Talavera Hair Products, Inc. v. Taizhou Yunsung Electrical Appliance Co., LTD. et al, No. 3:2018cv00823 - Document 118 (S.D. Cal. 2021)

Court Description: ORDER Granting in Part and Denying in Part 107 Plaintiff's Motion for Partial Summary Judgment. The Court GRANTS Plaintiff's Motion for Partial Summary Judgment (ECF No. 107 ) as to copyright infringement and patent infringement. The Co urt DENIES Plaintiff's Motion as to trade dress infringement. Finally, the Court GRANTS Plaintiff's Motion as to Defendant's ownership of trademark registrations for the mark "FASIZ." Signed by Judge Janis L. Sammartino on 3/4/2021. (tcf)

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Talavera Hair Products, Inc. v. Taizhou Yunsung Electrical Appliance Co., LTD. et al Doc. 118 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 TALAVERA HAIR PRODUCTS, INC., a Nevada corporation, 15 16 17 18 19 ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S MOTION FOR PARTIAL SUMMARY JUDGMENT Plaintiff, 13 14 Case No.: 18-CV-823 JLS (JLB) v. TAIZHOU YUNSUNG ELECTRICAL APPLIANCE CO., LTD., a business entity; and THE INDIVIDUALS, PARTNERSHIPS, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON EXHIBIT “1,” (ECF No. 107) Defendants. 20 21 Presently before the Court is Plaintiff Talavera Hair Products, Inc.’s (“Plaintiff”) 22 Motion for Partial Summary Judgment against the only remaining non-defaulting 23 defendant, Defendant Taizhou Yunsung Electrical Appliance Co., Ltd. (“Defendant”) 24 (“Mot.,” ECF No. 107). The Court took the matter under submission without oral argument 25 pursuant to Civil Local Rule 7.1(d)(1). See ECF No. 108. Having carefully considered 26 Plaintiff’s arguments, the evidence, and the relevant law, the Court GRANTS IN PART 27 and DENIES IN PART the Motion, as set forth below. 28 /// 1 18-CV-823 JLS (JLB) Dockets.Justia.com 1 BACKGROUND 2 “Plaintiff sells a unique and revolutionary patented product under the federally 3 registered trademark Split-Ender® that quickly and easily trims split ends from hair.” See 4 ECF No. 1 (“Compl.”) ¶ 13. “Plaintiff owns copyrights, trademark rights, and patent rights 5 regarding its Split-Ender® product.” Id. ¶ 16. On April 30, 2018, Plaintiff filed the instant 6 litigation against Defendant and several other entities for copyright infringement pursuant 7 to 17 U.S.C. §§ 101 et seq.; unfair competition pursuant to the Lanham Act, 15 U.S.C. 8 § 1125(a); trademark infringement pursuant to 15 U.S.C. § 1114; and infringement of 9 Plaintiff’s U.S. Patents Nos. 6,588,108, 7,040,021, and 9,587,811 pursuant to 35 U.S.C. 10 § 271(a). See generally Compl. On April 19, 2019, Defendant filed an answer to the 11 Complaint. See generally ECF No. 66. The remaining defendants defaulted. See generally 12 Docket. 13 On May 3, 2018, Plaintiff filed an ex parte application for a temporary restraining 14 order (“TRO”), see ECF No. 9, which the Court granted on May 10, 2018, see ECF No. 15 10. On March 16, 2020, Plaintiff moved for default and/or summary judgment against the 16 defaulted defendants, see ECF No. 98, which motion subsequently was refiled and is 17 currently pending, see ECF No. 111 (“Mot. for Default J.”). On July 17, 2020, Plaintiff 18 filed the present Motion. See generally ECF No. 107. Defendant did not file an opposition. 19 LEGAL STANDARD 20 Under Federal Rule of Civil Procedure 56(a), a party may move for summary 21 judgment as to a claim or defense or part of a claim or defense. Summary judgment is 22 appropriate where the Court is satisfied that there is “no genuine dispute as to any material 23 fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); 24 Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). Material facts are those that may affect 25 the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A 26 genuine dispute of material fact exists only if “the evidence is such that a reasonable jury 27 could return a verdict for the nonmoving party.” Id. When the Court considers the 28 /// 2 18-CV-823 JLS (JLB) 1 evidence presented by the parties, “[t]he evidence of the non-movant is to be believed, and 2 all justifiable inferences are to be drawn in his favor.” Id. at 255. 