Cotton Ginny, Ltd. v. Cotton Gin, Inc.

• Decision Date: 28 January 1988
• Docket Number: No. 86-2399-CIV.,86-2399-CIV.
• Citation: 691 F. Supp. 1347
• Parties: COTTON GINNY, LIMITED, a Canadian corporation, Plaintiff, v. COTTON GIN, INC. and Cotton Gin Kids, Inc., Defendants.
• Court: U.S. District Court — Southern District of Florida

691 F. Supp. 1347

COTTON GINNY, LIMITED, a Canadian corporation, Plaintiff, v. COTTON GIN, INC. and Cotton Gin Kids, Inc., Defendants.

No. 86-2399-CIV.

United States District Court, S.D. Florida.

January 28, 1988.

COPYRIGHT MATERIAL OMITTED

Harley S. Tropin, Miami, Fla., for plaintiff.

Allen P. Reed, P.A., Miami, Fla., for defendants.

ORDER

MARCUS, District Judge.

THIS CAUSE has come before the Court pursuant to cross-motions for summary judgment brought by the Plaintiff, Cotton Ginny, Ltd. ("Cotton Ginny") and the Defendants, Cotton Gin, Inc., and Cotton Gin Kids, Inc. (collectively "Cotton Gin"). Plaintiff contends that the Defendants' unauthorized use of the mark "Cotton Gin" and imitation of Cotton Ginny trade dress constitute violations of sections 32(1) and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(1)(a), 1125(a) (1982), as well as § 495.151 of the Florida Statutes and common law rights. Defendants have counterclaimed asserting that Plaintiff has infringed their rights under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), as well as state, Fla.Sta.Ann. § 495.151 (West 1972), and common law. The motions for summary judgment are addressed only to the issue of liability for trademark infringement. The parties agree that "Cotton Gin" is confusingly similar to "Cotton Ginny." Because we find that there are genuine issues of material fact as to a number of issues in this matter, the motions for summary judgment must be denied.

In sum, summary judgment is inappropriate in this case because Plaintiff has failed to demonstrate that Broward, Palm Beach and Dade Counties represent a single market in which their trademark was appropriated and used. Moreover, a question of material fact remains as to whether Dade County was an area of natural expansion for the Plaintiff at the time Mikron marketed their product. Further, there are questions of material fact as to the acquisition of secondary meaning of the Plaintiff's trademark during that period. Finally, Defendants are not entitled to summary judgment as they failed to establish the defense of abandonment.

Plaintiff is a Canadian corporation which has, since 1979, been engaged in the design, manufacture and distribution of cotton sportswear which is identified by the mark "Cotton Ginny." Originally, the Cotton Ginny retail outlets operated only in Canada. Subsequently, the corporation expanded its operations into the United States. In October 1981, a former Cotton Ginny employee, Rhonda Gianacce, opened a retail outlet in Pompano Beach, Broward County, Florida, which sold the Cotton Ginny product. Gianacce and her husband, Michael Gianacce, were the sole owners of Mikron, Inc. ("Mikron"). Cotton Ginny and Mikron entered into an agreement on June 25, 1981 which provided, inter alia,

WHEREAS Cotton Ginny is the owner of the trade mark and trade name Cotton Ginny and the good will associated therewith and under which name Cotton Ginny has sportswear manufactured for it for distribution to its own and other retail stores.

AND WHEREAS it is the desire of the parties hereto that the retailer Mikron acquire the exclusive right to operate retail stores in Palm Beach County in the State of Florida, hereinafter referred to as the territory, under the name of Cotton Ginny and to sell sportswear under that name supplied to it by Cotton Ginny.

NOW THEREFORE in consideration of the mutual premises sic and covenants herein contained, the parties hereto agree as follows:

1. Cotton Ginny hereby agrees to give the retailer exclusive right and licence to operate retail stores in the territory under the name of Cotton Ginny.

2. Cotton Ginny agrees to sell to the retailer and only to the retailer in the territory any merchandise presently or from time time sic sold by Cotton Ginny under the label Cotton Ginny.

Memorandum in Support of Plaintiff's Motion for Summary Judgment and In Opposition to Defendants' Summary Judgment Motion, Exhibit A. Mikron then registered "Cotton Ginny" under the Florida fictitious name statute in November 1981. Fla.Sta.Ann. § 865.09 (West 1976). Pursuant to the terms of this Agreement, Mikron paid $13,000 in licensing fees to Cotton Ginny and purchased from it goods valued at over $100,000. Gianacce Affidavit at ¶ 5. Cotton Ginny executives inspected the Pompano Beach store on several occasions. Id. at ¶ 6.

In June of 1982, Defendants opened their store in Miami, Dade County, Florida, selling cotton sportswear. Cotton Gin, Inc., was incorporated in Florida on June 23, 1983. The Defendants' store has operated continuously since June 1982. Cotton Gin Kids, Inc. was incorporated on June 20, 1986.

