Ferrari S.P.A. Esercizio Fabriche Automobili E Corse v. Carl Roberts, D/B/A Roberts Motor Company

RYAN, Before KENNEDY and Circuit FEIKENS, Judges, and Senior District Judge.* RYAN, Judge. Circuit infringement This is a trademark action brought Act, pursuant to the Lanham seq. principal U.S.C. et issue § correctly whether district court con- plaintiff enjoyed cluded that Ferrari unreg- istered trademark in the exterior shape appearance of two of its automo- and, so, if biles whether defendant Roberts’ designs infringed of Ferrari’s 43(a) protection, in violation of section narrowly focused, the Lanham Act. More the issues are: designs —Whether Ferrari’s automobile acquired secondary meaning; have —Whether there is a likelihood of confu- sion between Ferrari’s cars and Rob- replicas; erts’ appropriated —Whether the features of nonfunctional; Ferrari’s injunction granted by —Whether excessively court is district broad. must also decide the district We whether court, F.Supp. properly rejected request jury for a trial. properly hold that the district court We and, therefore, decided all of issues we shall affirm.

I. The Facts III, Williams, designer and Ed E. Robert D. Van de Ferrari is the world famous Baker, Vuurst, racing automobiles and Worthington, Crossley, manufacturer of Tenn., Woolf, 1969 and Stansberry City, upscale sports & Johnson cars. Between (ar- 1973, Robin, produced Day- 365 GTB/4 Jonathan I. Blackman Ferrari Albert (briefed), intentionally limits gued), Lawrence B. Friedman tona. Because Ferrari Gottlieb, Hamilton, an Cleary, production & New of its cars in order to create Steen Daytonas City, plaintiff-appellee. image exclusivity, only York for * Feikens, Michigan, sitting by designation. Senior United The Honorable John Judge States District for Eastern District 43(a) ment, section these, origi- in violation of built; only 100 were

were Act, preliminary soft-top and obtained a Spyders, convert- Lanham nally built currently sell for Spyders enjoining Roberts from manufac- Daytona injunction ibles. Although Fer- injunction million dollars. was turing replica one to two cars. Spyders, Daytona longer makes no permit rari Roberts to recom- later amended continuously produced mechani- they have of the two models. production mence provided panels, and body parts cal later, Roberts filed a volun- Five months the cars. repair service bankruptcy. Despite the tary petition in a car called began producing Ferrari proceedings, bankruptcy Chapter 11 date, Ferrari has To in 1984. Testarossa order, court, carefully lifted the in a limited 5000 Testarossas. approximately produced stay permitted automatic is also intentional- these cars Production of prosecute this action. Prior to continue to exclusivity: the en- preserve ly limited to trial, re- the district court denied Roberts’ out for is sold anticipated production tire the case was tried to quest jury, for a waiting peri- years and the next several resulting in a verdict for Ferrari the court approxi- is a Testarossa purchase od injunction enjoining Rob- permanent and a sells A new Testarossa mately years. five Spyder producing the Miami erts from $230,000. approximately for Coupe. Miami of busi- engaged in a number is Roberts automobile related to the ness ventures II. is the manufac- industry. enterprise One 43(a) of the Lanham Act creates Section replicate fiberglass kits ture of in- action for trademark a civil cause of Daytona Spy- Ferrari’s features of exterior 43(a) part, fringement. In relevant section Roberts’ Testarossa automobiles. der and provides: Spyder and the called the Miami copies are who, in connection Any person on or The kit is a Coupe, respectively. Miami services, any any goods or or con- from rein- body molded one-piece shell any goods, for uses commerce tainer usually fiberglass. It is bolted onto forced device, word, term, name, symbol, or or undercarriage another automobile thereof, any false any or combination Pontiac or a such as a Chevrolet Corvette misleading designation origin, false or Fiero, car. Roberts mar- called the donor fact, misleading description of or false or primarily through Spyder keted the Miami fact, representation of which— magazines. Most of advertising in kit-car for confusion, were sold as kits about (1) or to likely to cause $8,500,although fully accessorized “turn- mistake, or to deceive as to the cause $50,- for about key” affiliation, connection, version was available association of or person, as person with another or such approval origin, sponsorship, or to the trial, yet Roberts had not At the time of services, goods, or com- his or her of the Miami completed a kit-car version per- activities another mercial Testarossa, replica Ferrari’s Coupe, the son .... already orders for although he has two Coupe the Miami originally them. He built program producers of the television by any liable a civil action shall be a stunt car in

“Miami Vice” to be used as that he or she is or person who believes Ferrari place expensive of the more Testa- damaged by such act. likely to be rossa. infringe protection against found, and it is not The district court 43(a) limit is not provided ment section disputed, that Ferrari’s automobiles and activi “goods, services or commercial ed to virtually identical in replicas are by registered trademarks. protected ties” appearance. circumstances, well, in certain It extends of an unregistered “trade dress” in to the brought against Roberts suit im- dress” refers to “the infringe- article. “Trade alleging trademark March 1988 1239 age appearance product.” overall article of merchandise when shown to a Group, Mktg. Mktg., Allied Inc. v. CDL prospective customer must prompt the (5th 806, Cir.1989). It affirmation, “That is the article I want arrangement identifying “that embodies source,” because I know its and not the characteristics or decorations connected negative inquiry as to “Who makes that product, by packaging with a whether words, article?” In other the article otherwise, intended to make the source of proclaim must its identification with its product distinguishable from another source, simply and not inquiry stimulate and to its sale.” promote Mr. Gasket Co. about it. Travis, App.2d Ohio n. West Mfg. Point v.Co. Detroit Stamping (1973). N.E.2d 912 n. 13 Co., (6th Cir.) (citation Ferrari’s Lanham Act claim in this case omitted), denied, cert. 350 U.S. is a charges, “trade dress” claim. Ferrari (1955). S.Ct. 100 L.Ed. 749 Arguably, found, and the district court secondary meaning in this case can be pre unique shape and distinctive exterior sumed from Roberts’ admissions that he Daytona Spyder and the Tes- intentionally copied Ferrari’s designs. protected tarossa are trade dress which Bumgardner, told Vivian an inves infringed by copying Roberts has them and tigator who recorded her conversations marketing replicas. his Roberts, put that “we body whole Roberts asserts that there been no has right on it just car, it looks and like a real I 43(a) infringement under section for a num- they mean by looking.... can’t tell We (1) ber of design reasons: the of Ferrari’s car, build and the reproduce sell same it.” protected vehicles are only design under copy intent to by was also shown Rob law, patent see 35 U.S.C. and not the § erts’ use of prancing the distinctive Ferrari Act; (2) Lanham there is no actionable logo horse parking lights on the front likelihood confusion between Ferrari’s Daytona the Spyder in advertising and bro vehicles and replicas point Roberts’ at the original chures. The sale; Coupe Miami (3) and bro functionality “aesthetic precludes copied chure even recovery. by doctrine” Ferrari name referring to the Roberts’ car as “Miami up argument We take shall each in turn. Testarossa.” The evidence of intentional copying strong secondary shows mean III. ing designs “[tjhere Ferrari because prove 43(a), To a violation of section logical is no precise reason for copying show, Ferrari’s burden is prepon save an attempt upon to realize a second derance of the evidence: ary meaning that is existence.” Audio 1) that trade dress of Ferrari’s ve- Fidelity, High Fidelity Recordings, Inc. v. acquired hicles has a “secondary mean- (9th Cir.1960). ing,” 2) there is that a likelihood of confusion Ferrari, however, rely need not aon similarity based on the of the exterior presumption secondary meaning because design and shape of Ferrari’s vehicles the evidence trial showed that the exteri- replicas, design enjoyed of Ferrari’s vehicles 3) appropriated that features of Fer- secondary meaning. strong Lawrence rari's trade dress primarily non- Crane, maga Art Director of Automobile functional. zine, shape testified that the of a Ferrari Corp. See Kwik-Site Mfg. Clear View (sic)” “says general populous Ferrari to the Co., Inc., (6th Cir.1985). instantly recogniz and that it’s so “because just portions able ... used even we’ve A. Ferraris, Testarossa, instance,

