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

Filing 240

OPINION & ORDER: The Court GRANTS IN PART and DENIES IN PART Plaintiffs' Motion for Summary Judgment (Dkt. 186 ). The Court GRANTS Plaintiffs' request for a permanent injunction. (Dkt. 186 at 4.) The Court ORDERS this case to mediatio n. The parties may retain the mediator to mediate this case. The expense of a retained mediator must be paid by the parties. The parties, alternately, may request that the Court appoint a magistrate judge to conduct the mediation. The parties are no t required to pay for mediation by a magistrate judge. The parties shall advise the Court of their mediation preference on or before September 21, 2021. If they elect to retain their own mediator, the parties shall identify the mediator on or before October 5, 2021. The parties must have present at the mediation a person with authority to settle this litigation. The parties shall, within five days after the mediation, notify the Court in writing whether mediation led to a settlement of this action. The Court STAYS this case pending mediation. The Court DIRECTS the Clerk to ADMINISTRATIVELY CLOSE this case during the period of stay. Signed by Judge Michael L. Brown on 9/7/2021. (tmf)

Case 1:19-cv-04939-MLB Document 240 Filed 09/07/21 Page 1 of 64

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
Top Tobacco, L.P., et al.,
Plaintiffs,
Case No. 1:19-cv-4939-MLB
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.
________________________________/ 
OPINION & ORDER
Plaintiffs Top Tobacco, L.P. (“Top”), Republic Technologies (NA),
LLC (“Republic Technologies”), and Republic Tobacco, L.P. (“Republic”)

Case 1:19-cv-04939-MLB Document 240 Filed 09/07/21 Page 2 of 64

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 & 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

For the rest of this opinion, if the parties filed both a redacted and an
unredacted version of a document, the Court cites to the unredacted
version. The Court notes the parties did not file both versions for all
documents. The page numbers on certain deposition transcripts do not
match the page numbers applied by the CM/ECF system. The Court cites
the CM/ECF page numbers for all docket entries.

1

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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

Some proposed facts the Court declines to exclude on materiality
grounds are not “material” as that term is generally employed in the
summary judgment context. See Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 248 (1986) (identifying material facts as those that “might
affect the outcome of the suit under the governing law”). Some are
included for background purposes or to generate context for the Court’s
analysis. Which facts ultimately prove material should be apparent from
the analysis.

2

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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

4

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“[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. 6:14cv-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

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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.

Even excluding Ms. Rosarde’s and Ms. Teisseyre’s testimony, there is
other undisputed evidence Defendants sold counterfeit products. This
includes a declaration by Tamas Malacsina (Plaintiffs’ Vice President of
Marketing) averring that he examined TOP- and JOB-brand papers
purchased from Star and concluded they were counterfeit. (Dkt. 190-1 at
503–04.) Ms. Rosarde and Ms. Teisseyre later determined some of those
papers were genuine. (Dkt. 211-1 ¶ 45.) They did not conclude he was
wrong as to all the papers he identified as counterfeit
3

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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

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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,

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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®,

®,

®, and

® 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®,

®,

9

®,

®,

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®, and

® 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.
Registration Nos. 3407400 and 3720176 for cigarette making machines,
U.S. Registration No. 3710606 for tobacco, and U.S. Registration No.
3918139 for pocket machines for rolling cigarettes for personal use.
(Dkts. 195-2 ¶ 18; 211-2 ¶ 18.) Republic Technologies owns many 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. 195-2 ¶ 21; 211-2 ¶ 21.)
For many years, Plaintiffs and their predecessors sold and
distributed cigarette papers and related items. (Dkts. 195-2 ¶ 8; 211-2
¶ 8.) Plaintiff Top and its predecessors have continuously used the TOP®
trademark to sell cigarette papers in the United States since at least
1942. (Dkts. 195-2 ¶ 12; 211-2 ¶ 12.) Republic Technologies and its

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predecessors have used the JOB® mark continuously for over 150 years
in connection with the sale of cigarette papers. (Dkts. 195-2 ¶ 13; 211-2
¶ 13.) The TOP® and JOB® brands are well-known brands and even
considered famous by some. (Dkts. 191-1 at 33:1–5; 180-1 at 110.)
TOP® and JOB® cigarette rolling papers are manufactured
exclusively in Perpignan, France. (Dkts. 195-2 ¶¶ 24–25; 211-2 ¶¶ 24–
25.) Plaintiffs’ laboratory in France thus knows the exact composition of
genuine TOP® and JOB® papers and can identify counterfeit papers.
(Dkts. 195-2 ¶ 26; 211-2 ¶ 26.) Republic is the sole distributor authorized
to purchase TOP® and JOB® brand items from the manufacturing
facilities. (Dkts. 195-2 ¶ 27; 211-2 ¶ 27.) Republic is also the exclusive
United States licensee of the TOP® and JOB® marks in the United
States. (Dkts. 195-2 ¶ 28; 211-2 ¶ 28.) Likewise, Plaintiff Republic is the
exclusive distributor in the United States of TOP- and JOB-brand
cigarette rolling papers. (Dkts. 195-2 ¶ 3; 211-2 ¶ 3.) TOP® and JOB®
products are manufactured for Republic and sold in the United States
through Republic. (Dkts. 195-2 ¶ 4; 211-2 ¶ 4.)4

Defendants dispute Plaintiffs’ factual assertion to the extent it implies
the TOP- and JOB-brand cigarette papers must be purchased directly
from Republic. (Dkt. 211-2 ¶ 3.) But Plaintiffs’ fact does not allege that.
4

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Plaintiffs, under the TOP® brand, sell various cigarette papers in
different sizes and volumes. (Dkts. 195-2 ¶ 31; 211-2 ¶ 31.) While
Plaintiffs have provided undisputed evidence about those configurations,
the details are not relevant to summary judgment. The TOP® product
packaging prominently displays the TOP marks in multiple locations,
including on all sides of the carton, on the top and bottom of individual
booklets, and on the inner flap of each booklet. (Dkts. 195-2 ¶ 34; 211-2
¶ 34.)
Plaintiffs, under the JOB® brand, sell various cigarette papers,
including JOB® Gold, JOB® Orange, and Job® French White. (Dkts.
195-2 ¶¶ 36–37; 211-2 ¶¶ 36–37.) They do this in various packaging
configurations and sizes, but (again) those details are not relevant here.
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. 195-2 ¶ 47; 211-2 ¶ 47.)
Plaintiffs sell their TOP® and JOB® products in the United States
to wholesalers and retailers. (Dkts. 195-2 ¶ 29; 211-2 ¶ 29.)

12

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(Dkts. 195-2 ¶ 30;
211-2 ¶ 30.) Plaintiffs sell the products at issue to several customers in
the Atlanta area. (Dkts. 195-2 ¶ 16; 211-2 ¶ 16.) Plaintiffs consider the
goodwill and consumer recognition associated with their TOP and JOB
marks to be one of their most valuable assets. (Dkts. 195-2 ¶ 17; 211-2
¶ 17.)
D.

Defendants’ Business and Relationship with Plaintiffs

Star is a Georgia corporation with its primary place of business in
Tucker, Georgia. (Dkts. 195-2 ¶ 5; 211-2 ¶ 5.) It is a general merchandise
wholesaler, selling lots of different things to wholesalers, retailers, gas
stations, and supermarkets.5 (Dkts. 195-2 ¶ 60; 211-2 ¶ 60.) Star is one
of the largest wholesalers of its type in the Southeast, selling about
14,000 items.

(Dkts. 195-2 ¶ 61; 211-2 ¶ 61; 211-1 ¶ 4; 224 ¶ 4.)

Plaintiffs object to certain facts in Defendants’ statement of facts as not
in compliance with the Local Rules because they are alternative facts,
rather than additional facts. (See, e.g., Dkt. 224 ¶ 1.) The Court agrees.
The Local Rules permit a respondent to submit “[a] statement of
additional facts which the respondent contends are material and present
a genuine issue for trial.” LR 56.1(B)(2)(b) (emphasis added). Where
appropriate, however, the Court uses one party’s fact when it is stated
better.
5

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Defendant Hudda is Star’s president and owner. (Dkts. 195-2 ¶ 6; 211-2
¶ 6.)
Star sells tobacco products, including cigarette papers bearing
TOP® and JOB® marks. (Dkts. 195-2 ¶ 66; 211-2 ¶ 66; 188-1 at 68:13–
16.) Star was a direct customer of Republic for nearly 20 years and an
exclusive customer for several years. (Dkts. 195-2 ¶¶ 70-71; 211-2 ¶¶ 7071.) While an exclusive direct-buying customer, Star could not carry
brands that competed with Plaintiffs’ brands. (Dkts. 195-2 ¶ 73; 211-2
¶ 73.) During that time, Star was enrolled in Plaintiffs’ Value-Added
Rebate Incentive Program (“VRIP”). (Dkts. 195-2 ¶ 72; 211-2 ¶ 72.) Star
received certain rebates and incentives, including trips, based on sales
volume. (Dkts. 195-2 ¶ 74; 211-2 ¶ 74.)

