Intellectual Property News and Reports

Yellowfin Yachts, Inc. is a manufacturer of high-end fishing boats. Since 2000, Yellowfin has produced predominantly “center-consoled, open-fisherman styled boats” ranging between twenty-one and forty-two feet. According to Yellowfin, these boats all have the same “swept” sheer line, meaning a gently sloped “s”-shaped line that runs upward from the point at which a boat’s hull intersects with the deck to the boat’s lofted bow. This swept sheer line, described by Yellowfin as “unique,” is the subject of its trade dress claims.

Yellowfin hired Kevin Barker in 2006 as a vice president of sales. Although Yellowfin presented Barker with a proposed employment agreement which included confidentiality clauses, Barker never executed the agreement. Barker left Yellowfin in 2014—not encumbered by a noncompetition or nonsolicitation contract—and founded a competitor, Barker Boatworks, LLC. On his last day at Yellowfin, Barker downloaded hundreds of files from Yellowfin’s main server. These files contained “detailed purchasing history and specifications for all of Yellowfin’s customers,” as well as “drawings” and “style images” for Yellowfin boats and “related manufacturing information.”

After leaving Yellowfin, Barker retained marine architect Michael Peters to design a twenty-six-foot bay boat based on Barker’s specifications. These specifications, according to Yellowfin, were derived directly from Yellowfin’s own bay boats, and the Barker boat’s sheer line nearly replicated that of Yellowfin. Barker Boatworks opened for business in July 2014 and has since competed with Yellowfin in the same “niche” center-console fishing-boat market.

In April 2015, Yellowfin filed a complaint against Barker Boatworks and Kevin Barker4 in the United States District Court for the Middle District of Florida. With leave of court, Yellowfin filed its First Amended Complaint, the operative complaint here, in September. In this complaint, Yellowfin pleads claims for trade dress infringement and false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), common-law unfair competition, common-law trade dress infringement, and violation of Florida’s Trade Secret Act.

After unsuccessfully moving to dismiss Yellowfin’s complaint, Barker Boatworks moved for summary judgment on all of Yellowfin’s claims. The District Court granted the motion in full. First, the Court provided three reasons why Yellowfin’s Lanham Act trade dress claim failed: Yellowfin did not adequately describe any distinctive feature of its sheer line, its sheer line is functional and thus not protectable as trade dress, and no reasonable jury could conclude that a potential buyer would likely confuse a Barker boat for a Yellowfin. The Court then held that, because a reasonable jury could not conclude that a potential buyer would likely confuse the two boats, Yellowfin’s claims of Section 43(a) false designation of origin, common-law trade dress infringement, and common-law unfair competition also fail. Finally, the Court found that Yellowfin failed to identify a protectable, misappropriated trade secret, and, regardless, that Yellowfin did not make “reasonable efforts” to protect all of its alleged trade secrets. The Court therefore rejected Yellowfin’s trade secret claim. Yellowfin appeals these rulings.

We review a district court’s grant of summary judgment de novo and construe the evidence and draw all reasonable inferences therefrom in the light most favorable to Yellowfin. Ziegler v. Martin Cty. Sch. Dist., 831 F.3d 1309, 1318 (11th Cir. 2016). We first address the District Court’s trade dress rulings.

Download Yellowfin Yachts Inc. v. Barker Boatworks LLC