Yellowfin Yachts, Inc. v. Barker Boatworks, LLC

U.S. Court of Appeals8/7/2018

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Case: 17-11176 Date Filed: 08/07/2018 Page: 1 of 33

[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT
________________________

No. 17-11176
________________________

D.C. Docket No. 8:15-cv-00990-SDM-TGW

YELLOWFIN YACHTS, INC.,

Plaintiff–Appellant,

versus

BARKER BOATWORKS, LLC,
KEVIN BARKER,

Defendants–Appellees.

________________________

Appeal from the United States District Court
for the Middle District of Florida
________________________

(August 7, 2018)

Before TJOFLAT, ROSENBAUM and BRANCH, Circuit Judges.

TJOFLAT, Circuit Judge:
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I.

Yellowfin Yachts, Inc. is a manufacturer of high-end fishing boats. Since

2000, Yellowfin has produced predominantly “center-consoled, open-fisherman

styled boats” ranging between twenty-one and forty-two feet. According to

Yellowfin, these boats all have the same “swept” sheer line, meaning a gently

sloped “s”-shaped line that runs upward from the point at which a boat’s hull

intersects with the deck to the boat’s lofted bow. 1 This swept sheer line, described

by Yellowfin as “unique,” is the subject of its trade dress claims. 2

(Twenty-four-foot Yellowfin boat.)

1
Yellowfin also produces a seventeen-foot “flats boat.” Its flats boat lacks the sheer line
at issue.
2
The sheer line for which Yellowfin is claiming trade dress protection here does not
include the dramatically sloped portion appearing at the stern of the twenty-six-foot Yellowfin
pictured below.
2
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(Twenty-six-foot Yellowfin boat.)

Yellowfin hired Kevin Barker in 2006 as a vice president of sales. Although

Yellowfin presented Barker with a proposed employment agreement which

included confidentiality clauses, Barker never executed the agreement. Barker left

Yellowfin in 2014—not encumbered by a noncompetition or nonsolicitation

contract—and founded a competitor, Barker Boatworks, LLC. On his last day at

Yellowfin, Barker downloaded hundreds of files from Yellowfin’s main server.

These files contained “detailed purchasing history and specifications for all of

Yellowfin’s customers,” as well as “drawings” and “style images” for Yellowfin

boats and “related manufacturing information.”3

After leaving Yellowfin, Barker retained marine architect Michael Peters to

design a twenty-six-foot bay boat based on Barker’s specifications. These

3
Barker claims that he did so to ensure that he was properly compensated through
commissions.
3
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specifications, according to Yellowfin, were derived directly from Yellowfin’s

own bay boats, and the Barker boat’s sheer line nearly replicated that of Yellowfin.

Barker Boatworks opened for business in July 2014 and has since competed with

Yellowfin in the same “niche” center-console fishing-boat market.

(Barker Boatworks “Calibogue Bay” boat.)

In April 2015, Yellowfin filed a complaint against Barker Boatworks and

Kevin Barker4 in the United States District Court for the Middle District of Florida.

With leave of court, Yellowfin filed its First Amended Complaint, the operative

complaint here, in September. In this complaint, Yellowfin pleads claims for trade

dress infringement and false designation of origin under Section 43(a) of the

Lanham Act, 15 U.S.C. § 1125(a), common-law unfair competition, common-law

trade dress infringement, and violation of Florida’s Trade Secret Act.5

4
For ease of reading, we generally do not distinguish between the two defendants and we
refer to them interchangeably.
5
Yellowfin also claims that the defendants violated Florida’s Trade Secret Act pursuant
to a conspiracy.
4
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After unsuccessfully moving to dismiss Yellowfin’s complaint, Barker

Boatworks moved for summary judgment on all of Yellowfin’s claims. The

District Court granted the motion in full. First, the Court provided three reasons

why Yellowfin’s Lanham Act trade dress claim failed: Yellowfin did not

adequately describe any distinctive feature of its sheer line, its sheer line is

functional and thus not protectable as trade dress, and no reasonable jury could

conclude that a potential buyer would likely confuse a Barker boat for a Yellowfin.

The Court then held that, because a reasonable jury could not conclude that a

potential buyer would likely confuse the two boats, Yellowfin’s claims of Section

43(a) false designation of origin, common-law trade dress infringement, and

common-law unfair competition also fail. Finally, the Court found that Yellowfin

failed to identify a protectable, misappropriated trade secret, and, regardless, that

Yellowfin did not make “reasonable efforts” to protect all of its alleged trade

secrets. The Court therefore rejected Yellowfin’s trade secret claim. Yellowfin

appeals these rulings.

We note that Yellowfin’s trade secret claim could conceivably have been pleaded as a
conversion claim, as Barker essentially stole a bundle of Yellowfin’s information and data—
whether this information was a “trade secret” or not—on his way out. “Conversion is an ‘act of
dominion wrongfully asserted over another’s property inconsistent with his ownership therein.’”
United Techs. Corp. v. Mazer, 556 F.3d 1260, 1270 (11th Cir. 2009) (quoting Thomas v. Hertz
Corp., 890 So. 2d 448, 449 (Fla. Dist. Ct. App. 2004)). Under Florida law, a conversion action
can be brought related to the copying of a non-rival good, such as a confidential customer list.
See Warshall v. Price, 629 So. 2d 903, 905 (Fla. Dist. Ct. App. 1993) (recognizing a conversion
claim where the defendant copied and took, but did not delete or otherwise deprive the plaintiff
of, plaintiff’s confidential patient list).
5
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We review a district court’s grant of summary judgment de novo and

construe the evidence and draw all reasonable inferences therefrom in the light

most favorable to Yellowfin. Ziegler v. Martin Cty. Sch. Dist., 831 F.3d 1309,

1318 (11th Cir. 2016). We first address the District Court’s trade dress rulings.

