Journal of Intellectual Property Law, Vol. 5, No. 2 (Spring 1998), pp. 415-429


Some judicial opinions lack persuasive authority because they are poorly written. Others establish dangerous precedent or enshrine pernicious attitudes into law. Still others twist the language of prior opinions or misuse legislative history. Although a focus on rhetorical structure, effect on society, or quality of legal reasoning is helpful in identifying what constitutes a very bad judicial opinion, this essay will instead expose the blander evils of indifference and inattentitveness. My “worst” opinion -- Sunbeam Products, Inc. v. The West Bend Co. -- will not have a catastrophic effect on American life and culture, but rather provides an important illustration of how the broader cancer of over-expansive intellectual property rights gains a toe-hold in the law.

In Sunbeam, the court considered the allegation by Sunbeam Products that West Bend had wrongfully copied the design of its classic Mixmaster. Claiming very plausibly that its well-known design functioned as a trademark by identifying the source of the product to consumers, Sunbeam argued that West Bend's similar product was likely to confuse consumers and/or dilute the distinctive qualities of its mark in violation of 15 U.S.C.A. § 1125. The court's thorough discussion of the likelihood of consumer confusion is relatively uncontroversial. If the overall design of the mixer is non-functional, then Sunbeam is presumptively entitled to injunctive relief against appropriations of its design that are likely to confuse consumers. Unfortunately, after having determined that an injunction on likelihood of confusion grounds should issue, the court's opinion took a dangerous turn.

In a terse section that cited no precedent, the court improperly construed the Federal Trademark Dilution Act, 15 U.S.C.A § 1125(c), to protect the design of Sunbeam's product even in the absence of consumer confusion. Although § 1125(c) clearly applies to protect famous word marks, it cannot be plausibly construed to protect product configurations that may function as trademarks. Like a potent new virus, Sunbeam is dangerous not only because of its ultimately unhealthy holding, but because of the unobtrusive and insidious manner in which it threatens to infect the corpus of intellectual property law. In the hope of provoking the development of a legal vaccine, this essay will consider, as the Sunbeam opinion fails to, the full implications of applying federal dilution law to protect product configurations.