Aecom Energy and Construction, Inc. v. John Ripley et al

Filing 242

ORDER REDACTED Re Motion For Summary Judgment by Judge Ronald S.W. Lew: (shb) Modified on 11/9/2018 (shb).

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1 O 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 12 AECOM ENERGY & CONSTRUCTION, INC., 13 Plaintiff, 14 15 16 17 18 19 20 21 22 ) ) ) ) ) ) v. ) ) ) JOHN RIPLEY; TODD HALE; ) GARY TOPOLEWSKI; HENRY ) BLUM; BUD ZUKALOFF; ) “MORRISON KNUDSEN ) CORPORATION;” “MORRISON) KNUDSEN COMPANY, INC.;” ) “MORRISON-KNUDSEN SERVICES, ) INC.;” and “MORRISON) KNUDSEN INTERNATIONAL ) INC.,” ) ) ) Defendants. ) CV 17-5398-RSWL-SSx REDACTED BY THE COURT ORDER re: Plaintiff’s Motion for Summary Judgment and for Permanent Injunction against Defendants Gary Topolewski; Morrison Knudsen Corporation; Morrison-Knudsen Company, Inc.; MorrisonKnudsen Services, Inc.; and Morrison-Knudsen International Inc. [157] 23 Currently before the Court is Plaintiff AECOM 24 Energy & Construction, Inc.’s (“Plaintiff”) Motion for 25 Summary Judgment and Permanent Injunction [157] 26 (“Motion”). Having reviewed all papers submitted 27 pertaining to this Motion, the Court NOW FINDS AND 28 1 1 RULES AS FOLLOWS: the Court GRANTS Plaintiff’s Motion 2 against Defendants Gary Topolewski, Morrison Knudsen 3 Corporation, Morrison-Knudsen Company, Inc., Morrison4 Knudsen Services, Inc., and Morrison-Knudsen 5 International Inc. 6 I. BACKGROUND 7 A. Factual Background 8 1. 9 Morrison Knudsen Corporation (“MK”) was a renowned Plaintiff’s Corporate History 10 multinational construction and engineering firm 11 responsible for many notable projects, including the 12 Hoover Dam, the San Francisco-Oakland Bay Bridge, and 13 the Trans-Alaska Pipeline. Pl.’s Statement of 14 Uncontroverted Facts (“Pl.’s SUF”) ¶ 3(b), ECF No. 173. 15 MK has used many trademarks including: “MORRISON 16 KNUDSEN,” the MKO logo, and “MKCO MORRISON KNUDSEN” 17 (collectively, the “MK Marks”). Id. ¶ 17(b). 18 Plaintiff maintained trademark registrations for the MK 19 Marks until February 2016, id. ¶ 17(b)-(c), and 20 continues to use MK’s logo and corporate history in 21 many of its current promotional materials. Id. ¶ 17 22 (listing exemplars); Decl. of Charles Szurgot (“Szurgot 23 Decl.”) ¶ 8, Exs. 1-7, ECF No. 175. 24 In 1996, MK merged with Washington Construction 25 Group, Inc. (“WGI”), while continuing to operate under 26 the name “Morrison Knudsen Corporation.” 27 ¶ 5. In 2000, MK changed its name to WGI. Szurgot Decl. Id. In 28 2007, URS Corp. (“URS”) acquired WGI, and in 2014, 2 1 AECOM, the parent company of Plaintiff AECOM Energy & 2 Construction, Inc., acquired URS and its subsidiaries. 3 Id. ¶¶ 6-7. 4 2. 5 Plaintiff alleges that, beginning in 2008, Defendants’ Use of MK Name 6 Defendants Gary Topolewski, Morrison Knudsen 7 Corporation, Morrison-Knudsen Company, Inc., Morrison8 Knudsen Services, Inc., and Morrison-Knudsen 9 International Inc., (collectively, the “Defendants”), 10 undertook an elaborate scheme to pass themselves off as 11 MK and take advantage of MK’s good reputation. Pl’s. 12 Mem. re Mot. for Summ. J. (“Mot.”) 4:8-9, ECF No. 172. 13 14 a. “Morrison-Knudsen Services, Inc.” Morrison-Knudsen Services, Inc. was an affiliate of 15 MK incorporated in Nevada in 1982 under a different 16 name, but changed its name to Morrison-Knudsen 17 Services, Inc. in 1983. Decl. of Diana M. Torres 18 (“Torres Decl.”) ¶ 19, ECF No. 174; id., Ex. Q, 19 Corporate Records of Morrison-Knudsen Services, Inc. 20 947-52, 954-55, ECF No. 174-17. In 2002, MK dissolved 21 Morrison-Knudsen Services, Inc. through its Vice 22 President and General Counsel. 23 Id., Ex. Q at 987-89. In 2008, defaulting Defendant Todd Hale1 filed a 24 Certificate of Revival with the Nevada Secretary of 25 State’s office for Morrison-Knudsen Services, Inc., 26 27 1 Default was entered by the Clerk against Defendant Todd 28 Hale, as well as Defendants Henry Blum, John Ripley and Bud Zukaloff, on December 4, 2017 [77]. 3 1 swearing under penalty of perjury that he had authority 2 to do so from the company’s board of directors. 3 Ex. Q at 990-93, ECF No. 174-17. Id., The Certificate of 4 Revival lists defaulting Defendant Henry Blum as Vice 5 President and defaulting Defendant John Ripley as 6 Secretary. Id., Ex. Q at 991. In 2008, Hale filed the 7 annual list of officers and directors listing Morrison8 Knudsen Services’ address as 2049 Century Park East, 9 Suite 3850, Los Angeles, California 90067. 10 at 996. Id., Ex. Q Around 2007 or 2008, Blum contacted Defendant 11 Topolewski about reviving “Morrison Knudsen.” 12 Decl. Ex. B, at 25:19-26:9, 27:5-6. Torres Defendant 13 Topolewski was later listed as President and Secretary 14 in 2010; Chairman in 2011; Chairman, Director, and 15 President in 2014; Secretary and Director in 2016; and 16 President, Secretary, and Director in 2017. Id., Ex. 17 Q, at 996-1005. 18 19 b. “Morrison Knudsen Corporation” MK incorporated Morrison Knudsen of Viet Nam (“MK 20 Viet Nam”) in 1996 and dissolved it in 2002. Torres 21 Decl. ¶ 20, Ex. R, Corporate Records of Morrison 22 Knudsen Corp. 1019-21, 1029-30, ECF No. 174-18. In 23 October 2014, Defendants Topolewski and Blum filed a 24 Certificate of Revival with the Nevada Secretary of 25 State, seeking to reinstate MK Viet Nam and declaring, 26 under penalty of perjury, that they had authority to do 27 so from MK Viet Nam’s board of directors. 28 35. Id. at 1033- The Certificate of Revival listed Defendant 4 1 Topolewski as President, Secretary, and Treasurer; 2 defaulting Defendant Blum as Vice President; and 3 defaulting Defendants Ripley and Hale as Directors. 4 Id. The address for each was listed as 2049 Century 5 Park East, Suite 3850, Los Angeles, California 90067. 6 Id. at 1033. 7 Later that month, after MK Viet Nam was revived, 8 Defendant Topolewski filed a Certificate of Amendment 9 with the Nevada Secretary of State to change the name 10 of MK Viet Nam to “Morrison Knudsen Corporation.” 11 at 1036. The annual list of officers filed on January 12 27, 2016 reflects the name change. 13 Id. c. Id. at 1037. “Morrison-Knudsen International Inc.” and “Morrison-Knudsen Company” 14 Plaintiff also alleges the names of two unrelated 15 entities, E Planet Communications, Inc. (“E Planet”) 16 and Westland Petroleum Corporation (“Westland”), were 17 changed to make them appear to be MK affiliates. Pl.’s 18 Mot. at 4:28-5:7. 19 First, E Planet was incorporated in Nevada in 2011. 20 Torres Decl. ¶ 21, Ex. S, Corporate Records of 21 Morrison-Knudsen Int’l Inc. 1050, ECF No. 174-19. As 22 of 2012, the company’s records listed Defendant 23 Topolewski as E Planet’s President and Secretary. Id. 24 In May 2016, defaulting Defendant Zukaloff filed a 25 Certificate of Amendment with the Nevada Secretary of 26 State to change the name of E Planet Communications, 27 Inc. to “Morrison-Knudsen International Inc.” 28 5 Id. at 1 1065. 