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Harrison-Hoge Industries Inc. v. Panther Martin S.R.L.

March 31, 2008

HARRISON-HOGE INDUSTRIES, INC., PLAINTIFF AND COUNTERCLAIM DEFENDANT,
v.
PANTHER MARTIN S.R.L., DEFENDANT AND COUNTERCLAIM PLAINTIFF, AND AKUA, S.R.L. DEFENDANT.



The opinion of the court was delivered by: Joseph F. Bianco, District Judge

MEMORANDUM AND ORDER

Plaintiff Harrison Hoge Industries Inc. (Hereinafter, "HHI" or "plaintiff") brought the instant action for trademark infringement, confusion, unfair competition, copyright infringement, breach of contract, intentional interference with a contract and breach of the duty of good faith and fair dealing. Defendants Panther Martin S.r.l. and Akua S.r.l. ("Panther Martin" and "Akua" or "defendants") have counterclaimed, alleging breach of contract, trademark infringement, and false designation of origin. Defendants further requested a declaratory judgment as to trademark ownership.

Plaintiff moves for summary judgment, pursuant to Rule 56 of the Federal Rules of Civil Procedure. Defendants cross-move for summary judgment pursuant to Rules 54(b) and 56. For the reasons stated below, plaintiff's motion for summary judgement is denied. Defendants' cross-motion for summary judgement is granted in part and denied in part.

I. BACKGROUND

The Court has taken the facts described below from the parties' depositions, affidavits, exhibits, and respective Local Rule 56.1 statements of facts submitted by the parties. Upon consideration of a motion for summary judgment, the Court shall construe the facts in the light most favorable to the non-moving party. See Capobianco v. City of New York, 422 F.3d 47, 50 (2d Cir. 2001).

A. Facts

Plaintiff HHI is a second generation, family-owned business located in Port Jefferson, New York (Plaintiff's 56.1 Statement of Undisputed Facts (hereinafter, "Pl.'s 56.1") ¶¶ 1, 7.) HHI has been in the business of manufacturing and marketing fishing lures and other fishing equipment for wholesale and retail distribution since at least 1956. (Pl.'s 56.1 ¶ 3.) HHI is considered to be one of the premier companies in the fishing lure industry. (Pl.'s 56.1 ¶ 14.) HHI sell lures that it either manufactures itself or that it contracts with third party manufacturers to produce. HHI claims to own and use three main trademarks to identify its fishing lures and business, and prominently displays such trademarks in its advertising, on its website, and on its products. These trademarks are: Panther Martin, Animal Logo, and The Greatest Fish Catcher of All Time. (Pl.'s 56.1 ¶ 16.)

Defendants claim that they own the Panther Martin mark and that HHI has no right to claim ownership. (Def.'s Response to Pl.'s 56.1 ¶ 16.) Defendants assert that Stanislao Kuckiewicz, a Polish fisherman, invented and patented the spinning fishing lure manufactured and sold by Pozzi & Canegrati s.d.f. (Defs.' 56.1 ¶ 1.) Plaintiff does not dispute that Kuckiewicz patented a type of spinning fishing lure and that Pozzi & Canegrati s.d.f. sold these lures under its Martin trademark. However, plaintiff does dispute that these lures were called "Panther Martin" lures by Pozzi & Canegrati. (Pl.'s response to Defs.' 56.1 ¶ 1.) Plaintiff further disputes that these were the only types or style of fishing lures sold under the "Panther Martin" trademark. (Id.) Defendants assert that the Panther Martin lures were subsequently sold by Pozzi & Canegrati s.n.c. and Simplex s.r.l., which changed its name to Panther Martin s.r.l. (Defs.' 56.1 ¶ 2.) Plaintiff contends that Pozzi & Canegrati sold its lures under the Martin and Simplex trademarks that it owned and registered in Italy. Plaintiff further contends that the lures that Pozzi & Canegrati sold to HHI in the United States had the USPTO-registered Martin trademark. (Aff. of Cecil Hoge, Jr., Ex. 79.) Plaintiff points to an article in Il Pescatore about Simplex, in which the article refers to the lures sold by Pozzi & Canegrati and Simplex as being "Martin," not "Panther Martin." (Id.)

Defendants assert that Pozzi & Canegrati s.d.f., a de facto partnership, was founded in 1936 and registered with the Milan Chamber of Commerce. (Defs.' 56.1 ¶ 3.) Plaintiff disputes this fact and points to the Il Pescatore article about the history of Simplex lures that states that Pozzi & Canegrati was formed in 1938. (Pl.'s Response to Def.'s 56.1 ¶ 3.) Plaintiff also notes that the article does not indicate whether the partnership was registered with any Chamber of Commerce. (Id.) In 1938, Pozzi & Canegratti acquired the rights to the Panther Martin lures from Stanislao Kuckiewicz. (Defs.' 56.1 ¶ 4.)*fn1

Defendants assert that, prior to 1961, Pozzi & Canegrati sold its lures, embossed with the Panther Martin mark, to its United States distributor, Rockland Tackle Co. ("Rockland Tackle") (Defs.' 56.1 ¶ 11.) Plaintiff argues that defendants have neither produced nor cited any admissible evidence that Rockland Tackle Co. was a distributor of Pozzi & Canegrati, as opposed to an independent manufacturer and importer of fishing lures that it sold under its own name. (Pl.'s Response to Defs.' 56.1 ¶ 11.) Plaintiff assets that the Panther Martin trademark is registered to HHI by the USPTO. (Id.) Plaintiff further argues that defendants have produced and cited no evidence that the Panther Martin Trademark as registered by the USPTO was ever used by Pozzi & Canegrati s.d.f. (Id.) Plaintiff also contends that defendants have produced no evidence that any lure that Pozzi & Canegrati s.d.f. has sold to any company in the United States or anywhere else in the world has ever had HHI's USPTO-registered Panther Martin trademark on it. (Id.) Defendants assert that Panther Martin has been producing the Panther Martin lures continuously for almost 70 years. (Defs.' 56.1 ¶ 5.) Plaintiff contends that defendants have neither produced nor cited to evidence that shows that Pozzi & Canegrati s.d.f., Pozzi & Canegrati s.n.c., or Simplex s.r.l. ever used the Panther Martin trademark on their products. (Pl.'s Response to Defs.' 56.1 ¶ 5.) Plaintiff further asserts that defendants have neither produced nor cited any evidence that Pozzi & Canegrati ever used the Panther Martin trademark prior to 1958. (Id.) Plaintiff points to the USPTO trademark records- and Defendants' own documents - and allege that Pozzi & Canegrati first used the Martin - not the Panther Martin - trademark in the United States in 1958. (Id.) Plaintiff further points to the history provided in the Il Pescatore article that states that Pozzi & Canegrati and Simplex made and sold spoon blade lures under the names of "Simplex, Ardito, Terrible, Splendex and the magical Martin" but did not reference either company ever making lures that they sold under the name Panther Martin. (Cecil Hoge, Jr. Aff., Ex. 79.) Defendants contend that Panther Martin embossed the image of a panther and the word "Martin" (the "Panther Martin Mark"), Panther Martin's U.S. Trademark Number and "Italy" on Panther Martin lures. (Defs.' 56.1 ¶ 5.) "Martin" is the Italian name for the kingfisher, a bird known for its fishing prowess. (Defs.' 56.1 ¶ 8.) Defendants assert that the image of a panther was chosen due to the panther's ability to catch prey. (Def.'s 56.1 ¶ 7.) Defendants contend that the Panther Martin mark is derived from Panther Martin's Panther Martin mark and that the Panther Martin mark is recognized by customers in the United States. (Defs.' 56.1 ¶ 9.) Plaintiff asserts that USPTO records do not show that the image included by Defendants in the Martin trademark is a panther and defendants have introduced and cited no evidence to that effect. (Pl.'s Response to Defs.' 56.1 ¶ 6.) Plaintiff points to the USPTO records that show that the image accompanying the Martin trademark falls within the category of 02.01.08 - dogs; puppies and 03.01.24 - stylized cats, dogs, wolves, foxes, bears, lions, tigers. (Id.) Plaintiff notes that the USPTO does not use the term "panther" to describe the drawing. (Danas Supp. Dec. Exh. F.) Plaintiff also notes that the 2005 Il Pescatore article refers to Angelo Pollastri adopting the Martin name some time after 1946 without reference to any figure of an animal, let alone a panther. (Cecil Hoge, Jr. Aff. Ex. 79.)

