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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
`
`
`
` Case No. 8:23-cv-2873-VMC-AAS
`
`
`NIKE, INC.,
`
`
`
`
`Plaintiff,
`
`v.
`
`
`
`
`EBEN FOX,
`
`
`
`
`
`Defendant.
`
`/
`ORDER
`This matter comes before the Court upon consideration of
`
`Plaintiff Nike, Inc.’s Motion for Summary Judgment, filed on
`December 13, 2024. (Doc. # 46). Defendant Eben Fox responded
`in opposition on February 3, 2025. (Doc. # 56). Nike replied
`on February 18, 2025. (Doc. # 57). For the reasons set forth
`below, the Motion is granted in part and denied in part.
`I.
`Background
`A. The Parties and the Marks
`According to Nike’s Director of Brand Protection,
`Authentication and Innovation, Joe Pallett, “Nike is one of
`the most famous brands in the world, making it a target for
`those that profit from the sales and promotion of counterfeit
`goods.” (Pallett Decl. Doc. # 46-73 at ¶ 5). “Nike sells its
`goods directly to consumers through Nike-owned retail stores
`
`
`
`1
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`
`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
`
`
`
` Case No. 8:23-cv-2873-VMC-AAS
`
`
`NIKE, INC.,
`
`
`
`
`Plaintiff,
`
`v.
`
`
`
`
`EBEN FOX,
`
`
`
`
`
`Defendant.
`
`/
`ORDER
`This matter comes before the Court upon consideration of
`
`Plaintiff Nike, Inc.’s Motion for Summary Judgment, filed on
`December 13, 2024. (Doc. # 46). Defendant Eben Fox responded
`in opposition on February 3, 2025. (Doc. # 56). Nike replied
`on February 18, 2025. (Doc. # 57). For the reasons set forth
`below, the Motion is granted in part and denied in part.
`I.
`Background
`A. The Parties and the Marks
`According to Nike’s Director of Brand Protection,
`Authentication and Innovation, Joe Pallett, “Nike is one of
`the most famous brands in the world, making it a target for
`those that profit from the sales and promotion of counterfeit
`goods.” (Pallett Decl. Doc. # 46-73 at ¶ 5). “Nike sells its
`goods directly to consumers through Nike-owned retail stores
`
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`and digital platforms (including its websites, social media
`accounts, and mobile applications), to retail accounts, and
`to a mix of independent distributors, licensees, and sales
`representatives.” (Id. at ¶ 6). Nike also holds several
`registered trademarks, including AIR JORDAN, Air Jordan &
`Wings Design, DUNK, JumpMan Design, NIKE, NIKE & Swoosh
`Design, and Swoosh Design (collectively, the “Nike Marks”).
`(Id. at ¶¶ 10-11).
`The Nike Marks are associated with the following
`registrations in the United States Patent and Trademark
`Office: (1) Reg. No. 1,370,283 for AIR JORDAN, issued on
`November 12, 1985; (2) Reg. No. 3,725,535 for Air Jordan &
`Wings Design, issued on December 15, 2009; (3) Reg. No.
`3,780,236 for DUNK, issued on April 27, 2010; (4) Reg No.
`1,558,100 for JumpMan Design, issued on September 26, 1989;
`(5) Reg. No. 1,742,019 for JumpMan Design, issued on December
`22, 1992; (6) Reg. No. 978,952 for NIKE, issued on February
`19, 1974; (7) Reg. No. 1,214,930 for NIKE, issued on November
`2, 1982; (8) Reg. No. 1,325,938 for NIKE & Swoosh Design,
`issued on March 19, 1985; (9) Reg. No. 977,190 for Swoosh
`Design, issued on January 22, 1974; and (10) Reg. No.
`1,323,343 for Swoosh Design, issued on March 5, 1985. (Id. at
`¶ 10). Each of the Nike Marks is “valid in full force and
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`effect, and incontestable.” (Id. at ¶ 11; Doc. ## 46-31, 46-
`32, 46-33, 46-34, 46-35, 46-36, 46-37, 46-38, 46-39). “Nike
`did not authorize or consent to [Mr. Fox] using the Nike
`Marks.” (Pallett Decl. Doc. # 46-73 at ¶ 12).
