Maya Swimwear Corp. et al v. Maya Swimwear LLC et al
Filing
30
MEMORANDUM OPINION. Signed by Judge Sue L. Robinson on 6/8/2011. (nmf)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
MAYA SWIIVlWEAR, CORP. and
CAROLINA DINARDI,
)
)
) Civ. No. 11-059-SLR
Plaintiffs,
v.
MAYA SWIMWEAR, LLC.,
DAVID MCKINNEY, and TODD FORD,
Defendants.
)
)
)
)
)
)
)
)
Neil Lapinski, Esquire, and Theodore Kittila, Esquire, of Elliot Greenleaf, Wilmington,
Delaware. Counsel for Plaintiff.
David E. Wilks, Esquire, of Wilks, Lukoff & Bracegirdle, LLC, Wilmington, Delaware.
Counsel for Defendant.
MEMORANDUM OPINION
Dated: June ~ 2011
Wilmington, Delaware
I
I. INTRODUCTION
Carolina Dinardi ("Dinardi") and Maya Swimwear Corp. ("Maya Agentina")
(collectively "plaintiffs") filed this action against David McKinney ("MicKinney"), Todd
Ford ("Ford"), and Maya Swimwear LLC ("Maya USA") (collectively "defendants"), on
January 15, 2011. (0.1. 1) Plaintiffs design, manufacture, and distribute an exclusive
line of bikinis under the "Maya" brand name. (0.1.8 at 1-2, 7-8) Defendants sell
genuine, prior year Maya brand bikinis via their website. 1 (0.1. 20 at 111110) In their
second amended complaint, plaintiffs allege that defendants improperly use plaintiffs'
"Maya" trademark in connection with the sale of bikinis in violation of Section 32 of the
Lanham Act, 15 U.S. C. § 1114, and that said use of the mark misdescribes the bikinis
and falsely designates their origin in violation of Section 43(a) of the Lanham Act, 15
U.S.C. § 1125(a). (0.1. 14 at 111137-40) In addition to the § 43(a) claims, plaintiffs
allege that defendants are tortiously interfering with a contractual relationship by
harassing Christina Pinto ("Pinto"), a former employee of defendants who now works for
plaintiffs. (Id. at 1111 41-52) Currently pending before the court is plaintiffs' motion for a
preliminary injunction based on its trademark and false advertising claims, and
defendants' motion to dismiss for failure to state a claim. (0.1. 8; 0.1. 16) The court
held a hearing addressing plaintiffs' motion on April 11, 2011. For the following
reasons, the court grants-in-part and denies-in-part both motions.
1 Defendants' website is www.buymaya.com. A Google search for "Maya
swimwear" returns defendants' website as the second result on the list, with plaintiffs'
www.mayaswimear.com being the first. Plaintiffs also operate an e-commerce website
that allows customers to purchase Maya bikinis. Its URL is
www.buymayaswimwear.com.
II. BACKGROUND
B. The Parties and Contested Use of The Mark
Dinardi is the owner of Maya Argentina, a Florida corporation with its principal
place of business in Buenos Ares, Argentina. (0.1.
81111 2-3)
McKinney and Ford are
both owners of Maya USA, a Delaware corporation with its principal place of business
in Florida. (0.1. 20 at 3)
Dinardi began selling Maya bikinis in the United States in 2002. (0.1. 8 at
mr 8
11) She had initially used Joe Market USA LLC to import Maya bikinis into the United
States from Argentina. (ld. at 11 13) In September 2003, Ford and McKinney traveled
to Argentina to present a business proposal. (Id. at 11 16) Dinardi, Ford, and McKinney
thereafter reached an agreement and signed a letter of intent {"LOI"} for the exclusive
sale and distribution of Maya bikinis in the United States. (Id.)
The LOI had a two-year term and provided for automatic two-year extensions if
sales goals were met. (D.1. 8, ex. A at 2) The exclusivity period commenced October
1, 2003, and defendants were to sell 6,000 units within the first 9 months, 15,000 units
within 18 months, and 25,000 units within 24 months. (Id.) While Maya USA was
allowed to use and promote the brand, Maya Argentina retained complete creative
control of the brand's image. (Id. at 3)
On April 20, 2004, Dinardi filed for registration of the Maya trademark on the
principal register of the United States Patent and Trademark Office. Said registration
issued on October 9,2007 with registration number 3306450. (0.1. 8 at 11 18)
2
Defendants set up a website, www.buymaya.com. to help with the marketing,
promotion and sales of Maya bikinis. (0.1.20 at 9-10) www.buymaya.com was
connected with www.mayaswimwear.com to create a larger online presence, and rank
higher in search ratings. (Id.)
