Croft et al v. Lewis
Filing
45
ORDER denying 40 Motion for summary judgment. Signed by Judge James D. Whittemore on 7/29/2011. (KE)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
CLAUDIA CROFT and
SHEER DELIGHT, INC.,
Plaintiffs,
vs.
Case No. 8:09-cv-1370-T-27AEP
JEANETTE M. LEWIS,
Defendant.
_____________________________________1
ORDER
BEFORE THE COURT is Defendant's Motion for Summary Judgment for Trademark
Infringement (Dkt. 40) and Plaintiff s response (Dkt. 41). Upon consideration, the Court concludes
that the Motion for Summary Judgment should be denied.
Background 1
Plaintiff Claudia Croft ("Croft") is the manufacturer of certain non-piercing nipple jewelry
sold under the trade name "Nipple Huggers." Affidavit of Claudia Croft (Dkt. 41) ("Croft Aff."),
~
2. Croft is also the owner of Plaintiff Sheer Delight, Inc. which markets and sells the Nipple
Hugger products. Complaint (Dkt. 1), ~ 7.
As an alternative to piercing, Nipple Huggers are designed to attach to the wearer by gripping
or "hugging" the nipple. Croft Aff., ~ 3. 2 Croft patented the "Nipple Hugger Jewelry System" and
I For purposes of summary judgment, the Court construes the facts in the light most favorable to Plaintiffs. See,
e.g., Adickes v. s.H. Kress & Co., 398 U.S. 144, 157 (1970); Jackson v. BellSouth Telecomms., 372 F.3d 1250, 1280
(1Ith Cir. 2004).
2The function and design of the "Nipple Hugger Jewelry System" is more fully described in U.S. Patent No.
6,758,061 (July 6, 2004), attached as Exhibit A to the Complaint.
has registered the mark "Nipple Huggers" for "wire jewelry adorning the breast nipples of the
wearer." Complaint, Exhibits A and D.3
Defendant Jeanette M. Lewis owns and controls a business operating the website
www.underthehoode.com. Declaration of Jeanette M. Lewis (Dkt. 40-2) ("Lewis Decl."),
~
1.
Underthehoode.com offers various adult articles for sale, including non-piercing wire jewelry
designed to attach to the nipples of the wearer.4 The website refers to this jewelry in various
locations as "Nipple Huggers," "nipple huggers," and "Under the Hoode(TM) Nipple Huggers."
Complaint, Ex. C.
Plaintiffs allege that Defendant's use ofthe term "Nipple Huggers" to promote her competing
line of non-piercing jewelry constitutes trademark infringement. 5
Summary Judgment Standard
Summary judgment is proper if, following discovery, the pleadings, depositions, answers to
interrogatories, affidavits and admissions on file 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. Celotex Corp. v.
Catrett, 477 U.S. 317,322 (1986); Fed. R. Civ. P. 56(a). "An issue offact is 'material' if, under the
applicable substantive law, it might affect the outcome of the case." Hickson Corp. v. N Crossarm
Co., 357 F.3d 1256, 1259-60 (1Ith Cir. 2004). "An issue of fact is 'genuine' if the record taken as
3 The "Nipple Huggers" mark was originally registered on September 14,2004. The United States Patent &
Trademark Office cancelled the trademark on April 15, 2011, due to Croft's failure to file certain documentation. Croft
has indicated that she intended to re-register the mark. See Croft Aff., ~~ 8-9. An online search reveals that Croft and
Under the Hoode, LLC have recently filed trademark applications for "Nipple Huggers" and "Nipple Hugger,"
respectively.
4 A description of the jewelry sold on Underthehood.com provides: "Huggers attach easily by opening the hook
closure, encircling the erect nipple from underneath and up each side, then complete attachment by closing the hook
feature at the top of the nipple for a nice, snug grip." Complaint, Ex.C.
5
Plaintiffs also assert a claim for patent infringement. Defendant has not moved for summary judgment on that
claim.
2
a whole could lead a rational trier of fact to find for the nonmoving party." Id. at 1260. All the
evidence and factual inferences reasonably drawn from the evidence must be viewed in the light
most favorable to the nonmoving party. Adickes v. S.H Kress & Co., 398 U.S. 144, 157 (1970);
Jackson v. BellSouth Telecomms., 372 F.3d 1250, 1280 (1Ith Cir. 2004).
Once a party properly makes a summary judgment motion by demonstrating the absence of
a genuine issue of material fact, the nonmoving party must go beyond the pleadings through the use
of affidavits, depositions, answers to interrogatories and admissions on file, and designate specific
facts showing that there is a genuine issue for trial. Celotex, 477 U.S. at 323-24. The evidence must
be significantly probative to support the claims. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249
(1986).
