Gianni Versace, S.P.A. v. Versace 19.69 Abbigliamento Sportivo SRL

• Decision Date: 24 July 2018
• Docket Number: Case No. 16-cv-03617-HSG
• Citation: 328 F.Supp.3d 1007
• Court: U.S. District Court — Northern District of California
• Parties: GIANNI VERSACE, S.P.A., et al., Plaintiffs, v. VERSACE 19.69 ABBIGLIAMENTO SPORTIVO SRL, et al., Defendants.

328 F.Supp.3d 1007

GIANNI VERSACE, S.P.A., et al., Plaintiffs,

v.VERSACE 19.69 ABBIGLIAMENTO SPORTIVO SRL, et al., Defendants.

Case No. 16-cv-03617-HSG

United States District Court, N.D. California.

Signed July 24, 2018

Rosemarie Theresa Ring, Aaron D. Pennekamp, Carolyn Hoecker Luedtke, Munger, Tolles & Olson LLP, San Francisco, CA, Jonathan Ellis Altman, William M. Larsen, Munger, Tolles and Olson LLP, Zachary Michael Briers, Los Angeles, CA, for Plaintiffs.

Gerard F. Dunne, Law Office of Gerard F Dunne, P.C., William Dunnegan, Dunnegan and Scileppi LLC, New York, NY, N. G. Karambelas, Sfikas & Karambelas LLP Sfikas & Karambelas LLP, Washington, DC, Suizi Ohn Mar Shwe Ma Lin, Law Office of Suizi Lin, Newark, CA, Adam Steven Rossman, Beverly Hills, CA, for Defendants.

ORDER GRANTING PLAINTIFFS' MOTION FOR SUMMARY JUDGMENT AND GRANTING IN PART AND DENYING IN PART DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT

Re: Dkt. Nos. 221, 218

HAYWOOD S. GILLIAM, JR., United States District Judge

Plaintiffs Gianni Versace, S.p.A. and Versace USA, Inc. (collectively, "Versace") bring this trademark infringement action against Versace 19.69 Abbigliamento Sportivo SRL, Theofanis Papadas, Valero Enterprises, Inc., Susan Valero, V1969 BH LLC, Brilliance New York LLC, V1969 Versace SMO LLC, V1969 Versace HG LLC, and V1969 USA LLC. See Dkt. No. 1.¹ Plaintiffs' first amended complaint asserts the following seven claims: (1) false designation of origin, 15 U.S.C. § 1125(a) ; (2) federal trademark infringement, 15 U.S.C. §§ 1114 and 1125(a) ; (3) federal trademark dilution, 15 U.S.C. § 1125(c) ; (4) common law trademark infringement; (5) a declaration of trademark infringement, 28 U.S.C. § 2201(a)(9) and 15 U.S.C. § 1114(1) ; (6) state and common law dilution, Cal. Bus. & Prof. Code § 14330 ; and (7) unfair competition, Cal. Bus. & Prof. Code § 17200. Dkt. No. 123 ("FAC").

Versace moves for summary judgment on all claims stated in the FAC, as well as on all counterclaims and affirmative defenses asserted by Defendants Versace 19.69 Abbigliamento Sportivo S.R.L. and Theofanis Papadas (collectively, "VAS"). Dkt. No. 221 ("Pls. Mot."). VAS moves for partial summary judgment on Versace's federal and state law trademark infringement claims, trademark dilution claims, and all claims asserted by Versace USA, Inc. Dkt. No. 218 ("Defs. Mot.") at 1-2. Briefing on the motions is complete, and the Court held a hearing on March 29, 2018. See Dkt. Nos. 238 ("Defs. Opp."), 248 ("Pls. Reply"), 240 ("Pls. Opp."), 246 ("Defs. Reply"). After carefully considering the parties' arguments, the Court GRANTS Versace's motion, and GRANTS IN PART and DENIES IN PART VAS's motion.

I. LEGAL STANDARD

Summary judgment is proper when a "movant shows 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). A fact is "material" if it "might affect the outcome of the suit under the governing law."

Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute is "genuine" if there is evidence in the record sufficient for a reasonable trier of fact to decide in favor of the nonmoving party. Id. The Court views the inferences reasonably drawn from the materials in the record in the light most favorable to the nonmoving party, Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587-88, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986), and "may not weigh the evidence or make credibility determinations," Freeman v. Arpaio , 125 F.3d 732, 735 (9th Cir. 1997), overruled on other grounds by Shakur v. Schriro , 514 F.3d 878, 884-85 (9th Cir. 2008).

The moving party bears both the ultimate burden of persuasion and the initial burden of producing those portions of the pleadings, discovery, and affidavits that show the absence of a genuine issue of material fact. Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Where the moving party will not bear the burden of proof on an issue at trial, it "must either produce evidence negating an essential element of the nonmoving party's claim or defense or show that the nonmoving party does not have enough evidence of an essential element to carry its ultimate burden of persuasion at trial." Nissan Fire & Marine Ins. Co. v. Fritz Cos. , 210 F.3d 1099, 1102 (9th Cir. 2000). Where the moving party will bear the burden of proof on an issue at trial, it must also show that no reasonable trier of fact could not find in its favor. Celotex Corp. , 477 U.S. at 325, 106 S.Ct. 2548. In either case, the movant "may not require the nonmoving party to produce evidence supporting its claim or defense simply by saying that the nonmoving party has no such evidence." Nissan Fire & Marine Ins. Co. , 210 F.3d at 1105. "If a moving party fails to carry its initial burden of production, the nonmoving party has no obligation to produce anything, even if the nonmoving party would have the ultimate burden of persuasion at trial." Id. at 1102-03.

