Hypnotic Hats, Ltd. v. Wintermantel Enters., LLC, 1:15-CV-06478 (ALC)

• Decision Date: 28 September 2018
• Docket Number: 1:15-CV-06478 (ALC)
• Citation: 335 F.Supp.3d 566
• Parties: HYPNOTIC HATS, LTD., Plaintiff, v. WINTERMANTEL ENTERPRISES, LLC, Hype Socks, LLC, and Hype Cheer, LLC, Defendants.
• Court: U.S. District Court — Southern District of New York

335 F.Supp.3d 566

HYPNOTIC HATS, LTD., Plaintiff,

v.WINTERMANTEL ENTERPRISES, LLC, Hype Socks, LLC, and Hype Cheer, LLC, Defendants.

1:15-CV-06478 (ALC)

United States District Court, S.D. New York.

Signed September 28, 2018

Craig M. Scott, Ryan Michael Gainor, Hinckley Allen Snyder, LLP, Providence, RI, Christopher Vincent Fenlon, Hinckley Allen Snyder, LLP, Albany, NY, for Plaintiff.

David M. Lilenfeld, Manning Lilenfeld LLP, Atlanta, GA, Jacob Yiping Chen, Dai & Associates, P.C., New York, NY, for Defendants.

OPINION AND ORDER

ANDREW L. CARTER, JR., United States District Judge:

Plaintiff Hypnotic Hats, Ltd. ("Hyp"), a corporation that sells socks and athletic bras in connection with its HYP trademark, is engaged in a trademark dispute with Wintermantel Enterprises, LLC ("Wintermantel Enter."), Hype Socks, LLC ("Hype Socks"), and Hype Cheer, LLC ("Hype Cheer") (together, "Defendants"), companies that have sold socks and athletic bras bearing the HYPE SOCKS and HYPE CHEER marks. Plaintiff contends that the HYPE marks infringe on its HYP trademark, while Defendants claim that the marks are not confusingly similar and that, in any event, Plaintiff's trademark is invalid. Plaintiff seeks summary judgment on its federal trademark infringement claim. Defendants oppose and also seek summary judgment on Plaintiff's federal trademark, federal unfair competition and false designation of origin, and common law unfair competition claims. Additionally, Defendants move to exclude Plaintiff's expert report. Finally, both parties have moved to file certain documents under seal.

For the reasons that follow, Plaintiff's motion for summary judgment is DENIED, Defendants' motions for summary judgment are GRANTED, and Defendants' motion to exclude Plaintiff's expert report is DENIED. Both parties' requests to file under seal are GRANTED in part and DENIED in part.

BACKGROUND

I. Factual Background

The following facts are taken from the parties' Rule 56.1 Statements of Material Facts ("SMF"). Unless otherwise noted, the facts are undisputed.

Plaintiff has used the "HYP" mark in connection with its marketing and sale of products, including socks, since approximately 2002. Plaintiff's Statement of Material Facts ("SMF") ¶ 3 (ECF No. 75). In 2005, the U.S. Patent and Trademark Office ("PTO") granted Plaintiff a federal trademark for "HYP" in connection with clothing. Id. ¶ 1. Hyp primarily sells its socks off the shelf through retail stores and e-commerce channels. Defendants' SMF ¶¶ 50-52 (ECF No. 72-1).¹ The parties dispute the extent to which Plaintiff also sells its socks through other channels of trade, including to sports teams. Id. ; Plaintiff's Response to SMF ("PRSMF") ¶¶ 50-52 (ECF No. 83).

Defendants have sold socks bearing the HYPE SOCKS mark since about 2014. SMF ¶¶ 8, 54.² Defendants primarily sell customized socks to coaches of sports teams that place specific orders with Defendants' salespeople. SMF ¶ 55. The parties contest the extent to which Defendants additionally sell their socks through other channels of trade, such as to marketing and promotional companies, brick and mortar stores, and traditional sports retailers. Id. ; PRSMF ¶ 55. They further dispute whether Defendants have sold non-customized socks. PRSMF ¶ 55. In addition to its sock sales, in 2015 Defendants began using the HYPE CHEER mark in connection with athletic sports bras. SMF ¶ 91.³

Plaintiff first discovered Defendants' use of the HYPE SOCKS mark around August 2014. Id. ¶ 9. At that time, Hyp President Howard Levy received a phone call from his brother, a youth sports coach. His brother stated that he had received an email solicitation from Hype Socks and asked if Levy had sent the email. Id. ¶¶ 9-11. The email, in fact, came from Defendants. Id. ¶ 12.

On April 8, 2015, Plaintiff sent Defendants a cease and desist letter demanding that they stop using the HYPE SOCKS mark because it is confusingly similar to its HYP trademark. Id. ¶ 13; see Declaration of Ryan M. Gainor ("Gainor Decl") Ex. 6 (ECF No. 76-6). Defendants continue to use the mark in catalogs, mass email campaigns, and a website. SMF ¶¶ 21-22.

Plaintiff also notes that Defendants' promotional materials have contained images depicting other sports logos and trademarks without permission. Id. ¶¶ 37-49.

