Gibson Brands Inc v. John Hornby Skewes & Co. Ltd et al

Filing 270

AMENDED ORDER RE: CROSS-MOTIONS FOR SUMMARY JUDGMENT 146 , 147 , 148 by Judge Dean D. Pregerson: The Court DENIES JHSs Motion for Summary Judgment on the Affirmative Defenses of Acquiescence and Laches. Further, the Court GRANTS IN PART and DENIES IN PART JHSs Motion for Summary Judgment on Counts II, V, and VII of the Complaint, Likelihood of Confusion on All Claims and Lack of Secondary Meaning. Specifically, the court GRANTS JHS summary judgment on Count II of Gibsons Complaint and DISMISSES Count VII of Gibsons Complaint. Finally, the court DENIES Gibsons Motion for Summary Judgment. (lc) Modified on 12/29/2016 (lc). Modified on 12/29/2016, (lc).

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1 2 O 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 GIBSON BRANDS, INC., a Delaware corporation, 12 Plaintiff, 13 v. 14 15 JOHN HORNBY SKEWES & CO. LTD., 16 Defendants. ___________________________ 17 18 ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. CV 14-00609 DDP (SSx) AMENDED ORDER RE: CROSS-MOTIONS FOR SUMMARY JUDGMENT [Dkts. 146, 147, 148] 19 20 Presently before the court are: (1) Plaintiff Gibson Brands’ 21 (“Gibson”) Motion for Summary Judgment; (2) Defendant John Hornby 22 Skewes & Co. Ltd.’s (“JHS”) Motion for Partial Summary Judgment on 23 the Affirmative Defenses of Acquiescence and Laches; and (3) 24 Defendant JHS’s Motion for Partial Summary Judgment on Counts II, 25 V, and VII of the Complaint, Likelihood of Confusion on All Claims 26 and Lack of Secondary Meaning. After considering the parties’ 27 28 1 submissions and hearing oral argument, the court enters the 2 following Order.1 3 4 5 I. BACKGROUND As set forth more fully in the court’s previous Order, this 6 case arises out of a trademark dispute between Gibson and JHS. (See 7 Dkts. 16, 29, 57, 67, 72, 88, 106, 141.) Both Gibson and JHS are 8 manufacturers of musical instruments, including electric guitars. 9 (See Decl. Dennis Drumm ¶ 3; Compl. ¶¶ 10-15.) Gibson is a United 10 States-based manufacturer, which has registered several trademarks 11 on guitar body shapes and headstocks, including the “SG Body Shape 12 Design,” “Explorer Body Shape Design,” “ES Body Shape Design,” 13 “Flying V Body Shape Design,” “Flying V Peghead Design,” and the 14 “Kramer Peghead Design” (collectively “Gibson Marks”). (Compl. ¶¶ 15 10-15; Exs. A-F.) JHS is a United Kingdom-based manufacturer that 16 began selling guitars in the U.S. in 2006.2 Gibson’s suit alleges 17 that certain guitars sold by JHS infringe on the Gibson Marks and 18 violate Gibson’s rights under federal and state trademark law, 19 false advertising law, and unfair competition law. (See generally, 20 Compl.) While the parties do not agree on the precise number of 21 allegedly infringing guitars at issue, Gibson’s most recent filing 22 estimates that there are at least 300 such guitars. (Pl. Mot. Summ. 23 J. 24.) Gibson now seeks summary judgment on all issues and JHS 24 1 25 26 27 28 This Order hereby vacates and supercedes the court's Order Re: Cross-Motions for Summary Judgment issued September 29, 2016. 2 According to JHS’s most recent filings, the company began selling guitars in the U.S. in 2006. (See Drumm Decl., Dkt. 147 at 2, 6.) Earlier, the company had represented that it began selling guitars in the U.S. in 2010. (See Dumm Dep. at 21:5-10, attached as Ex. Y to Shuettinger Decl.) 2 1 seeks partial summary judgment on Counts II, V, and VII of Gibson’s 2 Complaint as well as on the affirmative defense of laches or 3 acquiescence as to claims arising out of one of Gibson’s patents. 4 Rather than recount the lengthy factual and procedural history of 5 this case in full, the court will address additional background 6 only as needed to resolve the pending motions. 