Cathedral Art Metal Co., Inc. v. Divinity Boutique, LLC et al
Filing
41
OPINION AND ORDER. Plaintiff's Motion for Preliminary Injunction 13 is GRANTED. Defendants Divinity Boutique, LLC and Nicole Brayden Gifts, LLC and all of their officers, agents, servants, employees, representatives, successors, assigns, atto rneys, and all other persons acting for, with, by, through, or under authority from Defendants, or in concert or participation with Defendants, be preliminarily enjoined from, and shall immediately stop selling products bearing Plaintiff's AMAZI NG WOMAN trademark, including products that bear the word mark "AMAZING WOMAN" and products that bear a poem entitled "Recipe for an Amazing Woman." Plaintiff Cathedral Art Metal Co., Inc., shall post an injunction bond with the Clerk of Court in the amount of $50,000.00 by the close of business on January 30, 2018. The parties' motions to file matters under seal 16 , 29 , and 39 are GRANTED. Signed by Judge William S. Duffey, Jr on 1/26/2018. (bgt)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
CATHEDRAL ART METAL CO.,
Plaintiff,
v.
1:18-cv-141-WSD
DIVINITY BOUTIQUE, LLC and
NICOLE BRAYDEN GIFTS, LLC,
Defendants.
OPINION AND ORDER
This matter is before the Court on Plaintiff Cathedral Art Metal Co.’s
(“Plaintiff” or “Cathedral Art”) Motion for Preliminary Injunction [13] (the
“Motion”).
I.
BACKGROUND
A.
Procedural History
On January 10, 2018, Plaintiff filed a Complaint [1] and a Motion for
Temporary Restraining Order [2] (“TRO Motion”) seeking to preclude Defendants
Divinity Boutique, LLC, and Nicole Brayden Gifts, LLC (collectively,
“Defendants”), from “selling goods bearing Plaintiff’s AMAZING WOMAN
trademark and/or associated trade dress.” ([2] at 1). On January 12, 2018, the
Court conducted a hearing on the TRO Motion, during which all parties were
represented by counsel. ([26] (Transcript)). On January 12, 2018, the Court issued
an order denying Plaintiff’s TRO Motion, finding that Plaintiff had then failed to
demonstrate a substantial likelihood of succeeding on their trademark or trade
dress claims. The Court set an accelerated schedule for filing and briefing of
Plaintiff’s motion for preliminary injunction. ([11]).
Plaintiff filed a Motion for Preliminary Injunction [13] on January 16, 2018,
providing additional evidence supporting its trademark and trade dress claims.
Defendants filed a Response in Opposition to the Motion [23] and Plaintiff filed a
Reply [27].1 On January 24, 2018, the Court conducted a hearing on the Motion.
([31], [34] (Transcript)). During the hearing, Leo A. Tracey, President of Plaintiff
Cathedral Art, and Keith Schwartz, Managing Member of Defendant Nicole
Brayden Gifts, LLC (“Nicole Brayden”), testified. ([23-4] at ¶2, [14-2] at ¶1). The
Court allowed the parties to submit post-hearing written memoranda. ([35-1],
[37]).
1
Because several of the documents the parties submitted in support of their
briefs contain confidential and sensitive information, the parties filed motions for
leave to file matters under seal [16], [29], and [39]. Having reviewed the contents
of the documents the parties seek to seal, the Court finds they contain confidential
and sensitive information, and the Court grants the parties’ motions.
2
B.
Facts2
In 2017, Plaintiff Cathedral Art acquired the Abbey Press Trade Marketing
Division (“Abbey Press”) of St. Meinrad Archabbey, an Indiana nonprofit
corporation. ([28-3] (Asset Purchase Agreement)). The acquisition included
Abbey Press’s products and trademarks related to those products, except for the
ABBEY PRESS mark. (Id. at ¶ 1(b)).
1.
Abbey Press’s “Amazing Woman” Products
The Abbey Press products acquired by Cathedral Art included homeware
and giftware products (e.g. pie plate, mug, travel mug, cutting board, spoon rest,
cross, plate) known as the “Amazing Woman” collection. ([28-3 at 13-19
(Schedule 1(b)(i) and 29 (Schedule 12)). Abbey Press began selling a product
bearing an “Amazing Woman” phrase at least as early as 2008. ([13-2] at 2, 4).
Abbey Press’s “Annual catalog thru July 2008” included a pie plate with a poem
entitled “Recipe For An Amazing Woman.” (Id. at 4). Abbey Press continued to
sell products with “Amazing Woman” inscriptions up until its acquisition by
Cathedral Art. ([13-2 (Christmas 2008 Catalog), [27-11] (Annual Catalog thru
2
The Court draws facts from the Verified Complaint [1], the parties’
submissions on both the Motion for TRO and Motion for Preliminary Injunction,
and the testimony and exhibits admitted during the preliminary injunction hearing.
