United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
Z. LEE UNITED STATES DISTRICT JUDGE
Toyo Tire & Rubber Co., Ltd. and Toyo Tire U.S.A. Corp.
(collectively, “Toyo”), brought this action
against Defendants Atturo Tire Corporation
(“Atturo”) and Svizz-One Corporation, Ltd.,
alleging in part that Atturo had infringed the trade dress on
Toyo's Open Country Mountain Tires (“OPMT
tires”). Now that discovery has concluded, Atturo moves
for sanctions under Rule 37, contending that Toyo improperly
disclosed a new definition of the trade dress at issue for
the first time in its expert reports. For the reasons that
follow, Atturo's motion for sanctions  is granted.
filed its complaint on January 13, 2014, asserting a trade
dress in “the overall appearance” of OPMT tires.
Compl. ¶ 16, ECF No. 1. The complaint described the
trade dress as
includ[ing] fingerlike projections on the left outer edge of
the tire tread that slope slightly upward toward the center
of the tread, fingerlike projections on the right outer edge
of the tire tread that slope slightly downward toward the
center of the tread, and two rows of hook-shaped tread blocks
sloped downwardly from left to right, in a back to back
orientation, whose openings align with the ends of the
fingerlike projections on the tread edge.
Id. ¶ 17. There was no visual depiction of the
trade dress in the complaint.
discovery, Atturo served Toyo with an interrogatory,
requesting that Toyo “[i]dentify and describe any and
all alleged trade dress of the Open Country M/T, including an
identification and description of any and all alleged trade
dress asserted in this Action, including whether each alleged
trade dress pertains to Toyo's product or
packaging.” Def.'s Mem. Supp. Mot. Sanctions
(“Def.'s Mem.”), Ex. A, Pl.'s Am. 2d.
Supp. Resp. Def.'s 3d. Set Interr. No. 16
(“Pl.'s Am. Resp. Interr. 16”) at 2, ECF No.
response reiterated the description of the trade dress in the
complaint, although it added additional verbiage that seemed
to confuse, rather than clarify, matters:
The Open Country M/T tire is a protected by trade dress that
is embodied in its distinctive tread design. As set forth in
paragraph 18 of Toyo's Complaint, the Open Country M/T
trade dress may be described as including fingerlike
projections on the left outer edge of the tire tread that
slope slightly upward toward the center of the tread,
fingerlike projections on the right outer edge of the tire
tread that slope slightly downward toward the center of the
tread, and two rows of hook-shaped tread blocks sloped
downwardly from left to right, in a back to back orientation,
whose openings align with the ends of the fingerlike
projections on the tread edge. The Open Country M/T trade
dress may be articulated using different words that describe
or characterize the appearance of this distinctive tread
design. The Open Country M/T trade dress does not include
Id. (emphasis added).
that Toyo's description of its trade dress lacked
“certainty, ” Atturo a motion, asking the Court
to compel Toyo to identify and describe “each of the
elements” of the alleged trade dress in the OPMT tire.
Def.'s Mot. Compel at 1, ECF No. 114-1; Def.'s Mem.
Supp. Mot. Compel at 7, ECF No. 114-2. The motion was
referred to Magistrate Judge Susan Cox, and she granted the
motion, ordering Toyo “to fully answer interrogatory
#16 without qualification” by December 12, 2014. Order
of 12/4/2014, ECF No. 118. Judge Cox further explained to
at a minimum Atturo[ ] [is] entitled very specifically to
know what it is you're claiming is protectable
intellectual property right here. And that answer [to
Interrogatory No. 16] doesn't answer the question.
It's-it basically allows you wiggle room to either
include more later or less. And at this point in the
litigation I don't think that's appropriate.
Def.'s Mem., Ex. C, Transcript of 12/4/2014 Proceedings
before Judge Cox (“12/4/2014 Tr.”) at 4:19-25,
ECF No. 390-5. Judge Cox also warned Toyo that they would be
“stuck with [their revised] answer [to Interrogatory
No. 16] because that is basically . . . the basis on which
[they] brought this case.” Id. at 5:23-6:1.
December 12, 2014, Toyo provided a supplemental answer to
Interrogatory No. 16 (“the 2014 Supplemental
Answer”), summarizing the OPMT trade dress as
“the ‘OPMT look,' i.e., the overall visual
appearance and impression conveyed by the Open Country M/T
tire tread design.” Pl.'s Am. Resp.