Secondary Meaning it, people recognize and our sales are Moore, acquire changed.” To secondary meaning Editor of William Kit minds of buying Illustrated, Roberts, an public, and a witness for Car shapes simply distinctively at- rior not replica manufacturers that car conceded “spe- creations. designs, because the tractive but as Ferrari copy Ferraris frequently creates with Ferrari image” associated cial agree with the district court that We also look like Ferraris. for cars which a market intentionally that he Roberts’ admission and Moore was testimony of Crane survey design, Ferrari’s evi- copied survey data which indicated supported by Ferrari, and the testi- dence introduced photo- survey respondents shown mony and Moore amount to abun- of Crane identify- cars without graphs of Ferrari’s design evidence that the exterior fea- dant pho- badges, properly identified ing 73% of the Ferrari vehicles are “trade tures Daytona Spyder as manufac- tograph of acquired secondary have dress” which identified the by Ferrari and tured 82% meaning. product. Such sur- as a Ferrari Testarossa evidence, intentional vey combined with argues strongly that sec widespread publicity sur- copying and the 43(a) provides infringe no tion trademark Ferraris, the court in a rounding convinced for the exterior ment brought by against separate action “automobile are to because partner enjoin him from Roberts’ former copying only pursuant from protected Daytona Spyder producing Ferrari, statute,” design patent Roberts, produced by to those identical case, period during the relevant to this had secondary vehicle has a the Ferrari Daytona Spyder protected the or the meaning: design patent. with a We dis Testarossa light of defendants’ close intentional agree. any copying, their failure to introduce consistently rejected Rob have Courts copying was evidence to show that such argument availability that the of de erts’ any purpose to associate them- for but precludes applicabili sign patent protection reputation and marketa- selves with products Act whose ty of the Lanham bility of the Ferrari DAYTONA SPY- acquired strong secondary trade dress have DER, large recognition of amount of meaning. harm results from Actionable design in contin- said with Ferrari shown copy or infringing design patent either magazine uous articles and books about secondary meaning. ing long after the the DAYTONA SPYDER v. & Radio Co. Va Clock Mastercrafters manufacture, the show- cessation of Coultre cheron & Constantin-Le ings of the Ferrari DAYTONA SPYDER (2d Cir.), 464, Watches, Inc., 466 221 F.2d shows, vintage highly publi- car 67, denied, 76 S.Ct. cert. 350 U.S. by cized sales of said car Ferrari custom- Fidelity, (1955). Audio L.Ed. 743 also See ers, recognition percentages and the of explained the court 283 F.2d at 555. As plaintiff’s both the and the defendants’ Motors, v. A & A Fiber Ltd. Rolls-Royce surveys, ... the court finds evidence F.Supp. 692-93 Inc., 428 glass, thorough convincing and that the Ferrari (N.D.Ga.1977): design DAYTONA SPYDER has plaintiffs’ strong secondary meaning. that the achieved a no doubt There is Lady are attrac- Flying and Classic Grill McBurnie, U.S.P.Q.2d S.P.A. such, they may be de- As objects. tive (S.D.Cal.1989). 1846-47 design patent copyright or serving of acquire Ferrari’s vehicles would not sec- to trade- Their entitlement protection. ondary meaning merely they because are however, depends not recognition, mark they unique designs or because are aesthet- appeal on their charac- eye but their on ically design beautiful. The must be one identifying the manufacturer teristic instantly that is identified in the mind of Rolls-Royce motor cars. design. the informed viewer as a Ferrari Likewise, appearance of a found, the distinctive agree, The district court and we shape, as evidenced at exterior unique design shape exterior Ferrari’s testimony of car surveys and the by or Ferrari vehicles are their “mark” “trade trial others, entitles Fer- distinguish magazine editors dress” which vehicles’ exte- protection. Act trade- tion to Lanham This conflicted with the federal policy rari protection unduly substantially does not extend the free in unpatented mark trade de- monopoly guaranteed by sign seventeen-year concepts. and utilitarian See Bonito Boats, 152-54, patent laws because the two sources of 489 U.S. at 109 S.Ct. at 978- totally separate: 79. protection rights, rights under the [TJrademark cases, however, These do not affect the competition, happen law of unfair which applicability of the Lanham Act in this beyond expiration

