Healthvana, Inc. v. Telebrands Corp. et al, No. 2:2020cv04305 - Document 102 (C.D. Cal. 2022)
Court Description: ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT 70 by Judge Dean D. Pregerson. For the reasons stated above, Telebrands' Motion for Summary Judgment is GRANTED. See order for details. (lom) Modified on 2/24/2022 (lom).
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Healthvana, Inc. v. Telebrands Corp. et al Doc. 102 1 2 O 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 HEALTHVANA, INC., 12 Plaintiff, 13 14 v. TELEBRANDS CORP., 15 Defendants. ) ) ) ) ) ) ) ) ) ) Case No. CV 20-04305 DDP (SKx) ORDER GRANTING DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT [Dkt. 70] 16 17 Presently before the court is a Motion for Summary Judgment 18 filed by Defendants Telebrands Corp.; Hempvana, LLC; Bulbhead.com, 19 LLC; and Healthbloom, LLC (collectively, “Telebrands”). 20 considered the submissions of the parties and heard oral argument, 21 the court grants the motion and adopts the following Order. 22 I. 23 Having Background Since 2014, Plaintiff Healthvana, Inc. (“Healthvana”) has 24 operated a “digital health platform” named Healthvana (“the 25 Healthvana app”). 26 “Healthvana” for use in connection with software and software as a 27 service. 28 the results of HIV tests, and tests for other sexually transmitted Healthvana holds a trademark in the name Prior to 2020, the Healthvana app focused on delivering diseases, to patients. With the onset of the COVID-19 pandemic in Dockets.Justia.com 1 March 2020, however, Healthvana shifted the focus of its digital 2 platform to Covid test records, and later vaccination records. 3 all times, Healthvana’s customers have not included end users of 4 software or the Healthvana app, but rather governmental entities, 5 healthcare firms, medical officers, laboratories, and employers. 6 At Telebrands markets and sells “As Seen on TV” consumer 7 household products via websites, phone numbers, and big box 8 retailers such as Home Depot, Lowes, and Walgreens. 9 Telebrands’ products is a line of “Hempvana” products. Among Upon the 10 outset of the pandemic, Telebrands made an effort to market and 11 sell a hand sanitizer product. 12 historically reluctant to carry products associated with hemp, 13 Telebrands opted to market a hand sanitizer under the name 14 “Healthvana.” 15 “direct response” television commercial and a product website, and 16 later expanded to big box stores. 17 Because, however, retailers were Telebrands’ marketing efforts initially included a In late March 2020, Healthvana contacted Telebrands to express 18 concerns about Telebrands’ use of the name “Healthvana.” 19 Telebrands’ counsel indicated that Telebrands would rebrand the 20 hand sanitizer as “Handvana” and change all “Healthvana” hand 21 sanitizer marketing. 22 By April 17, Telebrands represented that all changes had been made. 23 Several hundred thousand bottles of hand sanitizer, however, had 24 already been produced with the older, “Healthvana” label. 25 bottles were filled and shipped to big box customers sometime after 26 April 17. 27 shipments of hand sanitizer were delivered in the new “Handvana” 28 bottles. Telebrands did not admit to any wrongdoing. Those Once those pre-printed bottles had run out, subsequent 2 1 On May 12, 2020, Healthvana filed the instant suit. The 2 Complaint alleges causes of action for trademark infringement, 3 unfair competition, and false advertising in violation of both 4 federal and state law, as well as a cause of action for violation 5 of the AntiCybersquatting Consumer Protection Act (“ACPA”). 6 Telebrands now moves for summary judgment on all claims. 7 II. 8 9 Legal Standard Summary judgment is appropriate where the pleadings, depositions, answers to interrogatories, and admissions on file, 10 together with the affidavits, if any, show “that there is no 11 genuine dispute as to any material fact and the movant is entitled 12 to judgment as a matter of law.” 13 seeking summary judgment bears the initial burden of informing the 14 court of the basis for its motion and of identifying those portions 15 of the pleadings and discovery responses that demonstrate the 16 absence of a genuine issue of material fact. 17 Catrett, 477 U.S. 317, 323 (1986). 