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Alyn v. Southern Land Company, LLC

United States District Court, M.D. Tennessee, Nashville Division

December 28, 2016

LISA ALYN, Plaintiff,



         Lisa Alyn is a real estate agent who lives and sells property in a subdivision near Franklin, Tennessee called “Westhaven” using the business name “Westhaven Franklin.” (Doc. No. 114 at 7-8.) She promotes her real estate business through domain names that include the term “Westhaven.” (Id. at 10-11.) Southern Land Company, LLC (“Southern Land”) developed the Westhaven subdivision, has registered trademarks for W WESTHAVEN and WESTHAVEN, and transacts its real estate business in the Westhaven subdivision through a business called “Westhaven Realty.” (Id. at 1, 4.) Alyn's First Amended Complaint raises the following claims against Southern Land: (1) declaratory judgment that her use of the term “Westhaven” does not infringe on any exclusive trademark right of Southern Land pursuant to the Lanham Act, 15 U.S.C. § 1051 et seq.; (2) cancellation of federal trademark registrations under 15 U.S.C. § 10604; (3) tortious interference with business expectancies and relations under state law; (4) unfair competition under the Lanham Act; and (5) defamation under state law. (Doc. No. 37 at 9-13.) Southern Land has raised the following counterclaims: (1) cybersquatting under 15 U.S.C. § 1125(d); (2) trademark infringement under 15 U.S.C. § 1114 and common law; (3) false designation of origin, false description and representation under 15 U.S.C. § 1125, et seq.; and (4) violation of Tennessee Consumer Protection Act, Tenn. Code Ann. § 47-18-101, et seq. (Doc. No. 38 at 29-36.)

         Alyn has filed a motion for partial summary judgment as to liability on a portion of her defamation claim. (Doc. No. 78.) Southern Land has moved for partial summary judgment on its trademark infringement (statutory and common law), cybersquatting, and false designation of origin claims. (Doc. No. 85.) Southern Land also moves for summary judgment on all of Alyn's claims. (Doc. No. 82.)

         For the reasons that follow, Alyn's motion for partial summary judgment on her defamation claim is DENIED. Southern Land's motion for partial summary judgment is GRANTED on its statutory and common law trademark infringement claims and its false designation of origin claim, but DENIED as to its cybersquatting claim. Southern Land's motion for summary judgment on Alyn's claims is GRANTED.

         Also before the Court is Southern Land's motion to exclude Alyn's proffered expert testimony. (Doc. No. 80.) That motion is DENIED in part and DENIED AS MOOT in part.

         I. Factual and Procedural History

         A. Southern Land

         In the early 2000s, Southern Land selected the name “Westhaven” when it began development for a large residential real estate project in Franklin, Tennessee. (Doc. No. 114 at 1.) Southern Land engages in real estate development, horticulture operations, golf course ownership and management, property management, and resale real estate operations related to the project. (Id. at 4.) Its real estate work is handled through its division named Westhaven Realty, which is physically located in the Westhaven subdivision. (Id. at 4.)

         On November 9, 2000, Southern Land registered the domain name (Id. at 2.) On June 20, 2003, Southern Land filed its application to register marks for WESTHAVEN and W WESTHAVEN. (First Amended Complaint, Doc. No. 37 at ¶¶ 20-21.) On January 5, 2004, the trademark examiner issued two Office Actions-one for each of Southern Land's applications-each of which required Southern Land to indicate whether “WESTHAVEN” had any significance “in the relevant trade” or “any geographical significance.” (Id at ¶ 23; Office Actions, Doc. No. 37-2.) On July 6, 2004, Southern Land responded to each Office Action: “Applicant submits that ‘WESTHAVEN' does not have any significance in the relevant trade, or any geographical significance.” (Doc. No. 37-3.)