to continue First, case. in Compco express- Court patent, patent do not “extend” the ly noted that a defendant copy can at will if monopoly. They independently exist is “not design pat- entitled to a it, under different law and for different ent or other statutory protec- federal reasons. The termination of either has tion_” Compco, 376 U.S. at legal no effect on the continuance of the added). (emphasis Thus, S.Ct. at 782 Rob- other. copy erts cannot at will because “other Application Mogen Corp., federal statutory protection,” David Wine the Lanham 925, 930, (1964). Act, Second, applies. 328 F.2d 51 CCPA 1260 these cases involved completely only Patent and trademark law are preemption compe- of state unfair by law, distinct fields: tition patent law federal not the scope of federal trademark or unfair com- protection accorded the law of petition law. Because trademark law and competition trademark and unfair is patent concerns, law address different greater than that accorded the law of because of the narrow focus of the Su- patents because each directed at a preme inquiry Compco Court’s purpose. The protects different latter Sears, explicitly courts have held that which, activity inventive after a term of preclude these decisions do not Lanham years, public is dedicated to the domain. protection designs. Act Dallas Cow- protects activity former commercial Cheerleaders, boys Pussycat Inc. v. which, Cin- society, essentially pri- in our ema, Ltd., (2d Cir.1979); 604 F.2d vate. Motors, Rolls-Royce F.Supp. Equip. Corp., Truck Serv. Co. v. Fruehauf (8th Cir.), denied, Thus, cert. Lanham Act is available 861, 164, designs 429 U.S. 97 S.Ct. 50 L.Ed.2d might 139 to which have also been cov- (1976). by design long ered patents as as the de- signs acquired secondary meaning. have disagrees patent The dissent and Cheerleaders, Cowboys Dallas 604 F.2d at trademark law are distinct fields of law. 204-05; Serv., 536 F.2d Equip. Truck dissent, citing Boats, Bonito Inc. v. 1210; 925; David, F.2d Rolls- Mogen 328 Boats, Inc., 141, Thunder 489 U.S. Craft Royce, designs Ferrari’s F.Supp. 428 689. 971, (1989); 109 103 S.Ct. L.Ed.2d 118 secondary meaning clearly acquired have Compco Corp. Day-Brite v. Lighting, protection. thus were entitled 234, 779, 376 U.S. 84 S.Ct. 11 L.Ed.2d (1964); Sears, 669 Roebuck v. & Co. B. Co., 376 U.S. 11 S.Ct. Stiffel (1964), argues L.Ed.2d 661 that Ferrari’s of Confusion Likelihood designs protected are not unpat- because 1. goods may freely copied. ented In the Findings District Court’s in dissenting opinion, cases cited the the Supreme in Court examined state unfair com- has held that deter This court petition laws to determine in a Lanham mining whether federal of confusion likelihood patent preempted application. law their the case, Act court should consider the cases, state, strength plain all three the held that the following Court a factors: of through competition laws, mark; goods; its unfair the sim could tiff’s relatedness of marks; patent protection not extend of actual ilarity otherwise the evidence used; unprotected designs confusion; likely protec- marketing because such channels of the distinctive- care; in circumstantial evidence defendant’s purchaser degree of originals. mark; ness of the and likelihood selecting the tent product lines. Frisch’s of the expansion dispute the relatedness There is no about Restaurants, Big Boy, 670 Elby’s v. Inc. products produc- goods the factor. denied, Cir.), (6th cert. F.2d sports cars. parties are ed both L.Ed.2d 182 103 S.Ct. U.S. Likewise, similarity of the marks— the infringement (1982). claiming party A vehicles—is in- exterior of the most, these all, show or even need not survey evi- disputable. Ferrari offered prevail. Wynn Oil Co. in order to factors of the re- showed that dence which 68% (6th Thomas, Cir. distinguish photo- spondents could regard 1988). findings A district court’s replica, upon which graph of the McBurnie for clear er are reviewed ing each factor based, Spyder Miami from ror, of likeli the further determination but genuine Daytona Ferrari photograph of the on those factors is confusion based hood of photographs, In these the cars Spyder. reviewed de novo. legal conclusion identifying insignia. shown without were Restaurants, 670 F.2d at 651. Frisch’s identify- Drawings cars show for Roberts’ found, upon an The district court based parking lens ing insignia, an “R” on the factors, that eight Frisch evaluation of window, produced cars and vent but the similarity exterior of the of the include the “R”. the time of trial did not vehicles and the Roberts Ferrari survey respondents photo- saw Because the The court likely public. was to confuse cars, and because graphs of the McBurnie was offered noted that while no evidence re- identifying insignia were all of factors, actual evidence of on two moved, survey limited value has expansion likelihood of confusion and confusion be- showing the likelihood of others, lines, marketing product two if and Ferrari vehicles tween Roberts care, purchaser favored Rob- channels emblems. The displayed identifying remaining “radically and the factors erts however, that the trade survey, does show Summarized, the dis- Ferrari.” favor[ed] shapes designs, the dress of the two car findings “likeli- trict court’s on Frisch exteriors, An ex- quite similar. were confusion” factors are as follows: hood of the cars photographs amination Factors Favor striking are in evidence confirms which originals and similarity of the dress of Strength of the mark Ferrari 1. virtually indistin- replicas. They goods Ferrari 2. Relatedness of the guishable. Similarity 3. of the marks of actual confusion No evidence 4. Evidence his Finally, Roberts conceded Marketing channels used Roberts 6. Likely degree design of replicating the exterior purchaser intent care market a was to Ferrari’s vehicles selecting in 7. Roberts’ intent a Fer like possible as that looked as much “mark” Ferrari made no although Roberts original, rari expansion 8. Likelihood of product lines. No evidence his that claim to his customers “ party] intent Recalling [a that the claimed mark involved were Ferraris. '[The] is a critical shape adopting here is the in mark] trade dress—the exterior [another’s adopted with factor, mark was design since if the of the Ferrari vehicles—it is rep from the deriving strong. benefit very clear that Ferrari’s mark is the intent of that alone plaintiff,] strength of the mark is its utation of distinctive- [the fact designs unquestiona- justify may ness and Ferrari’s inference sufficient ” similarity.’ confusing survey evidence we bly distinctive. that there is (em Restaurants, F.2d at 648 discussed, testimony 670 as well as the Frisch’s have Corp. phasis (quoting Amstar shape plaintiff’s original) vehicles in that the of the Pizza, Inc., 263 Ferrari,” 615 F.2d of that distinc- v. “says is evidence Domino’s denied, 101 (5th Cir.), 449 U.S. Indeed, purposeful ef- cert. tiveness. (1980)); 129 see also strong 66 L.Ed.2d copy the Ferrari is S.Ct. fort to

1243 221 F.2d at 467. This is casual Mastercrafters, observers. The evidence is clear cases, one, in as especially purchasers true such this that Roberts assured rep- of his comparatively defendant sold a where the they purchasing licas that were not Ferrar- expensive, exclusive cheap imitation of an is and that his customers were not con- ex- As the court in Rolex Watch item. fused about they what buying. were plained: argues Roberts also that actionable con- watches, only bogus one By selling the may fusion not be inferred from intentional the Defendants may be drawn: inference copying when the copying intentional in- derive benefit from the Plain- intended to design product volves the of a opposed reputation. This inference is no tiffs trademark, copying to the trade name weighed against reasonable when less course, Implicit, or trade dress. is Rob- in selling the Defendants’ assertion that argument erts’ related that the exterior watches, they these did not fail to inform shape design not, of the Ferrari cars is recipients they that were counter- be, and cannot a trademark or trade dress. feits. disagree We with these contentions. Watch, U.S.A., Canner, Rolex Inc. v. (S.D.Fla.1986). F.Supp. Intention- a. however, copying, al is not actionable un- Confusion as to Source Lanham evidence that der the Act “absent copying was done with the intent to that, Roberts is correct for the reputation derive a benefit from part, products most similarity of alone is Corp. Plumbing another.” Zin-Plas actionable; there must also be confu Co., Quality F.Supp. AGF origin product. sion as to the West (W.D.Mich.1985). copying by “Where the 589; Mfg., Point F.2d at see also Fish product party one of another’s is not done Stoves, Works, Nighter er Inc. v. All Stove purchasers to deceive and thus derive a Cir.1980). (1st il Sim reputa- name benefit from another’s however, arity products, does become tion, but rather to avail oneself of a similarity actionable when the to con leads desirable, which attractive case of public fusion as to source and the cares competition unfair is not made out.” West product who the source of is. case, Mfg., Point F.2d at 586. [Ojne guilty who claims that another is design enjoyed strong where Ferrari’s sec- competition copying prod- of unfair his ondary meaning and admitted uct, consuming pub- must show that the Ferrari’s, designed he his cars to look like primarily producer, lic is concerned in the copy the intent to was clear. itself; product rather than ... We conclude that aside from the only obligation copier identify is to presumption of likelihood confusion that public lest the be mistaken copying, follows from intentional believing into that it was made produced strong public evidence that the prior patentee. likely similarity be confused Thus, Mfg., 222 F.2d at 589. West Point the exterior of Ferrari’s vehicles Mfg., Point there was no unfair com- West replicas. and Roberts’ petition plaintiff where the had not shown public produced cared who clamp; secondary meaning had attached no Objections Point, plaintiff’s clamp. to the West how- ever, similarity ap- not hold that of does disagrees legal signifi- Roberts the with fact, pearance may never state a claim. In findings cance of the district court’s of recognized explicitly the court West Point argues likelihood of confusion. He that for that a different case would exist where Act, purposes requisite of the Lanham the strong secondary meaning: there is likelihood of confusion must be confusion point purchaser Appellee at the F. of confusion— cites Wesson v. [286 sale— Galef (D.C.N.Y.1922) sustaining nonpurehasing, and not the confusion of as its ] however, than to do more was intended the copying of the exact contention point the of sale. in consumers at clamp protect resulted appellee’s of

