Simmons v. Cook

• Decision Date: 29 March 2010
• Docket Number: Case No. 2:07-cv-1279.
• Citation: 701 F.Supp.2d 965
• Parties: Louis SIMMONS and Tee and Ell Weight Lifting and Exercise Enterprises, Inc., Plaintiffs,v.John COOK and Evolve, Inc., Defendants.
• Court: U.S. District Court — Southern District of Ohio

701 F.Supp.2d 965

Louis SIMMONS and Tee and Ell Weight Lifting and Exercise Enterprises, Inc., Plaintiffs,v.John COOK and Evolve, Inc., Defendants.

Case No. 2:07-cv-1279.

United States District Court,

S.D. Ohio,

Eastern Division.

March 29, 2010.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

David J. Dawsey, Michael James Gallagher, Gallagher & Dawsey Co., LPA, Barry Howard Wolinetz, Columbus, OH, for Plaintiffs.

Suzanne Kay Richards, Vorys, Sater, Seymour and Pease LLP, Columbus, OH, Laura J. Gentilcore, Mark L. Weber, Ray L. Weber, Renner, Kenner, Greive, Bobak, Taylor & Weber, Akron, OH, for Defendants.

OPINION AND ORDER

MICHAEL H. WATSON, District Judge.

Plaintiffs Louis Simmons and Tee and Ell Weight Lifting and Exercise Enterprises, Inc. (“Plaintiffs”) bring claims under the patent laws of the United States as set forth in Title 35 of the United States Code, asserting that Defendants John Cook and Evolve, Inc. (“Defendants”) have been and continue to infringe U.S. Patent No. 6,491,607 (“the '607 patent”). Plaintiffs also bring claims under the Lanham Act as set forth in Title 15 of the United States Code, asserting that Defendants have been and continue to commit trademark infringement, trademark dilution, false designation of origin, passing off, reverse passing off, misrepresentation, false advertising, and unfair competition with respect to U.S. Trademark No. 2,724,069 for the mark LOUIE SIMMONS (“LOUIE SIMMONS”), U.S. Trademark No. 2,935,589 for the mark WESTSIDE BARBELL (“WESTSIDE BARBELL”) and U.S. Trademark No. 3,258,406 for the mark REVERSE HYPER (“REVERSE HYPER”). Plaintiffs also bring claims under Ohio law, asserting that Defendants have been and continue to infringe Plaintiff's trademarks and violate the Ohio Deceptive Trade Practices Act, and have committed breach of contract by failing to pay royalties under a license agreement. Defendants bring declaratory judgment counterclaims alleging non-infringement of the '607 patent, invalidity of the '607 patent and non-infringement of the LOUIE SIMMONS, WESTSIDE BARBELL and REVERSE HYPER marks. Defendants also bring a counterclaim of abuse of process. This matter is before the Court on the motion for summary judgment filed by Defendants seeking dismissal of the patent-related claims, dismissal of the trademark-related claims, and dismissal of John Cook as a defendant. For the reasons that follow, the Court grants Defendants' summary judgment motion with respect to Plaintiffs' patent claims, but denies summary judgment with respect to Plaintiffs' trademark claims.

I. PARTIES AND JURISDICTION

Plaintiff Louis (Louie) Simmons (“Simmons”) is an individual, a citizen of the United States and of the State of Ohio, residing in Grove City, Ohio. Plaintiff Tee and Ell Weight Lifting and Exercise Enterprises, Inc. (“Tee and EN”) is an Ohio corporation with its principal place of business in Grove City, Ohio. Simmons is the assignee and owner of the '607 patent and is a statutory agent of Tee and Ell. Defendant Evolve, Inc. (“Evolve”) is an Ohio Corporation with its principal place of business in Akron, Ohio. Defendant John Cook (“Cook”) is an individual residing in Akron, Ohio.

Plaintiffs bring this action against Defendants pursuant to the patent laws as set forth in Title 35 of the United States Code, 35 U.S.C. § 1 et seq. Plaintiffs also bring this action against Defendants pursuant to the Lanham Act as set forth in Title 15 of the United States Code. 15 U.S.C. § 1051, et seq. Further, Plaintiffs assert claims under Ohio trademark law as set forth in Ohio Rev.Code §§ 1329.54-1329.67, Ohio's Deceptive Trade Practices Act as set forth in Ohio Rev.Code § 4165.01 et seq. , and the Ohio common law of service marks, trademarks, and contracts. The Court has jurisdiction over the patent claims pursuant to 28 U.S.C. § 1331 and 28 U.S.C. § 1338(a), the federal trademark claims pursuant to 15 U.S.C. § 1121, 28 U.S.C. § 1331 and 28 U.S.C. § 1338(a), and has supplemental jurisdiction over the state law claims pursuant to 28 U.S.C. § 1367.

