Leapers, Inc. v. Smts, LLC

879 F.3d 731 (6th Cir. 2018)

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Nature of the Case

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Facts

P makes adjustable rifle scopes. Several portions of its 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. P began manufacturing rifle scopes bearing this particular knurling design in 2002. P had entered into an exclusive manufacturing contract with Chuanwen Shi and Donghui Yang of the Nantong WuYang Sporting Goods factory in China. The factory managers agreed to 'never disclose any information related to P's products.' P 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 Ps products' and to 'destroy any and all parts, accessories, attachments, and the like, related to any of [P's] products previously produced to fulfill [P's] orders.' Factory manager Shi formed a company called Trarms, Inc., through which he began selling rifle scopes himself. He began manufacturing rifle scopes for other sellers of rifle scopes, including D. P sued D seeking monetary and injunctive relief for trade dress infringement of P's rifle scope knurling design. Factory manager Shi refused to testify, asserting his Fifth Amendment privilege to nearly every question asked. D filed for summary judgment on the basis that P would not be able to prove two essential elements of its trade dress claim, namely non-functionality and secondary meaning. P would receive trade dress protection only if the design 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). P 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 'the elements were not chosen for functional reasons and do not add to the functionality of the scopes to which they are applied.' The court granted D’s motion for summary judgment. It held that P's knurling design could not satisfy the non-functionality requirement. P appealed.