features in Lanham Act was enacted is distin- the That case When competition. unfair of limited to the use There, plain- protection of was the ensemble its guishable. Wesson, “likely or mis- revolver, had to cause confusion & marks a Smith tiff's purchasers the manu- to deceive as to product of or mean the take come to services.” origin goods an old and well- of of such or plaintiff, source facture in fact, products 1967, Congress language few deleted this firm. In In known known than to in- the Act’s have been better broadened past and Wesson, the Colt along “likely with to cause the use of marks & Smith clude Thus, of their mention The mere deceive.” revolver. or mistake or to confusion inflamed the has regulate in former times commerce Congress names intended “to dreaming of deeds youths imagination by making actionable within control] [its guns have been these derring-do; and deceptive misleading use of marks soldiers, sports- generations commerce; to protect known to ... in such [and] officers, as to men, as well police against engaged in such commerce persons re- & Wesson The Smith quarry. their competition_” 15 U.S.C. unfair § features which many peculiar out, had volver points the dissent Con- Although, as public as the it known to the had made rejected provision an anti-dilution gress of those manufacturer Act, product amending recently the Lanham when instance, barrel, was guns. The this to amend or delete it made no effort end, was frame which squared at the protecting confusion language clearly copied, as well unnecessary. This was in The court Rolex goods in commerce. to stopA on the left profile. peculiar recognized this concern explicitly Watch swung out when it was hold the chamber regulating commerce: shape. exactly imitated position was this question before Court The real characteristics well-known Other placed alleged infringer has whether these copied. In view of gun were also “likely that is to commerce product circumstances, court found that mistake, confusion, or or to cause cause sell the the imitation was to purpose of imme- The fact that an deceive.” ... In revolver. copy as a Smith & Wesson buyer counterfeit watch $25 diate case, there is no evidence to the instant any that it is entertain notions does not any findings. such support analy- place in this thing has no the real Point, Id. at 597. contrast West injected into com- Once a sis. features copied the nonfunctional Roberts confusion, merce, mis- there is no bar to secondary having great mean- of an item fu- take, deception occurring at some ing. point in time. ture they are care that Because consumers (em- Watch, F.Supp. at 492-93 Rolex a car opposed to purchasing a Ferrari as court original). The Rolex Watch phasis Ferrari, Rob- and because that looks like a neces- interpretation was noted that Ferraris, Ferrari like erts’ look against cheapening sary protect to confu- claim as presented an actionable pro- product, and to genuine dilution of source. sion of reputation. Id. at tect the manufacturer’s 221 F.2d at 495; Mastercrafters, also see b. explained: court 466. As the Point of Sale Confusion at counterfeits, examining Individuals Rolex genuine believing them to be replicas do argues that his watches, unim- might find themselves he Act because the Lanham not violate quality of the item signifi pressed with purchasers that his informed his inhibited from consequently be genu purchas- kits were not cantly cheaper cars and see Others who piece. real time ing the there was no confu ine Ferraris and thus trade- Act, bearing the Rolex the watches point sale. The Lanham sion at the of might Congress protect intended many find Since to on so wrists marks reputation acquiring a of the manufacturer as well as discouraged from themselves protect purchasers, protection the Act’s the items have become genuine because point is not limited to confusion at the of possess place longer and no too common reputation sale. Because Ferrari’s in the them. once associated with prestige damaged by marketing field could be of Watch, 495; F.Supp. at also see Rolex replicas, the district court did not 221 F.2d at 466. Such is Mastercrafters, permitting recovery despite err in the ab- As damage which could occur here. point sence of confusion. sale deciding explained court when the district partner’s Ferrari former whether Roberts’ with Ferrari’s replicas would be confused Product Confusion cars: argues the exterior reputa- gained Ferrari has a well-earned design features of the Ferrari vehicles are uniquely designed auto- making tion for protection Act not entitled to Lanham be rarity. The DAY- quality and mobiles only packages products cause in which are design is well-known TONA SPYDER marketed, themselves, products not are among public and exclusive- the relevant protected many covered as trade dress. ly positively associated with Ferrari. cases, policy fulfilling consumer de hun- country populated If the dress, including mand mandates that trade dreds, thousands, if not labeling, products, packaging and but not cars, distinct, rare, unique vintage protected from imitation: obviously they longer unique. are no prevent appellee person seeing Appellant if one of these could not Even record, in a replicas driving using down the road is not from railroad sounds confused, prevent duplication Ferrari’s exclusive association but should be able to adopted primarily of dress with this has been diluted and of a “form ... replica Daytona purposes looks for of identification and individ- eroded. If the disrepair, reputation uality,” and “unrelated to basic consum- cheap or Ferrari's prod- rarity quality be dam- er demands in connection with the could ..., distinguished con- aged. uct” from basic ... preferences, sumer demands or or atten- Ferrari, U.S.P.Q.2d at 1848. The dis- rather than tion directed to the container argues requires sent that the Lanham Act product to the itself. point proof of confusion at the of sale relatively is a label or ornament “[T]he eight factor test used to deter- because affair, would small and incidental which on the mine likelihood of confusion focuses all, not at or at least would not exist purchaser, public. of the not the confusion intent to shape exist in that but for the The dissent submits that three of deceive; the instrument sold whereas used, factors, marketing likely channels de- is, least, partly made as it at because sophistication, gree purchaser care and of the supposed or established desire confusion, specifical- and evidence of actual in that form.” public for instruments However, ly purchasers. relate evidence (cita- pur- Fidelity, 283 F.2d 556-57 is not limited to Audio actual confusion case, omitted). where the In this survey evidence in this case tions chasers. is a shape of the car public, exterior showed that members of the but not adopted for primarily necessarily purchasers, actually con- “form of dress ... were and individuali- purposes of identification similarity products. of the fused cars factors, competition of Moreover, strength ty,” interest in free the other five by protecting mark, impeded goods, of the sim- would relatedness fortified marks, product We are ilarity intent in itself. defendant’s large of cases mark, by the number prod- conclusion selecting the and likelihood of extending trademark expansion, uct not limit the likelihood of do (Fer- Ferrari, U.S.P.Q.2d 1843 designs. purchasers. confusion test to 1246 design);

