Daniel Henderson v. Matthew Lindland et al, No. 2:2011cv01350 - Document 104 (C.D. Cal. 2013)
Court Description: ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFFS THIRD MOTION FOR SUMMARY JUDGMENT AND DEFENDANTS MOTION FOR SUMMARY JUDGMENT 83 AND 85 by Judge Dean D. Pregerson. (lc.) Modified on 3/21/2013. (lc).
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Daniel Henderson v. Matthew Lindland et al Doc. 104 1 2 O 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 DANIEL HENDERSON, an individual, 12 Plaintiff, 13 v. 14 15 16 MATTHEW LINDLAND, an individual; TEAM QUEST FIGHT CLUB,LLC, an Oregon limited liability company, 17 Defendants. 18 ___________________________ 19 ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. CV 11-01350 DDP (DTBx) ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S THIRD MOTION FOR SUMMARY JUDGMENT AND DEFENDANT’S MOTION FOR SUMMARY JUDGMENT [DOCKET NOS. 83 AND 85] I. Background 20 Plaintiff Daniel Henderson has sued Defendants Matthew 21 Lindland and Team Quest Fight Club, LLC (“TQFC”), for five claims: 22 (1) common law trademark infringement under Lanham Act § 43(a); (2) 23 copyright infringement under 17 U.S.C. §§ 101, et seq.; (3) federal 24 unfair competition under Lanham Act § 43(a); (4) common law unfair 25 competition; and (5) California Unfair Competition under California 26 Business & Professions Code § 17200. 27 No. 1.) 28 infringement under Lanham Act § 32(1); (2) federal trademark (See generally Compl., Docket Defendants have counterclaimed for (1) federal trademark Dockets.Justia.com 1 infringement, false designation of origin, passing off, and unfair 2 competition under Lanham Act § 43(a)(1)(A); (3) federal trademark 3 counterfeiting under Lanham Act §§ 32(1)(a) and 34(d); (4) 4 statutory unfair competition under California Business & 5 Professions Code § 17200; (5) deceptive advertising under 6 California Business & Professions Code § 17500; (6) common law 7 trademark infringement, unfair competition, and misappropriation; 8 (7) common law breach of contract; (8) common law covenant of good 9 faith and fair dealing; (9) intentional interference with 10 prospective economic advantage; and (10) copyright infringement.1 11 (See generally Amended Answer and Counterclaims, Docket No. 43.) 12 Presently before the Court is (1) Plaintiff’s Third Motion for 13 Summary Judgment, or in the alternative, for an order treating 14 specified facts as established, and (2) Defendants’ Motion for 15 Summary Judgment on Various Counts and Defenses. 16 case are familiar to the parties, and the Court has outlined them 17 before. 18 professional Mixed Martial Arts (MMA) fighter, who has started MMA 19 gyms. 20 senior and continuous user of the Team Quest mark, that he owns the 21 mark, and that he has priority in the mark. 22 Lindland is a retired MMA fighter. 23 MMA gyms, Lindland founded one, TQFC, which is also a Defendant. 24 Henderson and Lindland were once friends. 25 soured in 2011, shortly before Henderson brought this suit. (Docket Nos. 67, 80.) The facts of the Plaintiff, Daniel Henderson is a The Court previously summarily adjudicated that he is the (Docket Nos. 80, 100.) Before Henderson started any Their relationship 26 27 28 1 Defendants’ copyright infringement claim was previously summarily adjudicated in Plaintiff’s favor. (Docket No. 80.) 2 Both 1 have used Team Quest marks in their MMA-related services for over a 2 decade. 3 These marks are at the heart of this case. The Court GRANTS summary judgment in favor of Plaintiff on the 4 following of his claims: trademark infringement under Lanham Act § 5 43(a), common law unfair competition, unfair competition under 6 California Business & Professions Code § 17200, and trademark 7 cancellation. 8 favor on the laches issue. 9 Defendants’ first through fourth counterclaims, and notes that The Court GRANTS summary judgment in Defendants’ The Court DENIES Summary Judgment on 10 these claims have been abandoned. 11 counterclaims have, likewise, been abandoned. 12 II. Legal Standard on Summary Judgment 13 All other claims and Summary judgment shall be granted when a movant “shows that 14 there is no genuine dispute as to any material fact and the movant 15 is entitled to judgment as a matter of law.” 16 56(a). 