Leapers, Inc. v. SMTS, LLC
879 F.3d 731
| 6th Cir. | 2018Background
- Leapers, Inc. manufactures rifle scopes with a distinctive knurling (textured grip) pattern it claims functions as trade dress; it began use in 2002 and later contracted with a Chinese factory (Nantong WuYang).
- After Leapers ended the manufacturing relationship, a factory manager (Shi) formed Trarms, Inc., sold similar scopes, and allegedly supplied Sun Optics USA; Shi invoked the Fifth Amendment and Trarms refused to provide a witness.
- Leapers sued Sun Optics for trade dress infringement under the Lanham Act, alleging four specific knurling design elements together form protectable trade dress.
- Sun Optics moved for summary judgment arguing Leapers cannot prove nonfunctionality or secondary meaning; the district court granted summary judgment on nonfunctionality, concluding the grip/knurling is per se functional.
- The Sixth Circuit vacated and remanded, holding a triable issue exists on nonfunctionality (the asserted design may be purely ornamental) and declining to resolve secondary meaning pending possible further discovery.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Nonfunctionality of the specific knurling design | The particular knurling pattern is purely ornamental and does not add to functionality or cost/quality | Knurling (a grip) is inherently functional and plaintiff’s design is inseparable from grip function | Vacated summary judgment; disputed fact issues exist — jury could find the specific pattern nonfunctional |
| Effect of Shi/Trarms discovery refusal | Shi/Trarms testimony would show the copied design lacks functional benefit and support nonfunctionality | Shi’s testimony would be merely conclusory and irrelevant to nonfunctionality | Court held adverse inference may be appropriate; testimony from competitor is probative; discovery refusal does not justify summary judgment against Leapers |
| Secondary meaning (distinctiveness) | Leapers has evidence (use, advertising, copying) to create a triable issue of secondary meaning | Insufficient evidence to show consumers identify the pattern as source-identifying | Sixth Circuit declined to decide on the record and remanded for potential further discovery and a full secondary-meaning analysis |
| Scope of trade-dress inquiry (pattern vs. function of knurling generally) | Trade dress is the specific ornamental pattern embossed into knurling, not knurling in general | The court below treated knurling itself as functional, so the pattern cannot be protected | Court clarified nonfunctionality inquiry must focus on the claimed design (pattern), not knurling per se |
Key Cases Cited
- Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) (product-design trade dress requires nonfunctionality and distinctiveness)
- Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494 (6th Cir. 2013) (trade dress nonfunctionality and aesthetic-function analysis)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982) (functional feature defined as essential to use or affecting cost/quality)
- TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) (aesthetic functionality and competitive necessity doctrines)
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (color can be trade dress if nonfunctional)
- Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) (example of successful product-design trade dress based on narrow, nonfunctional elements)
- Baxter v. Palmigiano, 425 U.S. 308 (1976) (adverse inference from refusal to testify in civil context)