Ferrari S.P.A. ESERCIZIO Fabriche Automobili E Corse v. Carl Roberts
944 F.2d 1235 (1991)
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Rule of Law:
The exterior design and shape of a product can be protected as unregistered trade dress under the Lanham Act if it has acquired secondary meaning, is nonfunctional, and a competitor's copy is likely to cause confusion among the general public, not just at the point of sale.
Facts:
- Ferrari designed and manufactured the 365 GTB/4 Daytona, including a highly exclusive Spyder convertible version, between 1969 and 1973.
- In 1984, Ferrari began producing the Testarossa, also in intentionally limited quantities to preserve its image of exclusivity.
- Both the Daytona Spyder and Testarossa have unique and widely recognized exterior designs, with authentic Daytona Spyders selling for one to two million dollars.
- Roberts manufactured and sold fiberglass body kits, called the Miami Spyder and Miami Coupe, that were virtually identical replicas of the Ferrari Daytona Spyder and Testarossa, respectively.
- Roberts' kits were designed to be bolted onto the undercarriages of less expensive cars, such as the Chevrolet Corvette or Pontiac Fiero.
- Roberts admitted he intentionally copied Ferrari's designs so that his replica cars would look 'just like a real car.'
- Roberts marketed his kits for about $8,500, primarily through advertisements in kit-car magazines.
Procedural Posture:
- Ferrari filed suit against Roberts in U.S. District Court in March 1988, alleging trademark infringement under the Lanham Act.
- The district court granted Ferrari a preliminary injunction.
- Roberts filed for Chapter 11 bankruptcy, but the bankruptcy court lifted the automatic stay to permit Ferrari to prosecute the action for equitable relief only.
- The district court denied Roberts' request for a jury trial.
- Following a bench trial, the district court ruled in favor of Ferrari and entered a permanent injunction against Roberts, prohibiting the manufacture and sale of the replica cars.
- Roberts appealed the district court's judgment to the United States Court of Appeals for the Sixth Circuit.
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Issue:
Does the Lanham Act protect the exterior design and shape of an automobile as unregistered trade dress, thereby preventing a competitor from producing and selling a virtually identical replica?
Opinions:
Majority - Ryan, Circuit Judge.
Yes, the Lanham Act protects the exterior design and shape of an automobile as unregistered trade dress. To establish a claim, a plaintiff must show that its design has acquired secondary meaning, that the copied features are nonfunctional, and that the copy creates a likelihood of confusion. The court found Ferrari's designs had acquired strong secondary meaning, as evidenced by consumer surveys and Roberts' own intentional copying to capitalize on Ferrari's reputation. The court rejected the argument that only design patent law could protect such designs, holding that trademark protection under the Lanham Act exists independently. Crucially, the court held that the 'likelihood of confusion' extends beyond the point of sale to include confusion among the general public, which could dilute and damage the reputation and exclusivity of the Ferrari brand. Finally, the court determined the designs were nonfunctional, as they were chosen for aesthetic and source-identifying purposes, not for utilitarian reasons.
Dissenting - Kennedy, Circuit Judge.
No, the Lanham Act's protection should not be extended this far. The majority misapplies the 'likelihood of confusion' test, which should focus on preventing deception of potential purchasers at the point of sale, not protecting a product from dilution in the eyes of the general public. Roberts' customers were not confused; they knew they were buying replicas. By protecting against general public confusion, the majority improperly reads an anti-dilution provision into the Lanham Act, which Congress has expressly rejected. This decision effectively grants Ferrari a perpetual, patent-like monopoly over its unpatented designs, contrary to the principles established by the Supreme Court in cases like Sears, Compco, and Bonito Boats, which allow for the free copying of unpatented articles.
Analysis:
This case is significant for confirming that a product's configuration—its actual shape and design—can function as protected trade dress under the Lanham Act. The decision broadens the concept of 'likelihood of confusion' beyond the immediate consumer at the point of sale to include post-sale confusion among the general public. This expansion provides a powerful tool for owners of iconic brands to combat knockoffs that, while not deceiving the direct purchaser, can erode the brand's prestige and exclusivity in the marketplace. It solidifies the idea that trademark law protects not just against consumer deception but also against damage to a manufacturer's reputation and goodwill.
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