`Mr. Fox is self-described as “one of the longest lasting
`replica content creators on social media [o]ver the past 4
`years [who has] tried every agent, every seller, and purchased
`thousands of items.” (Doc. # 46-9 at 4; Def. Dep. Doc. # 46-
`2 at 133:5-25). As a content creator, his sole source of
`income stems from creating fashion-related content, including
`content about counterfeits, which Mr. Fox also refers to as
`“reps,” “replicas,” or “fakes.” (Def. Decl. Doc. # 56-1 at ¶
`2; Def. Dep. Doc. # 46-2 at 13:20-14:2, 18:19-19:2, 39:5-
`40:7, 42:6-44:11, 46:9-15, 187:7-11).
`According to Mr. Fox, he began posting content about
`fakes in 2020. (Def. Dep. Doc. # 46-2 at 20:9-24). Since then,
`Mr. Fox has continued to create and post content on several
`platforms, usually under the username or handle “Cedaz.” (Id.
`at 22:2-23:4, 23:14-19, 26:2-5, 26:10-18; Doc. # 46-38). The
`platforms used by Mr. Fox include YouTube, TikTok, and
`Discord. (Def. Dep. Doc. # 46-2 at 303:12-22). Collectively,
`Mr. Fox amassed over a million followers on social media,
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`despite multiple account takedowns, and reached almost one
`million followers on TikTok alone. (Doc. # 46-42 at 3).
`B. Sale of Counterfeit Nike Goods
`Nike alleges that Mr. Fox distributed and sold multiple
`counterfeit Nike goods, the full extent of which is unknown
`partly because Mr. Fox invoked the Fifth Amendment
`approximately 38 times during his deposition. See, e.g.,
`(Def. Dep. Doc. # 46-2 at 93:15-94:8).
`The Discord account “Cedaz – ALWAYS @ ME,” made posts
`offering for sale at least three pairs of “Nike” shoes on the
`ClosetClearout Discord server in 2023. (Doc. ## 46-43, 46-
`44, 46-45, 44-46; Def. Dep. Doc. # 46-2 at 272:2-24). Mr.
`Pallett’s review of the images and the below-resale price
`concluded that the pictured “Nike” shoes in the posts were
`counterfeits. (Pallett Decl. Doc. # 46-73 at ¶ 13). The three
`pairs collectively used the AIR JORDAN, Air Jordan & Wings
`Design, DUNK, NIKE, NIKE & Swoosh Design, and Swoosh Design
`marks. (Id.). However, in his declaration, Mr. Fox asserts
`that another individual created a Discord account using Mr.
`Fox’s handle “@cedaz” and profile picture, impersonating him
`in the Blomi Squad Discord server, and posting and advertising
`items for sale in 2023. (Def. Decl. Doc. # 56-1 at ¶¶ 9-11).
`Mr. Fox further claims that he has “never distributed or sold
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`counterfeit Nike products, including on Discord.” (Id. at ¶
`9).
`
`According to Mr. Pallett, Mr. Fox’s CashApp transaction
`records provide evidence of sales of at least eight pairs of
`counterfeit Nike shoes. (Pallett Decl. Doc. # 46-73 at ¶¶ 14-
`15; Doc. # 46-22 at 10-18). The descriptions of the CashApp
`transactions contain references that Mr. Pallett attributes
`to the following Nike shoes: Air Jordan IV “Black Cat,” SB
`Dunk Low Jedi, Dior x Air Jordan 1 High OG, Nike Air Jordan
`IV Retro “Lightning,” Nike SB Dunk Low “Mummy,” AMBUSH x Nike
`Dunk High “Chicago,” Nike Fragment Design x Air Jordan 1 Retro
`High OG, and Nike Dunk Low Off-White Lot 28 shoes. (Pallett
`Decl. Doc. # 46-73 at ¶ 15; Doc. # 46-22 at 10-18). Mr.
`Pallett’s review of the transactions indicates that the
`“Nike” shoes referenced were sold for less than their average
`resale price and that the eight pairs collectively used each
`of the Nike Marks. (Pallett Decl. Doc. # 46-73 at ¶ 15).
`During his deposition, Mr. Fox declined to answer most
`questions relating to those transactions on Fifth Amendment
`grounds. (Def. Dep. Doc. # 46-2 at 259:24-264:4). Mr. Fox now
`asserts in his declaration that he does not recall those
`transactions or whether they relate to any sale of goods.
`(Def. Decl. Doc. # 56-1 at ¶ 29).
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`Again, in his declaration, Mr. Fox asserts that he does
`“not advertise, sell, offer for sale, promote, or distribute
`counterfeits,” and that he has “never distributed and sold
`counterfeit Nike products.” (Id. at ¶ 7).
