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BPI Lux S.a.r.l. v. Bd. of Managers, Setai Condominium Residence

Balance of 'Polaroid' Factors Warrant Judgment for Marks' Owner on Infringement by Condo

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MEMORANDUM AND ORDER Plaintiff BPI Lux S.a.r.l (“BPI”) commenced this action against defendants Board of Managers of the Setai Condominium Residence at 40 Broad Street and the Setai Condominium Residence at 40 Broad Street for infringement of its trademarks. Plaintiff now moves for summary judgment on its claims for: (1) trademark infringement of a registered mark in violation of 15 U.S.C. §§1114, 1116; and (2) false designation of origin in violation of 15 U.S.C. §1125(a). Defendants cross-move for summary judgment and request that, should their cross-motion be denied, we also deny plaintiff’s motion pursuant to Federal Rule of Civil Procedure 56(d) because discovery is needed to establish proof to oppose plaintiff’s motion. For the reasons stated below, we grant plaintiff’s motion and deny defendants’ cross-motion and request for additional discovery.FACTUAL BACKGROUND¹In November 2001, The Setai Group LLC (“Setai Group”) registered the SETAI trademarks for use in real estate development and luxury hotels. Pl.’s 56.1 Stmt. 1, ECF No. 31.² The Setai Group used the trademarks at the Miami Setai Resort & Residences (“Miami Setai”), a condominium and hotel resort complex in Miami, Florida. Id. 2. In January 2006, the Setai Group entered into two agreements to license the SETAI trademarks for use in a project in lower Manhattan. Id. 3. The first agreement, between the Setai Group and 40 Broad LLC (“40 Broad”), licensed the trademarks for use in a condominium project at 40 Broad Street (“Condo License Agreement”). Id.

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