Defendants failed to meet the sales goals as set fourth in the LOI; nevertheless,
Dinardi continued the business relationship with them in order to sell and market Maya
bikinis. (0.1. 8 at 4fl19) Sales continued to decline, yet the relationship continued
through 2010 when, according to plaintiffs, Ford and McKinney failed to book a booth at
the Miami Trade Show (Id. at 4fl4fl27-28)
On October 13, 2010, Dinardi sent Maya USA a letter memo officially severing
ties to defendants and ending any and all business relations with them. (Jd. at 4fl31)
Despite this letter, defendants continued to sell Maya bikinis via their
www.buymaya.comwebsite.(Id.at 4fl 32) Consequently, plaintiffs sent a copy of the
letter to Ford and McKinney directly on December 17, 2010. (Id. at 4fl 33) Defendants
continued to operate their website and, on December 31,2010, plaintiffs sent a copy of
the letter to Network Solutions, plaintiffs' web host. (Jd. at 4fl34) Network Solutions took
down the website from January 11, 2011 to January 19, 2011, but it is now fully
operational. (Jd. at 4fl 35)
Defendants use the Maya trademark with its stylized font and "Mayan" symbols
at the top of their website. The logo has an orange hue to it, and is the largest text on
the website. Similarly, plaintiffs display the logo in the same font and in the same
relative position at the top of their website. Plaintiffs' version of the logo is white against
3
a black background, and the "Mayan" symbols are on the far right of the screen at the
same level as the Maya logo.
..
··t" 1m
~
I;
t.:
Defendants' use of the mark
Plaintiffs' use of the mark
Nowhere on the site do defendants disclaim an association with Maya Agentina
or do anything to imply that they are not the official Maya swimwear company.
B. Christina Pinto
Christina Pinto, a former personal assistant to Ford, was terminated by
defendants in 2010, and began working for plaintiffs in early 2011. (0.1. 14111141-42)
Pinto had not signed a non-compete or confidentiality agreement with defendants prior
to her termination, nor did she have a written contract of employment. (Id. at 111144-46)
Defendants sent plaintiffs a letter demanding that they terminate Pinto, and cease using
any and all customer lists and marketing materials that they obtained from her. (0.1. 14,
ex. A) They also demanded that plaintiffs cease contact with any clients obtained from
said customer lists. (Id., ex. 8)
III. STANDARD OF REVIEW
A. Preliminary Injunction
Traditional rules of equity apply to requests for injunctive relief. See eBay, Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391 (2006). "The decision to grant or deny ...
injunctive relief is an act of equitable discretion by the district court." Id. The grant of a
preliminary injunction is considered an "extraordinary remedy" that should be granted
4
only in "limited circumstances." See Kos Pharm., Inc. v. Andrx Corp., 369 F.3d 700,
708 (3d Cir. 2004) (citation omitted).
The moving party for injunctive relief must establish: "(1) a likelihood of success
on the merits; (2) that it will suffer irreparable harm if the injunction is denied; (3) that
granting preliminary relief will not result in even greater harm to the nonmoving party;
and (4) that the public interest favors such relief." Id. (citation omitted). The burden lies
with the movant to establish every element in its favor or the grant of a preliminary
injunction is inappropriate. See P. C. Yonkers, Inc. v. Celebrations, the Party and
Seasonal Superstore, LLC, 428 F.3d 504, 508 (3d Cir. 2005). If either or both of the
fundamental requirements - likelihood of success on the merits and probability of
irreparable harm if relief is not granted - are absent, an injunction cannot issue. See
McKeesport Hosp.
V.
Accreditation Councilfor Graduate Med. Educ., 24 F.3d 519, 523
(3d Cir. 1994).
