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Ford Motor Company v. Intermotive, Inc.

United States District Court, E.D. Michigan, Southern Division

September 30, 2019

FORD MOTOR COMPANY, FORD GLOBAL TECHNOLOGIES, LLC, Plaintiffs,
v.
INTERMOTIVE, INC., GREGORY E. SCHAFFER, Defendants.

          ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFFS' MOTION FOR SUMMARY JUDGMENT, AND DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT

          TERRENCE G. BERG UNITED STATES DISTRICT JUDGE

         Plaintiffs/Counter-Defendants Ford Motor Company and Ford Global Technologies, LLC (together, “Ford”) bring this action against Defendants/Counter-Plaintiffs InterMotive, Inc. and Gregory E. Schafer (together, “InterMotive”) alleging trademark infringement, false designation of origin, trademark dilution, cancelation of trademark registration, and declaratory judgment. ECF No. 26. Ford claims that Defendants impermissibly used Ford's distinctive trademarks in various InterMotive advertisements and seeks a permanent injunction against Defendants prohibiting them from using Ford's trademarks as well as damages and a disgorgement of all revenues and profits realized by the infringement. The Court dismissed with prejudice Ford's cancelation of trademark registration claim. See ECF No.35. Defendants responded to Plaintiffs' action by bringing counterclaims for trademark infringement, unfair competition under the Lanham Act, breach of contract, unfair competition under state law, trade secret misappropriation under the Michigan Uniform Trade Secrets Act, and false advertising. ECF No. 42. InterMotive claims that all its uses of Ford's marks are permissible because they do not attempt to show that Ford is the source of the product and many were made with Ford's approval. InterMotive also claims that Ford misappropriated InterMotive's trade secrets and infringed on an InterMotive trademark when Ford began selling a competing product of the same name.

         Currently before the Court are the parties' cross motions for summary judgment (ECF Nos. 46, 47). The parties filed responses and replies to their respective motions. The Court heard oral argument on the motions on June 5, 2019. For the reasons stated below, the Court will DENY IN PART and GRANT IN PART Plaintiffs' motion for summary judgment and DENY Defendants' motion for summary judgment.

         I. Facts and Procedural History

          In 2011 and early 2012, Ford and InterMotive explored a potential business relationship wherein InterMotive would design an “Upfitter Interface Module” (“UIM”) for Ford to use on its vehicles. Plaintiffs' Motion for Summary Judgment, ECF No. 47, PageID.1187. The UIM, as described in the record, is a product that allows its user to modify a vehicle for special applications such as in the police, fire, and utility truck market. ECF No. 42, PageID.987. For example, it can program a truck to flash a light if exceeds 65 miles per hour, or program a police vehicle to automatically lock its doors unless certain conditions are met.[1] The UIM does this by “interfacing” with a vehicle's Controller Area Network (“CAN”) bus in order to permit information to travel between modules in the vehicle. Monnan Deposition, ECF No. 55, PageID.1655 (*sealed*).

         The preliminary discussions between Ford and InterMotive were governed by a “Confidential Disclosure Agreement” (“NDA”).[2] See ECF No. 26-1. The NDA, effective November 29, 2011, covered the sharing of information related to “gateway/interface component design and performance specifications.” Id. at PageID.337. It contains three pertinent provisions. First, a clause stating that the “agreement controls only Confidential Information disclosed during the six months term of this agreement, unless terminated earlier by the parties.” ¶ 6 of the NDA, ECF No. 26-1, PageID.337 (emphasis added). Second, a clause stating that “[a] Recipient's duty to protect Confidential Information disclosed under this agreement extends for a period of two years from the effective date.” ¶ 8 of the NDA, ECF No. 26-1, PageID.337 (emphasis added).

         Finally, a restrictive amendment clause stating that “[a]ll modifications to this agreement must be made in writing and signed by representatives of the parties.” ¶ 17 of the NDA, ECF No. 26-1, PageID.338. In sum, the agreement controlled only confidential information disclosed from November 29, 2011 to May 29, 2012, and a recipient's duty to protect confidential information disclosed under the agreement extended to November 29, 2013.