The Cotton Ginny outlet in Pompano Beach closed in January 1984, when Rhonda Gianacce returned to live in Canada. Upon the closing of this store, Cotton Ginny was without an outlet in Florida. Apparently, sometime in 1985 or 1986, Cotton Ginny began to own and operate retail stores in the United States and eventually opened a store in Dade County in December 1986. Further, Cotton Ginny obtained federal registrations for their service mark (No. 1,333,796) and trademark (No. 1,380,842) on April 30, 1985 and April 27, 1986 respectively. The question before the Court on these motions for summary judgment is which party has superior rights to the mark.

The standard to be applied in reviewing a summary judgment motion is stated unambiguously in Rule 56(c) of the Federal Rules of Civil Procedure:

The judgment sought shall be rendered forthwith 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 a judgment as a matter of law.

It may be entered only where there is no genuine issue of material fact. Moreover, the moving party has the burden of meeting this exacting standard. Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 1608, 26 L.Ed.2d 142 (1970). In applying this standard, the Eleventh Circuit has explained:

In assessing whether the movant has met this burden, the courts should view the evidence and all factual inferences therefrom in the light most favorable to the party opposing the motion. Adickes, 398 U.S. at 157, 90 S.Ct. at 1608; Environmental Defense Fund v. Marsh, 651 F.2d 983 at 991. All reasonable doubts about the facts should be resolved in favor of the non-movant. Casey Enterprises v. Am. Hardware Mutual Ins. Co., 655 F.2d 598, 602 (5th Cir.1981). If the record presents factual issues, the court must not decide them; it must deny the motion and proceed to trial. Marsh, 651 F.2d at 991; Lighting Fixture & Elec. Supply Co. v. Continental Ins. Co., 420 F.2d 1211, 1213 (5th Cir. 1969). Summary judgment may be inappropriate even where the parties agree on the basic facts, but disagree about the inferences that should be drawn from these facts. Lighting Fixture & Elec. Supply Co., 420 F.2d at 1213. If reasonable minds might differ on the inferences arising from undisputed facts, then the court should deny summary judgment. Impossible Electronics Techniques, Inc. v. Wackenhut, 669 F.2d 1026 at 1031; Croley v. Matson Navigation Co., 434 F.2d 73, 75 (5th Cir.1970).

Moreover, the party opposing a motion for summary judgment need not respond to it with any affidavits or other evidence unless and until the movant has properly supported the motion with sufficient evidence. Adickes v. S.H. Kress & Co., 398 U.S. at 160, 90 S.Ct. at 1609-10; Marsh, 651 F.2d at 991. The moving party must demonstrate that the facts underlying all the relevant legal questions raised by the pleadings or otherwise are not in dispute, or else summary judgment will be denied notwithstanding that the non-moving party has introduced no evidence whatsoever. Brunswick Corp. v. Vineberg, 370 F.2d 605, 611-12 (5th Cir.1967). See Dalke v. Upjohn Co., 555 F.2d 245, 248-49 (9th Cir.1977).

Clemons v. Dougherty County, Ga., 684 F.2d 1365, 1368-69 (11th Cir.1982); see also Amey, Inc. v. Gulf Abstract & Title, Inc., 758 F.2d 1486, 1502 (11th Cir.1985), cert. denied, 475 U.S. 1107, 106 S.Ct. 1513, 89 L.Ed.2d 912 (1986).

The United States Supreme Court has recently provided significant additional guidance as to the evidentiary standard which trial courts should apply in ruling on a motion for summary judgment:

The summary judgment standard mirrors the standard for a directed verdict under Federal Rule of Civil Procedure 50(a), which is that the trial judge must direct a verdict if, under the governing law, there can be but one reasonable conclusion as to the verdict. Brady v. Southern R. Co., 320 U.S. 476, 479-80, 64 S.Ct. 232, 234, 88 L.Ed. 239 (1943).

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986). The Court in Anderson further stated that "the mere existence of a scintilla of evidence in support of the position will be insufficient; there must be evidence on which the jury could reasonably find for the non-movant." Id. 106 S.Ct. at 2512. In determining whether this evidentiary threshold has been met, the trial court "must view the evidence presented through the prism of the substantive evidentiary burden" applicable to the particular cause of action before it. Id. at 2513. If the non-movant in a summary judgment action fails to adduce evidence which would be sufficient, when viewed in a light most favorable to the non-movant, to support a jury finding for the non-movant, summary judgment may be granted. Id.

In another recent case, the Supreme Court has declared that a non-moving party's failure to prove an essential element of a claim renders all factual disputes as to that claim immaterial and requires the granting of summary judgment:

In our view, the plain language of Rule 56(c) mandates the entry of summary judgment ... against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on

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