II.

Section 43(a) of the Lanham Act provides a cause of action for trade dress

infringement. Kason Indus., Inc. v. Component Hardware Grp., Inc., 120 F.3d

1199, 1203 (11th Cir. 1997). Trade dress is defined as “the total image of a

product,” which “may include features such as size, shape, color or color

combinations, texture, graphics, or even particular sales techniques.” John H.

Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983). A typical

trade dress action involves a good’s packaging or labeling, but the design of a

product, or a feature of a product, may also constitute protectable trade dress. See

id. The plaintiff must prove three elements to prevail on a trade dress claim: “1) its

trade dress is inherently distinctive or has acquired secondary meaning, 2) its trade

dress is primarily non-functional, and 3) the defendant’s trade dress is confusingly

similar.” AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1535 (11th Cir. 1986). We

6
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narrow our focus to the third requirement, likelihood of confusion, as we conclude

that factor is dispositive in favor of Barker Boatworks.6

Trademark law’s familiar “likelihood of confusion” test is used to assess

trade dress claims. See John H. Harland Co., 711 F.2d at 981. We consider (1)

the strength of plaintiff’s trade dress, (2) the similarity of the products’ designs, (3)

the similarity of the products themselves, (4) the similarity of the parties’ trade

channels and customers, (5) the similarity of advertising media used by the parties,

(6) the defendant’s intent, and (7) the existence and extent of actual confusion in

the consuming public. Fla. Int’l Univ. Bd. of Trustees v. Fla. Nat’l Univ., Inc., 830

F.3d 1242, 1255 (11th Cir. 2016); AmBrit, 812 F.2d at 1538. We recognize that

aspects of one factor will overlap with aspects of the others. Therefore, we do not

decide which party is favored by each factor, tally up the score, and hold in favor

of the party with the most points. We apply the factors holistically. That said, the

existence and extent of actual confusion and the strength of the plaintiff’s trade

dress are, respectively, the most and second most important factors. Fla. Int’l, 830

F.3d at 1256, 1264. Those factors have the strongest influence on the question the

test was created to assess: the likelihood of consumer confusion.

6
“[A]s all three elements are necessary for a finding of trade dress infringement, any one
could be characterized as threshold.” Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369
F.3d 1197, 1202 (11th Cir. 2004) (alteration in original) (quoting Epic Metals Corp. v. Souliere,
99 F.3d 1034, 1039 (11th Cir. 1996)). Because we conclude that the District Court properly held
that no reasonable jury could find that Barker Boatworks’ trade dress would likely confuse the
purchasing public, we do not address the other two requirements.
7
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Although likelihood of confusion is a question of fact, it may be decided as a

matter of law. Tana v. Dantanna’s, 611 F.3d 767, 775 & n.7 (11th Cir. 2010).

“The role of the [district] court in reviewing a motion for summary judgment is to

determine the ultimate question of whether, in light of the evidence as a whole,

there is sufficient proof of a likelihood of confusion to warrant a trial of the issue.”

Id. at 775 n.7. Because we review the district court’s decision de novo, using the

same legal standards it employed, our role is effectively the same. See Ziegler, 831

F.3d at 1318.

Yellowfin’s primary argument is not that consumers are likely to

accidentally purchase a Barker boat instead of a Yellowfin due to Barker’s

allegedly similar sheer line. Rather, its theory of confusion centers on confusion in

the postsale context: consumers might see a Barker boat sporting a Yellowfin-like

sheer line and mistakenly believe that boat to be a Yellowfin. See Custom Mfg. &

Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 650 (11th Cir. 2007) (recognizing

“likelihood of confusion in the post-sale context” as a viable basis for an action);

Montgomery v. Noga, 168 F.3d 1282, 1301 n.32 (11th Cir. 1999) (“[P]resale

confusion of actual purchasers is not the only type of confusion actionable under

the Lanham Act.”). We apply the factors with that theory in mind and ultimately

hold that, as a matter of law, no reasonable jury could find a likelihood of

confusion between the Barker and Yellowfin boats.

8
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A. Strength of Yellowfin’s Trade Dress

The District Court reasoned that because sweeping sheer lines are

“ubiquitous” in the center-console fishing-boat market, “Yellowfin’s purportedly

‘distinctive’ feature deserves little protection.” Indeed, Wylie Nagel, Yellowfin’s

founder, conceded that several other boats have a sweeping sheer line. Thus, the

District Court concluded, Yellowfin’s sheer line is weak trade dress.

Yellowfin pushes back on this reasoning, contending that even though

sweeping sheer lines are common among fishing boats, its sweeping sheer line

stands out from those of other boats—it is unique and, to consumers, synonymous

with Yellowfin’s high-quality boats. Yellowfin provides the following excerpts

from boating magazines to support this point:

• “Yellowfin Yachts has earned a reputation for producing some of
the most jaw-dropping center-console fishing machines on the
market,” with “good looks and sleek design” that “are easily
recognizable, even from far distances.”
• “Ever wonder if you took the logos off many boats today whether
you’d still be able to tell them apart? You’ll never have difficulty
discerning a Yellowfin. From the proud bow to the sweeping
sheer, a Yellowfin is unmistakable.”
• “Looking at this 29-footer’s profile, you can’t possibly mistake it
for anything but a Yellowfin with its distinctive proud bow and
dramatically sloping sheer line.”