         InterMotive alleges it had already developed and sold a commercial version of the UIM product, and its relationship with Ford involved developing a “special performance-enhanced” version of the commercial UIM product specifically for Ford. Schafer Declaration, ECF No. 53-2, Page.ID.1499. Defendants call this version “Phase 1”. Id. When InterMotive learned that Phase 1 did not comply with Ford's specifications, Defendants allege they agreed with Plaintiffs to develop a Phase 2 module to meet Ford's specifications. Id. at PageID.1500.[3]

         Defendants allege the Phase 2 module contains the trade secrets pertinent to their counterclaim: “the use of programmable inputs” in a UIM module. Id. at 1502. They allege Phase 2 contains a trade secret because its unique features were not included in the commercial version of the UIM or Phase 1 of the UIM project with Ford. Id. Defendants allege specifications for Phase 2 were shared with Ford marked as “confidential” and “proprietary”-as required under the NDA-“in March, but possibly in July, and certainly no later than December of 2012, ”-after the expiration of the NDA on May 29, 2012. Id.

         While Ford alleges its relationship with InterMotive ended in May 2012 because InterMotive's prices were too high, InterMotive alleges the business relationship continued well into 2012, 2013, and 2014 as InterMotive developed Phase 2 and Phase 3. ECF No. 53, PageID.1470-71. To support their position that the “UIM” relationship ended in May 2012, Plaintiffs rely on email communications between executives at Ford and InterMotive in April and May 2012 explaining that InterMotive's prices were too high and any potential business deal would have to be terminated, at least for the foreseeable future. ECF No. 47-1, PageID.1212 (email chain from Schafer to Rob Richardson: “Sorry to hear that you will not be pursuing a solution until 2014.”); ECF No. 47-2. Ford alleges that after this notification, Ford engaged another vendor and developed a more economically viable design for its UIM. ECF No. 47, PageID.1189. Ford later announced this design in March or April 2016. Id.

         Defendants rebut this contention with declarations from president of InterMotive, and Defendant, Greg Schafer (ECF No. 53-2), and the former sales manager, operations manager and vice president of sales for InterMotive, Marc Ellison (ECF No. 53-3). First, they allege that Richardson, an employee of Ford of Europe, was interested in UIM technology in Europe. ECF No. 53-2 Page ID.1508-09; ECF No. 53-3, PageID.1578. Therefore, InterMotive “understood that [Richardson] was aware of what [InterMotive] was doing with Ford Motor Company in the U.S.A., ” and viewed Richardson's interest as “independent” of what InterMotive was doing with Ford in the United States. Id. Schafer's declaration also alleges the parties agreed to extend the NDA as they discussed the development of Phase 2 and InterMotive shared the confidential and proprietary specifications of Phase 2. See ECF No. 53-2, PageID.1503.[4] He alleges Ford also shared confidential and proprietary information with InterMotive during this time-further evidence that the parties intended to extend the NDA. ECF No. 53-2, PageID.1503-04.

         Defendants also allege that in July 2012, Ford engineer Randy Freiburger organized a meeting with InterMotive engineers to demonstrate “confidential” UIM technology and to discuss the Police Surveillance System. ECF No. 53, PageID.1483 (containing computer screenshot of InterMotive's electronic calendar showing meeting between Ford and InterMotive to discuss the Upfitter Interface Module on July 27, 2012). An email from Freiburger to Marc Ellison of InterMotive in August 2012 demonstrates that Ford was inquiring about UIM pricing well after May 2012. See ECF No. 53-3, PageID.1578, 1587.

         In December 2012, Defendants allege a meeting was organized by Freiburger[5] where InterMotive delivered a prototype of Phase 2 to Ford chief engineer Rob Stevens. Schafer Declaration, ECF No. 53-2, PageID.1506-07 (including computer screenshot of InterMotive's electronic calendar showing the meeting). Defendants allege the Phase 2 prototype included a “PROTOTYPE/ CONFIDENTIAL” sticker that was in line with the terms of the NDA. Id. at PageID.1507-08 (including photograph of Phase 2 prototype with sticker). They contend that Ford took this confidential prototype and shared it with another supplier who developed Ford's UIM that it later announced in 2016. ECF No. 42, PageID.995. Freiburger stated that he did not recall whether Schafer provided Ford with a UIM prototype at the meeting. Freiburger Deposition, ECF No. 54, PageID.1638 (*sealed*).