2 Second, Westland was incorporated in Nevada in 1926 3 and fell out of good standing in 2013. Torres Decl. ¶ 4 22, Ex. T, Corporate Records for Morrison-Knudsen 5 Company, Inc., 1068-74, 1087-88, ECF No. 174-20. In 6 October 2016, John Anderson, listed as Vice President 7 of Westland, filed a Certificate of Reinstatement for 8 Westland with the Nevada Secretary of State. Torres 9 Decl. in Supp. Prelim. Inj. Ex. 4, 150-152, ECF No. 1910 4. The records listed Westland Petroleum’s address as 11 2049 Century Park East, Suite 3850, Los Angeles, 12 California 90067. Id. at 151. The Nevada Secretary of 13 State granted reinstatement sometime that month, and on 14 October 18, 2016, defaulting Defendant Ripley filed a 15 Certificate of Amendment with the Nevada Secretary of 16 State to change Westland’s name to “Morrison-Knudsen 17 Company, Inc.” 18 19 d. Id. Websites and Press Releases On March 25, 2008, Defendant Morrison Knudsen 20 Corporation registered the domain names www.morrison21 and 22 ¶¶ 9-10; id. Exs. E-F, Whois Record. Torres Decl. The website 23 contained promotions of MK’s history, current AECOM 24 projects, a current business relationship AECOM has 25 with a construction equipment maker, and the website 26 also offered to sell construction equipment used in 27 MK’s projects. See Pl.’s SUF ¶ 2(b),(f), ¶ 4(a)- 28 (b),(k)-(n). 6 1 “Morrison Knudsen” issued three press releases 2 claiming original MK projects and announcing: (1) on 3 March 16, 2016, “Morrison Knudsen Awarded $570 Million 4 Environmental Clean Up Project”; (2) on June 30, 2016, 5 “Morrison Knudsen Awarded $36 Million Mine Engineering 6 Contract”; and (3) on April 11, 2017, “Morrison Knudsen 7 awarded $1.2 Billion Construction and Engineering 8 Contract”. Torres Decl. ¶¶ 16-18, Exs. N-P, ECF Nos. 9 174-14, 174-15, 174-16. 10 3. Take Over of the MK Marks 11 On November 10, 2014, defaulting Defendant Hale 12 submitted a “change of address” form to the United 13 States Patent and Trademark Office (“USPTO”). Decl. of 14 Annette Bottaro-Walklet (“Walklet Decl.”) ¶ 6, ECF No. 15 14; id. Ex. F., ECF No. 14-1. The contact information 16 listed in the USPTO records for two of Plaintiff’s 17 registered trademarks (“MORRISON KNUDSEN” and “MKCO 18 MORRISON KNUDSEN”) was changed from Plaintiff’s 19 addresses, to Hale’s email address todd.hale@morrison20, and the physical address of 2049 Century 21 Park East, Suite 3850, Los Angeles, California 90067. 22 See Torres Decl. ¶ 23, Ex. U, USPTO Record, ECF No. 23 174-21. 24 On November 11, 2015, defaulting Defendant Zukaloff 25 submitted a document to the USPTO purporting to assign 26 the registered trademark “MKCO MORRISON KNUDSEN” from 27 Washington Group International (a previous name of 28 Plaintiff) to Defendant Morrison Knudsen Corporation, 7 1 listed at 2049 Century Park East, Suite 3850, Los 2 Angeles, California 90067. 3 Record, ECF No. 174-22. Id. ¶ 24, Ex. V, USPTO On March 26, 2016, Defendant 4 Morrison Knudsen Corporation filed a new application 5 with the USPTO to register the mark “MORRISON KNUDSEN,” 6 declaring under penalty of perjury that they owned the 7 mark and claiming a first-use date of April 18, 1933. 8 See id. Ex. W, ECF No. 174-23. 9 10 B. Procedural Background Plaintiff filed its Complaint [1] on July 21, 2017, 11 alleging the following claims: 12 1) False Designation of Origin 13 2) False Advertising 14 3) Cyberpiracy 15 4) California Common Law Unfair Competition 16 5) California Statutory Unfair Competition 17 6) California Statutory False Advertising 18 7) Petition for Cancellation of Registered Mark 19 Plaintiff filed a Motion for Preliminary Injunction 20 [11] on August 1, 2017. This Court granted Plaintiff’s 21 Motion for Preliminary Injunction [45] on September 28, 22 2017. The Clerk of Court entered default against 23 Defendants Todd Hale, Henry Blum, John Ripley, and Bud 24 Zukaloff [77] on December 4, 2017. 25 On July 24, 2018 Plaintiff filed the instant Motion 26 for Summary Judgment and Permanent Injunction [157] 27 against the remaining Defendants: Gary Topolewski; 28 Morrison Knudsen Corporation; Morrison-Knudsen Company, 8 1 Inc.; Morrison-Knudsen Services, Inc.; and Morrison2 Knudsen International Inc. The Court entered a joint 3 stipulation on July 31, 2018 [167], setting August 17, 4 2018, as Defendants’ deadline to file their Opposition. 5 Plaintiff filed a Response on August 20, 2018 [184], 6 claiming that its Motion should be granted because 7 Defendants failed to timely file their Opposition. 8 Defendants then filed a Memorandum of Good Cause for 9 its Late-Filed Opposition [186] on August 20, 2018, and 10 its Opposition [187] on August 21, 2018. Plaintiff 11 filed its Second Reply [201] in response to Defendants’ 12 Opposition on September 4, 2018. 13 II. DISCUSSION 14 A. Legal Standard 15 Federal Rule of Civil Procedure 56(a) states that a 16 “court shall grant summary judgment” when “the movant 17 shows that there is no genuine dispute as to any 18 material fact and the movant is entitled to judgment as 19 a matter of law.” Fed. R. Civ. P. 56(a). A fact is 20 “material” for purposes of summary judgment if it might 21 affect the outcome of the suit, and a “genuine” issue 22 exists if the evidence is such that a reasonable fact23 finder could return a verdict for the nonmovant. 24 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 25 (1986). The evidence, and any inferences based on 26 underlying facts, must be viewed in the light most 27 favorable to the nonmovant. Twentieth Century-Fox Film 28 Corp. v. MCA, Inc., 715 F.2d 1327, 1328-29 (9th Cir. 9 1 1983). In ruling on a motion for summary judgment, the 2 court’s function is not to weigh the evidence, but only 3 to determine if a genuine issue of material fact 4 exists. 5 Anderson, 477 U.S. at 255. Under Rule 56, the party moving for summary 6 judgment has the initial burden to show “no genuine 7 dispute as to any material fact.” Fed. R. Civ. P. 8 56(a); see Nissan Fire & Marine Ins. Co. v. Fritz Cos., 9 210 F.3d 1099, 1102-03 (9th Cir. 2000). The burden 10 then shifts to the non-moving party to produce 11 admissible evidence showing a triable issue of fact. 12 Nissan Fire & Marine Ins., 210 F.3d at 1102-03. 13 B. Discussion 14 1. 