3
July 2009), [27-12] (Spring 2009 Catalog), [27-13] (Annual Catalog thru July
2010), [27-14] (Spring 2010 Catalog), [27-15] (Annual Catalog thru July 2011),
[27-16] (Spring 2011 Catalog), [27-17] (Annual Catalog thru July 2012), [27-18]
(Spring 2012 Catalog), [27-19] (Annual Catalog thru July 2013), [27-20] (Spring
2013 Catalog), [27-21] (Annual Catalog thru July 2014), [27-22] (JuneDecember 2014 Catalog), [27-23] (Annual Catalog January-December 2015),
[27-24] (Annual Catalog January-December 2016), [27-25] (Annual Catalog
January-December 2017)).
Beginning with the original pie plate with a “Recipe for An Amazing
Woman” poem, Abbey Press developed an entire collection of “Amazing
Woman” products, including soup mugs, plaques, cutting boards, spoon rests,
trinket dishes, crosses, cookbook holders, mug and coaster sets, travel mugs, and
prayer cards. ([27-25]). At least as early as 2010, Abbey Press identified
products bearing the “Amazing Woman” phrase as part of a collection of
“Amazing Woman” products. ([27-13] at 3). In 2011, Abbey Press employed a
banner-like use of “Amazing Woman” to identify its collection of “Amazing
Woman” products in its catalog. By 2016, Abbey Press even identified products
that did not bear the “Amazing Woman” phrase as “Amazing Woman” products.
4
([27-24] at 5 (“Amazing Woman” Figurine); [27-25] at 4 (“Amazing Woman”
Rustic Plaque)).
After the acquisition, Cathedral Art continued to sell products from the
“Amazing Woman” collection, including in its catalogues identifying the
“Amazing Woman” collection with an Amazing Woman banner on pages with
Amazing Woman products. Cathedral added a “TM” symbol next to the phrase
“Amazing Woman” in their 2018 catalog. ([6-1] at 11-16). The “Amazing
Woman” product line was a “lead” product line for Abbey Press, and continues to
be so for Cathedral Art. ([7-1] (Olmsted Aff.) at ¶10). 2017 sales of the
AMAZING WOMAN product exceeded
. ([14-2] (Tracey Decl.) at
¶ 21).
Plaintiff submitted six declarations from industry buyers to show that
those who purchased “Amazing Woman” products identify the AMAZING
WOMAN mark with Abbey Press. ([27-3] Anderson Decl.; [27-4] Bauersachs
Decl.; [27-5] Falzone Decl.; [27-6] Hernandez Decl.; [27-7] Prickett Decl.; [278] Wagner Decl.).3 The six declarations contain essentially the same statement
3
The Court overrules Defendants’ Objections [36] to these exhibits as
untimely and inadmissible. Plaintiff filed unsworn statements from all of these
declarants, except Ms. Prickett, with its motion for preliminary injunction. The
declarations offered as evidence before the preliminary injunction hearing are
5
identifying Abbey Press as the source of “Amazing Woman” products:
I knew, and certainly it was known in the industry, that Abbey Press
was for many years the exclusive provider of the “Amazing Woman”
line of products. I knew that the products originated from Abbey
Press because they bore the name “Amazing Woman.” So, if I, for
example, ordered the “Amazing Woman” coffee mug, I understood
that I was ordering an Abbey Press product. The name was displayed
in a unique, handwritten script. It was known in the industry that the
“Amazing Woman” products originated from Abbey Press. I am not
aware of any other party that made or provided “Amazing Woman”
products.
See, e.g., [27-3] at ¶ 3.
2.
Defendants’ “Amazing Woman” Products
Defendants compete in the homewares and giftware marketplace with
Cathedral Art. Both parties sell at trade shows, in catalogs, and on the Internet.
([7-1] at ¶ 16).
In 2016, Keith Schwartz, President and Managing Member of Nicole
Brayden LLC and President of Divinity Boutique LLC, became aware that
Abbey Press “was shutting down its trade business.” ([23-4] (Schwartz Decl.) at
substantially the same as the unsworn statements Plaintiff filed with its Motion.
Defendants had ample notice and an opportunity to respond. The Court will
consider them. See Levi Strauss & Co. v. Sunrise Int'l Trading, Inc., 51 F.3d 982,
985 (11th Cir.1995) (“At the preliminary injunction stage, a district court may rely
on affidavits and hearsay materials which would not be admissible evidence for a
permanent injunction . . . .”).
