Casa Dimitri Corp. v. Invicta Watch Co. of Am., Inc.

• Decision Date: 15 September 2017
• Docket Number: Case No. 0:15–CV–21038–KMM
• Citation: 270 F.Supp.3d 1340
• Parties: CASA DIMITRI CORP. d/b/a Dimitri & Co., and Technomarine, S.A., Plaintiffs, v. INVICTA WATCH COMPANY OF AMERICA, INC., TM Brands, LLC, Eyal Lalo, and Technomarine USA, Inc., Defendants. TM Brands, LLC, a Florida Limited Liability Company, Counter–Plaintiff, v. Casa Dimitri Corp. d/b/a Dimitri & Co., a Florida Corporation; Dimitri & Company Eye Wear, Inc., a Florida Corporation; Dimitri Lampru, Individually, Counter–Defendants.
• Court: U.S. District Court — Southern District of Florida

270 F.Supp.3d 1340

CASA DIMITRI CORP. d/b/a Dimitri & Co., and Technomarine, S.A., Plaintiffs,

v.INVICTA WATCH COMPANY OF AMERICA, INC., TM Brands, LLC, Eyal Lalo, and Technomarine USA, Inc., Defendants.

TM Brands, LLC, a Florida Limited Liability Company, Counter–Plaintiff,

v.Casa Dimitri Corp. d/b/a Dimitri & Co., a Florida Corporation; Dimitri & Company Eye Wear, Inc., a Florida Corporation; Dimitri Lampru, Individually, Counter–Defendants.

Case No. 0:15–CV–21038–KMM

United States District Court, S.D. Florida.

Filed September 15, 2017

Beshoy Rizk, Roberto Zarco, Alejandro Brito, Zarco, Einhorn, Salkwoski & Brito, P.A., Miami, FL, for Plaintiffs.

Glen H. Waldman, Michael Sayre, Waldman Barnett, P.L., Coconut Grove, FL, for Defendants.

OMNIBUS ORDER

K. MICHAEL MOORE, CHIEF UNITED STATES DISTRICT JUDGE

THIS CAUSE came before the Court upon Defendants Invicta Watch Company of America, Inc. ("Invicta"), TM Brands, LLC ("TM Brands"), Eyal Lalo ("Lalo") and Technomarine USA, Inc.'s (collectively "Defendants") Motion for Summary Judgment (ECF No. 229), and upon Counter–Plaintiff TM Brands' Motion for Summary Judgment as to Liability (ECF No. 228). The Motions are now ripe for review.¹ For the reasons set forth below, Defendants' Motion for Summary Judgment is granted and Counter–Plaintiff's Motion for Summary Judgment is granted in part and denied in part.

I. BACKGROUND

A. Factual Background²

Technomarine, S.A. was a Swiss watch company and original owner of the Technomarine trademarks. See Plaintiffs' Statement of Undisputed Material Facts ("Pls.' 56.1") (ECF No. 235) ¶ 1. Technomarine, S.A. licensed the use of those trademarks to Casa Dimitri Corp. d/b/a Dimitri & Co. ("Casa Dimitri") through a License Agreement. Id. Both Casa Dimitri and Plaintiff Dimitri Eyewear are companies incorporated in Florida. See Defendant's Statement of Undisputed Material Facts ("Defs.' 56.1") (ECF No. 229) ¶ 4. Demetrio Lampru personally runs, operates, and exercises control over Casa Dimitri and Dimitri Eyewear. See CP's 56.1 ¶ 10 n.3 (citing Lampru Dep. (ECF No. 228–10) at 263–264).

