Dunkin Donuts Franchised Restaurants LLC et al v. KEV Enterprises, Inc. et al, No. 8:2009cv00131 - Document 40 (M.D. Fla. 2009)
Court Description: ORDER granting 27 Motion for preliminary injunction; denying without prejudice 6 Motion for preliminary injunction. Signed by Judge Elizabeth A. Kovachevich on 6/5/2009. (JM)
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Dunkin Donuts Franchised Restaurants LLC et al v. KEV Enterprises, Inc. et al UNITED STATES MIDDLE DUNKIN' DONUTS DISTRICT COURT DISTRICT OF FLORIDA TAMPA RESTAURANTS Doc. 40 DIVISION FRANCHISED LLC, et al., Plaintiffs, v. KEV et CASE NO. ENTERPRISES, 8:09-CV-131-T-17MAP INC., al., Defendants. ORDER This cause Dkt. 6 Motion Dkt. 14 Opposition Dkt. Dkt. Dkt. 15 16 30 Declaration - Declaration Reply - Dkt. 27 Motion Dkt. 33 Opposition Dkt. Dkt. 34 38 Reply Dkt. 39 Notice The the before the Court for II for Preliminary - - - Count Breach of Count V injunctive Trade order Dress I Furash - (Dkt. Breach of 29) 4) Count IV - Infringement. as of Termination, of a and 3) Count Plaintiffs the effective in case includes III the favor of and seek an termination date 2) - Unfair Competition; enforcing judgment in this Franchise Agreements; Franchise Agreements; ratifying Franchise Agreements Injunction Exhibits Trademark Infringement; Notices Patel Furash First Amended Complaint 1) on: Preliminary Injunction Declaration following: Count is of contained in Plaintiff the the for Dockets.Justia.com Case No. damages 8:09-CV-131-T-17MAP incurred by them as Franchise Agreements; those acting Plaintiffs' in an concert result injunction with trademarks, otherwise engaging a of enjoining them from trade dress the breaches of the Defendants infringing and trade upon names, in unfair competition with and and from Plaintiffs, injunctive order directing Defendants termination obligations provided in the Franchise Agreements, Defendants for the an award of damages by Plaintiffs of their actions of the with and appropriate 35 against the profits and Lanham Act, Section as treble an of award the because Defendants damages in the willful, conduct, and the and costs pursuant contract and Plaintiffs Motions 6), for Dunkin' Preliminary Plaintiffs move former because, Agreements efforts Furash shops. course argue Defendant to manage has moved address that, Mary also out of have state also certain despite the the 6-4) ice of the has shops, in failed to notices take a the filed two against their to and Mary Franchise Defendants and other offer any Defendants' ice sole to devote her best Defendant abandoned required standards. for fees (Dkt. the that and effectively accordance Motion requiring failed 3,5 Lanham Act. Inc. in that Section have first failed contend result attorney's cream products have operational receiving of 35 a and malicious injunction 6-3, Furash, and operate Defendants to Dkts. Defendants Plaintiffs as provisions supply of products, sale. shareholder, A-2, damages KEV Enterprises, explicit sufficient Baskin-Robbins cream for A-l, In preliminary Defendants despite (Exhs. to maintain a a in and Baskin-Robbins Injunction. for franchisees, Furash, Donuts Section with interest award sustained derived as intentional Defendants' their post- damages accordance punitive nature of to have of prejudgment Lanham Act, of to comply with an Mary the training Plaintiffs above defaults, Case No. 8:09-CV-131-T-17MAP Defendants have not timely cured the defaults the Franchise Agreements. Plaintiffs have notices on Defendants Defendants, but shops and hold themselves Plaintiffs seek a out as In the Plaintiffs served termination continue to operate franchisees preliminary injunction from continuing the unauthorized use of trade name, in accordance with of the Plaintiff. to prohibit Plaintiffs' Defendants trademarks, and trade dress. second Motion for Preliminary Injunction seek a preliminary injunction because (Dkt. 27), Defendants have not paid required franchise fees and advertising fees to Plaintiffs pursuant contend that, to the Franchise Agreements. despite receiving written notice and an opportunity to cure the defaults, and continue to use Defendants Plaintiffs' have not paid the proprietary marks license to do so. Plaintiffs enjoin infringing activities, Defendants' seek immediate to bar Plaintiffs' marks and I. in violation of the Lanham Act, comply with their post-termination to required fees, without a injunctive relief to their continued unlicensed use of the to Plaintiffs Defendants from proprietary require Defendants obligations. Standard of Review To be entitled to a preliminary injunction, demonstrate that: 1) on the merits; that 2) it has a it will suffer likelihood of success irreparable the injunction issues; 3) that the injunctions's issuance would have on the and 4) if issued, interest. This the substantial injury to a plaintiff must injury unless it outweighs any injury opposing party, the injunction will not disserve the public That and The Other Gift And Tobacco, Inc. v. Cobb Case No. County. II. 8:09-CV-131-T-17MAP 285 F.3d 1319, Statement 1. of Dunkin' in the business businesspersons (11th Cir. 2002). Facts Plaintiff engaged 1321-1322 to Donuts of Franchisee! Restaurants franchising operate Dunkin' LLC is independent Donuts shops in the United States. 