Bon Vivant Catering, Inc. v. Duke Univ.
| Decision Date | 03 June 2016 |
| Docket Number | 1:13CV728 |
| Court | U.S. District Court — Middle District of North Carolina |
| Parties | BON VIVANT CATERING, INC. and LAURA HALL, Plaintiffs, v. DUKE UNIVERSITY, et al., Defendants. |
This matter is before the Court on Defendant Duke University's First and Second Motions for Partial Summary Judgment [Docs. #134 and #150], and Plaintiffs Bon Vivant Catering, Inc. and Laura Hall's Motion for Summary Judgment [Doc. #148], Motion for Partial Summary Judgment on Affirmative Defenses [Doc. #146], and Motion to Exceed Page Limit [Doc. #174]. For the reasons that follow, the Court will recommend that both of Duke University's motions be denied, that Plaintiffs' Motion for Summary Judgment be denied, and that Plaintiffs' Motion for Partial Summary Judgment on Affirmative Defenses be granted in part and denied in part. Additionally, the Court will grant Plaintiffs' Motion to Exceed Page Limit.
This matter involves a trademark infringement action in which Plaintiffs Laura Hall ("Ms. Hall") and Bon Vivant Catering, Inc. ("Bon Vivant") allege that Defendant Duke University ("Duke") infringed Plaintiffs' federally-registered "Refectory Café" mark, U.S. Trademark Registration No. 4,249,970 [Doc. #69-2].
Bon Vivant, with Ms. Hall as majority shareholder and President, began operating the Refectory Café at Duke University Divinity School in 2005. According to a Divinity School publication, the Refectory Café sought to provide the Duke community with a "green dining" experience, focused on "buying local." (Pls.' Br., Ex. F [Doc. #147-6] at 23-26.1) Ms. Hall subsequently described the Refectory Café as a business "dedicated to environmental, social, [and] economic sustainability," and she believed this focus to be unique among dining services on Duke's campus. (Apr. 9, 2012 Letter [Doc. #170-8].) The Refectory Café apparently became popular within the Duke community, as evidenced by its receipt of numerous campus dining awards and the highest ranking on an internal survey commissioned by Duke. (See id. at 3; Pls.' Br., Ex. F [Doc. #147-6] at 23-26; Survey [Doc. #152-3] at 5.) Dr. Larry Moneta, Duke's Vice President of Student Affairs, believed the Refectory Café to be "one of [Duke's] exemplary operations." (Moneta Dep. [Doc. #147-7] at 75:13-25.) In 2008, Duke granted Bon Vivant a contract to open a second location of the Refectory Café at Duke Law School. (Compl. ¶ 33; Duke's Answer ¶ 33.)
Despite the Refectory Café's popular success at the Divinity School, by January 2012, the business was faltering. (Compl. ¶ 38; Duke's Answer ¶ 38.) Bon Vivant's contract with the Divinity School was set to expire at the end of June 2012, (Apr. 9 Letter [Doc. #170-8]),and Duke informed Ms. Hall that if Bon Vivant wanted to continue operating at the Divinity School, it would have to pay a 15% gross revenue commission to Duke. (Compl. ¶ 39; Duke's Answer ¶ 39.) Ms. Hall informed Duke that to be financially sustainable, the Refectory Café could only afford to pay a 5% commission, which was the commission rate it paid at its law school location. (Apr. 9, 2012 Letter [Doc. #170-8]; Hall Dep. [Doc. #170-4] at 234:6-16.)
In April of 2012, while Bon Vivant and Duke were negotiating the renewal of the Operator's Agreement for the Divinity School location, Dr. Moneta submitted a letter to the Duke Chronicle "respond[ing] to outcry" over the Refectory Café's potential closing. (Compl., Ex. A [Doc. #69-1]; Duke's Answer ¶ 49.) Addressing "misinformation concerning the alleged closure of the Refectory in the Divinity School[,]" Dr. Moneta wrote that:
what's at stake is not the closure of the dining unit in the Divinity School, nor of any change to the principles that govern the kind of food we feature there. We remain committed to featuring a highly "green" operation offering locally-sourced food with menus of great appeal to the diverse array of diners who eat there. What is at stake, then, is who the operator will be . . . .
(Compl., Ex. A; Duke's Answer ¶ 49.) Dr. Moneta went on to assure readers that regardless of who operated the dining facility at the Divinity School, "the overall quality, menu and pricing that is currently enjoyed at the Refectory will continue." (Compl., Ex. A [Doc. #69-1].)
On April 13, 2012, apparently while negotiations continued, Ms. Hall filed an application with the U.S. Patent and Trademark Office ("PTO") to register the "Refectory Café" mark. (Pl.'s Br., Ex. H [Doc. #149-8] at 2.) On November 27, 2012 the PTO issued a registration certificate for the "Refectory Café" mark. (Id. at 22.) The application and certificate identify Ms. Hall as the owner of the trademark. (Id. at 2, 22.)
