E-Z Bowz v. Professional Product Research Co., Inc.
| Decision Date | 05 September 2003 |
| Docket Number | 00 Civ. 8670 (LTS) (GWG). |
| Parties | E-Z BOWZ, L.L.C., Plaintiff, v. PROFESSIONAL PRODUCT RESEARCH CO., INC., Defendant. PROFESSIONAL PRODUCT RESEARCH CO., INC., Third-Party Plaintiff, v. DEBORAH LEA CAVENDER, et al., Third-Party Defendants. |
| Court | U.S. District Court — Southern District of New York |
Plaintiff E-Z Bowz, L.L.C. ("E-Z Bowz") brought this suit against defendant Professional Product Research Co., Inc. ("PPR") for patent infringement, trade dress infringement and common law unfair competition. In response, PPR filed a counterclaim and third-party complaint raising claims of antitrust violations, unfair competition, fraud, trade libel, and tortious interference with business relations. PPR has sought a judgment declaring that E-Z Bowz's patents are invalid and that PPR did not infringe upon E-Z Bowz's patents or trade dress. PPR has moved to dismiss the patent infringement claim for failure to join an indispensable party and the trade dress claim for failure to state a claim. In addition, PPR has moved for summary judgment dismissing both the patent and trade dress infringement claims. For its part, E-Z Bowz has moved to dismiss all of PPR's counterclaims, with the exception of the declaratory judgment claim. In addition, E-Z Bowz has moved for summary judgment dismissing the same claims.
For the reasons stated below, PPR's motion for summary judgment dismissing the patent claims should be granted in part and denied in part. PPR's motion for summary judgment dismissing E-Z Bowz's trade dress claims should be denied. In addition, E-Z Bowz's motion for summary judgment should be granted.
The Court is issuing two other Report and Recommendations today. One addresses the third-party defendants' motion to dismiss PPR's third-party complaint for lack of personal jurisdiction. The other addresses PPR's motion to dismiss the complaint for failure to join an indispensable party.
In 1993, Deborah Lea Cavender ("Cavender") worked at a company named The Ribbon Outlet. Statement of Material Undisputed Facts, dated January 17, 2003 ("Def. 56.1 Statement") , ¶ 1; E-Z Bowz' Response to PPR's Statement of Material Undisputed Facts, filed February 6, 2003 (Docket #125) ("Pl. 56.1 Resp."), ¶ 1. On or about July 22, 1993, Cavender's father, James Teffeteller, developed a prototype of a bow making machine. Def. 56.1 Statement ¶ 2; Pl. 56.1 Resp. ¶ 2. Cavender began selling a bow making machine on November 18, 1993. Def. 56.1 Statement ¶ 5; Pl. 56.1 Resp. ¶ 5.
On October 7, 1993, Cavender and Tina Lucille Benton Slater filed United States Patent Application Serial Number 08/133,618 (the "`618 Application"). Def. 56.1 Statement ¶ 6; Pl. 56.1 Resp. ¶ 6. The United States Patent and Trademark Office ("USPTO") denied the `618 Application a number of times. Def. 56.1 Statement ¶ 7; Pl. 56.1 Resp. ¶ 7. On or about November 29, 1993, E-Z Bowz, Inc. was incorporated under the laws of the State of Tennessee. Def. 56.1 Statement ¶ 3; Pl. 56.1 Resp. ¶ 3. Cavender and her husband, Art Cavender, are the sole owners and officers of E-Z Bowz, Inc. Def. 56.1 Statement ¶ 4; Pl. 56.1 Resp. ¶ 4.
On January 11, 1995, Cavender filed U.S. Patent Application Serial Numbers 08/371,295 (the "`295 Application") and 29/033,379 (the "`379 Application"). Def. 56.1 Statement ¶¶ 9, 11; Pl. 56.1 Resp. ¶¶ 9, 11. Both applications were filed as continuations in part of the `618 Application. Def. 56.1 Statement ¶¶ 9, 11; Pl. 56.1 Resp. ¶¶ 9, 11. The `295 Application was eventually granted and became United States Utility Patent 5,617,979 (the "`979 Patent") on April 8, 1997. Def. 56.1 Statement ¶ 10; Pl. 56.1 Resp. ¶ 10. The `379 Application was also granted and became United States Design Patent 364,733 (the "`733 Patent") on April 8, 1997. Def. 56.1 Statement ¶ 12; Pl. 56.1 Resp. ¶ 12.
On November 2, 1995, Cavender and Slater jointly filed United States Design Patent Application Serial Number 29/045,935 (the "`935 Application"). Def. 56.1 Statement ¶ 13; Pl. 56.1 Resp. ¶ 13. The `935 Application claimed to be a continuation in part of the `379 Application and the `618 Application, but did not claim to be a continuation in part of the `295 Application or the `979 Patent. Def. 56.1 Statement ¶ 13; Pl. 56. 1 Resp. ¶ 13. The `935 Application was granted and matured into United States Design Patent 389,998 (the "`998 Patent") and was issued on February 3, 1998. Def. 56.1 Statement ¶ 14; Pl. 56.1 Resp. ¶ 14.
