Goscicki v. Custom Brass & Copper Specialties

• Decision Date: 30 September 2002
• Docket Number: No. 01-71452.,01-71452.
• Parties: Donna-Margaret GOSCICKI d/b/a German Silver Sink Co., Plaintiff, v. CUSTOM BRASS & COPPER SPECIALITIES, INC., a Michigan for profit corporation, and Matthew P. Ridky, jointly and severally, Defendants.
• Court: U.S. District Court — Eastern District of Michigan

229 F.Supp.2d 743

Donna-Margaret GOSCICKI d/b/a German Silver Sink Co., Plaintiff, v. CUSTOM BRASS & COPPER SPECIALITIES, INC., a Michigan for profit corporation, and Matthew P. Ridky, jointly and severally, Defendants.

No. 01-71452.

United States District Court, E.D. Michigan, Southern Division.

September 30, 2002.

COPYRIGHT MATERIAL OMITTED

Michael S. Cafferty, Michael S. Cafferty & Assoc., Detroit, MI, for plaintiff.

David H. Aldrich, Michael G. Harrison, Foster, Swift, Lansing, MI, for defendants.

MEMORANDUM OPINION AND ORDER

HOOD, District Judge.

I. FACTS

In 1993, Don Hill, doing business as Don Hill, Inc., contracted with Plaintiff's predecessor in interest, Custom Craft, to fabricate a sink thought to have originated decades earlier in Germany. The sink had not been produced in this country for several decades. After building the replica of the sink, Custom Craft began marketing and selling the sinks, which were made of a metal alloy called "German Silver" and featured a stylized "S"-shaped divider between the two sink bowls.

Defendant Matthew Ridky, as an employee of Don Hill, Inc., did the original drawings and templates for the reproduction. Later, Ridky purchased Don Hill, Inc., and changed the name of the company to Custom Brass & Copper Specialities, Inc. Beginning in 1995, Defendants began using the templates they created for Plaintiff's predecessor to fabricate their own version of the sinks.

In 1997, Plaintiff purchased the interests of the owner of Custom Craft and has been operating the company as a sole proprietorship using the d/b/a "German Silver Sink Company." Upon purchasing Custom Craft, Plaintiff immediately attempted to register the German silver sink as a trademark with the United States Patent and Trademark Office ("PTO"). This initial attempt was abandoned in favor of registering the "S"-shaped divider. Plaintiff claims that the registration of the mark was not intended to serve as a company logo, but for a "stylized S-shaped divider used in the sinks sold by the Plaintiff." Pl.'s Answer to Defendants' Motion for Summary Judgment (sic) at 3.

While Plaintiff was in the process of obtaining the trademark, Defendants became aware of her attempt to do so. Although Defendants had been producing the sinks using the design which Plaintiff was attempting to register as a trademark, the Defendants did not attempt to intervene in the registration process. Instead, the parties began corresponding vigorously regarding Plaintiff's attempt to register the mark, with Defendants expressing their objections. The PTO granted Plaintiff's request to register the "S"-shaped divider in June of 1997. Despite this knowledge, Defendants continued using the design in their version of the German sink.

Plaintiff claims that "[t]he Defendant has written numerous misleading correspondence and advertisements wherein he has informed the public and customers and distributors of the Plaintiff that the Plaintiff's trademark only covers a `company logo.'" Pl.'s Br. at 4. Plaintiff further argues that "[t]he Defendant even went so far as to contact the distributor of the Plaintiffs, Elegant Additions, in writing and advised them that he was going to ultimately put the Plaintiff out of business and `take her mark.'" Id.

On April 13, 2001, Plaintiff Donna-Margaret Goscicki, d/b/a German Silver Sink Company ("Plaintiff"), filed a three-count Complaint against Defendants Custom Brass & Copper Specialties, Inc. and Matthew Ridky (collectively "Custom Brass" or "Defendants"). The Complaint against Defendants assert claims of trademark infringement, unfair competition, and breach of fiduciary duties. Defendants have moved for summary judgment as to all claims. For the following reasons, Defendants' motion should be granted in part and denied and part.

II. STANDARD OF REVIEW

Summary judgment is proper "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 judgment as a matter of law." Fed. R.Civ.P. 56(c). Failure of a movant to support the motion by affidavits is not fatal if whatever is before the court demonstrates that the standard for the entry of summary judgment as set forth in Rule 56(c) is satisfied. Lujan v. National Wildlife Federation, 497 U.S. 871, 110 S.Ct. 3177, 111 L.Ed.2d 695 (1990) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)); Chambers v. United States, 357 F.2d 224 (8th Cir.1966).

In determining whether there are issues of fact requiring a trial "the inferences to be drawn from the underlying facts ... must be viewed in the light most favorable to the party opposing the motion." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (quoting United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962)). A "material" fact exists if there is a "dispute over facts that might affect the outcome of the suit." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A court must look to the substantive law to identify which facts are material. Id. at 248, 106 S.Ct. 2505. An issue is "genuine" if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248, 106 S.Ct. 2505.

The moving party has the initial burden of showing there is no genuine issue of material fact. Celotex, 477 U.S. at 323, 106 S.Ct. 2548. The moving party need not support the motion by affidavits. Id. Summary judgment must be entered if the nonmoving party fails to provide sufficient evidence on an essential element to that party's case on which that party will bear the burden of proof at trial. Id. at 322, 106 S.Ct. 2548. The nonmoving party must present more than a mere scintilla of evidence and "may not rest upon the mere allegations or denials of his pleading, but ... must set forth specific facts showing that there is a genuine issue for trial." Anderson, 477 U.S. at 249, 252, 106 S.Ct. 2505 (internal citation omitted). If the nonmoving party fails to present evidence that opposes the moving party, the evidence submitted by the moving party will be taken as true. Id. at 248-49, 106 S.Ct. 2505.

III. ANALYSIS

A. Timeliness of Plaintiff's Answer to Defendants' Motion for Summary Judgment (sic) and Defendants' Reply

Defendants served their Motion for Summary Judgment and Brief in Support by mail on October 19, 2001. The Local Rules for the Eastern District of Michigan state that "a Response to a dispositive motion must be filed within 21 days after service of the motion." E.D. Mich. L.R. 7.1(d)(1)(B). Allowing three extra days in accordance with Federal Rule of Civil Procedure 6(e), Plaintiff had until November 13, 2001 to file her Response. Plaintiff's "Answer to Defendants' Motion for Summary Judgment," however, was not filed until November 20, 2001. Defendants request that this court strike Plaintiff's "Answer" as untimely.

Local Rule 7.1(d)(1)(C) requires a Reply to be filed within 7 days after service of process of a Response. Plaintiff's proof of service was dated November 20, 2001. Because of intervening weekends and the Thanksgiving holiday, Defendants had until December 3, 2001 to file their Reply. Their Reply was filed December 5, 2001. Defendants claim that Plaintiff's "Answer" was not received in their office until November 27, 2001, seven days after the date noted on the proof of service. Defendants have attached an affidavit to this effect to their Reply. Arguing that the delayed delivery of Plaintiff's Response resulted in their tardy Reply, Defendants request that this Court excuse their apparent violation of Local Rule 7.1(d)(1)(C) and accept their Reply.

Local Rule 11.1 gives this Court the discretion to impose an appropriate sanction upon the attorneys, law firms, or parties that have knowingly violated the Local Rules or are responsible for the violation. As both filings are helpful and not extraordinarily untimely, this Court declines to exercise its discretion to strike Plaintiff's tardy Response, but rather exercises its discretion by granting Defendants' request to accept its Reply despite the violation of Local Rule 7.1(d)(1)(C).

B. Federal Claims

Count I of Plaintiff's Complaint alleges trademark infringement in violation of the Lanham Act. 15 U.S.C. § 1051 et seq. Count II alleges unfair competition under the same.

1. Trademark Infringement under the Lanham Act

Plaintiff contends that Defendants have infringed upon her mark, which "consists of a stylized design of a divider used to divide a sink into separate compartments," see U.S. Trademark No. 2281023 (registered Sept. 28, 1999), in violation of the Lanham Act. As Defendants have observed, Plaintiff alleges without specificity which section of the Act has been violated, thereby leaving the Defendants and the Court to ascertain the appropriate analysis to undertake.

Both parties agree that this case involves "trade dress," which refers to "the image and overall appearance of a product." Esercizio v. Roberts, 944 F.2d 1235, 1238-39 (6th Cir.1991). As described by the Sixth Circuit, trade dress "embodies that arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, intended to make the source of the product distinguishable from another and to promote its sale." Id. at 1239. Trade dress can be protected both under §§ 32 and 43 of the Lanham Act. Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 868 (8th Cir.1994). The former protects trade dress only if it is registered on the Principal Register of the Patent and Trademark Office ("PTO"), see U.S. Structures, Inc. v. J.P. Structures, Inc., 130 F.3d 1185, 1189 (6th Cir.1997), while the latter protects unregistered trade dress. Esercizio, 944 F.2d at 1238-39.

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