Mid-April Indiana IP Litigation Update

Just a few updates of note since mid-March in Indiana trademark and copyright lawsuits. Next month should see more filings in the current lawsuits as defendants start to make appearances.

Midcontinent Independent System Operator, Inc. v. Sullivan (SD, 1/18/2021) – The parties have settled and a Consent Judgment was entered on April 7, 2021. The Defendant has agreed to stop using the Plaintiff’s trademarks, with each party to bear its own costs and attorneys’ fees.

Schnebelt v. Anglotopia, LLC (ND, filed 1/18/2021) – No update since the Notice on Settlement on March 10, 2021.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – The Plaintiff filed an Amended Complaint on April 2, 2021.

The Amended Complaint has dropped the claims of Conversion and Theft, retaining just the claims of Breach of Franchise Agreement and Trademark Infringement. As a result, the Defendants’ Motion to Dismiss filed on March 8 was denied without prejudice as moot.

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.

Watch Communications v. Jarman et al. (SD, filed 3/8/2021) – The Defendants’ counsel filed an appearance on April 6, 2021 and filed a 14-day Notice of Initial Extension of Time. As such, the new response deadline is April 21, 2021.

La Michoacana Meat Market TM Holdings, LLC v. Lopez et al. (SD, filed 3/9/2021) – No update yet.

La Michoacana Meat Market TM Holdings, LLC v. Galan et al. (ND, filed 3/9/2021) – No update yet.

Vroom, Inc. v. Midwest Motors LLC et al. (SD, filed 3/24/2021) – No update yet.

Delta Faucet Company v. Iakovlev et al. (SD, filed 3/25/2021) – On March 30, 2021, Delta Faucet Company filed an Amended Complaint.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al. (SD, filed 4/12/2021) – No update yet.

Equestrian Arena Equipment Manufacturer Sues Competitor for Breach of Contract, Misappropriation of Trade Secrets

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Here’s an interesting lawsuit, which seems like it wants to be a patent lawsuit but instead is masquerading as a breach of contract or trade secret lawsuit.

In September 2016, the parties allegedly into a “Product Lines Purchase Agreement,” by which the Plaintiff purchased “all specifications, shop drawings, blueprints, records and intellectual property rights” relating to the Kiser DragMaster and Kiser Edge, equipment used for grooming and maintaining equestrian arenas.

Despite selling the intellectual property for those products to Plaintiff as a part of the deal, the Defendants are now accused of selling knockoff products, although under different product names. It seems that what Plaintiff really wants to do is prevent the sale of competing products, but they don’t have any patents to truly protect their product designs. As such, the Plaintiff’s lawyers had to get creative and try to bring breach of contract, trademark, and trade secret claims.

Apparently, representatives of the Defendants have referred to the Defendants’ products as a “redesign” of Plaintiff’s DragMaster. Even if true, the Defendants could claim a nominative fair use defense, as such references seem to actually be referring to old DragMaster products. The law around comparative advertising is pretty well-settled in favor of consumer knowledge, absent evidence of false endorsement. Competitors comparing a new product to an older competing product via name is typically allowed.

By way of example, the Complaint (below) contains the following diagram comparing the Defendants’ “Kiser 1000” to the Plaintiff’s “ABI DragMaster”:

Similarly, the “Kiser 200” is compared to the “ABI Edge”:

These are the types of comparison drawings you’d typically see in a patent lawsuit. All of the features being compared are utilitarian product features. The product names (i.e. trademarks) aren’t compared because they aren’t similar at all…Kiser 1000 vs. ABI DragMaster.

Proving a breach of contract or misappropriation of trade secrets will necessarily depend on proving that the Defendants’ products are actually infringing on the intellectual property owned by Plaintiff. Without any prior patent protection, that could be difficult to do in this context.

Stay tuned to see how the Defendants respond, perhaps with a Motion to Dismiss for some of the claims.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al.

Court Case Number: 1:21-cv-00890-SEB-DLP
File Date: Monday, April 12, 2021
Plaintiff: ABI Attachments, Inc.
Plaintiff Counsel: James M. Lewis, Michael J. Hays of Tuesley Hall Konopa LLP
Defendant: Kiser Arena Specialists, Inc., Robert D. Kiser, James Kiser
Cause: Breach of Contract, Misappropriation of Trade Secrets, Lanham Act Violations, False Designation, False Advertising, Common Law Unfair Competition, Common Law Trademark Misappropriation, Unjust Enrichment
Court: Southern District of Indiana
Judge: Sarah Evans Barker
Referred To: Doris L. Pryor

Complaint:

Delta Faucet Company sues Russian Counterfeiters over Unauthorized Amazon Sales

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Delta Faucet Company is going after Russian counterfeit faucet sellers in the Southern District of Indiana. In a lengthy and well-drafted Complaint (below), the Plaintiff details how a company’s trademarks are impacted by negative online marketplace reviews and unauthorized sellers. The lawsuit potentially exposes a gray market existing within Amazon’s “Fulfillment by Amazon” services that allows for counterfeit sales, leading to invalid product warranties, disgruntled consumers, and a damaged brand.

