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Cathedral Art Metal Co. v. Divinity Boutique, LLC

United States District Court, N.D. Georgia, Atlanta Division

January 26, 2018




         This matter is before the Court on Plaintiff Cathedral Art Metal Co.'s (“Plaintiff” or “Cathedral Art”) Motion for Preliminary Injunction [13] (the “Motion”).

         I. BACKGROUND

         A. Procedural History

         On January 10, 2018, Plaintiff filed a Complaint [1] and a Motion for Temporary Restraining Order [2] (“TRO Motion”) seeking to preclude Defendants Divinity Boutique, LLC, and Nicole Brayden Gifts, LLC (collectively, “Defendants”), from “selling goods bearing Plaintiff's AMAZING WOMAN trademark and/or associated trade dress.” ([2] at 1). On January 12, 2018, the Court conducted a hearing on the TRO Motion, during which all parties were represented by counsel. ([26] (Transcript)). On January 12, 2018, the Court issued an order denying Plaintiff's TRO Motion, finding that Plaintiff had then failed to demonstrate a substantial likelihood of succeeding on their trademark or trade dress claims. The Court set an accelerated schedule for filing and briefing of Plaintiff's motion for preliminary injunction. ([11]).

         Plaintiff filed a Motion for Preliminary Injunction [13] on January 16, 2018, providing additional evidence supporting its trademark and trade dress claims. Defendants filed a Response in Opposition to the Motion [23] and Plaintiff filed a Reply [27].[1] On January 24, 2018, the Court conducted a hearing on the Motion. ([31], [34] (Transcript)). During the hearing, Leo A. Tracey, President of Plaintiff Cathedral Art, and Keith Schwartz, Managing Member of Defendant Nicole Brayden Gifts, LLC (“Nicole Brayden”), testified. ([23-4] at ¶2, [14-2] at ¶1). The Court allowed the parties to submit post-hearing written memoranda. ([35-1], [37]).

         B. Facts[2]

         In 2017, Plaintiff Cathedral Art acquired the Abbey Press Trade Marketing Division (“Abbey Press”) of St. Meinrad Archabbey, an Indiana nonprofit corporation. ([28-3] (Asset Purchase Agreement)). The acquisition included Abbey Press's products and trademarks related to those products, except for the ABBEY PRESS mark. (Id. at ¶ 1(b)).

         1. Abbey Press's “Amazing Woman” Products

         The Abbey Press products acquired by Cathedral Art included homeware and giftware products (e.g. pie plate, mug, travel mug, cutting board, spoon rest, cross, plate) known as the “Amazing Woman” collection. ([28-3 at 13-19 (Schedule 1(b)(i) and 29 (Schedule 12)). Abbey Press began selling a product bearing an “Amazing Woman” phrase at least as early as 2008. ([13-2] at 2, 4). Abbey Press's “Annual catalog thru July 2008” included a pie plate with a poem entitled “Recipe For An Amazing Woman.” (Id. at 4). Abbey Press continued to sell products with “Amazing Woman” inscriptions up until its acquisition by Cathedral Art. ([13-2 (Christmas 2008 Catalog), [27-11] (Annual Catalog thru July 2009), [27-12] (Spring 2009 Catalog), [27-13] (Annual Catalog thru July 2010), [27-14] (Spring 2010 Catalog), [27-15] (Annual Catalog thru July 2011), [27-16] (Spring 2011 Catalog), [27-17] (Annual Catalog thru July 2012), [27-18] (Spring 2012 Catalog), [27-19] (Annual Catalog thru July 2013), [27-20] (Spring 2013 Catalog), [27-21] (Annual Catalog thru July 2014), [27-22] (June-December 2014 Catalog), [27-23] (Annual Catalog January-December 2015), [27-24] (Annual Catalog January-December 2016), [27-25] (Annual Catalog January-December 2017)).

         Beginning with the original pie plate with a “Recipe for An Amazing Woman” poem, Abbey Press developed an entire collection of “Amazing Woman” products, including soup mugs, plaques, cutting boards, spoon rests, trinket dishes, crosses, cookbook holders, mug and coaster sets, travel mugs, and prayer cards. ([27-25]). At least as early as 2010, Abbey Press identified products bearing the “Amazing Woman” phrase as part of a collection of “Amazing Woman” products. ([27-13] at 3). In 2011, Abbey Press employed a banner-like use of “Amazing Woman” to identify its collection of “Amazing Woman” products in its catalog. By 2016, Abbey Press even identified products that did not bear the “Amazing Woman” phrase as “Amazing Woman” products. ([27-24] at 5 (“Amazing Woman” Figurine); [27-25] at 4 (“Amazing Woman” Rustic Plaque)).