In June of 2012, Patricia Eder ("Ms. Eder") submitted a proposal to Duke on behalf of her company, Core Catering, Inc. ("Core Catering"), to operate the Divinity School's dining facility. (Proposal [Doc. #152-4] at 3-41.) Ms. Eder, the President of Core Catering, (see Operator's Agreement [Doc. #152] at 21), had been an employee of Bon Vivant for four years, which she noted in the proposal. (Eder Dep. [Doc. #149-17] at 103:21-104:2.) Further, Core Catering's chef and director of catering had previously worked with Bon Vivant, which Ms. Eder also highlighted in the Proposal. (Id. at 104:3-18; Proposal [Doc. #152-4] at 10.)
Bon Vivant and Duke were ultimately unable to reach an agreement on the renewal terms of their contract, and Bon Vivant was required to vacate the dining space at the Divinity School by July 18, 2012.2 (June 19, 2012 Letter [Doc. #170-7].) In July of 2012, Duke awarded Core Catering the contract to operate the dining facility vacated by the Refectory Café. (Operator's Agreement [Doc. #152].) Despite Ms. Eder's objections, Duke required Core Catering to operate under the name "Divinity Refectory." (Moneta Dep. [Doc. #149-19] at 186:22-187:18.) This was the only instance that Duke had required a vendor to use a particular name. (Id. at 186:22-187:2.) According to Duke, the Divinity Refectory and the Refectory Café "serve[d] similar types of food," both "focus[ing] on providing healthy, homemade foods[.]" (Coffey Dep. [Doc. #149-1] at 109:5-19; 113:15-22.) Following the opening of the Divinity Refectory, Plaintiffs contend that consumers confused the Divinity Refectory withthe Refectory Café, and that "for two years, [Plaintiffs] had to defend the fact that [they] were [not] the Divinity Refectory . . . ." (Hall Dep. [Doc. #176-2] at 179:12-18.)
As a result of these events, Bon Vivant initially filed this action against Core Catering and affiliated individuals alleging trademark infringement under the Lanham Act and related state statutory and common law claims. After learning that Duke had required Core Catering to adopt the "Divinity Refectory" name, Bon Vivant amended the Complaint to add Duke as a defendant. Subsequently, pursuant to a stipulation, Bon Vivant dismissed its claims against two of the named individual defendants affiliated with Core Catering. (Stipulation [Doc. #23].) Thereafter, to address concerns regarding the proper plaintiff in this action, Bon Vivant amended the Complaint to add Laura Hall as a named plaintiff. (Compl. [Doc. #69].) Plaintiffs later dismissed their claims against Defendants Core Catering and Patricia Eder pursuant to a settlement agreement. (Consent Mot. to Dismiss [Doc. #118]; Feb. 24, 2016 Order [Doc. #131].)
Now remaining are the following claims asserted by Plaintiffs Bon Vivant and Laura Hall against Defendant Duke: (1) Infringement of a Registered Mark in Violation of Title 15 U.S.C. § 1114; (2) Unfair Competition in Violation of Title 15 U.S.C. § 1125(A); (3) Contributory and/or Vicarious Liability Under the Lanham Act; (4) Unfair Competition in Violation of the North Carolina Unfair and Deceptive Trade Practices Act, N.C. GEN. STAT. § 75-1.1, et seq.; and (5) Unfair Competition in Violation of North Carolina Common Law.3Duke, in turn, has asserted numerous affirmative defenses (Duke's Answer ¶¶ 188-223), as well as a counterclaim seeking a declaration that the trademark registration asserted by Plaintiffs is invalid, and an order that the trademark be cancelled pursuant to 15 U.S.C. § 1119, (id. ¶ 224).
Presently before the Court are four summary judgment motions. In addressing the Motions, the Court will first consider Duke's First Motion for Summary Judgment, in which it challenges the validity of the ownership and registration of the "Refectory Café" mark. Next, the Court will address Duke's Second Motion for Summary Judgment, in which Duke seeks judgment in its favor on all of Plaintiffs' claims on the basis that the term "refectory" is generic. The Court will then turn to Plaintiffs' Motion for Summary Judgment in which Plaintiffs argue that they are entitled to judgment as a matter of law on all of their claims. Finally, the Court will address Plaintiffs' Motion for Partial Summary Judgment seeking dismissal of several of Duke's affirmative defenses.
Pursuant to Rule 56 of the Federal Rules of Civil Procedure, summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986). A genuine issue of fact exists if the evidence presented could lead a reasonable fact-finder to return a verdict in favor of the non-moving party. Id. at 255. A court considering a motion for summary judgment must view all facts and...
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