Curry v. Revolution Labs.

• Decision Date: 26 January 2022
• Docket Number: 17 C 2283
• Parties: CHARLES CURRY, d/b/a Get Diesel Nutrition, Plaintiff, v. REVOLUTION LABORATORIES, LLC, REV LABS MANAGEMENT, INC., JOSHUA NUSSBAUM, and BARRY NUSSBAUM, Defendants.
• Court: U.S. District Court — Northern District of Illinois

CHARLES CURRY, d/b/a Get Diesel Nutrition, Plaintiff,
v.
REVOLUTION LABORATORIES, LLC, REV LABS MANAGEMENT, INC., JOSHUA NUSSBAUM, and BARRY NUSSBAUM, Defendants.

No. 17 C 2283

United States District Court, N.D. Illinois, Eastern Division

January 26, 2022

MEMORANDUM OPINION AND ORDER

MATTHEW F. KENNELLY UNITED STATES DISTRICT JUDGE

Charles Curry sells nutritional supplements bearing the brand "Diesel." After discovering that Revolution Laboratories sold an identically labeled product, Curry sent a cease-and-desist letter and subsequently sued Revolution and company management for infringing his trademark. Both parties have moved for summary judgment. For the reasons stated below, the Court grants the defendants' motion in part and denies it in part and denies Curry's motion.

Background

The following facts are undisputed except where otherwise noted. Curry is a Chicago-area small business owner who sells Diesel-branded nutritional supplements through his company, Get Diesel Nutrition. He began selling a product branded Diesel Fuel, his first product, in 2002, and one branded Diesel Test in 2005. He has spent

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thousands of dollars advertising Diesel Test online and in weightlifting publications, such as Planet Muscle Magazine. In June 2016, Curry filed a trademark application for the mark Diesel Fuel claiming a first-use date of June 2002.

Joshua Nussbaum and Barry Nussbaum operate Revolution Laboratories (Revolution), a limited liability company organized under Nevada law with its principal place of business in California. Revolution sells nutritional supplements and apparel. The Court will refer to each of the Nussbaums by his first name for the sake of simplicity. Joshua holds the title of President and manages the day-to-day operations of the company. Barry (Joshua's father) holds the title of CEO; he serves as a "mentor" and is "involved in the decisions of major magnitude." Pl.'s Rule 56.1(b)(2) Resp. to Defs.' Stat. of Material Facts ¶ 17 (dkt. no. 177-1). Joshua and Barry also created Rev Labs Management for the purpose of acting as manager of Revolution. Revolution employed approximately 40 employees from 2016 to 2017 and had a core leadership group of five individuals, two of whom were Joshua and Barry. Id. ¶ 4.

Revolution sells its products both directly and through affiliate networks. Revolution's direct sales channels consist of Amazon, eBay, its own website (boostedtestforyou.com), via e-mail, and by phone. The mechanics of how Revolution operates its affiliate networks is a subject of dispute. The defendants point to Galina Polyakova, Revolution's CFO and one of the leadership group members, as responsible for these networks, and they assert that neither Joshua nor Barry is involved. Id. ¶ 8. Curry contends that Joshua was "directly involved in discussions about registering and setting up websites" and had "final approval" over marketing affiliate decisions. Id. He also contends that Barry was "aware that Revolution was using affiliate marketing . . .

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and had the authority to manage those efforts." Id.

In October 2016, Revolution began marketing and selling a product called Diesel Test. In November 2016, after receiving messages from customers expressing confusion, Curry sent Revolution a cease-and-desist request explaining that he had common law rights to the Diesel Test mark. Upon receiving Curry's message, Joshua forwarded the message to Revolution's leadership team, including Barry, writing:

Russ can you please do a search and see if 'diesel test' is available for trademark or if this guy is telling the truth. I personally vote we let him sue us to get through the remainder of our labels and then change the name to DZL Test on our next run

Defs.' Resp. to Pl.'s Rule 56.1(a)(2) Stat. of Material Facts ¶ 34 (dkt. no. 188-6). Further along in that e-mail chain, two Revolution employees discussed that the trademark was not registered and was available for purchase. When one employee asked if the company should purchase the trademark, Barry responded "Yessssssssss." Id. ¶ 39. Barry believed that Revolution "had blundered into somebody's [Diesel Test] name," and he agreed with Joshua that they "should ignore Mr. Curry's cease and desist request and let him sue the company." Id. ¶ 37.

Later in November 2016, Revolution filed an application with the U.S. Patent and Trademark Office (USPTO) seeking to register the Diesel Test mark. The application listed Joshua as the owner of the mark. In March 2017, the USPTO suspended the defendants' Diesel Test application, explaining that Curry's "earlier filed" application first had to be "registered or abandoned." Id. ¶ 43. The USPTO registered Curry's trademark for "Diesel Fuel" in January 2019 and for "Diesel" in February 2020. His application for "Diesel Test" is still pending, and the defendants are opposing that application.

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In March 2017, Curry sued Revolution, Rev Labs Management, Joshua Nussbaum, and Barry Nussbaum and asserted seven claims based on the defendants' claimed infringement of his Diesel Test trademark. He has since dropped two of those claims, counts four and seven. Count one of Curry's complaint alleges a violation of the Illinois Consumer Fraud and Deceptive Business Practices Act (ICFA), 815 ILCS 505. Count two alleges a violation of the Illinois Uniform Deceptive Trade Practices Act (IUDTPA), 815 ILCS 510/2. Count three alleges a violation of the Lanham Act, 15 U.S.C. § 1125(a), for false designation of origin and false advertising. Count five alleges common law trademark infringement. Count six alleges a violation of the Anti-Cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d).

Revolution claims to have ceased all sales of its Diesel Test product by October 2017. Curry disagrees with this date and contends that sales continued into 2020 through alternative affiliate websites: he says that dieseltestbooster-red.com remained active into May 2020 and dieseltest.net remained so into September 2020. The Court granted a stipulated preliminary injunction in August 2020 that enjoined the defendants from marketing or selling any products bearing Curry's mark. Stipulated Prelim. Inj. (dkt. no. 132).

Discussion

Both parties have moved for summary judgment. The defendants argue that Joshua and Barry cannot be held individually liable for federal and common law trademark infringement; Curry cannot establish a violation of the ACPA; he cannot sustain a claim under the ICFA; and that the preliminary injunction entered by the Court renders moot his request for equitable relief. In his cross-motion, Curry contests these

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arguments and additionally contends that he is entitled to summary judgment on his trademark claims, his state law claims, and part of his ACPA claim.

To obtain summary judgment, a party must demonstrate that "there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). There is a genuine issue of material fact if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Hanover Ins. Co. v. N. Bldg. Co., 751 F.3d 788, 791 (7th Cir. 2014) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). When parties file cross-motions for summary judgment, courts "construe all inferences in favor of the party against whom the motion under consideration is made." Cremation Soc'y of Ill., Inc. v. Int'l Bhd. of Teamsters Local 727, 869 F.3d 610, 616 (7th Cir. 2017) (quoting Rupcich v. UFCW Int'l Union, Local...