7 II. LEGAL STANDARD 8 9 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.” Fed. R. Civ. P. 56(a). A party 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. See Celotex Corp. v. 17 Catrett, 477 U.S. 317, 323 (1986). All reasonable inferences from 18 the evidence must be drawn in favor of the nonmoving party. See 19 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242 (1986). If the 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 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. Summary judgment is warranted if a party 28 “fails to make a showing sufficient to establish the existence of 3 1 an element essential to that party’s case, and on which that party 2 will bear the burden of proof at trial.” Celotex, 477 U.S. at 322. 3 A genuine issue exists if “the evidence is such that a reasonable 4 jury could return a verdict for the nonmoving party,” and material 5 facts are those “that might affect the outcome of the suit under 6 the governing law.” Anderson, 477 U.S. at 248. 7 issue of fact “[w]here the record taken as a whole could not lead a 8 rational trier of fact to find for the nonmoving party.” Matsushita 9 Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). There is no genuine 10 It is not the court’s task “to scour the record in search of a 11 genuine issue of triable fact.” Keenan v. Allan, 91 F.3d 1275, 1278 12 (9th Cir. 1996). Counsel has an obligation to lay out their support 13 clearly. 14 (9th Cir. 2001). The court “need not examine the entire file for 15 evidence establishing a genuine issue of fact, where the evidence 16 is not set forth in the opposition papers with adequate references 17 so that it could conveniently be found.” Id. 18 III. DISCUSSION Carmen v. San Francisco Sch. Dist., 237 F.3d 1026, 1031 19 A. 20 Before addressing the parties’ cross-motions for summary JHS’s Affirmative Defenses: Laches and Acquiescence 21 judgment on Gibson’s claims, the court first considers JHS’s 22 affirmative defenses of acquiescence and laches with regards to 23 claims arising from Gibson’s U.S. Trademark Registration No. 24 2,215,791, also known as the “SG Body Shape” or the “‘791 Body 25 Shape.” (Compl. ¶ 1, Ex. A.) 26 issue is that Gibson not only waited more than nine years to bring 27 suit against JHS for producing an allegedly infringing guitar, it 28 also approved JHS’s use of the SG Body Shape. Gibson disputes any The crux of JHS’s argument on this 4 1 such agreement and notes that the pertinent discussions concerned 2 JHS’s activities in the United Kingdom and took place long before 3 JHS began doing business in the United States. The relevant facts 4 are as follows. 5 In 1994, Gibson and JHS entered into an agreement, which 6 allowed JHS to sell guitars that utilized a certain single cutaway 7 body shape, not at issue in this case (the “Les Paul Body Shape”), 8 with Gibson’s consent. (Drumm Decl. ¶¶ 7,8, Ex. A.) In 2004, 9 however, JHS received a cease-and-desist letter from Gibson’s 10 attorneys asking JHS to stop producing guitars that infringe on 11 Gibson’s Les Paul and SG trademarks. (Drumm Decl., Ex. B.) JHS 12 responded to the letter by reminding Gibson about the previously 13 negotiated agreement regarding the single cutaway Les Paul shape. 14 (Drumm Decl., Ex. C.) With regard to the double cutaway shape, 15 which Gibson claimed infringed on the SG Body Shape, JHS explained 16 that it “incorporate[d] significant detail changes” to avoid 17 confusion with Gibson’s guitars and noted that Gibson “holds no UK 18 registration” on the SG Body Shape. (Id.) Nonetheless, JHS 19 concluded that it was “willing to consider [Gibson’s] suggestions, 20 for detail revisions to our design of our double cutaway model . . 21 . to enable your client to be satisfied with the difference between 22 our unique design and your clients unregistered designs and marks.” 