B. Motion to Dismiss for Failure to State a Claim
In reviewing a motion filed under Federal Rule of Civil Procedure 12(b)(6), the
court must accept all factual allegations in a complaint as true and take them in the light
most favorable to plaintiff. See Erickson v. Pardus, 551 U.S. 89, 127 S. Ct. 2197,2200
(2007); Christopher V. Harbury, 536 U.S. 403, 406 (2002). A complaint must contain "a
short and plain statement of the claim showing that the pleader is entitled to relief, in
order to give the defendant fair notice of what the ... claim is and the grounds upon
which it rests." Bell At!. Corp. v. Twombly, 550 U.S. 544, 127 S. Ct. 1955, 1964 (2007)
(interpreting Fed. R. Civ. P. 8(a)) (internal quotations omitted). A complaint does not
5
need detailed factual allegations; however, "a plaintiff's obligation to provide the
'grounds' of his 'entitle[ment] to relief' requires more than labels and conclusions, and a
formulaic recitation of the elements of a cause of action will not do." Id. at 1964-65
(alteration in original) (citation omitted). The
'T~actual
allegations must be enough to
raise a right to relief above the speculative level on the assumption that all of the
complaint's allegations are true." Id. at 1959. "[D]etermining whether a complaint
states a plausible claim is context-specific, requiring the reviewing court to draw on its
experience and common sense." Ashcroft v. Iqbal, 129 S. Ct. 1937, 1950 (2009).
"In reviewing a motion to dismiss, '[c]ourts generally consider only the allegations
contained in the complaint, exhibits attached to the complaint and matters of public
record. '" Collins & Aikman Corp. v. Stockman, Civ. No. 07 -265-SLR-LPS, 2010 WL
184074 at *3 (D. Del. Jan. 19,2010) (quoting Pension Benefit Guar. Corp. v. White
Consol. Indus., Inc., 998 F.2d 1192, 1196 (3d Cir. 1993». "Certain additional materials
may also be considered without converting a motion to dismiss into a motion for
summary judgment (which generally cannot be ruled upon without providing a plaintiff a
reasonable opportunity for discovery)." Id. "For instance, 'a court may consider an
undisputedly authentic document that a defendant attaches as an exhibit to a motion to
dismiss if the plaintiffs claims are based on the document. ... '" Id. (emphasis
added) (citations omitted). As the Third Circuit has explained:
The reason that a court must convert a motion to dismiss to a summary
judgment motion if it considers extraneous evidence submitted by the
defense is to afford the plaintiff an opportunity to respond. When a
complaint relies on a document, however, the plaintiff obviously is on
notice of the contents of the document, and the need for a chance to refute
evidence is greatly diminished.
6
Pension Benefit, 998 F.2d at 1196-97 (emphasis added). "The facts necessary to
establish an affirmative defense must generally come from matters outside of the
complaint. Thus, with some exceptions, affirmative defenses should be raised in
responsive pleadings, not in pre-answer motions brought under Rule 12(b)." Wor/dcom,
Inc. v. Graphnet, Inc., 343 F .3d 651, 657 (3d Gir. 2003) (citations omitted).
IV. DISCUSSION
A. Preliminary Injunction
Plaintiffs argue that the court should issue a preliminary injunction based on their
trademark infringement and false designation of origin claims. (0.1. 9) For the reasons
discussed below, plaintiffs show a likelihood of success on the merits for these claims,
however, plaintiffs' requested relief is too broad. Therefore, plaintiffs' motion is granted
in-part and denied-in-part.
1. Likelihood of success on the merits
a. Trademark infringement
(1) Standard
"The law of trademark protects trademark owners in the exclusive use of their
marks when use by another would be likely to cause confusion." Fisons Horticulture,
Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 472 (3d Gir. 1994); Freedom Card, Inc. v. J.P.
Morgan Chase & Co., 432 F.3d 463, 470 (3d Gir. 2005).
A plaintiff proves trademark infringement by demonstrating that: (1) the mark is
valid and legally protectable; (2) plaintiff owns the mark; and (3) the defendant's use of
its mark to identify goods or services is likely to create confusion concerning the origin
7
of the goods or services. Checkpoint Sys. v. Check Point Software Tech., 269 F.3d
270,279 (3d Cir. 2001); A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d
198,210 (3d Cir. 2000); Fisons, 30 F.3d at 472.