2. names, Dunkin' service marks, operate under production, products the equipment service to sue identify 5. and layouts, Donuts Plaintiff predecessors coffee, Donuts system, sale of of use Dunkin' which the Donuts involves doughnuts and interior and products, is a exterior management and trade and to the related special accessories, programs, standards, information. franchisor of the Dunkin' Donuts system. related marks. to licensed to trademarks proprietary marks, Dunkin' trademark, others the are specifically designed building with schemes, specifications, franchise and merchandising, identification 3. franchisees Dunkin' utilizing a equipment, 4. Donuts DD IP Holder LLC mark, and trade Dunkin' Donuts these marks has its used registrations name has a and trade shops and other products DD the license name Each of these registrations and is in the Donuts," use and those numerous and force and license its approximately doughnuts, Donuts, full of and along with with LLC owns Dunkin' to since the associated IP Holder for the mark , owner "Dunkin' them continuously doughnut Plaintiff is 1960 pastries, shops. federal related marks. and effect, and is Case No. 8:09-CV-131-T-17MAP incontestable, 6. The promoted by pursuant Dunkin' Donuts. franchisees advertising and promoting Dunkin' 15 Donuts U.S.C. Sec. 1065. Donuts marks have been widely advertised and Dunkin' Donuts and its to marks Between spent the 1971 over Dunkin' have become and 2007, Dunkin' $1,925,000,000 on Donuts As famous marks. throughout a result, the United States. 7. Dunkin' Donuts and its approximately 5,600 shops the United States. Dunkin' distinctive scheme, Donuts and the shops 8. items to trade As of identified by the know the United States, Donuts shops and recognize the sales, Dunkin' the known and its franchisees. trademarks, Donuts, goodwill 9. and are The assets favorable The goodwill Donuts marks are Since marks, Dunkin' of Donuts color 1960, Dunkin' and promotion the Donuts marks, representing and embodying and and orange advertising them exclusively with products and services Donuts Dunkin' outside consumers. Donuts Dunkin' and 2,000 feature lettering style. served millions of result currently operate including the pink frankfurter have a dress, in franchisees public and has offered by Dunkin' Donuts marks are widely inestimable value to Dunkin' reputation impaired when a Donuts Dunkin' considerable associated with franchisee fails Dunkin' to maintain standards. 10. engaged Plaintiff in the Baskin-Robbins business of come to associate reputation. and of Franchised franchising Shops independent LLC is Case No. 8:09-CV-131-T-17MAP businesspersons United to operate stores throughout the States. 11. Baskin-Robbins trade names, to operate products franchisees service marks, under production, the merchandising, utilizing management programs, and 12. and special are licensed and trademarks Baskin-Robbins and exterior accessories, marks, Baskin-Robbins of equipment, ice standards, which the involves cream and equipment identification use of Baskin-Robbins system, sale to specifications, the related layouts, schemes, and interior products, proprietary information. Baskin-Robbins is a franchisor of the Baskin-Robbins System. 13. Plaintiff trademark, service mark, related marks. others to use predecessors to 14. these and has IP The ice name has a those Holder LLC expended many millions of owner to names since the use and and and license along with approximately ice its 1950 cream and other numerous and federal marks over have the dollars in been widely years. advertised Baskin-Robbins advertising the Baskin-Robbins marks over the a the Baskin-Robbins have become marks registrations related marks. promoting result, the "Baskin-Robbins" license and of stores. owns Baskin-Robbins the and trade cream stores, and promoted by Baskin-Robbins has is used them continuously for the mark "Baskin-Robbins" 15. LLC trade trademarks associated with BR Holder Baskin-Robbins identify its products BR IP past and fifty famous years. As throughout Case No. the 8:09-CV-131-T-17MAP United 16. States. Baskin-Robbins approximately the United millions items to stores States. of 17. 