17 a party who fails to make a showing sufficient to establish the 18 existence of an element essential to that party’s case, and on 19 which that party will bear the burden of proof at trial.” 20 Pomona Valley Hosp. Med. Ctr., 630 F.3d 794, 798-99 (9th Cir. 21 2010)(internal quotation marks omitted). 22 FED. R. CIV. P. In other words, summary judgment should be entered “against Parth v. To satisfy its burden at summary judgment, a moving party must 23 produce facts on each element for which it has the burden of proof 24 at trial “sufficient for the court to hold that no reasonable trier 25 of fact could find other than for the moving party.” 26 United States, 799 F.2d 254, 259 (6th Cir. 1986) (emphasis 27 omitted). 28 either produce evidence negating an essential element of the Calderone v. A moving party without the burden of persuasion “must 3 1 nonmoving party’s claim or defense or show that the nonmoving party 2 does not have enough evidence of an essential element to carry its 3 ultimate burden of persuasion at trial.” 4 Co., v. Fritz Cos., Inc., 210 F.3d 1099, 1102 (9th Cir. 2000); see 5 also Devereaux v. Abbey, 263 F.3d 1070, 1076 (9th Cir. 2001) (en 6 banc) (“When the nonmoving party has the burden of proof at trial, 7 the moving party need only point out ‘that there is an absence of 8 evidence to support the nonmoving party’s case.’”) (quoting Celotex 9 Corp. v. Catrett, 477 U.S. 317, 325 (1986), and citing Fairbank v. 10 Wunderman Cato Johnson, 212 F.3d 528, 532 (9th Cir. 2000) (holding 11 that the Celotex “showing” can be made by “pointing out through 12 argument– 13 Nissan Fire & Marine Ins. the absence of evidence to support plaintiff’s claim”)). It is not enough for a party opposing summary judgment to 14 “rest on mere allegations or denials of his pleadings.” 15 v. Liberty Lobby, Inc., 477 U.S. 242, 259 (1986). 16 nonmoving party must go beyond the pleadings to designate specific 17 facts showing that there is a genuine issue for trial. 18 477 U.S. at 325. 19 Anderson Instead, the Celotex, At the summary judgment stage, the Court does not make 20 credibility determinations or weigh conflicting evidence, and views 21 all evidence and draws all inferences in the light most favorable 22 to the non-moving party. 23 Elec. Indus. Co., v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)); 24 see also Hrdlicka v. Reniff, 631 F.3d 1044 (9th Cir. 2011); Miranda 25 v. City of Cornelius, 429 F.3d 858, 860 n.1 (9th Cir. 2005). 26 Speculative testimony in affidavits and motion papers is 27 insufficient to raise genuine issues of fact and defeat summary 28 judgment. See id. at 630-31 (citing Matsushita Thornhill Publ’g Co., v. GTE Corp., 594 F.2d 730, 738 4 1 (9th Cir. 1979). 2 existence of a scintilla of evidence . . . will be insufficient; 3 there must be evidence on which the jury could reasonably find for 4 the [non-moving party].” 5 242, 252 (1986). 6 As the Supreme Court has stated, “[t]he mere Anderson v. Liberty Lobby, Inc., 477 U.S. It is not the Court’s task “to scour the record in search of a 7 genuine issue of triable fact.” 8 1279 (9th Cir. 1996). Counsel has an obligation to lay out their 9 support clearly. Carmen v. San Francisco Unified Sch. Dist., 237 Keenan v. Allan, 91 F.3d 1275, 10 F.3d 1026, 1031 (9th Cir. 2001). 11 entire file for evidence establishing a genuine issue of fact, 12 where the evidence is not set forth in the opposing papers with 13 adequate references so that it could conveniently be found." 14 III. Analysis The Court “need not examine the Id. 15 A. Plaintiff’s Trademark Infringement Claims are Entitled to 16 Summary Judgment 17 Plaintiff has filed for summary judgment on his trademark 18 infringement claims. 19 common law infringement claim is under section 43(a) of the Lanham 20 Act, and his Motion indicates that his unfair competition claim 21 under that section is really an infringement claim: “Thus in suing 22 under § 43(a) for infringement . . .” 23 85 at 16:9). 24 common law unfair competition and statutory unfair competition. 25 Courts “jointly analyze[]” trademark infringement and statutory and 26 common law unfair competition claims. 