3 The initial burden of establishing the absence of a genuine issue of material fact falls 4 on the moving party. Celotex, 477 U.S. at 323. The moving party may meet this burden 5 by identifying the “portions of ‘the pleadings, depositions, answers to interrogatories, and 6 admissions on file, together with the affidavits, if any,’” that show an absence of dispute 7 regarding a material fact. Id. When a plaintiff seeks summary judgment as to an element 8 for which it bears the burden of proof, “it must come forward with evidence which would 9 entitle it to a directed verdict if the evidence went uncontroverted at trial.” C.A.R. Transp. 10 Brokerage Co. v. Darden Rests., Inc., 213 F.3d 474, 480 (9th Cir. 2000) (quoting Houghton 11 v. South, 965 F.2d 1532, 1536 (9th Cir. 1992)). “This is true, even when the party against 12 whom the motion for summary judgment is directed has not filed any opposition.” 13 Cristobal v. Siegel, 26 F.3d 1488, 1495 (9th Cir. 1994) (citing Sheet Metal Workers’ Int’l 14 Ass’n. v. Nat’l Labor Relations Bd., 716 F.2d 1249, 1254 (9th Cir. 1983). “[W]here no 15 evidence is presented in opposition to the motion, summary judgment should not be granted 16 if the evidence in support of the motion is insufficient.” Hoover v. Switlik Parachute Co., 17 663 F.2d 964, 967 (9th Cir. 1981) (citations omitted). 18 ANALYSIS 19 Plaintiff incorporates by reference the evidence in support of its Motion for Default 20 Judgment and “seeks partial summary judgment against [D]efendant” as to the following 21 issues: 22 1. “The product packaging in issue infringes plaintiff’s registered copyright”; 23 2. “The owner’s manuals in issue infringe plaintiff’s registered copyright”; 24 3. “The product packaging in issue infringes plaintiff’s trademark rights”; 25 4. “The products in issue infringe plaintiff’s patent rights”; 26 5. “The products in issue were sold on Amazon.com and eBay.com by the 41 27 28 Defaulted Defendants”; and /// 3 18-CV-823 JLS (JLB) 1 6. 2 “[Defendant] owns trademark registrations for the mark ‘FASIZ’ in many different countries (including the United States and Brazil).” 3 Mot. at 1; see also ECF No. 107-1 (“Mot. Mem.”) at 2. The Court will address the fifth 4 issue in ruling on the separately briefed and pending Motion for Default Judgment. 5 Moreover, the Court will leave the matter of whether Defendant was the manufacturer or 6 source of any of the infringing products sold on Amazon.com or eBay to be resolved at 7 trial, as Plaintiff has not come forward with evidence on this issue. 1 8 9 The Court will now address each remaining issue in turn. I. Copyright Infringement 10 “In order to establish copyright infringement, a plaintiff must show: (1) ownership 11 of a valid copyright; and (2) that the defendant violated the copyright owner’s exclusive 12 rights under the Copyright Act.” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 13 1159 (9th Cir. 2007). 14 A copyright registration is “prima facie evidence of the validity of the copyright and 15 the facts stated in the certificate.” 