United States District Court, E.D. Wisconsin
WAUKESHA FLORAL & GREENHOUSES, INC., d/b/a Waukesha Floral and Waukesha Floral & Greenhouse, Plaintiff,
JAMES POSSI, YOUR FLORIST LLC, and ANN M. RICE, Defendants.
DECISION AND ORDER ON PLAINTIFF'S AND
DEFENDANTS' CROSS MOTIONS FOR SUMMARY JUDGMENT
JOSEPH UNITED STATES MAGISTRATE JUDGE.
Floral & Greenhouses, Inc. sues James Possi, Your Florist
LLC, and Ann M. Rice raising eight claims for relief,
including violations of the Lanham Act, 15 U.S.C. §
1051, et seq., common law trademark violation, tradename
infringement, unfair competition, violation of Wis.Stat.
§ 100.18, and violation of a 2000 stipulation and order
for dismissal between Waukesha Floral and Possi. Both
Waukesha Floral and the defendants have moved for summary
judgment. For the reasons explained below, both
motions for summary judgment are denied.
Floral & Greenhouses, Inc. is a retail floral business
that has been operating at the same location at 319 South
Prairie Avenue in Waukesha, Wisconsin since 1907.
(Plaintiff's Proposed Findings of Fact
(“PPFOF”) ¶ 1, Docket # 148; Defs.'
Resp. ¶ 1, Docket # 167.) Thomas and Martin Loppnow
currently run the business. (PPFOF ¶ 3; Defs.' Resp.
¶ 3.) The name “Waukesha Floral” was
trademarked by the plaintiff with the United States Patent
and Trademark Office (“USPTO”) in 2000 and was
renewed in 2010. (PPFOF ¶¶ 5-6; Defs.' Resp.
¶¶ 5-6.) Possi has been in the floral industry
since approximately 1980. (PPFOF ¶ 7; Defs.' Resp.
¶ 7.) Possi opened up a floral shop in Waukesha,
Wisconsin at 912 East Moreland Boulevard in 1983. (PPFOF
¶ 12; Defs.' Resp. ¶ 12.) Possi operated under
the name “Best Florist” or “Best Floral,
” but did not incorporate the business or have any
employees. (PPFOF ¶ 13; Defs.' Resp. ¶ 13.) In
the mid-1990s, Possi moved to a new location at 918 East
Moreland Boulevard. (PPFOF ¶ 14; Defs.' Resp. ¶
January 2000, Waukesha Floral sued Possi and “Best
Florist” for using the trade names “Waukesha
Florist & Greenhouse” and “Waukesha
Florist.” (PPFOF ¶ 41; Defs.' Resp. ¶
41.) In August 2000, Waukesha Floral, Possi, and Best Florist
reached a stipulation and order for dismissal whereby Possi
and Best Florist agreed to cease any and all use of the terms
or tradenames: “Waukesha Florist & Greenhouses,
” “Waukesha Florist and Greenhouse, ”
“Waukesha Florist, ” “Waukesha Floral and
Greenhouses, ” “Waukesha Floral and Greenhouse,
” and “Waukesha Floral.” (PPFOF ¶ 42;
Defs.' Resp. ¶ 42.) Possi and Best Florist also
agreed to cease use of the individual words
“Waukesha” and “Florist” where those
words were contiguous or made up the majority of the trade
2003, Waukesha Floral and Possi exchanged correspondence
regarding Possi's use of the names “Waukesha
Wisconsin The Best Florist” and “Best Florist in
Waukesha Wisconsin.” (PPFOF ¶ 43; Defs.' Resp.
¶ 43.) In 2005, Waukesha Floral's counsel wrote to
Possi's attorney regarding mailings Waukesha Floral
received that had Possi's name on them and listed him as
“owner.” (PPFOF ¶ 44; Defs.' Resp.
April 2011, Possi opened another floral shop in Milwaukee on
West Layton Avenue. (PPFOF ¶ 15; Defs.' Resp. ¶
15.) As part of the move to West Layton Avenue, Possi and his
wife organized a new limited liability company called
“Your Florist LLC.” (PPFOF ¶ 17; Defs.'
Resp. ¶ 17.) Starting in 2011, Possi's daughter, Ann
Rice, ran the business at 918 East Moreland Boulevard. (PPFOF
¶ 18; Defs.' Resp. ¶ 18.) On July 15, 2013,
Possi's mother deeded the property located at 918 East
Moreland Boulevard to Possi, Rice, and Rice's brother.