As licensee, Casa Dimitri sold Technomarine eyewear, including in the United States. Defs.' 56.1 ¶ 4. Casa Dimitri was also involved in the development and manufacture of eyewear products bearing the Technomarine mark. Id. ¶ 5. Casa Dimitri used an Italian manufacturer—Industria Occhiala Vista E Sole ("IOVES")—to manufacturer the Technomarine eyewear. Id. IOVES is a non-exclusive manufacturer. Id. ¶ 6. Enrique Martini, working on behalf of Casa Dimitri, created sketches of eyewear designs, which IOVES would render into a computerized model. Defs.' 56.1 ¶ 7; Pls.' 56.1 ¶ 7. The Parties dispute the role IOVES had in the design process. Defs.' 56.1 ¶ 8; Pls.' 56.1 ¶ 8. The Casa Dimitri Parties maintained a website on which they advertised and sold Technomarine eyewear. Defs.' 56.1 ¶ 10. The website was created in 2008 or 2009 and was public to everyone world-wide, including in the United States. Id. Casa Dimitri did not register copyrights for their eyewear designs with the United States Patent and Trademark Office ("USPTO"). Defs.' 56.1 ¶ 9; Pls.' 56.1 ¶ 9.

In December 2014, Technomarine, experiencing financial difficulties, instituted reorganization proceedings in Switzerland. Defs.' 56.1¶ 1.³ The Swiss Court appointed a trustee. Pl. 56.1 ¶ 1. TM Brands purchased all of Technomarine S.A.'s rights to the Technomarine trademarks pursuant to an Asset Purchase Agreement ("APA"), which the trustee signed. Id. ¶ 2. Invicta, the managing member of TM Brands, was also a party to the APA. See Counter–Plaintiff's Statement of Undisputed Facts ("CP's 56.1") (ECF No. 228) ¶ 3. This Court held that TM Brands purchased the trademarks through the APA unencumbered by the License Agreement. Def. 56.1 ¶ 3 (citing Omnibus Order (ECF No. 162) at 14). This Court also held that the License Agreement was terminated and Casa Dimitri's rights in the Technomarine Marks reverted back to Technomarine, which sold its rights to the marks to TM Brands LLC. See id.⁴

The relevant license agreement between Casa Dimitri and Technomarine S.A. provided that, upon termination of the license agreement, Casa Dimitri had the right to continue to sell the products for a six-month period. See 2013 License Agreement (ECF No. 239–3) ¶ 18.4. Upon acquiring the marks, TM Brands, who is not a party to the license agreement, did not afford Casa Dimitri this sell-off period. Counter Defendants' Statement of Undisputed Facts ("CDs' 56.1") (ECF No. 239) ¶ 13; see also Counter–Plaintiff's Reply Statement of Material Facts ("CP's R 56.1") ¶ 13.

Instead, Technomarine S.A. sent two notices of termination to the Casa Dimitri Parties on May 15, 2015, and June 25, 2015, respectively. See CDs' 56.1 ¶ 5.⁵ On March 6, 2015, Invicta sent an email to Lampru stating that: "as the new owners of the TechnoMarine trademarks you are not authoriz[ed] to manufacture any products bearing the TechnoMarine trademark ... Any production or importation will be considered Trademark infringement and is unauthorized." See CP's 56.1 ¶ 7 (citing (ECF No. 195–5)). On September 1, 2016—following this Court's Omnibus Order (ECF No. 162)—TM Brands sent the Casa Dimitri Parties another cease and desist letter. CP's 56.1 ¶ 8 (citing (ECF No. 195–6)).

The Casa Dimitri Parties do not deny that they continued to market, distribute, and sell Technomarine products after these cease-and-desist letters, but deny that they currently sell Technomarine products. CP's 56.1 ¶ 10; CDs' 56.1 ¶ 10. The Casa Dimitri Parties also sold Technomarine product after the Omnibus Order. CP's 56.1 ¶ 12. Counter–Plaintiffs contends that certain 2017 sales were "small and isolated" sales of spare parts and repair services. CDs' 56.1 ¶ 12. The Casa Dimitri Party's websites were maintained until several days after the August 2016 Omnibus Order. CP's 56.1 ¶ 14; CDs' 56.1 ¶ 14.

