Knitwaves, Inc., Plaintiff-Appellee-Cross-Appellant v. Lollytogs Ltd. (Inc.) D/B/A French Toast, Defendant-Appellant-Cross-Appellee

This appeal involves principles of copyright and trade dress as applied to the design of children’s sweaters. Specifically, it involves the evaluation of “substantial similarity” of clothing designs under the Copyright Act; the “inherent distinctiveness” of trade dress under the Lanham Act when the dress involved is not packaging or labeling but a product’s features; and various issues involving remedies, particularly the award of attorney’s fees, under the Copyright Act.

In 1990, Knitwaves, Inc., a manufacturer of children’s knitwear, introduced its “Ecology Group” collection of sweaters, consisting of various styles of girls’ sweaters and accompanying skirts and pants, presenting “ecology” themes in “fall” colors. It obtained copyrights for the designs of the two sweaters at issue in this litigation — its “Leaf Sweater,” a multicolored striped sweater with puffy leaf appliques, and its “Squirrel Cardigan,” which has a squirrel and leaves appliqued onto its multipaneled front. In 1992, Lollytogs Ltd., a larger manufacturer which sells children’s clothing under the nationally advertised French Toast label, introduced a competing line of fall sweaters, including a similar-looking Leaf Sweater and Squirrel Cardigan admittedly copied from Knitwaves’ sweaters. (Photographs of the competing sweaters are reproduced as an appendix to the opinion.) Knitwaves sued Lollytogs in the Southern District of New York for copyright infringement and for unfair competition under the Lanham Act and New York law.

On September 1, 1992, the district court, John S. Martin, Jr., Judge, granted Knit-waves a preliminary injunction. After a bench trial, on June 1, 1994, the court issued a memorandum and order, finding that Lolly-togs willfully copied Knitwaves’ designs in violation of the Copyright Act, the Lanham Act, and New York law. On September 2, 1994, following post-trial briefing, a permanent injunction was entered against Lolly-togs as well as judgment in the amount of $193,681.72, constituting statutory damages, infringing profits and lost profits, and costs and attorney’s fees. Lollytogs now appeals, and Knitwaves cross-appeals on the amount of damages.

We hold that: (1) the district court properly found that Lollytogs illegally copied Knit-waves’ Leaf Sweater and Squirrel Cardigan, in violation of the Copyright Act; (2) the district court’s finding that Lollytogs violated the Lanham Act was erroneous, as was (3) its award of $12,000 in lost profits; (4) the district court did not err in declining to apportion damages, or in (5) finding the copying to be willful; (6) the court awarded excessive attorney’s fees; and (7) the court did not abuse its discretion by declining to enhance its award of statutory damages.

BACKGROUND

Knitwaves has been designing and manufacturing children’s knitwear in New York and New Jersey since 1976. According to testimony, Knitwaves is a “design intensive” manufacturer; although the company is relatively small, it spends well over $1 million a year on designing and introducing new products. Knitwaves’ designs have resulted in substantial recognition in the clothing trade, *1000 including several industry awards. Because its goods are designed at its showroom facilities and manufactured domestically, Knit-waves’ costs are higher than those of many of its competitors, and its commercial survival remains dependent on its reputation for innovative design and high-quality manufacturing.

In 1989, Knitwaves designers began work on the Ecology Group collection of girls’ sweaters and matching skirts and pants. Each item in the group incorporated design elements intended to express a “fall” motif, such as leaves, acorns, squirrels, and the like, for introduction for the fall 1990 season. In addition, the sweaters employed what Knit-waves designers describe as innovative color schemes, using “fall” colors, such as mus-tards and browns, rather than the usually brighter children’s tones. The Ecology Group sold well and received some trade attention. The Leaf Sweater and Squirrel Cardigan, in particular, were featured in advertisements by Knitwaves and its retail customers, and in editorial comments by the trade press. Knitwaves obtained copyright registration for the artwork on its Squirrel Cardigan in March 1990, but did not register the artwork on its Leaf Sweater until May 1992.

In August 1992, Justin Israel, Knitwaves’ chairman, noticed girls’ sweater sets, closely resembling the Leaf and Squirrel sweaters and bearing the French Toast label, in a Philadelphia department store. After finding the Lollytogs sweaters in several other stores which, like the Philadelphia store, also carried Knitwaves sweaters, Knitwaves brought this action for copyright and trade dress infringement.

