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St-Honore v. Goyy and others

United States District Court, S.D. Florida

September 23, 2019

Goyard St-Honore, Plaintiff,
v.
Goyy and others, Defendants.

          ORDER ON APPLICATION FOR PRELIMINARY INJUNCTION

          Robert N. Scola, Jr. United States District Judge.

         This matter is before the Court on the Plaintiff’s Application for Entry of Preliminary Injunction (the “Application for Preliminary Injunction”) (ECF No. 6) and upon the Preliminary Injunction hearing held on September 23, 2019. Plaintiff Goyard St-Honore moves for entry of a preliminary injunction against the Defendants, the Individuals, Partnerships, or Unincorporated Associations identified on Schedule “A, ” pursuant to 15 U.S.C. § 1116 and Fed.R.Civ.P. 65, and The All Writs Act, 28 U.S.C. § 1651(a), for alleged violations of the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a), and Florida law. The Court has carefully reviewed the application, the pertinent portions of the Record, and is otherwise fully advised in the premises.

         The Court convened a hearing on September 23, 2019, at which only counsel for the Plaintiff was present and available to present evidence supporting the Application for Preliminary Injunction. The Defendants have not responded to the Application for Preliminary Injunction, nor made any filing in this case, nor has the Defendants appeared in this matter either individually or through counsel. Because the Plaintiff has satisfied the requirements for the issuance of a preliminary injunction, the Court grants Plaintiff’s Application for Preliminary Injunction (ECF No. 6).

         1. Factual Background

         The Plaintiff is the registered owner of the following trademarks on the Principal Register of the United States Patent and Trademark Office (collectively, the “Goyard Marks”).

Trademark

Registration Number

Registration Date

Class / Goods

1, 709, 953

August 25, 1992

IC 016 – Office requisites; namely, agendas and spare sheets therefor, repertories, desk pads, pen holders, stamp boxes for the storage of postage stamps, writing pads, address pads, pencil jars for desk use, ink wells, mail trays for desk use, note books, check cases and pen cases.

IC 018 – Articles of fancy leather, leather, cloth and skin articles; namely, valises, travel trunks, cosmetic cases, travelling bags, handbags, brief cases, attache cases, brief case type document cases, toilet cases sold empty, makeup cases sold empty, sewing cases, wallets, hat boxes for travel, business card cases, key cases, drawstring pouches, garment bags for travel, necktie cases, jewel cases, umbrellas, saddle covers, cloth carriers, articles for dogs; namely, dog collars, dog leashes, dog clothes and carrying bags.

GOYARD

1, 821, 224

February 15, 1994

IC 016 - Office requisites; namely, agendas, repertories, note books, check cases and pen cases.

IC 018 - Articles of fancy leather, leather, cloth and skin articles; namely, valises, travel trunks, cosmetic cases sold empty, traveling bags, handbags, briefcases, attache cases, briefcase type document cases, toilet cases sold empty, make-up cases sold empty, wallets, hat boxes for travel, business card cases, key cases, draw string pouches, garment bags for travel, necktie cases, umbrellas, saddlebags, saddle covers, and articles for dogs; namely, dog collars, dog leashes, dog clothes and carrying bags.

(E. Goyard Honore Paris)

3, 418, 288

April 29, 2008

IC 018 - Bags and traveling sets, namely, traveling bags; garment bags for travel; luggage trunks; valises, vanity cases sold empty, rucksacks, handbags, beach bags, school bags; suitcases, briefcases, pocket wallets, purses, not of precious metal, leather key cases; business card cases; umbrellas, parasols, walking sticks.

4, 036, 898

October 11, 2011

IC 003 - Toilet soap; perfumes; eau de toilette and eau de cologne; cosmetic preparations; essential oils for personal use; cosmetic milks; lotions for face and body care; cosmetic creams; emulsions for cosmetic use; shampoos; gels to be used on the

face and body for aesthetic purposes; deodorants for personal use.

IC 009 – Spectacles; spectacle frames; sunglasses; spectacle cases; photographic apparatus, namely, cameras.

