Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Aug. 27, 2012) (St. Eve, J.).
Judge St. Eve denied plaintiff Morningware’s and defendant Hearthware’s cross-motion for summary judgment regarding Morningware’s Lanham Act, Deceptive Trade Practices Act and related state law claims in this Lanham Act and patent infringement case. As an initial matter, the parties’ Local Rule 56.1 statements of fact were deficient in numerous ways:
- Many of both parties’ statements were not properly supported with admissible evidence. Any such “facts” were not deemed true, unless the opposing party admitted them.
- Hearthware’s responses to Morningware’s statements of fact were not properly supported by evidence – a lack of knowledge, unlike in an answer to a complaint, is not sufficient. Any of Morningware’s facts not properly contested were deemed admitted.
- Both parties also failed to cite to the statements of fact in their summary judgment briefing.
The Court excluded the declaration of Hearthware’s expert witness because the witness was not properly disclosed by the expert deadline or otherwise during the years of discovery between the parties. The fact that the expert was originally retained as a consultant does not remove the requirement that the consultant be properly disclosed if the consultant will be turned into a testifying expert.
The Court dismissed without prejudice a motion to strike Hearthware’s allegedly improper expert report regarding damages because it was irrelevant to the motions at issue.
Lanham Act False Representation of Origin
There was no dispute that Morningware’s MORNINGWARE and HALO marks were protectable. Morningware further offered evidence of the necessary likelihood of consumer confusions, but not enough to meet Morningware’s heavy burden to show evidence “so one-sided that there can be no doubt about how the questions should be answered.”
Lanham Act Product Disparagement
The parties agreed that Hearthware’s advertisement stated “The Real NuWave® Oven Pro Why Buy an Imitation? 90-Day Gty”, but whether that was a false statement or misleading was a question of fact. Morningware offered no evidence to prove Hearthware’s statement literally false. Morningware argued that the statement was impliedly false. Morningware relies upon a consumer survey for its proofs. But Hearthware disputed the survey, creating a question of fact. Furthermore, there was a question of fact as to whether the alleged false statement impacted consumers’ purchasing decisions.
State Law Claims
Because the parties agreed that the state law claims rose and fell with the Lanham Act claims, summary judgment was denied as to those claims as well.