Vital Pharm., Inc. v. Monster Energy Co.

• Decision Date: 06 July 2020
• Docket Number: CASE NO. 19-60809-CIV-ALTMAN/Hunt
• Citation: 472 F.Supp.3d 1237
• Parties: VITAL PHARMACEUTICALS, INC., d/b/a VPX Sports, a Florida Corporation, Plaintiff/Counterclaim-Defendant, v. MONSTER ENERGY COMPANY, a Delaware corporation, and Reign Beverage Company, LLC, a Delaware limited liability company, Defendants/Counterclaimants. Monster Energy Company, a Delaware corporation, and Reign Beverage Company, LLC, a Delaware limited liability company, Crossclaimants, v. JHO Intellectual Property Holdings, LLC, a Florida limited liability company, Crossclaim-Defendant.
• Court: U.S. District Court — Southern District of Florida

472 F.Supp.3d 1237

VITAL PHARMACEUTICALS, INC., d/b/a VPX Sports, a Florida Corporation, Plaintiff/Counterclaim-Defendant,

v.MONSTER ENERGY COMPANY, a Delaware corporation, and Reign Beverage Company, LLC, a Delaware limited liability company, Defendants/Counterclaimants.

Monster Energy Company, a Delaware corporation, and Reign Beverage Company, LLC, a Delaware limited liability company, Crossclaimants,

v.JHO Intellectual Property Holdings, LLC, a Florida limited liability company, Crossclaim-Defendant.

CASE NO. 19-60809-CIV-ALTMAN/Hunt

United States District Court, S.D. Florida.

Signed July 6, 2020

Filed July 7, 2020

Capri Trigo, Gordon & Rees LLP, Miami, FL, Erica W. Stump, Erica W. Stump, P.A., Fort Lauderdale, FL, Marc Jay Kesten, Matthew Thomas Davidson, Vital Pharmeceuticals Inc., Weston, FL, Susan B. Meyer, Pro Hac Vice, Gordon Rees Scully Mansukhani LLP, San Diego, CA, Andrew R. Schindler, Gordon Rees Scully Mansukhani, Miami, FL, Michael D. Kanach, Pro Hac Vice, Gordon Rees Scully Mansukhani LLP, San Francisco, CA, Patrick J. Mulkern, Pro Hac Vice, Gordon Rees Scully Mansukhani LLP, Glastonbury, CT, Sara Anderson Frey, Pro Hac Vice, Gordon Rees Scully Mansukhani LLP, Philadelphia, PA, Stephen D. Milbrath, Byrd Campbell P.A., Winter Park, FL, Francis Massabki, Francis Massabki, P.A., Miami Beach, FL, for Plaintiff/Counterclaim-Defendant.

Capri Trigo, Gordon & Rees LLP, Miami, FL, Erica W. Stump, Erica W. Stump, P.A., Fort Lauderdale, FL, Francis Massabki, Francis Massabki, P.A., Miami Beach, FL, Matthew Thomas Davidson, Vital Pharmaceuticals, Inc., Weston, FL, Michael D. Scully, Pro Hac Vice, Gordon Rees Scully Mansukhani, LLP, San Diego, CA, Peter George Siachos, Pro Hac Vice, Gordon Rees Scully Mansukhani, Florham Park, NJ, Stephen D. Milbrath, Byrd Campbell P.A., Winter Park, FL, for Crossclaim-Defendant.

Brian Joseph Stack, Robert Harris, Stack Fernandez & Harris, P.A., Miami, FL, Hans L. Mayer, Pro Hac Vice, Ioanna S. Bouris, Pro Hac Vice, Knobbe Martens Olson & Bear LLP, Los Angeles, CA, Brian C. Horne, Jacob R. Rosenbaum, Joseph R. Re, Lynda J. Zadra-Symes, Steven J. Nataupsky, Brian C. Horne, Pro Hac Vice, Jacob R. Rosenbaum, Pro Hac Vice, Joseph R. Re, Pro Hac Vice, Lynda J. Zadra-Symes, Pro Hac Vice, Sean M. Murray, Pro Hac Vice, Steven J. Nataupsky, Pro Hac Vice, Knobbe Martens Olson & Bear, LLP, Irvine, CA, Carol Pitzel Cruz, Pro Hac Vice, Knobbe Martens Olson & Bear LLP, Seattle, WA, Sammy Epelbaum, Stack Fernandez & Harris, Brickell, FL, for Defendants/Counterclaimants/Crossclaimants.

Before the Hon. Roy K. Altman:

ORDER ¹

ROY K. ALTMAN, UNITED STATES DISTRICT JUDGE

Monster Energy Company and Reign Beverage Company LLC (collectively, "Monster") compete with Vital Pharmaceuticals, Inc. ("VPX") in the energy drink market. Through this action, VPX challenges Monster's sale of an energy drink called "Reign." VPX does this in two ways: First , VPX contends that Monster's Reign infringes on the trade dress for its own Bang energy drink. Second , VPX argues that Monster's Reign impinges on its registered REIGN trademark. In response, Monster counterclaims that, in fact, it is VPX that has infringed on its REIGN mark. After a long, hard-fought litigation, Monster moved for summary judgment on both the trade dress and trademark claims. This Order follows.

THE FACTS

In 2002, Monster launched its Monster Energy drink. See Statement of Material Facts [ECF No. 243] ("SOMF") ¶ 27. Since its inception, the original Monster Energy drink has been sold in 16-ounce black cans with Monster's M-Claw icon appearing in the can's center in a contrasting green color:

Id. Monster has established itself as the best-selling energy drink in the United States by unit volume and dollar value. Id. ¶ 28.