6
¶ 7, Tr.4 at 3, 59). Nicole Brayden sought to introduce its own line of products
“which would have been competitive with Abbey Press goods that Nicole
Brayden believed were being discontinued, including the goods bearing the
phrase “Amazing Woman.” (Id. at ¶ 8; Tr. at 59). In a December 7, 2016, email,
Mr. Schwartz told his employees:
We are looking at doing a line called AMAZING WOMAN. It is
based off of the Abbey Press Poem and product line of the same
name. Please read below and send me back comments and
suggested edits if you have any. Below is the abbey press version
on a cutting board.
([24] at 2). Mr. Schwartz’s email included a photograph of an Abbey Press
cutting board with the “Recipe For An Amazing Woman” poem. (Id.). Mr.
Schwartz drafted a modified “Recipe For An Amazing Woman” poem and
supervised the creation of artwork for Defendants’ cutting board. (Id. at 2-6).
Mr. Schwartz approved the artwork, stating: “I think it is a really great piece of
art and will accomplish our goal of providing the market with a replacement.”
(Id. at 9).
Abbey Press received news that Defendants were developing their own
line of “Amazing Woman” products. ([23-3] at 2). On January 4, 2017, Greg
4
“Tr.” refers to the Transcript of the Preliminary Injunction Hearing [34].
7
Tate, the General Manager of Abbey Press, emailed Mr. Schwartz expressing
concern. (Id.) Mr. Tate stated:
I am certain you are aware that the Abbey Press Trade (Wholesale)
Division will be closing June 30, 2017, however, we are still
actively promoting and selling our Amazing Woman line until then.
We are currently in serious discussion with a buyer who will be
assuming ownership of that product line after June 30. So, be
aware, there is and will be someone keeping watch over the Abbey
Press product line to ensure it is not being infringed upon.
It is not in anyone’s best interest to actively pursue another
company’s product concepts. It is vital to the industry that each
company be unique in their own way and respect the niche each
company provides.
([23-3] at 2).
After this email, Defendants continued their effort to develop
“replacement” “Amazing Woman” products and, as a result, Defendants
developed an entire collection of “Amazing Woman” products. ([1-3] at 2, 4-6).
Defendants advertised their “Amazing Woman” items in their 2018 catalog. ([13] at 2, 4-6). Defendants also marketed those items at the January 2018
International Gift Home Furnishing Market held in Atlanta (the “Atlanta Gift
Mart”). Defendants marketed items similar to those offered by Abbey Press and
Cathedral, including a pie plate with a “Recipe For An Amazing Woman” poem,
mugs, cutting boards, and spoon rests.
8
At the Atlanta Gift Mart, Defendants displayed their “Amazing Woman”
collection in their showroom in a manner similar to Cathedral’s showroom
display:
9
Barbara Olmsted, National Sales Manager & Product Coordinator for
Cathedral Art, states that “[o]n January 11, 2018, several buyers [at the Atlanta
Gift Mart] expressed confusion about the ‘Recipe for An Amazing Woman’ poem
that appears on both Cathedral Art’s products and Defendants’ products.” ([7-1] at
¶ 19). Olmsted further states that “a buyer from Seventh Avenue came into
Cathedral Art’s showroom, looked at Cathedral Art’s products, and then asked me,
“Didn’t we just see something like this?” (Id.). When Kelly Harding, a Cathedral
Art employee, sent an e-mail to Samantha Parry of Collective Goods, a customer,
asking what company came to mind when asked about the product line “Recipe for
An Amazing Woman,” Ms. Parry responded, “I would say originally Abbey Press.
10
I know Divinity Boutique has got a similar line now too. Is that what you’re
referring too?” ([14-2] at ¶ 22, Tr. at 41-42).
C.
Plaintiff’s Motion for Preliminary Injunction
Plaintiff asserts it has a common law trademark in AMAZING WOMAN
and a protectable trade dress (a stylized AMAZING WOMAN trademark with a
“Recipe for an Amazing Woman” poem). Plaintiff claims Defendants are
infringing on its AMAZING WOMAN trademark and trade dress by selling
“Amazing Woman” products that are confusingly similar to Plaintiff’s products.
Plaintiff further claims that Defendants’ unauthorized use of the AMAZING
WOMAN trademark and trade dress is irreparably harming its brand and
valuable customer goodwill. Plaintiff seeks to enjoin Defendants from “selling
products bearing Plaintiff’s AMAZING WOMAN trademark and/or associated
trade dress, including products that bear the word mark “AMAZING WOMAN”
and products that bear a Recipe Poem, namely – “Recipe for an Amazing
Woman” in conjunction with a stylized presentation of the AMAZING WOMAN
trademark. ([13-1] at ¶2).