2,500 Since a result of identified by the recognize known and 18. Robbins with 20. The sales, 3,000 shops advertising marks, Baskin-Robbins and have outside served and promotion the marks, services public has and to offered assets of inestimable of come associate by Baskin- The Baskin-Robbins marks and embodying goodwill trademarks and value Baskin-Robbins' standards Franchised Shop which permit are are widely to Baskin- goodwill LLC joint were for combination Bradenton, February 23, 2005. are impaired when and operate and and their shops as separate LLC a Baskin- franchisee in compliance of units referred as "combo" to Donuts doughnut and Bradenton, Baskin- in shops. Baskin-Robbins ice cream to but selected and Florida, pursuant and corporations, development Florida, the system requirements. operate Dunkin' at 5605 Manatee Avenue West, Street West, associated with Franchised Restaurants commonly Defendants names standards Donuts or reputation and trade Dunkin' franchisees dated and reputation. they pursue markets, operate Baskin-Robbins Baskin-Robbins and are Baskin-Robbins' Robbins the franchisees. to maintain 19. franchisees the United States products representing favorable fails its trademarks, Robbins, in 1950, the them exclusively with Robbins its consumers. As know and and shops and 5635 located 14ch Franchise Agreements Case No. 8:09-CV-131-T-17MAP 21. agreed Under the Defendants terms of would use the Dunkin' proprietary marks, including, trademarks, emblems, origin, logos, "only in licensed" by the 22. Franchise Agreements, but not trade the manner and dress to with the standards order to increase agreed of to Dunkin' the demand Donuts and enhance the reputation promote and protect the value to successfully develop, enhance the Agreement goodwill and 23. the Par. Defendants (2) agreed to manage one partner, shareholder 24. Defendants sufficient supply of FRANCHISEE'S 25. of Defendants in established by the the the shops Baskin of the whole." "at all FRANCHISEE..." agreed to "maintain approved products at the agreed best at all to meet times the 5.1.4) "carry out the business (Par. 5.1.1). 5.1.8). a demand of (Par. accordance with the operational two or a (Par. Unit." FRANCHISOR..." efforts least FRANCHISEE, at to and other requires with or of FRANCHISOR, 5). be member the to authorized by this (Par. times "in [shops]...and to Franchise Agreements shops accordance products, Proprietary Marks a in continuous and operate or 7.1). Proprietary Marks "to devote as indicia Robbins, of whom must customers this Agreement the their 7.0, and goodwill of the manage System(s) 5.1.8 individuals, of and to, specifically (Pars. the Baskin-Robbins' other FRANCHISOR'S protect Defendants and the extent operate for and limited Franchise Agreements. Defendants reasons." Donuts Defendants covered by Standards Case No. 8:09-CV-131-T-17MAP 26. Defendants representative, Baskin-Robbins (Par. agreed that would "shall attend Defendants, such from time training to time as their designated Dunkin' reasonably Donuts and require." 5.1.8.2). 27. Defendants agreed directly or indirectly, systems. 28. (Par. The provision, that any act goodwill associated with they would injurious Plaintiffs' which by reason of 29. states 30. that FRANCHISEE'S Defendants systems irreparable the harm to constitute willful 31. In March, designated to managing Plaintiffs Defendants, default agreed that their to the shall "cross default" be franchise in to use Dunkin' the proprietary of following the effective date of the would result Plaintiffs Mary was not On March Defendants cure their in and would 9.4.3). learned that Furash, shops. (Par. Defendants' devoting 17, Notice of Default and Notice that use Donuts and Baskin-Robbins the 9.0.4). 9.4.1,9.4.2,9.4.3). any unauthorized trademark infringement. 2008, (Par. Plaintiff's between terminated termination of 9.4, Franchise Agreements and operating asking the (Pars. agreed that representative, served a upon default agreement thereunder...." rights proprietary marks termination of or prejudicial contain a "Franchisee would cease. Defendants Plaintiffs' or perform, FRANCHISOR or any affiliated entity is Franchise Agreements, and do 8.0.1). Franchise Agreement each FRANCHISEE and not proprietary marks and their under this Agreement...