Articles Posted in Franchise

By

Grand Rapids, Michigan — Trademark lawyers for Texas Roadhouse, Inc. and Texas Roadhouse Delaware LLC, both of Louisville, Kentucky (collectively, “Texas Roadhouse”) sued for trademark infringement in the Western District of Michigan alleging that the Defendants, including those doing business as multiple Texas Corral restaurants located in Indiana (collectively “Texas Corral”), as well as one Amarillo Roadhouse restaurant, also located in Indiana, infringed the service mark TEXAS ROADHOUSE, Trademark Registration Nos. 1,833,533; 2,231,309; and 2,250,966, which have been registered by the U.S. Trademark Office.

Texas Roadhouse operates a Texas-themed restaurant chain.  The first Texas Roadhouse restaurant opened in Clarksville, Indiana in 1993.  As of March 2013, there were 397 Texas Roadhouse restaurants in 47 states and three countries. 

Texas Roadhouse contends that each of the restaurants is required to comply with strict exterior and interior design requirements so that the look and feel is substantially identical across all Texas Roadhouse locations.  It lists three U.S. Service Mark Registrations that include the mark “Texas Roadhouse” and asserts that each of them is incontestable.  Texas Roadhouse also claims ownership of various unregistered marks that include the word “Texas” and “Roadhouse” as well as copyright protection, including a U.S. Copyright registration, of its marquee.  Finally, Texas Roadhouse claims intellectual-property rights in the trade dress of its restaurants, including the look of the exterior design of the building, the interior décor, the music and the menu.

TexasCorralLogo.jpgTexas Corral, against which Texas Roadhouse filed this complaint, also operates casual, western-themed, family restaurants. It owns and operates nine restaurant locations doing business under the name “Texas Corral.”  A total of ten locations are at issue in this lawsuit.  Six Indiana cities have “Texas Corral” restaurants: Highland, Merrillville, Portage, Michigan City, Martinsville and Shelbyville.  Texas Corral also purportedly owns and operates a location that does business as “Amarillo Roadhouse” in Indiana, which is also at issue in this trademark-infringement lawsuit.  In addition, three other Texas Corral restaurants have been listed in the complaint: two in Michigan and one in Illinois.  

Also listed in the complaint are Paul Switzer, asserted to be the franchisor/licensor of Texas Corral restaurants and Victor Spina, asserted to be a franchisee/licensee.  “John Doe Corp.,” a fictitious name intended to represent entities or individuals whose actual identity is not currently known to Texas Roadhouse, is also listed as a Defendant.

AmarilloRoadhouseLogo.gifIn the complaint, trademark attorneys for Texas Roadhouse assert that Texas Corral and Amarillo Roadhouse routinely use trade dress, trademarks, service marks, trade names, designs or logos that are confusingly similar to or copies of intellectual property owned by Texas Roadhouse.  This purportedly infringing use is asserted to be visible in signage, print and electronic promotional materials, menus, décor, building design and websites.

Texas Roadhouse’s complaint against Texas Corral and Amarillo Roadhouse lists the following:

·         Count I: Trade Dress Infringement

·         Count II: Federal Trademark Infringement

·         Count III: Trademark Infringement Under Mich. Comp. Laws § 429.42

·         Count IV: Trademark Infringement Under Ind. Code § 24-2-1-13

·         Count V: Trademark Infringement Under Common Law

·         Count VI: Copyright Infringement Under 17 U.S.C. § 101 et seq.

·         Count VII: Unfair Competition Under Michigan and Indiana Common Law

Texas Roadhouse asks for a judgment that Texas Roadhouse owns enforceable rights in the Texas Roadhouse intellectual property and that all registrations for the Texas Roadhouse intellectual property are valid; a judgment that the Defendants have been and are directly or indirectly infringing the Texas Roadhouse intellectual property; a judgment that the Defendants have been and are engaging in unfair competition by their unauthorized use of the Texas Roadhouse intellectual property; a judgment that Defendants acted deliberately, willfully, intentionally or with malicious intent; an injunction against Defendants prohibiting infringement; damages, including treble damages; a judgment that this case is exceptional and that the Defendants be ordered to pay all of Texas Roadhouse’s attorney fees associated with this action pursuant to 15 U.S.C. § 1117 and 17 U.S.C. § 505; and a judgment that the defendants be ordered to pay all costs and expenses incurred by Texas Roadhouse in this action.

