Goorin Bros., Inc. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A

S.D. Florida

Goorin Bros., Inc. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A

DecidedNovember 6, 2023

Docket1:23-cv-23405

StatusUnknown

This text of Goorin Bros., Inc. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A (Goorin Bros., Inc. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A) is published on Counsel Stack Legal Research, covering District Court, S.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Goorin Bros., Inc. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A, (S.D. Fla. 2023).

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Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA GOORIN BROS., INC.,

Plaintiff,

v. Case No.: 1:23-23405-Civ-Williams/Reid

THE INDIVIDUALS, CORPORATIONS, LIMITED LIABILITY COMPANIES, PARTNERSHIPS, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A,

Defendants.

REPORT AND RECOMMENDATION ON PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

This matter is before the Court on Plaintiff’s Motion for Preliminary Injunction (the “Application”). [ECF No. 17]. United States District Court Judge Kathleen M. Williams referred the motion to me for a report and recommendation. [ECF No. 18]. Plaintiff Goorin Bros., Inc. moves for entry of a preliminary injunction against Defendants, the Individuals, Business Entities, and Unincorporated Associations identified on Schedule A hereto (collectively “Defendants”), and an entry of an order restraining the financial accounts used by Defendants, pursuant to 15 U.S.C. § 1116 and Fed. R. Civ. P. 65, and The All Writs Act, 28 U.S.C. § 1651(a). For the following reasons, the Court RECOMMENDS that Plaintiff’s Application be GRANTED. [ECF No. 17]. I. Factual Background Plaintiff Goorin Bros, Inc. is the owner of the following trademarks and copyright registrations (respectively, the “GOORIN BROS. Trademarks” and “GOORIN BROS. Copyrights”), which are valid and registered on the Principal Register of the United States Patent and Trademark Office and The Copyright Office. A list of the GOORIN BROS. Trademarks is included in the below chart:

A list of the GOORIN BROS. Copyrights is included in the below chart:

Copyright Reg. No. VA 2-294-500 R3199 Snow Leopard BLK Mar. 4, 2022 VA 2-012-523 Mar. 10, 2016 VA 2-012-748 Mar. 10, 2016 Squirrel Master Animal Farm — a collection of VA 2-012-657 Goorin hats with embroidered patches depicting Mar. 10, 2016 various animals along with a short phrase VA 2-192-832 Apr. 5, 2019 VA 2-192-767 Apr. 5, 2019 VA 2-192-792 Apr. 5, 2019 VA 2-192-800 Apr. 5, 2019 VA 2-255-929 Wise Ass Owl Jun. 4, 2021 VA 2-192-820 Woody Wood Apr. 5, 2019 VA 2-012-735 X the Owl Mar. 10, 2016 The Defendants, through the various Internet based e-commerce stores operating under the seller identities identified on Schedule A hereto (the “Seller IDs”), have advertised, promoted, offered for sale, or sold goods bearing and/or using what the Plaintiff has determined to be counterfeits, infringements, reproductions, or colorable imitations of the GOORIN BROS. Trademarks and GOORIN BROS. Copyrights. See Declaration of Ben Goorin (“Goorin Decl.”), 99 9-17. The Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the GOORIN BROS. Trademarks or GOORIN BROS. Copyrights. See Goorin Decl., § 17. The Plaintiff investigated the promotion and sale of counterfeit and infringing versions of the Plaintiff's branded and copyright protected products by the Defendants. See Goorin Decl., □ 12-15. Plaintiff accessed each of the e-commerce stores operating under the Defendants’ Seller IDs, initiated the ordering process for the purchase of a product from each of the Seller IDs bearing counterfeits of the GOORIN BROS. Trademarks and Copyrights at issue in this action, and completed a checkout page requesting each product to be shipped to an address in the Southern District of Florida. See id. The Plaintiff conducted a review and visually inspected the GOORIN

BROS. branded and copyrighted items and the items for which orders were initiated by Plaintiff’s third-party investigator via the Seller IDs, and determined the products were non-genuine, unauthorized versions of the Plaintiff’s products. See id. II. Legal Standard

In order to obtain a preliminary injunction, a party must demonstrate “(1) [there is] a substantial likelihood of success on the merits; (2) that irreparable injury will be suffered if the relief is not granted; (3) that the threatened injury outweighs the harm the relief would inflict on the non-movant; and (4) that the entry of the relief would serve the public interest.” Schiavo ex. rel Schindler v. Schiavo, 403 F.3d 1223, 1225–26 (11th Cir. 2005); see also Levi Strauss & Co. v. Sunrise Int’l. Trading Inc., 51 F.3d 982, 985 (11th Cir. 1995) (applying the test to a preliminary injunction in a Lanham Act case). III. Conclusions of Law

The declarations Plaintiff submitted in support of its Application support the following conclusions of law: A. Plaintiff has a strong probability of proving at trial that consumers are likely to be confused by Defendants’ advertisement, promotion, sale, offer for sale, and/or distribution of goods bearing and/or using counterfeits, reproductions, or colorable imitations of Plaintiff’s Trademarks and/or Copyrights, and that the products Defendants are selling and promoting for sale are copies of Plaintiff’s respective products that bear and/or use copies of Plaintiff’s respective Trademarks and/or Copyrights. B. Because of the infringement of Plaintiff’s Trademarks and Copyrights, Plaintiff is likely to suffer immediate and irreparable injury if a preliminary injunction is not granted. The

following specific facts, as set forth in Plaintiff’s Complaint, Application, and accompanying declarations, demonstrate that immediate and irreparable loss, damage, and injury will result to Plaintiff and to consumers before Defendants can be heard in opposition unless Plaintiff’s request for relief is granted: 1. Defendants own or control e-commerce stores and commercial Internet

websites operating under their respective seller identification names and domain names which advertise, promote, offer for sale, and sell products bearing and/or using counterfeit and infringing trademarks and copyrights in violation of Plaintiff’s respective rights; 2. There is good cause to believe that more counterfeit and infringing products bearing and/or using Plaintiff’s trademarks and copyrights will appear in the marketplace; that consumers are likely to be misled, confused, and/or disappointed by the quality of these products; and that Plaintiff may suffer loss of sales for its genuine products; and C. The balance of potential harm to Defendants in restraining their trade in counterfeit

and infringing branded goods if a preliminary injunction is issued is far outweighed by the potential harm to Plaintiff, its reputation, and its goodwill as manufacturers and distributors of quality products if such relief is not issued. D. The public interest favors issuance of the preliminary injunction to protect Plaintiff’s trademark and copyright interests and protects the public from being defrauded by the palming off of counterfeit goods as Plaintiff’s genuine goods. E. Under 15 U.S.C. § 1117(a), Plaintiff may be entitled to recover, as an equitable remedy, the illegal profits gained through Defendants’ distribution and sales of goods bearing and/or using counterfeits and infringements of Plaintiff’s Trademarks and Copyrights. See Reebok Int’l, Ltd. v. Marnatech Enters., Inc., 970 F.2d 552, 559 (9th Cir. 1992) (quoting Fuller Brush

Prods. Co. v. Fuller Brush Co., 299 F.2d 772, 777 (7th Cir. 1962) (“An accounting of profits under § 1117(a) is not synonymous with an award of monetary damages: ‘[a]n accounting for profits . . .

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