JFY Props. II v. Gunther Land, LLC, Civil Action No. ELH-17-1653

CourtUnited States District Courts. 4th Circuit. United States District Court (Maryland)
Writing for the CourtEllen Lipton Hollander United States District Judge
PartiesJFY PROPERTIES II LLC Plaintiff, v. GUNTHER LAND, LLC, et al. Defendants.
Decision Date27 September 2019
Docket NumberCivil Action No. ELH-17-1653


Civil Action No. ELH-17-1653


September 27, 2019


In this trademark infringement case, plaintiff JFY Properties II LLC ("JFY") has filed an Amended Complaint (ECF 30) against defendants Obrecht Commercial Real Estate, Inc. ("OCRE"); Gunther Headquarters, LLC ("Gunther Headquarters"); Gunther Land, LLC ("Gunther Land"); and D.W. Wells Obrecht ("Mr. Obrecht").1 Gunther Land and third-party plaintiff Natty Boh, LLC ("Natty Boh") filed a Counterclaim and Third-Party Complaint (collectively, the "Counterclaim") against JFY. ECF 13; ECF 14.2 The suits concern the parties' names for their respective residential buildings in an area of Baltimore City known as Brewers Hill.3

JFY is the owner and developer of a multi-family apartment building in an area of Baltimore City known as Brewers Hill, a historic district "just east" of the popular Canton neighborhood in southeast Baltimore. ECF 30, ¶ 1. The building, named "The National," is

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located at 3600-3620 Dillon Street, on the footprint of a former warehouse for the National Brewing Company (the "Dillon Street Property").

Mr. Obrecht is the sole owner of OCRE, Gunther Headquarters, and Natty Boh, and he is the controlling owner of Gunther Land (collectively, the "Obrechts," the "Obrecht Parties," or "Obrecht Entities"). Gunther Land is the owner of property located at 3701 O'Donnell Street in Baltimore, under development as a multi-family apartment complex in the Brewers Hill Planned Unit Development ("PUD"). ECF 13, ¶ 3.

The PUD is a 30-acre site that was once home to both the National Brewing Company and the Gunther Brewing Company. ECF 52-1 at 5.4 The Obrechts describe the location of the PUD as "the Canton industrial area of South Baltimore," ECF 13, ¶ 1, in the area "more commonly known as 'Brewers Hill.'" ECF 52-1 at 5. Natty Boh is the developer of the PUD. ECF 13, ¶ 4. The Obrechts assert that their proposed apartment building (the "Project") is marketed as both "THE NATIONAL APARTMENTS" and "THE NATIONAL APARTMENTS AT BREWERS HILL," and they seek to name the building "THE NATIONAL APARTMENTS AT BREWERS HILL." Id. ¶¶ 3, 12.

Since 2000, Mr. Obrecht and his entities have invested enormous sums of money to develop and revitalize the area comprising the PUD. JFY's Dillon Street Property is located across the street from the PUD. ECF 52-1 at 6, 8; ECF 52-5 at 4.

JFY's Amended Complaint seeks relief in three counts. Count I is brought pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201, et seq. ECF 30, ¶ 73. JFY seeks a judgment declaring, inter alia, that "JFY is not making trademark use of The National and may continue to use "The National" in connection with the Dillon Street Property. Id. ¶ 80. Count II asserts a

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claim for trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a). Id. ¶¶ 81-84. In Count III, filed pursuant to 15 U.S.C. §§ 1119 and 1064, plaintiff asks the Court to cancel Gunther Land's registration of "The National Apartments" trademark, id. ¶¶ 85-89, claiming, inter alia, that the registration "was obtained fraudulently . . . and otherwise contrary to the provisions of 15 U.S.C. § 1054." Id. ¶ 86.

The Counterclaim asserts a claim for trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a) (Count I), as well as common law claims for trademark infringement (Count II) and unfair competition (Count III). See ECF 13, ¶¶ 29-43. In addition, the counterclaimants seek to enjoin JFY "from using THE NATIONAL or BREWERS HILL marks, or any confusingly similar marks, to promote" the Dillon Street Property. Id. ¶ 43. The Counterclaim asserts, ECF 13, ¶ 12: "THE BREWERS HILL and THE NATIONAL trademarks have become synonymous with the high-quality development, buildings and offerings included in the Brewers Hill PUD."

Now pending are the parties' post-discovery cross-motions for summary judgment. JFY moves for summary judgment on all three counts of the Counterclaim and on Count III of the Amended Complaint, in which plaintiff seeks to cancel Gunther Land's registration. ECF 46. The motion is supported by a memorandum of law (ECF 46-2) (collectively, the "JFY Motion") and numerous exhibits. ECF 47-1 - ECF 47-55.

The Obrecht Entities oppose the JFY Motion and have filed a cross-motion for summary judgment (ECF 52), supported by a memorandum (ECF 52-1) (collectively, the "Obrecht Motion") and many exhibits. ECF 52-3 - ECF 52-28. They seek summary judgment on each of plaintiff's claims and on all three counts lodged in the Counterclaim. See ECF 52-1 at 7 n.2. Moreover, they seek an injunction "to enjoin JFY . . . from using the NATIONAL mark, or any other confusingly

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similar mark, in any way, to advertise or promote the residential complex located" at the Dillon Street Property. Id. at 30.