"If the movant bears the burden of proof on an issue, because, as defendant, it is asserting an
affirmati ve defense, it must establish that there is no genuine issue of material fact as to any element
of that defense." Int'l Stamp Art, Inc. v. Us. Postal Serv., 456 F.3d 1270, 1274 (11 th Cir. 2006)
(citing Martin v. Alamo Community College Dist., 353 F.3d 409, 412 (5 th Cir. 2003)). Moreover,
"[b]ecause of the intensely factual nature of trademark disputes, summary judgment is generally
disfavored in the trademark arena." KP Permanent Make-Up, Inc. v. Lasting Impression 1, Inc.,
408 F.3d 596, 602 (9 th Cir. 2005) (quoting Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140
(9 th Cir. 2002)); see also EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos,
228 F .3d 56 (2 nd Cir 2000) (reversing summary judgment in favor of defendants when issues of fact
existed as to whether use of phrase was descriptive and in good faith); United States v. Six Thousand
Ninety-Four (6,094) "Gecko" Swimming Trunks, 949F. Supp. 768, 774-75 (D. Haw. 1996) (denying
defendant's motion for summary judgment on fair-use defense).
3
Discussion
Defendant moves for summary judgment on Plaintiffs' claim for trademark infringement
(Count II) based on the defense offair use. 6 Specifically, Defendant argues that she did not use the
term "Nipple Huggers" as a trademark, she used the term in a descriptive sense to describer her nonpiercing intimate jewelry, and she used the term in good faith. See Memorandum of Law in Support
of Motion for Summary Judgment (Dkt. 40), p. 1.
"A fair-use defense is established if a defendant proves that its use is '(1) other than as a
mark, (2) in a descriptive sense, and (3) in good faith.'" Int'l Stamp Art, Inc., 456 F.3d at 1270
(quoting EMI Catalogue, 228 F.3d at 64). "The 'fair-use' defense, in essence, forbids a trademark
registrant to appropriate a descriptive term for [its] exclusive use and so prevent others from
accurately describing a characteristic of their goods." Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178,
1185 (5 th Cir. 1980). The determination of whether a term is used in a trademark or a descriptive
sense and the determination that a defendant's use was in good faith are questions offact. Packman
v. Chicago Tribune Co., 267 F.3d 628, 637
(7th
Cir. 2001).7
Construed favorably to Plaintiffs, the non-moving parties, the undisputed facts relied on by
Defendant do not demonstrate that Defendant is entitled to summary judgment on the issue of fair
use. See, e.g., Int'l Stamp Art, Inc., 456 F.3d at 1276 ("Failure to employ a non-infringing,
6 Defendant also argues that the Court should rule in her favor on Count II because the trademark registration
for "Nipple Huggers" was cancelled on or about April 15,2011. Specifically, Defendant argues: "No sections of the
Lanham Act are cited in the Complaint and, therefore, Count II cannot stand in federal court because the mark Nipple
Huggers is no longer registered with the USPTO." Defendant cites no authority in support of its position. Moreover,
Plaintiffs have filed an affidavit in opposition to the motion for summary judgment stating that they plan to re-register
the mark. See Croft Aff., ~~ 8-9. Accordingly, the Court rejects Defendant's argument that summary judgment is
appropriate based of the April 15,2011 cancellation.
7 "Nevertheless, these issues may be resolved on summary judgment 'ifthe evidence is so one-sided that there
can be no doubt about how the question should be answered.'" Packman, 267 F.3d at 637 (quoting Door Sys., Inc. v.
Pro-Line DoorSys., Inc., 83 F.3d 169,171 (7 th Cir. 1996ยป.
4
commercially viable alternative can raise a genuine issue of material fact. "); Sands, Taylor & Wood
Co. v. Quaker Oats, Inc., 978 F.2d 947, 954 (7th Cir. 1992) (rejecting the proposition that "a
defendant's usc of a term in conjunction with its own trademark [is] per se a use 'other than as a
trademark'''); Dayton Progress Corp. v. Lane Punch Corp., 917 F.2d 836, 840(4th Cir. 1990) ("mere
inclusion of [corporate] logo on the product is not sufficient to establish the defense of fair use");
Sierra On-Line, Inc. v. Phoenix Software, Inc., 739 F.2d 1415, 1423 (9 th Cir. 1984) (holding that
good faith is put at issue by choice of infringing phrase when other phrases were available because
it may indicate "an intent to trade on [mark holder's] good will and product identity"); Woodroast
Sys., Inc. v. Restaurants Unlimited, Inc., 793 F. Supp. 906, 914(D. Minn. 1992) (defendant
restaurant's use of its service marks in conjunction with descriptive term "woodroast" does not
necessarily establish fair use thereof); see also Sunmark, Inc. v. Ocean Spray Cranberries, Inc.,
64 F.3d 1055, 1060 (7th Cir. 1995) (court observed that if defendant were to use "sweet-tart" on
candy rather then beverage, i.e., if the parties were in competition with each other, plaintiff "would
have a strong claim for relief').
Accordingly, it is ORDERED AND ADJUDGED that Defendant's Motion for Summary
Judgment for Trademark Infringement (Dkt. 40) is DENIED.
G'I!:.
DONE AND ORDERED in chambers this ~ day of July, 2011.
SD.WIUrrEMORE
J
United States District Judge
Copies to: Counsel of Record
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