Orange Bang Inc. et al. v. Vital Pharmaceuticals

Dollar Amount: $175 million

Case Name: Orange Bang Inc. et al. v. Vital Pharmaceuticals

Type of Case: Trademark infringement and breach of contract

Court: American Arbitration Association for trial and final award; Central District for confirmation of final award.

Judge(s): Arbitrator, Bruce Isaacs; U.S. Central District Judge Dale S. Fischer

Plaintiff Lawyers: Hueston Hennigan LLP, John C. Hueston, Moez M. Kaba, Allison L. Libeu, Lauren McGrory Johnson, Sourabh Mishra, Brandon Marsh, Michael H. Todisco, Jennifer N. Popp, Justin M. Greer, Julia L. Haines, Amber E. Munoz, Olusegun I. Babatunde II; Knobbe Martens, Steven J. Nataupsky, Lynda Zadra-Symes, Matthew Bellinger

Defense Lawyers: Quarles & Brady LLP, Michael W. Carwin, Daniel M. Janssen, Johanna M. Wilbert, Joshua B. Fleming, Gordon Rees Scully Mansukhani LLP, A Louis. Dorny

Hueston Hennigan LLP's lawyers, representing the energy drinks made by the client, Monster Energy Inc., plus the Orange Bang drink, obtained what was said to be the largest-ever U.S. trademark award for their clients: $175 million plus $3.9 million in fees and costs and an ongoing 5% royalty against the rival maker of Bang energy drinks, Vital Pharmaceuticals Inc. Orange Bang Inc. et al., v. Vital Pharmaceuticals Inc., 01-20-0005-6081 (Signature Resolution, filed June 15, 2020); 5:20-cv-01464 (C.D. Cal., arb. award confirmed June 30, 2022).

(In a separate case for Monster Energy, the Hueston Hennigan lawyers blasted the "widespread deception" of Vital's advertising that allegedly breached an agreement between the rivals. Jurors in that matter awarded Monster $293 million. Monster Energy Co. v. Vital Pharmaceuticals Inc. et al., 18-cv-01882 (C.D. Ca., filed Sept. 4, 2018).)

"The decisions recognize that Bang has long competed unfairly in the beverage marketplace," firm co-founder John C. Hueston said. Lawyers for Vital Pharmaceuticals did not return messages seeking comment.

The 5% annual royalty award on Bang's future sales, Hueston pointed out, will yield an additional $40 million for his client each year. "Any failure by Vital to make the required payments automatically triggers a permanent injunction, largely precluding Vital from selling products with the 'Bang' mark."

The win came on counterclaims filed in 2020 after Vital settled with Monster more than a decade ago over use of the Bang name. The deal allowed Vital to use the Bang name on drinks sold through fitness venues, while Monster's Orange Bang was sold in stores. Monster accused Vital of breaching that settlement.

In the arbitration trial, the Hueston Hennigan lawyers proved that Bang Energy does not contain creatine, that Bang's creatine claims were a hoax and that Vital's billion-dollar beverage was marketed on misstatements.

The two cases resulting in two huge awards to Monster were based on separate theories, said Moez M. Kaba, a Hueston Hennigan litigator who was recently elected the firm's managing partner. "They seemed to overlap, but there were legal differences," he pointed out. "The arbitration was over trademarks. The jury trial was over breach of contract."

Hueston Hennigan partner Allison L. Libeu handled the damages portion of both cases.

--John Roemer