Gregory A. Thompson v. Michael D. Frede, 2022AP001041

Background

Plaintiff Gregory Thompson founded StorageShopUSA, developing and selling condominium storage units and using certain photographs and a development manual in marketing.
Defendant Michael Frede received Thompson’s manual and plans, then independently purchased land, hired his own architect, obtained permits, oversaw construction, and marketed his own storage-condo development.
In marketing, Frede used photographs of Thompson’s storage units and referenced his prior affiliation with Thompson; Thompson sued alleging trade secret misappropriation, common-law trademark and trade dress infringement (unfair competition), misappropriation, and unjust enrichment.
The circuit court denied Thompson’s partial summary judgment motion (finding factual dispute on distinctiveness/secondary meaning and misappropriation) but later granted Frede’s summary judgment motion, holding: no trade secrets, the photos were not inherently distinctive nor shown to have secondary meaning (thus not protectable trademark or trade dress), misappropriation failed because Frede independently developed his project, and unjust enrichment failed accordingly.
Thompson appealed the adverse summary judgment rulings; the Court of Appeals affirmed the circuit court’s grant of summary judgment for Frede and the denial of Thompson’s partial summary judgment motion.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether law-of-the-case or judicial estoppel barred Frede’s later summary-judgment motion after denial of Thompson’s partial SJ	Denial of his partial SJ created binding factual/legal determination preventing later SJ for Frede	Positions were consistent; law-of-the-case inapplicable because prior ruling was trial-court, and judicial estoppel elements not met	Court: law-of-the-case doesn't apply; judicial estoppel not shown; Frede’s SJ permitted
Whether the disputed photographs/trade dress are a valid trademark (inherent distinctiveness or secondary meaning)	Photos and long use/supporting web presence establish secondary meaning and protectability	Photos are generic/neutral and Thompson offered no direct or sufficient circumstantial evidence of secondary meaning	Court: photos not inherently distinctive and no admissible evidence of secondary meaning; no protectable trademark
Whether the photos/trade dress are protectable trade dress	Trade dress protection applies if design is distinctive/nonfunctional; Thompson argued his images identify his source	Photos are commonplace, not distinctive; Thompson failed to show secondary meaning; functionality not proved	Court: photos not protectable trade dress (no distinctiveness)
Whether misappropriation and unjust enrichment claims survive where defendant independently created similar product but used plaintiff’s photos	Thompson argued misappropriation and unjust enrichment based on use of his materials and alleged benefit conferred	Frede independently invested time/money, used his own architect, permits, construction, marketing; no secret or exclusive benefit conferred	Court: misappropriation fails because independent creation; unjust enrichment fails because the asserted benefit rested on IP claims that failed

Key Cases Cited

Tews v. NHI, LLC, 330 Wis. 2d 389 (2010 WI 137) (summary-judgment standard and de novo review)
Transportation Ins. Co. v. Hunzinger Constr. Co., 179 Wis. 2d 281 (Ct. App. 1993) (party with burden must show essential elements after discovery)
Echo Travel, Inc. v. Travel Associates, Inc., 870 F.2d 1264 (7th Cir. 1989) (valid trademark requires inherent distinctiveness or secondary meaning)
Madison Reprographics, Inc. v. Cook’s Reprographics, Inc., 203 Wis. 2d 226 (Ct. App. 1996) (adopting Restatement approach to distinctiveness and secondary meaning)
Mercury Record Productions, Inc. v. Economic Consultants, Inc., 64 Wis. 2d 163 (1974) (elements of unfair-competition misappropriation; independent creation is not misappropriation)
Fireman’s Fund Ins. Co. v. Bradley Corp., 261 Wis. 2d 4 (2003 WI 33) (definition and protectability requirements for trade dress)
Gebhardt Bro., Inc. v. Brimmel, 31 Wis. 2d 581 (1966) (elements of unjust enrichment)