[i]f any other marks or her 2008, to Cure default on within time Case No. 8:09-CV-131-T-17MAP thirty days of receipt, Defendants did not Plaintiffs served 32. After an cure certain inspection, the training the to take operational of course. (Dkt. 34. On sufficient 2008, On of Termination. learned that (Dkts. Defendants 6-11, 6-12). Jon C. Jones training course designed to Defendants On December sale to January did not and to January learned 6-11). January 26, served to Cure, Defendants 13, 2009, take the Defendants with requiring did not Plaintiffs of Termination 10, ice 2008, for take the served failure to cure this that Defendants 2009, (Dkt. and other 6-11). Defendants with a requesting (Dkt. 2009, On 15, Defendants cure the 6-2). did not served 10 Baskin-Robbins December inspected cure the had no ice cream at all Plaintiffs Defendants' Supplemental Notice of that Plaintiffs Defendants inspected did not maintain a cream products Cure, 14, Plaintiffs Defendants customers. served and Notice On Plaintiffs the Notice. supply of for 35. (Dkt. 2008, required training course within thirty defaults within thirty days. shops, 29, 6-2). Plaintiffs Default a 2008, which revealed that products Notice Default/Notice Defendants with a Notice shops, October standards defaults. 11, to take the receipt default. Franchise Agreements. Operations Compliance Manager On November Defendants training a On Plaintiffs operating a Supplemental Notice of of with the course. 33. days default. 2008, instructed Defendants address required by Defendants In October, did not meet as Defendants Defendants' defaults. in the stores. with a Case No. 8:09-CV-131-T-17MAP Supplemental Notice of Termination, terminating Franchise Agreements immediately upon Supplemental stating Notice, demanding that Plaintiffs obligations set 36. of as The terms franchise Dkt. 6-4). fees In a written financial notice Upon Defendants the in of for termination, and Franchise Agreements. Franchise Agreements fees by Defendants a do default and include payment Defendants not timely manner, pay the Defendant seven of the (7) days (Dkt. 6-3, franchise are to fees entitled cure the Franchise Agreements, their right to use systems would cease and that after subject the termination agreed and marks' fees of the comply with post-termination in event receipt default. 37. marks of the grounds and advertising the and advertising to forth their Defendants' to termination would injunctive Plaintiffs' any constitute relief. (Dkts. use proprietary of Plaintiffs' irreparable 6-3, 6-4, Pars. harm 7.1,9.4, 9.4.1,9.4.2,9.4.3). 38. fees due Defendants for both Plaintiffs and other have shops. $20,917.29 charges for As in paid of January unpaid the franchise Manatee fees, advertising fees and other charges shop. (Dkt. fees 2009, fees, in Defendants advertising shop. $13,033.57 and advertising As of unpaid for the owed fees January 15, franchise 14th Street 27-2). On Defendants Defendants Plaintiffs Avenue Defendants on 15, franchise 2009, 39. owed not January for fifteen the 15, 2009, Plaintiffs financial defaults. (15) days to cure 11 served Notices to Cure Plaintiffs provided the defaults. (Dkt. 27-7). Case No. 8:09-CV-131-T-17MAP 40. fifteen Defendants (15) 41. charges fees, shop. of March in unpaid for 12, the Manatee Defendants Supplemental 12, Notice on Defendants fees, still owed Plaintiffs advertising fees and other unpaid franchise and $6,651.76 further monies Plaintiffs in for the 14th Street for both sent the of Defendants cease using marks receipt Plaintiffs' of the post-termination fees, Notice, obligations the a Franchise demanding that trade names Supplemental shops. Defendants terminating non-payment defaults with the to Cure. of Termination, based Defendants' financial and other charges 2009, Agreements upon shop, now owe On March 2009, franchise advertising fees, 42. the days provided in the Notice As $11,560.20 did not cure under and proprietary and comply with the Franchise Agreements. 43. continue Defendants to operate and Baskin-Robbins IV. have as if refused to accept Defendants were Dunkin' Donuts Discussion remedy which establishes is the not to (11th Cir. 1306 injunction be ^burden the...prerequisites. must licensed franchisees. A preliminary injunction 1301, termination and an extraordinary and drastic granted unless of See is persuasion' Sieael v. is clearly the carry 1998). exception the as to LePore. 2000)(citing McDonald's Corp. (11th Cir. the movant v. each 234 clearly of F.3d Robertson. 1163, 147 1176 F.3d The grant of a preliminary rather burden than the of persuasion. 