15 On July 31, 2018, the Court entered a joint Defendants’ Late-Filed Opposition 16 stipulation extending Defendants’ deadline to file 17 their Opposition to August 17, 2018 [167]. However, on 18 August 20, 2018, Plaintiff filed a response addressing 19 the fact that Defendants had not yet filed their 20 Opposition [184]. Defendants then filed their 21 Opposition on August 21, 2018 [187]. With their 22 Opposition, Defendants filed a Memorandum of Points and 23 Authorities re Good Cause for the Court to Accept the 24 Late-Filed Opposition [186]. Defendants argue that the 25 short delay did not prejudice or impact Plaintiff 26 because Plaintiff still had 15 days to file its Reply 27 pursuant to the stipulation, a week longer than 28 contemplated under Local Rules 7-9 and 7-10. 10 1 Regardless, Local Rule 7-12 prohibits the Court from 2 granting a motion solely based on the failure to file 3 an opposition within the deadline for motions pursuant 4 to Fed. Rule Civ. P. 56. As such, the Court will 5 exercise its discretion to consider the late-filed 6 Opposition and rule on the merits of Plaintiff’s 7 Motion. 8 9 10 2. Defendants’ Evidentiary Objections a. Declarations Defendants make numerous evidentiary objections 11 [189] to the following: (1) Declaration of Diana M. 12 Torres [174], (2) Declaration of Tara McAdam Kassal 13 [157-2], (3) Declaration of Lea Ann Russell [175-3], 14 (4) Declaration of Ed Toms [175-4], and (5) Declaration 15 of Charles Szurgot [175]. The Court OVERRULES 16 Defendants’ evidentiary objections because they “are 17 boilerplate and devoid of any specific argument or 18 analysis as to why any particular exhibit or assertion 19 in a declaration should be excluded.” United States v. 20 HIV Cat Canyon, Inc., 213 F. Supp. 3d 1249, 1257 (C.D. 21 Cal. 2016); see also Stonefire Grill, Inc. v. FGF 22 Brands, Inc., 987 F. Supp. 2d 1023, 1033 (C.D. Cal. 23 2013)(refusing to “scrutinize each objection and give a 24 full analysis of identical objections”); Amaretto Ranch 25 Breedables v. Ozimals, Inc., 907 F. Supp. 2d 1080, 1081 26 (N.D. Cal. 2012)(“This Court need not address 27 boilerplate evidentiary objections.”); Capitol Records, 28 LLC v. BlueBeat, Inc., 765 F. Supp. 2d 1198, 1200 n.1 11 1 (C.D. Cal. 2010)(noting that “it is often unnecessary 2 and impractical” to scrutinize “boilerplate recitations 3 of evidentiary principles or blanket 4 objections”)(citation omitted). 5 6 b. Evidence in Support of Plaintiff’s Reply Defendants also object to Exhibit 4 to Plaintiff’s 7 Reply in Support of its Motion [209] consisting of 8 three press releases, in which Defendants announce 9 contracts totaling $1.806 billion. 10 ECF No. 216. See Defs.’ Obj., Defendants argue that Plaintiff cannot 11 rely on these press releases because they were 12 disclosed after the close of discovery. A party must 13 make certain initial disclosures “without awaiting a 14 discovery request,” including a “computation of each 15 category of damages claimed.” 16 26(a)(1)(A)(iii). Fed. R. Civ. P. Where a party fails to disclose 17 information required by Rule 26, “the party is not 18 allowed to use that information or witness to supply 19 evidence on a motion, at a hearing, or at trial, unless 20 the failure was substantially justified or is 21 harmless.” Fed. R. Civ. P. 37(c)(1). Moreover, the 22 Court detailed in its Order re Oral Argument [229] that 23 Plaintiff was substantially justified in its delay in 24 disclosing the press release given Defendants lengthy 25 history of bad faith litigation practices,2 and no 26 27 28 2 Plaintiff stated in its Initial Disclosure it is seeking Defendants’ “profits and advantages received” from using the MK brand, and repeatedly requested Defendants’ provide a calculation 12 1 prejudice to Defendants as a result. 2 Argument, ECF No. 229. See Order re Oral For these reasons, the Court 3 OVERRULES Defendants’ Objection to the three press 4 releases. 5 3. Plaintiff’s Evidentiary Objections 6 Plaintiff makes several evidentiary objections to 7 the Declaration of Drew Sherman in Support of 8 Defendants’ Opposition (“Sherman Decl.”) [187-1]. 9 First, Plaintiff objects to Defendants’ use of a Senior 10 Thesis from Boise State University on MK (“Senior 11 Thesis”). 12 187-1. See Sherman Decl., Ex. A at 7-10, ECF No. Defendants rely on a one-page excerpt from the 13 Senior Thesis for its proposition that MK changed its 14 name to rid a “tarnished reputation.” Def.’s Stmt. of 15 Genuine Disputes of Fact (“SGDF”) ¶ 2(b), ECF No. 188. 16 Plaintiff argues that Sherman has no personal knowledge 17 of who the author is, the author’s background, how the 18 Senior Thesis was created, or what materials the author 19 considered. 20 203. Pl’s Evidentiary Objs. 1:13-16, ECF No. As required by Rule 56, documentary materials 21 need authentication through affidavits or declarations 22 from individuals with personal knowledge of the 23 document. Zoslaw v. MCA Distrib. Corp., 693 F.2d 870, 24 883 (9th Cir. 1982). While Sherman states it is a 25 “true and correct copy of the Senior Thesis from Boise 26 27 of its revenue since then. See Order re Oral Argument 3-4, ECF No. 229. Defendants, however, never provided such information, 28 despite Court order and several deadline extensions. Id. at 4. 13 1 State University,” Defendants have not established 2 Sherman has the personal knowledge required to 3 authenticate the document. 4 See Fed. R. Evid. 602, 901. Additionally, Defendants rely on the Senior Thesis for 5 its content containing a quote of a former MK worker 6 stating, “[b]ut just imagine the value of the name and 7 reputation and history they’re wiping out with that one 8 stroke.” See Ex. A at 10. Because these statements 9 are hearsay and not admissible under an exception, the 10 Court SUSTAINS Plaintiff’s Objections. See Fed. R. 11 Evid. 802-803. 12 Plaintiff also objects to the following exhibits on 13 the grounds that Defendants never produced them during 14 discovery: (1) Trademark Registrations, see Sherman 15 Decl. ¶¶ 7-9, Exs. B1-B26; (2) State of Ohio Forms, see 16 id. at ¶¶ 10-11, Exs. C1-C27; and (3) USPTO 17 Registration, see id. at ¶¶ 20-21, Ex. F. Because the 18 Court does not rely on the objected-to-evidence, the 19 Court SUSTAINS as MOOT this objection. 20 Finally, Plaintiff objects to forty pages of the 21 Szurgot Deposition Transcript Defendants submitted as 22 Exhibit D to the Sherman Declaration because Defendants 23 do not identify with specificity the portions of the 24 transcript they rely upon. Pl.’s Objs. at 3:11-12. A 25 party asserting a fact is genuinely disputed must 26 support the assertion by “citing to particular parts of 27 materials in the record, including depositions . . . 28 .”). Fed. R. Civ. P. 56(c)(1)(A). 14 Defendants cite 1 specifically to portions of the transcript in their 2 Statement of Genuine Disputes, see SGDF ¶ 9, thus the 3 Court OVERRULES this objection. 4 4. 5 Plaintiff seeks summary judgment on each of Summary Judgment 6 Plaintiff’s causes of action. The Court addresses 7 these in turn. 8 9 a. False Designation of Origin “Section 43(a) of the Lanham Act, 15 U.S.C. 10 § 1125(a), forbids the use of false designations of 11 origin and false descriptions or representations in the 12 advertising and sale of goods and services.” 