Indiana Common Law vs. Lanham Law Clash Over Unfair Competition Allegations Covered Same – Intellectual Property
United States: The Indiana common law vs. Lanham law fight for unfair competition claims is also covered.
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Renee Gabet, Owner of Annie Oakley Businesses (“Plaintiff”) filed a civil lawsuit against Amazon Inc alleging the sale of their infringing product on the website of the United States District Court for the Southern District of ‘Indiana, (“Indianapolis Division”, “Court”) under the Lanham Act and the common law of Indiana, which includes an action for trademark infringement, use of an advertising idea, dilution of trademark, false appellation of origin and unfair competition and unfair competition at common law and sought compensation as well as injunctive relief.Rise-n-shine (hereafter RNSO) housed several all-natural solutions for the problems of health, wellness and beauty. Mainly RNSO sold raw materials used to make soap, shampoo and creams. Gradually, RNSO started selling its items on Amazon in 2015 and has continued to do so during the ci nq following years. The seller’s name listed on the webpage was “RISE N SHINE ONLINE LLC”, but sometimes it was listed as “E&E PREMIER DISTRIBUTOR”. The trademark “RISE N SHINE” was used by the plaintiff in its product because it owned the mark. Whereas RISE N SHINE ONLINE LLC and Eric sold the product with a trademark of plaintiff on amazon. Initially, plaintiff brought a trademark infringement action against RNSO and Amazon Inc. It was alleged that RISE N SHINE ONLINE LLC and Eric manufactured, copied, reproduced, sold, offered for sale, publicly displayed, distributed and imported products using a trademark. name RISE N SHINE. Moreover, 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 denied with prejudice. Subsequently, the complaint against Amazon was only pending in court.
The Court referred Jackson v. Regions Bank, 838 F. App’x 195, 198 (7th Cir. 2021) decision and affirmed the Court’s decision to dismiss the claims that had not been preserved in the Statement of Claims. Accordingly, based on the alleged infringement of Plaintiff’s trademarks, the only claims Plaintiff can pursue are trademark infringement under the Lanham Act and unfair competition under the common law of Indiana and India. other claims have been dropped.
Therefore, this was not a case in which Amazon had invested too much time and reliable resources in building a brand and selling the offending product. Thus, with respect to Amazon’s affirmative defense against cowards, plaintiff’s motion for summary judgment was also granted and the counter-motion was denied.
In CAE, Inc. c. 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 would have to be capable of being distinguished from other marks that have prevailed in interstate commerce. Pursuant to 15 USC 1065, the Lanham Act held that a registered mark that was in common commercial use for 5 years became indisputable. However, the protections available for a trademark depend on its distinctive character. Rise ‘n’ Shine’s recording was protectable because its recording was valid in the field. Thus, the court granted the plaintiff’s motion for summary judgment and dismissed Amazon’s counterclaim.
Unfair competition claimed under Indiana common law is also covered by the Lanham Act. The court concluded that the key issue was whether the offending product created confusion among customers. The question concerned must be resolved by the investigator. Initially, plaintiffs’ motion for summary judgment was denied, along with Amazon’s counterclaim, which was also denied.
In this case, the court observed Amazon’s liability for potential infringement in two ways: direct infringement and indirect infringement. In a direct violation, the court found that potential liability could not be determined in a judgment summary. Plaintiff’s motion for summary judgment as well as Amazon’s cross motion were both denied. While Amazon’s cross-motion was partially granted. But in the case of liability for indirect infringement, plaintiff’s summary motion and Amazon’s counterclaim were partly dismissed and partly granted.
Finally, the district court observed that the plaintiff’s motion for interim relief was partly granted and partly denied in direct and indirect violation. However, Amazon’s motion to strike the jury’s claim was granted. The remaining issues had been decided in a bench trial that had been scheduled separately.
The Indiana common law vs. Lanham law fight for unfair competition claims is also covered.
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