Likelihood of confusion exists when consumers viewing a mark would probably
assume that the product or service it represents is associated with the source of a
different product or service identified by a similar mark. Checkpoint, 269 F.3d at 280;
Victoria's Secret, 237 F.3d at 211; Fisons, F.3d at 472.
The Third Circuit has adopted a ten-factor test, known as the "Lapp test," to
determine likelihood of confusion in the market. These factors are:
(1) the degree of similarity between the owner's mark and the alleged
infringing mark;
(2) the strength of the owner's mark;
(3) the price of the goods and other factors indicative of the care and
attention expected of consumers when making a purchase;
(4) the length of time the defendant has used the mark without evidence of
actual confusion arising;
(5) the intent of the defendant in adopting the mark;
(6) the evidence of actual confusion;
(7) whether the goods, competing or not competing, are marketed through
the same channels of trade and advertised through the same media;
(8) the extent to which the targets of the parties' sales efforts are the same;
(9) the relationship of the goods in the minds of the consumers, whether
because of the near-identity of the products, the similarity of function, or
other factors; and
(10) other facts suggesting that the consuming public might expect the prior
owner to manufacture a product in the defendant's market, or expect a prior
owner is likely to expand into the defendant's market.
Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983); Sabinsa Corp
V.
Creative Compounds, LLC, 609 F.3d 175, 183 (3d. Cir. 2010).
No single Lapp factor is determinative in a likelihood of confusion analysis, and
each factor must be weighed and balanced against the others. Kos. Pharms., 369 F.3d
8
at 709; Checkpoint, 269 F.3d at 280. The Third Circuit does not discount the strength
of one factor because of the weakness of another factor. Fisons, 30 F.3d at 476. "Not
all of the [Lapp] factors are present in every case." Id. at 476 n.11. However, if a court
finds certain Lapp factors to be inapplicable or unhelpful in a particular case, the court
should explain its choice not to employ those factors. Kos Ph arms. , 369 F.3d at 711.
Even where a likelihood of confusion is found, the affirmative defense of the first
sale doctrine or "trademark exhaustion" prevents a finding of liability when "a purchaser
does no more than stock, display and resell a producer's product under the producer's
trademark." Beltronics USA, Inc. v. Midwest Inventory Distrib., LLC, 562 F.3d 1067,
1073 (10th Cir. 2009); Iberia Foods Corp. v. Romeo, 1050 F.3d 298,301 n.4 (3d Cir.
1998) ("According to the 'first sale' or 'exhaustion' doctrine, a trademark owner's
authorized initial sale of its product into the stream of commerce extinguishes the
trademark owner's rights to maintain control over who buys, sells, and uses the product
in its authorized form."). Nevertheless, "the first sale doctrine does not protect resellers
who use other entities' trademarks to give the impression that they are favored or
authorized dealers for a product when in fact they are not." Australian Gold, Inc. v.
Hatfield, 436 F.3d 1228, 1241 (10th Cir. 2006). Additionally, the first sale doctrine does
not apply when "notice that the item has been repackaged is inadequate," or "when an
alleged infringer sells trademarked goods that are materially different than those sold
be the trademark owner." Brilliance Audio, Inc. v. Haights Cross Commc'ns, Inc., 474
F.3d 365, 369-70 (6th Cir. 2005).
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(2) Lapp factors
In the case at bar, there is no dispute that plaintiffs own the Maya trademark and
that it is distinctive and protectable. Instead, the parties focus their arguments around
defendants' ability to sell genuine Maya bikinis on their website. During oral argument,
plaintiffs argued that selling last year's product line "creates confusion in the
marketplace." (D.I. 28 at 8:19-20) This is because in the fashion industry, "[s]tyles
change quarter to quarter, week to week, day to day sometimes." (ld. at 8:13-15)
However, plaintiffs do not cite a case for the proposition that selling last year's fashions
violates the Lanham Act, especially when, as here, defendants do not claim that the
products are this year's line. 2
The true question before the court is whether defendants' use of plaintiffs' mark
on the top of their website is actionable trademark infringement. For the reasons
discussed below, it is.