13 Montoro, 648 F.2d 602, 603 (9th Cir. 1981). Smith v. “Passing 14 off,” which consists of the “selling of a good or 15 service of one’s own creation under the name or mark of 16 another,” has consistently been held to violate section 17 43(a). Id. at 604. To succeed on its false 18 designation claim for “passing off,” Plaintiff must 19 prove that Defendants “(1) use[d] in commerce (2) any 20 word, false designation of origin, false or misleading 21 description, or representation of fact, which (3) is 22 likely to cause confusion or misrepresents the 23 characteristics of his or another person’s goods or 24 services.” Freecycle Network, Inc. v. Oey, 505 F.3d 25 898, 902 (9th Cir. 2007).3 26 27 28 3 Defendants argue that to prove false designation, Plaintiff must demonstrate (1) that it owns a valid, protectable trademark, and (2) that Defendant used the mark in a manner 15 1 2 i. Use in Commerce “[C]ommunications made on public websites” satisfy 3 the use in commerce requirement. Nat’l Grange of the 4 Order of Patrons of Husbandry v. Cal. State Grange, No. 5 2:16-201 WBS DB, 2016 WL 6696061, at *4 (E.D. Cal. Nov. 6 15, 2016)(citing United States v. Sutcliffe, 505 F.3d 7 944, 952-53 (9th Cir. 2007)(holding that “use of the 8 internet is intimately related to interstate 9 commerce”)). 10 Plaintiff argues that Defendants used the MK Marks4 11 on their website, and 12 www.morrison-knudsen.net5 to pass themselves off as 13 “Morrison-Knudsen.” Plaintiff states as an 14 uncontroverted fact that “Defendants,” collectively, 15 all used the MK Marks on the websites. Pl.’s SUF ¶1. 16 Defendants jointly filed one Statement of Genuine 17 Dispute of Facts (“SGDF”), in which they also refer to 18 19 likely to cause confusion. 20 21 22 23 24 25 26 27 28 Def.’s Opp’n at 5:19-23. However, as Plaintiff points out, this is the test for traditional trademark infringement, and not the test for false designation of origin for “passing off.” Dep’t of Parks & Recreation v. Bazaar Del Mundo, Inc., 448 F.3d 1118, 1124 (9th Cir. 2006)(reciting the above test “to prevail on [a] claim of trademark infringement”). Thus, Plaintiff need not prove ownership of the marks to prove its false designation claim. Defendants’ lengthy argument and evidence put forth to claim that Plaintiff is not the owner or senior user of the MK Marks is thus irrelevant. 4 The word mark MORRISON KNUDSEN, the MK logo, and the combined word and design mark MKCO MORRISON KNUDSEN are referred to each as an “MK MARK,” and collectively as the “MK MARKS.” 5 These two domain names refer to the same website, just available at two different domains. Torres Decl. ¶ 5, Ex. B, Topolewski Dep., 81:14-23, ECF No. 174-2. 16 1 themselves collectively as “Defendants.” 2 SDGF, ECF No. 188. See Defs.’ In their Opposition, Defendants 3 briefly argue that Plaintiff did not articulate which 4 “uncontroverted fact” applies to each Defendant. 5 Def.’s Opp’n 2:10-11, ECF No. 187. However, nowhere in 6 Defendants’ SGDF did any of the Defendants dispute 7 Plaintiff’s grouping of them together. And neither did 8 Defendants dispute Plaintiff’s claim that all of the 9 Defendants used the website. Defendants one-sentence 10 argument with no cited authority or evidence in their 11 Opposition is insufficient to create a genuine issue of 12 material fact. U.S. v. Baisden, No. 1:06-cv-01368-AWI- 13 MJS, 2013 WL 1222101, at *7 (E.D. Cal. Mar. 25, 2013)(a 14 party may not “create a ‘genuine’ issue of ‘material’ 15 fact simply by making assertions in [their] legal 16 memoranda.”)(citing Helmich v. Kennedy, 796 F.2d 1441, 17 1443 (11th Cir. 1986)). 18 In their SGDF, Defendants only dispute the website 19 to the extent it is identical and confusingly similar 20 to the MK Marks, and that they registered the domain 21 names with a bad faith intent. Def.’s SGDF ¶¶ 10-11. 22 Because Defendants did not dispute Plaintiff’s 23 contention that the Defendants all used the MK Marks 24 collectively on the website, for the purposes of this 25 Motion the Court takes this fact as true. See Beard v. 26 Banks, 548 U.S. 521, 527 (2006)(finding that because 27 the plaintiff failed to specifically challenge the 28 facts identified in the defendant’s statement of 17 1 undisputed facts, the plaintiff was “deemed to have 2 admitted the validity of the facts” in the statement); 3 Heinemann v. Satterberg, 731 F.3d 914, 917 (9th Cir. 4 2013)(“As the text of the 2010 rule states, the 5 opposing party’s failure to respond to a fact asserted 6 in the motion permits a court to ‘consider the fact 7 undisputed for purposes of the motion.’”)(citing Fed. 8 R. Civ. P. 56(e)(2)). Hereinafter, the Court takes 9 Plaintiff’s assertion throughout its SUF that 10 “Defendants” collectively acted together as true for 11 all remaining claims in this Action due to Defendants’ 12 failure to dispute the grouping of them together. 13 Moreover, Plaintiff provided evidence that this 14 website was used by all Defendants collectively. 15 Defendant Morrison Knudsen Corporation registered both 16 of the domain names on behalf of all Defendants. Pl.’s 17 SUF ¶1(a); Torres Decl. ¶¶ 9-10, Exs. E-F, ECF Nos. 18 174-5, 174-6 (showing registration of the websites).6 19 20 21 22 23 24 25 26 27 28 6 In its Second Set of Requests for Admission (“RFA Set 2"), Plaintiff requested Defendant Topolewski admit that he or someone acting on his behalf registered the domain names. Torres Decl. Ex. D, 240:3-9. Defendant failed to respond. Torres Decl. ¶ 7. Pursuant to Fed. R. Civ. P. 36(a)(3), a matter is deemed admitted unless, within 30 days after being served, the party serves on the requesting party a written answer or objection addressed to the matter and signed by the party or its attorney. Thus, Plantiff’s RFA Set 2 is deemed admitted as to Defendant Topolewski, and the Court can properly rely on the admissions in deciding summary judgment. See Layton v. Int’l Ass’n of Machinists and Aerospace Workers, 285 Fed. Appx. 340, 341 (9th Cir. 2008)(“There is no dispute that [plaintiff] did not respond on time; the facts were thus admitted without the need for any further action by the court or the parties.”); Conlon v. United States, 474 F. 3d 616, 621 (9th Cir. 2007)(“Unanswered requests 18 1 None of the Defendants dispute that the website was 2 used as one website by the Corporate Defendants.7 3 Torres Decl. Ex. B, 81:14-19 (deposition testimony of 4 Defendant Topolewski stating that the Corporate 5 Defendants’ website was at 6 The entire website portrays Defendants as “Morrison7 Knudsen.” See Torres Decl. Ex G., 259, ECF No. 174-7 8 (banner reading “About MK - MORRISON-KNUDSEN”); id. at 9 260 (banner reading “Contact Us - MORRISON-KNUDSEN”). 