Our Litigator of the Week is Wilmer Cutler Pickering Hale and Dorr partner Louis Tompros, who persuaded a federal jury in Detroit on January 18 to reject a $130 million trademark infringement claim over use of the word “Defender.”

Going to trial was a bold move. In Europe, his client Bombardier Recreational Products faced an all-but-identical suit by Jaguar Land Rover and lost. But Tompros had confidence that U.S. trademark law was different—and the jury proved him right.

He discussed the case with Lit Daily.

Lit Daily: Who is your client and what was at stake?

Louis Tompros: BRP — short for Bombardier Recreational Products — is a leading powersports manufacturer, known best as the maker of Ski-Doo and Lynx snowmobiles, Sea-Doo watercraft, and Can-Am off-road vehicles and motorcycles. It actually traces its origins back to the inventor of the snowmobile, Joseph-Armand Bombardier.

This was a trademark infringement case brought by Jaguar Land Rover Limited, challenging BRP's use of the word “Defender” in the name of BRP's “Can-Am Defender” side-by-side off-road vehicle. BRP has been selling the Can-Am Defender since 2015 and had sold more than 40,000 of them to date.

Land Rover sought an injunction and disgorgement of all of BRP's profits from those sales, to the tune of more than $130 million in damages.

Tell us a little about the two vehicle models at issue.

In the 1990s, Land Rover used to sell car called the “Land Rover Defender.” Some varieties of the Land Rover Defender were SUVs, and others were station wagons. Land Rover stopped selling the Defender in the United States around 1998, because it did not comply with U.S. airbag laws that were going into effect at that time. But the Land Rover Defender continued to be sold in Europe until quite recently, and it had a cult following in the United States among some enthusiasts.

BRP's Can-Am Defender is a utility-recreation side-by-side vehicle. A “side-by-side” is similar to an ATV, except that instead of having a single seat that you straddle, it has two seats, so that a driver and a rider can sit “side by side.”  

The Can-Am Defender is targeted at the “utility-recreation” market—often farmers, hunters, and ranchers who want a vehicle that they can use for off-road hauling and towing, but also one that is just fun to ride on trails.

Jaguar Land Rover won a similar case against your client in the EU two years ago. Did that give you pause?

It did. In fact, the court in our case (over our objection) allowed the jury to hear about that judgment in the EU, and Land Rover argued that BRP's continued sale of the Can-Am Defender in the U.S. notwithstanding that judgment in the EU suggested that BRP was a willful infringer. That put us in the challenging position of having to explain to the jury why they shouldn't just do what the EU did.  

It turns out that the EU decision was based on a European trademark rule that doesn't exist in the United States, and as a result, the EU did not address “likelihood of confusion” at all. So, as we explained to the jury, it was the first body to ever consider whether there was or was not a likelihood of confusion between the Can-Am Defender and Land Rover. That was, of course, a complex issue to explain to the jury in the limited time we had available, particularly with so many other issues in play.   

Who was opposing counsel and how would you describe their approach to litigating the case?

Opposing counsel was a team from Brooks Kushman, led by Frank Angileri. Their trial theme was essentially that the SUV and side-by-side markets were converging, and that BRP was trying to trade off of Land Rover's goodwill in the name “Defender” to sell a competing product.  

Consumer confusion was a key issue. How did you show that wasn't likely to be a factor?

Likelihood of confusion was the absolute focus of our case. We promised the jury in the opening that they would hear four key facts that showed that there was no likelihood of confusion, and I think we delivered on that.  

First, we argued that the powersports and automotive industries are entirely different—and we backed that up with expert engineering testimony concerning vehicle design and regulation in the different industries, as well as testimony from Land Rover dealers and a local Detroit-area powersports dealer explaining how the industries are entirely separate.  

Second, we argued that common names like “Defender” have coexisted between off-road vehicles and cars for decades, without any confusion; for example, the Can-Am Defender's primary competitor is a side-by-side vehicle made by Polaris called the “Ranger,” and of course Ford (which used to own Land Rover) has the “Ranger” truck.  