`C. Advertisement and Promotion of Counterfeit Nike Goods
`Mr. Fox admits to partnering with and entering into
`written agreements with PandaBuy, MuleBuy, and AllChinaBuy.
`(Def. Dep. Doc. # 46-2 at 95:4-22, 249:18-250:2, 251:1-16;
`Doc. # 46-7). According to Mr. Pallett, these shipping agents
`are known counterfeiters. (Pallett Decl. Doc. # 46-73 at ¶¶
`16-26). However, Mr. Fox claims that the shipping agents “are
`shipping platforms that do not sell any products themselves,”
`but instead operate as a platform for third parties to sell
`and buy products on. (Def. Decl. Doc. # 56-1 at ¶ 15).
`According to Mr. Fox, he “does not have any business
`relationships with any manufacturers or distributors of
`counterfeit products.” (Id.).
`The shipping agents financially compensate Mr. Fox for
`his promotional activities, and he earned $270,000.00 between
`November 2022 and April 2024 from PandaBuy alone. (Doc. # 46-
`7; Doc. # 46-48). Yet, Mr. Fox maintains that he does “not
`create content to advertise or promote counterfeit products,
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`counterfeit manufacturers or sellers, or any counterfeiters.”
`(Def. Decl. Doc # 56-1 at ¶ 4).
`1. Websites
`First, Mr. Fox co-owns W2C.net that bears the tagline
`“THE #1 PLACE FOR YOUR REP NEEDS.” (Doc. # 46-9). According
`to Mr. Pallett’s review, W2C.net linked at least 130
`counterfeit Nike products that were available for purchase
`from third-party counterfeiters through PandaBuy. (Doc. # 46-
`10; Pallett Decl. Doc. # 46-73 at ¶ 27). W2C.net also
`contained a “How-To” page, showing visitors how to buy items
`through PandaBuy. (Doc. # 46-49).
`Next, Mr. Fox operates cedaz.net that contains a “My Rep
`Finds!” page linking Mr. Fox’s favorite items available for
`purchase from third-party sellers through PandaBuy. (Doc. #
`46-12; Def. Decl. Doc. # 56-1 at ¶ 26). Mr. Pallet’s review
`concluded that Mr. Fox linked at least 80 counterfeit Nike
`products on cedaz.net, which were available for purchase from
`third-party counterfeiters through PandaBuy. (Pallett Decl.
`Doc. # 46-73 at ¶ 27). Both websites included uses of each of
`the asserted Nike Marks. (Id.).
`2. Videos
`Mr. Fox regularly created and posted videos regarding
`counterfeit goods on YouTube and TikTok. (Doc. ## 46-40, 46-
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`51). While Nike claims that the purpose of such videos was to
`promote counterfeiters and counterfeit goods, Mr. Fox
`disputes that. (Def. Decl. Doc. # 56-1 at ¶¶ 4, 15-16).
`Instead, Mr. Fox claims that his videos provide “honest
`opinions on the quality of replica and authentic products,
`and [his] thoughts on the role and impact of replica fashion
`in the fashion industry and in people’s lives.” (Id. at ¶ 4).
`On his YouTube channel, Mr. Fox frequently posted “haul”
`videos, including a video titled, “My BIGGEST Pandabuy Haul
`Ever! | 80KG of Hype Streetwear!,” in which Mr. Fox displays
`and reviews three pairs of counterfeit Nike shoes that he
`represents were acquired through PandaBuy. (Doc. # 46-52 at
`4:56-6:32; Doc. # 46-71; Pallett Decl. Doc. # 46-73 at ¶ 30).
`In another YouTube video titled, “How to Buy Items Off
`Pandabuy Best Guide Updated 2023-2024,” Mr. Fox provides
`instructions on how to purchase goods through PandaBuy using
`a pair of “Nike” shoes as an example. (Doc. # 46-6 at 0:41-
`10:33). Mr. Pallett identified the pair of “Nike” shoes used
`by Mr. Fox as counterfeit. (Id. at 5:50-6:57; Pallett Decl.
`Doc # 46-73 at ¶ 31). According to Mr. Pallett, Mr. Fox’s
`instructional videos have encouraged and taught thousands of
`consumers how to purchase and ship innumerable counterfeit
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`Nike goods into the United States. (Pallett Decl. Doc # 46-
`73 at ¶ 43).
`Additionally, with over one million views, Mr. Fox’s
`YouTube video, titled “I Returned FAKE Nike Shoes to Nike .