27 Holdings, Inc., 845 F. Supp. 2d 1072, 1079 (C.D. Cal. 2012). 28 do so because the Ninth Circuit “has consistently held that state Plaintiff’s Complaint makes clear that its (Compl. at 9:1-3; Docket No. Plaintiff also moves for summary judgment under 5 Wecosign, Inc. v. IFG They 1 common law claims of unfair competition and actions pursuant to 2 California Business and Professions Code § 17200 are ‘substantially 3 congruent’ to claims made under the Lanham Act.” 4 Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994) (citation omitted). 5 “Section 43(a)(1) [of the Lanham Act] provides similar Cleary v. News 6 protection to trademarks regardless of registration.” 7 Harley Davidson Motor Co., 539 F. Supp. 2d 1249, 1254 (S.D. Cal. 8 2008) (citing Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 9 174 F.3d 1036, 1046 n.6 (9th Cir. 1999)). Bell v. “To establish a 10 trademark infringement claim . . ., [Plaintiff] must establish that 11 [Defendant] is using a mark confusingly similar to a valid, 12 protectable trademark of [Plaintiff's].” 13 F.3d at 1046. “To show that he has a protectable trademark 14 interest, Plaintiff must have been the first to use the mark in the 15 sale of goods or services.” 16 LLLP, No. C 06-6392 JSW, 2007 WL 1750216, at *2 (N.D. Cal. June 15, 17 2007) aff'd sub nom. Guichard v. Universal City Studios LLLP, 261 18 F. App'x 15 (9th Cir. 2007). 19 Plaintiff is the senior and continuous user of the Team Quest mark. 20 (Docket No. 80.)2 21 likelihood of confusion analysis. 22 /// Brookfield Commc’ns, 174 Guichard v. Universal City Studios, This Court has already decided Accordingly, the Court now moves to the 23 24 25 26 27 28 2 Defendants’ only argument in response to Plaintiff’s infringement-related claims is: “Defendants request that the Court grant summary judgment that Defendants have priority with respect to the Team Quest marks.” (Docket No. 831 at 13:10-11.) The Court has already decided the priority issue in Plaintiff’s favor. (Docket Nos. 80, 100.) Whatever the merits of Defendants’ new arguments and evidence (especially Randy Couture’s autobiography) in support of their priority, they should have presented them in the prior summary judgment motion. (See Docket No. 100 (denying reconsideration of the Court’s finding on summary judgment that Plaintiff has priority).) 6 1 2 1. Likelihood of Confusion The factors for determining likelihood of confusion are: 3 1. strength of the mark; 4 2. proximity of the goods; 5 3. similarity of the marks; 6 4. evidence of actual confusion; 7 5. marketing channels used; 8 6. type of goods and the degree of care likely to be 9 exercised by the purchaser; 10 7. defendant's intent in selecting the mark; and 11 8. likelihood of expansion of the product lines. 12 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). 13 It is unnecessary to meet every factor, because the likelihood of 14 confusion test is “fluid”. 15 Prods., 406 F.3d 625, 631 (9th Cir. 2005). 16 Surfvivor Media, Inc. v. Survivor Defendants do not respond to Plaintiff’s argument that there 17 is a likelihood of confusion. The Court finds that there is a high 18 likelihood of confusion. 19 marks. 20 clenched fist. (Compare Second Henderson Decl. Exs. F-I, with 21 Wright Ex. D.) Although Defendants were the first to use the Team 22 Quest mark for MMA-gym related services, Plaintiff used the marks 23 for MMA-entertainment services before Defendants began using them 24 in commerce. 25 No. 100 (explaining that April 2001 was when Defendants began using 26 the mark in commerce, and that Plaintiff used it before).) 27 Moreover, TQFC was especially connected to the world of 28 professional MMA fighting. Both parties use the names Team Quest as Both often pair the words “Team Quest” with an image of a (Second Henderson Decl. ¶¶ 9-12 and Exs. F-I; Docket Not only were a number of its founders 7 1 professional fighters, but TQFC “attracted mixed martial arts 2 fighters from around the country who came to prepare for fights and 3 to assist with training camps at the professional and student 4 levels.” 5 (Follis Decl. ¶ 6.) Finally, “Team Quest” is an arbitrary mark because it has an 6 arbitrary link to MMA services. 