Star earned several incentive

trips with Republic. (Dkts. 195-2 ¶ 75; 211-2 ¶ 75.) Defendant Hudda
got to know other Republic buyers through these trips. (Dkts. 195-2 ¶ 77;
211-2 ¶ 77.)
In 2016, Defendants terminated Star’s exclusive relationship with
Plaintiffs so it could carry other cigarette paper brands. (Dkts. 195-2
¶ 78; 211-2 ¶ 78; 211-1 ¶ 7; 224 ¶ 7.) Defendant Hudda made that
decision. (Dkts. 188-1 at 29:12–16, 103:23–24; 195-2 ¶ 98; 211-2 ¶ 98.)

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Starr continued purchasing TOP® and JOB® papers from Plaintiffs as a
non-exclusive direct-buying customer. (Dkts. 195-2 ¶ 78; 211-2 ¶ 78; 2111 ¶ 7; 224 ¶ 7.) In February 2019, Star enrolled in Plaintiffs’ travel
program and remained eligible for incentive trips based on its purchases
from Plaintiffs. (Dkts. 211-1 ¶ 11; 224 ¶ 11.) As a non-exclusive direct
buyer, it also received certain discounts. (Dkts. 211-1 ¶ 12; 224 ¶ 12.)
In the period from January 2012 to May 2019, Star purchased
nearly $3.5 million worth of TOP® and JOB® cigarette papers from
Republic. (Dkts. 195-2 ¶ 80; 211-2 ¶ 80.) Star typically sold through most
of its TOP® and JOB® inventory within two weeks. (Dkts. 195-2 ¶ 81;
211-2 ¶ 81; 211-1 ¶ 15; 224 ¶ 15.)

Customers would ask Star for

promotional “jars” of JOB® papers that only exclusive customers could
buy from Plaintiff Republic. (Dkts. 195-2 ¶ 82; 211-2 ¶ 82.) Star testified
that the ability to purchase those exclusive promotional products was one
of the main benefits of being an exclusive Republic customer, although
Defendant Hudda was unaware of that benefit until he terminated his
exclusive arrangement with Plaintiffs. (Dkts. 195-2 ¶ 83; 211-2 ¶ 83; 1881 at 109:5–12; 211-1 ¶ 74; 224 ¶ 74.)

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(Dkts. 195-2
¶ 90; 211-2 ¶ 90; 211-1 ¶ 20; 224 ¶ 20.)6 TN Vape is owned by ThirdParty Defendant Alex Seriana. Paul Hinton, Republic’s broker, knew
Star was purchasing products from sources other than Republic. (Dkts.
211-1 ¶ 34; 224 ¶ 34; 193-1 at 33:10–16.)

As of 2018, Mr. Patton,

Republic’s Regional Sales Manager, was also in contact with Mr. Seriana
via text and purchased product from him.7 (Dkts. 211-1 ¶ 91, at 42–52;
224 ¶ 91.)

6

It became
one later. (Dkts. 195-2 ¶ 92; 211-2 ¶ 92; 224 ¶ 95; 190-1 at 84:24–85:9.)
TN Vape has never been an exclusive customer of Republic. (Dkts. 1952 ¶ 93; 211-2 ¶ 93.)
7 Plaintiffs object to this fact as inadmissible hearsay. (Dkt. 224 ¶ 91.)
While courts cannot rely on inadmissible hearsay to decide a motion for
summary judgment, courts can rely on evidence that can be “reduced to
admissible evidence at trial or reduced to admissible form.” Macuba v.
Deboer, 193 F.3d 1316, 1322–23 (11th Cir. 1999) (quotations omitted).
“The most obvious way to reduce hearsay to admissible form is to call the
declarant to testify at trial.” Lewis v. Residential Mortg. Sols., 800 F.
App’x 830, 834 (11th Cir. 2020). The Court sees no reason why Mr.
Patton or Mr. Seriana could not lay a foundation for these text messages.
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As its president and owner, Defendant Hudda oversees Star’s
employees and operations and makes some business decisions. (Dkt. 1881 at 27:10–25; 28:1–3.) He tries to get involved in big negotiations. (Id.
at 93:24–94:1.) And “most of the time,” he decides which products to
carry. (Id. at 28:21–29:4, 103:5–8.) Based on his roughly 20 years of
experience as a direct Republic customer, Defendant Hudda is familiar
with genuine TOP® and JOB® products and their packaging and can
recognize the Republic logos and trademarks. (Dkts. 195-2 ¶ 97; 211-2
¶ 97.) He has also turned over possibly counterfeit product to a supplier
for investigation. (Dkts. 211-1 ¶ 104; 224 ¶ 104; 188-1 at 252:10–17.)
The Star warehouse is 110,000 square feet, including a 50,000
square foot showroom. (Dkts. 195-2 ¶ 64; 211-2 ¶ 64.) Mr. Hinton visited
the warehouse once a week without giving notice. (Dkts. 211-1 ¶ 32; 224
¶ 32; 193-1 at 36:25–37:3, 40:9–13.) No one ever told him certain areas
were off limits or prevented him from inspecting any product. (Dkts. 2111 ¶ 33; 224 ¶ 33; 193-1 at 39:17–40:7.)

Mr. Hinton never saw any

products he thought were counterfeit. But he was not trained at the time
to identify such product. (Dkts. 211-1 ¶¶ 36, 84; 224 ¶¶ 36, 84; 193-1 at
43:6–22.)

Mr. Sierra, Plaintiffs’ Regional Zone Manager for the

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Southeast, also testified he never saw any products that looked
suspicious or counterfeit when he was at the Star warehouse. But he also
had no training about how to recognize counterfeit items. (Dkts. 211-1
¶ 38; 224 ¶ 38; 189-1 at 45:24–46:2, 51:9–12.)
E.

Defendants’ Sales of Allegedly Counterfeit Products

Plaintiffs often discovered counterfeit cigarette papers bearing the
TOP® and JOB® marks being sold in the same channels as authentic
TOP® and JOB® products.

(Dkts. 195-2 ¶ 51; 211-2 ¶ 51.)

Manufacturers of counterfeit cigarette papers have become adept at
copying Plaintiffs’ TOP® and JOB® marks and product packaging.
(Dkts. 195-2 ¶ 54; 211-2 ¶ 54.)

Plaintiffs thus maintain an

anti-counterfeiting program.8 (Dkts. 195-2 ¶ 55; 211-2 ¶ 55.) As part of
this, Plaintiffs use private investigators to investigate tips of counterfeit
merchandise, coordinate with law enforcement to seize that merchandise,
and publicize their efforts. (Dkts. 195-2 ¶¶ 56–58; 211-2 ¶¶ 56–58.)

Defendants dispute that Plaintiffs’ anti-counterfeiting program is
adequate to protect against violations and infringements of the TOP®
and JOB® marks. (Dkt. 211-2 ¶ 55.) To the extent the fact has such
implication, the Court draws all inferences in Defendants’ favor.

8

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Plaintiffs also file lawsuits around the country to protect their
trademarks. (Dkts. 195-2 ¶ 59; 211-2 ¶ 59.)
Star has offered and sold counterfeit products bearing the TOP®
and JOB® marks. (Dkts. 195-2 ¶ 102; 211-2 ¶ 102.) In January 2019,
Plaintiffs received a tip that Star was potentially selling counterfeit
TOP® and JOB® products.9 (Dkts. 195-2 ¶ 103; 211-2 ¶ 103.) Over the
next several months, Victor Hartman, one of Plaintiffs’ investigators,
supervised three undercover purchases of TOP® and/or JOB® cigarette
papers at the Star warehouse by a confidential source. (Dkts. 195-2
¶¶ 104–138; 211-2 ¶¶ 104–138.)

In each instance, Mr. Hartman

completed a chain of custody form and shipped samples of the items
purchased to France for testing.10 (Dkts. 195-2 ¶¶ 111, 125, 139; 211-2

Defendants deny the tip was meritorious. (Dkt. 211-2 ¶ 103.) To the
extent the fact has any such implication, the Court draws all inferences
in Defendants’ favor. Defendants also assert that before the 2019 tip,
Plaintiffs’ agents received other tips that Star was a source of counterfeit
goods in the marketplace. (Dkts. 211-1 ¶ 39; 224 ¶ 39; 193-1 at 145; 1891 at 195.) Defendants also contend that, as of February 2018, Plaintiffs
were aware of counterfeit items being sold by a “jobber” in the
Nashville/Knoxville area. (Dkts. 211-1 ¶ 90, at 39–40; 224 ¶ 90.)
10 At Plaintiffs’ laboratory, the process used by Plaintiffs’ trained
technicians to determine whether a product is counterfeit is methodical,
standardized, and in accordance with best practices. (Dkts. 195-2 ¶ 112;
211-2 ¶ 112.)
9

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¶¶ 111, 125, 139.) And, in each instance,
(Dkts. 195-2 ¶¶ 116, 136, 128, 130, 140,
142, 144; 211-2 ¶¶ 116, 136, 128, 130, 140, 142, 144.) Likewise, in each
instance,
(Dkts. 195-2 ¶¶ 117, 127, 129, 131, 141, 143, 145; 211-2
¶¶ 117, 127, 129, 131, 141, 143, 145.) Some of the booklets purchased
from Star by Plaintiffs’ confidential source tested genuine. (Dkts. 211-2
¶¶ 116, 126, 128, 130, 158–60; 211-1 ¶ 44; 190-1 at 479, 485, 499–500,
509; 190-2 at 80.)
In April 2019, Plaintiffs coordinated with one of their customers to
buy even larger quantities of TOP® and JOB® papers from Star. (Dkts.
195-2 ¶ 146; 211-2 ¶ 146.) Plaintiffs’ counsel sent the samples to France

(Dkts. 195-2 ¶ 113; 211-2 ¶ 113.)
(Dkts. 195-2 ¶ 114; 211-2 ¶ 114.)