17 U.S.C. § 410(c); see also S.O.S., Inc. v. Payday, Inc., 16 886 F.2d 1081, 1085 (9th Cir. 1989). To establish copying, the plaintiff must show either: 17 “(1) the two works in question are substantially similar and the defendant had access to the 18 subject work; or (2) that the works are strikingly similar.” Malibu Textiles, Inc. v. Label 19 Lane Int’l, Inc., 922 F.3d 946, 952 (9th Cir. 2019) (citations omitted). “In assessing 20 whether particular works are substantially similar, or strikingly similar, this Circuit applies 21 a two-part analysis: the extrinsic test and the intrinsic test.” Unicolors, Inc. v. Urban 22 Outfitters, Inc., 853 F.3d 980, 985 (9th Cir. 2017). “The extrinsic test requires plaintiffs to 23 show overlap of concrete elements based on objective criteria, while the intrinsic test is 24 subjective and asks whether the ordinary, reasonable person would find the total concept 25 and feel of the works to be substantially similar.” Id. (internal quotation marks and 26 27 28 1 Indeed, in its Motion, Plaintiff notes that, if partial summary judgment is granted, the trial on each of its claims “will focus on whether [D]efendant . . . was the manufacturer or source of the infringing [products].” Mot. Mem. at 3, 5–6, 9. 4 18-CV-823 JLS (JLB) 1 citations omitted). On a motion for summary judgment, both parts are satisfied, and 2 summary judgment in favor of the plaintiff is proper, where the “works are so 3 overwhelmingly identical that the possibility of independent creation is precluded.” 4 Twentieth Century Fox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1330 (9th Cir. 1989). 5 A. 6 Plaintiff seeks partial summary judgment that the product packaging at issue 7 infringes Plaintiff’s registered copyright for its packaging. See Mot. Mem. at 3–4. Plaintiff 8 owns a registered copyright for its packaging for the Split-Ender product, VA 2e-092-823, 9 registered on February 5, 2018. See Compl. Ex. 2 (ECF No. 1-4); Statement of Undisputed 10 Facts (“SOF,” ECF No. 107-14) at 1. In the absence of any opposition from any defendant, 11 Plaintiff’s evidence is sufficient to create a presumption of validity. Packaging 12 Because Plaintiff did not provide evidence of access, the Court solely will analyze 13 whether the works are strikingly similar as a matter of law. See generally Mot. Mem. Here, 14 the works are “so overwhelmingly identical that the possibility of independent creation is 15 precluded.” Twentieth Century Fox Film Corp., 715 F.2d at 1330. Plaintiff’s copyrighted 16 product packaging and the FASIZ, LESCOLTON, UMATE, and HAIR TRIMMER 17 marked packaging are virtually identical and word-for-word, aside from the omission of 18 Plaintiff’s patent and copyright notices on the latter. See Mot. for Default J. Exs. A & B 19 (ECF Nos. 111-4 & 111-5) (comparing Plaintiff’s product packaging with the FASIZ, 20 LESCOLTON, UMATE, and HAIR TRIMMER marked packaging); see also Mot. Mem. 21 at 3–4; SOF at 1–2. Therefore, the Court finds that Plaintiff has satisfied its burden in 22 proving that the packaging at issue infringes Plaintiff’s copyright as a matter of law. 23 B. 24 Plaintiff also seeks partial summary judgment that the user manuals at issue infringe 25 Plaintiff’s registered copyright for its manual. See Mot. Mem. at 4–6. Plaintiff owns a 26 registered copyright for its manual for the Split-Ender product, VA 2-093-290, registered 27 on February 5, 2018. See Compl. Ex. 3 (ECF No. 1-5). Again, in the absence of any 28 /// Manuals 5 18-CV-823 JLS (JLB) 1 opposition from any defendant, Plaintiff’s evidence is sufficient to create a presumption of 2 validity. 3 Similar to the infringing product packaging, the text in Plaintiff’s copyrighted 4 manual is nearly identical to that found in the FASIZ, LESCOLTON, UMATE, and HAIR 5 TRIMMER marked manuals, aside from the omission of Plaintiff’s trademark, copyright, 6 and patent notices in the latter. Compare Compl. Ex. 3 (ECF No. 1-5) with Compl. Exs. 7 10–13 (ECF Nos. 1-12–15); see also Mot. Mem. at 4–5; SOF at 2–4. Because Plaintiff’s 8 manual and the FASIZ, LESCOLTON, UMATE, and HAIR TRIMMER marked manuals 9 are so “overwhelmingly identical,” the Court finds that the manuals at issue infringe 10 Plaintiff’s registered copyright as a matter of law. 11 Accordingly, the Court GRANTS partial summary judgment in favor of Plaintiff on 12 Plaintiff’s first cause of action for copyright infringement. There is no genuine issue of 13 material fact that the product packaging and owner manuals at issue infringe Plaintiff’s 14 registered copyrights. 