(a) The degree of similarity between the marks
Plaintiffs and defendants are using exactly the same mark. It is the"Maya" word,
written in the same font, and using the same symbols. "Where the identical mark is
used concurrently by unrelated entities, the likelihood of confusion is inevitable."
Pappan Enters., Inc. v. Hardees Food Sys., Inc., 143 F.3d 800, 804 (3d Cir. 1998).
Therefore, this factor favors plaintiffs.
(b) The strength of the owners' mark
Such a claim would give rise to a cause of action for false advertising under §
43(a) of the Lanham Act.
2
10
"To determine the strength of the mark, courts look to (1) the inherent features of
the mark contributing to its distinctiveness or conceptual strength and (2) the factual
evidence of the mark's commercial strength or of marketplace recognition of the mark"
Sabinsa Corp. v. Creative Compounds, LLC, 609 F.3d 175, 185 (3d Cir. 2010).
Conceptual strength falls into a spectrum of distinctiveness, classifying marks as either:
(1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary/fanciful. Id. Generic marks
describe a class of goods and can never obtain protected status. In re Pennington
Seed, Inc., 466 F.3d 1053, 1058 (Fed. Cir. 2006). Descriptive marks, including marks
that use a person's name, require secondary meaning in order to obtain protection.
Tana v. Dantanna's, 611 F.3d 767,776 (11th Cir. 2010). Marks that are arbitrary,
fanciful or suggestive are considered "inherently distinctive" and may obtain protection
without proof of secondary meaning. Commerce Nat. Ins. Servs., Inc. v. Commerce
Ins. Agency, Inc., 214 F.3d 432,438 (3d Cir. 2000).
The Third Circuit has identified eleven non-exhaustive factors relevant to the
factual determination whether an item has acquired secondary meaning:
(1) the extent of sales and advertising leading to buyer association;
(2) length of use;
(3) exclusivity of use;
(4) the fact of copying;
(5) customer surveys;
(6) customer testimony;
(7) the use of the mark in trade journals;
(8) the size of the company;
(9) the number of sales;
(10) the number of customers; and
(11) actual confusion.
E. T.Browne Drug Co. v. Coco care Prods., Inc., 538 F.3d 185, 199 (3d Cir. 2008).
11
In the case at bar, the mark "Maya" is arbitrary when used in conjunction with the
sale of bikinis and, therefore, is a strong mark. In addition, the mark has significant
marketplace recognition as evidenced by magazine articles showing celebrities wearing
Maya bikinis 3 and yearly trade show participation. Therefore, this factor favors plaintiffs.
(c) The price of goods
The price of goods is high. The non-sale price of the bikinis on the parties'
websites range from $185-$240. This factor favors defendants. R.J.Ants Inc., v.
Martinelli Enters., LLC, Civ. No. 06-5669, - F. Supp. 2d -, 2011 WL 611809, at *13
(E.D. Pa. Feb. 18, 2011) ("if goods are expensive, or there is evidence that the average
buyer exercises a certain level of care in making the purchase, or is a professional or
commercial consumer, confusion is deemed less likely. ").
(d) The length of time defendants have used the
mark without actual confusion
No party submitted information regarding actual confusion or a lack thereof.
Therefore, this factor favors no party.
(e) The intent of the defendants in adopting the
mark
Defendants were associated with plaintiffs when they initially adopted the mark,
therefore, at the time they initially adopted the mark, their intent was proper.
Defendants continued to use the mark even after plaintiffs sent the cease and desist
letters, although there is no indication that defendants continued using the mark with
the intent to confuse the public. Because defendants were on notice that they were no
3
http://www.mayaswimwear.com (follow "Press" hyperlink).
12
longer to use the mark, even though their original intent was proper, this factor
somewhat favors plaintiffs.
(f) Evidence of actual confusion
No party submitted information regarding actual confusion or a lack thereof.
Therefore, this factor favors no party.
(g) Whether the goods are marketed through the
same sales channels
The goods are marketed through the same sales channels. The parties sell
Maya brand bikinis over the internet, through their respective websites. In addition, the
URLs of the parties' websites are nearly identical. Plaintiffs' e-commerce site is
www.buymayaswimwear.com, whereas defendants' is www.buymaya.com. They also
target the same retailers. (0.1. 8 at,-r 44) Therefore, this factor favors plaintiffs.
