Hbp, Inc. v. American Marine Holdings, Inc.

• Decision Date: 10 October 2003
• Docket Number: No. 6:02-CV-957-ORL22DAB.,6:02-CV-957-ORL22DAB.
• Parties: HBP, INC., Plaintiff, v. AMERICAN MARINE HOLDINGS, INC., Defendant.
• Court: U.S. District Court — Middle District of Florida

290 F.Supp.2d 1320

HBP, INC., Plaintiff, v. AMERICAN MARINE HOLDINGS, INC., Defendant.

No. 6:02-CV-957-ORL22DAB.

United States District Court, M.D. Florida. Orlando Division.

October 10, 2003.

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Richard E. Mitchell, Gray, Harris & Robinson, P.A., Orlando, FL, Martin J. Elgison, John D. Haynes, Andrew J. Wilson, Alston & Bird, LLP, Atlanta, GA, James F. Page, Jr., Page Mediation, Orlando, FL, for HBP, Inc., a Delaware Corporation, plaintiff.

F. Steven Herb, Nelson, Hesse, Cyril, Smith, Widman, Herb, Causey & Dooley, Sarasota, FL, Ava K. Doppelt, Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., Orlando, FL, for American Marine Holdings, Inc., a Delaware Corporation, defendant.

ORDER

BAKER, United States Magistrate Judge.

This cause came on for consideration without oral argument on the following motions filed herein:

MOTION: DEFENDANT'S MOTION FOR SUMMARY JUDGMENT (Doc. No. 24)

FILED: June 11, 2003

THEREON it is ORDERED that the motion is DENIED as moot.

MOTION: DEFENDANT'S CORRECTED MOTION FOR SUMMARY JUDGMENT (Doc. No. 34)

FILED: June 13, 2003

THEREON it is ORDERED that the motion is GRANTED.

Plaintiff HBP, Inc. filed suit against Defendant American Marine Holdings, Inc. ("American Marine") alleging that American Marine's "Daytona" racing boats infringe and dilute HBP's "Daytona" trade and service marks, and asserting related claims for deceptive practices, unfair competition, and injury to business. Doc. No. 1. American Marine filed its Corrected Motion for Summary Judgment (Doc. No. 34) on June 13, 2003, and HBP filed its response on July 3, 2003. Doc. 37.

STANDARD FOR DECISION

A party is entitled to judgment as a matter of law when the party can show that there is no genuine issue as to any material fact. Fed. R. Civ. Pro. 56(c). The substantive law applicable to the case determines which facts are material. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Summary judgment is mandated "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 which that party will bear the burden of proof." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The moving party bears the burden of proving that no genuine issue of material fact exists. Celotex, 477 U.S. at 323, 106 S.Ct. 2548. In determining whether the moving party has satisfied its burden, the court considers all inferences drawn from the underlying facts in a light most favorable to the party opposing the motion, and resolves all reasonable doubts against the moving party. Anderson, 477 U.S. at 255, 106 S.Ct. 2505. HBP contends that a number of cases hold that, because of the factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena, citing district court cases from other circuits. Courts in this Circuit have held that cases must be decided on their facts, and in some trademark infringement cases, summary judgment is appropriate when there is no material factual issue on infringement of the trademark. See, e.g., Gift of Learning Foundation, Inc. v. TGC, Inc., 329 F.3d 792, 802 (11th Cir.2003) (affirming summary judgment that as a matter of law no infringement of the term DRIVE PITCH & PUTT had occurred). Although likelihood of confusion generally is a question of fact, this Circuit has decided the issue as a matter of law in infringement cases. Alliance Metals, Inc., of Atlanta v. Hinely Industries, Inc., 222 F.3d 895, 907 (11th Cir.2000) (granting summary judgment to former employer for former employee's infringement through use of confusingly similar trade name); Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519, 1523 (11th Cir.1991) (granting summary judgment finding no infringement of descriptive term "invest" used by defendant Investcorp.); Beef/Eater Restaurants, Inc. v. James Burrough Limited, 398 F.2d 637, 639 (5th Cir.1968) ("the trial judge, by inspection of trademarks, may himself determine, and must determine, the likelihood of confusion"); see also Little League Baseball, Inc. v. Daytona Beach Little League, Inc., 1977 WL 22777, 193 U.S.P.Q. 611, 614 (M.D.Fla.1977) (granting summary judgment to franchisor on infringement claim against former franchisee).

In Universal Money Centers, Inc. v. American Telephone & Telegraph Co., the plaintiff, like HBP, argued that trademark infringement cases should not be decided at the summary judgment stage because the case involved complex factual issues and required credibility determinations. The Tenth Circuit held:

While we agree that the issue of likelihood of confusion is a question of fact, this does not preclude the entry of summary judgment in trademark infringement cases. Indeed, as the Second Circuit has pointed out, courts retain an important authority to monitor the outer limits of substantial similarity within which a jury is permitted to make the factual determination whether there is a likelihood of confusion as to source. Though likelihood of confusion is frequently a fairly disputed issue of fact on which reasonable minds may differ, the issue is amenable to summary judgment in appropriate cases.

22 F.3d 1527, 1530 n. 2 (10th Cir.1994) (affirming summary judgment for defendant) (citations omitted). See also Kazmaier v. Wooten, 761 F.2d 46, 48 (1st Cir.1985) (affirming summary judgment on trade name infringement claim; "[w]hile infringement and unfair competition cases often present factual issues that render summary judgment inappropriate, this is not invariably so"); Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169, 171 (7th Cir.1996) (affirming summary judgment finding no infringement of mark "door systems"; "any question of fact can be resolved on summary judgment if the evidence is so one-sided that there can be no doubt about how the question should be answered"); Murray v. Cable Nat'l Broadcasting Co., 86 F.3d 858, 860 (9th Cir.1996) (the factual nature of the likelihood of confusion issue does not preclude the district court from determining likelihood of confusion as a matter of law and granting summary judgment).

BACKGROUND FACTS¹

HBP is in the business of promoting, organizing and conducting stock car and motorcycle races, such as the widely-known Daytona 500 stock car race and Daytona 200 motorcycle race. Doc. No. 1 ¶ 8. HBP also owns a number of racing venues including the Daytona International Speedway in Daytona Beach, Florida. Id. HBP has developed several "Daytona" registered trademarks, including Daytona USA, Daytona 500, Daytona International Speedway, 24 Hours of Daytona, Daytona 200, Daytona Pit Shop, Daytona Speedware, Daytona Speedweeks, and Daytona at the Speed of Light. Id. ¶ 10. Since 2001, Daytona International Speedway has hosted a major boat show, featuring a variety of watercraft and related products including high performance racing boats and fishing boats. Id. ¶ 20. These boat shows have been held in conjunction with the American Power Boat Association's Offshore Grand Prix boat races. Id. The 45-acre man-made lake at the infield of the Daytona International Speedway, Lake Lloyd, has also been the site for boat races and boat testing since 1959, and for numerous fishing tournaments over the years. Id. In addition to licensing its Daytona marks, such as for motorsport racing events, theme parks, video games, clothing, and bicycles, HBP has entered into several "official sponsorship" agreements with various companies giving the sponsors the exclusive right to use "Daytona" marks for their goods. Id. ¶ 26, 27.

Beginning in 1997, American Marine, through its Donzi Boats division, began promoting a series of high performance ocean-going recreational powerboats for model year 1998 under the model name Donzi Daytona. Doc. No. 25, Kimmel Dep. at 7-8. The Daytona line refers to a high-end premium package available on certain of Donzi's existing models, and includes upgraded amenities such as finished propellers, Kevlar and E-glass structural upgrades to the stepped hull, high performance passenger seating, a premium sound system, twin MerCruiser engines and a selection of distinctive graphics. Id. The Donzi Daytona line has received favorable publicity in the boating press. Id.

In 1999 American Marine filed a trademark application with the United States Patent and Trademark Office (the "PTO") to register its Daytona trademark for its Donzi boat line. Id. at Ex. 1. The PTO approved the mark for registration and it was published in the Official Gazette on April 23, 2002. Id. at Ex. 2.

In August 2002, HBP filed this suit against Donzi for trademark infringement and dilution along with related state claims. Doc. No. 1. HBP also filed an opposition to Donzi's trademark application, which has been stayed by the Trademark Trial and Appeal Board pending the resolution of this case.

ANALYSIS

American Marine seeks summary judgment on HBP's claims, arguing that there is no likelihood of confusion between Donzi's Daytona series of boats and HBP's "Daytona" trademarks and service marks. American Marine also contends that HBP's marks are not famous for purposes of dilution. HBP argues in response that summary judgment should be denied to American Marine because trademark cases should rarely be decided on summary judgment and there are numerous disputed issues of material fact remaining which cannot be resolved on summary judgment.

LIKELIHOOD OF CONFUSION

Trademarks are "any word, name, symbol, or device, or any combination thereof [used] to identify and distinguish [one's] goods ... from those manufactured or sold by others and to indicate the source of the goods." Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1216-1217 (11th Cir.2000) (citing 15 U.S.C. § 1127). In order to succeed on the merits of a trademark infringement claim, a plaintiff must...