721 Bourbon, Inc. v. B.E.A., Inc.
2:11-cv-00710
E.D. La.Aug 25, 2011Background
- Eastern District of Louisiana civil action: Tropical Isle sues Turtle Bay et al. for multi-prong IP/trade claims related to Hand Grenade yard cup and cocktail; Turtle Bay and principals counterclaim including copyright infringement and related claims.
- Tropical Isle owns Hand Grenade marks and trade dress, with registrations and ongoing use since 1990s; Hand Grenade served in a distinctive green yard cup.
- Turtle Bay copied or mimicked Hand Grenade elements (cup design and cocktail) and launched The Turtle in 2011 to garner similar consumer goodwill.
- Plaintiff alleges defendants planned to divert business by creating confusion and copying protected trade dress, marks, and confidential information.
- Stock Redemption Agreement exists but is not in the record; it governs releases but its scope is unclear from the record.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Lanham Act claims against Bohannan | Bohannan was a driving force behind infringement | Bohannan lacked authority to bind BEA; limited role | Plaintiff states Lanham Act claims against Bohannan plausibly |
| Trade secret misappropriation under LUTSA | Existence and misappropriation of trade secrets alleged | Disclosure by Bohannan not shown; issues for later | Court finds LUTSA claim adequately stated against Bohannan at pleading stage |
| Unfair trade practices under UTPCPL | UTPCPL applies to misappropriation and deceptive practices | UTPCPL requires proof of improper acts; not dismissed | Court allows UTPCPL claim to proceed against Bohannan |
| Breach of obligation (Stock Redemption Agreement) | Agreement covers conduct and breaches; scope unclear | Cannot determine breach without contract terms in record | Breach claim cannot be resolved at this stage; depends on agreement terms |
| Tortious interference with business relations | Defendants interfered with business by copying and diverting customers | Malice element not pled; need more facts | Tortious interference claim survives; malice not conclusively shown at pleading stage |
Key Cases Cited
- ICEE Distrib., Inc. v. J & J Snack Foods Corp., 445 F.3d 841 (5th Cir. 2006) (trademark fair use and confusion standards; public interest protections)
- Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2010) (trade dress protection; scope of protection consistent with unfair competition)
- Bd. of Supervisors for Louisiana State Univ. Agricultural & Mechanical College v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008) (ownership and likelihood of confusion elements for trademark claims)
- Reingold v. Swiftships, Inc., 126 F.3d 645 (5th Cir. 1997) (UTPCL context; caution on policy considerations in unfair practices claims)
- Boston Prof’l Hockey Ass’n v. Dallas Cap & Emblem Mfg. Co., 510 F.2d 1004 (5th Cir. 1975) (unfair competition requires misrepresentation or association confusion)
- Chevron Chem. Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695 (5th Cir. 1981) (unfair competition standard; likelihood of confusion and misrepresentation elements)