Rolex Watch USA, Inc. v. Canner

• Decision Date: 29 August 1986
• Docket Number: No. 85-6471-CIV-EPS.,85-6471-CIV-EPS.
• Citation: 645 F. Supp. 484
• Parties: ROLEX WATCH U.S.A., INC., Plaintiff, v. Norman CANNER; Leonard Gutterman, et al., Defendants.
• Court: U.S. District Court — Southern District of Florida

645 F. Supp. 484

ROLEX WATCH U.S.A., INC., Plaintiff, v. Norman CANNER; Leonard Gutterman, et al., Defendants.

No. 85-6471-CIV-EPS.

United States District Court, S.D. Florida, Miami Division.

August 29, 1986.

Kevin Murray, Miami, Fla., for plaintiff.

Todd Aronovitz, Miami, Fla., for Stein defendants.

John Wilkes, Ft. Lauderdale, Fla., for defendants Torkington, Canner and Gutterman.

MEMORANDUM OPINION & ORDER ENTERING SUMMARY JUDGMENT IN FAVOR OF THE PLAINTIFF ON THE ISSUES OF LIABILITY AND PERMANENT INJUNCTIVE RELIEF AGAINST STEIN DEFENDANTS AND DEFENDANTS, TORKINGTON, CANNER, AND GUTTERMAN

SPELLMAN, District Judge.

I BACKGROUND

This CAUSE comes before the Court on the Plaintiff's, Rolex Watch U.S.A. Inc's, Motion for Reconsideration of its Motion for Summary Judgment on the Issues of Liability, Permanent Injunctive Relief, Damages & Attorneys' Fees against the Defendants, Larry Stein, individually and d/b/a "Larry's Enterprises", Larry's Enterprises, Joe Stein, individually and d/b/a "The Watch Lady", Doris Stein, individually and d/b/a "The Watch Lady" and The Watch Lady hereinafter referred to as the Steins and on the Plaintiff's Motion for Summary Judgment on the Issues of Liability and Permanent Injunctive Relief against the Defendants, John Torkington hereinafter referred to as Torkington, Norman Canner hereinafter referred to as Canner, and Leonard Gutterman individually and d/b/a "Watches Unlimited" hereinafter referred to as Gutterman.

The Plaintiff herein has alleged that the Defendants have participated in the sale of counterfeit Rolex watches to Rolex investigators. Based upon the sworn declarations of the investigators, this Court entered an Order to Show Cause for Preliminary Injunction with Search and Seizure and Temporary Restraining Order and Expediting Discovery on June 20, 1985. On June 23, 1985, several Deputy United States Marshals seized counterfeit watches and pouches bearing the Rolex trademarks from the Defendants.

On July 1, 1985, this Court entered a Preliminary Injunction against the Defendants. Shortly thereafter, the Defendants were deposed. During their depositions, the Defendants each asserted their fifth amendment privilege against self-incrimination with respect to all questions concerning the sale and distribution of the counterfeit watches. In addition, the Defendants have each asserted their fifth amendment privilege in response to much of the written discovery served on them.

On December 9, 1985, this Court entered an Order requiring the Defendants to elect whether they would reassert at trial their fifth amendment privilege against self-incrimination and for other related relief. On January 9, 1986, the Defendants served their notice in which they elected to reassert their fifth.¹

Initially this matter came before the Court on the Plaintiff's Motion for Summary Judgment against the Steins. On March 31, 1986, this Court issued an Order Denying the Motion. Subsequent to this determination in the civil matter, this Court presided over a criminal case involving trademark counterfeits. After the criminal trial, this Court began to reconsider the central inquiry in the matter sub judice and to pursue a more meaningful analysis of the question of whether there is a likelihood of confusion between the registered mark and the allegedly infringing mark. This Court was of the opinion that another opportunity to review the Motion would be of assistance to this Court and possibly facilitate an orderly and just disposition of the case. The Court then directed the Plaintiff to file a Motion for a Reconsideration of its Motion for Summary Judgment against the Steins. The Plaintiff also filed a Motion for Summary Judgment against the Defendants, Torkington, Canner, and Gutterman. On August 11, 1986, this Court heard extensive oral argument on the Motions.

