Yellowfin Yachts, Inc. v. Barker Boatworks, LLC
898 F.3d 1279
| 11th Cir. | 2018Background
- Yellowfin Yachts manufactures high-end center-console fishing boats with a distinctive "swept" sheer line and alleges that Kevin Barker, a former VP of sales, downloaded customer and design files when he left in 2014 and then founded Barker Boatworks to compete.
- Yellowfin sued Barker and Barker Boatworks in federal district court alleging Lanham Act trade dress infringement, Section 43(a) false designation, common-law unfair competition/trade dress, and violation of Florida’s Trade Secret Act (FUTSA).
- The district court granted summary judgment to Barker Boatworks, ruling Yellowfin’s trade dress claim failed (inadequate description, functionality, and no likelihood of confusion), related Lanham/common-law claims failed for lack of confusion, and FUTSA claims failed for lack of protected secrets and inadequate secrecy measures.
- On appeal, the Eleventh Circuit reviewed de novo and focused primarily on whether any reasonable jury could find a likelihood of confusion (including post-sale confusion).
- The court found Yellowfin’s evidence of trade dress strength weak (many similar sheer lines in the market), limited or equivocal evidence of actual post-sale confusion, and no evidence Barker intended to copy to cause confusion.
- As to FUTSA, the court affirmed dismissal: supplier identities/pricing lacked trade-secret qualities or economic value to a small rival, and Yellowfin failed to take reasonable measures to protect customer data (encouraged Barker to store data on personal devices and never required deletion).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trade dress likelihood of confusion (including post-sale) | Yellowfin: Barker’s sheer line closely replicates Yellowfin’s swept sheer, causing post-sale confusion and reputational harm | Barker: Many boats share sweeping sheer lines; logos and other differences prevent consumer confusion | No reasonable jury could find likelihood of confusion; summary judgment affirmed |
| Strength of trade dress | Yellowfin: Its sheer line is unique, recognized in press and by customers | Barker: Sweeping sheer lines are ubiquitous; Yellowfin’s evidence is weak | Trade dress strength weak; little probative evidence of distinctiveness |
| Defendant’s intent to cause confusion | Yellowfin: Barker copied Yellowfin styling and accessed files, notes referencing Yellowfin show intent | Barker: References are not intent to confuse; copying to compete is not intent to deceive | Evidence showed copying but not intent to confuse; intent factor did not create triable issue |
| Trade secrets — Source Information (supplier identities/pricing/contracts) | Yellowfin: Supplier identities, contracts, and terms are valuable and misappropriated | Barker: Supplier identities/prices are public/derivable; discounts depend on volume/relationships and were known to Barker from employment | Not a protectable trade secret or lacks independent economic value to a competitor; claim fails |
| Trade secrets — Customer Information | Yellowfin: Customer data (names, contacts, order specs) is compiled and valuable; Yellowfin limited access and password-protected system | Barker: Much information publicly available via vessel registration; Yellowfin encouraged Barker to copy data to personal devices and never required deletion | Yellowfin failed to take reasonable secrecy measures; Customer Information not protected under FUTSA |
Key Cases Cited
- Kason Indus., Inc. v. Component Hardware Grp., Inc., 120 F.3d 1199 (11th Cir. 1997) (Lanham Act trade dress framework)
- John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983) (trade dress definition and protectable features)
- AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986) (three-element trade dress test and likelihood-of-confusion factors)
- Fla. Int’l Univ. Bd. of Trustees v. Fla. Nat’l Univ., Inc., 830 F.3d 1242 (11th Cir. 2016) (weight of actual confusion and mark strength in likelihood analysis)
- Tana v. Dantanna’s, 611 F.3d 767 (11th Cir. 2010) (likelihood of confusion may be decided as a matter of law at summary judgment)
- United Techs. Corp. v. Mazer, 556 F.3d 1260 (11th Cir. 2009) (conversion principles for misappropriated information)