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Roor International BV v. Good Timez III, LLC

United States District Court, M.D. Florida, Tampa Division

October 7, 2019

ROOR INTERNATIONAL BV and SREAM, INC., Plaintiffs,
v.
GOOD TIMEZ III, LLC and SERKAN GUL, Defendants.

          ORDER

          SUSAN C. BUCKLEW UNITED STATES DISTRICT JUDGE.

         This 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.

         I. Background

         Plaintiffs 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.

         Birzle 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.

         Specifically, 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.

         Pursuant 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.

         In 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.

         On 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.

         Plaintiffs 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. § 1125(a).

         II. Motion for Partial Summary Judgment

         In the 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 II.[1] 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 both arguments.

         A. Standing [2]

         Defendants 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 ...


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