12 rule, Id. and plaintiff at 1180. Case No. 8:09-CV-131-T-17MAP Where disputed an injunction facts...an decide credibility supra, at dispute, 1311. issues. facts injunction evidentiary hearing. A. Likelihood of Plaintiffs the merits of infringement competition As the to of argue also is a of and that are courts normally required to Corp. v. facts Robertson, are not not material generally in to the need not hold an 1313. Plaintiffs breach of are likely to succeed on contract claim, trademark infringement claim, and contract and Plaintiffs succeed on that each Plaintiffs Defendants have that breach provides the which, the that Defendants unfair Plaintiffs' on their defaults. separate and Franchise Agreements. to pay not the timely financial cured, Franchise Agreements have argue if that received written cured a argue allows for Franchise Agreements. the obligations further failure have not to terminate Defendants' argue succeed claim, Defendants default, post-termination likely to that termination of terminated, at shows argue Plaintiffs to sought, trade dress clearly independent basis immediate dispute of bitterly claim. argue obligations is McDonald's in Plaintiffs' defaults, Defendants resolution where material .Id. the breach Defendants the Success claim, evidence notice on evidentiary hearing However, or where preliminary turns refused under comply with properly their those Agreements. that, because termination trademark 13 to were Plaintiffs claims, are Plaintiffs infringement claims. likely are also Case No. 8:09-CV-131-T-17MAP Plaintiffs also their unfair argue that competition Plaintiffs are claim and trade likely to dress succeed on infringement claim. Defendants respond Franchise Agreements manufactured that of to argue on that the alleged breaches have either been waived by effectuate Plaintiffs success that have not termination. demonstrated the merits Defendants the of continue to franchisees Defendants substantial harm, to operate argue that likelihood and therefore continue of the Plaintiffs success Motion Plaintiffs, Defendants claims. the the operate have argue likelihood under a right of post-termination. not demonstrated the on the merits for or Defendants Stores recognizes to the substantial the Lanham Act framework created by Plaintiff that terminated the of Preliminary or irreparable Injunction must be denied. 1. the Controlling law The Court notes resolution governed by regard to To of the establish a v. PB and 3) the Franchise Agreements disputes between the of 2) contract Diagnostic 1) defendant plaintiff Svs.. the parties Commonwealth law principles. show that: agreement; contract, Coll of of breach a plaintiff must binding all law choice that (Dkt. 6-3, claim under the parties breached F.3d 14 shall be of Massachusetts 1115, 6-4,Par. the without 11.3). Massachusetts reached a suffered damages 50 provide that terms from 1122 of the (1st law, valid and the breach. Cir. 1995). Case No. 2. a) 8:09-CV-131-T-17MAP Contract issues Authenticity of Defendants Plaintiffs' Defendants are that not the of Stanley identify terms, fee, Furash as the attached from different true to Franchise Agreements. (Diet. including date, address contracts the true have attached pages Defendants start-up contend Motion Declaration "blank" Contracts 16-2) . contracts The contracts Franchise Agreements initial for notice to to the franchise Franchisee, contain many fee, and marketing Designated Representative. In looking at line unmistakably Furash, which is does Donuts not signature of contains the crossed out, representative of Dunkin' the the include a signature After consideration, rather The terms and Plaintiffs' the to included, authorized authenticity of Plaintiffs' genuine challenge The Court Dunkin' Donuts of finds are for that Jack that not the Agreements Preliminary the complete signature USA Co. the are of Mary a and which Injunction, 15 in that key signed by Defendants' challenge are is to attached not a an evidentiary hearing. Franchise Agreements Associate Restaurants "Franchise not which are accompanied by Loudermilk, Franchised Franchisee, contracts, Franchise Agreements, Plaintiffs, certification the signature "Franchise Agreement" requiring resolution at concludes proffered by second representative. the Motion than the Baskin-Robbins the Court Defendants not of the page. Agreements" provided by are Franchisor, signature Franchisor, Incorporated. the LLC the General and Counsel Baskin-Robbins for Case No. 8:09-CV-131-T-17MAP Franchised Shops LLC, 2), Franchise b) are the Failure true to Section payments Pay 4 due the from and Opposition the (Dkt. at Defendants. addresses