It's A 10, Inc. v. Beauty Elite Grp., Inc.

• Decision Date: 18 March 2013
• Docket Number: Case No. 13–60154–CIV.
• Citation: 932 F.Supp.2d 1325
• Parties: IT'S A 10, INC., Plaintiff, v. BEAUTY ELITE GROUP, INC., and Basim Shami, Defendants.
• Court: U.S. District Court — Southern District of Florida

932 F.Supp.2d 1325

IT'S A 10, INC., Plaintiff,

v.BEAUTY ELITE GROUP, INC., and Basim Shami, Defendants.

Case No. 13–60154–CIV.

United States District Court, S.D. Florida.

March 18, 2013.

Michael Joseph Sacks, Parkland, FL, for Plaintiff.

ORDER ON MOTION FOR PRELIMINARY INJUNCTION

JAMES I. COHN, District Judge.

THIS CAUSE is before the court upon Plaintiff's Motion for Preliminary Injunction and Request for Oral Argument [DE 6]. The Court has considered the motion, Defendants' response [DE 10], the evidence presented and arguments of counsel at the March 8, 2013, hearing, and is otherwise fully advised in the premises.

I. BACKGROUND

On January 22, 2013, Plaintiff It's a 10, Inc., filed this action against Defendants Beauty Elite Group, Inc. (“BEG”) and Basim Shami, bringing the following claims: (1) registered trademark infringement, in violation of 15 U.S.C. § 1114; (2) trade dress infringement, in violation of 15 U.S.C. § 1125(a); (3) federal trademark dilution, under 15 U.S.C. § 1125(c); (4) false designation of origin and false advertising, under 15 U.S.C. § 1125(a); (5) state common law trademark infringement; (6) state-law deceptive acts and unfair trade practices, pursuant to Florida Statutes § 501.201; (7) trademark counterfeiting, under 15 U.S.C. § 1114; and (8) state-law unjust enrichment. According to the Complaint, Defendants have infringed on Plaintiff's trademarks by selling imitations of Plaintiff's product in containers that are labeled and designed in a way that mimics Plaintiff's marks and trade dress. Plaintiff seeks injunctive relief, as well as compensatory, statutory, and punitive damages. In the instant motion, Plaintiff seeks a four-part preliminary injunction requiring that Defendants (1) cease manufacturing or selling the allegedly infringing product, (2) cease using ‘Miracle’ or ‘10’ on its product label, (3) refrain from destroying evidence relevant to this case, and (4) produce certain records in Defendants' possession for Plaintiff's inspection. See DE 6–3.

Plaintiff offers evidence, including the exhibits attached to the Complaint, that Plaintiff owns a number of trademarks related to its hair-care products and that it makes constructive use of such marks. See DE's 1–4, 1–5, 1–6, 1–7, 6–1. Plaintiff also submits images of what it alleges is Defendants' infringing product—a container labeled “10–PL+US Miracle Leave–In Treatment,” using font, colors, and design similar to those used on Plaintiff's containers of “It's a 10 Miracle Leave–In Product.” See DE's 1–5, 1–8. At the March 8 hearing, Plaintiff's counsel presented the parties' respective bottles to the Court and entered them into evidence. Both bottles are purple with a magenta cap, and with magenta and white text and accents. The bottles are roughly the same height, and both use the phrases “Miracle Leave–In” to describe their product. Both bottles place the ‘10’ approximately three-quarters of the way up the front of the bottle. The ‘10's' are nearly the same size, and they are both oriented horizontally across the respective labels. The back label of Defendants' product is also similar to the back label of Plaintiff's product. At the top of Plaintiff's back label, it states that “It's a 10 does 10 things instantly.” It then numbers and lists those ten features. At the top of Defendants' back label, it states that “Miracle Leave-in Treatment is a Salon Inspired formula that instantly” does fourteen things. It then numbers and lists those features, using the same white text and purple background as is found on Plaintiff's label. Further, Plaintiff's President and CEO, Carolyn Plummer, submitted an affidavit in which she states that she has received several inquiries from customers concerning Defendants' product. DE 6–1 ¶ 14. Ms. Plummer claims that the confusion related to Defendants' product is causing irreparable harm to Plaintiff's business. Id. Additionally, Plaintiff's counsel sent Defendants a cease and desist letter on January 21, 2013, requesting that Defendants respond within five days. DE 6–2; DE 10–3 at 5. Plaintiff filed suit the following day.

Defendants respond that Plaintiff's allegations have been mooted by subsequent events. Defendants represent that their attorney contacted Plaintiff's counsel within five days of receiving the letter to discuss the issues contained therein. DE 10–2 at 2. On February 6, 2013, defense counsel sent a letter to Plaintiff's counsel stating that BEG would take the following actions:

(1) Cease immediately to ship all units of the accused product.

