Monsanto Co. v. Campuzano

• Decision Date: 26 April 2002
• Docket Number: No. 99-2082-Civ.,99-2082-Civ.
• Citation: 206 F.Supp.2d 1239
• Parties: MONSANTO COMPANY and The NutraSweet Company, Plaintiffs, v. Fausto J. CAMPUZANO et al., Defendants.
• Court: U.S. District Court — Southern District of Florida

206 F.Supp.2d 1239

MONSANTO COMPANY and The NutraSweet Company, Plaintiffs, v. Fausto J. CAMPUZANO et al., Defendants.

No. 99-2082-Civ.

United States District Court, S.D. Florida, Miami Division.

April 26, 2002.

Order Modifying Decision May 2, 2002.

COPYRIGHT MATERIAL OMITTED

Keith Mack, Miami, FL, for Monsanto Co.

Rodney A. Brown, Brown & Fox, New York City, for Merisant Co.

Jeremy Adam Koss, Rothstein Rosenfeld & Pancier, Hollywood, FL, Carlos Ramiro Caso, Miami, FL, for Fausto J. Campuzano.

Jeremy Adam Koss, Rothstein Rosenfeld & Pancier, Hollywood, FL, for Maria Campuzano, F. Garcia Wholesale & Export, Inc.

Steven Fine, Fort Lauderdale, FL, for Mark Siegel, Kathleen M. Siegel, Trio Intern. Trading, Inc.

Michael B. Chesal, Kluger Peretz Kaplan & Berlin, Miami, FL, Ricardo Alberto Reyes, Tobin & Reyes, Boca Raton, FL, for Countywide of Miami, Inc.

Steven Herbert Hibbe, Miami, FL, for Jose I. Arguelles, Sylvia B. Arguelles, Trapeza Overseas, Inc., Intrasit Services, Inc.

Francis Xavier Santana, Miami, FL, for Carlos Casanova.

Carlos Ramiro Caso, Miami, FL, for Alvaro Buendia.

C. Vincent LoCurto, Fort Lauderdale, FL, for Sun Container, Inc.

ORDER GRANTING SUMMARY JUDGMENT AGAINST DEFENDANT ALVARO BUENDIA

JORDAN, District Judge.

Merisant, as successor in interest to the Monsanto Company and The Nutrasweet Company, seeks a permanent injunction restraining the defendants' sale and distribution of Equal tabletop sweetener, as well as monetary relief for alleged trademark and copyright infringement, false designation of origin, false description and dilution, and Florida law claims of alleged unjust enrichment, unfair competition, injury to business reputation, dilution of the distinctive quality of its trademarks, and participation in unconscionable, unfair, and deceptive acts or practices. Merisant moves for summary judgment against defendant Alvaro Buendia on liability and damages under all counts and seeks the entry of a judgment in the amount of $1,148,392.70, plus statutory damages in the amount of $150,000, together with attorneys' fees. It also requests the entry of a permanent injunction enjoining Mr. Buendia from infringing Merisant's trademarks, trade dress, and copyrights. Federal jurisdiction exists pursuant to 15 U.S.C. § 1121(a), 17 U.S.C. § 101 et seq. and 28 U.S.C. §§ 1331, 1338 and 1367. Mr. Buendia has failed to respond to the motion. For the reasons which follow, Merisant's motion [D.E. 224] is GRANTED in part and DENIED in part as to liability. Appropriate relief will be determined following a separate evidentiary hearing.

I. SUMMARY JUDGMENT STANDARD

Summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). A material fact is one that might affect the outcome of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Where the non-moving party fails to prove an essential element of its case for which it has the burden of proof at trial, summary judgment is warranted. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Hilburn v. Murata Elecs. North Am., Inc., 181 F.3d 1220, 1225 (11th Cir.1999). Thus, the task is to determine whether, considering the evidence in the light most favorable to Mr. Buendia, there is evidence on which the trier of fact could reasonably find a verdict in his favor. See Liberty Lobby, 477 U.S. at 251, 106 S.Ct. 2505; Hilburn, 181 F.3d at 1225; Allen v. Tyson Foods, Inc., 121 F.3d 642, 646 (11th Cir.1997)

II. UNDISPUTED RELEVANT FACTS¹

Monsanto is a manufacturer and distributor of consumer products sold under various registered trademarks owned by its wholly owned subsidiary, The NutraSweet Company. These products include the Equal brand of tabletop sweetener, which is a well-known and widely sold sweetener. Monsanto's successor, Merisant, has been substituted as the plaintiff in place of Monsanto and NutraSweet by my order of January 16, 2001 [D.E. 223].