23 (Id.) Taking up JHS’s request for suggestions, Gibson replied that 24 “[o]thers have typically exaggerated the asymmetrical nature of the 25 design by lifting the lower left portion of the guitar and 26 extending the upper left horn on the guitar.” (Drumm Decl., Ex. D.) 27 28 In response to its correspondence with Gibson, JHS contends that it made the suggestions to the double cutaway body shape 5 1 (called the “VS6" by JHS). On December 15, 2004, JHS received 2 another letter from Gibson, which stated: 3 6 On your double cutaway, in the past you said that you made changes to distinguish it from Gibson’s SG BODY SHAPE. We assume that you mean your LVS6 with the exaggerated horn. However, your VS6 is not as distinctive. Therefore, Gibson requests that you exaggerate the horn on the VS6 series in the same manner as the LVS6. (Drumm Decl., Ex. E at 7.) On December 21, 2004, JHS wrote back to 7 Gibson explaining: 8 11 With regard to our guitars Model Nos. VS6 and LVS6, we are confident there is no confusion in the marketplace. . . . the VS6/LVS6 horn shapes are mirror images of one another and the “exaggerated” horn is used on both right-handed and left-handed models. Perhaps the website images do not clearly show this – but it is factual.” (Drumm Decl., Ex. G.) Neither party has stated that there was any 12 follow-up to this final message. At some point after this exchange, 13 JHS began selling guitars with the SG Body Shape in the United 14 States. (Drumm Decl. ¶ 6.) On January 27, 2014, Gibson initiated 15 this lawsuit against JHS, including its claims arising from the SG 16 Body Shape trademark. JHS contends that it reasonably relied on 17 Gibson’s 2004 correspondence as an “active representation” that 18 JHS’s VS6 guitar did not infringe on the SG Body Shape trademark, 19 and that it is entitled to summary judgment on an affirmative 20 defense of laches or acquiescence to any claims Gibson now brings 21 relying on this particular mark. (JHS Mot. Summ. J. Aff. Def. 3.) 4 5 9 10 22 1. Laches 23 “‘Laches is an equitable time limitation on a party's right to 24 bring suit,’ resting on the maxim that ‘one who seeks the help of a 25 court of equity must not sleep on his rights.’” Jarrow Formulas, 26 Inc. v. Nutrition Now, Inc., 304 F.3d 829, 835 (9th Cir. 2002) 27 (citations omitted). Defendants who assert laches must prove that 28 “(1) [Plaintiff’s] delay in filing suit was unreasonable, and (2) 6 1 [Defendants] would suffer prejudice caused by the delay if the suit 2 were to continue.” Id. at 838. “The limitations period for laches 3 starts ‘from the time the plaintiff knew or should have known about 4 its potential cause of action.’” 5 Tillamook Cnty. Creamery Ass'n, 465 F.3d 1102, 1108 (9th Cir. 2006) 6 (citation omitted). 7 Tillamook Country Smoker, Inc. v. JHS argues that it is entitled to summary judgment on its 8 laches defense as to the SG Body Shape because Gibson waited more 9 than nine years to bring a lawsuit. According to JHS, Gibson first 10 became aware of JHS’s potential infringement on April 20, 2004, 11 when Gibson sent a letter asserting that JHS guitars infringed on 12 the SG Body Shape trademark that Gibson had registered in the 13 United States. (JHS Mot. Summ. J. Aff. Def. 11.) It did not 14 initiate the instant litigation, however, until January 27, 2014. 15 (Id.; see generally Compl.) Typically, the presumption of laches is 16 triggered when a suit is brought outside the statute of 17 limitations. See Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 18 F.3d 829, 837 (9th Cir. 2002). The Ninth Circuit has “considered 19 both the three-year limitations period for fraud as provided in 20 California Civil Procedure Code § 338(d), and the four-year 21 limitations period for California trademark infringement as 22 provided in California Business and Professions Code § 17208, to be 23 analogous limitations periods for Lanham Act claims.” Derek & 24 Constance Lee Corp. v. Kim Seng Co., 391 Fed. Appx. 627, 628 n. 1 25 (9th Cir. 2010). In this case, given that Gibson waited at least 26 five years past the relevant statute of limitations, JHS argues 27 that the presumption of laches should apply. 