         Then in June 2013, Schafer of InterMotive and Coughlin of Ford executed a licensing agreement governing the Police Surveillance Mode Module. June 4, 2013 Licensing Agreement, ECF No. 49-1 (*sealed*). Plaintiffs assert that Defendants' signing of this licensing agreement was an express agreement not to use Ford's marks, regardless of Ford's alleged acquiescence to InterMotive's use throughout 2012. ECF No. 47, PageID.1199; Licensing Agreement, ECF No. 49-1, PageID.1428 (*sealed*). Defendants do not dispute that they executed the agreement, but they disagree with Plaintiffs over its scope and interpretation. ECF No. 53, PageID.1471. Schafer concedes he eventually signed a version of the agreement in 2013, “but it did not require InterMotive to pay anything, and it did not prevent [InterMotive] from selling [its] product to others. [Schafer] signed it to keep the customer - Ford - happy.” Schafer Declaration, ECF No. 53-2, PageID.1505-06. Schafer states that he abided by the terms of the agreement stating that InterMotive would not use Ford marks on InterMotive products “meaning the Surveillance Mode system.” Id. (emphasis added). In this, Schafer argues the licensing agreement had nothing to do with the UIM product, but pertained only to the police surveillance module it had developed for Ford. Id. However, Schafer simultaneously argues the agreement contained a two-way confidentiality promise in Article 8, that was again a promise between Ford and InterMotive not to disclose confidential information about each other's technology, including the UIM. Id.

         In January 2014, Schafer and Coughlin executed another licensing agreement, this time governing the “hepatic pedal and coaching method for improving vehicle fuel efficiency.” ECF No. 49-2 (*sealed*) (agreement); ECF No. 49-3 (*sealed*) (guarantee). Ford argues that Schafer's execution of the agreement is another acknowledgement by InterMotive to not use Ford's trademarks, because it contains a trademark clause. ECF No. 47, PageID.1188; § 14.8 Trademarks, ECF No. 49-2, PageID.1447-1448 (*sealed*). Schafer argues the agreement is irrelevant because it deals with hepatic technology, and in any event InterMotive did not sign the agreement, emphasizing that the agreement contains his signature and initials on behalf of LGS Group, Inc., not InterMotive. Id.; ECF No. 49-2. Ford argues that LGS is the “master distributor” of InterMotive's products and therefore InterMotive, not just LGS, agreed not to use Ford's trademarks. ECF No. 47, PageID.1188.

         Over two years later, in March 2016, Ford announced that several of its 2017 vehicles would include an “Upfitter Interface Module” that would better enable “upfitters” to interact with the electrical system of Ford vehicles for upfitting modifications. Announcement, ECF No. 26-4.[6]Defendants argue that Ford took InterMotive's confidential Phase 2 prototype that they shared with Ford engineers in December 2012 to another producer to develop Ford's UIM. ECF No. 42, PageID.999. After that announcement, Schafer on behalf of InterMotive, sent an email to Ford alleging it breached the 2011 NDA with InterMotive, duplicated features of Phase 2 of InterMotive's project for Ford by bringing the confidential prototype and specifications to the new supplier, and infringed on an InterMotive trademark by using the name “Upfitter Interface Module” to describe Ford's product. March 21, 2016 Schafer Email, ECF No. 26-5, PageID.362. Defendants argue that Ford began using the name “Upfitter Interface Module” with full knowledge of InterMotive's use of the same name to market its product, as evidenced by an email from a Ford engineer explaining that the name was already being used by an existing producer and recommending three alternative names. See Monnan Declaration, ECF No. 55, PageID.1663 (*sealed*).

         In response, Ford sent a letter to InterMotive in July of 2016 refuting Schafer's claims and asserting for the first time that InterMotive was infringing on Ford's trademark rights by using Ford's marks on InterMotive products without Ford's consent. July 15, 2016 Ford Letter, ECF No. 47-7, PageID.1229. Ford contends that when it began investigating InterMotive's claims, it discovered InterMotive was “misappropriating the Ford Marks in several ways.” ECF No. 26, PageID.297. Ford attached an agreement to the letter, seeking InterMotive's compliance to cease and desist using Ford's marks. ECF No. 47-4, PageID.1233.