Deposition testimony produced the following account by Lollytogs’ personnel of Lolly-togs’ decision to introduce its competing line of fall sweaters.

In 1992, Sam Gindi, a design executive at Lollytogs, informed Cynthia Laino, the manager of Lollytogs’ design department, that he wished to produce garments with a fall design motif. He presented her with Knit-waves’ Leaf and Squirrel sweaters and instructed her to design sweater sets with the “same feel” as the Knitwaves sweaters. Lai-no testified that she copied what she considered the “non-original” aspects of the sweaters — the stripes on the Leaf Sweater, and both sweaters’ use of fall motifs such as leaves, acorns, and squirrels — but determined to “change what was original” in the sweaters so as to avoid copyright infringement:

I believe the leaves and how they were placed on the garment, how many there were, how many different types of leaves, they were original. So, therefore, I made only two different types of leaves and I arranged them differently. I grouped them, instead of scattering them, I added acorns, and there is only one color stitches on the leaves at a time instead of two.

... I deliberately set out to create new art work with a fall theme. I deliberately set out to make new leaves, new squirrel, new Jacquard pattern.

Transcript of proceedings of Aug. 31,1992, at 62-63, 67.

Laino admitted that, in designing the Leaf and Squirrel sweaters, she used no reference materials other than Knitwaves’ sweaters and produced very little original artwork. When it came time to instruct Lollytogs’ foreign manufacturer what the stripes should look like on Lollytogs’ Leaf Sweater, Lolly-togs merely sent Knitwaves’ Leaf Sweater to its supplier and told it to copy the stripes. In addition, while Laino testified that she designed the leaves for Lollytogs’ sweaters herself, any differences between the stylized oak and maple leaves on the two companies’ sweaters are minimal, at best. Laino’s artwork for the leaf appliques contains the notation “two-tone stitching same as sample” (emphasis added), clearly referring to Knit-waves’ Leaf Sweater from which she was working.

Knitwaves’ director of operations, Robert Israel, testified that as a result of the direct competition from Lollytogs, Knitwaves was required to reduce the price of its Leaf Sweaters and Squirrel Cardigans, and was unable to sell its full Ecology Group inventory, resulting in lost profits of approximately $12,000.

*1001 At the preliminary injunction hearing, the court accepted the uneontested testimony of Knitwaves’ Anthony Ransola that the Leaf and Squirrel sweaters were created from his original designs. The court did not credit the testimony of Gindi and Laino that they set out to establish a new design. Instead, the court concluded, “I think they set out to knock it off and they clearly did that.” Transcript of proceedings of Sept. 1,1992, at 2-3. Applying this circuit’s test for unlawful “substantial similarity” — whether “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work,” Malden Mills, Inc. v. Regency Mills, Inc., 626 F.2d 1112, 1113 (2d Cir.1980) (quoting Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir.1966)) — the court concluded that both sweaters were unlawful copies, warranting an injunction against Lol-lytogs’ continued sale of its infringing sweaters. In addition, the court found that Lolly-togs’ copyright violation was willful, entitling Knitwaves to an order requiring an immediate recall of all Lollytogs’ infringing sweaters.

Additionally, the district court found that an injunction was also warranted under the Lanham Act and under New York’s law of unfair competition. The court found the design of Knitwaves’ sweaters inherently distinctive, and it found a likelihood of confusion between the two companies’ products: consumers, seeing Knitwaves’ and Lollytogs’ similar sweaters on the store racks — in some cases, next to each other in the same store— would likely think they were looking at products from the same manufacturer.

On June 1, 1994, after discovery and a bench trial on the parties’ submitted affidavits and exhibits, the district court issued its memorandum and order, adopting and reaffirming the findings and conclusions made at the preliminary injunction hearing. The court found that Lollytogs willfully copied Knitwaves’ designs and that its conduct constituted a willful violation of the Copyright Act, the Lanham Act, and the New York law of unfair competition. The court awarded attorney’s fees to Knitwaves. Additionally, it found that Knitwaves was entitled to $36,-690.71 in damages pursuant to 17 U.S.C. § 504(b), representing Lollytogs’ wrongful profits on its infringing tops and matching bottoms ($13,221.20 for the Leaf Sweater and $23,469.51 for the Squirrel Cardigan). Since Lollytogs’ outfits were sold as a set, the court found, apportionment would be inappropriate. Alternatively, in lieu of actual damages, the court found Knitwaves entitled to $25,000 in statutory damages pursuant to 17 U.S.C. § 504(c)(2) for each of Lollytogs’ two willful infringements, for a total of $50,000. Knit-waves was instructed to advise the court of its election of actual or statutory damages, as well as of its attorney’s fees.