7 v. Goss, 6 F.3d 1385, 1390 (9th Cir. 1993) (“An arbitrary mark 8 consists of common words arranged in an arbitrary way that is 9 non-descriptive of any quality of the goods or services.”); Cf. See Official Airline Guides, Inc. 10 Stork Rest. Inc. v. Sahati, 166 F.2d 348, 355 (9th Cir. 1948) 11 (finding that “The Stork Club” was an arbitrary mark for a 12 nightclub.). 13 Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992) 14 (holding that an “arbitrary” mark is “awarded maximum protection”). 15 Accordingly, this factor favors finding a likelihood of confusion. 16 Arbitrary marks are considered strong. E. & J. Gallo For the reasons stated above, and because Defendants do not 17 address the likelihood of confusion issue, the Court finds that 18 there is a substantial likelihood of confusion. 19 B. Defendants Are Entitled to Laches, But Only for Damages 20 Defendants argue that even if they have committed trademark 21 infringement, they are entitled to laches. “‘Laches is an equitable 22 time limitation on a party's right to bring suit,’ resting on the 23 maxim that ‘one who seeks the help of a court of equity must not 24 sleep on his rights.’” Jarrow Formulas, Inc. v. Nutrition Now, 25 Inc., 304 F.3d 829, 835 (9th Cir. 2002) (citations omitted). 26 Defendants, who assert laches, must prove that 27 delay in filing suit was unreasonable, and (2) [Defendants] would 28 suffer prejudice caused by the delay if the suit were to continue.” 8 “(1) [Plaintiff’s] 1 Id. at 838. The Ninth Circuit has also “set out six factors for 2 determining whether laches bars a claim for either damages or 3 injunctive relief in an action for trademark infringement.” 4 Gigante SA De CV v. Dallo & Co., 391 F.3d 1088, 1102 (9th Cir. 5 2004). Grupo These factors include: 6 1. strength and value of trademark rights asserted; 7 2. plaintiff’s diligence in enforcing mark; 8 3. harm to senior user if relief denied; 9 4. good faith ignorance by junior user; 10 5. competition between senior and junior users; and 11 6. extent of harm suffered by junior user because of senior 12 user’s delay. 13 Id. at 1102. 14 “The limitations period for laches starts ‘from the time the 15 plaintiff knew or should have known about its potential cause of 16 action.’” 17 Creamery Ass'n, 465 F.3d 1102, 1108 (9th Cir. 2006) (citation 18 omitted). 19 Act, and infringement-like claims under state unfair competition 20 laws. 21 limitations, courts look to the “most closely analogous action 22 under state law” for guidance in determining the applicability of 23 laches. 24 RMW, 2012 WL 3277136, at *13 (N.D. Cal. Aug. 9, 2012) (quoting 25 Jarrow Formulas, 304 F.3d at 836) (internal quotation marks 26 omitted). 27 period for the analogous state action, it is presumed that laches 28 does not apply; the presumption is reversed if the plaintiff files Tillamook Country Smoker, Inc. v. Tillamook Cnty. Plaintiff claims trademark infringement under the Lanham Although the Lanham Act does not have a statute of RSI Corp. v. Int'l Bus. Machs. Corp., No. 5:08-cv-3414 “If the plaintiff files suit within the limitations 9 1 suit after the analogous limitations period has expired.” 2 least one district court in this Circuit has found that the 3 relevant limitations period for federal trademark infringement and 4 unfair competition claims is four years. 5 Id. At See id. 1. Undue Delay 6 Courts look to the party against whom laches is asserted to 7 explain the delay. 8 (9th Cir. 2001) (“McClory has presented no sufficient justification 9 for his delay.”). See Danjaq LLC v. Sony Corp., 263 F.3d 942, 954 There are a number justifications for delay. 10 See id. at 954-55 (giving examples). 11 was no undue delay, because he and Lindland had an amicable 12 relationship until 2011 and he and his co-senior user Randy Couture 13 gave Defendants an implied license to use the Team Quest mark. 14 Plaintiff cites no cases where friendship alone was found to be a 15 sufficient reason for delaying a trademark action. 16 Plaintiff argues that there Plaintiff’s second justification has more solid legal 17 grounding. 18 has an implied license to use a trademark. 