         Ford's investigation allegedly revealed that throughout June and July of 2013, and later in 2016, InterMotive used Ford trademarks when marketing the InterMotive UIM. Ford argues this was in violation of the two licensing agreements signed in June 2013, see ECF No. 49-1 (Police Surveillance Mode Module agreement) (*sealed*), and January 2014, see ECF No. 49-2 (Hepatic Pedal agreement) (*sealed*).

         First, Ford alleges Defendants used the distinctive “Ford Oval” mark on the “splash screen” of InterMotive's UIM software. ECF No. 26, PageID.297; “Splash Screen”, ECF No. 47-12.[7] Second, Ford alleges Defendants used the Ford Oval mark in a promotional and training video on InterMotive's website under the heading “The Ford Competitive Advantage.” ECF No. 26, PageID.298-99; “Ford Competitive Advantage” Advertisement, ECF No. 47-13. Third, Ford argues Defendants used the Ford Oval and “Go Further” trademarks in a video on InterMotive's website describing the “Ford Police Interceptor Surveillance Mode.” ECF No. 26, PageID.300. Fourth, Ford asserts Defendants used the Ford Oval trademark in a UIM brochure for Ford created on July 23, 2013. “Brochure, ” ECF No. 47-11.

         Ford contends some of these unauthorized uses of Ford trademarks continued well into 2016. ECF No. 26, PageID.301. For example, Ford alleges InterMotive used the Ford Oval trademark on InterMotive's website advertising the InterMotive UIM and the advertisement appeared after October 25, 2016. Id. at PageID.301-02; ECF No. 26-8. This advertisement appears similar to the “brochure”, see ECF No. 47-11 (Plaintiff's Exh. K), and Defendants assert it shows that InterMotive is the source of the UIM product, as evidenced by InterMotive's logo, phone number and web address printed on the bottom of the brochure for prospective buyers, and merely shows that the product operates on Ford vehicles. ECF No. 53, PageID.1474-75.

         Schafer responded to Ford's July 2016 email listing the alleged trademark infringements, stating that he had “no issue with paragraph 1 [of the attached agreement] regarding the use of “Ford Marks” and “ha[d] already directed that [his] staff remove any Ford trademarks from [InterMotive] materials.” ECF No. 47-16, PageID.1293-94. The email also stated that InterMotive had no intention to initiate a formal claim regarding the NDA from 2011 and conceded that “there was not a Non-Compete Agreement in place and information regarding [InterMotive's UIM] product has been available on [InterMotive's] web site for several years.” Id. Schafer stated that InterMotive had “no problem with releasing Ford of any current or future claim regarding this matter and agree[d] to sign the release.” Id. It is unclear from the record whether Schafer actually signed the release or merely stated that he would be willing to sign the release. However, Schafer states that he was unrepresented by counsel at the time he sent the email and then believed that Ford may have found InterMotive's UIM technology from public sources - as Ford represented. Schafer Declaration, ECF No. 53-2, PageID.1511. InterMotive and Schafer now believe that Ford took that technology in 2012-2013 when InterMotive shared it with Ford under the promise of confidentiality. Id.

         After Ford announced its UIM product in April 2016, Defendants filed an application to the United States Patent and Trademark Office (“USPTO”) to place the term “Upfitter Interface Module” on the primary register. ECF No. 27-4 (showing a filing date of June 7, 2016). The USPTO rejected Defendants' application, and the mark was instead placed on the supplemental register. ECF No. 26-11 (showing a registration date of May 9, 2017). It appears Defendants filed a second application to the USPTO for placement on the primary register, but that application is not included in the record. Rather, Ford includes the USPTO's subsequent denial of primary register placement, explaining that that the term “Upfitter Interface Module” was merely descriptive of InterMotive's goods and therefore could not be placed on the primary register. ECF No. 28-1 (showing an issuing date of March 8, 2018). While the USPTO denied Defendants' application, it permitted InterMotive to respond to the refusal by submitting additional evidence and arguments in support of registration. Id. at PageID.537. Schafer claims that InterMotive responded with additional arguments and evidence but the USPTO suspended proceedings on the application pending the resolution of this matter. ECF No. 53-2, Page.ID1546-71 (InterMotive's additional evidence); id. at PageID.1573-75 (USPTO suspension in September 2018).