Plaintiff claims to have acquired the Panther Martin trademark in 1961 when it purchased Rockland Tackle, a company which sold fishing lures under the Panther Martin trademark. (Pl.'s 56.1 ¶ 25.) Defendants dispute that HHI purchased the Panther Martin trademark/trade name from Rockland Tackle. (Hoge Aff. Ex. 3.) Defendants further assert that these lures were Pozzi & Canegrati lures sold under the Panther Martin name. (Defs.' 56.1 ¶ 12.) It is undisputed that Rockland Tackle did not register the name Panther Martin as a trademark. (Defs.' 56.1 ¶ 13.) Plaintiff does not dispute that some of the fishing lures that Rockland Tackle independently sold under the name Panther Martin were purchased by it from Pozzi & Canegrati s.d.f. (Pl.'s response to Defs.' 56.1 ¶ 12.) Plaintiff does dispute the implication that Rockland Tackle limited its use of its Panther Martin Trademark to only those lures made by Pozzi & Canegrati. (Pl.'s response to Defs.' 56.1 ¶ 14.) Further, Defendants assert that Rockland Tackle was Pozzi & Canegrati s.d.f.'s distributor in the United States, and had no ownership rights in Pozzi & Canegreti s.d.f.'s Panther Martin mark. (Nahum Decl. ¶ 16.) Defendants also contend that HHI's affiliate, Harrison Tackle, acted as Pozzi & Canegrati's exclusive Canadian distributor. (Defs.'s 56.1 ¶ 16.) Plaintiff asserts that defendants have produced no evidence that Harrison Tackle was a distributor for Pozzi & Canegrati as opposed to an independent importer of fishing lures. (Pl.'s Response to Defs.' 56.1 ¶ 17.)

After HHI's alleged acquisition of Rockland Tackle, HHI claims that it expanded the use of the Panther Martin trademark to include retail sales in the field of fishing equipment, as well as an Animal Logo trademark for fishing lures and retail sales of fishing equipment. (Pl.'s 56.1 ¶ 29.) HHI routinely sends its distributors catalogs and sample products as part of its advertising and promotional scheme. Defendants note that HHI's catalogs reflect that the only connection with the Panther Martin mark are the Panther Martin spinning Lures through the 1980's and 1990's. (Mertzel Decl. Ex. 5-28.) In February of 1961, HHI began using the Animal Logo trademark for fishing lures and retail sales of fishing equipment. (Pl.'s 56.1 ¶ 30.) Since Plaintiff's alleged acquisition of Rockland Tackle, HHI has, without interruption, marketed, advertised, distributed, and sold fishing lures and other products under the trademark Panther Martin. (Pl.'s 56.1 ¶ 40.) HHI markets a number of different styles of fishing lures under the Panther Martin, Animal Logo, and The Greatest Fish Catcher of All Time trademarks. These include, but are not limited to: Panther Martin spinner; Panther Martin Vivifs; Panther Martin Minnows; Panther Martin Frogs; Panther Martin Weedwings; and Panther Martin Stinky Shrimp. (Pl.'s 56.1 ¶ 83.) Further, HHI also offers a variety of promotional items in connection with its sale and advertisement of fishing lures and fishing equipment including, for example, caps given to customers who made purchases on their Internet website, patches for attachment to clothing, and fishing guides featuring the Lures using the Panther Martin Trademark. (Pl.'s 56.1 ¶ 79.)

Defendants assert that HHI sold several brands of lures including Vivifs, Johnny O'Neil's Weedwing, Bill Plummer's Skitter Frogs, Bass Frog, Harrison's Rocky lures, and "Italy's most famous fishing lure Panther Martin." (Def.'s 56.1 ¶ 20.) HHI did not invent Johnny O'Neil's Weedwing lure and, in fact, paid royalties to Johnny O'Neil in connection with sales of Weedwing lures. (Def.'s 56.1 ¶ 21.) HHI claims trademark rights in Weedwings. (Def.'s 56.1 ¶ 23.) HHI did not invent the Skitter Frog lure, Bass frog lure and paid royalties to Bill Plummer in connection with the sales of these lures. (Def.'s 56.1 ¶¶ 24, 25.) HHI did not invent the Harrison's Rocky lures and purchased the company that sold Harrison's Rocky lures. (Def.'s 56.1 ¶ 26.)

HHI did not invent the Vivif lure and purchased Vivif lures directly from the French manufacturer. (Def.'s 56.1 ¶ 27.) Defendants assert that HHI did not manufacture Vivif lures. (Def.'s 56.1 ¶ 28.) Plaintiff, however, contends that HHI contracted with other manufacturers, including Aitken Warner and Hong Kong Yat Tai, to manufacture Vivif lures. (Cecil Hoge Jr. Aff.; Thomas Cho Aff.) HHI did not originate the name Vivif. (Def.'s 56.1 ¶ 29.) HHI never registered the name Vivif as a trademark. (Def.'s 56.1 ¶ 30.) Plaintiff contends that HHI markets the Vivif lure using HHI's registered Panther Martin trademark. Plaintiff further contends that the Vivif lure is recognized as one of the "most legendary Panther Martin lures." (Cecil Hoge, Jr., Supp. Aff.) The French company that manufactured Vivif lures went out of business. (Def.'s 56.1 ¶ 31.) HHI claims trademark rights in the name Vivif. (Def.'s 56.1 ¶ 32.)