Merisant owns the following trademarks for "Equal":

Registration No. 1,158,683, registered on June 30, 1981

Registration No. 1,318,800, registered on February 12, 1985

Registration No. 2,012,219, registered on October 29, 1996

Merisant, through Nutrasweet, also owns the following trademarks for "Nutrasweet":

Registration No. 1,262,746, registered on January 3, 1984

Registration No. 1,358,678 registered on September 10, 1985

Registration No. 1,336,188 registered on May 21, 1985 Merisant, through Nutrasweet, also owns the "NutraSweet Symbols":

Registration No. 1,325,241, registered March 19, 1985

Registration No. 1,366,139, registered on October 22, 1985.

Substantial resources have been devoted to the advertising and promotion of Equal, with more than $150,000,000.00 being spent in advertising and promoting Equal since 1992. As a result, the Equal product, bearing the NutraSweet trademarks and trade dress, is well known to the purchasing public throughout the United States. Sweeteners bearing the Equal and NutraSweet trademarks and the Equal trade dress have been and are now recognized by the public and in the food industry as originating from a single source. Net sales of Equal since 1992 have been in excess of $1,000,000,000.00, and the Equal and NutraSweet trademarks, the Equal trade dress, and the goodwill associated with them, are of inestimable value to Monsanto, NutraSweet, and Merisant. Monsanto and NutraSweet have engaged in and Merisant continues to engage in, interstate activities designed to promote the Equal product and the business and goodwill associated with their trademarks and to expand the use and reputation of their trademarks, trade dress, logos and property in Florida and throughout the United States.

The packaging Monsanto uses for the Equal product it sells to the retail market varies from the packaging it uses for the food service/institutional market. The bulk quantity cartons used for the institutional market contain either 1000 or 2000 packets, while the retail boxes contain 50, 100, 200, 500, or 700 packets. The food service packaging also expressly states "not for retail sale" and each individual packet is marked "We Proudly Serve" on the front of the packet, and "FOR RESTAURANT USE" on the back of the packet.

The Equal retail boxes are marked with a strawberry design made up of photographs, text and graphics. The design is wholly original material that is copyrightable subject matter under the United States copyright laws. The certificates of registration Monsanto obtained from the Register of Copyrights for its strawberry design are dated April 13, 1999. The Equal retail boxes at issue may also contain other wholly original copyrightable material—specifically, a coffee cup design made up of photographs, text, and graphics. Monsanto also obtained certificates of registration for the coffee cup design, dated March 29, 1999. Both the coffee cup design and the strawberry design, therefore, are protected designs, for which Monsanto (now Merisant) owns the right, title and interest, as well as the copyright.

As a result of quality assurance audits in the fall of 1998, Monsanto learned that Equal food service packets were being sold in counterfeit retail packaging. Without Monsanto's authorization, individual packets of Equal sweetener that were originally sold in bulk food service cartons for institutional use only were re-packaged in counterfeit blue retail boxes imprinted with the protected designs.

The counterfeit Equal boxes expressly misrepresent that the product is distributed by the NutraSweet Company and that the boxes were printed in the United States of America. The counterfeit Equal product can be identified as follows:

• The colors of the counterfeit retail boxes are washed out, while the genuine retail boxes have crisp colors.

• The counterfeit blue retail packaging contains Equal packets bearing the words "We proudly serve" on the front of the packet and "FOR RESTAURANT USE" on the back of the packets. These phrases are not on the packets contained in genuine retail boxes.

• There are coupons printed on the inside of the genuine 50, 100 (and 200) count retail boxes bearing the strawberry design. There are no coupons on the inside of the counterfeit retail boxes.

• The corrugated shipping cartons used to ship the counterfeit retail boxes can also be distinguished from the shipping cartons used for the genuine product. A circular seal with the name of the manufacturer of the shipping carton, either "Wabash" or "International Paper," is present on a genuine shipping carton, whereas on a counterfeit carton, either there is no seal, or if there is a seal, it does not contain the name of the manufacturer.

In 1996, Mr. Buendia was a distributor, through his company Idexcol, Ltda., for Polaroid products in Columbia.² See Buendia Deposition at 26 [D.E. 217]. Idexcol also traded in food products from time to time. See id. at 38. At his deposition on December 13, 2000, Mr. Buendia admitted that he coordinated his efforts to create counterfeit retail blue boxes/cartons in Columbia with defendant Mark Siegel. Mr. Buendia testified that he procured the printer in Colombia to print the counterfeit Equal retail cartons, and then advised Mr. Siegel to open a letter of credit at a Colombian bank in order to pay the printer.³

Mr. Buendia then helped to locate a company in Colombia to break down the institutional cartons and repackage the Equal packets into the counterfeit retail boxes. He also helped provide for payment to that company. Mr. Buendia testified that he went to the warehouse owned by the defendant Trapeza/Intransit almost every day where the repackaging was being performed during an approximately...