Arcona, Inc. v. Farmacy Beauty, LLC, et al, No. 2:2017cv07058 - Document 129 (C.D. Cal. 2019)
Court Description: ORDER GRANTING DEFENDANTS MOTION FOR PARTIAL SUMMARY JUDGMENT 49 by Judge Otis D. Wright, II: The Court GRANTS Defendants Motion for Summary Judgment as to Plaintiffs claim for counterfeiting. (lc)
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Arcona, Inc. v. Farmacy Beauty, LLC, et al Doc. 129 O 1 2 3 4 5 6 7 United States District Court Central District of California 8 9 10 11 Case No. 2:17-cv-07058-ODW (JPR) ARCONA, INC., Plaintiff, 12 ORDER GRANTING DEFENDANTS’ v. 13 14 FARMACY BEAUTY, LLC; DAVID C. MOTION FOR PARTIAL SUMMARY 15 CHUNG; and MARK VEEDER, JUDGMENT [49] Defendants. 16 17 18 19 I. 20 INTRODUCTION 21 Plaintiff, Arcona, Inc., brings this action against Defendants Farmacy Beauty, 22 LLC (“Farmacy”), and its officers, David C. Chung and Mark Veeder (collectively, 23 “Defendants”), for various trademark infringement claims related to Plaintiff’s “EYE 24 DEW” mark. Pending before the Court is Defendants’ Motion for Partial Summary 25 Judgment (“Motion) on Plaintiff’s counterfeiting claim. (Mot., ECF No. 49.) For the 26 following reasons, the Court GRANTS Defendants’ Motion.1 27 28 1 After considering the papers filed in connection with this Motion, the Court deemed this matter appropriate for decision without oral argument. Fed. R. Civ. P. 78(b); C.D. Cal. L.R. 7-15. Dockets.Justia.com 1 II. FACTUAL BACKGROUND 2 Plaintiff holds a registered trademark, Registration No. 4,706,079, in the United 3 States for the EYE DEW mark. (Defs.’ Statement of Uncontroverted Facts (“SUF”) 3, 4 ECF No. 49-17.) This International Class 003 trademark includes cosmetic creams for 5 skincare; cosmetic preparation for skin renewal; eye cream; non-medicated 6 stimulating lotions for the skin; skin conditioning creams for cosmetic purposes; skin 7 moisturizer; and wrinkle removing skin care preparations. (First Am. Compl. (“FAC”) 8 Ex. 1., ECF No. 34-1.) The trademark registration provides that the “mark consists of 9 standard characters without claim to any particular font, style, size, or color.” (Id.) 10 Further, the registration provides that it was filed on April 18, 2012, with a first use 11 date of January 1, 2002. (Id.) 12 Farmacy was organized in 2015 by Defendants David Chung and Mark Veeder 13 in 2015. (SUF 6.) Farmacy began selling an eye cream product entitled “EYE DEW” 14 in 2015. (Id. 8.) Farmacy stopped selling this product in September 2017. (Id. 10.) 15 The products are shown below: 16 17 18 19 20 21 22 23 24 25 26 27 28 2 Farmacy “Eye Dew” 1 2 3 4 5 6 7 8 9 10 11 Plaintiff filed its Complaint against Defendants in September 2017 and 12 subsequently amended its Complaint in April 2018. (Compl., ECF No. 1; FAC.) 13 Defendants move for partial summary judgment only as to Plaintiff’s counterfeiting 14 claim. (Mot.) 15 III. LEGAL STANDARD 16 A court “shall grant summary judgment if the movant shows that there is no 17 genuine dispute as to any material fact and the movant is entitled to judgment as a 18 matter of law.” Fed. R. Civ. P. 56(a). Courts must view the facts and draw reasonable 19 inferences in the light most favorable to the nonmoving party. Scott, 550 U.S. at 378. 20 A disputed fact is “material” where the resolution of that fact might affect the outcome 21 of the suit under the governing law, and the dispute is “genuine” where “the evidence 22 is such that a reasonable jury could return a verdict for the nonmoving party.” 23 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Conclusory or speculative 24 testimony in affidavits is insufficient to raise genuine issues of fact and defeat 25 summary judgment. Thornhill’s Publ’g Co. v. GTE Corp., 594 F.2d 730, 738 (9th 26 Cir. 1979). Moreover, though the Court may not weigh conflicting evidence or make 27 credibility determinations, there must be more than a mere scintilla of contradictory 28 3 1 evidence to survive summary judgment. Addisu v. Fred Meyer, Inc., 198 F.3d 1130, 2 1134 (9th Cir. 2000). 