United States District Court, D. Arizona
MOTION FOR SUMMARY JUDGMENT; MOTION FOR SUMMARY DISPOSITION
H. RUSSEL HOLLAND, District Judge.
Plaintiffs move for summary judgment. The corporate defendant is currently unrepresented and thus did not file an opposition to plaintiffs' motion for summary judgment. Defendant Vitale filed a two-sentence response in which she asserted that there were material questions of fact at issue. On November 10, 2014, the court advised Vitale that her response was insufficient and gave her notice of her obligations under Rule 56, Federal Rules of Civil Procedure. The court gave Vitale until December 12, 2014 to file another response to plaintiffs' motion for summary judgment. Vitale did not file an additional response nor did she move for an extension of time in which to do so. On December 22, 2014, plaintiffs filed a motion for summary disposition of their motion for summary judgment. The motion for summary disposition is unopposed. Oral argument has been requested on the motion for summary judgment but is not deemed necessary.
Plaintiffs are Estee Lauder Cosmetics Ltd. and Make-up Art Cosmetics Inc. (M.A.C). Defendants are Get Your Mac On, LLC and Yvonne Vitale.
M.A.C is a wholly owned subsidiary and trademark licensee of Estee Lauder. Estee Lauder "owns all rights and interest in certain trademarks and/or trade names associated with the M.A.C brand of cosmetic products (the M.A.C Marks')." "Plaintiffs or their affiliated companies own or have the exclusive right to use the formulations, trade dress, and look and feel of cosmetic products sold under the M.A.C Marks." "Plaintiffs spend millions of dollars annually advertising and promoting M.A.C products." "Genuine M.A.C products are sold at M.A.C authorized retail stores... and online via M.A.C's internet web store... as well as other authorized online stores."
Sometime in 2009, defendants began selling products alleged to be genuine M.A.C products on their website, www.getyourmacon.com. Defendants' website contained assertions that "[a]ll of our products are 100% AUTHENTIC M.A.C, no fakes here!" and that the products being sold were not replicas but genuine "overstock" products. It is undisputed that defendants were not licensed or authorized by plaintiffs to advertise, distribute, sell, or offer to sell genuine M.A.C products.
"In 2012, [p]laintiffs learned that Target Australia Pty Ltd (Target Australia')... was offering and selling products it purported were M.A.C products." "Target Australia was not an authorized M.A.C retailer and [p]laintiffs had not given Target Australia any authority to sell M.A.C products." Plaintiffs sued Target Australia and its suppliers, Laconi Australia Ltd. and Premium Designer Brands Pty. Ltd. During discovery in that case, plaintiffs learned that Laconi had received its supply of purported M.A.C products from defendants. Plaintiffs purchased some of the purported M.A.C products from Target Australia stores and subjected the products to chemical testing. The testing revealed that the Target products, which had been sold by defendants, were substantially different from plaintiffs' genuine products.
On March 28, 2013, plaintiffs commenced this action. In Count I of their complaint, plaintiffs assert a trademark counterfeiting and infringement claim. In Count II, plaintiffs assert an unfair competition - trade dress infringement claim. In Count III, plaintiffs assert a federal false designation of origin claim. In Count IV, plaintiffs assert that defendants have violated A.R.S. § 44-1453(A), which prohibits the use of counterfeit marks, and which plaintiffs allege entitles them to treble damages. In Count V, plaintiffs assert a state-law trademark dilution claim. In Count VI, plaintiffs assert a common-law trademark infringement claim. In Count VII, plaintiffs assert a common-law unfair competition claim. In Count VIII, plaintiffs assert an unjust enrichment claim. In Count IX, plaintiffs assert an intentional interference with business expectations claim. And, in Count X, plaintiffs assert a cybersquatting claim. Plaintiffs seek injunctive relief and damages.
Plaintiffs now move for summary judgment on all of their claims against defendants. Plaintiffs also move for summary disposition of their motion for summary judgment because neither defendant has filed a response to the motion for summary judgment.
Plaintiffs' motion for summary disposition is denied. "Although permitted under Local Rule 7.2(i), the Ninth Circuit Court of Appeals... has held that Federal Rule of Civil Procedure 56 forbids such a practice with respect to motions for summary judgment." McLemore v. Johnson, Case No. CV-12-02288-PHX-JAT, 2014 WL 2048073, at *2 (D. Ariz. May 19, 2014) (citing Heinemann v. Satterberg , 731 F.3d 914, 917 (9th Cir. 2013)). The court will consider plaintiffs' summary judgment motion on its merits.
Summary judgment is appropriate when there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). The initial burden is on the moving party to show that there is an absence of genuine issues of material fact. Celotex Corp. v. Catrett , 477 U.S. 317, 325 (1986). If the moving party meets its initial burden, then the non-moving party must set forth specific facts showing that there is a genuine issue for trial. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 247-48 (1986). In deciding a motion for summary judgment, the court views the evidence of the non-movant in the light most favorable to that party, and all justifiable inferences are also to be drawn in its favor. Id. at 255. "[T]he court's ultimate inquiry is to determine whether the specific facts' set forth by the nonmoving party, coupled with undisputed background or contextual facts, are such that a rational or reasonable jury might return a verdict in its favor based on that evidence." T.W. Elec. Service, Inc. v. Pacific Elec. Contractors Ass'n , 809 F.2d 626, 631 (9th Cir. 1987).
To prevail on their federal trademark counterfeiting, trademark infringement, trade dress infringement, and false origin claims, plaintiffs "must demonstrate (1) that [they have] a valid mark that is entitled to protection under the [Lanham] Act and (2) that [d]efendants' actions are likely to cause confusion as to the origin of the mark." Gucci Amer., Inc. v. Duty Free Apparel, Ltd. , 286 F.Supp.2d 284, 287 (S.D.N.Y. 2003). It is undisputed that plaintiffs have valid marks that are entitled to protection. It is also undisputed that defendants' actions are likely to cause confusion because it is undisputed that defendants were selling counterfeit products and "counterfeits, by their very nature, cause confusion." Id . Plaintiffs are thus entitled to summary judgment on Counts I, II, and III of their complaint.
To prevail on their claim in Count IV that defendants violated A.R.S. 44-1453(A), plaintiffs must show that defendants "knowingly and with intent to sell or distribute use[d], display[ed], advertise[d], distribute[d], offer[ed] for sale, s[old] or possesse[d] any item that bears a counterfeit mark...." It is undisputed that defendants sold items that bore a counterfeit mark. A defendant acts "knowingly" if there is a "high probability" that the goods she is selling or offering for sale bear a counterfeit mark or if she "acted with a conscious purpose to avoid learning the true"nature of the product. State v. Diaz , 803 P.2d 435, 438 (Ariz.Ct.App. 1990), vacated in part on other grounds, 813 P.2d 728 (Ariz. 1991). Defendant Vitale testified that she compared the product she purchased from suppliers to M.A.C product that she had purchased from an authorized M.A.C retailer and that in her opinion, the product she purchased was authentic, even though she had no training regarding counterfeit goods, did not undertake any laboratory testing, and had no agreements with her suppliers that the product she was purchasing was not counterfeit.[ ...