Innovation Ventures, LLC v. N2G Distributing, Inc.
779 F. Supp. 2d 671
E.D. Mich.2011Background
- Innovation Ventures marketed the 5-Hour Energy energy shot beginning in 2004 with red-yellow-black trade dress and a silhouetted climber image.
- Plaintiff sought federal trademark protection but the USPTO found the mark merely descriptive, registering it instead on the supplemental register.
- Defendants released a competing product, 6 Hour Energy Shot, in March 2008 with packaging that closely resembled Innovation's in color scheme, imagery, and cautionary language.
- Plaintiff filed suit on March 7, 2008 alleging trademark and trade dress infringement, false advertising, and counterfeiting; Defendants counterclaimed for tortious interference, Michigan Consumer Protection Act violation, and declaratory relief on noninfringement.
- The court previously issued a preliminary injunction in April 2008 directing Defendants to cease use of the 5-Hour Energy trade dress or confusingly similar packaging.
- Plaintiff moved for summary judgment on secondary meaning and copyright infringement, seeking dismissal of counterclaims I–IV; the court granted in part and denied in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Has 5-Hour Energy acquired secondary meaning? | 5-Hour Energy has acquired distinctiveness through surveys, advertising, and market presence. | Descriptive term’s secondary meaning is not proven; copying alone does not prove secondary meaning. | Yes; 5-Hour Energy found to have acquired secondary meaning. |
| Is Defendants' packaging and cautionary statement infringing copyright? | Defendants copied the medical cautionary statement and thus infringed. | Any similarities are independent derivations or non-infringing. | Yes; Defendants copied the cautionary statement, constituting copyright infringement. |
| Should Counterclaims I–IV be resolved in Plaintiff's favor on summary judgment? | Counterclaims I–IV lack proof of damages or misrepresentation; they fail as a matter of law. | There are triable issues of fact regarding interference and MCPA conduct. | Denied; the court denied summary judgment on Counterclaims I–IV. |
Key Cases Cited
- DeGidio v. West Group Corp., 355 F.3d 506 (6th Cir. 2004) (factors for acquired distinctiveness (secondary meaning))
- William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (Supreme Court 1924) (descriptive names and descriptive use; limits on exclusivity)
- Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002) (evidence of similarities supporting copying in trade dress)
- General Motors Corp. v. Lanard Toys Corp., 468 F.3d 409 (6th Cir. 2006) (recognition of consumer confusion and survey weight in similarity cases)
- Lexmark International, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004) (copyright infringement framework requiring copying of protected elements)