S&H Indus., Inc. v. Selander

• Decision Date: 19 March 2013
• Docket Number: Civil No. 3:11–CV–2988–M–BH.
• Court: U.S. District Court — Northern District of Texas
• Parties: S & H INDUSTRIES, INC., Plaintiff, v. Karl SELANDER, doing business as Atcoa Inc. aka Air Tool Corp. of America, and Atcoa, Inc., also known as Air Tool Corp. of America, Defendants.

932 F.Supp.2d 754

S & H INDUSTRIES, INC., Plaintiff,

v.Karl SELANDER, doing business as Atcoa Inc. aka Air Tool Corp. of America, and Atcoa, Inc., also known as Air Tool Corp. of America, Defendants.

Civil No. 3:11–CV–2988–M–BH.

United States District Court,

N.D. Texas,

Dallas Division.

March 19, 2013.

David H. Harper, Jason P. Bloom, Dallas, TX, for Plaintiff.

Arl Selander, Dallas, TX, pro se.

ORDER ACCEPTING FINDINGS AND RECOMMENDATION OF THE UNITED STATES MAGISTRATE JUDGE

BARBARA M.G. LYNN, District Judge.

After reviewing the objections to the Findings, Conclusions, and Recommendation of the United States Magistrate Judge and conducting a de novo review of those parts of the Findings and Conclusions to which objections have been made, I am of the opinion that the Findings and Conclusions of the Magistrate Judge are correct and they are accepted as the Findings and Conclusions of the Court.

The Plaintiff S & H Industries, Inc.'s Motion for Summary Judgment, filed June 27, 2012 is GRANTED, and the pro se Defendant Karl Selander's Motion to Dismiss, filed July 31, 2012, is DENIED as moot.

SO ORDERED.

FINDINGS, CONCLUSIONS, AND RECOMMENDATION

IRMA CARRILLO RAMIREZ, United States Magistrate Judge.

Pursuant to the order of reference dated January 3, 2012, this case has been automatically referred for pretrial management, including the determination of non-dispositive motions and issuance of findings of fact and recommendations on dispositive motions. Before the Court are Plaintiff S & H Industries, Inc.'s Motion for Summary Judgment, filed June 27, 2012 (doc. 34), and Defendant Karl Selander's Trial Movant Request, filed July 31, 2012 (doc. 39). Based on the relevant filings and applicable law, the motion for summary judgment should be GRANTED, and the request should be DENIED as moot.

I. BACKGROUND

S & H Industries, Inc. (Plaintiff), sues Karl Selander, d/b/a ATCOA Inc. a/k/a Air Tool Corp of America (Defendant),¹ for alleged violations of §§ 32 and 43(a) of the Lanham Act,² and for unfair competition and trademark dilution under Texas law. ( See doc. 1.) Plaintiff also seeks entry of a permanent injunction pursuant to 15 U.S.C. § 1116 and Tex. Bus. & Com.Code Ann. § 16.29 (West 2011), and an award of costs and attorney fees pursuant to 15 U.S.C. § 1117. ( Id.)

Plaintiff is the registered owner of the mark VIKING (the Mark) and the stylized VIKING logo (the Logo) issued by the United States Patent and Trademark Office.³ (Doc. 36 at 9–16, 106, 109–110.) ⁴ Allan Air Products, Inc., registered the Mark on December 14, 1993, for use in connection with the manufacture and sales of hand-held pneumatic power tools, including filing, sanding, and drilling tools, and replacement parts for the tools. ( Id. at 9, 11.) Allan Air Products, Inc., assigned the Mark to Viking Air Tool Company, Inc., on September 1, 1993, and on August 14, 2003, Viking Air Tool Company, Inc., transferred the Mark to Viking Industries. ( Id. at 11.) On March 2004, Viking Industries began using the Logo in commerce with the manufacture and sales of the same goods and services associated with the Mark. ( Id. at 10.) Viking Industries obtained a registration for the Logo on January 17, 2006. ( Id.) On May 1, 2006, Plaintiff acquired the Mark and the Logo (including the applicable registrations) from Viking Industries pursuant to an asset purchase agreement and trademark assignment. ( Id. at 11–12, 106, 109–10.) Since the asset purchase, Plaintiff has been involved in the manufacture and sale of hand-held air-operated power tools, e.g., filing, sanding and drilling tools, in connection with both the Mark and the Logo. ( Id. at 107.) Plaintiff has used the Mark and the Logo to promote its goods and services through advertising, attendance at trade shows, in meetings with potential customers and on its website, www. shindustries. com. ( Id. at 96–101, 107.)

