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Bodum USA, Inc. v. Lifetime Brands, Inc.

United States District Court, N.D. Illinois, Eastern Division

June 24, 2015

BODUM USA, INC., Plaintiff,


JOHN W. DARRAH, District Judge.

Bodum USA, Inc. filed a First Amended Complaint, alleging: (1) trade dress infringement under 15 U.S.C. § 1125; (2) common-law unfair competition; and (3) violation of the Illinois Uniform Deceptive Trade Practices Act, 815 Ill. Comp. Stat. 510/1 et seq. The First Amended Complaint also seeks a declaratory judgment regarding the non-competition exception in a 1991 agreement between Bodum and certain shareholders. Defendants Lifetime Brands, Inc. and The Greenfield Group Ltd. (collectively, the "Defendants") filed a Motion for Summary Judgment. For the reasons discussed below, Defendants' Motion for Summary Judgment [64] is denied.


Local Rule 56.1(a)(3) requires the moving party to provide "a statement of material facts as to which the party contends there is no genuine issue for trial." Ammons v. Aramark Uniform Servs., 368 F.3d 809, 817 (7th Cir. 2004). Local Rule 56.1(b)(3) requires that "[a]ll material facts set forth in the statement required of the moving party will be deemed to be admitted unless controverted by the statement of the opposing party." Id. Local Rule 56.1(b)(3)(C) permits the nonmovant to submit "any additional facts that require the denial of summary judgment...." To overcome summary judgment, "the nonmoving party must file a response to each numbered paragraph in the moving party's statement." Schrott v. Bristol-Myers Squibb Co., 403 F.3d 940, 944 (7th Cir. 2005). In the case of any disagreement, the nonmoving party must reference affidavits, parts of the record, and other materials that support his stance. Id. A nonmovant's "mere disagreement with the movant's asserted facts is inadequate if made without reference to specific supporting material." Smith v. Lamz, 321 F.3d 680, 683 (7th Cir. 2003). If the nonmovant's response only provides extraneous or argumentative information, the response will fail to constitute a proper denial of the fact, and the fact will be admitted. See Graziano v. Vill. of Oak Park, 401 F.Supp.2d 918, 936 (N.D. Ill. 2005).

Legal conclusions or otherwise unsupported statements, including those that rely upon inadmissible hearsay, will be disregarded. See First Commodity Traders, Inc. v. Heinold Commodities, Inc., 766 F.2d 1007, 1011 (7th Cir. 1985); see also Eisenstadt v. Centel Corp., 113 F.3d 738, 742 (7th Cir. 1997). If the responding party fails to comply with Rule 56.1, its "additional facts may be ignored, and the properly supported facts asserted in the moving party's submission are deemed admitted." Gbur v. City of Harvey, Illinois, 835 F.Supp.2d 600, 606 (N.D. Ill. 2011). Substantial compliance is not enough; parties must strictly comply with the rule. See Ammons, 368 F.3d at 817.


The following facts are taken from the parties' statements of undisputed material facts submitted in accordance with Local Rule 56.1.

A French-press style coffee maker is a non-electric, manually-operated coffee maker that is usually comprised of a cylindrical flask or carafe, a handle affixed to the cylinder, a base, and a lid with a piston or plunger. (Def's SOF ¶ 5.) On August 8, 1991, Bodum Holding A/S acquired all outstanding stock in Societe des Anciens Establissements Martin S.A. ("Martin"). (Def's SOF ¶¶ 10, 13.) The stock purchase agreement (the "1991 Agreement") included Martin's rights to the "Chambord" design for a French press, as well as the trademarks "Chambord" and "Melior." ( Id. at ¶ 13.) Nine individual stockholders of Martin and Bodum Holding A/S (a corporate affiliate of Plaintiff) were parties to the 1991 Agreement. ( Id. at ¶ 14.) In the 1991 Agreement, "Stockholder" is defined to include the nine individual stockholders of Martin, "Buyer" refers to Bodum Holding A/S, and "Company" refers to Martin. ( Id. at ¶ 15.) At the time of the agreement, Martin's majority stockholder was Louis-James de Viel Castel. ( Id. at ¶ 16.) Article 4 of the 1991 Agreement states:

In consideration of the compensation paid to Stockholder for the stocks of the Company, Stockholder guarantees, limited to the agreed compensation, see Article 2, that he shall not - for a period of four (4) years - be engaged directly or indirectly in any commercial business related to manufacturing and/or distributing of the Company's products and/or any other business in which the Company has been engaged, other than after mutual agreement as an employee of, or advisor to Buyer, a subsidiary, or an affiliated company....
Notwithstanding Article 4, Buyer agrees that Stockholder through Household Articles Limited, a limited company incorporated and registered in the United Kingdom, can manufacture and distribute any products similar to the Company's products outside of France. It is expressly understood that Household Articles Limited is not entitled, directly or indirectly, to any such activity in France, and that Household Articles Limited furthermore is not entitled, directly or indirectly, globally to manufacture and/or distribute coffeepots under the trade marks and/or brand names of "Melior" and "Chambord, " held by the Company. Stockholder agrees that Household Articles Limited is not entitled to use for a period of four (4) years the importers, distributors, and agents which the Company uses and/or has used the last year. Any violation of these obligations will constitute a breach

of Stockholder's obligation according to Article 4. ( Id. at ¶ 17.) The 1991 Agreement provides that any dispute concerning the Agreement shall be determined according to French law. ( Id. at ¶ 18.) At the time of the 1991 Agreement, Viel Castel was also the chairman of Household Articles Limited ("Household"). ( Id. at ¶ 19.)

Bodum previously brought suit against La Cafetière, Inc. in this District, asserting the same first three causes of action asserted in the present case. ( Id. at ¶ 30.) On summary judgment, the district court held the 1991 Agreement authorized Household to distribute products utilizing the Chambord trade dress anywhere outside of France so long as Household did not use the names Melior or Chambord. ( Id. at ¶ 39.) The Seventh Circuit affirmed the District Court's Opinion on appeal. ( Id. at ¶ 40.)

In 1995, Household formed a United States corporate entity, La Cafetière, Inc., which was dissolved in 2001. ( Id. at ¶ 56.) Household was renamed "The Greenfield Group Ltd." in March 2004. ( Id. at ¶ 57.) In 2006, Greenfield formed a United States corporation, again named La Cafetière, Inc. ( Id. at ¶ 59.) Greenfield is located in the United Kingdom and is 100 percent owned by a Belgian entity, which is wholly owned by Viel Castel and his wife. ( Id. at ¶¶ 62-63.) La Cafetière, Ltd. and La Cafetière, Inc. are both wholly-owned subsidiaries of Greenfield.[1] ( Id. at ¶ 65.)

Lifetime is based in New York and is a provider of kitchenware, tableware, and other home products to U.S. retailers. ( Id. at ¶ 66.) Lifetime is the parent company of Creative Tops Holding Limited, a UK Corporation. ( Id. at ¶ 67.) Creative Tops Holding Limited is the parent to La Cafetière (UK) Ltd. and Creative Tops Limited, both of which are UK corporations. ( Id. at ¶ 68.) On March 7, 2014, Greenfield executed a Business Purchase Agreement, whereby certain assets and the business of designing and/or manufacturing and/or marketing and/or distributing certain of Greenfield's products was transferred to a newly established subsidiary, La Cafetière (UK) Ltd. ( Id. at ¶ 70.) The Business Purchase Agreement excluded any assets or intellectual property rights connected to the La Cafetière "Classic" or "Optima" ...

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