United States District Court, N.D. Alabama, Northeastern Division
MEMORANDUM OPINION AND ORDER
MADELINE HUGHES HAIKALA UNITED STATES DISTRICT JUDGE.
Arresting Systems Corporation (ESCO) claims that the
defendants Atech, Inc., SCAMA AB, Philip Ahagen, and Harald
Ahagen infringed on ESCO's "BAK-12" and
"PORTARREST" trademarks in violation of the Lanham
Act when the defendants responded to a United States Air
Force solicitation for BAK-12 and PORTARREST-IV/BAK-12 mobile
aircraft arresting systems. (Doc. 39, p. 17). ESCO also
brings claims of false designation of origin and false
advertising in violation of the Lanham Act, and common law
unfair competition and trademark infringement claims. (Doc.
39, pp. 19-21). The case comes before the Court on the
defendants' motion for summary judgment on ESCO's
trademark infringement claims. (Docs. 103, 123). For the
following reasons, the Court grants the motion.
STANDARD OF REVIEW
court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). To demonstrate that there is a genuine
dispute as to a material fact that precludes summary
judgment, a party opposing a motion for summary judgment must
cite "to particular parts of materials in the record,
including depositions, documents, electronically stored
information, affidavits or declarations, stipulations
(including those made for purposes of the motion only),
admissions, interrogatory answers, or other materials."
Fed.R.Civ.P. 56(c)(1)(A). '"Genuine disputes [of
material fact] are those in which the evidence is such that a
reasonable jury could return a verdict for the non-movant.
For factual issues to be considered genuine, they must have a
real basis in the record."' Evans v.
Books-A-Million, 762 F.3d 1288, 1294 (11th Cir. 2014)
(quoting Mize v. Jefferson City Bd. of Educ, 93 F.3d
739, 742 (11th Cir. 1996)). When considering a motion for
summary judgment, the Court must view the evidence in the
record in the light most favorable to the non-moving party
and draw reasonable inferences in favor of the non-moving
party. White v. Beltram Edge Tool Supply, Inc., 789
F.3d 1188, 1191 (11th Cir. 2015).
litigant's self-serving statements based on personal
knowledge or observation can defeat summary judgment."
United States v. Stein, 881 F.3d 853, 857 (11th Cir.
2018); see Feliciano v. City of Miami Beach, 707
F.3d 1244, 1253 (11th Cir. 2013) ("To be sure,
Feliciano's sworn statements are self-serving, but that
alone does not permit us to disregard them at the summary
judgment stage."). Even if the Court doubts the veracity
of the evidence, the Court cannot make credibility
determinations of the evidence at the summary judgment stage.
Feliciano, 707 F.3d at 1252 (citing Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)).
FACTUAL AND PROCEDURAL BACKGROUND
Motion to Strike
presents its statement of facts mostly through the
declarations of Dan Edwards (Doc. 136-35) and Alex Del Grosso
(Doc. 136-36) which ESCO submitted in opposition to the
defendants' motion for summary judgment. The defendants
filed a motion to strike the two declarations. (Doc. 140-2).
The defendants should have raised their objections in their
reply brief. The Court construes the defendants5 motion to
strike as an objection under Rule 56(c)(2). See Taylor v.
City of Gadsden, 958 F.Supp.2d 1287, 1291 (N.D. Ala.
2013), aff'd, 767 F.3d 1124 (11th Cir. 2014)
(treating motion to strike as an objection).
under Rule 56(c)(2) function like trial objections adjusted
for the pretrial setting, and "[t]he burden is on the
proponent to show that the material is admissible as
presented or to explain the admissible form that is
anticipated." Fed.R.Civ.P. 56(c)(2), advisory committee
note (2010 amendments). Rule 56(c)(2) enables a party to
submit evidence that ultimately will be admissible at trial
in an inadmissible form at the summary judgment stage.
See Jones v. UPS Ground Freight, 683 F.3d 1283,
1293-94 (11th Cir. 2012). A district court has broad
discretion to determine at the summary judgment stage what
evidence it will consider pursuant to Rule 56(c)(2). See
Green v. City of Northport, 2014 WL 1338106, at *1 (N.D.
Ala. March 31, 2014).
