Mid-June Indiana Intellectual Property Litigation Update

It was a busy month for new filings but no big updates in previously filed cases.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – There has been an extension of forty-five days for the parties’ initial discovery deadlines. Nothing else to report.

Heartland Consumer Products LLC v. Speedway, LLC (SD, filed 2/5/2021) – Nothing to report.

Watch Communications v. Jarman et al. (SD, filed 3/8/2021)- A pretrial conference was held on May 17, 2021. An Amended Complaint was filed on June 4, 2021 and an Answer to Third Party Counterclaims was filed on June 9, 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) – On June 14, 2021, Attorney Kevin E. Steele filed an appearance on behalf of all defendants and requested an extension of time to file an answer.

Vroom, Inc. v. Midwest Motors LLC et al. (SD, filed 3/24/2021) – A pretrial conference was held on June 4, 2021. The Defendants failed to appear. Defendants have until June 18, 2021 to show cause why sanctions should not issue for their failure to appear.

Delta Faucet Company v. Iakovlev et al. (SD, filed 3/25/2021) – On June 2, 2021, Delta filed a motion to take discovery from Amazon.com. The motion was granted on June 4, 2021.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al. (SD, filed 4/12/2021) – A pretrial conference was held on June 3, 2021. A response to the Complaint is due by June 17, 2021.

Triple LLL Truck Repair, Inc. v. Triple LLL, Inc. et al. (ND, filed 4/26/2021) – No update yet.

Energy Beverages LLC v. Full Throttle Automotive LLC (SD, filed 5/19/2021) – The Defendants have received an extension of time to answer the Complaint until July 7, 2021.

Monster Energy Company v. R&R Medical, LLC d/b/a Bear KompleX (ND, filed 5/26/2021) – No update yet.

Egglife Foods, Inc. v. Crepini, LLC (ND, filed 5/28/2021) – No update yet.

Gatewood v. Webber Chappelle (ND, filed 6/4/2021) – No update yet.

Sears Authorized Hometown Stores, LLC v. Lynn Retails, Inc. et al. (SD, filed 6/4/2021) – No update yet.

Noble Roman’s, Inc. v. AMI Stores Management, Inc. et al. (SD, filed 6/6/2021) – No update yet.

May 2021 Updates

April 2021 Updates

Noble Roman’s sues Ex-Franchisee for Unpaid Royalties, Underreported Sales Figures

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Noble Roman’s is becoming a regular on this blog. It begs the question, why do they have so many intellectual property problems? Rather than dumping piles of money into back-end enforcement, perhaps they should spend more time on front-end due diligence and avoid many of these problems altogether. Given that most/all of the lawsuits involve ex-franchisees, perhaps Noble Roman’s should re-examine their franchise agreement or franchisee selection process. At least this lawsuit leaves out the ridiculous abandoned theft and conversion claims from their previous complaints.

As with most of their previous lawsuits, Noble Roman’s is suing a prior franchisee for breach of their franchise agreement. Here, the Defendants, with gas station locations in Florida and Georgia, have allegedly not paid the required royalty, underreported sales figures, failed to make available all Noble Roman’s menu items, failed to maintain required business hours, and sold non-Noble Roman’s food offerings.

The Complaint was originally filed in Marion County Superior Circuit Court for Marion County, Indiana but Defendants’ counsel has filed a Notice of Removal to the Southern District of Indiana, Indianapolis Division. Defendants’ counsel is Donald E. Pinaud, Jr. of Jacksonville, Florida.

Stay tuned for updates.

Noble’s Roman’s, Inc. v. AMI Stores Management, Inc. et al.

Case Number: 1:21-cv-01539-RLY-TAB
File Date: Sunday, June 6, 2021
Plaintiff: Noble Roman’s, Inc.
Plaintiff Counsel: Jaime L. Meyer, Jeffrey D. Roberts of Hollingsworth Roberts Means LLC
Defendant: AMI Stores Management, Inc., AMI 57 LLC d/b/a AMI 70 Food Mart, AMI 63 LLC d/b/a AMI 63 Food Mart
Cause: Breach of Franchise Agreement, Trademark Infringement
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Tim A. Baker

Complaint:

Family-owned Hardware Store in Corydon, Indiana sued by Sears Hometown for Unfair Competition and Tortious Interference

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The Plaintiff in this lawsuit is Sears Authorized Hometown Stores, LLC (“SAHS”), the licensor of Sears Hometown stores, which offer SAHS’s merchandise, such as major home appliances, for sale to the public on consignment from SAHS. For over 25 years, SAHS licensed a Sears Hometown store in Corydon, Indiana through dealership agreements with a series of independent dealers.