Defendants argue that Plaintiff does not have a protectable AMAZING
WOMAN trademark or trade dress and that no customer confusion exists or is
likely to exist given that it includes a Nicole Brayden logo on its “Amazing
11
Woman” products. Defendants further assert that an injunction would severely
impact Nicole Brayden’s 2018 sales efforts, would result in Nicole Brayden
having to incur significant costs to reprint its catalogs, and would undermine its
customer relationships.
The parties both are planning to exhibit “Amazing Woman” products at
the Las Vegas Winter Market, scheduled to begin on January 28, 2018. (Tr. at
106-07).
II.
DISCUSSION
A.
Legal Standard
The grant or denial of a preliminary injunction rests in the discretion of the
Court. Sierra Club v. Georgia Power Co., 180 F.3d 1309, 1310 (11th Cir. 1999).
To be eligible for a preliminary injunction a movant must show: (1) a substantial
likelihood of prevailing on the merits; (2) that Plaintiff will suffer irreparable
injury if the relief is not granted; (3) that the threatened injury outweighs the harm
the relief would inflict on the opposing party; and (4) that if granted, the injunction
would not be adverse to the public interest. Fed. R. Civ. P. 65; see Schiavo ex rel.
Schindler v. Schiavo, 403 F.3d 1223, 1225-26 (11th Cir. 2005); Parker v. State Bd.
of Pardons and Paroles, 275 F.3d 1032, 1034-35 (11th Cir. 2001); Baker v.
Buckeye Cellulose Corp., 856 F.2d 167, 169 (11th Cir. 1995). Preliminary
12
injunctive relief is a drastic and extraordinary remedy which should not be granted
unless the movant can clearly establish each of the four elements. Four Seasons
Hotels and Resorts, B.V. v. Consorcio Barr, S.A., 320 F.3d 1205, 1210 (11th Cir.
2003).
B.
Analysis
1.
Plaintiff’s Likelihood of Prevailing on Its Claim of Trademark
Infringement
The Court finds that Plaintiff demonstrated a substantial likelihood of
succeeding on its trademark claim. To establish trademark infringement under
Section 43(a) of the Lanham Act, Plaintiff bears the burden of demonstrating “(1)
that it had trademark rights in the mark or name at issue and (2) that the other party
had adopted a mark or name that was the same, or confusingly similar to its mark,
such that consumers were likely to confuse the two.” Lone Star Steakhouse &
Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 358 (11th Cir. 1997).
a.
Plaintiff’s Trademark Rights
The Court finds that Plaintiff is substantially likely to succeed in showing
that it has enforceable rights in the “AMAZING WOMAN” mark. Although
Plaintiff does not hold a registered AMAZING WOMAN trademark, the Eleventh
Circuit has recognized “the use of another’s unregistered, i.e., common law,
trademark can constitute a violation of § 43(a) where the alleged unregistered
13
trademarks used by the plaintiff are so associated with its goods that the use of the
same or similar marks by another company constitutes a false representation that
its goods came from the same source.” Tana v. Dantanna’s, 611 F.3d 767, 772–74
(11th Cir. 2010), citing Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512–13 (11th
Cir. 1984) (internal quotations and citations omitted). “However, only those marks
that are capable of distinguishing the owner’s goods from those of others, i.e., that
are sufficiently ‘distinctive,’ are eligible for federal registration or protection as
common law marks under the Lanham Act.” Tana, 611 F.3 at 773, citing
15 U.S.C. § 1052(e), (f); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768,
112 S.Ct. 2753, 2757, 120 L.Ed.2d 615 (1992); Coach House Rest., Inc. v. Coach
& Six Rests., Inc., 934 F.2d 1551, 1559 (11th Cir. 1991).
The evidence presented to the Court shows that the phrase “Amazing
Woman” functions as a trademark for Abbey Press. “A trademark’s primary
function is to signify origin to potential customers and competitors.”
Thoroughbred Legends, LLC v. The Walt Disney Co., No. 1:07-CV-1275-BBM,
2008 WL 616253, *5 (N.D. Ga. Feb. 12, 2008) (citing Leigh v. Warner Bros., 212
F.3d 1210, 1216–17 (11th Cir. 2000) (“Trademarks . . . answer the question ‘Who
made it?’ rather than ‘What is it?’”). To acquire common law rights, a party must
show that (1) it is the prior user of the unregistered mark and (2) it acquired a
14
protectable interest in the mark because the mark is either inherently distinctive or
has acquired distinctiveness through a secondary meaning. Investacorp, Inc. v.
Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519, 1522–23 (11th Cir.
1991). “[A] business does not automatically obtain rights in a mark by using it. A
business will obtain rights in a mark upon first use only if the mark is ‘inherently
distinctive.’ If the mark is not inherently distinctive, a business may obtain rights
in the mark when it attains a secondary meaning.” Id.
