Casa Dimitri Corp. v. Invicta Watch Co. of America
270 F. Supp. 3d 1340
S.D. Fla.2017Background
- Technomarine S.A. owned the Technomarine trademarks and licensed them to Casa Dimitri (Dimitri & Co.), which manufactured and sold Technomarine eyewear (via IOVES) and maintained public websites; Casa Dimitri did not register U.S. copyrights for the eyewear designs.
- Technomarine entered Swiss reorganization; a trustee sold Technomarine’s trademark rights to TM Brands (managed by Invicta) via an APA on March 31, 2015; the APA did not assume Casa Dimitri’s license obligations and terminated Casa Dimitri’s rights under the license per this Court’s prior Omnibus Order.
- TM Brands/Invicta notified Casa Dimitri to cease manufacture and sale of Technomarine products; Casa Dimitri continued some sales after those notices (including a June 2016 sale to Garagewatches and ledger entries through 2017).
- Plaintiffs (Casa Dimitri) sued asserting copyright infringement and FDUTPA claims; TM Brands counterclaimed for Lanham Act trademark infringement, cybersquatting, and related state-law claims.
- On cross-motions for summary judgment, the Court granted defendants’ (original plaintiffs’) motion in full as to Plaintiffs’ claims and granted TM Brands’ counterclaim summary judgment in part (Lanham Act liability and certain state-law claims), while denying summary judgment on the ACPA cybersquatting claim and some state-law claims (dilution, unjust enrichment, conversion) pending trial.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Plaintiffs can maintain a U.S. copyright infringement suit without U.S. registration by proving the works are "foreign works" (exempt from §411) | First publication occurred abroad (Venezuela/Colombia/Mexico) so registration precondition does not apply | Plaintiffs never registered and offer only conclusory, unproven assertions of foreign first publication | Court: Summary judgment for Defendants — Plaintiffs failed to prove foreign first publication and thus failed the registration precondition; copyright claim dismissed |
| Whether FDUTPA claims are actionable and supported by causation/actual damages | Defendants’ acquisition and actions misappropriated business, diverted sales, harmed goodwill, and caused damages | Many alleged harms are consequential (lost sales/goodwill) or preempted by copyright law; no evidentiary support for some claimed deceptive acts | Court: Summary judgment for Defendants on most FDUTPA theories — diversion/goodwill claims barred as consequential; several claims lack evidence; copyright-based FDUTPA claims preempted |
| Whether TM Brands owns the Technomarine marks and whether Casa Dimitri’s post-APA use constitutes Lanham Act infringement (likelihood of confusion) | Casa Dimitri: prior use, alleged naked license/abandonment, and alleged sell-off rights confer continued rights | TM Brands: acquired marks via APA; Casa Dimitri was a licensee (use inures to owner); APA terminated Casa Dimitri’s rights; Casa Dimitri used marks post-APA without consent causing confusion | Court: Summary judgment for TM Brands as to trademark infringement and unfair competition — TM Brands owns the marks; Casa Dimitri’s post-APA use was unauthorized and likely to cause confusion |
| Whether Casa Dimitri committed cybersquatting under the ACPA (bad-faith intent to profit via domain names) | Casa Dimitri contends its website use was believed lawful (no bad faith) and was taken down after court clarity; some sites were oversights | TM Brands argues websites and domain use support bad-faith intent and liability under ACPA | Court: Genuine issue of material fact exists about Casa Dimitri’s reasonable belief and bad faith for domain use; summary judgment denied on ACPA claim (reserved for trial) |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment standard)
- Anderson v. Liberty Lobby, 477 U.S. 242 (evidentiary standard for genuine issue of material fact)
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (entry of summary judgment when record cannot lead a rational trier of fact to find for non-movant)
- Kernel Records Oy v. Mosley, 694 F.3d 1294 (11th Cir. 2012) (burden to prove first publication abroad to avoid registration requirement)
- Leigh v. Warner Bros., 212 F.3d 1210 (11th Cir. copyright infringement elements)
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (registration requirement principles)
- Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338 (11th Cir. 2017) (registration as precondition to suit)