Knitwaves concluded that it was not entitled to statutory damages for infringement of its Leaf Sweater since the infringement commenced before May 1992, when Knitwaves obtained copyright registration for the sweater. See 17 U.S.C. § 412. Consequently, Knitwaves elected actual damages of $13,-221.20 for infringement of the copyright on the Leaf Sweater, along with statutory damages of $25,000 for willful infringement of its Squirrel Cardigan.

In addition to the above-mentioned actual and statutory damages, the court awarded Knitwaves $12,000 in lost profits under the Lanham Act, 15 U.S.C. § 1117, representing the amount Knitwaves was required to reduce the total selling price of its remaining inventory of its sweaters and coordinates. Additionally, based on the court’s finding that Lollytogs’ infringement was willful and in bad faith, the court awarded Knitwaves $143,460.52 in costs and attorney’s fees under both the Copyright Act, 17 U.S.C. § 505, and the Lanham Act, 15 U.S.C. § 1117. Lolly-togs was permanently enjoined from future sales of the Leaf and Squirrel sweaters, and was required to allow Knitwaves to verify and witness the destruction of any of these sweaters remaining in Lollytogs’ possession.

DISCUSSION

On appeal, Lollytogs contends that the district court erred in: (1) finding that its sweaters infringed Knitwaves’ copyrights; (2) finding a Lanham Act violation; (3) awarding Knitwaves $12,000 in lost profits; (4) awarding Knitwaves the profits made by Lollytogs on the sale of its sweaters-and- *1002 pants combinations, rather than apportioning damages and awarding only profits on the sale of its sweaters; (5) finding Lollytogs’ infringement willful; and (6) awarding Knit-waves its full attorney’s fees and expenditures. On cross-appeal, Knitwaves contends that the court abused its discretion by failing to enhance its awards further under both the Copyright Act and the Lanham Act.

I. The Finding of Copyright Infringement

As “ ‘useful article[s]’ ... having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information,” 17 U.S.C. § 101, clothes are not copyrightable. Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d 452, 455 (2d Cir.1989). In contrast, fabric designs,- such as the artwork on Knitwaves’ sweaters, are considered “writings” for purposes of copyright law and are accordingly protectible. Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir.1991); see also Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092 (2d Cir.1974); Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir.1960) (L. Hand, J.).

To prove infringement, a plaintiff with a valid copyright must demonstrate that:

(1) the defendant has actually copied the plaintiffs work; and (2) the copying is illegal because a substantial similarity exists between the defendant’s work and the protectible elements of plaintiffs.

Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 122-23 (2d Cir.1994); and see Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992); Folio Impressions, 937 F.2d at 765.

Lollytogs does not dispute the validity of Knitwaves’ copyrights or that it copied Knitwaves’ sweater designs; it contends, however, that it altered the designs enough so that its sweaters are not “substantially similar” to Knitwaves’. It notes that “[w]hile no plagiarist can excuse the wrong by showing how much of his work he did not pirate, a defendant may legitimately avoid infringement by intentionally making sufficient changes in a work which would otherwise be regarded as substantially similar to that of the plaintiffs.” Warner Bros, Inc. v. American Broadcasting Cos., 654 F.2d 204, 211 (2d Cir.1981) (citations and internal quotations omitted). We review the issue of “substantial similarity” de novo. Fisher-Price, 25 F.3d at 123.

In most cases, the test for “substantial similarity” is the so-called “ordinary observer test” which the district court applied: whether “an average lay observer would [ ] recognize the alleged copy as having been appropriated from the copyrighted work.” Folio Impressions, 937 F.2d at 766 (quoting Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d 1090, 1093 (2d Cir.1977)); see also Malden Mills, 626 F.2d at 1113; Laureyssens, 964 F.2d at 141 (test is “whether ‘the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same’ ”) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) (L. Hand, /.)).

However, as Lollytogs notes, where we compare products that contain both protectible and unproteetible elements, our inspection must be “more discerning”; we must attempt to extract the unproteetible elements from our consideration and ask whether the protectible elements, standing alone, are substantially similar. Fisher-Price, 25 F.3d at 123; Laureyssens, 964 F.2d at 141; Folio Impressions, 937 F.2d at 765-66. As we have elaborated:

[T]he plaintiff must show that the defendant appropriated the plaintiffs particular means of expressing an idea, not merely that he expressed the same idea. The means of expression are the “artistic” aspects of a work; the “mechanical” or “utilitarian” features are not protectible.