`. . (SHOCKING),” depicts him successfully returning a pair of
`counterfeit Nike shoes to a Tampa Nike retail store. (Doc. #
`46-61). In the video, Mr. Fox stated that he was “committing
`a crime” and posting “evidence of fraud,” explaining that
`“we’re about to go ahead and return these fake shoes,” “we’re
`going to scam Nike so fucking bad,” and that “if [he] really
`wanted to, [he] could go buy 10 pairs of fakes, 10 pairs of
`reals, exchange them all, and make $900.” (Id. at 0:10-0:20,
`5:29-5:35, 6:54-6:59). At the end of the video, Mr. Fox tells
`his viewers to “make sure you go down there and sign up for
`PandaBuy with my link for shipping discounts — shameless plug,
`you know me.” (Id. at 6:59-7:06).
`During his deposition, while he was not entirely sure,
`Mr. Fox claimed that he returned the better-quality pair and
`that the video was “click bait.” (Def. Dep. Doc. # 46-2 at
`175:2-176:12). In his declaration, Mr. Fox reiterates that
`the video was click bait and that he returned the higher
`quality pair. (Def. Decl. Doc. # 56-1 at ¶ 21). Mr. Fox’s
`declaration also alleges that “[t]o the best of his knowledge,
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`[he] returned the authentic pair of Nikes to the store that
`[he] purchased them from.” (Id.). Nevertheless, that video
`inspired others to replicate Mr. Fox’s supposed return fraud,
`including at least one other YouTuber who filmed himself
`similarly returning counterfeit Nike shoes to a Nike
`retailer. (Pallett Decl. Doc. # 46-73 at ¶ 44; Doc. # 46-69).
`In yet another YouTube video, titled “I Wore FAKE Nike
`Mags To SNEAKERCON . . . (SHOCKING),” Mr. Fox filmed himself
`taking counterfeit Nike shoes to SneakerCon. (Doc. # 46-25 at
`3:40-10:32; Doc. # 46-54); Pallett Decl. Doc. # 46-73 at ¶
`32). Mr. Fox’s videos include links to sign up with a shipping
`agent and hashtags such as “#pandabuy,” “#stockx,” “#nike,”
`and “#ua.” (Doc. # 46-54). “UA” means “unauthorized
`authentic,” a common synonym for counterfeit. (Pallett Decl.
`Doc. # 46-73 at ¶ 33). Again, Mr. Fox encourages his audience
`to use his sign-up invitation link and “cedaz” affiliate code
`for discounts. (Doc. # 46-6 at 1:57-2:06, 9:33-9:47).
`Mr. Fox maintains that his “videos are edited for shock
`value, click bait, and entertainment.” (Def. Decl. Doc. # 56-
`1 at ¶ 22).
`3. Spreadsheets
`Mr. Fox has also created spreadsheets listing replicas
`available for purchase from third-party sellers. Indeed,
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`pursuant to his agreement with PandaBuy, Mr. Fox created a
`Google Sheets spreadsheet that, according to Mr. Pallett,
`listed at least 68 counterfeit Nike goods available for
`purchase from third-party counterfeiters through PandaBuy.
`(Doc. # 46-7 at 2; Doc. # 46-53; Pallett Decl. Doc. # 46-73
`at ¶ 35). This spreadsheet also included a “cedaz” code and
`sign-up instructions. (Doc. # 46-53 at 3).
`4. Discord and Individual Social Media Sellers
`Blomi Squad is Mr. Fox’s server on Discord. (Def. Dep.
`
`Doc. # 46-2 at 208:17-19). The Blomi Squad Discord server
`included dedicated channels for the following sellers, who
`Mr. Pallett identified as sellers of counterfeit Nike goods:
`Yumi Kick, LJR Sneakers, and UaBat. (Doc. ## 46-55, 46-56,
`46-57; Pallett Decl. Doc. # 46-73 at ¶¶ 36, 38). Additionally,
`on his website cedaz.net, Mr. Fox identifies the seller Zoe
`— who Mr. Pallett also determined to be a counterfeit seller
`of Nike goods — as “Best MM Seller.” (Doc. # 46-58 at 3;
`Pallett Decl. Doc. # 46-73 at ¶¶ 37-38). The sellers
`collectively used each of the asserted Nike Marks. (Pallett
`Decl. Doc. # 46-73 at ¶ 39).