Both the Motion for Summary Judgment against the Steins and the Motion for Summary Judgment against Torkington, Canner, and Gutterman present the following issues:

(1) whether the Defendants have committed trademark infringement under 15 U.S.C. § 1114(1);

(2) whether the Defendants have falsely designated within the meaning of 15 U.S.C. § 1125(a), the origin of goods they have offered for sale;

(3) whether the Defendants have engaged in unfair competition under the common law of Florida.

The Plaintiff has indicated that it is not requesting that this Court enter Summary Judgment on each count of its First Amended Complaint. Instead, the Plaintiff has indicated that if Summary Judgment is entered, it is willing to waive the claims it has asserted in Counts Four and Five of its First Amended Complaint. Count Four raises a civil theft claim under Fla.Stat. § 812.035(7), for violation of Fla.Stat. § 812.014. Count Five is a claim under Florida's "anti-dilution" Statute, Fla.Stat. § 495.151.

The Motion for Summary Judgment filed against the Steins raises two additional questions:

(1) whether Rolex is entitled to damages (and, if so, what type and in what amount);

(2) whether Rolex is entitled to attorney's fees.

With respect to the Defendants', Torkington, Canner, and Gutterman, the Plaintiff requests that this Court enter Summary Judgment as to the issues of liability and injunctive relief. The Plaintiff asks this Court to enter such judgment and leave the issue of damages opened at this juncture.

This Court has been mindful of the burden to be borne by a litigant seeking to prevail on a Motion for Summary Judgment. The Movant must demonstrate that there is no dispute as to any material fact in the case. See Adickes v. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 1608, 26 L.Ed.2d 142 (1970). In assessing whether the burden has been met, courts should view the evidence in the light most favorable to the opposing party. See id; Clemons v. Dougherty, Georgia, 684 F.2d 1365, 1368 (11th Cir.1982).

After reviewing the Plaintiff's Motions, the Defendants' Responses, the Plaintiff's replies, the respective memoranda of law, the affidavits, and the file in the above-styled Cause, and after having heard oral argument, this Court is of the opinion that the Plaintiff has met its burden and is entitled to a Judgment as a matter of law on the issues of liability and permanent injunctive relief.

II TRADEMARK INFRINGEMENT & FALSE DESIGNATION OF ORIGIN

Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1) governs lawsuits for the infringement of a federally registered trademark. It provides:

(1) Any person who shall, without the consent of the registrant —

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.

shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) of this section, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

The Defendants are thus liable for infringement if, without the consent of the registrant, they use "in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark" which "is likely to cause confusion, or to cause mistake, or to deceive." The pivotal question under this provision is whether there is a likelihood of confusion, mistake, or deception between the registered mark and the allegedly infringing mark where the infringer places the counterfeits in commerce.

Title 15 § 1125(a) provides:

Any person who shall affix, apply, or annex, or use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall with knowledge of the falsity of such designation of origin or description or representation cause or procure the same to be transported or used in commerce or deliver the same to any carrier to be transported or used, shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin or in the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the use of any such false designation or representation.

To prevail on a false designation of origin claim under 15 U.S.C. § 1125(a), the Plaintiff must establish that the Defendant adopted a mark confusingly similar to the Plaintiff's mark such that there was a likelihood of confusion as to the origin of the goods. See Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512 (11th Cir.1984). The factors relevant to establishing a claim under 15 U.S.C. § 1125(a) are identical to the factors relevant to establishing the likelihood of confusion under 15 U.S.C. § 1114. See Ross Bicycles, Inc. v. Cycles USA, Inc., 765 F.2d 1502, 1503 (11th Cir.1985).

In John A. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 972 (11th Cir. 1983), the court set forth the factors to be considered when analyzing whether there is a likelihood of confusion between the two marks:

This court and the former Fifth Circuit have identified a number of factors which

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