Practice Tip:

The U.S. Supreme Court has addressed the requirements for trade dress protection in a similar context.  Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).  At issue in Two Pesos was similar restaurant décor.  Taco Cabana had sued rival Two Pesos for copying the look of its restaurant, described as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals.  The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors.  The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes.  Bright awnings and umbrellas continue the theme.”  The lawsuit alleged that Two Pesos had imitated this scheme and had thereby infringed on Taco Cabana’s trade dress.  Among the issues considered was whether trade dress which was inherently distinctive must also be shown to have secondary meaning to be granted protection under the Lanham Act.  The Supreme Court held that trade dress which is inherently distinctive is protectable under § 43(a) of the Lanham Act without a showing that it has acquired secondary meaning, since such trade dress itself is capable of identifying products or services as coming from a specific source.

Also at issue in this case, among other matters, will be the eligibility of the words “Texas” and “Roadhouse” for protection under federal and Indiana intellectual-property laws.  Under the Lanham Act, a federal law, the holder of a mark may ask the United States Patent and Trademark Office to register the mark on the principal register.  15 U.S.C.A. § 1051, et seq.  Marks that are “primarily descriptive” and “primarily geographically descriptive” of the goods or services with which they are associated are not eligible for registration on the principal register unless they have “become distinctive of the applicant’s goods in commerce.”  15 U.S.C.A. § 1052(e), (f).  Thus, registration of a descriptive mark on the principal register requires a showing of secondary meaning.

Although the Lanham Act protects both registered and unregistered marks, registration is desirable because it constitutes prima facie evidence of the mark’s validity.  See 15 U.S.C.A. §§ 1057(b), 1115(a).  Thus, federal registration of a mark “‘entitles the plaintiff to a presumption that its registered trademark is not merely descriptive or generic, or, if merely descriptive, is accorded secondary meaning.'”  The plaintiff bears the burden, however, of establishing that an unregistered mark is entitled to protection.

The Indiana Trademark Act is similar, and in some respects identical, to the Lanham Act. Although Indiana’s body of trademark law is relatively undeveloped, the General Assembly has specified that the Indiana Trademark Act “is intended to provide a system of state trademark registration and protection that is consistent with the federal system of trademark registration and protection under the Trademark Act of 1946.”  Ind. Code Ann. § 24-2-1-0.5. Moreover, “[a] judicial or an administrative interpretation of a provision of the federal Trademark Act may be considered as persuasive authority in construing a provision of the Indiana Trademark Act.

The Indiana Trademark Act’s definitions of “trademark” and “service mark” track the Lanham Act’s definitions of those terms nearly verbatim.  See I.C. § 24-2-1-2(8), (9). Like the Lanham Act, the Indiana Trademark Act does not adversely affect common-law trademark rights.  See I.C. § 24-2-1-15.  Registration of a trademark or service mark with the office of the Indiana Secretary of State provides a registrant with a remedy for the infringement thereof under the Indiana Trademark Act.  I.C. § 24-2-1-14(a).  Like the Lanham Act, the Indiana Trademark Act prohibits the registration of marks that are “primarily geographically descriptive or deceptively geographically misdescriptive of the goods or services[.]”  I.C. § 24-2-1-3.  This provision does not, however, prevent the registration of a mark that is used in Indiana by the applicant and has become distinctive of the applicant’s goods or services.  In other words, a geographically descriptive mark may be registered under the Indiana Trademark Act if it has acquired secondary meaning.
Continue reading

By

Indianapolis, IN – The Southern District of Indiana dismissed multiple claims by Plaintiff Wine & Canvas in its trademark infringement suit against YN Canvas, et al.

Wine & Canvas organizes parties where guests can take a painting class while enjoying cocktails.  Anthony Scott (“Scott”), one of the founders of Wine & Canvas, sued multiple Wine&CanvasLogo.JPGdefendants.  He alleged that he entered into a business venture wherein he would license the Wine & Canvas business model to Christopher Muylle (“Muylle”) and Theodore Weisser (“Weisser”) for use in San Francisco, both to operate a new Wine & Canvas location and to license others to operate under the Wine & Canvas name and business model.  Instead, Scott alleged, the defendants breached that agreement, appropriated the Wine & Canvas model and proceeded without Scott as YN Canvas CA, LLC (“YN Canvas”).  Defendants, in turn, alleged that they breached no agreement but instead merely parted ways, changing their business name to “Art Uncorked,” when Wine & Canvas insisted on a new agreement with additional terms that were unfavorable to the defendants.