`
`The Blomi Squad Discord server also contained “BST” – an
`acronym for “Buy, Sell, Trade” – channels where individuals
`traded goods. (Doc. # 46-59; Def. Dep. Doc. # 46-2 at 118:16-
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`18). Mr. Fox had knowledge of these BST channels. (Doc. # 46-
`60). Mr. Pallett explains that the BST channels operate as
`marketplaces for counterfeit products, including for
`counterfeit goods bearing each of the Nike Marks. (Pallett
`Decl. Doc. # 46-73 at ¶¶ 40-41).
`Additionally, Mr. Pallett asserts that Mr. Fox’s
`counterfeiting activities and promotion of third-party
`counterfeiters harms the market for high-quality, genuine
`Nike products. (Id. at ¶ 42). Admittedly, Mr. Fox is aware
`that the purpose of counterfeit goods is to deceive consumers
`and the public into believing they are real. See, e.g., (Doc.
`# 46-63). Mr. Fox has commented in a video that “if you’re
`telling yourself that you’re buying something because you
`like how it looks, but a fake is almost the exact same and
`you choose not to buy the fake, then you’re lying to yourself
`. . . you’re a fucking fraud.” (Doc. # 46-4 at 2:19-2:45).
`D. Procedural History
`On December 15, 2023, Nike initiated this action. (Doc.
`# 1). In its complaint, Nike alleges trademark infringement
`under 15 U.S.C. § 1114 (Count I), contributory trademark
`infringement under 15 U.S.C. § 1114 (Count II), trademark
`counterfeiting under 15 U.S.C. § 1114(1) (Count III),
`contributory trademark counterfeiting under 15 U.S.C. §
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`1114(1) (Count IV), false designation of origin and unfair
`competition under 15 U.S.C. § 1125(a) (Count V), trademark
`infringement and unfair competition under common law (Count
`VI), trademark infringement under Fla. Stat. § 495.131 (Count
`VII), and violation of the Florida Deceptive and Unfair Trade
`Practices Act (FDUTPA), Fla. Stat. § 501.201 (Count VIII).
`(Id. at ¶¶ 108-71).
`Nike now moves for summary judgment in its favor. (Doc.
`# 46). Mr. Fox responded (Doc. # 56), and Nike replied. (Doc.
`# 57). The Motion is ripe for review.
`II. Legal Standard
`Summary judgment is appropriate “if the movant shows
`that there is no genuine dispute as to any material fact and
`the movant is entitled to judgment as a matter of law.” Fed.
`R. Civ. P. 56(a). A factual dispute alone is not enough to
`defeat a properly pled motion for summary judgment; only the
`existence of a genuine issue of material fact will preclude
`a grant of summary judgment. Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242, 247-48 (1986).
`An issue is genuine if the evidence is such that a
`reasonable jury could return a verdict for the non-moving
`party. Mize v. Jefferson City Bd. of Educ., 93 F.3d 739, 742
`(11th Cir. 1996) (citing Hairston v. Gainesville Sun Publ’g
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`Co., 9 F.3d 913, 918 (11th Cir. 1993)). A fact is material if
`it may affect the outcome of the suit under the governing
`law. Allen v. Tyson Foods, Inc., 121 F.3d 642, 646 (11th Cir.
`1997). The moving party bears the initial burden of showing
`the court, by reference to materials on file, that there are
`no genuine issues of material fact that should be decided at
`trial. Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1260
`(11th Cir. 2004) (citing Celotex Corp. v. Catrett, 477 U.S.
`317, 323 (1986)). “When a moving party has discharged its
`burden, the non-moving party must then ‘go beyond the
`pleadings,’ and by its own affidavits, or by ‘depositions,
`answers to interrogatories, and admissions on file,’
`designate specific facts showing that there is a genuine issue
`for trial.” Jeffery v. Sarasota White Sox, Inc., 64 F.3d 590,
`593-94 (11th Cir. 1995) (quoting Celotex Corp., 477 U.S. at
`324).
`If there is a conflict between the parties’ allegations
`or evidence, the non-moving party’s evidence is presumed to
`be true, and all reasonable inferences must be drawn in the
`non-moving party’s favor. Shotz v. City of Plantation, 344
`F.3d 1161, 1164 (11th Cir. 2003). If a reasonable fact finder
`evaluating the evidence could draw more than one inference
`from the facts, and if that inference introduces a genuine
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`issue of material fact, the court should not grant summary
`judgment. Samples ex rel. Samples v. City of Atlanta, 846
`F.2d 1328, 1330 (11th Cir. 1988). But, if the non-movant’s
`response consists of nothing “more than a repetition of his
`conclusional allegations,” summary judgment is not only
`proper, but required. Morris v. Ross, 663 F.2d 1032, 1034
`(11th Cir. 1981).