19 McCarthy on Trademarks and Unfair Competition (“McCarthy”), § 20 18:43.50 (4th ed. 2012); see 21 California v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1129 (9th Cir. 22 2006) (describing an implied license as a defense to trademark 23 infringement). 24 they were not infringing, and Plaintiff, thus, did not delay in 25 bringing this lawsuit. 26 “evidence of an agreement or course of conduct by the parties to 27 contract for a trademark license.” 28 1130. There can be no trademark infringement if a defendant J. Thomas McCarthy, Dep’t of Parks & Recreation for If Plaintiff gave Defendants an implied license, To show an implied license there must be Bazaar Del Mundo, 448 F.3d at In order for a court to find the existence of an implied 10 1 license, it is imperative for a licensor to have “maintain[ed] 2 control over the quality of the finished product or service to 3 guarantee to the public that the goods or services are of the same, 4 pre-license quality.” 5 Corp., 768 F.2d 1001, 1017 (9th Cir. 1985); see also Stanfield v. 6 Osborne Indus., Inc., 839 F. Supp. 1499, 1504 (D. Kan. 7 1993)(claiming that the Ninth Circuit, like most, requires a 8 licensor to “in fact exercise[] control over the licensee's 9 operations so as to ensure adequate quality”), aff’d, 52 F.3d 867 10 Transgo, Inc. v. Ajac Transmission Parts (10th Cir. 1995). 11 Plaintiff presents no evidence that he exercised quality 12 control over Defendants. 13 did not have an ownership interest in [TQFC]”. 14 Statement of Uncontroverted Facts (“SUF”) at 4: 19-21, Docket No. 15 88.)3 16 owner of TQFC, Plaintiff presents no evidence that Couture 17 exercised quality control over TQFC. 18 “surrender[ed] all interest” in TQFC in March 2006, nearly five 19 years before Plaintiff brought this action. 20 at 2 of 4, Docket No. 19) (filed under seal). 21 Defendants have presented unrebutted evidence that they were not 22 operating under Plaintiff’s control or using the Team Quest marks 23 pursuant to Plaintiff’s permission. 24 “request[ed] that Lindland sign a license agreement on behalf of In fact, “as of December 2004, Henderson (Defendants’ Although Randy Couture, a co-senior user, used to be a part Regardless, Couture (Follis Decl., Ex. F Additionally, For example, in 2010 Plaintiff 25 26 27 28 3 The Court only references portions of Defendants’ SUF that Plaintiff did not controvert in his Statement of Genuine Disputes. Pursuant to the Local Rules, Plaintiff concedes all such uncontroverted facts. C.D. Cal. L.R. 56-3. 11 1 TQFC, allowing a video game manufacturer . . . to use the [Team 2 Quest] marks.” 3 4 (Defendants’ SUF at 5:25-28.) 2. Prejudice There are “various sorts” of prejudice that are sufficient for 5 asserting laches. 6 “expectations-based” prejudice. 7 may occur when an infringer has “invested money to expand its 8 business or entered into business transactions based on his 9 presumed rights.” Danjaq, 263 F.3d at 955. Id. One of them is Expectations-based prejudice Miller v. Glenn Miller Prods, 318 F. Supp. 2d 10 923, 944 (C.D. Cal. 2004) aff'd, 454 F.3d 975 (9th Cir. 2006). 11 “[C]ontinuing investments and outlays by the alleged infringer in 12 connection with the operation of its business” is sufficient for 13 showing prejudice. Danjaq, 263 F.3d at 955 (9th Cir. 2001) 14 (citation omitted). Over the course of more than a decade, 15 Lindland and his family have built a business, TQFC, that bears the 16 Team Quest name. 17 He has bought out co-owners to make the business his own. 18 e.g., Follis Decl. Ex. F.) 19 classic expectations-based prejudice. 20 3. Other Factors 21 (Angela Lindland Decl. ¶¶ 1-2, Docket No. 83-3.) (See, Plaintiff, therefore, risks suffering Courts are also instructed to analyze the following factors in 22 deciding laches within the context of trademark infringement: 1. 23 strength and value of trademark rights asserted; 24 diligence in enforcing mark; 3. harm to senior user if relief 25 denied; 4. good faith ignorance by junior user; 5. competition 26 between senior and junior users; and 6. extent of harm suffered by 27 junior user because of senior user’s delay. Grupo Gigante, 391 F.3d 28 at 1102. Because the sixth factor is so related to the Court’s 12 2. plaintiff’s 1 discussion of prejudice, it is found to weigh in favor of laches. 