LUXOTTICA GROUP v. BK DEALS LLC (2024)

ORDER

THIS MATTER is before the Court on the Motion to Dismiss (DE 14) (“Motion”) filed by Defendant Menachem Korf (“Mr. Korf” or “Korf”) to which Plaintiff Luxottica Group S.p.A. (“Luxottica Group” or “Plaintiff”) filed a response (DE 15). For the reasons set forth below, Defendant Korf's Motion to Dismiss is DENIED.

I. BACKGROUND

Plaintiff, an Italian corporation engaged in the manufacture, marketing, and sale of luxury and sports eyewear, brings this suit against Defendants BK Deals, LLC (“BK Deals”) and Menachem Korf (collectively, “Defendants”) for alleged violations of Plaintiff's intellectual property rights. (DE 1 at 1–2.) Plaintiff contends that Defendants operate an online retail storefront on eBay under the trade name “Mafkid Eyewear” where Defendants sell sunglasses bearing counterfeits of Plaintiff's Ray-Ban trademarks. (Id.) According to Plaintiff, Defendant Korf is the president, manager, and member of BK Deals and is the catalyst behind BK Deals’ operations. (Id. at 2.)

Luxottica Group owns eight (8) United States Federal Trademark Registrations associated with the advertisement and sale of its Ray-Ban products.¹ (Id. at 3.) On November 14, 2022, Luxottica Group's investigator visited Defendants’ online storefront and purchased one pair of sunglasses bearing alleged counterfeits of the Ray-Ban Trademarks for $79.99. (Id. at 5.) Then, on March 9, 2023, Luxottica Group's investigator returned to Defendants’ online storefront and purchased two pair of sunglasses bearing purported counterfeits of one or more of the Ray-Ban trademarks for $69.99 and $66.99, respectively. (Id. at 6.) Following these purchases, Luxottica Group inspected the sunglasses and determined that the Ray-Ban marks affixed to the products are inconsistent with the marks found on similar products bearing the authentic Ray-Ban Trademarks. (Id.) As a result, Plaintiff filed this suit against Defendants alleging one count of trademark infringement under Section 32 of the Lanham Act, 15 U.S.C. § 1114.

II. LEGAL STANDARD

To survive a Rule 12(b)(6) motion to dismiss, a complaint must plead sufficient facts to state a claim that is “plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Although a complaint “does not need detailed factual allegations,” it must provide “more than labels, and conclusions.” Twombly, 550 U.S. at 555 (“[A] formulaic recitation of the elements of a cause of action will not do.”) (internal citations omitted). Rule 12(b)(6) does not allow dismissal of a claim because a court anticipates “actual proof of those facts is impossible,” but the “[f]actual allegations must be enough to raise a right of relief above the speculative level.” Watts v. Fla. Int'l Univ., 495 F.3d 1289, 1295 (11th Cir. 2007) (quoting Twombly, 550 U.S. at 545). In ruling on a 12(b)(6) motion, the court must accept the factual allegations in the complaint as true and draw reasonable inferences in plaintiff's favor. See Speaker v. U.S. Dep't of Health & Human Servs. Ctrs. for Disease Control & Prevention, 623 F.3d 1371, 1379 (11th Cir. 2010). Although the court resolves all doubts or inferences in the plaintiff's favor, the plaintiff bears the burden to frame the complaint with sufficient facts to suggest that she is entitled to relief. Twombly, 550 U.S. at 556.

III. DISCUSSION

Defendant Korf contends Plaintiff failed to allege any facts that demonstrate his individual liability. (DE 14.) To support this argument, Defendant Korf improperly cites to authority related to liability of corporate officers in Florida tort law, failing to appreciate that the only claim against Defendants in this matter is for trademark infringement under the Lanham Act. See Checkers Drive-In Rests., Inc. v. Tampa Checkmate Food Servs., Inc., 805 So. 2d 941, 944 (Fla. 2d Dist. Ct. App. 2001) (discussing an officer's personal liability for fraudulent inducement and violation of the Florida Franchise Act).

As the Eleventh Circuit has explained, “[n]atural persons, as well as corporations, may be liable for trademark infringement under the Lanham Act.” Chanel, Inc. v. Italian Activewear of Fla., Inc., 931 F.2d 1472, 1477–78 (11th Cir. 1991). Given that corporations can act only through individuals, “if there was an infringement by the corporation, the infringement was caused by some one or more persons either officers or employees of the corporation who caused the acts to be done.” Id. at 1477 (citation omitted). Accordingly, “a corporate officer who directs, controls, ratifies, participates in, or is the moving force behind the infringing activity, is personally liable for such infringement without regard to piercing of the corporate veil.” Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1184 (11th Cir. 1994); see also ADT LLC v. Alarm Protection Tech. Fla., LLC, 646 F. App'x 781, 787–88 (11th Cir. 2016) (explaining that an entity's status as a limited liability company, rather than a corporation, is a distinction without a difference).

Here, Plaintiff alleges that Defendant Korf, as the president, manager, and member of BK Deals, “was directly involved in approving the purchase and sale” of the counterfeit merchandise that led to the “infringement of Luxottica Group's Ray-Ban Trademarks”. (DE 1 at 2, 7.) Mr. Korf's involvement includes his knowledge of, or alternatively willful blindness to, the offering for sale and sale of the counterfeit merchandise as well as his “ability to supervise the infringing conduct of BK Deals.” (Id. at 7–8.) As such, the Court finds that Plaintiff alleges more than threadbare allegations that Defendant Korf generally participated in or was driving force behind the wrongful acts. Taking Plaintiff's allegations as true and construing them in the light most favorable to Plaintiff, it is at least plausible to infer that Defendant Korf had some managerial control and responsibility over BK Deals’ business operation including decisions related to the sale of the purported counterfeit sunglasses.²

IV. CONCLUSION

For the reasons stated above, it is ORDERED AND ADJUDGED that Defendant Menachem Korf's Motion to Dismiss (DE 14) is DENIED. Defendant Menachem Korf shall file his responsive pleading WITHIN FOURTEEN (14) DAYS of the date of this Order.

DONE AND ORDERED in Chambers in Miami, Florida on this 3rd day of January, 2024.

FOOTNOTES

1.   The trademark registration numbers include (1) 650,499; (2) 1,093,658; (3) 1,726,955; (4) 1,080,886; (5) 1,320,460; (6) 3,522,603; (7) 1,511,615; (8) 2,971,023 (collectively, “Ray-Ban Trademarks”).

2.   Chanel, Inc., 931 F.2d at 1478 n.8 (“The individual liability standard does not ask whether the individual participated or engaged in some infringing act; instead it ask whether he actively participated as a moving force in the decision to engage in the infringing acts, or otherwise caused the infringement as a whole to occur.”).

KATHLEEN M. WILLIAMS, UNITED STATES DISTRICT JUDGE