Articles Posted in Breach of Contract

Fort Wayne, Indiana – Attorneys for Plaintiff, North American Van Lines, Inc. (“NAVL”) of Fort Wayne, Indiana, filed suit in the Northern District of Indiana alleging that Defendant, Kettering Moving and Storage, Inc. (“Kettering”) of Dayton, Ohio, infringed its United States Trademark Registrations.

 

1

23

NAVL is seeking preliminary and permanent injunctions, profits, actual damages, costs and attorney’s fees, investigatory fees, and further relief the court deems appropriate.

NAVL claims it has been providing transportation services since 1933 and has been using the marks NORTH AMERICAN and NORTH AMERICAN VAN LINES in connection with those services for many years. According to the complaint, there are seven registered marks at issue in this case. NAVL claims it has licensed companies to act as NAVL Agents including the right to use NAVL’s registered marks, but it has been careful in limiting such licensing activities. NAVL asserts that through its use of its registered marks and the control it maintained in their use through licensing agreements, the registered marks have acquired a secondary meaning.

Per the complaint, Kettering provides moving and storage services throughout the world. NAVL claims it had an agency contract with Kettering prior to July 24, 2018 in which Kettering was allowed to use NAVL’s registered marks. However, NAVL asserts that it terminated that relationship through a letter sent to Kettering on July 24, 2018. After being informed Kettering was still utilizing NAVL’s registered marks, NAVL claims it informed Kettering to cease and desist on February 28, 2019. NAVL claims Kettering disregarded this cease and desist and continues to display NAVL’s registered marks on its vehicles and signs.

Continue reading

Judge Cale J. Bradford of the Indiana Court of Appeals issued the Opinion in the case of Heraeus Medical, LLC, Devin Childers, Robert Kolbe (“Kolbe”), James “Worth” Burns, Paul Cruz, and Kyle Kolbe (collectively “Appellants-Defendants”) versus Zimmer, Inc., d/b/a Zimmer Biomet, and Zimmer US, Inc. (collectively “Appellees-Plaintiffs”). The Appellants-Defendants appealed a preliminary injunction issued by the trial court in which Kolbe was ordered to abide by his non-compete and non-solicitation agreement with Zimmer and Heraeus MedicalHeraeus-BlogPhoto-204x300 was ordered to not disclose or use confidential information received from Heraeus GmbH or employ or engage the individual Appellants-Defendants. The Indiana Court of Appeals affirmed in part, reversed in part, and remanded the case with further instructions.

Zimmer Surgical, a subsidiary of Zimmer, Inc. entered into a Distribution Agreement with Heraeus Medical GmbH in January 2012 pursuant to which Heraeus Medical GmbH granted to Zimmer Surgical an exclusive license to distribute, promote, market, and sell specific bone cements (“Palacos”) it manufactured. Zimmer has since allegedly developed its own line of bone cement. On January 3, 2018, within the final year of the initial term of the Distribution Agreement, Heraeus Medical GmbH elected to make the Distribution Agreement non-exclusive for the final year. Heraeus Medical GmbH had, by that point, set up a direct sales force through Heraeus Medical, LLC, which had hired several former Zimmer Biomet employees including the individual Appellants-Defendants in this case.

Appellees-Plaintiffs filed their complaint against the Appellants-Defendants on February 23, 2018 for “(1) breach of contract against the individual defendants; (2) tortious interference with contracts against Heraeus; and (3) and tortious interference with business relationships, civil conspiracy, and unfair competition against all defendants.” Preliminary injunctions to stop violations of the individual non-compete and non-solicitation agreements were also sought at that time.

