This copyright lawsuit involves a painter attempting to stop an online merchandise platform from using his artwork on customizable products. The Defendant t-shirt website, like thousands of other sites, sells blank apparel that can be customized with a user-uploaded image or text.
Per the Complaint (below), the John Doe defendants (1-11) have, via separate registered accounts, been uploading a digital copy of one of Plaintiff’s paintings since 2018 and using the online platform to create unauthorized products which they presumably then sell elsewhere. Plaintiff’s counsel first contacted the Defendant website in April 2020 about the unauthorized use of Plaintiff’s artwork, seemingly with no acceptable resolution or cessation.
In lawsuits such as this with numerous John Doe defendants, the first and most difficult hurdle for the Plaintiff will be to discover the identity of the John Does. The similarity in the John Doe’s account names on the t-shirt platform seem to indicate that it’s just one source (an individual or small group) that is repeatedly ordering new product. I wouldn’t expect any response to be filed by the John Doe Defendants, who will likely disappear altogether, and probably a long road of discovery for the Plaintiff perhaps eventually leading to a default judgment against the determined “guilty” party.
The vicarious infringement and contributory infringement claims against the online t-shirt website will be interesting to follow. Presumably, having been put on notice of the unauthorized use in April 2020, the t-shirt website might be expected to take more action to prevent future infringements of the same image. But how closely do they (or should they be expected to) patrol user-submitted images for infringement? It seems like the t-shirt printing and shipping process would be almost completely automated following the user submission, with no copyright verification step in between.
Stay tuned for updates.
Thomas v. ooShirts, Inc. et al.
Case Number: 1:21-cv-02519-TWP-MJD File Date: Friday, September 24, 2021 Plaintiff: Andrew “Andy” Thomas Plaintiff Counsel: Sean J. Quinn of SouthBank Legal: LaDue | Curran | Kuehn, Oliver Maguire of Evans & Dixon, LLC Defendant: ooShirts, Inc., John Does 1-11 Cause: Direct Copyright Infringement, Vicarious Infringement, Contributory Infringement Court: Southern District of Indiana Judge: Tanya Walton Pratt Referred To: Mark J. Dinsmore
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
The parties to this copyright lawsuit have a long personal history.
The Plaintiff, Fitzgerald, was the executor of the estate of Frithjof Schuon (“Schuon”), a Swiss metaphysician and author, who died in Bloomington, Indiana in May 1998.
The Defendant, Murray, was a close friend of Schuon and his wife until 1992. From 1992-1995, Murray allegedly made aggressive communications, including threatening letters, to Schuon. Murray repeatedly violated a Protective Order, leading to her incarceration. Murray then filed four lawsuits against the Schuons, two of which were dismissed and two which were settled via a Settlement Agreement that included a confidentiality provision.
After Schuon died in 1998, his wife inherited his right of publicity and copyrights. Those rights were subsequently assigned to Plaintiff World Wisdom, Inc. (“World Wisdom”) in 2003. Mrs. Schuon’s rights under the Settlement Agreement were assigned to Fitzgerald and World Wisdom in 2021. World Wisdom also was assigned rights in Mrs. Schuon’s own right of publicity and copyrights.
In April 2018, Murray published a website that contained many criticisms of Schuon. The website allegedly infringes some of Mrs. Schuon’s copyrighted works and violates the confidentiality provision of the earlier Settlement Agreement. Further, in 2021, Murray published a book, Third Wife of the Muslim Shaykh Frithjof Schuon, that allegedly infringes numerous copyrighted works of Mrs. Schuon. Murray’s publisher, Defendant Beacon Books and Media, discontinued print publication of the book in March 2021 but electronic versions remain available. The Defendants have apparently intimidated that further print versions of the book are forthcoming.
In addition to copyright and breach of contract claims, the Complaint (below) also includes a claim for a RICO violation based on alleged racketeering activity by the Defendants.
Given the long history between the parties and the seemingly contrary position of the Defendants, the Answer should be an interesting read. Stay tuned for updates.
Fitzgerald et al. v. Murray et al.
Case Number: 1:21-cv-01822-TWP-TAB File Date: Friday, June 18, 2021 Plaintiff: Michael Fitzgerald, World Wisdom, Inc. Plaintiff Counsel: Louis T. Perry, Jason M. Rauch, Elizabeth A. Charles of Faegre Drinker Biddle & Reath LLP Defendant: Maude Murray, Beacon Books and Media, LTD Cause: Civil RICO, Copyright Infringement, Right of Publicity, Breach of Contract, Intentional Interference with Contractual Relations Court: Southern District of Indiana Judge: Tanya Walton Pratt Referred To: Tim A. Baker
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
One company’s efforts to expand its LA MICHOACANA MEAT MARKET brand from meat markets to grocery stores has moved into Indiana.
