RYAN, Circuit Judge
This is a trademark infringement action brought pursuant to the Lanham Act, 15 U.S.C. @ 1051, et seq. The principal issue is whether the district court correctly [**2] concluded that plaintiff Ferrari enjoyed unregistered trademark protection in the exterior shape and appearance of two of its automobiles and, if so, whether defendant Roberts' replicas of Ferrari's designs infringed that protection, in violation of section 43(a) of the Lanham Act. More narrowly focused, the issues are:
- Whether Ferrari's automobile designs have acquired secondary meaning;
- Whether there is a likelihood of confusion between Ferrari's cars and Roberts' replicas;
- Whether the appropriated features of Ferrari's designs are nonfunctional; and
- Whether the injunction granted by the district court is excessively broad.
We must also decide whether the district court, 739 F. Supp. 1138, properly rejected Roberts' request for a jury trial.
We hold that the district court properly decided all of the issues and, therefore, we shall affirm.
Ferrari began producing a car called the Testarossa in 1984. To date, Ferrari has produced approximately 5000 Testarossas. Production of these cars is also intentionally limited to preserve exclusivity: the entire anticipated production is sold out for the next several years and the waiting period to purchase a Testarossa is approximately five years. A new Testarossa sells for approximately $ 230,000.
Roberts is engaged in a number of business ventures related to the automobile industry. One enterprise is the manufacture of fiberglass kits that replicate the exterior features of Ferrari's Daytona Spyder and Testarossa automobiles. Roberts' copies are called the Miami Spyder and the Miami Coupe, respectively. The kit is a one-piece body shell molded from reinforced fiberglass. It is usually bolted onto the undercarriage of another automobile such as a Chevrolet Corvette or a Pontiac Fiero, called the donor car. Roberts marketed [**4] the Miami Spyder primarily through advertising in kit-car magazines. Most of the replicas were sold as kits for about $ 8,500, although a fully accessorized "turnkey" version was available for about $ 50,000.
At the time of trial, Roberts had not yet completed a kit-car version of the Miami Coupe, the replica of Ferrari's Testarossa, although he already has two orders for them. He originally built the Miami Coupe for the producers of the television program "Miami Vice" to be used as a stunt car in place of the more expensive Ferrari Testarossa.
The district court found, and it is not disputed, that Ferrari's automobiles and Roberts' replicas are virtually identical in appearance.
Ferrari brought suit against Roberts in March 1988 alleging trademark infringement, in violation of section 43(a) of the Lanham Act, and obtained a preliminary injunction enjoining Roberts from manufacturing the replica cars. The injunction was later amended to permit Roberts to recommence production of the two models.
Five months later, Roberts filed a voluntary petition in bankruptcy. Despite the Chapter 11 proceedings, the bankruptcy court, in a carefully limited order, lifted the automatic stay and permitted [**5] Ferrari to continue to prosecute this action. Prior to trial, the district court denied Roberts' request for a jury, and the case was tried to the court resulting in a verdict for Ferrari and a permanent injunction enjoining Roberts from producing the Miami Spyder and the Miami Coupe.
(1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. . . .
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."
Ferrari's Lanham Act claim in this case is a "trade dress" claim. Ferrari charges, and the district court found, that the unique and distinctive exterior shape and design of the Daytona Spyder and the Testarossa are protected trade dress which Roberts has infringed by copying them and marketing his replicas.
Roberts asserts that there has been no infringement under section 43(a) for a number of reasons: (1) the design of Ferrari's vehicles are protected only [**7] under design patent law, see 35 U.S.C. @ 171, and not the Lanham Act; (2) there is no actionable likelihood of confusion between Ferrari's vehicles and Roberts' replicas at the point of sale; and (3) the "aesthetic functionality doctrine" precludes recovery.
We shall take up each argument in turn.
1) that the trade dress of Ferrari's vehicles has acquired a "secondary meaning,"
2) that there is a likelihood of confusion based on the similarity of the exterior shape and design of Ferrari's vehicles and Roberts' replicas, and
3) that the appropriated features of Ferrari's trade dress are primarily nonfunctional.
See Kwik-Site Corp. v. Clear View Mfg. Co., Inc., 758 F.2d 167, 178 (6th Cir. 1985).