This lawsuit, along with Delta’s upgraded authorized seller policies (described in the Complaint), could serve as a good model for other companies dealing with online counterfeits. Although I predict the individual counterfeiters will simply disappear to continue on behind other aliases, Delta is likely more interested in getting an injunction to prevent further Amazon sales, setting precedent against counterfeiters and possibly allowing them to address the numerous unearned negative product reviews.

Stay tuned for updates.

Delta Faucet Company v. Iakovlev et al.

Court Case Number: 1:21-cv-00733-JRS-TAB
File Date: March 25, 2021
Plaintiff: Delta Faucet Company
Plaintiff Counsel: Louis T. Perry of Faegre Drinker Biddle & Reath LLP
Defendant: Dmitrii Iakovlev, John Does 1-10
Cause: Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, Indiana Crime Victim’s Relief Act, Deception
Court: Southern District of Indiana
Judge: James R. Sweeney II
Referred To: Tim A. Baker

Complaint:

VROOM Online Car Dealer Sues Indianapolis-based VROOOMSACE Dealership for Trademark Infringement

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The Plaintiff in this trademark lawsuit, Vroom, is an online nationwide used car retailer based in New York, New York. own 8 U.S. trademark registrations for VROOM and the Vroom Logo, using the marks since at least 2014. The Plaintiff’s domain name is http://www.vroom.com.

The Defendants operate Vrooomsace, a used car retailer located in Indianapolis, Indiana. The Defendants’ use the domain name vrooomcars.com.

Asserting a likelihood of confusion, Plaintiff’s counsel first attempted to contact the Defendants on December 30, 2020, but apparently has received the runaround ever since, never receiving a substantive response from Defendants.

Their patience apparently has run out, resulting in this lawsuit. We’ll see whether Plaintiff finally gets a response. Unfortunately, often it takes a filed complaint for the opposing party to take a matter seriously. If not, this lawsuit could wind up with a default judgment.

Stay tuned for updates.

Vroom, Inc. v. Midwest Motors LLC et al.

Court Case Number: 1:21-cv-00715-TWP-TAB
File Date: March 24, 2021
Plaintiff: Vroom, Inc.
Plaintiff Counsel: David A.W. Wong, Caitlin R. Byczki, Kathleen S. Fennessy of Barnes & Thornburg LLP
Defendant: Midwest Motors LLC dba Vrooomsace Car Selection, Khaled Alragwi
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement, Anticybersquatting Consumer Protection Act
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Tim A. Baker

Complaint:

Mid-March Indiana IP Litigation Update

Another month come and gone with just a few developments in Indiana copyright and trademark lawsuits. Some interesting cases were filed this month that should have an update next month.

Midcontinent Independent System Operator, Inc. v. Sullivan (SD, 1/18/2021) – On 3/10/21, the Defendant was granted another extension to file their Answer until 3/24/2021.

Schnebelt v. Anglotopia, LLC (ND, filed 1/18/2021) – On 3/10/21, the Plaintiff filed a Notice of Settlement indicating that “The parties have reached a settlement in principle. Plaintiff will filed a notice of dismissal by May 28, 2021.” So this lawsuit is basically over, likely just pending full payment from Defendant to Plaintiff.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – The Defendants have filed an Answer and Motion to Dismiss for Failure to State a Claim (see below). The Answer is almost entirely just general denials but does include Counterclaims (starting at page 21) that tell some of the Defendants’ side of the story. Allegedly, Noble Roman’s was attempting to use a few minor protocol breaches to force the Defendants’ into signing a 4-year lease agreement. The Counterclaims also allege abusive litigation practices and abuse of process. The Defendants are asking for dismissal of the Complaint, damages against the Plaintiffs, and attorneys’ fees.

Defense counsel are Ronald J. Waicukauski and Carol Nemeth Joven of Price Waicukauski Joven & Catlin, LLC.

Answer:

The Motion to Dismiss addresses Noble Roman’s failure to make factual allegations of any specific wrongful conduct. If, per the Defendants’ Counterclaims, Noble Roman’s wanted a protracted legal battle, this is the first opportunity for it to spend some serious legal money defending deficiencies in the Complaint.

It should be noted that the original Noble Roman’s counsel who filed the Complaint is not among the team currently litigating the case, who it turns out might be on cleanup duty.

Motion to Dismiss for Failure to State a Claim:

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

Watch Communications v. Jarman et al. (SD, filed 3/8/2021) – No update yet

La Michoacana Meat Market TM Holdings, LLC v. Lopez et al. (SD, filed 3/9/2021) – No update yet

La Michoacana Meat Market TM Holdings, LLC v. Galan et al. (ND, filed 3/9/2021) – No update yet