IC 014 – Precious metals and their alloys, other than for dental use; goods made of precious metals and their alloys, other than for dental use, in the nature of jewelry, namely, rings, earrings, bracelets, charms, chains, watch chains, necklaces, pins, ornaments, fashion pins, ring bands; goods made of precious metals and their alloys, other than for dental use, namely, buckles of precious metal, hat ornaments of precious metal, jewellery cases of precious metal, jewellery caskets of precious metal; jewellery, precious stones, semi-precious stones, jewelry in the nature of pearls, horological and chronometric instruments; watches, watch straps, wristwatches; boxes for watches, jewelry boxes; cuff links.

IC 018 – Goods of leather and imitations of leather, namely, travelling bags, travelling sets comprised of luggage, and garment bags for travel; trunks; suitcases; unfitted vanity cases; rucksacks; handbags; sports bags; beach bags; school bags;

attaché cases; document cases; briefcases; school satchels; under-arm bags, namely, handbags; leather goods, namely, wallets, purses not of precious metal, leather key cases, card holders for wallets; umbrellas; parasols; sunshade parasols; walking sticks.

IC 024 – Fabrics for textile use; textile goods, namely, bath linen not for clothing, household linen, bed linen, textile table linen, bathroom linen of textile, handkerchiefs of textile.

IC 025 – Clothing for men, women and children, namely, dresses, skirts, petticoats, culottes, ladies' suits, trousers, shorts, Bermuda shorts, swimming drawers, shirts, ladies' shirts, blouses, tee-shirts, sweatshirts, waistcoats, jackets, cardigans, pullovers, sweaters, parkas, anoraks, coats, gaberdines, raincoats, furs, sashes for wear, shawls, scarf, gloves, neckties, belts, socks, stockings, tights, underwear, pajamas, dressing gowns, swimsuits, bath robes; footwear, except orthopedic footwear, namely, shoes, sandals, boots, half-boots, boot liners, slippers; hats, berets, caps.

IC 028 – Games, namely, chess games; gymnastic and sporting articles not included in other classes, namely, baseball gloves,

bats for games, boxing gloves, golf gloves, golf clubs, golf bags; decorations for Christmas trees.

IC009 -Spectacles, sunglasses, spectacle cases, spectacle frames, spectacle cords; protective cases for portable telephones, tablet computers, electronic diaries and computers; portable telephones shell cases, portable telephone straps; cases especially made for photographic apparatus and instruments; binoculars being optics; cases for binoculars; magnifying glasses being optics; cases for magnifying glasses; digital photo frames; blank USB flash drives; mouse pads; barometers; dog whistles, cases for dog whistles.

5, 532, 309

August 7, 2018

IC 014 - Jewelry, namely, finger rings, key rings, earrings, cufflinks, cases for cuff links, bracelets, charms, brooches, jewelry chains, necklaces, presentation boxes for jewelry, ornaments being jewelry, medallions being jewelry, jewelry boxes; tie pins, tie clips; timepieces and chronometric apparatus and instruments, namely, watches, straps for wrist watches, presentation boxes for watches, cases being parts of watches, alarm clocks; boxes of precious metals, their alloys or coated therewith

IC 016 - Printed matter, namely, posters, photo albums, greeting

cards, postcards; printed matter, namely, books, magazines, orientation manuals, photographs, periodicals in the field of leather goods, travel goods, leather accessories and bags, pet accessories, clothing and fashion accessories; checkbook holders; products made of cardboard or paper, namely, boxes of cardboard or paper, hat boxes of cardboard, bags being envelopes and pouches of cardboard or paper for packaging, paper table cloths, perfumed and non-pe1fumed drawer liners of paper, money clips, passport holders, table napkins of paper; office requisites excluding furniture, namely, diaries, stationery pads, notebooks, binders, cases for stamps, cases for stationery, paper knives, diary covers being stationery, letter trays, writing sets comprising inkstands and stationery, envelopes being stationery, shields being paper seals, writing paper, trays for sorting and counting money, document holders, paperweights, telephone indexes, desk pads, stamps, namely, sealing stamps; writing instruments, namely, pens, ball-point pens, propelling pencils, pencil holders, pencil cases.

