September 15, 2023
Rosemberg Law Wins Partial Summary Judgment for Sports Eyewear Manufacturer in Trademark Infringement Lawsuit
Rosemberg Law obtained partial summary judgment on the issue of liability in favor of its client, Oakley, Inc., a manufacturer, distributor, and retailer of sports eyewear, in a trademark infringement case in the U.S. District Court for the Western District of Kentucky. Oakley brought a trademark infringement claim against Defendants Shan Mart, LLC, a retail convenience store, and its owner, Faizal Thasim, after Defendants were observed offering to sell and selling products bearing counterfeits of Oakley’s federally registered trademarks. Following discovery, Oakley moved for partial summary judgment on the issue of liability for trademark infringement under the Lanham Act (15 U.S.C. § 1114). In opposing the motion, Defendants raised several arguments, including that they were not liable because Defendants did not know they were selling sunglasses displaying Oakley’s trademarks and thus did not intend to cause consumer confusion. In rejecting that argument, the Court noted that knowledge or intent is not an element of a claim under Section 1114(1)(a), and that courts have made clear that an infringer is strictly liable for violating provisions of the Lanham Act. Defendants also argued that the manufacturer of the fake Oakley products was an indispensable party that must be joined in the action. Rejecting that argument, the Court noted that in trademark infringement cases, the distributor is a joint tortfeasor with the manufacturer, and that it is not necessary for all joint tortfeasors to be named as defendants in a single lawsuit. Ultimately, the Court granted Oakley’s motion for partial summary judgment on the issue of liability against both Shan Mart, LLC and Faizal. The case is Oakley, Inc. v. Shan Mart, LLC. et al., Case No.: 4:22-cv-15-DJH-HBB (Western District of Kentucky).