10 Defendants Morrison Knudsen Corporation and Morrison11 Knudsen Services were both directly listed on the 12 website. Id. at 260. The website also lists the North 13 American headquarters address as 2049 Century Park 14 East, Suite 3850, Los Angeles, California 90067. 15 id. See This is the same address listed on the records for 16 each Corporate Defendant and Defendant Topolewski in 17 his capacity as an officer of at least one of the 18 Corporate Defendants. Id. Ex. R at 1034 (showing both 19 Morrison Knudsen Corporation’s address and Defendant 20 Topolewski’s address as its president); id. Ex. Q at 21 996 (address for Morrison-Knudsen Services); id. Ex, S 22 at 1066 (address for Morrison-Knudsen International); 23 24 25 for admissions may be relied on as the basis for granting summary judgment.”). Hereinafter, this applies to any reference to Torres Decl. Ex. D, Pl.’s RFA Set 2. 26 7 Hereinafter, “Corporate Defendants” refers to Defendants 27 Morrison Knudsen Corporation, Morrison-Knudsen Services, Inc., Morrison-Knudsen Company, Inc., and Morrison-Knudsen 28 International Inc. 19 1 and Torres Decl. ISO Prelim. Inj. Ex. 4, 151, ECF No. 2 19-4 (address for Morrison-Knudsen Company, Inc.). 3 Moreover, all of the Corporate Defendants used an 4 email address associated with the domain name, 5 6 24:9-20. Torres Decl. Ex. B, at This email address was also used to receive 7 potential bids and inquiries from www.morrison8 See Davis Decl. ¶ 10, Ex. L, ECF No. 36-1 9 (Mr. Davis’ email inquiring about “MK” stating he 10 “stumbled on” the website); Torres Decl. Ex. M, 93311 935, ECF No. 178-1 (email inquiring about potential 12 bid). Defendant Topolewski also used an email 13 associated with the domain name, gary@morrison14 15 Torres Decl. Ex. B, at 75:21-23. When asked to identify the factual basis for 16 Defendants’ “advertising, marketing, and promotional 17 materials” that they “performed or were in any way 18 involved in the projects accomplished by the Original 19 MK” shown on their website, the four Corporate 20 Defendants and Defendant Topolewski collectively 21 responded that “Responding Parties revived an abandoned 22 company.” See Torres Decl. ISO Pl.’s Reply ¶ 10, Ex. 23 7, Def.’s Supp. Resp. to First and Second Set of 24 Interrogs., 7:19-26, ECF No. 202-7. Defendants have 25 not put forth any evidence that they did not use the 26 website to advertise themselves as “Morrison Knudsen.” 27 Thus, there is no triable issue that all of the 28 Defendants used the website, satisfying the first 20 1 element. To the extent “Defendants’” use of the 2 website applies to the remaining claims, it refers to 3 all Defendants collectively. 4 5 ii. False Designation of Origin, False or Misleading Description, or Representation of Fact 6 Plaintiff has put forth ample, undisputed evidence 7 that Defendants’ website claims the original MK’s 8 accomplishments as their own. In the website’s “About 9 MK” section, Defendants describe the history of the 10 original MK dating back to 1912 as its own, including 11 projects such as the Hoover Dam, Cam Ranh Bay, and 12 Trans-Alaska Pipeline. 13 255, 362; id. ¶ 5. Torres Decl. ¶ 11, Ex. G, at It is also undisputed that the 14 website offers for sale used construction equipment 15 bearing the MK logo. Id. Ex. G, at 309-316. Such 16 representation of the original MK’s history on a 17 website is sufficient to satisfy this element. See 18 Nat’l Grange of the Order of Patrons of Husbandry, No. 19 2:16-201 WBS DB, 2016 WL 6696061, at *5 (E.D. Cal. Nov. 20 15, 2016)(“Uncredited references to another entity’s 21 history and achievements may constitute ‘false or 22 misleading’ representations as to give rise to 23 liability under section 43(a).”); ITEX Corp. v. Glob. 24 Links Corp., 90 F. Supp. 3d 1158, 1171 (D. Nev. 25 2015)(trade exchange’s claim to forty-year history of 26 unaffiliated company violates section 43(a)). 27 Rather than discussing the elements of false 28 designation, Defendants argue at length that there is a 21 1 triable issue as to Plaintiff’s ownership and whether 2 it is senior user of the mark. This argument is 3 irrelevant as ownership is not a required element for 4 false designation. Even if it were, while Defendants 5 are correct that registrations for the MK Marks have 6 been listed under prior corporate names, the undisputed 7 evidence shows that Plaintiff is the same entity that 8 has retained the same legal rights to the MK Marks 9 throughout a series of corporate name changes and 10 mergers. See Pl.’s SUF ¶ 17(a). First, Defendants do 11 not dispute that MK merged with Washington Construction 12 Group, Inc. (“WGI”) in 1996, while continuing to 13 operate under the name “Morrison Knudsen Corporation”.8 14 Szurgot Decl. ¶ 5, ECF No. 175. 15 changed its name to WGI. Id. And in 2000, MK Defendants also do not 16 dispute that in 2007, URS Corp. (“URS”) acquired WGI, 17 and in 2014, AECOM, the parent company of Plaintiff 18 AECOM Energy & Construction, Inc., acquired URS and its 19 subsidiaries. Szurgot Decl. ¶¶ 6-7. Without citing 20 any legal authority, Defendants argue that Plaintiff 21 did not obtain the right to the MK Marks because WGI 22 “just kept deciding to change its name.” 23 11:9-10. Opp’n at However, whether Plaintiff’s predecessors 24 25 8 Defendants argue that MKCO’s registration in 1993 was 26 under the name Morrison Knudsen Corporation, and thus it is unclear whether Plaintiff acquired the registration. This 27 argument fails given that it is undisputed WGI merged with Morrison Knudsen Corporation in 1996, thus acquiring the 28 registration. 22 1 changed names has no effect on the trademark rights 2 passed to Plaintiff through its acquisition of URS. 3 See Fresno Motors, LLC v. Mercedes Benz USA, LLC, 771 4 F.3d 1119, 1125 (9th Cir. 2014)(“A fact is material 5 only if it might affect the outcome of the case . . . 6 .”). As such, there is no genuine issue that any 7 representation of the MK history on the website is a 8 false representation. 9 10 iii. Likelihood of Confusion As to likelihood of confusion, courts consider 11 eight factors referred to as the Sleekcraft factors.9 12 Where the use of a name or mark is identical to that of 13 the plaintiff on the very same goods and services for 14 which the plaintiff uses the name or mark, that alone 15 can be “case-dispositive” before a full balancing of 16 the Sleekcraft factors. See Stone Creek, Inc. v. Omnia 17 Italian Design, Inc., 875 F.3d 426, 432 (9th Cir. 18 2017)(citing Opticians Ass’n of Am. v. Indep. Opticians 19 of Am., 920 F.2d 187, 195 (3d Cir. 1990)(“[L]ikelihood 20 of confusion is inevitable, when, as in this case, the 21 identical mark is used concurrently by unrelated 22 entities.”)). Indeed, courts have found likelihood of 23 9 The eight factors include: (1) strength 24 infringed mark; (2) proximity or relatedness ofof the allegedly the goods; (3) similarity of the sight, sound, and meaning of the marks; 25 26 27 28 (4) evidence of actual confusion; (5) degree to which the marketing channels converge; (6) type of goods and degree of care consumers are likely to exercise in purchasing them; (7) intent in selecting the allegedly infringing mark; and (8) likelihood of expansion of the product lines. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). 23 1 confusion solely on the fact that the marks and 2 services are identical. See Park ‘N Fly, Inc. v. 3 Dollar Park and Fly, Inc., 782 F.2d 1508, 1509 (9th 4 Cir. 1986)(finding where marks and services provided 5 are identical, and marketing channels are convergent, 6 there is a likelihood of confusion despite no evidence 7 of actual confusion, weak mark, and no intent to 8 capitalize). 9 Here, Plaintiff has put forth evidence that the 10 marks on Defendants’ website are identical and used in 11 the same market to sell the same services and goods, 12 including construction contracts and construction 13 equipment. See Torres Decl. Ex. G, at 255-57. 14 Additionally, Defendants’ website offered for sale 15 construction equipment bearing the MK logo. See id. at 16 309-16; id. Ex. B, Topolewski Dep. at 87-89 17 (acknowledging it is the red MK logo on the equipment). 18 The entire website features the MKO logo and Morrison 19 Knudsen name on each page. See generally Torres Decl., 20 Ex. G;, Inc. v. Walt Disney Co., 202 F.3d 21 1199, 1206 (9th Cir. 2000)(holding that plaintiff is 22 likely to succeed on section 43(a) claim where 23 defendant used “glaringly similar” website logos). The 24 Ninth Circuit has found it to be clear error “to find 25 no likelihood of confusion when two products with 26 virtually identical marks are in the same market.” 27 Honor Plastic Indus. Co. v. Lollicup USA, Inc., 462 F. 28 Supp. 2d 1122, 1132 (E.D. Cal. 2006)(citing Lindy Pen 24 1 Co. v. Bic Pen Corp., 796 F.2d 254, 257 (9th Cir. 2 1986)). 3 Even a consideration of the key factors shows a 4 likelihood of confusion. First, as to strength of the 5 mark, there is substantial evidence of MK’s reputation 6 and legacy dating back to 1912 for projects such as the 7 Hoover Dam, San Francisco-Oakland Bay Bridge, and the 8 Trans-Alaska Pipeline. See Szurgot Decl. ¶ 4; Torres 9 Decl. ¶ 13, Ex. J (TIME Magazine cover featuring MK 10 founder). The strength of MK as a brand is evident 11 from both parties’ continuous use of its history in its 12 marketing. See, e.g., Torres Decl. ¶ 11, Ex. G, at 13 255-57, 362 (showing MK projects on Defendants’ 14 websites); id. ¶¶ 16-18, Exs. N, O, P (press releases 15 claiming MK’s signature projects). 16 Additionally, Plaintiff has shown actual confusion. 17 Defendants do not dispute that a former AECOM employee, 18 Brandon Davis, confused Defendants’ website for the 19 original MK. See Davis Decl. ¶¶ 3-9, ECF No. 36. When 20 Mr. Davis found the website, 21 he emailed on April 18, 2013, 22 and inquired whether MK survived the sale from WGI to 23 URS. See id., Ex. L, ECF No. 36-1. Mr. Davis received 24 a response stating, “the entire group of MK companies 25 are separate from URS now.” See id. Mr. Davis later 26 spoke to Defendant Topolewski on the phone, and based 27 on what Defendant Topolewski told him, “believed that 28 Gary and the people working for the Morrison Knudsen 25 1 company with which he was affiliated were employees of 2 some spun off entity of the iconic Morrison Knudsen 3 companies.” Id. ¶ 9. In 2015, Mr. Davis contacted 4 Defendant Topolewski again for a potential bid under 5 the belief that it was the original MK. See id. ¶¶ 10- 6 11 (“I would never have suggested that my colleague 7 contact Gary at if I had known 8 they were not legitimately operating the iconic 9 Morrison Knudsen . . . .”).10 Based on Mr. Davis’ 10 actual confusion, future confusion is likely. 11 Sleekcraft, 599 F.2d at 352 (“Evidence that use of the 12 two marks has already led to confusion is persuasive 13 proof that future confusion is likely.”). 14 Finally, Plaintiff has put forth undisputed 15 evidence showing that each Defendants’ intent in 16 selecting the MK Marks was to pass themselves off as 17 MK. Defendants Morrison-Knudsen Services and Morrison 18 Knudsen Corporation (formally MK Viet Nam) both assumed 19 the identify of original MK entities, rather than 20 creating their own business. See Torres Decl. Ex. Q, 21 at 990-93 (revival of Morrison-Knudsen Services); id. 22 Ex. R, at 1033-35 (revival of MK Viet Nam). Defendant 23 Topolewski was the one who revived MK Viet Nam in 2014 24 (later changed to Morrison Knudsen Corporation) and 25 26 10 Throughout this entire exchange, Defendant Topolewski was 27 serving as an officer for Defendant Morrison-Knudsen Services, Inc. and Defendant Morrison Knudsen Corporation (formally MK Viet Torres Decl. Ex. Q at 996-1005; id. Ex. S, at 1053. 28 Nam). 26 1 signed under penalty of perjury that he was authorized 2 by a court or the entity to do so. Id. And Defendants 3 Morrison-Knudsen International, Inc., and Morrison4 Knudsen Company, Inc. both changed their names to 5 assume an MK identity. Id. Ex. S, at 1065 (E Planet 6 changing its name to Morrison-Knudsen International, 7 Inc.); id. Ex. T, at 1091 (Westland changing name to 8 Morrison-Knudsen Company). No one affiliated with the 9 original MK, URS, or AECOM gave any of the Defendants 10 permission to do so. 11 Szurgot Decl. ¶ 13. Neither do any of the Defendants dispute that they 12 were all involved in the revival of “Morrison Knudsen” 13 or offer any evidence to the contrary. When asked to 14 identify the factual basis for Defendants’ 15 “advertising, marketing, and promotional materials” 16 that they “performed or were in any way involved in the 17 projects accomplished by the Original MK” on their 18 website, the four Corporate Defendants and Defendant 19 Topolewski collectively responded that “Responding 20 Parties revived an abandoned company.” See Torres 21 Decl. ISO Pl.’s Reply ¶ 10, Ex. 7, Def.’s Supp. Resp. 22 to First and Second Set of Interrogs., 7:19-26, ECF No. 23 202-7. Additionally, when asked about the Corporate 24 Defendants and the original MK, Defendant Topolewski 25 testified at his deposition “they were one in the 26 same,” and that “we [Topolewski and Corporate 27 Defendants] revived Morrison Knudsen.” Torres Decl. ¶ 28 5; id. Ex. B, Topolewski Dep. at 91:9-23. 27 1 The evidence that Defendants knew of MK’s history, 2 and claimed it for their own upon reviving it without 3 permission, supports a likelihood of confusion. 