VPX is also a leading seller of energy drinks. See VPX's Opposition to Summary Judgment [ECF No. 314-1] (the "Opposition") at 2. Since 2012, VPX has distributed and sold its Bang® energy drink nationwide. Id. at 2–3. A Bang can—which has retained the same basic design since October 2015—is pictured below:

Id. at 3.

Monster paints Bang's trade dress as a mere refinement of its original Monster Energy drink. See Motion for Summary Judgment [ECF No. 242] (the "Motion") at 24–27. Both cans, for example, feature bright colors on a black can, the product's name set out horizontally beneath a stylized logo, and certain ingredients listed in capital letters along the rim of the can. Id. Indeed, pointing to the following picture, Monster says that these features have been widely used, not just on its original Monster Energy drink, but in the energy drink industry generally:

See id. at 27.

VPX, on the other hand, contends that Bang has a "unique appearance" that "distinguishes it from all other energy drinks." Opposition at 3. In support of this proposition, Bang points (in part) to comments made by Monster's own employees who have suggested that there is something distinctive about Bang's packaging. Id. at 4. One employee, for instance, noted: "Attached is a line up shot of Bang. They've used powerful color combinations to really pop off shelf. It's definitely working and managed to capture a new consumer base." See Opposition Ex. E. The same employee went on to say that, "[a]s you see with Bang, it's bright and fun but still black, not too hard." Id.

In putting into words what makes Bang "pop" off the shelf, VPX has defined its Bang trade dress as containing the following features set against a 16-ounce black aluminum can:

(a) a contrasting, flavor-dependent, bold, brightly-colored design for the rest of the can on a black background; (b) a large, stylized ‘b’ logo in the same bold, bright color(s) as the rest of the color(s) on the can, appearing horizontally, covering the top portion of the primary panel of the can; (c) the performance ingredients BCAA AMINOS, SUPER CREATINE, and ULTRA COQ10 in all upper case letters spanning the rim adjacent to the top of the can; (d) the product name ‘BANG’ in a stylized font in the same bold, bright color(s) as the rest of the color(s) on the can, appearing horizontally, covering the bottom portion of the primary panel of the can; (e) the tagline, ‘POTENT BRAIN AND BODY FUEL,’ in contrasting white/silver immediately below the product name ‘BANG,’ appearing horizontally covering the bottom portion of the can; (f) the inventive flavor designation in all capital letters in the same bold, bright color(s) as the rest of the color(s) on the can, appearing horizontally, below the tag line in the bottom portion of the can; and (g) the ‘0 CALORIES PER CAN’ designation, outlined in a white box, on the bottom corner of the front of the can.

See SOMF ¶ 35 (emphasis omitted).²

Bang has experienced substantial growth in recent years. Data indicates, for example, that Bang has captured nearly 10% of the energy drink market—with most of that success coming since 2017. See Opposition at 16. Indeed, during the 52-week period ending April 21, 2019, retail sales of Bang in convenience stores, drug stores, grocery stores, and big box stores totaled more than $556 million—or 213 million cans—representing an 855% increase from the previous year. Id. VPX attributes this growth, in large part, to the millions of dollars it has spent on advertising, some portion of which prominently features the Bang trade dress. Id. For instance:

Opposition Ex. CC. And this:

[ECF No. 281-3] at 7.

In February 2018, in the midst of Bang's rapid growth, Monster decided to develop a new line of energy drinks. See SOMF ¶ 1. Following months of research and effort, Monster chose to market these new energy drinks under the name "Reign." Id. In January 2019, Monster publicly announced the launch of its Reign energy drinks. Id. ¶ 2. The announcement was covered by the press, which published pictures of the Reign can. Id. One month later, in February 2019, Monster began commercial sales of Reign. Id. at 3. And, by March 25, 2019, Monster launched the drink nationwide. Id. The current Reign lineup is pictured below:

See Motion at 6.

In VPX's view, Reign is the product of Monster's intentional plot to copy and infringe on Bang's trade dress. See Opposition at 2 (alleging that Monster "recognized the distinctive nature of BANG®’s product packaging and deliberately sought out to copy and infringe on BANG®’s trade dress"). Monster, by contrast, unequivocally denies that it copied the Bang trade dress. See Reply in Further Support of Summary Judgment [ECF No. 284-1] (the "Reply") at 16. From Monster's perspective, VPX's claims are wholly "unsubstantiated" and suggest only that VPX is "conflat[ing] competition for copying." Id.

But VPX has submitted some evidence that Monster's "[o]bjective" in developing Reign was to "compete with Bang," see Opposition Ex. A, and which indicates that Monster used Bang's trade dress for inspiration, see Opposition Ex. E. In fact, while Monster was developing Reign's trade dress, it apparently created electronic lineups in which potential Reign designs were placed alongside Bang cans. See Opposition Ex. P. Through its internal presentations, Monster also instructed its staff that Reign "MUST be touching Bang" in any account that sells Bang. See Opposition Ex. L. And, as it released its new product, Monster referred to Reign as a "BANG killer," Opposition Ex. A, and used slogans such as "FUCK BANG" and "#FBang," Opposition Exs. F, W.

In either event, while VPX excoriates Monster for allegedly copying the Bang trade dress, on March 11, 2019—after Monster began its nationwide Reign rollout—VPX entered into an agreement to purchase the REIGN trademark registration. See SOMF ¶ 4.³ The "Trademark Purchase and Assignment Agreement" purported to transfer the REIGN trademark from Dash, LLC ("Dash") to VPX. See [ECF No. 158], Ex. 10 (the "Assignment Agreement" or, simply, the "Agreement"). This REIGN registration, however, is for "Dietary and nutritional supplements

; Dietary and nutritional supplements used for weight loss; Dietary supplement...