Sterilite Corporation v. Olivet International, Inc. (D. Mass. 22-cv- 10327).

Sterilite accused Olivet of infringing its unregistered trade dress in plastic garage storage cabinets and drawers and a swing top wastebasket (the latter of which did not survive summary judgment).  With trial approaching, each side filed motions in limine.  Sterilite first moved to preclude Olivet from arguing or presenting evidence that Sterilite should have registered its trade dress.  The parties agreed that Sterilite was not required to  federally register its trade dress, so Judge Kobick precluded Sterilite from arguing that registration was mandatory or that Sterilite should have registered its trade dress.  She determined, however, that Olivet would be allowed to argue that Sterilite could have sought to register its trade dress but failed to make the attempt.  She found that this could be relevant to show, for example, that Sterilite chose not to try for a registration due to concerns about the functionality of the alleged trade dress or the lack of secondary meaning.  She did grant Sterilite’s motion with respect to arguing that the overall trade dress is functional, finding that the fact that some elements of the trade dress might be functional does not eliminate the notion that the elements as a whole enjoy protection.  She thus precluded argument that the overall trade dress is functional, while still allowing Olivet from arguing that individual accused products lack an arbitrary pattern of functional elements (in other words, from arguing that all of the elements are functional).

Judge Kobick granted in part and denied in part Sterilite’s motion to preclude argument that its failure to present survey evidence warranted an adverse inference.  She noted that survey evidence of secondary meaning is not required and refused argument to that effect, but would allow Ovilet to present evidence that the reason Sterilite failed to put forth survey evidence was because it knew that such evidence would be unfavorable, trusting the jury to determine the weight that should be given such evidence.  She granted Sterilite’s motion to preclude evidence that it did not, but should have, sued Walmart, finding that this would not be relevant to whether Olivet infringed the trade dress.

Judge Kobick denied Sterilite’s motion to preclude evidence regarding the parties’ overall financial valuations, revenues or profits.  She noted that Sterilite had provided evidence of this at summary judgment and would likely do the same at trial, and that Ovilet would be unfairly prejudiced if it was precluded from addressing this.  She granted Sterilite’s motion to preclude argument or evidence regarding the potential commercial impacts of a verdict in Sterilite’s favor, precluding argument that such a verdict would result in higher consumer costs, finding that the limited probative value was outweighed by the potential prejudice to Sterilite.  She did not, however, preclude cost-based evidence as to why Walmart sold Ovilet products rather than Sterilite products.

Judge Kobick denied Olivet’s motion to preclude evidence or argument that it copied Sterilite’s product designs.  She found the potential evidence relevant towards proof of intentional copying, and found concerns that this evidence might be prejudicial due to the jury being unable to distinguish between copying and passing off (which requires bad faith) to be speculative.  She further refused to exclude customer reviews and complaints received by Olivet and Sterilite, finding that the evidence was directly relevant to both secondary meaning and dilution.  She determined that any hearsay or authentication objections would be dealt with at trial on a case-by-case basis in light of Sterilite’s assertions that it would not bring these in for the truth of the matter stated (making them non-hearsay) and that it would call a witness who could authenticate them.  Judge Kobick also refused to exclude Sterilite’s advertising that post-dated Olivet’s introduction of its product, finding that these advertisements would at a minimum be relevant to the likelihood of confusion inquiry, which (among other things) considers the relationship between the parties’ advertising and the strength of the asserted trademarks.

Judge Kobick refused to bar Sterilite from introducing evidence of Olivet’s relationship with its affiliate, Ecotech, and its parent corporation FTI Group, as Olivet shares employees with each, but precluded Sterilite from introducing evidence of the other entities’ profits and losses, as the Lanham Act does not permit recovery from entities other than the direct infringer.

Finally, Judge Kobick precluded Sterilite from referencing prior lawsuits in which Olivet was accused of unfair competition and dilution.  Sterilite sought to use these cases to show a pattern of intentionally knocking off products, and asserted that the evidence would be relevant to Olivet’s intention in adopting its mark, another of the factors to be considered; but Judge Kobick felt that the limited relevance was outweighed by the potential unfair prejudice, particularly as the cases settled without a liability determination.