Swarovski Aktiengesellschaft et al v. Building #19, Inc.

Filing 36

MEMORANDUM AND ORDER denying 31 Motion to Clarify 23 Order on Motion for Preliminary Injunction: Because the case is now proceeding on the merits, and in the absence of any other pending motions, the Court is of the opinion that Swarovski' s motion for clarification is moot and that its arguments need not be considered at this time. Should either party engage in conduct that would necessitate a revisiting of the issues prior to a final determination of the case, the other party is free to file an appropriate motion for relief. So Ordered by Chief Judge Mary M. Lisi on 3/12/2013. (Duhamel, John)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND
SWAROVSKI AKTIENGESELLSCHAFT and
SWAROVSKI NORTH AMERICA LIMITED,
Plaintiffs,
v.

C.A. No. 11-627-ML

BUILDING #19, INC.,
Defendant.

MEMORANDUM AND ORDER
MARY M. LISI, Chief District Judge.
The plaintiffs in this trademark infringement case1, Swarovski
Aktiengesellschaft and Swarovski North America Limited (together,
“Swarovski”), seek to enjoin the defendant, Building #19, Inc.
(“Building # 19) from using the Swarovski name or mark in its
advertising for sales of Swarovski products. The matter is before
the Court on Swarovski’s motion for clarification of the Court’s
decision to grant, in part, Swarovski’s motion for preliminary
injunction.

1

The factual background and procedural history of the case thus
far
have
been
set
forth
in
some
detail
in
Swarovski
Aktiengesellschaft v. Building # 19, Inc., 704 F.3d 44 (1st Cir.
2013).
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I.

Facts and Procedural History
Swarovski

manufactures

crystal

jewelry

and

collectibles;

Building #19 is an off-price retail store. After Building # 19
bought a large number of Swarovski crystal products from a salvage
company, it sold the products during two special sales events.
Following those events, Swarovski sent a “cease and desist” letter
to Building # 19 and filed a complaint in this Court (Docket # 1).
In response, Building # 19 agreed to refrain from advertising or
selling the remaining Swarovski products.
In April 2012, while the case against it was pending, Building
# 19 informed Swarovski that it intended to advertise and sell the
remaining Swarovski products in time for Mother’s day on May 13,
2012. Swarovski promptly filed a motion for preliminary injunction
(Docket # 14). On May 1, 2012, this Court conducted an evidentiary
hearing on the motion. Mindful of the urgency of Swarovski’s
motion, the Court issued an oral decision and granted Swarovski’s
motion only in part. The Court instructed Building # 19 that the
name “Swarovski” at the top of its planned advertisement could be
no larger than the font used for the name in the disclaimer at the
bottom. (Docket # 23). Although neither party objected to the
Court’s decision at the hearing, Building # 19 filed a notice of
appeal on May 21, 2012. (Docket # 25).
On January 9, 2013, the First Circuit reversed the preliminary
injunction against Building # 19 and remanded the case to this

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Court for further proceedings. Swarovski Aktiengesellschaft v.
Building # 19, Inc., 704 F.3d at 55. On January 24, 2013, Swarovski
filed a motion for clarification (Docket # 31) of the Court’s May
1, 2012 decision. On February 6, 2013, the Court conducted a
conference with the parties, in the course of which the Court set
discovery deadlines for a determination of the case on its merits.
(Docket # 33). Following the conference, Building # 19 filed a
memorandum in opposition (Docket # 34) to Swarovksi’s motion, to
which Swarovski filed a reply. (Docket # 35).
II.

The Parties’ Positions

Swarovski requests that the Court (1) “make explicit” its
“previously implicit finding” that Building # 19's use of the
Swarovski

name

Swarovski

has

is

likely

presented

to

cause

confusion;

sufficient

(2)

evidence

to

find

that

establish

“irreparable harm;” and (3) reinstate the preliminary injunction it
had previously issued. Pltfs.’ Mot. at 4-5. Swarovski also suggests
that the evidence presented to this Court in the May 1, 2012
evidentiary hearing provided sufficient grounds for the Court’s
findings. Id. at 5.
Building # 19, in opposing Swarovski’s motion, suggests that
“[i]t

is

neither

appropriate

nor

necessary

to

revisit

the

preliminary injunction evidence and findings of this Court.” In
particular, Building # 19 asserts that “the First Circuit has
confirmed that Swarovski did not prove its case at the preliminary

3

injunction stage,” Def.’s Mem. at 1, and that “this Court made
express findings that likely confusion ... was not established.”
Id.

Building # 19 also points out that the case is “proceed[ing]

towards resolution by dispositive motion or trial.” Id. at 2.
III. Discussion
On May 1, 2012, when the Court conducted an evidentiary
hearing, Swarovski’s motion for preliminary injunction was intended
to

preclude

Building

#

19

from

using

Swarovski’s

name

in

advertisements for an upcoming sale only days away. To afford the
parties a temporary resolution to a dispute that had suddenly
become urgent, the Court proceeded in an expedited manner and
issued

an

oral

decision

instead

of

taking

the

matter

under

advisement. The appeal was taken while Swarovski’s request for
permanent injunction was still pending.
At this time, the parties are proceeding with the case in
order to resolve the case on the merits. Swarovski’s motion for
preliminary injunction in connection with the 2012 Mother’s Day
sale was terminated after the Court issued its oral decision. No
other motion for preliminary injunction is currently pending; nor
have the parties indicated that a situation has arisen that would
require this Court to revisit its earlier decision at this time. By
all accounts, Building # 19 continues to be in possession of the
remaining Swarovski products, but a sale and/or advertising of
those products is not currently imminent.

4

Because the case is now proceeding on the merits, and in the
absence of any other pending motions, the Court is of the opinion
that Swarovski’s motion for clarification is moot and that its
arguments need not be considered at this time. Should either party
engage in conduct that would necessitate a revisiting of the issues
prior to a final determination of the case, the other party is free
to file an appropriate motion for relief.
Conclusion
For the reasons stated herein, the Plaintiffs’ motion for
clarification is DENIED.

SO ORDERED.
/s/ Mary M. Lisi
Mary M. Lisi
Chief United States District Judge
March 12, 2013

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