Bebe Studio, Inc. et al v. Grand Stores et al

Filing 162

ORDER granting 154 motion for summary judgment. The issue of damages is referred to Magistrate Judge for hearing, report and recommendation. Signed by Judge Carmen C. Cerezo on 7/17/09. (gsr)

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF PUERTO RICO BEBE STUDIO, INC. CHANEL, INC. COACH SERVICES, INC. GUCCI AMERICA, INC. and PRL USA HOLDINGS, INC. Plaintiffs vs GRAND STORES, CENTRO IMPORT BLING BLING, RO-MAR DRESSES, INC. BEBA'S HALLMARK SHOP, PUERTO RICO DRUGS, RECODO CARIBBEAN GIFTS, MARIA JUDITH FRANCO-KIOSKO SOW KIOSKO, SAN JUAN SOUVENIRS SHANTY, TIENDA ORLIS, OKLIS STORE TIENDA LA PRINCIPAL, TROPICAL FASHION, RELOJERIA EL OTRO AMIGO M & C FANTASIA, OUTLET DE CESAR ESPAŅOL, FANTASIA Y ALGO MAS LOLA'S, FOUR SEASONS, NICOLE ACCESSORIES SEASONS NOVELTY OUTLET MUNDO DE LAS FANTASIAS ENVOLTURA Y ALGO MAS, ANA'S EXECUTIVE, CASA FUENTES FARMACIA NUEVA ALIDAS, TIENDA EVA, M & R JEWELRY, TIMING JEW ELRY, TIENDA SARAH Y CUTE MEYNAI'S FANTASY, FANTASIA Y ALGO MAS, AROMAS, MANAR JEAN'S, MR. SNACK'S PARTY & GIFTS, CIAO, VIVIAN'S ACCESSORIES, SWATTEE, KHRISTIBEL, CHULERIAS, TANYNALY, KHALA ZAPATOS Y CARTERAS, ARLIN SASTRERIA, JOYERIA SILO, TIENDA AGNES, EGUI'S BAZAR, TIENDA GISEILY FASHION, FUN SUNGLASSES, JUNING, FLORISTERIA CREATIVA, LA CASA DE LSO PERFUMES, JAKZIEL IMPORTS, KLIBRE, EVERYBODY'S FASHION, MIKE EXCLUSIVE WEAR, and LANERY'S OUTLET STORE Defendants CIVIL 08-1478CCC

CIVIL 08-1478CCC

2

OPINION AND ORDER Before the Court are plaintiffs' two Motions for Summary Judgment on the Issue of Liability against defendants Envoltura y Algo Mas; Fantasia y Algo Mas; Farmacia Nueva a/k/a Farmacia Nueva Alidas; M&C Fantasia; Tienda La Principal and Sow Kiosko (docket entry 154)1 and defendant Arlin Sastreria (docket entry 122) (to be referred to as the "SJ defendants"). Both motions are unopposed. Th plaintiffs are well known apparel companies, each of which owns or more trademarks. They have pleaded causes against the SJ defendants from trademark infringement and false designation of origin under the Lanham Act, 15 U.S.C.§1051 et seq. Plaintiffs allege that these defendants have unlawfully engaged in the manufacture, duplication, distribution, sale, or offer for sale of counterfeit merchandise bearing exact copies or colorable duplications of their trademarks. As a result of these alleged activities, plaintiffs filed this action on April 24, 2008. All defendants in this case, except for the SJ defendants, have entered into settlement agreements with the plaintiffs or have been the subject of a default judgment. The plaintiffs attached copies of their trademark registrations to the complaint. Under federal law, a registered trademark is prima facie evidence of the registrant's exclusive right to use the mark in commerce in connection with the goods or serv ices specified in the certificate of registration. Pic Design Corp. v. Bearings Specialty Co., 436 F.2d 804, 807 (1st Cir. 1971). Plaintiffs have also provided declarations which state that counterfeit merchandise was purchased from the corresponding SJ defendants and that none of them has been authorized to manufacture, sell, distribute, or offer for sale merchandise bearing the plaintiffs' trademarks. W e ordinarily state the facts in a summary judgment context in the light most favorable

Originally filed on February 23, 2009 (docket entry 117), the motion was amended and resubmitted on July 6, 2009 (docket entry 154).

1

CIVIL 08-1478CCC

3

to the nonmoving party. See, Cordero-Soto v. Island Finance, Inc., 418 F.3d. 114, 119 (1st Cir. 2005). There are, however, no oppositions to the motions now before us. Local Civil Rule 56(e) requires that in the absence of a opposing statement of contested facts, supported by citations to supporting evidence, the movants' Statement of Uncontested Facts must be taken as true. Fontanez Nunez v. Janssen Ortho LLC, 447 F.3d. 50, 52 (1st Cir. 2006). Having considered the Statement of Uncontested Facts and the corresponding supporting evidence contained in the aggregate exhibits A and B evidence of docket entries 119 and 123, as to each defendant, the Court makes the following findings with regard to the SJ defendants' liability: Defendant Envoltura y Algo Mas is liable for the violation of plaintiff Coach's trademarks pursuant to 15 U.S.C.§1114(a). Defendant Fantasia y Algo Mas is liable for the violation of plaintiff Gucci's trademarks pursuant to 15 U.S.C.§1114(a). Defendant Farmacia Neuva a/k/a Farmacia Nueva Alidas is liable for the violation of plaintiff Gucci's trademarks pursuant to 15 U.S.C.§1114(a). Defendant M&C Fantasia is liable for the violation of plaintiff Chanel's trademarks pursuant to 15 U.S.C.§1114(a). Defendant Tienda La Principal is liable for the violation of plaintiff Coach's trademarks pursuant to 15 U.S.C.§1114(a). Defendant Sow Kiosko is liable for the violation of plaintiff Chanel's trademarks pursuant to 15 U.S.C.§1114(a). Defendant Arlin Sasteria is liable for the violation of plaintiff PLA USA Holdings, Inc.'s Polo/Ralph Lauren trademarks pursuant to 15 U.S.C.§1114(a). The issue of damages is referred to the Magistrate-Judge for a hearing and report and

CIVIL 08-1478CCC

4

recommendation. SO ORDERED. At San Juan, Puerto Rico, on July 17, 2009.

S/CARMEN CONSUELO CEREZO United States District Judge