Top Tobacco, L.P. v. Star Imps. & Wholesalers

• Decision Date: 18 August 2021
• Docket Number: 1:19-cv-4939-MLB
• Court: U.S. District Court — Northern District of Georgia
• Parties: Top Tobacco, L.P., et al., Plaintiffs, v. Star Importers & Wholesalers, Inc., et al., Defendants. Star Importers & Wholesalers, Inc. & Amin S. Hudda, Counterclaim Plaintiffs, v. Top Tobacco, L.P., et al., Counterclaim Defendants.

Top Tobacco, L.P., et al., Plaintiffs, v. Star Importers & Wholesalers, Inc., et al., Defendants.

Star Importers & Wholesalers, Inc. & Amin S. Hudda, Counterclaim Plaintiffs, v. Top Tobacco, L.P., et al., Counterclaim Defendants.

No. 1:19-cv-4939-MLB

United States District Court, N.D. Georgia, Atlanta Division

August 18, 2021

OPINION & ORDER

MICHKEL L. BROWN, UNITED STATES DISTRICT JUDGE

Plaintiffs Top Tobacco, L.P. ("Top"), Republic Technologies (NA), LLC ("Republic Technologies"), and Republic Tobacco, L.P. ("Republic") are the owners and exclusive sellers in the United States of cigarette rolling papers sold and distributed under the trademarks TOP® and JOB®. They sued Defendants Ziya Business, Inc. d/b/a ZCell & Novelties ("ZCell") and Samadali Lakhani, asserting federal and state claims arising from Defendants' alleged sale of cigarette rolling papers that contained counterfeit trademarks. Plaintiffs move for summary judgment as to liability on all their claims, leaving the issues of willfulness, damages, and fees for trial. (Dkts 185; 194.)^[1] The Court grants that motion and Plaintiffs' request for a permanent injunction.

I. Background^[2]

The Court draws the facts largely from the parties' submissions. In support of their motion for summary judgment Plaintiffs filed a statement of material facts (Dkt. 200-1). See LR 56.1(B)(1), NDGa. Defendants responded to it and filed a separate statement of additional facts they contend present genuine issues for trial. (Dkts. 219-1 and 2.) See LR 56.1(B)(2)(b). Plaintiffs responded to that. (Dkt. 222-1.)

The Court uses the parties' proposed facts and responses as follows. When a party does not dispute the other's fact, the Court accepts it for purposes of summary judgment and cites the proposed fact and corresponding response. When one side admits a proposed fact in part, the Court includes the undisputed part. When one side denies the other's proposed fact in whole or in part, the Court reviews the record and determines whether a fact dispute exists. If the denial is without merit, the Court deems the fact admitted so long as the record citation supports it. If a fact is immaterial, it is excluded.^[3] If a fact is stated as an issue or legal conclusion, it is excluded. See LR 56.1(B)(1)(c). Where appropriate, the Court modifies one party's fact per the other's response when the latter better reflects the record. Finally, as needed, the Court draws some facts directly from the record. See Fed. R. Civ. P. 56(c)(3) ("The court need consider only the cited materials, but it may consider other materials in the record.").

A. Parties

Plaintiff Top owns the trademarks TOP®, (Image Omitted) and (Image Omitted) for use in connection with cigarette rolling papers and related goods. (Dkts. 200-1 ¶ 1; 219-1 ¶ 1.) Plaintiff Republic Technologies owns the trademarks JOB®, (Image Omitted), and (Image Omitted) for use in connection with cigarette rolling papers and related goods. (Dkts. 200-1 ¶ 2; 219-1 ¶ 2.) Plaintiff Republic is theexclusive distributor in the United States of TOP- and JOB-brand cigarette rolling papers. (Dkts. 200-1 ¶ 3; 219-1 ¶ 3.) TOP® and JOB® products are manufactured exclusively for Republic and sold in the United States through Republic. (Dkts. 200-1 ¶ 4; 219-1 ¶ 4.) XXXXX (Dkts. 200-1¶ 10; 219-1 ¶ 10.) By volume of leaves, TOP is the leading brand of roll-your-own tobacco in the United States. (Dkts. 200-1 ¶ 11; 219-1 ¶ 11.) It has been sold in the United States since December 1900. (Dkts. 200-1 ¶ 12; 219-1 ¶ 12.) Republic and its predecessors have continuously used the TOP® trademark to sell cigarette papers in the United States since at least since 1942. (Dkts. 200-1 ¶ 13; 219-1 ¶ 13.)