rari see also Vuitton Et Fils The district court S.A. found that Fer Inc., Young Enterprises, proved, by preponderance rari a v. J. 644 F.2d of the evi dence, 769, (9th Cir.1981) shapes that the exterior (purse design); and fea Dal of the Cheerleaders, Daytona Spyder tures and Testaros Cowboys las 604 F.2d 200 sa were nonfunctional. The court based (configuration pattern of color on uni this conclusion on the uncontroverted testi form); Serv., Equip. 536 F.2d 1210 Truck Bellei, mony Angelo developed who Fer truck); (trapezoidal shape of semi-trailer grand 1964-75, touring rari’s cars from Co., Pagliero 198 F.2d v. Wallace China company chose the exterior de Cir.1952) (9th (china patterns); Rolex signs distinctiveness, for beauty and Watch, (Rolex F.Supp. 484 watch de utility. disagrees that Ferrari es Zin-Plas, sign); F.Supp. (shape at 419 nonfunctionality tablished because he be heads). spouts of tub and shower designs lieves that the are excluded from protected, Even if a cannot be protection by the functionality “aesthetic asserting Ferrari is correct that its exte doctrine.” qualify riors as a trade dress. As the court functionality The aesthetic test was de- explained replication involving case veloped by the Ninth in Pagliero, Circuit expensive patterns, product’s silver “A Pagliero, 198 F.2d 339. In the court found ordinarily trade pack dress consists of its that the copying plain- defendant’s of the However, aging. design given prod designs tiff’s for hotel china was not ac- may uct its manufacturer also serve to designs tionable because the were function- distinguish products it from the of other important ingredient al as “an in the com- protectible manufacturers and hence be mercial product” opposed success of the Silversmiths, trade dress.” Wallace Int’l embellishment, arbitrary to “a mere a form Godinger Co., Inc. v. Silver Art 916 F.2d goods primarily adopted of dress for the — 76, (2d Cir.1990), denied, 78-79 cert. purposes of identification and individu- U.S. -, 1622, 111 S.Ct. 113 L.Ed.2d 720 and, hence, ality unrelated to basic consum- (1991). case, In this design the exterior er demands in prod- connection with the “packaging” that is the distinctiveness uct_” Id. at 343. As the court ex- of a Ferrari automobile. The evidence is plained: labeling; Ferraris need no shape selling the essential features of [O]ne of the “says vehicles Ferrari.” china, if, indeed, hotel primary, not the design. eye- The attractiveness and appeal C. sells the china. Moreover, standpoint from the Nonfunctionality Appropriated Features purchaser china satisfies a demand for the aesthetic as well as for the utilitari Trademark protect law does not an, is, and the on china at least products functional features of because part, response to such demand. The such provide would perpetual granting type of relief in this of situation monopoly of features which could not be would render Wallace immune from the patented. Corp. Indus., Keene v. Paraflex competition most direct and effective (3d Cir.1981). A regard to these lines of china. product feature is functional “if it is essen Id. at 343-44. tial to the use purpose of the article or if it affects quality the cost or of the article.” scope broad aesthetic functionali- Laboratories, Inwood Inc. v. Ives Labora ty Pagliero defined in has been subse- tories, Inc., 456 U.S. 850 n. 102 quently Relating criticized and limited. S.Ct. 2187 n. 72 L.Ed.2d 606 functionality desirability to the commercial (1982). Functionality is a factual determi regardless of the feature of its utilitarian nation only reviewed for clear error. LeS discourages development function portsac, Corp., Inc. v. K Mart appealing designs because such (2d Cir.1985). protection. would be entitled to less Keene 825; tarian function which had see also Wallace achieved second- F.2d at Corp., Moreover, Silversmiths, ary meaning. 916 F.2d 76. Id. The court noted that Int’l ingredient” formula “important this view already acceptance had received Pagliero’s “[tjrade dress rejected because in holding has been cases that distinctive features has accumu- product a that with used for associated pro- identification were entitled to always ‘an will almost ... goodwill lated tection only where such features were inci- ‘saleability’ in the of ingredient’ important dentally functional. Cowboys Dallas 754 F.2d at 77. LeSportsac, product.” Cheerleaders, the 204; 604 F.2d Applica- concerns, of these part because In Ltd., tion Penthouse Int’l 565 F.2d of rejected itself later the view Ninth Circuit (C.C.P.A.1977); Serv., Equip. Truck product con- “any feature of a which that 536 F.2d at 1218. The Ninth Circuit also appeal to the consumer and salea- tributes accept seemed to this formulation as a le- is, law, of bility product as matter of Vuitton, gitimate reading Pagliero. In product.” of that a functional element designs Paglie- the court noted that the in Vuitton, at 773. adopted were ro because of their aesthetic only features and after extensive advertis- have im own circuit seems to Our ing later became associated with the manu- aesthetic func plicitly rejected Pagliero’s Vuitton, facturer. 644 F.2d at 773. That WSM, In Inc. v. Tennessee tionality test. greatly situation differs from this case (6th Cir.1983), Co., 709 F.2d 1084 Sales designs which the Ferrari for were selected defendant, copied plaintiff’s amuse who their distinctiveness. T-shirts, argued that park ment souvenir design protected of its was not because Scope Injunction D. functionality. rejected The court aesthetic argument: this agree Because we the district in- its use of the

TS’ assertion court that Ferrari met its of estab burden “functional,” i.e., design Act, is “orna- volved lishing a violation of the Lanham we “decorative,” unavail- mental” or grant injunctive affirm its relief. The per- an item serves or ing_ That enjoined court Roberts from district mean, function does not how- forms a selling, manufacturing, or or distribut ever, may at the same time be that it not manner, aiding ing, any enabling or or indicating sponsorship or capable of ori- manufacture, sell, or to or to others to gin aspects where of the item are non- Spyder and the Mia distribute Miami Cowboys functional. Dallas Cheerlead- thereof, includ Coupe mi and all versions ers, court The district 200]. [604 ing not limited to their exterior but mark to indi- found that WSM’s served features, shapes designs any “ornamen- cate source addition determined to violate which have been might it also serve. No tal” function (Ferrari) plaintiff’s right protection upsetting finding. basis exists respect to under the Lanham Act with Thus, (Daytona Spyder) and precedent in 365 GTB/4 at 1087. Id. Testarossa. suggests functionality that aesthetic circuit finding preclude not of nonfunction- will argues injunction that the The dissent ality where the also indicates enjoins it the manufac- too broad because source. vehicles. ture “all versions” that it disagree. injunction states emphasize circuits also identifica- We Other limiting enjoins the manufacture of “the Pagliero. tion of source in to violate suggested which have Corp., the Third Circuit ... been determined Keene (Ferrari) un- plaintiff’s right inquiry should focus on the ex- that “the respect to the Lanham feature is related der the Act” with tent to which Thus, Daytona Spyder the Testarossa. utilitarian function of the to the manufacture enjoined court Corp., 653 F.2d at 825. the district feature.” Keene subject were Thus, protect designs of the two vehicles which trademark law would it found it and which product’s utili- of the suit before significantly related to not Ferrari to bankruptcy permitted court The dissent Lanham Act. violative of the relief, only equitable Roberts was enjoining the manufacture seek argues that also proper jury relief trial. is not the entitled to a the vehicles could be of confusion where likelihood court, labeling. This by proper'

