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Gabbanelli Accordions & Imports, L.L.C. v. Hermes Music Company

United States District Court, S.D. Texas, Houston Division

August 6, 2019

Gabbanelli Accordions & Imports, LLC, Plaintiff,
v.
Hermes Music Company, et al., Defendants.

          MEMORANDUM OPINION AND ORDER

          Gray Miller Senior United H. District Judge

         Pending before the court is defendants Hermes International, Inc., Hermes Trading Co., and 3 Crowns Distributors's (collectively, “Defendants”) partial motion to dismiss.[1] Dkt. 7 (motion filed by Hermes International and Hermes Trading Co.); see also Dkt. 22 (joining 3 Crowns in the pending motion). Plaintiff Gabbanelli Accordions and Imports, LLC (“Gabbanelli”) responded (Dkt. 10) and Defendants replied (Dkt. 12). Having considered the motion, response, reply, pleadings, and applicable law, the court is of the opinion that Defendants' motion (Dkt. 7) should be GRANTED IN PART and DENIED IN PART.

         I. Background

         This is an intellectual property dispute. Gabbanelli manufactures and sells its own brand of high-quality accordions.[2] Dkt. 5 at 4. The Hermes defendants also sell “various brands of high-quality accordions.” Dkt. 7 at 2.

         A. The 2000 and 2014 Settlement Agreements

         Gabbanelli has brought two previous suits against Hermes entities-one in 2000 and one in 2013-for alleged intellectual property infringement. Dkt. 5 at 8-9. Both suits resulted in settlement agreements.[3]

         First, in 2000, Gabbanelli filed suit against eight different Hermes entities in federal district court (Civil Action No. H-00-0352) (the “2000 Suit”). Dkt. 7-1 at 2. The parties ultimately resolved the case via settlement agreement. Dkt. 7-1 (the “2000 Settlement Agreement”). The 2000 Settlement Agreement provided, inter alia, that Hermes would “stop the promotion and sale of any accordion containing marks that are identical to, or confusingly similar to, ” the Gabbanelli trade dress. Dkt. 7-1 at 3. The Agreement defined “Gabbanelli trade dress” as “the overall appearance of the accordions sold and distributed by Gabbanelli consisting of, but not limited to, the color scheme, the location and design of the buttons and keys on the accordions, the engravings on the accordions, and the ornamentation attached to the accordions.”[4] Id. at 3.

         Despite the 2000 Settlement Agreement, the parties continued to clash. In 2013, Gabbanelli again filed suit against multiple Hermes entities for alleged infringement (Civil Action No. 4:13-cv-2044) (the “2013 Suit”). In 2014, the parties entered into another settlement agreement (the “2014 Settlement Agreement”). Dkt. 8 (sealed). The 2014 Settlement Agreement prohibited Hermes from “represent[ing] to the public that accordions from parties other than Gabbanelli . . . are related to, affiliated with, sponsored by, associated with or connected to Gabbanelli, the Gabbanelli name, or Gabbanelli trademark/trade name.” Id. at 3. The 2014 Settlement Agreement also prohibited Hermes from making “false, deceptive, or misleading statements about Gabbanelli accordions.” Id.

         B. The Current Suit

         Now, in this third suit, Gabbanelli again alleges that Hermes entities have engaged in trade dress and trademark infringement. First, Gabbanelli contends that Defendants have infringed on Gabbanelli's “red, white, and green trade dress” and U.S. Trademark Registration No. 4, 391, 931 (the “931 Mark”) by selling tequila in packaging that resembles Gabbanelli's accordions. Dkt. 5 at 10. Further, Gabbanelli alleges that the tequila packaging includes the name “CANTABELLA”-a Hermes-owned mark-on the package. Id. Gabbanelli also alleges that Defendants hired Ramon Ayala, a well-known accordionist, to promote the offending tequila by using a red, white, and green “CANTABELLA” accordion for performances and advertisements. Id. at 11. Finally, Gabbanelli alleges that Defendants have sold “additional accordions violating Gabbanelli's red, white, and green trade dress.” Id. at 14. According to Gabbanelli, Defendants engaged in these activities “intend[ing] . . . to create an association in consumers' minds” between Gabbanelli and Defendants' products. Id. at 15.

         Second, Gabbanelli alleges that Defendants have sold accordions in violation of Gabbanelli's trademarks. Specifically, Gabbanelli asserts that Defendants have sold Sonola-brand accordions with marks that are “substantially similar” to Gabbanelli-owned U.S. Trademark Registration Nos. 4, 391, 927 and 4, 391, 903 (the “927 Mark” and “903 Mark, ” respectively). Id. at 16. Gabbanelli claims that it sent Defendants a cease and desist letter relating to the offending accordions, but Defendants did not respond. Id. at 17.

         Third, Gabbanelli contends that Defendants' alleged infringements also breach both the 2000 and 2014 Settlement Agreement. Id. at 23-24. Gabbanelli argues that Defendants' alleged unauthorized use of Gabbanelli's green, white, and red trade dress violates the 2000 Settlement Agreement. Dkt. 10 at 9. Gabbanelli also argues that Defendants' infringing activities violate the 2014 Settlement Agreement. Id. at 11.

         II. Standard of Review

         Rule 8(a)(2) requires that the pleading contain “a short and plain statement of the claim showing that the pleader is entitled to relief.” Fed.R.Civ.P. 8(a)(2). A party against whom claims are asserted may move to dismiss those claims when the nonmovant has failed “to ...


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