28 7 1 Gibson responds that JHS’s laches defense is unavailing 2 because a court determining the start date of laches must “‘focus 3 on the conduct upon which the claimant bases its infringement 4 claim.’” (Opp’n JHS Mot. Summ. J. Aff. Def. 5 (quoting Tillamook 5 County Smoker, Inc. V. Tillamook County Creamer Ass’n, 311 F. Supp. 6 2d 1023, 1032 (D. Or. 2004), aff’d 465 F.3d 1102 (9th Cir. 2006)).) 7 In the present action, Gibson argues that the relevant date is not 8 when Gibson first contacted JHS about an allegedly infringing 9 guitar in 2004 but instead when JHS first sold those guitar in the 10 U.S. market, giving rise to a Lanham Act claim. (Opp’n JHS Mot. 11 Summ. J. Aff. Def. 5.) According to Gibson, it first learned that 12 JHS was selling guitars in the U.S., including those that allegedly 13 infringed on the SG Body Shape, in 2011 and it sent its first cease 14 and desist letter in December 2011. (See Mitchell Decl. ¶ 8.) From 15 there, Gibson took approximately two years to exchange letters with 16 JHS and conduct an investigation before filing suit in January 17 2014. 18 In its reply, JHS reasserts that the clock on Gibson bringing 19 any action related to the SG Body Shape began running in 2004 but 20 JHS does not contend that Gibson knew or should have known about 21 any U.S. sales of allegedly infringing guitars prior to 2011. (See 22 Reply JHS Mot. Summ. J. Aff. Def. 9-10.) While there continues to 23 be ambiguity about when precisely JHS began selling guitars in the 24 U.S., that is largely a result of JHS’s changing assertions about 25 its entry into the U.S. market. 26 Ex. A (2010) with Dkt. 129 (2007) and Dkt. 147, Drumm Decl. ¶6 27 (2006).) (Compare Schuettinger Laches Dec, 28 8 1 The timeline on a laches defense is calculated “from the time 2 the plaintiff knew or should have known about its potential cause 3 of action.” Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 4 829, 838 (9th Cir. 2002); see also ProFitness Physical Therapy 5 Center v. Pro-Fit Orthopedic and Sports Physical Therapy P.C., 314 6 F.3d 62, 70 (2d Cir.2002) (“[A] plaintiff should not be obligated 7 to sue until its right to protection has ripened such that 8 plaintiff knew or should have known . . . that [it] had a provable 9 infringement claim against defendant.”). Here, Gibson did not have 10 an actionable cause of action under trademark law until JHS began 11 importing guitars into the United States. Further, JHS has not 12 provided, nor has the court identified, any authority, which 13 suggests that laches in the trademark context begins to run when a 14 potentially infringing product is identified extraterritorially. To 15 the contrary, at least one court in this Circuit has denied a 16 similar laches claim in the copyright context. See Hearst Corp. v. 17 Stark, 639 F. Supp. 970, 981 (N.D. Cal. 1986). In Hearst Corp., 18 Plaintiffs brought suit alleging copyright violations of books that 19 were lawfully produced abroad and then imported into the United 20 States. Even though some of these books had early publications 21 dates, the court denied defenses of laches, estoppel, and statute 22 of limitations on the grounds that the clock did not start until 23 the “defendant imported those books into the United States.” Id. at 24 981 n.13. Likewise, the record in this case supports Gibson’s 25 contention that it did not know about its potential claim until 26 2011 and JHS presents no argument that Gibson reasonably should 27 have known about the potential infringement in the United States at 28 9 1 an earlier date. Thus, the court DENIES JHS’s Motion for Summary 2 Judgment as to its Affirmative Defense of Laches. 