Mid-February Indiana IP Litigation Update

Here are some quick updates on the IP litigation filed in Indiana so far in 2021. The amount of filings are still far below pre-pandemic numbers, but there are a few interesting cases to follow.

Midcontinent Independent System Operator, Inc. v. Sullivan (SD, 1/18/2021) – The parties have agreed to a 28-day extension (until March 10, 2021) for Defendant to respond. This is often an indication that settlement talks are taking place.

Schnebelt v. Anglotopia, LLC (ND, filed 1/18/2021) – The Defendant filed an Answer as pro se on 2/11/2021, but the Answer was struck by the Court one day later, as limited liability companies (which the Defendant is) must be represented by counsel.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – Plaintiff’s counsel filed their Appearances on 2/11/2021, nothing else to report

Heartland Consumer Products LLC v. Speedway, LLC (SD, filed 2/5/2021) – No update yet

Indianapolis Bouldering, LLC v. BP Holdings Co. LLC et al. (SD, filed 2/11/2021) – No update yet

New Indianapolis Bouldering Facility sues Accusers for Declaratory Judgment of Non-Infringement

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The Plaintiff in this action for declaratory judgment of non-infringement is a yet-to-open rock climbing gym in Indianapolis, Indiana. More specifically, the planned gym will provide a venue for “bouldering,” a type of rock climbing low enough to the ground to be done without safety ropes.

The Defendants operate similar “bouldering” facilities in Washington (State), Texas, and Minneapolis. As admitted in the Complaint (see Complaint, Section 10, below), “For a brief period of time in late 2020, one of Plaintiff’s members used content from one of Defendant’s websites as placeholder text during the website design process. This text was removed after two weeks of being publically available, and has been replaced by Plaintiff’s current website: https://www.northmassboulder.com/.”

The Defendants contacted the Plaintiff via counsel in December 2020, at which time the “infringing” content was removed from Plaintiff’s website. Nonetheless, dialogue between the parties’ counsel was apparently unproductive and it became clear that Defendants were going to sue Plaintiff. As such, the Indianapolis-based Plaintiff seized the initiative and filed a declaratory judgment action to prove their lack of infringement.

Declaratory judgment actions are always interesting as they flip the usual filing paradigm (i.e. the infringed filing against the infringer). There is an admitted temporary use by Plaintiff of some of the Defendant’s online content but other issues like trade dress and trade secrets are raised in the Complaint and will be interesting to follow to resolution. Stay tuned for updates.

Indianapolis Bouldering, LLC v. BP Holdings Company, LLC et al.

Court Case Number: 1:21-cv-00344-JMS-JMD
File Date: February 11, 2021 
Plaintiff: Indianapolis Bouldering, LLC
Plaintiff Counsel: Jonathan G. Polak, Steven T. Henke of TAFT STETTINIUS & HOLLISTER LLP
Defendant: BP Holdings Company, LLC, Seattle Bouldering Project, LLC, Minneapolis Bouldering Project, LLC, and Austin Bouldering Project, LLC
Cause: Invalidity or Unenforceability of Intellectual Property Rights, Non-Infringement of Intellectual Property Rights, Non-Violation of Alleged Trade Secrets
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Mark J. Dinsmore

Complaint:

Splenda Manufacturer sues Speedway Gas Stations over Knock-off Chinese Sweetener

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Splenda®-loving Speedway patrons beware! Or not.

In the second gas station-related lawsuit this week, Speedway gas stations are accused of providing knock-off Chinese-manufactured Splenda, the well-known sugar substitute sweetener. For our health-minded blog readers who don’t touch the stuff or just crave real sugar, Splenda sweetener is actually sucralose, a low-calorie sugar-substitute first approved by the FDA in 1998.

Splenda’s manufacturer claims trade dress protection for sucralose sold in yellow packets, of which diner-frequenters, coffee and tea drinkers probably recognize:

Speedway is accused of providing knock-off Chinese sucralose sweetener in yellow packaging at their gas station coffee kiosks. The Plaintiff asserts that “Speedway’s yellow-colored packets are not provided to customers with sufficient cues to the consumer to prevent the mistaken belief by consumers that the yellow packets are in fact SPLENDA® Brand Sweetener.”

Blog readers, would you see the above packet at a coffee kiosk and automatically assume that it is Splenda®? If so, reach out to Plaintiff’s attorney, because that’s the basis of this lawsuit. (Aside: Did you know there are over 50 shades of yellow?)

Splenda’s manufacturer asserts trade dress infringement, unfair competition, false advertising, and dilution claims against Speedway. This will be an interesting case to follow, with both parties being fairly large companies, and presumably with Speedway gas stations already providing their yellow “knock-off” sweetener widely. Not being a coffee drinker (although married to one), I can only guess at what goes through the coffee drinker’s mind before consuming that cherished travel-sized cup of lukewarm gas station bitter brown water, but I really wonder if they are confused by the yellow packaging or whether they care at all. I suspect coffee drinkers grabbing a free packet of sweetener from a gas station kiosk don’t care at all what type of sucralose they’re ingesting, so long as the delivery medium is decently warm and caffeinated. Speedway’s packaging does not mention “Splenda” whatsoever, just listing ingredients of dextrose and sucralose. Apparently, it’s the use of the color yellow (but which yellow?) that bought Speedway this lawsuit.