The Court finds that the AMAZING WOMAN mark as used by Abbey
Press, and now Cathedral Art, is inherently distinctive. The Eleventh Circuit
recognizes four categories of distinctiveness, listed in ascending order of strength:
(1) generic-marks that suggest the basic nature of the product or service; (2)
descriptive-marks that identify the characteristic or quality of a product or service;
(3) suggestive-marks that suggest characteristics of the product or service and
require an effort of the imagination by the consumer in order to be understood as
descriptive; and (4) arbitrary or fanciful-marks that bear no relationship to the
product or service, and the strongest category of trademarks. Tana, 611 F.3 at
774. The latter two categories, suggestive and arbitrary or fanciful marks, “are
deemed inherently distinctive, because their intrinsic nature serves to identify a
particular source of a product.” Id., citing Two Pesos, 505 U.S at 768. The
15
AMAZING WOMAN mark as used is inherently distinctive since it is not generic
or descriptive of the goods at issue.
Even if the mark were not inherently distinctive—which the Court finds that
it is—the evidence also shows that AMAZING WOMAN has acquired secondary
meaning and is functioning as a trademark for Abbey Press/Cathedral Art. Four
factors determine whether a mark has acquired secondary meaning as a source
identifier: (1) the length and manner of its use; (2) the nature and extent of
advertising and promotion; (3) the efforts made by the plaintiff to promote a
conscious connection in the public’s mind between the name and the plaintiff’s
product or business; and (4) the extent to which the public actually identifies the
name with the plaintiff’s product or venture. FN Herstal SA v. Clyde Armory Inc.,
838 F.3d 1071, 1083–84 (11th Cir. 2016). First used by Abbey Press in 2007/2008
as a phrase within the title of a poem on a pie plate,5 the evidence shows that
“Amazing Woman” evolved over the next decade into a descriptor of individual
goods bearing that phrase, then into an identifier of a collection of Abbey Press
products bearing that phrase, and finally into an identifier of a lead collection of
related Abbey Press products, only some of which bear the phrase “Amazing
5
The record does not contain any evidence of use by anyone of the phrase
“Amazing Woman” on products before Abbey Press began using it in 2007/2008.
16
Woman.” Abbey Press’s catalogs from 2007/2008 to the present reflect a
concerted effort on the part of Abbey Press to reinforce a conscious connection in
the public’s mind between “Amazing Woman” and Abbey Press products. That
effort paid off. Six industry customers submitted sworn testimony stating that
Abbey Press was the exclusive provider of the “Amazing Woman” line of products
and that it was known in the industry that the “Amazing Woman” products
originated from Abbey Press. That testimony evidences that “Amazing Woman”
served the trademark function of identifying Abbey Press as the source of
“Amazing Woman” products.6
Mr. Schwartz testified: “I am not aware that [Amazing Woman has] ever
been used as an actual trademark in the market.” (Tr. at 66). The Court finds that
6
Defendants argue in their closing statement that Plaintiff failed to make a
substantial showing of ownership, validity or exclusivity, citing evidence of thirdparty uses of “amazing woman” first offered at the preliminary injunction hearing.
([37] at 8, citing Tr. 34-37, Def. Exhs. 7, 10, 11, 14, 15, and16). But Defendant
did not submit evidence showing the extent of penetration of these products into
the market or otherwise demonstrate the effect the existence of these products has
on the consumer’s perception of “Amazing Woman” as an identifier of Abbey
Press. See Unique Sports Prod., Inc. v. Babolat VS, 403 F. Supp. 2d 1229, 1239
(N.D. Ga. 2005) (“The requirement that the plaintiff's use be ‘substantially
exclusive’ makes an allowance for use by others which may be inconsequential or
infringing.”), citing L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 1352 (Fed.
Cir. 1999). The Court considers Defendants’ evidence of third-party use
inconsequential.
17
Mr. Schwartz’s testimony is a legal conclusion and no foundation exists to believe
he is qualified to offer it. The facts contradict Mr. Schwartz’s belief about use of
the mark. Mr. Schwartz identified “Amazing Woman” as being a successful line
of Abbey Press products warranting “replacement” should Abbey Press withdraw
from the market. Mr. Schwartz himself used all caps (a traditional trademark
signifier) to refer to a replacement “AMAZING WOMAN” line of products in
2016. ([24] at 2). Mr. Schwartz’s use of all caps to refer to the AMAZING
WOMAN line of products discredits his repeated self-serving testimony that these
are just two generic words that happen to appear in text used in one or more of the
items designed and sold by Plaintiff.7
The Court finds that Plaintiff has a substantial likelihood of demonstrating a
strong, protectable interest in the AMAZING WOMAN mark.
b.
