Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Leapers, Inc. v. SMTS LLC

United States Court of Appeals, Sixth Circuit

January 10, 2018

Leapers, Inc., Plaintiff-Appellant,
v.
SMTS, LLC, et al., Defendants, Sun Optics USA, Defendant-Appellee.

          Argued: October 5, 2017

         Appeal from the United States District Court for the Eastern District of Michigan at Detroit. No. 2:14-cv-12290-Robert H. Cleland, District Judge.

         ARGUED:

          Brian D. Wassom, WARNER NORCROSS & JUDD LLP, Southfield, Michigan, for Appellant.

          Joseph F. Cleveland, Jr., BRACKETT & ELLIS, PC, Fort Worth, Texas, for Appellee.

         ON BRIEF:

          Brian D. Wassom, WARNER NORCROSS & JUDD LLP, Southfield, Michigan, Matthew T. Nelson, WARNER NORCROSS & JUDD LLP, Grand Rapids, Michigan, for Appellant.

          Joseph F. Cleveland, Jr., BRACKETT & ELLIS, PC, Fort Worth, Texas, James K. Thome, VANDEVEER GARZIA, PC, Troy, Michigan, Douglas P. LaLone, FISHMAN STEWART, PLLC, Bloomfield Hills, Michigan, for Appellee.

          Before: CLAY, COOK, and WHITE, Circuit Judges.

          OPINION

          CLAY, CIRCUIT JUDGE.

         Plaintiff Leapers, Inc. appeals the district court's entry of summary judgment for Defendant Sun Optics USA in Plaintiff's case alleging trade dress infringement under the Lanham Act, 15 U.S.C. § 1051, et seq. For the reasons set forth below, we VACATE the district court's judgment and REMAND the case for further proceedings.

         BACKGROUND

         Plaintiff Leapers, Inc. makes adjustable rifle scopes. Several portions of Plaintiff's products are textured with so-called "knurling, " which allows users to grip the products more easily and to make fine-tuned adjustments. Knurling can be found on a wide variety of everyday items such as door handles, coin edges, and bottle lids. Plaintiff asserts that it uses a unique knurling pattern that is distinctly "ornamental" and by which consumers recognize Plaintiff as the source of the product.

         Plaintiff began manufacturing rifle scopes bearing this particular knurling design in 2002. Plaintiff later entered into an exclusive manufacturing contract with Chuanwen Shi and Donghui Yang of the Nantong WuYang Sporting Goods factory in China. As part of this contract, the factory managers agreed to "never disclose any information related to [Plaintiff's] products." (R. 109 at PageID #4776.)

         On November 17, 2011, Plaintiff ended its relationship with the Nantong WuYang factory, and factory representatives agreed to "cease using any and all technical specifications, product design documents, [and] packaging design documents related to any of [Plaintiff's] products" and to "[d]estroy any and all parts, accessories, attachments, and the like, related to any of [Plaintiff's] products previously produced to fulfill [Plaintiff's] orders." (Id.) However, factory manager Shi apparently never followed through on this agreement. Instead, he formed a company called Trarms, Inc., through which he began selling rifle scopes himself. He also began manufacturing rifle scopes for other sellers of rifle scopes, including Defendant and another company, SMTS, LLC.

         On June 10, 2014, Plaintiff filed suit against Defendant[1] seeking monetary and injunctive relief for trade dress infringement of Plaintiff's rifle scope knurling design. The case progressed to discovery, and factory manager Shi refused to testify, asserting his Fifth Amendment privilege to nearly every question asked. When Trarms, Inc. refused to provide an alternate witness, Plaintiff moved to compel discovery.

         Defendant filed for summary judgment on the basis that Plaintiff would not be able to prove two essential elements of its trade dress claim, namely nonfunctionality and secondary meaning. As further discussed below, the combination of these two elements ensures that a product feature receives trade dress protection only if it does not contribute to the product's utility (i.e., is nonfunctional) and confers distinctiveness akin to a brand (i.e., has a secondary meaning). Defendant argued that the district court should grant summary judgment despite Plaintiff's pending discovery motion because Shi's testimony would be irrelevant to both of these elements. Plaintiff opposed summary judgment, arguing that it had sufficiently supported its trade dress claim and that additional discovery from Shi or Trarms, Inc. would demonstrate that "[t]he elements of [Plaintiff's] trade dress were not chosen for functional reasons and do not add to the functionality of the scopes to which they are applied." (R. 81 ¶ 5(1); R. 84.) Plaintiff also argued that additional discovery was necessary on the issue of secondary meaning.

         The district court granted Defendant's motion for summary judgment. The court rejected the notion that summary judgment was premature, concluding that Plaintiff's knurling design could not satisfy the nonfunctionality requirement. The court stated that additional discovery from Shi would provide "but one more conclusory opinion" that could not "change the fact that Plaintiff's trade dress is a functional grip, not just decoration." Leapers, Inc. v. SMTS, LLC, 2016 WL 8732507, at *8 (E.D. Mich. Mar. 25, 2016). The court's holding did not reach the question of secondary meaning, but the court opined that Plaintiff had likely introduced enough evidence-although barely-to create a triable question on the issue.

         The district court denied Plaintiff's motion for reconsideration and entered final judgment on December 2, ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.