18 the evidence must be drawn in favor of the nonmoving party. 19 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242 (1986). 20 moving party does not bear the burden of proof at trial, it is 21 entitled to summary judgment if it can demonstrate that “there is 22 an absence of evidence to support the nonmoving party's case.” 23 Celotex, 477 U.S. at 323. 24 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 25 the nonmoving party opposing the motion, who must “set forth 26 specific facts showing that there is a genuine issue for trial.” 27 Anderson, 477 U.S. at 256. 28 party “fails to make a showing sufficient to establish the Summary judgment is warranted if a 3 1 existence of an element essential to that party’s case, and on 2 which that party will bear the burden of proof at trial.” 3 477 U.S. at 322. 4 that a reasonable jury could return a verdict for the nonmoving 5 party,” and material facts are those “that might affect the outcome 6 of the suit under the governing law.” 7 There is no genuine issue of fact “[w]here the record taken as a 8 whole could not lead a rational trier of fact to find for the 9 nonmoving party.” 10 11 Celotex, A genuine issue exists if “the evidence is such Anderson, 477 U.S. at 248. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). It is not the court’s task “to scour the record in search of a 12 genuine issue of triable fact.” 13 1278 (9th Cir. 1996). 14 support clearly. 15 1026, 1031 (9th Cir. 2001). 16 file for evidence establishing a genuine issue of fact, where the 17 evidence is not set forth in the opposition papers with adequate 18 references so that it could conveniently be found.” 19 III. Discussion Keenan v. Allan, 91 F.3d 1275, Counsel have an obligation to lay out their Carmen v. San Francisco Sch. Dist., 237 F.3d The court “need not examine the entire Id. 20 A. 21 The “core element” of a trademark infringement claim is the Trademark claims 22 likelihood that the similarity of the marks will confuse consumers 23 as to the source of goods or services. 24 Oey, 505 F.3d 898, 902 (9th Cir. 2007). 25 the strength of the mark, proximity of the goods, similarity of the 26 marks, evidence of actual confusion, marketing channels used, the 27 degree of care likely to be exercised by consumers, the defendant’s 28 4 Freecycle Network, Inc. v. Relevant factors include 1 intent, and likelihood of expansion of product lines. 2 Sleekcraft Boats, 599 F.2d 941, 348-49 (9th Cir. 1979). 3 AMF Inc. v. As an initial matter, Telebrands appears to suggest that a 4 Sleekcraft, or likelihood of confusion, analysis is not applicable 5 in the first instance unless the goods at issue are “related.” 6 Ninth Circuit has explained that the purpose of a Sleekcraft 7 analysis is to determine “whether consumers would likely be 8 confused by related goods.” 9 Sys. Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011) (emphasis The Network Automation, Inc. v. Advanced 10 added); see also M2 Software, Inc. v. Madacy Ent., 421 F.3d 1073, 11 1080 (9th Cir. 2005) (describing Sleekcraft analysis’ role in 12 determining “whether there is a likelihood of confusion between the 13 parties’ allegedly related goods”) (emphasis added). 14 argument appears to go, where goods are not related, a Sleekcraft 15 analysis is neither necessary nor informative. 16 more than twenty years ago, applied a “relatedness” test as a 17 threshold question in this sense.1 18 Corp. v. Faber, 29 F. Supp. 2d 1161, 1163 (C.D. Cal. 1998). 19 majority of courts, however, including several of the authorities 20 cited by Telebrands, have since treated relatedness of goods not as 21 an independent, predicate factor, but rather as a part of the 22 Sleekcraft analysis, specifically as part of the analysis related 23 to the “proximity” of the goods. 