         After the acquisition, Cathedral Art continued to sell products from the “Amazing Woman” collection, including in its catalogues identifying the “Amazing Woman” collection with an Amazing Woman banner on pages with Amazing Woman products. Cathedral added a “TM” symbol next to the phrase “Amazing Woman” in their 2018 catalog. ([6-1] at 11-16). The “Amazing Woman” product line was a “lead” product line for Abbey Press, and continues to be so for Cathedral Art. ([7-1] (Olmsted Aff.) at ¶10). 2017 sales of the AMAZING WOMAN product exceeded Xxxxx. ([14-2] (Tracey Decl.) at ¶ 21).

         Plaintiff submitted six declarations from industry buyers to show that those who purchased “Amazing Woman” products identify the AMAZING WOMAN mark with Abbey Press. ([27-3] Anderson Decl.; [27-4] Bauersachs Decl.; [27-5] Falzone Decl.; [27-6] Hernandez Decl.; [27-7] Prickett Decl.; [27-8] Wagner Decl.).[3] The six declarations contain essentially the same statement identifying Abbey Press as the source of “Amazing Woman” products:

I knew, and certainly it was known in the industry, that Abbey Press was for many years the exclusive provider of the “Amazing Woman” line of products. I knew that the products originated from Abbey Press because they bore the name “Amazing Woman.” So, if I, for example, ordered the “Amazing Woman” coffee mug, I understood that I was ordering an Abbey Press product. The name was displayed in a unique, handwritten script. It was known in the industry that the “Amazing Woman” products originated from Abbey Press. I am not aware of any other party that made or provided “Amazing Woman” products.

See, e.g., [27-3] at ¶ 3.

         2. Defendants' “Amazing Woman” Products

         Defendants compete in the homewares and giftware marketplace with Cathedral Art. Both parties sell at trade shows, in catalogs, and on the Internet. ([7-1] at ¶ 16).

         In 2016, Keith Schwartz, President and Managing Member of Nicole Brayden LLC and President of Divinity Boutique LLC, became aware that Abbey Press “was shutting down its trade business.” ([23-4] (Schwartz Decl.) at ¶ 7, Tr.[4] at 3, 59). Nicole Brayden sought to introduce its own line of products “which would have been competitive with Abbey Press goods that Nicole Brayden believed were being discontinued, including the goods bearing the phrase “Amazing Woman.” (Id. at ¶ 8; Tr. at 59). In a December 7, 2016, email, Mr. Schwartz told his employees:

We are looking at doing a line called AMAZING WOMAN. It is based off of the Abbey Press Poem and product line of the same name. Please read below and send me back comments and suggested edits if you have any. Below is the abbey press version on a cutting board.

         ([24] at 2). Mr. Schwartz's email included a photograph of an Abbey Press cutting board with the “Recipe For An Amazing Woman” poem. (Id.). Mr. Schwartz drafted a modified “Recipe For An Amazing Woman” poem and supervised the creation of artwork for Defendants' cutting board. (Id. at 2-6). Mr. Schwartz approved the artwork, stating: “I think it is a really great piece of art and will accomplish our goal of providing the market with a replacement.” (Id. at 9).

         Abbey Press received news that Defendants were developing their own line of “Amazing Woman” products. ([23-3] at 2). On January 4, 2017, Greg Tate, the General Manager of Abbey Press, emailed Mr. Schwartz expressing concern. (Id.) Mr. Tate stated:

I am certain you are aware that the Abbey Press Trade (Wholesale) Division will be closing June 30, 2017, however, we are still actively promoting and selling our Amazing Woman line until then. We are currently in serious discussion with a buyer who will be assuming ownership of that product line after June 30. So, be aware, there is and will be someone keeping watch over the Abbey Press product line to ensure it is not being infringed upon.
It is not in anyone's best interest to actively pursue another company's product concepts. It is vital to the industry that each company be unique in their own way and ...

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