The opinion of the court was delivered by: District Judge Susan J. Dlott
ORDER GRANTING PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT AND DENYING PARTIAL SUMMARY JUDGMENT
This matter comes before the Court on Plaintiff's Motion for Partial Summary Judgment (doc. 50) and Defendants' Motion for Partial Summary Judgment (doc. 52). Plaintiff Gutter Topper, Ltd. ("GTL") seeks summary judgment establishing liability against Defendants Sigman & Sigman Gutters, Inc. d/b/a The Sigman Company, Inc. d/b/a Sigman Gutters & Home Improvement, Inc. and William H. Sigman III (collectively, "Sigman") for breach of contract, trademark infringement and unfair competition. Sigman seeks summary judgment on the issue of damages. For the reasons that follow, the Court GRANTS GTL's motion and DENIES Sigman's motion.
I. FACTUAL AND PROCEDURAL BACKGROUND
The Court derives this statement of facts from GTL's submission of Proposed Undisputed Facts (doc. 50 CM/ECF attachment #1), Sigman's submission of Disputed Facts (doc. 64 at 4-10), Sigman's Statement of Undisputed Facts (doc. 52 at 4) and GTL's Response to Defendants' Proposed Undisputed Facts and Disputed Issues of Material Fact (doc. 63-5), each filed in accordance with this Court's Standing Order Governing Motions for Summary Judgment,*fn1 and the Court's review of the supporting admissible evidence.
GTL is an Ohio company engaged in the business of manufacturing gutter covers for private residences throughout the United States. GTL registered the trademark "Gutter Topper ®" in 1995 for use in connection with its products and has continuously used the trademark in interstate commerce since that time. GTL has invested time and money to develop a good reputation and goodwill in connection with the "Gutter Topper ®" trademark. GTL conducts its business nationwide by contracting with individual dealers through Dealer Agreements and permitting the dealers to sell "Gutter Topper ®" within their designated geographic areas.
Sigman & Sigman Gutters, Inc. is a corporation based near Atlanta, Georgia. William H. Sigman III is the president and owner of the company. Sigman entered into a Dealer Agreement with GTL on October 1, 2003, for a one-year automatically renewable term beginning August 1, 2003. The Dealer Agreement was automatically renewed for another year on August 1, 2004. The Dealer Agreement required Sigman to promote sales of the defined GTL products, including the "Gutter Topper ®" product. Section 4.10 of the Dealer Agreement prohibited Sigman from selling, distributing, promoting or designing, directly or indirectly, any product the same or similar to the "Gutter Topper ®" product or competitive with the "Gutter Topper ®" product. Section 8 of the Dealer Agreement limited Sigman's use of the "Gutter Topper ®" mark.
Section 9 gave GTL the right to terminate the Dealer Agreement if Sigman fell into arrears on its payments for more than 30 days.
Sigman fell into arrearage totaling approximately $66,000 on its account with GTL by the end of October 2004. GTL terminated its contract with Sigman for breach of Section 9 of the Dealer Agreement by a cease-and-desist letter dated November 5, 2004. GTL demanded in the letter that Sigman cease using its trademark and stated that it would view any further use by Sigman of its trademark after 30 days from the date of the letter, that is, after December 5, 2004, as a willful infringement.
Prior to the termination of the Dealer Agreement, the "Gutter Topper ®" product was the only gutter cover Sigman advertised. Sigman used GTL's trademark in its advertising on buildings, billboards, trucks, invoices, brochures, paperwork, and in the yellow pages. However, Sigman had begun to offer a competing gutter cover product called Siguard or Sig-Guard for sale along side the "Gutter Topper ®" product before November 5, 2004. Sigman admits that it sold at least 8,248 feet of a competing gutter cover product before the Dealer Agreement was terminated. On at least one occasion, the Sigman-made product was offered by the Sigman sales representative as the lower-priced alternative to the GTL product.
After December 5, 2004, Sigman continued to advertise GTL's product and trademark at least through January 21, 2005 on its website.
Also after December 5, 2004, Sigman issued contracts to customers named Edgar Crossett, Sharon Adams, John Seidl, Susan Ullmann, and Thomas Tudor indicating that Sigman was selling them the "Gutter Topper ®" product. Sigman points to additional records from the Crossett, Adams, Seidl, Ullmann and Tudor customer files that indicate that each was sold Sigman's new gutter cover product called Gutter Guard, not the "Gutter Topper ®" product.
On other occasions, in paperwork after December 5, 2004, Sigman mixed up the GTL trademarked name with the Gutter Guard name as follows: "Gutter Guard topper" to Chris Barnett, "Sigman Topper" to John McAllister, "Dark Bronze Sigman Topper" to Deborah Moore, "Gutter Topper" and "Gutter Guard (topper)" to Rosa Mullis, and "Gutter Guard system topper" to Beverly Ojo and "GutterGuard Topper System" to Bobby Watford and to Lee Tanders. Sigman points out that each customer received an invoice that stated they were sold or were offered for sale the "Gutter Guard by Sigman."
The parties contest the facts and/or the implication from those facts for Sigman's sale of gutter covers to other customers.
GTL filed a Verified Complaint for Injunctive Relief and Damages ("Complaint") (doc. 1) against Sigman on March 11, 2005 stating multiple causes of action as follows:
I. Injunction for Violation of Lanham Act, 15 U.S.C. § 1116 ...