         In August 2016, InterMotive's engineering manager, Dan Mower, sent an email to Schafer and eleven other employees of InterMotive and LGS.[8] ECF No. 47-9. Having reviewed Ford's recently-released user manual for the Ford UIM, Mower identified differences and similarities between Ford's UIM and InterMotive's UIM. Of note, Mower states that the user manual “is pretty much a knock off of [InterMotive's], with different screen layouts.” Id. at PageID.1250. Ford argues this shows that Ford's UIM is not a “blatant copy” of InterMotive's UIM. ECF No. 47, PageID.1190.

         Then in a letter dated October 25, 2016 to InterMotive, Ford noted what it alleged were InterMotive's continuing violations of Ford's trademark rights. ECF No. 26-7. The letter notes that while Ford's “oval” trademark had been removed from InterMotive's UIM's “splash screen, ” the oval mark had been replaced by a different Ford trademark. Id. at PageID.370. Ford stated that it did not consent to InterMotive's use of the Ford trademark and demanded that InterMotive remove it from the “splash screen.” Id. The letter also demanded that InterMotive sign the agreement that Ford originally sent InterMotive in July 2016. Id.

         Ford then brought the underlying complaint against InterMotive alleging: (1) Trademark Infringement pursuant to 15 U.S.C. § 1114, (2) False Designation of Origin pursuant to 15 U.S.C. § 1125(a), (3) Unfair Competition, (4) Trademark Dilution, (5) Cancelation of Trademark Registration pursuant to 15 U.S.C. § 1064, and (6) declaratory judgment. Plaintiffs' Amended Complaint, ECF No.26. Thereafter, InterMotive brought six counterclaims against Ford, alleging (1) Infringement of a Registered Trademark, (2) Unfair Competition under § 43(a) of the Lanham Act, (3) Breach of Contract, (4) Unfair Competition under state law, (5) Trade Secret Misappropriation under the Michigan Uniform Trade Secrets Act, and (6) False Advertising. ECF No. 42. The Court dismissed with prejudice Plaintiffs' Count V for Trademark Cancelation. See ECF No.35.

         Ford moves for summary judgment on its and InterMotive's claims. ECF No. 47; InterMotive's Response, ECF No. 53. InterMotive only moves for summary judgment as to Ford's claims. ECF No. 46; Ford's Response, ECF No. 58. The Court held a hearing on the parties' competing motions on June 5, 2019.

         II. Standard of Review

          “Summary judgment is appropriate if the pleadings, depositions, answers to interrogatories, and admissions on file, together with any affidavits, show that there is no genuine issue as to any material fact such that the movant is entitled to a judgment as a matter of law.” Villegas v. Metro. Gov't of Nashville, 709 F.3d 563, 568 (6th Cir. 2013); see also Fed. R. Civ. P. 56(a). A fact is material only if it might affect the outcome of the case under the governing law. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986).

         On a motion for summary judgment, the Court must view the evidence, and any reasonable inferences drawn from the evidence, in the light most favorable to the non-moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citations omitted); Redding v. St. Edward, 241 F.3d 530, 531 (6th Cir. 2001).

         The moving party has the initial burden of demonstrating an absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). If the moving party carries this burden, the party opposing the motion “must come forward with specific facts showing that there is a genuine issue for trial.” Matsushita, 475 U.S. at 587. The trial court is not required to “search the entire record to establish that it is bereft of a genuine issue of material fact.” Street v. J.C. Bradford & Co., 886 F.2d 1472, 1479-80 (6th Cir. 1989). Rather, the “nonmoving party has an affirmative duty to direct the court's attention to those specific portions of the record upon which it seeks to rely to create a genuine issue of material fact.” In re Morris, 260 F.3d 654, 655 (6th Cir. 2001). The Court must then determine whether the evidence presents a sufficient factual disagreement to require submission of the challenged claims to the trier of fact or whether the moving party must prevail as a matter of law. See Anderson, 477 U.S. at 252.