`III. Analysis
`As an initial matter, the Court addresses the adequacy
`of Mr. Fox’s declaration, submitted in opposition to summary
`judgment. Nike argues that the declaration is conclusory and
`a sham that should be stricken, or, alternatively, rejected
`because Mr. Fox invoked the Fifth Amendment multiple times
`during his deposition. (Doc. # 57 at 2-4).
`First, citing to Leigh v. Warner Bros., 212 F.3d 1210,
`1217 (11th Cir. 2000), Nike submits that Mr. Fox’s “naked
`denials against Nike’s overwhelming evidence fail to create
`a genuine issue of material fact.” (Doc. # 57 at 2). The Court
`is not persuaded. In Leigh, the court deemed the affidavit to
`be a brief, conclusory assertion of prior trademark usage,
`devoid of any facts supporting such prior use and insufficient
`to create a genuine issue for trial. See 212 F.3d at 1217. In
`contrast, as seen throughout this Order, Mr. Fox’s seven-page
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`declaration alleges facts sufficient to create genuine issues
`as to multiple claims.
`According to Nike, Mr. Fox’s declaration “is also a sham
`that does not create a genuine issue of material fact, as it
`‘merely contradicts, without explanation, previously given
`clear testimony’” (Doc. # 57 at 3) (citing Van T. Junkins &
`Assocs., Inc. v. U.S. Indus., Inc., 736 F.2d 656, 657 (11th
`Cir. 1984)). Before disregarding an affidavit, however, the
`Court must first find an “inherent inconsistency” between the
`affidavit and the deposition. Allen v. Bd. of Pub. Educ., 495
`F.3d 1306, 1316 (11th Cir. 2007) (citation omitted). To
`demonstrate such inconsistency, Nike compares Mr. Fox’s
`declaration statements denying that he promotes counterfeit
`sellers and goods with his deposition testimony that admits
`to entering into promotional agreements with the shipping
`agents. (Doc. # 57 at 3). The Court has reviewed both
`documents and, while the two are not in complete harmony, the
`identified deposition testimony and declaration are not
`“inherently irreconcilable.” Tippens v. Celotex Corp., 805
`F.2d 949, 954 n.6 (11th Cir. 1986).
`In the allegedly inconsistent deposition testimony, Mr.
`Fox did not do more than admit that he promoted PandaBuy as
`part of his agreement with PandaBuy. (Def. Dep. Doc. # 46-2
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`at 97:11-22, 98:25-99:7). And, as discussed later, whether
`PandaBuy is a direct infringer or counterfeiter is an issue
`to be resolved at trial. Nevertheless, the Court is capable
`of separating the wheat from the chaff and will not credit
`any improper statements in Mr. Fox’s declaration.
`Nike next argues that Mr. Fox’s declaration should be
`rejected due to his “liberal invocation” of the Fifth
`Amendment during his deposition. (Doc. # 57 at 3-4); see
`Glock, Inc. v. Glob. Guns & Hunting, Inc., 2015 WL 13614255,
`at *3 (N.D. Ga. Mar. 30, 2015) (“[I]t is well-settled that
`‘[t]he Fifth Amendment cannot be invoked to oppose discovery
`and then tossed aside to support a party’s assertions.’”
`(citation omitted)). The Eleventh Circuit has also cautioned
`that a defendant may not convert his Fifth Amendment privilege
`from a shield during deposition into a sword at the summary
`judgment stage. See Fed. Trade Comm’n v. Williams, Scott &
`Assocs., LLC, 679 F. App’x 836, 838 (11th Cir. 2017) (“By
`invoking his Fifth Amendment right not to testify at his
`deposition, Lenyszyn decided that ‘the advantages of silence
`— avoiding incrimination in a criminal investigation’
`outweighed ‘the potential advantages’ of attempting to refute
`the FTC’s evidence against him. . . . Having made that choice,
`Lenyszyn could not then ‘convert the privilege from [a] shield
`
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`. . . into a sword’ by putting his version of the facts into
`written affidavits and avoiding cross-examination.”).
`Mr. Fox cannot now, after the discovery period has ended,
`attempt to strategically withdraw his assertion of the Fifth
`Amendment privilege to avoid summary judgment. See S.E.C. v.
