United States District Court, N.D. West Virginia, Martinsburg
PNGI CHARLES TOWN GAMING, LLC, and HOLLYWOOD CASINOS, LLC, Plaintiffs,
HOT SPOT CT REAL ESTATE, LLC, doing business as CASINO PAWN, BRENT JACKSON, CASINO PAWN, LLC, LYNN PERKINS, and CHRISTOPHER PERKINS, Defendants.
MEMORANDUM OPINION AND ORDER DENYING DEFENDANTS'
MOTION FOR SUMMARY JUDGMENT OR PARTIAL SUMMARY
M. GROH CHIEF UNITED STATES DISTRICT JUDGE
before the Court is Defendants' Motion for Summary
Judgment or Partial Summary Judgment [ECF No. 170], filed on
July 26, 2019. Plaintiffs filed a response in opposition on
August 16, 2019. ECF No. 178. Defendants filed a reply in
support of their motion on August 30, 2019. ECF No. 184.
Accordingly, this matter has been fully briefed and is now
ripe for review. For the following reasons, Defendants'
Motion for Summary Judgment or Partial Summary Judgment is
Factual and Procedural Background
action arises from Defendants' ownership of two pawn
shops: (1) the Berkeley Plaza Pawn Shop, located in
Martinsburg, WV and (2) the Charles Town Pawn Shop, located
across the street from Plaintiff's Hollywood Casino in
Charles Town, WV.
12, 2007, Defendant Brent Jackson (“Defendant
Jackson”), through his company Hot Spot Real Estate LLC
(“Defendant Hot Spot”), purchased property across
the street from Plaintiffs' Hollywood Casino.
See ECF No. 171-1 & ECF No. 171-3. Ten years
later, in September 2017, Defendant Jackson opened a pawn
shop (“Charles Town Pawn Shop”) at this property,
displaying a sign reading “Hollywood Pawn.”
See ECF No. 178-13 at 2; see also ECF No.
178-12 at 4. Two months later, Defendant Jackson removed the
“Hollywood Pawn” sign from Charles Town Pawn Shop
after receiving a letter from Plaintiffs' counsel
alleging that his proposed use of the Hollywood mark
“constitute[d] intentional and willful trademark
infringement.” See ECF No. 178-12 at 4;
see also ECF No. 171-5 at 1.
December 8, 2017, Defendant Jackson replaced the
“Hollywood Pawn” sign at Charles Town Pawn Shop
with a sign reading “Casino Pawn.” See
ECF No. 178-15 at 2; see also ECF No. 178-6 at 11.
The “Casino Pawn” sign remained displayed at this
location until December 8, 2018. See ECF No. 178-12
at 4. Since its establishment, Charles Town Pawn Shop has
remained vacant and has never been open to the public.
See ECF No. 178-6 at 4.
December 2018, Defendants Lynn Perkins, Christopher Perkins,
and Casino Pawn, LLC opened a second pawn shop in
Martinsburg, WV (“Berkeley Plaza Pawn Shop”).
See ECF No. 178-5 at 10; see also ECF No.
178-10 at 8. The Berkeley Plaza Pawn Shop uses the same
“Casino Pawn” logo as the Charles Town Pawn Shop.
See ECF No. 178-17 at 2; ECF No. 178-10 at 9; ECF
No. 178-5 at 9. To date, the Berkeley Plaza Pawn Shop does
not have regular business hours and is only open a few days
per week. See ECF No. 178-10 at 12. Additionally,
this location has no active website, no signage readily
visible from the street, and has only made one sale worth
twenty-five dollars. See Id; see also ECF
No. 178-5 at 12-13.
terms of marketing efforts, Defendants purchased two roadside
billboards. ECF No. 178-6 at 14-15. On their face, both
billboards refer exclusively to the Charles Town location,
stating that Casino Pawn is located “across from the
casino, ” in capital letters. ECF No. 178-18; ECF No.
178-19. Both billboards also featured the slogan, “We
Pay the Most!” Id. The billboard near the
Charles Town Pawn Shop remains displayed, whereas the other
billboard near the Berkeley Plaza Pawn Shop was removed in
early 2019. ECF No. 171-18 at 3-4.
filed their initial complaint [ECF No. 1] on March 19, 2018
and later filed an amended complaint [ECF No. 132] on March
18, 2019. In their amended complaint, Plaintiffs assert three
claims for relief against Defendants. The first (false
association) and third (common law unfair competition) claims
only concern the Berkeley Plaza Pawn Shop. Plaintiffs claim
that Defendants' use of the name “Casino
Pawn” at the Martinsburg location creates a false
association with Plaintiffs' Hollywood Casino gaming
facility in violation of 15 U.S.C. § 1125(a) and common
law unfair competition under West Virginia law. See
ECF No. 132 at 15-16, & 19. Defendants move for summary
judgment on both counts.