(Dkts. 195-2 ¶ 115; 211-2 ¶ 115.)
20

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for testing. (Dkts. 195-2 ¶ 148; 211-2 ¶ 148.)

(Dkts. 195-2 ¶¶ 149–52; 211-2 ¶¶ 149–52.)
In April 2019, Plaintiffs began working with the DeKalb County
Police Department to obtain a criminal search warrant for Star’s
warehouse. (Dkts. 195-2 ¶ 154; 211-2 ¶ 154.) As part of this, one of
Plaintiffs’ investigators worked with police to purchase TOP® and JOB®
products from Star on May 7, 2019. (Dkts. 195-2 ¶ 155; 211-2 ¶ 155.)

(Dkts. 195-2 ¶¶ 158–60; 211-2 ¶¶ 158–60.)
On May 14, 2019, police (with Plaintiffs’ investigator) executed the
search warrant. (Dkts. 195-2 ¶ 162; 211-2 ¶ 162.) Sachin Lele, Plaintiffs’
General Counsel, and Mr. Malacsina, its Vice President of Marketing,
were present to identify Plaintiffs’ products and/or potential counterfeit
products.

(Dkts. 195-2 ¶ 163; 211-2 ¶ 163.)

Police seized many

products.11 (Dkts. 195-2 ¶ 164; 211-2 ¶ 164.) They labeled each item with
the location and product. (Dkts. 195-2 ¶ 167; 211-2 ¶ 167.) Plaintiffs’

The parties argue about the exact products seized, including as to
whether Star ever purchased so-called “100-count TOP jars.” (Dkts.
195-2 ¶¶ 164, 172; 211-2 ¶¶ 164, 172.) This disagreement is immaterial.
11

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investigator then sent samples to France for testing.

(Dkts. 195-2

¶¶ 168–69; 211-2 ¶¶ 168–69.)
(Dkts. 195-2 ¶¶ 171–78; 211-2 ¶¶ 171–
78.)
The allegedly counterfeit products from the four undercover
purchases and the seizure appeared to be genuine. (Dkts. 195-2 ¶ 179;
211-2 ¶ 179.)

Defendants testified that the TOP- and JOB-brand

products obtained from Star and confirmed to be counterfeit were likely
purchased from TN Vape and Birmingham Wholesale. (Dkts. 195-2 ¶ 94;
211-2 ¶ 94.) Indeed, within a month of being served with this lawsuit,
Defendants provided information to Plaintiffs showing Defendants
purchased the products at issue from Birmingham Wholesale and TN
Vape. (Dkts. 211-1 ¶¶ 93, 61–63; 224 ¶ 93.) After the raid, Star also
returned remaining products it had purchased from Birmingham
Wholesale. (Dkts. 211-1 ¶ 58; 224 ¶ 58; 188-6 at 11.)

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12

F.

(Dkts. 195-2 ¶ 95; 211-2 ¶ 95.)

Harm and Confusion

The counterfeit cigarette papers bearing the TOP® and JOB®
marks sold by Defendants are of lesser quality than Plaintiffs’ genuine
papers. (Dkts. 195-2 ¶ 181; 211-2 ¶ 181.) Top is a long-time signatory in
good standing of the Master Settlement Agreement between the
Attorneys General of the numerous settling states and participating
manufacturers of tobacco products. (Dkts. 195-2 ¶ 182; 211-2 ¶ 182.)
Republic abides by the market restrictions of that agreement.

(Id.)

Plaintiffs have taken steps to ensure their products comply with
applicable

laws

and

regulations

regarding

the

marketing

and

manufacturing of smokers’ articles. (Dkts. 195-2 ¶ 183; 211-2 ¶ 183.)
Plaintiffs have submitted all their products to and registered their

The parties dispute the exact number of each jar sold. (Dkts. 195-2
¶ 95; 211-2 ¶ 95.) That is immaterial, at least for now. The figures
discussed may also include genuine products sold and do not account for
Defendant Star’s profit margin. (Dkts. 211-1 ¶¶ 98–101; 224 ¶¶ 98–101.)
Again, not currently material.

12

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ingredients with the FDA pursuant to the Family Smoking Prevention
and Tobacco Control Act. (Dkts. 195-2 ¶ 184; 211-2 ¶ 184.)
The counterfeit papers contain unknown and unapproved
components (like glues and additives) that may be harmful to consumers.
(Dkts. 195-2 ¶ 186; 211-2 ¶ 186.) Any association between Plaintiffs’
trademarks and Defendants’ counterfeit products undermines the
goodwill and standing of Plaintiffs and their products to the public and
regulators. (Dkts. 195-2 ¶ 187; 211-2 ¶ 187.)
When Plaintiffs can obtain papers subject to a customer complaint,
Plaintiffs test them to see if they are counterfeit. (Dkts. 195-2 ¶ 189;
211-2 ¶ 189.) Because the product packaging of counterfeit goods so
closely mimics the genuine product packaging and TOP® and JOB®
marks associated with Plaintiffs’ genuine products, consumers who
purchase these substandard products believe they are authentic and
attribute the defects and inferior quality to Plaintiffs—not to Defendants
or the unauthorized manufacturer trafficking in such goods.13 (Dkts.
195-2 ¶ 190; 211-2 ¶ 190.) Such reputational harms are incalculable.

To the extent this fact implies the allegedly counterfeit products did
not appear genuine to Defendants, the Court draws all inferences in
Defendants’ favor. (Dkt. 211-2 ¶ 190.)
13

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(Id.) Based on the chemical, visual, and physical differences between
authentic TOP® and JOB® papers and the samples obtained in the
undercover purchases and seizure, Republic Technologies’ technicians
were able to confirm some of those samples are counterfeit. (Dkts. 195-2
¶ 197; 211-2 ¶ 197.)
G.

The Lawsuit

Plaintiffs sued Defendants for their involvement in the purchase,
sale, and distribution of counterfeit papers. (Dkt. 88.) They asserted
claims under the Lanham Act, 15 U.S.C. § 1051 et seq., for trafficking in
counterfeit

goods,

federal

trademark

competition and false design origin.

infringement,

and

unfair

They also asserted claims for

Georgia statutory unfair competition under O.C.G.A. §§ 23-2-55 et seq;
deceptive trade practices under O.C.G.A. §§ 10-1-372 et seq.; common law
trademark infringement; common law unfair competition; and common
law unjust enrichment. (Id. at 23–40.) Plaintiffs also requested entry of
a permanent injunction against Defendants. (Id. at 41–42.)
Plaintiffs move for partial summary judgment as to liability,
arguing a trial is necessary only to determine willfulness, exceptionality,
damages, and fees. (Dkt. 186.) Defendants responded, arguing material

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disputed facts exist as to (1) likelihood of confusion, (2) whether Plaintiffs’
claims are barred by acquiescence, laches, and unclean hands;
(3) Defendant Hudda’s individual liability; and (4) the need for a
permanent injunction. (Dkt. 204.)
II.

Standard of Review
Rule 56 of the Federal Rules of Civil Procedure provides that a court

“shall grant summary judgment if the movant shows that there is no
genuine dispute as to any material fact and the movant is entitled to
judgment as a matter of law.” Fed. R. Civ. P. 56(a). A fact is material if
it “might affect the outcome of the suit under the governing law.” W. Grp.
Nurseries, Inc. v. Ergas, 167 F.3d 1354, 1360 (11th Cir. 1999) (citing
Anderson, 477 U.S. at 248). A factual dispute is genuine “if the evidence
is such that a reasonable jury could return a verdict for the nonmoving
party.” Id. at 1361 (citing Anderson, 477 U.S. at 248).
The party moving for summary judgment bears the initial burden
of showing a court, by reference to materials in the record, that there is
no genuine dispute as to any material fact. Hickson Corp. v. N. Crossarm
Co., 357 F.3d 1256, 1260 (11th Cir. 2004). The nonmoving party then has
the burden of showing that summary judgment is improper by coming

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Case 1:19-cv-04939-MLB Document 240 Filed 09/07/21 Page 27 of 64

forward with “specific facts” showing a genuine dispute. Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citing Fed. R.
Civ. P. 56(e)). Ultimately, there is no “genuine issue for trial” when “the
record taken as a whole could not lead a rational trier of fact to find for
the non-moving party.” Id. “[T]he mere existence of some alleged factual
dispute between the parties will not defeat an otherwise properly
supported motion for summary judgment; the requirement is that there
be no genuine issue of material fact.” Anderson, 477 U.S. at 247–48
(emphasis in original).
Throughout its analysis, the Court must “resolve all reasonable
doubts about the facts in favor of the non-movant[] and draw all
justifiable inferences in his or her favor.” Fitzpatrick v. City of Atlanta,
2 F.3d 1112, 1115 (11th Cir. 1993) (quoting United States v. Four Parcels
of Real Prop., 941 F.2d 1428, 1437 (11th Cir. 1991) (en banc)). “It is not
the court’s role to weigh conflicting evidence or to make credibility
determinations; the non-movant’s evidence is to be accepted for purposes
of summary judgment.” Mize v. Jefferson City Bd. of Educ., 93 F.3d 739,
742 (11th Cir. 1996).