These excerpts, however, hardly bolster Yellowfin’s argument. The first

simply describes Yellowfin boats as “sleek” and “easily recognizable.” Although

Yellowfin’s sheer line might contribute to the “sleekness” and, to an extent, the
9
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recognizability of its boats, the excerpt leaves this to inference. And it takes quite

an inferential leap to connect this excerpt, which makes no reference to the sheer

line, to Yellowfin’s claim that its sheer line—one among many in the market—is

so unique as to be synonymous with its product. The second excerpt is more

probative. It homes in on the sweeping sheer line’s ability to signify a Yellowfin

boat. But it also attributes recognizability to the “proud bow” of Yellowfin boats,

which is not part of the claimed trade dress, and seemingly to other unnamed

features as well, stating, “From the proud bow to the sweeping sheer, a Yellowfin

is unmistakable.” (Emphasis added). Finally, the third excerpt mentions only the

“proud bow and dramatically sloping sheer line” of a twenty-nine-foot Yellowfin

boat. As with the “proud bow,” the “dramatically sloping” portion of Yellowfin’s

sheer line is not part of its trade dress claim. 7 Thus, the third excerpt says nothing

about the trade dress at issue in this case. Overall, even construed in the light most

favorable to Yellowfin, these excerpts provide little support for Yellowfin’s claim

that its sweeping sheer line is particularly strong trade dress.

Aside from these excerpts, Yellowfin presents as evidence Nagler’s

declaration, in which he stated that he sought to create boats “that would have a

unique and enduring style,” that Yellowfin thus heavily markets its boats showing

7
Supra note 2.
10
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off the sheer line, and that Yellowfin customers “comment on, and identify” the

Yellowfin sheer line.

A self-serving declaration “may create an issue of material fact and preclude

summary judgment even if . . . uncorroborated.” United States v. Stein, 881 F.3d

853, 854 (11th Cir. 2018) (en banc). But that is not to say that such a declaration

will necessarily preclude summary judgment. Id. at 859. Nagler’s statements do

not focus on the signifying effect—i.e., the strength—of the Yellowfin sheer line.

Rather, he merely relays that he intended to create boats with a unique and

enduring style, that Yellowfin heavily advertises its boats and sometimes the

advertisements refer to the sheer line directly, and that customers mention the sheer

line.8 These statements fail to support the proposition that Yellowfin’s sheer line

causes consumers to associate the sheer line with its source, bringing to their minds

the high-quality boats manufactured by Yellowfin.

In short, Yellowfin presents little evidence meaningfully supporting the

strength of its trade dress. The effect of this shortcoming is amplified by the fact

that many other boats in the relevant market have a sweeping sheer line. Cf. Fla.

Int’l, 830 F.3d at 1257–58 (noting that “the strength of [Florida International

8
This last point is hearsay. Yellowfin offers Nagler’s out-of-court statement relaying
what consumers have said for the truth it asserts—that customers comment on and identify
Yellowfin’s sheer line. See Fed. R. Evid. 801(c). “The general rule is that inadmissible hearsay
cannot be considered on a motion for summary judgment.” Macuba v. Deboer, 193 F.3d 1316,
1322 (11th Cir. 1999) (internal quotation marks and footnote omitted).
11
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University’s] word mark and [FIU] acronym” was naturally mitigated by

“operat[ing] in a crowded field” of similar names and acronyms used by other

Florida universities); Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n, 651

F.2d 311, 315–16 (5th Cir. 1981) (explaining that extensive third-party use of a

particular word in plaintiff’s trademark counsels against likely confusion). Even

relatively weak trade dress, though, may be entitled to a narrow range of

protections. See Fla. Int’l, 830 F.3d at 1260. We thus continue our inquiry.

B. Similarity of the Products’ Designs

The second likelihood of confusion factor focuses on the overall impression

of the two products at issue. AmBrit, 812 F.2d at 1540. The District Court stated

that Yellowfin and Barker Boatworks “sell a product generally similar in

appearance,” but noted that “several prominent differences permit a potential buyer

to distinguish a Barker from a Yellowfin.” First, both Yellowfin and Barker

Boatworks prominently display their respective logos, which “look nothing alike,”

on their boats. Further, a Barker’s hull differs from that of a Yellowfin, and Barker

“omits the rolled transom typical of most Yellowfin models.” 9 Finally, citing

Nagler’s deposition, the District Court added plainly that “the layout of each boat

9
The “transom” is the backmost section of a boat that connects the port and starboard
sections of the hull—where a boat’s name is typically displayed. A “rolled” transom is as
opposed to a “straight” transom. The twenty-six-foot Yellowfin pictured above has a rolled
transom, while the twenty-four-foot Yellowfin and the Barker boat pictured do not.
12
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is different.” These differences, the Court stated, “will preclude a potential buyer[]

[from] mistaking a Barker for a Yellowfin.”

Yellowfin argues that the District Court erred by failing “to address the

actual Yellowfin trade dress—its unique sheer line.” Had the District Court done

so, Yellowfin continues, it would have found that the two sheer lines at issue are

similar. Yellowfin concludes that the similarity between the sheer lines, combined

with the Court’s statement that both boats are “generally similar in appearance,”

tips this second likelihood of confusion factor in its favor.

Although Yellowfin’s argument is weakened by the differences between its

boats and those of Barker Boatworks—especially the different, prominently

displayed logos—the mere presence of a distinguishing logo or other feature does

not in all cases alleviate a likelihood of confusion. See Levi Strauss & Co. v. Blue

Bell, Inc., 632 F.2d 817, 822 (9th Cir. 1980) (“[N]othing of record indicates that

the mere presence of [the defendant’s] word mark avoids a likelihood of

confusion.”). But see L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117,

1134 (Fed. Cir. 1993) (stating that the “conspicuous and permanent” labeling on

the parties’ respective products avoided postsale consumer confusion). We more

thoroughly engage with this principle infra, when discussing the “actual

confusion” factor. For now, it suffices to say that the product design factor favors

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Yellowfin, but this factor’s value is almost completely washed out by our actual

confusion analysis below.

C. Similarity of the Products

Both parties manufacture high-end, center-console fishing boats of a similar

size. This factor favors Yellowfin.

