Pandora Jewelers 1995, Inc. v. Pandora Jewelry, LLC, 2010 U.S. Dist. LEXIS 138384 (S.D. Fla. Dec. 21, 2010)

The Plaintiff, Pandora Jewelers, Inc., has been in the business of selling and marketing jewelry from its retail store in Deerfield Beach, Florida since 1976. The Plaintiff has used the service mark PANDORA to market, sell, consign, appraise, clean, and repair jewelry. The Defendant, Pandora Jewelry, LLC, manufactures and sells jewelry under the name PANDORA to dealers in the South Florida region. The Defendant also licenses the operation of retail jewelry stores under the mark PANDORA, and has recently opened its own retail jewelry stores. Defendants Carrie Ventures and HB Retail are individual retail jewelry stores that operate under the mark PANDORA pursuant to a license agreement with Defendant Pandora LLC. Pandora LLC owns several Federal Trademark Registrations for the PANDORA trademark, and has several federal trademark applications pending.

One of the critical issues on the Affirmative Defenses of Defendants Carrie Ventures and HB Retail was whether these Defendants, as nonexclusive licensees, are in a position to assert the rights (and defenses) of the licensor, Pandora LLC.

According to the standard in the 11th Circuit, a claim for false designation of origin under Section 43(a) of the Lanham Act may be brought “by any person who believes that he or she is or is likely to be damaged” by the false designation of origin. 15 U.S.C. § 1125(a)(1); Phoenix of Broward, Inc. v. McDonald’s Corp., 489 F.3d 1156, 1163 (11th Cir. 2007). Since the question of standing is broad under Section 43(a), the Defendants, as nonexclusive licensees, would have standing to bring a false designation of origin claim, asserting the rights of Pandora LLC, the licensor. This Court reasoned, “It naturally follows, that these Defendants must also be able to assert the defenses of Pandora LLC in defending a false designation of origin claim. The Defendants, as licensees, are standing in the shoes of Pandora LLC, as licensor. Just as these Defendants, as licensees, would be permitted to use a Section 43(a) claim as a sword, these Defendants may use the equitable defenses, applicable to Pandora LLC, as a shield in defending the Plaintiff’s Section 43(a) claim.”

This Court also determined that the Defendants Affirmative Defenses adequately allege all of the essential elements of the defenses, and do not merely contain conclusory statements. Thus, the Plaintiff’s motion to strike affirmative defenses two through nine was denied.