Deere & Co. v. Fimco Inc.

          MEMORANDUM OPINION, ORDER, AND AMENDED INJUNCTION

          Thomas B. Russell, United States District Court Senior Judge

         This matter is before the Court on various post-trial motions and briefs filed by both parties. This litigation began when Plaintiff, Deere & Company (“Deere”) brought suit against Defendant FIMCO, Inc. (“FIMCO”) alleging that FIMCO was acting in violation of federal trademark and common law by producing and distributing trailed agricultural sprayers and applicators bearing green and yellow colors that are indistinguishable from the green and yellow colors Deere uses on its agricultural equipment.^[1] Deere brought four claims against FIMCO, including those for federal trademark infringement in violation of 15 U.S.C. § 1114, federal false designation of origin and unfair competition in violation of 15 U.S.C. § 1125(a), federal trademark dilution in violation of 15 U.S.C. § 1125(c), and common law trademark infringement in violation of the laws of Kentucky. [DN 1 at 6-9 (Complaint).]

         After a five-day bench trial, the Court issued Findings of Fact, Conclusions of Law, and a Judgment. [DN 369.] Therein, the Court found for Deere on all of its claims and issued the following permanent injunction against FIMCO:

Defendant FIMCO, Inc. and its affiliates, officers, agents, servants, employees, attorneys, and all other persons in active concert or participation with FIMCO are hereby permanently enjoined from using a combination of green and yellow colors in the manufacture, sale, offering for sale, distribution, promotion, marketing, or advertising of FIMCO trailed and wheeled agricultural equipment at any locality within the United States. This injunction does not prohibit the above-described persons and entities from using solely the color green or solely the color yellow in connection with agricultural equipment, nor does it prohibit the use of green with another color or yellow with another color. However, it does prohibit the use of any combination of green and yellow together on a piece of equipment.

[Id. at 106.]

         Now, the parties have raised several issues for the Court to address. First, FIMCO moved to have the Court's Findings of Fact, Conclusions of Law, and Judgment altered, amended, vacated, and supplemented and, alternatively, for a new trial. [DN 379.] Second, the parties each dispute how to interpret the injunction as it is currently worded. Third, both parties request that the Court modify the scope of injunction. Naturally, FIMCO moves to narrow the injunction and Deere moves to broaden it. The Court will address all of these issues below.

         DISCUSSION

         A. Scope of the Injunction

         1. Types of FIMCO Equipment Covered

         The first dispute between the parties regarding the scope of the injunction concerns the types of FIMCO equipment to which the injunction applies. As it is currently worded, the injunction extends to “FIMCO trailed and wheeled agricultural equipment.” [DN 369 at 106.] According to FIMCO, this wording means that the injunction extends only to “Ag equipment”, which, according to its definition, includes only “[t]railed and wheeled agricultural equipment with large yellow wheels, such as sprayers, applicators, elliptical sprayers and Patriot pathfinder trailers.” [DN 388 at 13.] This includes the following equipment:

         (Image Omitted)

[Id.] FIMCO's position is that the types of equipment depicted in the above four photos are the only types of equipment to which the injunction should extend. [Id.]

         FIMCO goes on to argue that the injunction as currently worded could, but should not, be construed to apply to what it calls mere “large equipment, ” which includes “[t]railed and wheeled equipment with smaller white wheels and large tanks of more than 500 gallons, ” such as the equipment in the following photo:

         (Image Omitted)

[Id.] FIMCO further argues that the injunction does not and should not apply to “utility equipment, ” which includes “Commercial, Turf, Lawn & Garden equipment with smaller white wheels and a 500 gallon or smaller tank, ” as is displayed in the following picture:

         (Image Omitted)

[Id. at 14.] According to FIMCO, both large equipment and utility equipment have small white wheels, which indicates that they are “not designated for agricultural use.” [Id. at 23.]

         Next, FIMCO argues that the injunction does not and should not apply to “mounted equipment, ” which does not have wheels at all:

         (Image Omitted)

[Id. at 14-15.] And finally, FIMCO claims that the injunction does not and should not apply to its “lawn and garden equipment, ” which also does not have wheels, such as the following piece of equipment:

         (Image Omitted)

[Id. at 15.]