In June 2016, the Casa Dimitri Parties sold 5,385 pieces of eyewear to Garage Watches, LLC ("Garagewatches"). CP's 56.1 ¶ 11. Garagewatches, through their legal counsel, sent a letter to Amazon explaining that it acquired Technomarine sunglasses from Casa Dimitri on or about June 17, 2016 based on Casa Dimitri's representation that it held a valid license to sell the sunglasses. CP's 56.1 ¶ 11 (citing (ECF No. 228–01)). Counter–Defendants deny that they presented Garagewatches with a copy of its license agreement or otherwise insinuated that they were a licensee of the Technomarine trademark. CDs' 56.1 ¶ 11. Marita Belfiore, one of Casa Dimitri's retailers, believed (as of the date of her June 5, 2017 deposition) that Casa Dimitri owned the Technomarine logo and the word "Technomarine" because he was selling her the products. See CP's 56.1 ¶ 17 (citing Belfiore Dep. (ECF No. 228–7) at 21:21–25).

After purchasing the marks, Invicta introduced the Technomarine eyewear into its established sales channels. Defs.' 56.1 ¶ 13. Invicta sold eyewear to some of Casa Dimitri's customers, but it is disputed whether Invicta approached any of Casa Dimitri's customers that Invicta had not previously sold to prior to the APA. Defs.' 56.1 ¶ 14–15; Pls.' 56.1 ¶ 14–15.

B. Relevant Procedural Background

Plaintiffs filed the operative complaint in this action on November 7, 2016. See Second Amended Complaint ("Compl.") (ECF No. 188). Plaintiffs filed this after this Court entered an order dismissing Plaintiffs' trademark-based claims on August 25, 2016. See Omnibus Order (ECF No. 162). Therein, this Court found that Casa Dimitri's rights under the licensing and distribution agreements were terminated by the APA upon the sale of the Technomarine marks to Defendants, and thus Casa Dimitri had no remaining protectable interest in those marks. Id. at 14–5. The Court reaffirmed this holding when it denied Casa Dimitri's motion for reconsideration of the dismissal of its trademark claims. (ECF No. 212)

On November 29, 2016, Defendants answered the Second Amended Complaint and Defendant TM Brands filed a counterclaim against the Casa Dimitri Defendants that includes claims of federal and common law trademark infringement. See Answer and Counterclaims ("Countercl.") (ECF No. 194).

TM Brands also moved for a preliminary injunction against the Casa Dimitri Parties. See Motion for Preliminary Injunction (ECF No. 195). Judge McAliley issued a Report and Recommendation (ECF No. 214), finding that although TM Brands is the registered owner of the Technomarine Marks and there was evidence that the Casa Dimitri Parties had engaged in unauthorized use of the marks, there was no likelihood of irreparable harm because, inter alia , there was no evidence that Casa Dimitri was continuing to use the marks (or even that Casa Dimitri had used the marks after June of 2016). See Report (ECF No. 214) at 8–10. On April 7, 2017, this Court adopted Judge McAliley's Report and Recommendation, and denied a preliminary injunction against Counter–Defendants. See Order Adopting Report and Recommendation (ECF No. 219).

On July 10, 2017 Defendants moved for summary judgment on all claims. See Defendants' Motion for Summary Judgment (ECF No. 229). On the same date, TM Brands also moved for summary judgment as to liability on its counterclaims. See Counter–Plaintiff's Motion for Summary Judgment (ECF No. 228).

II. LEGAL STANDARD

Summary judgment is appropriate where there is "no genuine issue as to any material fact [such] that the moving party is entitled to judgment as a matter of law." Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ; see also Fed R. Civ. P. 56. An issue of fact is "material" if it is a legal element of the claim under the applicable substantive law that might affect the outcome of the case. Allen v. Tyson Foods, Inc. , 121 F.3d 642, 646 (11th Cir. 1997). An issue of fact is "genuine" if the record, taken as a whole, could lead a rational trier of fact to find for the non-moving party. Id. "For factual issues to be...