Declaration of Dan Edwards (Doc. 136-35)
defendants argue that Mr. Edwards lacks personal knowledge to
testify about ESCO's predecessors, consumer understanding
of "BAK-12," E.W. Bliss's adoption of
"BAK-12," SCAMA's BC-11 arresting system, and
USAF's BAK-12 drawings. (Doc. 140-2, pp. 7, 9, 12, 15,
16). The Court disagrees. Mr. Edwards is the former president
of ESCO. (Doc. 136-35, p. 1, ¶ 1). ESCO designated Mr.
Edwards to testify about information known or reasonably
available to ESCO in the company's Rule 30(b)(6)
deposition. In his declaration, Mr. Edwards stated, "I
am competent to give this declaration based on my personal
knowledge of the events and circumstances described herein,
or as a result of my review of the documents and records kept
by ESCO in the ordinary course of business." (Doc.
136-35, p. 1, ¶ 2). Mr. Edwards stated also,
"[b]ecause of my time  at ESCO, including but not
limited to my time as President, I am knowledgeable about or
had access to business records concerning the history of the
PORTARREST and BAK-12 brands, ESCO's use and ownership of
its trademarks, including the PORTARREST and BAK-12 marks,
ESCO's advertising, marketing, and sales of all of
ESCO's products, and associated internal operations, as
well as ESCO's channels of trade and target consumers,
and the trade generally." (Doc. 136-35, p. 2, ¶ 3).
Given Mr. Edwards's role within ESCO and his own
testimony, the defendants have not established that Mr.
Edwards lacks personal knowledge from which he may testify.
defendants also argue that pursuant to Rule 37(c)(1) of the
Federal Rules of Civil Procedure, Mr. Edwards may not testify
about ESCO and its predecessors' sales. (Doc. 140-2, pp.
9-10). Under Fed.R.Civ.P. 37(c)(1), "[i]f a party fails
to provide information ... as required by Rule 26(a) or (e),
the party is not allowed to use that information ... to
supply evidence on a motion . . . ." In Atech's
first interrogatories, Atech asked ESCO to "[i]dentify
every person, Third Party, customer, and/or potential
customer to whom Plaintiff has proposed or offered to sell or
provide a good or product under the designation PORTARREST
and/or BAK-12." (Doc. 136-5, p. 24). ESCO provided a
list of sales from 2006 to 2015. (Doc. 136-5, pp. 47-52). The
defendants argue therefore that Mr. Edwards cannot testify as
to sales before 2006. (Doc. 140-2, p. 10). The Court
challenged statement, "ESCO has sold at least 1200
BAK-12 systems to the USAF and international users and at
least 450 PORTARREST systems" (Doc. 136-35, p. 7, ¶
21), would not be responsive to Atech's interrogatory.
The statement does not identify any customer or potential
customer for ESCO's products. Thus, Mr. Edwards's
statement does not inject evidence that ESCO previously
the defendants argue that certain statements in Mr.
Edwards's declaration are contradicted or not supported
by other evidence in the record. (Doc. 140-2, pp. 6-8, 11,
13-16). The defendants also argue that this Court should
disregard Mr. Edwards's statement that ESCO sold
arresting systems in Alabama as sham because, the defendants
argue, the statement in Mr. Edward's declaration
contradicts his prior deposition testimony. (Doc. 140-2, p.
the Court cannot weigh evidence or determine the credibility
of evidence at the summary judgment stage. Consistent with
this rule, the Court rejects the defendants' challenge of
Mr. Edwards's declaration as self-serving, contrary to,
or uncorroborated by other evidence. See United States v.
Stein, 881 F.3d 853, 854 (11th Cir. 2018) ("[A]n
affidavit which satisfies Rule 56 of the Federal Rules of
Civil Procedure may create an issue of material fact and
preclude summary judgment even if it is self-serving and
general rule does not apply when a party attempts to create a
material factual dispute "with an affidavit that merely
contradicts, without explanation, previously given clear
testimony." Van T. Junkins & Assoes., Inc. v.
U.S. Indus., Inc., 736 F.2d 656, 657 (11th Cir. 1984).
This exception to the general rule regarding credibility is
sometimes called the "sham affidavit rule."
