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ATTORNEY FOR APPELLANT William B. Keaton Rushville, Indiana

ATTORNEY FOR APPELLEES R. Mark Keaton Ft. Wayne, Indiana

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In the

Indiana Supreme Court
_________________________________ No. 02S03-0602-CV-67 KEATON AND KEATON, AN INDIANA PROFESSIONAL CORPORATION, Appellant (Plaintiff below), v. R. MARK KEATON, PAUL A. KEATON, D/B/A KEATON AND KEATON, Appellees (Defendants below). _________________________________ Appeal from the Allen Circuit Court, No. 02C01-0212-PL-153 The Honorable Thomas J. Felts, Judge _________________________________ On Petition To Transfer from the Indiana Court of Appeals, No. 02A03-0410-CV-478 _________________________________ February 22, 2006 Boehm, Justice. Unfair competition includes both the tort of "passing off" and trade name infringement. We hold that "passing off" requires intentional misrepresentation or deception but trade name infringement does not. Facts and Procedural History In 1971 Walter and William Keaton, a father and son, established a partnership for the practice of law in Rushville, Indiana, under the name "Keaton and Keaton." In 1978, the firm

incorporated under the name "Keaton and Keaton, P.C." (the "Rushville P.C."). Walter died in 1980 and William continued as the sole shareholder of the P.C., retaining the name "Keaton and Keaton, P.C." In 2002, two brothers, Mark and Paul Keaton, formed a general partnership under the name "Keaton & Keaton" for the practice of law in Fort Wayne, Indiana. The brothers are unrelated to the Rushville Keatons. The Rushville P.C. filed a complaint for an injunction and damages against Paul and Mark, d/b/a Keaton & Keaton (the "Fort Wayne firm"). The Rushville P.C.'s complaint alleged the above facts and that: 1) the similarity of names had created confusion in the marketplace, 2) the "natural and probable effect" of the Fort Wayne firm's use of its surname was "to deceive the public and pass off" the Fort Wayne firm's services as those of the Rushville P.C., and 3) these facts deprived the Rushville P.C. of the good will it had built up since 1971. Both sides filed motions for summary judgment. In support of its motion, the Rushville P.C. designated three instances of alleged confusion arising out of the Fort Wayne firm's name: 1) on one occasion the Rushville P.C. received medical records that had been requested by the Fort Wayne firm; 2) on one occasion the Rushville Circuit Court sent an order to the Rushville P.C. in a case in which the Fort Wayne firm was counsel; and 3) on one occasion the Rush County Clerk asked one of the Fort Wayne brothers if he was related to William Keaton, and the Fort Wayne brother responded that they were not related. The trial court granted summary judgment to the Fort Wayne firm, in effect allowing both firms to continue to use their current names. The Court of Appeals affirmed. Keaton & Keaton v. Keaton, 824 N.E.2d 1261, 1264 (Ind. Ct. App. 2005). It concluded that the Rushville P.C. failed to designate evidence establishing a likelihood of public confusion. Id. at 1263. It also held that in order to maintain a cause of action for unfair competition a plaintiff must show that the defendant had a subjective intent to deceive. Id. at 1264. I. Standard of Review On review of a trial court's decision to grant or deny summary judgment, we apply the same standard as the trial court: we must decide whether there is a genuine issue of material fact that precludes summary judgment and whether the moving party is entitled to judgment as a matter of law. Carie v. PSI Energy, Inc., 715 N.E.2d 853, 855 (Ind. 1999). When the parties have

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filed cross-motions for summary judgment we consider each motion separately to determine whether the moving party is entitled to judgment as a matter of law. Ind. Farmers Mut. Ins. Group v. Blaskie, 727 N.E.2d 13, 15 (Ind. Ct. App. 2000). II. Unfair Competition The complaint does not seek to characterize its theory of recovery other than as described above. There are several related doctrines of unfair competition that the complaint suggests. We agree with the Court of Appeals that the trial court properly granted summary judgment to the Fort Wayne firm, but disagree as to some of the reasons why this is so. A. "Passing Off" The Rushville P.C. alleges that "The natural and probable tendency and effect of the defendants using the plaintiff's name is to deceive the public so as to pass off the defendants' services for that of the plaintiff." The tort of "passing off" (also called "palming off") is a species of unfair competition that emerged in the nineteenth century as a type of fraud. 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition

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Indiana Law