A. Secondary Meaning
To acquire a secondary meaning in the minds of the buying public, an "article of merchandise when shown to a prospective customer must prompt the affirmation, 'That is the article I want because I know its source,' and not the negative inquiry as to 'Who makes that article?' In other words, the article must proclaim its [**8] identification with its source, and not simply stimulate inquiry about it." West Point Mfg. Co. v. Detroit Stamping Co., 222 F.2d 581, 595 (6th Cir.) (citation omitted), cert. denied, 350 U.S. 840, 100 L. Ed. 749, 76 S. Ct. 80, 107 U.S.P.Q. (BNA) 362 (1955). Arguably, secondary meaning in this case can be presumed from Roberts' admissions that he intentionally copied Ferrari's designs. Roberts told Vivian Bumgardner, an investigator who recorded her conversations with Roberts, that "we put this whole body right on it and it looks just like a real car, I mean they can't tell by looking. . . . We build and sell the same car, reproduce it." The intent to copy was also shown by Roberts' use of the distinctive Ferrari prancing horse logo on the front parking lights of the Daytona Spyder and in advertising brochures. The original Miami Coupe brochure even copied the Ferrari name by referring to the Roberts' car as the "Miami Testarossa." The evidence of intentional copying shows the strong secondary meaning of the Ferrari designs because "there is no logical reason for the precise copying save an attempt to realize upon a secondary meaning that is in existence." Audio Fidelity, Inc. v. High Fidelity Recordings, Inc., 283 F.2d 551, 558 (9th Cir. 1960). [**9]
Ferrari, however, need not rely on a presumption of secondary meaning because the evidence at trial showed that the exterior design of Ferrari's vehicles enjoyed strong secondary meaning. Lawrence Crane, Art Director of Automobile magazine, testified that the shape of a Ferrari "says Ferrari to the general populous (sic)" and that "because it's so instantly recognizable . . . we've used even just portions of Ferraris, the Testarossa, for instance, and people recognize it, and our sales are changed." William Moore, Editor of Kit Car Illustrated, and a witness for Roberts, [*1240] conceded that car replica manufacturers frequently copy Ferraris because the "special image" associated with Ferrari creates a market for cars which look like Ferraris. The testimony of Crane and Moore was supported by survey data which indicated that of survey respondents shown photographs of Ferrari's cars without identifying badges, 73% properly identified a photograph of Daytona Spyder as manufactured by Ferrari and 82% identified the Testarossa as a Ferrari product. Such survey evidence, combined with intentional copying and the widespread publicity surrounding Ferraris, convinced the court in a separate [**10] action brought by Ferrari against Roberts' former partner to enjoin him from producing replicas of the Daytona Spyder identical to those produced by Roberts, that the Ferrari vehicle design has a secondary meaning:
Ferrari's vehicles would not acquire secondary meaning merely because they are unique designs or because they are aesthetically [**11] beautiful. The design must be one that is instantly identified in the mind of the informed viewer as a Ferrari design. The district court found, and we agree, that the unique exterior design and shape of the Ferrari vehicles are their "mark" or "trade dress" which distinguish the vehicles' exterior shapes not simply as distinctively attractive designs, but as Ferrari creations.
We also agree with the district court that Roberts' admission that he intentionally copied Ferrari's design, the survey evidence introduced by Ferrari, and the testimony of Crane and Moore amount to abundant evidence that the exterior design features of the Ferrari vehicles are "trade dress" which have acquired secondary meaning.
Roberts argues strongly that section 43(a) provides no trademark infringement protection for the exterior design of a product because "automobile designs are to be protected from copying only pursuant to the design patent statute," and Ferrari, during the period relevant to this case, had not protected the Daytona Spyder or the Testarossa with a design patent. We disagree.
Courts have consistently rejected Roberts' argument that the availability of design patent protection precludes [**12] applicability of the Lanham Act for products whose trade dress have acquired strong secondary meaning. Actionable harm results from either infringing a design patent or copying a product with secondary meaning. Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464, 466 (2d Cir.), cert. denied, 350 U.S. 832, 100 L. Ed. 743, 76 S. Ct. 67, 107 U.S.P.Q. (BNA) 362 (1955). See also Audio Fidelity, 283 F.2d at 555. As the court explained in Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689, 692-93 (N.D. Ga. 1977):
Thus, Lanham Act protection is available to designs which also might have been covered by design patents as long as the designs have acquired secondary meaning. Dallas Cowboys Cheerleaders, 604 F.2d at 204-05; Truck Equip. Serv., 536 F.2d 1210; Mogen David, 51 C.C.P.A. 1260, 328 F.2d 925, 140 U.S.P.Q. (BNA) 575; Rolls-Royce, 428 F. Supp. 689. Ferrari's designs have clearly acquired secondary meaning and thus were entitled to protection.
B. Likelihood of Confusion
1. District Court's Findings
This court has held that in determining likelihood [**16] of confusion in a Lanham Act case, the court should consider the following factors: strength of the plaintiff's mark; relatedness of the goods; similarity of the marks; evidence of actual confusion; marketing channels used; likely [*1242] degree of purchaser care; defendant's intent in selecting the mark; and likelihood of expansion of the product lines. Frisch's Restaurants, Inc. v. Elby's Big Boy, 670 F.2d 642, 648 (6th Cir.), cert. denied, 459 U.S. 916, 74 L. Ed. 2d 182, 103 S. Ct. 231 (1982).
