Alternative Pioneering v. Direct Innovative Prod.

• Decision Date: 03 June 1993
• Docket Number: Civ. No. 4-92-278.
• Citation: 822 F. Supp. 1437
• Parties: ALTERNATIVE PIONEERING SYSTEMS, INC., a Minnesota corporation, Plaintiff, v. DIRECT INNOVATIVE PRODUCTS, INC., a Pennsylvania corporation, and California Production Group, Inc., a California corporation, and Robert Warden, Defendants.
• Court: U.S. District Court — District of Minnesota

822 F. Supp. 1437

ALTERNATIVE PIONEERING SYSTEMS, INC., a Minnesota corporation, Plaintiff, v. DIRECT INNOVATIVE PRODUCTS, INC., a Pennsylvania corporation, and California Production Group, Inc., a California corporation, and Robert Warden, Defendants.

Civ. No. 4-92-278.

United States District Court, D. Minnesota, Fourth Division.

June 3, 1993.

COPYRIGHT MATERIAL OMITTED

Mark P. Wine, J. Randall Benham, and Laurel A. Graham, and Oppenheimer, Wolff & Donnelly, and Alan G. Carlson, J. Derek Vandenburgh, and Merchant & Gould, Minneapolis, MN, for plaintiff.

Paul R. Hannah, Hannah & Zenner, St. Paul, MN, and Alan H. Bernstein, Robert S. Silver, and Caesar, Rivise, Bernstein Cohen & Pokottilow, Ltd., Seven Penn Center, Philadelphia, PA, for defendants.

ORDER

DOTY, District Judge.

This matter is before the court on plaintiff Alternative Pioneering Systems, Inc.'s ("APS") motion for a preliminary injunction on its false advertising and patent infringement claims. Based on a review of the file, record and proceedings herein, the court denies APS's motion for an injunction on both its false advertising and patent infringement claims.

BACKGROUND

APS sells a countertop oven under the trademark "Jet Stream Oven." One of the ways that APS markets its oven is through the use of a thirty-minute copyrighted infomercial.¹ The APS infomercial features APS's president, David Dornbush, cooking a wide variety of foods in the Jet Stream Oven. Dornbush speaks to the audience throughout the APS infomercial, extolling the virtues of the Jet Stream Oven.

Defendant Direct Innovative Products, Inc. ("DIP") markets a similar product called the Galloping Gourmet Perfection-Aire Oven ("Perfection-Aire Oven"). DIP uses an infomercial that is similar in content to APS's infomercial to entice consumers to purchase its oven. DIP's infomercial features defendant Robert Warden cooking many of the same foods that Dornbush cooks in the APS infomercial. Warden also extols the virtues of the Perfection-Aire Oven throughout the infomercial and makes many claims that are similar to those made by Dornbush.

In July 1992, APS moved the court for a preliminary injunction, arguing that DIP's infomercial infringes on its copyright in violation of 17 U.S.C. §§ 501(a) and 106(1), (2), (4) and (5) because the DIP infomercial improperly replicated its infomercial's format, content, language, graphics, food choices and general look and feel. The court denied APS's motion.² See Alternative Pioneering Systems, Inc. v. Direct Innovative Products, Inc., et al., Cv. No. 4-92-278 at p. 19-20, 1992 WL 510190 (D.Minn. Aug. 20, 1992).

APS now moves the court for an order preliminarily enjoining DIP from continuing to make certain representations in its infomercial and from selling a certain product. The facts underlying both issues are set forth below.

A. False Advertising

APS contends that certain claims that DIP makes in its infomercial³ concerning cooking speed are false and constitute violations of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), the Minnesota Deceptive Trade Practices Act, Minn.Stat. § 325D.44, the Minnesota Unlawful Trade Practices Act, Minn.Stat. § 325D.13 and the Minnesota Consumer Fraud Act, Minn.Stat. § 325F.69. The alleged false statements are:

1. A seven-pound standing roast cooks in the Perfection-Aire Oven in one hour and forty-five minutes versus four hours in conventional oven;

2. Bread bakes in the Perfection-Aire Oven in thirty minutes versus one hour and thirty minutes in a conventional oven;

3. A breakfast consisting of bacon, sausage, soft boiled eggs, hash brown potatoes and cinnamon rolls cooks in ten minutes in the Perfection-Aire Oven;

4. A lunch consisting of vegetable and meat kabobs, french fries, onion rings, burgers and hot dogs cooks in 10 minutes in the Perfection-Aire Oven; and

5. A frozen cherry pie cooks in the Perfection-Aire Oven in forty-five minutes versus one hour and thirty minutes in a conventional oven.

APS contends that the results from independent laboratory tests performed by Results Technology ("R-Tech") confirm that those statements are false. APS thus asks the court to enjoin DIP from airing any infomercial containing one or more of those claims.

DIP argues that no injunction is warranted because APS fails to demonstrate that the claims contained in its infomercial are false. DIP maintains that the contested claims are true and that the laboratory tests results to the contrary are not reliable because the testing methodology is flawed. DIP thus requests that the court deny APS's motion for a preliminary injunction with respect to the false advertising claim.

