Annie Oakley Enters., Inc. v. Amazon.Com, Inc.
| Decision Date | 13 September 2021 |
| Docket Number | 1:19-cv-1732-JMS-MJD |
| Parties | ANNIE OAKLEY ENTERPRISES, INC. and Renee Gabet, Plaintiffs, v. AMAZON.COM, INC., Defendant. |
| Court | U.S. District Court — Southern District of Indiana |
Melanie Ann Eich, Paul B. Overhauser, Overhauser Law Offices LLC, Greenfield, IN, for Plaintiffs Annie Oakley Enterprises Inc., Renee Gabet.
Robert T. Cruzen, Pro Hac Vice, Klarquist Sparkman, LLP, Portland, OR, for Defendant.
Plaintiffs Annie Oakley Enterprises, Inc. ("Annie Oakley") and its owner, Renee Gabet, initially brought this trademark action against Rise N Shine Online, LLC ("RNSO"), its owner Eric Young, and Amazon.com, Inc. ("Amazon"), alleging that Defendants sold products on Amazon's website that infringed Plaintiffs’ trademarks. [Filing No. 12.] Plaintiffs have settled their claims against RNSO and Mr. Young, and those claims were dismissed with prejudice, [Filing No. 64]; only the claims against Amazon remain. Presently pending before the Court are Plaintiffs’ Motion for Summary Judgment and Permanent Injunction, [Filing No. 134], Amazon's Cross-Motion for Summary Judgment, [Filing No. 149], Plaintiffs’ Motion for Leave to File Additional Authority, [Filing No. 176], and Amazon's Motion to Strike Plaintiffs’ Jury Demand, [Filing No. 252]. These motions are fully briefed and ripe for the Court's decision.
A motion for summary judgment asks the Court to find that a trial is unnecessary because there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). As the current version of Rule 56 makes clear, whether a party asserts that a fact is undisputed or genuinely disputed, the party must support the asserted fact by citing to particular parts of the record, including depositions, documents, or affidavits. Fed. R. Civ. P. 56(c)(1)(A). A party can also support a fact by showing that the materials cited do not establish the absence or presence of a genuine dispute or that the adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c)(1)(B). Failure to properly support a fact in opposition to a movant's factual assertion can result in the movant's fact being considered undisputed, and potentially in the granting of summary judgment. Fed. R. Civ. P. 56(e).
In deciding a motion for summary judgment, the Court need only consider disputed facts that are material to the decision. A disputed fact is material if it might affect the outcome of the suit under the governing law. Hampton v. Ford Motor Co. , 561 F.3d 709, 713 (7th Cir. 2009). In other words, while there may be facts that are in dispute, summary judgment is appropriate if those facts are not outcome determinative. Harper v. Vigilant Ins. Co. , 433 F.3d 521, 525 (7th Cir. 2005). Fact disputes that are irrelevant to the legal question will not be considered.
Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
On summary judgment, a party must show the Court what evidence it has that would convince a trier of fact to accept its version of the events. Johnson v. Cambridge Indus. , 325 F.3d 892, 901 (7th Cir. 2003). The moving party is entitled to summary judgment if no reasonable factfinder could return a verdict for the non-moving party. Nelson v. Miller , 570 F.3d 868, 875 (7th Cir. 2009). The Court views the record in the light most favorable to the non-moving party and draws all reasonable inferences in that party's favor. Darst v. Interstate Brands Corp. , 512 F.3d 903, 907 (7th Cir. 2008). It cannot weigh evidence or make credibility determinations on summary judgment because those tasks are left to the factfinder. O'Leary v. Accretive Health, Inc. , 657 F.3d 625, 630 (7th Cir. 2011). The Court need only consider the cited materials, Fed. R. Civ. P. 56(c)(3), and the Seventh Circuit Court of Appeals has "repeatedly assured the district courts that they are not required to scour every inch of the record for evidence that is potentially relevant to the summary judgment motion before them." Johnson , 325 F.3d at 898. Any doubt as to the existence of a genuine issue for trial is resolved against the moving party. Ponsetti v. GE Pension Plan , 614 F.3d 684, 691 (7th Cir. 2010).
The existence of cross-motions for summary judgment does not imply that there are no genuine issues of material fact. R.J. Corman Derailment Servs., LLC v. Int'l Union of Operating Engineers, Local Union 150, AFL-CIO , 335 F.3d 643, 647 (7th Cir. 2003). Specifically, "[p]arties have different burdens of proof with respect to particular facts; different legal theories will have an effect on which facts are material; and the process of taking the facts in the light most favorable to the non-movant, first for one side and then for the other, may highlight the point that neither side has enough to prevail" on summary judgment. Id. at 648.
