Chanel, Inc. v. Van Doren
| Decision Date | 28 November 2016 |
| Docket Number | No. 3:15-CV-1393-M (BF),3:15-CV-1393-M (BF) |
| Parties | CHANEL, INC., Plaintiff, v. ADAM VAN DOREN, et al., Defendants. |
| Court | U.S. District Court — Northern District of Texas |
This case has been referred to the United States Magistrate Judge for pretrial management. Before the Court is Motion for Partial Summary Judgment [ECF No. 20] filed by Chanel, Inc. ("Plaintiff"). For the reasons stated below, the undersigned respectfully recommends that Plaintiff's Motion for Partial Summary Judgment [ECF No. 20] be GRANTED.
On May 4, 2015, Plaintiff filed this trademark infringement suit against Adam Van Doren a/k/a Adam Vandoren, an individual, Kimberley Dawn Gutierrez, a/k/a Kimberley Van Doren a/k/a Kimberley Vandoren a/k/a Kim Van Doren, an individual, d/b/a K&A Custom Creations d/b/a Custom K&A Creations d/b/a Custom Embroidery Creations (collectively, the "Van Doren Defendants"), and Does 1-10 (the "Doe Defendants"). Compl. 1, ECF No. 1. Plaintiff is engaged in the business of manufacturing and distributing throughout the world, including in the Northern District of Texas, handbags, towels, and other products under federally registered trademarks. Compl. 2, ECF No. 1. Plaintiff alleges that the Van Doren Defendants are directly engaged in the sale of counterfeit and infringing products in the Northern District of Texas. Compl. 2, ECF No. 1. Plaintiff states that the Van Doren Defendants are the owners and operators of an e-commerce store that operates under the Seller ID - customembroiderycreations - via the online platform artfire.com where handbags and towels bearing Plaintiff's federally registered trademarks are sold. Pl.'s Br. 4-5, ECF No. 21. Plaintiff states that while they issued a takedown request to artfire.com, Adam Van Doren responded to the request stating that "the designs were drawn and edited by me, and in doing so they vary in style from Chanel's logo." Pl.'s Br. 7, ECF No. 21. Plaintiff contends that the Doe Defendants are individuals and business entities who conduct business in the Northern District of Texas and are partners or suppliers to the Van Doren Defendants. Compl. 2-3, ECF No. 1. While Plaintiff was unaware of the true names of the Doe Defendants at the time of the filing of its Original Complaint, Plaintiff stated that it would amend the Original Complaint upon discovery of the Doe Defendants' identities. Compl. 3, ECF No. 1. However, as of the date of these Findings, Conclusions, and Recommendation, which is over 18 months after the filing of Plaintiff's Original Complaint, Plaintiff still has not filed the amended complaint.
Plaintiff's Original Complaint brings the following claims against the Van Doren Defendants and the Doe Defendants: Count I - Federal Trademark Infringement Pursuant to § 32 of the Lanham Act; Count II - Federal Trademark Counterfeiting Pursuant to § 32 of the Lanham Act; Count III - False Designation of Origin Pursuant to § 43(a) of the Lanham Act; Count IV - Trademark Dilution; and Count V - Common Law Trademark Infringement. Compl. 7-11, ECF No. 1. On April 28, 2016, Plaintiff filed its Motion for Partial Summary Judgment seeking summary judgment against the Van Doren Defendants, holding them individually and jointly liable on Counts I through V of the Original Complaint. Pl.'s Br. 34, ECF No. 21. Plaintiff seeks findings in accordance with 15 U.S.C. § 1117(b) which state that the Van Doren Defendants intentionally used copies of Plaintiff's marks, with the knowledge that the marks were counterfeit as defined in 15 U.S. C. § 1116(d) in connection with the sale, offering for sale, or distribution of goods; a permanent injunction; and statutory damagespursuant to 15 U.S.C. § 1117(c) in an amount to be determined by the Court. Pl.'s Br. 34, ECF No. 21. The Van Doren Defendants failed to file a response and the time to do so has passed.
Summary judgment is proper when "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(a). A party seeking summary judgment bears the initial burden of showing the absence of a genuine issue for trial. See Duffy v. Leading Edge Prods., Inc., 44 F.3d 308, 312 (5th Cir. 1995). The movant's burden can be satisfied by demonstrating that there is an absence of evidence which supports the nonmoving party's case for which that party would have the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the movant meets its initial burden, the non-movant must show that summary judgment is not proper. See Duckett v. City of Cedar Park, 950 F.2d 272, 276 (5th Cir. 1992). The parties may satisfy their respective burdens "by tendering depositions, affidavits, and other competent evidence[.]" See Topalian v. Ehrman, 954 F.2d 1125, 1131 (5th Cir. 1992). All evidence must be viewed in the light most favorable to the party opposing the summary judgment motion. See Rosado v. Deters, 5 F.3d 119, 123 (5th Cir. 1993).
