Vital Pharm., Inc. v. Monster Energy Co.
| Decision Date | 03 August 2021 |
| Docket Number | CASE NO. 19-60809-CIV-ALTMAN/Hunt |
| Citation | 553 F.Supp.3d 1180 |
| 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 |
Capri Trigo, Gordon & Rees LLP, MIami, FL, Matthew Thomas Davidson, Vital Pharmaceuticals, 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, Gregory N. Brescia, Pro Hac Vice, Gordon Rees Scully Mansukhani LLP, Harrison, NY, JoAnna Doherty, Pro Hac Vice, Gordon Rees Scully Mansukhani LLP, New York, NY, 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, Francis Massabki, Francis Massabki, P.A., Miami Beach, FL, for Plaintiff/Counterclaim-Defendant.
Andrew R. Schindler, Gordon Rees Scully Mansukhani, Miami, FL, Capri Trigo, Gordon & Rees LLP, MIami, 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, 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, Moez M. Kaba, Pro Hac Vice, Hueston Hennigan 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 Defendant/Counterclaimant/Crossclaimant Monster Energy Company.
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 Defendant/Counterclaimant/Crossclaimant Reign Beverage Company, LLC.
Monster and VPX compete in the energy-drink market.1 Through this lawsuit, VPX took its war with Monster—previously waged in the marketplace—into the courts, seeking to drive its rival's competing energy drink out of business. To that end, VPX brought a trade-dress claim, alleging that Monster's Reign energy drink infringes on its Bang energy drink. The two beverages are pictured below:
Following a round of heated motions practice, we denied Monster's motion for summary judgment on VPX's trade-dress claim, explaining that—at that stage—we could not resolve the many (factual) disputes that lurked just beneath the surface. And so, the bench trial came. Over nine long days, we heard directly from the parties’ witnesses, examined hundreds of energy-drink cans, and entertained hours of argument from counsel. In the end, this case simply wasn't close.
For one thing , VPX couldn't establish that its trade dress was entitled to protection. It couldn't show, for instance, that the Bang can—which closely resembles the iconic (and original) Monster Energy drink—is inherently unique or distinctive. Nor could it show that its trade dress carries any secondary meaning in the minds of consumers. Indeed, VPX opened the trial by revealing a shocking (and entirely new) theory: that Monster had stolen the precise colors Bang had used in its cans—down to the very last shade—in a craven effort to pass its product off as Bang's. By the end, though, VPX's copied-paint theory had been totally debunked—and its case was left in shambles.
For another , VPX failed to show that consumers are likely to confuse Reign with Bang. The two drinks, after all, incorporate significant differences—starting with their names and logos—which allow consumers to easily distinguish between them in a crowded marketplace of black energy drinks. On top of that—despite selling millions of Bang cans and conducting a (half-hearted) survey—VPX ended up presenting no evidence of actual confusion. And so, today—after a hard-fought case—we enter FINAL JUDGMENT for Monster.
1. Monster is a global force in the energy-drink market. In 2002, Monster launched its iconic Monster Energy drink. See Tr. at 327:14–16.2 Monster Energy is a "traditional" energy drink, containing 160 mg of caffeine and over 50 g of sugar. Id. at 351:18–25, 1123:2–3. The Monster Energy drink comes in a 16-ounce black can with Monster's M-Claw icon appearing at the can's center in a bright, contrasting green color. The can looks like this:
See Ex. D-330.
2. Over time, Monster expanded its Monster Energy drink line by introducing a wide variety of new flavors. See Tr. at 333:20–335:5. These new cans (shown below) sport a contrasting, flavor-dependent, brightly-colored M-Claw logo set against a black background:
See Ex. D-448.
3. Monster Energy has become the best-selling energy drink in the United States by unit sales and dollar volume. See Tr. at 344:19–20. Monster sells over three billion cans of Monster Energy per year, totaling annual gross sales of over $3 billion, with an annual retail value of over $6 billion. Id. at 343:19–25, 344:1–9. Since the brand's inception, Monster has spent well over $7 billion in advertising. Id. at 345:5–11.
4. VPX is also a leader in the energy-drink market. VPX released its Bang energy drink in 2008. Id. at 1028:18–1029:1. As Bang grew as a brand, its labeling evolved. In fact, VPX has used at least five different Bang labels over the years. See Ex. D-46 ().
5. When VPX first introduced Bang, the drink hardly resembled its modern form. VPX sold it as an uncarbonated beverage marketed in a plastic bottle with the blue and red packaging pictured below, see Tr. 1028:18–1029:18:
See Ex. D-46 at 1.
6. In 2012, VPX, for the first time, introduced a carbonated beverage in a can. See Tr. at 1029:20–1030:8. These cans featured different flavor-dependent colors. See Ex. D-46 at 5–9. This later version of Bang—which likewise looked nothing like the modern version—looked like this:
Id.
7. In 2015, moving towards something much closer to its current label, VPX transitioned to the following design, which incorporates—most notably—its "b" logo:
See Ex. D-46 at 13; see also Tr. at 1043:24–1045:11.
8. In 2017, VPX changed its Bang packaging again, this time adding—among other things—a colored band along the top of the can and a silver "U" shape at the bottom, see Tr. at 1140:10–1141:1, the latter of which is now one of the most dominant and distinctive features of the label. Here's that can:
See Ex. D-46 at 18.
9. And, in 2019—about when it filed this case—VPX released the can it uses today. See Tr. at 1146:10–17. In this version, VPX changed "BCAA Aminos" across the top of the can to "EAA Aminos" and added a contrasting color line both beneath the top-colored band and around the "b" logo. See Ex. D-46 at 45. As with previous iterations of the label, the colors on the can represent different flavors. See Tr. at 1164:3–5. VPX has no registration for this trade dress. See Joint Pretrial Stipulation [ECF No. 342] at 8. Here are pictures of the final design:
10. While it's clear that VPX asserts trade-dress rights in these black-background cans, VPX has been inconsistent about how it defines that trade dress. In its complaint, VPX defined its trade dress as including the following features on a 16-ounce black can:
11. In this definition, VPX excluded certain prominent...
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