Miller's Ale House Inc. v. Boynton Carolina Ale House Llc

• Decision Date: 05 October 2010
• Docket Number: Case No. 09–80918–CIV.
• Citation: 745 F.Supp.2d 1359
• Parties: MILLER'S ALE HOUSE, INC., Plaintiff,v.BOYNTON CAROLINA ALE HOUSE, LLC, Defendant.
• Court: U.S. District Court — Southern District of Florida

745 F.Supp.2d 1359

MILLER'S ALE HOUSE, INC., Plaintiff,

v.BOYNTON CAROLINA ALE HOUSE, LLC, Defendant.

Case No. 09–80918–CIV.

United States District Court, S.D. Florida.

Oct. 5, 2010.

Jerold Ira Schneider, Joseph William Bain, Joseph Rodman Steele, Jr., Javier Sobrado, Novak Druce & Quigg LLP, Wesley Alan Lauer, Akerman Senterfitt & Eidson, West Palm Beach, FL, Gregory Loyde Hillyer, Feldman Gale PA, Miami, FL, for Plaintiff.Jeffrey Lawrence Hochman, Hudson Carter Gill, Johnson Anselmo Murdoch Burke Piper & Hochman, P.A., Fort Lauderdale, FL, Anthony J. Biller, Emily M. Haas, Coats & Bennett PLLC, David E. Bennett, Coats & Berman, PLLC, Cary, NC, for Defendant.

OPINION AND ORDER

KENNETH A. MARRA, District Judge.

This cause is before the Court on Defendant Boynton Carolina Ale House, LLC's Motion for Summary Judgment [DE 70]. The motion is fully briefed and ripe for review. The Court has carefully considered the filings of the parties and is otherwise fully advised in the premises.

I. BACKGROUND

The facts, as collected from the affidavits, exhibits, depositions, and answers to interrogatories, are taken in a light most favorable to the non-moving party for the purposes of this motion and are as follows:

Plaintiff Miller's Ale House, Inc. (“Miller's”) has continuously operated a chain of restaurants in Florida for over 20 years. (Mark Peterson Declaration, June 21, 2010, ¶ 5, DE 90–1). Miller's restaurants are neighborhood sports bars that serve food and alcohol in a family-friendly environment. ( See Miller's Website, DE 90–3). In total, Miller's operates over 40 restaurants in Florida. (Peterson Dec. ¶ 3, DE 90–1).

Each Miller's restaurant is branded with a geographic prefix followed by the term “ALE HOUSE.” (Peterson Dec. ¶ 9, DE 90–1). This geographic prefix typically refers to the city, street, or neighborhood where each Miller's restaurant is located; for instance, the “JUPITER ALE HOUSE” is in Jupiter, Florida and the “KIRKMAN ALE HOUSE” is located on Kirkman Road in Orlando, Florida. (Peterson Dec. ¶ 10, DE 90–1). At least one Miller's location is named after a prominent local landmark: the Miller's restaurant near the Orlando International Airport is called the “AIRPORT ALE HOUSE.” Id. Miller's also operates several locations outside Florida that use the same naming system; the “PHILADEPHIA ALE HOUSE,” for example, is located in Philadelphia, Pennsylvania. ( See Miller's Website, DE 90–4).

Each Miller's location displays its name (the geographic prefix plus the term “ALE HOUSE”) in red letters on the outside of its building. (Mitchell Koenig Declaration, June 21, 2010, ¶ 3, DE 90–2). The term “ALE HOUSE” also appears regularly inside the restaurant, to the point where it is used to brand specific menu items, like “Ale House Loaded Fries.” ( See Miller's Menu, DE 90–11). In addition to the repeated use of “ALE HOUSE,” there are numerous features common to every Miller's location that contribute to the overall image of the brand: server uniforms consisting of a dark polo shirt and khaki pants, two persons present at the host station, dock wood on the walls, a centrally located rectangular peninsular bar with seating on both sides, a soffit over the bar, an “open” kitchen that allows customers to see food preparation, and “high-top” tables on the right hand side of the restaurant. (Koenig Dec. ¶ 3, DE 90–2). Miller's has copyrighted a number of the common floor plans that it uses in its restaurants. Ale House Floor Plans, Ex. 1–a, DE 31–2.

Miller's promotes the “ALE HOUSE” family of restaurants through a shared website, as well as through its Facebook and Twitter profiles. (Peterson Dec. ¶ 23, DE 90–1). Miller's markets the “ALE HOUSE” brand on intra-restaurant materials, such as flyers, posters, and banners. (Peterson Dec. ¶ 25, DE 90–1). Miller's “ALE HOUSE” restaurants also sponsor local sports teams, high school bands, and charity events. (Mark Peterson Declaration, June 19, 2009, ¶ 15, DE 90–13). In the past, Miller's has sponsored professional teams like the Florida Marlins and the Miami Dolphins. (Peterson Dec. ¶ 16, DE 90–13). Finally, Miller's engages in co-branding efforts with beer companies such as Miller's Brewing and Budweiser, using radio commercials to notify customers of beer-related special events and promotions taking place at each Miller's location. (Peterson Dec. ¶ 25, DE 90–1). As a result of these promotional efforts, many Florida residents associate the words “Ale House” exclusively with Miller's restaurants. (Danielle Caban Declaration, June 20, 2010, ¶ 8, DE 90–37; Dan Quong Declaration, June 20, 2010, ¶ 5, DE 90–38).