15 II. Trade Dress Infringement 16 “[T]he Lanham Act, in § 43(a), gives a producer a cause of action for the use by any 17 person of ‘any word, term, name, symbol, or device, or any combination thereof . . . which 18 . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her 19 goods . . . .’” Wal–Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209 (2000) (citing 15 20 U.S.C. §1125(a)). Trade dress is “the ‘total image of a product,’ including features such 21 as size, shape, color, texture, and graphics.” Millennium Labs., Inc. v. Ameritox, Ltd., 817 22 F.3d 1123, 1126 (9th Cir. 2016) (quoting Disc Golf Ass’n v. Champion Discs, Inc., 158 23 F.3d 1002, 1005 n.3 (9th Cir. 1998)). For a trade dress infringement claim, the plaintiff 24 must prove that: “(1) the trade dress is inherently distinctive or has acquired distinctiveness 25 through secondary meaning; (2) there is a likelihood that the public will be confused by 26 the infringing use; and (3) the trade dress is nonfunctional.” Stephen W. Boney, Inc. v. 27 Boney Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997) (citation omitted). 28 /// 6 18-CV-823 JLS (JLB) 1 Plaintiff seeks partial summary judgment that the product packaging at issue 2 infringes Plaintiff’s trade dress in violation of 15 U.S.C. §1125(a). See Mot. Mem. at 6–9. 3 Plaintiff owns the stylized incontestable trademark, Trademark Reg. No. 2,645923, for 4 SPLIT-ENDER for “[e]lectric and battery-operated hair trimmers for the removal of split 5 and damaged hair ends; scissors, razors and electric shavers” in International Class 008. 6 See Compl. ¶ 56(a); see also id. Ex. 4 (ECF No. 1-6). Plaintiff also owns the word mark 7 SPLIT-ENDER, Registration No. 5535584, for “[e]lectric and battery-powered hair 8 trimmers” in International Class 008. Id. ¶ 56(b). 2 The Court is unaware of any trademark 9 registration for Plaintiff’s product packaging with the USPTO. See generally Compl.; Mot. 10 Mem. 11 A. 12 “For trade dress to be protected it must serve to identify the source of a product either 13 through the inherently distinct nature of the trade dress, or because the trade dress has 14 secondary meaning.” KRBL Ltd. v. Overseas Food Distribution, LLC, No. CV 16-2431 15 PA (GJSX), 2016 WL 3748660, at *4 (C.D. Cal. May 26, 2016) (citing Clicks Billiards, 16 Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1259 (9th Cir. 2001)). “[A] mark is inherently 17 distinctive if ‘[its] intrinsic nature serves to identify a particular source.’” Wal-mart Stores, 18 529 U.S. at 210 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)). 19 To determine whether trade dress for product packaging is inherently distinctive, the Ninth 20 Circuit applies the “Seabrook test,” which asks whether: “(1) the design or shape is a 21 common, basic shape or design; (2) it was unique or unusual in a particular field; and (3) Inherent Distinctiveness 22 23 24 25 26 27 28 2 At the time of the filing of the Complaint, Plaintiff owned Trademark Application Ser. No. 87746962, but the Court takes judicial notice of the fact that the mark has since issued. See https://tsdr.uspto.gov/#caseNumber=87746962&caseSearchType=US_APPLICATION&caseType=DEF AULT&searchType=statusSearch; see also In re Ex Parte Application of Jommi, No. C 13-80212 CRB (EDL), 2013 WL 6058201, at *2 (N.D. Cal. Nov. 15, 2013) (“A court may take judicial notice of public records of governmental entities and authoritative sources of foreign law, including information posted on government websites . . . .”) (citing Stevens v. Nkwo–Okere, Case No. 13–1974 HRL, 2013 U.S. Dist. LEXIS 122172, at *5 n.3 (Aug. 27, 2013); Sears v. Cnty. of Monterey, Case No. 11–1876 LHK, 2013 U.S. Dist. LEXIS 120401, at *12 (N.D. Cal. Aug. 22, 2013)). 