3 4 2. Acquiescence The elements of a prima facie case for acquiescence are: “(1) 5 the senior user actively represented that it would not assert a 6 right or a claim; (2) the delay between the active representation 7 and assertion of the right or claim was not excusable; and (3) the 8 delay caused the defendant undue prejudice.” Seller Agency Council, 9 Inc. v. Kennedy Ctr. for Real Estate Educ., Inc., 621 F.3d 981, 989 10 (9th Cir. 2010). Some courts have elaborated on this standard to 11 explain that “‘[e]stoppel by acquiescence includes the two elements 12 of laches . . . and adds (3) affirmative conduct inducing the 13 belief that [the plaintiff] has abandoned its claim against the 14 alleged infringer, and (4) detrimental reliance by infringer.’” 15 AirWair Int’l Ltd. v. Schultz, 84 F. Supp. 3d 943, 956 (N.D. Cal. 16 2015) (quoting E & J Gallo Winery v. Pasatiempos Gallo, S.A., 905 17 F. Supp. 1403, 1414 (E.D. Cal.1994)). 18 As with the laches defense, JHS’s acquiescence defense turns 19 on a difference of interpretation regarding the 2004 correspondence 20 and JHS’s subsequent sale of guitars in the United States. 21 According to JHS, the first prong of an acquiescence defense was 22 satisfied because the 2004 exchange constituted an active 23 representation that Gibson would not assert its SG Body Shape 24 trademark against JHS for producing the VS6 model guitars. (JHS 25 Mot. Summ. J. Aff. Def. 6.) The second element was satisfied 26 because Gibson waited nine years between making that representation 27 and bringing an action against JHS and the third element was 28 10 1 satisfied because JHS relied on Gibson’s representations when it 2 made its decision to sell its guitars on the United States. 3 Gibson challenges the acquiescence defense by arguing that the 4 2004 exchange cannot reasonably be understood as a representation 5 that Gibson would not assert its trademark rights against JHS, 6 especially not if JHS began selling guitars in the United States. 7 (Opp’n JHS Mot. Summ. J. Aff. Def. 9.) As the record confirms, the 8 correspondence addresses only extraterritorial sales, as JHS did 9 not sell any guitars in the U.S. in 2004. (See Drumm Decl., Exs. A, 10 E.) Without opining on what Gibson’s silence at the conclusion of 11 the 2004 exchange might mean for JHS’s UK sales of the VS6, the 12 court finds that it cannot be understood as a blanket concession 13 that JHS’s guitar did not infringe on Gibson’s trademark nor can it 14 be interpreted as consenting to JHS doing business in the United 15 States where Gibson had potentially actionable trademark rights. A 16 party might decline to litigate extraterritorial trademark 17 violations for any number of reasons, while still intending to 18 prosecute any claim that might arise in the domestic context. But 19 even assuming that JHS reasonably relied on the 2004 exchange, the 20 acquiescence defense fails at the second prong for substantially 21 similar reasons as the laches defense. The second prong asks 22 whether there was an inexcusable “delay between the active 23 representation and assertion of the right or claim.” Seller Agency 24 Council, 621 F.3d at 989. As discussed above, notwithstanding any 25 representation Gibson may have made, it prosecuted its trademark 26 claim within a reasonable period of time from learning of any 27 potentially actionable conduct by JHS. Thus, the court also DENIES 28 11 1 JHS’s Motion for Summary Judgment on its affirmative defense of 2 acquiescence. 3 B. 4 Both parties have filed cross-motions for summary judgment on Cross-Motions for Summary Judgment on Gibson’s Complaint 5 the substantive allegations in Gibson’s complaint. Specifically, 6 JHS seeks summary judgment on Count II, V, and VII of the Complaint 7 and on the issues of likelihood of confusion and lack of secondary 8 meaning. (See Dkt. 146.) Gibson seeks summary judgment on all 9 claims. (See Dkt. 148.) 10 11 1. Count II: Trademark Counterfeiting Claim Count II of Gibson’s Complaint alleges that JHS intentionally 12 used a counterfeit of the Gibson Trademarks in commerce, knowing 13 that the marks were a counterfeit. (Compl. ¶¶ 38-40.) JHS contends 14 that it is entitled to judgment as a matter of law on the 15 counterfeiting count because every JHS guitar prominently displays 16 a brand name of JHS and all advertising and packaging state that 17 the guitars emanate from JHS. (Def. Mot. Summ. J. 5.) 