On May 15, 1995, E-Z Bowz, L.L.C. was formed. Def. 56.1 Statement ¶ 15; Pl. 56.1 Resp. ¶ 15. The original members of this limited liability company were Cavender, Slater and E-Z Bowz, Inc. Def. 56.1 Statement ¶ 16; Pl. 56.1 Resp. ¶ 16. PPR contends that at present Cavender and her husband, Mr. Cavender, are the sole members and owners of E-Z Bowz, L.L.C. Def. 56.1 Statement ¶ 17, although E-Z Bowz disputes this allegation. See Pl. 56.1 Resp. ¶ 17. The parties agree that Cavender has served as the President of E-Z Bowz, L.L.C, while Mr. Cavender has served as the company's Chief Operating Officer. Def. 56.1 Statement ¶¶ 18, 19; Pl. 56.1 Resp. ¶¶ 18, 19.
In 1993 Cavender and Slater allegedly sold approximately 15,000 bow makers. Defendant and Counter-Plaintiff Professional Product Research Co. Inc.'s First Amended Counterclaims and Third-Party Complaint, filed December 12, 2001 (Docket #43) ("PPR Complaint"), ¶ 17. Mr. Cavender joined E-Z Bowz, Inc. in 1994 and created a craft business around the bow maker. Id. ¶ 19.
On November 18, 1996, a distributor of the E-Z Bowz bow maker, C.M. Offray & Son, Inc. ("Offray"), wrote to the Cavenders enclosing an advertisement for a bow making product. See Letter to Art and Lea Cavender from Regina Benn LoPresti, Vice President of Marketing, C.M. Offray & Son, Inc., dated November 18, 1996 (reproduced in Memorandum of Law of Plaintiff and Counter-Defendant E-Z Bowz, L.L.C. and Third-Party Defendants, Arthur and Lea Cavender, E-Z Bowz, Inc. and E-Z Crafts, L.L.C., in Opposition to the Motion for Partial Summary Judgment of Defendant and Counter-Plaintiff, Professional Product Research Co., Inc., filed February 6, 2003 (Docket #123) ("Pl. Opp. Mem."), Ex. C). The device, called "Create-A-Bow," consisted of a stand and two upright members and sold for $5. See id. at 2. The device looked so similar to the E-Z Bowz bow maker that Barry Sokol, Offray's Vice President of Sales, thought that Cavender had "knocked . . . off" the E-Z Bowz bow maker. See Deposition of Barry S. Sokol, dated September 12, 2002 , at 36. In addition, E-Z Bowz was contacted by their manufacturer and customers about the "Create-A-Bow" maker. See Declaration of Deborah Lea Cavender in Support of Opposition to Professional Product Research Co., Inc.'s Motion for Partial Summary Judgment, dated February 6, 2003 (Docket #124) ("Cavender Decl."), ¶ 35.
At some point thereafter, E-Z Bowz determined that the "Create-A-Bow" bow maker was made by PPR. E-Z Bowz wrote a letter to PPR asking that it cease and desist from selling the "Create-A-Bow." PPR, however, refused and E-Z Bowz subsequently filed this lawsuit.
E-Z Bowz filed suit against PPR in the United States District Court for the Eastern District of Tennessee on March 8, 1999. See Complaint for Damages and Injunction for Unfair Competition and Related Claims, filed March 8, 1999 (Tenn. Docket #1). The original complaint alleged claims of unfair competition and trade dress infringement under the Lanham Act, common law unfair competition and patent infringement of both a utility and design patent. See id. ¶¶ 5-23. PPR then filed a motion to dismiss for lack of jurisdiction under Fed. R. Civ. P. 12(b)(2), improper venue under Fed. R. Civ. P. 12(b)(3), insufficient process under Fed. R. Civ. P. 12(b)(4), and improper service under Fed. R. Civ. P. 12(b)(5). See Motion to Dismiss under Rule 12(b)(2)-(5) F.R.C.P. or, Alternatively, Motion to Transfer under 28 U.S.C. § 1404, filed April 13, 1999 (Tenn. Docket #3). In the alternative, PPR asked for the case to be transferred to the Southern District of New York. See id.
E-Z Bowz filed an amended complaint on September 20, 1999 alleging trade dress infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a), common law unfair competition, and infringement of the `998 and the `979 Patents. See Amended Complaint for Damages and Injunction for Unfair Competition and Related Claims, filed September 20, 1999 (Tenn. Docket #26) ("Am. Compl."). The amended complaint sought to enjoin PPR's alleged infringement of E-Z Bowz's bow maker and sought an accounting and award of damages. See id. ¶ 25. On March 21, 2000, PPR filed an additional motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(7) for failure to join Slater as an indispensable party. See Memorandum in Support of Defendant's Motion to Dismiss under Rule 12(b)(7) for Failure to Join an Indispensable Party under Rule 19, F.R.C.P., filed March 21, 2000 (Tenn. Docket #52).
On October 30, 2000, the Tennessee district court held that it lacked personal jurisdiction over PPR and ordered the case transferred to this Court. See Memorandum Opinion, filed October 30, 2000 (Tenn. Docket #66), at 10-11.
Following the transfer, PPR filed a motion to dismiss, or in the alternative summary judgment, on April 3, 2001. See Notice of Motion, filed April 3, 2001 (Docket #17). PPR sought dismissal of the trade dress claim on the ground that E-Z Bowz could not demonstrate secondary meaning in its trade dress and because the elements of its trade dress were functional....
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