Just as summer is coming to a close, the battle between Mister Softee and Master Softee appears to be heating up. Mister Softee is a family-owned business that has been in operation since 1956. It is the franchisor for the Mister Softee mobile ice cream truck businesses that sell soft-serve ice cream, hard ice cream, frozen desserts, novelties and other products. Mister Softee franchisees are licensed to use its trade names, trademarks and service marks, and to operate under its business system which utilizes specially designed mobile trucks. The trucks display a cartoon logo of a soft serve ice cream cone with a smiley face and bow tie, a.k.a. “Mister Softee.”
On March 20, 2014, Mister Softee filed a lawsuit against Dimitrios Tsirkos in the United States District Court for the Southern District of New York, Case No. 1:14-cv-01975-LTS. Tsirkos had entered into franchise agreements which allowed him to operate sixteen (16) Mister Softee franchises in Queens County, New York and Bronx County, New York. Mister Softee terminated the franchise agreements when Tsirkos failed to pay $74,064.19 in royalty payments. In its complaint, Mister Softee alleges that, after termination of the franchise agreements, Tsirkos continued to operate ice cream trucks in his former territories in violation of a non-compete provision. Mister Softee further alleges that Tsirkos is utilizing Mister Softee’s marks on his ice cream trucks and ice cream products, and that he has failed to return the Mister Softee music boxes that play copyrighted music to attract children (and adults) to the trucks. Mister Softee asserts claims against Tsirkos for trademark infringement and breach of contract.
On June 5, 2014, U.S. District Judge Laura Taylor Swain granted Mister Softee’s Motion for a Preliminary Injunction. In her opinion, Judge Swain noted that Tsirkos’s “Master Softee” ice cream trucks are “strikingly similar” to the Mister Softee ice cream trucks, including depiction of an “anthropomorphized waffle cone character with a blue jacket and a red bow tie.” Judge Swain enjoined Tsirkos from using marks that resemble those of Mister Softee, including “Master Softee” and “Soft King” trade dress, and from operating ice cream trucks in his former territories.
On June 6, 2014, Mister Softee filed a Motion for Contempt of Prior Court Order, claiming that Tsirkos continued to operate a competitive ice cream business in his former territories and to infringe upon Mister Softee’s trademarks and trade dress. Mister Softee sought an order awarding it Tsirkos’s profits obtained since entry of the injunction. At the hearing, Tsirkos claimed that he did not own the trucks depicted in the photographs taken by Mister Softee’s investigators. On July 2, 2014, Judge Swain ordered that Tsirkos operate only in those areas designated in the preliminary injunction.
Mister Softee filed a second Motion for Contempt of Prior Court Order on July 11, 2014. Mister Softee’s attorneys stated they had proof that Tsirkos continued to violate the court’s prior orders of June 5 and July 2. Mister Softee sought an order holding Tsirkos in criminal contempt, issuing a warrant for his arrest and incarcerating him until he provides records of his retail ice cream sales and identifies his trucks by the license plates and VIN numbers, and having the U.S. Marshals seize Tsirkos’s ice cream trucks to be held by Mister Softee for the duration of the two-year non-compete provision. In an affidavit responding to the motion, Tsirkos claimed that none of the trucks depicted in the investigator’s photographs were his. He also claimed that he sold most of his trucks by the end of June, and that the remaining three trucks were in the process of being sold. Tsirkos further testified that he was out of the ice cream business and that he had not violated the court’s order. Tsirkos concluded by stating that “[t]he fact that non-Mister Softee franchisees are trying to fill the void left when I was put out of business is nothing more than normal competition on the streets over which I have no control.”
Judge Swain granted the contempt motion, in part, on August 1, 2014. In her order, the Judge found that Tsirkos is in civil contempt, as opposed to criminal contempt. However, she ordered that “a writ of a body attachment shall be issued on August 12, 2014 directing the U.S. Marshal's Office to arrest Dimitrios Tsirkos and incarcerate him, unless Tsirkos files with the court by August 11, 2014 a sworn affidavit and supporting documentation: (a) identifying all retail ice cream sales by him, as set forth within; and (b) identifying by license plate and vehicle identification number all trucks he owns, or has owned as set forth within…If an arrest warrant issues, it will direct the Marshal’s Service to hold Mr. Tsirkos until he files the affidavit and documentation described in this paragraph unless the Court orders otherwise.”
On August 11, Tsirkos filed his affidavit with the court. In his affidavit, Tsirkos provided his revenue figures, as well as the VIN numbers, license plate numbers, date of sale and sale contracts for each of his ice cream trucks. The affidavit evidences that Tsirkos earned revenue from fourteen (14) “Master Softee” ice cream trucks after the date of the preliminary injunction. The affidavit does not end the threat of arrest, however, as the attorneys for Mister Softee filed a reply on August 14, asserting that Tsirkos did not fully comply with the contempt order and requesting that the court issue a warrant for his arrest.
It may be a cold day in New York before the turf battle of the ice cream trucks is finally resolved.