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Engineered Arresting Systems Corporation v. Atech, Inc.

United States District Court, N.D. Alabama, Northeastern Division

September 24, 2018

ATECH, INC., et al., Defendants.



         Engineered 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.


         "The 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).

         "A 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)).


         A. Motion to Strike

         ESCO 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).[1]

         Objections 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).

         1. Declaration of Dan Edwards (Doc. 136-35)

         The 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.

         The 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 disagrees.

         The 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 withheld.

         Next, 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. 11).

         Generally, 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 uncorroborated.").

         That 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. 2007).

         Mr. 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).

         Mr. 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.

         Even if 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.

         Finally, 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.

         2- The Declaration of Alex Del Grosso (Doc. 136-36)

         Mr. Del 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).

         Second, 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.

         Next, 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.

         Finally, 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.

         For the 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.

         B. BAK-12 and PORTARREST Aircraft Arresting Systems

         This 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).

         An 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, ¶¶ 10-11).

         ESCO is 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 ...

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