(h) The extent to which the targets of the parties'
sales efforts are the same
"When the parties target their sales efforts to the same group of consumers
there is a greater likelihood of confusion between the two marks." Sabinsa Corp, LLC,
609 F.3d at 188. In the case at bar, the targets of the parties' sales are the same. Both
target women who are interested in fashionable yet moderately expensive bikinis.
Therefore, this factor favors plaintiffs.
(i) The relationship of the goods in the minds of
the customers
The goods sold by the parties are identical, namely, Maya brand bikinis.
Therefore, this factor favors plaintiffs.
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(j) Other facts suggesting that the consuming
public might expect the prior owner to provide
both products or expand into the market
Defendants' placement of the mark in the title bar of their website along with the
URL suggests that defendants are either producers of Maya brand bikinis or an
authorized retailer. Therefore, this factor favors plaintiffs.
(3) Conclusion
Plaintiff has shown a likelihood of success on the merits for its burden of proving
a likelihood of consumer confusion under the Lapp test. The balance of the Lapp
factors tips in favor of plaintiffs due to the similarity of the marks and the positioning of
the mark on defendants' webpage. This placement, along with defendants' URL,
suggests to the consuming public that defendants either are the producers of Maya
swimwear or are authorized distributors. This is not the case of a retail store with a
different name selling a product on its website. Had defendants' store been called
"Bargain Barrel Bikinis,"4 and defendants used the Maya trademark either as plain text
or in whole with a clear disclaimer that they were not an authorized retailer, plaintiffs
would not have a cause of action because of the first sale doctrine. However, here,
defendants' use of the mark "give[s] the impression that they are favored or authorized
dealers for a product when in fact they are not." Australian Gold, 436 F.3d at 1241.
b. Lanham Act § 43(a)
(1) Standard
15 U.S.C. § 1125{a){1){a) provides in pertinent part:
4 Assuming that Bargain Barrel Bikinis is not an actual store or a registered
trademark owned by another company.
14
Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or
device, or any combination thereof, or any false designation of origin, false
or misleading description offact, orfalse or misleading representation offact,
which ... is likely to cause confusion, or to cause mistake, or to deceive as
to the affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person ... shall be liable in a
civil action by any person who believes that he or she is or is likely to be
damaged by such act.
The Third Circuit applies the same test for false designation of origin under §
43(a) as it does to causes of action for trademark infringement. A&H Sportswear, Inc.
v. Victoria's Secret Stores, Inc. 166 F.3d 197,202 (3d. Cir. 1999); Primepoint, L.L.C. v.
PrimePlay, Inc., 545 F. Supp. 2d 426, 431-32 (D.N.J. 2008).
(2) Discussion
Because the court has already found that plaintiffs have a valid and protectable
interest in the "Maya" trademark, and that defendants' use of said trademark is likely to
cause confusion under the Third Circuit's Lapp test, the court also finds defendants
liable for false designation of origin under § 43(a) of the Lanham Act.
2. Irreparable harm to plaintiffs
The court has determined that defendants' use of the "Maya" trademark
constitutes trademark infringement and that plaintiffs have shown a likelihood success
on the merits. Plaintiffs have demonstrated as well that defendants will continue to use
the mark in a way that implies sponsorship absent an injunction, thus establishing a
probability of irreparable harm. Pan Am. World Airways, Inc. v. Flight 001, Inc., Civ.
No. 14442, 2007 WL 2040588, at *7 (S.D.N.Y. Jul. 13, 2007).
3. Harm to defendants
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Defendants presented no evidence as to the harm they would suffer if enjoined
from using the mark in their current manner. That said, the court recognizes that
defendants will likely lower in search rankings if they are no longer allowed to use the
www.buymaya.comURL.This may make it more difficult to sell their remaining stock of
Maya brand bikinis. However, this harm is less significant than the harm to plaintiffs
that stems from consumers' confusion over defendants' status as the official Maya
representative.
4. Public interest
The public interest concern in trademark infringement cases is "the interest in the
prevention of confusion, particularly as it affects the public interest in truth and
accuracy." Kos Pharms., 369 F.3d at 730. "Having already established that there is a
likelihood of consumer confusion created by the concurrent use of the ... marks, it
follows that if such use continues, the public interest would be damaged. Conversely, a
prohibition upon [defendants'] use of the marks would eliminate that confusion."