The Defendants are accused of using “their personal relationships with SAHS’s former dealer to block SAHS’s access to the market and open their own store, “Schneider’s Hometown,” at the same location as the former Sears Hometown store. Defendants are now unfairly trading off SAHS’s name and goodwill in the Corydon market.”

The Complaint (below) details the history between the original Corydon SAHS store and the Defendants, including the actions of the Defendants in abandoning their own dealer agreement.

The Defendants are also accused of using a sign designed to be confusingly similar to the sign used to designate a Sears Hometown store, including using the same font and color scheme. The interior of the Defendants’ store allegedly uses the same trade dress and fixtures used in SAHS’s branding programs, including, but not limited to, the paint colors and trim and vinyl plank wood flooring. The Defendants also continue to use the same phone number from the SAHS store.

Stay tuned for updates.

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al.

Case Number: 4:21-cv-00091-JMS-DML
File Date: Friday, June 4, 2021
Plaintiff: Sears Authorized Hometown Stores, LLC
Plaintiff Counsel: Michael W. Oyler of Furman Nilsen & Oyler, PLLC, Fredric A. Cohen, Allison R. Grow, Charles J. Hoover of Cheng Cohen LLC
Defendant: Lynn Retail, Inc., Jerry Schneider, Laura Schneider
Cause: Unfair Competition, Tortious Interference with Contract, Tortious Interference with Prospective Economic Advantage
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Debra McVicker Lynch

Complaint:

Self-described “Failed Comedian” sues Dave Chappelle for Stealing a Joke

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In a very short Pro Se Complaint (below), a self-described “failed comedian” is seemingly alleging that legendary comedian Dave Chappelle saw him perform back in 2014-2015 and subsequently used a stolen joke in Chappelle’s Netflix comedy special released in March 2017.

Jokes can be copyrighted, but it’s very rare and “stealing” or “borrowing” jokes from other comedians is commonplace. Further, there’s no mention of copyright anywhere in the Complaint. Without a valid copyright registration, any potential copyright claim will go nowhere. As such, the lawsuit presumably could only proceed on the grounds of something like theft or conversion.

Under Illinois law, where the joke “stealing” allegedly occurred, a person commits theft by: (1) knowingly taking or obtaining control over another’s property, (2) without authorization (including using threats, using deception, or knowing it’s stolen), and (3) with intent to permanently deprive the owner of their property. Retelling a joke doesn’t deprive the original teller from continuing to tell the joke, so a theft claim is probably equally set for failure.

In Illinois, a Plaintiff seeking to prove conversion must establish: (1) they have a personal right to a specific piece of property; (2) they have an absolute and unconditional right to immediate possession of the personal property; (3) they made a demand for possession of the property currently possessed by the defendant; and (4) the defendant wrongfully assumed control of the plaintiff’s property. At least in the current iteration of the Complaint, these elements have not been established.

The Complaint provides only the following limited Statement of Claim:

“Between 2014-2015 while the Defendant was working on the movie “Chiraq” in Chicago, he saw the Plaintiff performing at one or more of the four places where comedy that were within 2 miles of the location the Defendants shoot location. Then knowingly used material from the Plaintiff in a standup special without permission.”

The Complaint doesn’t include the text of either the Plaintiff’s original joke or Chappelle’s allegedly infringing joke, other than mentioning that Chappelle’s joke “was exactly 1 minute.” There’s nothing to establish that the Plaintiff holds any right in any specific piece of property and is silent as to any demand for possession. As such, a conversion claim will likely also be unsuccessful.

The Plaintiff seeks $303,030.30 in damages, more than double the statutory maximum for copyright infringement.

“The Plaintiff is seeking $303,030.30 in relief. The Defendants was paid 20 Million for the special “Deep in the Heart of Texas” by Netflix which has a runtime of 66 mins, the joke was exactly 1 minute and 303,030.30 would be what the Defendant was paid per minute.

It’s not clear that the lawsuit should even be in Indiana as the alleged acts occurred in Illinois and Dave Chappelle lives in Ohio.

Unfortunately, the Plaintiff has already spent $402 filing this Complaint and now will need to spend even more to have it properly served on Chappelle. Without seriously upgrading the sparse information in the Complaint, it’s probably all just lost money. Since we didn’t even get a joke out of the entire Complaint, I’ll leave you with a humorous quote about pro se plaintiffs by arguably our best lawyer-president (who himself was self-taught in the law):

“He who serves as his own counsel has a fool for a lawyer and a jackass for a client.” Abraham Lincoln

Stay tuned for updates.