Liebman v. Metro. Life Ins. Co., 708 Fed.Appx. 979,
982 (11th Cir. 2017). A court must "find some inherent
inconsistency between an affidavit and a deposition before
disregarding the affidavit." Allen v. Bd. of Pub.
Educ. for Bibb Cnty., 495 F.3d 1306, 1316 (11th Cir.
Edwards states in his declaration that "ESCO has sold
parts for BAK-12 systems in . . . Alabama . . . [and] has
also sold full BAK-12 systems in . . . Alabama, including to
Maxwell Air Force Base." (Doc. 136-35, ¶ 16).
During Mr. Edwards's deposition, counsel for defendants
asked: "Since your involvement with ESCO, has ESCO sold
PORTARREST or BAK-I2s in Alabama?" (Doc. 145-1, p. 17,
61:13-15). Mr. Edwards explained:
To my knowledge, I -- in my 11 plus years with the
corporation, I do not think we've sold any of that
equipment in  Alabama. That does not necessarily include
spare parts, though. But complete systems? You may find
that's not a true - that's not correct. But, to my
knowledge, in the last 11 plus years, I don't recall have
a full system sale in, in the state of Alabama.
(Doc. 145-1, p, 17, 61:15-62:1).
Edwards's statement in his declaration concerning parts
sales and BAK-12 systems does not directly contradict his
prior deposition testimony because the question and answer
were limited to ESCO's sale of PORTARREST or BAK-12s in
Alabama since Mr. Edwards's involvement with ESCO. (Doc.
144, pp. 17-18; see also Doc. 145-1, p. 17,
61:13-62:1). Mr. Edwards's later declaration concerning
ESCO's sales in Alabama contains no time restrictions.
Moreover, Mr. Edwards stated both in his deposition and in
his declaration that ESCO sold parts in Alabama. Therefore,
Mr. Edwards's statements in his declaration and his
testimony in his deposition are not inconsistent. The Court
overrules this objection.
the Court were to partially strike Mr. Edwards's
declaration on the basis of the sham affidavit rule, the
Court's substantive analysis of ESCO's trademark
claims would not change. Therefore, the Court alternatively
finds that this objection is moot because the challenged
evidence is immaterial to the summary judgment analysis.
the defendants' hearsay objections (Doc. 140-2, pp. 7, 9,
13, 15) are vague and misplaced. None of Mr. Edwards's
statements that the defendants challenge are out-of-court
statements offered to prove the truth of the matter asserted.
The Declaration of Alex Del Grosso (Doc. 136-36)
Grosso is the Director of Sales and Marketing, Europe and
North America, for ESCO. (Doc. 136-36, p. 1, ¶ 1).
First, the defendants object to Mr. Del Grosso's
statements concerning his meetings with Polish Air Force
(PAF) officials (Doc. 136-36, pp. 3-5, ¶¶ 6-7,
9-10) on the grounds that the statements are inadmissible
hearsay. (Doc. 140-2, pp. 19-20). But as ESCO points out, Mr.
Del Grosso's testimony about his meetings with PAF is not
hearsay because ESCO does not offer the testimony for the
truth of the matter asserted. (Doc. 144, pp. 16-18). Rather,
ESCO offers the testimony to demonstrate that Mr. Del Grosso
met with PAF and that Mr. Del Grosso thought that PAF wanted
the BAK-12 and PORTARREST systems from ESCO. (See
Doc. 144, pp. 16-17). Moreover, ESCO does not offer Mr. Del
Grosso's statement that Captain Farkas showed Mr. Del
Grosso a sole source letter for the truth of the matter
asserted in the letter. (Doc. 144, p. 17). Rather, ESCO
offers the statement to show that Mr. Del Grosso thought that
PAF considered ESCO to be the only source of the BAK-12 and
PORTARREST systems. (Doc. 144, p. 17).
the defendants object to Mr. Del Grosso's statement that
ESCO manufactured and provided BAK-12 and PORTARREST systems
to PAF through third parties Maxer and Zeus, Inc. (Doc.
136-36, pp. 2-3, ¶ 5) because ESCO did not provide this
information in response to Atech's interrogatories. (Doc.
140-2, pp. 22-23). But this information would not be
responsive to Atech's interrogatories because Mr. Del
Grosso did not state that Maxer and Zeus, Inc. "sold,
advertised, offered for sale, and/or proposed to sell or
provide any . . . PORTARREST and/or BAK-12," (Doc.
