Curry v. Revolution Labs.
| Docket Number | 17 C 2283 |
| Decision Date | 23 August 2023 |
| 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 sued Revolution Laboratories, LLC, Rev Labs Management Inc., Joshua Nussbaum, and Barry Nussbaum, alleging that they infringed his trademark and violated the Illinois Consumer Fraud and Deceptive Practices Act (ICFA), the Illinois Uniform Deceptive Trade Practices Act (IUDTPA), and the Anti-Cybersquatting Consumer Protection Act (ACPA). The parties stipulated that Revolution is liable for infringing Curry's Diesel Test mark and violating ACPA with respect to one domain name. The Court granted summary judgment in favor of the defendants on Curry's ICFA claim. The remaining claims proceeded to a jury trial in May 2022 except for the IUDTPA claim, which the parties agreed before trial would be decided by the Court.
The jury found that Joshua and Barry Nussbaum are individually liable for trademark infringement. The jury also found that each defendant's infringement was willful. The jury awarded Curry actual damages and defendants' profits and assessed punitive damages against each of the defendants.
Both sides have filed motions regarding the judgment. The defendants have moved under Federal Rule of Civil Procedure 59(e) to alter the judgment by striking the punitive damages and reducing the award of profits. Curry has moved under Rule 59(e) to amend the judgment to include pre- and post-judgment interest and for entry of a permanent injunction. Curry has also moved to find the defendants liable on his IUDTPA claim. Lastly, Curry has moved for a ruling that the jury's award of defendants' profits should be considered as advisory and that the Court should determine the amount of defendants' profits itself.
For the reasons below, the Court (1) denies the defendants' motion to alter the judgment; (2) grants in part Curry's motions for pre- and post-judgment interest and entry of a permanent injunction; (3) finds the defendants liable for violating IUDTPA; and (4) grants Curry's motion to consider the jury's award of defendants' profits advisory and awards $547,095.44 in defendants' profits.
The Court assumes familiarity with this case's factual and procedural background, which this Court has discussed in prior written opinions. See, e.g., Curry v Revolution Lab'ys, LLC, No. 17 C 2283, 2022 WL 225877 (N.D. Ill. Jan. 26, 2022). The following background is relevant to the post-trial motions and largely is taken from the Court's summary judgment decision and the trial record.
Curry resides in Chicago and sells nutritional supplements through his business, Get Diesel Nutrition. He began selling Diesel Test branded products in 2005. He has spent thousands of dollars advertising Diesel Test online and in weightlifting publications, such as Planet Muscle Magazine. He filed a trademark application for the mark Diesel Test in December 2016.
Revolution Laboratories is a limited liability company that sells nutritional supplements and apparel. Joshua Nussbaum is the President of Revolution, and his father, Barry Nussbaum, is the CEO. (For the sake of clarity, the Court will refer to each of the Nussbaums by his first name.) Revolution sells its products directly and through affiliate networks. In October 2016, Revolution began marketing and selling a product called Diesel Test. The following month, Curry sent Revolution a cease-and-desist request stating that he had common law rights to the Diesel Test mark.
Because the parties stipulated that Revolution was liable for infringement, the trial focused on whether Joshua or Barry are individually liable, whether any defendants had willfully infringed, and damages.[1]At trial, Curry, Joshua, and Barry testified, along with Curry's damages expert and various Revolution employees.
Both Curry and Joshua testified regarding how they came up with the name Diesel Test. Curry testified that "Diesel" came from his nickname "Chuck Diesel," which he said came from his past work with diesel fuel. His first product was called Diesel Fuel, and then he began using the name Get Diesel Nutrition for his business. He testified that he chose the name Diesel Test for his testosterone boosting product because he wanted to continue using the name Diesel. As noted above, he began selling Diesel Test in 2005. In 2015 and 2016, Diesel Test received Planet Muscle magazine's Best of the Best award.