(2) Remove all shrink wrapped labels from its product that [Plaintiff accuses] of trade dress infringement. We will then destroy the wrappers.

(3) Change the packaging on our product. Specifically, Beauty Elite Group will change the color, eliminate the word “miracle” and will emphasize its brands “SoSilk” and “BioPlus” with a reconfigured label.

DE 10–4 at 2. Further, the letter stated that BEG would take such steps without any return commitment from Plaintiff. Id. On February 18, 2013, defense counsel sent another letter to Plaintiff's counsel in which he represented that BEG had ceased using the allegedly infringing label, and attached a picture of the newly-designed bottle. DE 10–5 at 2–4. On February 26, 2013, defense counsel sent yet another letter to Plaintiff's counsel in which he attached a picture of the final new design for BEG's “10 PL+US” product line. DE 10–6 at 3. The new bottle is white with a pink label and maroon cap; more prominently displays BEG's “SoSilk” and “BIOPL+US” trademarks; displays the “10 PL+US” mark in a vertical manner in the middle of the bottle; and uses a different font. DE 10 at 3. Additionally, the back label no longer contains the word ‘instantly,’ nor does it number and list the product's features. DE 22 at 4.

At the hearing, Plaintiff's counsel presented a sworn affidavit from Jennifer O'Dell, a manager at a beauty supply store in Denton, Texas. In the affidavit, she states that she purchased two bottles of BEG's product, which used BEG's old label design, from a Kroger's in Denton on February 27, 2013. Counsel also attached a sales receipt for Ms. O'Dell's purchase, as well as the actual bottles of BEG's product that she bought. In response, defense counsel represented that BEG sells products through distributors, rather than directly to retail outlets such as Kroger's. Therefore, while BEG had destroyed bottles containing the former label, there may still be some residual product remaining in stores. In the instant motion, Plaintiff seeks to enjoin Defendants from using both the old and the new labels. With regard to the new label, Plaintiff objects to BEG's use of the number“10” on the front of its bottle. Defendants oppose the relief requested.

II. PRELIMINARY INJUNCTION STANDARD

In order to obtain a preliminary injunction, Plaintiff must establish the following four elements: (1) a substantial likelihood that it will prevail on the merits; (2) a substantial threat that it will suffer irreparable injury if the injunction is not granted; (3) the threatened injury to Plaintiff outweighs the threatened harm the injunction may do to Defendants; and (4) granting the preliminary injunction will not disserve the public interest. Church v. City of Huntsville, 30 F.3d 1332, 1342 (11th Cir.1994). Because a “preliminary injunction is an extraordinary and drastic remedy,” it is “not to be granted until the movant clearly carries the burden of persuasion as to the four prerequisites.” Id. (quoting Northeastern Fl. Chapter of the Ass'n of Gen. Contractors of Am. v. City of Jacksonville, 896 F.2d 1283, 1285 (11th Cir.1990)); see also McDonald's Corp. v. Robertson, 147 F.3d 1301, 1306 (11th Cir.1998) (noting that movant has the burden of persuasion as to all four elements).

III. ANALYSIS

As an initial matter, Defendants assert that the Court should not enter a preliminary injunction against Mr. Shami because the Court does not have personal jurisdiction over him. Mr. Shami states in his declaration that he has no physical or business presence in Florida; owns no property in Florida; and does not personally produce, market, distribute, sell, or offer to sell the allegedly infringing label. DE 10–1 at 2. In the Complaint, Plaintiff refers only to actions taken by “Defendants,” but does not show that Mr. Shami's actions were taken in his personal capacity, as opposed to as an officer of BEG. See DE 1. Moreover, when this issue was raised at the hearing, Plaintiff declined to offer any evidence of the Court's personal jurisdiction over Mr. Shami. Accordingly, because there remains significant doubt as to jurisdiction regarding Mr. Shami, the Court will deny the instant motion as it pertains to him.

The Court will now proceed to the merits of the motion as it relates to BEG. The Court will address each part of the four-part injunction proposed by the Plaintiff.

A. Manufacturing and Selling the Allegedly Infringing Product

Plaintiff asks the Court to enjoin BEG from manufacturing or selling the allegedly infringing product, including both the old and the new label designs. The Court will first look at whether BEG should be enjoined from selling its product containing the old label, and then proceed to an analysis of its new label.

i. The old label

a. Likelihood of success on the merits

First, Plaintiff must demonstrate a likelihood that it will prevail on the merits of its claims. To prevail on its claim for trademark infringement under the Lanham Act, as well as on its state-law claims for infringement and unfair competition, Plaintiff must show “(1) that it had prior rights to its mark or name, and (2) that the other party had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers [are] likely to confuse the two.” Lone Star Steakhouse & Saloon v. Longhorn Steaks, 106 F.3d 355, 358 (11th Cir.1997); Rain Bird Corp. v. Taylor 665 F.Supp.2d 1258, 1267 (N.D.Fla...