Keystone Mfg. Co., Inc. v. Jaccard Corp.
| Decision Date | 29 September 2005 |
| Docket Number | No. 03-CV-648S.,03-CV-648S. |
| Citation | 394 F.Supp.2d 543 |
| Parties | KEYSTONE MANUFACTURING CO., INC., Plaintiff, v. JACCARD CORP. and Eric J. Wangler, Defendants. |
| Court | U.S. District Court — Western District of New York |
Michael James Berchou, Peter K. Sommer, Phillips Lytle LLP, Buffalo, NY, for Plaintiff.
Bernard M. Brodsky, Esq., A. Nicholas Falkides, Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria, Buffalo, NY, for Defendants.
DECISION AND ORDER
In this intellectual property action, Plaintiff Keystone Manufacturing Co., Inc. alleges that Defendants Jaccard Corp. ("Jaccard") and Eric J. Wangler have engaged in false marking and unfair competition with respect to their sale of the JACCARD® hand-held meat tenderizer. Plaintiff also seeks a declaratory judgment that the design of the JACCARD® tenderizer is not protected trade dress. In return, Defendants counterclaim that Plaintiff has engaged in unfair competition and has violated their trade dress and trademark rights in connection with its sale of the Deni® hand-held meat tenderizer.
Currently before this Court are four motions: (1) Plaintiff's Motion for Partial Summary Judgment,1 (2) Defendants' Motion for Partial Summary Judgment on certain of its Counterclaims,2 (3) Defendants' Motion for Partial Summary Judgment on certain of Plaintiff's Causes of Action,3 and (4) Defendants' Motion to Disqualify Plaintiff's Expert Witness.4 For the following reasons, the motions are granted in part and denied in part.
Keystone is in the business of selling kitchen utensils and appliances, such as meat tenderizers, vacuum sealers, pizza ovens, ice cream makers, indoor grills, and other kitchen accessories. (Plaintiff's Statement,5 ¶ 1.) These items are manufactured for Keystone by other companies, but sold under the Deni® name, which is a trademark owned by and registered to Keystone. (Plaintiff's Statement, ¶ 1.)
For approximately twenty years, Keystone was a non-exclusive distributor of JACCARD® hand-held meat tenderizers. (Plaintiff's Statement, ¶ 2.) During that time, Andre Jaccard owned the rights to the JACCARD® tenderizers. (Plaintiff's Statement, ¶ 2.) Mr. Jaccard obtained two U.S. utility patents and two U.S. design patents for the meat tenderizer. (Defendants' Statement,6 ¶ 3.) In addition, Mr. Jaccard obtained utility patents on the product in Canada, Europe and Hong Kong. (Defendants' Statement, ¶ 3.) He also obtained design patents in the United Kingdom, Taiwan and China. (Defendants' Statement, ¶ 3.)
In or about June of 2001, Eric Wangler formed the Jaccard Corporation, and acquired the assets of the company owned by Andre Jaccard. (Wangler Decl.,7 ¶ 4; Defendants' Statement, ¶ 4.) Jaccard continued to sell the JACCARD® meat tenderizer, which has been marketed continuously in its present form, both domestically and internationally, since 1980. (Defendants' Statement, ¶¶ 10, 11.)
In November of 2002, Jaccard increased the price at which it was willing to sell Keystone the JACCARD® hand-held meat tenderizer. (Wangler Decl., ¶ 5.) Because Keystone anticipated a loss in profits upon its resale of the JACCARD® tenderizers, it began investigating whether it could manufacture and sell its own line of meat tenderizers under its Deni® trademark. (Plaintiff's Statement, ¶ 3.) Upon determining that Jaccard's United States patents were either expired or about to expire, Keystone made arrangements to have a competitive line of hand-held meat tenderizers manufactured in China. (Plaintiff's Statement, ¶ 5.) Jaccard then terminated Keystone's non-exclusive distributorship. (Wangler Decl., ¶ 9.)
17.) A side-by-side depiction of the two tenderizers is set forth below.
The Deni® tenderizer is almost identical to the JACCARD® tenderizer. (Wangler Decl., ¶ 7; Defendants' Statement, ¶ 13.) While there are differences in shape, color and markings, the two tenderizers are manufactured with the same number and type of parts and operate in the same manner. (Plaintiff's Statement, ¶ 5.)