Interr. 16 at 3 (emphasis added). It went on to describe the
trade dress as of December 12, 2014, as
ha[ving] center blocks and shoulder blocks. The center blocks
are hook-shaped and placed in offset, back-to-back,
double-row configurations (see Image A), with each
block having [ ] an opening generally adjacent to the end of
a shoulder block (see Image B). The shoulder blocks
are alternatingly paired on each side of the tire
(see Image C), and are positioned in rows on
opposite sides of the tire such that one row slopes upward
toward the center blocks (see Image D) and the
opposite row slopes downward toward the center blocks
(see Image E).”
Id. at 4-5. The images referenced by the description
are all color photographs of tires, with the lighting
illuminating the three-dimensional nature of the tires and
the varying heights of the tire tread components, including
details within the grooves between the blocks and patterns on
the surface of the blocks. See Id. at 5. Four of the
images, Images A, B, D, and E, depict a portion of a tire
tread straight-on. See id. The other image,
Image C, shows the tire angled away from the viewer, with
part of the side of the tire visible. See Id. Each
image includes a highlighted portion of the tread that
corresponds with a portion of the written description in the
2014 Supplemental Answer. See Id. Only the surface
area of the relevant tread portions is highlighted. See
1, 2015, Atturo deposed Toyo's Rule 30(b)(6) designee,
Amy Coleman, who stated that the OPMT “tread
design” consisted of “two shoulder blocks,
” “two center blocks, ” “grooves,
” “stone ejectors, ” and
“sipes.” Def.'s Mem., Ex. D, Coleman 7/1/15
Dep. at 59:16-60:9; 60:22-61:3 ECF No. 390-6. When asked what
about the “tread design” makes the tires
recognizable as OPMT tires, she identified “the
hook-shaped center blocks” and “the way that
we've done the siping.” Id. at 64:21-65:5.
Coleman emphasized that the siping “is a
differentiator” that allows a consumer to identify it
as a Toyo tire. Id. at 66:11-19.
in Coleman's testimony, however, Toyo produced
photographs of both a modified commercial OPMT tire with no
sipes and a square-patterned OPMT racing tire that did not
feature the hook-shaped center blocks. Def.'s Mot.
Compel. at 6-7, citing id., Exs. T, U, and S, ECF
Nos. 192-20-22. Even though these depictions of OPMT tires
lacked features Coleman had identified as central to OPMT
tread design, Coleman stated that “all of the OPMT
tires have the OPMT trade dress, ” Def.'s Mot.
Compel, Ex. J, Coleman 7/1/15 Dep. at 16:18-19; 16:20-22, ECF
the deposition, Toyo submitted errata sheets that, Judge Cox
found, attempted to revise Coleman's testimony. Order of
9/22/2015 at 3, 3 n.1, ECF No. 228. Judge Cox rejected these
as impermissible changes to Coleman's deposition
testimony. See Id. (“We agree with Atturo that
this ‘errata' sheet is more accurately described as
a revision of Ms. Coleman's prior testimony and is
probably impermissible under Fed. R. C. P. Rule 30(e).”
(citing Thorn v. Sundstrand Aerospace Corp., 207
F.3d 383, 389 (7th Cir. 2000))).
then filed a motion to compel additional discovery as to the
multiple OPMT tread patterns that Coleman had stated embodied
the asserted trade dress. Def.'s Mot. Compel at 2, ECF
Cox granted Toyo's motion, finding that Toyo had
neglected to “point out in its discovery responses that
there were models of tires marketed under the OPMT moniker
which it was specifically excluding from trade dress
protection.” Order of 9/22/2015 at 2, ECF No. 228.
Judge Cox found that the logical inference from Toyo's
assertion that the trade dress was “the overall visual
appearance and impression conveyed by the Open Country M/T
tire tread design” was that all OPMT tires bore the
protected design. Id. at 2.
response to Judge Cox's order, Toyo provided a second
supplemental answer to the interrogatory (the “2015
Supplemental Answer”). See Pl.'s Am. Resp.
Interr. 16 at 6-8, “Supplemental Answer (dated October
2, 2015 and amended October 13, 2015).” In the 2015
Supplemental Answer, Toyo clarified that the racing-car tires
that Coleman discussed in her deposition were not included in
its trade dress theory and that “the Department of
Transportation (DOT) compliant [OPMT] commercial tire tread,
described and shown” in ...