The opinion of the court was delivered by: Joseph F. Bianco, District Judge
Plaintiff Koon Chun Hing Kee Soy & Sauce Factory, Ltd., ("Koon Chun") brings this trademark action against defendants Star Mark Management, Inc. ("Star Mark"), Great Mark Corporation ("Great Mark"), Jimmy Zhan ("Zhan"), the president of Star Mark and Great Mark, and John Does 1 through 10 (collectively, "defendants"). Plaintiff alleges the following claims against defendants: (1) infringement of plaintiffs' registered trademark in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114(1); (2) counterfeiting of plaintiff's registered trademark in violation of Section 34 of the Lanham Act, 15 U.S.C. § 1116; (3) infringement of plaintiff's trade dress in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (4) unfair competition in violation of Section 35(a) of the Lanham Act, 15 U.S.C. § 1125(a); (5) dilution in violation of New York General Business Law § 360-l; and (6) trademark infringement and unfair competition under the common law.
The Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121 and 28 U.S.C. § 1338, which confer jurisdiction over actions involving violations of trademarks, 28 U.S.C § 1331, which authorizes jurisdiction over civil actions arising under federal law, and principles of pendent jurisdiction as to the state law claims.
Plaintiff moves for summary judgment as to the trademark and trade dress infringement, and the counterfeiting claims under the Lanham Act. For the reasons that follow, plaintiff's motion is granted in part and denied in part.
Defendants also move for summary judgment as to plaintiff's claim for recovery of profits lost as a result of the alleged infringing activity by defendants. For the reasons that follow, defendants' motion is denied.
Plaintiff also moves for reimbursement of its costs and fees incurred in litigating defendants' motion. For the reasons that follow, plaintiff's motion is denied.
This case was re-assigned to the undersigned from the Honorable John Gleeson on February 10, 2006. The Court held oral argument on the instant motions on December 8, 2006.
A. ADMISSIBILITY OF PLAINTIFF'S SUPPORTING EVIDENCE
Initially, this Court finds that plaintiff has offered admissible proof in support of its motion. Specifically, the Court finds that (1) the supporting declaration of Raymond Chan ("Chan Declaration") dated July 17, 2005, and (2) certain business records of Koon Chun may be considered in ruling on the instant motions for summary judgment.
Rule 56(e) of the Federal Rules of Civil Procedure provides that, upon a motion for summary judgment, "[s]upporting . . . affidavits shall be made on personal knowledge, shall set forth such facts as would be admissible in evidence, and shall show affirmatively that the affiant is competent to testify to the matters stated therein."*fn1 The test for admissibility "is whether a reasonable trier of fact could believe the witness had personal knowledge." Searles v. First Fortis Life Ins. Co., 98 F. Supp. 2d 456, 461 (S.D.N.Y. 2000).
In multiple submissions to the Court, defendants argue that (1) Chan lacks personal knowledge to make the statements in his declaration regarding Koon Chun's manufacturing and packaging processes or the business records he reviewed in preparing the declaration, and (2) "there is no evidence to support the admissibility" of the duplicates of Koon Chun's business records offered in support of plaintiff's motion. (Dfts.' Memorandum in Opposition to Pl.'s Motion (hereinafter, "Dfts.' Opp. Mem.") at 6.) For the reasons that follow, the Court finds that (1) Chan has personal knowledge of the manufacturing and packaging processes of Koon Chun described in the declaration, and of the information contained in the business records he reviewed in his official capacity in preparing the declaration, and (2) plaintiff has provided a sufficient basis for the business records to be considered by the Court in ruling on the instant motions.
The deposition testimony of Chan demonstrates that, even before he began work at Koon Chun, he had "personal experience" with Koon Chun's manufacturing and packaging processes. (Declaration of Anthony A. Coppola in Support of Pl.'s Motion (hereinafter, "Coppola Decl.") Exh. 1.) Specifically, Chan testified that, between 1967 and 2004, he visited the Koon Chun factory approximately twenty times and, during those visits, obtained "a very good idea" of how the hoisin sauce was "manufactured and how it got packaged." (Id.) Although Chan observed the processes at issue in more exacting detail in 2004, the Court finds that his uncontroverted testimony describing prior personal experience with those processes demonstrates sufficient personal knowledge, pursuant to Rule 56(e), to support the statements contained in his declaration. (Id.)