         On June 6, 2006, Southern Land obtained U.S. Trademark Registrations from the United States Patent and Trademark Office (“PTO”) for a W WESTHAVEN word and design mark (U.S. Reg. No. 3, 101, 150) and the WESTHAVEN word mark (U.S. Reg. No. 3, 101, 151) for use with a number of real estate-related services, including “real estate brokerage services, leasing of real estate, real estate management, ” and “real estate development.” (Doc. No. 114 at 2-3; Doc. No. 38-1; Doc. No. 38-2.) The registrations show that Southern Land first used the marks in commerce on January 31, 2002. (Doc. No. 38-1; Doc. No. 38-2.) Because the WESTHAVEN marks were in continuous use for five years, Southern Land filed a Declaration of Incontestability with the PTO. (Doc. No. 114 at 3-4.) The parties agree that Southern Land's WESTHAVEN marks are now incontestable pursuant to 15 U.S.C. § 1065. (Id. at 4.)

         B. Alyn

         Alyn is a licensed real estate agent who moved to a home in Southern Land's Westhaven development in 2008. (Id. at 7-8.) In 2009, Alyn began publishing a blog called “Westhaven Weekly” about life in the Westhaven neighborhood. (Id. at 8-9; Doc. No. 29-1 at ¶ 7 (Alyn Decl.)). In January 2010, she created the domain name to serve as a new outlet for publishing the blog. (Doc. No. 29-1 at ¶ 8.) She has used this domain name since then, and it now resolves to her current website. (Id.) Alyn offers her affidavit stating that before she created this domain name, she contacted Brian Sewel, Vice President of Southern Land, and that he gave her verbal permission to use that domain name. (Id.)

         In 2012, Alyn registered the domain names and (Doc. No. 114 at 10.) The parties dispute whether Southern Land was aware of Alyn's ownership or use of these domain names when she registered them and whether it gave her permission to use the WESTHAVEN marks on her website or in her domain name. (Id.) Alyn's declaration states that she contacted Sewel before activating these domain names, and that he once again approved her use of the term “Westhaven” in her domain names. (Doc. No. 29-1 at ¶ 9.) Southern Land disputes that it gave Alyn permission to use “Westhaven” in her domain names. (Doc. No. 114 at 10.) After registering the challenged domain names, Alyn began preparing a website to promote her real estate services. (Doc. No. 29-1 at ¶ 10.)

         C. Communications Between Southern Land and Alyn

         In February and March 2013, Alyn and her staff communicated by email with Mary Lee Bennett, Southern Land's Marketing Manager, about the content of her website, all from email addresses that ended in (Id. at 2-3, 19-40.) Alyn's declaration states that she engaged in this communication about the development of her websites and marketing materials at the request of Sewell. (Id. at ¶ 11.)

         On February 21, 2013, Alyn's assistant, Becky Best, emailed Bennett with a proof of a “For Sale” sign that she intended to use in her real estate business. (Doc. No. 29-1 at 2, 37.) The sign proof had the words “Westhaven Franklin, ” which is how Alyn has branded her business, on it. (Id. at 2, 38.) Bennett responded by email, “We should be good.” (Id. at 37.)

         On March 19 and 20, 2013, Bennett had further email exchanges between Alyn and her staff about Alyn's website that used the term “Westhaven” in its domain name. On March 19, 2013, Bennett sent the following message by email:

Your website looks really good. While I don't mind if you use the images from our website, I do have a problem with you taking content directly from the site. Please call me. I would like for you to develop your own content about the community. The builder page is a good example of what I am talking about. Thanks for your cooperation in this regard as I work really hard at keeping our content fresh and accurate.

(Doc. No. 29-1 at 20.) On March 20, 2013, Bennett emailed Alyn again to request again that Alyn remove the content copied from Southern Land's websites “immediately” because it had come to Bennett's attention that Southern Land “may be penalized by Google if there are two websites with the exact same content” and she “would not want for either of our site [sic] to have any issues as a result of this.” (Id. at 21.) Alyn responded that her staff was “working on this full time as of today to re-write material.” (Id.)

