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

CourtDistrict Court, S.D. Florida
DecidedJuly 15, 2024
Docket1:24-cv-21809
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.

Bluebook
Goorin Bros., Inc. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A, (S.D. Fla. 2024).

Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA MIAMI DIVISION CASE NO.: 24-cv-21809-WILLIAMS/GOODMAN GOORIN BROS., INC., Plaintiff, v. 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 hearing. [ECF No. 23]. 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”)1, 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).

1 Schedule A, which is attached, identifies Defendants who are still parties to this case. Plaintiff does not seek a preliminary injunction order against dismissed Defendants. For the following reasons, the Undersigned RESPECTFULLY RECOMMENDS that Plaintiff's Application be GRANTED. 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: U.S. TM Reg. No. 3,293,389 Sep. 18, 2007 3,293,390 Sep. 18, 2007 3,293,391 Castle Mark Sep. 18, 2007 3,293,392 Castle Mark Sep. 18, 2007 3,338,514 Nov. 20, 2007 3,338,916 Castle Mark Nov. 20, 2007 3,825,020 GOORIN BROS. ul. 27, 2010 3,825,023 GOORIN BROS. ul. 27, 2010 3,825,024 GOORIN BROS. ul 27, 2010 5,479,732 Squirrel Mark May 29, 2018 6,839,726 GOORIN BROS. Sep. 6, 2022 6,866,607 Castle Mark Oct. 4, 2022 6,866,608 GOORIN BROS. Oct. 4, 2022 7,189,474 Castle Mark Oct. 10, 2023 A list of the GOORIN BROS. Copyrights is included in the below chart: Cc ight Reg. o. VA 2012-523 Mar. 10, 2016 VA 2-012-524 Black Sheep Mar. 10, 2016 VA 2-012-525 Mar. 10, 2016 Squirrel Master Animal Farm — a collection VA 2012-657 of Goorin hats with embroidered patches Mar. 10, 2016

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Cc ight Reg. o. VA 2-255-985 R1866 Cub Bear Apr. 2, 2021 VA 2-255-986 R2052 Dark Horse Apr. 2, 2021 VA 2-255-987 R1314 Bird Jun. 4, 2021 VA 2-255-989 R2169 Chill Turtle Apr. 2, 2021 VA 2-264-229 R1318 Bitch Dog Jun. 4, 2021 VA 2-264-236 R1829 Rack Deer Jun. 4, 2021 VA 2-264-537 R1761 Buck Fever Leaping Apr. 09, 2021 VA 2-265-284 R1909 Snap Gator Jun. 4, 2021 VA 2-265-312 R1317 Beaver Jun. 4, 2021 VA 2-265-492 R1311 Cock Patch Jun. 4, 2021 VA 2-265-493 R1316 Fo Jun. 4, 2021 VA 2-294-500 R3199 Snow Leopard BLK Mar. 4, 2022 VA 2-294-518 R3194 Hard Buffalo WHI Mar. 4, 2022 VA 2-294-526 R3192 Alpha Dog Mar. 4, 2022

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 Chris Gibbins (“Gibbins Decl.”), {J 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 Gibbins 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 Gibbins 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 it 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

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Goorin Bros., Inc. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A, Counsel Stack Legal Research, https://law.counselstack.com/opinion/goorin-bros-inc-v-the-individuals-corporations-limited-liability-flsd-2024.