Opinion
No. 99 Civ. 2359.
October 13, 2000.
OPINION ORDER
Plaintiffs Rolex Watch U.S.A., Inc. ("Rolex") and PRL USA Holdings, Inc. ("PRL"), move for summary judgment in this trademark infringement action. For the reasons stated below, that motion, unopposed by the defendant, is granted.
PROCEDURAL HISTORY
Plaintiffs filed this action on March 31, 1999; the original complaint was served on defendant Rufus Todd Jones ("Jones") on April 1. An amended complaint was filed on July 1, 1999 and served on July 10. On August 2, 1999, this Chambers received a letter, dated July 30, from defendant Jones, proceeding pro se, responding to each of the claims alleged in the amended complaint. On August 3, 2000, the Court ordered that this letter be filed. Although it was placed in the Court file, the letter was not docketed. Moreover, it appears that no copy of the letter was ever served on plaintiffs. Consequently, plaintiffs had no notice of defendant Jones' response.
Plaintiffs appeared for an initial pretrial conference on September 17, 1999; defendant did not appear. The same day, plaintiffs moved by Order to Show Cause for a default judgment and permanent injunction. Despite having been served with the Order to Show Cause on September 19, the defendant failed to appear at the hearing held on October 8. The Court thereafter entered a permanent injunction, and referred the matter to Magistrate Judge Maas for an inquest to determine damages.
On April 10, 2000, Magistrate Judge Maas issued a Report and Recommendation. Having discovered defendant Jones' July 30 letter, Judge Maas recommended that the Court deem this letter an answer to the amended complaint and vacate the Court's October 8 Order. By Order dated April 26, 2000, the Court vacated its Order of Permanent Injunction.
The plaintiffs and Jones appeared for a pretrial conference on May 12, 2000. At that conference, the Court set a schedule for plaintiffs' motion for summary judgment. The Court's May 15, 2000 Scheduling Order attached a Notice For Pro Se Litigants Regarding Opposition to a Summary Judgment Motion.
Plaintiffs filed their motion on June 13. By a June 26 Order, the Court extended Jones' time to oppose plaintiffs' motion until August 25, 2000. Jones did not serve, file, or submit to the Court any Opposition papers by August 25. By Order dated September 1, the Court extended Jones' time to oppose plaintiffs' motion until September 22, 2000, and gave notice to Jones that if he failed to respond by that date, the Court would decide the motion on the papers submitted by plaintiffs. As of this date, Jones still has failed to oppose plaintiffs' motion.
DISCUSSION
Summary judgment may not be granted unless the submissions of the parties taken together "show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Rule 56(c), Fed.R.Civ.P. The moving party bears the burden of demonstrating the absence of a material factual question, and in making this determination the Court must view all facts in the light most favorable to the nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986); Celotex Corp v. Catrett, 477 U.S. 317, 323 (1986). When the moving party has asserted facts showing that the nonmovant's claims cannot be sustained, the opposing party must "set forth specific facts showing that there is a genuine issue for trial," and cannot rest on the "mere allegations or denials" of his pleadings. Rule 56(e), Fed.R.Civ.P. See also Goenaga v. March of Dimes Birth Defects Found., 51 F.3d 14, 18 (2d Cir. 1995). Although any papers submitted by a pro se party must be read liberally, Burgos v. Hopkins, 14 F.3d 787, 790 (2d Cir. 1994), a pro se party's "bald assertion," completely unsupported by evidence, is insufficient to overcome a motion for summary judgment. Carey v. Crescenzi, 923 F.2d 18, 21 (2d Cir. 1991).
To establish a trademark infringement claim under either Section 32 or 43(a) of the Lanham Act, a plaintiff must show that (1) it has a valid mark entitled to protection and (2) the defendant's use of the mark is likely to cause confusion. Time Inc. v. Petersen Publishing Co., L.L.C., 173 F.3d 113, 117 (2d Cir. 1999).
Plaintiffs have submitted evidence that Rolex is the owner of several valid registered marks including "ROLEX," "DATEJUST" and "OYSTER PERPETUAL" (collectively the "Rolex marks"), and that plaintiff PRL is the owner of several valid registered marks including "POLO BY RALPH LAUREN" and the Ralph Lauren logo (the "Polo marks"). Plaintiffs also have submitted evidence that Jones operates websites through which he sells watches bearing the Rolex marks, which he holds out as replicas of Rolex watches, and short-sleeved, collared, pullover shirts bearing the Polo marks.
Because the validity of plaintiffs' marks is not at issue, the only issue is the likelihood of confusion. See Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 743 (2d Cir. 1998). To establish a trademark infringement claim under the Lanham Act, a plaintiff must prove that "numerous ordinary prudent purchasers are likely to be misled or confused" because of the defendant's mark. Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 477-78 (2d Cir. 1996) (citing Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993)). A finding of infringement must be supported by "a probability of confusion not a mere possibility." Streetwise Maps, 159 F.3d at 743. See also Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503, 1510 (2d Cir. 1997) ("[I]t is not sufficient if confusion is merely `possible'.")
Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), identifies eight non-exhaustive factors relevant to the likelihood of confusion inquiry:
the strength of [the plaintiff's] mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, . . . the . . . defendant's good faith in adopting its own mark, the quality of the defendant's product, and the sophistication of the buyers.Id. at 495. No single one of these factors is dispositive. Morningside Group Ltd., 182 F.3d 133, 139 (2d Cir. 1999). Further,
the evaluation of the Polaroid factors is not a mechanical process where the party with the greatest number of factors weighing in its favor wins. Rather, a court should focus on the ultimate question of whether consumers are likely to be confused.Paddington Corp. v. Attiki Importers Distrib. Inc., 996 F.2d 577, 584 (2d Cir. 1993) (internal citations omitted)
Based on the evidence submitted by the plaintiffs, which the defendant has not disputed, the Polaroid factors weigh overwhelmingly in favor of the plaintiffs. First, the plaintiffs have strong marks. As registered marks, they are presumed to be arbitrary or suggestive, or to have secondary meaning. See Arrow Fastener Co. Inc. v. Stanley Works, 59 F.3d 384, 393 n. 6 (2d Cir. 1995). Moreover, the plaintiffs have enhanced the strength of their marks by vigorously advertising their products and maintaining their quality.
With respect to the similarity between the two marks, the marks on the products marketed by Jones are virtually identical to the plaintiffs' marks, and Jones' products are designed to be identical to the plaintiffs' products. The plaintiffs have shown that the products are sold in the same markets, and that counterfeit Rolex products (not specifically attributed to the defendant) have caused actual confusion among consumers.
Moreover, Jones' bad faith is manifest. Jones' websites show that Jones markets his products as replicas of the plaintiffs' products. Jones undeniably "adopted [his] mark[s] with the intention of capitalizing on plaintiff[s'] reputation and goodwill and any confusion between his and the senior user[s'] product[s]." Lang v. Retirement Living Pub. Co. Inc., 949 F.2d 576, 583 (2d Cir. 1991).
The fact that Jones' websites contain a disclaimer stating that his products are replicas, and that "[by] purchasing one of these replicas, the buy [sic] agrees not to sell or represent them as genuine," is not evidence of good faith, as Jones clearly sought to capitalize on the value and renown of the plaintiffs' marks. It also does not diminish the likelihood of confusion. Likelihood of confusion does not focus solely on the party purchasing a product from the defendant; "post sale confusion as well as point-of-sale confusion [is] actionable under the Lanham Act."Nabisco Inc. v. PF Brands, Inc., 191 F.3d 208, 218 (2d Cir. 1999).
Although the plaintiffs have not submitted evidence regarding the quality of Jones' products, or the sophistication of their customers, the weight of the remaining factors is sufficient to support the entry of summary judgment against Jones. Jones has offered no evidence to establish a genuine issue of material fact for the jury with respect to his liability.
Summary judgment is also appropriate on plaintiffs' trademark dilution claims. Under the Federal Trademark Dilution Act of 1995, "[t]he owner of a famous mark shall be entitled . . . . to an injunction against another person's commercial use of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." 15 U.S.C. § 1125(c)(1). Plaintiffs claim a variety of dilution known as "`blurring', a process that may occur where the defendant uses or modifies the plaintiff's trademark to identify the defendant's goods and services, raising the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff's product." Federal Express Corporation v. Federal Espresso, Inc., 201 F.3d 168, 175 (2d Cir. 2000) (internal quotation omitted). To prevail on a dilution claim, a plaintiff must establish five elements: "(1) the senior mark must be famous; (2) it must be distinctive; (3) the junior use must be a commercial use in commerce; (4) it must begin after the senior mark has become famous; and (5) it must cause dilution of the distinctive quality of the senior mark." Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 215 (2d Cir. 1999)
For the reasons discussed above with respect to the strength of the marks, plaintiffs' marks are both famous and distinctive. Jones uses his marks in commerce. Jones' marketing his products as replicas of Rolex and Polo products shows that his use of the marks began after the plaintiffs' marks became famous — the fame of the plaintiffs' marks is the very purposes of Jones' use of those marks. Finally, considering the factors enumerated in Nabisco, many of which track the Polaroid factors discussed above, plaintiffs have shown that Jones' products dilute the distinctive quality of the plaintiffs' marks. See id. at 217-21. Accordingly, summary judgment is appropriate on plaintiffs' dilution claims.
Finally, plaintiffs seek a permanent injunction against Jones and the companies under which he does business. For injunctive relief, "plaintiffs must demonstrate a likelihood of deception or confusion on the part of the buying public caused by the false description or representation." PPX Enters. v. Audio Fidelity Enters., 818 F.2d 266, 271 (2d Cir. 1987). As discussed above, plaintiffs have made this showing.
CONCLUSION
For the reasons stated, plaintiffs' motion for summary judgment and for a permanent injunction is granted. Plaintiffs shall submit a proposed permanent injunction within two weeks of the date of this opinion.
SO ORDERED: