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Bath & Body Works Brand Mgmt., Inc. v. Summit Entm't, LLC

United States District Court, S.D. New York

March 21, 2014

BATH & BODY WORKS BRAND MANAGEMENT, INC., Plaintiff and Counter-Defendant,
v.
SUMMIT ENTERTAINMENT, LLC, Defendant and Counter-Claimant

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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For Bath & Body Works Brand Management, Inc., Plaintiff: Dale Margaret Cendali, LEAD ATTORNEY, Courtney Lee Farkas, Joshua Levicoff Simmons, Kirkland & Ellis LLP (NYC), New York, NY; Diana Marie Torres, PRO HAC VICE, Kirkland & Ellis LLP (LA), Los Angeles, CA; Mary Christine Mazzello, Kirkland & Ellis LLP, New York, NY; Steven Andrew Wilson, PRO HAC VICE, Kirkland & Ellis LLP, Los Angeles, CA.

For Summit Entertainment, LLC, Defendant: James E. Curry, PRO HAC VICE, Sheppard, Mullin, Richter & Hampton LLP, Los Angeles, CA; Jill M. Pietrini, Paul Alexander Bost, PRO HAC VICE, Sheppard, Mullin, Richter & Hampton LLP(Los Angeles) Los Angeles, CA; Paul Wendell Garrity, Theodore Conrad Max, Sheppard, Mullin, Richter & Hampton, LLP (NYC), New York, NY.

For Bath & Body Works Brand Management, Inc., Counter Defendant: James E. Curry, PRO HAC VICE, Sheppard, Mullin, Richter & Hampton LLP, Los Angeles, CA; Jill M. Pietrini, Paul Alexander Bost, PRO HAC VICE, Sheppard, Mullin, Richter & Hampton LLP(Los Angeles) Los Angeles, CA; Paul Wendell Garrity, Theodore Conrad Max, Sheppard, Mullin, Richter & Hampton, LLP (NYC), New York, NY.

For Bath & Body Works Brand Management, Inc., Counter Defendant: Dale Margaret Cendali, LEAD ATTORNEY, Courtney Lee Farkas, Joshua Levicoff Simmons, Kirkland & Ellis LLP (NYC), New York, NY; Diana Marie Torres, PRO HAC VICE, Kirkland & Ellis LLP (LA), Los Angeles, CA; Mary Christine Mazzello, Kirkland & Ellis LLP, New York, NY; Steven Andrew Wilson, PRO HAC VICE, Kirkland & Ellis LLP, Los Angeles, CA.

For Summit Entertainment, LLC, Counter Claimant: James E. Curry, PRO HAC VICE, Sheppard, Mullin, Richter & Hampton LLP, Los Angeles, CA; Jill M. Pietrini, Paul Alexander Bost, PRO HAC VICE, Sheppard, Mullin, Richter & Hampton LLP(Los Angeles) Los Angeles, CA; Theodore Conrad Max, Sheppard, Mullin, Richter & Hampton, LLP (NYC), New York, NY.

For Summit Entertainment, LLC, Counter Claimant: James E. Curry, PRO HAC VICE, Sheppard, Mullin, Richter & Hampton LLP, Los Angeles, CA; Jill M. Pietrini, Paul Alexander Bost, PRO HAC VICE, Sheppard, Mullin, Richter & Hampton LLP(Los Angeles) Los Angeles, CA; Paul Wendell Garrity, Theodore Conrad Max, Sheppard, Mullin, Richter & Hampton, LLP (NYC), New York, NY.

For Summit Entertainment, LLC, Counter Defendant: James E. Curry, PRO HAC VICE, Sheppard, Mullin, Richter & Hampton LLP, Los Angeles, CA; Jill M. Pietrini, Paul Alexander Bost, PRO HAC VICE, Sheppard, Mullin, Richter & Hampton LLP(Los Angeles) Los Angeles, CA; Paul Wendell Garrity, Theodore Conrad Max, Sheppard, Mullin, Richter & Hampton, LLP (NYC), New York, NY.

OPINION

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MEMORANDUM DECISION AND ORDER

GEORGE B. DANIELS, United States District Judge.

Plaintiff Bath & Body Works Brand Management, Inc., (" BBW" ) brought this

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declaratory judgment action against Summit Entertainment, LLC (" Summit" ), on March 8, 2011, to establish its right to use the marks Twilight Woods and Twilight Crush for personal care products.[1] ECF No. 1. BBW sells personal care products through its retail stores and website, BBW SUF ¶ ¶ 1-3.[2] Summit is the producer and distributor of the motion picture Twilight and its four sequels. BBW SUF ¶ 9. Summit filed a six count counterclaim, seeking judgment in its favor on all five of the grounds that BBW sought to establish, as well as seeking cancellation of the trademark registration of Twilight Woods and Twilight Crush. ECF No. 24. In its counterclaims, Summit charged BBW with willful false designation of origin, trademark infringement, trademark dilution, and trade dress infringement. Id. ¶ ¶ 27, 35, 42-43, 50. Summit subsequently amended its counterclaims three times.[3] On March 1, 2013, BBW filed the instant motion for summary judgment to dismiss Summit's counterclaims and grant BBW declaratory relief, ECF No. 114, BBW's motion for summary judgment is DENIED.