HHI claims that in the late 1960s or early 1970s, HHI began to use Panther Martin as a business name for Harrison Hoge Industries. Defendant counters that there is no evidence in the record for HHI's use of Panther Martin as a business name in the late 1960s and early 1970s. (Mertzel Decl. Ex 5-28.) Defendant cites to HHI's catalogs which used Harrison Hoge Industries as its business name. (Mertzel Decl. Ex. 5-28.) HHI claims that by the 1980s it also referred to its fishing lure line of business as the "Panther Martin Division of Harrison Hoge Industries," to distinguish it from HHI's other lines of business. (Pl.'s 56.1 at ¶ 86.) Defendents counter that, after the 1990 catalog, HHI did not again refer to the "Panther Martin Division" of HHI in its catalogs (Mertzel Decl. Ex 18-27), did not consistently use Panther Martin as a business name, and continued to distinguish between Panther Martin lures and other lures HHI distributed at least until June 6, 2005, as seen on the "About Us" page of HHI's website. (Nahum Decl. Ex. 9.)

Defendants assert that HHI did not invent the Panther Martin lure. (Defs.' 56.1 ¶ 33.) Plaintiff claims that from 1961 until 2005, some of the fishing lures that HHI sold under its Panther Martin, Animal Logo, and The Greatest Fish Catcher of All Time trademarks were purchased from a series of three Italian companies located in Milan, Italy. (Pl.'s 56.1 ¶ 120.) Defendants dispute that HHI purchased lures from a series of three different Italian companies located in Milan. Defendants assert that Pozzi & Canegrati s.d.f. and Pozzi & Canegratti s.n.c. were not different companies. (Costanza Decl. Ex. A at 3-5; Declaration of Giovanni Guglielmetti in Support of Plaintiff Harrison Hoge Industries, Inc.'s Motion for Summary Judgment Ex.C at HHI 127). Defendants also assert that HHI paid royalties to Dave Romeo and Brett Kennedy in connection with sales of painted Panther Martin lures. (Defs.' 56.1 ¶¶ 35, 36.) Plaintiff contends that it contracted with and paid royalties to Dave Romeo in connection with HHI's hiring him to design new colors and styles of lures that HHI had manufactured and sold under the Panther Martin trademark. (Cecil Hoge, Jr. Aff.)

Defendants point out that HHI recognized Panther Martin as the same Company HHI had been dealing with for "almost 50 years." To support this assertion defendants cite to an email from Cecil Hoge to Daniel Nahum in which Hoge wrote "Dear Lelio and Daniel - For almost 50 years our two companies have mutually benefitted from our profitable relationship." (Costanza Decl. Ex. A at Ex. 7.)

Commencing in 1961, pursuant to oral agreements and purchase orders, HHI began purchasing fishing lures from Pozzi & Canegrati s.d.f. (Pl.'s 56.1 ¶ 124.) Rockland Tackle had been purchasing lures from Pozzi & Canegrati. (Pl.'56.1 ¶ 125.) The fishing lures bought by HHI from Pozzi & Canegrati s.d.f. in Italy and other countries were sold by Pozzi & Canegrati s.d.f. under the "Martin" trademark. (Pl.'s 56.1 ¶ 126.) The "Martin" trademark consists of the word "Martin" with the stylized symbol of an animal. (Pl.'s 56.1 at ¶ 127.) Plaintiff asserts that the stylized symbol of an animal in the "Martin" trademark is entirely different and distinct from the Animal Logo created and used by HHI. (Pl.'s 56.1 ¶ 128.) Defendants, however, contend that the animals used in Panther Martin mark is similar to the Animal Logo, in that both marks use a panther. (Nahum Decl.¶ 5.) In fact, defendants assert that since at least 1962, Pozzi & Canegrati granted HHI and its predecessors exclusive rights for distributing and advertising Panther Martin lures in the United States, their territories, and possessions. (Defs.' 56.1 ¶ 37.) Plaintiff asserts that the defendants have produced no evidence showing any agreement between HHI and Pozzi & Canegrati for HHI to act as an agent or distributor as opposed to an exclusive buying agreement. (Pl.'s response to Defs.' 56.1 ¶ 37.)

In 1972, Pozzi & Canegrati s.d.f. registered "Martin" as a trademark in Italy. (Pl.'s 56.1 ¶ 139.) This "Martin" trademark was used and stamped on the blades of the fishing lures that it produced and sold to HHI. (Id.) Plaintiff claims that prior to and on May 16, 1973, Pozzi & Canegrati sdf had never used the Panther Martin trademark in either Italy or anywhere else in the world. (Pl.'s 56.1 ¶ 140.) Plaintiff asserts that during its existence, Pozzi & Canegrati sdf never registered the Panther Martin, Animal Logo, or The Greatest Fish Catcher of All Time trademarks with any governmental authority anywhere in the world. (Pl.'s 56.1 ¶ 143.) Defendants, however, assert that the Panther Martin Mark was used with Pozzi & Canegrati's knowledge and permission to identify Pozzi & Canegratti's lures embossed with the Panther Martin Mark in the United States since at least 1958. (Nahum Decl. ¶ 16.) In a letter dated May 16, 1973, Pozzi & Canegrati s.d.f. stated as follows:

We also have registered the trade-name "Panther Martin" hoping that this could value even in your country. Unfortunately the registration made in Italy has no value for U.S.A. So we agree to give you the Esclusive [sic] right of selling "Spinner Martin" in all your U.S.A., and to authorize you to deposit and register [sic] with trade-man our "Spinner Martin Panther" with the clause il [sic] you will stop to sell the P.M. in U.S.A., we will be free to sell again our P.M. in all U.S.A.

(Defs.' 56.1 ¶ 38.)

In 1974, HHI filed an application to register the Panther Martin trademark with the United States Patent and Trademark Office (hereinafter "USPTO"). (Pl.'s 56.1 ¶ 144.) In 1974, Pozzi & Canegrati s.d.f. filed an application to register its "Martin" trademark with the USPTO. (Pl.'s 56.1 ¶ 145.) Pozzi & Canegrati s.d.f. never objected to HHI's application to register the Panther Martin trademark with the USPTO. (Pl.'s 56.1 ¶ 146.) Defendants assert that HHI's registration of the Panther Martin mark was made with Panther Martin's express permission. (Defs.' 56.1 ¶ 41.) Plaintiff asserts that defendants have produced no evidence showing that HHI received permission from Pozzi & Canegrati to register HHI's Panther Martin trademark with USPTO. (Pl.'s response to defs.' 56.1 ¶ 41.) Plaintiff further asserts that the May 16, 1973 letter clearly refers to the Martin trademark used by Pozzi & Canegrati. (Cecil Hoge, Jr. Aff.)