24 v. Survivor Prods., 406 F.3d 625, 633 (9th Cir. 2005); Entrepreneur 25 Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002); Matrix Thus, the This Court has, See Bally Total Fitness Holding The See, e.g., Surfvivor Media, Inc. 26 27 28 1 This Court went on, however, to assume for the sake of argument that the goods in question were related and conduct a full Sleekcraft analysis. 5 1 Motor Co. v. Toyota Jidosha Kabushiki Kaisha, 290 F. Supp. 2d 1083, 2 1090 (C.D. Cal. 2003). 3 appropriate, and looks to relatedness as part of the overall 4 confusion analysis. 5 1. The court finds that this approach is Strength of Plaintiff’s Mark 6 “The purpose of examining the strength of the plaintiff’s mark 7 is to determine the scope of trademark protection to which the mark 8 is entitled.” 9 “Healthvana” is fanciful or perhaps suggestive, insofar as the term Surfvivor, 406 F.3d at 631. Here, the term 10 evokes something that is somewhat health-related. 11 the mark merits some degree of protection. 12 13 2. In either case, Id. Proximity/Relatedness of the Goods As explained above, relatedness of the goods in question is 14 but one of the factors relevant to likelihood of confusion. 15 Healthvana’s software product, however, bears little resemblance to 16 Telebrands’ hand sanitizer. 17 goods need not directly compete with one another to qualify as 18 “related.” 19 may, in some cases, be related to each other, insofar as consumers 20 are likely to associate one party’s products with the other party. 21 See Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 22 1036, 1056 (9th Cir. 1999). 23 plaintiff marketed “MovieBuff” software containing entertainment 24 industry-related software. 25 nationwide video chain, then, in the relatively early days of 26 internet marketing, registered the web domain moviebuff.com. 27 Ninth Circuit found the two goods related, in that “both companies 28 offer products and services relating to the entertainment industry Healthvana contends, correctly, that Products and services related to a general industry In Brookfield, for example, the Id. at 1042. 6 The defendant, a The 1 generally, and their principal lines of business both relate to 2 movies specifically.” 3 conclusion, however, in Entrepreneur Media. 4 Entrepreneur magazine brought trademark infringement claims against 5 a public relations firm called “EntrepreneurPR,” which also 6 published a quarterly “Entrepreneur Illustrated” press release. 7 Entrepreneur Media, 279 F.3d at 1138-39. 8 “the fact that both parties’ goods relate generally to 9 entrepreneurs . . . can carry relatively little weight in Id. at 1056. The court came to the opposite There, the owners of The court concluded that 10 determining the likelihood of confusion. 11 individual or company using the word ‘entrepreneur’ . . . is likely 12 to do so because that product or service has something to do with 13 the world of entrepreneurs.” 14 This is so because any Id. at 1147. Here, although the term “Healthvana” is less descriptive than 15 “entrepreneur,” any entity using any variation on the word “health” 16 is likely to do so because its product has something to do with 17 “health.” 18 parties’ products relate to the same, very general industry is of 19 little moment. 20 products and services is far broader than that related to, for 21 example, movies, as was pertinent in Brookfield. 22 recognition of this reality, Healthvana suggests that the relevant 23 universe is not health products generally, but rather Covid-related 24 products specifically.2 As in Entrepreneur Media, therefore, the fact that both Furthermore, the universe of health-related In apparent This argument is not persuasive. First, 25 2 26 27 28 Healthvana is not entirely consistent, however, focusing on both parties’ specific Covid-related products while also recognizing that “both companies offer products and services relating to medical issues generally.” (Opp. at 14-15.) Indeed, for most of its history under the name Healthvana, Plaintiff’s (continued...) 7 1 Healthvana’s effort to paint Telebrands’ product as “Covid hand 2 sanitizer” (Opposition at 2:8) is not supported in the record. 3 Although the pandemic undoubtedly played a role in Telebrands’ 4 decision to expand into the sanitizer market, the sanitizer 5 indisputably has applications beyond the world of Covid. 