Plaintiff Wine & Canvas Development, LLC (“Wine & Canvas”), via its attorneys, sued multiple defendants: (1) YN Canvas, a Nevada limited liability company with its principal place of business in California; (2) www.art-uncorked.com, the corporate website for Art Uncorked; (3) Weisser, an officer of YN Canvas; and (4) Muylle, an officer of YN Canvas (collectively, “defendants”).  [NB: Art Uncorked was also named as a defendant but, as that was merely the new name of YN Canvas, which had already been named as a defendant, the court chose to refer to both by the one name, “YN Canvas.”]

The eleven-count complaint was originally filed in Hamilton County Circuit Court and included claims for trademark infringement, false designation of origin, trademark dilution, sales of counterfeit items/services, unfair competition, declaratory judgment, civil action under the Indiana Crime Victims Act, breach of contract, fraud, permanent injunctive relief, and request for writ of attachment.  It was removed to the Southern District of Indiana as its Lanham Act issues provided federal question jurisdiction.  We previously blogged about that element of this case here.

The parties came to the court with several motions.  After a detailed discussion on personal jurisdiction, the court held that it could exercise specific jurisdiction over both Weisser and YN Canvas and denied the motion to dismiss for lack of personal jurisdiction as to them.  The motion to dismiss the website as a defendant was granted, with the court finding that, “[b]ased on common sense and Indiana precedent, it is obvious to this Court that a website alone is not an entity capable of being sued.” 

The court declined to discuss jurisdiction regarding “Art Uncorked,” finding that it was merely the new name of YN Canvas and, as such, it need not be considered separately.  Any references to YN Canvas would also apply to Art Uncorked.

The court then moved to the defendants’ 12(b)(6) motions to dismiss for failure to state a claim.  Two counts – trademark infringement under 15 U.S.C. § 1114(1)(a) and use of a counterfeit mark under 15 U.S.C. § 1116(d) – were dismissed.  Each of those claims required a registered mark, which Wine & Canvas conceded it did not have.  However, the court dismissed the counts without prejudice, as the registration of the marks is pending. 

The court next moved to two “counts” – permanent injunction and attachment – and dismissed them summarily as inappropriate pleading.  “Because these remedies are based on causes of actions in other counts within the Wine & Canvas’s complaint and are included within the Wine & Canvas’s prayer for relief,” the court held, “it is unnecessary to dedicate a separate count for each specific remedy.”

Defendants next asked the court to dismiss the claim of fraud for failure to meet the heightened standard required for pleading fraud.  As no time frame or location of the alleged fraud had been included in the plaintiff’s complaint, the court dismissed the fraud claim without prejudice.

Finally, as with the “counts” for permanent injunction and attachment noted earlier, the court addressed another “count” by Wine & Canvas seeking a declaratory judgment.  Ruling here on the defendants’ motion to strike, the court cited Federal Rule of Civil Procedure 12(f) allowing a court to strike “redundant, immaterial, impertinent, or scandalous matter” from any pleading and, again, held that the “count” was redundant, as appropriate remedies would be addressed in the adjudication of the substantive claims, and granted the defendants’ motion to strike.

Practice Tip #1: The decision to sue a website is a curious one and seems to be the modern-day equivalent of suing a book.  It is notable that this has, however, happened.  See, e.g., here.  On the one hand, it is an attorney’s duty to pursue zealously his clients’ interests and, at times, that leads to maintaining a cause of action that is not a “sure thing.”  On the other hand, the law is unambiguous that a website is neither a real person nor a legal entity capable of being sued and, thus, it would have been wiser to omit this “defendant.”