D. The Similarity of the Parties’ Trade Channels and Customers

Neither Yellowfin nor Barker Boatworks sells boats through a retail outlet;

both sell directly to customers. This necessarily means that the parties operate in

different trade channels, as a customer must contact either Yellowfin or Barker

Boatworks directly to purchase a boat. The dissimilarity of trade channels,

however, is mostly irrelevant given that Yellowfin’s primary theory of likelihood

of confusion applies to potential consumers postsale.

The two manufacturers compete in the same niche market and thus have

similar customers. But having similar customers does not necessarily favor

Yellowfin. These are customers in the market for a high-end, expensive fishing

boat. As such, they are likely more discerning—and so less easily confused—than

customers purchasing everyday products. See Fla. Int’l, 830 F.3d at 1256 (noting

that “sophisticated consumers” of “complex goods” are less easily confused than

“casual purchasers of small items”). We expand upon the effect that consumers’

14
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sophistication has on Yellowfin’s theory in our discussion of actual confusion

below.

E. The Similarity of Advertising Media Used by the Parties

As to this factor, the District Court stated the following:

Barker and Yellowfin concededly advertise in several of the same
forums, including the magazines SaltWater Sportsman and Sport
Fishing. Also, both companies attend the same boat shows, for
example, Miami, Palm Beach, and Fort Lauderdale. The similarity of
advertising forums might contribute to confusion, although the
absence from the record of Barker advertisements prevents comparing
the parties’ advertisements. See AmBrit, 812 F.2d at 1542 (explaining
that the “similarity of advertising” evaluates whether the parties
advertise in similar forums and whether the advertisements appear
similar).

(Record citations omitted). In its brief, Yellowfin emphasizes the first part of this

statement; Barker Boatworks’ brief emphasizes the latter part. This factor favors

Yellowfin for purposes of summary judgment, as we may reasonably infer that

similar advertising contributes, however little, to consumer confusion. See AmBrit,

812 F.2d at 1542 (“If the plaintiff and defendant both use the same advertising

media, a finding of likelihood of confusion is more probable.”).

F. Barker’s Intent

The District Court found that “the record contains no evidence that Barker

copied Yellowfin’s design in an attempt to confuse a potential buyer.” Yellowfin

disagrees, contending that the Court did not construe the record, as it must on

summary judgment, in a way that takes “the plaintiff’s best case.” See Stephens v.
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DeGiovanni, 852 F.3d 1298, 1313–14 (11th Cir. 2017). Yellowfin adds that a

defendant’s intent is generally a credibility question that cannot be decided on

summary judgment.

More specifically, Yellowfin argues that because Barker had “significant

business dealings” with Yellowfin and took customer information with him upon

leaving Yellowfin, “an inference of intent readily arises.” See AmBrit, 812 F.2d at

1543 n.61. Further, Yellowfin adds that to successfully compete in the same

“niche market” as Yellowfin, Barker Boatworks copied Yellowfin’s sheer line,

aware that the sheer line had garnered extensive favorable press.10 Finally,

Yellowfin points out that an employee of Michael Peters, the marine architect

Barker Boatworks employed to design its bay boat, met with Barker in June 2014

and left with design notes containing a notation to look at “24 Yellowfin.” The

employee’s notes also contained several sketches of plans for the Barker boat, one

of which was titled “Yellowfin 24.” All of this, Yellowfin contends, is enough to

create a material factual issue as to intent.

In response, Barker Boatworks points out that notes from the June 2014

meeting also show that Barker “did not care for the Yellowfin hull and sheer line

appearance,” evidenced by his comment that Yellowfins look “[too] much

offshore” and have “too much fla[ir].” Barker Boatworks adds that several

10
Yellowfin cites back to the magazine excerpts quoted supra. As discussed, these
excerpts do little to prove the strength of Yellowfin’s sheer line as trade dress.
16
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competing bay boats other than Yellowfin were also mentioned at the meeting.

Yellowfin, Barker Boatworks contends, seeks to improperly infer intent from mere

references to Yellowfin and from prior business dealings. Moreover, the District

Court made no credibility finding because there was no dispute in the record about

the meaning of any relevant testimony or the meeting notes.

There is a difference between intentional copying and intentional copying

with intent to cause confusion. See Brooks Shoe Mfg. Co. v. Suave Shoe Corp.,

716 F.2d 854, 859 n.13 (11th Cir. 1983). This distinction is an important one. If a

defendant intentionally copies an aspect of the plaintiff’s product, but not with

intent to confuse consumers, then the defendant’s intent has little bearing on the

ultimate question: whether the allegedly infringing product is likely to confuse

consumers. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 23:110 (5th ed. 2017) (“[T]he only kind of intent that is relevant to

the issue of likelihood of confusion is the intent to confuse.”). “Strictly, intent, or

lack thereof, does not affect the eyes of the viewer.” Chrysler Corp. v. Silva, 118

F.3d 56, 59 n.3 (1st Cir. 1997). But when a defendant copies a design intending to

cause confusion, a tenable inference may be drawn that this will cause confusion in

fact; the defendant’s very action indicates that it expects consumer confusion.

Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 158 (9th Cir.

1963); McCarthy, supra, at § 23:110. In this latter instance, we may presume that

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the defendant “adopt[ed] a mark or design with the intent of deriving benefit from

another person’s mark” and deny the defendant’s summary judgment motion.

Brooks, 716 F.2d at 860 n.13 (internal quotation marks omitted).

In sum, proof of intentional copying alone is not conclusive on the

likelihood of confusion issue. Id. The plaintiff must put forth some evidence

showing that the defendant’s copying was done with intent to confuse consumers.

Viewing the evidence in Yellowfin’s favor allows us, at most, to infer that

Barker Boatworks intended to copy some aspects of Yellowfin’s boats in order to

construct a worthy competitor in a niche market. That is Yellowfin’s “best case.”

