Bobcar Media, LLC v. Aardvark Event Logistics, Inc.

Background

Bobcar sued Aardvark over promotional vehicles. In its operative Second Amended Complaint, Bobcar alleged patent infringement, trademark infringement and unfair competition under the federal Lanham Act, and unfair competition under New York law. Aardvark asserted counterclaims seeking declarations that Bobcar’s six asserted patents were invalid, that Aardvark had not infringed Bobcar’s patents or trade dress, and that Aardvark had not engaged in unfair competition. The court had previously dismissed all patent-infringement claims for lack of statutory standing.

The remaining dispute concerned Bobcar’s claimed trade dress—the overall appearance and design features of its promotional vehicle—and related federal and state unfair-competition claims. Bobcar described the trade dress as including a compact front cab, a rear showroom with panels that opened above the cab, an open-air showroom, coordinated colors, and promotional materials corresponding to the goods or services displayed. Bobcar argued that Aardvark’s “Aardy” vehicle was confusingly similar.

Motion to Exclude Expert Testimony

Aardvark moved to exclude the report of James A. Roberts, Ph.D., whom Bobcar offered as a consumer-behavior expert. The court stated that Roberts was qualified as a consumer-behavior expert and did not exclude his report for lack of qualifications. But the court found that the report contained impermissible legal conclusions and opinions unsupported by a reliable methodology.

The court excluded the report in its entirety. Roberts relied in part on pleadings and a prior court opinion, which were not admissible evidence and were not materials on which a consumer-behavior expert would reasonably rely. The court also found that Roberts largely repeated evidence for the jury rather than performing an analysis beyond what an ordinary juror could do. His opinions about trade-dress characteristics, non-functionality, secondary meaning, and likelihood of confusion therefore did not satisfy the requirements for expert testimony.

Summary-Judgment Motions

Both parties moved for summary judgment on Bobcar’s trade-dress infringement and unfair-competition claims. For product-appearance trade dress, the court identified three required elements: the claimed design must be non-functional, it must have acquired secondary meaning, and there must be a likelihood of confusion. “Secondary meaning” means that the purchasing public associates a design with one producer rather than merely with the product itself.

The court rejected Aardvark’s argument that Bobcar’s trade-dress description was too broad. It held that Bobcar had described the claimed features in sufficient detail and had identified a potentially protectable trade dress.

The court nevertheless held that Bobcar’s claimed trade dress was product design, not product packaging. Because the Bobcar vehicle itself was the product purchased by brands and advertising agencies, Bobcar had to prove secondary meaning. The court explained that ambiguous trade dress should be treated as product design, which also requires that showing.

The court considered six secondary-meaning factors: advertising expenditures, consumer studies, unsolicited media coverage, sales success, attempts to copy the design, and length and exclusivity of use. It found that only sales success favored Bobcar. Bobcar had earned millions of dollars in revenue from vehicle campaigns, but the court stated that sales success alone could not establish secondary meaning. The other factors weighed against Bobcar because the evidence did not show the relevant advertising expenditures, included no consumer studies, did not establish qualifying media coverage before Aardvark entered the market, showed no third-party copying, and showed at most about a year and a half of exclusive use before Aardvark’s vehicle entered the market.

The court held that Bobcar had not produced enough evidence that its product design acquired secondary meaning before the alleged infringement began. It therefore dismissed Bobcar’s trade-dress infringement claim. Because the federal and New York unfair-competition claims were based on the same facts and depended on the protectability of the trade dress, the court dismissed those claims as well.

Disposition

Judge J. Paul Oetken granted Aardvark’s motion to exclude the expert testimony, granted Aardvark’s motion for summary judgment, and denied Bobcar’s cross-motion for summary judgment. The court directed the Clerk to enter judgment for Aardvark and close the case.