The Deni® 16-blade meat tenderizer typically sells for between $14.99 and $19.99; the same size JACCARD® tenderizer sells for between $14.99 and $24.99. (Plaintiff's Statement, ¶ 6; Wangler Decl., ¶ 8.) The Deni® 48-blade meat tenderizer typically sells for between $29.99 and $34.99; the same size JACCARD® tenderizer sells for between $29.99 and $39.99. (Plaintiff's Statement, ¶ 6; Wangler Decl., ¶ 8.)
Additional facts where pertinent are further set forth in the context of the individual motions discussed below.
On August 27, 2003, Plaintiff commenced this action by filing a Complaint in the United States District Court for the Western District of New York. Plaintiff's Complaint asserts five causes of action. First, Plaintiff alleges that Defendants have engaged in false marking in violation of 35 U.S.C. § 292. (Complaint, ¶¶ 34-36.) Second, Plaintiff alleges that Defendants violated the Lanham Act, 15 U.S.C. § 1125(a). (Complaint, ¶¶ 37-40.) Third, Plaintiff seeks a declaratory judgment with respect to whether the Deni® hand-held meat tenderizer infringes or violates any rights held by Jaccard. (Complaint, ¶¶ 41-43.) Fourth, Plaintiff alleges that Defendants attempted to monopolize trade or commerce in violation of 15 U.S.C. § 2.8 (Complaint, ¶¶ 44-45.) Finally, Plaintiff alleges that Defendants have engaged in unfair competition practices in violation of New York law. (Complaint, ¶¶ 46-47.)
Defendants filed their Answer to the Complaint on September 16, 2003. Therein, Defendants assert five counterclaims. First, they contend that Keystone has infringed on Jaccard's JACCARD® trademark in violation of § 32(1) of the Lanham Act, 15 U.S.C. § 1114. (Answer, ¶¶ 40-45.) Second, Defendants allege that Keystone has infringed its trade dress in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).9 (Answer, ¶¶ 46-54.) Third, Defendants allege that Keystone has diluted the Jaccard name in violation of the Lanham Act. (Answer, ¶¶ 55-65.) Fourth, Defendants assert that Keystone has infringed its trademark rights in violation of New York common law. (Answer, ¶¶ 66-73.) Finally, Defendants allege that Keystone has engaged in unfair competition in violation of New York law. (Answer, ¶¶ 74-81.)
On November 3, 2004, Keystone filed a Motion for Partial Summary Judgment. On December 1, 2004, Defendants filed a Motion for Partial Summary Judgment on their first, second and fifth counterclaims. Also on that date, Defendants filed a second Motion for Partial Summary Judgment on Keystone's first, second and fifth causes of action. On January 7, 2005, Defendants filed a Motion to Disqualify Plaintiff's Expert Witness. This Court held oral argument on each of the above motions on June 28, 2005, and took the matter under advisement at that time.
Rule 56 of the Federal Rules of Civil Procedure provides that summary judgment is warranted where the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). A "genuine issue" exists "if the evidence is such that a reasonable jury could return a verdict for the non-moving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). A fact is "material" if it "might affect the outcome of the suit under governing law." Id.
"Only when reasonable minds could not differ as to the import of evidence is summary judgment proper." Bryant v. Maffucci, 923 F.2d 979, 982 (2d Cir.1991). "Summary Judgment is improper if there is any evidence in the record from any source from which a reasonable inference could be drawn in favor of the nonmoving party." Yurman Design, Inc. v. Golden Treasure Imps., Inc., 275 F.Supp.2d 506, 508 (S.D.N.Y.2003).
In deciding a motion for summary judgment, the evidence and the inferences drawn from the evidence must be "viewed in the light most favorable to the party opposing the motion." Adickes v. S. H. Kress & Co., 398 U.S. 144, 158-59, 90 S.Ct. 1598, 1609, 26 L.Ed.2d 142 (1970). Gallo v. Prudential Residential Services, Ltd P'ship, 22 F.3d 1219, 1224 (2d Cir.1994). In other words, the function of the court is not "to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson, 477 U.S. at 249, 106 S.Ct. 2505.
Keystone moves for partial summary judgment on its third cause of action, which seeks a declaratory judgment with respect to whether the Deni® hand-held meat tenderizer violates any rights held by Jaccard. (Complaint, ¶¶ 41-43.) In particular, Keystone seeks a declaratory judgment that (1) its Deni® hand-held meat tenderizers do not infringe any U.S. patent right held by Jaccard, (2) it is legally entitled to practice the teaching of Jaccard's expired U.S. patents, and (3) its Deni® hand-held meat...
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