In 1975, the USPTO registered Pozzi & Canegrati s.d.f.'s "Martin" trademark in the United States. (Pl.'s 56.1 ¶ 147.) Defendants, however, assert that Pozzi & Canegrati registered the Panther Martin mark with the USPTO. (Defs.' 56.1 ¶ 42.) Plaintiff, however, contends that defendants have provided no evidence that the trademark that Pozzi & Canegrati registered with the USPTO was the "Panther Martin" trademark. (Pl.'s response to defs.' 56.1 ¶ 42.) Plaintiff further asserts that the USPTO records do not show that the image included by defendants in their Martin trademark is a panther. Plaintiff points out that the USPTO records show that the image accompanying the Martin trademark falls within the category 03.01.08 - dogs; puppies and 03.01.24 - stylized cats, dogs, wolves, foxes, bears, lions, tigers. (Id.) Plaintiff further notes that the USPTO does not use the term "panther" to describe the drawing.

In March 1979, HHI and Pozzi & Canegrati s.d.f. entered into an agreement dated March 26, 1979 which gave HHI exclusive worldwide rights to buy and sell Pozzi & Canegrati s.d.f.'s products bought and sold by HHI under the name Panther Martin. (Pl.'s 56.1 ¶ 149.) Defendants further assert that this agreement gave HHI exclusive worldwide rights to market Pozzi & Canegrati s.d.f.'s products under Pozzi & Canegrati s.d.f.'s Panther Martin Mark. (Defs.' 56.1 ¶ 43.) Plaintiff, however, contends that defendants have produced no evidence to show that Pozzi & Canegrati s.d.f. has ever owned or used HHI's Panther Martin mark. (Pl.'s Response to Def.'s 56.1 ¶ 43.) The March 26, 1979 letter agreement was drafted by HHI, except for the following addition added by Pozzi & Canegrati: "N.B. - we want to define precisely that this agreement regard only the metal bait denominated Panther Martin." (Defs.' 56.1 ¶ 44.) Plaintiff notes that the agreement was with Pozzi & Canegrati s.d.f. and that the "N.B." is not an indication that Pozzi & Canegrati s.d.f. owned the Panther Martin trademark, but merely indicates the lures that HHI was choosing to buy defendants. (Cecil Hoge, Jr. Aff.)

HHI and Pozzi & Canegrati s.d.f. also entered into a written agreement dated March 30, 1979 in which Pozzi & Canegrati s.d.f. gave HHI the exclusive right to purchase and sell in the United States fishing lures manufactured by Pozzi & Canegrati s.d.f. (Pl.'s 56.1 ¶ 150.) The contract states that "the parties now intend to ratify their past relations." (Defs.' 56.1 ¶ 46.) In pertinent part the March 30, 1979 contract states:

- POZZI*fn2 is engaged in the manufacture and sales of artificial Lures called "Panther Martin" hereinafter called "Lures), and carries out this activity in the city of Milan (Italy), where it has its legal residence under the laws of Italy.

- HOGE is engaged in, among other things, the importation, sales, promotion and advertising of said Lures, of various types, colours and, dimensions.

- since June 1962 and earlier POZZI has orally granted, and confirmed in writing a letter dated 16th May 1973, as can be seen from prior correspondence, to HOGE (and previously to Hanison Industries inc. to Harrison Home Products Corp and to Tackle Trading Corp. To which HOGE succeeded), the exclusive rights for importing to the United States, their territories and possessions, Canada Excluded Lures of its own production, imported, sold, promoted and advertised by HOGE and by the other companies referred to above under the name of PANTHER MARTIN (hereinafter called Lures) in all their various types, colours and dimensions.

(Pl.'s 56.1 ¶ 154.)

The contract further states that: (1) Pozzi & Canegrati "is the holder of the trade mark `Panther Martin'" (Defs.' 56.1 ¶ 49); (2) "HOGE undertakes to do its utmost to increase the sales of Lures in the United States and to increase the volume of its purchases of said Lures from Pozzi" (Defs.' 56.1 ¶ 52); (3) it "ratifies all the agreements made between the parties and may not be modified unless by the appropriate instrument signed by both parties" (Defs.' 56.1 ¶ 53); (4) "the rights and obligations ratified by the present contract are now understood to be extended to possible heirs, executors, administers, successors or assignees of both parties" (Defs.' 56.1 ¶ 55); (5) "the parties have agreed to the purchase of HOGE of the above finished Lures for the exclusive sales and distribution of the same by HOGE in the United States, their territories and possessions" (Defs.' 56.1 ¶ 56); (6) "[i]f for reasons of force majeure e.g. war, strikes, flooding, [sic] etc. POZZI is unable to make deliveries within 120 days from the consignment date confirmed by POZZI, HOGE shall have the right to manufacture or have other[s] manufacture the Lures ordered, in this case paying to POZZI a royalty of 5% on the related net sales" (Defs.' 56.1 ¶ 58); (7) it "shall remain in force as long as HOGE continues to sell the Lures in the territories indicated and for the period that shall subsequently be specified. Should said sales terminate, HOGE shall grant to POZZI the rights for the commercial denomination of the Lures and shall hand back the exclusive sales rights granted to HOGE" (Defs.' 56.1 ¶ 59); and (8) "[t]he present contract shall be interpreted and applied according to the laws of procedures of the State of New York and the Italian Republic; in the case of discrepancy between the two interpreting resources shall be made to arbitration which shall be exercised according to the standards of the Commercial Arbitration Society of the State of New York or alternatively by the corresponding Italian body" (Defs.' 56.1 ¶ 60.) The 1979 Contract states that "Pozzi. . . . authorizes [sic] HOGE to deposit in its own name the trademark `PANTHER-MARTIN' at the United States Patent Office." (Defs.' 56.1 ¶ 57.) Plaintiff indicates that this quotation is misleading because key language is not included. (Pl.'s response to defs.' 56.1 ¶ 57.) Defendants assert that the Italian translation of the 1979 Contract states that Pozzi & Canegrati is the "titolare" of the Panther Martin trademark. (Defs.' 56.1 ¶ 50.*fn3) The 1979 does not contain any provision prohibiting assignment. (Defs.' 56.1 ¶ 54.) Walter Bressan and Angelo Pollastri signed the 1979 Contract for and in the name of Pozzi & Canegrati, a de facto company. (Defs.' 56.1 ¶ 61.)