Likelihood of Confusion
The Court finds that Plaintiff has demonstrated a substantial likelihood of
success in showing that Defendants’ use of “Amazing Woman” is likely to cause
consumer confusion. The Court must consider seven factors when determining
7
The evidence also shows that Cathedral Art’s most recent catalog uses the
common law trademark identifier “TM” when using the AMAZING WOMAN
mark.
18
whether a likelihood of consumer confusion exists: (1) type of mark; (2) similarity
of mark; (3) similarity of the products the marks represent; (4) similarity of the
parties’ trade channels and customers; (5) similarity of advertising media; (6) the
defendant’s intent; and (7) actual confusion. Frehling Enters., Inc. v. Int’l Select
Grp., Inc., 192 F.3d 1330, 1335 (11th Cir.1999). “Of these, the type of mark and
the evidence of actual confusion are the most important.” Id. (citing Dieter v. B &
H Indus. of Sw. Fla., Inc., 880 F.2d 322, 326 (11th Cir.1989)). However, “[t]he
issue of likelihood of confusion is not determined by merely analyzing whether a
majority of the subsidiary factors indicates that such a likelihood exists ... [r]ather,
a court must evaluate the weight to be accorded the individual factors and then
make its ultimate decision.” Suntree Tech., Inc. v. Ecosense Int’l, Inc., 693 F.3d
1338, 1346 (11th Cir. 2012) (quoting AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531
(11th Cir. 1986), cert. denied, 481 U.S. 1041 (1987)); see also Custom Mfg. &
Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 649 (11th Cir. 2007) (“Because
the bottom line is the likelihood of confusion, application of the Frehling factors
entails more than the mechanistic summation of the number of factors on each
side; it involves an evaluation of the ‘overall balance.’”). The Court must also be
mindful that “sophisticated consumers [of complex goods or services] . . . are less
19
likely to be confused than casual purchasers of small items.” Florida Int’l Univ.
Bd. Of Trustees v. Florida Nat’l Univ., Inc., 830 F.3d 1242, 1256 (11th Cir. 2016).
Here, the seven Frehling factors all support that that Plaintiff has shown a
substantial likelihood of consumer confusion. AMAZING WOMAN has
developed into a strong mark for Abbey Press/Cathedral as an identifier of a “lead”
product line—so strong that Defendants decided to create an “Amazing Woman”
product line of its own. Defendants began, in recent weeks, to use an identical
mark on goods it is selling, which are the same types of goods sold previously by
Abbey Press and now sold by Plaintiff. “The likelihood of confusion is greater
when an infringer uses the exact trademark.” Turner Greenberg Assocs., Inc. v.
C&C Imports, Inc., 320 F. Supp. 2d 1317, 1332 (S.D. Fla. 2004). Defendants use
the same trade channels (e.g. trade shows, internet) as Cathedral Art to sell those
goods to the same customers (i.e. gift shop owners and end consumers) using
similar annual catalogs. Even Defendants’ Atlanta Gift Mart display mimics that
of Cathedral Art.
Defendants’ intent to copy Plaintiff’s AMAZING WOMAN product line is
overwhelming. Defendants had access to Abbey Press products and purposely
sought to develop a “replacement” line to fill a hole that Defendants’ anticipated
would open upon Abbey Press’s withdrawal from the market. (Tr. at 77; [24] at 2).
20
Defendants succeeded in developing a complete line of products that are
remarkably, if not disturbingly, similar to Abbey Press’s “Amazing Woman”
products. Perfect Fit Industries, Inc. v. Acme Quilting Co., Inc., 618 F.2d 950, 954
(2nd Cir. 1980) (“[I]f there was intentional copying the second comer will be
presumed to have intended to create a confusing similarity of appearance and will
be presumed to have succeeded.”). The evidence shows that Defendants developed
and launched their line of products with an intent to capitalize on the goodwill of
Abbey Press’s “Amazing Woman” products.8
Mr. Schwartz testified that it was not his intent to confuse customers. (Tr. at
61). This statement belies belief. Mr. Schwartz noted that the packaging for
Defendants’ products is marked with a Nicole Brayden company logo, company
website, and company address in some cases. (Tr. at 61-63). Mr. Schwartz
testified that “[i]f it’s one of our products, we want them to know it’s one of our
products.” 9 (Tr. at 63). But a customer’s knowledge that a product is being
8
That Defendants intended to benefit from Plaintiff’s “Amazing Woman”
trademark and to create the impression that its products originated from the
Plaintiff is underscored by Defendants’ use of almost exactly the same display
presentation at the Atlanta Gift Show as that designed and used by Plaintiff.
