UnIntellectual Property (UnIP): Trade Dress for Speaker Adapter

The United States District Court for the Middle District of Florida has granted Plaintiff’s motion for summary judgment with regard to Defendant’s trade dress claim in a speaker adapter.  Plaintiff filed the present lawsuit seeking declaratory judgment from the Court that its sale of a Jeep Wrangler aftermarket speaker adapter on eBay was not unlawful.  Defendant had offered a speaker adapter made of steel, with rounded corners, featuring holes for mounting, and includes hardware for installation.

Defendant has previously failed to acquire a design patent, despite having applied for one, because the application was incomplete, which led to it never being examined.  It also failed to acquire a copyright, again despite having applied for one.  The US Copyright Office stated: “[b]ecause all of the elements of the work you deposited are either related to the utilitarian aspects or function, or are subsumed within the overall shape, contour, or configuration of the article, there is no physically or conceptually ‘separable’ authorship as such. Consequently, we cannot register this claim.”  Nonetheless, when Defendant identified Plaintiff’s sales, it sent a cease and desist letter to Plaintiff, who complied with requests in an effort to avoid litigation.  However, when Defendant posted the letter on his Facebook page, Plaintiff took this action.

The Court focused its trade dress analysis on the design features of Defendant’s speaker adapter, which Defendant claimed was non-functional, including: (1) the presence of three mounting holes, (2) utilization of rounded corners, and (3) steel construction. The Court held that “each of these features is primarily functional and not entitled to trade dress protection.”  In doing so, the Court applied both the traditional test, in which a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, as well as the competitive necessity test, in which a functional feature is one the ‘exclusive use of which would put competitors at a significant non-reputation-related disadvantage.’  Ultimately, it found that the mounting holes were to adapt to universal mounting devices, the rounded corners were for safety purposes, and the steel was to avoid corrosion. 

These cases are as factual as they come, and perhaps as factual as trade secret cases.  They are oftentimes, by their very nature, subjective.  Would an expert have helped?  What else could have been done to avoid functionality?  Was the design patent the best chance at an early indication as to protectability?  Who knows, but this case is very telling and important to trade dress claims.

Dynamic Designs Distribution Inc. v. Nalin Mfg., LLC, 8:13-CV-707-T-33TBM, 2014 WL 1576381 (M.D. Fla. Apr. 18, 2014).


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