Romo Dimas et al v. Tapia Matilde et al, No. 2:2013cv08840 - Document 28 (C.D. Cal. 2015)
Court Description: ORDER GRANTING IN PART PLAINTIFFS MOTION FOR SUMMARY JUDGMENT 22 by Judge Dean D. Pregerson: The Court GRANTS summary judgment in favor of Plaintiffs ontheir claims for federal trademark infringement and cancellation ofDefendants trademark. The Cou rt further GRANTS Plaintiffs request for injunctive relief. The Court permanently enjoins and restrains Defendants Favian Tapia Matilde, Delia Tapia and their respective officers, agents, servants, employees, and attorneys, and other persons who are in active concert or participation with any of the aforementioned persons from using the SAMURAY service mark, or any confusingly similar or colorable imitation of themark, in any manner in connection with the sale, advertising, offering, announcing or promotion of musical services, such as live performances of a musical group, or products, such as phonograph records, CDs, DVDs or their digital counterparts. (lc)
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Romo Dimas et al v. Tapia Matilde et al Doc. 28 1 2 O 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 ROMO DIMAS, et al., 12 Plaintiff, 13 v. 14 TAPIA MATILDE, et al., 15 Defendants. ___________________________ ) ) ) ) ) ) ) ) ) ) Case No. CV 13-08840 DDP (ASx) ORDER GRANTING IN PART PLAINTIFFS’ MOTION FOR SUMMARY JUDGMENT [Dkt. No. 22] 16 17 Presently before the Court is Plaintiffs Alfredo Romo Dimas, 18 Ignacio Romo Dimas, Juan Luis Romo Dimas, Rogelio Romo Dimas, 19 Guillermo Romo Dimas, and Gilberto Romo Dimas (collectively, 20 “Plaintiffs”)’s Motion for Summary Judgment (“MSJ”). 21 22.) 22 (collectively, “Defendants”) have not filed an opposition. 23 reviewed Plaintiffs’ submissions and heard oral argument, the Court 24 GRANTS Plaintiffs’ motion as to the federal trademark infringement 25 claim and the cancellation of Defendants’ trademark, and adopts the 26 following order. 27 /// 28 /// (Docket No. Defendants Favian Tapia Matilde (“Matilde”) and Delia Tapia Having Dockets.Justia.com 1 I. BACKGROUND 2 Plaintiffs are brothers and members of the musical group 3 Samuray, which Plaintiffs founded in Mexico in 1990. (Declaration 4 of Alfredo Romo Dimas (“Dimas Decl.”), Docket No. 22-2, ¶ 2. 5 director of the group Samuray, Plaintiff Alfredo Romo Dimas 6 (“Alfredo”) registered the service mark “SAMURAY” in International 7 Class 41 with the United States Patent and Trademark Office 8 (“USPTO”) on October 23, 2012.1 9 Uncontroverted Facts and Conclusions of Law (“SUF”), Docket No. 22- As (Plaintiffs’ Separate Statement of 10 28, ¶¶ 1, 5; Dimas Decl. Ex. 1.) 11 mark in connection with their musical group and the performances of 12 their musical group continuously since 1990. (SUF ¶¶ 2-4.) 13 Plaintiffs have used the SAMURAY mark in commerce in the United 14 States as early as 1991. 15 SAMURAY mark in commerce in connection with goods (namely, records 16 and CDs) as early as 1992, and have done so continuously since 17 1992. 18 different albums of recordings from 1992 through 2014. (Id. ¶ 10; 19 Dimas Decl. ¶ 7, Ex. 4-18.) (Id. ¶¶ 8-9.) Plaintiffs have used the SAMURAY (Id. ¶ 3.) Plaintiffs first use the Plaintiffs have released at least 15 20 The packaging of Samuray’s albums and promotional materials 21 typically displays the name “SAMURAY” in distinctive font with a 22 round symbol behind the word. 23 genre of Mexican music that is known as “romantico” or a “romantic” 24 style. (Id. ¶ 18.) (SUF ¶¶ 16-17.) Samuray performs a Oftentimes the group is promoted with the 25 26 27 28 1 This order uses “Samuray” to refer to the musical group, while it uses “SAMURAY” in capital letters to refer to Plaintiffs’ registered service mark. 2 1 nickname “los guerreros del amor,” or “the warriors of love.” 2 ¶¶ 20-21.) 3 (Id. In 2009, Defendant Matilde filed an “intent to use” 4 application to register the trademark “EL ROMANTICO SAMURAY” in 5 international class 9, in connection with goods, including records 6 and CDs. 7 Matilde created three exhibits demonstrating the EL ROMANTICO 8 SAMURAY mark. 9 present to the USPTO and were never produced or used commercially. (Id. ¶ 24.) In response to requests from the USPTO, (Id. ¶ 28.) These exhibits were created solely to 10 (Id.) 11 ROMANTICO SAMURAY” as a service mark in international class 41. 12 (Id. ¶ 37.) 13 In 2012, Matilde filed a trademark application for “EL Matilde first learned of the existence of the Samuray musical 14 group in 1990. 