Toyota Motor Sales v The Partnerships etc. on Schedule A, 24-cv-09401 (Nov 18, 2024 Daniel, J.)

The Northern District of Illinois is done with the “Anything Goes” phase of multi-defendant trademark litigation and has entered a new rules-based phase of Schedule A Defendant litigation. Here, a (recently appointed) ND Ill. judge dismissed a SAD case (without prejudice), sua sponte, for lack of joinder. To be clear on two points: (1) I’m troubled by the dicta in this case, not the holding; and (2) my hoodlum friends discussed below went on to law-abiding careers.

The court begins:

“The plaintiff seeks to join 103 defendants in this infringement action. Concerned that joinder was not proper, the Court directed the plaintiff to file a supplemental memorandum addressing the propriety of joinder. Having considered the plaintiff’s arguments, the Court finds that joinder is not proper and dismisses the complaint without prejudice.“

Here are the arguments that the court did not find persuasive with regard to joinder:

“According to the plaintiff, joinder is proper because:

(1) it allows the plaintiff to combat the unique problem of offshore Internet-based counterfeiters who exploit the anonymity and mass reach afforded by the Internet;

(2) the defendants all fit the same profile, working in a similar manner and during the same time period to sell counterfeit products as part of the same occurrence or series of occurrences;

(3) district courts have broad discretion to evaluate joinder as the case progresses, so they should just allow joinder and adjust as needed;

(4) some counterfeiters coordinate actions to evade detection and liability, so district courts should infer that all counterfeiters, including the defendants named here, coordinate actions to evade detection and liability;

(5) some counterfeiters use the same wording in product descriptions, so district courts should infer that the use of the same wording means that all of the defendants are in league with each other; and

(6) some Seller Aliases may have common ownership, so district courts should allow joinder because the plaintiff does not have access to the information necessary to show common ownership at this time. “

Now here’s a passage by Judge Daniel that brought back memories of a misspent youth:

I went to a concert a few weeks ago. When I got off the train, a vendor was selling what I suspected to be counterfeit t-shirts bearing the performer’s likeness. As I continued toward the venue, I encountered a second vendor selling some of the same t-shirt designs as the first vendor. As I crossed the venue’s parking lot, a third counterfeiter offered some of the same t-shirt designs for sale as the first two. These three vendors had the same profile. They sold the same merchandise. They used the same tactics to try to get my attention. Two of them even offered similar deals (“two for $30”). One could even argue that they “swarmed” the concert venue that evening. But that does not establish a “logical relationship” between them. Had I purchased a t-shirt from all three, only to have each fall apart after the first wash, it would not establish a series of transactions or occurrences allowing me to join them in a single lawsuit. That is, unless I had some link connecting them. To further illustrate this point, assume I am a super fan and decided to follow the performer to Los Angeles, California, where I encountered similar vendors selling the same t-shirts as I approached the venue. Even if the t-shirts came from the same factory, and even if the unauthorized vendors employed the same hustle, I would have a hard time establishing a connection between a vendor in Chicago and a vendor in Los Angeles—even though they fit a particular profile.

To borrow from the “hub-and-spoke conspiracy” context, there needs to be a “rim” connecting the various defendants. See, e.g., Marion Healthcare, LLC v. Becton Dickinson & Co., 952 F.3d 832, 842 (7th Cir. 2020)(describing a hub-and-spoke conspiracy). A rim would allow one to treat all of the transactions or occurrences as a series, or to hold defendants jointly and severally liable. Having similar profiles, however, says nothing about the relationship between the various transactions or occurrences that give rise to the plaintiff’s claims and does not make defendants jointly and severally liable. As the plaintiff concedes, not every defendant is working with other defendants. That means that the transactions or occurrences are not linked.

I’m not sure I totally agree with the bit about the “same factory.” In college, my hoodlum buddies, Sharit and Sitver (not Sharit’s and Sitver’s real names), would buy the same unauthorized event t-shirts from the same guy (known only as Joey). These unauthorized shirts tended to be created for that artist’s particular tour. My friends would take their places on Eighth Avenue outside the Garden the night of the Jethro Tull concert (or whatever). They were competing with other but also tacitly agreeing to stay a certain distance away from each other and the other miscreants in Joey’s distribution network. Also, they would keep each other apprised of the level of law enforcement that evening (this was before cellphones, so they probably would just yell if the police approached). So, using the terminology in footnote 2 of the decision, some of these t-shirt hawkers had both a common purpose (selling shirts) and a common purpose (sell shirts in such a way that no one got arrested, and Joey get his hands on a new batch of shirts for the next concert).

