John Froemming of Jones Day (Diego M. Radzinschi/THE NATIONAL LAW JOURNAL)
Update, 3/29/14, 5:10 p.m. EDT: This story has been updated to reflect that jurors returned a mixed verdict. Reynolds Consumer Products Inc. prevailed on a claim that Handi-Foil engaged in willful trade dress infringement, but it lost on other claims, including trademark infringement and trademark dilution.
In a rare jury trial over claims of trade dress infringement, Reynolds Consumer Products won a verdict that competitor Handi-Foil Corp. willfully infringed its well-known aluminum foil packaging.
The company, however, struck out on several parallel claims. Jurors found that Handi-Foil didn’t engage in trademark infringement or trademark dilution. Handi-Foil also beat back claims of false advertising and unfair competition.
Jurors in Alexandria, Va., returned the verdict on Friday after a weeklong trial and a few hours of deliberation. Jurors didn’t award money damages, but U.S. District Judge Liam O’Grady can now grant Reynolds injunctive relief.
Despite losing on some claims, Reynolds chief IP counsel Daniel Shulman praised the work of his trial team at Jones Day, led by John Froemming. “Jones Day was not in an ideal situation, coming into the case just 60 days before trial,” he said in an interview. “Our success is attributable to their skill and judgment.”
Wheeling, Illinois–based Handi-Foil is best known for its aluminum baking pans. In 2002, it tried to branch out into the market for aluminum foil, but its product failed to erode Reynolds’ dominant market share. Handi-Foil tried again in 2012, this time entering into an exclusive distribution deal with the retailer Dollar Tree Inc. Handi-Foil’s product came in a pink and blue package, like the one offered by Reynolds, and including the tagline “compare to Reynolds Wrap foil” (you can see an image of the package in the verdict slip).
Reynolds argued to jurors that, having already failed once to generate a viable product, Handi-Foil purposefully tried to cash in on Reynolds’ popularity. Handi-Foil’s lawyer at Kirkland & Ellis, David Callahan, tried to rebut that evidence with a consumer survey that showed a lack of consumer confusion.
Jones Day took over the case from a Bracewell & Giuliani team led by Mark Mutterperl. Shulman, the Reynolds in-house lawyer, declined to comment on the reason for the counsel swap.