Tranquil Blue Corporation v. Shuhart
8:16-cv-01217
M.D. Fla.Jun 29, 2017Background
- Plaintiffs Tranquil Blue Corp. (TBC) and Bam Launcher, Inc. (BLI) own trademarks for apparel and a water-balloon launcher; they sold products primarily online and through a wholesale site with unrestricted resale.
- Defendant Shuhart was an independent contractor (2010–2015) who managed inventory and sold Plaintiffs’ products online; parties dispute whether he was authorized to sell on certain webstores and whether he remitted proceeds.
- Siebert (owner) authorized a specific Amazon store (“Water Balloon Buffoonery”) under Shuhart’s control; Shuhart later operated additional Amazon/eBay stores and kept proceeds, claiming he bought at wholesale and kept the markup as agreed.
- Shuhart admitted taking and selling 104 units of Sex Panther cologne and 29 Bam Launchers; he said some Bam Launchers were taken as offset for unpaid rent; parties dispute the total value taken (Plaintiffs: ≈ $150,000; Shuhart: ≈ $5,000).
- Plaintiffs sued for Lanham Act trademark infringement and false designation (Counts I–II), FDUTPA (Count III), unjust enrichment (Count IV), and conversion (Count V). Both sides moved for summary judgment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Shuhart infringed by using the “Party with Sluts” mark | Siebert claims Shuhart sold apparel bearing the mark without authorization | Shuhart denies unauthorized use or contests evidence of use | Court: summary judgment for Shuhart — Plaintiffs produced no evidence of use |
| Whether Shuhart infringed/false-designated for “Bam Launcher” | TBC/BLI say he sold Bam Launchers without authorization causing likely confusion | Shuhart says he was authorized or had an implied license; he resold genuine product bought at wholesale | Court: dispute of material fact on authorization and likelihood of confusion — summary judgment denied |
| Whether the first-sale/resale doctrine bars Lanham Act liability | Plaintiffs argue unauthorized sales can still cause confusion or affiliation issues | Shuhart invokes first-sale doctrine as defense to trademark claims | Court: first-sale defense not considered because Shuhart failed to plead/amend it; cannot resolve now |
| Liability for unjust enrichment and conversion for admitted items | Plaintiffs seek recovery for all alleged stolen inventory | Shuhart admits some taking but claims offsets/authorized purchases for others | Court: partial summary judgment for Plaintiffs — Shuhart unjustly enriched and converted 104 Sex Panther cologne units; remaining damages and 29 Bam Launchers (rent offset issue) 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 (genuine dispute and drawing inferences on summary judgment)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (Lanham Act scope)
- Davidoff & CIE, S.A. v. PLD Int'l Corp., 263 F.3d 1297 (resale of genuine goods and trademark law)
- Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161 (unauthorized sale and genuineness under Lanham Act)
- Prestonettes, Inc. v. Coty, 264 U.S. 359 (trademark protects goodwill against sale of another’s products)
- All. Metals, Inc. v. Hinely Indus., Inc., 222 F.3d 895 (seven-factor likelihood-of-confusion test)