7 18-CV-823 JLS (JLB) 1 it was a mere refinement of a commonly-adopted and well-known form of ornamentation 2 for a particular class of goods which consumers view as mere ornamentation.” Mattel, Inc. 3 v. MGA Entm’t, Inc., 782 F. Supp. 2d 911, 1004 (C.D. Cal. 2011) (quoting 1 McCarthy on 4 Trademarks and Unfair Competition § 8:13 (4th ed. 2010)). The Ninth Circuit emphasizes 5 that courts should “focus not on the individual elements, but rather on the overall visual 6 impression that the combination and arrangement of those elements create when assessing 7 trade dress.” Clicks Billiards, 251 F.3d at 1259. 8 Plaintiff bears the burden of proving distinctiveness as an element of its trade dress 9 claim. See Seirus Innovative Accessories, Inc. v. Gordini U.S.A. Inc., 849 F. Supp. 2d 963, 10 986 (S.D. Cal. 2012). Plaintiff contends that its product packaging is inherently distinctive 11 trade dress but fails to acknowledge, much less apply, the “Seabrook test.” See Mot. Mem. 12 at 6–7. Plaintiff asserts, without elaboration, that the “combination of text, images, color 13 and source identifying phrases” is inherently distinctive. See Mot. Mem. at 7; see also SOF 14 at 4. Plaintiff also provides a declaration of Victor Talavera, its president, stating that 15 “Plaintiff’s trade dress packaging is an inherently distinctive combination of text, images, 16 color and source identifying phrases” and that “Plaintiff’s copyrights in its packaging and 17 patents on its product help assure the distinctiveness and strength of its trade dress 18 packaging.” See Declaration of Victor Talavera (“Talavera Decl.,” ECF No. 111-3) ¶ 7. 19 Plaintiff’s product packaging consists of the following: a black, tan, and white color 20 scheme; the stylized word mark SPLIT-ENDER PRO in a tan color; the short phrase 21 “SNIPS THE ENDS, NOT THE LENGTH” in a lighter tan color; a large photo of the Split- 22 Ender Pro product; “TALAVERA” in gold with a circle around it; and a photograph of a 23 woman with long hair. See Mot. for Default J. Exs. A & B (ECF Nos. 111-4 & 111-5). 24 The packaging and arrangement of the elements as a whole seem to merely describe the 25 product, a hair tool, rather than the source, Talavera Hair Products, Inc. In addition, 26 Plaintiff fails to provide evidence that such packaging is at all unique in the hair tools 27 industry. See Solofill, LLC v. Rivera, No. CV1702956SJOAJWX, 2018 WL 6038287, at 28 *3 (C.D. Cal. Aug. 3, 2018) (“Plaintiff provides a laundry list of elements which it claims 8 18-CV-823 JLS (JLB) 1 compose its trade dress, yet these elements are, for the most part, entirely functional or 2 generic and, even in combination, are not ‘so unique, unusual or unexpected’ as to create 3 a clear presumption of origin.”). 4 Taking into account the various product packaging features such as the product 5 description, product name, slogan, and photographs as a whole, Plaintiff is still left with “a 6 fairly routine color scheme, graphic layout, and choice of font.” Spark Indus., LLC v. 7 Kretek Int’l, Inc., No. CV 14-5726-GW ASX, 2014 WL 4365736, at *8 (C.D. Cal. Aug. 8 28, 2014) (“[E]ven including features that ‘assist in describing the product [and] its 9 effective packaging’–like product shape, cartomizer display, and product descriptions– 10 [plaintiff] is left with a fairly routine color scheme, graphic layout, and choice of font.”). 11 Further, “the mere presence of a registered trademark as a component of the trade dress 12 [does not] render the broader trade dress inherently distinctive.” Solofill, 2018 WL 13 6038287, at *3. Here, based on the evidence presented by Plaintiff, Plaintiff’s product 14 packaging is “not the sort of arbitrary or uncommon trade dress that would qualify as 15 inherently distinctive.” Lanard Toys Ltd. v. Novelty, Inc., No. CV 05-8406CAS(JJX), 2007 16 WL 2439505, at *11 (C.D. Cal. Mar. 17, 2006) (holding that the product packaging for 17 toys, “including the [plaintiff’s] choice of colors, the placement of illustrations, product 18 name, and text on the packaging, the illustrations themselves, and the use of instructions 19 balloons[,]” was not inherently distinctive.). 