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III. Discussion
A.

Infringement

Claims for federal counterfeiting and trademark infringement, 15
U.S.C. § 1151, and for unfair competition and false designation of origin
(based upon trademark violation), 15 U.S.C. § 1125(a)(1), have the same
elements. See Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018,
1026 n.14 (11th Cir. 1989); see also Savannah Coll. of Art & Design, Inc.
v. Sportswear, Inc., 872 F.3d 1256, 1261 (11th Cir. 2017) (“We, like other
circuits, often blur the lines between [Lanham Act infringement] claims
and [Lanham Act false designation of origin] claims because recovery
under both generally turns on the confusion analysis.”). To prove either
form of a Lanham Act violation, Plaintiffs must show: (1) they own valid
marks entitled to protection, (2) Defendants used Plaintiffs’ marks in
commerce, and (3) Defendants’ marks are likely to cause consumer
confusion. Davidoff & CIE, S.A., 263 F.3d at 1301. The same elements
govern Plaintiffs’ claims for violations of Georgia’s Unfair Competition
Statute, Georgia’s Uniform Deceptive Trade Practices Act, and common
law trademark infringement and unfair competition. Optimum Techs.,
Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1248 n.11 (11th

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Cir. 2007) (“[T]he analysis of a Georgia unfair competition claim is
‘co-extensive’ with the analysis of a Lanham Act claim.”); Kason Indus.,
Inc. v. Component Hardware Grp., Inc., 120 F.3d 1199, 1203 (11th Cir.
1997) (“It should be apparent that § 43(a) of the Lanham Act and
§ 10-1-372(a)(2) of the UDTPA provide analogous causes of action
governed by the same standard.”); Univ. of Ga. Athletic Ass’n v. Laite, 756
F.2d 1535, 1539 n.11 (11th Cir. 1985) (“[T]he standards governing most
of the claims under Georgia law are similar, if not identical, to those
under the Lanham Act.”).
1.

Defendant Star’s Liability

Plaintiffs have produced evidence showing they own protectable
trademarks in JOB® and TOP®, and Defendants do not challenge that
assertion. (Dkts. 195-2 ¶¶ 18, 21; 211-2 ¶¶ 18, 21.) Plaintiffs have also
produced evidence Defendants used their marks in commerce. (Dkts.
195-2 ¶¶ 102, 104–11, 116–17, 124–31, 138–45, 147–52, 156, 158–60;
211-2 ¶¶ 102, 104–11, 116–17, 124–31, 138–45, 147–52, 156, 158–60.)
Defendants do not challenge that either.14 (See generally Dkt. 204.) The

“There is no burden upon the district court to distill every potential
argument that could be made based upon the materials before it on
14

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parties thus agree no genuine issue of material fact exists as to the first
two elements. Only the third–likelihood of consumer confusion—is at
issue. While Defendants admit the counterfeit products appeared
genuine, they argue Plaintiffs’ declarations alleging likelihood of
confusion contain generalized and conclusory statements and that the
evidence contains disputed facts about their intent. (Dkts. 195-2 ¶ 179;
211-2 ¶ 179; 204 at 18.)
In a typical trademark infringement case, the Eleventh Circuit
applies a seven-factor balancing test to assess whether a likelihood of
confusion exists. See Tana v. Dantanna’s, 611 F.3d 767, 774–75 (11th
Cir. 2010). The Eleventh Circuit test evaluates: (1) strength of the mark
alleged to have been infringed; (2) similarity of the infringed and
infringing marks; (3) similarity between the goods and services offered
under the two marks; (4) similarity of the actual sales methods used by
the holders of the marks, such as their sales outlets and customer base;

summary judgment.” Resolution Tr. Corp. v. Dunmar Corp., 43 F.3d 587,
599 (11th Cir. 1995) (citing Blue Cross & Blue Shield v. Weitz, 913 F.2d
1544, 1550 (11th Cir. 1990)). “Rather, the onus is upon the parties to
formulate arguments; grounds alleged in the complaint but not relied
upon in summary judgment are deemed abandoned.” Id. (citing Rd.
Sprinkler Fitters Local Union No. 669 v. Indep. Sprinkler Corp., 10 F.3d
1563, 1568 (11th Cir. 1994)).
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(5) similarity of advertising methods; (6) intent of the alleged infringer to
misappropriate the proprietor’s goodwill; and (7) the existence and extent
of actual confusion in the consuming public. Id. “In applying this test,
no single factor is dispositive, but greater weight is given to the type of
mark and evidence of actual confusion.” Atlanta Allergy and Asthma
Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp. 2d 1360,
1377 (N.D Ga. 2010).
The application of this test here dispels any dispute as to whether
there is a likelihood of confusion.

First, Plaintiffs’ longstanding,

continuous use of the TOP and JOB marks for 100+ years, coupled with
millions of dollars in advertising and sales under the marks enhances
their strength. (Dkts. 195-2 ¶¶ 11–14, 30; 211-2 ¶¶ 11–14, 30.) Plaintiffs
also sell genuine TOP® and JOB® cigarette papers to several customers
in the Atlanta area where Star is located. (Dkts. 195-2 ¶ 16; 211-2 ¶ 16.)
Second, Defendants offered and sold counterfeit papers using identical
marks, which Defendants admit appeared genuine. (Dkts. 195-2 ¶ 179;
211-2 ¶ 179.) Third, Defendants used Plaintiffs’ mark to sell nearly
identical products—cigarette papers. (Dkts. 195-2 ¶¶ 31, 66; 211-2 ¶¶
31, 66.)

Fourth, Defendants’ and Plaintiffs’ customers are nearly

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identical (retailers and wholesalers). (Dkts. 195-2 ¶¶ 29, 60; 211-2 ¶¶ 29,
60.) Fifth, both Plaintiffs and Defendants advertise through attendance
at trade shows and print advertising. (Dkts. 195-2 ¶¶ 30, 68; 211-2 ¶¶
30; 68.) Sixth, the marks used in Defendants’ products are virtually
identical to the genuine marks. See Vineyard Vines, LLC v. Outlet Tent
Sales, LLC, No. 3:19-cv-36, 2019 WL 8277260, at *4–6 (N.D. Ga. Sept. 10,
2019) (finding likelihood of confusion where defendants used plaintiffs’
actual marks); Chanel, Inc. v. Bryan, No. 1:07-CV-225, 2008 WL
11336327, at *4 (N.D. Ga. Nov. 18, 2008) (“Given that the marks used in
Defendant’s products are virtually identical to the Chanel Marks . . .
Plaintiff has presented a compelling case” of likely confusion). While
there is a dispute about whether Defendants copied Plaintiffs’ marks to
confuse potential buyers—that is Defendants’ intent to misappropriate
Plaintiffs’ goodwill—the other factors weigh in Plaintiffs’ favor. Based
on the foregoing analysis, the only reasonable conclusion is that
Defendants’ sale of counterfeit products likely confused consumers.
“Although not all factors of the likelihood of confusion test conclusively
point to a likelihood of confusion in this case, it nonetheless would be
unreasonable not to conclude on the basis of the analysis of the factors in

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toto that the likelihood of confusion was very strong.” Churchill Downs
Inc. v. Commemorative Derby Promotions, Inc., No. 1:12-cv-517, 2013 WL
5350830, at *11 (N.D. Ga. Sept. 23, 2013) (emphasis in original).
Consumers would likely have believed Plaintiffs approved or produced
Defendants’ products.
Although Plaintiffs have shown an absence of genuine dispute that
they own valid marks entitled to protection, Defendants used Plaintiffs’
marks in commerce, and Defendants’ counterfeit marks are likely to
cause consumer confusion, Defendants argue Plaintiffs are not entitled
to summary judgment because there are factual issues (1) “as to the
counterfeit nature of the products” and “intent” and (2) on Defendants’
laches, acquiescence, and unclean hands affirmative defenses. (Dkt. 204
at 2, 18, 23–26.)
Defendants contend there are factual disputes as to what is and is
not counterfeit. (Id. at 3.) They argue one of Plaintiffs’ “experts” (Mr.
Malacsina) identified certain papers as counterfeit, when the lab
ultimately determined they are was genuine. (Id.) Defendants assert
“[t]his greatly weighs against Plaintiffs’ argument that Defendants
‘should have known’ the papers were counterfeit.” (Id.) But Plaintiffs

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provided sufficient evidence to confirm Defendants sold counterfeit
papers. (Dkts. 195-2 ¶¶ 94, 102, 116–17, 126–31, 140–45, 149–52, 158–
60, 171, 173–78, 197; 211-2 ¶¶ 94, 102, 116–17, 126–31, 140–45, 149–52,
158–60, 171, 173–78, 197.) Their contention that some seized products
were visually identified as potentially counterfeit but later tested as
genuine does not cancel out the evidence that some products tested as
counterfeit. Mr. Malacsina’s misidentification of some products thus does
not preclude summary judgment. Ms. Rosarde’s and Ms. Teisseyre’s
reports confirm some of Defendants’ products are counterfeit. The Court
also notes Mr. Malacsina, Ms. Rosarde, and Ms. Teisseyre all agreed that
certain products are counterfeit. The quantity of counterfeit products
may go to damages. But in the light of the undisputed evidence that
Defendants sold counterfeit products, a disagreement as to the extent of
the infringement does not preclude summary judgment.
Defendants also try to create a dispute by alleging they did not
know the products were counterfeit. But it is well-settled that “under the
Lanham Act, sellers of counterfeit products bear strict liability.” River
Light V, L.P. v. Tanaka, No. 17-22843, 2018 WL 5778234, at *7 (S.D. Fla.
Nov. 2, 2018). “Good faith is not a defense to trademark infringement.”