Republic Technologies and its predecessors have used the JOB® mark continuously for over 150 years in connection with cigarette rolling papers. (Dkts. 200-11} 14; 219-11} 14.) JOB® papers are the longest-selling cigarette rolling papers in the United States. (Dkts. 200-1 If 15; 219-1 If 15.) The TOP® and JOB® brands are among the best-known brands of cigarette rolling papers in the United States.^[4] (Dkts. 200-11 16; 219-1 t 16.) Plaintiffs sell genuine TOP® and JOB® papers to several customers in the Atlanta area. (Dkts. 200-11 17; 219-11 17.)

Defendant ZCell is a Georgia corporation. (Dkts. 200-1 ¶ 5; 219-1 ¶ 5.) It sells general merchandise and novelty items to convenience stores and gas stations in the Atlanta area. (Dkts. 200-1 ¶ 63; 219-1 ¶63.) XXXXX (Dkts. 200-1 ¶ 66; 219-1 ¶ 66.) XXXXX (Dkts. Defendant Samad Lakhani is ZCell's CEO, sole owner, and only officer. (Dkts. 200-1 ¶¶ 6-7; 219-1 ¶¶ 6-8; 219-2 ¶ 2.)^[5]

B. Trademarks

Top owns and maintains several federal trademark registrations for the TOP® marks, including, among others, U.S. Registration Nos. 2739465, 2831105, 3677986, and 3677987 for cigarette rolling papers, Nos. 2293958 and 2739466 for smoking tobacco, Nos. 3407400 and 3720176 for cigarette making machines, No. 3710606 for tobacco, and No. 3918139 for pocket machines for rolling cigarettes for personal use. (Dkts. 200-1 ¶ 19; 219-1 ¶ 19.) Each TOP® registrations remains valid. (Dkts. 200-1 ¶ 20; 219-1 ¶ 20.)

Republic Technologies also owns numerous federal trademark registrations for the JOB® marks including, among others, U.S. Registration Nos. 73124, 1341384, 1357088, 3834324, 4019091, and 4019093 for cigarette papers. (Dkts. 200-1 ¶ 22; 219-1 ¶ 22.) Each of them remains valid. (Dkts. 200-1 ¶ 23; 219-1 ¶ 23.)

C. Plaintiffs' Products

TOP® and JOB® cigarette rolling papers are manufactured in Perpignan, France. (Dkts. 200-1 ¶ 25; 219-1 ¶ 25.) No legitimate TOP® or JOB® cigarette rolling papers are manufactured outside of France. (Dkts. 200-1 ¶ 26; 219-1 ¶ 26.) Plaintiffs' laboratory in France thus knows the exact composition of genuine TOP® and JOB® papers.^[6] (Dkts. 200-1 ¶ 27; 219-1 ¶ 27.)

