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AG v. Gshwjs

United States District Court, S.D. Florida

August 20, 2019

ADIDAS AG, et al., Plaintiffs,
v.
GSHWJS, et al., Defendants.

          ORDER GRANTING MOTION FOR ENTRY OF PRELIMINARY INJUNCTION

          RODNEY SMITH, UNITED STATES DISTRICT JUDGE

         THIS CAUSE came before the Court upon Plaintiffs' Motion for Entry of Preliminary Injunction (the “Motion”) [DE 6]. The Court has carefully reviewed the Motion and the record and is otherwise fully advised in the premises.

         By the instant Motion, Plaintiffs, adidas AG, adidas International Marketing B.V., and adidas America, Inc. (“Plaintiff”) move for entry of a preliminary injunction against Defendants, the Individuals, Partnerships, and Unincorporated Associations Identified on Schedule “A” hereto (collectively “Defendants”) pursuant to 15 U.S.C. § 1116 and Fed.R.Civ.P. 65, and The All Writs Act, 28 U.S.C. § 1651(a).

         The Court convened a hearing on August 20, 2019, at which only counsel for Plaintiffs was present and available to present evidence supporting the Motion. Because Plaintiffs have satisfied the requirements for the issuance of a preliminary injunction, the Court will now grant Plaintiffs' Motion for Preliminary Injunction.

         I. Factual Background [1]

         Plaintiffs are the owners of the following trademarks, which are valid and registered on the Principal Register of the United States Patent and Trademark Office (the “adidas Marks”):

Trademark

Registration Number

Registration Date

Class / Goods

ADIDAS

0, 891, 222

May 19, 1970

IC25. sport shoes namely, track and field shoes, baseball, boxing, football, skating, golf, and soccer shoes; sportswear namely, suits, shorts, pants, tights, shirts, gloves, and the like; jerseys; socks; sport shoes namely, track and field training shoes, basketball shoes, and tennis shoes.

Image Omitted

0, 973, 161

November 20, 1973

IC 018. tote bags.

IC 25. specific purpose athletic shoes; general purpose sport shoes, sportswear-namely, suits, shorts, pants, tights, shirts, jerseys, socks, and gloves.

adidas

1, 300, 627

October 16, 1984

IC 025. Sportswear-Namely, Suits, Shorts, Pants, Tights, Shirts, Jerseys, Socks, Gloves, Jackets, Coats, Swimwear, Sweaters, Caps, Pullovers, Warm-Up Suits, Boots, Shoes, Slippers.

Image Omitted

1, 310, 140

December 18, 1984

IC 025. Sportswear-Namely, Suits, Shorts, Pants, Tights, Shirts, Jerseys, Socks, Gloves, Jackets, Coats, Swimwear, Sweaters, Caps, Pullovers, Warm-Up Suits, Rain Suits, Ski Suits, Jump Suits, Boots, Shoes, Slippers.

THE BRAND

WITH THE 3

STRIPES

1, 674, 229

February 4, 1992

IC 025. boots, slippers, sandals; shoes, boots and after ski boots for hiking and trekking, athletic shoes and general-purpose sports shoes.

CLIMALITE

1, 809, 301

December 7, 1993

IC 025. Shirts.

Image Omitted

2, 278, 591

September 21, 1999

IC 25. sports and leisure wear, namely, shorts.

Image Omitted

2, 411, 802

December 12, 2000

IC 018. All purpose sport bags, athletic bags, traveling bags, backpacks, knapsacks.

IC 025. Sports and leisure wear, namely, shorts, pants, shirts, T-shirts, jerseys, socks, gloves, jackets, swimwear, caps and hats, pullovers, sweat-shirts, sweat suits, track suits, warm-up suits; boots, sandals, specific purpose athletic shoes and general all purpose sports shoes. IC 028. Sports balls and playground balls; guards for athletic use, namely, shin guards, knee guards and leg guards.

CLIMACOOL

2, 651, 581

November 19, 2002

IC 025. Clothing, namely, footwear, sport shoes, headwear, shirts, T-shirts, jerseys, underwear, swimwear, shorts, pants, skirts, sweaters, caps, hats, visors, warm up suits, rain suits, ski suits, jumpsuits, boots, sandals, sweat shirts, jackets, uniforms, wrist bands and head bands, gloves and socks.

Image Omitted

2, 278, 591

September 21, 1999

IC 25. sports and leisure wear, namely, shorts.

Image Omitted

3, 104, 117

June 13, 2006

IC 009. Optical apparatus and instruments, namely, eyeglasses and sunglasses.

IC 014. Horological and chronometric instruments, namely, watches IC 018. Leather and imitations of leather, and goods made from these materials in the nature of bags for general and sport use, namely, handbags, tote bags, waist packs, overnight bags, backpacks, knapsacks and beach bags; trunks; traveling bags for general and sport use; leather and imitations of leather and goods made from these materials, namely, wallets, briefcases. IC 025. Sports and leisure wear, namely suits, shorts, pants, sweatpants, skirts, skorts, dresses, blouses, shirts, T-shirts, sleeveless tops, polo shirts, vests, jerseys, sweaters, sweatshirts, pullovers, coats, jackets, track suits, training suits, warm-up suits, swimwear, underwear, socks, gloves, scarves, wristbands and belts; headgear, namely caps, hats, visors, headbands; athletic footwear and leisure foot wear, namely boots, sandals, specific purpose athletic shoes and general purpose sports shoes.

adidas

3, 255, 820

June 26, 2007

IC 018. Bags for general and sport use, namely, handbags, tote bags, waist packs, overnight bags, gym bags, duffel bags, backpacks, knapsacks, beach bags, trunks, suitcases and travelling bags, wallets, briefcases, key cases, purses, parasols and umbrellas

adidas

4, 679, 762

01/27/15

IC 009. Mobile phone covers; laptop covers and sleeves; protective covers and sleeves for tablet computer.