Practice Tip #2: The decision to include various remedies that a party is seeking as separate causes of action is also curious but, instead of zealous advocacy run amok, it merely seems to reflect improper drafting.
Continue reading

By

Hammond; IN – Trademark attorneys for Gino’s East Services of Chicago, Illinois filed a trademark infringement suit in the Northern District of Indianaalleging GE Pizza of Mishawaka, Indiana, Shamrock Management Group of Highland, Indiana, Larry Briski and Mary Briski infringed trademark registration nos. 1,511,299, 3,341,730 and 3,572,210 for the marks GINOS EAST OF CHICAGO THE ORIGINALGinos.jpg registered with the US Trademark Office.

Gino’s East is a franchisor of pizza restaurants called “The Original Gino’s East of Chicago.” The complaint states that the defendants operate two franchise restaurants in Mishawaka and Highland, Indiana. The complaint states that Larry and Mary Briski personally guaranteed the franchise agreements. Gino’s East owns several trademarks associated with its franchise brand. The complaint states that the defendants have failed to pay royalty and other fees required by the franchise agreements. In February 2012, Gino’s East sent a letter to the defendants terminating the franchise agreement due to the failure to pay required fees. The complaint states that the defendants have failed to cease to use Gino’s East’s trademarks and have failed to return equipment and material bearing Gino’s East’s marks. The complaint states the defendants have not altered the exterior or interior of the restaurants so as to alert the public that they are no longer Gino’s franchises. The complaint makes claims of trademark infringement, unfair competition, trade name and dress infringement and breach of franchise agreement.

Practice Tip: Franchise agreements typically require the franchisee to promptly cease to use all of the franchise marks as well as return all items bearing the franchise marks in the event the franchise agreement is terminated. Failure to promptly comply with these provisions can lead to liability for trademark infringement, among other claims.

Continue reading

By

 

Lafayette, IN – The Northern District of Indiana granted a default judgment, damages and a permanent injunction in a trademark infringement case involving a hold-over franchisee. Century 21 Real Estate, LLC Century 21 Logo.JPGof Parsippany, New Jersey had filed a trademark infringement lawsuit in the Northern District of Indiana alleging that Destiny Real Estate Properties LLC, f/d/b/a Century 21 Destiny Real Estate and Daniel Sutton of Lowell, Indiana infringed Century 21’s trademarks and service marks. Indiana Intellectual Property Law and News blogged about the case when it was filed. The defendants failed to file any response to the Century 21’s complaint. After finding that the defendants had been properly served, the court granted Century 21’s motion for a judgment by default.

The Court analyzed a legal question that has not yet been examined by the Seventh Circuit Court of Appeals and that different federal circuit courts have reached different results: “whether a hold-over franchisee’s continued unauthorized use of a franchisor’s mark constitutes counterfeiting[?]” The court found that the defendants use to Century 21’s mark was counterfeiting in this case and noted “The Court can conceive of no reason why an ex-franchisee should escape liability for counterfeiting simply because that person had access to franchise’s original marks because of the former relationship[.]” The court then analyzed the damages claims of Century 21 and awarded $113,656 plus attorneys fees of $5,419 and costs of $595 to Century 21. The Court also granted Century’s 21’s request for a permanent restraining order that prevents the defendants from using the Century 21 marks.

Practice Tip: Since the Court found that the defendant’s trademark infringement was counterfeiting, treble damages were available to Century 21. This case explains how intellectual property rights are generally well protected in statutory damages provisions and explains how the trebling of damages, ability to recover a defendant’s “profits” and recovery of attorney fees can lead to significant recoveries, even without the intellectual property owner having to prove “actual” damages.
Continue reading

By

 

Indianapolis, IN – A trademark infringement lawsuit filed in Hamilton County Circuit Court has been removed to the Southern District of Indiana. Trademark lawyers for Wine & Canvas Development, LLC of Indianapolis, Indianawine&Canvas.jpg filed a recent trademark infringement suit in Hamilton County, Indiana in alleging Theodore Weisser and Christopher Muylle of Indiana, YN Canvas CA, LLC of Nevada, Art Uncorked and www.ArtUncorked.com, infringed trademarks WINE & CANVAS, COOKIES & CANVAS, PAINTING WITH A COCKTAIL TWIST, LIFE IS TOO SHORT FOR BLANK WALLS, UNLEASE YOUR INNER PICASSO, and CRUISE AND CANVAS that are registered with US Trademark Office. This case was removed to the Southern District of Indiana on December 2, 2011.