Optician's Ass'n of Am. v. Independent Opticians of Am., 920 F.2d 187, 198 (3d Cir.
1990). Accordingly, the court concludes that the public interest would be served by a
preliminary injunction.
B. Motion to Dismiss
1. Trademark Claims
Defendants' motion to dismiss plaintiffs' trademark claims is based on their
defense of the first sale doctrine. (0.1. 47 at 5) As discussed above, defendants are
allowed to sell their stock of Maya brand bikinis and, under some circumstances, even
use the Maya trademark to do so. That being said, plaintiffs have pled a prima facie
16
case of trademark infringement for defendants' current use of the mark on their
website. 5
Plaintiffs pled that they own a valid and legally protectable mark, and that
defendants are using said mark. (0.1. 14 at,-r,-r 9, 19, 31) Plaintiffs also implicitly state
that defendants' use of the mark is likely to cause confusion, mistake or to deceive. (/d.
at,-r 31) Therefore, the court denies defendants' motion in this regard.
2. Tortious interference with contractual relationships
Defendants argue that plaintiffs have failed to show that they interfered with a
contractual relationship because the two cease and desist letters that form the basis of
the claim were sent to plaintiffs directly, and not to Pinto or to any customers. (0.1. 17
at 16-17) Furthermore, nothing has happened as a result of said letters. (/d.) Pinto still
works for plaintiffs, and plaintiffs did not identify any actual or potential customer
relationships that were harmed as a result of the letters. (/d.)
The parties do not dispute that Florida law governs plaintiffs' tortious interference
with contractual relationship claims. The elements of tortious interference with a
contract or business relationship are:
(1) the existence of a business relationship between the plaintiff and a third
person, not necessarily evidenced by an enforceable contract, under which
the plaintiff has legal rights;
(2) the defendant's knowledge of the relationship;
The court acknowledges that plaintiffs' complaint barely satisfies the Rule 8
pleading standards, and finds it remarkable that the word "confusion" appears nowhere
on its face. However, given that the complaint "repeat[s] and reiterate[s] each and
every allegation contained" in the preceding paragraphs for every count, there is
enough pled in various parts of the complaint to plausibly state a claim for trademark
infringement.
5
17
(3) an intentional and unjustified interference with the relationship by the
defendant which induces or otherwise causes the third person not to
perform; and
(4) damage to the plaintiff resulting from the third person's failure to perform.
Seminole Tribe of Florida v. Times Pub. Co., Inc., 780 So. 2d 310, 315 (Fla. Dist. Ct.
App.2001)
Plaintiffs' complaint satisfies the first two elements of tortious interference with a
contractual relationship, namely that plaintiffs have a relationship with Pinto and variolJs
customers, and that defendants knew of said relationships as evidenced by the cease
and desist letters that they sent to plaintiffs. (0.1. 14 at 111148-52) However, plaintiffs
did not adequately plead that these letters induced or otherwise caused Pinto or the
customers not to perform under the business relationship. To the contrary, plaintiffs'
recent letter to the court indicated that Pinto is still in a contractual relationship with
plaintiffs, despite defendants' continued harassment. (0.1. 29) Furthermore, because
plaintiffs did not plead that defendants induced or otherwise caused a third person not
to perform, they cannot be damaged as a result of said failure to perform. Therefore,
the court grants defendants' motion in this regard.
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v.
CONCLUSION
For the foregoing reasons, plaintiffs' motion for a preliminary injunction is
granted-in-part and denied-in-part as is defendants' motion to dismiss for failure to state
a claim. Defendants may continue to sell Maya brand bikinis, but cannot claim or imply
that they are the current line unless they actually are. Furthermore, defendants may
not use plaintiffs' trademark at the top of their website, nor may they use the
www.buymaya.com URL. Defendants must use a different business name for their
website that does not involve the "Maya" trademark. Defendants may use the Maya
trademark on their website to advertise the sale of Maya brand bikinis, but they must
use the mark either as plain text or in whole with a clear disclaimer that they are not an
authorized retailer. An appropriate order shall issue.
19
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