Top Tobacco, L.P. v. Star Importers & Wholesalers, Inc.

• Decision Date: 07 September 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

September 7, 2021

OPINION & ORDER

Michael L. Brown, 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 Star Importers &amp Wholesalers, Inc. (“Star”) and Amin S. Hudda 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, exceptionality, damages, and fees for trial. (Dkt. 186/195.)^[1] The Court grants in part and denies in part that motion and grants Plaintiffs' request for a permanent injunction.

I. Background

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. 195-2). See LR 56.1(B)(1), NDGa. Defendants responded to it and filed a separate statement of additional facts. (Dkts. 211-2; 211-1.) See LR 56.1(B)(2)(a) and 56.1(B)(2)(b). Plaintiffs responded to that. (Dkt. 224.) See LR 56.1(B)(3).

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 factual 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.^[2] 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. Experts

To recover on their trademark infringement claims, Plaintiffs must show Defendants made unauthorized use of Plaintiffs' marks in a manner likely to cause consumer confusion. Davidoff & CIE, S.A. v. PLD Int'l Corp., 263 F.3d 1297, 1300-01 (11th Cir. 2001). To meet their burden, Plaintiffs partially rely on expert declarations from Marine Teisseyre and Virginie Rosarde (Republic employees) stating they tested certain cigarette papers containing TOP® and JOB® trademarks obtained from Defendants and determined they are counterfeit papers. (Dkts. 195-7; 195-8; 195-9; 195-10.) Defendants object to this testimony, arguing Plaintiffs failed to disclose Ms. Rosarde and Ms. Teisseyre as experts and they have not been admitted as experts. (Dkt. 211-2 ¶¶ 116-17, 126-31, 140-45, 149-52, 158-60, 171, 173-78, 180-81, 186, 197.) For every objection, Defendants repeat some variation of: “Rosarde was not disclosed as an expert and has not been admitted as an expert” or “[Teisseyre] was not disclosed as an expert and has not been admitted as an expert.” (Id.)

Federal Rule of Civil Procedure 26(a)(2)(A) provides that “a party must disclose to the other parties the identity of any witness it may use at trial to present evidence under Federal Rule of Evidence 702, 703, or 705.” Fed.R.Civ.P. 26(a)(2)(A). Any such disclosure must also “be accompanied by a written report-prepared and signed by the witness- if the witness is one retained or specially employed to provide expert testimony in the case.” Fed.R.Civ.P. 26(a)(2)(B). If a party fails to identify a witness as required by Rule 26(a), the party is not allowed to use that information or witness at trial, unless the failure was substantially justified or harmless. Fed.R.Civ.P. 37(c)(1).

“As the moving party, Defendant[s] [have] the initial burden of showing a valid basis to strike Plaintiff[s'] expert witness disclosures.” Reid v. United States, No. 3:14-cv-420, 2015 WL 12857077, at *3 (M.D. Fla. July 2, 2015); see also Commodores Entm't Co. v. McClary, No. 6:14-cv-1335, 2016 WL 7381697, at *2 (M.D. Fla. Jan. 22, 2016) (moving party bears initial burden of showing valid basis to strike opposing party's expert witness disclosures). Defendants have not shown a valid basis to strike Plaintiffs' expert witness disclosures. First, Defendants object to Ms. Rosarde's and Ms. Teisseyre's testimony in their response to Plaintiffs' statement of material facts without citing any evidence. They have not moved to exclude their testimony. Second, Defendants' objections are merely conclusory statements with no factual bases. Third, Ms. Rosarde and Ms. Teisseyre were listed in Plaintiffs' initial disclosures and Plaintiffs' counsel stated there were expert disclosures by some lab technicians during Plaintiffs' 30(b)(6) representative's deposition (which was taken on October 1, 2020, before the close of discovery). (Dkts. 210-1 at 16-17; 190-1 at 273:24-25.) The Court thus overrules Defendants' objection and considers Ms. Rosarde's and Ms. Teisseyre's testimony.^[3] If Defendants believe Plaintiffs have violated Rule 26, they may file appropriate motions in advance of trial.