As of March 30, 1979, Pozzi & Canegrati s.d.f. had registered the "Martin" trademark in both the United States and in Italy. However, Pozzi & Canegrati s.d.f. never registered the "Panther Martin" trademark anywhere in the world. (Pl.'s 56.1 ¶ 159, 160.) Plaintiff claims that, as of March 30, 1979, Pozzi & Canegrati s.d.f. never used the Panther Martin trademark. (Pl.'s 56.1 ¶ 161.) Defendants assert, however, that the Panther Martin trademark was used with Pozzi & Canegrati's knowledge and permission to identify Pozzi & Canegrati's lures embossed with the Panther Martin mark in the United States beginning at least as early as 1958. (Hoge Aff. Ex.4 at HH 021487; C. Hoge Dep. 57:2-5; Nahum Decl. at ¶ 16.) Plaintiff asserts that the March 1979 agreement contains no provision requiring HHI to transfer or otherwise assign its existing 1975 USPTO registration of the Panther Martin trademark to Pozzi & Canegrati s.d.f. (Pl.'s 56.1 ¶ 162.) Defendants, however, point to a provision in the 1979 contract which states that "[s]hould said sales terminate, HOGE shall grant to Pozzi the rights for the commercial denomination of the [PANTHER MARTIN] lures. . . ." (Nahum Decl. Ex. 7.) Plaintiff further asserts that the March 1979 contact contains no provisions giving Pozzi & Canegrati s.d.f. the right to control, specify, review, approve, or reject HHI's use of the Panther Martin trademark, including, but not limited to, HHI's use of the Panther Martin trademark in any aspect of HHI's business, including, but not limited to, HHI's advertising, products, or packaging. (Affidavit of Cecil Hoge, Jr., including ¶¶ 181-201; Pl.'s Summ. J. Exh. 47.)

Plaintiff claims that HHI interpreted the March 30, 1979 agreement as a recognition by Pozzi Canegrati s.d.f. of HHI's exclusive ownership of the Panther Martin trademark, which has been owned and used by HHI since 1961 and was already registered with the USPTO as of 1975. (Pl.'s 56.1 ¶ 169.) Defendants assert, however, the 1979 contract says nothing that could reasonably be interpreted as recognizing HHI's exclusive ownership of the Panther Martin mark. Further, defendants assert that the 1979 Contract expressly states that Pozzi & Canegrati is "the holder of the trademark `Panther Martin.'" (Nahum Decl. Ex. 7.) Moreover, defendants point to a letter dated December 14, 1979, in which Cecil Hoge wrote to Walter Bressan & Angelo Pollastri, owners of Pozzi & Canegrati s.d.f. stating: "[w]e would never simply produce Panther Martins without paying you a royalty on each Panther Martin we made. . . . We would expect that any Panther Martin lures we produce. . . . would be done so with your permission. . . ." (Nahum Decl. Ex. 10.) Plaintiff claims that, based upon their understanding of the March 1979 agreement, HHI continued to purchase fishing lures from Pozzi & Canegrati s.d.f. (Pl.'s 56.1 ¶ 170.)

In 1980, HHI filed its statement of continued use of the Panther Martin trademark with the USPTO. (Pl.'s 56.1 ¶ 171.) Plaintiff asserts that in 1981, HHI's registration and ownership of the Panther Martin trademark in the United States became incontestable under the Lanham Act, 15 U.S.C. § 1065. (Pl.'s 56.1 ¶ 172.) Defendants dispute that the incontestable status is valid. (Def.'s response to Pl.'s 56.1 ¶ 172.) At no time during its dealing with HHI did Pozzi & Canegrati s.d.f. ever object to HHI's use of the Panther Martin, Animal Logo, or The Greatest Fish Catcher of All Time trademarks. (Pl.'s 56.1 ¶ 173.)

In 1981, the Milan Chamber of Commerce issued a certificate reflecting that Pozzi & Canegrati was converted into Pozzi & Canegrati s.n.c., (formal general partnership), whose members were Walter Bressan and Angelo Pollastri. (Defs.' 56.1 ¶ 62.) Plaintiff asserts that the cited document and English translation thereof provided by the defendants does not say this. (Giovanni Guglielmetti Decl.) Defendants assert that Pozzi & Canegrati s.d.f. and Pozzi & Canegrati s.n.c. are the same partnership in a different legal form. (Defs.' 56.1 ¶ 64.) Plaintiff disputes that Pozzi & Canegrati s.d.f. and Pozzi & Canegrati s.n.c. are the same partnership in a different legal form. (Giovanni Guglielmetti Decl.) HHI continued its business relations with Pozzi & Canegrati s.n.c. after Pozzi & Canegrati s.d.f. became Pozzi & Canegrati s.n.c. (Defs.' 56.1 ¶ 65.)

Commencing in 1981 and continuing until 1992, HHI began to purchase fishing lures from Pozzi & Canegrati s.n.c. (Pl.'s 56.1 ¶ 175.) Plaintiff claims that HHI and Pozzi & Canegrati s.d.f. ceased doing business with each other in 1981. (Pl.'s 56.1 ¶ 174.) Defendents assert that HHI continued doing business with Pozzi & Canegrati s.n.c., which is the same partnership as Pozzi & Canegrati s.d.f. in a different legal form, and therefore HII never ceased doing business with Pozzi & Canegrati s.d.f. (Costanza Decl. Ex. A. at 3-5, Ex.2.) Plaintiff alleges that the purchases between HHI and Pozzi & Canegrati s.n.c. were pursuant to oral agreements and purchase orders placed with Pozzi & Canegrati s.n.c. (Pl.'s 56.1 ¶ 176.) Defendants argue, however, that HHI's purchases from Pozzi & Canegrati s.n.c. were made pursuant to the 1979 contract. (Nahum Decl. Ex. 7.) By an assignment dated January 14, 1983, Pozzi & Canegrati s.d.f. assigned its U.S. registration of its "Martin" trademark to Pozzi & Canegrati s.n.c. (Pl.'s 56.1 ¶ 177.) Plaintiff asserts that Pozzi & Canegrati s.d.f. never assigned the March 30, 1979 agreement with HHI to Pozzi & Canegrati s.n.c. (Pl.'s 56.1 ¶ 178.) Defendants agree that an assignment was never made but note that such assignment was not necessary because Pozzi & Canegrati s.d.f. was converted into Pozzi & Canegrati s.n.c. (Costanza Decl. Ex. A at 3, 5 n.2.)