B. Patent Infringement

APS contends that when it applied for a patent on the Jet Stream Oven in 1987,⁴ it disclosed the concept of using one or more rings ("expander ring") to enlarge the interior dimension of its oven. Approximately six months after it began marketing the Jet-Stream Oven, APS began selling the expander rings as an accessory and submitted claims to the U.S. Patent and Trademark Office ("patent office") to cover the rings. The patent office issued a patent on the expander ring, U.S. Patent No. 5,165,328 ("'328 Patent") on November 24, 1992.

DIP, which began selling its Perfection-Aire Oven in November 1991, after APS began selling both its Jet Stream Oven and expander ring, sells a similar accessory ("extension ring") that increases the interior dimensions of its oven. APS contends that DIP's sale of extension rings for use with the Perfection-Aire Oven infringes on at least one claim contained in the '328 patent. APS thus contends that an injunction prohibiting DIP from selling its extension ring is warranted.

DIP contends that no injunction is warranted because questions exist regarding the validity of the '328 patent and, therefore, APS cannot establish a likelihood of success on the merits of its infringement claim or demonstrate irreparable harm. DIP thus requests that the court deny APS's motion with respect to its patent infringement claim.

DISCUSSION

The court considers four factors in determining whether to grant a preliminary injunction:

1. Is there a substantial probability that the plaintiff will prevail on the merits;

2. Is there a substantial threat that the plaintiff will suffer irreparable harm if relief is not granted 3. Does the irreparable harm to the plaintiff outweigh any potential harm that granting the preliminary injunction may cause the defendants; and

4. The public interest.

Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d 109, 114 (8th Cir.1981) (en banc); see also Hybritech, Inc. v. Abbott Lab., 849 F.2d 1446, 1451 (Fed.Cir.1988) (court weighs same factors when considering patent infringement claim); Pretty Punch Shoppettes v. Hauk, 844 F.2d 782, 783 (Fed.Cir.1988) (same) (citing Dataphase Sys. Inc. v. C L Sys., Inc., 640 F.2d 109, 114 (8th Cir.1981)). None of the Dataphase factors by itself is determinative and the court must balance the four factors to determine whether an injunction is warranted. Hybritech, 849 F.2d at 1451; Datascope Corp. v. Kontron, Inc., 786 F.2d 398, 401 (Fed.Cir.1986); Dataphase, 640 F.2d at 113. APS, the party requesting the injunction, bears the burden of proof concerning the four factors. Gelco Corp. v. Coniston Partners, 811 F.2d 414, 418 (8th Cir.1987).

A. False Advertising Claim

1. Likelihood of Success on the Merits

APS alleges that DIP's infomercial violates the Lanham Act, 15 U.S.C. § 1125(a),⁵ the Minnesota Deceptive Practices Act, Minn.Stat. § 325D.44,⁶ the Minnesota Unlawful Trade Practices Act, Minn.Stat. § 325D.13⁷ and the Minnesota Consumer Fraud Act, Minn.Stat. § 325F.69.⁸ The court uses an analysis substantially similar to that applicable to federal claims under the Lanham Act to analyze claims based on the previously cited Minnesota statutes. See e.g., Multi-Tech Sys., Inc. v. Hayes Micro-computer Prod., Inc., 800 F.Supp. 825, 847 (D.Minn.1992) (citations omitted); Carlock v. Pillsbury Co., 719 F.Supp. 791, 849-50 (D.Minn.1989); Scott v. Mego Int'l, Inc., 519 F.Supp. 1118, 1137 (D.Minn.1981). Accordingly, the court analyzes only APS's Lanham Act claim to determine whether it is likely to succeed on the merits of its false advertising claims.

APS must prove five factors in order to prevail on its claim under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).⁹ Those factors are:

(1) DIP made false statements of fact about its own products or APS's products in its advertisements;

(2) Those advertisements actually deceived or have the tendency to deceive a substantial segment of their audience;

(3) Such deception is material because it is likely to influence buying decisions (4) DIP caused its falsely advertised goods to enter interstate commerce;¹⁰

(5) APS has been or is likely to be injured as the result of those activities either by direct diversion of sales from itself to DIP, or by injuring the goodwill its products enjoy with the buying public.

See Multi-Tech, 800 F.Supp. at 845 (citing Alpo Petfoods, Inc. v. Ralston Purina Co., 913 F.2d 958, 964 (D.C.Cir.1990) (citations omitted); Cook, Perkiss & Liehe v. Northern California Collection Serv., Inc., 911 F.2d 242, 244 (9th Cir.1990); Truck Components, Inc. v. K-H Corp., 776 F.Supp. 405, 408 (N.D.Ill.1991) (citations omitted); Energy Four, Inc. v. Dornier Medical Sys., Inc., 765 F.Supp. 724, 730 (N.D.Ga.1991) (citations omitted).

APS can satisfy its burden regarding the first factor by demonstrating that DIP's representations regarding the speeds in which various foods cook in the Perfection-Aire Oven are literally false or that the representations, though literally true, are likely to mislead consumers. Abbott Laboratories v. Mead Johnson & Co., 971 F.2d 6, 13 (7th Cir.1992) (citations omitted); McNeil, 938 F.2d at 1549 (citations omitted). APS does not contend that DIP's representations, although literally true, are likely to mislead consumers.¹¹ Rather, APS...