remedied IV. however, by Judge opinion then Stew- in an reasons, foregoing judgment For the art, stated: district court is AFFIRMED. consistently held that has This court complained competition when the unfair KENNEDY, dissenting. Judge, Circuit product in con- marketing of a of is the deceptively similar to labels tainers or majori respectfully I dissent because the or labels containers the first comer’s protect consum ty opinion does more than secondary mean- a acquired which have against a likelihood of confusion as to ers liability avoid competitor cannot ing, the goods; protects it the source the source of name. by affixing his own merely Ferrari, goods, against plaintiff’s Co., Date Variety v. Nut & Tas-T-Nut Co. copying replication even if the of its (6th Cir.1957). Therefore, we adequate labelling accompanied by so as relief, injunctive find- grant affirm prevent confusion. I believe to consumer appropriate remedy for the ing that it is an majority two errors in reach commits violations. Lanham Act ing majority The first miscon this result. scope protection by afforded strues the E. by misapplying Lanham Act the “likeli Jury Trial reading hood of confusion” test and an provision language into the anti-dilution complaint, answer to Ferrari’s his 43(a). majority then affirms an section requested jury trial. The initial injunction that is overbroad. The order, however, the case for pretrial set remedy provides of these errors is a that objec- no jury trial without a and there was protection per defendant with absolute pretrial by At the time the tion Roberts. petuity against copying unpatented de entered, repre- order was Roberts was sign. remedy contrary This to the lan by current coun- sented counsel. Roberts’ guage purpose of the Lanham Act and sel, who discovered the error three months Supreme precedent. runs afoul of Court later, jury immediately moved for a trial. Boats, Thunder Bonito Inc. v. denied the motion on the The district court Craft Boats, Inc., 141, 109 489 U.S. S.Ct. ground prior that Roberts had waived his (1989); Compco Corp. Day- L.Ed.2d 118 v. failing timely object. The demand Inc., 376 84 S.Ct. Lighting, Brite U.S. jury. heard case was without (1964); Sears, 779, 11 L.Ed.2d 669 Roebuck relying upon the waiver Without Co., 225, 84 S.Ct. & v. 376 U.S. Co. Stiffel conclude, grounds, theory, we on other (1964). 11 L.Ed.2d 661 jury trial. Roberts was not entitled to complaint requested only eq Ferrari’s 43(a) I. and Trade Section relief; injunction disgorge uitable an Dress Protection Moreover, profits. bankruptcy ment of majority appropriate test lifting stay court’s order the automatic invokes the permitting prosecute determine whether is avail- Ferrari to continue to equitable unregistered pursu- this action limited Ferrari to re able for an trademark 43(a) Act. by providing “may ant to section of the Lanham lief contin Co., prosecute Infringement Corp. Mfg. ue to the Ferrari Kwik-Site Clear View (6th Cir.1985) (secondary against Action Mr. Roberts the U.S. Dis 758 F.2d confusion; meaning; and non- trict for the Eastern District of Ten likelihood of Court dress). While I equitable functionality for the relief that Ferrari of trade nessee therein, acquired any compensa agree designs have seeks not to include that Ferrari’s primarily non- tory punitive damages....” secondary meaning and are Because functional, disagree majority’s persons with the sion—is determined the kinds of I degree application of the likeli- confused and of confusion. “Short- construction their conclusion lived confusion or confusion of confusion test and individuals hood of casually against acquainted dilu- with a protects Act business is wor that the Lanham thy weight....” goods. little of a manufacturer’s Homeowners tion Group, Inc. v. Home Marketing Special applies eight-factor an test This Circuit ists, Inc., 1100, 1110(6th Cir.1991) 931 F.2d consumers whether relevant to determine (quoting Stores, Safeway Safeway Inc. v. marketplace will confuse one item in the Discount Drugs, Restaurants, another item. Frisch’s (11th Cir.1982)). Two other factors obvi Inc., 670 F.2d 642 Elby’s Big Boy, Inc. v. ously potential refer purchasers: denied, (6th Cir.), cert. 459 U.S. marketing likely channels used and the de (1982). 231, The ma 74 L.Ed.2d 182 S.Ct. gree purchaser of sophistication. care and purpose this jority correctly points out one Thus, eight three expressly of the factors designed accomplish: “Where test is not to focus on the likelihood of confusion as to prod copying by party of another’s the one potential purchasers. and purchasers not to uct is done deceive name Other courts have made clear thus derive a benefit from another’s that sec- 43(a) tion reputation, rather to avail oneself is concerned with the welfare but of potential purchasers desir in marketplace. which is attractive and the Kwik-Site, able, competition (referring is not a case of unfair See 758 F.2d 178 “intending purchasers” discussing Detroit to Mfg. made out.” Point v. when West 581, (6th Cir.) Co., confusion); 222 F.2d 586 likelihood of Stamping see also Coach added), denied, Inc., (emphasis AnnTaylor, 350 U.S. Leatherware Co. v. cert. 933 80, 100 (1955). 162, (2d Cir.1991) (stating This F.2d 76 S.Ct. L.Ed. 749 168 that plaintiff prove “purchasers the is must passage properly notes that statute that are copier attempts “palm likely imitating goods triggered when a to to confuse the with Point, replica original. originals”); an In other the off” his as West F.2d at words, by (referring “purchasers exercising afforded Lan- to the the or- primarily potential purchas dinary products ham Act is to care to discover whose protection accruing producer they buying....” (quoting Reynolds The ers. & (10th Norick, only is derivative of and incidental v. 114 F.2d 278 Reynolds Co. Cir.1940))). primary protection: producer can market goods his with the assurance that another likely are not to con- Plaintiff’s may replica not market a in a manner that potential purchasers. Plaintiff’s ve- fuse potential purchasers will allow to associate display parking an “R” on the lenses hicles replica producer origi the the with of the symbols logos and vent windows. No Unfortunately, majority merely nal. the displayed. with Ferrari are Rob- affiliated

