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Waukesha Floral & Greenhouses Inc. v. Possi

United States District Court, E.D. Wisconsin

June 1, 2018

WAUKESHA FLORAL & GREENHOUSES, INC., d/b/a Waukesha Floral and Waukesha Floral & Greenhouse, Plaintiff,
v.
JAMES POSSI, YOUR FLORIST LLC, and ANN M. RICE, Defendants.

          DECISION AND ORDER ON PLAINTIFF'S AND DEFENDANTS' CROSS MOTIONS FOR SUMMARY JUDGMENT

          NANCY JOSEPH UNITED STATES MAGISTRATE JUDGE.

         Waukesha 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.[1] For the reasons explained below, both motions for summary judgment are denied.

         UNDISPUTED FACTS

         Waukesha 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. ¶ 14.)

         In 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 name. (Id.)

         In 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. ¶ 44.)

         In 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. ¶ 56.)

         In 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.)

         SUMMARY JUDGMENT STANDARD

         Summary 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.

         In 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)).

         ANALYSIS

         Waukesha 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.”

         The 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 Florist. (Id.)

         1. Waukesha Floral's Wis.Stat. § 100.18

         Claim 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.

         2. Claims Against Rice

         The 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).

         An 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.)

         Rice 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).

         While 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.)

         At 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.

         3. Fair Use, Unclean Hands, and Laches Defenses

         The defendants move for summary judgment on three affirmative defenses: fair use, unclean hands, and laches.

         3.1 Fair Use

         As to 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 ...


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