3 Once the moving party satisfies its burden, the nonmoving party cannot simply 4 rest on the pleadings or argue that any disagreement or “metaphysical doubt” about a 5 material issue of fact precludes summary judgment. See Celotex Corp. v. Catrett, 477 6 U.S. 317, 322–23 (1986); Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 7 U.S. 574, 586 (1986); Cal. Architectural Bldg. Prods., Inc. v. Franciscan Ceramics, 8 Inc., 818 F.2d 1466, 1468 (9th Cir. 1987). Nor will uncorroborated allegations and 9 “self-serving testimony” create a genuine issue of material fact. Villiarimo v. Aloha 10 Island Air, Inc., 281 F.3d 1054, 1061 (9th Cir. 2002). The court should grant 11 summary judgment against a party who fails to demonstrate facts sufficient to 12 establish an element essential to his case when that party will ultimately bear the 13 burden of proof at trial. See Celotex, 477 U.S. at 322. 14 Pursuant to the Local Rules, parties moving for summary judgment must file a 15 proposed “Statement of Uncontroverted Facts and Conclusions of Law” that should 16 set out “the material facts as to which the moving party contends there is no genuine 17 dispute.” C.D. Cal. L.R. 56-1. A party opposing the motion must file a “Statement of 18 Genuine Disputes” setting forth all material facts as to which it contends there exists a 19 genuine dispute. C.D. Cal. L.R. 56-2. “[T]he Court may assume that material facts as 20 claimed and adequately supported by the moving party are admitted to exist without 21 controversy except to the extent that such material facts are (a) included in the 22 ‘Statement of Genuine Disputes’ and (b) controverted by declaration or other written 23 evidence filed in opposition to the motion.” C.D. Cal. L.R. 56-3. 24 IV. DISCUSSION 25 Defendants move for partial summary judgment only on Plaintiff’s claim for 26 counterfeiting, that Defendants’ “Eye Dew” product is a counterfeit of Plaintiff’s “Eye 27 Dew” products. (See generally Mot.) 28 4 1 2 3 4 A. Counterfeiting The parties do not dispute the material facts. However, the parties disagree on the law. The Lanham Act prohibits the use of a counterfeit “mark in connection with the 5 sale, offering for sale, or distribution of goods or services.” 15 U.S.C. 6 § 1116(d)(1)(A). 7 substantially indistinguishable from, a registered mark.” 8 quotation marks omitted). Courts consider trademark counterfeiting as the “hard core 9 or first degree . . . trademark infringement that seeks to trick the consumer into 10 believing he or she is getting a genuine article, rather than a colorable imitation.” 11 Gucci America, Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 242 (S.D.N.Y. 2012) (citing 12 4 McCarthy on Trademarks § 25:10) (internal quotation marks omitted). “A counterfeit is a spurious mark which is identical with, or Id. § 1127 (internal 13 As this district recently recognized, “[t]he caselaw on what is required to plead 14 identicality in a counterfeiting claim is understandably thin, as the majority of 15 counterfeiting cases involve obviously identical marks.” Gibson Brands, Inc. v. John 16 Hornby Skewes & Co., No. CV 14-00609 DDP (SSx), 2016 WL 7479317, at *6 (C.D. 17 Cal. Dec. 29, 2016) (internal quotation marks omitted). 18 explained that a ‘counterfeit is something that purports to be something that it is not.’” 19 Id. (quoting United Pac. Ins. Co. v. Idaho First. Nat. Bank, 378 F.2d 62, 69 (9th 20 Cir. 1967)). The court in Gucci America, Inc., in reviewing the caselaw on claims for 21 counterfeiting involving products, found that “courts have uniformly applied this 22 provision to products that are stitch-for-stitch copies of those of another brand.” 