Coach, Inc. v. Farmers Market & Auction

881 F. Supp. 2d 695, 2012 WL 3195132, 2012 U.S. Dist. LEXIS 110123
CourtDistrict Court, D. Maryland
DecidedAugust 7, 2012
DocketCivil Action No. AW-11-01239
StatusPublished
Cited by10 cases

This text of 881 F. Supp. 2d 695 (Coach, Inc. v. Farmers Market & Auction) is published on Counsel Stack Legal Research, covering District Court, D. Maryland primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Coach, Inc. v. Farmers Market & Auction, 881 F. Supp. 2d 695, 2012 WL 3195132, 2012 U.S. Dist. LEXIS 110123 (D. Md. 2012).

Opinion

MEMORANDUM OPINION

ALEXANDER WILLIAMS, JR., District Judge.

Plaintiffs Coach, Inc. and Coach Services, Inc. (“Coach”) bring this action against, inter alia, Defendants Farmers Market & Auction a/k/a Charlotte Hall Flea Market (“Farmers Market & Auction”) and Benjamin H. Burroughs, Jr. (“Burroughs”) (collectively “the Market Defendants”). Plaintiffs assert direct and contributory claims for trademark infringement and counterfeiting, trade dress infringement, false designation of origin and false advertising, .trademark dilution, copyright infringement, and unjust enrichment. Pending before the Court is the [698]*698Market Defendants’ Motion to Dismiss or, in the Alternative, Motion to Strike (“Motion to Dismiss”). The Court has reviewed the motions papers and record and finds no hearing necessary. For the reasons articulated below, the Court DENIES the Market Defendants’ Motion to Dismiss.

1. FACTUAL AND PROCEDURAL BACKGROUND

The following facts are taken from the Third Amended Complaint and assumed to be true. Coach, Inc. is a Maryland corporation with its principle place of business in New York. Doc. No. 33-3 at 2. Coach Services, Inc. is a Maryland corporation with its principle place of business in Florida. Id.1 Coach manufactures, markets, and sells products such as handbags, wallets, and watches. Id. at 4. These products may be purchased from Coach through its stores or website, or from third parties. Id. Coach products are recognizable due to the company’s use of trademarks, trade dresses, and design elements. Id. Coach protects its intellectual property through the use of trademarks, trade dresses, design elements, and copyrights. Id. The trademarks and trade dresses at issue have been continuously used and have never been abandoned, and the trademarks and copyrights at issue have been registered with the appropriate government offices. Id. at 9-10.2

Defendant Farmers Market & Auction is a Maryland corporation with its principal place of business in Maryland. Id. at 2. Defendant Burroughs is an individual residing in Mechanicsville, Maryland, and does business as Farmers Market & Auction in Charlotte Hall, Maryland. Id. at 3. Although there are several other Defendants, the instant Motion to Dismiss seeks dismissal of the claims against only the Market Defendants.

On or about June 10, 2008, the Farmers Market & Auction site was raided by the St. Mary’s County Sheriffs Department. Id. at 11. Numerous articles were seized, including a total of more than 600 counterfeit Coach items (e.g., handbags, sunglasses, wallets, shorts, keychains, and jewelry). Id. Ten vendors were prosecuted pursuant to this raid, each of whom pleaded guilty to counterfeiting or received deferred sentencing. Id. Two years later, on or about June 12, 2010, the same sheriffs department conducted a second raid of the site, during which about fifty counterfeit Coach handbags, wallets, and pairs of shoes were seized. Id. Each of the counterfeit items bore at least one registered Coach mark. Id. at 11-12. Two vendors were charged with felony trademark counterfeiting. Id. at 12.

On or about June 29, 2010, Coach sent the Market Defendants a cease and desist letter, wherein Coach demanded that the Market Defendants halt all allegedly infringing activities. Id. at 12. On or about August 9, 2010, Burroughs responded by letter, stating only that Farmers Market & Auction distributes a flier that states “no bootleg ... merchandise may be sold” and attaching a copy of that flier. Id. On or about August 9, 2010, Coach wrote a letter to Burroughs to inform him of its belief that he had a duty to police the flea market, but he never responded. Id.

On or about January 15, 2011, a Coach investigator visited the site and witnessed three vendors openly offering for sale [699]*699products bearing Coach marks. Id. The investigator approached one of the booths and observed about twenty handbags bearing Coach marks, one of which the investigator purchased for thirty dollars.3 Id. Additionally, the investigator observed at another booth about twenty-five handbags bearing Coach marks, one of which he purchased for thirty dollars.4, 5 Id. at 13. A Coach investigator examined both handbags and determined them to be counterfeit. Id. None of these vendors had a license, authority, or permission from Coach to use any of the described marks in connection with the designing, manufacturing, advertising, promoting, distributing, selling, and/or offering for sale of the products. Id. at 13-14.

On or about November 5, 2011, a Coach investigator, accompanied by St. Mary’s County law enforcement officers, visited the site and observed a vendor offering five items bearing Coach marks. Id. The officers seized those items, which were identified by the investigator as counterfeit Coach products. Id. None of these vendors had a license, authority, or permission from Coach to use any of the described marks in connection with the designing, manufacturing, advertising, promoting, distributing, selling, and/or offering for sale of the products. Id. at 13-14.

Coach alleges the following causes of action against the Market Defendants: (1) contributory trademark counterfeiting under 15 U.S.C. § 1114; (2) contributory trademark infringement under 15 U.S.C. § 1114; (3) contributory trade dress infringement under 15 U.S.C. § 1125(a); (4) contributory false designation of origin and false advertising under 15 U.S.C. § 1125(a); (5) contributory trademark dilution under 17 U.S.C. § 1125(c); and (6) contributory copyright infringement under 17 U.S.C. § 501. See id. at 21-29.

Coach filed its original Complaint on May 9, 2011. Doc. No. 1. The Market Defendants filed their Motion to Dismiss on June 17, 2011. Doc. No. 4. In response, Coach filed an Amended Complaint on July 8, 2011. Doc. No. 7. The Market Defendants filed a Second Motion to Dismiss on July 29, 2011. Doc. No, 13. Coach filed its response to the Second Motion to Dismiss on August 19, 2011. Doc. No. 16. The Market Defendants replied on September 6, 2011. Doc. No. 17.

On September 22, 2011, Coach filed a Motion for Leave to File a Second Amended Complaint. Doc. No. 18. This Court granted that Motion on January 5, 2012. Doc. No. 23. The Second Amended Complaint was registered on the same day. Doc. No. 24. The Market Defendants filed a Third Motion to Dismiss on January 26, 2012. Doc. No. 27. On March 12, 2012, after having filed a response to the Third Motion to Dismiss, Coach filed a Motion for Leave to file a Third Amended Complaint. Doc. No. 33. The Court granted that motion on April 2, 2012. Doc.

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881 F. Supp. 2d 695, 2012 WL 3195132, 2012 U.S. Dist. LEXIS 110123, Counsel Stack Legal Research, https://law.counselstack.com/opinion/coach-inc-v-farmers-market-auction-mdd-2012.