15 songs by Samuray (otherwise known as “covers”). 16 Matilde began using the EL ROMANTICO SAMURAY mark in January 2010. 17 (Id. ¶ 39.) 18 and distributes recordings. 19 occasions, performances by Matilde’s El Romantico Samuray group 20 have been advertised as Plaintiffs’ Samuray group, including using 21 visual ads that depict the members of the Samuray group accompanied 22 by a Samuray logo. 23 (Id. ¶ 22.) Matilde has a musical group that plays (Id. ¶ 23.) Matilde’s El Romantico Samuray group plays live music (Id. ¶¶ 49-50.) On multiple (Id. ¶¶ 51-53.) On November 27, 2013, Plaintiffs filed the present action 24 against Defendants, alleging claims for (1) federal trademark 25 infringement and unfair competition, (2) trademark infringement 26 under California common law, (3) unfair competition under Cal. Bus. 27 and Prof. Code §§ 17200 et seq., (4) false advertising under Cal. 28 Bus and Prof. Code §§ 17500 et seq., (5) interference with 3 1 prospective business advantage, (6) cancellation of registration of 2 trademark, (7) accounting, and (8) injunctive relief. 3 1.) 4 now moved for summary judgment. 5 not filed an opposition. 6 II. 7 Defendants filed an Answer. (Docket No. 10.) (Docket No. 22.) (Docket No. Plaintiffs have Defendants have LEGAL STANDARD Summary judgment is appropriate where the pleadings, 8 depositions, answers to interrogatories, and admissions on file, 9 together with the affidavits, if any, show “that there is no 10 genuine dispute as to any material fact and the movant is entitled 11 to judgment as a matter of law.” 12 seeking summary judgment bears the initial burden of informing the 13 court of the basis for its motion and of identifying those portions 14 of the pleadings and discovery responses that demonstrate the 15 absence of a genuine issue of material fact. 16 Catrett, 477 U.S. 317, 323 (1986). 17 the evidence must be drawn in favor of the nonmoving party. 18 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242 (1986). 19 moving party does not bear the burden of proof at trial, it is 20 entitled to summary judgment if it can demonstrate that “there is 21 an absence of evidence to support the nonmoving party’s case.” 22 Celotex, 477 U.S. at 323. 23 Fed. R. Civ. P. 56(a). A party See Celotex Corp. v. All reasonable inferences from See If the Once the moving party meets its burden, the burden shifts to 24 the nonmoving party opposing the motion, who must “set forth 25 specific facts showing that there is a genuine issue for trial.” 26 Anderson, 477 U.S. at 256. 27 party “fails to make a showing sufficient to establish the 28 existence of an element essential to that party’s case, and on Summary judgment is warranted if a 4 1 which that party will bear the burden of proof at trial.” 2 477 U.S. at 322. 3 that a reasonable jury could return a verdict for the nonmoving 4 party,” and material facts are those “that might affect the outcome 5 of the suit under the governing law.” 6 There is no genuine issue of fact “[w]here the record taken as a 7 whole could not lead a rational trier of fact to find for the 8 nonmoving party.” 9 Corp., 475 U.S. 574, 587 (1986). 10 Celotex, A genuine issue exists if “the evidence is such Anderson, 477 U.S. at 248. Matsushita Elec. Indus. Co. v. Zenith Radio It is not the court's task “to scour the record in search of a 11 genuine issue of triable fact.” 12 1278 (9th Cir.1996). 13 support clearly. 14 1026, 1031 (9th Cir.2001). 15 file for evidence establishing a genuine issue of fact, where the 16 evidence is not set forth in the opposition papers with adequate 17 references so that it could conveniently be found.” 18 III. Keenan v. Allan, 91 F.3d 1275, Counsel has an obligation to lay out their Carmen v. San Francisco Sch. Dist., 237 F.3d The court “need not examine the entire Id. DISCUSSION 19 A. 20 Plaintiffs assert a trademark infringement claim under Section Trademark Infringement under the Lanham Act 21 43(a) of the Lanham Act. 22 a trademark infringement claim,” a plaintiff must show (1) it has 23 valid, protectable trademarks, and (2) that defendant’s use of the 24 marks is likely to cause confusion. 25 v. eBay, Inc., 511 F.3d 966, 969 (9th Cir. 2007). 26 27 28 1. 