IC 018 – Products made of leather or imitations of leather, namely, straps of leather, leather leashes, boxes of leather or

imitation leather, wallets of leather or imitation leather, briefcases of leather; traveling trunks, traveling bags, leather traveling sets, namely, leather cases and pouch sets for travel, garment bags for travel; trunks, attache cases, suitcases; unfitted vanity cases, backpacks, handbags, beach bags, sports bags, bags for carrying animals, briefcases, purses, wallets, coin purses, key cases being leather products, card cases being wallets, credit card holders being wallets; umbrellas, umbrella sticks, walking sticks, walking stick seats, collars for animals, animal leashes; clutch bags.

IC 024 – Fabrics and textile products, namely, textile wall hangings, household linen, bed linen, table linen of textile, bath linen except clothing, handkerchiefs of textile, covers for cushions, unfitted fabric chair covers, traveling rugs, lap robes.

IC 024 – Clothing, namely, suspenders, belts being clothing, neckties, socks, shawls, sashes for wear, scarves, gloves, bathing suits, bath robes, pocket squares being clothing; footwear, namely, sandals, boots, slippers; headgear, namely, hats, berets, caps being headwear.

         The Goyard Marks are used in connection with the manufacture and distribution of high quality luxury goods in the categories identified above. (See Thierry Decl. ¶¶ 4-5, ECF No. 6-1.)

         The Defendants, through the Internet based e-commerce stores operating under the seller identification names identified on Schedule "A" hereto (the "Seller IDs"), have advertised, promoted, offered for sale, or sold goods bearing what the Plaintiff has determined to be counterfeits, infringements, reproductions or colorable imitations of the Goyard Marks. (See id. at ¶¶ 9-13; Wiborg-Rodriguez Decl. ¶ 2, ECF No. 6-2; Burns Decl. ¶ 4, Ex. 1-3 ECF No. 6-3.)

         Although each Defendant may not copy and infringe each of the Plaintiff's trademarks for each category of goods protected, the Plaintiff has submitted sufficient evidence showing each Defendant has infringed, at least, one or more of the trademarks at issue. (See Thierry Decl., ECF No. 6-1 ¶¶ 12-13.) The Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the Goyard Marks. (See id. at ¶¶ 9, 12-13.)

         The Plaintiff retained Invisible Inc., a licensed private investigative firm, to investigate the promotion and sale of counterfeit and infringing versions of the Plaintiff's branded products by the Defendants. (See id. at ¶¶ 10-11; see also Wiborg-Rodriguez Decl. ¶ 2, ECF No. 6-2; Burns Decl. ¶ 3, ECF No. 6-3.) Invisible Inc. accessed the Defendants' e-commerce stores operating under their respective Seller IDs, placed an order for the purchase of a product bearing counterfeits of, at least, one of the Goyard Marks at issue in this action, and requested each product be shipped to the firm's addresses in the Southern District of Florida. (See Burns Decl. ¶ 4, ECF No. 6-3.) Following the submission of each order, Invisible Inc. finalized payment for the products ordered from Defendant Numbers 1-16 via Amazon, [1] finalized payment from Defendant Numbers 17-22 via PayPal, Inc. ("PayPal") to Defendants' respective PayPal accounts, and finalized payment from Defendant Numbers 23-67 via Defendants' respective payee, [2] as identified on Schedule "A" hereto. (See id.) At the conclusion of the process, the detailed web page captures reflecting the Plaintiff’s branded products Invisible Inc ordered via each Defendant’s Seller ID were sent to the Plaintiff’s representative for inspection. (Thierry Decl. ¶ 11, ECF No. 6-1; Wiborg-Rodriguez Decl. ¶ 2, ECF No. 6-2; Burns Decl. ¶ 4, ECF No. 6-3.)

         The Plaintiff’s representative reviewed and visually inspected the Plaintiff’s branded items purchased by Invisible through the Defendants’ Internet based e-commerce stores operating under the Seller IDs and determined the products were non-genuine, unauthorized versions of the Plaintiff’s products. (See Thierry Decl. ¶¶ 12-13, ECF No. 6-1.)

         2. Legal Standard

         To obtain a preliminary injunction, a party must demonstrate “(1) 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) (per curiam); see also Levi Strauss & Co. v. Sunrise Int’l. Trading Inc., 51 F.3d 982, 985–86 (11th Cir. 1995) (applying the test to a preliminary injunction in a Lanham Act case).

         3. ...


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