18 The Lanham Act prohibits a counterfeit mark from being used 19 “in connection with the sale, offering for sale, or distribution of 20 goods or services.” 15 U.S.C. § 1116(d)(1)(A). The Act defines a 21 counterfeit mark as “a spurious mark which is identical with, or 22 substantially indistinguishable from, a registered mark.” Id. 23 § 1127. As one district court has explained, “counterfeiting is the 24 ‘hard core’ or ‘first degree’ of trademark infringement that seeks 25 to trick the consumer into believing he or she is getting the 26 genuine article, rather than a ‘colorable imitation.’” Gucci Am., 27 Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 242 (S.D.N.Y. 2012) 28 12 1 (citing 4 McCarthy on Trademarks § 25:10); see also McCarthy, § 2 25.01[5][b] (“[T]he Lanham Act carves out ‘counterfeit’ as a more 3 egregious type of ‘colorable imitation.’ When courts have used the 4 term ‘counterfeit,’ it has usually been in the context of invoking 5 greater discretionary remedies.”). 6 For purposes of resolving Gibson’s counterfeiting claim, the 7 operative question is whether JHS uses marks that are “identical” 8 or “substantially indistinguishable” from Gibson’s marks. “The 9 caselaw on what is required to plead identicality in a 10 counterfeiting claim is understandably thin, as the majority of 11 counterfeiting cases involve obviously identical marks.” Adams v. 12 Grand Slam Club/Ovis, No. 12-CV-2938-WJM-BNB, 2013 WL 1444335, at 13 *6 (D. Colo. Apr. 9, 2013) (collecting cases); see, e.g., Idaho 14 Potato Commn v. G&T Terminal Packaging, Inc., 425 F.3d 708, 721 15 (9th Cir. 2005) (affirming a finding of counterfeiting where 16 defendant purchased empty potato bags containing plaintiff’s marks 17 and then packaged their own potatoes into those bags). At least one 18 court reviewing the case law has concluded that “courts have 19 uniformly applied this provision to products that are 20 stitch-for-stitch copies of those of another brand.” Gucci Am., 868 21 F. Supp. 2d at 242. The Ninth Circuit has explained that a 22 “counterfeit is something that purports to be something that it is 23 not.” United Pac. Ins. Co. v. Idaho First Nat. Bank, 378 F.2d 62, 24 69 (9th Cir. 1967). 25 JHS argues that, as a matter of law, it cannot be held liable 26 for counterfeiting Gibson’s marks because every allegedly 27 infringing guitar (i.e., guitars that are comprised of either an 28 allegedly infringing body shape or headstock) bears the JHS trade 13 1 name, and there is no evidence that they are counterfeits of the 2 Gibson body shapes or headstocks. (Def. Mot. Summ. J. 6.) In 3 support, JHS notes that a guitar is typically identified by the 4 name on the guitar. (Defs Oppn Pl. Mot. Summ. J. 1.) JHS also 5 identified evidence from Gibson’s own representatives and experts 6 that confirm the view that a Gibson guitar is not identified solely 7 by its shape. (See Dep. Walter Carter, attached to Davis Decl. Ex. 8 1, at 117:9-117: 10 (“If you want to know who made a guitar, you 9 should look at the name that’s on the guitar. That’s common 10 sense.”); Deposition of Gibson Brands, Inc., attached Davis Decl. 11 Ex. 2, at 63:11-14. (“I don’t know who manufactured this guitar. 12 It’s a Gibson body shape, certainly, but as we can’t see anything 13 else, I can’t tell you for certain who made that guitar.”).) In 14 this case, JHS explains, every guitar headstock was printed with 15 the JHS trade name-the word “Vintage” in a stylized font–on the 16 front and the JHS trademark-“Vintage A John Hornby Skewes 17 Product”–on the back. (See Dkt. 177-5, Exs. 3, 4; Shuettinger Dec., 18 Ex. L.). Thus, JHS contends there can be no genuine dispute that 19 the guitars were counterfeits of Gibson guitars. (Def.’s Opp’n 20 Pl.’s Mot. Summ J. 5-6.). 