Roger Cleveland Golf Company Inc v. Prince et al

Filing 18

Joint Rule 26(f) Report including 26.03 interrogatories by Roger Cleveland Golf Company Inc, Prince Distribution LLC and Christopher Prince.(Smith, Janene) Modified to add filers listed on document on 10/20/2009 (asni, ).

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF SOUTH CAROLINA CHARLESTON DIVISION Roger Cleveland Golf Company, Inc., Plaintiff, vs. Christopher Prince, Sheldon Shelley and Prince Distribution, LLC. Defendants. ) ) ) ) ) ) ) ) ) ) Civil Action No. 2:09-2119-MBS

JOINT RULE 26(f) REPORT AND LOCAL RULE 26.03 RESPONSES

Pursuant to Federal Rule of Civil Procedure 26(f) and the Conference and Scheduling Order of this Court, a 26(f) conference was held between the parties on October 5, 2009 via telephone. Attending on behalf of the Plaintiff, Roger Cleveland Golf Company, Inc.

("Plaintiff"), was Attorney Janene Boyce Smith of Nelson Mullins Riley & Scarborough, L.L.P., Liberty Building, Suite 500, 151 Meeting Street, Charleston, South Carolina 29401. Appearing on behalf of Defendants, Christopher Prince and Prince Distribution, LLC ("Defendants"), was Attorney Christopher D. Lizzi of Lizzi Law Firm, PC, 2170 Ashley Phosphate Rd., Ste. 402, North Charleston, SC 29406. Defendant Sheldon Shelley has yet to make an appearance in this case. I. Joint 26(f) Report 1. Proposed Changes to Conference and Scheduling Order. The parties have

agreed to change the deadline for mediation in the Conference and Scheduling Order from May 27, 2010 to June 28, 2010, and have agreed on additional deadlines based on the Conference and Scheduling Order. A Consent Amended Scheduling Order reflecting these changes will be submitted to this Court, and the parties would respectfully request its entry. 2. Subjects of Discovery. The parties agreed to conduct discovery on the claims and

defenses raised in this case in the pleadings, as they may be amended, including but not limited to: (1) the nature of Plaintiff's rights in its trademarks and Defendants' alleged infringement thereupon; (2) Defendants' alleged sale of counterfeit copies of Plaintiff's branded golf clubs; and (3) Plaintiff's damages. 3. Electronically Stored Information ("ESI"). With respect to the production of

documents or electronically stored information as defined in Fed. R. Civ. P. 34, the parties propose the following procedures: The primary form of production will likely include searches of the computer networks under the control of Defendants and the computer hard drives of owners and employees of Defendants that are likely to contain responsive documents. The parties propose that the documents identified by such searches be produced in .tiff, .pdf, or similar image format. Metadata concerning the date of creation or alteration of the document, the author of the document, and the identity of the individual in whose file the document was located shall be produced, if reasonably available. The parties will come to an agreement regarding the production of the associated OCR text of the documents to provide for searchability in future discussions. To the extent that additional information is required in response to formal Rule 34 requests, the parties will identify the additional information to be produced and the form of production in response to such requests. 4. Claims of Privilege / Protection. Pursuant to Rule 26(f)(3)(D), the parties state

that they currently do not have any, and are not aware of any, issues relating to a claim of privilege or protection as it would pertain to trial preparation materials. However, the parties propose that disclosure of information protected by the attorney-client, work product or other applicable privilege or protection (a "privilege") in this litigation shall not constitute a waiver of any otherwise valid claim of privilege, and failure to assert a privilege in this litigation as to one

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5.

Scope of Discovery. Concerning Rule 26(f)(3)(E), the parties do not currently

request that discovery be limited or expanded beyond the provisions of the Federal Rules of Civil Procedure and Local Civil Rules. Each party reserves the right to make such request should the need arise as discovery proceeds. 6. Confidentiality. The parties recognize the case may involve production of

documents, testimony and other disclosures that contain information of a confidential nature, and the parties anticipate filing a motion with the Court for entry of an agreed protective order. The parties request that if the parties cannot agree to the content of a protective order, if and when the need arises, a party may request entry of a protective order from this Court. Such orders may affect the procedures for the taking of depositions, producing documents and disclosing of other information. II. Local Rule 26.03 Responses 1. Statement of Facts. FOR THE PLAINTIFF: Plaintiff manufactures and sells worldwide its highquality golf clubs, golf equipment and apparel. In connection with such goods, Plaintiff has continually used various federally registered trademarks, including its CLEVELAND and CLEVELAND GOLF marks (collectively, "Plaintiff's Marks"). As a result of, inter alia,