Background[4]

Twilight Woods is a line of personal care products that is part of BBW's Signature Collection, a group of products that features over two dozen fragrances. BBW SUE ¶ ¶ 115-16. In August 2008, BBW had no woods-scented product and began developing such a fragrance for launch in Fall 2009. Id. ¶ ¶ 145-46. In April 2009, and after considering and testing other names, Steve Lange, BBW's Vice President of Brand Development, testified that he, Sheila Patel, Director of Category Merchandising and David Skeens, a member of BBW's brand team, came up with the name Twilight Woods during a series of brainstorm sessions that primarily occurred via text message. Summit CSUF ¶ 322, That same month, Ms. Patel conducted an informal test of the names " Twilight Woods" and " Tuscan Woods" with consumers at a store in New York City. BBW SUF ¶ 155. Consumers mispronounced the name " Tuscan Woods" as " Tuscon Woods," as in Tucson, Arizona, and BBW selected the name " Twilight Woods" for its product line. Id. ¶ 156-57.

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Summit finances, produces, and distributes motion pictures. Summit CSUF ¶ 224. Summit optioned from author Stephenie Meyer the right to produce film adaptions of her Twilight series of books, and Summit released the first movie, Twilight, on November 21, 2008. Id. ¶ ¶ 225-26. Summit released the second installment, The Twilight Saga: New Moon, on November 20, 2009. Id. ¶ 227. The Twilight movie series has enjoyed widespread popularity and considerable commercial success. In total, Twilight grossed over $397 million at the box office, New Moon grossed over $700 million, and each of Twilight's subsequent movies grossed over $690 million. Id. ¶ ¶ 252-56.

Summit owns 40 U.S. trademark registrations for " Twilight," including the Twilight Motion Pictures trademark (collectively " the Twilight Marks" ). Id. ¶ 234. Summit's U.S. trademark registration for Twilight is in standard character format for the production and distribution of motion pictures, id. ¶ 235, and Summit first used the mark on April 18, 2008. Id. ¶ 236. Summit's Twilight trademark registrations include registrations for clothing, candles, and purses and other bags. Id. ¶ ¶ 237-242. Summit also has trademarks in Nox Twilight for nail polish in Class 3, with a filing date of November 24, 2010, and a registration date of July 17, 2012, and Luna Twilight for cosmetics in Class 3, with a filing date of May 28, 2009, and a March 8, 2011 registration date. Id. ¶ ¶ 243-244. Summit seeks trademark protection for all of its trademarks that include the term Twilight. See Third Amended Countercl. ¶ 9.

Legal Standard for Summary Judgment

Summary judgment is permissible " if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). " An issue of fact is genuine 'if the evidence is such that a jury could return a verdict for the nonmoving party.'" Gayle v. Gonyea, 313 F.3d 677, 682 (2d Cir. 2002) (quoting Anderson v. Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). A fact is material when " it 'might affect the outcome of the suit under the governing law.'" Id. (quoting Anderson, 477 U.S. at 248).

The party seeking summary judgment has the burden of demonstrating that no genuine issue of material fact exists. See Marvel Characters, Inc. v. Simon, 310 F.3d 280, 286 (2d Cir. 2002). In turn, to defeat a motion for summary judgment, the non-moving party must raise a genuine issue of material fact. To do so, it '" must do more than simply show that there is some metaphysical doubt as to the material facts,'" Caldarola v. Calabrese, 298 F.3d 156, 160 (2d Cir. 2002) (quoting Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)), and it " may not rely on conclusory allegations or unsubstantiated speculation." Fujitsu Ltd. v. Federal Express Corp., 247 F.3d 423, 428 (2d Cir. 2002) (citations and quotations omitted). Rather, the non-moving party must produce admissible evidence that supports its pleadings. See First Nat'l Bank of Arizona v. Cities Serv. Co., 391 U.S. 253, 289-90, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968). In this regard, " [t]he 'mere existence of a scintilla of evidence' supporting the non-movant's case is also insufficient to defeat summary judgment." Niagara Mohawk Power Corp. v. Jones Chem., Inc., 315 F.3d 171, 175 (2d Cir. 2003) (quoting Anderson, 477 U.S. at 252).

In determining whether a genuine issue of material fact exists, the court must construe

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the evidence in the light most favorable to the non-moving party and draw all inferences in that party's favor. See Niagara Mohawk, 315 F.3d at 175. Accordingly, the court's task is not to " weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson, 477 U.S. at 249. Summary judgment is therefore inappropriate " if there is any evidence in the record that could reasonably support a jury's verdict for the non-moving party." Marvel, 310 F.3d at 286 (citations and quotations omitted).

Trademark Infringement Claims

Counts 1 and 2 of Summit's third amended counterclaims assert claims for trademark infringement and false designation of origin under the Lanham Act, 15 U.S.C. § § 1114, 1125.[5] The Lanham Act protects the first user of a trademark by barring a later user from employing a similar mark that can confuse purchasers and besmirch the reputation of the first user. See Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 742 (2d Cir. 1998). In order to prevail on the Lanham Act claims of trademark infringement and false designation of origin, a plaintiff must show (1) that it has a valid mark that is entitled to protection and (2) that defendant's actions are likely to cause confusion between plaintiff's and defendant's services. See Virgin Enters. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003) (citations and quotations omitted).

1. Validity of the Marks

As noted, the first prong of the test for trademark infringement requires that the Twilight marks be entitled to protection. BBW does not challenge that Summit's Twilight marks are valid and entitled to protection, but claims instead that BBW has priority for the trademark Twilight for cosmetics and fragrances, based on the assignment from Coty on August 31, 2012. BBW SUF ¶ 18. However, Summit's trademark claims are not limited to its cosmetics products, Luna Twilight and Twilight Venom, and despite BBW's claim that they have priority as to Twilight for cosmetics and fragrances, nowhere does BBW dispute that any of Summit's other Twilight marks are valid marks entitled to protection.[6] Summit's federal registrations are prima facie evidence of its ownership of the Twilight marks, and BBW has ...


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