The trademarks at issue here, known as the WC Marks, are associated with Wine & Canvas’s business model. The complaint states that Weisser was an employee of Wine & Canvass and that Wiesser, on behalf of Wine & Canvas, entered a licensing and franchise negotiation with Muylle. The complaint states that Wiesser and Muylle, however, then entered certain agreements without Wine & Canvas’s knowledge and misled Wine & Canvas about the agreements. When Wine & Canvas discovered the issue, it demanded the defendants cease using the WC Marks. However, the defendants continued to sell products and services using the WC marks. The complaint further states that the defendants have threatened to “expose” the Plaintiff “to hatred, contempt, disgrace and/or ridicule or otherwise unlawfully injure” Wine & Canvas. The complaint makes claims of trademark infringement, false designation of origin, trademark dilution, sale of counterfeit items, unfair competition, breach of contract, fraud, and damages under the Indiana crime victims act. The complaint seeks a declaratory judgment, temporary and permanent injunction, damages, costs, attorney fees and for a writ of attachment.

Practice Tip: The complaint appears to largely make state law claims that come out of a failed attempt to create a California franchise of Wine & Canvas. The complaint paints a picture of the defendants essentially stealing the business ideas of Wine & Canvas and opening their own entity, rather than operating the California business as a franchise. While these contract-type disputes are typically appropriately filed in state court, the fact that the plaintiff also makes trademark infringement claims resulted in the case being removed to federal court. Under the supplemental federal jurisdiction doctrine, the district court will be able to hear both the state law and federal law claims since it would clearly have subject matter jurisdiction over the trademark claim.
Continue reading

By

 

Terre Haute, IN – Trademark lawyers for Century 21 Real Estate LLC of Parsippany, New Jersey filed a trademark infringement suit in the Southern District of Indiana alleging Realty One Limited of Sullivan, Indiana and Steven Ault of Indiana infringed Century 21’s trademarks and service marks. Century 21 has numerous trademarks and services marks registered with the US Trademark Office

According to the complaint, Mr. Ault is the proprietor of Realty One, which is alleged to be doing business as Century Twenty-one Realty One in Sullivan, Indiana. The complaint states that beginning in 1984, Realty One began operating a Century 21 franchise in Sullivan, Indiana. The franchise agreement allowed Realty One to use the Century 21Century 21 Logo.JPG trademarks and services marks and required Realty One to pay Century 21 a royalty and advertising fees as a percentage of the franchise’s gross sales. The agreement also allowed Century 21 to audit the records of Realty One. Mr. Ault personally guaranteed the franchise agreement. Century 21 terminated the franchise agreement effective July 2011, alleging that Realty One had breached the agreement by failing to pay amounts due to Century 21, failing to report and pay on closed transactions and failing to pay early termination fees. Pursuant the agreement, Realty One was to cease using Century 21 trademarks and services marks, however, it is alleged that Realty One continued to use them both in Sullivan, Indiana and in online marketing. It is also alleged that Realty One has created a new logo that is confusingly similar to Century 21’s trademark. Trademark attorneys for Century 21 have made claims of trademark infringement, false designation of origin/false advertising, trademark dilution, common law unfair competition, breach of contract, audit demand, and unjust enrichment. Century 21 seeks an injunction, damages, an accounting, attorney fees and costs.

Practice Tip: Normally a franchisee must immediately stop using and return all items with trade or services marks if the franchise agreement is terminated. Here, the franchise agreement appears to have lots of “teeth” to be used against a non-complying franchisee. The contract appears to allow Century 21 to collect liquidated damages as well as costs and attorney fees with an 18% interest rate on delinquent payments. The contract also required Mr. Ault to personally guarantee these obligations and to be personally liable for costs and attorney fees. Century 21 has been aggressive in defending its trademark rights. Trademark attorneys for Century 21 filed a similar suit earlier this year in the Northern District of Indiana.
Continue reading

By

 

Indianapolis, IN – Trademark lawyers for AFC Enterprises, Inc. of Georgia, doing business as Popeye’s Chicken, filed a trademark infringement suit alleging Christopher Payne, LP&P Foods, and ten John Does of fIndiana infringed trademark registration no. 1030944 for the mark POPEYES, Thumbnail image for Popeyes.jpg1107575 POPEYE SIGN DESIGN WITH COLOR and numerous other trademarks registered with the US Trademark Office. Popeye’s has also registered copyrights for some of the items at issue here.

