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Maui Jim v. Smartbuy Guru Enters.

Maui Jim v. Smartbuy Guru Enters.

United States District Court for the Northern District of Illinois, Eastern Division

February 7, 2020, Decided; February 24, 2020, Filed

No. 1:16 CV 9788

Opinion

 [*1069]  REDACTED PUBLIC VERSION of MEMORANDUM OPINION AND ORDER

MARVIN E. ASPEN, District Judge:

This is a voluminous intellectual property lawsuit with over 500 docket entries to date. Plaintiff Maui Jim, Inc. ("Maui Jim") alleges that the defendants sell non-genuine Maui-Jim-branded sunglasses while using its copyrighted photographs to falsely advertise that they are an authorized retailer. The defendants (collectively "Defendants," "SmartBuyGlasses," "SBG," or "Counterclaimants") counterclaim that Maui Jim's statements about their legitimacy amounts to defamation or, alternatively, warrant damages for unjust enrichment. Presently before us are Maui Jim's motions for summary judgment (Pl.'s Counterclaim MSJ (Dkt. No. 420); Pl.'s Copyright MSJ (Dkt. No. 423); Pl.'s MSJ on Lanham Act and Related State Law Claims ("Lanham MSJ") (Dkt. No. 426)) and Defendants' motion for summary judgment in their favor on both Maui Jim's [**3]  claims and their counterclaims. (Defs.' MSJ (Dkt. No. 412).).1 Also before us is Defendants' motion for reconsideration of our ruling on their earlier motion to dismiss. (Mot. for Reconsideration (Dkt. No. 378).) For the reasons stated below, Maui Jim's motions for summary judgment are  [*1070]  granted in part and denied in part, Defendants' motion for summary judgment is granted in part and denied in part, and Defendants' motion for reconsideration is denied.

BACKGROUND

Unless otherwise stated, the facts described herein are undisputed and culled from the parties' multiple Local Rule 56.1 submissions.

A. Parties

Maui Jim is a designer, manufacturer, and provider of premium prescription and non-prescription sunglasses. (Defs.' Resp. to Pl.'s Lanham SOF (Dkt. 459) ¶ 1.) Maui Jim's sunglasses are marketed, offered, and sold globally. (Id.) Defendants retail designer eyewear and they sell products into the United States through websites like SmartBuyGlasses.com. (Pl.'s Resp. to Defs.' Amend. SOF (Dkt. No. 466) ¶¶ 1, 45.) These sales include eyewear displaying Maui Jim's marks. (Defs.' Resp. to Pl.'s Lanham SOF ¶ 35.) Defendants sold approximately [TEXT REDACTED BY THE COURT] non-prescription and [TEXT REDACTED BY [**4]  THE COURT] prescription pairs of Maui-Jim-branded sunglasses into the United States between 2009 and 2019. (Pl.'s Resp. to Defs.' Amend. SOF (Dkt. No. 466) ¶ 6.) These prescription sunglasses contained third-party prescription lenses glazed into a Maui-Jim-branded frame. (Id.)

B. Intellectual Property

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459 F. Supp. 3d 1058 *; 2020 U.S. Dist. LEXIS 209608 **; 2020 WL 4435320

MAUI JIM, INC., Plaintiff and Counterclaim Defendant, v. SMARTBUY GURU ENTERPRISES, MOTION GLOBAL LTD., SMARTBUYGLASSES SOCIETA A RESPONSABILITA LIMITATA, SMARTBUYGLASSES OPTICAL LIMITED, Defendants and Counterclaimants.

Prior History: Maui Jim, Inc. v. SmartBuy Guru Enters., 386 F. Supp. 3d 926, 2019 U.S. Dist. LEXIS 78937, 2019 WL 2076366 (N.D. Ill., May 10, 2019)

CORE TERMS

sunglasses, Defendants', customer, retailers, Photographs, warranty, counterclaim, website, trademark, consumers, manufacturer, parties, products, purchasing, summary judgment motion, material difference, summary judgment, counterfeit, material fact, brands, first sale doctrine, authentic, damages, repair, marks, first sale, advertising, contracts, third-party, selling

Civil Procedure, Judgments, Summary Judgment, Burdens of Proof, Entitlement as Matter of Law, Burdens of Proof, Movant Persuasion & Proof, Entitlement as Matter of Law, Genuine Disputes, Nonmovant Persuasion & Proof, Appropriateness, Motions for Summary Judgment, Cross Motions, Business & Corporate Compliance, Causes of Action Involving Trademarks, Infringement Actions, Determinations, Trademark Law, Registration Procedures, Federal Registration, Federal Registration as Evidence, Copyright Law, Criminal Infringement, Defenses, First Sale Doctrine, First Use, Civil Infringement Actions, Trademark Enforcement by US Customs, Importation and Recordation of Gray Market Goods, Evidence, Allocation, Likelihood of Confusion, Factors for Determining Confusion, Relationship of Goods, Degree of Protection, Intent of Defendant to Confuse, Inferences & Presumptions, Consumer Confusion, Circuit Court Factors, 3rd Circuit Court, 7th Circuit Court, Similarity of Marks, Commercial Impressions, Inferred Intent, 11th Circuit Court, 2nd Circuit Court, Subject Matter of Trademarks, Eligibility for Trademark Protection, Strength of Trademark, Distinctiveness, Evidence of Distinctiveness, 6th Circuit Court, 4th Circuit Court, 9th Circuit Court, Antitrust & Trade Law, Consumer Protection, False Advertising, Lanham Act, Federal Unfair Competition Law, Elements of False Advertising, Lanham Act, Scope, False Designation of Origin, Trade Dress Protection, Causes of Action, False Designation of Origin, Reverse Palming Off, Palming Off, Elements of False Designation of Origin, Trade Practices & Unfair Competition, State Regulation, Deceptive & Unfair Trade Practices, State Regulation, Scope of Copyright Protection, Publication, Copyright Act of 1976, Elements, Ownership, Ownership Rights, Reproductions, Infringement, Protected Subject Matter, Graphic, Pictorial & Sculptural Works, Works of Art, Subject Matter, Statutory Copyright & Fixation, Scope of Protection, Fair Use, Fair Use Determination, Factors, Limitations, Copyright Infringement Actions, Originality Requirement, Quantum of Originality, Photographs, Collective & Derivative Works, Originality Requirement, Deposit & Registration Requirements, Registration, Application Requirements, Presumptions, Validity of Facts, Validity of Copyright, Registration Certificates, Originality, Damages, Types of Damages, Statutory Damages, Registration Requirement, Statute of Limitations, Copying by Defendants, Access, Inferences & Presumptions, Inferences, Substantial Similarity, Intrinsic Tests, Ordinary Observer Test, Torts, Contracts, Intentional Interference, Elements, Intentional Torts, Defamation, Defamation Per Quod, Defamation Per Se, Contracts Law, Types of Contracts, Quasi Contracts, Contracts Law, Remedies, Equitable Relief, Quantum Meruit, Relief From Judgments, Altering & Amending Judgments, Private Actions, Standing, Requirements