15 U.S.C. § 1125(a)(1)(A). “To establish Applied Info. Sciences Corp. Ownership of the Mark “It is axiomatic in trademark law that the standard test of ownership is priority of use. To acquire ownership of a trademark 5 1 it is not enough to have invented the mark first or even to have 2 registered it first; the party claiming ownership must have been 3 the first to actually use the mark in the sale of goods or 4 services.” 5 1219 (9th Cir. 1996). 6 ‘senior’ user and has the right to enjoin ‘junior’ users from using 7 confusingly similar marks in the same industry and market or within 8 the senior user’s natural zone of expansion.” 9 Inc. V. West Coast Entm’t Corp., 174 F.3d 1036, 1047 (9th Cir. 10 11 Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, “The first to use a mark is deemed the Brookfield Commc’ns. 1999). Plaintiffs have presented evidence that they are the senior 12 user of the SAMURAY mark. 13 continuously since 1990 for the purposes of their musical 14 recordings and performances. 15 application for EL ROMANTICO SAMURAY in 2009. 16 Matilde testified that he did not begin using his EL ROMANTICO 17 SAMURAY mark in conjunction with his performances until 2010. 18 Therefore, although Matilde first registered a trademark using the 19 “SAMURAY” name, Plaintiffs were the first to use the SAMURAY mark 20 in commerce. 21 although a registration of a mark with the USPTO constitutes prima 22 facie evidence of a mark’s validity, the presumption can be 23 rebutted by a party showing that he first used the mark in 24 commerce). 25 26 2. They have used the SAMURAY name and mark Matilde first filed a trademark At deposition, See Brookfield, 174 F.3d at 1047 (stating that, Likelihood of Confusion Beyond ownership, the “core element” of a trademark 27 infringement claim is the likelihood that the similarity of the 28 marks will confuse consumers as to the source of goods or services. 6 1 Freecycle Network, Inc. v. Oey, 505 F.3d 898, 902 (9th Cir. 2007). 2 Relevant factors include the strength of the mark, proximity of the 3 goods, similarity of the marks, evidence of actual confusion, 4 marketing channels used, degree of care likely to be exercised by 5 consumers, defendant’s intent, and likelihood of expansion of 6 product lines. 7 (9th Cir. 1979). 8 the likelihood of confusion test is “fluid”. 9 v. Survivor Prods., 406 F.3d 625, 631 (9th Cir. 2005). 10 AMF Inc. v. Sleekcraft Boats, 599 F.2d 941, 348-49 It is unnecessary to meet every factor, because Surfvivor Media, Inc. The strength of a trademark depends, in part, on its position 11 on a spectrum ranging from generic to arbitrary. 12 Rearden Commerce, Inc., 683 F.3d 1190, 1211 (9th Cir. 2012). 13 Arbitrary marks consist of words that have no connection with the 14 product. 15 has nothing to do with a musical group that performs traditional 16 Mexican romantic music. 17 Id. Rearden LLC v. Here, “SAMURAY,” a Spanish word meaning “samurai,” Accordingly, Plaintiffs’ mark is strong. On balance, the Court finds that there is a high likelihood of 18 confusion. 19 Plaintiffs’ mark –- Matilde’s mark adds the modifier “EL ROMANTICO” 20 to the word “SAMURAY” –- the strength of the mark, the proximity of 21 the use of the marks, their similarity, and evidence of actual 22 confusion all weigh in favor of finding likelihood of confusion. 23 Both marks use the distinctive word “SAMURAY.” 24 perform similar music –- in fact, Matilde stated that his EL 25 ROMANTICO SAMURAY group would play covers of Samuray songs. 26 musical groups perform in similar venues. 27 discovered Matilde’s group because his Samuray group was losing 28 booking venues to the El Romantico Samuray group. Although the alleged infringing mark is different from 7 Both musical groups Both In fact, Alfredo (Dimas Decl. ¶¶ 1 17, 20.) Alfredo spoke with one promoter who thought he had booked 2 the Samuray group, but only upon investigation discovered he had 3 booked the El Romantico Samuray group. 4 because Plaintiffs’ mark is arbitrary because it is non- 5 descriptive, it is awarded “maximum protection.” 6 Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992) 7 (holding that an “arbitrary” mark is “awarded maximum protection”). 8 See also Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1390 9 (9th Cir. 1993) (“An arbitrary mark consists of common words (Id. ¶ 20.) Finally, E. & J. Gallo 10 arranged in an arbitrary way that is non-descriptive of any quality 11 of the goods or services.”). 12 13 14 15 For the reasons stated above, the Court finds that there is a substantial likelihood of confusion. 