United States District Court, M.D. Florida, Tampa Division
C. BUCKLEW UNITED STATES DISTRICT JUDGE.
cause comes before the Court on Defendants' Motion for
Partial Summary Judgment. (Doc. No. 20). Plaintiffs oppose
the motion (Doc. No. 31), and Defendants have filed a reply
(Doc. No. 34). As explained below, the motion is granted in
part and denied in part.
allege the following in their complaint (Doc. No. 1): Martin
Birzle is an award-winning designer and manufacturer of
smokers' products. Since 1995, Birzle has marketed and
sold such products using the trademark “RooR.”
RooR-branded products are internationally recognized, and the
RooR brand is a leader in the industry.
was granted trademark rights to the “RooR” marks.
Plaintiff Sream, Inc. is a company that has manufactured
glass products and various smokers' products for nearly a
decade. Since 2013, Sream has been the exclusive licensee for
the “RooR” marks within the United States.
in 2013, Birzle and Sream entered into a License Agreement,
in which Birzle granted Sream an exclusive license to use
certain “RooR” marks in the United States for
three years, with a one-year renewal. Sream was required to
make royalty payments to Birzle during the initial three-year
term. Birzle gave Sream all rights to sue to obtain
injunctive relief and damages for past and future
infringement of the trademarks.
to the License Agreement, Birzle retained ownership of the
trademarks, including the goodwill associated with them.
Sream was required to only use the trademarks in accordance
with Birzle's Brand Image Policy. Birzle had the right to
inspect the quality of the products bearing the
“RooR” marks and to approve or reject those
products based on Sream's compliance with Birzle's
quality control standards.
2015, Birzle and Sream amended the License Agreement in two
ways. First, they changed the term of the agreement such that
they deemed the initial term to have expired, the agreement
then would continue for a five-year renewal period, and there
would be an additional five-year automatic renewal of the
agreement. Additionally, Birzle and Sream amended the
language of the paragraph giving Sream all rights to sue for
infringement of the trademarks. Specifically, the amendment
provides that Birzle appoints Sream as its legal
representative for the entire United States to police and
enforce all rights in the trademarks.
January 8, 2018, Birzle assigned to Plaintiff RooR
International BV (“RIBV”) all of his rights in
the trademarks retroactively. Today, RIBV is the registered
owner of these trademarks. Thereafter, Birzle, RIBV, and
Sream entered into a Ratification Agreement, in which RIBV
accepted and ratified the License Agreement (and amendment
thereto) entered into between Birzle and Sream.
RIBV and Sream contend that Defendants Good Timez III, LLC
and Serkan Gul (the owner, manager and/or operator of Good
Timez) sold counterfeit products bearing the
“RooR” mark. As a result, Plaintiffs filed suit
against Defendants, alleging three claims. First, they assert
a trademark infringement claim, pursuant to 15 U.S.C. §
1114. Second, they seek injunctive relief for the seizure of
the goods involved in the trademark violation, pursuant to 15
U.S.C. § 1116(d). Third, they assert a false designation
of origin and unfair competition claim, pursuant to 15 U.S.C.
Motion for Partial Summary Judgment
instant motion, Defendants argue that Sream lacks standing to
pursue its trademark and injunctive relief claims under
§ 1114 and § 1116(d) in Counts I and
Additionally, Defendants argue that Sream cannot obtain
statutory damages in connection with its claim under §
1125(a) in Count III. Accordingly, the Court will analyze
argue that Sream lacks standing to pursue its trademark and
injunctive relief claims under § 1114 and §
1116(d). A trademark registrant (or the registrant's
legal representatives, predecessors, successors and
assignees) has standing to pursue trademark claims. See
Sream, Inc. v. Grateful J's, Inc., 2017 WL 6409004,
at *3 (S.D. Fla. Oct. 13, 2017). However, for exclusive
licensees, the standing inquiry focuses on whether the