Dwyer Instruments, Inc. v. Sensocon, Inc.
| Decision Date | 05 June 2012 |
| Docket Number | Cause No. 3:09–CV–10–TLS. |
| Citation | 873 F.Supp.2d 1015 |
| Parties | DWYER INSTRUMENTS, INC., Plaintiff, v. SENSOCON, INC., and Tony E. Kohl, Defendants. |
| Court | U.S. District Court — Northern District of Indiana |
OPINION TEXT STARTS HERE
David R. Pruitt, Barnes & Thornburg LLP, South Bend, IN, Jonathan P. Froemel, Mark A. Hagedorn, Barnes & Thornburg LLP, Chicago, IL, for Plaintiff.
Brent E. Inabnit, Joshua A. Visser, Sopko Nussbaum Inabnit & Kaczmarek, South Bend, IN, Clifford W. Browning, Krieg Devault LLP, Indianapolis, IN, for Defendants.
The Plaintiff, Dwyer Instruments, Inc. (Dwyer), has sued the Defendants, Sensocon, Inc. (Sensocon), and its owner and operator, Tony Kohl (Kohl) (collectively the Defendants), for trademark infringement, trade dress infringement, counterfeiting, unfair competition, false designation of origin, and copyright infringement. This lawsuit centers around the manufacture, marketing, and sale of differential pressure gauges. The Plaintiff is a long time manufacturer of these products. The Defendants are newcomers to the market—Kohl left his employment with the Plaintiff and started Sensocon. The Plaintiff alleges that the Defendants' business has been fraught with violations of the Plaintiff's intellectual property rights.
The Defendants have moved for partial summary judgment [ECF No. 103]. Kohl moves for summary judgment on all counts of the Plaintiff's First Amended Complaint on grounds that he is not personally liable for Sensocon's actions because it is a separate legal entity and he is not Sensocon's alter ego. Sensocon argues that the Plaintiff's claims are either subject to limited damages or should be dismissed in their entirety as a matter of law. The Court previously denied the portion of the Defendants' Motion that requested summary judgment on Count I of the First Amended Complaint, which asserts a claim for trademark infringement on United States Trademark Registration No. 3,397,050 for the lens design, specifically for a plurality of horizontal lines and raised rectangular portion on the lens face of a differential pressure gauge. Instead, the Court granted in part the Plaintiff's Motion for Partial Summary Judgment on this same count, finding that the Plaintiff had established the Defendants' violation of its registered trademark as a matter of law. This Opinion and Order addresses the remainder of the Defendants' Motion for Partial Summary Judgment. The counts under review, either in whole or in part, are:
Count II—Federal Trademark Infringement (15 U.S.C. § 1114) for the Plaintiff's Magnehelic® Mark
Count IV—Federal Unfair Competition/False Designation of Origin (15 U.S.C. § 1125) for the Magnehelic® Mark, the Dwyer® Mark, and the lens design.
Count V—Common Law Trademark Infringement/False Designation of Origin for “Series 2000”
Count VII—Trade Dress Infringement (15 U.S.C. § 1125(a)) for the lens design Count VIII–Copyright Infringement (17 U.S.C. § 501)
Count IX—Counterfeiting (15 U.S.C. § 1114)
Summary judgment is appropriate if the facts supported by materials in the record show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law. Fed.R.Civ.P. 56. “Summary judgment is only appropriate if the evidence submitted below reveals no genuine issue as to any material fact and the moving party (the defendant) is entitled to judgment as a matter of law.” Goodman v. Nat'l Sec. Agency, Inc. 621 F.3d 651, 654 (7th Cir.2010) (citing Poer v. Astrue, 606 F.3d 433, 439 (7th Cir.2010)). The court construes all facts and reasonable inferences in favor of the nonmoving party, and takes care not to weigh any conflicting evidence. Omnicare, Inc. v. UnitedHealth Grp., Inc., 629 F.3d 697, 705 (7th Cir.2011). A court's role is not to evaluate the weight of the evidence, to judge the credibility of witnesses, or to determine the truth of the matter, but instead to determine whether there is a genuine issue of triable fact. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249–50, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Doe v. R.R. Donnelley & Sons Co., 42 F.3d 439, 443 (7th Cir.1994).
The Plaintiff is a leading manufacturer in the instrumentation and controls industry. The Dwyer name is a registered trademark, as are the names of specific products the Plaintiff sells. Among the products the Plaintiff sells are gauges that measure the differential pressure of air and compatible gases. The Plaintiff sells these gauges to original equipment manufacturers and end users, including those in industries that involve heating, ventilation and air conditioning, pollution control, chemicals, food, and oil and gas.