We conclude that aside from the presumption of likelihood of confusion that follows from intentional copying, Ferrari produced strong evidence that the public is likely to be confused by the similarity of the exterior design of Ferrari's vehicles and Roberts' replicas.
2. Roberts' Objections
Roberts disagrees with the legal significance of the district court's findings of likelihood of confusion. He argues that for purposes of the Lanham Act, the requisite likelihood of confusion must be confusion at the point of sale--purchaser confusion--and not the confusion of nonpurchasing, casual observers. The evidence is clear that Roberts assured purchasers of his replicas that they were not purchasing Ferraris and that his customers were not confused about what they were buying.
Roberts also argues that actionable confusion may not be inferred from intentional copying when the intentional copying involves the design of a product as opposed to the copying of a trademark, trade name or trade dress. Implicit, of course, is Roberts' related argument that the exterior shape and design of the Ferrari cars is [**22] not, and cannot be, a trademark or trade dress. We disagree with these contentions.
a. Confusion as to Source
Roberts is correct that, for the most part, similarity of products alone is not actionable; there must also be confusion as to the origin of the product. West Point Mfg., 222 F.2d at 589; see also Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 626 F.2d 193, 195 (1st Cir. 1980). Similarity of products, however, does become actionable when the similarity leads to confusion as to source and the public cares who the source of the product is.
In contrast to West Point, Roberts copied the nonfunctional features of an item having great secondary meaning. Because consumers care that they are purchasing a Ferrari as opposed to a car that looks like a Ferrari, and because Roberts' replicas look like Ferraris, Ferrari presented an actionable claim as to confusion of source.
b. Confusion at Point of Sale
Roberts argues that his replicas do not violate the Lanham Act because he informed his purchasers that his significantly cheaper cars and kits were not genuine Ferraris and thus there was no confusion at the point of sale. The Lanham Act, however, was intended to do more than protect consumers at the point of sale. When the Lanham Act was enacted in 1946, its protection was limited to the use of marks [**25] "likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services." In 1967, Congress deleted this language and broadened the Act's protection to include the use of marks "likely to cause confusion or mistake or to deceive." Thus, Congress intended "to regulate commerce within [its control] by making actionable the deceptive and misleading use of marks in such commerce; [and] . . . to protect persons engaged in such commerce against unfair competition. . . ." 15 U.S.C. @ 1127. Although, as the dissent points out, Congress rejected an anti-dilution provision when recently amending the Lanham Act, it made no effort to amend or delete this language clearly protecting the confusion of goods in commerce. The court in Rolex Watch explicitly recognized this concern with regulating commerce:
The dissent argues that the Lanham Act requires proof of confusion at the point of sale because the eight factor test used to determine likelihood of confusion focuses on the confusion of the purchaser, not the public. The dissent submits that three of the factors, marketing channels used, likely degree of purchaser care and sophistication, and evidence of actual confusion, specifically relate to purchasers. However, [**28] evidence of actual confusion is not limited to purchasers. The survey evidence in this case showed that members of the public, but not necessarily purchasers, were actually confused by the similarity of the products. Moreover, the other five factors, strength of the mark, relatedness of the goods, similarity of the marks, defendant's intent in selecting the mark, and likelihood of product expansion, do not limit the likelihood of confusion test to purchasers.
Since Congress intended to protect the reputation of the manufacturer as well as to protect purchasers, the Act's protection is not limited to confusion at the point of sale. Because Ferrari's reputation in the field could be damaged by the marketing of Roberts' replicas, the district court did not err in permitting recovery despite the absence of point of sale confusion.
3. Product Confusion
Roberts argues that the exterior design features of the Ferrari vehicles are not entitled to Lanham Act protection because only packages in which products are marketed, not products themselves, are covered as protected trade dress. In many cases, the policy of fulfilling consumer demand mandates that trade dress, including packaging [**29] and labeling, but not products, are protected from imitation:
Appellant could not prevent appellee from using railroad sounds in a record, but should be able to prevent duplication of a "form of dress . . . primarily adopted for purposes of identification and individuality," and "unrelated to basic consumer demands in connection with the product" . . ., as distinguished from basic consumer demands or preferences, or attention directed to the container rather than to the product itself.
"The label or ornament is a relatively small and incidental affair, which would not exist at all, or at least would not exist in that shape but for the intent to deceive; whereas the instrument sold is made as it is, partly at least, because of a supposed or established desire of the public for instruments in that form."