II. Procedural Background

Plaintiff filed the complaint commencing this action on August 17, 2015, alleging federal trademark infringement, federal unfair competition and false designation of origin, and common law unfair competition. ECF No. 1. On January 21, 2016, Plaintiff filed an amended complaint. ECF No. 23 ("FAC").

On February 23, 2018, Defendants moved for summary judgment on all counts. ECF No. 72 ("Def Mem"). Also that day, Plaintiff filed a motion for partial summary judgment on its federal trademark claim. ECF No. 74 ("Pl Mem"). The parties filed their opposition motions on March 9, 2018. ECF No. 81 ("Def Opp"); ECF No. 82 ("Pl Opp"). Both parties filed their reply briefs on March 16, 2018. ECF No. 86 ("Pl Reply"); ECF No. 87 ("Def Reply").

On February 26, 2018, Defendants filed a motion to seal portions of their summary judgment memoranda and supporting exhibits and deposition testimony. ECF No. 77 ("Def Seal Mot"). Plaintiff likewise filed a motion to seal on March 9, 2018. ECF No. 80 ("Pl Seal Mot"). On April 20, 2018, this Court denied the parties' motions without prejudice and granted them leave to file additional briefs articulating adequate justifications for sealing. ECF No. 94 ("Sealing Order"). Plaintiff accordingly filed a renewed motion on May 3, 2018. ECF No. 96 ("Pl Renewed Seal Mot"). Defendants did not renew their motion, but included justifications in Plaintiff's filing. See id. The relevant filings currently remain under seal.

On February 27, 2018, Defendants filed a motion to exclude the expert report of Melissa Pittaoulis, Ph.D., which had been submitted in connection with Plaintiff's partial summary judgment motion. ECF No. 78 ("Def Expert Mem"). Plaintiff responded in opposition on March 23, 2018. ECF No. 88 ("Pl Expert Opp"). Defendants filed their reply brief on March 30, 2018. ECF No. 90 ("Def Expert Reply").

Finally, on April 11, 2018, Plaintiff filed a motion to supplement the summary judgment record with an additional email. ECF No. 92. Defendants consented on April 24, 2018 and sought leave to include a comment about the email in the record. ECF No. 95. On April 30, 2018, this Court granted both parties' motions. ECF No. 97.

Accordingly, the Court considers the motions fully briefed

DISCUSSION

I. Motions for Summary Judgment

A. Standard of Review

Summary judgment is appropriate if there is "no genuine dispute as to any material fact." Fed. R. Civ. P. Rule 56(a) ; see also Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The moving party "bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, which it believes demonstrate 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) (internal quotation marks omitted). Then, the burden shifts to the non-moving party to "set forth specific facts showing that there is a genuine issue for trial." Anderson , 477 U.S. at 250, 106 S.Ct. 2505. The party opposing summary judgment "may not rely on mere speculation or conjecture" as "mere conclusory allegations or denials ... cannot by themselves create a genuine issue of material fact where none would otherwise exist." Hicks v. Baines , 593 F.3d 159, 166 (2d Cir. 2010) (quoting Fletcher v. Atex, Inc. , 68 F.3d 1451, 1456 (2d Cir. 1995) ).

Pursuant to Local Rule 56.1, the movant must "submit a ‘separate, short and concise statement's setting forth material facts as to which there is no genuine issue to be tried." Holtz v. Rockefeller & Co., Inc. , 258 F.3d 62, 72 (2d Cir. 2001) (quoting Local Rule 56.1(a) ). The opponent "must respond with a statement of facts as to which a triable issue remains." Id. (citing Local Rule 56.1(b) ). The facts set forth in the movant's statement "will be deemed to be admitted unless controverted' by the opposing party's statement." Id. (quoting Local Rule 56.1(c) ). However, where "the record does not support the assertions in a Local Rule 56.1 statement, those assertions should be disregarded and the record reviewed independently." Id. at 74.

Factual disputes that are "irrelevant" or "unnecessary" are insufficient; "[o]nly disputes over facts that might affect the outcome of the suit under the governing law" can defeat a motion for summary judgment. Anderson , 477 U.S. at 248, 106 S.Ct. 2505. In making this determination, the Court must draw all inferences in the light most favorable to the non-moving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

When there are cross-motions for summary judgment, "each party's motion must be examined on its own merits, and in each case all reasonable inferences must be drawn against the party whose motion is under consideration." Morales v. Quintel Entm't, Inc. , 249 F.3d 115, 121 (2d Cir. 2001) (citation omitted).

B. Analysis

i. Federal Trademark Infringement

Courts reviewing federal trademark infringement claims apply a two-prong test, looking "first to whether the plaintiff's mark is entitled to protection, and second to whether the defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods." Tiffany (NJ) Inc. v. eBay, Inc. , 600 F.3d 93, 102 (2d Cir. 2010) (citation and internal quotation marks omitted).

1. Ownership of a Valid Trademark

Plaintiff asserts that it has a valid registered trademark. Defendants contend that Plaintiff's mark is fraudulent and thus not entitled to...