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

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.

Leave a Reply

Archives

  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010