Inwood Laboratories, Inc. v. Ives Laboratories, Inc.

PETITIONER: Inwood Laboratories, Inc.
RESPONDENT: Ives Laboratories, Inc.
LOCATION: Furnace Woods School

DOCKET NO.: 80-2182
DECIDED BY: Burger Court (1981-1986)
LOWER COURT: United States Court of Appeals for the Second Circuit

CITATION: 456 US 844 (1982)
ARGUED: Feb 22, 1982
DECIDED: Jun 01, 1982

ADVOCATES:
Jerrold J. Ganzfried - as amicus curiae
Milton A. Bass - on behalf of the Petitioners
Marie V. Driscoll - on behalf of the Respondent

Facts of the case

Question

Media for Inwood Laboratories, Inc. v. Ives Laboratories, Inc.

Audio Transcription for Oral Argument - February 22, 1982 in Inwood Laboratories, Inc. v. Ives Laboratories, Inc.

Warren E. Burger:

We will hear arguments next in Inwood Laboratories against Ives Laboratories and the consolidated case.

Mr. Bass, I think you may proceed whenever you're ready.

Milton A. Bass:

Mr. Chief Justice, and may it please the Court:

In this dispute between generic manufacturing companies and brand name companies, the generic manufacturers are seeking to get a larger share of the drug industry, of the drug market.

The brand name companies are seeking to retain or increase their dominant position in the prescription drug market.

It has been variously reported that they have approximately 90 percent of the prescription drug market at this time.

What the brand name companies are asking, what they're asking for the Court to give them is a monopoly on color.

They're asking this for a competitive advantage, and that's why we are here.

Both sides in this dispute claim they speak in the public interest.

We believe that our position weighs more heavily in the public interest than that of the brand name companies.

If the brand name companies are given a monopoly on color, I respectfully submit they will be able to use that advantage for unfair competition whether or not it is found by this Court that there is functionality present.

The question of whether there is functionality will depend upon the definition that this Court lays down.

But irrespective of whether there is a fact of functionality, even then I believe it will be used to the great advantage of the brand name companies and to the disadvantage of the generic companies for this reason.

The Respondent and the PMA, the association that represents the brand name companies, have submitted briefs to this Court, and they have said to this Court color serves no function other than to deceive the consumer.

They have said that to this Court in order to get the color monopoly they seek.

But when they speak outside of this Court, they do not say color has no purpose or no function.

On the contrary, we have found that one company, for example, issued a document to its salesmen for discussion with physicians to convince them that they should prescribe the brand name product and not the generic product.

And they said... they didn't say what they told the courts, color has no function; they said color has advantages.

If you change, some patients may become concerned that it's been changed.

They said particularly in the hospitals, if you change the color, if you don't keep prescribing the brand name product, you'll have problems with all personnel handling the medications.

Explanations alone will be time consuming.

They'll require additional checks.

Possible confusion and additional effort will result.

Now, that's--

Isn't there a statute involved in this case?

Milton A. Bass:

--A statute?

The Lanham Act?

Milton A. Bass:

Yes, Your Honor.

On that point, Mr. Bass, aren't we really concerned with whether there is a Section 32 of the Lanham Act violation?

Milton A. Bass:

Correct.