Franchise Agreements, "Since records (Dkt. 6- Agreements. Franchise Agreements Plaintiff Franchise Agreements Defendants' franchise Fees of to and custodian of default 33, p. 9 of termination to 2), details Section and procedure issue cure the the of the defaults. In Defendants state that: January 2008, Defendants have not their franchise and advertising timely paid fees in the manner provided in the Franchise Agreements." On January 19, 2009, Cure the payment the defaults Defendants defaults, (Dkts. did not Supplemental Plaintiffs 27-8, cure Notice of served giving 27-9). the Defendants It is defaults. Termination Defendants with Notices fifteen days on March 12, served a 2009 (Dkt. 10) . In Par. 9.4, 9.4 the following may, or Franchise Agreements Termination. any default in this in notice or effective to as Agreement, Agreement. FRANCHISEE other otherwise termination this Agreement set of shall receipt of law in this a from the immediately 16 at forth be termination cure FRANCHISOR remedies shall Notwithstanding to period FRANCHISOR, all immediately upon notice fails immediately terminate Such FRANCHISOR. provide: the applicable from addition equity written If within to cure undisputed that Plaintiffs foregoing, terminate to 27- Case No. 8:09-CV-131-T-17MAP upon the occurrence of any event set forth in paragraphs 9.0.1 through 9.0.4 or paragraph 9.1.4, without notice of opportunity to cure or notice of termination. Upon any termination or expiration of this Agreement all right of FRANCHISEE to use the Proprietary Marks and the System(s) and to operate the Unit under the Proprietary Marks shall terminate.... Defendants respond that Plaintiffs have waived their right to terminate the Franchise Agreements based on the alleged failure to pay franchise The Court notes 13.0 and advertising that the Non-Waiver. fees. Franchise Agreements Any failure of provide: FRANCHISOR to exercise any power reserved to it hereunder, or to insist upon strict compliance by FRANCHISEE, with any term, covenant, or condition in this Agreement, and any waiver by a term, FRANCHISOR of any breach covenant or condition deemed to be a or condition waiver of or any this Agreement. FRANCHISOR of hereunder, deemed to a Subsequent or due in part, waiver by not term, of be covenant breach of the or condition covenant the payments in whole be such subsequent same or any other term, in shall acceptance to by it shall FRANCHISOR of not be any preceding breach by FRANCHISEE of any term, covenant or condition of this Agreement. FRANCHISOR may, in its sole discretion, waive or modify any obligation of other franchisees under agreements similar to this Agreement, and no such waiver or modification shall obligate FRANCHISOR to grant a similar waiver or modification to FRANCHISEE. Acceptance FRANCHISOR of payments due under this Agreement from any other person or entity shall be deemed to be acceptance from such person or entity as an agent of FRANCHISEE 17 by Case No. 8:09-CV-131-T-17MAP and not as entity as recognition an of assignee of such or person or successor to FRANCHISEE. The Court Defendants further that the to cure weekly financial bounced checks Plaintiffs' 39) . notes specifically state rights The Notices relating various defaults that notice for nonpayment Plaintiffs to any prior Notice of Termination also letters include do of not to or waive default (Dkt. an anti-waiver and anti-acquiescence provision. "Under Massachusetts upon the party who makes waiver, the party must conduct indicating contractual Carvel Corp., 929 the show the provision law, at Co.. 840 reservation of and Defendants does The Court modification course of conduct sufficient Agreements, to Even (1st of the 15). modification. 18 v. notice provision payments Mass Mun. In light letters, of the from waiver. written consent The parties' of consideration to terms course the are subsequent to modify the if the parties' identify no co. Franchise Agreements modification the is an in the Plaintiffs' that This 1988). late that Brennan v. Cir. Non-Waiver is establish insist 1991). rights sufficient establish Defendants 992 to See Paterson-Leitch require Par. not performed." 