pays lip service this fundamental tenet purchasers product all that his erts informs application eight-factor in its test. light In of not affiliated with Ferrari. distinctions, majority clearly high degree the of never defines the these target group likely sophistication that nor- that is to be confused. customer care Although mally accompanies purchase such a pur- West Point counsels that —defen- deceived, minimum majority chasers must the at issue sell for a be con- dant’s vehicles $230,000, target group distinctly differ- “pub- cludes that the is the as well as the marketing employed by the majority lic.” The errs to the extent ent channels that analysis potential purchas- parties, shifts from I find the evidence insufficient to its potential group prove ers to the broader more indefinite a likelihood confusion “public.” marketplace. purchasers the the sure, expanded have eight-factor contemplates test that To be some courts target the likelihood of confu- group comprised potential application than purchasers. example, importance include individuals other For sion test to These courts point-of-sale purchasers. of one of actual confu- factor—evidence Inc., 271 Sterling Drug, v.Co. who Pharmacal potential purchasers included have (2d Cir.1959), denied, 362 future, cert. F.2d 569 in the purchase contemplate may 4 L.Ed.2d 739 80 S.Ct. context an U.S. pre-sale reasoning that (1960)). was introduced evidence No identify [product] would “observer confusion, actual to show manufacturer], [origi instant case [original and, to deceive palming or an intent suf off reputation would manufacturer]^ nal noted, any plaintiff does not use previously to be appeared [product] if the damage fer its with Ferrari on Fashions, logo name or affiliated v. Inc. Polo poor quality.” (4th replicas. Cir. Craftex, Radio 1987); Clock & see Further, Mastercrafters cases conclude that these Coultre Constantin-Le & Co. Vacheron remedy require is to identification proper Cir.), (2d cert. Watches, Inc., 221 F.2d 464 replica, prohibit source 100 L.Ed. denied, 76 S.Ct. 350 U.S. Point, product. copying of the See West U.S.A., Watch, Inc. v. (1955); Role v. such (stating that under at 589 (S.D.Fla.1986). Canner, F.Supp. 484 only obligation of the “the circumstances lest the manner, copier identify is to in this these the test applying believing it into decep- public mistaken recognize appear to courts prior patentee”); see also was made circum- under these of a consumer tion (Win- Leatherware, F.2d at 173 Coach such a consumer could dissuade stances ter, J., (stating dissenting part) that product, buy particular “[a a choosing to from copy every right to copier] thus has possibility point- foreclosing [a the thereby they long product] so as consumers know injuring but nevertheless confusion of-sale copied product]”). Accord- buying are confusion. The on this [the the consumer based plain- if I were to conclude that ingly, even consumer’s errone- from the injury stems pre- copies confusion the product tiff’s created “original” the that conclusion ous context, remedy to I would tailor the of a sale perception on his quality based poor is confusion; this only against such original. protect he thinks is the replica that through ade- accomplished would best be protect potential purchaser a cases These remedy majority’s quate labelling. The the source of a against confusion as to Hence, beyond protection of consumers goes ex- well product. even when particular product’s source. test, against as to a this these courts confusion panding scope the being design itself from protects the sight of the focus of section It not lose did copied. supra at 1239. 43(a): purchaser. majori- The See potential the test in ty applies the likelihood of confusion eight- the sum, focus of In the relevant departs from this focus. a manner which pur- upon potential be factor should test rep- Plaintiff’s marketplace. expanded scope the in the cases which have chasers The of confusion be- likelihood target group distinguishable present no of the licas adequate labelling case, Rolex, plaintiff provides In the instant however. cause from purchasers, potential prevent watches were labelled to the counterfeit “RO- so as point-of-sale con- or Similarly, pre-sale the the LEX” their face. Master- whether in on Fer- confusing replicas with text, its found that clock court the was from crafters majority by The errs likely in a manner that was not to rari’s labelled automobiles. the target group to include expanding of an It the to the attention individual. is come by the unsupported expansion noteworthy “public,” that the Circuit Second has an also Lanham Act. purpose of the “by pointing language out limited Mastercrafters expands the majority the there that case was abundant To the extent that ‘[i]n increasingly protects confusion, the test palming group, target of actual off evidence ” produc- replication and the design from Corp. to deceive.’ an intent Bose dilution, potential than the Labs, Inc., rather from Design er Linear (2d Cir.1972) from confusion.1 (quoting purchaser n. 8 Norwich assessing Generally, fatally survey upon by "[i]n flawed. 1. I also note that relied confusion, is ‘the a court's concern majority prove a likelihood confusion likelihood to implicitly poor quality than ducer will not have the does more majority The of action its a dilution cause recognize replica imputed to its a con test; it eight-factor misapplication potential purchaser. only fused This is the cause of action into expressly reads such a accruing producer. benefit Trademark interpretation, justify To this the statute. dilution cause action under the Congress delet- majority points out that Act. Eveready Battery Lanham See v.Co. “purchasers” from the statu- ed the word Co., Adolph F.Supp. Coors According to the language in 1967. tory (N.D.Ill.1991). congressional act demon- majority, protect Congress reasoning, intended “to majority strates that Based on this against cheapening and dilution injunction goes beyond enforces an far protect the manu- genuine product, and to protection granted by the Lanham Act. reputation.” I fail to see how facturer’s Among things, injunction prohib- other congressional act leads to such this one plaintiff “manufacturing, its from or sell- conclusion. ing, distributing Spyder ... the Miami matter, meth- majority’s initial As an Coupe and the Miami and all versions compel it to reach a reasoning should od including thereof, but not limited to their ” 1989, Congress conclusion. different (Em- shapes exterior and features adding rejected specifically considered added). phasis injunction prohibits provision the Lanham an anti-dilution copying design, of defendant’s rather than asserted, action, it can dem- Act.2 This tailoring to address the statu- Congress now con- onstrates that does not tory danger pur- potential —confusion protection of the Lanham Act to sider the product. chasers as to the source of a encompass injuries to a manufacturer appropriate remedy prohibit is not majority dilution. The cannot based on article, particular copying of a but to re- Congress to its look to one action of bolster quire adequate identification. The lan- ignore which position, but other actions prohibits guage injunction of the defendant position. undercut its selling from a car with the importantly, language of the More the Spyder Coupe regardless Miami Miami or protec- Lanham Act does not afford such adequately prod- of whether he labels his in producers goods. tion to As noted the example, plaintiff uct. would violate For section, protec- Lanham Act’s previous injunction produce if he to a car were tion runs to relevant consumers in the mar- a identical to one of Ferrari’s with ketplace; protection producers to is inci- its each designs, and which had inscribed on primary Requir- protection. dental to this letters, “Made ing adequate labelling pro- door and in ensures that the hood block manner, performance be made of of the marks in the commercial this no assessment could the likelihood of in the “commercial Group, v. confusion context.”’ Homeowners Inc. Home 1100, plaintiff's are not Inc., cars context.” Purchasers of Marketing Specialists, F.2d 1106 Accordingly, purchasing photographs. Restaurants, from (6th Cir.1991) (quoting Inc. Frisch’s survey meaningless the likelihood of as to 1261, (6th Shoney’s, Cir. confusion. 1985)). impression "It is the overall feature, mark, not an individual that counts.” the Lanham The most recent amendment 2. case, Applied Id. at 1109. to the instant 1988, Act, Act of the Trademark Law Revision analysis means that the must be based on the (1988) (effec- 100-667, Stat. 3935 Pub.L. No. products they appear marketplace. as in the 16, 1989), originally in introduced tive Nov. question con The ultimate is "whether relevant permitted separate Congress, both houses of likely products sumers are to believe that the or dilution, disparagement and causes of action parties are affiliated in services offered provisions were delet- these tarnishment. All of way.” some Id. at 1107. eventually was legislation which ed from the survey any probative 3, 1988), (Oct. The lacks value on the Rep. 100-1028 enacted. House Ass’n, issue of consumer confusion because of the reprinted Trademark States in United 1988, survey Leg- manner in which it was conducted. The Act of Revision Trademark Law by showing photographs Testimony, History, Reports, of Fer- and Anno- was conducted islative (1989); Cong.Rec. replicas stripped Statutory rari’s cars and Roberts’ their Text tated H10411, 19, 1988). (Oct. badges. By conducting survey identifying H10421 Sears, In 84 S.Ct. at 779. any way U.S. at Not associated by Roberts. pole lamp design and did company copied a Ferrari.” lamp identifying label on the affix an an recently reviewed The Second Circuit lighting defendant sold Compco, itself. from a defendant prohibiting injunction plaintiff’s identical to de- fixtures almost handbags. any plaintiffs copying cases, the district court sign. In both Leatherware, F.2d at 171. Con- Coach acquired sec- that the had found relief grant of such broad “that the cerned copies ondary meaning and created excessively,” the Court competition chills likelihood of confusion. stated: conclusions, Notwithstanding these sixty fifty from produces [Plaintiff] courts Supreme reversed the lower handbags in various Court styles of different unpatentable arti- Though scope of and concluded that and sizes. shapes “[a]n cle, patent has the court’s de- like an article on which may reflect injunction may expired, public resources and in the domain and be judicial to conserve sire substantially similar to do and sold whoever chooses relitigation of made stem claims, skeptical Sears, we 376 U.S. at 84 S.Ct. infringement so.” produce evidence [plaintiff] could The Court reasoned that forbid “[t]o pro- sweeping support such with the federal copying sufficient to would interfere handbags. I, entire line of tection for its in Art. cl. policy, found § emu- injunction prohibiting An extensive feder- implementing and in the Constitution bags] [plaintiffs types all statutes, allowing copy lation of al free access unacceptable effect of could have patent copyright whatever the federal non-infringing design innova- removing Compco, public in the domain.” laws leave the market. tions from at 782. The Court 234 U.S. at 84 S.Ct. holding: provide one caveat to did Id. at 24-25. may, appropriate circum- state [A] statutory language support in the I find no stances, goods, pat- whether require that Act history of the Lanham legislative unpatented, be labeled or ented or granted by for the broad steps taken to precautionary other injunction. instant being misled as prevent customers from Sears-Compco-Bonito II. The source, may protect just as it to the Trilogy