JFY filed a combined opposition to the Obrecht Motion and a reply in support of the JFY Motion (ECF 61), supported by additional exhibits. ECF 61-1 - ECF 61-16; ECF 62. The Obrecht Parties replied (ECF 69) and submitted additional exhibits. ECF 69-1 - ECF 69-16; ECF 70-1.5

No hearing is necessary to resolve these motions. See Local Rule 105.6. For the reasons that follow, I shall deny the motions.

I. Factual Background6
A. The Dillon Street Property

David Penner is the managing member of JFY, a Maryland limited liability company formed in 2010. ECF 47-1 (Penner Affidavit), ¶ 2. On May 28, 2010, JFY acquired the Dillon Street Property through a public auction. ECF 47-1, Exhibit A-1 (Deed dated May 28, 2010). As noted, the property is located at 3600-3620 Dillon Street in the Brewers Hill area of Baltimore. Id.; see also ECF 14 at 2.7

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Prior to JFY's ownership of the Dillon Street Property, the property was owned by Dillon Vat, LLC ("Dillon Vat"), which began to develop it. ECF 47-2 (Bond Affidavit), ¶ 3.8 Dillon Vat, a Maryland limited liability company, was formed in 2005 but "no longer exists." Id. ¶ 2. John Vontran and Carroll L. Bond, III, also known as "Roy Bond," each owned a 50% interest in Dillon Vat. Id. ¶¶ 2, 6.

According to Mr. Bond, the Dillon Street Property is located on the site of the former "National Vat storage warehouse," which was used by the National Brewing Company for approximately 60 years "to store its beer." Id. ¶ 4. Mr. Bond asserts that the property was known historically as "the National Vat Building or the National Brewery Warehouse, or some variation of that." Id. Similarly, Mr. Vontran claims that the warehouse was called the "National Vat Building," ECF 47-2, ¶ 6, or the "old vat building." ECF 52-26 (Vontran Deposition) at 5, 7.

David Knipp, an OCRE employee, denied knowledge that the site once housed a warehouse belonging to the National Brewing Company. ECF 47-4 at 5, Tr. 23. But, he acknowledged that the property was "an integral part of the brewing company, as was everything on . . . Dillon Street." Id. And, Mr. Obrecht conceded that the property was called "a warehouse, a beer storage warehouse," although he claimed it was called "The Vat Building." ECF 47-5 at 3.

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In the mid-to-late 2000s, Dillon Vat began construction of a "36-unit condominium building at 3610 Dillon Street, as well as four townhomes on the adjacent parcel . . . ." ECF 47-2, ¶ 6. According to Mr. Vontran, the construction used "the footprint and part of the original skeleton of the National Vat Building." Id. Dillon Vat planned to call the development "the Dillon Street Vat Apartments" because "the property was located on Dillon Street and it was the [site of the] old vat building." ECF 52-26 at 5. However, the "condominium project was never completed" and the "Dillon Street Property was eventually foreclosed and sold at auction" to JFY. ECF 47-2, ¶ 8.

In December 2005, Mr. Penner learned of the Dillon Street Property and its connection to the National Brewing Company when Mr. Bond gave Mr. Penner a tour of the building and explained the property's history to him. ECF 47-1, ¶ 4. During the tour, Mr. Bond referred to the property as "The National Vat Building." Id. ¶ 5.

After JFY acquired the Dillon Street Property in May 2010 (ECF 47-1, Ex. A-1), JFY "evaluated the property and decided to make the townhomes fee simple and to develop a 61-unit apartment building instead of proceeding further with the planned condominiums." ECF 46-2 at 5; see ECF 47-1, ¶ 9. Rezoning was necessary. Id. In 2011, JFY began demolition of the property, and in 2012 it conducted "some site work including soil testing." ECF 47-1, ¶ 10. In May 2015, JFY and the City entered into a "Traffic Mitigation Agreement For The National." ECF 47-21. Pursuant to its terms, JFY paid over $9,000 for certain "transportation improvements" in the "vicinity" of the development. Id. at 2. Construction of the building commenced in October 2015, following issuance of the building permit. Id.

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Plaintiff marketed the Dillon Street Property as "The National." ECF 47-1, ¶ 12. In May 2017, the first tenant moved into The National. Id. ¶ 20; see Appendix. And, as of September 2018, the building was "approximately 90% tenant-occupied." ECF 47-1, ¶ 12.

JFY has submitted several exhibits that reflect reference to the Dillon Street Property as "The National" as early as 2005. ECF 47-2, ¶¶ 10, 11. These include a "Design Collective Plumbing Data Sheet" for the period November 14, 2005 through May 12, 2006, which refers to the property as "The National" (ECF 47-2, Exhibit B-1); a "Verified Complaint for Breach of Contract," filed on May 7, 2007, in the Circuit Court for Baltimore City, in a suit between Design Collective, Inc. and Dillon Vat (Case No. 24-C-07-003243), identifying the Dillon Street Property as "The National Brewing Company" (ECF 47-2, Exhibit B-2, ¶ 4); and an "Appraisal of Real Property," with an effective date of June 11, 2011, referring to the Dillon Street Property as "The National Condominium &...

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