This dispute arises out of the operation of a Popeye’s restaurant at 6014 East 46th Street in Indianapolis utilizing the Popeye’s trademarks. According to the complaint, AFC had a franchise agreement with another individual, not a party to this suit, to operate a Popeye’s franchise at this Indianapolis location, however, that franchise agreement was terminated in August 2010. Following the termination of the franchise agreement, Mr. Payne, who operated a Popeye’s franchise in Fort Wayne with LP&P Foods, approached AFC and sought to become the franchisee at this location under a new franchise agreement. AFC declined to enter a franchise agreement with Mr. Payne. On July 31, 2011, AFC learned that Mr. Payne was operating a fried chicken restaurant at the East 46th Street location and was utilizing the Popeye’s marked items that were left behind when the franchise closed, including signs and menu boards. According to the complaint, the restaurant ceased operation on August 6, 2011 and tarps covered the signs.

Practice Tip: In Indiana, criminal conversion is defined as knowingly exerting unauthorized control over property of another person. Indiana law allows the person harmed by criminal conversion to sue for treble damages, equal to three times actual damages, as well as attorney fees and cost. If true, the allegations contained in this complaint appear to make a case for conversion, and the defendants are likely to be liable for a significant monetary sum.
Continue reading

By

 

Indianapolis, IN – Trademark lawyers for Choice Hotels International Inc. of Silver Spring, Maryland filed a trademark infringement suit in the Southern District of Indianaalleging Shreya Pravin LLC, of Lebanon, Indiana, Vina Investments, LLC of Valrico, Florida, Riddhi, LLC of Corona, California, Sunil R. Patel of California and Shirish Patel of California have infringed trademark registration no. 1,050,372 for the mark QUALITY, which has been registered with the US Trademark Office.

Choice is a hotel franchise company that owns the numerous trademarks at issue in this suit. According to the complaint, Shreya Pravin LLC entered a franchise agreement to operate Choice franchise in Lebanon, Indiana. As part of the franchise agreement, Pravin was granted license to use the QualityQuality.jpg mark on various items including: signs, stationary, lobby displays, and items in the hotel rooms. In June 2008, Choice sent Pravin a notice of default claiming Pravin had not paid franchise fees due under the contract. In August 2008, Choice sent Pravin a letter terminating the franchise agreement due to continued breach of the contract. The letter demanded that Pravin immediately take down and cease to use all of the items bearing the Quality trademarks. The complaint alleges that in May 2011, Pravin continued to use the Quality mark on its sign. Choice’s trademark attorneys have made claims of federal and Indiana trademark infringement, false designation of origin, and unfair competition and are seeking damages, injunction, punitive damages, costs and attorney fees.

Practice Tip: When a franchise agreement terminates, typically the franchisee must promptly cease using and return all signs and other equipment containing trademarks. Failure to do so may result in a lawsuit for breach of contract as well as trademark infringement

Continue reading

By

 

South Bend, IN – Copyright lawyers for Susan Lynch, of Indiana, Math-U-See Indiana, Inc. of Indiana, and Lisa and Jim Angle, of Idaho, filed a breach of contract and copyright infringement suit alleging Math-U-See, Inc. of Lancaster, Pennsylvania, and Steve and Ethan Demme infringed the works CALCULUS WORKS, RECORDED CALCULUS LESSONS, HONORS BOOKS, PRE-CALCULUS WORKS, ALGEBRA 2 AND QUIZ WORKS, and TEST BOOKLETS.