See Stephens, 852 F.3d at 1313–14. But evidence that “a junior user copies a

competitor’s product design because it sells better and consumers seem to like it

. . . is not evidence of an intent to confuse.” McCarthy, supra, at § 8:19. The

District Court properly concluded that Yellowfin put forth no evidence showing

Barker’s intent to copy Yellowfin’s sheer line in order to deceive consumers as to

the source of Barker Boatworks’ boats—i.e., to cause consumer confusion.

G. Actual Confusion

Finally, the District Court found that Yellowfin failed to present any

evidence of actual confusion. The Court stated that Yellowfin did not “identify a

customer who mistakenly bought a Barker instead of a Yellowfin.” Further, the

Court noted, the high price tags attached to center-console fishing boats likely

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encourage consumers to exercise a high degree of care when purchasing a boat.

Therefore, a similar sheer line will not reasonably cause a customer to mistakenly

purchase a Barker instead of a Yellowfin. The Court then briefly addressed

postsale confusion, stating that postsale confusion “requires a showing that the

junior product is inferior in craftsmanship to the senior product.” The Court noted

that Yellowfin produced only an “unsubstantiated boast” by Nagler in his

deposition testimony that Yellowfins are “far” superior in quality to Barkers. 11 On

the other hand, several former Yellowfin customers—who had first-hand

experience of Yellowfin’s craftsmanship and were likely to investigate that of

Barker Boatworks before investing in another boat—bought a Barker. Thus,

because Yellowfin did not present evidence sufficient to show Barker boats were

of a lesser quality, the Court halted its analysis of postsale confusion.

Yellowfin’s appellate brief initially presents a point-of-sale-type theory of

confusion, arguing that Nagler, in his deposition, identified four potential

customers whose business he lost to Barker and further maintained that “there’s

probably another handful.” But, as the District Court pointed out, Nagler did not

attribute these lost sales to confusion, much less confusion derived from the

11
Elsewhere in his deposition, Nagler stated that he had never ridden in a Barker boat but
that he “assume[d]” Barker boats were “pretty close” to Yellowfins in quality.
19
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similarity of the sheer lines specifically. 12 Rather, it was general similarity in the

boats’ designs that led to the loss of sales.

Perhaps recognizing the weaknesses of a point-of-sale theory of confusion,

Yellowfin ultimately contends that, primarily, “[t]his is a post-sale confusion

case.” That is, “the point at which the likelihood of confusion would be most

likely to occur is after the sale of a Barker boat, when the relevant audience is the

‘purchasing public.’” Yellowfin argues that the District Court erred by imposing a

requirement that Yellowfin prove Barker boats to be of inferior quality. Because

this is not a threshold requirement to proving postsale confusion, Yellowfin

continues, the Court never addressed its postsale-confusion theory. If it had,

Yellowfin concludes, it could not have granted summary judgment because there is

a triable issue of fact about whether Barker’s sheer line is likely to confuse

potential purchasers in the postsale context.

Boiled down, Yellowfin’s theory is this: its unique sheer line is instantly

recognizable to potential purchasers. Upon seeing a Barker with a similar sheer

line, potential purchasers become confused—they mistakenly believe that the boat

they see is a Yellowfin or is associated with Yellowfin. This, in turn, has damaged

12
In his deposition, Nagler summarily stated that Barker’s copying of Yellowfin’s sheer
line specifically caused the lost customers. But, immediately after making this statement, Nagler
also attributed the lost customers to Barker giving customers a lower price than Yellowfin could
offer and to “the relationship that [a former Yellowfin customer] had with [Kevin Barker].”
Either way, he did not testify that confusion caused the lost sales.
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the goodwill associated with Yellowfin’s brand and has diverted consumers from

Yellowfin, causing lost profits.

“Actual consumer confusion is the best evidence of likelihood of confusion.”

AmBrit, 812 F.2d at 1543. We review this factor holistically; there is no precise

number of instances of actual confusion sufficient to establish the factor. Id.

Although it takes “very little evidence to establish the existence of the actual

confusion factor,” id. at 1544, the evidence adduced must be more than “nominal,”

Tana, 611 F.3d at 779. 13 Further, “[l]ikelihood of confusion is synonymous with

‘probable’ confusion—it is not sufficient if confusion is merely ‘possible.’”

McCarthy, supra, at § 23:3 (citing Shatel Corp. v. Mao Ta Lumber & Yacht Corp.,

697 F.2d 1352, 1355 n.2 (11th Cir. 1983)). That a junior user’s trade dress merely

calls to mind that of the senior user, moreover, is not an infringement. Id. at

§ 23:5.

Yellowfin is correct that this Court’s precedent does not require a threshold

showing that the defendant’s product is inferior in quality. And we do not impose

such a requirement today. 14 That notwithstanding, the record is devoid of evidence

13
The Tana Court found “nominal” an affidavit by a patron of plaintiff’s restaurant
stating he patronized defendant’s restaurant because similarity in the restaurants’ names led him
to believe they were affiliated, and defendant’s admission that customers had twice inquired
about an affiliation between the restaurants. 611 F.3d at 779. It accordingly affirmed the district
court’s grant of summary judgment in favor of defendant. Id. at 783.
14
The District Court’s error on this point does not necessitate a remand to further address
Yellowfin’s postsale-confusion theory. See Dippin’ Dots, 369 F.3d at 1207–08 (stating that a
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indicating a probability of postsale confusion among potential purchasers.15

Yellowfin effectively argues that the District Court should have inferred from the