         On March 27, 2013, Bennett sent an email to Alyn asking her yet again to make changes on her website because “much of the text” was still from the Southern Land site, and the formatting of the pages was “extremely similar” to that of the Southern Land site. (Id. at 25.) The email instructed Alyn as to which sections needed to be changed, stated that the “Westhaven materials are protected by copyright and you are currently violating that copyright, ” and ended, “I would hate for this to turn into a legal issue.” (Id. at 25-26.) In a follow-up email later that day, Bennett instructed Best to provide a link on Alyn's site to Southern Land's site for details about the golf course that is available to Westhaven residents. (Id. at 28-29.) On May 13, 2013, Bennett emailed Alyn to ask her to be sure that her website clarified that some events, such as an upcoming concert series, are not open to the public, and thanked her for her “help with making sure we communicate this accurately.” (Doc. No. 114-3 at 45.) Bennett testified that, although she was the marketing manager and responsible for identifying domain names that use the term “Westhaven, ” she overlooked the use of the term in Alyn's domain name. (Doc. No. 114-3 at 12.)

         Alyn offers evidence of other businesses located in the Westhaven development that use “Westhaven” in their names, such as Westhaven Dentistry, The Academy of Westhaven, another real estate agent who promotes her services at, and a business providing chiropractic services in Westhaven that uses the domain name (Doc. No. 29-1 at 41-44.)

         D. Cease and Desist Letter

         In September 2013, Matt Magallanes, who has worked at Southern Land in different roles since 2005, raised concerns about Alyn's use of the term “Westhaven” with Southern Land executives. (Doc. No. 114-1 at 7, 8, 10, 12, 27.) In October 2013, Southern Land sent Alyn a cease and desist letter requesting that she stop the alleged infringement of the WESTHAVEN marks. (Doc. No. 114 at 13-14.) At that time, Alyn had only been working for a few months for SilverPointe Properties, LLC (“SilverPointe”) and she informed her managing broker, David Guilbert, that Southern Land was questioning her use of the WESTHAVEN trademarks. (Id. at 8, 14.) Alyn represented to him that Bennett had authorized her to use certain content from Southern Land's website on her website and did not object to her domain name or use of the WESTHAVEN marks. (Id.)

         Since Southern Land began complaining about Alyn's use of the term “Westhaven, ” Alyn has included a disclaimer on her website stating her lack of affiliation with Southern Land. (Doc. No. 29-1 at ¶ 15 and pp. 43, 47.) On other marketing materials, however, this disclaimer does not appear, but her real estate agency is identified. (Id. at 48-52.)

         E. Williamson County Association of Realtors Ethics Complaint

         On April 10, 2015, Matt Magallanes, who was then a real estate agent with Westhaven Realty, filed an ethics grievance complaint with the Williamson County Association of Realtors (“WCAR”) alleging that Alyn was misappropriating Southern Land's WESTHAVEN trademarks and marketing materials. (Doc. Nos. 89-8 at 44 (Ethics Complaint); 114 at 15-16, 19.) The complaint alleged a number of ethical violations, including her misappropriation of Southern Land's WESTHAVEN trademarks and marketing material. (Doc. No. 114 at 19-20.) Magallanes also gave information to WCAR about Alyn's website that he felt led to confusion with the WESTHAVEN mark because it had content that normally a developer, such as Southern Land, would have on its site, such as builder biographers. (Id. at 20 (citing Doc. No. 89-3 at 69, 79)). He also alleged that Alyn had copied content directly from Westhaven's website and signage, including custom artwork and design elements. (Id.; Doc. No. 114-1 at 54-55, 121.) Magallanes also claimed to have witnessed a number of other potentially unethical actions taken by Alyn, each of which Alyn alleges are false and were filed to portray her as an unethical and unprofessional real estate agent. (Doc. No. 114 at 21-22.) WCAR decided to hold the complaint in abeyance. (Doc. No. 114 at 24.)