20 21 Therefore, the Court finds that Plaintiff has failed to meet its burden in proving that its trade dress is inherently distinctive as a matter of law. 22 B. 23 “[A] mark has acquired distinctiveness, even if it is not inherently distinctive, if it 24 has developed secondary meaning.’” Clicks Billiards, 251 F.3d at 1262. “The trade dress 25 of a product or service attains secondary meaning when the purchasing public associates 26 the dress with a particular source.” Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 27 837, 843 (9th Cir. 1987) (citing First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 28 /// Acquired Distinctiveness 9 18-CV-823 JLS (JLB) 1 1383 (9th Cir. 1987)). “Whether a particular trade dress has acquired secondary meaning 2 is a question of fact.” First Brands, 908 F.2d at 1383. 3 A plaintiff can prove its trade dress has acquired distinctiveness through direct 4 evidence such as consumer surveys, or circumstantially through “exclusivity, manner, and 5 length of use of a mark; amount and manner of advertising, amount of sales and number of 6 customers, established place in the market, and proof of intentional copying by the 7 defendant.” Filipino Yellow Pages, Inc. v. Asian Journal Publ’n, Inc., 198 F.3d 1143, 1151 8 (9th Cir. 1999). In the Ninth Circuit, “deliberate copying may suffice to support an 9 inference of secondary meaning,” in certain circumstances. Fuddruckers, 826 F.2d at 844. 10 “The rule derives from the assumption that a defendant would not copy a mark or design 11 unless it (1) believed the mark or design had attained secondary meaning in the minds of 12 consumers, and (2) intended to exploit this secondary meaning to deceive consumers.” 13 Cont’l Lab. Prod., Inc. v. Medax Int’l, Inc., 114 F. Supp. 2d 992, 1008 (S.D. Cal. 2000) 14 (citations omitted). 15 Here, Plaintiff fails to provide any direct evidence of acquired distinctiveness or any 16 circumstantial evidence pertaining to the exclusivity, manner, and length of use of its trade 17 dress in its Motion or supporting evidence. See generally Mot. Mem.; Mot. for Default J.; 18 Compl. Regarding advertising, Plaintiff provides the following facts in its Complaint, 19 although Plaintiff makes no arguments in its Motion premised on these facts: Plaintiff 20 expends significant monetary resources on Internet marketing and consumer education, 21 including search engine optimization strategies; since at least 2003, Plaintiff’s Split-Ender 22 product was advertised on television in the United States and many countries throughout 23 the world through distributors; Plaintiff’s and third parties’ numerous videos regarding 24 Plaintiff’s Split-Ender product posted on the Internet, including Facebook and YouTube, 25 have 40 million views; and Plaintiff spends thousands or tens of thousands of dollars a 26 month on trade shows around the world. Compl. ¶¶ 60–61. However, evidence of 27 advertisements and promotional activities pertaining generally to a product does not 28 demonstrate that its packaging has acquired distinctiveness. See Walker & Zanger, Inc. v. 10 18-CV-823 JLS (JLB) 1 Paragon Indus., Inc., 549 F. Supp. 2d 1168, 1180 (N.D. Cal. 2007) (“[A]dvertising must 2 direct the consumer to those features claimed as trade dress; merely ‘featuring’ the relevant 3 aspect of the product does not suffice.”); First Brands, 809 F.2d at 1383 (“[P]romotional 4 activities must involve ‘image advertising,’ that is, the ads must feature in some way the 5 trade dress itself. Otherwise, even evidence of extensive advertising or other promotional 6 efforts would not necessarily indicate that prospective buyers would associate the trade 7 dress with a particular source.”) (citations omitted); see also