430
Opinion of the Court
man Tool Group, Inc. v. Cooper Industries, Inc., supra. It held that the overall appearance of the PST was not protected under the trademark laws because its distinguishing features, and the combination of those features, were functional. Accordingly, even though Cooper had deliberately copied the PST, it acted lawfully in doing so.3
In its unpublished opinion, the Court of Appeals affirmed the punitive damages award. It first rejected Cooper's argument that the Oregon Constitution, which has been interpreted to prohibit awards of punitive damages for torts that impose liability for speech, precluded the jury's award of such damages in this case. It then reviewed the District Court's finding that the award "was proportional and fair, given the nature of the conduct, the evidence of intentional passing off, and the size of an award necessary to create deterrence to an entity of Cooper's size" and concluded "that the award did not violate Cooper's due process rights" under the Federal Constitution. App. to Pet. for Cert. 3a, judgt. order reported at 205 F. 3d 1351 (CA9 1999). It noted that the "passing off" in this case was "very unusual" because "even assuming PST is a superior product," no superior features of the PST were perceivable in the photographs. App. to Pet. for Cert. 3a. "Any customer who bought based on what the photographs showed would have received essentially that for which he or she paid." Ibid. Thus, Cooper's use of the photographs of the PST did not involve "the
3 Because this holding removed the predicate for the award of fees under the Lanham Act, see n. 2, supra, the Court of Appeals set aside that award and directed the District Court, on remand, to consider whether the evidence of passing off, standing alone, was sufficient to warrant a fee award. The Court of Appeals noted that the jury verdict form did not distinguish between passing off as a Lanham Act claim and passing off as a matter of state law. Although a fee award under § 35(a) could not be supported unless the federal statute was violated, there is no reason to believe that any possible difference between federal and state passing off would affect the constitutionality of the punitive damages award.
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