21 Gibson contends that the word “Vintage,” stylized or not, 22 cannot serve to defeat the counterfeiting claim because a 23 reasonable consumer could still find that a JHS guitar bodyshape or 24 headstock was identical or substantially indistinguishable from a 25 Gibson. (Pl.’s Oppn Def. Mot. Summ. J. 2.) This is because, in 26 Gibson’s view, the word “vintage” might be misunderstood as 27 indicating the age of a guitar rather than as a brand name or 28 source identifier. (Id.) In support, Gibson points to the testimony 14 1 of one of JHS’s own sales manager who stated that U.S. consumers 2 were confused by the trade name Vintage because they thought it 3 meant old and not that it was the guitar brand. (Shuettinger Dec., 4 Ex. A.) Gibson also details several other instances where 5 individuals were confused by the brand name Vintage and 6 misidentified a JHS guitar as a Gibson. (Pl.’s Opp’n Def. Mot. 7 Summ. J. 4.) 8 9 Furthermore, Gibson contends that the marking on the back of the guitars, which read “Vintage A John Hornby Skewes Product,” is 10 also inadequate to immunize JHS from a counterfeiting claim. Gibson 11 notes that the text is placed in a location where the consumer is 12 unlikely to see it and printed in a small font that is difficult to 13 read. (Id. 10.) Although appropriate labeling can defeat a 14 counterfeiting claim, Gibson points to a New York district 15 court decision granting summary judgment against a defendant that 16 produced counterfeit Tiffany rings even though the inside of the 17 ring was stamped with a non-Tiffany mark. Tiffany and Co. v. Costco 18 Wholesale Corp., 127 F. Supp. 3d 241, 255 (S.D.N.Y. 2015) (“Costco 19 has offered no evidence that the stamping of these rings with 20 generic marks has done anything to alleviate confusion; rather, at 21 least six customers who purchased these generically stamped rings 22 were confused as to their source.”). 23 Having reviewed the record submitted by the parties, and after 24 examining the various photographs of the guitars in question, the 25 court concludes that no reasonable jury could find that JHS used 26 counterfeit Gibson marks. Without determining the specific level of 27 similarity, if any, between the guitars, the court finds that the 28 body shapes and headstocks of the JHS guitars in question are not 15 1 identical or substantially indistinguishable from the Gibson body 2 shapes and headstocks. Aside from certain visual distinctions 3 between the headstocks and body shapes in question, as both JHS and 4 Gibson acknowledge, guitars are typically identified by the 5 branding on the headstock. To the extent that Gibson allegedly 6 relies on its body shape and headstock shape as a source 7 identifier, no rational jury could find that a particular body 8 shape or headstock stamped with a different guitar brand is a 9 counterfeit of a Gibson trademark. Here, JHS’s guitars are marked 10 with the “Vintage” branding on the front and the JHS trademark on 11 the back. Although marking of a different source indicator may not 12 always defeat a counterfeiting claim, Gibson has failed present 13 evidence that the Vintage marking in this case does not nullify the 14 counterfeiting claim. As to Gibson’s contention regarding the 15 ambiguity of the word “vintage,” the court concludes that even if a 16 consumer might read an advertisement of a “Vintage” guitar as 17 reference to an older guitar, it is implausible that a consumer 18 looking at a guitar would understand the stylized Vintage logo to 19 be an indicator of the guitar’s age rather than a brand name. 20 Admittedly, there are situations where an inconspicious 21 disclaimer might be insufficient to immunize a defendant from a 22 counterfeiting claim regarding a trademark of a particular design 23 or shape of a product. But those situations “must, at the very 24 least, [ ] be closer than the traditional standard for 25 infringement, ‘colorable imitation.’” Tiffany, 127 F. Supp. 3d at 26 254. For instance, in Tiffany, Costco sold rings that were 27 essentially copies of Tiffany’s in a glass case that