B. Authentication

Plaintiffs object to multiple statements of fact asserted by Defendants on the grounds Defendants rely on documents for which no foundation has been established. (Dkt. 224 ¶¶ 90-91, 93.) Plaintiffs specifically object to Defendants' reliance on an email chain between Joe Sierra (Plaintiff Republic's Regional Zone Manager for the Southeast), Philip Patton (one of Plaintiff Republic's Regional Sales Managers), and others; text messages between Third-Party Defendant Alex Seriana (the owner of Third-Party Defendant TN Vape) and Mr. Patton; and an email chain between Plaintiffs' counsel and Defendants' counsel.

“Generally, documents must be properly authenticated in order for them to be considered on summary judgment.” APA Excelsior III, L.P. v. Windley, 329 F.Supp.2d 1328, 1335 (N.D.Ga. 2004). Under Federal Rule of Evidence 901, a document is authenticated by “evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed.R.Evid. 901(a). “To meet this standard, the proponent need only demonstrate a rational basis for its claim that the evidence is what the proponent asserts it to be.” APA Excelsior III, 329 F.Supp.2d at 1335 (quoting United States v. Coohey, 11 F.3d 97, 99 (8th Cir. 1993)). On summary judgment, “courts may look to other evidence in the case to determine whether a challenged document meets the standard of Rule 901.” Id.; Jones v. Rabanco, Ltd., 439 F.Supp.2d 1149, 1159 (W.D. Wash. 2006) (court may “conduct an independent analysis and admit into evidence certain documents containing ‘a prima facie aura of reliability,' even where they are not properly authenticated”). “Although section 901(b) illustrates various methods of authentication, these methods are not intended to be the only methods of authentication.” Bury v. Marietta Dodge, 692 F.2d 1335, 1338 (11th Cir. 1982). Finally, even if the documents are not properly authenticated on summary judgment, courts will consider certain documents if, “given the nature of the challenged documents, . . . they could easily be authenticated and rendered admissible at trial.” See Burger King Corp. v. Lumbermens Mut. Cas. Co., 410 F.Supp.2d 1249, 1255 (S.D. Fla. 2005); see also U.S. Aviation Underwriters, Inc. v. Yellow Freight Sys., Inc., 296 F.Supp.2d 1322, 1327 n.2 (S.D. Ala. 2003) (“Documents must generally be properly authenticated to be considered at summary judgment, unless it is apparent that those documents can be reduced to admissible, authenticated form at trial.”); Cooper v. Southern Co., 213 F.R.D. 683, 686 (N.D.Ga. 2003) (“[T]here is no requirement that evidence be presented in admissible form at summary judgment as long as the evidence would be admissible at trial.”).

All three exhibits are capable of being authenticated at trial, and the Court thus considers them. See Denney v. City of Albany, 247 F.3d 1172, 1189 n.10 (11th Cir. 2001) (“[A] court may only consider evidence that is admissible or that could be presented in an admissible form.”); see also The Lamar Co., L.L.C. v. City of Marietta, 538 F.Supp.2d 1366, 1377 (N.D.Ga. 2008) (“The court notes that it may consider unauthenticated documents on a motion for summary judgment if it is apparent that they will be admissible at trial.”).

C. Plaintiffs' Business, Trademarks, and Products

Plaintiff Top owns the trademarks TOP®, (Image Omitted) ®, (Image Omitted) ®, and (Image Omitted) ® for use in connection with cigarette rolling papers and related goods. (Dkts. 195-2 ¶ 1; 211-2 ¶ 1.) Plaintiff Republic Technologies owns the trademarks JOB®, (Image Omitted) ®, (Image Omitted) ®, (Image Omitted) ®, (Image Omitted) ®, and (Image Omitted) (R) for use in connection with cigarette rolling papers and related goods. (Dkts. 195-2 ¶ 2; 211-2 ¶ 2.)

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 papers, U.S. Registration Nos. 2293958 and 2739466 for smoking tobacco, U.S....