4 Entrepeneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 5 (9th Cir. 2002)(“[I]ntent to deceive is strong evidence 6 of a likelihood of confusion.”)(citations omitted). 7 Defendants’ only argument offers legal conclusions, 8 with no authority or evidence, that because Defendants 9 are the current owners of the MK Marks there cannot be 10 confusion by Defendants’ use of the marks. This is 11 insufficient to create a triable issue of fact. See 12 Hutchinson v. United States, 838 F.2d 390, 392 (9th 13 Cir. 1988)(“The party opposing the summary judgment may 14 not rest on conclusory allegations, but must set forth 15 facts showing there is a genuine issue for trial.”). 16 Defendant Morrison Knudsen Corporation only became the 17 current owner by deceiving the USPTO and cutting off 18 Plaintiff’s chain of communication with the USPTO.11 19 Regardless, as mentioned above, ownership is not a 20 required element for false designation of origin. Even 21 in viewing the evidence in light most favorable to 22 Defendants, the evidence shows that Plaintiff acquired 23 24 25 26 27 28 11 Defendants do not dispute that multiple false documents were submitted under penalty of perjury to the USPTO to obtain control of the MK Marks. For example, on November 10, 2016, defaulting Defendant Hale submitted a change of address form to the USPTO seeking to change the address of the owner of the MORRISON KNUDSEN mark from WGI’s address (the former name of MK prior to Plaintiff’s acquisition) to Defendants’ address. See Bottaro-Walklet Decl. ¶ 6, Ex. F. 28 1 MK through its acquisition of URS, and Defendants use 2 of the MK Marks and its history create a likelihood of 3 confusion. 4 In sum, Plaintiff has put forth undisputed evidence 5 showing Defendants used their website to pass 6 themselves off as the original MK, and the Court GRANTS 7 Plaintiff’s Motion on this claim as to all Defendants. 8 9 b. Defendants’ Abandonment Defense Fails Defendants argue that Plaintiff has abandoned its 10 use of the MK Marks and therefore has no right to bring 11 its trademark claims under the Lanham Act. 12 16. Opp’n 5:6- To prove abandonment of the MK Marks, Defendants 13 must establish “(1) discontinuance of trademark use and 14 (2) intent not to resume such use.” Electro Source, 15 Ltd. Liab. Co. v. Brandess-Kalt-Aetna Grp., Inc., 458 16 F.3d 931, 935 (9th Cir. 2006). Non-use requires 17 “complete cessation or discontinuance of trademark 18 use.” Yucaipa Corp. Initiatives Fund I, LP v. Hawaiian 19 Airlines, Inc., No. cv 13-9060, 2014 WL 12564354, at *2 20 (C.D. Cal. Dec. 17, 2014)(citations omitted). “Even a 21 single instance of use is sufficient against a claim of 22 abandonment of a mark if such use is made in good 23 faith.” Carter-Wallace, Inc. v. Proctor & Gamble Co., 24 434 F.2d 794, 804 (9th Cir. 1970). 25 Defendants argue there is a prima facie case of 26 abandonment because it has been sixteen years since 27 Plaintiff “started walking away” from the MK Marks and 28 any use since then has been a “token use.” 29 Opp’n at 1 13:17-19, 14:26-28, 15:1-12. A “token use” is a use 2 “undertaken without bona fide commercial intent in a 3 mere attempt to reserve the mark for future use.” 4 Pollution Denim & Co. v. Pollution Clothing Co., 547 F. 5 Supp. 2d 1132, 1142 n.40 (C.D. Cal. 2007)(citing Chance 6 v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1159 (9th Cir. 7 2001)). Here, Plaintiff proffers ample evidence of its 8 use of the MK Marks and MK’s history in its promotional 9 materials, bid documents, client presentations, and at 10 booths and conferences.12 See Pl.’s SUF 17(h)-(oo). 11 Plaintiff used the MK Marks in its marketing to 12 identify its goods and services. Kassal Decl. ¶ 4 13 (“AECOM leverages iconic projects from its heritage 14 companies . . . to differentiate itself from 15 competitors . . . .”). Such use is sufficient to 16 defeat Defendants’ argument for abandonment. See Wells 17 Fargo & Co. v. ABD Ins. & Fin. Servs., Inc., 758 F.3d 18 1069, 1072 (9th Cir. 2014), as amended (Mar. 11, 19 2014)(finding use of a mark in promotional materials, 20 21 12 Plaintiff has provided twenty-one examples of the use of 22 the MK Marks in promotional materials from 2008 to 2016. See The materials repeatedly 23 Szurgot Decl. ¶ 10. through MK as its heritagerefer to Plaintiff’s history company. See e.g., id. Ex. 13 at 49, 52 (listing MK under “Heritage Company 24 25 26 27 28 Experience”); Ex. 14 at 56, 57 (“URS, through predecessor firm, Morrison-Knudsen”); Ex. 17 at 65 (“URS and its heritage companies, WGI and Morrison-Knudsen, started building their long reputations heavy civil constructors in 1912 and have over 70 years of history . . . .”); Ex. 34 (2016 AECOM-URS Company History template listing MK under “previous company names”); Ex. 37 at 126 (“AECOM legacy firm, Morrison-Knudsen, was one of the consortium of firms that built the Hoover Dam.”). 30 1 including “customer presentations and solicitations,” 2 is sufficient use to defeat an argument for 3 abandonment). This is true even though Plaintiff has 4 acquired MK through a series of acquisitions and name 5 changes. Id. at 1071 (plaintiff Wells Fargo acquired 6 the original company, changed its name, and continued 7 to display the original company’s mark on customer 8 presentations and solicitations). Defendants have not 9 put forth evidence showing an intent by Plaintiff to 10 completely cease using the MK Marks. Consequently, 11 there is no genuine issue of material fact and 12 Defendants’ abandonment defense fails. 13 14 c. False Advertising To succeed on its claim for false advertising under 15 the Lanham Act,13 Plaintiff must prove: 16 17 18 19 20 21 22 (1) a false statement of fact by the defendant in a commercial advertisement about its own or another’s product; (2) the statement actually deceived or has the tendency to deceive a substantial segment of its audience; (3) the deception is material, in that it is likely to influence the purchasing decision; (4) the defendant caused its false statement to enter interstate commerce; and (5) the plaintiff has been or is likely to be injured as a result of the false statement, either by direct diversion of sales from itself to defendant or by a lessening of the goodwill associated with its products. 23 24 25 26 27 28 13 Plaintiff also alleges violations of California Business and Professions Code sections 17200 and 17500, which similarly prohibit misleading advertising. However, these state law claims are not substantively addressed because the state claims are “substantially congruent” to the Lanham Act claims. JHP Pharm., Ltd. Liab. Co. v. Hospira, Inc., 52 F. Supp. 3d 992, 997 n.4 (C.D. Cal. 2014). 31 1 Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 2 1139 (9th Cir. 1997). 