Moreover, as an officer of Koon Chun, Chan may offer evidence in his declaration based on personal knowledge obtained from a review of his company's records. See Searles, 98 F. Supp. 2d at 461; Zakre v. Norddeutsche Landesbank Girozentrale, 396 F. Supp. 2d 483, 504 (S.D.N.Y. 2005) ("[A]n affiant may also testify as to the contents of records that [he] reviewed in [his] official capacity."); Danone Asia Pte v. Happy Dragon Wholesale, Inc., No. 05 Civ. 1611 (CPS), 2006 WL 845573, at *4 n.3 (E.D.N.Y. March 29, 2006) (finding that the affiant, "as an officer of [the plaintiff corporation]" may offer evidence based on personal observations and information obtained from a review of the company's records). Chan states in his declaration that he is a Regional Manager of Koon Chun. (Declaration of Raymond Chan (hereinafter, "Chan Decl.") ¶ 1.) Accordingly, the Court finds that Chan's position with Koon Chun "qualified [him] to review the relevant business materials in an official capacity and [to] make sworn statements based upon those materials." Searles, 98 F. Supp. 2d at 461.
Therefore, the Court finds that Chan had personal knowledge of the facts contained in his declaration. Accordingly, the Chan Declaration is admissible in its entirety and may be considered by the Court pursuant to Rule 56(e).
2. Business Records of Koon Chun
The Court finds that the copies of business records of Koon Chun offered in support of plaintiff's motion would be admissible at trial pursuant to the business records exception to the rule against hearsay and, therefore, may be considered by the Court pursuant to Rule 56(e). Rule 803(6) of the Federal Rules of Evidence provides in pertinent part that a record, "made at or near the time by . . . a person with knowledge, if kept in the course of a regularly conducted business activity, and if it was the regular practice of that business activity to make the . . . record," is admissible upon the "testimony of the custodian or other qualified witness," absent some indication of untrustworthiness. FED R. EVID. 803(6). Thus, when offering business records in support of a motion for summary judgment, in order to avoid the bar against hearsay, the offering party should present an affidavit "from a document custodian" that "explain[s] whether [the records] were kept in the ordinary course of business," although that person "need not have personal knowledge of the actual creation of the document." Tradax Energy, Inc. v. Cedar Petrochemicals, Inc., 317 F. Supp. 2d 373, 378-79 (S.D.N.Y. 2004); see United States v. Chang An-Lo, 851 F.2d 547, 557 (2d Cir. 1988), cert. denied, 488 U.S. 966 (1988) (noting that "someone who is sufficiently familiar with the business practice must testify that [the] records were made as part of that practice").
In this case, after defendants raised the authentication issue in their opposition papers, plaintiff submitted two declarations by Wing Ming Tam ("Tam"), a Manager in Koon Chun's Hong Kong factory responsible for "accounting and administration."*fn2 (Declaration of Wing Ming Tam dated Dec. 15, 2006 in Further Support of Pl.'s Motion (hereinafter, "Tam Decl.") ¶¶ 1-2.) In his declaration dated December 15, 2006, Tam states that all of the business records of Koon Chun at issue in this case were prepared by Tam or others in the "ordinary course" of business and that it was the "ordinary business practice" of Koon Chun to prepare such records. Id. ¶¶ 5 & passim. Accordingly, the business records of Koon Chun offered in support of plaintiff's motion are admissible and will be considered by the Court in ruling upon the instant motions.*fn3 See Bayway Refining Co. v. Oxygenated Marketing and Trading A.G., 215 F.3d 219, 226-27 (2d Cir. 2000) (finding that at the summary judgment stage "reply papers may properly address new material issues raised in the opposition papers so as to avoid giving unfair advantage to the answering party") (internal quotation marks omitted); Ruggiero v. Warner-Lambert Co., 424 F.3d 249, 252 (2d Cir. 2005) ("[T]he issue was first raised in [d]efendants' summary-judgment reply papers. . . . [T]he district court had discretion to consider it.") (internal citations omitted); see also Tradax Energy, 317 F. Supp. 2d at 379 (permitting plaintiff additional time to submit affidavits from the appropriate document custodian in order to establish the authenticity of records); cf. Mattera v. Clear Channel Commc'ns Inc., - F. Supp. 2d -, No. 06 Civ. 1878 (DC), 2006 WL 3290836, at *12 n.4 (S.D.N.Y. Nov. 14, 2006) (considering affidavits attached to a reply memorandum of law in further support of a motion to dismiss).