         Among Magallanes' allegations was the claim that Alyn had interfered in another agent's real estate transaction. Another realtor with Westhaven Realty, Sara Lavagnino, told Magallanes about the incident. (Doc. No. 103 at 1.) Lavagnino alleged that an individual named Mr. Chauhan was working with a realtor named Lisa Peebles to purchase property in Westhaven. (Id. at 1.) Westhaven Realty was representing the seller of the home, Sajid Khan. (Id.) According to Lavagnino, Chauhan was in a coffee shop discussing the negotiations for Khan's home and Alyn eavesdropped on his conversation, then introduced herself and told him not to purchase the house at issue because it had water damage. (Id. at 1-2.) Chauhan did not purchase the house, and Lavagnino believes that a contract could have been made if Alyn had not interfered with the negotiations. (Id. at 2.) Lavagnino was not present for the alleged conversation, and Alyn, while admitting that she spoke to Chauhan, disputes the details of the encounter, including whether it was the result of her eavesdropping and whether she told Chauhan not to buy the home. (Id. at 2, 4-5; Alyn Dep., Doc. No. 102-2 at 3.) Alyn does not dispute that she told Chauhan that there was a “water issue” with the house and that Chauhan should “check that out” if he was “interested in the home.” (Doc. No. 103 at 4-5.)

         F. Alyn's Termination From SilverPointe

         The parties do not dispute that SilverPointe terminated Alyn based in part on the WCAR ethics complaint. (Id. at 17.) The parties dispute whether Southern Land was responsible for other bases for the SilverPointe's termination decision. Alyn alleges that Guilbert terminated her because Southern Land harassed SilverPointe with threats of litigation, made defamatory statements about her to SilverPointe, and instituted “discriminatory policies” meant to thwart her ability to conduct her business. (Doc. No. 37 at ¶ 36.) The “discriminatory policies” allegation refers to a policy Southern Land implemented that required that Guilbert, as Alyn's supervising broker, be present for any communications between Alyn and Westhaven Realty. (Doc. No. 114-12 at 26.) Guilbert testified that his inability to meet that requirement was one of the two primary reasons for her termination, and the other was Alyn's “inability to produce a document that she said existed way back . . . related to permission given by Southern Land” to use its mark. (Id. at 16.) Guilbert also testified that, upon his termination of Alyn, he required her to sign a hold-harmless agreement, which was not required of other realtors being released, because he was concerned that SilverPointe may be sued or brought into litigation as a result of its relationship with her. (Id.) Guilbert also testified that Southern Land had never threatened SilverPointe with litigation, never made defamatory statements against Alyn, did not have “discriminatory policies against SilverPointe, ” and had never harassed SilverPointe, or pressured it to terminate it its contracts with Alyn. (Id. at 17.)

         II. Southern Land's Motion to Exclude Alyn's Proffered Expert Testimony

         Southern Land moves to exclude the testimony offered by Alyn's three expert witnesses.

         A. Legal Standard

         Under Rule 702 of the Federal Rules of Evidence, a proposed expert's opinion is admissible if it satisfies three requirements: (1) the witness must be qualified by knowledge, skill, experience, training, or education; (2) the testimony must be relevant, meaning that it will assist the trier of fact to understand the evidence or to determine a fact in issue; and (3) the testimony must be reliable. Superior Prod. P'ship v. Gordon Auto Body Parts Co., 784 F.3d 311, 323 (6th Cir. 2015). “The Rule 702 inquiry is a flexible one and its focus must be solely on principles and methodology, not on the conclusions they generate.” Id. (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 595 (1993)). “Similarly, Rule 702 directs courts to focus on the reliability of expert testimony, rather than the credibility and accuracy of that testimony.” Id.

         B. Analysis

         1. ...

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