A popular college bar in Bloomington, Indiana is accused of non-payment of $12,000 to an intern who had been creating content for their social media accounts. The Complaint (below) details several months of promised, delayed, and ultimately unrealized paychecks.
The Complaint includes claims for declaratory judgment of copyright ownership and copyright infringement, but I assume that the intern is less interested in ownership of the bar’s social media content and more interested in getting paid for months of labor. The specific works alleged to have been infringed are not identified in the Complaint and there is no mention of registration of any works, a prerequisite for a copyright infringement claim, so the copyright claims could be vulnerable to challenge. As jurisdiction for the lawsuit is based on the copyright and declaratory judgment of copyright ownership claims, we might see an early battle over jurisdiction.
Ideally, the intern will just get paid what he is owed before lawyers for both sides get deep into researching and drafting motions. Stay tuned for updates.
Schwartz v. Kilroy’s North America, LLC et al
Case Number: 1:22-cv-01563-SEB-DML File Date: August 5, 2022 Plaintiff: Elijah Schwartz Plaintiff Counsel: Kimberly D. Jeselskis, B.J. Brinkerhoff, Hannah Kaufman Joseph of Jeselskis Kaufman and Joseph, LLC Defendant: Kilroy’s North America, LLC, Kilroy’s Sports, LLC, Kilroy’s on Kirkwood, LLC Cause: Violation of the Wage Payment Act, Breach of Contract, Promissory Estoppel, Unjust Enrichment, Fraud, Declaratory Judgment of Copyright Ownership, Copyright Infringement Court: Southern District of Indiana Judge: Sarah Evans Barker Referred To: Debra McVicker Lynch
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
The Defendants in this lawsuit are allegedly ex-franchisees of Noble’s Romans, selling gas station pizza from numerous “Luke” gas stations across Northern Indiana.
The Defendants are alleged to have continued utilizing Noble Roman’s intellectual property to advertise and sell Noble Roman’s-branded products and services after termination of their franchise agreement. Further, the Complaint alleges that the Defendants sold unauthorized “Noble Roman’s” products from at least one non-franchised location (see Complaint below, Section 22), but that location is not specifically identified.
The lawsuit was originally filed by Noble Roman’s counsel in Marion County Superior Court in October 2020 but has now been removed to the Southern District of Indiana.
There are often widely-conflicting viewpoints when such franchise arrangements go south, so stay tuned for the Defendant’s Answer and their side of this story.
Noble Roman’s Inc. v. Gateway Triangle Corp. et al.
Court Case Number: 1:21-cv-00407-JPH-TAB File Date: February 5, 2021 (via Notice of Removal) Plaintiff: Noble Romans, Inc. Plaintiff Counsel: P. Adam Davis, Esquire of Davis & Sarbinoff, LLC Defendant: Gateway Triangle Corp., 7405 Indy Corp., 850 Indy Corp., Northlake Marketing LLC, Thomas M. Collins II Cause: Conversion under Indiana Code § 35-43-4-3, Theft under Indiana Code §35-43-4-2, Breach of Franchise Agreement, Trademark Infringement, Unjust Enrichment Court: Southern District of Indiana Judge: James Patrick Hanlon Referred To: Tim A. Baker
An interesting right of publicity case involving the estate of the late extreme-sports athlete Dean Potter has been filed in the Southern District of Indiana. Mr. Potter’s estate is suing LG Electronics for unauthorized use of Mr. Potter’s likeness and appearance. In a commercial titled Listen. Think. Answer., LG uses footage from the movie Moonwalk, in which Mr. Potter traverses a highline tied to Cathedral Peak in Yosemite National Park as the full moon rises in the background, to advertise the LG OLED TV with AI.
LG claims to have obtained a license to use the Moonwalk footage from Moonwalk’s director, Mikey Schaefer. However, the Complaint (below) asserts that Mr. Potter had signed a release for still photographs only, not video footage. Potter’s estate also maintains that Mr. Schaefer was not able to authorize licenses or sublicenses, meaning Schaefer could exploit the Moonwalk footage himself but not authorize third-party exploitation such as the LG commercial.
“Because Mr. Potter never consented to Mr. Schaefer’s trading in the invaluable equity of Mr. Potter’s likeness in Moonwalk, and/or his reputation as a highlining pioneer, to shill television sets, Mr. Schaefer could not license to Defendants Mr. Potter’s rights, including, inter alia, Potter’s publicity and common law trademark rights.”
This should be an interesting case to follow. Stay tuned for updates. RIP Dean Potter.
“Defendant’s advertisement of a product that enables a sedentary lifestyle, wherein material demands can be met without moving from the couch in the confines of one’s living room, is antithetical to what Mr. Potter stood for in life: an appreciation of the splendor of the outdoors and a celebration of the freedom to forge one’s own path in uncharted terrain.”
Dean Potter LLC v. LG Electronics USA, Inc.
Court Case Number: 1:19-cv-04085-JPH-TAB File Date: Tuesday, October 1, 2019 Plaintiff: Dean Potter LLC Plaintiff Counsel: John Tehranian, Jenny S. Kim of ONE LLP Defendant: LG Electronics USA, Inc. Cause: Infringement of Right of Publicity, False Association, False Endorsement, Common Law Unfair Competition, Unjust Enrichment, Conversion, Deception, Violation of Indiana Crime Victims’ Act Court: Southern District of Indiana Judge: James Patrick Hanlon Referred To: Tim A. Baker
The Plaintiff, a fan company based in Zionsville, Indiana, sells its electric fans to consumers via its website, showrooms or through authorized dealers.
The Defendant is alleged to be offering unauthorized sales of Plaintiff’s fans at the website http://www.lightingmerchant.com. Importantly for consumers, electric fans sold by Defendant are not covered by Plaintiff’s warranty.
The Complaint (below) alleges that the Defendant purchases the products from one or more authorized dealers and then sells the products to retail customers. The identity of the authorized dealers is not revealed in the Complaint.
Fanimation, Inc. v. Decor Selections, LLC
Court Case Number: 1:19-cv-03648-JPH-MJD File Date: Tuesday, August 27, 2019 Plaintiff: Fanimation, Inc. Plaintiff Counsel: Harold C. Moore, Michael A. Swift of Maginot, Moore & Beck, LLP Defendant: Decor Selections, LLC d/b/a Lighting Merchant
Cause: Declaratory Judgment, Injunctive Relief, Trademark Infringement, False Designation of Origin, Dilution, Unfair Competition, Unjust Enrichment Court: Southern District of Indiana Judge: James Patrick Hanlon Referred To: Mark J. Dinsmore