Rain Bird Corp. v. Taylor

• Decision Date: 14 October 2009
• Docket Number: Case No. 3:08cv509/RV/EMT.
• Citation: 665 F.Supp.2d 1258
• Parties: RAIN BIRD CORPORATION, a California corporation, Plaintiff, v. Patrick TAYLOR, Individual doing business as AAA Rainbird Connection, Defendant.
• Court: U.S. District Court — Northern District of Florida

665 F.Supp.2d 1258

RAIN BIRD CORPORATION, a California corporation, Plaintiff, v. Patrick TAYLOR, Individual doing business as AAA Rainbird Connection, Defendant.

Case No. 3:08cv509/RV/EMT.

United States District Court, N.D. Florida, Pensacola Division.

October 14, 2009.

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Stephen Marshall Cozart, Kubicki Draper Pa, Pensacola, FL, for Plaintiff.

Patrick Taylor, Crestview, FL, pro se.

ORDER

ROGER VINSON, Senior District Judge.

This cause conies on for consideration upon the magistrate judge's Report and Recommendation dated September 10, 2009 (Doc. 41). The parties have been furnished a copy of the Report and Recommendation and have been afforded an opportunity to file objections pursuant to Title 28, United States Code, Section 636(b)(1). I have made a de novo determination of all timely filed objections.

Having considered the Report and Recommendation, and any timely filed objections thereto timely filed, I have determined that the Report and Recommendation should be adopted.

Accordingly, it is now ORDERED as follows:

1. The magistrate judge's Report and Recommendation is adopted and incorporated by reference in this order.

2. Rain Bird's motion for summary judgment (Doc. 31) is GRANTED.

3. Rain Bird is awarded $40,413.00, pursuant to 15 U.S.C. § 1117(a).

4. Rain Bird is awarded its costs and attorney's fees incurred in this action in the total amount of $1,087.00.

5. The following permanent injunction is entered:

Patrick Taylor, his agents, servants, employees, and attorneys, and all those acting in concert or participation with any of the foregoing, are hereby permanently restrained and enjoined, effective immediately, from using the term "Rain Bird" or variations thereof, including "AAA Rainbird Connection," in connection with goods and services covered by Rain bird's Registered Trademarks, including U.S. Principal Registration Nos. 567442, 771728, 771809, 908921, 962015, 982529, 999325, 984827, and 1638034.

Judgment shall be entered accordingly.

DONE AND ORDERED.

REPORT AND RECOMMENDATION

ELIZABETH M. TIMOTHY, United States Magistrate Judge.

Plaintiff Rain Bird Corporation ("Rain Bird") filed this case asserting claims for damages, injunctive relief, costs, and attorney's fees for willful infringement, unfair competition and dilution of nine of its trademarks by Defendant Patrick Taylor, d/b/a AAA Rainbird Connection ("Taylor") (Doc. 1). Rain Bird asserts claims under the Lanham Act, 15 U.S.C. § 1114 et seq., Florida common law, the Florida Registration and Protection of Trademarks Act ("FRPTA"), Fla. Stat. § 495.151, and the Florida Deceptive and Unfair Trade Practices Act ("FDUTPA"), Fla. Stat. § 501.201 et seq. (id.).¹ Presently before the court is Rain Bird's Motion For Summary Judgment and Supporting Memorandum, Statement of Facts in Support of Plaintiff's Motion for Summary Judgment, and supporting documents (Docs. 31, 32, 33). Taylor has not responded. For the reasons set forth below, the undersigned recommends that Rain Bird's motion for summary judgment be granted.

I. PROCEDURAL BACKGROUND

Rain Bird filed the Complaint in this action on November 7, 2008 (Doc. 1). The case was referred to the undersigned for the issuance of all preliminary orders and any recommendations to the district court regarding dispositive actions. See N.D. Fla. Loc. R. 72.2(E); see also 28 U.S.C. § 636(b)(1)(B)(C); Fed.R.Civ.P. 72(b). Taylor was an inmate at the Okaloosa County Jail at the time he was served with the Summons and Complaint (see Doc. 6). Taylor's Answer to the Complaint was entered on the record on February 27, 2009, 2009 WL 500860 (Doc. 11). Taylor did not deny any of Rain Bird's allegations (id.). In May of 2009, Rain Bird served a set of Requests for Admissions upon Taylor (see Doc. 33, Declaration of Stephen Cozart). Taylor did not answer or object to any of the requests for admissions (see id.). On July 31, 2009, Rain Bird filed and served its motion for summary judgment (Docs. 31, 35), along with a statement of undisputed facts (Doc. 32) and numerous exhibits (Docs. 32, 33). The court issued an advisement order informing the parties of the importance and ramifications of summary judgment consideration and provided them with information as to the requirements for materials submitted for Rule 56 review (Doc. 36). The order advised Taylor that he must file and serve a separate, short and concise statement of the material facts as to which it is contended that there exists a genuine issue to be tried, in the format set forth in Rule 56.1(A) of the Local Rules of the Northern District of Florida (id.). The court expressly advised Taylor that all material facts set forth in the statement of material facts filed by Rain Bird would be deemed to be admitted by Taylor unless controverted by Taylor's statement of material facts (id.). Taylor filed nothing in response to Rain Bird's motion for summary judgment. Pursuant to Rule 56.1(B) of the Local Rules of the Northern District of Florida, the advisement date has passed; therefore, only those documents and evidentiary materials currently in the record will be considered by the court.