“district court’s failure to consider all the factors relevant to the issue of whether two marks are
confusingly similar does not necessarily constitute reversible error” (internal quotation marks
omitted)).
We note that the quality of a defendant’s product is relevant to the harm suffered by the
plaintiff. The “classic situation” of postsale confusion occurs when “an observer sees the
defendant’s inferior product and because of similar . . . trade dress, mistakenly thinks it is a
product of plaintiff, damaging plaintiff’s reputation and image.” McCarthy, supra, at § 23:7; see
United States v. Torkington, 812 F.2d 1347, 1353 (11th Cir. 1987) (stating, with regard to
counterfeit goods, that a “trademark holder’s ability to use its mark to symbolize its reputation is
harmed when potential purchasers of its goods see unauthentic goods and identify these goods
with the trademark holder”). This damage to reputation and image is naturally mitigated when
an observer mistakenly associates a product of similar quality with the plaintiff. Thus, although
Yellowfin’s lack of proof of the Barker boats’ inferiority is not dispositive of the actual
confusion factor on summary judgment, it raises the question of what, if any, negative effect
postsale confusion could have on Yellowfin’s reputation and image. We need not answer that
question here.
15
Yellowfin proffered a survey to support its position on likelihood of confusion. The
District Court, however, excluded the survey due to several methodological flaws. That ruling is
not an issue on appeal.
Nagler’s own testimony, moreover, does not support Yellowfin’s postsale-confusion
theory. Consider the following exchange at his deposition:
Q. Okay. Have there been any – anybody that’s come to you with confusion
between Barker and Yellowfin?
A. Several people have come to me with discussions about how [Barker]
copied our styling and our sheer line of the boat and, you know, felt it was wrong.
True, you know, did they come in confused between the two brands?
Well, they know who Yellowfin is. They don’t know who Barker is, but they
know when they see that [Barker] boat on the water, it looks like a Yellowfin.
Q. And who was that?
A. Customers call us all the time, people on the Internet. There’s plenty of
documentation all over the Internet. Go to any of the forums.
Nagler then identified specific customers who expressed to him that Barker copied Yellowfin’s
style or stated that they could not tell the two boats apart. When asked if any customer was
“confused,” Nagler responded, “I would think copying and confusion [are] the same.” Nagler
then stated, “If you took the sticker off the back of [a Barker], you would probably be confused.”
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strength of its trade dress alone—which, as discussed, is suspect—actual confusion

in the postsale context. But, without any evidence corroborating its postsale

confusion theory outlined above, Yellowfin cannot defeat summary judgment. See

Libman Co. v. Vining Indus., Inc., 69 F.3d 1360, 1363 (7th Cir. 1995) (“A finding

of likely confusion can no more be based on pure conjecture or a fetching narrative

alone than any other finding on an issue on which the proponent bears the burden

of proof.”).

Indeed, the market in which Yellowfin competes and the potential

purchasers therein make its theory of postsale confusion unlikely. Yellowfin

repeatedly mentions that it and Barker Boatworks compete in the same “niche”

market of center-console fishing boats. We may infer that potential purchasers of

products in this market are relatively sophisticated. See Groeneveld Transp.

Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494, 510–11 (6th Cir. 2013)

After this, Nagler clarified that Yellowfin’s claim was limited to the copying of its sheer line and
agreed that several features of the Barker boat differed from Yellowfin’s boats.
To the extent it is offered for the truth it asserts, Nagler’s testimony relaying the
statements of the “[s]everal people” who expressed to him that Barker copied Yellowfin is
inadmissible hearsay. See Fed. R. Evid. 801(c). Regardless, nothing in this exchange indicates
that people were confused by Barker’s sheer line. Nagler testified in effect that people believe
Barker copied Yellowfin’s boat styling, that confusion would be caused if the logo were
removed from a Barker, and that the boats have many dissimilar features. Copying is not the
same as confusion, as Nagler suggests. And Yellowfin presents no evidence showing that
potential purchasers have observed Barker boats stripped of their logo. At best, Nagler’s
testimony could be construed to support the proposition that seeing a Barker might call the
Yellowfin brand to a consumer’s mind. This, however, is not tantamount to confusion.
McCarthy, supra, at § 23:5.
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(noting the relationship between a product’s complexity and price and the

sophistication of its consumers). In fact, Yellowfin’s theory of postsale confusion

depends upon sophisticated consumers. Yellowfin recognizes that that “every bay

boat has a sloping sheer line as a key element of its design.” (Emphasis removed).

But in designing a sloping sheer line, Yellowfin posits, a designer employs

“creativity with highly nuanced refinements” so that his sheer line will differ from

the others—“that is precisely what Mr. Nagler did in designing the Yellowfin sheer

line.” A lay consumer unfamiliar with bay boats would be unlikely to notice the

“highly nuanced refinements” of Yellowfin’s sheer line and match the sheer line

with the brand. Only a discerning, sophisticated consumer would be able to do so.

Yellowfin’s theory thus holds water only in a scenario involving a sophisticated

potential purchaser.

However, without any corroborating evidence, it is unreasonable to infer that

this discerning potential purchaser—familiar enough with the crowded bay-boat

market to distinguish Yellowfin’s sloping sheer line from the numerous others—

would see a Barker and become confused despite the Barker’s prominent and

distinct logo, differing hull, and other dissimilar features. See id. at 509–11

(stating that the “starkly different” logos on two expensive products and the “the

high degree of care presumably exercised by the [products’] sophisticated

consumers” compels the conclusion that the plaintiff, as a matter of law, failed to

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raise a triable issue as to likelihood of confusion). Perhaps the Barker sheer line

would “call[] to mind” that of a Yellowfin, but that is not an infringement. See

McCarthy, supra, at § 23:5. Yellowfin has failed to establish that the Barker sheer

line has actually confused potential purchasers in the postsale context.

* * *

Weighing the likelihood of confusion factors holistically, we conclude that

the District Court did not err in holding that Yellowfin could not, as a matter of

law, prove a likelihood of confusion between Barker Boatworks’ trade dress and its

own. We therefore also hold that the District Court properly rejected the rest of

Yellowfin’s claims related to trade dress and consumer confusion. We turn now to

Yellowfin’s remaining trade secret claim.

III.

The Florida Uniform Trade Secrets Act (“FUTSA”) provides a cause of

action for the misappropriation of trade secrets. Fla. Stat. §§ 688.001–009. “To

prevail on a FUTSA claim, a plaintiff must demonstrate that (1) it possessed a

‘trade secret’ and (2) the secret was misappropriated.” Advantor Sys. Corp. v. DRS

Tech. Servs., Inc., 678 F. App’x 839, 853 (11th Cir. 2017) (citing Fla. Stat.

§ 688.002; Am. Red Cross v. Palm Beach Blood Bank, Inc., 143 F.3d 1407, 1410

(11th Cir. 1998)). Under FUTSA, a “trade secret” is

information, including a formula, pattern, compilation, program,
device, method, technique, or process that:
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(a) Derives independent economic value, actual or potential, from not
being generally known to, and not being readily ascertainable by
proper means by, other persons who can obtain economic value
from its disclosure or use; and
(b) Is the subject of efforts that are reasonable under the
circumstances to maintain its secrecy.

Fla. Stat. § 688.002(4). “Misappropriation,” generally, is defined as the acquisition

of a secret “by someone who knows or has reason to know that the secret was

improperly obtained or who used improper means to obtain it.” Advantor, 678 F.

App’x at 853; see Fla. Stat. § 688.002(2).

Yellowfin claims two sets of information, both allegedly misappropriated by

Barker, as trade secrets: “Source Information” and “Customer Information.” We

start with the former.

A.

Yellowfin describes its Source Information in the following manner:

In the course of building Yellowfin’s boats, the company requires and
incorporates into its boats materials and components from various
sources. Yellowfin considers its sources, the contracts it has with
those sources and the terms and conditions of those contracts as trade
secrets.[16]

16
In opposition to Barker Boatworks’ summary judgment motion, Yellowfin also argued
that its Source Information included drawings and other customer and supplier information not
identified in its complaint. The District Court properly declined to address this argument in its
decision granting Barker Boatworks summary judgment, citing Gilmour v. Gates, McDonald &
Co., 382 F.3d 1312, 1315 (11th Cir. 2004), for the proposition that a plaintiff cannot amend its
complaint through argument in a brief opposing summary judgment. Thus we also consider the
Source Information only to include the contents quoted above.
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This information, Yellowfin contends, is “valuable to its business and provide[s] a

competitive edge to the company.”

The District Court rejected Yellowfin’s Source Information trade secret

claim, providing a number of reasons supporting its conclusion that no reasonable

jury could find the Source Information to constitute a trade secret. First, the Court

held that the identities of Yellowfin’s suppliers are typically well known—indeed,

“the photos in the record show that many [of the suppliers] prominently brand their

products.” The Court also noted that Nagler conceded in his deposition that a

supplier’s identity is not a trade secret. Thus, the Court determined, the identities

of Yellowfin’s suppliers did not qualify as a trade secret.

Next, the Court concluded that the prices Yellowfin negotiated with its

suppliers were also not trade secrets. The Court gave three reasons. First, the

negotiated prices were based on the volume of Yellowfin’s boat production. That

is, Yellowfin produced enough boats to secure lower prices than a smaller boat

company could. Nagler confirmed as much, stating, “[A] company . . . the size of

[Barker’s] wouldn’t be able to make” the “deals that I make with my vendors.”

The Court therefore held that “[i]nformation about a volume discount lacks

independent economic value to a producer too small to secure the discount.”

Second, the Court pointed out that Yellowfin stated that its discounts were based in

part on the relationships it cultivated with its vendors over the course of a number

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of years. Information about these relationship-based discounts, the Court stated,

lacks independent economic value to a newly established manufacturer. Finally,

the Court held that Yellowfin’s claim also failed because Barker learned

Yellowfin’s production costs in the ordinary course of working at Yellowfin.

Thus, even if Barker could secure a supplier discount similar to Yellowfin’s, an

injunction could not practicably restrain Barker from using the knowledge he

gained while employed at Yellowfin.17

In its appellate briefing, Yellowfin challenges none of these conclusions.

Nor does it identify any issues of material fact underlying the District Court’s

determinations. Rather, Yellowfin only mentions summarily that its Source

Information qualifies as a trade secret and that the District Court erred by

conducting a fact-bound inquiry, better left for a jury, when determining

otherwise.18 Although we recognize that whether something is a trade secret is a

question typically “resolved by a fact finder after full presentation of evidence

from each side,” Lear Siegler, Inc. v. Ark-Ell Springs, Inc., 569 F.2d 286, 288–89

17
See Am. Red Cross, 143 F.3d at 1410 (stating that an employer cannot preclude a
former employee “from utilizing contacts and expertise gained during his former employment”
(internal quotation marks omitted)); see also Renpak, Inc. v. Oppenheimer, 104 So. 2d 642, 645
(Fla. Dist. Ct. App. 1958) (“Skill and knowledge are assets gained by an employee which are
transferable to his future use in business . . . . It is impossible to leave them behind so long as
they exist within the mind of the employee.”).
18
Yellowfin also summarily states that an implicit confidential relationship between it
and Barker precluded Barker from using any confidential information, including the Source
Information, for purposes other than benefitting Yellowfin. We address and reject this point
infra.
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(5th Cir. 1978), Yellowfin fails to provide any reason why, in this case, the District

Court erred in concluding that no reasonable jury could find that the Source

Information constituted a trade secret. And, after reviewing the record, we fail to

find any evidence suggesting that the District Court erred.

B.

Yellowfin does, however, extensively contend that the District Court erred

in determining that no jury could reasonably find that its Customer Information

constituted a trade secret. Yellowfin’s Customer Information is comprised of

information that it has collected and stored about each of its customers, including

“personal identifying information such as the person’s name, address, contact

information, and other information related to the customer’s purchase.”

