Republic Tobacco L.P. v. North Atlantic Trading Co., No. 06 C 2738, 2007 WL 1424093 (N.D. Ill. May 10, 2007) (Der-Yeghiayan, J.).*
Judge Der-Yeghiayan granted plaintiff/counter-defendant Republic Tobacco’s (“Republic”) motion for summary judgment on defendant/counter-plaintiff North Atlantic Trading’s (“North Atlantic”) counterclaims and granted North Atlantic’s motion for summary judgment as to each of Republic’s claims. Republic brought claims against North Atlantic for Lanham Act false advertising, violation of the Illinois Uniform Deceptive Trade Practices Act (“IDTPA”) and other state law claims, all arising out of an allegedly “false and misleading” presentation entitled “Cigarette Paper Review” (“CPR”) which North Atlantic allegedly gave to various Republic customers. The CPR allegedly criticized Republic, saying among other things that Republic’s cigarette rolling papers were the same as North Atlantic’s and that Republic’s Chairman Donald Levin had “lied” about the composition of Republic’s cigarette papers. North Atlantic filed counterclaims alleging Lanham Act false advertising, violation of the IDTPA and other state law claims, all arising out of Republic’s alleged sales of orange cigarette papers similar in color and size to North Atlantic’s orange Zig-Zag papers, for the purpose of confusing or deceiving consumers.
Because Republic could not establish that the statements in the CPR were literally false, as opposed to just misleading, and because many of the statements were subject to innocent constructions, Republic could not prove its false advertising or IDTPA claims.
Republic sought summary judgment of all of North Atlantic’s claims because, among other reasons, the license agreement governing North Atlantic’s use of the Zig-Zag marks and cigarette papers did not allow North Atlantic to bring its counterclaims. Republic argued that the licensor of the Zig-Zag marks, Bollore, had the right and duty to bring the suit and, if at all, North Atlantic could only bring the counterclaims after North Atlantic notified Bollore of the counterclaims and Bollore had decided not to file them. North Atlantic argued that Bollore was aware of the suit and had not attempted to stop North Atlantic from prosecuting its counterclaims, but provided no evidence that it ever provided Bollore notice of Republic’s alleged infringement, as required by the agreement. The agreement required that either party notify the other of any infringements, and provided Bollore sole discretion to prosecute infringements. North Atlantic was allowed to pursue infringers “which Bollore determines not to commence or diligently pursue . . . .” Because North Atlantic did not provide evidence to counter Republic’s Local Rule 56.1 statement of material fact that Bollore never gave North Atlantic consent to bring the counterclaims, the Court deemed that fact admitted. The Court, therefore, granted Republic summary judgment on North Atlantic’s counterclaims because Bollore never consented to North Atlantic’s filing of them, as required by the agreement.
* More on a similar case between the parties can be read in the Blog’s archives.