Black & Decker will need to try again in court to secure a judgment worth tens of millions of dollars it thought it was getting from China-based power tool maker Positec, who Black & Decker had accused of using a black-and-yellow color scheme to improperly mimic the B&D-owned DeWalt brand’s packaging to confuse consumers into buying its Rockwell tools.
On Sept. 11, U.S. District Judge Robert M. Dow Jr. ordered a new trial in the trade dress infringement case brought by Black & Decker against Positec USA Inc., the makers of the Rockwell brand of power tools and equipment.
The ruling comes nearly two years since a jury in Chicago federal court ordered Positec to pay B&D nearly $54 million for allegedly selling power tools in packaging the jury determined was designed to mislead consumers into concluding Rockwell tools were somehow similar to DeWalt. Black & Decker had specifically alleged Positec had commandeered its DeWalt brand’s well-recognized black-and-yellow color scheme to trade on consumers’ purportedly favorable opinions of DeWalt power tools.
Following that verdict, Positec, which is based in Suzhou, China, with a North American headquarters in Charlotte, N.C., and is owned by Chinese billionaire Gao Don, asked the judge to either toss the verdict and enter judgment in its favor or simply order a new trial, arguing it did not get a fair shake the first time around.
Judge Dow refused Positec’s request for judgment, but did agree the jury had been misled into finding for Black & Decker, thanks to a key piece of evidence the judge said he should not have allowed.
Specifically, Dow pointed to an “expert survey” placed before the jury by Black & Decker, which the toolmaker had said showed consumers could be easily confused into believing Rockwell brand power tools were similar or at least no different from DeWalt tools.
The judge said the survey, which was conducted by professional intellectual property and trademark infringement “expert witness” James Berger, did not measure up to the standards required for such key evidence.
In the survey, Berger had purportedly shown potential power tool buyers photos of boxed power tools, “which according to Plaintiffs was taken in a retail Home Depot store.” All but one of the power tools was a DeWalt-brand tool. The remaining tool was a Rockwell tool. Berger testified the survey results showed 47 percent of those surveyed “believed that all the products pictured were put out by the same company.”
Positec had asked the judge to bar the survey from being admitted, but the judge at the time denied the request, “concluding that Defendants’ criticisms of Mr. Berger’s expert opinions went to their weight rather than their admissibility.”
However, after the jury verdict showed the survey was the “linchpin” of Black & Decker’s case, Dow reversed himself, saying he now agreed with Positec that the survey should have been excluded.
“The Court conclude that this is one of those unusual instances in which a proferred consumer survey was ‘so informally designed and conducted that it fails key tests of professionalism and reliability,’” the judge said.
Specifically, the judge said he believed Berger’s testimony itself undercut the survey’s importance, as Berger testified the survey was “’observational’ and not directed at whether (Positec’s) trade dress caused the consumer confusion, which is the ‘relevant issue’ in this case.”
“The survey that Mr. Berger and Plaintiffs ultimately chose to submit into evidence does not use a side-by-side comparison of two products but instead uses a picture showing one of Defendants’ allegedly infringing products among ten of Plaintiffs’ products,” Dow wrote. “Mr. Berger acknowledged that this arrangement was designed to and did cause survey respondents to ‘overlook the obvious’ — that Defendants’ product was marked ‘Rockwell’ whereas Plaintiffs’ were marked ‘DeWalt.’”
The judge also indicated he would prohibit Black & Decker’s attorneys from making any reference to Positec’s Chinese ownership at the next trial. In the previous trial, he noted Black & Decker had made “repeated references to China as the origin of (Positec’s) products and to the ‘Chinese billionaire’ who founded” Positec. The judge said he “with the benefit of hindsight … recognizes the troubling nature of this line of testimony and argument,” and believes such facts “have very limited (if any) relevance to the case and may unfairly lead a jury to conclude that a very large verdict is appropriate against a ‘Chinese billionaire’ who has attempted to pass off his products as American-made.”
Positec is represented in the action by attorneys with the firms of Middleton Reutlinger, of Louisville, Ky., and Husch Blackwell LLP, of Chicago.
Black & Decker is represented by the firm of Niro McAndrews LLC, of Chicago.