30 Mar 2009
DLA Piper successfully represents La Cafetière, Inc.
Victory Allows La Cafetière to Compete in the United States
– DLA Piper announced today that the firm successfully represented La Cafetière, Inc., an international housewares company, when the District Court for the Northern District of Illinois summarily dismissed a claim of trade dress infringement brought by long-time competitor Bodum USA, Inc.
The March 24 ruling is a significant victory for the La Cafetière business, which has been embroiled in a dispute with Bodum that has taken an international stage. The dispute centers on Bodum's alleged exclusive rights to the design of the world's most recognizable French-press coffee maker, the so-called "Chambord" design.
"We are thrilled with the court’s decision to grant La Cafetière’s motion for summary judgment," said Tom Pasternak, lead counsel and partner in DLA Piper’s Intellectual Property and Technology practice in the Chicago office. "This victory clears the way for La Cafetière, the company that truly made the design an icon, to sell its Chambord French-press coffee maker in the United States."
The French-press coffee maker was developed in a French clarinet factory, Martin S.A., owned by La Cafetière's founder, Mr. Louis-James de Viel Castel. Martin S.A. was originally known for creating the finest classical clarinets in Europe since 1740 and would later become known for creating the most recognizable French-press coffee maker in the world. An icon in European countries since the early 1950s, the design comprises an elegantly crafted stainless steel frame, rounded lid and plunger-spring filter that cradle a clear, heat-resistant beaker.
In the early 1970s, the Danish company, Bodum, began working with La Cafetière's predecessor to distribute the iconic French-press coffee maker in Denmark. This began a relationship between La Cafetière and Bodum that was at times amicable but later deteriorated. The summary judgment arose from a contract of sale by which the original stockholders of Martin S.A. sold their shares in the company to Bodum, including the design and trademark rights to the French-press design. The majority stockholder, Mr. de Viel Castel, conditioned the sale of his majority shares on his right to continue selling the design in countries outside of France, including the United States. Recently, Bodum began suing various competitors in the United States to keep them from selling competitive French-press coffee makers. In December, 2007, Bodum sued La Cafetière in Chicago and has also come after them in many other countries. Judge Kennelly decided the contract issue in La Cafetière’s favor on summary judgment.
La Cafetière had another victory at a preliminary injunction hearing before a Danish Court, which also interpreted the contract in La Cafetière's favor.
In addition to Pasternak, the DLA Piper team representing La Cafetière included Joseph Gioconda, Steve Reynolds, Erick Ottoson, and Aaron Wainscoat.
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