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

Background

Cardinal Motors and H&H Sports Protection USA are corporations that sell motorcycle helmets. Cardinal alleged that H&H’s “Torc-1” helmet copied the trade dress of Cardinal’s “Bullitt” helmet. Trade dress is the overall design and appearance that can identify a product to consumers. Cardinal brought claims under Section 43(a) of the federal Lanham Act for trade-dress infringement and unfair competition, as well as additional Lanham Act, New York, and California claims.

The court had previously dismissed Cardinal’s first amended complaint without prejudice because it did not adequately describe the Bullitt features that supposedly constituted a distinctive trade dress or explain why they were distinctive. Cardinal then filed a second amended complaint. It described the claimed trade dress as including the helmet’s curved top shell, thin chin protector, roughly flat shell base, relatively large eyeport, relatively thin chin bar, rear overhang, and metallic visor-pivot escutcheon. The complaint also included photographs comparing the Bullitt with H&H’s Torc-1 and with nine third-party helmets.

H&H moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint adequately states a legally plausible claim. H&H also moved under Rule 12(f) to strike references to the Bullitt’s design patent, counterfeiting, and treble damages.

Trade-Dress Claim

For product-design trade dress, the plaintiff must precisely define the claimed trade dress, allege that it is non-functional, allege that it has acquired distinctiveness, and allege that the defendant’s use is likely to confuse consumers.

The court held that Cardinal again failed to provide a precise definition. It found that descriptions such as “substantially curved,” “very roughly flattish,” “relatively large,” and “relatively thin” were too imprecise. The court also concluded that the complaint did not explain how the Bullitt’s overall shape was distinctive. The third-party helmet photographs undermined Cardinal’s position because other helmets shared several of the listed characteristics, including curved tops, roughly flat bases, and metallic visor pivots.

The court rejected Cardinal’s argument that the features were sufficient when considered together. It said Cardinal could not define trade dress merely by providing a list of design elements without explaining which elements were distinctive and how they were distinctive. The additional measurements comparing the Bullitt and Torc-1 also did not establish that the Bullitt’s design was protectable. Because Cardinal failed to plead the required precise definition, the court did not reach the other elements of the trade-dress claim.

Other Federal Claim

Cardinal’s second Lanham Act claim was labeled as false advertising but also alleged false designation of origin. The court said these are distinct claims and that the complaint appeared to conflate them.

The false-designation claim failed because Cardinal had not adequately alleged that the Bullitt’s design was worthy of trademark protection. The alternative false-advertising theory also failed because the complaint did not allege that H&H made a false or deceptive statement about the quality of the Torc-1 or another inherent product characteristic.

State-Law Claims

The court dismissed the New York common-law unfair-competition claim and the California common-law and statutory claims because they failed for substantially the same reasons as the federal claims. The court also held that Cardinal did not adequately plead a claim under New York General Business Law § 349 because it failed to allege an injury affecting the public at large beyond the ordinary harms associated with alleged intellectual-property infringement.

Disposition

Judge Paul A. Crotty granted H&H’s motion to dismiss the second amended complaint, without prejudice. The court allowed Cardinal one final opportunity to amend and file a third amended complaint within 21 days after the opinion and order was filed.

The dismissal made H&H’s Rule 12(f) motion to strike moot. The court nevertheless again directed Cardinal to remove references to the Bullitt design patent and treble damages from any future amended complaint, warning that failure to follow those directions could independently support dismissal of a future pleading with prejudice. The Clerk of Court was directed to close the motion at ECF No. 48.