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Fuji Photo Film Co., Inc. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d
591, 596 (5th Cir. 1985). Defendants’ contentions about their innocent
intentions are irrelevant to their liability.
Defendants argue Plaintiffs are not entitled to summary judgment
because there are material disputed facts about their affirmative
defenses—acquiescence, laches, and unclean hands. (Dkt. 204 at 23–26.)
Because a defendant bears the burden of proof on any affirmative
defenses at trial, Thorsteinsson v. M/V Drangur, 891 F.2d 1547, 1550–
51 (11th Cir. 1990), on a plaintiff’s motion for summary judgment, the
defendant bears the initial burden of showing that the affirmative
defense is applicable. Weitz, 913 F.2d at 1552; see also Johnson v. Bd. of
Regents of Univ. of Ga., 263 F.3d 1234, 1264 (11th Cir. 2001) (finding
because the plaintiffs moved for final summary judgment, it was
incumbent on the intervenors to respond by raising any and all defenses
they felt precluded judgment in the plaintiffs’ favor).

Upon such a

showing, the burden shifts to plaintiff regarding that affirmative defense.
Weitz, 913 F.2d at 1552 n.13.

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a.

Laches

Estoppel by laches may be raised as an equitable defense to
trademark infringement when a party has unreasonably delayed in
bringing its claims. Kason, 120 F.3d at 1203. To prevail on this defense,
Defendants must show: “(1) a delay in asserting a right or a claim; (2)
that the delay was not excusable; and (3) that there was undue prejudice
to the party against whom the claim is asserted.” Id. (citing AmBrit. Inc.
v. Kraft, Inc., 812 F.2d 1531, 1545 (11th Cir. 1986)). The test for laches
is flexible, “requiring a careful examination of both the delay and the
prejudice caused by that delay.” See Conagra, Inc. v. Singleton, 743 F.2d
1508, 1517 (11th Cir. 1984).

“Laches is invoked when the delay in

commencing a lawsuit exceeds the statute of limitation for an analogous
state law claim, which for this trademark action is the four-year
limitation period applied to an action under the Georgia Deceptive Trade
Practices Act.” Groucho’s Franchise Sys., LLC v. Grouchy’s Deli, Inc., 683
F. App’x 826, 829 (11th Cir. 2017). “Delay is measured from the time the
plaintiff knew or should have known that it had a provable claim for
infringement, but it is under no obligation to sue until the likelihood of
confusion looms large.”

Buccellati Holding Italia SPA v. Laura

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Buccellati, LLC, 5 F. Supp. 3d 1368, 1375 (S.D. Fla. 2014) (citing Kason,
120 F.3d at 1206). Courts weigh the amount of prejudice defendants
suffer against the public interest in avoiding confusion. See id. (citing
Conagra, 743 F.2d at 1517).
There is a dispute as to the first element—delay.

Defendants

suggest the notice period began in early 2018. (Dkts. 211-1 ¶¶ 39, 90, at
39–40; 224 ¶¶ 39, 90; 193-1 at 145; 189-1 at 195.) Plaintiffs suggest the
period began in January 2019.

(Dkts. 195-2 ¶ 103; 211-2 ¶ 103.)

Plaintiffs filed this action on May 15, 2019.

(Dkt. 1.)

Even using

Defendants’ date as the starting point, Plaintiffs filed their complaint
less than one and a half years after receiving notice of Defendants’
counterfeiting activities—well within the four-year limitation period.
There is thus a “strong presumption . . . that laches is inapplicable.”
Angel Flight of Ga., Inc. v. Angel Flight SE, Inc., 424 F. Supp. 2d 1366,
1370 n.5 (N.D. Ga. 2006) (“Angel Flight”). But because there is only a
presumption, the Court addresses the other two elements—unexcusable
delay and undue prejudice.
In determining whether delay is “excusable,” a court must not “limit
itself solely to a raw calculation of the time period . . . the court should

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also examine the reasons for any delay.” SunAmerica Corp. v. Sun Life
Assur. Co. of Canada, 77 F.3d 1325, 1345 (11th Cir. 1996) (Birch, J.,
concurring) (emphasis in original). Plaintiffs contend that, upon receipt
of the January 2019 tip, they promptly investigated the claim, conducted
test buys, performed laboratory testing, and cooperated with the police
investigation and raid.

(Dkt. 223 at 17–18.)

While the delay from

January 2019 through May 2019 may be deemed excusable, both parties
fail to account for all of 2018.

Under the doctrine of progressive

encroachment, “delay is to be measured from the time at which the
plaintiff knows or should know she has a provable claim for
infringement.” Kason, 120 F.3d at 1206; see also 6 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 31.19 (4th ed. 1997)
(“The senior user has no obligation to sue until the likelihood of confusion
looms large. . . .”) (quotations omitted). Because there is no evidence of
what occurred during 2018, the Court cannot determine when Plaintiffs
knew or should have known they had a provable claim. The Court agrees
there is thus a genuine dispute on whether Plaintiffs’ delay was
excusable.

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Defendants are nevertheless entitled to summary judgment
because Defendants have presented no evidence of undue prejudice. See
Tim Hortons USA, Inc. v. Tims Milner LLC, No. 18-cv-24152, 2019 WL
7376733, at *8 (S.D. Fla. Oct. 17, 2019) (finding the plaintiffs entitled to
partial summary judgment as to liability in part because the defendants
did not offer evidence to support their affirmative defense); Off. of Thrift
Supervision v. Paul, 985 F. Supp. 1465, 1470 (S.D. Fla. 1997)
(“[S]ummary judgment is appropriate where the defendant fails to come
forward with evidence sufficient to dispute an element of the plaintiff’s
case or to support an affirmative defense.”) (citing Riberglass, Inc. v.
Techni-Glass Indus., Inc., 804 F.2d 1577, 1580 (11th Cir. 1986) (affirming
summary judgment for plaintiff), reh’g granted and rev’d on other
grounds, 811 F.2d 565 (11th Cir. 1987)).
“Two

general

categories

of

prejudice

may

flow

from

an

unreasonable delay: prejudice at trial due to loss of evidence or memory
of witnesses, and economic prejudice based on loss of time or money or
foregone

opportunity.”

Bridgestone/Firestone

Research,

Inc.

v.

Automobile Club De L’Quest De La France, 245 F.3d 1359, 1362 (Fed. Cir.
2001). Defendants argue they suffered undue prejudice because they

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continued to buy the pertinent products, believing they were genuine.15
(Dkt. 204 at 24.) The Court, persuaded by authority from the Third
Circuit and Middle District of Florida, finds a defendant’s continued sale
of infringing goods during a period of delay does not constitute undue
prejudice. See Jenn-Air Corp. v. Penn Ventilator Co., Inc., 464 F.2d 48,
49–50 (3rd Cir. 1972) (holding no prejudice occurred where “all that
happened to [the defendant] was its continuance of counterfeiting and
selling its infringing products”); Alfred Dunhill of London, Inc. v. Kasser
Distillers Prods. Corp., 350 F. Supp. 1341, 1368 (E.D. Pa. 1972) (“[T]he
defendant has suffered no prejudice where nothing more is shown than
that it has continued to sell the infringing product for the period in
question.”); Ford Motor Co. v. O.E. Wheel Distributors, LLC, 868 F. Supp.
2d 1350, 1366 (M.D. Fla. 2012) (“[M]ere expenditures in promoting,
advertising, and/or selling an infringing mark does not constitute undue

Defendants cite no evidence for their assertion of undue prejudice.
They simply make the conclusory statement that “Plaintiffs’ actions
prejudiced Defendants. Defendants continued to buy the Pertinent
Products, believing they were genuine.” (Dkt. 204 at 24.) That is not
enough.

15

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prejudice for the purpose of laches.”). Defendants have thus failed to
present a dispute of fact about undue prejudice.16
b.

Acquiescence

Acquiescence is an “equitable defense that denotes active consent
by a senior user to another’s use of the mark.” SunAmerica, 77 F.3d at
1334 (citation omitted). The elements of this defense are “(1) the senior
user actively represented that it would not assert a right or a claim; (2)
the delay between the active representation and assertion of the right or
claim was not excusable; and (3) the delay caused the defendant undue
prejudice.” Id. “The difference between acquiescence and laches is that
laches denotes passive consent and acquiescence denotes active consent.”
Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1558
(11th Cir. 1991); see also ProFitness Physical Therapy Ctr. v. Pro-Fit
Orthopedic and Sports Physical Therapy P.C., 314 F.3d 62, 67–68 (2nd
2002) (“Although ‘both acquiescence and laches connote consent by the

The existence of laches, even if proven, would not prevent the issuance
of injunctive relief to prevent further acts of trademark infringement.
Even in cases where laches bars a suit for damages due to inequity to the
infringer, the Court may still grant injunctive relief to avoid “putting a
judicial stamp of approval on conduct which will confuse customers.” 6
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
§ 31.10 (4th ed. 1997).

16

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owner to an infringing use of his mark, acquiescence implies active
consent, while laches implies a merely passive consent.’” (quoting Sara
Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 460, 462 (4th Cir. 1996))).
Active consent does not mean an explicit promise not to sue. Rather, “[i]t
only requires ‘conduct on the plaintiff’s part that amounted to an
assurance to the defendant, express or implied, that plaintiff would not
assert his trademark rights against the defendant.’” Univ. of Ala. Bd. of
Trustees v. New Life Art, Inc., 683 F.3d 1266, 1282 (11th Cir. 2012)
(quoting Creative Gifts, Inc. v. UFO, 235 F.3d 540, 547–48 (10th Cir.
2000).

“Given the strong interest in preventing public confusion,

however, a plaintiff’s apparent acquiescence . . . does not necessarily bar
relief.” ProFitness Physical Therapy, 314 F.3d at 68. “When inevitable
confusion occurs in the marketplace due to unrestricted dual use of a
trademark, the paramount value of the public interest demands some
adjustment to the status quo,” even in cases involving acquiescence.
SunAmerica, 77 F.3d at 1337; see also Coach House Rest., 934 F.2d at
1564 (“[I]f there is an inevitability of confusion, [a] petitioner's law suit
may be revived from estoppel”).

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Defendants contend a jury could conclude Plaintiffs led Star to
believe the papers Star bought and sold from TN Vape and Birmingham
Wholesale were authentic because Plaintiffs’ agents visited their
warehouse regularly and never identified any counterfeit or suspicious
papers. (Dkts. 204 at 24; 211-1 ¶¶ 11, 18, 32–33, 36, 38, 80, 102; 224 ¶¶
11, 18, 32–33, 36, 38, 80, 102.) Perhaps. The Court, however, is unwilling
to find the particular evidence before it sufficient to raise an issue of
material fact as to active representation, given the undisputed evidence
that distinguishing between counterfeit and genuine papers is extremely
difficult and that neither Mr. Hinton nor Mr. Sierra were trained to make
such a determination, particularly in the absence of evidence as to the
purpose of their inspection or Defendants’ understanding as to whether
they were inspecting products for authenticity purposes. The Court need
not rule absolutely on this issue because, as already explained,
Defendants have failed to raise a material dispute as to prejudice.
And even if an issue of material fact existed as to acquiescence, that
defense would not prevent injunctive relief.

“Upon a showing that

‘inevitable confusion’ arises from the continued dual use of the marks, a
senior user’s claim may be revived from estoppel.” SunAmerica, 77 F.3d

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at 1334; see also Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522
F.3d 1200, 1208 (11th Cir. 2008) (“Angel Flight II”) (“Laches and
acquiescence are inapplicable to the facts of this case because the public
is confused. . . . Laches or acquiescence do not preclude the Court’s
issuance of an injunction to prevent further acts of trademark confusion
by [defendants].”). The standard for finding an inevitability of confusion
is “an increment higher” than the standard for finding a likelihood of
confusion. Coach House Rest., 934 F.2d at 1564.
It is met here. There can be no question that confusion is inevitable.
Defendants, including one of the largest wholesalers of cigarette papers
in the Southeast and someone who has been the sole owner of that
business for 14 years, repeatedly admit the counterfeit goods appeared
genuine. (Dkts. 211-1 ¶¶ 78, 80–81; 211-2 ¶¶ 6, 61, 66, 97, 179, 190.)
Defendants further admit “the testimony from all of the wholesalers in
this action was that they could not tell the products were counterfeit” and
a lab analysis was necessary to identify counterfeit papers. (Dkt. 211-1
¶¶ 78, 81.) “Defendants admit that they, as consumers purchasing the
allegedly counterfeit products, believed them to be genuine.” (Dkt. 2112 ¶ 190.) If people in the business with decades of experience contend the

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counterfeit products appear genuine, confusion in the marketplace is
inevitable.

Defendants’ defense of acquiescence thus does not bar

injunctive relief.
c.

Unclean Hands

Proof of “unclean hands” may bar a plaintiff’s claim if the plaintiff
bears responsibility for its own injury. See Bailey v. TitleMax of Ga., Inc.,
776 F.3d 797, 801 (11th Cir. 2015). Generally, “[t]o assert an unclean
hands defense, a defendant must show that (1) the plaintiff’s wrongdoing
is directly related to the claim, and (2) the defendant was personally
injured by the wrongdoing.” Id. (citing Calloway v. Partners Nat’l Health
Plans, 986 F.2d 446, 450–51 (11th Cir. 1993)); see also DS Waters of Am.,
Inc. v. Fontis Water, Inc., No. 1:10-CV-0335, 2012 WL 12873771, at *24
(N.D. Ga. Sept. 13, 2012) (applying the unclean hands doctrine in context
of a Lanham Act claim), amended by, No. 1:10-CV-0335, 2012 WL
12873620, at *24 (N.D. Ga. Dec. 4, 2012). “The defense of unclea[n] hands
applies to a Lanham Act claim and is established by a showing that ‘the
plaintiff’s conduct is inequitable and that the conduct relates to the
subject matter of its claim.’” DS Waters of Am., 2012 WL 12873771, at

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*24 (quoting Campagnolo S.R.L. v. Full Speed Ahead, Inc., 258 F.R.D.
663, 665–66 (W.D. Wash. 2009)). The Supreme Court made clear
when the owner of a trade-mark applies for an injunction to
restrain the defendant from injuring his property by making
false representations to the public, it is essential that the
plaintiff should not in his trade-mark, or in his
advertisements and business, be himself guilty of any false or
misleading representations; that if the plaintiff makes any
material false statement in connection with the property
which he seeks to protect, he loses the right to claim the
assistance of a court of equity; that where any symbol or label
claimed as a trademark is so constructed or worded as to make
or contain a distinct assertion which is false, no property can
be claimed on it, or, in other words, the right to the exclusive
use of it cannot be maintained.
Shatel Corp. v. Mao Ta Lumber & Yacht Corp., 697 F.2d 1352, 1355 (11th
Cir. 1983) (quoting Worden & Co. v. Ca. Fig Syrup Co., 187 U.S. 516, 528
(1903)).

“[I]n trademark infringement actions, courts have required

clear, convincing evidence of egregious misconduct before invoking the
doctrine of unclean hands.” DS Waters of Am., 2012 WL 12873620, at
*24. “[T]he application of the doctrine of unclean hands in a trademark
case lies within the sound discretion of the district court.”

Ron

Matusalem & Matusa of Fla., Inc. v. Ron Matusalem, Inc., 872 F.2d 1547,
1553 (11th Cir. 1989).

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Defendants assert several arguments in support of their unclean
hands defense. They argue, for example, that Plaintiffs continued selling
product to Star (and even signed Star up for its rewards program) while
also investigating Star for trademark infringement. (Dkts. 204 at 26.)
Defendants, however, present no evidence they were harmed by this and
no reasonable jury could find an injury from being allowed to purchase
authentic products directly from the manufacturer. See DS Waters of
Am., 2012 WL 12873771, at *24 (“[T]he defendant must show that it was
personally injured by the conduct at issue.”)

The same is true for

allowing Star to participate in the rewards program.
Defendants also contend Plaintiffs have unclean hands because
they “actively permitted Star to continue to sell infringing products,
presumably hoping to increase Plaintiffs’ damages.” (Dkt. 204 at 26
(emphasis in original).) Defendants fail to argue which actions, taken
while investigating, were egregious. Defendants may be relying (again)
on the fact Mr. Hinton and Mr. Sierra never raised a concern about
counterfeit product.

But (again) neither man identified counterfeit

product or was trained to do so. (Dkts. 211-1 ¶¶ 36, 38; 224 ¶¶ 36, 38;
193-1 at 43:6–18; 189-1 at 45:24–46:2, 51:9–12.) Defendants may also be

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relying on their argument Plaintiffs did not react fast enough to the
alleged counterfeiting since they received a tip in February 2018 but did
not sue until May 2019. (Dkts. 211-1 ¶ 39 n.1; 224 ¶ 39; 193-1 at 145;
189-1 at 195.) Defendants, however, also claim no evidence suggests the
February 2018 tip was valid. (Dkt. 211-1 ¶ 39 n.1.) The Court is thus
unsure what action they expected from Plaintiffs.

It is also undisputed

that Plaintiffs began investigating after a January 2019 tip, an action
antithetical to the notion of unclean hands. (Dkts. 195-2 ¶ 104; 211-2 ¶
104.)

See Johnson & Johnson and Lifescan, Inc. v. South Pointe

Wholesale, Inc., No. 08-CV-1297, 2014 WL 12558573, at *29 (E.D. N.Y.
Apr. 4, 2014) (“If plaintiffs learned of counterfeiting and conducted no
investigation, made no report to appropriate regulatory authorities, and
took no responsive measures, defendants’ equitable defenses might well
persuade me to recommend that plaintiffs be denied any recovery.
However, even defendants concede that plaintiffs communicated with
government authorities who were aware of counterfeit test strip
packaging, conducted some investigation of the source of the counterfeits,
and took some remedial measures after discovering the identity of some
of the actors involved in the counterfeiting.”).

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Likewise Plaintiffs’

Case 1:19-cv-04939-MLB Document 240 Filed 09/07/21 Page 49 of 64

undercover purchases and cooperation with police involvement do not
suggest egregious conduct.
No reasonable jury could find from the undisputed evidence
Plaintiffs’ alleged delay in filing suit was so egregious as to warrant a
defense of unclean hands. See Gucci Am., Inc. v. Guess?, Inc., 868 F.
Supp. 2d 207, 256 (S.D. N.Y. 2012) (“While Gucci did not act promptly to
pursue its infringement and dilution claims against Defendants, it
explained that it did not do so because its intellectual property
enforcement budget was consumed by the fight against counterfeiters. I
conclude that this was a tactical choice rather than an ‘unconscionable
act,’ and decline to apply the doctrine of unclean hands to deny Gucci
relief.”); Point 4 Data Corp. v. Tri-State Surgical Supply & Equip., Ltd.,
No. 11-CV-726, 2013 WL 4409434, at *28 (E.D. N.Y. Aug. 2, 2013) (“Even
accepting Tri-State’s theory that plaintiffs caused the delay solely to
increase their DMCA damages, Tri-State cites no cases to establish that
this conduct was so unconscionable as to preclude any recovery
whatsoever

under

the

unclean

hands

doctrine.”)

report

and

recommendation adopted in relevant part by, 2013 WL 5502852 (E.D. NY
Oct. 1, 2013).

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Finally, Defendants assert “Plaintiffs themselves established
relationships with counterfeiters [Birmingham Wholesale and TN Vape],
further showing their unclean hands.” (Dkt. 204 at 236.) The undisputed
evidence shows Plaintiff established these relationships after the
relevant time. Birmingham Wholesale became an exclusive distributor
after the May 2019 raids and Plaintiffs

with TN Vape after the

case was filed and after TN Vape admitted liability,
, and agreed to a permanent injunction. (Dkts. 195-2 ¶ 92; 211-2
¶ 92; 224 ¶ 95; 190-1 at 84:24–85:9; 221-4 at 19:3–17, 20:17–19.)
Defendants have not shown these post-filing business decisions caused
them any harm. See DS Waters of Am., 2012 WL 12873771, at *24 (“[T]he
defendant must show that it was personally injured by the conduct at
issue.”); see also Monsanto Co. v. Campuzano, 206 F. Supp. 2d 1252, 1263
(S.D. Fla. 2002) (“In the Eleventh Circuit, a defendant attempting to
invoke the unclean hands defense must . . . show that it was personally
injured by the plaintiffs’ conduct.”), modified on other grounds by, 206 F.
Supp. 2d 1270 (S.D. Fla. 2002). It is true that Mr. Patton was purchasing
product from Mr. Seriana in 2018.

(Dkts. 211-1 ¶ 91, at 42–52; 224 ¶

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91.) But, again, there is no indication these alleged purchases hurt
Defendants.
For all of these reasons, the Court concludes there is no genuine
issue of material fact regarding Plaintiffs’ claim against Defendant Star
or as to the inapplicability of Defendant Star’s affirmative defenses. The
Court grants Plaintiffs’ motion for summary judgment as to Defendant
Star.
2.

Defendant Hudda’s Personal Liability

Plaintiffs argue Defendant Hudda is personally liable for the
counterfeiting violations. (Dkt. 195-1 at 22–24.) They say there is no
dispute of material fact about his liability because he directed,
authorized, and supervised the purchase and sale of counterfeit TOP and
JOB products. (Dkt. 223 at 14–16.) Defendants disagree. They argue
there is a dispute of material fact as to whether Defendant Hudda
actively and knowingly caused trademark infringement and was the
moving, conscious force in the infringement, thus precluding summary
judgment against him. (Dkt. 204 at 21–23.)
The Lanham Act provides for personal liability. See Chanel, Inc. v.
Italian Activewear of Fla., Inc., 931 F.2d 1472, 1477 (11th Cir. 1991)

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(“Chanel”) (“Natural persons, as well as corporations, may be liable for
trademark infringement under the Lanham Act.” (citing 15 U.S.C. §§
1114, 1127; Mead Johnson & Co. v. Baby’s Formula Serv., Inc., 402 F.2d
19 (5th Cir. 1968))). “If an individual actively and knowingly caused the
infringement, he is personally liable.”

Id.

“The individual liability

standard does not ask whether the individual participated or engaged in
some infringing act; instead, it asks whether he actively participated as
a moving force in the decision to engage in the infringing acts, or
otherwise caused the infringement as a whole to occur.” Id. at 1478 n.8
(emphasis in original).
Defendants argue Plaintiffs must show Defendant “Hudda had
knowledge of the infringement.” (Dkt. 204 at 22.) Eleventh Circuit law,
however, does not require specific knowledge of trademark infringement
as a prerequisite to individual liability. Instead, the law holds officers
personally liable when they actively cause infringement as moving,
conscious forces regardless of actual knowledge of infringement. See Top
Tobacco, L.P. v. Panjwani, Nos. 19-CV-2177 & 19-CV-2148, 2021 WL
1351443, at *4 (N.D. Ga. Mar. 15, 2021).

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The Eleventh Circuit illuminated the issue in Chanel. In that case,
the famous designer and seller of luxury goods sued a company and two
individuals who were selling handbags and belt buckles with counterfeit
Chanel trademarks. Chanel, 931 F.2d at 1474. One individual was the
president and CEO of the defendant company.

Id.

The other was

identified as a business associate. Id. The district court granted plaintiff
summary judgment against all three defendants on treble damages and
attorney’s fees, necessarily finding “no genuine issue of fact regarding the
knowledge and intent of [defendants]” to violate plaintiff’s trademark.
Id. at 1476. The Eleventh Circuit reversed, finding a material dispute as
to whether the individuals (and the company) knew their actions violated
plaintiff’s trademark. Id. at 1477. Despite recognizing a material fact as
to each individuals’ knowledge and intent, the Court of Appeals still
found no genuine issue of material fact as to the president’s personal
liability. Id. at 1478. The Court explained evidence the president owned
and operated the company, purchased the counterfeit goods from the
supplier, advertised the goods, and operated the showroom from which
goods were sold was sufficient to establish his personal liability. Id. The
Chanel court found this in the light of the fact that there was an issue of

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material fact as to whether the president knew the goods he sold were
counterfeit. Id. at 1477. In comparison, the Court of Appeals concluded
the plaintiff presented insufficient evidence the business associate was
personally liable as he had no ownership interest and was not connected
to the purchase or sale of much counterfeit product. Id. at 1478. The
Court of Appeals explained that evidence of his limited involvement in
the business operation might allow a jury to conclude he actively caused
the infringement (and thus is personally liable), but there existed a
dispute of fact as to the extent of his involvement in the business. Id. As
part of this, the court warned that merely selling goods does not make a
person individually liable. Instead, the court explained, the issue is
whether the person “actively caused the infringement as a moving,
conscious force.” Id.
When Chanel is read as a whole, it suggests knowledge, for
purposes of personal liability, means knowledge of the infringing acts,
not knowledge of infringement. “This holding is consistent with other
cases in which federal courts have held corporate officers personally
liable despite their lack of specific knowledge or intent.” Panjwani, 2021
WL 1351443, at *2 (citing Donsco, Inc. v. Casper Corp., 587 F.2d 602, 606

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(3d Cir. 1978) (“The fact that an officer is acting for a corporation may
make the corporation vicariously or secondarily liable under the doctrine
of respondeat superior; it does not however relieve the individual of his
responsibility.”); Loxottica Grp., S.p.A. v. Casa Los Martinez Corp., No.
1:14-cv-22859, 2015 WL 13776171, at *2 (S.D. Fla. Jan. 30, 2015)
(“Whether the officer has knowledge that his acts will result in an
infringement is immaterial to his individual liability.”); Carell v. Shubert
Org., Inc., 104 F. Supp. 2d 236, 271 (S.D.N.Y. 2000) (“Where it is
established that the officer is a ‘moving, active, conscious force’ behind
the infringement, ‘[it] is immaterial whether . . . [he] knows that his acts
will result in an infringement.’” (quoting Bambu Sales, Inc. v. Sultana
Crackers, Inc., 683 F. Supp. 899, 913 (E.D.N.Y. 1988))); Polo Fashions,
Inc. v. Branded Apparel Merch., Inc., 592 F. Supp. 648, 652–63 (D. Mass.
1984) (same)).

Some courts have emphasized strict liability applies

“without regard to the veil that ordinarily separates officers from their
corporations.” Id. (citing Babbit Elec., Inc. v. Dynascan Corp., 38 F.3d
1161, 1184 (11th Cir. 1994) (“[A] corporate officer who directs, controls,
ratifies, participates in, or is the moving force behind the infringing
activity, is personally liable for such infringement without regard to

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piercing the corporate veil.”); Donsco, 587 F.2d at 606 (“This liability is
distinct from the liability resulting from the ‘piercing of the corporate veil’
as that term is commonly used.”)). Defendant Hudda thus may be held
liable without regard to his knowledge of or willful blindness towards
infringement as long as he actively caused the infringing acts as a
moving, conscious force.
Defendant Hudda is the president of Star and, for about 14 years,
has been its owner. (Dkts. 195-2 ¶ 6; 211-2 ¶ 6.) He tries to oversee its
employees and operations, makes some of the business decisions, and has
the authority to enter into contracts on his company’s behalf. (Dkt. 1881 at 27:10–25; 28:1–29:4.) He also tries to negotiate pricing but does not
always do so. (Id. at 28:16–20.) Defendant Hudda also tries to get
involved in big negotiations and “most of the time” makes decisions about
which products to carry. (Id. at 28:21–29:4; 93:24–94:1; 103:5–8.) He
tries to select suppliers but does not always do so. (Id. at 29:5–11.) He
is,

however,

solely

responsible

for

any

exclusive

purchasing

arrangements. (Id. at 29:12–16.) Defendant Hudda made the decision to
terminate Star’s exclusive relationship with Republic. (Id. at 29:12–16,
103:23–24.)

