AMID, Inc. v. Medic Alert Foundation United States, Inc.
241 F. Supp. 3d 788
S.D. Tex.2017Background
- AMID and MedicAlert both sell medical-identification jewelry; AMID prints medical info on the jewelry, MedicAlert prints a toll-free number linking to subscriber records.
- Both companies distribute unsolicited mass-mailed countertop easel displays with tear-off order pads to doctors’ offices; AMID claims a stable "family look" trade dress in those mailers and a copyrighted transmittal letter.
- Former AMID marketing manager Justin Noland left AMID for MedicAlert; shortly after, MedicAlert resumed similar mass-mailings after a multi-year hiatus.
- AMID sued for trade-dress and copyright infringement and sought a preliminary injunction; MedicAlert moved to dismiss AMID’s common-law unfair-competition claim as preempted by the Texas Uniform Trade Secrets Act (TUTSA).
- After an evidentiary hearing, the court found AMID unlikely to prove protectable trade dress (not inherently distinctive, no secondary meaning, functional), found AMID likely to prove copyright copying but not irreparable harm, and held AMID’s common-law unfair-competition claim is not preempted by TUTSA.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trade-dress protectability under the Lanham Act | AMID: its countertop mailer/display and marketing scheme constitute protectable trade dress (inherently distinctive or with secondary meaning; nonfunctional) | MedicAlert: AMID’s claimed trade dress is variably defined, not inherently distinctive, lacks secondary meaning, and is functional | Court: AMID failed to show inherent distinctiveness or secondary meaning; claimed features are functional — no protectable trade dress; trade-dress claim fails |
| Trade-dress infringement / likelihood of confusion | AMID: MedicAlert’s displays are a "virtual carbon copy" of AMID’s materials and thus infringe | MedicAlert: differences + prior use/history and functional elements negate protection | Court: no need to reach infringement because trade dress not protectable |
| Copyright infringement of transmittal letter | AMID: MedicAlert copied AMID’s copyrighted letter enclosed with displays | MedicAlert: disputes copying/denies ongoing use | Court: AMID demonstrated ownership and copying (likelihood of success on merits) but MedicAlert ceased using the similar letter and AMID failed to show irreparable harm, so no injunction granted |
| TUTSA preemption of common-law unfair-competition claim | AMID: its unfair-competition claim is not premised solely on trade-secret misappropriation and may proceed | MedicAlert: TUTSA preempts common-law misappropriation-based tort claims | Court: TUTSA does not preempt because AMID pleaded a tort theory that could succeed without proving trade-secret status; motion to dismiss denied |
| Irreparable harm / preliminary injunction timing | AMID: immediate injunctive relief necessary to prevent harm from MedicAlert’s mailings and letter | MedicAlert: AMID delayed in asserting claims and MedicAlert changed letter; harm is not irreparable | Court: AMID’s delay and MedicAlert’s cessation of the infringing letter undercut irreparable-harm showing; preliminary injunction denied |
Key Cases Cited
- Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (holding trade dress can be inherently distinctive)
- Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (product design/ambiguous trade dress requires secondary meaning; err on side of caution)
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (color can be trademarked but requires secondary meaning)
- TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (functionality doctrine; utility patents are strong evidence of functionality)
- Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (trade-dress principles and likelihood-of-confusion analysis)
- Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (Fifth Circuit factors for secondary meaning and trade-dress analysis)
- Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., 783 F.3d 527 (secondary meaning requires association with a single source)
- Alcatel USA, Inc. v. DGI Technologies, Inc., 166 F.3d 772 (copyright infringement requires ownership plus copying)
- General Universal Systems, Inc. v. Lee, 379 F.3d 131 (substantial similarity/ordinary observer test for copyright)