Fisher-Price, 25 F.3d at 123 (citations omitted).

Lollytogs contends that the district court erred in comparing the sweaters through the traditional “ordinary observer” test rather than through the “more discerning” test. Brief for Defendant-Appellant-Cross-Appel-lee at 20. Instead of comparing the sweater *1003 designs as a whole, Lollytogs contends, the court should have “extracted the unproteeti-ble elements” — namely, the use of common stripes and colors — and compared only the sweaters’ distinctive elements, i.e., then-placement of leaves, squirrels, and other “original” elements. 1 Id. at 21. Viewed without their common background elements, Lollytogs urges, the sweaters’ designs appear substantially dis-similar, as distinctions among their details, such as the fabric, outlines, and placement of the leaves, become apparent.

Lollytogs’ argument, however, misconstrues the nature of our inquiry into “substantial similarity.” We do not believe that we are required by the “more discerning ordinary observer test” to undertake so mechanical and counterintuitive an exercise as Lollytogs suggests. Lollytogs’ argument rests on one case, Folio Impressions, 937 F.2d 759, and we believe that Lollytogs has accorded this case too broad a reading.

Folio Impressions concerned the copying of a fabric design consisting of an arrangement of stylized roses on a complex background. Testimony at trial revealed that the pattern’s designer had photocopied the background from a document in the studio’s possession which was admitted to be in the public domain. 937 F.2d at 764. The studio had “contributed nothing, not even a trivial variation.” Id. Since the background design was entirely devoid of originality, we concluded that it was not copyrightable, id., and consequently that copyright extended only to the roses which were superimposed on top, id. at 763, and to the arrangement of those roses, id. at 764-65.

Having narrowed the scope of the copyright, we applied the “more discerning” ordinary-observer test and compared only the protected portion of the design, namely, the roses and the way they were arranged, rather than their display against the ornate background. Id. at 765-66. Compared in this way, we found noticeable the fairly subtle differences between the roses in the two patterns. Id. at 766. On the basis of these distinctions, we concluded that “an average lay observer would not recognize the alleged copy as having been appropriated from the copyrighted work.” Id. (quoting Novelty Textile Mills, 558 F.2d at 1093). 2

We do not consider the rather specialized facts of Folio Impressions as authority for the broad proposition which Lollytogs advances: that, in comparing designs for copyright infringement, we are required to dissect them into their separate components, and compare only those elements which are in themselves copyrightable. As the district court noted, if we took this argument to its logical conclusion, we might have to decide that “there can be no originality in a painting because all colors of paint have been used somewhere in the past.” Transcript of proceedings of Sept. 1, 1992, at 4.

It is commonplace that in comparing works for infringement purposes— whether we employ the traditional “ordinary observer” test or the Folio Impressions “more discerning” inquiry — we examine the works’ “total concept and feel.” See Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 500 (2d Cir.1982). As the Supreme Court’s decision in Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), makes clear, a *1004 work may be copyrightable even though it is entirely a compilation of unproteetible elements. See id. at 362, 111 S.Ct. at 1296 (even telephone directory may be copyrightable if its listings are selected, coordinated, or arranged in an original fashion). What is protectible then is “the author’s original con- . tributions,” id. at 350, 111 S.Ct. at 1290 — the original way in which the author has “selected, coordinated, and arranged” the elements of his or her work. Id. at 358, 111 S.Ct. at 1294. In this case, Knitwaves’ “original contribution” consists not merely — as Lollytogs would have it — in arranging leaves or squirrels in a specific pattern, but in (1) selecting leaves and squirrels as its dominant design elements; (2) coordinating these design elements with a “fall” palette of colors and with a “shadow-striped” (for the Leaf Sweater) or a four-paneled (for the Squirrel Cardigan) background; and (3) arranging all the design elements and colors into an original pattern for each sweater. 3

Viewed in this way, it is clear to us that Lollytogs’ Leaf and Squirrel sweaters are substantially similar to Knitwaves’. Lolly-togs has chosen to feature the same two fall symbols that Knitwaves used, leaves and squirrels. Not only do Lollytogs’ renderings of these symbols substantially resemble Knit-waves’ renderings, but Lollytogs has employed them in virtually the same manner as Knitwaves has (as felt appliques stitched to the sweaters’ surface); on strikingly similar backgrounds (“shadow-striped” for the Leaf Sweater, and four-paneled for the Squirrel Cardigan); and in virtually the same color scheme. 4 An observer viewing the sweaters side by side cannot help but perceive them as coming from one creative source.

