Bentley Motors Ltd. v. McEntegart

• Decision Date: 09 October 2012
• Docket Number: Case No. 8:12–cv–1582–T–33TBM.
• Citation: 899 F.Supp.2d 1291
• Parties: BENTLEY MOTORS LIMITED CORPORATION and Bentley Motor, Inc., Plaintiffs, v. Matthew McENTEGART, Fugazzi Cars, Inc., Robert Fraray III, and Keeping It Real Auto Customizing, Defendants.
• Court: U.S. District Court — Middle District of Florida

899 F.Supp.2d 1291

BENTLEY MOTORS LIMITED CORPORATION and Bentley Motor, Inc., Plaintiffs,

v.Matthew McENTEGART, Fugazzi Cars, Inc., Robert Fraray III, and Keeping It Real Auto Customizing, Defendants.

Case No. 8:12–cv–1582–T–33TBM.

United States District Court,

M.D. Florida,

Tampa Division.

Oct. 9, 2012.

Armando Pedro Rubio, Cole, Scott & Kissane, PA, Miami, FL, Gregory D. Phillips, Howard, Phillips & Andersen, PC, Jason P. Eves, Scott R. Ryther, Phillips Ryther & Winchester, LLC, Salt Lake City, UT, for Plaintiffs.

Matthew McEntegart, St. Petersburg, FL, pro se.

John F. McGuire, McGuire Law Offices, PA, Clearwater, FL, for Defendants.

ORDER

VIRGINIA M. HERNANDEZ COVINGTON, District Judge.

This cause comes before the Court pursuant to the September 19, 2012, report and recommendation of Thomas B. McCoun, United States Magistrate Judge (Doc. # 43), in which Judge McCoun recommends that Plaintiffs' Motion for Preliminary Injunction (Doc. # 5) be granted.

As of this date, there are no objections to the report and recommendation, and the time for the parties to file such objections has elapsed.

After conducting a careful and complete review of the findings and recommendations, a district judge may accept, reject or modify the magistrate judge's report and recommendation. 28 U.S.C. § 636(b)(1); Williams v. Wainwright, 681 F.2d 732 (11th Cir.1982), cert. denied,459 U.S. 1112, 103 S.Ct. 744, 74 L.Ed.2d 964 (1983). In the absence of specific objections, there is no requirement that a district judge review factual findings de novo, Garvey v. Vaughn, 993 F.2d 776, 779 n. 9 (11th Cir.1993), and the court may accept, reject or modify, in whole or in part, the findings and recommendations. 28 U.S.C. § 636(b)(1)(C). The district judge reviews legal conclusions de novo, even in the absence of an objection. See Cooper–Houston v. S. Ry. Co., 37 F.3d 603, 604 (11th Cir.1994); Castro Bobadilla v. Reno, 826 F.Supp. 1428, 1431–32 (S.D.Fla.1993), aff'd,28 F.3d 116 (11th Cir.1994).

After conducting a careful and complete review of the findings, conclusions and recommendations, and giving de novo review to matters of law, the Court accepts the factual findings and legal conclusions of the magistrate judge and the recommendation of the magistrate judge.

Accordingly, it is hereby

ORDERED, ADJUDGED, and DECREED:

(1) The report and recommendation of Thomas B. McCoun, United States Magistrate Judge (Doc. # 43) is ACCEPTED and ADOPTED.

(2) Plaintiffs' Motion for Preliminary Injunction (Doc. # 5) is GRANTED.

REPORT AND RECOMMENDATION

THOMAS B. McCOUN III, United States Magistrate Judge.

THIS CAUSE is before the Court on referral for a Report and Recommendation on Bentley's Motion for Preliminary Injunction and Memorandum in Support (Doc. 5) and Matthew McEntegart's Declaration in Response to Motion for Preliminary Injunction (Doc. 35).¹ A hearing on the Motion was conducted September 10, 2012. For the reasons set forth herein, I recommend the Motion be GRANTED.

Bentley Motors Limited Corporation is a foreign corporation organized under the laws of Great Britain. Bentley Motors, Inc. is a corporation organized under the laws of Delaware. These corporations, collectively referred to herein as “Bentley,” manufacture, distribute, sell and service high-end automobiles. Fugazzi Cars, Inc. (“Fugazzi”) is a Florida corporation operating in St. Petersburg, Florida. Matthew McEntegart (“McEntegart”) is the owner and operator of Fugazzi. Fugazzi has not made an appearance in this action. McEntegart, appears pro se. Keeping it Real Auto Customizing, Inc. (“Keeping it Real”) is a Florida corporation operating in Clearwater, Florida. Its owner and operator is Robert Frary, III (“Frary”).