Regarding Revolution's use of Diesel Test, Joshua testified that it was his decision to use the Diesel Test name and that he was involved in creating the product label. He explained that "Diesel" was a common slang word in the body building community. Barry testified that he did not like the name at first and repeatedly rejected it but that he eventually acquiesced due to Joshua's enthusiasm for the name. Joshua testified that he performed a search for the name on Google and on a website called Trademarks 411, though he did not have any records of performing this search. Joshua explained that because he did not see the Diesel Test mark on the trademark website he searched, he thought "it was fair game." Tr. Vol. 2 at 474:5-11. As noted above, Revolution began selling its Diesel Test product in October 2016. In closing argument, Curry's counsel contended that Revolution and Curry's Diesel Test labels, including the name, color, and font, were too similar for it to be plausible that Joshua independently created it.
Joshua and Barry both testified that they control Revolution. Joshua testified that he managed the company on a day-to-day basis and that he asked Barry for advice regarding Diesel Test. He explained that when Revolution began selling Diesel Test, the company took another product called Rev Test and relabeled it as Diesel Test. He testified that from October 2016 to June 2017, Revolution sold its Diesel Test product to 767 customers in Illinois.
Curry sent three cease-and-desist requests to Revolution in November 2016. In these requests, he included links to his website where he was selling his Diesel Test products. Joshua testified that he did not reply to these requests nor click the links because he thought it was a scam. He forwarded Curry's cease-and-desist email to Barry and a couple of other Revolution employees. In Joshua's email, he asked a Revolution employee to "do a search and see if Diesel Test is available for trademark or if this guy is telling the truth." Dkt. no. 399-3 at 65:2-7. In the same email, Joshua wrote: "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." Id. at 65:19-21.
Barry testified that he agreed with this decision. He testified that after receiving Curry's cease-and-desist letter, a Revolution employee discovered that the trademark was available for purchase. Another Revolution employee asked in the same email chain if Revolution should purchase the mark, to which Barry responded: "Yessssssssss." Dkt. no. 399-10 at 6. Joshua then prepared and filed an application to register the Diesel Test trademark under his own name. That application was later denied by the U.S. Patent and Trademark Office.
Joshua testified that after he received Curry's cease-and-desist request, he searched again on Google and Trademarks 411 for the Diesel Test mark and did not find anything. He also stated that he spoke with two of his distributors, and they told him that they had not heard of Diesel Test or Curry's company. At trial, however, Joshua was confronted with evidence that one of those distributors was advertised as Curry's exclusive distributor of Diesel Test. Barry testified that he searched on Amazon to investigate Curry's claim, but he conceded that he searched for products with the name testosterone in it, not Diesel Test specifically. Barry also testified that he instructed Revolution employees to perform searches. He explained that because he did not find evidence of sales or a registered trademark in his searches, he thought Curry's claim was scam.
In February 2017, Amazon banned Revolution's Diesel Test product due to Curry's complaint that it was counterfeit. Joshua and Barry testified that Revolution decided not to contest the Amazon ban because their Diesel Test sales on Amazon were not significant enough. Revolution sales manager Adam Knippel testified via deposition that Revolution continued selling Diesel Test on other channels after Amazon banned the product.
There was conflicting evidence at trial regarding when Revolution stopped selling Diesel Test. Knippel testified that Revolution continued to sell Diesel Test after Curry filed suit in March 2017. Revolution warehouse manager Donna Godwin, who also testified via deposition, explained that as of August 2018, Revolution still had Diesel Test product. Curry testified that in May 2020, he saw a website advertising Revolution's Diesel Test. Joshua testified, however, that Revolution had stopped selling or advertising Diesel Test in October 2017 because it began selling and advertising the product under a new name, RT 2.0. But he also admitted that he had previously submitted an affidavit in this case stating that Revolution did not stop selling Diesel Test products until the first quarter of 2018. See dkt. no. 88-1 at ¶ 3. Barry testified that there were a small number of deliveries in 2018 but that Revolution had stopped marketing Diesel Test in 2017.
There was also testimony at trial regarding Revolution's products that it...
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