Given the overwhelming similarity of the sweaters’ “total concept and feel,” we are not convinced by Lollytogs’ lengthy recitation of differences. Cf. Cofre Inc. v. Lollytogs Ltd., 20 U.S.P.Q.2d 1546, 1548, 1991 WL 40366 (S.D.N.Y.1991) (“it is the similarities one notices, rather than the differences, when one views the two outfits”). As to the Leaf Sweaters, Lollytogs points out that it has arranged its leaf appliques differently from Knitwaves’ arrangement: while Knitwaves’ sweater has eight leaves scattered in three rows along the front of the sweater, Lolly-togs’ sweater has only five leaves — two pairs above and one leaf below. Additionally, Lol-lytogs’ sweater contains small appliques of acorns next to each leaf or pair of leaves, and while Knitwaves employs a puffy “polar fleece” material for its appliques, Lollytogs uses a more conventional, and thinner, felt. As to the Squirrel Cardigans, Lollytogs notes that although they share a similarly colored four-quadrant design, with squirrel and leaf appliques in the upper left and lower right quadrants, Lollytogs, unlike Knitwaves, has placed its squirrel below and its single leaf above. Furthermore, while Knitwaves’ sweater employs jacquard patterns of mushrooms and acorns in the remaining quadrants, Lollytogs employs a jacquard leaf pattern instead.

These differences in detail, while requiring considerable ink to describe, do little to lessen a viewer’s overwhelming impression that the two Lollytogs sweaters are appropriations of the Knitwaves sweaters. We note that much of this impression is conveyed by the sweaters’ bold, and almost identical, color schemes (the effect of which is entirely lost in the black-and-white reproductions append *1005 ed to this opinion). 5 See Novelty Textile Mills, 558 F.2d at 1095 (Mansfield, J., concurring and dissenting) (color should be considered in determining infringement); Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092, 1094 (2d Cir.1974) (same). To the average observer—or, more specifically, to the average consumer of these sweaters—the differences pale in comparison to the overwhelming impression of similarity.

Since we find Lollytogs’ Leaf and Squirrel sweaters substantially similar to Knitwaves’, we affirm the district court’s holding that Lollytogs’ Leaf and Squirrel sweaters violated the Copyright Act.

II. Knitwaves’ Lanharn Act Claim

Lollytogs advances two reasons why we should reverse the court’s finding that Lollytogs violated the Lanharn Act. It contends, first, that the trade dress of Knit-waves’ sweaters is not proteetible, and, second, that the district court erred in finding a likelihood of confusion between Knitwaves’ and Lollytogs’ sweaters. As discussed below, we agree that the sweaters’ trade dress is not proteetible, and so we vacate that part of the court’s order finding a Lanharn Act violation, without addressing the issue of likelihood of confusion.

While “trade dress” at one time “referred only to the manner in which a product was ‘dressed up’ to go to market with a label, package, display card, and similar packaging elements,” the concept “has taken on a more expansive meaning and includes the design and appearance of the product as well as that of the container and all elements making up the total visual image by which the product is presented to ctxstomers.” Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir.1995). Trade dress, thus, is “‘essentially [a product’s] total image and overall appearance.’ ” Id. (quoting Two Pesos, Inc., v. Taco Cabana, Inc., 505 U.S. 763, 764 n. 1, 112 S.Ct. 2753, 2755 n. 1, 120

L.Ed.2d 615 (1992)). See also Restatement (Third) of Unfair Competition § 16 & cmt. a (1995).