Since 1962, the Plaintiff has been using a lens design on its gauges that incorporates a generally rounded side wall forming a generally domed face with an ornamental design on the lower portion of the lens face that consists of a plurality of horizontal lines and a raised rectangular portion. One of the Plaintiff's most successful and popular product lines, the Series 2000 Magnehelic® brand pressure gauges, has featured this lens design since at least 1963. The Plaintiff uses the same lens on other products it manufactures.
On November 8, 2006, the Plaintiff filed an application with the United States Patent and Trademark Office (USPTO) to register the lens design that it used on pressure gauges and differential pressure gauges. On March 18, 2008, the USPTO issued United States Registration No. 3,397,050 to the Plaintiff under § 1052(f) for the mark (Lens Mark) in connection with pressure gauges and differential pressure gauges. The Lens Mark “consists of a plurality of horizontal lines and a raised rectangular portion on the lens of a pressure gauge.” (Trademark, ECF No. 98–4.) By May 2008, the Plaintiff was using the ® symbol in connection with the products bearing the Lens Mark.
In 1997, Kohl began working for the Plaintiff, ultimately reaching the level of District Sales Manager. In his employment for the Plaintiff, Kohl promoted the sale of the Plaintiff's Magnehelic® brand pressure gauges. On July 20, 2005, Kohl resigned from the Plaintiff's employment, and within three weeks incorporated Sensocon. The following year, Kohl contacted a Chinese-based company seeking information on a product “that was identical to the Dwyer Magnehelic that was made by a company called Best Control Technology (in Beijing).” (Email correspondence, ECF No. 102 at 17.) Kohl indicated that he was interested in selling the product in North America. By summer 2006, a different Chinese company, Sailsors, was manufacturing differential pressure gauges for Sensocon. The lens had the same plurality of horizontal lines and a raised rectangular portion that Dwyer uses on its gauges. The face of the gauge, however, included the word SENSOCON, instead of Magnehelic®. In fall 2006, Kohl contacted current customers of the Plaintiff to inform them that Sensocon had an alternative to the pressure gauges they were currently using, specifically a Sensocon model S2000 differential pressure gauge. Sensocon also promoted its products through a website.
In late 2006, the Plaintiff became aware that Sensocon was marketing competitive pressure gauges that the Plaintiff believed incorporated its trademarks without authorization. On January 8, 2007, the Plaintiff sent the Defendants a letter with respect to Sensocon's use of the Plaintiff's Magnehelic® and Dwyer® registered trademarks and Series 2000 common law trademark in marketing and promotional materials. The letter also advised that the Plaintiff was the owner of trademark rights in the trade dress of its Magnehelic® pressure gauges as generally shown in an attached drawing, which showed a gauge with a plurality of horizontal lines covering the bottom portion of the lens and a raised rectangular portion. The letter alleged that the Sensocon S2000 differential pressure gauge incorporated the trade dress of the Plaintiff's Magnehelic® pressure gauge, violated the Plaintiff's trademark rights, and was likely to cause confusion, mistake, and deception of the purchasing public. The Plaintiff requested a written assurance by January 22, 2007, that the Defendants would cease and desist from the identified activities and voluntarily discontinue use of the Plaintiff's marks and trade dress so that future legal action would not be necessary. (Jan. 8, 2007, Letter, ECF No. 104–2 at 23–24.)
The Defendants continued to advertise, promote, and sell the S2000 Sensocon gauge throughout 2008 and 2009. On January 7, 2009, the Plaintiff filed this lawsuit against the Defendants for trademark infringement, trade dress infringement, unfair competition, false designation of origin, and copyright infringement. The Plaintiff later added a claim for counterfeiting.
In 2010, Sensocon began selling gauges with a lens design that did not contain a plurality of horizontal lines and raised rectangular portion (the Third Generation Lens). The Defendants maintain that after December 31, 2009, Sensocon no longer sold the S2000 gauge, but instead only sold gauges with the Third Generation Lens.
In addition to Sensocon, Kohl has set up another company by the name of TEK Instrument Company (TEK Instrument). TEK Instrument sells gauges that are manufactured by Sensocon. On it website, TEK Instrument advertises and sells the Sensocon Series S2000 differential pressure gauge as the “Series S2000 Differential Pressure Gauge—Magnehelic® Alternative.” (TEK Instrument Company web page, ECF No. 108–31).
The Court will provide additional facts throughout the Analysis as they become necessary to resolve the pending Motion.
In an Opinion and Order issued on March 23, 2012, the Court determined that ...
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