Carter-Wallace, Inc. v. 8 Procter & Gamble Co., 434 F.2d 794, 800 (9th Cir. 1970) (upholding the district court’s 9 finding that the plaintiff’s “advertising campaign ha[d] not stressed the color and shape of 10 [plaintiff’s] antifreeze jug so as to support an inference of secondary meaning”). Finally, 11 regarding sales, although Plaintiff states it has sold goods all over the United States and 12 many countries since at least 2003, see, e.g., Compl. ¶¶ 15, 61(c), and provides the price at 13 which its product was previously and is currently sold, see Talavara Decl. ¶¶ 18–19, 14 Plaintiff has failed to provide evidence of actual sales numbers or use of its alleged trade 15 dress associated with any of these sales. See generally Mot. Mem.; Mot. for Default J.; 16 Compl. 17 Rather, Plaintiff contends that Defendant’s allegedly intentional copying proves that 18 Plaintiff’s trade dress has acquired distinctiveness. See Mot. Mem. at 8–9; Compl. ¶ 65(g). 19 However, because the allegedly infringing packaging prominently displays the marks 20 FASIZ, UMATE, LESCOLOTON, and HAIR TRIMMER, any inference of acquired 21 distinctiveness by Defendant’s copying is diminished. 22 4365736, at *11 (“[C]ourts have held that prominent display of defendant’s mark refutes 23 an inference that the defendant copied the plaintiff’s trade dress in order to capitalize on its 24 secondary meaning.”). In addition, rather than providing direct evidence of intentional 25 copying, Plaintiff contends that the near word-for-word copying on the package, as well as 26 the placement of text, images, and identical slogans as a whole, provides circumstantial 27 evidence of intentional copying. See Talavera Decl. ¶¶ 9–11. Plaintiff also relies on 28 Uniden Corp. of Am. v. Unipacific Corp., No. 83-2792, 1983 WL 44363 (C.D. Cal. Aug. See Spark Indus., 2014 WL 11 18-CV-823 JLS (JLB) 1 2, 1983), where the court found that the plaintiff’s trade dress had acquired distinctiveness 2 through evidence of deliberate and close copying, plaintiff’s extensive advertising 3 featuring the trade dress, and plaintiff’s “tremendous sales.” Mot. Mem. at 8 (citing Uniden 4 Corp. of Am., 1983 WL 44363, at *7). Unlike Uniden, however, Plaintiff fails to provide 5 evidence of any advertising featuring its packaging or concrete evidence of sales and 6 instead solely relies on circumstantial evidence of intentional copying. Therefore, the 7 Court finds, on the evidence presently before it, that Plaintiff has not met its burden in 8 establishing that its trade dress has acquired distinctiveness. 9 Because Plaintiff has not proven as a matter of law that the product packaging is 10 protectable trade dress, the Court will not proceed to analyze whether the packaging is non- 11 functional or whether there is a likelihood of confusion with the allegedly infringing trade 12 dress. Rather, the Court DENIES Plaintiff’s request for partial summary judgment as to 13 trade dress infringement. 14 III. Patent Infringement 15 Regarding direct infringement, the Patent Act provides: “whoever without authority 16 makes, uses, offers to sell, or sells any patented invention, within the United States or 17 imports into the United States any patented invention during the term of the patent therefor, 18 infringes the patent.” 35 U.S.C. § 271(a). An “issued patent carries with it a presumption 19 of validity under 35 U.S.C. § 282.” Tinnus Enters. LLC. v. Telebrands Corp., 846 F.3d 20 1190, 1205 (Fed. Cir. 2017). 21 A. 22 Plaintiff owns the following patents for its Split-Ender® product: U.S. Patent No. 23 6,588,108, issued July 8, 2003, titled “HAIR TRIMMING DEVICE WITH 24 REMOVABLY MOUNTABLE COMPONENTS FOR REMOVAL OF SPLIT ENDS 25 AND STYLING OF HAIR” (the “’108 Patent”); U.S. Patent No. 7,040,021, issued May 9, 26 2006, titled “HAIR TRIMMING DEVICE WITH REMOVABLY MOUNTABLE 27 COMPONENTS FOR REMOVAL OF SPLIT ENDS AND STYLING OF HAIR” (the 28 “’021 Patent”); and U.S. Patent No. 9,587,811, issued May 9, 2006, titled “HAIR Validity of the Patents 12 18-CV-823 JLS (JLB) 1 TRIMMING DEVICE” (the “’811 Patent”). See Compl. Ex. 5 (ECF No. 1-7); see also 2 SOF at 5. Here, no defendant has raised a challenge to the validity of the patent, and 3 consequently, the Court concludes as a matter of law that Plaintiff’s unexpired ’108, ’021, 4 and ’811 Patents are valid and enforceable. 5 B. 6 “Determining patent infringement requires that the court determine whether 7 someone (1) without authority (2) makes, uses, offers to sell, sells, or imports (3) the 8 patented invention (4) within the United States, its territories, or its possessions (5) during 9 the term of the patent.” Van Well Nursery, Inc. v. Mony Life Ins. Co., 421 F. Supp. 2d 10 1321, 1334 (E.D. Wash. 2006) (citing 35 U.S.C. § 271(a); Cyrix Corp. v. Intel Corp., 77 11 F.3d 1381 (Fed. Cir. 1996)). Infringement 12 Plaintiff alleges that the “FASIZ, LESCOLTON, UMATE and HAIR TRIMMER 13 marked electric hair trimmers are the same in all material respects,” and “only the product 14 name, color and/or design on handle grip (lines or dots) differ between the infringing 15 devices.” Compl. ¶ 81. Plaintiff provides the Declaration of Patent Expert Ben Esplin 16 (“Esplin Decl.,” ECF No. 111-12), supported by separate detailed infringement charts for 17 Plaintiff’s ’108, ’021, and ’811 Patents that set forth the text of the patent claim compared 18 with annotated images of the allegedly infringing products, see id. Exs. 2–13. 19 After thorough review of the evidence provided, the Court concludes that Plaintiff 20 has sustained its burden in proving that the FASIZ, LESCOLTON, UMATE and HAIR 21 TRIMMER marked products each infringe Plaintiff’s ’021, ’108, and ’811 Patents. 22 Accordingly, the Court GRANTS partial summary judgment in favor of Plaintiff on 23 Plaintiff’s fourth cause of action for patent infringement. There is no genuine issue of 24 material fact that the FASIZ, LESCOLTON, UMATE and HAIR TRIMMER marked 25 products infringe Plaintiff’s patents. 26 IV. Defendant’s Trademark Registration “FASIZ” 27 Finally, Defendant asks the Court to grant partial summary judgment that Defendant 28 owns trademark registrations for the mark “FASIZ.” Mot. Mem. at 11. It is undisputed 13 18-CV-823 JLS (JLB) 1 that Plaintiff owns registered trademarks in the mark “FASIZ.” See Mot. Mem. Exs. 6–10 2 (ECF Nos. 107-6–10) (showing that Defendant has protection for the mark “FASIZ” in, 3 inter alia, Australia, Belarus, Brazil, China, Colombia, the European Union, Japan, Korea, 4 New Zealand, Russia, Singapore, Ukraine, the United Kingdom, and the United States). 3 5 Therefore, the Court GRANTS partial summary judgment that Defendant owns trademark 6 registrations for the mark “FASIZ” in, inter alia, the United States and Brazil. 7 CONCLUSION 8 For the foregoing reasons, the Court GRANTS Plaintiff’s Motion for Partial 9 Summary Judgment (ECF No. 107) as to copyright infringement and patent infringement. 10 The Court DENIES Plaintiff’s Motion as to trade dress infringement. Finally, the Court 11 GRANTS Plaintiff’s Motion as to Defendant’s ownership of trademark registrations for 12 the mark “FASIZ.” 13 14 IT IS SO ORDERED. Dated: March 4, 2021 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 Again, “[a] court may take judicial notice of public records of governmental entities and authoritative sources of foreign law, including information posted on government websites, and may also take notice of undisputed information on a private entity’s website.” In re Ex Parte Application of Jommi, 2013 WL 6058201, at *2. Accordingly, in the absence of any objection from Defendant as to the authenticity of these trademark registrations, the Court takes judicial notice of these records. 14 18-CV-823 JLS (JLB)

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