Tags
Breach of Contract, Common Law Trademark Misappropriation, Common Law Unfair Competion, Doris L. Pryor, False Advertising, False Designation, Lanham Act Violations, Misappropriation of Trade Secrets, Sarah Evans Barker
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:
Kexue Huang, 46, worked at a Dow Chemical Co subsidiary from 2003 to 2008 in Indiana where he led a team of scientists developing organic insecticides and then later for another agribusiness giant, privately held Cargill Inc.
Indiana Intellectual Property Blog 