Gucci America, Inc. v. Frontline Processing Corporation et al

Filing 56

RULE 56.1 STATEMENT. Document filed by Woodforest National Bank, Durango Merchant Services LLC. (Mentlik, William)

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Gucci America, Inc. v. Frontline Processing Corporation et al Doc. 56 Document Filed Electronically UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK GUCCI AMERICA, INC. Plaintiff, v. FRONTLINE PROCESSING CORPORATION; WOODFOREST NATIONAL BANK; DURANGO MERCHANT SERVICES LLC d/b/a NATIONAL BANKCARD SYSTEMS OF DURANGO; ABC COMPANIES; and JOHN DOES, Defendants. : : : : : : : : : : : : : : x Civil Action No. 09-6925-HB District Judge Harold Baer, Jr. LOCAL RULE 56.1 STATEMENT OF MATERIAL FACTS FOR WHICH THERE IS NO GENUINE ISSUE TO BE TRIED IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT ON STATUTORY DAMAGES CLAIM Defendants Woodforest National Bank ("WNB") and Durango Merchant Services LLC ("Durango") submit that the following material facts as to which there is no genuine issue to be tried support summary judgment as a matter of law that statutory damages under 15 U.S.C. 1117(c) cannot be obtained against defendants: 1. Plaintiff Gucci America, Inc. ("Gucci") has asserted claims against defendants Woodforest, Durango, and Frontline Processing Corporation ("Frontline") for direct trademark infringement, vicarious liability, and contributory trademark infringement. (Compl. (Dkt.1).) 2. Among the damages remedies sought, Gucci has requested statutory damages under 15 U.S.C. 1117(c). (Id. at 36.) 1211210_1.doc 3. In discovery, Gucci calculated its statutory damages under 1117(c) to total the sum of $176 million. (Kennedy Decl. Exh. 1, Gucci Ans. to Interrog. No. 1.) 4. In its Opinion & Order of June 23, 2010, the Court dismissed Gucci's claims for direct trademark infringement on the ground that the defendants, unlike the Laurette Company, had not used infringing or counterfeit marks in commerce: Direct liability for trademark infringement requires a valid mark entitled to protection under the Lanham Act, and that the defendant used the mark in commerce in connection with the sale or advertising of goods or services, without the plaintiff's consent. 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400, 406-07 (2d Cir. 2005) (internal quotations and citations omitted). In addition, Plaintiff must show that the Defendant's use of the mark is likely to cause confusion. Id. The problem for Gucci is that there is no indication that any of the defendants actually "used that mark in commerce." Knowledge alone of another party's sale of counterfeit or infringing items is insufficient to support direct liability, see eBay, 600 F.3d at 03, and there are otherwise no factual allegations that Durango, Woodforest, or Frontline themselves advertised or sold infringing goods. (Dkt.42, at 15 (emphasis added).) 5. The Court also dismissed Gucci's claims for vicarious liability against the defendants. (Id. at 15-16.) 6. The Court held that Gucci's only plausible theory of liability against any of the defendants was its claim for contributory trademark infringement. As to defendant Durango, the Court dismissed all claims except for the claim that Durango had intentionally induced trademark infringement. (Id. at 17-18.) As to the defendant Woodforest, the Court dismissed all 1211210_1.doc 2 claims except for the claim of contributory infringement that Woodforest "supplied services with knowledge or by willfully shutting its eyes to the infringing conduct, while it had sufficient control over the instrumentality used to infringe." (Id. at 18.) Respectfully submitted, LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP 600 South Avenue West Westfield, NJ 07090 Attorneys for Defendant Woodforest National Bank Dated: July 7, 2010 By: s/ William L. Mentlik William L. Mentlik Charles P. Kennedy Gregg A. Paradise Tel: 908.654.5000 Law Offices of Todd Wengrovsky, PLLC. 285 Southfield Road, Box 585 Calverton, NY 11933 Attorneys for Defendant Durango Merchant Services LLC d/b/a National Bankcard Systems of Durango By s/ Todd Wengrovsky Todd Wengrovsky (TW 4823) Tel: 631.727.3400 1211210_1.doc 3

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