"If, however, a moving party carries its burden of production, the nonmoving party must produce evidence to support its claim or defense." Id. at 1103. In doing so, the nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. , 475 U.S. at 586, 106 S.Ct. 1348. A nonmoving party must also "identify with reasonable particularity the evidence that precludes summary judgment." Keenan v. Allan , 91 F.3d 1275, 1279 (9th Cir. 1996). If a nonmoving party fails to produce evidence that supports its claim or defense, courts enter summary judgment in favor of the movant. Celotex Corp. , 477 U.S. at 323, 106 S.Ct. 2548.

II. VERSACE'S MOTION FOR SUMMARY JUDGMENT

Versace moves for summary judgment on all of the claims asserted in the FAC. See Pls. Mot. at 10. The Court turns first to Versace's claims for federal and state law trademark infringement, false designation of origin, and unfair competition. The Court examines these claims concurrently because they are "substantially congruent." See id. at 10 n.4; Playboy Enterprises, Inc. v. Netscape Commc'ns Corp. , 354 F.3d 1020, 1024 n.10 (9th Cir. 2004) ("Because California trademark law claims are substantially congruent, we do not examine them separately in this opinion, just as the district court did not.") (quotations omitted); Denbicare U.S.A. Inc. v. Toys R Us, Inc. , 84 F.3d 1143, 1152 (9th Cir. 1996), abrogated on other grounds by Kirtsaeng v. John Wiley & Sons, Inc. , 568 U.S. 519, 133 S.Ct. 1351, 185 L.Ed.2d 392 (2013) ("State common law claims of unfair competition and actions pursuant to California Business and Professions Code § 17200 are substantially congruent to claims made under the Lanham Act.") (quotations and alterations omitted).

A. Trademark Infringement

"To prevail on a claim of trademark infringement under the Lanham Act, 15 U.S.C. § 1114, a party ‘must prove: (1) that it has a protectible ownership interest in the mark; and (2) that the defendant's use of the mark is likely to cause consumer confusion.’ " Network Automation, Inc. v. Advanced Sys. Concepts, Inc. , 638 F.3d 1137, 1144 (9th Cir. 2011) (quoting Dep't of Parks & Recreation v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124 (9th Cir. 2006) ). It is a "well-established principle that because of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena." Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc. , 618 F.3d 1025, 1031 (9th Cir. 2010) (quotations and alterations omitted). Nonetheless, "where the evidence is clear and tilts heavily in favor of a likelihood of confusion," the Ninth Circuit has "not hesitated to affirm summary judgment" on the issue of infringement. See Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc. , 457 F.3d 1062, 1075-76 (9th Cir. 2006) (reversing the district court's denial of summary judgment where, despite the absence of evidence of actual confusion, the plaintiffs' marks were strong, the defendants' marks incorporated exact copies of plaintiff's marks, and the products at issue were "destined for the same buyers"); accord Nissan Motor Co. v. Nissan Computer Corp. , 378 F.3d 1002, 1019 (9th Cir. 2004) (affirming summary judgment upon finding "legally identical" marks, a relationship between the goods at issue, and overlapping marketing channels); E. & J. Gallo Winery v. Grenade Beverage, LLC , 670 Fed.Appx. 634 (9th Cir. 2016) (affirming summary judgment where at least five of the eight Sleekcraft factors favored the plaintiff).² Courts in this circuit have accordingly granted summary judgment where there is no genuine issue of material fact as to the likelihood of confusion. See Mine O'Mine, Inc. v. Calmese , No. 2:10-CV-00043-KJD, 2011 WL 2728390, at *8 (D. Nev. July 12, 2011), aff'd , 489 Fed.Appx. 175 (9th Cir. 2012) ; DC Comics v. Towle , 989 F.Supp.2d 948, 960 (C.D. Cal. 2013), aff'd , 802 F.3d 1012 (9th Cir. 2015) ; Experience Hendrix, LLC. v. Elec. Hendrix, LLC. , No. C07-0338 TSZ, 2008 WL 3243896, at *14 (W.D. Wash. Aug. 7, 2008) ; Conversive, Inc. v. Conversagent, Inc. , 433 F.Supp.2d 1079, 1093 (C.D. Cal. 2006) ; W. Coast Corvettes, Inc. v. MV Mktg., Inc. , No. SACV120269DOCRNBX, 2012 WL 12882014, at *11 (C.D. Cal. Dec. 13, 2012) ; GNLV, Corp. v. T. Warren Enterprises Inc. , No. 2:13-CV-943 JCM CWH, 2014 WL 6473558, at *8 (D. Nev. Nov. 18, 2014).

VAS does not dispute the first element of Versace's trademark infringement claim: that Gianni Versace, S.p.A. has a protectable ownership interest in the marks. See Pls. Mot. at 10. Under 15 U.S.C. Section 1065, Gianni Versace, S.p.A.'s registered marks are incontestable. See id. ; Dkt. No. 220-6 ("Briers Decl.") ¶¶ 3-4, Ex. 115 (presenting the six trademark registrations at issue, and the registration certificates). Accordingly, these registrations present "conclusive evidence" of the validity of the Versace marks, Gianni...