Functionality: it’s in the bag

Schutte Bagclosures
Inc. v. Kwik Lok Corp., No. 12-cv-5541 (S.D.N.Y. Jun. 14, 2016)
Following up from previous post on an earlier
(Thanks to an
eagle-eyed correspondent who probably knows way more than anyone else wants to
know about plastic bag closures.)  There’s
a bit of tacking here—the court finds that Kwik-Lok’s registrations for bag
closure designs cover current versions, despite some changes, forcing Schutte
to bear the burden of proof on functionality. 
That’s Kwik-Lox’s last victory, though. 
The court finds the
Kwik-Lok registered bag closures to be functional under Traffix, and just in case under Morton-Norwich
too, rejecting the proffered alternative designs (which were produced using 3-D
printers, for those of you tracking clever litigation innovations at home) as
unproven in their ability to hold up to the kind of rapid automated application
required for large-scale production of closed bags.  Apparently these things come in reels, like
ticket reels, and work in machines specifically designed to fit the closures.

Schutte on L; Kwik-Lok
on R.
Then, to be extra
extra sure, the court continued on to find that confusion was unlikely—these
are only sold in batches of at least 4000 to sophisticated consumers, in
clearly marked packages.  And, as I commented
in my initial post, the federal dilution claim failed for want of fame among
the general consuming public. 
Interestingly, the court then dismissed the state dilution claim as
preempted by patent law under Bonito
, since the claim was one regarding product configuration trade dress.
While states can require labeling for trade dress to avoid confusion, NY
dilution law contemplated a flat ban on potentially patentable “publicly known
design and utilitarian ideas which were unprotected by the patent laws,” and
that’s a no-no.
I don’t recall
seeing this reasoning before, but the court cites a few similar cases: Luv N’
Care, Ltd. v. Regent Baby Prods. Corp., 841 F. Supp. 2d 753 (S.D.N.Y. 2012); E.
Am. Trio Prods., Inc. v. Tang Elec. Corp., 97 F. Supp. 2d 395 (S.D.N.Y. 2000); Escada
AG v. The Limited, Inc., 810 F. Supp. 571 (S.D.N.Y. 1993). 

Query: why not reason similarly about copyright, per Sears/Compco, and invalidate state dilution laws at least as based on copyrightable designs?

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