3. Conclusion The Ninth Circuit has recognized that “[b]ecause of the 16 intensely factual nature of trademark disputes, summary judgment is 17 generally disfavored in the trademark arena.” 18 Rearden Commerce, Inc., 683 F.3d 1190, 1209 (9th Cir. 2012). 19 have cautioned that district court should grant summary judgment 20 motions regarding the likelihood of confusion sparingly, as careful 21 assessment of the pertinent factors that go into determining 22 likelihood of confusion usually requires a full record.” 23 Given the evidence Plaintiffs have presented in this case, however, 24 paired with the fact that Defendants have failed to file an 25 opposition brief, the Court concludes that Plaintiffs are entitled 26 to summary judgment on their trademark infringement claim. 27 28 Rearden LLC v. “We Id. Plaintiffs have requested that the Court grant a permanent injunction granting relief against future infringement by 8 1 Defendants. When summary judgment has been granted on a trademark 2 infringement claim, court may grant a permanent injunction without 3 a specific hearing on the issue. Phillip Morris USA Inc. v. 4 Shalabi, 352 F. Supp. 2d 1067, 1074 (C.D. Cal. 2004). 5 irreparable harm Plaintiffs may suffer if injunctive relief is not 6 granted, combined with the interest in protecting consumers from 7 confusion, the Court will grant Plaintiff’s request for injunctive 8 relief. 9 637, 640 (9th Cir. 1993) (“Once the plaintiff has demonstrated a Given the See Metro Pub., Ltd. v. San Jose Mercury News, 987 F.2d 10 likelihood of confusion, it is ordinarily presumed that the 11 plaintiff will suffer irreparable harm if injunctive relief is not 12 granted.”). 13 B. 14 Plaintiffs also move the Court to cancel Defendants’ EL 15 ROMANTICO SAMURAY trademark, arguing that Defendants obtained the 16 registration by fraud. 17 party must show: “(1) a false representation regarding a material 18 fact; (2) the registrant’s knowledge or belief that the 19 representation is false; (3) the registrant’s intent to induce 20 reliance upon the misrepresentation; (4) actual, reasonable 21 reliance on the misrepresentation; and (5) damages proximately 22 caused by that reliance.” 23 738 F.3d 1085, 1097 (9th Cir. 2013). 24 Trademark Cancellation To obtain cancellation of a trademark, a Hokto Kinoko Co. v. Concord Farms, Inc., Here, Plaintiffs contend that Matilde made a false 25 representation to the USPTO when he created and submitted specimens 26 with his trademark application that “were fakes that he created for 27 the sole purpose of inducing the USPTO to issue him” the EL 28 ROMANTICO SAMURAY mark. (MSJ at 16.) 9 Plaintiffs have also 1 produced evidence that shows Matilde not only was aware of the 2 Samuray group, but also played covers of Samuray songs. 3 22-23.) 4 evidence on the record, the Court finds that Plaintiffs are 5 entitled to summary judgment on their cancellation claim. Matilde has not filed an opposition. (SUF ¶¶ Based on the 6 C. Plaintiffs’ Other Claims 7 Although Plaintiffs seemingly move for summary judgment on all 8 of their claims, their MSJ only addresses the claims for federal 9 trademark infringement, cancellation, and injunctive relief. 10 Plaintiffs’ MSJ does not address their other claims, including 11 their state law claims. 12 this motion that they would not pursue the other claims. 13 Accordingly, the Court will consider those claims abandoned. 14 IV. 15 Plaintiffs clarified at the hearing on CONCLUSION The Court GRANTS summary judgment in favor of Plaintiffs on 16 their claims for federal trademark infringement and cancellation of 17 Defendants’ trademark. 18 request for injunctive relief. 19 restrains Defendants Favian Tapia Matilde, Delia Tapia and their 20 respective officers, agents, servants, employees, and attorneys, 21 and other persons who are in active concert or participation with 22 any of the aforementioned persons from using the SAMURAY service 23 mark, or any confusingly similar or colorable imitation of the 24 mark, in any manner in connection with the sale, advertising, 25 offering, announcing or promotion of musical services, such as live 26 /// 27 /// The Court further GRANTS Plaintiffs’ The Court permanently enjoins and 28 10 1 performances of a musical group, or products, such as phonograph 2 records, CDs, DVDs or their digital counterparts. 3 4 IT IS SO ORDERED. 5 6 7 Dated: September 30, 2015 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 11
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