2 Similarly, the Court’s earlier analysis of the relatedness of the 3 parties’ MMA services bears strongly on the fifth factor, and it, 4 thus, weighs against laches. 5 The first, third, and fifth factors weigh against laches. 6 Defendants do not address these factors. 7 the mark is the first factor. 8 the reasons discussed in the likelihood of confusion analysis, Team 9 Quest is an arbitrary mark, and arbitrary marks are considered The strength and value of Grupo Gigante, 391 F.3d at 1102. For 10 strong. 11 “arbitrary” mark is “awarded maximum protection”) (internal 12 quotation marks omitted). 13 E. & J. Gallo Winery, 967 F.2d at 1291 (finding that an This factor thus weighs against laches. As to the third factor, “[t]he question of whether a senior 14 user will be harmed if relief is denied turns largely on the 15 court's analysis of the likelihood of confusion.” 16 3277136, at *18 (citing Grupo Gigante, 391 F.3d at 1103.) 17 discussed above, the likelihood of confusion is high. 18 Defendants do not argue otherwise. RSI, 2012 WL As Indeed, 19 The second, fourth, and sixth factors favor laches. 20 second factor is Plaintiff’s diligence in enforcing the mark. 21 Grupo Gigante, 391 F.3d at 1102. Plaintiff does not claim to have 22 enforced his rights in the Team Quest mark against anyone other 23 than Defendants. 24 Plaintiff’s undue delay, this factor weighs in favor of laches. The For the reasons discussed in the analysis of 25 The fourth factor is Defendants’ good faith ignorance. 26 Plaintiff only argues, but cites no evidence that Defendants were 27 not acting in good faith. 28 presents no evidence that he informed Defendants of his priority (Docket No. 94 at 10:1-23.) 13 Id. Plaintiff 1 rights in the Team Quest mark before 2011, when he brought this 2 suit. 3 to use the marks in a video game.4 In fact, as noted above, he asked Plaintiff for permission 4 5 4. Remedy Laches may be applied even if all the factors do no weigh in 6 Defendant’s favor. 7 laches defense even though one factor weighed “heavily” in the 8 plaintiff's favor and another was a “close one”). 9 especially likely to bar an injunction when the parties have Grupo Gigante, 391 F.3d at 1104-05 (granting a Laches is 10 previously had a friendly relationship, and when for a substantial 11 period of time, the plaintiff did nothing to indicate disapproval 12 of the defendant’s use of the mark. 13 (discussing “plus factors” that courts often emphasize in applying 14 laches to deny an injunction). 15 Lindland’s substantial investment in his business which has borne 16 the name “Team Quest” for over a decade, and because of the plus 17 factor just discussed, the Court finds that laches bars trademark 18 infringement-related claims against Defendants. McCarthy § 31:7, n.7 Because of Plaintiff’s long delay, 19 Plaintiff urges the Court to allow an injunction, arguing that 20 laches will not prevent the issuance of an injunction when customer 21 22 23 24 25 26 27 4 For similar reasons, Plaintiff cannot successfully argue that Defendants have unclean hands. Plaintiff’s argument here is unclear. “A party with unclean hands may not assert laches.” Jarrow Formulas, 304 F.3d at 841. A party acting in fraud or deceit has unclean hands. Id. Plaintiff argues that Defendants falsely asserted that they had legal rights to the Team Quest marks in their trademark registration application. Plaintiff’s argument seems to relate more to whether the registration was proper, not whether Defendants’ longstanding use of the Team Quest mark, which predates Defendants’ registration application by several years, is entitled to protection under laches. Regardless, for the reasons discussed above, no evidence suggests Lindland knew he did not own the Team Quest marks. 28 14 1 confusion between the marks is inevitable. 2 22:21-24:9.) 3 circumstances” in which “inevitable confusion . . . will defeat a 4 successful laches defense.” 5 Ninth Circuit has held, “the public's interest will trump laches 6 only when the suit concerns allegations that the product is harmful 7 or otherwise a threat to public safety and well being.” 8 (citation omitted). 