Plaintiff's intense marketing efforts and tremendous sales success, the public has come to

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recognize Plaintiff's Marks as an indicator of source for, and a symbol of the high quality of, Plaintiff's goods. Defendants operate and are the registrants of the domain names

copycatclubs.com, worldtimegolf.com, legacygolfclubs.com and myscrubs4u.com (collectively, the "Websites"), through which counterfeit and unauthorized copies of golf equipment bearing Plaintiff's Marks can be purchased. These counterfeits are not the same or of the same quality as those manufactured and sold by Plaintiff under Plaintiff's Marks. As such, consumers who purchase from the Defendants counterfeit goods bearing Plaintiff's Marks are likely to be confused and/or disappointed by obtaining counterfeit goods when they intended to purchase genuine goods from Plaintiff. In addition, the sale of counterfeit goods by Defendants is likely to cause confusion among consumers regarding Plaintiff's sponsorship or approval of Defendants and/or the counterfeit equipment Defendants offer. Moreover, Defendants have embedded

Plaintiff's federally registered CLEVELAND trademark in the metadata of the Websites in an apparent effort to divert consumers looking for Plaintiff's goods to the counterfeit goods offered by Defendants. As a result of Defendants' actions, Plaintiff is suffering a loss of the enormous goodwill Plaintiff has created in Plaintiff's Marks and is losing profits from lost sales of its genuine products. FOR THE DEFENDANTS: 2. The names of fact witnesses likely to be called by the parties and a brief summary

of their expected testimony. FOR THE PLAINTIFF: Plaintiff believes that the following individuals, other than the named parties in this case, are likely to be called to testify as to the allegations in this case:

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NAME Mr. and Mrs. Sheldon Gene Shelley, II

Mystery Shopper referenced in Plaintiff's Complaint

AREA OF KNOWLEDGE Use of PayPal account for purchases of Defendants' counterfeit goods; involvement of Defendant Shelley with Defendant Prince Sale of counterfeit goods by Defendants

ADDRESS Carolina Comfort Systems, Inc.; PO Box 4592; Florence, SC, 29502

Will be provided upon entry of a Protective Order

Plaintiff reserves it right to amend or supplement the list of potential witnesses and to depose other witnesses based on information obtained from ongoing investigations and future discovery. FOR THE DEFENDANTS: Defendants believe that the following individuals are likely to be called to testify as to the allegations in this case: Christopher Prince. Defendants reserve their right to amend or supplement the list of potential witnesses and to depose other witnesses based on information obtained from ongoing investigations and future discovery. 3. The names and subject matter of expert witnesses (if no witnesses have been

identified, the subject matter and field of expertise should be given as to experts likely to be offered). FOR THE PLAINTIFF: Plaintiff has not yet identified the names of any expert

witnesses that may testify in this case. Plaintiff may call experts to testify as to the following: the calculation of Plaintiff's damages and Defendants' illegally-obtained profits. Plaintiff shall provide additional information concerning their expert witnesses in their disclosures pursuant to Fed. R. Civ. P. 26(a)(2). FOR THE DEFENDANTS: None at this time. 4. A summary of the claims or defenses with statutory and/or case citations

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FOR THE PLAINTIFF: Plaintiff's claims are for trademark counterfeiting and infringement, unfair competition and false designation of origin, and unfair trade practices and competition under federal and state law. As to the federal claims, to state a claim for trademark infringement under 15 U.S.C. § 1114, a plaintiff must prove that it owns a valid and protectable mark, and that the defendant's use of a "reproduction, counterfeit, copy, or colorable imitation" of that mark creates a likelihood of confusion. 15 U.S.C. § 1114(1)(a); CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 267 (4th Cir. 2006). Trademark counterfeiting under the