At no time during its existence did Pozzi & Canegrati s.n.c. ever register the Panther Martin, Animal Logo, or Greatest Fish Catcher of All Time trademarks with any governmental authority in the United States, Italy, or any other country in the world. (Pl.'s 56.1 ¶¶ 181, 182, 183.) At no time did Pozzi & Canegrati s.n.c. ever use the Panther Martin trademark in its catalogs. (Pl.'s 56.1 ¶ 184.) Plaintiff further asserts that Pozzi & Canegratti s.n.c. never used the Panther Martin trademark in the packaging of its products. (Pl.'s 56.1 ¶ 185.) Defendants argue, however, that HHI was Pozzi & Canegrati s.n.c.'s distributor, and that HHI's authorized use of the Panther Martin mark in packaging Pozzi & Canegrati's lure constitutes Pozzi & Canegrati's use of the trademark. (Aff. of Cecil Hoge, Jr., including ¶ 140, 286; Pl.'s Summ. J. Ex. 43; Nahum Dep. at 146-47.) According to plaintiff, at no time did Pozzi & Canegrati s.n.c. ever use The Greatest Fish Catcher of All Time or the Animal Logo trademarks. (Pl.'s 56.1 ¶¶ 186, 187.)

Between 1981 and 1992, HHI continued to use the Panther Martin, Animal Logo, and The Greatest Fish Catcher of All Time trademarks in conjunction with its business and the marketing, advertising, and selling of fishing lures and other products, including on products made by companies other than Pozzi & Canegrati. (Pl.'s 56.1 ¶¶ 188, 189.) Defendants argue, however, that there is no evidence to establish that HHI used the Panther Martin mark on products made by companies other than Pozzi & Canegrati s.n.c. from 1981 through 1992. (Defs.' response to Pl.'s 56.1 ¶ 189.) Plaintiff contends that Pozzi & Canegrati s.n.c. ever objected to HHI's use of the Panther Martin, Animal Logo or The Greatest Fish Catcher of All Time trademarks in connection with its business or with fishing lures and products made by companies other than Pozzi & Canegrati s.n.c. (Pl.'s 56.1 ¶ 190.) Defendants dispute the implication that Pozzi & Canegrati s.n.c. had knowledge that HHI used the Panther Martin mark in connection with its business or with fishing lures and products made by companies other than Pozzi & Canegrati s.n.c. (Nahum Decl. ¶ 39.)

Plaintiff claims that Pozzi & Canegrati was not involved with how HHI used the Panther Martin Trademark in its business. (Pl.'s 56.1 ¶ 191.) Defendants argue, however, that Pozzi & Canegrati were involved with the manufacturing, quality control, design and promotion of goods on which HHI used the Panther Martin mark. (Nahum Decl. ¶¶ 28-29, Ex. 12.) HHI exclusively selected and determined what products it would buy from Pozzi & Canegrati and sell under the Panther Martin trademark. (Pl.'s 56.1 ¶ 192.) HHI contends that the relationship between HHI and Pozzi & Canegrati was one of exclusive buyer and seller, not manufacturer and distributor or manufacturer and agent. (Pl.'s 56.1 ¶ 193.) Defendants disagree and, instead, claim that the relationship between HHI and Pozzi & Canegrati was one of distributor and manufacturer. (Constanza Decl. Ex. A at 2; Nahum Decl. ¶¶ 32-38, Ex. 7.)

Harrison Hoge exclusively designed the packaging for lures it bought from Pozzi and Canegrati and sold under the Panther Martin trademark. (Pl.'s 56.1 ¶ 194.) Plaintiff contends that all catalogs, advertising, and other promotional material that HHI created using the Panther Martin trademark on lures purchased from Pozzi & Canegrati were made by HHI, most of which were personally created by Cecil Hoge, Jr. (Pl.'s 56.1 ¶ 195.) Plaintiff further contends that no one at Pozzi & Canegrati ever assisted, participated in or had any input or say over this advertising. (Pl.'s 56.1 ¶ 195.) Defendants disagree, asserting that it is untrue that no one at Pozzi & Canegrati ever assisted in or had any say over HHI's catalogs using the Panther Martin mark. (Nathan Decl. ¶ 37, Ex. 12.) Pozzi & Canegrati never paid for any of the promotional material HHI created and used for the Panther Martin trademark. (Pl.'s 56.1 ¶ 196.) Plaintiff contends that once HHI purchased a product from Pozzi & Canegrati, HHI was free to sell it as HHI saw fit. (Pl.'s 56.1 ¶ 197.) Defendants disagree and assert that HHI needed permission from Pozzi & Canegrati before selling Pozzi & Canegrati's Panther Martin lures outside of the United States, its territories, and possessions. (Nahum Decl.) Defendants point to two emails in which HHI requested permission to sell the lures in a particular area or include the lures in a new catalog. (Nahum Decl. Exs. 12, 13.) HHI claims that it periodically sent copies of its catalogs and advertisements to Pozzi & Canegrati. (Pl.'s 56.1 ¶ 198.) Plaintiff claims that this information was sent to Pozzi and Canegrati after the catalogs and advertisements had already been published. (Pl.'s 56.1 ¶ 198.) Defendants dispute, however, that they received HHI's catalogs and cite to only one instance, in 1984, in which they received a catalog. (Nahum Decl. ¶ 12.) According to plaintiff, Pozzi & Canegrati never provided HHI with any promotional materials and guidelines on how to use the Panther Martin trademark. (Pl.'s 56.1 ¶ 199.)

In its distribution agreements with other companies , HHI es t a b l is hes a pricing/commission structure for lures that distributors sell under the Panther Martin trademark. HHI provides the product training and sales materials and totally controls the development of catalogs and products and develops the marketing material using the Panther Martin trademark. (Pl.'s 56.1 ¶ 200.) Neither Angelo Pollastri nor Walter Bressan, the two owners of Pozzi & Canegrati, ever expressed any opinion regarding HHI's use of either the "Martin" or "Panther Martin" trademarks. (Pl.'s 56.1 ¶ 201.) Defendants dispute any implication that Mr. Pollastri or Mr. Bressan had any knowledge of HHI's abuse of the Panther Martin mark. (Nahum Decl. ¶ 39; Hoge Aff. Ex. 11 at HH 000528.) HHI never placed the name of Pozzi & Canegrati on any of the packages for the products, advertisements, or catalogs that HHI used with the Panther Martin trademark. (Pl.'s 56.1 ¶ 202.)

Plaintiff asserts that Pozzi & Canegrati and Simplex are companies unknown to the U.S. trade and consumer markets. (Pl.'s 56.1 ¶ 203.) Plaintiff further asserts that, the company names Pozzi & Canegrati and Simplex would not be recognized by consumers, and they are not associated with the Panther Martin mark. (Pl.'s 56.1 ¶ 203.)

Defendants, however, argue that the Panther Martin mark is associated with Panther Martin. (Nahum Decl. ¶ 8.) For example, on May 30, 2007, Kelly Brandt, a customer in the United States, e-mailed Panther Martin as follows:

"I would really like to be able to order your lures directly from your factory in Milano because the quality of the Panthers in the U.S. are very poor. They are now made in China and they do not hold up to the fish I catch, (mostly large German Brown Trout). Could you please send me information including costs in English so that I could place an order for some excellent quality Panther Martin lures. I love these lures and would appreciate the opportunity to do business with you."