(DPFOF ¶ 21, Pl.'s Resp. ¶ 21.) Possi moved
back to the 918 East Moreland Boulevard location on April 1,
2015. (PPFOF ¶ 21; Defs.' Resp. ¶ 21.) Your
Florist's principal place of business is 918 East
Moreland Boulevard. (Defendant's Proposed Findings of
Fact (“DPFOF”) ¶ 2, Docket # 155; Pl.'s
Resp. ¶ 2, Docket # 158.) Possi and Your Florist have
done business under the names “Waukesha Florals,
” “Waukesha Florists, ” “Waukesha
Flower and Greenhouse, ” “Waukesha Flower &
Greenhouse, ” and “Waukesha Flower And
Greenhouse.” (PPFOF ¶ 56; Defs.' Resp. ¶
2015, Waukesha Floral saw advertisements in local phone books
for the names “Waukesha Flower And Greenhouse, ”
“Waukesha Flower and Greenhouse, ”
“Waukesha Flower & Greenhouse, ”
“Waukesha Florals, ” “Waukesha Florists,
” “Florist in Waukesha WI, ” and
“Florist in Waukesha Wisconsin.” (PPFOF ¶
45; Defs.' Resp. ¶ 45.) Possi and Your Florist were
also doing business under the names “Waukesha
Greenhouse, ” “Greenhouse in Waukesha, ”
“Green House in Waukesha, ” “Waukesha
Flower, ” and “Waukesha Flowers, ” which
Waukesha Floral states that it learned during discovery in
2016. (PPFOF ¶ 46; Defs.' Resp. ¶ 46.)
judgment is appropriate if the movant shows that there is no
genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a);
see also Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248 (1986); Celotex Corp. v. Catrett, 477 U.S.
317, 324 (1986). “Material facts” are those under
the applicable substantive law that “might affect the
outcome of the suit.” See Anderson, 477 U.S. at 248.
The mere existence of some factual dispute does not defeat a
summary judgment motion. A dispute over a “material
fact” is “genuine” if “the evidence
is such that a reasonable jury could return a verdict for the
nonmoving party.” Id.
evaluating a motion for summary judgment, the court must draw
all inferences in a light most favorable to the nonmovant.
Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 587 (1986). However, when the nonmovant is the
party with the ultimate burden of proof at trial, that party
retains its burden of producing evidence which would support
a reasonable jury verdict. Celotex Corp., 477 U.S.
at 324. Evidence relied upon must be of a type that would be
admissible at trial. See Gunville v. Walker, 583
F.3d 979, 985 (7th Cir. 2009). To survive summary judgment, a
party cannot rely on his pleadings and “must set forth
specific facts showing that there is a genuine issue for
trial.” Anderson, 477 U.S. at 248. “In short,
‘summary judgment is appropriate if, on the record as a
whole, a rational trier of fact could not find for the
non-moving party.'” Durkin v. Equifax Check
Servs., Inc., 406 F.3d 410, 414 (7th Cir. 2005) (citing
Turner v. J.V.D.B. & Assoc., Inc., 330 F.3d 991,
994 (7th Cir. 2003)).
Floral's second amended complaint alleges the following
eight causes of action: (1) Violation of 15 U.S.C. §
1114; (2) Violation of 15 U.S.C. § 1125(a); (3)
Violation of 15 U.S.C. § 1125(c); (4) Common Law
Trademark Violation; (5) Tradename Infringement; (6) Unfair
Competition; (7) Violation of Wisconsin's Deceptive Trade
Practices Act (Wis. Stat. § 100.18); and (8) Violation
of the 2000 Stipulation and Order for Dismissal. (Docket #
90.) Waukesha Floral moves for summary judgment as to
liability on the first, second, fourth, fifth, and sixth
causes of action. (Pl.'s Br. at 20, Docket # 146.)
Waukesha Floral asks for a permanent injunction against the
defendants' use of the following twelve names: Waukesha
Flower And Greenhouse, Waukesha Flower and Greenhouse,
Waukesha Flower & Greenhouse, Waukesha Florals, Waukesha
Florists, Florist in Waukesha WI, Florist in Waukesha
Wisconsin, Waukesha Greenhouse, Greenhouse in Waukesha, Green
House in Waukesha, Waukesha Flower, and Waukesha Flowers.
(Id.) Waukesha Floral further asks that the
defendants be precluded from using any future name that is
substantially similar to “Waukesha Floral” or
“Waukesha Floral & Greenhouse.”
defendants have also moved for summary judgment, arguing that
Waukesha Floral is unable to prove that it suffered any
damages from the defendants' alleged conduct and that
Waukesha Floral's claims are precluded by the doctrines
of fair use, unclean hands, and laches. (Defs.' Br.,
Docket # 154; Defs.' Br., Docket # 163.) The defendants
also argue that Waukesha Floral's § 100.18 claim is
time barred. (Defs.' Br., Docket # 154.) Finally, the
defendants argue that the claims against Rice should be
dismissed because Rice was merely an employee of Your
Waukesha Floral's Wis.Stat. § 100.18
The defendants moved for summary judgment on Waukesha
Floral's § 100.18 claim, arguing that the cause of
action is time barred by the applicable statute of
limitations. Waukesha Floral responded that it will not be
moving forward on this claim and does not oppose dismissal of
the cause of action. (Pl.'s Resp. Br. at 31, Docket #
157.) Therefore, the defendants' motion for summary
judgment as to Waukesha Floral's Wis.Stat. § 100.18
claim is granted and this cause of action is dismissed.
Claims Against Rice
defendants move for summary judgment on the claims against
Rice on the grounds that Waukesha Floral lacks any evidence
that Rice was ever anything more than an employee of
Possi's business and thus cannot be held personally
liable for the alleged infringement. It is undisputed that
when Rice was working for Possi at the 918 East Moreland
Boulevard location in 2011, she was working for an entity
called “Best Floral.” (DPFOF ¶ 8; Pl.'s
Resp. ¶ 8.) Possi testified, and Waukesha Floral does
not dispute, that Best Floral is an unincorporated business.
(Declaration of Heather M. Bessinger, ¶ 1, Exh. 1,
Docket # 69; Deposition of James C. Possi (“Possi
Dep.”) at 131, Docket # 69-1; DPFOF ¶ 5; Pl.'s
Resp. ¶ 5.) In determining liability, the courts have
treated trademark infringement as a species of tort and have
turned to the common law to guide the inquiry into the
appropriate boundaries of liability. Hard Rock Cafe
Licensing Corp. v. Concession Servs., Inc., 955 F.2d
1143, 1148 (7th Cir. 1992).
unincorporated business does not possess a legal identity
separate from its owners. See Jeroski v. Fed. Mine Safety
& Health Review Comm'n, 697 F.3d 651, 652 (7th
Cir. 2012) (“A proprietorship is not a legal entity,
but merely a name under which the owner, who is the real
party in interest, does business.”); see also
Norwest Bank Minnesota, N.A. v. Walker, No. 90 C 4804,
1990 WL 129498, at *1 (N.D. Ill. Aug. 31, 1990) (“[I]f
Water Cruise were indeed an unincorporated business . . . the
only entity capable of suing or being sued would be Walker
himself . . .”). Waukesha Floral argues that Rice was
an owner of Best Floral based on Possi's testimony that
Best Floral, located at 918 East Moreland Boulevard, was
“[Rice's] shop.” (Possi Dep. at 66.) Possi
testified that from 2011 until 2015, Rice was running Best
Floral “with her name, her telephone numbers. She was
paying her telephone bills. She was paying for her own taxes.
I had nothing to do with it. I am not part of that flower
shop in Waukesha.” (Id. at 67.) Possi later
testifies again that he had “nothing to do with her
business” and stated that he “did not own the
business.” (Id. at 83, 84.)
testified that she took over Best Floral in 2011; however,
she stated that she ran the business for less than one year.
(Feb. 27, 2018 Declaration of Matthew Fernholz (“Feb.
27 Fernholz Decl.”) ¶ 2, Exh. B, Docket # 149;
Deposition of Ann Rice (“Rice Dep.”) at 7-9,
Docket # 149-2.) Rice also testified, however, that she
“just ran the shop” and it was Possi's shop.
(Id. at 36-37.) While Rice acknowledged that she
paid the bills for the shop (id. at 39), she again testified
that Best Floral had “always been [Possi's]
shop” (id. at 44).
the defendants argue that neither Possi nor Rice bear any
personal liability during the 2011 to 2015 time period
because Possi incorporated Your Florist, LLC in 2011 and thus
the corporation was the owner of Best Floral during the
relevant time period, (Defs. Reply Br. at 5, Docket # 168),
the defendants cite to no evidence that Your Florist owned
Best Floral at that time. Possi testified that in 2011 he
moved to West Layton Avenue in Milwaukee and that Your
Florist, LLC was at that location (Possi Dep. at 59-61.) He
did not move back to the Moreland address until 2015.
(Id. at 66.)
summary judgment, all factual disputes and all reasonable
inferences must be resolved in favor of the non-moving party,
see Grant v. Trustees of Indiana Univ., 870 F.3d
562, 568 (7th Cir. 2017), and as to this issue, that is
Waukesha Floral. To survive summary judgment, the non-moving
party must identify specific, admissible evidence showing
that there is a genuine dispute of material fact for trial.
Id. Such a dispute exists when there is sufficient
evidence favoring the non-moving party to permit a trier of
fact to make a finding in the non-moving party's favor.
Id. Waukesha Floral has met this burden. Again,
Possi has testified that he did not own the business during
the period of time in which Rice was running the business.
Again, Best Floral is an unincorporated business. If
Possi's testimony is believed, Rice was doing business
under the name Best Floral and thus was liable for any
wrongdoings of the unincorporated business. For this reason,
the defendants' motion for summary judgment dismissing
the claims against Rice is denied.
Use, Unclean Hands, and Laches Defenses
defendants move for summary judgment on three affirmative
defenses: fair use, unclean hands, and laches.
the fair use defense, the defendants argue that any names
they may have used fall under the fair use doctrine.
(Defs.' Br. at 22, Docket # 163.) Waukesha Floral
counters that fair use is an affirmative defense and because
the defendants did not plead the affirmative defense, it is
waived. (Pl.'s Reply Br. at 13, Docket # 170.) It is true
that the defendants did not specifically plead fair use as an
affirmative defense (though they pled a catch-all of any
other affirmative defense that might exist) (Docket # 94;
Docket # 100) and a failure to alert the parties and the
court of the intent to pursue a defense risks waiving the
defense. Vente ...