Terre Haute, Indiana – Attorneys for Plaintiffs, Baskin-Robbins Franchising LLC, and BR IP Holder LLC (collectively “Baskin-Robbins”), both Delaware limited liability companies, filed suit in the Southern District of Indiana alleging that Defendants, Big Scoops Inc. and David M. Glasgow, Jr., both of Terre Haute, Indiana breached their Franchise Agreement with Baskin-Robbins by failing to pay required fees. By continuing to operate, Defendants are infringing Baskin-Robbins’ trade dress and numerous registered trademarks.

logo2Baskin-Robbins Franchising is in the business of franchising independent businesses and people to operate Baskin-Robbins shops in the United States. The “Baskin-Robbins” trade name, trademark, and service mark are owned by BR IP Holder along with other related marks. Since October 14, 2015, Big Scoops has been the owner and operator of a Baskin-Robbins shop located in Terre Haute, Indiana pursuant to a Franchise Agreement with Baskin-Robbins. David M. Glasgow, Jr. personally guaranteed the obligations of Big Scoops under the Franchise Agreement.

Pursuant to its Franchise Agreement, Big Scoops was granted a license to use the trademarks, trade names, and trade dress of Baskin-Robbins, but only in the manner specified in the Franchise Agreement. The fees due to Baskin-Robbins from Big Scoops under the Franchise Agreement included a franchise fee equal to 5.9% of gross sales of the business, an advertising fee equal to 5.0% of gross sales of the business, late fees, interest, and costs on unpaid monies due under the Franchise Agreement, and all sums owing and any damages, interest, costs and expenses, including reasonable attorneys’ fees, incurred as a result of Big Scoops’ defaults. Under the Franchise Agreement, Big Scoops agreed that nonpayment of any of the required fees would be a default, that failure to pay within seven days after receiving written notice would be a continued default, and that receiving three notices of default within a twelve-month period would result in Baskin Robbins having the right to terminate the Franchise Agreement.

Plaintiffs sent Big Scoop three separate notices that it was in default of the Franchise Agreement for nonpayment on June 19, 2018, October 9, 2018, and December 7, 2018. As a result of these defaults and failure to cure after the December 7, 2018 notice, Baskin-Robbins sent Big Scoop a Notice of Termination with respect to the franchised business on February 12, 2019. Since receiving the Notice of Termination, Defendants have continued to operate the Baskin-Robbins shop and have used the Baskin-Robbins marks without authorization. Baskin-Robbins is claiming breach of contract, trademark infringement pursuant to 15 U.S.C. § 1114, unfair competition pursuant to 15 U.S.C. § 1125(a), and trade dress infringement pursuant to 15 U.S.C. § 1125.

Continue reading

Indianapolis, Indiana – Attorneys for Plaintiff, National Federation of Professional Trainers, Inc. (“NFPT”) of Lafayette, Indiana, filedBlogPhoto-300x105 suit in the Northern District of Indiana alleging that Defendant, Carrington College, Inc. (“Carrington”) of Sacramento, California, infringed its rights in United States Copyright Registration No. TX 8-515-798 (“NFPT 0241 Exam”). Plaintiff further alleges misappropriation of trade secrets, breach of contract, and fraud. Plaintiff is seeking damages, profits received from unauthorized copying and distribution of the copyrighted work, attorney’s fees, costs, and injunctive relief.

NFPT creates and administers examinations for the certification of personal trainers. Their certification programs have been accredited by the National Commission for Certifying Agencies since 2005. Carrington has utilized NFPT’s examinations and educational materials as a part of its Physical Therapy Technology Program. At the end of the course, students were able to sit for the NFPT certification exam for the opportunity to become a certified personal trainer upon obtaining a “passing” score.

Carrington administered an NFPT examination December 10, 2015 via their proctor, Mr. Phillip Schauer (“Schauer”). As proctor, Schauer had to sign a confidential disclosure agreement, which included maintaining the confidentiality of the exams and not duplicating any of the testing materials. The December 10, 2015 exam produced extremely abnormal results for the students’ test scores. Of the twenty-six candidates, fifteen had identical or similar response strings while the remaining candidates response strings differed by a maximum of four responses out of 120. All of the candidates obtained a “passing” score. Due to the abnormalities in the results, NFPT voided the results and required all candidates to retake the examination with new questions on August 26, 2016. Only six candidates chose to retake the exam and of those, only two obtained a passing score.