In April 2008, Defendant Boynton Carolina Ale House, LLC (“BCAH”) opened a restaurant named “Carolina Ale House” in Boynton Beach, Florida. (Peterson Dec. ¶ 4, DE 90–13). BCAH's restaurant is located about one mile away from Miller's “BOYNTON BEACH ALE HOUSE” location. Id. BCAH operates “Carolina Ale House” under a license from LM Restaurants, Inc. (“LMR”), which licenses the “Carolina Ale House” brand to 13 restaurants across North Carolina, South Carolina, and Florida. (Lou Moshakos Affidavit, April 7, 2010, Ex. B, ¶ 11, DE 72–2).

Like Miller's, BCAH uses a red logo that prominently features the words “Ale House;” this logo is displayed on both the outside of the building and on the uniforms of BCAH employees. Picture of BCAH exterior, DE 90–26; Picture of BCAH uniform, DE 90–31. BCAH also sells menu items with the prefix “Ale House,” such as “Ale House Chili” and “Ale House Mud Pie.” (Mitchell Koenig Declaration, June 19, 2009, ¶ 10c, DE 90–32). BCAH servers wear dark Polo shirts with khaki shorts or slacks. (Koenig Dec., ¶ 10f, DE 90–32). BCAH's floor plan is similar to Miller's in that it features a centrally located bar area, an open kitchen, dock wood on the interior walls, and high-top seating on the right side. (Koenig Dec., ¶ 10g, DE 90–32); Ale House Floor Plan, DE 90–59; BCAH Floor Plan, DE 90–60.

There are also similarities between the two establishments in terms of the services and promotions that they offer. For instance, Miller's offers $5 off $25 coupons in the “Clipper” Magazine. (Peterson Dec. ¶ 15, DE 90–13). BCAH has offered $5 off $25 coupons. BCAH Coupons, DE 90–36. It is claimed on BCAH's coupons that they are valid at “participating Palm Beach area locations,” even though there is only one Carolina Ale House location in Palm Beach County. Id. Like Miller's, BCAH advertises pay-per-view mixed martial arts “fight nights.” Other “Carolina Ale House” locations outside of Florida do not appear to advertise these events. “Carolina Ale House” Websites, DE 90–79; BCAH and Weston Websites, DE 90–80. Both BCAH and Miller's advertise day-specific dining discounts such as lunch specials, “Kids Eat Free Nights” and “Ladies Night.” Miller's Specials Flyer, DE 90–8; BCAH Specials Flyer, DE 90–28.

Since BCAH opened the “Carolina Ale House” down the road from Miller's Boynton location, there have been a number of instances where customers have confused the two restaurants. (Koenig Dec. ¶ 12, DE 90–32). Diners at Miller's Boynton location have asked whether BCAH's establishment is related to Miller's. (Robert Skinner Declaration, June 11, 2010, ¶ 7, DE 90–42). Customers with take-out orders have mistakenly come to BCAH's “Carolina Ale House” instead of Miller's Boynton location. (Michael Therien Declaration, June 11, 2010, ¶ 5, DE 90–40). “Carolina Ale House” patrons have asked for menu items that are only available at Miller's locations. (Amanda Pacinelli Declaration, June 4, 2010, ¶ 7, DE 90–43). Customers have arrived at Miller's Boynton location expecting to meet their friends or family, who are actually waiting for them at the “Carolina Ale House,” and vice versa. (Carrie Lingafelter Declaration, June 4, 2010, ¶ 6, DE 90–44). People have attempted to redeem “Carolina Ale House” coupons at Miller's Boynton location. (Shannon Tedesco Declaration, June 4, 2010, ¶ 7, DE 90–45).

On June 16, 2009, Miller's filed the instant suit, alleging trademark infringement and trade dress infringement under both Florida law and Section 43 of the Lanham Act. Complaint, ¶ 1, DE 1. Miller's also sues for copyright infringement under the Copyright Act of 1976, for unfair competition under the Lanham Act, and for Florida trademark dilution. Id.

The instant case is not the first time Miller's “ALE HOUSE” branding has been examined in federal court. On March 26, 1998, Ale House Management, Inc. (AHM), Miller's predecessor in interest,¹ sued another LMR licensee, Raleigh Ale House, Inc. (RAHI), alleging trademark and trade dress infringement, copyright infringement, and unfair trade practices. See Ale House Management Inc. v. Raleigh Ale House, Inc., et al., 5:98–cv–247–F(2) (E.D.N.C.), Ex. 1, DE 31–1. In that case, AHM claimed that RAHI's use of the term “ale house” in its restaurant name, “Carolina Ale House,” infringed AHM's trademark rights. Id. The U.S. District Court for the Eastern District of North Carolina granted summary judgment for RAHI. Ex. 10, DE 31–11. In affirming the judgment of the District Court, the Fourth Circuit Court of Appeals held, inter alia, that “ale house” was a generic term that could not be protected under federal trademark law. Ale House Management, Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 140–42 (4th Cir.2000).

Since the previous lawsuit, more than 20 new Miller's locations have opened; Miller's restaurants now appear to be the predominant users of the term “Ale House” in Florida. For example, a local newspaper, the Sun–Sentinel, hosts a web-based dining guide that separates restaurants and bars into various categories. Sun–Sentinel Webpage, DE 90–62. These categories include “Sports,” “Beer Garden,” “Brewery,” “Beerpub,” and “Pub,” but not “Ale House.” Sun–Sentinel Webpage, Bars & Clubs Section, DE 90–64. When typing “ale house” in the search field of the webpage, nearly all of the entries are Miller's restaurants....