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(251 F. Supp. 2d 983 (D. Mass. 2002) • Shelby Plaintiffs' Motion for Partial Summary Judgment on Count I (Trademark Infringement) of Its Amended Complaint
• Ford Motor Company's Motion for Summary Judgment (as to all counts)
• Defendant's Motion for Partial Summary Judgment of the Counterfeiting Claims by Plaintiff Ford Motor Company
• Defendant's Motion for Partial Summary Judgment of the Trade Dress Claims (in Count II-VI) by Plaintiffs Carroll Shelby;
Carroll Shelby Licensing Inc.; and Shelby American, Inc.
Trademark and trade dress law is complex and constantly evolving. Here, the difficulties inherent in this type of a case are
exacerbated by a voluminous and convoluted factual record. Both Ford and Shelby ask this Court to rule in their favor on the
issue of trademark infringement. The record, however, is replete with disputed material facts on crucial issues including the
validity of Ford's registration of the Cobra marks, the status of Shelby's ownership rights, abandonment, genericness,
and the likelihood of confusion. For example, it is unclear when and if Shelby stopped selling or licensing cars with the Cobra
shape. Equally unclear is whether the replica industry has rendered the Cobra name generic in the eyes of consumers. In addition,
Superformance raises questions of fact with respect to Shelby's prior testimony in a 1992 California case against Ford,
and the effect of that testimony, if any, on Ford's position. These are but a few of the disputed material facts that render
summary judgment inappropriate on the Ford and Shelby motions for summary judgment.
SPF's dispositive motions, however, stand on a different footing. After a careful review of current trade dress infringement
and trade mark counterfeiting case law, I am persuaded its motions for summary judgment should be allowed.
Trade Dress Infringement
Shelby's claim, that SPF markets, imports and sells rolling chassis identical to the Cobra is undisputed.
However, even conceding that SPF creates identical replicas, it argues that the law does not support Shelby's claim to exclusive
trade dress rights in the Cobra design. In order to prove trade dress infringement and dilution, Shelby must show that the design
is (1) used in commerce, (2) nonfunctional, and (3) distinctive. I.P. Lund Trading Aps v. Kohler Co., 163 F.3d 27, 36 (1st Cir. 1998)
("Lund II"). The Cobra design is plainly used in commerce, and is nonfunctional. Therefore, it is only the third element
that requires discussion.
The Supreme Court recently held that trade dress, in the form of a product's design (as opposed to packaging), can never be
inherently distinctive as a matter of law. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 212 (2000). Rather, a
design is distinctive and therefore protectable, only upon a showing of secondary meaning. Id. at 216. The central inquiry for
secondary meaning is whether, "in the minds of the relevant consumers, the primary significance of the [Cobra]
design is to identify the source of the product," rather than the product itself. I.P. Lund Trading Aps v. Kohler Co.,
118 F. Supp. 2d 92, 104 (2000)("Lund III"). In a product design case, there is a presumption that the design does
not serve as a brand identifier. Wal-Mart, 529 U.S. at 212. To rebut this presumption, Shelby must create an evidentiary basis
for a finding that the source-identifying function has subordinated the design's aesthetic functions. Lund III, 118 F.
Supp. 2d at 108.
Herein lies the initial question: who is the source of the Cobra design? This is a unique case in which Shelby appears to be the
designer of the car in question, and Ford the producer. The term "source," however, must refer to the entity that actually
uses the design as a product in commerce. See Wal-Mart, 529 U.S. at 209 (section 43(a) of the Lanham Act, "gives a producer
a cause of action for the use by any person of 'any word, term, name, symbol, or device'" which is likely to cause
confusion as to the origin of his or her goods) (citing 15 U.S.C. § 1125(a)). Indeed, the Wal-Mart holding is based on basic
tenets of competition in the marketplace and consumer choice. See Id. at 211 ("Consumers should not be deprived of the benefits
of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that
facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness."). There can be no
protection under trade dress principles for the designers themselves, who do not take an active role in the marketplace, and
therefore do not impact competition and consumer choice. Design patents and copyrights are more appropriate forms of protection
for those who cannot fulfill the initial "source" requirement of the secondary source inquiry.