         FIMCO's argument that the injunction should only extend to “FIMCO's green framed and yellow wheeled agricultural sprayers and applicators, ” [DN 388 at 6], rests on two main points. First, FIMCO claims that the text of Deere's “three trademarks at issue expressly require bright green frames/bodies and bright yellow wheels.” [Id. at 16.] Therefore, according to FIMCO, “it is axiomatic that products with frames/bodies of a color other than bright green and wheels of a color other than bright yellow cannot infringe.” [Id.] Second, FIMCO argues that Deere's complaint and Deere's evidence at trial was limited solely to FIMCO's green and yellow “‘trailed and wheeled' agricultural equipment, ” and therefore that the injunction cannot extend to any type of equipment that does not meet that description. [Id. at 19.]

         However, the Court has consistently rejected FIMCO's arguments that the only equipment or color arrangement that can infringe Deere's trademark rights are those that are identical to the equipment and marks over which Deere has trademark rights. As the Court explained in its Memorandum Opinion and Order denying FIMCO's motion for summary judgment, [DN 161], “[t]he appearance of the litigated marks side by side in the courtroom does not accurately portray market conditions.” Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 283 (6th Cir. 1997) (quoting Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1106 (6th Cir. 1991)).

Rather, courts must determine whether a given mark would confuse the public when viewed alone, in order to account for the possibility that sufficiently similar marks “may confuse consumers who do not have both marks before them but who may have a ‘general, vague, or even hazy, impression or recollection' of the other party's mark.”

Id. (quoting Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1188 (6th Cir. 1988)). Accordingly, “courts must view marks in their entirety and focus on their overall impressions, not individual features.” Id. This approach is commonsense when considering the fact that “[o]wnership of a mark confers both the right to use a particular mark and the right to prevent others from using the same or a confusingly similar mark.” Homeowners Grp., 931 F.2d at 1106. Therefore, whether FIMCO's equipment is trailed or wheeled and whether it uses the exact same placement of green and yellow as is recited in Deere's trademarks is not the issue. Whether FIMCO's use of green and yellow is “confusingly similar, ” however, is the question for trademark infringement purposes.

         And for trademark dilution purposes, the question is whether an “association aris[es] from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” 15 U.S.C § 1125(c)(2)(B) (emphasis added). In the dilution context, “[t]he purpose . . . is to provide a narrow remedy when the similarity between two marks is great enough that even a noncompeting, nonconfusing use is harmful to the senior user.” AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 805-06 (6th Cir. 2004) (quoting Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 425 (6th Cir. 1999)). In the Court's Findings of Fact and Conclusions of Law, the Court noted that the parties stipulated to the fact that the green and yellow colors FIMCO uses on its equipment are indistinguishable from the green and yellow colors Deere uses. [DN 369 at 70, 95.] Additionally, the Court found that “the placement of the green and yellow colors on the parties' respective agricultural equipment is also very similar. FIMCO's sprayers and applicators predominantly feature yellow tanks, yellow wheels, and green frames. [See, e.g., PX-301; PX-331.] Likewise, Deere's sprayers and applicators feature yellow tanks, yellow wheels, and green frames. [See, e.g., PX-6; PX-7.].” [Id. at 70.] Finally, the Court noted that “photographs of FIMCO trailed agricultural equipment being pulled by John Deere tractors likewise show the high degree of similarity between the use of green and yellow on the two types of goods.” [Id. at 96.] Therefore, while FIMCO is correct that district courts “should limit the scope of the injunction to the conduct ‘which has been found to have been pursued or is related to the proven unlawful conduct, '” Howe v. City of Akron, 801 F.3d 718, 753 (6th Cir. 2015) (quoting E.E.O.C. v. Wilson Metal Casket Co., 24 F.3d 836, 842 (6th Cir. 1994)), any confusingly similar use of green and yellow properly fits within the purview of an injunction in this case.