`BIH Corp., No. 2:10-cv-577-JES-DNF, 2013 WL 6571472, at *2
`(M.D. Fla. Dec. 13, 2013) (“Conversely, withdrawal [of the
`Fifth Amendment privilege] is not permitted if the litigant
`is trying to ‘abuse, manipulate or gain an unfair strategic
`advantage over opposing parties.’” (quoting Davis–Lynch, Inc.
`v. Moreno, 667 F.3d 539, 547 (5th Cir. 2012)); Evans v. Capps,
`No. 7:15-cv-252-BO, 2018 WL 5291864, at *5 (E.D.N.C. Aug. 3,
`2018) (“[C]ourts have found that a party may not
`simultaneously reap the benefits of asserting the Fifth
`Amendment, while also presenting unchallenged testimony to
`the court to defeat summary judgment.”), report and
`recommendation adopted, No. 7:15-cv-252-BO, 2018 WL 4635025
`(E.D.N.C. Sept. 27, 2018), aff’d, 765 F. App’x 44 (4th Cir.
`2019). Accordingly, the Court will strike statements from Mr.
`Fox’s declaration that concern topics on which he previously
`refused to testify. See (Def. Decl. Doc. # 56-1 at ¶¶ 7, 9-
`11, 28, 29).
`
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`Here, Mr. Fox refused to answer deposition questions
`asking if he sold counterfeit Nike products, including in
`connection with the CashApp transactions. See, e.g., (Def.
`Dep. Doc. # 46-2 at 201:1-7, 209:18-20, 244:1-5, 263:9-12,
`264:2-4). Yet, in his declaration, Mr. Fox now categorically
`denies selling any counterfeit goods, Nike or otherwise, and
`claims not to remember the CashApp transactions. (Def. Decl.
`Doc. # 56-1 at ¶¶ 7, 9, 29). Similarly, Mr. Fox categorically
`denies promoting sellers of goods, counterfeit or otherwise,
`in his declaration (Id. at ¶¶ 7, 28), despite invoking the
`Fifth Amendment when asked if he promoted the social media
`sellers’ products during his deposition. (Def. Dep. Doc. #
`46-2 at 128:2-5). Finally, Mr. Fox’s declaration now alleges
`that someone else made the Discord posts selling counterfeit
`goods on the ClosetClearout server. (Def. Decl. Doc. # 56-1
`at ¶¶ 9-11). However, during his deposition, Mr. Fox invoked
`the Fifth Amendment when asked about that server, and whether
`he made posts selling counterfeit Nike goods on it. (Def.
`Dep. Doc. # 46-2 at 195:21-25, 197:24-201:7).
`Thus, the identified statements in Mr. Fox’s declaration
`that attempt to withdraw the Fifth Amendment privilege are
`stricken and will not be considered by the Court.
`
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`Alternatively, the Court strikes the declaration
`statements regarding the ClosetClearout Discord posts under
`the sham affidavit doctrine. To the limited extent that Mr.
`Fox answered deposition questions regarding those posts, he
`admitted that his account made at least one of the posts.
`(Def. Dep. Doc. # 46-2 at 272:2-273:19). That admission is
`“inherently irreconcilable,” Tippens, 805 F.2d at 954 n.6,
`with his later statements implying that the posts were made
`by an account impersonating his. (Def. Decl. Doc. # 56-1 at
`¶¶ 9-11).
`Although the improper statements are stricken, the Court
`will still consider the remainder of Mr. Fox’s declaration.
`See Aim Recycling of Fla., LLC v. Metals USA, Inc., No. 18-
`cv-60292, 2020 WL 209860, at *13 (S.D. Fla. Jan. 13, 2020
`(“The rule is settled that on a motion for summary judgment
`a court will disregard only the inadmissible portions of a
`challenged affidavit offered in . . . opposition to the motion
`and will consider the admissible portions in determining
`whether to grant or deny the motion.” (citation omitted)).
`Now, Nike seeks summary judgment on seven of the eight
`counts asserted in its complaint. Moving to the merits, the
`Court addresses each in turn.