868 23 F. Supp. 2d at 242; see also Idaho Potato Comm’n v. G & T Terminal Packaging, 24 Inc., 425 F.3d 708, 721 (9th Cir. 2005) (affirming award of counterfeiting where the 25 defendant purchased empty bags containing the plaintiff’s logo and repackaged its 26 own goods in those bags). “The Ninth Circuit has 27 Plaintiff takes the position that the Court should consider only Defendants’ use 28 of the phrase “EYE DEW,” and not the entire product. (Opp’n to Mot. 9, ECF No. 5 1 58.) Although Plaintiff recognizes that its trademark registration does not include the 2 font, style, size, and color, Plaintiff’s Opposition to the counterfeit claim focuses 3 exclusively on the typeface and font. (Opp’n 9–11.) The Court gives Plaintiff’s 4 position little weight, particularly when Plaintiff’s trademark registration states, “[t]he 5 mark consists of standard characters without claim to any particular font, style, size, or 6 color.” (FAC Ex. 1.) For Plaintiff to now claim that the font, style, and color of the 7 “EYE DEW” phrase are the bases for its counterfeit claim is disingenuous and 8 contrary to its trademark registration. 9 The Court recognizes that in certain circumstances, the inclusion of a house 10 mark on a product is not sufficient to defeat a counterfeiting claim. See Tiffany & Co. 11 v. Costco Wholesale Corp., 127 F. Supp. 3d 241, 254–55 (S.D.N.Y. 2015) (granting 12 summary judgment in favor of plaintiff on counterfeiting claim where the only 13 difference between the parties’ rings was a small generic mark on the inside of the 14 ring). That is not the case here. 15 Without determining the specific level of similarity between the EYE DEW 16 products, the Court concludes that no reasonable jury could find that Defendants’ 17 EYE DEW product is a counterfeit of Plaintiff’s EYE DEW products. The only 18 similarity between the two products are that they both contain the phrase “EYE 19 DEW.” However, Defendants’ EYE DEW product does not purport to be Plaintiff’s 20 products. 21 indistinguishable. Plaintiff’s products are tall and cylindrical, whereas Defendants’ 22 product is short and wide. Each product bears their respective house marks. Each 23 presents a distinct color and packaging scheme. Defendants’ product claims that it is 24 a “total eye cream with echinacea greenenvy™,” while no such claim is made with 25 Plaintiff’s products. (SUF 11, 12, 14.) Although use of a different source mark 26 indicator may not always defeat a counterfeiting claim, Plaintiff presents no evidence 27 that the Farmacy house mark on the product, the dissimilar packaging, and the product 28 itself do not nullify Plaintiff’s counterfeiting claim. See Gibson Brands, 2016 WL Visually, the products’ packaging is not identical or substantially 6 1 7479317, at *6 (granting summary judgment on a counterfeiting claim where the 2 plaintiff failed to present evidence that the defendant’s use of a brand mark nullified 3 the plaintiff’s claim). 4 The Court finds it implausible that a consumer viewing Defendants’ EYE DEW 5 product would be tricked into believing that the product is actually one of Plaintiff’s 6 EYE DEW products. Accordingly, partial summary judgment for Defendants as to 7 Plaintiff’s claim for counterfeiting is proper. V. 8 9 10 CONCLUSION For the foregoing reasons, the Court GRANTS Defendants’ Motion for Summary Judgment as to Plaintiff’s claim for counterfeiting. 11 12 IT IS SO ORDERED. 13 14 15 16 17 March 19, 2019 ____________________________________ OTIS D. WRIGHT, II UNITED STATES DISTRICT JUDGE 18 19 20 21 22 23 24 25 26 27 28 7
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