By its Verified Complaint filed in July 2012, Bentley sues Defendants for counterfeiting, infringement and dilution of Bentley's trademarks and trade dress rights in the inherently distinctive shape of Bentley vehicles, particularly the Continental GTC vehicle, and for infringement of Bentley's United States Design Patent (D570,738S) in the ornamental design of its vehicles. In short, Bentley alleges that Defendants unlawfully manufacture Bentley body kits that transform ordinary and inexpensive Chrysler Sebring and Ford Mustang automobiles into knock-off Bentley vehicles by intentionally misappropriating the overall appearance and shape of the Bentley GTC automobile and Bentley trademarks, including copies and colorable imitations thereof, and incorporating them into Bentley car kits. By its allegations, Defendants continue to manufacture, advertise and sell these kits despite Bentley's cease and desist demands. (Doc. 1). Bentley sues Defendants in four counts for: (1) trademark dilution under 15 U.S.C. § 1125(c); (2) trademark infringement and counterfeiting under 15 U.S.C. § 1114(1); (3) false advertising, false designation of origin and trade dress infringement under 15 U.S.C. § 1125(a); (4) and design patent infringement under 35 U.S.C. § 271.² Among other relief sought, Bentley seeks preliminary and permanent injunction against further infringement. Id.

I.

By its motion for injunctive relief, Bentley seeks issuance of a preliminary injunction under the Lanham Act, precluding Defendants from acts of (1) trademark infringement under 15 U.S.C. § 1114(1)(a); (2) trade dress infringement under 15 U.S.C. § 1125; and (3) trademark dilution under 15 U.S.C. § 1125(c)(1). Bentley again argues that the Defendants' transformation of model year 2001 through 2006 Chrysler Sebring automobiles into knock-off or imitation Bentley Continental GTC automobiles causes irreparable harm to its goodwill because when the public views the imitation Bentley vehicles made with Defendants' car body kits, they will mistakenly believe that the unsurpassed quality and reputation of genuine Bentley vehicles have deteriorated. Despite Defendants' claims that they have not engaged in the manufacture, advertisement, sale and/or distribution of the offending body-kits since receiving Bentley's cease and desist letter, and despite any disclaimer employed by Defendants, injunctive relief is necessary. Bentley seeks preliminary injunctive relief requesting that Defendants and all of their officers, directors, agents, servants, and employees are:

a. Enjoined and restrained from manufacturing, advertising, marketing and/or selling car body kits and/or replica cars that use, copy, misappropriate the following trademarks: BENTLEY®, the Bentley BTM, and the B IN WINGS®, and/or the trade dress of any Bentley vehicle.

b. Enjoined and restrained from otherwise violating Bentley's trademark and trade dress rights.

c. Enjoined and restrained from instructing, assisting, aiding or abetting any other person or business entity in engaging in or performing any of the activities mentioned above.

d. Ordered and directed, pursuant to 15 U.S.C. § 1118, to deliver to Bentley all vehicles, body kits, products, labels, tags, signs, prints, packages, videos, and advertisements in their possession or under their control, bearing or using any or all of the Bentley trademarks and/or trade dress, and all plates, molds, matrices and other means of making the same.

e. Ordered and directed to contact all dealers or other distributors of their products, or any advertisers of Defendants' products, provide them with a copy of the Order and Preliminary Injunction, and request that all dealers or other distributors, or any advertisers of their products turn over to Bentley any replica Bentley vehicles and/or Bentley kits, and to remove any advertisements or other materials advertising Defendants' replica Bentley vehicles and/or Bentley kits.

f. Ordered and directed to post and/or publish a complete and unedited copy of this Order and Preliminary Injunction on their respective web-page(s) and on any other website (including, but not limited to Facebook and/or any other social media site) where Defendants have previously published, posted, marketed, advertised, and/or commented with respect to the Defendants' replica Bentley vehicles and/or Bentley kits.

See (Doc. 41–1 at 23–24).³

In response, Defendant Frary urges that the only involvement of his company, Keeping it Real, was painting three of Fugazzi's vehicles and that he was not aware that painting vehicles for Fugazzi was inappropriate.⁴ Moreover, DefendantsFrary and Keeping it Real argue that they never received a cease and desist order from Defendants and did not learn of the same until suit was filed. In explanation of some of Bentley's proffered exhibits, Frary contends that they advertised for Fugazzi on Facebook and other websites only because they were promised further paint work if any job sold. See (Doc. 37).

Defendant McEntegart responds that he created a car body plug in late 2011 or early 2012 from his own imagination which fit over the chassis of a Chrysler Sebring. When his product was sold, it was called the “Sebring Wide Body.” He urges that in making the Sebring Wide Body, he did not copy the Bentley GTC. Furthermore, he contends there are a number of material differences in the dimensions and appearance of the two vehicles. Further, he denies that he ever passed-off or advertised the Sebring Wide Body as a Bentley GTC or any other vehicle, and that he employed a disclaimer of such on his Facebook advertisement (prior to its discontinuation). He asserts that since receiving the Bentley cease and desist demand, he has voluntarily ceased the manufacture and distribution of the car body kits, and has removed his advertisements by unpublishing his Facebook postings. Defendant McEntegart contends that when he receives inquiries for the Sebring Wide Body, he replies that none are available and that he no longer produces them. He alleges that any remaining existing postings or advertisements are not made by him and are beyond his ability to control. Finally, Defendant McEntegart argues that while he did incorporate the entity, Fugazzi Cars, Inc., he never...