`
`
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`A. Trademark Infringement (Count I)
`Nike moves for summary judgment on its federal trademark
`infringement claim in Count I based upon Mr. Fox’s allegedly
`undisputed sale and advertising of counterfeit Nike goods,
`specifically in connection with the following acts: (1)
`posting counterfeit Nike shoes for sale on Discord; (2)
`selling counterfeit Nike shoes using CashApp; (3) entering
`into promotional agreements with PandaBuy and other shipping
`agents; (4) listing on W2C.net and cedaz.net counterfeit Nike
`goods available for purchase through PandaBuy; (5) creating
`videos advertising and promoting counterfeit Nike goods; (6)
`creating spreadsheets of counterfeit Nike goods available for
`purchase through PandaBuy; (7) promoting counterfeit Nike
`sellers on Discord and cedaz.net; and (8) operating BST
`channels on Discord. (Doc. # 46 at 16-17). The Court evaluates
`each alleged act individually.
`“Trademark infringement under the Lanham Act occurs when
`a defendant, without consent, uses ‘in commerce any
`reproduction, counterfeit, copy, or colorable imitation of a
`registered mark’ that ‘is likely to cause confusion’ that a
`relationship exists between the parties.” FCOA LLC v.
`Foremost Title, 57 F.4th 939, 946 (11th Cir. 2023) (citing 15
`U.S.C. § 1114(1)). To prevail on a trademark infringement
`
`
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`claim, a plaintiff must establish: “(1) that they possess a
`valid mark, (2) that the defendant[] used the mark, (3) that
`the defendant[’s] use of the mark occurred ‘in commerce,’ (4)
`that the defendant[] used the mark ‘in connection with the
`sale . . . or advertising of any goods,’ and (5) that the
`defendant[] used the mark in a manner likely to confuse
`consumers.” N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522
`F.3d 1211, 1218 (11th Cir. 2008).
`In opposition, Mr. Fox argues that Nike failed to
`establish a likelihood of confusion. (Doc. # 56 at 10-12).
`Mr. Fox also disputes Nike’s evidence that he directly sold
`counterfeit products to third parties. (Id. at 14).
`1. The Cashapp Transactions and Discord Posts
`Nike’s Motion relies on three Discord posts in which Mr.
`Fox offers counterfeit Nike shoes for sale, as well as CashApp
`transactions that Nike attributes to Mr. Fox’s sale of at
`least eight pairs of counterfeit Nike shoes. (Pallett Decl.
`Doc. # 46-73 at ¶¶ 13-15).
`In connection with the CashApp transactions, Nike
`“requests an adverse inference as [Mr.] Fox refused to answer
`on Fifth Amendment grounds.” (Doc. # 46 at 8 n.6). “[I]n a
`civil suit such as this one, the [C]ourt may draw adverse
`inferences against a party that invokes the Fifth Amendment,”
`
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`so long as the adverse inferences do not result in the
`“automatic entry” of summary judgment or substitute “the need
`for evidence on an ultimate issue of fact.” Eagle Hosp.
`Physicians, LLC v. SRG Consulting, Inc., 561 F.3d 1298, 1304
`(11th Cir. 2009). A review of Mr. Fox’s deposition reveals
`that, for the most part, he responded by invoking the Fifth
`Amendment when asked about the transaction descriptions.
`(Def. Dep. Doc. # 46-2 at 257:10-264:4). Mr. Fox also invoked
`the Fifth Amendment each time he was asked if he sold
`counterfeit Nike shoes in connection with one of those
`transactions. (Id. at 257:25-258:6; 263:9-12; 264:2-4).
`In support of summary judgment, Nike provides record
`evidence beyond the adverse inference it seeks. Mr. Fox’s
`CashApp transaction records, combined with Mr. Pallett’s
`analysis and conclusion that the transactions involved the
`sale of counterfeits of the Nike goods identified in the
`descriptions, support a finding that Mr. Fox sold counterfeit
`Nike goods. The record further shows that Mr. Fox regularly
`engaged with counterfeit Nike goods — whether identical or
`nearly identical to authentic Nike products — including by
`offering such goods for sale on Discord. Based on Nike’s
`corroborative evidence, the drawing of an adverse inference
`is proper. See Am. Airlines, Inc. v. Spada, No. 23-21844-CIV,
`
`
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`2024 WL 4472016, at *6 (S.D. Fla. Sept. 21, 2024) (“Here, the
`Court may infer that the answers Spada refused to provide on
`Fifth Amendment grounds would have been unfavorable to him
`because, as noted above, American has provided substantive
`probative evidence to corroborate the facts set forth in its
`SOF.”). Even absent an adverse inference, the record here is
`undisputed. Mr. Fox’s only contrary evidence was his
`declaration, the relevant statements of which were stricken
`due to his invocation of the Fifth Amendment during his
`deposition.
`The Discord posts alone, even without an actual sal
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