9
Mr. Schwartz testified about the labeling on the packaging of its “Amazing
Woman” napkins. Mr. Schwartz did not testify about whether a company logo or
other identifier is present on the napkins themselves. Nor did Defendant offer
21
marketed by a certain company does not eliminate customer confusion over the
ultimate source of the product. The readily apparent similarities between
Defendants’ products and Plaintiff’s products are too great, too numerous, and
span too many products to credit Mr. Schwartz’s testimony that Defendants
independently developed their products and did not intend to confuse customers.
Mr. Schwartz testified that they “look for themes that we feel will resonate
with our customers” when independently developing their products. (Tr. at 65).
Remarkably, the “theme” they felt would “resonate” with customers duplicated not
only the design elements of Plaintiff’s product but also the placement of them in
the design. Defendants’ theme also accentuated the “Amazing Woman” phrase
using initial capital letters in a font that is practically indistinguishable from that
used by Plaintiff. Interestingly, and tellingly, Mr. Schwartz concocted distinctions
between the items Plaintiff designed and sold and those his companies developed
and claimed that any similarities were just “coincidence.” (Tr. at 92-97). He
testified, for example, that a butterfly on the cutting board designed and sold by
Plaintiff was in “kind of the middle” of the item where the butterfly on the
evidence that any of its unwrapped products, as displayed at the Atlanta Gift Mart,
for example, are labeled with a corporate identifier.
22
Defendants’ item was “in the upper right.” (Tr. at 96). The butterflies are plainly
in the same upper right quadrant of both.
([32-1 at 4-5; Compare Plaintiff’s Exh. 3 and Exh. 4). Mr. Schwartz even tried to
distinguish the nature of Plaintiff’s butterfly saying it looked to him like a
“moth.” (Tr. at 96). This testimony is overtly misleading, and borders on being
dishonest.
Considering Mr. Schwartz’s testimony as a whole, the Court finds it
concocted and incredible. The overall competitive strategy enacted by Defendants
shows they intended to exploit Plaintiff’s “Amazing Woman” mark as their own
and claim they were entitled to do so because it was not a protectable trademark
under the Lanham Act.
23
Finally, Plaintiff offered some evidence of actual confusion. “[T]he
quantum of evidence needed to show actual confusion is relatively small.” Caliber
Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 937
(11th Cir. 2010). Here, the evidence shows that at least one buyer at the Atlanta
Gift Mart was confused by the appearance of “Amazing Woman” products in
Defendants’ showroom and in Cathedral Art’s showroom. In any event, evidence
of actual confusion is not necessary to a finding of a likelihood of confusion. Id. at
936, n.19.
The evidence at this stage establishes that Plaintiff has a substantial
likelihood of proving that it has protectable interest in the trademark AMAZING
WOMAN and that Defendants have adopted a similar or identical mark that is
likely to confuse consumers. Plaintiff is substantial likely to succeed on its claim
of trademark infringement.
2.
Whether Plaintiff Would Suffer Irreparable Harm Absent a
Preliminary Injunction
The Court finds that Plaintiff would suffer irreparable harm absent a
preliminary injunction. “An injury is ‘irreparable’ only if it cannot be undone
through monetary remedies.” Northeastern Fla. Chapter of the Ass’n of Gen.
Contractors v. City of Jacksonville, 896 F.2d 1283, 1285 (11th Cir. 1990). The
presumption of irreparable harm in trademark cases that once existed in the
24
Eleventh Circuit “has been called into question by the Supreme Court’s decision in
eBay Inc. v. MercExchange, LLC, 547 U.S. 388 [] (2006).” TracFone Wireless,
Inc. v. Clear Choice Connections, Inc., 102 F. Supp. 3d 1321, 1332–33 (S.D. Fla.
2015); Uber Promotions, Inc. v. Uber Techs., Inc., 162 F. Supp. 3d 1253, 1261–62
(N.D. Fla. 2016). However, the presumption arose because the harm associated
with trademark infringement is often irreparable in nature. See Kraft Foods Grp.
Brands LLC v. Cracker Barrel Old Country Store, Inc., 735 F.3d 735, 741 (7th Cir.
2013) (Posner, J.) (“[I]rreparable harm is especially likely in a trademark case
because of the difficulty of quantifying the likely effect on a brand of a nontrivial
period of consumer confusion.”). That is the case here.
Failure to grant a preliminary injunction would subject Cathedral Art to a
loss in trade and customers and a loss of control over its AMAZING WOMAN
product line while risking the substantial goodwill Abbey Press developed in its
“Amazing Woman” products in the industry over the last decade. “[G]rounds for
irreparable injury include loss of control of reputation, loss of trade, and loss of
goodwill. Irreparable injury can also be based upon the possibility of confusion.”
Ferrellgas Partners, L.P. v. Barrow, 143 F. App’x 180, 190 (11th Cir. 2005).
Plaintiff has demonstrated irreparable harm absent an injunction.