Boats their trade- in the use of businesses marks, labels, in the dress or distinctive this line of majority does not address prevent oth- packaging goods so as to cases because it determines federal markings, ers, from by imitating such patent and federal laws trademark laws the source as to misleading purchasers premised upon entirely different and goods. mutually objectives. interests and exclusive interrelationship It that no exists be- at 789 Sears, holds 84 S.Ct. at U.S. laws; availability design these added). tween (emphasis patent protection preclude does not avail- recently cases was of these The rationale protection. Thus, ability Lanham Act There the Boats. in Bonito reaffirmed majority this concludes line competi- a state’s unfair down Court struck Sears, and Compco Bonito cases— partic- use of prohibiting tion statute no relevance to federal trade- Boats —has molding, du- plug molding process, ular mark laws. parts component or hull plicate any vessel person another without Compco, Supreme made both Sears and of a vessel per- of that other permission considered a state’s unfair Court whether written this statute infringed struck down competition impermissibly son. The Court statute may sub- that a state patent by imposing liabil- upon federal laws and concluded patent-like with or offer ity copying stantially which was not interfere Sears, unpatented or utilitarian to an protected patent. a federal impermissibly it 784; conception because Compco, U.S. at 84 S.Ct. at patent policy. Id. 489 on federal III. impinges 156, 109 S.Ct. at 980. U.S. errors, Based on these I would reverse and remand this case in order that directly that these cases are I conclude District Court properly apply could at hand. While the to the issue relevant eight-factor test used to determine the like- of the Lanham Act and federal purposes lihood of potential confusion vis-a-vis pur- identical, I patent laws are not nonetheless chasers. overlap congruity purpose find some among these laws. Both the Lanham Act patent laws affect commercial

and federal

activity, particularly the area of

patents. monopoly laws confer a Patent upon

limited duration the holder of the directly

patent; this affects the market-

place. Similarly, protects the Lanham Act against practices unfair trade in- certain America, UNITED STATES cluding among a likelihood of confusion Plaintiff-Appellee, potential purchasers. simply It is inaccu- say rate to that trademark law affects com- activity patent pri- mercial law affects Billy (89-1381), Larry Joe CHAMBERS activity. (89-1380/1950), vate M. Chambers Willie L. (89-1877/1879), Chambers B. Otis Moreover, Sears, Supreme Court (89-1357/1949), Chambers Belinda Compeo unequiv- and Bonito Boats states (89- (89-1382), Lumpkin Jerry L. Gant ocally interrelationship that an exists be- 1358), (89-1396), Marshall Glenn Eric competition tween unfair laws and federal (89-1359), Elayne L. Wilkins C. Lu patent laws. The statutes at issue in (89-1360), Defendants-Appellants. cas Sears, Compeo, and Bonito Boats were 89-1360, Nos. 89-1357 to 89-1380 to 89- competition state unfair statutes similar to 1382, 89-1396, 89-1877, 89-1879, 89- purpose objec- the Lanham Act in their 1949 and 89-1950. By holding tives. that these statutes con- patent laws, flicted with federal the Su- Appeals, United States Court of preme implicitly rejected Court the distinc- Sixth Circuit. Hence, urged by majority. tion Argued Aug. 1990. applied trilogy rationale of cases to Sept. Decided competition applies state unfair laws equal force to federal trademark laws. sum, majority the criteria used scope availability

to determine the

protection by unpat- the Lanham Act for overly

ented broad “likelihood —an of confusion” test and an anti-dilution theo-

ry enlarge scope pro- the Lanham Act’s — beyond statutory language tection intent,

congressional and result an in-

junction Supreme that runs afoul of the Sears, holdings Compeo

Court’s Congress

Bonito Boats. intended that the

rights expire in a should with their

design patent. majority’s The effect of the

holding give equivalent is to Ferrari the part, part Affirmed in vacated in design patent perpetuity. remanded.

Case Details

Case Name: Ferrari S.P.A. Esercizio Fabriche Automobili E Corse v. Carl Roberts, D/B/A Roberts Motor Company

Court Name: Court of Appeals for the Sixth Circuit

Date Published: Sep 5, 1991

Citation: 944 F.2d 1235

Docket Number: 90-5734

Court Abbreviation: 6th Cir.