The US Court of Appeals for the Sixth Circuit concluded that a knurling pattern on a rifle scope can be an ornamental design and vacated the district court’s grant of a summary judgment. Leapers, Inc. v. SMTS, LLC, et al., Case No. 17-1007 (6th Cir., Jan. 10, 2018) (Clay, J).
Leapers makes adjustable rifle scopes that are textured with so-called “knurling,” which allows users to grip the products more easily and make fine-tuning scope adjustments. Knurling can be found on a wide variety of everyday items, such as door handles, coin edges and bottle lids. Leapers asserted that its unique knurling pattern was distinctly “ornamental” and that consumers recognize Leapers as the source of the product because of the knurling pattern.
Leapers entered into an exclusive manufacturing contract with a factory in China. The factory agreed not to disclose any information regarding Leapers’ products. Leapers later ended its relationship with the factory, and the factory representatives agreed to stop using technical specifications, product design and packaging design documents relating to the knurling, and to destroy any of the products produced. However, the manager of the factory formed a company called Trarms through which he began selling rifle scopes. He also began manufacturing rifle scopes for other sellers, including Sun Optics USA and SMTS.
Leapers sued, alleging trade dress infringement of the knurling design and arguing that certain characteristics and decorations of its products make the source of the product distinguishable from other products and promote its sales. The district court granted defendants summary judgment—even though the factory manager refused to testify by asserting the Fifth Amendment—holding that Leapers could not prove non-functionality and secondary meaning.
In order to prevail on a claim for trade dress infringement based on a product’s design, a plaintiff must show that its design (1) is non-functional, (2) has acquired a secondary meaning and (3) is confusingly similar to the allegedly infringing design. Furthermore, in Celotex v. Catrett (1986) the Supreme Court of the United States cautioned against misuse or overextension of trade dress, explaining that “product design almost invariably serves purposes other than source identification” and that summary judgment will be granted if the plaintiff “fails to present sufficient evidence for a reasonable jury to find in its favor on any one of the three elements.”
On appeal, the Sixth Circuit reversed the summary judgment, concluding that “a jury could reasonably find that Plaintiff’s design is nonfunctional because Plaintiff’s design is purely ornamental,” and that the design therefore does not represent a technological advancement that would put competitors at a significant disadvantage.