Coach, Inc. v. Horizon Trading USA Inc., 11 Civ. 3535(PAE).

• Decision Date: 07 November 2012
• Docket Number: No. 11 Civ. 3535(PAE).,11 Civ. 3535(PAE).
• Citation: 908 F.Supp.2d 426
• Parties: COACH, INC. et al., Plaintiffs, v. HORIZON TRADING USA INC. et al., Defendants.
• Court: U.S. District Court — Southern District of New York

908 F.Supp.2d 426

COACH, INC. et al., Plaintiffs,

v.HORIZON TRADING USA INC. et al., Defendants.

No. 11 Civ. 3535(PAE).

United States District Court, S.D. New York.

Nov. 7, 2012.

Derek Andrew Williams, Jonathan David Davis, Jonathan D. Davis, P.C., New York, NY, for Plaintiffs.

Mingli Chen, Kevin Kerveng Tung, P.C., Flushing, NY, for Defendants.

OPINION & ORDER

PAUL A. ENGELMAYER, District Judge:

Plaintiffs Coach, Inc. and Coach Services, Inc. (collectively “Coach”) bring claims of trademark infringement, false designation of origin, copyright infringement, and state statutory claims for trademark infringement, among other state claims, against defendants Horizon Trading USA Inc. (“Horizon Trading”) and Ke Yi Fang (“Fang”).¹ Coach alleges that Horizon infringed its exclusive right to use the “Signature C” trademark, and seeks to enjoin defendants from using the allegedly infringing marks. Coach also requests an award of statutory damages under 15 U.S.C. § 1117(c), together with attorney's fees, costs, and investigative fees under 15 U.S.C. § 1117(a), (b). Horizon denies Coach's claims.

On June 22, 2012, Coach moved for summary judgment on these claims. For the reasons that follow, Coach's motion is granted as to each claim, with the exception of Coach's claims for deceptive trade practices and false advertising, on which summary judgment is granted in favor of defendants.

I. Background²

A. The Parties

Coach manufactures, markets, and sells leather and mixed-material products, including handbags, wallets, and accessories. Lau. Decl. ¶ 3. Coach uses a variety of trademarks, trade dresses, and design elements/copyrights in connection with the advertisement and sale of its products. Id. ¶ 4. One such mark is the “Signature C Mark,” which Coach uses on products such as sunglasses, eyeglass cases, leather goods, and clothing. Id. ¶ 8. Coach has registered the “Signature C Mark” with the United States Patent and Trademark Office (“PTO”). Id. ¶ 9; Ex. A. Additionally, Coach has registered copyrights with the United States Copyright Office for several variations of the “Signature C” design. Id. ¶ 15; Ex. B.

Horizon Trading is an importer, exporter, and wholesaler of sunglasses and other goods. Davis Decl. Ex. B (Plaintiffs' Requests for Admission to Horizon) (“Horizon Admissions”) ¶ 48; Ex. C (Plaintiffs' Requests for Admission to Fang) (“Fang Admissions”) ¶ 16. Horizon Trading is a New York corporation, which conducts business at 44 West 29th Street, New York, New York. Horizon Admissions ¶ 102; Fang Admissions ¶ 105. Ke Yi Fang has an ownership interest in Horizon Trading. Horizon Admissions ¶ 1; Fang Admissions ¶ 1.

B. Relevant Events

The events that precipitated this lawsuit are as follows. Coach received information that a store located at 44 West 29th Street in New York City (the “Horizon Store”) was selling allegedly counterfeit Coach sunglasses. Lau Decl. ¶ 18. Coach also learned that the store was affiliated with a company called Horizon Trading USA Inc., which was owned by Fang. Id. Coach's Legal Department retained Allegiance Protection Group (“APG”), a private investigative firm, to investigate these activities. Id. ¶ 19. On March 24, 2011, on behalf of Coach, APG's General Manager, Cara Amore, bought from Horizon, for $7, sunglasses that use a design consisting of the stylized letters “G” and “C”. Id. ¶¶ 20–21; Amore Decl. ¶ 4. That same day, Amore also purchased different sunglasses from Horizon, for the same price. Id. ¶ 5. Those sunglasses use a design consisting of the stylized letter “C” in various combinations, orders, and directions. Id. Coach and APG examined both of the Horizon products purchased by Amore at the Horizon Store, and determined that neither was an authentic Coach product. Id. ¶ 8; Lau Decl. ¶¶ 24–25. An authentic pair of Coach sunglasses retails for approximately $185. Lau. Decl. ¶ 25.

C. Procedural History

On May 24, 2011, Coach filed a Complaint. Dkt. 1. On July 22, 2011, defendants filed two separate Answers. Dkt. 12–13. Plaintiffs represent, and defendants do not dispute, that defendants failed to provide written discovery as required. See Pl. Br. 2.³ On June 22, 2012, Coach moved for summary judgment. Dkt. 27. On July 14, 2012, defendants filed a brief in opposition. Dkt. 33–34. On July 23, 2012, Coach filed a reply. Dkt. 36.