         III. Analysis

         a. Ford's Claim for Trademark Infringement (Count I)

         A trademark is “any word, name, symbol, or device . . . used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if the source is unknown.” 15 U.S.C. § 1127 (emphasis added). “To state a claim for trademark infringement under the Lanham Act, the plaintiff must allege facts establishing: (1) that it owns a registered trademark; (2) the defendant used the trademark in commerce; and (3) the use was likely to cause confusion.” Hensley Manuf. V. ProPride, Inc., 579 F.3d 603, 609-10 (6th Cir. 2009) (citing 15 U.S.C. § 1114(1)). Only the third factor-whether InterMotive's use of Ford's marks caused a likelihood of confusion-is at issue in this claim. The Sixth Circuit traditionally applies an eight-factor test to determine whether there is a likelihood of confusion. Id. at 610. Those factors are: “(1) strength of plaintiff's mark; (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) degree of purchaser care; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion in selecting the mark.” Audi AG v. D'Amato, 469 F.3d 534, 542-43 (6th Cir. 2006). “But the likelihood of confusion analysis also involves a preliminary question: whether the defendants ‘are using the challenged mark in a way that identifies the source of their goods.'” Hensley, 579 F.3d at 610 (quoting Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 695 (6th Cir. 2003)). “If they are not, then the mark is being used in a ‘non-trademark way' and trademark infringement laws, along with the eight-factor analysis, do not even apply.” Id. (internal quotations omitted). InterMotive argues that each time it used a Ford trademark, it did so to demonstrate that the InterMotive UIM is compatible on Ford vehicles, and therefore that InterMotive was the source of the product, and on many occasions the allegedly infringing advertisement was created with Ford's permission and assistance. ECF No. 46, PageID.1082, 1085. InterMotive also argues its use of the Ford marks was “minimal and discontinued when Ford objected.” Id. at PageID.1082.[9]

         Ford relies on three primary examples to argue that InterMotive used “precise replica[s]” of Ford's trademarks, directly competing with Ford's UIM[10] and creating a “presumption of confusion”. ECF No. 47, PageID.1193. Those examples are: (1) the brochure (ECF No. 47-11), (2) the splash screen (ECF No. 47-12), and (3) the “Competitive Advantage” advertisement (ECF No. 47-13).[11] See ECF No. 47, PageID.1194-95. Plaintiffs assert these uses of Ford marks are likely to confuse the public as to whether InterMotive is “affiliated, sponsored, and/or licensed by Ford or have some other type of business relationship with Ford” when they see the Ford marks on InterMotive's advertisements and website. ECF No. 26, PageID.303-04. They also allege consumers will be more likely to purchase the advertised InterMotive products bearing Ford marks because they will erroneously believe Ford created the products or that Ford endorses the product. Id. at PageID.304-05. The Court considers each alleged infringement.

         First, regarding the “splash screen, ” Ford's mark appears between the logos of Ram, Chevrolet, GMC and GM below the heading “InterMotive UIM.” ECF No. 47-12. InterMotive argues that it had previous approval from Ford to use the Ford Oval mark and that it only used the mark to refer to Ford, not to assert that its product originated from Ford. ECF No. 42, PageID.949; see also ECF No. 46, PageID.1086 (“The Ford logo on the screen refers to Ford-and several other manufacturers-to show that the InterMotive Module can operate on Ford vehicles, just as it can also operate on vehicles from other vehicle manufacturers.”). InterMotive also argues that the “splash screen” only appears after the customer has downloaded InterMotive's UIM from the InterMotive website by clicking on an InterMotive software icon-none of which display Ford marks. Id. at PageID.1085-86. Ford argues this still creates “post-sale” or “marketplace” confusion, but does not explain how, apart from the conclusory argument that InterMotive ignores the concept of post-sale confusion. ECF No. 58, PageID.1699.

         Second, Ford argues Defendants used the Ford Oval and “Go Further” trademarks in a video on InterMotive's website describing the “Ford Police Interceptor Surveillance Mode.” ECF No. 26, PageID.300. InterMotive argues that Ford's claim is baseless because “Ford made and hosts the video, ” which highlights InterMotive's UIM product. ECF No. 42, PageID.952. InterMotive alleges that it merely posted a link to the video on its website, but Ford still hosts the video on YouTube. ECF No. 46, PageID.1089. Ford does not respond to these allegations outside of the blanket remark that it did not authorize InterMotive to use the marks. ECF No. 26, PageID.300.[12] While InterMotive had a license from Ford to use technology associated with the Police Surveillance Module, Ford alleges the license did not grant InterMotive any right to use the oval or “Go Further” trademarks. Id. It does not address InterMotive's allegation that the video is made and hosted by Ford.