II. RELEVANT FACTS²

The following facts are derived from Rain Bird's statement of facts. Taylor did not file a statement of facts controverting any of the facts asserted by Rain Bird, therefore, Rain Bird's facts are deemed admitted by Taylor and undisputed for summary judgment purposes. See N.D. Fla. Loc. R. 56.1(A). The facts are also derived from Taylor's admissions by virtue of his failure to serve a written answer or objection to the matters included in Rain Bird's requests for admissions, which were served on Taylor on May 6, 2009 and May 15, 2009 (see Doc. 33, Declaration of Stephen M. Cozart, ¶¶ 2-5). See Fed.R.Civ.P. 36(a)(3), (b); United States v. 2204 Barbara Lane, 960 F.2d 126, 129 (11th Cir.1992). This is so even though Taylor is a prisoner proceeding pro se. See 2204 Barbara Lane, 960 F.2d at 129 (citing J.D. Pharm. Distribs., Inc. v. Save-On Drugs & Cosmetics Corp., 893 F.2d 1201, 1209 (11th Cir.1990)).

Rain Bird is a very well known and prominent corporation involved in the design, development, manufacture, supply and sale of high quality irrigation-related products, including irrigation sprinkler systems of various designs (Doc. 32, ¶ 2). Rain Bird conducts business in and has customers in Florida (id., ¶ 1). Since at least 1936, Rain Bird has provided goods or services or both in relation to irrigation and has done so using its easily recognized and famous Rain Bird word and design marks (id., ¶ 9). These word and design marks ("Rain Bird Marks") are owned by Rain Bird and used exclusively in commerce since 1936 (id., ¶¶ 10, 16). The Rain Bird Marks include nine trademarks registered on the Principal Register of the United States Patent and Trademark Office: Registration No. 567,442 for the mark "RAINBIRD," Registration No. 771,728 for the mark "RAIN BIRD," Registration No. 771,809 for the mark "RAIN BIRD," Registration No. 908,921 for the mark "RAIN BIRD," Registration No. 962,015 for the mark "RAIN BIRD," Registration No. 982,529 for the mark "RAIN BIRD," Registration No. 999,325 for the mark "RAIN BIRD," Registration No. 984,827 for the mark "RAIN BIRD," and Registration No. 1,638,034 for the word and design mark depicted on page 3, paragraph 11 of Rain Bird's statement of facts and in Exhibit 9 attached thereto (id., ¶ 11, Exs. 1-9). Rain Bird has developed valuable trademark rights and associated goodwill in the Rain Bird Marks (Doc. 32, ¶ 19). Rain Bird Marks identify Rain Bird as the source of goods and services bearing these marks (id., ¶ 20). Taylor does not own any rights to use the Rain Bird Marks, nor is he authorized to use the Rain Bird Marks (id., ¶¶ 39, 40).

Rain Bird Marks are famous in the State of Florida (id., ¶ 17). Rain Bird advertises, markets, and promotes its goods and services bearing the Rain Bird Marks in commerce in the State of Florida (id., ¶ 18). Taylor has done business as AAA Rainbird Connection in the State of Florida (id., ¶ 21). Taylor, doing business as AAA Rainbird Connection, promoted, advertised, and offered for sale goods and services relating to irrigation systems in direct competition with Rain Bird and its authorized distributors in the State of Florida (id., ¶ 22). Taylor uses business forms, telephone directory listings, and email addresses that imitate the Rain Bird Marks in connection with offering goods and services relating to irrigation systems (id., ¶ 23). Taylor, doing business as AAA Rainbird Connection, created the invoices attached to Rain Bird's Complaint as Exhibit 10 (id., ¶ 24). According to those invoices, Taylor did at least $13,471.00 of business as AAA Rainbird Connection within a period of three weeks in July of 2008 (id., ¶ 25). The telephone directory listings attached to Rain Bird's Complaint as Exhibit 11 report the contact telephone number for AAA Rainbird Connection as corresponding to the telephone number printed on Taylor's invoices and business cards (id., ¶ 26). Customers and prospective customers encountering Taylor's use of the AAA Rainbird Connection business name are likely to believe that he is associated with and sponsored by Rain Bird (id., ¶¶ 27, 29). Customers and prospective customers encountering Taylor's use of business forms, telephone directory listings, and e-mail addresses that imitate the Rain Bird Marks are likely to believe that Taylor is associated with and sponsored by Rain Bird (id., ¶¶ 28, 30). Taylor is aware of instances of consumer confusion between his use of the AAA Rainbird Connection business name, e-mail address telephone directory listings, and business forms that imitate the Rain Bird Marks, and the actual Rain Bird Marks. (id., ¶¶ 31, 32). The goods and services offered by Taylor doing business as AAA Rainbird Connection are offered in the same...