MINEMYER v. B-ROC REPRESENTATIVES, INC.

• Decision Date: 27 October 2009
• Docket Number: No. 07-C-1763.,07-C-1763.
• Citation: 678 F. Supp.2d 691
• Parties: John T. ("Tom") MINEMYER, Plaintiff, v. B-ROC REPRESENTATIVES, INC., et al., Defendants.
• Court: U.S. District Court — Northern District of Illinois

678 F.Supp.2d 691

John T. ("Tom") MINEMYER, Plaintiff, v. B-ROC REPRESENTATIVES, INC., et al., Defendants.

No. 07-C-1763.

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

October 27, 2009.

Eugene Frederic Friedman, Gail Tuler Friedman, Friedman & Friedman, Ltd., Douglas Mason Chalmers, Douglas M. Chalmers P.C., Chicago, IL, for Plaintiff.

Anna B. Folgers, Matthew G. McAndrews, Niro, Scavone, Haller & Niro, Ltd., Natalie J. Spears, Jacque Pierre McCray, Sonnenschein, Nath & Rosenthal, LLP, Chicago, IL, Adam C. Rehm, Bryan P. Stanley, Matthew L. Faul, Teresa Ann Ascencio, Sonnenschein Nath & Rosenthal LLP, Kansas City, MO, for Defendants.

MEMORANDUM OPINION AND ORDER

JEFFREY COLE, United States Magistrate Judge.

The plaintiff produces plastic pipe couplers. The couplers are short lengths of sturdy plastic tube, with threads spiraling their way from both ends toward the center—think jar lid, with the lid being one end of the coupler and the pipe being the jar. In the center, there is a stop so that the pipes being connected wouldn't actually touch. On the outside there are vertical grooves—the parties call them "flutes"— that provide a gripping surface to allow for tightening during installation. The couplers come in various colors and sizes, both which are dictated by the communications companies that are the consumers of these products.

The defendants make and/or distribute couplers, too, and they are very similar, if not very nearly identical, to plaintiffs. And that's plaintiffs problem; he alleges that the defendants are violating the Lanham Act by infringing his trade dress and passing their products off as his. He claims his trade dress is, essentially, the coupler itself: its length, diameter, internal lead-in taper, flutes, arrows, the solid reinforced area between the flutes and the taper, and the base coloring of the material. But, that makes for a difficult Lanham Act claim, because the Act doesn't protect the product per se, but the trade dress insofar as it identifies the source of the product. In other words, the plaintiff can't simply complain that defendants are copying his product—that's a patent infringement claim, which plaintiff does bring—but has to show that because they are copying his product, the consumer is confused as to whether the coupler they are purchasing is the plaintiff's or the defendant's.

Judge Posner explained the distinction in Publications Intern. Ltd. v. Landoll, Inc., 164 F.3d 337 (7th Cir.1998):

On the one hand, a seller should be encouraged to make his products recognizable by consumers at a glance as his product and not that of another seller. This way the seller will be able to appropriate the benefits of making a product that consumers like, and so he will have an incentive to make a good product. Other sellers won't be able to free ride on his efforts by tricking the consumer into buying an inferior product from them in the belief that it is the product of the seller whom they have grounds to trust.

On the other hand, a seller should not be allowed to obtain in the name of trade dress a monopoly over the elements of a product's appearance that either are not associated with a particular producer or that have value to consumers that is independent of identification. In the lingo of unfair competition, elements of the latter type-elements whose value is not merely signification-are a product's "functional" features; . . . Functional improvements may be patentable, or protected as trade secrets, but they cannot be appropriated in the name of trade dress even if they are distinctive.

Id. at 339. In short, "`exploiting the goodwill of the article—the attractive features, of whatever nature, that the product holds for consumers—is robust competition; only deceiving consumers, or exploiting the goodwill of another producer, is unfair competition.'" Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 383 (7th Cir.1996) (quoting Duraco Prods, v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1445 (3rd Cir.1994)).

The defendants feel that plaintiff is attempting to secure a monopoly over functional aspects of his product as opposed to aspects that are signifiers of source. They have moved for summary judgment on plaintiffs trade dress claims, brought under the Lanham Act and Illinois state law.

I.