Image Omitted

4, 679, 763

January 27, 2015

IC 009. Mobile phone covers; laptop covers and sleeves; protective covers and sleeves for tablet computer.

(See Declaration of Mia Nidia Gutierrez in Support of Plaintiffs' Motion for Preliminary Injunction (“Gutierrez Decl.”) ¶¶ 4-5; see also United States Trademark Registrations of the adidas Marks at issue attached as Composite Exhibit 1 to the Amended Complaint.) The adidas Marks are used in connection with the manufacture and distribution of quality goods in the categories identified above. (See Id. ¶ 5.)

         Defendants, by operating e-commerce stores via Internet marketplace platforms under their seller identification names or commercial Internet websites under their domain names identified on Schedule “A” hereto (the “Seller IDs and Subject Domain Names”), have advertised, promoted, offered for sale, or sold goods bearing and/or using what Plaintiffs have determined to be counterfeits, infringements, reproductions, and/or colorable imitations of the adidas Marks. (See Gutierrez Decl. ¶¶ 13-17; Declaration of Virgilio Gigante in Support of Plaintiffs' Motion for Preliminary Injunction (“Gigante Decl.”) ¶ 2; Declaration of Kathleen Burns in Support of Plaintiffs' Motion for Preliminary Injunction (“Burns Decl.”) ¶ 4.)

         Although each Defendant may not copy and infringe each adidas Mark for each category of goods protected, Plaintiffs have submitted sufficient evidence showing that each Defendant has infringed, at least, one or more of the adidas Marks. (See Gutierrez Decl. ¶¶ 13-17.) Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the adidas Marks. (See Id. at ¶¶ 13, 16-17.)

         Plaintiffs' counsel retained Invisible Inc, a licensed private investigative firm, to investigate the promotion and sale of counterfeit and infringing versions of Plaintiffs' branded products by Defendants and to obtain the available payment account data for receipt of funds paid to Defendants for the sale of counterfeit versions of Plaintiffs' branded merchandise through the Seller IDs and Subject Domain Names. (Gutierrez Decl. ¶ 14; Burns Decl. ¶ 3; Gigante Decl. ¶ 2.) Invisible Inc accessed each[2] of the e-commerce stores and commercial Internet websites operating under Defendants' Seller IDs and Subject Domain Names, placed an order for the purchase of a product bearing counterfeits of, at least, one of the adidas Marks at issue in this action, and requested each product to be shipped to Invisible Inc's address in the Southern District of Florida. (See Burns Decl. ¶ 4.) Following submission of the orders, Invisible finalized payment for the adidas branded items purchased from Defendants to Defendants' respective payment accounts and/or payee[3] as identified on Schedule “A” hereto.[4] (Id.) At the conclusion of the process, the detailed web page captures and images of the adidas branded items Invisible purchased via Defendants' Seller IDs, together with photographs of the some of the items Invisible Inc received, were sent to Plaintiffs' representative for review. (See Gutierrez Decl. ¶¶ 14-15; Burns Decl. ¶ 4; Gigante Decl. ¶ 2.) Plaintiffs' representative conducted a review and visually inspected the adidas branded items Invisible Inc purchased via the Seller IDs and Subject Domain Names and determined the products were non-genuine, unauthorized versions of Plaintiffs' products. (See Gutierrez Decl. ¶¶ 16-17.)

         On July 19, 2019, Plaintiffs filed their Complaint [DE 1] and thereafter their Amended Complaint on August 12, 2019 [DE 18] against Defendants for federal trademark counterfeiting and infringement, false designation of origin, common law unfair competition, and common law trademark infringement. On July 23, 2019, Plaintiffs filed their Ex Parte Application for Entry of Temporary Restraining Order, Preliminary Injunction, and Order Restraining Transfer of Assets [DE 6]. On July 29, 2019, this Court entered a Sealed Order Granting Ex Parte Application for Entry of Temporary Restraining Order (the “TRO”) [DE 8] and temporarily restrained Defendants from infringing the adidas Marks at issue and restrained funds in the payment accounts associated with the Defendants. Pursuant to the Court's July 29, 2019 TRO, Plaintiffs properly served Defendants with a copy of the Amended Complaint, the Court's July 29, 2019 TRO, and all filings in this matter [see DE Nos. 22 and 23]. On August 20, 2019, the Court conducted a hearing on Plaintiffs' Motion, at which only counsel for Plaintiffs was in attendance.

         II. Legal Standard

         In order to obtain a preliminary injunction, a party must demonstrate “(1) [there is] a substantial likelihood of success on the merits; (2) that irreparable injury will be suffered if the relief is not granted; (3) that the threatened injury outweighs the harm the relief would inflict on the non-movant; and (4) that the entry of the relief would serve the public interest.” Schiavo ex. rel Schindler v. Schiavo, 403 F.3d 1223, 1225-26 (11th Cir. 2005); see also Levi Strauss & Co. v. Sunrise Int'l. Trading Inc., 51 F.3d 982, 985 (11th Cir. 1995) (applying the test to a preliminary injunction in a Lanham Act case).

         III. Conc ...


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