Even if Shelby is able to prove that he is the source of the Cobra car (i.e. the producer), he has failed to present any evidence
that consumers associate the Cobra design with Shelby, and Shelby alone as source. Proof of secondary meaning entails "vigorous
evidentiary requirements." Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 43 (1st Cir. 2001). While secondary meaning
may be established in a variety of ways, "consumer surveys and testimony are the only direct evidence on this question."
Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir.1993). Shelby has submitted survey evidence, compiled by Dr.
Jessica Pollner ("Pollner"), a statistician of Price Waterhouse Coopers LLC, who performed face-to-face interviews with
sports-car hobbyists at one industry trade show. Although the survey establishes an association between the Cobra design and Shelby,
that is insufficient to support a reasonable jury finding in Shelby's favor on the issue of secondary meaning. Rather,
Shelby must prove that the primary significance of the Cobra shape in the minds of consumers is to identify Shelby as the single
producer. See Wal-Mart, 529 U.S. at 211. He cannot.
The most troubling aspect of the report is Pollner's conclusory grouping of responses (1). When asked if they recognized
the picture of a Cobra design, Pollner reports that over 50% of the people surveyed associated the picture with
"Shelby." Within this percentage, however, Pollner includes numerous different responses, such as "Cobra,"
"Shelby Cobra," and "Ford Shelby Cobra." By grouping these responses into one "Shelby" category,
Pollner herself assumes the answer to the very question at issue. Not only are Pollner's conclusions illogical in a very basic
sense, but they are also completely unreliable and bear no weight on Shelby's secondary meaning argument. Circumstantial
evidence in this case is equally unavailing.Because Shelby is unable to establish that the Cobra shape is distinctive, his dilution
claims also fail as a matter of law. As the First Circuit stated in Lund II, 163.
In order to prove counterfeiting under § 32 of the Lanham Act, Ford must show that SPF used a counterfeit mark in its sale of goods in
commerce. 15 U.S.C. §§ 1141(1)(a) and 1117(b). SPF argues that Ford cannot support this claim as a matter of law because "a claim
for trademark counterfeiting lies only against counterfeit uses of a mark on the same goods or services as are covered by the
plaintiff's registration of that mark." Playboy Enters, Inc. v. Universal Tel-A-Talk Inc., 1998 U.S. Dist. LEXIS 8231,
at *13, 48 U.S.P. Q.2d 1779, 1782 (E.D. Pa.). Whereas Ford's registration covers "passenger automobiles," SPF uses
the mark in connection with its manufacturing of "rolling chassis." (2) In essence, a rolling chassis is a car
body - everything but the engine and transmission. These items can be purchased separately, either from SPF or other manufacturers,
and installed into the rolling chassis. Ford's response, that a rolling chassis is the equivalent of a passenger automobile,
as described in Ford's registration, is not supported by the facts. For example, Ford's in-house counsel, Daniel M. Stock,
Esq. ("Stock"), testified that a rolling chassis is considered generally a "vehicle" until an engine is installed,
at which point it becomes a passenger "automobile." Rolling chassis, testified Stock, are merely components of passenger
automobiles. Ford tries to rescue its claim by pointing out that, as such, rolling chassis are encompassed by the term passenger
vehicle. Not so. According to the registration renewal of Reg. No. 807,185, Ford removed the words "rolling chassis" from
the description of goods covered by its registration. Although the old registration included passenger vehicles and "components
thereof namely, bodies, chassis and bumpers," the new registration merely covers "passenger automobiles." If Ford
intended to preserve its rights over passenger automobile components, it should not have taken active steps to eliminate them from
its registration.
Accordingly, Superformance's Motion for Partial Summary Judgment Dismissing the Counterfeiting Claims of Plaintiff Ford Motor
Company and Motion for Partial Summary Judgment Dismissing the Trade Dress Claims (in Count II-VI) of Plaintiffs Carroll Shelby;
Carroll Shelby Licensing Inc.; and Shelby American, Inc. are ALLOWED.
Shelby Plaintiffs' Motion for Partial Summary Judgment on Count I (Trademark Infringement) of Its Amended Complaint, and Ford
Motor Company's Motion for Summary Judgment are DENIED. |
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