In June 2010, Plaintiff learned that Defendant was using the Mark without authorization to market his hand-held pneumatic power tools. ( Id. at 107.) Plaintiff's attorney wrote to Defendant on June 8, 2010, advising him of Plaintiff's rights to the Mark in connection with sanding and drilling tools, and demanding that Defendant refrain from further unauthorized use of the Mark. ( Id. at 107, 111–12.) On June 29, 2010, Defendant's attorney responded in writing, representing that Defendant had agreed to stop using the Mark in connection with sales of air-operated in-line sanding and drilling tools, and that Defendant would also destroy certain documents, materials, electronic files and products with the Mark. ( Id. at 107, 113–14.) Defendant's counsel also represented that Defendant's website (which displayed the Mark) had been de-activated. ( Id. at 114.) Defendant now maintains that his attorney's response letter was unauthorized in that it does not accurately reflect his position as communicated in discussions with counsel. (Doc. 38 at 1.)

In September 2011, Plaintiff learned that Defendant was still using its marks in conjunction with the sale of hand-held pneumatic power tools used for filing and sanding. ( Id. at 107.) In particular, Defendant had created two websites, www. atcoa. com and www. atcoaairtools. com, to promote his goods and services. ( Id. at 17–29, 66–67, 102–05.) On the websites, Defendant acknowledged he had notice that Plaintiff owned the Mark, but nonetheless continued to use it to advertise and identify his power tools on the websites. ( Id. at 22–29.) Defendant also made repeated use of the Mark in online advertising and promotional activities, including YouTube videos, Twitter feeds, and numerous press releases on several websites such as www. blogspot. com, www. business newspoint. com, www. press release forfree. com, www. business datapress. com, and www. dallas backpage. com. ( Id. at 30–60, 82–95.) In some instances, Defendant's websites and internet advertisements characterized Plaintiff's products as “knock offs” and “clones” and referred to Plaintiff as a thief that “stole an American Legend.” ( Id. at 34–41.) Defendant continued to use the Mark as late as June 2012. (Doc. 36 at 8, 66, 82–96.)

Plaintiff filed suit against Defendant on November 1, 2011. ( See doc. 1.) It now moves for summary judgment. ( See docs. 34–36.) The pro se Defendant filed a request that may be liberally construed as a cross-motion for summary judgment. ( See doc. 39.) The motions have been fully briefed and are ripe for decision.

II. OBJECTIONS

Plaintiff objects to Defendant's response on grounds that it is nothing more than a series of inadmissible hearsay statements. (Doc. 40 at 2.) It also objects to the single exhibit attached to Defendant's response as not properly authenticated under Federal Rule of Evidence 901. ( Id.) Even if considered, these filings do not affect the disposition of the pending motion for summary judgment, so Plaintiff's objections are OVERRULED as moot.See Ennis Transp. Co. v. Richter, No. 3:08–CV–2206–BH, 2011 WL 3702727, at *2 (N.D.Tex. Aug. 22, 2011) (citing Continental Cas. Co. v. St. Paul Fire & Marine Ins. Co., No. 3:04–CV–1866–D, 2006 WL 984690, at *1 n. 6 (N.D.Tex. Apr. 4, 2006)).

III. MOTION FOR SUMMARY JUDGMENT

Plaintiff moves for summary judgment on each of its Lanham Act and Texas state law claims. ( See docs. 34 and 35.) It also moves for permanent injunctive relief and an award of attorneys fees. ( Id.)

A. Summary Judgment Standard

Summary judgment is appropriate when the pleadings and evidence on file show that no genuine issue exists as to any material fact and that the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). “[T]he substantive law will identify which facts are material.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A genuine issue of material fact exists “if the evidence is such that a reasonable jury could return a verdict for the non-moving party.” Id. The movant makes a showing that there is no genuine issue of material fact by informing the court of the basis of its motion and by identifying the portions of the record which reveal there are no genuine material fact issues. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In a case in which “the movant bears the burden of proof on an issue, either because he is the plaintiff or as a defendant he is asserting an affirmative defense, he must establish beyond peradventure all of the essential elements of the claim or defense to warrant judgment in his favor.” Fontenot v. Upjohn Co., 780 F.2d 1190, 1194 (5th Cir.1986) (emphasis in original).

Once the movant makes this showing, the non-movant must then direct the court's attention to evidence in the record sufficient to establish that there is a genuine issue of material fact for trial. Celotex, 477 U.S. at 324, 106 S.Ct. 2548. To carry this burden, the non-movant “must do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The non-movant must show that the evidence is sufficient to support a resolution of the factual issue in her favor. Anderson, 477 U.S. at 249, 106 S.Ct. 2505.

While all of the evidence must be viewed in a light most favorable to the motion's opponent, Anderson, 477 U.S. at 255, 106 S.Ct. 2505 (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 158–59, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970)), neither conclusory allegations nor unsubstantiated assertions satisfy the non-movant's summary judgment burden, Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir.1994) (en banc); Topalian v. Ehrman, 954 F.2d 1125, 1131 (5th Cir.1992). “The party opposing summary judgment is required to identify specific evidence in the record and to articulate the precise manner in which that evidence supports his or her claim.” Ragas v. Tenn. Gas Pipeline Co., 136 F.3d 455, 458...