A fairly easy potential compromise would be for Speedway to provide their sucralose sweetener in non-yellow packaging, but I’m guessing Speedway will decide to challenge Splenda’s asserted monopoly over the color yellow for sweeteners. Splenda’s arguably broad trade dress might need to be narrowed to a certain yellow shade (or shades), rather than the entire spectrum of yellow.

Either way, this lawsuit will be interesting to follow…stay tuned for updates.

Heartland Consumer Products LLC v. Speedway, LLC

Court Case Number: 1:21-cv-00322-JMS-TAB
File Date: February 8, 2021
Plaintiff: Heartland Consumer Products LLC
Plaintiff Counsel: Holiday W. Banta, Jessa DeGroote, Alice Kelly of ICE MILLER LLP
Defendant: Speedway, LLC
Cause: Trade Dress Infringement, Common Law Trade Dress Infringement, False Designation of Origin, Federal Unfair Competition, False or Misleading Representation of Fact, False Advertising, Common Law Unfair Competition, Federal Trademark Dilution, State Trademark Dilution
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Tim A. Baker

Complaint:

Noble Roman’s sues Ex-Franchisees for Trademark Infringement, Conversion, Theft

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The Defendants in this lawsuit are allegedly ex-franchisees of Noble’s Romans, selling gas station pizza from numerous “Luke” gas stations across Northern Indiana.

The Defendants are alleged to have continued utilizing Noble Roman’s intellectual property to advertise and sell Noble Roman’s-branded products and services after termination of their franchise agreement. Further, the Complaint alleges that the Defendants sold unauthorized “Noble Roman’s” products from at least one non-franchised location (see Complaint below, Section 22), but that location is not specifically identified.

The lawsuit was originally filed by Noble Roman’s counsel in Marion County Superior Court in October 2020 but has now been removed to the Southern District of Indiana.

There are often widely-conflicting viewpoints when such franchise arrangements go south, so stay tuned for the Defendant’s Answer and their side of this story.

Noble Roman’s Inc. v. Gateway Triangle Corp. et al.

Court Case Number: 1:21-cv-00407-JPH-TAB
File Date: February 5, 2021 (via Notice of Removal)
Plaintiff: Noble Romans, Inc.
Plaintiff Counsel: P. Adam Davis, Esquire of Davis & Sarbinoff, LLC
Defendant: Gateway Triangle Corp., 7405 Indy Corp., 850 Indy Corp., Northlake Marketing LLC, Thomas M. Collins II
Cause: Conversion under Indiana Code § 35-43-4-3, Theft under Indiana Code §35-43-4-2, Breach of Franchise Agreement, Trademark Infringement, Unjust Enrichment
Court: Southern District of Indiana
Judge: James Patrick Hanlon
Referred To: Tim A. Baker

Complaint:

Mobile App Developer sued for Trademark Infringement, Counterfeiting

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The Plaintiff in this lawsuit, Midcontinent Independent System Operator (MISO), operates one of the world’s largest energy markets with more than $29 billion in annual gross market energy transactions. MISO provides power to 15 U.S. states and Manitoba.

The Defendant, an individual, is alleged to have created a mobile application called “Midcontinent ISO with Realtime Dashboard” that infringes MISO’s trademarks and misleads the consuming public that MISO produced or approves of the application. The Complaint also raises a concern that users are being tricked into entering legitimate MISO credentials into the non-endorsed application.

The purpose of the mobile application is unclear from the Complaint, but it seems to provide information about Plaintiff’s services, tracking energy rates and the status of the power grid. As such, perhaps the Defendant can articulate a “nominative fair use” defense, if use of the Plaintiff’s trademark was necessary to identify the Plaintiff’s products or services, and the Plaintiff’s trademarks weren’t used to suggest endorsement. However, the Defendant’s app also prominently featured Plaintiff’s design mark, which could undermine any fair use defense.

A review of Defendant’s Google Play store shows that they offer similar apps for other energy providers, including NYISO:

The Google Play listing and the app photos don’t contain the usual disclaimers that you’d want to see to best support a “nominative fair use” defense. The Midcontinent ISO application was removed from the Google Play store on January 11, 2021 and remains down today. The Complaint requests injunctive relief to prevent a future relaunch of the application.

Stay tuned for updates.

Midcontinent Independent System Operator, Inc. v. Sullivan

Court Case Number: 1:21-cv-00143-JRS-DML
File Date: January 18, 2021
Plaintiff: Midcontinent Independent System Operator, Inc.
Plaintiff Counsel: Kevin W. Kirsch, David A. Mancino, Kevin P. Flynn of Baker & Hostetler LLP
Defendant: James F. Sullivan a.k.a. Jim Cassidy
Cause: Trademark Infringement, Counterfeiting
Court: Southern District of Indiana
Judge: James R. Sweeney II
Referred To: Debra McVicker Lynch

Complaint: