Homes & Land Affiliates v. Homes & Loans Magazine

• Decision Date: 04 February 2009
• Docket Number: Case No. 6:07-cv-1051-Orl-28DAB.
• Parties: HOMES & LAND AFFILIATES, LLC, Plaintiff, v. HOMES & LOANS MAGAZINE, LLC, Robert Klezmer, Maryanne Klezmer, William Keeler, Bonnie Keeler, Defendants.
• Court: U.S. District Court — Middle District of Florida

598 F.Supp.2d 1248

HOMES & LAND AFFILIATES, LLC, Plaintiff, v. HOMES & LOANS MAGAZINE, LLC, Robert Klezmer, Maryanne Klezmer, William Keeler, Bonnie Keeler, Defendants.

Case No. 6:07-cv-1051-Orl-28DAB.

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

February 4, 2009.

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Brian R. Gilchrist, Gregory B. Allen, Herbert L. Allen, Allen, Dyer, Doppelt, Milbrath & Gilchrist, PA, Orlando, FL, for Plaintiff.

Karen M. Sullivan, Karen M. Sullivan, Ferdinand & Sullivan, PA, Ft. Lauderdale, FL, for Defendants.

Robert Klezmer, Port Orange, FL, pro se.

ORDER

JOHN ANTOON II, District Judge.

Plaintiff, Homes & Land Affiliates, LLC, has filed a four-count Complaint, alleging (1) trademark infringement in violation of 15 U.S.C. § 1117, part of the Lanham Act; (2) service mark infringement in violation of 15 U.S.C. § 1117; (3) unfair competition in violation of 15 U.S.C. § 1125(a); and (4) common law unfair competition. (Compl., Doc. 1). Defendants, Homes & Loans Magazine, LLC, Robert Klezmer, and William Keeler, have filed a six-count Amended Counterclaim.¹ Defendants request declarations of non-infringement of Plaintiff's trademarks and service mark, and they allege (1) common law unfair competition, (2) breach of contract, (3) promissory estoppel, (4) and copyright infringement. Plaintiff now moves for summary judgment. (Doc. 38).² Defendants have filed their response in opposition. (Doc. 43).

I. Background and Procedural History

Plaintiff is a publisher of real estate marketing magazines under the registered trademark name HOMES & LAND®,³ delivering its product via a network of franchisees operating throughout the United States and Canada. Plaintiff and its franchisees sell advertisements in the Homes & Land magazine to real estate professionals seeking to market their real estate listings. Plaintiff and its franchisees then place the Homes & Land magazine in display racks at restaurants, grocery stores, convenience stores, and real estate offices where the magazine is available to the public free of charge. Plaintiff first used its trademarked name in interstate commerce in April 1973 and has used the mark continuously since. (Ex. A to Compl.). Additionally, Plaintiff first used its trademarked design in interstate commerce in April 1992. (Ex. B to Compl.). In March 2001, Plaintiff expanded its product offering and began using the service mark HOMESANDLAND.COM⁴ to provide similar services on the Internet.

Defendants began conducting business under the name Homes & Loans Magazine in early 2005.⁵ Defendants registered the domain name HOMESANDLOANSMAG.COM on January 6, 2005 before forming Homes & Loans Magazine, LLC—a Florida limited liability company—on February 18, 2005. Defendants published their first issue of Homes & Loans Magazine in Texas in June 2005.⁶ Defendants' magazines contain real estate listings, realtors' and mortgage brokers' contact information, and advertisements for these professionals. Defendants distribute their magazines in much the same manner as Plaintiff, using a series of display racks at restaurants, grocery stores, and convenience stores where the magazines are distributed to the public free of charge. Defendants continued to expand Homes & Loans Magazine, LLC until its peak in 2007 with eleven magazines in New York, Texas, Florida, North Carolina, and South Carolina and a license sold for a future publication in Georgia.

In a letter dated June 21, 2005, counsel for Plaintiff informed Defendants that they were infringing upon Plaintiff's marks and requested that Defendants take steps to correct their infringing activities, including modifying their business name and design. (Ex. F to Compl.). After the allegedly infringing behavior continued, Plaintiff sent a second letter on August 2, 2005 threatening litigation if Defendants did not respond by August 5, 2005. (Ex. G to Compl.). After receipt of this second letter, Defendants changed their masthead design. After reviewing the altered design, Plaintiff responded with a letter indicating that the new design was acceptable but reserving the right to reopen discussions should actual confusion occur. (Ex. I to Compl.). After discovering acts of continuing actual confusion, Plaintiff filed the instant suit.

II. Standard for Summary Judgment

Summary judgment "should be rendered if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The moving party bears the burden of establishing that no genuine issues of material fact remain. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

When faced with a "properly supported motion for summary judgment, [the nonmoving party] must come forward with specific factual evidence, presenting more than mere allegations." Gargiulo v. G.M. Sales, Inc., 131 F.3d 995, 999 (11th Cir. 1997). "A nonmoving party, opposing a motion for summary judgment supported by affidavits [or other relevant evidence] cannot meet the burden of coming forth with relevant competent evidence by simply relying on legal conclusions or evidence which would be inadmissible at trial." Avirgan v. Hull, 932 F.2d 1572, 1577 (11th Cir.1991); see also Fed.R.Civ.P. 56(e)(2) (providing that the nonmovant "must . . . set out specific facts showing a genuine issue for trial").

In ruling on a motion for summary judgment, the Court construes the facts and all reasonable inferences therefrom in the light most favorable to the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "[A]t the summary judgment stage the judge's function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Id. at 249, 106 S.Ct. 2505. Some degree of factual dispute is expected, but to defeat a motion for summary judgment the factual dispute must be material and genuine. That is, the factual evidence must "affect the outcome of the suit" and must be "such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248, 106 S.Ct. 2505.

III. Analysis

A. Trademark Infringement, Service Mark Infringement, and Unfair Competition⁷

Plaintiff contends that Defendants infringed upon its marks when Defendants published a magazine and used promotional materials that "were produced with block lettering and an ampersand strikingly similar to the masthead logo used on [Plaintiff's] magazines," thereby resulting in actual confusion over the marks. (Doc. 38 at 2). Plaintiff argues that no genuine issue of fact exists as to whether Defendants infringe upon Plaintiff's marks. (Doc 38 at 6).

"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 (11th Cir.2000) (quoting 15 U.S.C. § 1127) (alterations in original). "Service marks" are words or names used "to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services." 15 U.S.C. § 1127. Established trademarks and service marks are entitled to protection from infringement under both federal and state law.

"Under the Lanham Act, 15 U.S.C. § 1114(1), a defendant is liable for infringement, if, without consent, he uses `in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark' which `is likely to cause confusion, or to cause mistake, or to deceive.'" Frehling Enters. v. Int'l Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir. 1999). In order to prevail on a claim of infringement, a plaintiff must show "that its mark is valid and . . . that the defendant's use of the contested mark is likely to cause confusion." Dieter v. B & H Indus. of Sw. Fla., Inc., 880 F.2d 322, 326 (11th Cir. 1989). The validity of Plaintiff's trademarks is not disputed in the present lawsuit,⁸ leaving for the Court's consideration the issue of whether Defendants' use of their mark is likely to confuse consumers.

A determination of likelihood of confusion requires analysis of seven factors: "(1) the strength of the plaintiff's mark; (2) the similarity between the plaintiff's mark and the allegedly infringing mark; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the similarity of the sales methods; (5) the similarity of advertising methods; (6) the defendant's intent, e.g., does the defendant hope to gain competitive advantage by associating his product with the plaintiff's established mark; and (7) actual confusion." Alliance Metals, Inc., of Atlanta v. Hinely Indus., Inc., 222 F.3d 895, 907 (11th Cir.2000). Of these factors, the most important in this circuit are the mark's strength and evidence of actual confusion. Id. "The court does not have to consider all of these factors in every case and in some cases, `new' factors may merit consideration." Swatch Watch, S.A. v. Taxor, Inc., 785 F.2d 956, 958 (11th Cir.1986).

1. Strength of Mark

The strength of a mark dictates the level of protection it receives. See John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 973 (11th Cir.1983). "`[T]he strength and distinctiveness of plaintiff's mark is a vital consideration in determining the scope of protection it should be accorded. Strong marks are widely protected, as contrasted to weak marks.'" Id. (quoting Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 259 (5th Cir.1980)). In determining the strength of a mark, the Court weighs three factors: (1) the...