II. Legal Standard

To prevail on a motion for summary judgment, the movant must “show[ ] that 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). The movant bears the burden of demonstrating the absence of a question of material fact. In making this determination, the Court must view all facts “in the light most favorable” to the non-moving party. Holcomb v. Iona Coll., 521 F.3d 130, 132 (2d Cir.2008). To survive a summary judgment motion, the opposing party must establish a genuine issue of fact by “citing to particular parts of materials in the record.” Fed.R.Civ.P. 56(c)(1); see also Wright v. Goord, 554 F.3d 255, 266 (2d Cir.2009). “A party may not rely on mere speculation or conjecture as to the true nature of the facts to overcome a motion for summary judgment.” Hicks v. Baines, 593 F.3d 159, 166 (2d Cir.2010) (citation omitted). Only disputes over “facts that might affect the outcome of the suit under the governing law” will preclude a grant of summary judgment. Anderson v. Liberty Lobby Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In determining whether there are genuine issues of material fact, “we are required to resolve all ambiguities and draw all permissible factual inferences in favor of the party against whom summary judgment is sought.” Johnson v. Killian, 680 F.3d 234, 236 (2d Cir.2012) (citing Terry v. Ashcroft, 336 F.3d 128, 137 (2d Cir.2003)).

III. Discussion

In support of its motion for summary judgment, Coach primarily relies upon defendants' admissions, as fairly derived from defendants' unexcused failure to respond to Coach's requests for admission. SeeFed.R.Civ.P. 36(a)(3). Coach also argues that summary judgment is warranted even apart from these admissions because defendants' “GC” and “CC” marks are demonstrably counterfeit.

In assessing Coach's motion, the Court first considers the effect, under Rule 36, of defendants' failure to respond to Coach's requests for admission. Next, the Court considers Coach's substantive claims. Finally, the Court addresses statutory damages.

A. Defendants' Failure to Respond to Requests for Admissions

Under Fed.R.Civ.P. 36(a)(1), “[a] party may serve on any other party a written request to admit ... the truth of any matters ... relating to: (A) facts, the application of law to fact, or opinions about either; and (B) the genuineness of any described documents.” A matter is deemed admitted “unless, within 30 days after being served, the party to whom the request is directed serves on the requesting party a written answer or objection.” Fed.R.Civ.P. 36(a)(3). Coach served defendants with requests for admission on December 15, 2011, Davis Decl. ¶ 10; Ex. D, and defendants failed to respond within 30 days. Nor did defendants at any point seek an extension of time to respond to those requests. Defendants attempt to explain their failure to respond by asserting that: (1) perhaps Coach's request was sent to defendants' counsel, Mingli Chen, Esq., at the wrong address; and (2) perhaps Coach did not serve the requests at all, because, despite having received an extension, Coach served the requests by the original deadline of December 15, 2011. Both excuses are demonstrably bogus.

As to defendants' first argument, Coach addressed the requests to “Mingli Chen, Esq.” at “38–21 Main Street, Suite 3D, Flushing, New York.” Davis Decl. Ex. D. The requests were delivered by Federal Express (“FedEx”). FedEx issued plaintiffs' counsel a delivery confirmation, by fax, confirming that the requests had been delivered on December 16, 2011. That confirmation lists Mingli Chen, Esq. as the recipient. Davis Reply Decl. Ex. F. It states that the package was delivered to “13620 38TH AVE STE 3D,” where it was signed for by “J. Chung.” Id. Chen has explained that, on March 24, 2011, the postmaster asked his firm to begin using the street address “136–20 38th Street.” Chen Decl. ¶ 8. The two addresses, however, appear to relate to the same office and Chen does not suggest otherwise.⁴ Significantly,Chen has used both addresses in the course of his dealing with the Court and opposing counsel in this case. In his notice of appearance, filed with the Court on June 30, 2011, Chen used the address “136–20 38th Avenue, Suite 3D, Flushing, New York 11354.” Dkt. 8–9. However, on that very same day, Chen sent an email to the Court, listing his address as 38–21 Main Street. Davis Reply Decl. Ex. A. Chen also listed the 38–21 Main Street address in emails to plaintiffs' counsel on September 13, 2011, October 14, 2011, and November 3, 2011. Davis Reply Decl. Exs. B–E. Thus, Chen has demonstrably represented to Coach and to the Court that he can be reached at the 38–21 Main Street address and the 136–20 38th Ave address. Under these circumstances, Chen cannot be heard to complain that the requests were improperly addressed.

Further, “[u]nder general New York law, [ ] the Second Circuit has indicated that mailing a letter creates a presumption that the addressee received it.” Bronia, Inc. v. Ho, 873 F.Supp. 854, 859 (S.D.N.Y.1995) (citing Meckel v. Contl. Resources Co., 758 F.2d 811, 817 (2d Cir.1985)). “To invoke the presumption, a party must first produce evidence of mailing.” Id. Coach has done so, in the form of the FedEx delivery receipt listing an address given by Chen himself to the Court and to counsel as his business address, Davis Reply Decl. Ex. F, as well as an affidavit of Lily Hoang, who mailed the requests via FedEx. Davis Decl. Ex. D. Because defendants have offered no evidence whatsoever rebutting this presumption...