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Persis Intl v Burgett Inc

Persis Intl v Burgett Inc

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Published by: propertyintangible on Sep 23, 2012
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IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF ILLINOISEASTERN DIVISIONPERSIS INTERNATIONAL, INC., and)EDWARD F. RICHARDS,))Plaintiffs,)) 09 C 7451v.))Judge Ronald A. Guzmán)BURGETT, INC.,))Defendant. )MEMORANDUM OPINION AND ORDER 
Persis International, Inc., which sells and distributes pianos, and Edward Richards(collectively, “Persis”) filed suit against Burgett, Inc. for contributory trademark infringement andcontributory unfair competition under §§ 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114 and1125(a) (Count I), unfair competition under § 43(a) of the Lanham Act, 25 U.S.C. § 1125(a)(Count II), common law unfair competition (Count III), and violation of the Illinois DeceptiveTrade Practices Act (Count IV). Burgett counterclaimed for trademark infringement (Count II)and unfair competition by infringement of common law rights (Count III). The parties cross-
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move for summary judgment as to each of these claims. For the reasons stated below, Persis’motion for summary judgment is granted in part and denied in part and Burgett’s motion for summary judgment is granted in part and denied in part.
I.Facts
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The other counts of Burgett’s counterclaim have been dismissed.
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Both parties filed replies to the responses to their statements of fact. (Dkt. ## 215,
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224.) Because these are not called for by the local rules, they have not been considered by the
Case: 1:09-cv-07451 Document #: 228 Filed: 09/18/12 Page 1 of 17 PageID #:3354
 
Persis is a Nevada corporation with its principal place of business in Chicago, Illinois.(Def.’s LR 56.1(a) Stmt. Fact, Dkt. # 202, ¶ 1.) Edward F. Richards resides in Chicago and is thePresident and sole shareholder of Persis. (
 Id 
. ¶ 2.) Burgett is a California corporation with its principal place of business in California. (
 Id 
. ¶ 3.)A stylized depiction of the trademark SOHMER was first used in connection with the saleof pianos in 1872. (Pls.’ LR 56.1(a) Stmt. Fact, Dkt. # 195, ¶ 7.) Prior to May 17, 1996, Mason& Hamlin Corporation was the owner of four SOHMER trademark registrations: (1) U.S. Reg. No. 119,130; (2) U.S. Reg. 137,464; (3) U.S. Reg. No. 1,786,687; and (4) U.S. Reg. No. 85,691.(
 Id 
. ¶ 8.) In 1996, Burgett acquired certain assets of Mason & Hamlin in bankruptcy, includingthe first three of the aforementioned SOHMER trademarks (“Burgett registrations”). (
 Id 
. ¶ 10.)The fourth trademark registration was permitted to expire by Mason & Hamlin in 1992. (
 Id 
.)Burgett did not maintain its three SOHMER registrations in a timely manner because it failed tofile a declaration of continued use and corresponding renewal application. (
 Id 
. ¶ 11.) Thus, bythe end of 2001, each of the registrations had been canceled by the United States Patent andTrademark Office based on the failure to renew. (
 Id 
.) Between 1996 and March 5, 2001, Burgettdid not sell, distribute or manufacture any pianos bearing the SOHMER trademark. (
 Id 
. ¶ 12.)Between 1996 and March 11, 2009, Burgett had a sign outside its manufacturing facility inMassachusetts that said “Mason & Hamlin Companies” and underneath in smaller letters stated“Falcone Sohmer.” (Def.’s Ex. 6, Ex. 1, photograph of sign.) Between 1996 and November 26,
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2001, Burgett failed to execute any license or assignment of rights in the SOHMER trademark inCourt.Falcone is another manufacturer of pianos.
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Case: 1:09-cv-07451 Document #: 228 Filed: 09/18/12 Page 2 of 17 PageID #:3355
 
connection with the sale of pianos. (Pls.’ LR 56.1(a) Stmt. Fact, Dkt. # 195, ¶ 14.) In 1999,Burgett authorized the destruction of the five SOHMER plate patterns used by its predecessors tomanufacture cast iron piano plates. (
 Id 
. ¶ 15.) In August 2000, an article appeared in the publication Music Trades stating that Burgett was focusing on its most profitable brands of Pianodisc and Mason & Hamlin while sharply curtailing its Knabe and George Steck piano brands. (
 Id 
. ¶ 16.) The article makes no mention of Sohmer. (
 Id.
)On February 15, 2001, Richards filed with the USPTO United States Trademark Application No. 76/210,248 for the mark SOHMER on an intent to use basis in association with pianos. (
 Id 
. ¶ 17.) On February 23, 2001, Richards filed United States Trademark Application No. 76/214,968 for the mark SOHMER on an intent to use basis in association with pianos. (
 Id 
. ¶18.) On March 5, 2001, Burgett sold one piano to one of its employees, Daniel Mattson-Boze, for $600.00. (
 Id.
 ¶ 19.) Burgett’s counsel described the sale to Mattson-Boze as a “special sale” andan “odd bird.” (
 Id 
. ¶ 21.) Gary Burgett testified that, with respect to the piano sold to Mattson-Boze, Burgett (the company) stenciled the SOHMER name on a piano manufactured by Knabe because of advice from their attorney that it needed to “show evidence that you have sold aSohmer piano.” (
 Id 
. ¶ 22; Burgett Dep. Tr., Pl.’s Ex. 5, at 60.)
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On November 26, 2001, Burgett executed a Trademark License and AssignmentAgreement with Alliance Music Group, Inc., K.H. Chu, and Robert Jones whereby Burgettgranted them an exclusive license of its SOHMER trademark rights. (Pls.’ LR 56.1(a) Stmt. Fact,Dkt. # 195
 ,
 ¶ 27.) In 2002, Alliance Music Group, Inc., K.H. Chu, and Robert Jones were awareCertain of the parties’ statements of fact regarding sales of Sohmer pianos have not
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 been included as they are not material to the Court’s resolution of the parties’ motions.3
Case: 1:09-cv-07451 Document #: 228 Filed: 09/18/12 Page 3 of 17 PageID #:3356

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