103-6, pp. 22-23). Thus, Mr. Del Grosso's statement does
not inject evidence that ESCO previously withheld.
the defendants object to Mr. Del Grosso's identifications
of proprietary ESCO part numbers (Doc. 136-36, p. 5, ¶
12) because Mr. Edwards did not identify the part numbers in
ESCO's Rule 30(b)(6) deposition, the part numbers are
irrelevant, and Mr. Del Grosso's testimony appears to be
false. (Doc. 140-2, pp. 24-25). Even though Mr. Edwards did
not know about ESCO's part numbers, Mr. Del Grosso may
testify from his personal knowledge about the part numbers.
The testimony is relevant because if part numbers in the
amendment to the solicitation were proprietary to ESCO, then
it is more likely that the solicitation sought ESCO products.
The defendants cannot object to testimony because they
believe it is false, and the Court cannot assess credibility
or weigh evidence at the summary judgment stage.
the defendants' objection to Mr. Del Grosso's
statement that he has "been employed by ESCO since
1984" (Doc. 136-36, p. 2, ¶ 3) on the grounds that
ESCO has existed only since 1999 (Doc. 140-2, p. 25) fails
because the Court cannot assess credibility or weigh
evidence, and Mr. Del Grosso likely refers to ESCO's
predecessors. The defendants' objections to Mr. Del
Grosso's statements about his understanding of
"BAK-12" (Doc. 136-36, pp. 6-7, ¶¶ 19,
22-23) on the grounds that the testimony is irrelevant and
self-serving (Doc. 140-2, pp. 25-26) fail because the
testimony is clearly relevant, and ESCO may support its
opposition to the motion for summary judgment with a
self-serving affidavit. See Stein, 881 F.3d at 857.
foregoing reasons, the Court overrules the defendants'
objections and denies the motion to strike. Therefore,
ESCO's statement of facts is properly before the Court,
and the Court will proceed by presenting the facts in the
light most favorable to ESCO.
BAK-12 and PORTARREST Aircraft Arresting
case concerns a USAF procurement of aircraft arresting
systems for the Polish Air Force (PAF). An aircraft arresting
system is a mechanical system used to rapidly decelerate
aircraft as they land. (Doc. 136-35, p. 2, ¶ 5). An
aircraft arresting system absorbs the forward momentum of
aircraft landings in small spaces or emergencies to prevent
the aircraft from overrunning the landing zone. (Doc. 136-35,
pp. 2-3, ¶ 5).
aircraft arresting system consists of an energy absorber and
an engagement system. (Doc. 136-35, p. 4, ¶¶
10-11). An energy absorber is a friction brake, rotary
hydraulic brake, or textile brake. (Doc. 136-35, p. 4, ¶
10). The engagement system connects the landing aircraft to
the energy absorber. (Doc. 136-35, p. 4, ¶ 11). An
engagement system may consist of a net (also known as a
barrier), cable, or engineered materials. (Doc. 136-35, p. 4,
¶ 11). The landing aircraft makes contact with the
engagement system and the energy absorber dissipates the
kinetic energy of the aircraft. (Doc. 136-35, p. 4,
the world leader in the design and manufacturing of military
aircraft arresting systems. (Doc. 136-35, p. 3, ¶ 6).
The BAK-12 aircraft arresting system is one of ESCO's
main products. (Doc. 136-35, p. 3, ¶ 7). The BAK-12
system is a mechanical rotary friction brake that employs a
cable hook system to decelerate a landing aircraft. (Doc.
136-35, p. 4, ¶ 13). "BAK" is an acronym for
"barrier arresting kit," but the BAK-12 is not
actually a barrier system or a barrier arresting kit because
the BAK-12 is not a net system. (Doc. 136-35, p. 4,
¶¶ 12-13). However, the BAK-12 can be used in
connection with a net system if needed. (Doc. 136-35, p. 4,
¶ 13; Doc. 136-36, p. 7, ¶ 21). "BAK" is
pronounced "back." (Doc. 136-35, p. 6, ¶ 19)
(see Doc. 103-13, p. 2). According to ESCO,
"[t]he generic ...