After years of back-and-forth courtroom battles, a Florida judge awarded Florence-based Kona Ice $532,905 in damages from a rival business.
In 2017, Kona Ice, a mobile shaved ice franchise, sued competitor Tikiz for “willful patent infringement.” Initially, Kosa sued Tikiz franchise owners for allegedly adding a self-service flavor dispenser called the FlavorWave, which Kona owned the patent for, to their trucks. The United States Patent and Trademark Office granted Kona the patent in September 2017.
The Miami-based jury made its decision in June. Kona Ice founder and CEO Tony Lamb told LINK nky that the ruling was “one of the greatest feelings.”
“We had our day in court, and they ruled in our favor,” he said. “And because I feel like they saw the truth, they saw all the evidence, and they ruled in our favor.”
Kona was founded in 2007 by Lamb after his daughter had a poor experience with a neighborhood ice cream truck. Since then, Kona Ice has become the largest mobile shaved ice company in the United States, boasting over 2,000 trucks in 49 states.
Tikiz was founded in 2011 and is based in Boca Raton, Florida. Tikiz has a smaller fleet of trucks. Both companies’ branding centers around tropical beach themes.
Lamb said he first became aware of Tikiz in 2011 when someone told him about the similarities between Kona and Tikiz trucks.
“You feel so violated when someone just copied you,” he said. “It doesn’t happen to me as much as it happens to my franchisee in Austin, Texas, who was working his butt off, building his business, and all of a sudden, the truck shows up that looks exactly like a Kona truck.”
This prompted a legal battle that preceded the 2017 lawsuit. Lamb and Tikiz CEO Brian Tollefson had previously been in court over truck design and other intellectual property disputes.
The Tikiz franchising website has several blog posts that reference Kona. The most recent one is titled ‘Why Tikiz is a Better Franchise Choice than Kona Ice.’ The post, which does not have a publishing date, details the company’s internal views on why it is a better franchising option than Kona.
Another blog post titled ‘Kona Ice Has a Dirty Secret’ accuses Kona of being a “corporate bully.”
“It seems the actions of Kona Ice do not line up with the corporate messaging of Kona Ice,” read the post from the Tikiz management team. “In a world of don’t bully. Kona Ice with its 20 plus lawsuits seems to be the ultimate bully. Yet schools all over America let this corporate bully in with a smile.”
Essentially, the 2017 lawsuit sought to prove the patent’s validity and whether there was willful intent to violate the patent. Prior to the trial, the court reaffirmed the validity of Kona Ice’s U.S. Patent No. 9,751,447. Ultimately, the judge ruled in favor of Kona, finding Tikiz liable for willful patent infringement.
Kona has filed a motion to request enhanced damages from Tikiz, which could result in up to $1.6 million for Kona if the judge rules in their favor. Tikiz legal representation has opposed the motion.
Lamb said Kona’s patents will eventually expire. In the meantime, he emphasized that the company is focused on growth and development.
“The reality is, patents are meant to be able to recover the expense and all the heartache and the trials and errors of developing it in the first place,” he said. “You spend all this time, all this energy, all this money, developments that you someone shouldn’t be allowed to up and just duplicate you perfectly. That’s what a patent helps you with.”
Tikiz has not responded to a request for comment at this time.
