## Facts

- Ferrari, an Italian manufacturer of high-end sports cars, claimed unregistered trade dress rights in the exterior appearance of the 365 GTB/4 Daytona Spyder and the Testarossa.
- Ferrari sold the cars through authorized dealers and deliberately limited production to maintain exclusivity and strong source association.
- Carl Roberts, doing business as Roberts Motor Company, manufactured and sold fiberglass replica “kit” bodies designed to copy Ferrari’s Daytona Spyder and Testarossa.
- Roberts’ replica models were marketed as the “Miami Spyder” (Daytona Spyder look-alike) and the “Miami Coupe” (Testarossa look-alike), typically mounted onto donor cars such as a Chevrolet Corvette or Pontiac Fiero.
- The trial court found the replicas were virtually identical in appearance to the Ferrari models and were intentionally copied.
- Ferrari sued under § 43(a) of the Lanham Act and Tennessee common law, seeking primarily injunctive and other equitable relief.
- After a bench trial, the district court ruled for Ferrari and entered a permanent injunction restricting Roberts’ manufacture and marketing of the replicas and similar imitative bodies; Roberts appealed and argued, among other things, that he was entitled to a jury trial and that the injunction was too broad.

## Issues

1. Whether Ferrari’s automobile designs had acquired secondary meaning as source identifiers.
2. Whether Roberts’ replicas created a likelihood of confusion under § 43(a) of the Lanham Act, including post-sale confusion.
3. Whether the appropriated features of Ferrari’s designs were nonfunctional and therefore eligible for trade dress protection.
4. Whether the permanent injunction was excessively broad.
5. Whether Roberts was entitled to a jury trial given the nature of the relief sought.

## Decision

- The Sixth Circuit affirmed the judgment for Ferrari.
- The court held that the exterior designs of the Daytona Spyder and Testarossa were protectable unregistered trade dress under § 43(a).
- The court upheld findings of secondary meaning based on Ferrari’s market identity and Roberts’ intentional copying.
- The court found a likelihood of confusion, including confusion among observers after purchase due to the high visual similarity of the vehicles.
- The court agreed the copied design features were nonfunctional in the trademark sense because they were not essential to the cars’ use or purpose and primarily served source-identifying and aesthetic roles.
- The court held the injunction was not overly broad because it reasonably prevented evasion through minor changes.
- The court affirmed denial of a jury trial because the action sought primarily equitable relief, so no jury right attached.

## Legal Principles

- Unregistered product design trade dress is protectable under Lanham Act § 43(a) if it (1) has acquired secondary meaning, (2) is nonfunctional, and (3) is infringed through a likelihood of confusion.
- Intentional copying may support an inference of secondary meaning and may strengthen the likelihood-of-confusion analysis.
- Likelihood of confusion can include post-sale confusion among non-purchasers who view the product in the marketplace.
- Trade dress protection does not extend to functional features; a design is nonfunctional for trademark purposes when the claimed features are not essential to the product’s use or purpose.
- Broad injunctive relief may be appropriate where close copying indicates a risk of circumvention through slight modifications.
- When the primary remedies sought are equitable (such as injunction and accounting), a defendant is not entitled to a jury trial on that basis.

## Conclusion

The Sixth Circuit concluded that Ferrari’s distinctive car body designs functioned as protectable unregistered trade dress, that Roberts’ near-identical replicas were likely to cause confusion (including post-sale confusion), and that the copied features were nonfunctional; it therefore affirmed a broad permanent injunction and upheld denial of Roberts’ jury demand because the relief sought was equitable.


Ferrari S.P.A. Esercizio Fabriche Automobili e Corse v. Roberts, 944 F.2d 1235 (6th Cir. 1991)