         Third, Ford asserts Defendants used the Ford Oval trademark in a UIM brochure for Ford created on July 23, 2013. “Brochure, ” ECF No. 47-11. The heading of the brochure states: “Ford Upfitter Interface Module” followed by the Ford Oval mark below it. Id. Defendants assert the brochure shows that InterMotive is the source of the product, as evidenced by InterMotive's logo, phone number and web address printed on the bottom of the brochure for prospective buyers. ECF No. 53, PageID.1474-75. InterMotive also alleges that “Ford knew about the brochure and actually used it” at trade shows or otherwise and InterMotive used it to demonstrate how InterMotive's UIM supported Ford vehicles. Id. Schafer additionally states that he shared the brochure with Randy Freiburger and other Ford employees who told Schafer “that they liked the brochure and viewed it as helpful to Ford's efforts to sell Ford vehicles. So we made the brochure with Ford and for Ford, and Ford had copies of it.” Schafer Declaration, ECF No. 53-2, PageID.1501. InterMotive states that like its competitors, it develops these advertisements to demonstrate at trade shows and online that their product is compatible with Ford vehicles. ECF No. 60, PageID.1721. Ford's Freiburger testified in deposition to that effect, stating that he understood that InterMotive “need[ed] to communicate what their capability is on our vehicles for customers to understand why they should buy a module, just like the other industry competitors for them.” ECF No. 54, PageID.1632 (*sealed*).

         Finally, with respect to the “Ford Competitive Advantage” video, Defendants assert that they designed the video with Ford when they were “actively working . . . to market InterMotive's Upfitter Interface Module, ” and that Ford provided a high-resolution image of the Ford Oval mark for use in the video.[13] ECF No. 42, PageID.951; Declaration of Greg Schafer, ECF No. 53-2 (“We and Ford showed [Phase I of our UIM project with Ford] at the 2012 NTEA [trade] show together, and it is the subject of the video that we and Ford showed at that show.”); “Ford Competitive Advantage” Advertisement, ECF No. 47-13. Defendants provide additional “screen shots” from the contested video, arguing that many of the other screens display the InterMotive UIM component without Ford's mark and another splash screen and voice-over stating that it is an “InterMotive Ford Upfitter Interface Module” and directing customers to contact InterMotive if they are interested in the product. ECF No. 46, PageID.1087-88. They further allege that Ford was “actively engaged in making the video” and played the video at ¶ 2012 trade show. Id. at PageID.1089. Ford only contests this with the blanket assertion that it did not permit InterMotive to use its marks, and that any perceived authorization is overcome by Schafer's signing of the June 2013 Police Surveillance Mode licensing agreement and the January 2014 Hepatic Petal licensing agreement. ECF No. 58, Page ID.1686; June 2013 licensing agreement, ECF No. 49-1 (*sealed*); January 2014 licensing agreement, ECF No. 49-2 (*sealed*).

         Ford argues these uses create a “presumption of confusion” because InterMotive used a “precise replica” of Ford's marks and because InterMotive's product competed directly with Ford's product. See Ford Motor Co. v Lloyd Design Co., 22 Fed.Appx. 464, 468 (6th Cir. 2001). However, Lloyd Design did not involve a defendant who was alleging that it was not using Ford's mark in a way that identifies the source of their goods or a defendant claiming that Ford permitted and even encouraged them to use Ford marks, id. at 465. Further, of the three examples cited by Plaintiffs, see ECF No. 47, PageID.1194-95, each are alleged to have been used in 2012 and 2013-up to four years before Ford announced its UIM. In 2012 and 2013, as InterMotive alleges, Ford was not selling a UIM product, but was instead working with InterMotive on InterMotive's UIM. InterMotive indicates this is why the brochure, titled “Ford Upfitter Interface Module” and listed by Ford as created in 2013, includes InterMotive's logo, as well as InterMotive's web address and phone number. Similarly, InterMotive alleges the “Ford Competitive Advantage” video was created in partnership with Ford and that Ford showed the video at trade shows in 2012. Ford does not address that these advertisements were created at least three years before Ford developed its own UIM. ...


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