6 Telebrands’ television advertisement does not use the word “Covid,” 7 and Healthvana does not point to any other evidence of Covid- 8 specific marketing in the record. 9 focused on the Covid-related market, the court is skeptical that Second, even if Telebrands had 10 Healthvana’s phone app software would necessarily be “related to” 11 every other product in the universe of arguably Covid-related 12 products, including hand wipes, cleaning solutions, masks, gloves, 13 face shields, prescription medicines, vaccines, pulse oximeters, 14 UV-sanitizers, thermometers, and so on. 15 Sleekcraft analysis, therefore, Healthvana’s phone app is not 16 closely related to Telebrands’ moisturizing hand sanitizer. 17 18 3. For purposes of a Similarity of the Marks “Obviously, the greater the similarity between the two marks 19 at issue, the greater the likelihood of confusion.” 20 v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000). 21 at issue here are displayed below: GoTo.com, Inc. The marks 22 23 24 25 26 27 28 2 (...continued) “digital health platform” focused on the prevention and management of HIV and sexually transmitted diseases. 8 1 Clearly, the spelling of the two marks is identical, with the 2 exception of an umlaut in Telebrands’ mark. 3 “be considered in their entirety and as they appear in the 4 marketplace.” 5 font, and imagery incorporated within the two marks are distinct 6 and distinguishable. 7 marketplace, as Healthvana’s product is a phone app and Telebrands’ 8 product is a physical good. 9 therefore, weighs only slightly in favor of confusion. 10 4. Marks should, however, Entrepreneur Media, 279 F.3d at 1144. The color, Nor do the two marks appear in the same The similarity of the marks, Actual Confusion 11 Although evidence of actual confusion is not required to 12 demonstrate a likelihood of confusion, it “is strong evidence that 13 future confusion is likely.” 14 F.3d 1385, 1393 (9th Cir. 1993). 15 does not agree with Healthvana’s assertion that it has presented 16 evidence of “hundreds of instances of actual confusion.” 17 Court has explained, “stand-alone enquiries and misdirected 18 communications” are not evidence of actual consumer confusion. 19 Delta Forensic Eng’g, Inc. v. Delta V Biomechanics, Inc., 402 F. 20 Supp. 3d 902, 910 (C.D. Cal. 2019) (discussing mis-addressed 21 mailings); see also Credit One Corp. v. Credit One Fin., Inc., 661 22 F. Supp. 2d 1134, 1140-41 (C.D. Cal. 2009) (communications intended 23 for one party but directed to another do not constitute evidence of 24 actual confusion). 25 formats, may demonstrate only that consumers were “inattentive or 26 careless, as opposed to being actually confused” about the source 27 of a product. 28 636 (6th Cir. 2002). Off. Airline Guides, Inc. v. Goss, 6 As an initial matter, the court As this Such evidence, rather, especially in electronic Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, Nevertheless, Healthvana has presented 9 1 evidence that some consumers did believe that Healthvana was the 2 company selling Healthvana-brand hand sanitizer. 3 actual confusion weighs in favor of a likelihood of confusion. 4 5 5. This evidence of Marketing Channels There is no dispute that, unlike Telebrands, Healthvana does 6 not market its phone app through television advertising or big box 7 retail stores. 8 of confusion exists because all parties market their products on 9 the internet. Nevertheless, Healthvana contends that a likelihood Courts have, in the past, concluded that “the Web, 10 as a marketing channel, is particularly susceptible to a likelihood 11 of confusion.” 12 reasoning, however, has long since fallen by the wayside. 13 decade ago, the Ninth Circuit recognized that “[t]oday, it would be 14 the rare commercial retailer that did not advertise online, and the 15 shared use of a ubiquitous marketing channel does not shed much 16 light on the likelihood of consumer confusion.” 17 Automation, 638 F.3d at 1151 (emphasis added). 18 therefore, weighs against a likelihood of consumer confusion. 