At the outset, the Court notes that Plaintiffs failed to comply with this Court's Practices and Procedures for citing to record evidence in their briefs. The Practices and Procedures provide: [Filing No. 7 at 3.] In addition, "[i]n a supporting brief, [parties must] cite to the docket number, the attachment number (if any), and the applicable .pdf page as it appears on the docket information located at the top of the filed document." [Filing No. 7 at 4.] Plaintiffs’ citations do not follow this format, and instead reference the documents’ titles, such as "Ex. 11, Gabet Decl., ¶ 3." The proper citation for this material is "Filing No. 136-5 at 1." Failure to follow the proper citation conventions has made the Court's review of the voluminous record evidence unnecessarily difficult and cumbersome. Counsel is cautioned to comply with the Court's Practices and Procedures in this and other cases going forward or risk striking of the filing.
In addition, Amazon makes numerous arguments challenging the admissibility of certain evidence, and also argues that its version of the facts should be adopted in its entirety because Plaintiffs’ response brief failed to comply with the requirement established in Local Rule 56-1 that responding parties specifically designate which facts remain in dispute. [See Filing No. 151 at 20-34; Filing No. 185 at 8-9.] The Court need not address each of the evidentiary objections in detail, because the vast majority of the evidence subject to those objections is not material to the resolution of the summary judgment motions and therefore is not recited as fact below. Relevant objections are addressed as needed throughout the remainder of this Order. As for Amazon's Local Rule 56-1 argument, the Court acknowledges that Plaintiffs’ "Statement of Material Facts in Dispute" in their response brief—which merely incorporates by reference the "Statement of Material Facts Not in Dispute" from their initial Motion for Summary Judgment—is confusing, unhelpful, and does not meet the strict requirements of Local Rule 56-1(b). Nevertheless, the Court prefers to decide issues on the merits and has done its best to determine the facts truly in dispute based on the parties’ briefing. See Local Rule 56-1(l ) ().
Turning to the facts themselves, the following factual background is set forth pursuant to the standard detailed above. The facts stated are not necessarily objectively true, but as the summary judgment standard requires, the undisputed facts and the disputed evidence are presented in the light most favorable to "the party against whom the motion under consideration is made." Premcor USA, Inc. v. Am. Home Assurance Co. , 400 F.3d 523, 526-27 (7th Cir. 2005).
Annie Oakley was established in 1980 and makes and sells a variety of health and beauty products including perfumes, lotions, oils, shampoos, and conditioners. [Filing No. 136-5 at 1.] It sells its products at its storefront in Ligonier, Indiana, over the internet, and "through its world-wide network that has included over 3,100 dealers." [Filing No. 136-5 at 1.] Annie Oakley does not sell any products on Amazon's website. [Filing No. 149-16 at 5.] Ms. Gabet is the sole owner and principal officer of Annie Oakley and she designs all of its proprietary fragrance blends. [Filing No. 136-5 at 1.]
Ms. Gabet has filed over sixty federal trademark applications for the names of her proprietary fragrances. [Filing No. 136-5 at 2.] Annie Oakley is the sole licensee of all of those trademarks. [Filing No. 136-5 at 2.] Relevant to this case, Ms. Gabet filed two applications to register the mark RISE ‘N SHINE ("the Mark"). [Filing No. 136-5 at 2.] Registration No. 2,549,750 ("the ‘750 Registration") is for "perfumes, body oils, room fragrances, and essential oils for personal use." [Filing No. 135-3 at 1; Filing No. 149-8 at 2.] The date of first use and first use in commerce appearing on the ‘750 Registration is January 2000, and the registration date is March 19, 2002. [Filing No. 135-3 at 1; Filing No. 149-8 at 2.] Registration No. 3,990,283 ("the ‘283 Registration") is for "shampoos, hair conditioners, body soaps and body powders." [Filing No. 135-4 at 1; Filing No. 149-9 at 2.] The date of first use and first use in commerce appearing on the ‘283 Registration is April 29, 2011, and the registration date is July 5, 2011. [Filing No. 135-4 at 1; Filing No. 149-9 at 2.]
For both the ‘750 Registration and the ‘283 Registration, the United States Patent and Trademark Office ("USPTO") issued a ...
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