Scuffle Between Indiana Common Law and Lanham Act for Unfair Competition Claims Equally Covered

21st February, 2022 - 3:47 am Categories: Trademark 0 Comments

Renee Gabet, the owner of Annie Oakley enterprises (“plaintiff”)  filed a civil action against amazon Inc on the ground of selling their trademark infringed product on the website at the United States District Court for the Southern District of Indiana,  (“Indianapolis Division”, “Court”) under Lanham act and Indiana common law which includes a claim for trademark infringement, use of an advertising idea, trademark dilution, false designation of origin and unfair competition and common law unfair competition and sought compensation as well as injunctive remedies.  Rise-n-shine (hereafter RNSO) was the home of several top all-natural solutions for health, well-being and beauty concerns. Primarily RNSO used to sell raw materials which used to make soap, shampoo and creams. Gradually RNSO began selling their items on amazon in 2015 and continued to do so for the next five years. The seller name listed on the webpage was “RISE N SHINE ONLINE LLC “, but sometimes it had been listed as “E&E PREMIER DISTRIBUTOR “. The registered mark “RISE N SHINE” has been used by the plaintiff in his product as he owned the mark. Whereas, RISE N SHINE ONLINE LLC and Eric sold the product with a registered mark of the plaintiff on amazon.  Initially,the plaintiff filed a trademark infringement suit against RNSO and Amazon Inc.  It had been contended that RISE N SHINE ONLINE LLC and Eric manufactured, copied, reproduced, sold, offered for sale, publicly displayed, distributed and imported products by using trademark registered name RISE N SHINE.  Additionally the same had been sold on the Amazon website.  Plaintiffs and RISE N SHINE ONLINE LLC and Eric settled in May 2020, and their claim was dismissed with prejudice.  Thereafter claim against Amazon was only pending before the court.

The Court referred to Jackson v. Regions Bank, 838 F. App’x 195, 198 (7th Cir. 2021) ruling and confirmed the Court’s decision to dismiss claims that were not preserved in the Statement of Claims. Accordingly based on alleged infringement of plaintiff marks the only claims that the plaintiff can seek is trademark infringement under the Lanham Act and unfair competition under Indiana common law and other claims had been abandoned.

Accordingly, this was not a case wherein Amazon invested too much time and reliable resources in creating a brand and selling the accused product. So, concerning Amazon’s affirmative defence of laches, the plaintiff’s motion for summary judgement was granted as well, and the cross-motion was denied.

In CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 673 (7th Cir. 2001), the court observed that to register a mark under the Lanham Act, such a mark should be capable of differentiating from other marks that have been prevalent in interstate commerce. As per 15 U. S. C.  1065, the Lanham act contended that a registered mark that was prevalently used in commerce for 5 years became incontestable. However, the protections available to a mark depends upon its distinctiveness. The registration of Rise ‘n’ Shine was protectable as its registration was valid on the ground. So the court granted the plaintiff’s motion for summary judgement and denied Amazon’s cross-motion.

The unfair competition claimed under Indiana common law is also equally covered by the Lanham act. The court found the material issue to be whether the accused product created any confusion among customers. The concerning issue must be resolved by the factfinder. Initially, the plaintiffs’ motion for summary judgement was denied, as well as Amazon’s cross-motion, which was also denied.

In the instant case, the court observed Amazon’s liability for potential infringement in two ways: direct and indirect infringement. In a direct infringement, the court concluded that potential liability could not be determined in a summary of the judgement. Plaintiff’s motion for summary judgement as well as Amazon’s cross-motion were both denied. Whereas Amazon’s cross-motion was granted partially. But in the case of indirect infringement liability, the plaintiff’s motion for summary judgement and the cross-motion of Amazon was partly denied and partly granted.

Finally, the District Court observed that the plaintiff’s motion for summary judgement was partly granted and partly denied under direct and indirect infringement. However, Amazon’s motion to strike jury demand was granted. The remaining matters had been decided in a bench trial that had been scheduled separately.

Author: Saransh Chaturvedi (Advocate, LLM (IIT Kharagpur) –  associate at Khurana & Khurana, Advocates and IP Attorney,  in case of any queries please contact/write back to us via email saransh@iiprd.com.