19 20 6. GoTo.com, 202 F.3d at 1207. That line of Over a Network This factor, Degree of Care Exercised by Consumers Courts expect consumers to be “more discerning—and less easily 21 confused,” when purchasing expensive items. 22 at 1036. 23 degree of care is less likely to be confused by similar marks. 24 Network Automation, 638 F.3d at 1152. 25 Healthvana’s software product are sophisticated entities such as 26 governments and laboratories who, if Healthvana’s revenues are any 27 indication, pay non-negligible amounts for Healthvana’s services 28 and products. Brookfield, 174 F.3d Similarly, a sophisticated consumer exercising a high Here, consumers of Telebrands’ consumers, on the other hand, are not 10 1 likely to be sophisticated or to exercise a high degree of care 2 when purchasing a relatively inexpensive bottle of hand sanitizer. 3 Although the Ninth Circuit has not spoken definitively as to what 4 standard applies in “mixed buyer class” situations such as this 5 one, the court has suggested that “the standard of care to be 6 exercised by the reasonably prudent purchaser will be equal to that 7 of the least sophisticated consumer.” 8 (9th Cir. 2000) (quoting Ford Motor Co. v. Summit Motor Prods., 9 Inc., 930 F.2d 277, 293 (3d Cir.1991); but see Cohn v. Petsmart, GoTo.com, 202 F.3d at 1209 10 Inc., 281 F.3d 837, 843 n.9 (9th Cir. 2002) (“That standard, 11 however, applies only when the plaintiff’s products or services are 12 marketed to different categories of purchasers, such as to both 13 professional purchasers and the consuming public.” (emphasis 14 added)). 15 care when purchasing inexpensive hand sanitizer, this factor weighs 16 somewhat in favor of a likelihood of confusion. 17 18 Because Telebrands’ customers exercise a low degree of 7. Telebrands’ Intent The intent factor is of “minimal importance.” GoTo.com, 202 19 F.3d at 1208. 20 intended to confuse or deceive either its own or Healthvana’s 21 customers. 22 Hempvana branding yet evocative of health, and agreed to change 23 that branding almost immediately when requested to do so. 24 Healthvana makes much of the fact that Telebrands shipped out 25 “Healthvana” labeled bottles even after agreeing to change its 26 branding, the evidence is undisputed that the bottles had already 27 been produced. In any event, there is no evidence that Telebrands Telebrands selected a brand name similar to its Although A de-identification period spanning a matter of 28 11 1 weeks hardly constitutes evidence of any bad intent on Telebrands’ 2 part. 3 8. Expansion of Product Lines 4 There is no evidence that either party has any intention or 5 plan of expanding into the others’ product lines at any point in 6 the future. 7 confusion. 8 9 This factor therefore weighs against a likelihood of 9. Balance of Sleekcraft factors The balance of the Sleekcraft factors weighs against a 10 likelihood of confusion. 11 Healthvana’s favor, and the strength of the mark, similarity of the 12 marks, and degree of care factors weigh slightly in favor of 13 confusion. 14 against a likelihood of confusion. 15 of the goods, or lack thereof, weighs heavily against a likelihood 16 of confusion. 17 judgment on Plaintiff’s trademark claims. The actual confusion factor weighs in The other factors, however, are either neutral or weigh In particular, the relatedness Telebrands is, therefore, entitled to summary 18 B. 19 Telebrands contends that Healthvana’s false advertising claims False Advertising 20 fail because the parties are not competitors, and because 21 Healthvana has presented no evidence that Telebrands’ advertising 22 statements caused any quantifiable loss of money or property. 23 First, “there is no doubt that the Supreme Court expressly rejected 24 any requirement that a plaintiff show direct competition to prevail 25 on a [Lanham Act] false advertising claim.” 26 Impact Inc., No. CV-18-01443-PHX-JAT, 2020 WL 4583625, at *2 (D. 27 Ariz. Aug. 10, 2020) (citing Lexmark International, Inc. v. Static 28 Control Components, Inc., 572 U.S. 118, 136, 138–39 (2014)). 