Gatewood v. Webber Chappelle

Case Number: 2:21-cv-00186-PPS-JEM
File Date: Friday, June 4, 2021
Plaintiff: Xavier Gatewood
Plaintiff Counsel: Pro Se
Defendant: David Khari Webber Chappelle
Cause: Nothing specific, possibly theft or conversion?
Court: Northern District of Indiana
Judge: Philip P. Simon
Referred To: John E. Martin

Complaint:

Egg White Wraps are apparently a thing, and now they have a Trade Dress Lawsuit

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Update 6/2/2021: I went to the grocery store today searching for Egg White Wraps and didn’t find any. Is this really a thing?

Here’s a fairly interesting trade dress lawsuit involving a food product I didn’t even know existed…egg white wraps. Apparently, egg white wraps were the “number one new product in dairy departments…in 2020” (see Complaint below). It begs the question, how many other new dairy products were released in 2020? Dairy product connoisseurs, please educate me in the comments below.

As general information, “trade dress” comprises the characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. However, if trade dress is “functional,” meaning the characteristics are “essential to the use or purpose of the article or if it affects the cost or quality of the article,” it cannot serve as a trademark. See TMEP 1202.02(a).

The Plaintiff in this lawsuit, Egglife, is accusing the Defendant, Crepini, of adopting packaging that is too similar to their own egg white wrap packaging.

Here are the specific elements that the Plaintiff consider to be their own protectable trade dress:

a. Interwoven and overlapping shapes with rounded rather than squared edges that weave in and out of the front of the package

b. The interwoven and overlapping shapes with rounded rather than squared edges are comprised of different, yellow-based colors

c. Transparent center window with overlaid graphics

d. Prominent display of “egg white wraps” in the center of the transparent window in the center of the front of the package

e. Lowercase “egglife”brand straight across the upper quarter of the front of the package

f. Smaller arched text centered over the “egglife” brand near the top of the front of the package

g. All capitalized“KEEP REFRIGERATED” text at bottom of the front of the package

h. Lowercase “egglife”brand straight across the upper quarter of the front of the package

i. Smaller arched text centered over the “egglife” brand near the top of the front of the package

j. All capitalized “KEEP REFRIGERATED” text at bottom of the front of the package

As mentioned above, I’m certainly no expert on egg white wrap packaging, but I have been in a grocery store before, and some/most of the above characteristics seem pretty standard for all types of food products. Food marketers please weigh in below, but many of these characteristics seem almost necessary, i.e. functional, given the limited packaging size for a small food product.

However, the Complaint highlights frequent changes to the Defendant’s packaging from early 2018 up to the 2019 rebrand to the current allegedly infringing packaging, of which the Defendant’s packaging now supposedly copies the characteristics of Plaintiff’s packaging:

a. Interwoven and overlapping shapes with rounded rather than squared edges
b. The interwoven and overlapping shapes with rounded rather than squared edges are comprised of nearly identical yellow-based colors
c. Transparent center window with overlaid graphics
d. Lower case brand straight across the upper quarter of the packaging
e. Smaller arched text centered over the top of the brand near the top of the packaging
f. Abandoned trademarked EGG THINS in favor of “egg wraps”
g. Abandoned the long-used CREPINI Iand crown design trademark in favor of lowercase font across the top of the packaging
h. Added “Keep Refrigerated” messaging in all capital letters to the bottom of the packaging

As an unsophisticated egg white wrap consumer, both packagings frankly appear to me just like many other packagings in a grocery store. I’m reminded of flour tortilla packaging. Due in large part to FDA labeling requirements, food producers/marketers have to pack a lot of functional information about a product into a very small space. The use of the colors yellow and white in connection with an egg product seem to be almost a requisite. A transparent center window allowing a consumer to examine the food product seems highly necessary.

The Complaint does include some very limited evidence of instances of actual confusion by Costco consumers posting on Facebook. Considering the type of people that feel a need to post on social media about their Costco purchases, I’m not sure whether I’d consider those to be “significant” instances of confusion. However, they do exist and add an extra wrinkle to the lawsuit and Crepini’s possible defenses and responsibility to avoid consumer confusion.

This trade dress lawsuit will be interesting to follow. Stay tuned for updates.

Egglife Foods, Inc. v. Crepini, LLC

Case Number: 3:21-cv-00388
File Date: Friday, May 28, 2021
Plaintiff: Egglife Foods, Inc.
Plaintiff Counsel: Louis T. Perry, David R. Merritt of Faegre Drinker Biddle & Reath LLP
Defendant: Crepini, LLC
Cause: Trade Dress Infringement, False Designation of Origin, Common Law Unfair Competition, Deception
Court: Northern District of Indiana
Judge: Jon E. DeGuilio
Referred To: Michael G. Gotsch, Sr.

Complaint: