Dennis Pierce, Inc. et al v. Pierce et al

Filing 66

MEMORANDUM OPINION AND ORDER granting in part and denying in part 58 Motion for Reconsideration. The Court grants the motion as to Defendant's copyright infringement counterclaim, but denies it in all other respects. Signed by District Judge Keith Starrett on 9/12/17. (cb)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF MISSISSIPPI
EASTERN DIVISION

DENNIS PIERCE, INC., et al.
v.

PLAINTIFFS
CIVIL ACTION NO. 2:16-CV-102-KS-MTP

LETITIA PIERCE, et al.

DEFENDANTS

MEMORANDUM OPINION AND ORDER
For the reasons below, the Court grants in part and denies in part
Defendant’s Motion for Reconsideration [58].
I. BACKGROUND
This is a copyright/trademark case. Plaintiffs Dennis Pierce, Inc. (“DPI”) and
Piercon, Inc. have used a particular logo for over two decades – a green block “P” with
the shape of a house as the cutout in the “P.” Defendant Letitia Pierce created the logo.
Plaintiffs are construction companies in the Hattiesburg, Mississippi area, and
Defendant’s brother, Dennis Pierce, owns Plaintiffs.
Defendant was employed by Plaintiffs in the mid-nineties. She had a variety of
duties, but she encouraged her brother to incorporate a logo into the business’s
branding. Defendant eventually left her employment with Plaintiffs. The parties
dispute when Defendant created the logo, and they dispute the degree of Dennis
Pierce’s participation in its creation. Regardless, Plaintiffs used the logo for over
twenty years without any trouble. During this time period, the logo was also used in
Dennis Pierce’s real estate business, Pierce Realty, Inc.

In January 2015, Dennis Pierce transferred ownership of Pierce Realty to his
brother, Darian Pierce. Darian Pierce continued to use the logo after the transfer of
ownership. In July 2015, Plaintiffs filed an application with the United States Patent
and Trademark Office (“USPTO”) to trademark the logo. In April 2016, Plaintiffs
received their USPTO registration of the logo and sent a cease-and-desist letter to
Pierce Realty. When Defendant found out that Dennis Pierce had registered the logo
with the USPTO, she sent her own cease-and-desist letter to Plaintiffs and demanded
that they cancel the trademark registration. She later filed her own application for
copyright registration with the United States Copyright Office.
Plaintiffs filed this declaratory judgment action. They seek a declaratory
judgment that they are the rightful owners of the logo, that they are the rightful
owners of a valid trademark registration, and that they did not infringe upon any
trademark rights of Defendant. Defendant filed a counterclaim for copyright
infringement.
Plaintiffs filed a Motion for Summary Judgment [1], which the Court granted
in part and denied in part. Specifically, the Court denied the motion as to Plaintiffs’
request for a declaratory judgment that they own a valid trademark registration for
the disputed logo, but the Court granted the motion as to Defendants’ request for a
declaratory judgment that they have not infringed Defendant’s trademark rights and
as to Defendant’s counterclaim for copyright infringement. Defendant filed a Motion
for Reconsideration [58], which the Court now addresses.
II. STANDARD OF REVIEW
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“A motion asking the court to reconsider a prior ruling is evaluated either as a
motion . . . under Rule 59(e) or . . . under Rule 60(b). The rule under which the motion
is considered is based on when the motion is filed. If the motion is filed within twentyeight days after the entry of judgment, the motion is treated as though it was filed
under Rule 59, and if it was filed outside of that time, it is analyzed under Rule 60.”
Demahy v. Schwarz Pharma, Inc., 702 F.3d 177, 182 n.2 (5th Cir. 2012). Defendant’s
Motion for Reconsideration [58] was filed within twenty-eight days of the entry of the
Court’s Memorandum Opinion and Order [57], and Rule 59 applies.
“A Rule 59(e) motion calls into question the correctness of a judgment.” Templet
v. Hydrochem Inc., 367 F.3d 473, 478 (5th Cir. 2004). There are three grounds for
altering or amending a judgment under Rule 59(e): “(1) an intervening change in
controlling law, (2) the availability of new evidence not previously available, or (3) the
need to correct a clear error of law or prevent manifest injustice.” Williamson Pounders
Architects, P.C., 681 F. Supp. 2d 766, 767 (N.D. Miss. 2008). Rule 59(e) motions are
“not the proper vehicle for rehashing evidence, legal theories, or arguments that could
have been offered or raised before the entry of judgment,” Templet, 367 F.3d at 478,
and they “should not be used to . . . re-urge matters that have already been advanced
by a party.” Nationalist Movement v. Town of Jena, 321 F. App’x 359, 364 (5th Cir.
2009). It is “an extraordinary remedy that should be used sparingly.” Id. Before filing
a Rule 59(e) motion, parties “should evaluate whether what may seem to be a clear
error of law is in fact simply a point of disagreement” with the Court. Atkins v.

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Marathon LeTourneau Co., 130 F.R.D. 625, 626 (S.D. Miss. 1990).
III. DISCUSSION
A.

Payment of Copyright Filing Fee
First, Defendant argues that the Court erred in holding that the record contains

no evidence that she paid the filing fee to accompany her application for copyright
registration. Defendant is correct. The record contains an e-mail receipt from Pay.gov
demonstrating that Defendant’s attorney remitted the $35.00 filing fee. See Exhibit I
at 4, Dennis Pierce, Inc. v. Pierce, No. 2:16-CV-102-KS-MTP (S.D. Miss. July 3, 2017),
ECF No. 52-9.
As for the other arguments raised in Plaintiffs’ Motion for Summary Judgment
– that Defendant created the mark as a “work for hire,” that Dennis Pierce was a “joint
author” of the work, that the mark lacks the requisite creativity and originality to
receive copyright protection, and that Defendant granted Dennis Pierce an irrevocable
license to use the mark – the Court finds that there are genuine disputes of material
fact that preclude summary judgment on these bases. Moreover, Plaintiffs cited no
legal support for their “misuse of copyright” argument.
The Court grants Defendant’s Motion for Reconsideration as to her copyright
infringement counterclaim.
B.

Use of the Disputed Mark/Implied License/Likelihood of Confusion
Next, Defendant argues that the Court failed to address her argument that

Plaintiffs’ use of the mark as an implied licensee inured to her benefit, satisfying the
requirement that a trademark owner actually use a mark before she can enjoin its use
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by others. Defendant is mistaken. The Court addressed this argument thoroughly in
its previous order and remains of the opinion that continued use of a trademark by one
whose license has expired or been revoked only constitutes trademark infringement to
the extent it creates a likelihood of confusion to the public. See Prof’l Golfers Ass’n of
Am. v. Bankers Life & Cas. Co., 514 F.2d 665, 668 (5th Cir. 1975).
Defendant correctly notes that the Fifth Circuit has held that “the Lanham Act
definitely contemplates that a trade or service mark may be acquired through its use
by controlled licensees, even though the registrant itself may not have used the mark.”
Turner v. H M H Publ’g Co., 380 F.2d 224, 229 (5th Cir. 1967). But in Prof’l Golfers
Ass’n of Am. v. Bankers Life & Cas. Co., 514 F.2d 665 (5th Cir. 1975) – a more recent
case – the Fifth Circuit’s analysis was more nuanced. The defendant had enjoyed a
license to use the PGA’s trademark in connection with certain real estate
developments. Id. at 667. After the license expired, the defendant continued to use the
mark in connection with a golf club. Id. at 670.
The Fifth Circuit noted that “direct competition” was not a required element of
trademark infringement. Id. at 669. “[R]ather, the gist of the action lies in the
likelihood of confusion to the public.” Id. Therefore, “falsely suggesting affiliation with
the trademark owner in a manner likely to cause confusion as to source or sponsorship
constitutes infringement.” Id. at 670. “A former licensee cannot mislead the public into
believing that its affiliation continues once the licensing arrangement has ceased. For
once the contract ends, a licensee’s right to the mark ends, and any subsequent use

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constitutes infringement.” Id.
The Court noted the PGA’s history and national reputation. Id. It held that the
PGA had “established that the public would likely continue to associate the club with
the organization so long as the facility bore the title ‘PGA Country Club,’ or any similar
designation containing the three initials.” Id. Therefore, the defendant’s “activities
[bore] all the earmarks of trademark infringement . . . .” Id. at 671.
In her briefing, Defendant focused on a single sentence from the Fifth Circuit’s
analysis in an attempt to proof-text her argument. But she ignored the underlying
rationale that the “gist of [a trademark infringement] action lies in the likelihood of
confusion to the public.” Id. at 669. Here, there is absolutely no danger of confusing the
public. Plaintiffs’ use of the trademark does not “falsely suggest[] affiliation with”
Defendant “in a manner likely to cause confusion as to source or sponsorship . . . .” Id.
at 670. Defendant does not use the disputed mark. She has never used it, and she has
no intention of using it. The only reason she revoked the alleged license and filed a
counterclaim for copyright infringement – by her own admission – was to prevent
Plaintiffs from using it. She admitted that no one outside her family would associate
the mark with her. In short, she presented no evidence that Plaintiff’s use of the mark
created a likelihood of confusion with the public.
The Court denies Defendant’s Motion for Reconsideration as to Plaintiffs’
request for a declaratory judgment that they have not infringed on Defendant’s
trademark rights.

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IV. CONCLUSION
For these reasons, the Court grants in part and denies in part Defendant’s
Motion for Reconsideration [58]. The Court grants the motion as to Defendant’s
copyright infringement counterclaim, but the Court denies the motion as to Plaintiffs’
request for a declaratory judgment that they have not infringed on Defendant’s
trademark rights.
SO ORDERED AND ADJUDGED this 12th day of September, 2017.

/s/ Keith Starrett
KEITH STARRETT
UNITED STATES DISTRICT JUDGE

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