Lanham Act occurs in cases of trademark infringement that "consist[] of intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark . . . , in connection with the sale, offering for sale, or distribution of goods or services." 15 U.S.C. § 1117(b). A counterfeit mark is defined as either (1) "a counterfeit of a mark registered on the principal register in the United States Patent and Trademark Office for such goods or services sold, offered for sale, ... whether or not the person against whom relief is sought knew such mark was so registered; or" or (2) "a spurious mark which is identical with, or substantially indistinguishable from ..." a registered mark. 15 U.S.C. §§ 1116(d)(1)(B)(i) & (ii). Similarly, to state a claim for unfair competition and false designation of origin under 15 U.S.C. § 1125, a plaintiff must show (1) that it possesses a mark; (2) that the defendant used the mark; (3) that the defendant's use of the mark occurred "in commerce"; (4) that the defendant used the mark "in connection with the sale, offering for sale, distribution, or advertising" of goods or services; and (5) that the defendant used the mark in a manner likely to confuse consumers. People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001).

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In determining whether a likelihood of confusion exists, courts in the Fourth Circuit consider the following factors: (1) the strength or distinctiveness of the mark; (2) the similarity of the two marks; (3) the similarity of the goods and services that the marks identify; (4) the similarity of the facilities that the two parties use in their businesses; (5) the similarity of the advertising the two parties use; (6) the defendant's intent; and (7) actual confusion. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). Plaintiff also alleges that Defendants have violated South Carolina state law. Defendants are liable to Plaintiff for trademark infringement under South Carolina common law for their use of marks, virtually identical marks to Plaintiff's Marks, both on counterfeit golf equipment and embedded in the metadata on Defendants' Websites. See Global Protection Corp. v. Halbersberg, 332 S.C. 149, 503 S.E.2d 483 (Ct. App. 1998). Defendants are also liable to Plaintiff for violations of the South Carolina Unfair Trade Practices Act for introducing counterfeit goods into interstate commerce which bear virtually identical marks to those used by Plaintiff and for using Plaintiff's federally registered CLEVELAND trademark in the metadata of the Websites, all with the intent of deceiving the public. See S.C. Code Ann. § 39-5-10, et seq. As a result thereof, Defendants should be permanently enjoined from continuing their unlawful conduct and should be ordered to destroy all infringing articles pursuant to 15 U.S.C. §§ 1116, 1118. Additionally, Plaintiff is entitled all Defendants' profits gained from their infringing conduct, compensatory damages, exemplary and punitive damages, pre- and postjudgment interest and reasonable attorneys' fees. See, e.g., 15 U.S.C. § 1117 (profits and compensatory damages, treble damages, costs and reasonable attorneys fees); S.C. Code Ann. § 39-5-140 (treble damages, attorneys fees, costs). Where a counterfeit mark is used, an award of reasonable attorneys' fees is mandated, unless the court finds extenuating circumstances. 15

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U.S.C. § 1117(b). Plaintiff may also choose to elect statutory damages of $2,000,000.00 per counterfeit mark per type of goods or services sold, ordered for sale, or distributed by Defendants. 15 U.S.C. § 1117(c)(2). FOR THE DEFENDANTS: None at this time. Respectfully submitted this 19th day of October, 2009.

LIZZI LAW FIRM, PC
s/Christopher D. Lizzi Christopher D. Lizzi Federal Bar No. 8040 E-Mail: [e-mail] 2170 Ashley Phosphate Rd., Ste. 402 North Charleston, SC 29406 [phone]

NELSON MULLINS RILEY & SCARBOROUGH LLP
By: s/Janene B. Smith John C. McElwaine Federal Bar No. 6710 E-Mail: [e-mail] Janene B. Smith Federal Bar No. 9960 E-Mail: [e-mail] 151 Meeting Street / Sixth Floor Post Office Box 1806 (29402-1806) Charleston, SC 29401-2239 [phone] Admitted Pro Hac Vice Christopher S. Finnerty Massachusetts Bar No. 65732 E-mail: [e-mail] Morgan T. Nickerson Massachusetts Bar No. 667290 E-mail: [e-mail] One Boston Place, 40th Floor Boston, MA 02108 [phone] Attorneys for Plaintiff Roger Cleveland Golf Company, Inc.

By:

Attorneys for Defendants Christopher Prince and Prince Distribution, LLC

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