I looked at the cited case’s definition of “hub and spokes” conspiracy which was:

This type of conspiracy requires a plaintiff to allege both that there was a central coordinating party (the “hub”), and that each participant (along the “rim”) recognized that it was part of the greater arrangement, and it coordinated or otherwise carried out its duties as part of the broader group. In other words, a “hub-and-spokes conspiracy” requires a “rim” connecting the various horizontal agreements.

Marion Healthcare, LLC v. Becton Dickinson & Co., 952 F.3d 832, 842 (7th Cir. 2020)

I think in my hoodlum friends hypo, in a case where the defendants are selling the identical infringing product, it doesn’t seem impossible to plead that there is a central coordinating party (the manufacturer) and that each participant is conscious that they are part of a broader group.

p.s. Read the court’s discussion of judicial economy, and that lack thereof in SAD litigation, last para on page 4.

Hague does not apply if the address remains unknown after diligent investigation:

XYZ CORP., Plaintiff,
v.
THE INDIVIDUALS, PARTNERSHIPS AND UNINCORPORATED ASSOCIATIONS IDENTIFIED IN SCHEDULE A, Defendants.

No. 24 Civ. 1962 (LGS).

United States District Court, S.D. New York.June 3, 2024.

EMAIL PERMITTED ?UNDER 4(f)(3):

AMAZON.COM, INC., et al., Plaintiffs,
v.
ARMYCAMO USA, INC., et al., Defendants.

Case No. C24-0394JLR

Ornua Foods North America v Abbey Specialty Foods LLC, 23-cv-1212 (JG:C) (SDNY September 30, 2024)

Straightforward likelihood of confusion analysis of butter trade dress from the Southern District of New York:

Plaintiff Kerrygold argues:

“Both packages use the same silver foil background and uncluttered design on a package with the same size, shape, profile, and weight . . . use similar centered text with stylized arched wording above one image element with trademark logos a similar Celtic-style font and a similar green color. ” Also, both trade dresses use similar wording and ‘indicate the butter product is made from grass fed cows.'”

Also, defendant was aware of Kerrygold (it is a direct competitor.

And these are other butter packages:

However – the Court was not buttered up. No likelihood of confusion:

The overall impressions of the Kerrygold and Tipperary trade dresses are unlikely to cause confusion among reasonably prudent purchasers. First, each trade dress prominently displays their respective brand name. The name “Kerrygold” assumes a significant portion of the Kerrygold Trade Dress and is placed in the center of the package. “Kerrygold” appears in a white font sitting in front of a shamrock green quadrangle. The contrast between the white font and green shading further accentuates and draws attention to the brand name. Likewise, the name “Tipperary” occupies a large portion of the Abbey Trade Dress. In fact, “Tipperary” appears in the largest font of any text on the package.. . .

Next, although both trade dresses utilize a Celtic-style font, each font is evidently distinct. The font on the Kerrygold Trade Dress is a clean, sans-serif font, whereas Abbey’s package uses a font with long serifs, providing a more antique and anachronistic look. Additionally, as stated above, the name “Kerrygold” is displayed in a white font with no border while “Tipperary” appears in gradating shades of green with a white border. “Tipperary” is also slightly arched while “Kerrygold” has no curve.

Third, the two packages also contain different phrases and otherwise arrange any similar phrases in different places. For instance, the top of the Tipperary package states, “IMPORTED FROM IRELAND.” No such statement appears on the Kerrygold Trade Dress. At the top of the Kerrygold package is a note that the butter contains “MILK FROM IRISH GRASS-FED COWS” accompanied by an ovular gold seal indicating the same. Abbey’s Trade Dress lacks any seal and indicates at the bottom of the package that its butter is “MADE WITH MILK FROM GRASS-FED COWS,” without noting the national origin of those cows. Furthermore, the focal point of each trade dress further dispels any possibility of confusion.