Continue reading

Indianapolis, Indiana – Attorneys for Plaintiff, Re-Bath, LLC, of Phoenix, Arizona originally filed suit in the Marion Superior Court alleging that Defendants, Alternative Construction Concepts, LTD. d/b/a Re-Bath Designs of Indianapolis, of Indianapolis, Indiana, Steven O’Reilley of Indianapolis, Indiana, and DeboBlogPhoto-300x249rah O’Reilley of Indianapolis, Indiana of infringing trademark rights. Plaintiff is seeking a temporary restraining order, preliminary and permanent injunction and all other just and proper relief.

Defendant is a franchisee of Plaintiff’s Phoenix-based business. As part of the franchise agreement, Plaintiff allowed Defendant to use its trademarks, goodwill, concepts, operating systems, confidential information, method of operation and technical expertise and know-how to operate a bathroom remodeling business.

Continue reading

Indianapolis, Indiana – Newton Enterprises Ltd. of Kowloon, Hong Kong filed a lawsuit in the Southern District of Indiana against Defendant Singleton Trading Inc. d/b/a Elama d/b/a Blue Spotlight of Brooklyn, New York asserting patent infringement and breach of contract.

These claims follow earlier litigation against Singleton initiated by Newton in June 2016.  That lawsuit, also filed in Indiana, alleged that Singleton Trading had infringed and/or induced ZoomBike-300x290others to infringe U.S. Patent No. 7,568,720 (the “‘720 patent”) for a “Wheeled Vehicle” with its “Zoom Bike” product.

Newton states that the 2016 action was dismissed without prejudice pursuant to a settlement agreement under which Singleton agreed to compensate Newton for its claims of past infringement and “permanently cease making, using, offering to sell, or selling the Zoom Bike” or any other product that infringed the ‘720 patent.  Under the agreement, Singleton was granted a limited license to sell its remaining inventory.

Newton now returns to the court alleging that Singleton has breached the settlement agreement by selling units of the Zoom Bike exceeding the scope of the limited license.  Newton further contends that this conduct constitutes willful infringement of the ‘720 patent.

This second complaint, filed by an Indiana patent lawyer, lists two counts:

  • Count I: Infringement of ‘720 Patent
  • Count II: Breach of Settlement Agreement

Newton asks the court for a declaration of willful patent infringement; damages, including a trebling of those damages; costs and attorneys’ fees; and injunctive relief.

Continue reading

EconoLodge-Lafayaette-300x170Lafayette, IndianaChoice Hotels International, Inc. of Rockville, Maryland sued in the Northern District of Indiana alleging trademark infringement under federal and Indiana law.

Choice Hotels is in the business of franchising hotels.  It offers hotel and motel services under the following brands: CAMBRIA HOTELS & SUITES®, COMFORT INN®, COMFORT SUITES®, QUALITY®, SLEEP IN®, CLARION®, MAINSTAY SUITES®, SUBURBAN EXTENDED STAY HOTEL®, ECONO LODGE®, and RODEWAY INN®.

At issue in this Indiana trademark litigation is the Econo Lodge family of trademarks.  These trademarks include U.S. Trademark Nos.:

AmericanStructurePointIndianapolis, Indiana – The Indiana Court of Appeals affirmed the judgment of the Marion Superior Court in litigation between two civil engineering firms, Plaintiff American Structurepoint Inc. and Defendant HWC Engineering Inc.  Three former employees of ASI, also listed as Defendants in the trial court, were listed in this appeal.

This dispute arose in 2014 when ASI employee Martin Knowles left ASI to join HWC as its vice president of operations.  Jonathan Day and David Lancet also left ASI to begin employment at HWC.

