Hearthware, Inc. v. E. Mishan & Sons, Inc., No. 11 C 5233, Slip Op. (N.D. Ill. Aug. 10, 2012) (Nolan, J.).
Judge Nolan granted defendant E. Mishan & Sons (“EMS”) motion for summary judgment on plaintiff Hearthware’s copyright, Lanham Act and related state law claims related to EMS’s alleged copying of Hearthware’s Nu Wave halogen oven and its related trademarks and infomercial. As an initial matter, the parties both failed to comply with the Local Rule 56.1 requirements for statements of fact and responses thereto, largely by failing to sufficiently support statements with citation to evidence.
While there were many similarities between the parties’ infomercials – two hosts hugging when they met, a chef knocking frozen food against a counter, and time–lapse photography of food cooking in the oven – for each allegedly copied element EMS offered proof of many infomercials before Hearthware’s that had the same elements. So, to the extent there was copying or at least similarity, those commonalities were unprotectable scenes a faire. And “threadbare” allegations of direct copying could not save the claim.
There was no likelihood of confusion between Hearthware’s NUWAVE and EMS’s SUPER WAVE marks. While both marks contain the term “wave” the marks are presented “entirely” differently. For example, EMS focuses upon its connection to Sharper Image. The similarities of the products – both halogen ovens – favored confusion, as did the fact that both parties sell their products nationally in similar locations. Neither party addressed the degree of care exercised by consumers. Hearthware’s mark was not strong in light of the sixteen other non-halogen ovens that have registered a mark with “wave” in it. There was no evidence of actual confusion. There was also no evidence that EMS was attempting to palm off its product as Hearthware’s. Balancing the factors, the Court held that any finding of likelihood of confusion would be improperly based upon conjecture. There was, therefore, no likelihood of confusion.
Without likelihood of confusion, summary judgment was warranted on all of Hearthware’s Lanham Act and related state law claims.
Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Sep. 4, 2012) (St. Eve, J.).
Judge St. Eve granted in part plaintiff Morningware’s motion for summary judgment as to defendant Hearthware’s Deceptive Trade Practices Act, Lanham Act and related state law counterclaims.
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 or contained legal argument instead of factual statements. Any such “facts” were not deemed true.
- The parties appeared to copy and past portions of their briefs into their Local Rule 56.1 statements. That practice was not helpful to the Court.
These deficiencies resulted in a “very brief” recitation of uncontested facts.
Lanham Act False Representation & False Advertising
There were questions of fact as to each of Morningware’s alleged false representations of fact, in particular whether certain statements were false or misleading. As such, summary judgment was not proper.
Deceptive Trade Practices Act
Hearthware’s Deceptive Trade Practices Act claim was based upon the same conduct as in its Lanham Act claim. As such, summary judgment was denied for the same reason.
Common Law Misappropriation
Hearthware’s common law misappropriation claim was based upon allegations that Morningware’s infomercial was designed to mimic Hearthware’s infomercial. This claim was preempted by the Copyright Act. The infomercial was copyrightable and the misappropriation claim amounted to a claim of copying, which is actionable pursuant to the Copyright Act. The Court, therefore, granted Morningware summary judgment on this claim.
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.