985, waiver and unequivocal See the notes 6-3, is order decisive acceptance which Franchise Agreements. were to the further (Dkt. In proving (1st Cir. establish integrated contracts of 810 F.2d agreement not be Plaintiffs' Franchise Agreements, Defendants clear, F.2d 801, Wholesale the assertion. issue standard." of burden opposing party would not "uncompromising Elec. the of the of conduct Franchise for the Case No. 8:09-CV-131-T-17MAP Defendants by Plaintiffs The have have argued motive Court for termination Robertson, 147 Failure constitutes Petranaelo of Sandra breach v. the the F.3d 1301, to make a the has is agreement. held the root of N.E.2d 342, 345 (Dkt. amounts 27-2), which Defendants there has sufficient Corp. to v. 1998). going 255 a where McDonald's (11th Cir. alleged termination. that agreement called to contract irrelevant franchise 1309 of effectuate payments Pollard. Richmond establishes of to of Appeals termination been a material breach of justify the breaches been manufactured Eleventh Circuit franchisor's that for is under the a contract contract. (1970). The Affidavit uncontroverted, failed to pay under the Franchise Agreements. Defendants' the of both right of both to use Plaintiffs' operation of both success that on financial Other the triggers Plaintiffs breach of have After The lawful termination of consideration, claim based for termination Defendants' and System, established the contract cured within independent basis Proprietary Marks shops. not the as well as Court likelihood of on Defendants' defaults. Breaches Plaintiffs Plaintiffs' Plaintiffs have not an Franchise Agreements. Franchise Agreements concludes c) defaults which were applicable cure period constitute termination the financial asserted initial Motion requested maintained other a a for breaches of Preliminary preliminary sufficient in Injunction. injunction supply of 19 contract because Defendants Baskin-Robbins Case No. products Furash, 8:09-CV-131-T-17MAP in the shops, and because has not devoted her best efforts the shops, and failed to take a There are material which require based on entry of Defendants' the Court to financial defaults, Franchise Agreements 3. Lanham Act Claims on a at this Defendants likely to confuse consumers. F.2d 322, Section infringement, dress has acquired 326 of Loan Ass'n v. Plaintiffs' 757 (11th Cir. 1989). establish F.2d 966, also F.2d 1176, trademarks not appropriate necessary for their trademark 980 H Inds. that "the the H. (11th Cir. on the services." 1186 of Southwest (11th Cir. dress trade dress features and that John (Dkt. conclusively presumed. 20 6-2). Dieter, is To prove a for trade that "calls the & the of of the trade Harland Co. V. 1983)(citations plaintiff to Freedom Sav. & 1985). have been properly registered compliance with the Lanham Act. is is has claim under Section B similarity between Wav. issues for termination of Dieter v. secondary meaning." 711 is show that confusingly similar, Inc., above time. the Lanham Act Unfair competition show confusing trademarks it are primarily non-functional, Clarke Checks. omitted). is the have used the mark in a way that Plaintiffs must the two products trade dress 43 course. Because the Court grounds Plaintiffs must is valid and that violation of to trademark infringement 32 of the Lanham Act, 880 as a preliminary injunction the Inc.. disputes additional Mary to manage and operate after a hearing. resolve these To prevail shareholder, required training factual resolution concluded that Fla., Defendants' in The validity of the supra, at 326. Case No. 8:09-CV-131-T-17MAP Plaintiffs' style the trade and color same years, has same, acquired Plaintiffs' that licensed F.3d 1301, this is and Plaintiffs' 1309 Defendants' the nature, nature. of locations using for and Plaintiffs' trade "a of two to but using Defendants shops, as if Corp. have Defendants v. are Robertson. the Eleventh Circuit held certainty of confusion" franchisee's the franchisor. the Court substantial cease products concludes likelihood of that among are Plaintiffs success and unfair competition actually on claims. Injury argue that trademarks, harm." trademark Defendants' trade dress continued and methods use has of caused and irreparable harm. Circuit confusion itself constitute irreparable After that dress, 1998), terminated infringement The Eleventh of in advertising In McDonald's (11th cir. creates continues to cause showing dollars Defendants trade franchisees. have established a Plaintiffs of lettering thousands undisputable consideration, Irreparable at distinctive secondary meaning. certified products Plaintiffs' a non-functional have directed conduct After B. it operate consumers that the is includes trade dress trademarks continued to 147 which and expending millions Plaintiffs still scheme, distinctive promoting the dress dress, a has stated [caused by showing trademark of...