Third, we pointed to the many other “Defenders” out there in the automotive industry, including the Champion Defender bus and the Michelin Defender tire. And finally, we pointed to the complete absence of any actual confusion, coupled with survey evidence from our expert, Professor David Franklyn of Golden Gate University, showing a 0% confusion rate.  

What were some of your other overarching themes?

A big theme for us was that Land Rover was unfairly trying to exercise ownership and control over the word “Defender.” We emphasized that trademark law is about protecting consumers by preventing confusion, rather than protecting companies by giving them ownership over words. What Land Rover was trying to do, we argued, was control who could say the word “Defender,” without any meaningful showing of harm or any showing of confusion.

A second key theme was that, even though a showing of “actual confusion” is not required to show “likelihood of confusion,” this is the kind of case where, if confusion were likely, there would be some evidence of it actually happening. But there was none.  

For example, we asked every Land Rover employee and dealer whether anyone had ever complained to them about the Can-Am Defender or brought a Can-Am Defender in for service—and there was no evidence of any of that.  

Likewise, a powersports dealer explained that nobody ever showed up at his dealership asking about Land Rovers. We argued that with $130 million at stake and 40,000 Can-Am Defenders sold, if there were any confusion, somebody would have come forward with some evidence of it.

I gather the jury declined to find that Jaguar abandoned the Defender mark or that Jaguar made false statements when renewing its U.S. trademark registration. What's your take on that?

We had raised abandonment and fraud as additional defenses and counterclaims, because Land Rover had abandoned the U.S. market in the 1990s and had made trademark renewal filings that improperly relied on non-U.S. or non-Land Rover sales to show continued use of their trademark. Those defenses would have been important if the jury had found infringement, but they turned out not to matter given the noninfringement finding.  

That said, the facts underlying the abandonment defense were thematically important in our confusion case. Land Rover's abandonment of the U.S. market very likely contributed to the lack of association between “Defender” and “Land Rover” in the minds of consumers today.  

How did you and the members of your team work together to try the case?

Our co-counsel Dean Amburn of Giroux Amburn and James Menker of Holly & Menker handled the case from the outset and through fact discovery, and I only became involved a few months ago as it became clear that the case would very likely be tried to verdict. Dean's deep knowledge of the witnesses and the history of the case was critical, particularly on the abandonment issues, which he handled at trial.  

And I benefited as always from the help of an outstanding WilmerHale team, including my colleague Colleen McCullough, who—as a second-year associate—handled several key arguments and presented two witnesses at trial.  

We also had the huge asset of a brilliant in-house counsel, Yves St. Arnaud, who has many years of trial experience both as outside counsel and during his time at BRP. I can't overstate how valuable it was to have the person managing the case be someone with such deep trial experience and phenomenal strategic judgment.

Did you make any unconventional strategic choices?

The one that kept me up at night was our decision, mid-way through the case, not to present our own damages expert. We felt good about the damages facts as they went in during Land Rover's case, and we thought we were in a strong position on noninfringement. Ultimately, we were right. But it was nerve-wracking that the only number the jury heard directly from an expert was Land Rover's staggering $130 million figure.

Looking back, what are some of the high points that stand out at trial? 

The one that I will never forget involves a tire. Our engineering expert Kevin Breen had explained how the design of off-road vehicles like the Can-Am Defender is different from cars like the Land Rover Defender, and he had used an off-road tire as an illustrative demonstrative, showing the differences in size, structure, treads, weight, and pressure.

I used that same tire in closing as a visual reminder to the jury about those important differences. Then, during deliberations, the jury sent a note asking to have several exhibits brought back to the jury room—and one of the things they requested was the tire.  

I couldn't for the life of me figure out why they wanted it or what they were going to do with a tire in the jury room, and I spent part of that evening coming up with all kinds of paranoid reasons why the jury asking for the tire might be a bad omen for us.  

Well, it turns out I was worried for nothing. We were allowed to talk with the jury after the case, and we learned that a main motivation for asking for the tire was really to see if the court would allow them to have it or not—in other words, the jury was kind of messing with us. Given the outcome, I can forgive them for that. But I'll certainly never forget.