(Nahum Decl. Ex. 25.)

Pozzi & Canegrati never directly marketed its lures in the United States. (Pl.'s 56.1 ¶ 204.) Plaintiff contends that Pozzi & Canegrati never used the Panther Martin trademark in the United States. (Pl.'s 56.1 ¶ 205.) Defendants, however, assert that HHI was Pozzi & Canegrati's distributor in the United States. (Nahum Decl. Ex. 7.) HHI and Pozzi & Canegrati s.n.c. ceased doing business with each other in 1992 . (Pl.'s 56.1 at ¶ 206.)

Simplex was established in 1992 by Walter Bressan and Angelo Pollastri. (Defs.' 56.1 ¶ 68.) Plaintiff contends that there is no evidence that Walter Bressan and Angelo Pollastri established Simplex on their own. (Pl.'s response to defs.' 56.1 ¶ 68.) Defendants assert that Simplex retained the same address, telephone, and fax number it had as Pozzi & Canegrati s.n.c. (Defs.' 56.1 ¶ 69.) Plaintiff, however, contends that both plaintiff and defendants' expert witness agree that Simplex s.r.l. is a different company than Pozzi & Canegrati s.n.c. Plaintiff points out that Lelio Nahum testified that Simplex and Pozzi & Canegrati s.n.c. were separate companies. (Nahum Decl. ¶ 27.) Plaintiff further notes that Mr. Nahum also testified at his deposition that the property that Simplex occupied was owned by POBRE, which is a different company than either Pozzi & Canegrati s.n.c. or Simplex. (Nahum Dep. At 66.) Therefore, plaintiff contends that as a separate company and legal entity, the address certainly was not what Simplex "had as Pozzi Canegrati." (Pl.'s response to Defs.' 56.1 ¶ 69.)

In 1992, Pozzi & Canegrati s.n.c. sent a letter to its customers and suppliers dated June 10, 1992 stating that "herewith we want to let you know that beginning 10/01/92 our company has changed itself to Simplex s.r.l." (Pl.'s 56.1 ¶ 207.) In that letter, Pozzi & Canegrati s.n.c. wrote that it would "be glad to answer any further questions you may have." (Defs.' 56.1 ¶ 71.) Plaintiff claims that in reliance upon this representation, and believing that Pozzi & Canegrati had simply changed its name to Simplex s.r.l., HHI commenced doing business with Simplex s.r.l. (Pl.'s 56.1 ¶ 208.) Defendants dispute that HHI believed that Pozzi & Canegrati had simply changed its name to Simplex s.r.l. Defendants contend that Simplex identified itself as Simplex s.r.l., "s.r.l." stands for "societa a responsabilita limita" (or limited liability company), and that s.r.l. is the most commonly used corporate form in Italy. (Nahum Decl. ¶ 11.) Plaintiff asserts that undisclosed to HHI, Simplex s.r.l. was an entirely new and separate company from Pozzi & Canegrati s.n.c. which had been established on May 28, 1992. (Pl.'s 56.1 ¶ 209.) Defendants dispute that Pozzi & Canegrati s.n.c. did not disclose to HHI that Simplex s.r.l. was a new company formed by the same partners that owned Pozzi & Canegrati s.n.c.

Prior to December 3, 2004, the name of defendant Panther Martin s.r.l. was Simplex s.r.l. (Pl.'s 56.1 ¶ 210.) Defendant Simplex/PM is currently a manufacturer of fishing lures. (Pl.'s 56.1 ¶ 211.) Prior to December 2004, defendant Simplex/PM was also in the metal stamping business. (Pl.'s 56.1 ¶ 211.) The shareholders of Simplex/PM from 1992 until October 2004 were: Walter Bressan, Angelo Pollastri, Maria Grazia Orlandi, and Maria Grazia Bertoldi. (Pl.'s 56.1 ¶ 212.) Plaintiff contends that defendant Akua is a company engaged in the marketing and distribution of fishing lures, including those of defendant Simplex/PM. (Pl.'s 56.1 ¶ 213.) Defendants, however, assert that Akua's business is selling everything "from hooks to boots to reels, rods, everything." (Nahum Dep. at 220:23-221:4.) Defendant Akua owns ninety-nine percent of the shares of Defendant Simplex/PM. (Pl.'s 56.1 ¶ 214.) Akua has 45 employees. (Defs.' 56.1 ¶ 101.) From 1992 through 1997, Pozzi & Canegrati s.n.c. continued to exist as a separate legal entity from Simplex s.r.l. (Pl.'s 56.1 ¶ 215.)

In 1992, pursuant to Italian Law, Pozzi & Canegrati s.n.c. entered into a three-year, nonrenewable lease of its business to Simplex, s.r.l. (Pl.'s 56.1 ¶ 216.) The existence of the three year, non-renewable lease between Pozzi & Canegrati s.n.c. and Simplex, s.r.l. was never disclosed to HHI. (Pl.'s 56.1 ¶ 217.) The lease expired in 1995. (Pl.'s 56.1 ¶ 218.) Plaintiff claims that upon expiration of the three year lease, Simplex s.r.l. no longer had any legal rights to the business of Pozzi & Canegrati s.n.c. (Pl.'s 56.1 ¶ 219.) Defendants dispute that upon expiration of the three year lease, Simplex s.r.l. no longer had any legal rights to the business of Pozzi & Canegrati s.n.c. (Costanza Decl. Ex. A at 6-7.) Defendants claim that, irrespective of the contents of the lease agreement, Simplex received a de facto assignment of Pozzi & Canegrati's relationship with HHI, including an assignment of the 1979 Contract. (Costanza Decl. Ex. A at 6-7.) In 1997, Pozzi & Canegrati s.n.c. was wound up following a procedure without liquidation under Italian law. (Pl.'s 56.1 at ¶ 220.) Defendants assert that the assets were transferred to Simplex. (Nahum Decl. Ex. 2.)

Between 1992 and 1997, Pozzi & Canegrati s.n.c. retained ownership of the "Martin" trademarks that it had registered and used in the United States and Italy for fishing lures made and sold by Simplex s.r.l. to HHI. (Pl.'s 56.1 ¶ 221.) For example, Pozzi Canegrati s.n.c. filed an application dated February 22, 1995 to renew the U.S. "Martin" trademark with the USPTO. (Pl.'s 56.1 ¶ 222.) Said renewal was granted by USPTO action dated June 15, 1995. (Pl.'s 56.1 ¶ 222.) In 1997, Pozzi & Canegrati s.n.c. filed with the Italian government written assignments to Simplex s.r.l. of the "Martin" trademarks Pozzi & Canegrati s.n.c. had registered for use on fishing lures. (Pl.'s 56.1 ¶ 223.) Defendants assert that, in or about 1997, Simplex registered the domain name panthermartin.com and used it as the "url" for its web page. (Defs.' 56.1 ¶ 77.)