9 allegations, he has not shown that his claim fits within the narrow (Docket No. 85 at However, it is only in a “narrow set of Tillamook, 465 F.3d at 1111. As the Id. Since Plaintiff does not make such 10 set of circumstances in which inevitable confusion is relevant. 11 Id.; (see Docket No. 85 at 22:21-24:9 (arguing that consumers are 12 generally harmed when they are confused, not that Plaintiffs 13 services and products are harmful or a danger to public safety). 14 C. Defendants’ Trademarks Will Be Cancelled 15 Plaintiff asks the Court to cancel Defendants’ registered 16 trademarks.5 17 appropriate if the marks are similar. Russell Chem. Co. v. 18 Wyandotte Chems. Corp., 337 F.2d 660, 661 (C.C.P.A. 1964); 19 Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000). 20 Marks registered fewer than five years before being challenged may 21 be cancelled if they are likely to cause confusion with the senior 22 user’s mark. 23 Defendants’ primary argument against cancellation is essentially 24 that Plaintiff is not the senior and continuous user of the Team 25 Quest marks.6 When priority is established, cancellation may be McCarthy § 20:53; 15 U.S.C. §§ 1052(d), 1064. As discussed, the Court has previously decided that 26 5 27 Registration Nos. 3090065, 3085376, 3736030, and 3736031. 6 28 Defendants’ other argument is that it should be able to keep its (continued...) 15 1 Plaintiff is, and has now decided that there is a likelihood of 2 confusion. 3 Additionally, Defendants’ infringement-based laches argument 4 is inapplicable to Plaintiff’s cancellation claim. 5 of registration cancellation, laches is only appropriate when a 6 senior user has unduly delayed objecting to the junior user’s 7 registration, not to the use. 8 or cancellation proceedings, [laches] must be tied to a party's 9 registration of a mark, not to a party's use of the mark. In the context “As applied in trademark opposition Lincoln 10 Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 734 11 (Fed. Cir. 1992) (emphasis in original); see also Tillamook Country 12 Smoker, Inc. v. Tillamook Cnty. Creamery Ass'n., 333 F. Supp. 2d 13 975, 981 (D. Or. 2004) aff'd, 465 F.3d 1102 (9th Cir. 2006). 14 Defendants’ most senior registered mark was registered on 15 April 25, 2006. 16 commenced this suit in February 2011, fewer than five years after 17 any of Defendants’ marks were registered. 18 Plaintiff initiated this suit within the five-year window, and has 19 priority, and because there is a likelihood of confusion, the 20 registrations are cancelled. 21 /// 22 /// (See generally Wright Decl. Ex. D.) Plaintiff (See Compl.) Because 23 24 25 26 27 28 6 (...continued) registration pursuant to 15 U.S.C. § 1055. However, this statute stands for the notion that “properly licensed use by licensees will serve to fortify the legal and commercial strength of the licensed mark.” Mccarthy § 18:45.50. It is unclear what relevance this statute has to Plaintiff’s cancellation claim. Defendants do not explain the relevance, nor do they cite any cases for their position. The local rule require moving papers to contain “[a] brief but complete memorandum in support thereof and the points and authorities upon which the moving party will rely.” C.D. Cal. L.R. 7-5. 16 1 D. Defendants and Plaintiff Have Abandoned Claims and 2 Counterclaims 3 The Court previously ordered the parties to move for summary 4 judgment on each claim, counterclaim, and affirmative defense that 5 remains in the case. 6 failure to so move would be construed as abandonment. 7 Plaintiff failed to move for summary judgment on his copyright 8 claim, so it is abandoned. 9 Similarly, Defendants’ moving papers make no mention of their (Docket No. 81.) The Court ordered that (Id.) (See generally, Docket No. 85.) 10 seventh and ninth counterclaims for common law breach of contract 11 and intentional interference with prospective economic advantage. 12 (See generally Docket No. 83-1.) 13 abandoned. Accordingly, they have been 14 E. Defendants’ Effectively Abandoned Claims 15 Defendants have essentially abandoned all of their remaining 16 counterclaims, because they provide only a cursory argument in 17 favor of summary judgment for these counterclaims. 18 1 at 14:16-16:5.) 