         As Deere points out, courts issuing injunctions after finding trademark infringement and trademark dilution have not limited those injunctions only to the exact goods or services that were found to use the protected trademark in an infringing manner, as FIMCO seeks to do here. For instance, Deere cites to the Michigan district court's decision in Audi AG v. D'Amato, in which the infringing party used various Audi trademarks and logos on merchandise offered for sale on his website, www.audisport.com. Audi AG v. D'Amato, 381 F.Supp.2d 644, 649, 660 (E.D. Mich. 2005), aff'd, 469 F.3d 534 (6th Cir. 2006). Though the defendant used Audi's logos on hats and shirts (as did Audi itself), the district court enjoined the defendant from any use of Audi's trademarks and logos on “any service or product, ” not just hats and shirts. Id. at 669 (emphasis added). In detail, after finding both trademark infringement and trademark dilution, the district court enjoined the defendant from “using any simulation, reproduction, counterfeit, copy or colorable imitation of the Audi Trademarks or trade dress in connection with the promotion, advertisement, display, sale, offering for sale, manufacture, production, circulation or distribution of any service or product.” Id. The Sixth Circuit affirmed the district court's decision and award of injunctive relief. Audi AG v. D'Amato, 469 F.3d 534, 550 (6th Cir. 2006).

         More recently, in Rolls-Royce Motor Cards Ltd. v. Davis, the district court found that the defendant infringed on Roll's Royce's trademarks when he “record[ed] and s[old] music under the stage name ‘Rolls Royce Rizzy, '” “advertise[d] his music under that name on his YouTube channel, ” sold “shirts that contain[ed] the words ‘Team Rolls Royce' through his online store, http://rollsroycerizzy.spreadshirt.com, ” and “ma[de] use of the RR Badge.” Rolls-Royce Motor Cards Ltd. v. Davis, No. 15-0417 (KM), 2016 WL 3913640, at *1 (D. N.J. Mar. 11, 2016). Though the defendant used Roll's Royce's trademarks in a different manner than Rolls Royce does, in connection with the distribution of Rolls Royce vehicles, the district court nonetheless permanently enjoined defendant from using those trademarks, ‘or any other reproduction, copy, or colorable imitation of the ROLLS-ROYCE mark in any manner in connection with the conduct of his business, either alone or in conjunction with other words.” Id. at *11.

         Our sister district court in Maker's Mark Distillery, Inc. v. Diageo North America, Inc., similarly enjoined the defendants from using Maker's Mark's red dripping wax seal not only on the exact Cuervo bottle that was found to be infringing, but in connection with any “Cuervo tequila products at any locality within the United States.” Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 703 F.Supp.2d 671, 702 (W.D. Ky. 2010), aff'd, 679 F.3d 410 (6th Cir. 2012).

         Based on the above cases, the Court disagrees with FIMCO's argument that the injunction should extend “only [to] trailed and wheeled agricultural sprayers and applicators.” [DN 394 at 10.] The Court is also skeptical of FIMCO's distinctions between what it now refers to as its “ag equipment, ” “large equipment, ” “utility equipment, ” “mounted equipment, ” and “lawn and garden equipment, ” all marketed under FIMCO's Ag Spray brand. [See DN 388 at 13-15.] As Deere points out, FIMCO has never made these distinctions between the equipment in its Ag Spray division at any point in this litigation until now. Rather, at trial, Dave Wipson, FIMCO's President and COO, testified that FIMCO has “two divisions. We have what we consider our lawn and garden division, which goes under the FIMCO brand, and then we have our ag division, which currently goes under the Ag Spray brand.” [DN 238 at 41 (Dave Wipson Trial Testimony).] Wipson further explained that the FIMCO lawn and garden equipment is generally “white with red and black accents, ” and primarily includes such equipment as fifteen to forty gallon sprayers and “a full line of attachments that would typically go behind a lawn and garden tractor or riding lawnmower or an ATV. So we offer carts that can be towed behind, aerators, spikers, things that you would use to take care of an acre-size lawn or so.” [Id. at 41-42.]

         With regard to FIMCO's Ag Spray division, Wipson explained that “Ag Spray” is “the brand that we use on the ag side of our business. And our primary colors that we use for ag sprayers is green and yellow.” [Id. at 43.] Wipson testified at length that the ...