In 1998, Pozzi & Canegrati s.n.c. filed with the USPTO a written assignment of the U.S. "Martin" trademark registration to Simplex s.r.l. (Pl.'s 56.1 ¶ 224.) The assignment from Pozzi & Canegrati s.n.c. to Simplex s.r.l. of the USPTO Martin trademark registration had an execution date of March 26, 1998. (Pl.'s 56.1 ¶ 225.) Plaintiff contends that at no time during its dealings with HHI did Simplex s.r.l. ever disclose to HHI that it was not the same company as Pozzi & Canegrati s.n.c. (Pl.'s 56.1 ¶ 226.)

Plaintiff asserts that the first time that HHI learned that Simplex was an entirely different company from Pozzi & Canegrati s.n.c. was in the fall of 2005, when defendant Simplex/PM filed copies of the Italian corporation registration records as a Plaintiff Summary Judgment Exhibit in a failed attempt to initiate arbitration of this dispute in Milan, Italy. (Pl.'s 56.1 ¶ 227.) Defendants dispute this assertion and note that by letter dated 06/10/92, Pozzi & Canegrati s.n.c. informed HHI - and all of its customers - that "beginning of 10/01/92 our company changed itself in Simplex s.r.l." (Costanza Decl. Ex. A. at Ex. 5.)

Plaintiff asserts that Pozzi & Canegrati s.n.c. never assigned to Simplex s.r.l. the March 30, 1979 agreement between Pozzi & Canegrati and HHI. (Pl.'s 56.1 ¶ 228.) Defendants contend that Pozzi & Canegrati assigned the 1979 Contract to Simplex s.r.l. in parallel with the lease agreement (Costanza Decl. Ex. A at 7.) Plaintiff asserts that Pozzi & Canegrati s.d.f. never assigned to Simplex s.r.l. the March 30, 1979 agreements between Pozzi & Canegrati and HHI. (Pl.'s 56.1 ¶ 229.) Defendants contend, however, that Pozzi & Canegrati s.n.c.'s assignment of the 1979 contract to Simplex s.r.l. constitutes Pozzi & Canegrati s.d.f.'s assignment of the contract to Simplex s.r.l. (Costanza Decl. Ex. A. at 3, 9.) According to plaintiff, HHI never assigned the March 30, 1979 agreement to Simplex s.r.l. (Pl.'s 56.1 ¶ 230.) HHI and Pozzi & Canegrati s.d.f. never entered into a written modification of the March 30, 1979 agreement substituting Simplex s.r.l. for Pozzi & Canegrati s.d.f. as a party to the agreement. (Pl.'s 56.1 ¶ 231.) HHI and Simplex s.r.l. never entered into a new written agreement similar to the one that HHI and Pozzi& Canegrati s.d.f. entered into dated March 30, 1979. (Pl.'s 56.1 ¶ 232.)

Between 1992 and December 2004, HHI continued to use the Panther Martin, Animal Logo, and The Greatest Fish Catcher of All Time trademarks in conjunction with its business and marketing, advertising, and selling of fishing lures and other products. (Pl.'s 56.1 ¶ 233.) Between 1992 and December 2004, HHI used the Panther Martin, Animal Logo , and The Greatest Fish Catcher of All Time trademarks in marketing, advertising, and selling fishing lures and other products made by companies other than Simplex, s.r.l. (Pl.'s 56.1 ¶ 234.)

Plaintiff asserts that HHI's product catalogs frequently featured on their covers pictures of fishing lures made by companies other than Simplex s.r.l. Plaintiff further asserts that the covers of these catalogs only had the words Panther Martin plus HHI's Animal Logo. (Pl.'s 56.1 ¶ 235.) Defendants, however, contend that until recent years, all of HHI's catalogs had the name Harrison Hoge, Inc. on the cover, including the 1993, 1994, and 1996 catalogs. (Mertzel Decl. Ex. 18, 19, 21.) Defendants further contend that the first catalog to use the Panther Martin mark on the cover, without HHI's logo and with the image of lures other than Panther Martin lures was the 2004 catalog. (Mertzel Decl. Ex. 5-28.) Only one of the four products on the cover of HHI's 2004 Panther Martin catalog was made by Simplex. (Pl.'s 56.1 ¶ 236.)

Plaintiff asserts that HHI's Panther Martin catalogs listed as Panther Martin fishing lures Frogs, Weedwings, Rockys, and other lures not made by Simplex. (Pl.'s 56.1 ¶ 237.) Defendants dispute that HHI's catalogs were "HHI's Panther Martin" catalogs, and the implication that those catalogs dealt with Frogs, Weedwings, Rockys, and other lures not made by Panther Martin as Panther Martin brands. (Mertzel Decl. Ex. 16 at HH 000412-413, Ex. 17 at HH 000426, Ex. 20 at HH 000478.) Defendants contend that the catalogs advertised Panther Martin's Panther Martin lures, but distinguished between lures made by Panther Martin or its predecessors from other lures. (Id.) HHI produced catalogs at least six months to a year in advance. (Pl.'s 56.1 ¶ 238.) Plaintiff asserts that HHI sent copies of all of its catalogs to Pozzi & Canegrati s.d.f., Pozzi & Canegrati s.n.c., and Simplex s.r.l. (Pl.'s 56.1 ¶ 239.) Plaintiff asserts that HHI's catalogs were sent by HHI to the Italian company for informational purposes only. (Pl.'s 56.1 ¶ 240.) Defendants deny that such copies were sent. (Nahum Decl. ¶ 39.) Plaintiff further asserts that HHI periodically sent copies of its advertising to Pozzi & Canegrati s.d.f., Pozzi & Canegrati s.n.c., and Simplex s.r.l. (Pl.'s 56.1 ¶ 241.) Defendants deny that such copies were sent. (Nahum Decl. ¶ 39.)

At no time between 1992 and December 2004 did Simplex s.r.l. ever object to HHI's use of the Panther Martin, Animal Logo, or The Greatest Fish Catcher of All Time trademarks in connection with its business or with fishing lures and products made by companies other than Simplex s.r.l. (Pl.'s 56.1 ¶ 243.) At no time between 1961 and December 2004 did Pozzi & Canegratti, Pozzi & Canegratti s.n.c., or Simplex s.r.l. ever object to HHI's use of the Panther Martin, Animal Logo, or The Greatest Fish Catcher of All Time trademarks. (Pl.'s 56.1 ¶ 244.) ...


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