The party opposing the summary judgment motion must identify specific evidence in the record and state the precise manner in which that evidence supports his claim. Esquivel v. McCarthy, No. 3:15-CV-1326-L, 2016 WL 6093327, at *2 (N.D. Tex. Oct. 18, 2016) (citing Ragas v. Tenn. Gas Pipeline Co., 136 F.3d 455, 458 (5th Cir. 1988)). "[T]he court is under no duty to sift through the record to find evidence that supports a nonmovant's opposition to a motion for summary judgment." Id. (citing Ragas, 136 F.3d at 458; Skotak v. Tenneco Resins, Inc., 953 F.2d 909, 915-16 & n.7 (5th Cir. 1992)). While a defendant's failure to file a response "does not permit the court to enter a'default' summary judgment[,] . . . [a] court, however, is permitted to accept the movant's facts as undisputed when no response or opposition is filed." Id. (citing Eversley v. MBank Dallas, 843 F.2d 172, 174 (5th Cir. 1988)).
In order to prevail on a trademark infringement claim under § 32 of the Lanham Act, 15 U.S.C. § 1114, Plaintiff must show that it "has a protectable property right in the name it seeks to defend from use by others[,]" and "infringement, as judged by likelihood of confusion." Sec. Ctr., Ltd. v. First Nat'l. Sec. Ctrs., 750 F.2d 1295, 1298 (5th Cir. 1985) (citing Falcon Rice Mill, Inc. v. Cmty. Rice Mill, Inc., 725 F.2d 336, 345 (5th Cir. 1984)). In order "[t]o be protectable, a mark must be distinctive, either inherently or by achieving secondary meaning in the mind of the public." Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008) (citing Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 536 (5th Cir. 1998); Sec. Ctr., Ltd., 750 F.2d at 1298).
An infringement action under the Lanham Act exists where the defendant "'uses (1) any reproduction, counterfeit, copy[,] or colorable imitation of a mark; (2) without the registrant's consent; (3) in commerce; (4) in connection with the sale, offering for sale, distribution[,] or advertising of any goods; (5) where such use is likely to cause confusion, or to cause mistake or to deceive.'" Id. (citing Boston Prof'l Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., 510 F.2d 1004, 1009-10 (5th Cir. 1975); 15 U.S.C. § 1114). The factors used in the Fifth Circuit "in determining whether a likelihood of confusion exists are: '(1) strength of the plaintiff's mark; (2) similarity of design between the marks; (3) similarity of the products; (4) identity of retail outlets andpurchasers; (5) similarity of advertising media used; (6) the defendant's intent; (7) actual confusion; and (8) degree of care exercised by potential purchasers.'" Id. (quoting Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 170 (5th Cir. 1986)). "'The absence or presence of any one factor ordinarily is not dispositive; indeed, a finding of likelihood of confusion need not be supported even by a majority of the . . . factors.'" Id. (quoting Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 150 (5th Cir. 1985)).
Plaintiff submits the federal trademark registrations showing ownership of its marks. Ex. A-1, ECF No. 22-2. Plaintiff argues that it cannot be seriously disputed that the Chanel marks are strong, arbitrary, and fanciful. Pl.'s Br. 15-16, ECF No. 21. In addition, Plaintiff attaches images showing that the marks used by the Van Doren Defendants are identical to the Chanel marks. Pl.'s Br. 17, ECF No. 21; Ex. C-3, ECF No. 22-9; Ex. D-1, ECF No. 22-14. Plaintiff also argues that the similarity of the products factor is easily met, because the Van Doren Defendants sell products that are similar to the those sold by Plaintiff, such as totes, messenger handbags, and towels. Pl.'s Br. 18, ECF No. 21. Furthermore, Plaintiff argues that the parties use the same outlet, the internet to sell their products. Pl.'s Br. 18, ECF No. 21. Plaintiff argues that consumers may understandably be confused or deceived into believing that the counterfeit goods are sponsored or associated with Plaintiff, given that they use the same e-commerce retail outlet. Pl.'s Br. 18, ECF No. 21.
Plaintiff argues that the Van Doren Defendants obviously intended to mislead consumers into believing that their products were sponsored by and associated with Plaintiff's reputation for high caliber products by acknowledging on their website that Chanel marks are "famous" and "iconic" and that their products are "inspired" from Chanel's design. Pl.'s Br. 19, ECF No. 21. Plaintiff points out that the Fifth Circuit has stated that while "[p]roof of the defendant's intent to benefit from thegood reputation of the plaintiff's products is not required in order to establish infringement[,]" if the defendant's intent can be demonstrated, "it may provide compelling evidence of a likelihood of confusion." Oreck Corp. v. U.S. Floor...
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