Moreover, a "duplicate is admissible to the same extent as an original unless (1) a genuine question is raised as to the authenticity of the original or (2) in the circumstances it would be unfair to admit the duplicate in lieu of the original." Fed. R. Evid. 1003. The party opposing the introduction of a duplicate has the burden of demonstrating "a genuine issue as to the authenticity of the unintroduced original, or as to the trustworthiness of the duplicate, or as to the fairness of substituting the duplicate for the original." Chang An-Lo, 851 F.2d at 557 (quoting United States v. Georgalis, 631 F.2d 1199, 1205 (5th Cir. 1980)); see also Colormaster Printing Ink Co. v. S.S. ASIAFREIGHTER, No. 75 Civ. 5204, et al. (JMC), 1991 WL 60413, at *3 (S.D.N.Y. April 9, 1991). Here, defendants raise "no genuine issue with respect to any of these concerns." Chang An-Lo, 851 F.2d at 557. Instead, defendants simply note that Chan "has never seen the originals of the documents" referred to in his declaration and point to plaintiff's initial failure to present a custodian of the documents referenced in the Chan Declaration. (Dfts.' Mem. in Opp. at 7.) Therefore, because plaintiff has since produced the declaration of a document custodian, Tam, defendants fail to "raise a genuine question as to the" authenticity of the duplicate business records relied upon in the Chan Declaration.*fn4 Ball v. A.O. Smith Corp., 451 F.3d 66, 71 (2d Cir. 2006); see Colormaster, 1991 WL 60413, at *3 ("[M]ere speculation is not sufficient to raise a showing of a genuine issue as to authenticity or unfairness."). Accordingly, the Court finds that defendants have not met their burden of demonstrating a genuine issue as to the authenticity of the duplicate records or any unfairness that may result from admission of the records.*fn5
The following facts are taken from the parties' depositions, declarations, exhibits and respective Local Rule 56.1 statements of facts.*fn6 Upon consideration of a motion for summary judgment, the Court construes the facts in the light most favorable to the nonmoving party. See Capobianco v. City of New York, 422 F.3d 47, 50 (2d Cir. 2005). Thus, with regard to plaintiff's motion as to the infringement and counterfeiting claims, the Court will construe the relevant facts in favor of defendants; and with regard to defendants' motion as to plaintiff's recovery of lost profits, the Court will construe the relevant facts in favor of plaintiff.
Plaintiff Koon Chun manufactures and distributes various sauces, seasonings, and vinegars used in Chinese foods. (Chan Decl. ¶ 1.) Koon Chun's sole manufacturing facility is located in Hong Kong, where, among other products, the company produces hoisin sauce - a sweet and spicy sauce used in cooking and as a condiment for Chinese foods, such as Peking Duck. (Pl.'s Statement of Uncontroverted Facts in Support of its Motion (hereinafter, "Pl.'s 56.1") ¶¶ 1- 4; Chan Decl. ¶ 15.) Koon Chun uses the mark "Koon Chun Sauce Factory" on all of its products. (Chan Decl. ¶ 17.) Koon Chun registered this mark with the United States Patent and Trademark Office ("PTO"), Registration No. 1,410,790. (Pl.'s 56.1 ¶ 4.)
Koon Chun sells all of its products to local trading companies in Hong Kong; the products are then distributed in other countries, including the United States. (Dfts.' Local Rule 56.1 Statement of Material Facts (hereinafter, "Dfts.' 56.1") ¶¶ 12-14.) During all relevant times, Koon Chun did not have any formal agreements with authorized dealers or distributors in the United States. (Id. ¶ 13.)
Star Mark is a New York corporation that imports, purchases, and sells food items to supermarkets, restaurant product distributors, and retailers. (Declaration of Jimmy Zhan in Opposition to Pl.'s Motion (hereinafter, "Zhan Decl.") ¶¶ 3, 8; Pl.'s Deposition of Jimmy Zhan, December 21, 2005, (hereinafter, "Zhan Dep.")) Great Mark is also a New York Corporation. (Zhan Dep.) Zhan is the President of both Star Mark and Great Mark. (Id.) Both corporations stored inventory and conducted business in a single building in Brooklyn, New York. (Id.)
Plaintiff's complaint also includes several unnamed defendants - "John Does 1 through 10" - and alleges, "[u]pon information and belief," that they were engaged in the manufacture, import, distribution, and/or selling ...