SUMMARY JUDGMENT

A. The Federal Rule of Civil Procedure and Applicable Case Law

Summary judgment is appropriate where "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The moving party bears the initial burden to demonstrate their entitlement to summary judgment, Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When considering a motion for summary judgment, the nonmoving party's evidence "`is to be believed, and all justifiable inferences are to be drawn in that party's favor.'" Hunt v. Cromartie, 526 U.S. 541, 552, 119 S.Ct. 1545, 143 L.Ed.2d 731 (1999). Credibility determination must be left for the fact-finder. Hunt, 526 U.S. at 552, 119 S.Ct. 1545.

But this favor toward the nonmoving party does not extend to drawing "inferences that are supported by only speculation or conjecture." Fischer v. Avanade, Inc., 519 F.3d 393, 401 (7th Cir.2008) (citation omitted). The nonmoving party "must do more than raise some metaphysical doubt as to the material facts; she must come forward with specific facts showing that there is a genuine issue for trial." Keri v. Bd. of Trs. of Purdue Univ., 458 F.3d 620, 628 (7th Cir.2006). Where the nonmoving party bears the burden of proof at trial, he must present specific facts showing a genuine issue to survive summary judgment. Celotex Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Ortiz v. John O. Butler Co., 94 F.3d 1121, 1124 (7th Cir.1996) ("If the nonmoving party fails to establish the existence of an element essential to his case, one on which he would bear the burden of proof at trial, summary judgment must be granted to the moving party."). A genuine issue of material fact exists, precluding summary judgment, "only if sufficient evidence favoring the nonmoving party exists to permit a jury to return a verdict for that party." Sides v. City of Champaign, 496 F.3d 820, 826 (7th Cir.2007) (citation omitted).

B. Summary Judgment Under The Northern District's Local Rules

As always, the facts underlying this summary judgment proceeding are drawn from the parties' Local Rule 56.1 submissions.¹ Local Rule 56.1 requires a party seeking summary judgment to include with its motion "a statement of material facts as to which the ... party contends there is no genuine issue and that entitle the ... party to a judgment as a matter of law." Local Rule 56.1(a)(3); Ciomber v. Cooperative Plus, Inc., 527 F.3d 635, 643 (7th Cir.2008). Each paragraph must refer to the "affidavits, parts of the record, and other supporting materials" that substantiate the asserted facts. Local Rule 56.1(a)(3); F.T.C. v. Bay Area Business Council, Inc., 423 F.3d 627, 633 (7th Cir. 2005). The party opposing summary judgment must then respond to the movant's statement of proposed material facts; that response must contain both "a response to each numbered paragraph in the moving party's statement," Local Rule 56.1(b)(3)(B), and a separate statement "consisting of short numbered paragraphs, of any additional facts that require the denial of summary judgment," Local Rule 56.1(b)(3)(C); Ciomber, 527 F.3d at 643. Again, each response, and each asserted fact, must be supported with a reference to the record. Local Rule 56.1(b)(3)(B); Cracco v. Vitran Exp., Inc., 559 F.3d 625, 632 (7th Cir.2009); Bay Area Business Council, Inc., 423 F.3d at 633.

If the moving party fails to comply with the rule, the motion can be denied without further consideration. Local Rule 56.1(a)(3); Smith v. Lamz, 321 F.3d 680, 682 n. 1 (7th Cir.2003). If the responding parting fails to comply, its additional facts may be ignored, and the properly supported facts asserted in the moving party's submission are deemed admitted. Local Rule 56.1(b)(3)(C); Montano v. City of Chicago, 535 F.3d 558, 569 (7th Cir.2008); Cracco, 559 F.3d at 632; Cady v. Sheahan, 467 F.3d 1057, 1061 (7th Cir.2006). District courts are "`entitled to expect strict compliance'" with Rule 56.1, and do not abuse their discretion when they opt to disregard facts presented in a manner that does follow the rule's instructions. Cracco, 559 F.3d at 632; Ciomber, 527 F.3d at 643; Ammons v. Aramark Unif. Servs., Inc., 368 F.3d 809, 817 (7th Cir.2004).

II. ANALYSIS

A. Trade Dress Under The Lanham Act

Plaintiff brings his Lanham Act claim under Section 43(a)(1)(A) of the Act,² which provides:

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person,. . .

15 U.S.C. § 1125(a)(1)(A). In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000), the Supreme Court held that the phrase "word, term, name, symbol, or device, or any combination thereof includes distinctive aspects of a product's appearance, commonly known as trade dress. That's what plaintiff is claiming for his plastic couplers in this case."

Plaintiffs claim is that the couplers themselves are the trade dress. That is a difficult claim to advance....