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The link between Defendant Hudda and the infringing activities is
too tenuous to grant summary judgment.

The majority of the facts

presented by Plaintiffs simply show Defendant Hudda tries to be involved
in Star’s operations. (Id. at 27:10–25, 28:16–20, 93:24–94:1, 28:21–29:4,
103:5–8, 29:5–11.) “Taken together, these facts may be enough from
which to infer that [Defendant Hudda] actively caused the infringement.
But they are insufficient to establish an absence of genuine dispute, such
that no reasonable jury could conclude he did not actively cause the
infringement.”

Chanel, 931 F.2d at 1478.

The Court thus denies

Plaintiffs’ motion for summary judgment as to Defendant Hudda.
B.

Permanent Injunction

Plaintiffs request a permanent injunction against Defendants to
end their infringement of the TOP® and JOB® marks. (Dkts. 186 at 4;
195-1 at 33.) Pursuant to the Lanham Act, a district court is authorized
to issue an injunction “according to the principles of equity and upon such
terms as the court may deem reasonable,” to prevent violations of
trademark law. 15 U.S.C. § 1116(a). Indeed, in “ordinary trademark
infringement actions . . . complete injunctions against the infringing
party are the order of the day.” SunAmerica, 77 F.3d at 1336; see also

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Burger King Corp. v. Agad, 911 F. Supp. 1499, 1509–10 (S.D. Fla. 1995)
(“[I]njunctive relief is the remedy of choice for trademark and unfair
competition cases, since there is no adequate remedy at law for the injury
caused by a defendant’s continuing infringement.” (quoting Century 21
Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. 1988))).
Plaintiffs are not automatically entitled to an injunction. To obtain a
permanent injunction, Plaintiffs must show: (1) they suffered an
irreparable harm; (2) remedies available at law, such as monetary
damages, are inadequate to compensate for that injury; (3) considering
the balance of hardships between the parties, a remedy in equity is
warranted; and (4) the public interest would not be disserved by a
permanent injunction. Angel Flight II, 522 F.3d at 1208.

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Plaintiffs have shown they suffered an irreparable harm,17 that the
balance of hardships warrants a remedy in equity,18 and that the public
interest would not be disserved by a permanent injunction.19 Defendants
do not even challenge these elements. (Dkt. 195-1 at 34–35.) Instead,
Defendants dispute whether there is an adequate remedy at law. (Dkt.
204 at 17–21.)

“[G]rounds for irreparable injury include loss of control of reputation,
loss of trade, and loss of goodwill. Irreparable harm can also be based
upon the possibility of confusion.” Ferrellgas Partners, L.P. v. Barrow,
143 F. App’x 180, 190 (11th Cir. 2005) (citing Opticians Ass’n of Am. v.
Indep. Opticians of Am., 920 F.2d 187, 196 (3d Cir. 1990)). The “most
corrosive and irreparable harm attributable to trademark infringement
is the inability of the victim to control the nature and quality of the
defendants’ goods.” Id. at 190–91; see also Crossfit, Inc. v. Quinnie, 232
F. Supp. 3d 1295, 1316 (N.D. Ga. 2017) (“Because the Court found that
there is a sufficient showing of likelihood of confusion and that [the
defendants’] use of KrossFit in connection to unrelated services dilutes
the CROSSFIT® mark, the Court concludes that irreparable harm is
established.”).
18 Defendants have no right to use the TOP® and JOB® marks, and
“therefore could suffer no legitimate hardship by being forced to stop that
which [they have] no right to do.” Crossfit, 232 F. Supp. 3d at 1317
(quoting Tiramisu Int’l LLC v. Clever Imports LLC, 741 F. Supp. 2d 1279,
1288 (S.D. Fla. 2010)). Plaintiffs, on the other hand, will suffer damages,
such as the dilution of their marks, if Defendants are not enjoined.
19 The public interest would not be disserved because “the public deserves
not to be led astray by the use of inevitably confusing marks.” Angel
Flight II, 522 F.3d at 1209.
17

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Defendants say no adequate remedy at law exists and an injunction
is necessary when a defendant is likely to continue infringing a
trademark.20 (Id. at 17.) They argue it has been nearly two years since
Star allegedly sold counterfeit papers and they “did not, have not, and
will not knowingly sell counterfeit products.” (Id. at 21 & n.8.) As a
result, they say there is no need for an injunction. For this argument,
they cite In re Circuit Breaker Litigation, 860 F. Supp. 1453, 1456 (C.D.
Cal. 1994), (Dkt. 204 at 18), from which they quote: “If . . . the defendant
infringed innocently, ceased before judgment and assured the court that
it has no intention of infringing in the future, the public needs no
protection. In these circumstances, courts usually deny requests for
permanent injunctions.” In re Circuit Breaker, 860 F. Supp. at 1456. The
Court finds Defendants’ argument unpersuasive. First, Plaintiffs are not
required to prove likely repetition of infringement to obtain an
injunction. While it has been nearly two years since counterfeit product
was allegedly in Star’s warehouse, the reform of Defendants is not
irrefutably demonstrated. See Polo Fashions, Inc. v. Dick Bruhn, Inc.,

Defendants briefly discuss likelihood of confusion. (Dkt. 204 at 18–20.)
As discussed, Plaintiffs have produced sufficient evidence of likelihood of
confusion and irreparable harm.

20

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793 F.2d 1132, 1135 (9th Cir. 1986) (“In this case, the district court
refused to grant an injunction because the plaintiffs had not introduced
any specific evidence to demonstrate that the defendants would infringe
in the future. The court was correct in noting that cessation of unlawful
conduct can moot such a dispute, but it failed to recognize that the reform
of the defendant must be irrefutably demonstrated and total.” (internal
quotation marks omitted)); Basic Fun, Inc. v. X-Concepts, LLC, 157 F.
Supp. 2d 449, 457 (E.D. Pa. 2001) (“A movant has no burden to prove
likely repetition of the infringement to obtain an injunction.”); Lyons
P’ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 800 (4th Cir. 2001)
(“[A]n injunction is unnecessary when ‘there is no reasonable expectation
that the wrong will be repeated.’” (quoting United States v. W.T. Grant
Co., 345 U.S. 629, 633 (1953) (emphasis added))). Second, Plaintiffs and
consumers are entitled to legal assurances Defendants’ counterfeiting
will stop. Defendants contend they “will not knowingly sell counterfeit
products,” but that is not enough, particularly when Defendants identify
no business process to avoid doing so again. (Dkt. 204 at 21 n.8.) See
Habersham Plantation Co. v. Molyneux, No. 10-CV-61526, 2012 WL
13005341, at *2 (S.D. Fla. May 8, 2012) (“The [d]efendants have asserted

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that they will not import and sell infringing products. Notwithstanding
that assertion, [the plaintiff] is entitled to legal assurances that
infringing sales will not continue.”). Third, if Defendants intend to stop
selling counterfeit products, a permanent injunction will cause little to
no hardship. See id. (“In light of [the defendants’] professed agreement
to stop sales, the hardship to [the defendant] by entry of a permanent
injunction is small.”); Dick Bruhn, 793 F.2d at 1135–36 (“If the
defendants sincerely intend not to infringe, the injunction harms them
little; if they do, it gives [the plaintiff] substantial protection of its
trademark.”). A plaintiff in a trademark case “is entitled to effective
relief; and any doubt in respect of the extent thereof must be resolved in
its favor as the innocent producer and against the [defendant], which has
shown by its conduct that it is not to be trusted.” Dick Bruhn, 793 F.2d
at 1135 (quoting William R. Warner & Co. v. Eli Lilly & Co., 265 U.S.
526, 532 (1924)).

Defendants are thus permanently enjoined from

infringing the TOP® and JOB® marks.
IV.

Conclusion
The Court GRANTS IN PART and DENIES IN PART Plaintiffs’

Motion for Summary Judgment (Dkt. 186).

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The Court GRANTS Plaintiffs’ request for a permanent injunction.
(Dkt. 186 at 4.)
The Court ORDERS this case to mediation. The parties may retain
the mediator to mediate this case. The expense of a retained mediator
must be paid by the parties. The parties, alternately, may request that
the Court appoint a magistrate judge to conduct the mediation. The
parties are not required to pay for mediation by a magistrate judge. The
parties shall advise the Court of their mediation preference on or before
September 21, 2021. If they elect to retain their own mediator, the
parties shall identify the mediator on or before October 5, 2021. The
parties must have present at the mediation a person with authority to
settle this litigation.

The parties shall, within five days after the

mediation, notify the Court in writing whether mediation led to a
settlement of this action.
The Court STAYS this case pending mediation.

The Court

DIRECTS the Clerk to ADMINISTRATIVELY CLOSE this case
during the period of stay.

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Case 1:19-cv-04939-MLB Document 240 Filed 09/07/21 Page 64 of 64

SO ORDERED this 7th day of September, 2021.

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1

MICH"K E L L. B R O W N

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