25
3.
Whether the Threatened Injury Outweighs the Harm an
Injunction would Inflict on Defendants
The Court finds that the threatened injury to Cathedral Art outweighs the
harm an injunction would inflict on Defendants. As explained above, Plaintiff
faces substantial irreparable injury without an injunction. In contrast, Defendants
assert that an injunction would severely impact Nicole Brayden’s 2018 sales
efforts, cause Nicole Brayden to incur costs in excess of $10,000 to reprint its
catalogs, “require countless hours to search out and remove the product from every
electronic system,” and undermine its customer relationships. ([23] at 27). These
concerns, if authentic, are largely monetary and Defendants willingly took the risk
of introducing “replacement” products in direct competition with Cathedral Art
despite Abbey Press’s warning that there “will be someone keeping watch over the
Abbey Press product line to ensure it is not being infringed upon.” ([23-3] at 2).
Defendants “can scarcely complain of any harm befalling [them] on account of that
decision.” Teledyne Industries, Inc. v. Windemere Product, Inc., 433 F. Supp. 710,
714 (S.D. Fla. 1977). The Court finds that the balance of hardships weighs in
favor of granting a preliminary injunction.
26
4.
Whether a Preliminary Injunction would be Adverse to the
Public Interest
The Court finds that entry of a preliminary injunction would serve the public
interest by preventing further actual confusion. “[T]he public interest is served by
preventing consumer confusion in the marketplace.” Davidoff & Cie, S.A. v. PLD
Int’l Corp., 263 F.3d 1297, 1304 (11th Cir. 2001) (affirming preliminary injunction
in trademark infringement action).
III.
CONCLUSION
The Court finds that Cathedral Art has established the four elements
necessary to preliminarily enjoin Defendants’10 use of the AMAZING WOMAN
mark.11 Accordingly, for the foregoing reasons,
10
Mr. Schwartz testified that Divinity Boutique LLC is “not operational,” that
Divinity Boutique today is just a brand under Nicole Brayden Gifts,” and that
Divinity Boutique LLC “didn’t engage in any of the conduct” at issue. (Tr. at 73).
The record supports, however, that Divinity Boutique LLC continues to exist as a
viable corporate entity. Mr. Schwartz is the President of both Defendant Divinity
Boutique LLC and Defendant Nicole Brayden Gifts LLC. (Tr. at 3). The designer
of Defendants’ accused cutting board, Kim Robinson, identifies herself as “Senior
Product Designer Nicole Brayden Gifts & Divinity Boutique.” ([24-2] at 7). Mr.
Schwartz and Ms. Robinson both utilize “divinityboutique.com” email addresses.
(Id.) At the conclusion of the hearing, counsel for Defendants said that Divinity
Boutique LLC intends to file a motion to dismiss for lack of personal jurisdiction,
not because it is not a viable corporate entity that has wound up its business, but
because it was never present in Georgia. (Tr. at 103-06). It is undisputed that Mr.
Schwartz was present at the Atlanta Gift Mart showroom where the accused goods
were being marketed and that the showroom was advertised as one presented by
27
IT IS HEREBY ORDERED that Plaintiff’s Motion for Preliminary
Injunction [13] is GRANTED.
IT IS FURTHER ORDERED that Defendants Divinity Boutique, LLC and
Nicole Brayden Gifts, LLC (collectively, “Defendants”) and all of their officers,
agents, servants, employees, representatives, successors, assigns, attorneys, and all
other persons acting for, with, by, through, or under authority from Defendants, or
in concert or participation with Defendants, be preliminarily enjoined from, and
shall immediately stop selling products bearing Plaintiff’s AMAZING WOMAN
trademark, including products that bear the word mark “AMAZING WOMAN”
and products that bear a poem entitled “Recipe for an Amazing Woman.”
IT IS FURTHER ORDERED that Plaintiff Cathedral Art Metal Co., Inc.,
shall post an injunction bond with the Clerk of Court in the amount of $50,000.00
by the close of business on January 30, 2018.
Divinity Boutique. If Defendant Divinity Boutique LLC contends the Court does
not have personal jurisdiction over it, it is directed to file its motion to dismiss on
or before February 1, 2018.
11
The Court believes that, as a practical matter, preliminarily enjoining
Defendant from infringing Plaintiff’s AMAZING WOMAN mark addresses the
entirety of the irreparable harm Plaintiff would suffer absent an injunction and that
a ruling on Plaintiff’s trade dress claims is not necessary. If either party disagrees,
the Court will schedule a teleconference to discuss the issue.
28
IT IS FURTHER ORDERED that the parties’ motions to file matters
under seal [16], [29], and [39] are GRANTED.
SO ORDERED this 26th day of January, 2018.
29
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