The District Court provided two independent reasons for rejecting

Yellowfin’s Customer Information trade secret claim. It first noted that Florida

Statutes § 328.48(2) requires vessel owners to register their vessels with the state,

and the Public Records Act requires the state to openly provide registration

information, including registrants’ names and addresses. “With a registrant’s name

and address,” the Court stated, “a person can use the Internet or the White Pages to

find the registrant’s contact information.” Because the Customer Information’s

core contents are publicly available, the Court found that the information could not

be a trade secret.

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The District Court then held that even if the Customer Information was not

publicly available, Yellowfin could not prove FUTSA’s second trade secret

requirement: that the information was “the subject of efforts that are reasonable

under the circumstances to maintain its secrecy.” Fla. Stat. § 688.002(4).

Although Yellowfin protected its Customer Information by limiting employee

access to it and maintaining it on a password-protected computer system,

Yellowfin nonetheless “encouraged Barker to store [the] information on a personal

laptop and phone.”19 Yellowfin’s security measures were thus useless once it

unrestrictedly relinquished the Customer Information to Barker. The Court also

stressed that Yellowfin never asked Barker to delete the information from his

personal devices after he left the company. Based on these facts, the Court

concluded that no reasonable jury could find that Yellowfin engaged in reasonable

efforts to secure the Customer Information.

Yellowfin contends that the District Court erred on both points. First, the

Customer Information includes more than what one may derive from Florida’s

public vessel-registration records. In addition to names and addresses, the

Customer Information contains detailed purchasing history, including the

specifications customers requested when ordering their boats. Further, Yellowfin

argues that uniquely compiling or distilling information, even if some of which is

19
According to Nagler’s declaration, the cellphone used by Barker was paid for by
Yellowfin.
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publicly available, adds value to the information and may render it a trade secret.

See Capital Asset Research Corp. v. Finnegan, 160 F.3d 683, 686 (11th Cir. 1998).

As to its reasonable efforts to maintain the Customer Information’s secrecy,

Yellowfin states that the information is held within its computer system which

requires a username and password to access, is accessible by fewer than five

percent of the company’s employees, and is not accessible by or shared with third

parties. Yellowfin also maintains that there was an “implicit understanding”

between Yellowfin and Barker that its Customer Information was confidential and

not to be disclosed outside Yellowfin or used for any purpose other than to benefit

the company.

Exercising our liberty to affirm on any basis in the record, United States v.

Hall, 714 F.3d 1270, 1271 (11th Cir. 2013), we affirm the District Court’s

rejection of Yellowfin’s Customer Information trade secret claim because

Yellowfin failed to reasonably protect the information. Yellowfin limiting

employee access to the information and password-protecting the computer network

on which the information resided were positive steps in securing the alleged trade

secret. See, e.g., VAS Aero Servs., LLC v. Arroyo, 860 F. Supp. 2d 1349, 1359

(S.D. Fla. 2012) (noting these measures as influential in reasonably securing trade

secrets). But Yellowfin compromised the efficacy of these measures by

encouraging Barker to keep the Customer Information on his cellphone and

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personal laptop. Cf. Diamond Power Int’l, Inc. v. Davidson, 540 F. Supp. 2d 1322,

1333–35 (N.D. Ga. 2007) (finding significant plaintiff’s failure to prevent its

employees from transferring a file allegedly constituting a trade secret to their

personal computers). 20 Indeed, Barker refused to sign an employment agreement

which stated that he would, among other things, keep all Yellowfin trade secrets in

confidence. Further, Yellowfin neither marked the Customer Information as

confidential nor instructed Barker to secure the information on his personal

devices. And when Barker left Yellowfin, the company did not request that Barker

return or delete any of the information.

Thus, at bottom, Yellowfin’s efforts to secure the Customer Information rest

upon a purported “implicit understanding” between Yellowfin and Barker that the

information was to be kept confidential. Although “Florida law recognizes implied

confidential relationships sufficient to trigger trade secret liability,” this Court is

“wary of any trade secret claim predicated on the existence of” such a relationship.

Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1550 (11th Cir. 1996). Yellowfin cites

part of Nagler’s Declaration as evidence of this relationship:

Yellowfin employees, including Kevin Barker, understand, or should
understand, that the company’s Customer Information is confidential
and proprietary to Yellowfin, because I personally have verbalized
this policy and restriction to Yellowfin employees. On several

20
Diamond Power related to the Georgia Trade Secret Act which, like FUTSA, requires
“efforts that are reasonable under the circumstances to maintain [a trade secret’s] secrecy.”
O.C.G.A. § 10-1-761(4)(B).
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occasions, Yellowfin was approached by outside companies desiring
to gain access to [this information] . . . . Each time this happened, I
expressly rejected such offers and told my employees, including
Kevin Barker, that such information would never be sold or shared
with outside companies.”

Other than Nagler’s general verbal statements warning employees not to share its

Customer Information with third parties, Yellowfin references no evidence

corroborating the implicit confidential relationship between it and Barker.

In sum, with mere verbal statements that the Customer Information should

not be given to outsiders, Yellowfin relinquished the information to Barker, who

refused to sign a confidentiality agreement, with no instruction to him as to how to

secure the information on his cellphone or personal laptop. In doing so, Yellowfin

effectively abandoned all oversight in the security of the Customer Information.

Accordingly, the District Court did not err in determining that no reasonable jury

could find that Yellowfin employed reasonable efforts to secure the information.21

IV.

In light of the foregoing, we affirm the District Court’s grant of summary

judgment in favor of Barker Boatworks.

AFFIRMED.

21
Because Yellowfin cannot identify an allegedly misappropriated trade secret meeting
both definitional parts of Florida Statutes § 688.002(4), its FUTSA-predicated conspiracy claim
also fails. See supra note 5.
33

Yellowfin Yachts, Inc. v. Barker Boatworks, LLC

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