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Dexon Computer, Inc. v. Travelers Prop. Cas. Co. Am., No. 23-1328 (8th Cir. 2024)

Justia: Dexon Computer, Inc., a reseller of computer networking products, was sued by Cisco Systems, Inc. and Cisco Technologies, Inc. for federal trademark infringement and counterfeiting. The complaint alleged trademark infringements between 2006 and 2010, and thirty-five acts of infringement between 2015 and 2020. Dexon sought defense from Travelers Property Casualty Company of America under a liability policy it had purchased from Travelers. Travelers denied coverage and a duty to defend, arguing that all the alleged acts of trademark infringement were “related acts” under the policy and thus were deemed to have been committed before the policy’s retroactive date.

The District Court of Minnesota denied Travelers’ motion to dismiss Dexon’s claims for a declaratory judgment that Travelers has a duty to defend and indemnify. The court held that the documents submitted by the parties concerning the coverage dispute were not “matters outside the pleadings” and could be considered in ruling on the motion to dismiss. The court concluded that it could not hold, as a matter of law, that every act of trademark infringement alleged in the Cisco complaint was necessarily related to an act of trademark infringement that occurred prior to the retroactive date.

The United States Court of Appeals for the Eighth Circuit affirmed the district court’s decision. The court held that the district court correctly determined that Travelers had a duty to defend Dexon in the entire Cisco Action. The court noted that this did not resolve whether Travelers has a duty to indemnify, and if so, the extent of that duty, which would depend on the ultimate resolution of the Cisco Action.

Donald Judd was a minimalist furniture designer so I’ll leave it at that. His La Mansana tables and chairs now go for $90K and $9k respectively. The Judd Foundation, his successor in interest (he passed in 1994), asserts trade dress in the La Mansana table and corresponding chairs (see photos below and in complaint, link at bottom).

Kim Kardashian employed a designer for her new SKKN BY KIM offices. Knowing of Ms. Kardashian’s interest in minimalism, the designer proposed that he fabricate tables and chairs “in the style of Donald Judd.” Kardashian obtained two sets of table and chairs (price redacted in the Complaint).

Ms. Kardashian filmed herself giving a tour of her offices. She identified various artists and designers who had contributed, and, displaying the tables, stated:

“If you guys are furniture people—because I’ve really gotten into furniture lately—these Donald Judd tables are really amazing and totally blend in with the seats.” (You’ll note that the chairs fit precisely under the table. I think that’s an interesting point to remember when considering trade dress, but I digress).

The video obtained over three million views on You. Comments on the video seemed to erroneously refer to the “JUDD” furniture.

The Judd Foundation has now sued the designer and Ms. Kardashian. The first ten causes of action are against the designer. The 11th cause is against Kardashian, asserting that:

Ms. Kardashian’s unauthorized use of the DONALD JUDD trademark and Mr. Judd’s name and identity is likely to confuse consumers as to Mr. Judd’s and/or Judd Foundation’s sponsorship or approval of the SKKN BY KIM brand and products advertised in the Kardashian Video

See page 44 of the Complaint for the full allegations against Kardashian.

At least three interesting issues arise from this Complaint;

  1. The always interesting question of to what extent is the configuration of the table and chairs functional. What is not functional about a minimalist design?
  2. To what extent does Ms. Kardashian make trademark use of the Judd marks in the video? I’m reminded of some fleeting/incidental appearance cases such as Gottlieb Development v Paramount Pictures, 590 F.Supp. 2d 625 (SDNY 2008) in which the endorsement theory between plaintiff and the defendant was strained (there, it was implausible that viewers of a theatrical movie in which a pinball machine appears, would consider that the movie was somehow affiliated with/endorsed by the source of a pinball machine.
  3. However, even without trademark use – this could be a novel post-purchase confusion fact pattern. Ms. Kardashian, like the purchaser of a $20 Rolex, is possibly not confused as to source given the context of her purchase. Also, she is not selling goods that compete with those of plaintiff. But her display of the infringing item, while not trademark use, could confuse her audience as to the provenance of her tables and chairs, There are plausible allegations in the complaint that viewers of her video were confused. And that could be a problem for her co-defendant.

text of complaint in Judd v Kardashian.