The complaint alleges that Steve Demme owns Math-U-See, Inc. and invented the Math-U-See curriculum for home schooling parents in the early 1990s. Steve Demme used a business model of having individual representatives and distributors to sell the Math-U-See curriculum. The plaintiffs were “Reps,” and Plaintiff Lisa Angle also wrote additional material for Math-U-See, which are the copyrighted works that the copyright infringement claim is based upon. The complaint alleges that Sue Lynch was the Rep for Indiana and Illinois beginning in 1996 and built sales to hundreds of thousands of dollars by 2009. Lisa and Jim Angle were Reps for Montana, North Dakota, Alabama, and Tennessee. The complaint alleges that in 2010 Steve Demme, with help of Ethan Demme, ended the representative business model and cut the plaintiffs out of selling the Math-U-See curriculum. Ms. Angle claims that the Defendants continued to use the copyrighted materials she created after the agreement was terminated and without Ms. Angle’s permission. The complaint makes claims of breach of contract, breach of good faith, breach of fiduciary duty, violation of Indiana Franchise Act, violation of Illinois Franchise Act, violation of the Idaho Unfair Trade Practices Act, violation of Illinois Unfair Trade Practices Act, violation of Tennessee Unfair Trade Practices Act, Violation of Law 75 of Puerto Rico, tortuous interference with contract, tortuous interference with prospective business relations, wrongful conversion of customer list, promissory estoppel, unjust enrichment/quantum meruit, accounting and six counts of copyright infringement. The plaintiffs seek actual and punitive damages, an injunction prohibiting further distribution of the copyrighted works, costs and attorney fees.

Practice Tip: In this case, Ms. Angle claims she is the author and rightful owner of the copyrights to the works described in the complaint.  She claims the defendants violated 17 U.S.C.  106 of the Copyright Act. Ms. Angle has not formally registered her copyrights with the US Copyright Office, however, this is not a necessity for her infringement claims to succeed.  Rather, the Copyright Act provides that “Copyright in a work protected under this title vests initially in the author or authors of the work.”


Continue reading

By

 

Indianapolis, IN – Trademark lawyers for Noble Roman’s, Inc. of Indianapolis, Indiana filed a trademark infringement suit alleging Findlay Tiffin Oil, LLC of Tipp City, Ohio and Ayman Magdaddi of Aurora, Indiana infringed Trademark Registration No. 987,069 for the mark NOBLE ROMAN’S; Trademark Registration No. 1,920,428 for the mark THE BETTER PIZZA PEOPLE; and Trademark Registration No. 1,682,308 for the mark NOBLE ROMAN’S PIZZA, which are registered with the US Trademark Office.

The complaint alleges that Findlay owns a convenience store located in Aurora, Indiana and Mr. Magdaddi operates the convenience store. The convenience store was owned by a company called Duncan Oil until February 2011, and Duncan Oil operated a Noble Roman’s franchise on-site that used various trademarked items and trade dress. The complaint alleges that Duncan Oil was an authorized franchise of Noble Roman’s until the property was sold in February 2011. Findlay and Magdaddi, however, have not reached an agreement to be authorized to operate a Noble Roman’s franchise. The complaint alleges that a Noble Roman’s employee visited the store in March 2011 and observed pizza being sold using the Noble Roman’s trade dress and menu boards. The complaint states that on April 30, 2011, Duncan Oil recovered all the Noble Roman’s trademarked items and trade dress. Noble Roman’s trademark attorneys have made claims of trademark infringement and federal unfair competition.

This case has been assigned to Judge Tanya Walton Pratt and Magistrate Judge Tim A. Baker in the Southern District of Indiana, and assigned Case No. 1:11-cv-00665-TWP-TAB.

Practice Tip: If a new owner of the franchise property wishes to continue operating the franchise, a new franchise agreement must be reached. If the new owner continues to use the franchise’s trademarked items and trade dress without authorization, a trademark infringement lawsuit may result. Noble Roman’s has been particularly aggressive in enforcing trademarks rights in franchise relationships.
Continue reading

Contact Information
Indiana Intellectual Property: IP Litigation, Patents, Trademarks, Copyrights
  • Seventh Circuit
  • Northern District of Indiana
  • Southern District of Indiana
Paul B. Overhauser
Overhauser Law Offices, LLC
Greenfield
18 E Main St #202
Greenfield, IN 46140
Phone: 317.467.9100
Fax: 866.283.8549
Indianapolis
101 W Ohio St #2000
Indianapolis, IN 46204
Phone: 317.891.1500
Fax: 866.283.8549

This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.

Please do not include any confidential or sensitive information in a contact form, text message, or voicemail. The contact form sends information by non-encrypted email, which is not secure. Submitting a contact form, sending a text message, making a phone call, or leaving a voicemail does not create an attorney-client relationship.

Copyright © 2016 – 2024, Overhauser Law Offices, LLC
JUSTIA Law Firm Blog Design