girl is just like the shape of the Coke bottle.
Which has Winghouse arguing that these are not signifiers of origin; these are functional aspects of Hooters business. Busty women in tank tops are what Hooters actually sells; they are not a design that solely communicates to the public the source of the product.
The trial judge agreed with Winghouse, writing:
Although the parties and this Court recognize that elements of trade dress must be considered in toto, the overwhelmingly predominant feature of Hooters’ trade dress is the Hooters Girl. As the Plaintiffs themselves have said, “The Hooters Girls are Hooters. They are not simply a marketing tool; they are the essence of the business.” In other words, without the Hooters Girl, there would be no Hooters. And what distinguishes the Hooters Girl from other sports bar and grill servers is her distinctive uniform, consisting of a white tank top shirt prominently featuring the Hooters name and “owl” logo across her chest, and orange nylon running shorts. Although Hooters Girls occasionally wear black uniforms, as a matter of law, those uniforms are not distinctive….
The Hooters Girl is not entitled to trade dress protection because the evidence establishes to a legal certainty that the Hooters Girl is primarily functional. As Hooters has represented to state and federal regulatory agencies investigating complaints of discrimination, the Hooters Girl is not a marketing tool. Rather, Hooters has admitted that the Hooters Girl’s predominant function is to provide vicarious sexual recreation, to titillate, entice, and arouse male customers’ fantasies. She is the very essence of Hooters’ business. This essential functionality disqualifies the Hooters Girl from trade dress protection.
347 F. Supp. 2d 1256 (M.D. Fla. 2004).
Aha! Hoist on their petard. See, awhile back Hooters was sued by the EEOC for sex discrimination. The lawsuit was settled, but when Hooters defended its policy of hiring only women of a certain … um .. shape, it argued that it needed to engage in such practices because the actual product it was selling was sexual titillation.
Hooters is allowed to change its tune now, but the trial court looked to Hooters’s arguments in the past as evidence of what Hooters’s core “product” actually is.
Hooters, of course, has a different view:
Hooters argued that there are numerous alternative ways of using scantily clad women to sell food, other than having waitresses wear tight tank tops and short nylon running shorts. “We didn’t have any problem with him putting girls in cheerleader outfits with the pom-poms,” said Hill, alluding to Ker’s football past.
But, Hooters has now lost its case, and we have an answer to the puzzle: women in tank tops are products, not symbols. Good to know.