Cardinal Motors, Inc. v. H&H Sports Protection USA Inc.

Background

Cardinal alleged that it designs motorcycle helmets for sale and licensing and that H&H manufactures and sells motorcycle helmets. Cardinal claimed that H&H’s Torc-1 helmet unlawfully copied the appearance of Cardinal’s Bullitt helmet.

The amended complaint asserted two counts: federal unfair competition and trade-dress infringement under Section 43(a) of the Lanham Act, and common-law and statutory unfair competition under New York and California law. Cardinal described the claimed trade dress as the Bullitt’s sculptural configuration and/or graphic and tonal finish features. It also referred to features such as the helmet’s eye port, silhouette, chin bar, trim, straps, and cheek pads, and attached a design patent containing drawings of the helmet.

H&H moved under Federal Rule of Civil Procedure 12(b)(6) to dismiss for failure to state a claim. H&H alternatively sought a more definite statement under Rule 12(e) and asked the court to strike references to design-patent infringement under Rule 12(f).

Court’s Analysis

The court treated Cardinal’s first count primarily as a claim for unregistered product-design trade-dress infringement. To state that claim, a plaintiff must precisely identify the character and scope of the claimed trade dress and plausibly allege that it is nonfunctional, distinctive because it acquired secondary meaning, and likely to cause consumer confusion.

The court held that Cardinal’s description was too vague and broad. The phrase “and/or” presented alternative categories rather than specific features. Descriptions of a large eye port, distinctive silhouette, and relatively thin chin bar did not explain what made those features distinctive. The design-patent drawings did not identify which features formed the trade dress, and Cardinal stated that only some of the patent’s design elements were incorporated into the claimed trade dress. The side-by-side photographs and descriptions of similarities between the helmets also did not identify which features were part of the trade dress or explain how they were distinctive. The court declined to create a trade-dress definition for Cardinal.

Because Cardinal did not adequately identify its trade dress, the court dismissed the federal trade-dress infringement claim. The court did not reach possible additional defects concerning functionality. It also dismissed the federal unfair-competition claim because Cardinal had not plausibly alleged a valid trade dress. The New York common-law unfair-competition claim was dismissed because it generally tracks the Lanham Act claim and additionally requires bad faith. The New York statutory claim was dismissed because the complaint did not identify a statute and, under the statutes the court considered, did not adequately allege the required consumer harm, distinctiveness, or dilution. The California common-law and statutory claims were dismissed for the same failure to identify the trade-dress elements.

Disposition

Judge Paul A. Crotty granted H&H’s motion to dismiss Cardinal’s amended complaint, without prejudice, under Rule 12(b)(6). The court stated that Cardinal could file a second amended complaint within 21 days. H&H’s motion to strike Cardinal’s design-patent references was moot because the amended complaint was being dismissed, although the court instructed Cardinal to avoid irrelevant patent references in any amended complaint.