Handi-Foil has been foiled in its attempt to persuade a jury that its aluminum foil packaging design does not infringe on that of rival foilmaker Reynolds Wrap.
A year-long legal battle between the two competing foil manufacturers ended March 28, when a jury in U.S. District Court in Alexandria found that Handi-Foil intentionally infringed on Reynolds’ “trade dress,” a claim similar to trademark infringement, except that it deals with the overall look and feel of a product rather than a specific logo (the shape of a Coke bottle as opposed to the Coke logo, for example). In this case, the look in question was the iconic blue-and-pink foil box that can be seen in the aisles of almost every supermarket chain in America — a design that Reynolds has owned the rights to since 1958.
“When someone sees the overall look and feel of a Reynolds Wrap package, even if the word ‘Reynolds’ isn’t on it, they associate that with Reynolds,” said Reynolds’s lead lawyer, John Froemming of Jones Day.
However, the jury sided with Handi-Foil on several other claims that Reynolds made, including finding that Handi-Foil did not infringe on two of Reynolds’ registered trademarks (one for the design of the box, and one for the design and the words ‘Reynolds Wrap’), and that Handi-Foil was not liable for false advertising or unfair competition in selling its foil in similar-looking packaging.
The jury’s decision does not bar Handi-Foil from continuing to sell foil in the packaging in question. But Reynolds plans to ask the judge to issue a ruling that would force Handi-Foil to stop doing so.
The fight over foil pitted Washington lawyers at Jones Day, which represented Reynolds, against Washington lawyers at Kirkland & Ellis, which represented Handi-Foil. Both are top-notch law firms with attorneys who have made careers out of fighting in court over patent and trademark rights that touch on everyday items ranging from gum to T-shirts. Last year, Reynolds’s lawyer John Froemming represented Abercrombie & Fitch when the retailer was sued by Mike “The Situation” Sorrentino from MTV’s “Jersey Shore,” who claimed that Abercrombie’s “The Fituation” T-shirt infringed on his trademark. Handi-Foil’s lawyer Dave Callahan has represented Hershey Co. in a dispute with Wrigley over patents for flavor additives used in chewing gum.
Both attorneys claimed at least a partial win in the decision. Callahan said Handi-Foil won on every count except the trade dress claim, and Froemming said Reynolds only needed to win one claim in order to win the overall case.
“If someone gets sued for two patents that are related but different, and the plaintiff wins infringement on one [patent] and loses the other, that’s not a mixed verdict,” Froemming said. “That’s a win.”
Reynolds Consumer Products, based in Lake Forest, Ill., sued Wheeling, Ill.-based Handi-Foil Corp. in February 2013, accusing Handi-Foil of selling foil in packaging that was nearly identical to that of Reynolds Wrap, thus diluting the Reynolds brand and confusing consumers who may have bought Handi-Foil thinking it was Reynolds.
Lawsuits between generic store brands and more established brand names over similarities in design and packaging are not uncommon, and are closely watched by consumer goods producers on both sides. But they rarely go to trial, Froemming said.
It was another tiff over food storage products that led Jones Day to landing Reynolds’ business on the foil case. Years ago, Froemming worked with Reynolds in-house attorney Dan Shulman when he was a lawyer for the maker of Hefty garbage bags, Pactiv Corp., that has since been acquired by Reynolds. Hefty had been sued by Evert Fresh, a Texas-based manufacturer of food storage products, over a line of plastic food storage bags that Evert Fresh claimed infringed on a line of plastic bags they had come out with earlier.
“We successfully defended a jury trial for Dan and Hefty in Texas, he knew us and trusted us, when push came to shove, he asked us to come on in and get this case ready for trial,” Froemming said.