Tag Archives: Breach of Contract

RE/MAX sues Realtor Franchisee for Competing Against His Own Franchises

25 Wednesday Aug 2021

Posted by in Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trademark

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Apparently all the intellectual property litigators in Indiana took nice long summer vacations, as this is the first new IP lawsuit filed in over two months (since July 22, 2021). After the long wait, the lawsuit we get is mostly about the breakdown of a 10-year franchise relationship.

The Plaintiff is RE/MAX, a global franchisor of real estate brokerage services.

The Defendant is a franchisee accused of numerous violations of the franchise agreement, including actively competing against his own franchises, sending sales associates to a competitor, and enabling competing agents to operate out of RE/MAX locations.

These franchise lawsuits always have two sides, so it’s typically a good idea to read both the Complaint and the Defendant’s Answer for a better picture of how a 10-year franchise relationship breaks down to the point of a lawsuit. Stay tuned for updates.

RE/MAX, LLC et al v. Dulin et al.

Case Number: 1:21-cv-02321-TWP-TAB
File Date: Tuesday, August 24, 2021
Plaintiff: RE/MAX, LLC, RE/MAX Integrated Regions, LLC
Plaintiff Counsel: Lucy Dollens of Quarles & Brady LLP, Kathryn A. Reilly, Thomas A. Olsen, Chuan (CiCi) Cheng of Wheeler Trigg O’Donnell LLP
Defendant: James E. Dulin II, The Hamilton Group, Inc.
Cause: Breach of Contract, Federal Trademark Infringement, Unfair Competition, Declaratory Relief
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Tim A. Baker

Complaint:

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

13 Tuesday Apr 2021

Posted by in Business Law, Indiana, Intellectual Property, Litigation, Patent, Southern District of Indiana, Trade Secret, Trademark

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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:

Website development business sues canine trainer for copyright, trademark infringement

30 Wednesday Sep 2020

Posted by in Intellectual Property

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We’re back! Due to the coronavirus, trademark and copyright filings have been fairly nonexistent for the last six months. But things are picking up again and the Indiana Intellectual Property Blog is back in action to monitor and review intellectual property filings in Indiana.

This case involves a dispute between co-owners of an online instruction course about canine behavior modification. The defendant, a well-known canine trainer, appears to be caught with the plaintiffs in a dispute over her percentage of profit for her contributions to the plaintiff’s series of online instruction courses and canine behavior modification manuals.

It’s always unfortunate when a closely-held business results in a legal controversy between co-owners. The copyright and trademark claims in this case seem to just be leverage for the plaintiffs toward getting their intended result rather than anything particularly interesting for intellectual property practitioners.

Stay tuned for updates.

Content & Commerce, Inc., Kevin DeTrude v. Donna Chandler, Show Colors, Inc., My K9 Behaves, LLC

Court Case Number: 1:20-cv-02488-JMS-DLP
File Date: September 25, 2020
Plaintiff: Content & Commerce, Inc., Kevin DeTrude
Plaintiff Counsel: B.J. Brinkerhoff, Hannah Kaufman Joseph of Jeselksis Brinherhoff and Joseph, LLC
Defendant: Donna Chandler, Show Colors, Inc.
Cause: Declaratory Judgement of Copyright Ownership, Copyright Infringement, Declaratory Relief as to Trademark Ownership, Trademark Infringement, Derivative Claim For Breach of Fiduciary Duty, Derivative Claim of Waste, Self-Dealing, Mismanagement and Misappropriation of Corporate Assets and Usurpation of Corporate Opportunities, Derivative Claim for Theft and Conversion, Direct Claim for Breach of Fiduciary Duty, Direct Claim of Waste, Self-Dealing, Mismanagement and Misappropriation of Corporate Assets and Usurpation of Corporate Opportunities, Direct Claim for Theft and Conversion, Breach of Contract
Court: Northern District of Indiana
Judge: Jane E. Magnus-Stinson
Referred To: Doris L. Pryor

Complaint:

Breach of contract leads to lawsuit over psychotherapy techniques, trademarks

30 Tuesday Jul 2019

Posted by in Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trademark

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The Plaintiff in this lawsuit, Functional Family Therapy Associates, Inc. is a Seattle, Washington-based organization dedicated to training psychotherapists. Plaintiff utilizes a “Functional Family Therapy” protocol to help troubled youth and their families overcome a variety of behavioral problems. Plaintiff provides services in 33 U.S. states and 10 foreign countries.

The Defendants allegedly operate an entity in Bloomington, Indiana called Functional Family Therapy Associates, in violation of Plaintiff’s registered trademarks. One of the Defendants, Sexton, was previously a member of Plaintiff’s organization. More detailed facts are set forth in the (redacted) complaint below.

This lawsuit arises from a breach of contract and the Defendants’ false advertising, unfair competition, and service mark infringement resulting from Defendants’ unauthorized use of Plaintiff’s registered and common law intellectual property rights in Plaintiff’s unique and original family therapeutic services protocol and Plaintiff’s development, testing, training, and marketing thereof.

An unredacted Complaint was filed under seal pursuant to a confidentiality obligation in an agreement between the parties.

F.F.T., LLC v. Sexton, Ph.D et al

Court Case Number: 1:19-cv-03027-RLY-MJD
File Date: Friday, July 19, 2019
Plaintiff: F.F.T., LLC
Plaintiff Counsel: Holiday W. Banta, T. Earl LeVere, Megan Hedrick of Ice Miller LLP
Defendant: Thomas Sexton, Ph.D., Functional Family Therapy Associates, Inc., Astrid Van Dam
Cause: Breach of Contract, Wrongful Interference with Business Relationships and Prospective Business Advantages, Wrongful Interference with a Contractual Relationship, Unfair Competition, False Advertising, Federal Trademark Infringement, Common Law Unfair Competition, Common Law Trademark Infringement, Unjust Enrichment
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Mark J. Dinsmore

Redacted Complaint:

Counterfeit Bongs dominate the February Indiana IP Litigation Docket

01 Friday Mar 2019

Posted by in Copyright, Indiana, Intellectual Property, Litigation, Northern District of Indiana, Southern District of Indiana, Trade Dress, Trademark

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Two photography cases, including one from serial filer Richard Bell, and a breach of franchise agreement lawsuit…other than that, the February Indiana IP litigation docket was totally dominated by filings by RooR International. RooR’s defendants are Indiana smokeshops and their alleged sale of counterfeit bongs.

RooR markets itself as “the premier manufacturer of glass water pipes by emphasizing the brand’s unwavering use of quality materials and focusing on scientific principles which facilitate a superior smoking experience.”

As you can see from the screenshot below, RooR International has gone on a recent filing spree to combat the sale of counterfeit products:

Screen Shot 2019-03-01 at 9.18.39 AM.png

RooR’s defendants, small smoke and vape shops from across Indiana, are accused of Federal Trademark Counterfeiting, Federal Trademark Infringement, Federal False Designation of Origin and Federal Unfair Competition. Heavy stuff.

Sample RooR Complaint

The other non-bong, non-Bell cases involve the breach of a franchise agreement and the unauthorized use of a photograph of a New Year’s Eve fireworks display.

Baskin-Robbins Franchising LLC, BR IP Holder LLC v. Big Scoops, Inc., David M. Glasgow Jr.

Bachner v. USA Halloween Planet Inc.