Standard of Review
judgment is appropriate “if the pleadings, depositions,
answers to interrogatories, and admissions on file, together
with the affidavits, if any, show that there is no genuine
issue as to any material fact and that the moving party is
entitled to a judgment as a matter of law.” Celotex
Corp. v. Catrett, 477 U.S. 317, 322 (1986). A genuine
issue exists “if the evidence is such that a reasonable
jury could return a verdict for the non-moving party.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986). Thus, the Court must conduct “the threshold
inquiry of determining whether there is the need for a
trial-whether, in other words, there are any genuine factual
issues that properly can be resolved only by a finder of fact
because they may reasonably be resolved in favor of either
party.” Id. at 250.
party opposing summary judgment “must do more than
simply show that there is some metaphysical doubt as to the
material facts.” Matsushita Elec. Indus. Co.,
475 U.S. at 586. That is, once the movant has met its burden
to show an absence of material fact, the party opposing
summary judgment must then come forward with affidavits or
other evidence establishing there is indeed a genuine issue
for trial. Fed.R.Civ.P. 56; Celotex Corp., 477 U.S.
at 323-25; Anderson, 477 U.S. at 248. “If the
evidence is merely colorable, or is not significantly
probative, summary judgment may be granted.”
Anderson, 477 U.S. at 249 (citations omitted). A
motion for summary judgment should be denied “if the
evidence is such that conflicting inferences may be drawn
therefrom, or if reasonable men might reach different
conclusions.” Phoenix Savs. & Loan, Inc. v.
Aetna Cas. & Sur. Co., 381 F.2d 245, 249 (4th Cir.
1967); see also id. at 253 (noting that
“[c]redibility determinations, the weighing of the
evidence, and the drawing of legitimate inferences from the
facts are jury functions, not those of a judge”).
Applicable Legal Standard
15 U.S.C. § 1125(a), any person who uses a word or mark
“in commerce” that is “likely to cause
confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with
another person” shall be liable in a civil action to
“any person who believes that he or she is likely to be
damaged by such an act.” 15 U.S.C. § 1125(a). The
statute “goes beyond trademark protection” and
creates a cause of action for unfair competition through
misleading advertising or labeling. POM Wonderful LLC v.
Coca-Cola Co., 134 S.Ct. 2228, 2234 (2014). To that end,
the plain language of the statute does not require that the
plaintiff “possess or have used a trademark in U.S.
commerce as an element of the cause of action.”
Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697,
706 (4th Cir. 2016). However, the plaintiff “must
allege an injury to a commercial interest in reputation or
sales, ” and must show that the “economic or
reputational injury flow[s] directly from the
deception.” Id. at 707- 08.
test for false association under 15 U.S.C. § 1125(a)
closely parallels the test for trademark infringement under
15 U.S.C. 1114(1), focusing on whether there is a confusing
similarity between two marks. Polo Fashions, Inc. v.
Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987). The
test for common law unfair competition under West Virginia
law resembles tests evaluating federal trademark infringement
and unfair competition claims by also focusing on confusion
and injury. Choice Hotels Int'l, Inc. v. Fisher,
No. 2:13-CV-23, 2014 WL 795046, at *5 (N.D. W.Va. Feb. 27,
2014). Therefore, it is appropriate for the Court to evaluate
Plaintiffs' false association (Count I) and unfair
competition (Count III) claims using the same legal standard.
state a federal false association claim or a common law
unfair competition claim, a plaintiff must sufficiently
allege that: (1) a defendant uses a designation; (2) in
interstate commerce; (3) in connection with goods and
services; (4) which designation is likely to cause confusion,
mistake, or deception as to origin, sponsorship, or approval
of defendant's goods or services; and, (5) plaintiff has
been or is likely to be damaged by these acts. Superior
Performers, Inc. v. Family First Life, LLC, 2014 WL
7338923, at *4 (M.D. N.C. Dec. 22, 2014). In a previous
order, the Court reduced this test to the following three
factors based on the applicable statute: (1) use of the mark
in interstate commerce; (2) that is likely to cause confusion
as to the Defendants' affiliation with the Plaintiffs;
and, (3) the Plaintiffs' business and reputation has been
harmed by the false association. See ECF No. 39 at
5-6 (deriving from 15 U.S.C. § 1125(a)).
parties do not dispute Defendants' use of the
“Casino Pawn” mark in interstate commerce at
Berkeley Plaza Pawn Shop. Therefore, the Court's
consideration of Defendants' motion for summary judgment
on both counts involving the Berkeley Plaza Pawn Shop will be
restricted to the ...