19 rules, which require “[a] brief but complete memorandum in support 20 [of the motion] and the points and authorities upon which the 21 moving party will rely.” 22 Defendants to move for summary judgment on all their remaining 23 counterclaims. The approximately 1.6 pages they devote to their 24 counterclaims fall beneath what the Local Rules expect for several 25 reasons. 26 /// 27 /// 28 /// (Docket No. 83- This argument does not comply with the local C.D. Cal. L.R. 7-5. 17 The Court required 1 First, it is unclear what claims Defendants have moved for. 2 The relevant heading in Defendants’ brief asserts that summary 3 judgment is appropriate under the first through sixth and eighth 4 counterclaims. 5 sentence of that section indicates that Defendants only seek 6 summary judgment on the first through fourth counterclaims. 7 16:5. 8 which summary adjudication is sought. 9 counterclaims by the order in which they appear in their Amended 10 (Docket No. 83-1 at 14:13-15.) However, the final Id. at Defendants’ brief does not name the actual counterclaims on Defendants only refer to the Answer and Counterclaims. 11 It is in their reply brief that Defendants state they seek 12 summary judgment on their unfair trademark infringement, unfair 13 competition, counterfeiting, and breach of good faith and fair 14 dealing counterclaims. 15 through sixth, eighth, and only part of Defendants’ second 16 counterclaims. 17 Docket No. 43.) 18 claims on which summary judgment is sought creates due process 19 concerns, and the Court need not consider arguments raised for the 20 first time in a reply brief. 21 997 (9th Cir. 2007) (affirming district court’s decision to reject 22 points raised for the first time in reply). In light of the 23 ambiguities noted above, Defendants at best provided sufficient 24 notice that they moved for summary judgment on their first through 25 fourth counterclaims: (1) federal trademark infringement under 26 Lanham Act § 32(1); (2) federal trademark infringement, false 27 designation of origin, passing off, and unfair competition under 28 Lanham Act § 43(a)(1)(A); (3) federal trademark counterfeiting These relate to Defendants’ first, third (See generally Amended Answers and Counterclaims, Waiting until the Reply Brief to clarify the See Zamani v. Carnes, 491 F.3d 990, 18 1 under section Lanham Act §§ 32(1)(a) and 34(d); and (4) statutory 2 unfair competition under California Business & Professions Code § 3 17200. 4 (Docket No. 43.) Defendants cite Century 21 Real Estate Corp. v. Sandlin, 846 5 F.2d 1175 (9th Cir. 1988) for the proposition that: “Indeed, 6 continued use of the mark by the former licensee constitutes a 7 fraud on the public, as the public is led to believe the continued 8 use is authorized by the trademark owner.” 9 15:19-22; Docket No. 96 at 8:5-8.) (Docket No. 83-1 at Defendants fail to explain how 10 such a holding is sufficient legal authority–as the local rule 11 requires them to provide–for granting summary judgment on all four 12 of their counterclaims. 13 argument seems, again, to not recognize that the Court previously 14 found Plaintiff to be the senior and continuous user of the Team 15 Quest marks. 16 licensee. 17 ownership is priority of use.” 18 1047 (citation omitted). 19 IV. Conclusion 20 C.D. Cal. L.R. 7-5. Moreover, Defendants’ Plaintiff has priority, and thus is the owner, not a “It is axiomatic . . . that the standard test of Brookfield Commc’ns, 174 F.3d at The Court GRANTS summary judgment in favor of Plaintiff on the 21 following of his claims: trademark infringement under Lanham Act § 22 43(a), common law unfair competition, unfair competition under 23 California Business & Professions Code § 17200, and trademark 24 cancellation. 25 favor on the laches issue. 26 /// The Court GRANTS summary judgment in Defendants’ The Court DENIES summary Judgment on 27 28 19 1 Defendants’ first through fourth counterclaims, and these claims 2 are construed to have been abandoned anyway. 3 counterclaims are deemed to have been abandoned. 4 IT IS SO ORDERED. All other claims and 5 6 7 Dated:March 21, 2013 DEAN D. PREGERSON United States District Judge 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 20
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