12 Geiger v. Creative Any 1 commercial injury, including harm to reputation, will suffice. 2 Lexmark, 572 U.S. at 132; ThermoLife Int’l LLC v. Aesthetic 3 Distribution, LLC, No. CV-19-02048-PHX-DJH, 2020 WL 12581996, at *4 4 (D. Ariz. Jan. 7, 2020). 5 “as a result of the false statement”. 6 Inc., No. CR 20-00734 WHA, 2020 WL 1531341, at *2 (N.D. Cal. Mar. 7 31, 2020 (citing Southland Sod Farms v. Stover Seed Co., 108 F.3d 8 1134, 1139 (9th Cir. 1997)). 9 each other, “it may be more difficult to establish proximate A plaintiff must, however, show injury Gaby’s Bags, LLC v. Mercari, Where parties do not compete with 10 causation.” 11 310 F. Supp. 3d 1089, 1106 (S.D. Cal. 2018). 12 Obesity Rsch. Inst., LLC v. Fiber Rsch. Int’l, LLC, Healthvana argues that it has presented evidence that 13 consumers were very angry with Healthvana in the period following 14 certain Telebrands advertisements. 15 certainly indicates reputational harm to Healthvana, the link 16 between consumer anger and the allegedly false statements is less 17 clear. 18 Telebrands falsely stated that its version of Healthvana was a 19 “trusted brand since 2015,” had “over 100 million satisfied 20 customers,” that Telebrands’ sanitizer contained an ingredient used 21 in hospitals, and that Telebrands had maintained a website since 22 2019, when in reality the website went live in 2020. 23 Declaration of Ramin Bastani refers to “hundreds of complaints,” 24 and Healthvana attaches an exhibit of over 600 pages of 25 correspondence, Healthvana identifies no particular instance of a 26 complaint related to any of Telebrands’ alleged false statements. Although that evidence Healthvana’s First Amended Complaint alleges that 27 28 13 Although the 1 Absent such evidence, Healthvana’s Lanham Act claim cannot 2 succeed.3 3 C. 4 Healthvana alleges that Telebrands violated the Anti- Cybersquatting 5 Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), by 6 registering the domain www.healthvanafoam.com with actual knowledge 7 of Healthvana’s registration of the Healthvana mark and without any 8 fair use of Healthvana’s mark on the website. ACPA “establishes 9 civil liability for ‘cyberpiracy’ where a plaintiff proves that (1) 10 the defendant registered, trafficked in, or used a domain name; (2) 11 the domain name is identical or confusingly similar to a protected 12 mark owned by the plaintiff; and (3) the defendant acted with bad 13 faith intent to profit from that mark.” DSPT Int’l, Inc. v. Nahum, 14 624 F.3d 1213, 1218–19 (9th Cir. 2010) (internal quotation marks 15 omitted). 16 Telebrands argues that Healthvana cannot show bad faith. “Bad faith intent . . . shall not be found in any case in 17 which the court determines that the person believed and had 18 reasonable grounds to believe that the use of the domain name was a 19 fair use or otherwise lawful.” 15 U.S.C. § 1125(d)(1)(B)(ii). In 20 any event, “[t]he most important grounds for finding bad faith are 21 the unique circumstances of the case.” Interstellar Starship 22 Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002) 23 (internal quotation marks and citation omitted). Healthvana’s 24 argument with respect to bad intent is not clear to the court. 25 Healthvana appears to rely on the fact that Telebrands’ website was 26 still operational on April 4, four days after Telebrands 27 3 28 Healthvana’s false advertising claim under California Business & Professions Code § 17500 fails for the same reason. 14 1 voluntarily agreed to change its Healthvana branding. As discussed 2 above, a de-identification period of less than one week hardly 3 demonstrates bad faith or intent. Furthermore, given the court’s 4 trademark analysis, above, Telebrands’ belief that its use of the 5 domain name was lawful was a reasonable one. Healthvana’s ACPA 6 claim, therefore, fails. 7 IV. Conclusion 8 For the reasons stated above, Telebrands’ Motion for Summary 9 Judgment is GRANTED. 10 11 12 IT IS SO ORDERED. 13 14 15 Dated: February 24, 2022 DEAN D. PREGERSON United States District Judge 16 17 18 19 20 21 22 23 24 25 26 27 28 15
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