The Plaintiff, La Michoacana Meat Market, owns several federal trademark registrations for LA MICHOACANA MEAT MARKET for “Retail meat market stores.”
Seeking to claim undeniably broader protection over “LA MICHOACANA” in connection with grocery stores, the Plaintiff has brought numerous lawsuits over the last few years against small grocers using the term “Michoacana” (or some variation) in their name. Two new Indiana lawsuits are the 6th and 7th filed by La Michoacana against small grocers just this year.
“La Michoacana,” is a common term meaning someone or something from the state of Michoacán in western Mexico. Like an Iowan is from Iowa, or a Californian is from California (but not like a Hoosier is from Indiana). It is apparently a very popular term when naming “Mexican-themed grocery stores,” as evidenced by these lawsuits.
Due to the Defendants’ respective locations, one lawsuit was filed in the Southern District of Indiana and the other in the Northern District of Indiana. It will be interesting to track the two lawsuits side-by-side to see whether they reveal any significant differences between the Northern and Southern District.
Plaintiff’s Registered Mark
LA MICHOACANA MEAT MARKET for “Retail meat market stores”
Northern District Defendant’s Mark
CARNICERIA Y FRUTERIA LA MICHOACANA for a “Mexican-themed grocery store”
Southern District Defendant’s Mark
SUPER MERCADO JIREH POLLO MICHOACANO for a “Mexican-themed grocery store”
Between the two, I predict more difficulties for the Northern District Defendant. For some reason, the Northern District Defendant includes a link to the Plaintiff’s website on its Facebook page, which could be interpreted as evidence of intent to confuse or deceive. However, it’s not apparent from the Complaint (below) who added the link on the Facebook page, as it could be an incorrect Facebook-generated link or third-party edit.
Via this Google Maps image, the Northern District Defendant uses “La Michoacana” more prominently than the other literal elements of their brand (“Carniceria Y Fruteria”) on consumer-facing signage, which strengthens the Plaintiff’s argument for likelihood of consumer confusion.
Compare that to the signage of the Southern District Defendant, which uses the allegedly infringing term less prominently, and with a different spelling:
Further, the services seem different between the Northern and Southern District defendants, whereas the Northern District’s signage specifically advertises the sale of meats. Rather, the Southern District Defendant is a “tienda,” a small neighborhood grocery shop, different than a “retail meat market store.”
Perhaps in recognition of the possible narrow application of their “Retail meat market stores” description, La Michoacana has recently filed an additional federal trademark application for LA MICHOACANA SUPERMARKET for “Retail grocery stores.” That trademark application will be published for opposition on March 30, 2021, and might face challenges from among La Michoacana’s growing list of defendants.
The reality is that a single small grocery owner won’t want to spend much money defending their store name in federal court and will likely just choose to change the name, which the Plaintiff undoubtedly has considered. Buying new signage simply costs less than defending a federal lawsuit. Depending on how long each Defendant has been using their respective name, they may have a good acquiescence or laches defense.
Stay tuned for updates.
Sidenote: The LA MICHOACANA brand has also been the subject of a separate, but equally interesting, trademark dispute in connection with fruit popsicles.
La Michoacana Meat Market TM Holdings, LLC v. Lopez et al.
Court Case Number: 1:21-cv-00563-TWP-TAB File Date: March 9, 2021 Plaintiff: La Michoacana Meat Market TM Holdings, LLC Plaintiff Counsel: Ann O’Connor McCready, Neil R. Peluchette of Taft Stettinius & Hollister LLP Defendant: Josue Lopez, Supermercado Jireh LLC Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition, Common Law Unfair Competition, Unjust Enrichment Court: Southern District of Indiana Judge: Tanya Walton Pratt Referred To: Tim A. Baker
La Michoacana Meat Market TM Holdings, LLC v. Galan et al.
Court Case Number: 2:21-cv-00087 File Date: March 9, 2021 Plaintiff: La Michoacana Meat Market TM Holdings, LLC Plaintiff Counsel: Ann O’Connor McCready of Taft Stettinius & Hollister LLP, Ruth M. Willars of Monty & Ramirez LLP (pro hac vice) Defendant: Cacimiro Galan, Carniceria y Fruteria La Morenita LLC Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition, Common Law Unfair Competition, Unjust Enrichment Court: Northern District of Indiana Judge: Philip P. Simon Referred To: John E. Martin