In contending that Knitwaves’ sweaters are not proteetible under the Lan-ham Act, Lollytogs relies primarily on what has been dubbed the “functionality” (or, more precisely in this case, the “aesthetic functionality”) defense. See Qualitex Co. v. Jacobson Prods. Co., — U.S. -, -, 115 S.Ct. 1300, 1306, 131 L.Ed.2d 248 (1995); Villeroy & Boch Keramische Werke K.G. v. THC Systems, Inc., 999 F.2d 619, 620-21 (2d Cir.1993); Coach Leatherware Co. v. Ann-Taylor, Inc., 933 F.2d 162, 171 (2d Cir.1991); Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 79-81 (2d Cir.1990), ce rt. denied, 499 U.S. 976, 111 S.Ct. 1622, 113 L.Ed.2d 720 (1991); Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 974-79 (2d Cir.1987); LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 78 (2d Cir.1985); Restatement (Third), supra, § 17 cmt. e. We have explained this doctrine and its relation to the other elements of a claim brought under section 43(a) of the Lanharn Act as follows:

An action for trade dress infringement under § 43(a) of the Lanharn Act may be maintained if the plaintiff is able to show either that its trade dress is inherently distinctive, or, if the trade dress is not inherently distinctive, that it has acquired secondary meaning—that is, the trade dress identifies the source of the product— and that there is a likelihood of confusion between the original trade dress and the trade dress of the allegedly infringing product. Despite this type of showing, a defendant may avoid liability under § 43(a) of the Lanharn Act if he or she is able to demonstrate that the allegedly similar trade dress feature is “functional.”

Villeroy, 999 F.2d at 620 (citations and internal quotations omitted).

*1006 The functionality doctrine, the Supreme Court has recently explained, “prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature.” Qualitex, — U.S. at -, 115 S.Ct. at 1304. Protection of functional product features is the province of patent law, not trademark law. Id. A product feature is functional “ ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,’ that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.” Id. (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 2187 n. 10, 72 L.Ed.2d 606 (1982)).

In Wallace, relying in part on the Draft Restatement (Third) of Unfair Competition, we held that the functionality doctrine may apply even to features of a product that are purely ornamental: “where an ornamental feature is claimed as a trademark and trademark protection would significantly hinder competition by limiting the range of adequate alternative designs, the aesthetic functionality doctrine denies such protection.” 916 F.2d at 81; see also Restatement (Third), supra, § 17 cmt. c (“A design is functional because of its aesthetic value only if it confers a significant benefit that cannot practically be duplicated by the use of alternative designs”).

Lollytogs contends that the designs on Knitwaves’ sweaters are functional in that their primary purpose is aesthetic — to enhance the sweaters’ ornamental appeal— rather than to identify the sweaters as Knit-waves products. See LeSportsac, 754 F.2d at 78 (design of sport bag is non-functional, and therefore protectible, trade dress if its principal function is to identify the bag’s maker rather than to make the bag aesthetically pleasing). By precluding Lollytogs from making sweaters with the basic “fall motifs” of squirrels and leaves, Lollytogs contends, Knitwaves would significantly restrict the nmnber of designs available for apparel manufacturers wishing to compete in the back-to-school clothing market, and would thus foreclose Lollytogs from competing effectively in that market.

We find persuasive Lollytogs’ contention that the primary purpose of Knitwaves’ designs is aesthetic, but we do not agree that protecting the designs would restrict Lolly-togs’ ability to compete. Since functionality is a defense to a suit for trade dress infringement, “the burden therefore falls on the defendant to prove functionality.” Id. at 76. Lollytogs has adduced no evidence whatsoever that the number of designs available for “fall motif’ sweaters is limited, and that consequently extension of trade dress protection to Knitwaves’ two sweater designs would restrict Lollytogs’ ability to produce alternative competitive designs. See Villeroy, 999 F.2d at 621 (defendant manufacturer of chinaware could not demonstrate that chinaware designs were in such short supply that it could not compete in the market for hotel china without copying plaintiffs design); cf. Wallace, 916 F.2d at 80 (plaintiffs baroque silverware design was functional, and thus not protectible, because effective competition in the silverware market required use of “essentially the same scrolls and flowers”).

Lollytogs argues too broadly. According trademark protection to Knitwaves’ designs would not preclude Lollytogs from using fall colors or motifs, squirrels or leaves. It would preclude only the use of designs so similar as to create a likelihood of confusion.

Lollytogs thus cannot meet the market foreclosure requirement of functionality. The arguments it raises under the rubric of functionality, however, support a related (and more successful) argument: since the primary purpose of Knitwaves’ sweater designs is aesthetic rather than source-identifying, Knitwaves’ sweater designs do not meet the first requirement of an action under § 43(a) of the Lanham Act — that they be used as a mark to identify or distinguish the source.

As noted above, to prevail in an action for trade dress infringement under § 43(a) of the Lanham Act, a plaintiff must prove