Plaintiffs sell their TOP® and JOB® products in the United States to wholesalers and retailers. (Dkts. 200-1 ¶ 30; 219-1 ¶ 30.) XXXXX (Dkts. 200-1 ¶ 31; 219-1 ¶ 31.) Plaintiffs sell TOP® and JOB® brand papers in different sizes, packaging, and volume. (Dkts. 200-1 ¶ 32; 219-1 ¶ 32.) Plaintiffs, for example, sell promotional jars of TOP® papers containing 120 booklets or 144 booklets. (Dkts. 200-1 ¶ 33; 219-1 ¶ 33.) They do not sell them in 100-count jars. (Dkts. 200-1 ¶ 34; 219-1 ¶ 34.) The TOP® product packaging features the TOP marks in multiple locations, including on all sides of the carton, on the top and bottom of individual booklets, and even on the inner flap of each booklet. (Dkts. 200-1 ¶ 35; 219-1 ¶ 35.) Sachin Lele, Plaintiffs' general counsel, testified by declaration that the distinctive product packaging for TOP® products is immediately recognizable, including its use of the TOP® marks (including use of the ® symbol), Top's characteristic light yellow color packaging, Top's well-known blue stylized logo, and a red, yellow, and blue drawing of a top.^[7] (Dkts. 200-1 ¶ 36; 219-1 ¶ 36.) A consumer looking to purchase TOP® products would have no reason to believe products bearing those marks on the packaging are not genuine products.^[8] (Dkts. 200-1 ¶ 53; 219-1 ¶ 53.)

Plaintiffs also sell various paper products using the JOB® brand, including JOB® Gold, JOB® Orange, and Job® French White. (Dkts. 200-1 ¶¶ 37-38; 219-1 ¶¶ 37-38.) They do this in packages of various sizes, including jars of JOB® Gold papers containing 100 booklets. (Id.) Plaintiffs' JOB® Gold papers come in various sizes, including JOB® Gold 1.25 papers and JOB® Gold 1.5 papers. (Dkts. 200-1 ¶ 39; 219-1 ¶ 39.) Plaintiffs sell two versions of their JOB® Gold 1.25 and JOB® Gold 1.5 papers: booklets that are pre-priced for $1.69 and booklets that are not pre-priced. (Dkts. 200-1 ¶ 40; 219-1 ¶ 40.) Genuine pre-priced booklets are a promotional product that Plaintiffs offer only in 100-count jars or metal tins. (Dkts. 200-1 ¶ 41; 219-1 ¶ 41.) Plaintiffs only sell these promotional items in limited quantities to their exclusive customers once or twice a year. (Dkts. 200-1 ¶ 42; 219-1 ¶ 42.) They do not sell them in boxes.^[9] (Dkts. 200-1 ¶ 43; 219-1 ¶ 43.) They also sell non-pre-priced JOB® Gold boxes that are prominently marked with JOB® marks. (Dkts. 200-1 ¶ 44; 219-1 ¶ 44.)

Plaintiffs also sell two versions of JOB® VA Orange papers: booklets that are pre-priced for 99c and booklets that are not pre-priced. (Dkts. 200-1 ¶ 45; 219-1 ¶ 45.) Plaintiffs sell the pre-priced booklets in jars containing 100 booklets. (Dkts. 200-1 ¶ 46; 219-1 ¶ 46.) Plaintiffs also sell them in refillable boxes of 100 booklets. (Dkts. 200-1 ¶ 47; 219-1 ¶ 47.) All these items are prominently marked with Republic Technologies' JOB® marks. (Dkts. 200-1 ¶ 48; 219-1 ¶ 48.)

The JOB® product packaging prominently displays the JOB® marks in multiple locations, including on all sides of the carton, on the top and bottom of individual booklets, on the inner flap of each booklet, and embossed on the leaves themselves. (Dkts. 200-1 ¶ 50; 219-1 ¶ 50.) Mr Lele testified by declaration that the product packaging for JOB® Gold products includes the prominent use of the JOB® marks (including (Dkts. 219-2 ¶¶ 3-5: 222-1 ¶¶ 3-5.) XXXXX (Dkts. 219-2 ¶¶ 9-10, 33; 222-1 ¶¶ 9-10, 33.) use of the ® symbol), a characteristic gold color, and a well-known red-and-blue logo with red and blue filigree designs in the corners. (Dkts. 200-1 ¶ 51; 219-1 ¶ 51.) Mr. Lele also testified by declaration that the product packaging for JOB® Orange products includes the prominent use of the JOB® marks (including use of the ® symbol), a characteristic red color, and a well-known black-and-gold logo with black filigree designs on the top and bottom. (Dkts. 200-1 ¶ 52; 219-1 ¶ 52.) A consumer looking to purchase JOB® products would have no reason to...