[a] Robertson, infringement that sufficiently infringement] substantial supra, results 21 "a at in 1310. threat "By its irreparable strong may by of very harm Case No. because cannot 8:09-CV-131-T-17MAP the attendant be loss of profits, satisfactorily quantified and, owner cannot adequately be Nestle. goodwill S.A.. further notes 7.1 982 F.2d that only in specifically FRANCHISEE that of to use the manner the and to not Des Produits The Court provides; Proprietary the sublicense FRANCHISEE the term of extent harm the further the subject to agrees Proprietary or after or the earlier termination of shall constitute an incurable irreparable trademark licensed by the Agreement. Marks. during 1992). reputation Franchise Agreements any unauthorized use of Marks the Societe (1st Cir. the agrees shall Proprietary 640 7.1 FRANCHISEE Marks compensated." 633, Par. thus, and expiration this Agreement default causing injunctive relief. (Dkt. 6-3, p. After 12). consideration, have established a the preliminary C. Balance The arising the injunction of In not of that Plaintiffs irreparable injury if issued. whatever damage this consumer from their case, faced with a the goodwill inability to trademark until When threat determine whether outweighs loss is concludes Harm Defendants. probable Court substantial Court must Plaintiffs the of the decision similar threatened injury to injunction might is outweighs whether the Defendants' Defendants' cause losses products using the merits. factual 22 an inquiry sell on the situations in which a Case No. 8:09-CV-131-T-17MAP franchisee has breached other courts have from an 371, 379 1006 (S.D. found that See S (3rd Cir. Fla. While financial & 1992); of if favor of D. Public v. use Jiffy Lube agreement, cannot complain of of franchisor's the Int'l, Maieed. Inc., 805 harm 968 F.2d F.Supp. 994, finds granting that the Defendants will injunction sustain issues, that failure to comply with the Plaintiffs' Weighing Defendants' immeasurable the balance requested losses of harms to harm is requirements self-inflicted its hard-earned weighs decisively relief. Interest interest, injunction because preventing consumer S.A. further preliminary Defendants' A preliminary Cie. franchise franchisee recognizes a the Court in its Burger King v. Franchise Agreements. goodwill, a of 1992). losses injury against public R Corp. the Court result of the terms injunction preventing trademarks. the the v. in this the public confusion PLD Int'l Corp., in case "is interest not is adverse served by the marketplace." 263 F.3d 1297, to the 1304 Davidoff & (11th Cir. 2001). For the preliminary unauthorized granted. reasons stated above, injunction preventing use of Defendants Plaintiffs' are termination obligations. Plaintiffs' Defendants trademarks directed to it and is for a from further trade comply with Accordingly, 23 request dress, their post- is Case No. 8:09-CV-131-T-17MAP ORDERED that the is denied without Injunction and MARY (Dkt. FURASH, all persons Motion for prejudice. 27) is their acting in Preliminary The Motion granted. agents, concert Injunction for with are hereby preliminarily enjoined KEV ENTERPRISES representatives, them or under their of Dunkin' Donuts and INC. and control, from: 1. Using or displaying Dunkin' Donuts and Baskin-Robbins trademarks or service marks, or any other logos, symbols or dress 6) Preliminary Defendants employees, (Dkt. Baskin-Robbins, or trade any confusingly similar trademarks, service marks, logos, symbols in connection with the advertising, distribution, of any product or service; and or trade dress, display or sale 2. Making in any manner whatsoever any statement or representation, or performing any act, likely to lead members the public to believe any manner, directly, that or Defendants indirectly, connected with, or licensed, Donuts and Baskin-Robbins. 3. Upon receipt confer with of this Plaintiffs to with all post-termination Agreement, manuals 4. such and the Plaintiff as the sponsored or Preliminary as or a Defendants' associated, Injunction, included in are affiliated, approved by practicable means obligations shops in or Dunkin' Defendants of of shall compliance the Franchise return of proprietary materials, operating like. shall post a bond in the amount of $15,000 as security. 5. Defendants are directed to file and serve within thirty days this preliminary injunction a report in writing under oath setting forth in detail the manner and form in which Defendants have complied with this preliminary injunction. after entry of 24 Case No. 8:09-CV-131-T-17MAP DME and ORDERED in Chambers, -day of Copies June, 2009. to: All parties and counsel of record 25 in Tampa, Florida on this
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