was marked 28 with the actual Tiffany trademark. Id. at 255. The only effort to 16 1 distinguish the imitations was a small generic mark on the inside 2 of the ring. Id. Given those circumstances, the court granted 3 summary judgment noting that “[t]here is no statutory requirement 4 that the counterfeit mark be placed on the product itself.” Id. The 5 evidence here does not rise to that level. To find that anything 6 less than an “identical” or “substantially indistinguishable” 7 product can give rise to a counterfeit claim would risk rendering 8 “all trademark infringement claims . . . counterfeiting claims,” 9 and, along with it, open up the wider range of statutory penalties 10 and remedies. Adams, 2013 WL 1444335 at *7. Accordingly, the court 11 GRANTS JHS summary judgment on Count II of Gibson’s Complaint for 12 counterfeiting and DENIES Gibson’s cross-motion for summary 13 judgment on the counterfeiting claim. 14 C. 15 Count VII of Gibson’s Complaint alleges trademark dilution Count VII: Trademark Dilution under California State Law 16 under California Business and Professions Code section 14330. JHS 17 argues that it is entitled to summary judgment on this count 18 because section 14330 was repealed in 2007, six years prior to when 19 Gibson filed this action. Gibson responds that it is not required 20 to name any statute in its Complaint and that, even if it 21 misidentified the statutory basis for relief, its allegations 22 instead satisfy the requirements for stating a similar claim under 23 section 14247. 24 This Court is not the first to address whether a claim under 25 section 14330 can survive despite the statute’s repeal. The typical 26 course has been to dismiss the claim. See, e.g., Penpower Tech. 27 Ltd. v. S.P.C. Tech., 627 F. Supp. 2d 1083, 1090 (N.D. Cal. 2008) 28 (quoting People v. One 1986 Toyota Pickup, 31 Cal. App. 4th 254, 17 1 262 (Ct. App. 1995) (dismissing section 14330 claim and noting that 2 “‘The repeal of a statute creating a penalty, running either to an 3 individual or the state, at any time before final judgment, 4 extinguishes the right to recover the penalty.’”); see also Emeco 5 Indus., Inc. v. Restoration Hardware, Inc., No. C-12-5072 MMC, 2012 6 WL 6087329, at *3 (N.D. Cal. Dec. 6, 2012) (dismissing section 7 14330 claim even though Plaintiff urged the court to evaluate the 8 arguments under section 14427 in the alternative); Brown v. Green, 9 No. C 12-2113 DMR, 2012 WL 4120379, at *6 (N.D. Cal. Sept. 18, 10 2012) (dismissing section 14330 claim); but see Mattel, Inc. v. MGA 11 Entm’t, Inc., 782 F. Supp. 2d 911, 1011–12 (C.D. Cal. 2011) (noting 12 that the section 14330 claim fails and going to explain that, “[t]o 13 the extent MGA seeks to have its claim evaluated under Cal. Bus. & 14 Prof. Code § 14247,” the claim also fails). Here, the court 15 concludes that the most appropriate course is to follow the 16 majority of other district courts and dismiss Count VII of Gibson’s 17 Complaint. 18 D. 19 As to all remaining claims, having considered the admissible 20 record evidence, the court finds there are triable issues of fact 21 and DENIES the cross-motions for summary judgment. 22 IV. CONCLUSION Remaining Claims 23 For the reasons stated above, the court DENIES JHS’s Motion 24 for Summary Judgment on the Affirmative Defenses of Acquiescence 25 and Laches. Further, the Court GRANTS IN PART and DENIES IN PART 26 JHS’s Motion for Summary Judgment on Counts II, V, and VII of the 27 Complaint, Likelihood of Confusion on All Claims and Lack of 28 Secondary Meaning. Specifically, the court GRANTS JHS summary 18 1 judgment on Count II of Gibson’s Complaint and DISMISSES Count VII 2 of Gibson’s Complaint. Finally, the court DENIES Gibson’s Motion 3 for Summary Judgment. 4 5 6 IT IS SO ORDERED. 7 8 Dated: December 29, 2016 DEAN D. PREGERSON United States District Judge 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 19

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