II. FACTUAL BACKGROUND

Simmons is a well-known power lifter and strength coach, and is one of only six lifters to total Elite in five weight classes and is the only lifter over 50 years of age to squat 920 pounds and to total lift 2,100 pounds. Simmons has been a strength coach for twenty-five World and National lifting champions, twenty-seven lifters who total lifted 2,000 pounds, the Cleveland Browns, the Green Bay Packers, the New England Patriots, the Seattle Seahawks, and various college football teams and individual athletes. He also helped train Butch Reynolds in breaking the record for the 400 meter dash.

After sustaining a back injury, Simmons co-invented exercise machines that allow a person to lift weights and rehabilitate the back without back surgery, and was a named co-inventor on the '607 patent, issued December 10, 2002. The machine protected by the '607 patent is appropriate for commercial gyms and professional training rooms, but not for residential usage because it cannot be folded and because of its size. Additionally, the United States Patent and Trademark Office (“USPTO”) issued the LOUIE SIMMONS mark on June 10, 2003 and the WESTSIDE BARBELL mark on March 29, 2005, both of which are currently owned by Tee and Ell. The USPTO also issued the REVERSE HYPER mark, which is currently owned by Simmons, on July 3, 2007. Plaintiffs have marketed and sold the exercise machine protected by the '607 patent in association with these marks. Simmons developed a relationship with Cook for further development and marketing of these exercise machines.

Since 2005, however, Cook began development of a competing device tailored to residential usage, the CorEvolution machine, for which he eventually obtained a patent. Cook helped found Evolve and Evolve Projects, L.L.C. (“Projects”), for which Cook is now president, one of several owners, and an employee. With the help of Projects, Cook currently markets the CorEvolution machine through infomercials throughout the United States. Projects asked Simmons to appear in at least one such infomercial to endorse the CorEvolution machine. Simmons voluntarily agreed to appear, and in a written contract-the Testimonial Authorization and Release “B” (“Testimonial Authorization contract”)-waived various rights associated with his appearance in the infomercial.¹ Simmons' statements made therein constitute the principal trademark uses upon which Plaintiffs' trademark-related claims are based.

On December 12, 2005, Simmons and Tee and Ell as Licensors and Evolve as Licensee entered into a written “Exclusive Patent License and Trademark License Agreement” (the “License Agreement”).² The License Agreement provides a license for the use of the “Licensed Patents”-the ‘' 607 patent and Plaintiffs' U.S. Patent Application 11/218,369 (“the '369 application”)-and the LOUIE SIMMONS, WESTSIDE BARBELL and REVERSE HYPER marks. A “Licensed Machine” is defined as “an exercise machine for the lower back that is (1) covered in whole or in part, by any claim in the Licensed Patents, and (2) adapted for residential use by modifications that allow it to be folded and stowed.” The clause “(1) covered, in whole or in part, by any claim in the Licensed Patents” refers to devices that contain all the elements of any claims of the ' 607 patent or any potentially issued claims of the '369 application. This license grant is further limited to sales “only through fulfillment of customer orders placed through television commercials.” Finally, the License Agreement provides for a “Patent Royalty” payment by Licensee to Simmons for all Licensed Machines sold or leased by Licensee.

Defendants informed Simmons of their opinion that the CorEvolution machine was not a Licensed Machine and that they had never used the LOUIE SIMMONS, WESTSIDE BARBELL or REVERSE HYPER marks in connection with sales of the CorEvolution machine. Defendants therefore claimed that the License Agreement was inapplicable to any actions related to the CorEvolution machine and never made any royalty payments in accordance with the License Agreement. Subsequent negotiations failed, and Plaintiffs terminated the license, alleging that Defendants defaulted on the License Agreement by failing to pay royalties based on their sales of the CorEvolution Machine. Plaintiffs then filed this action.

A. '607 Patent

1. Overview

The '607 patent is entitled “Apparatus and method for lower back exercise.” The patent was awarded to Simmons, Allen Johnson and George Johns, and is currently assigned to Simmons. The patent specification discloses an exercise apparatus having a body support platform on which a user lies face downward with legs extending downward. A pendulum is vertically suspended below the person, with the lower portion of the pendulum having a sleeve slidably engaged with the pendulum. The sleeve is also pivotably connected to a resistance transfer apparatus, on which the user's legs are retained. The exercise raises the user's legs from a vertical rest position to a horizontal position, and then lowers the legs from the horizontal position through and past the vertical rest position in a total motion greater than 90 degrees. The body support platform may be adjusted to various angles with respect to the horizontal, and weights may be added to the pendulum.

Figure 1 of the patent shows a drawing representative of the exercise apparatus.

'607 Patent, Fig. 1.

2. Prosecution History

The application which resulted in the '607 patent was filed on March 6, 2001. The application set forth twenty claims. In a non-final office action, the Examiner rejected application claims 1-4, 7-10, 12, 18 and 19, objected to application claims 5, 6, 11, 13-15 and 20, and allowed application claims 16 and 17.

Application claims 1-2 and 18-19 were rejected under 35 U.S.C. § 102(b) as anticipated by the Simmons patent, U.S. Patent No. 5,356,359 (“Simmons ' 359”)....