These former ASI employees had entered into noncompetition and non-solicitation agreements with ASI.  Despite these agreements, ASI contended in a lawsuit filed in Indiana state court that its former employees engaged in various acts prohibited by the agreements.  ASI claimed that Day had created a list of ASI employees whom he believed might be interested in leaving to join HWC.  ASI also asserted that Day subsequently shared that list with Knowles and called various ASI employees regarding employment with HWC.  ASI alleged that a total of six job offers were made by HWC to ASI employees.  ASI further introduced evidence that Knowles engaged in prohibited business-development activities with ASI clients to ASI’s detriment.

Fort Wayne, Indiana – Super 8 Worldwide, Inc. f/k/a Super 8 Motels, Inc. of Parsippany, New Jersey sued in the Northern District of Indiana alleging trademark infringement and other wrongdoings.

Plaintiff Super 8 operates a franchise system for guest lodging.  It claims ownership to the SUPER 8® service mark as well as various related trade names, trademarks and serviceUntitled-1 marks, some of which have been registered with the U.S. Patent and Trademark Office.  It estimates the value of the entity’s goodwill to exceed hundreds of millions of dollars.

In this Indiana intellectual property lawsuit, Super 8 alleges that former franchisees have violated the terms of a franchise agreement entered into with Super 8.  Three Indianapolis Defendants were listed: Auburn Lodging Associates, LLP (“ALA”), Kokila Patel and Dilip Patel.  A fourth Defendant Chicago Capital Holdings, LLC (“CCH”) of Hinsdale, Illinois was also named.

South Bend, Indiana – Copyright lawyers for Plaintiff The Art of Design, Inc. of Elkhart, Indiana filed an intellectual property lawsuit in the Northern District of Indiana. Defendants in this Indiana lawsuit are Pontoon Boat, LLC d/b/a Bennington and Bennington Marine of Elkhart, Indiana and Hawkeye Boat Sales, Inc. of Dubuque, Iowa.

Plaintiff is in the business of custom airbrushing, including the airbrushing of copyrighted art works onto different surfaces. Defendants offer marine goods, including pontoon boats. In 2011, Plaintiff and Bennington entered into an agreement wherein Bennington paid Plaintiff to apply copyrighted graphics, titled “Shatter Graphics,” to a limited number of Bennington’s pontoon boats in exchange for payment.

Plaintiff contends that, following this authorized application of Shatter Graphics to Defendants’ pontoon boats, Defendant made further use of the copyrighted design without Plaintiff’s authorization.

In this Indiana litigation, Plaintiff makes several allegations, including accusing Defendant of copyright infringement for the sale of pontoon boats bearing graphics “that are copied from and substantially similar to” Plaintiff’s Shatter Graphics, which has been registered with the U.S. Copyright Office under Registration numbers VA 1-979-388 and 1-982-002. The lawsuit lists the following claims for relief:

• Count I – Breach of Contract against Bennington
• Count II – Unjust Enrichment against all Defendants
• Count III – Copyright Infringement against all Defendants
• Count IV – Unfair Competition against all Defendants
• Count V – Inducing Copyright Infringement against Bennington

• Count VI – Violations of DMCA, 17 U.S.C. § 1202

Plaintiff is seeking damages, including treble damages, as well as equitable relief, costs and attorneys’ fees.

Practice Tip: Plaintiff’s copyright attorneys also represent frequent litigant Design Basics. We have blogged about Design Basics’ Indiana copyright litigation before. See:

Design Basics Sues Fort Wayne Homebuilders
Creator of Architectural Designs Files Two New Copyright Lawsuits
Design Basics Files Three New Indiana Copyright Lawsuits
Architecture Firms File Four New Infringement Lawsuits
Design Basics Files Two New Copyright Lawsuits
Architecture Firm Files New Lawsuit Asserting Infringement
Design Basics Files Two Additional Infringement Lawsuits in the Northern District
Design Basics Files Additional Indiana Lawsuit

Design Basics Sues Builders and Others Alleging Infringement of Copyrighted Architectural Designs

Continue reading

Contact Information