3 To establish the first element, statements can be 4 “literally false, either on [their] . . . face or by 5 necessary implication,” or “literally true but likely 6 to mislead or confuse customers.” Id. at 1139. Here, 7 all of the Defendants have made numerous false 8 statements claiming MK’s historical accomplishments as 9 their own. Defendants collectively represent, on 10, that they completed projects 11 including the Hoover Dam, San Francisco-Oakland Bay 12 Bridge, Trans-Alaska Pipeline, NASA’s Space Kennedy 13 Center, Olmsted Dam Construction, Addison Aiport, 14 Miami-Dade Expressway Authority, and Snoqualmie Pass. 15 See Torres Decl. ¶ 11, Ex. G, at 267-71, 293-95, 33516 36, 362, 389-391. These are just a few examples of the 17 numerous projects Defendants have claimed, that either 18 the original MK completed prior to its acquisition by 19 AECOM or that are current AECOM projects. See Olson 20 Decl. ¶ 3, ECF No. 17 (listing forty-one projects shown 21 on Defendants’ website). These statements are 22 literally false, and Defendants have not put forth 23 evidence to the contrary. 24 As to the second and third elements, where a 25 statement is literally false or the defendant 26 intentionally set out to deceive, both actual deception 27 and materiality are presumed. See Itex Corp. v. Glob. 28 Links Corp., 90 F. Supp. 3d 1158, 1173 (D. Nev. 32 1 2015)(“[I]f the statements at issue are found to be 2 literally false, the court may presume materiality . . 3 . .”)(citations omitted); U-Haul Int’l Inc. v. Jartran, 4 Inc., 793 F.2d 1034, 1040-41 (9th Cir. 1986). Because 5 the statements here on Defendants’ websites claiming 6 MK’s accomplishments are literally false, actual 7 deception and materiality can be presumed. Even 8 without the presumptions, AECOM’s former employee Mr. 9 Davis’ belief that Defendants are the original MK, see 10 supra Section B.4.a, is direct evidence that 11 Defendants’ use of the MK Marks on its websites are 12 material and likely to deceive. See Skydive Arizona, 13 Inc. v. Quattrocchi, 673 F.3d 1105, 1111 (9th Cir. 14 2012)(finding testimony of a consumer purchase based on 15 defendant’s online representations and advertisements 16 direct evidence of materiality). 17 As to the fourth element, it is undisputed that 18 Defendants caused their false statements to enter 19 interstate commerce, as they collectively used their 20 online website and email addresses connected to the 21 same domain name. See supra Section II.B.4.a; 22 Sutcliffe, 505 F.3d at 953 (holding the internet is an 23 instrumentality and channel of interstate commerce). 24 Defendants do not address any of the above 25 elements, and only argue there is a genuine issue as to 26 the last element, that Plaintiff cannot show any injury 27 because Plaintiff failed to supplement its initial 28 disclosures with its damages calculation. 33 Opp’n at 1 17:1-18. However, whether or not Plaintiff 2 sufficiently disclosed its calculation is irrelevant 3 because monetary damages is not the only manner in 4 which a party can suffer injury under the Lanham Act. 5 See Lexmark Int’l, Inc. v. Static Control Components, 6 Inc., 134 S. Ct. 1377, 1393 (2014)(stating that 7 injuries such as “damage to . . . business reputation . 8 . . are injuries to precisely the sorts of commercial 9 interests the [Lanham] Act protects”); Neighborhood 10 Assistance Corp. of Am. v. First One Lending Corp., No. 11 SACV 12-463-DOC (MLGx), 2012 WL 1698368, at *18 (C.D. 12 Cal. May 15, 2012)(“Loss of good will or the loss of 13 the ability to control one’s own reputation is a 14 cognizable harm under the Lanham Act.”)(citing Stuhbarg 15 Int’l Sales Co., Inc. v. John D. Brush and Co., Inc., 16 240 F.3d 832, 841 (9th Cir. 2001)). 17 Here, Plaintiff has provided evidence to show that 18 Defendants’ false statements on their website have 19 lessened the goodwill in the MK brand, including that 20 Plaintiff no longer has control over its business 21 reputation. See Szurgot Decl. ¶ 12 (“The use by 22 another of MK’s goodwill, including their use of [MK 23 Marks], MK’s history and MK’s projects and 24 accomplishments . . . dilutes AECOM’s legacy and 25 diminishes AECOM’s right and ability to market the 26 heritage of MK as one of the great American companies 27 that helped make AECOM what it is today.”); Kassal 28 Decl. ¶ 7 (“Defendants are sullying AECOM’s hard earned 34 1 reputation.”). As Defendants do not provide any 2 evidence to the contrary, there is no triable issue 3 that Plaintiff has suffered and is likely to continue 4 to suffer injury in the loss of its goodwill in the MK 5 brand. 6 Accordingly, the Court GRANTS Plaintiff’s Motion 7 for Summary Judgment on its false advertising claim as 8 to all Defendants. Because Plaintiff is successful on 9 its false advertising claim, the Court also GRANTS 10 Plaintiff’s Motion as to the claims for: (1) California 11 Common Law Unfair Competition; (2) California Statutory 12 Unfair Competition; and (3) California Statutory False 13 Advertising.14 14 15 d. Cyberpiracy To succeed on a claim for cyberpiracy under 15 16 U.S.C. § 1125(d), Plaintiff must show Defendants (1) 17 register, traffic in, or use a domain name, (2) that 18 was “identical or confusingly similar to” a mark that 19 was distinctive at the time of registration, with (3) a 20 “bad faith intent to profit from that mark.” GoPets 21 Ltd. v. Hise, 657 F.3d 1024, 1030 (9th Cir. 22 2011)(quoting 15 U.S.C. § 1125(d)). 23 First, it is undisputed that Defendant Morrison 24 Knudsen Corporation registered two domain names on 25 March 25, 2008: and 26 14 These claims arise under Cal. Bus. & Prof. Code §§ 17200, 27 17500, which are “substantially congruent” to the Lanham Act claims. See JHP Pharm., Ltd. Liab. Co. v. Hospira, Inc., 52 F. 28 Supp. 3d 992, 997 n.4 (C.D. Cal. 2014). 35 1 2 E-F, Whois Lookup. See Torres Decl. ¶ 7, Exs. Defendants also do not dispute that 3 this is the same website used by all of the Defendants. 4 Second, these names are identical to the MK Marks. 5 See GoPets, 657 F.3d at 1032 (finding domain names 6 “,” “,” “,” 7 “,” and “,” among others, 8 identical to the mark “GoPets”). They are also 9 confusingly similar because they simply hyphenate the 10 Morrison Knudsen name. See Brookfield Commc’ns, Inc. 11 v. W. Coast Entm’t Corp., 174 F.3d 1036, 1045 (9th Cir. 12 1999)(“Web users often assume, as a rule of thumb, that 13 the domain name of a particular company will be the 14 company name followed by ‘.com.’”)(citations omitted). 15 While these domain names are identical, Plaintiff 16 must also show the Morrison Knudsen name was a 17 distinctive mark at the time of registration. A 18 registered trademark is presumed to be distinctive. 19 Zobmondo Entm’t, Ltd. Liab. Co. v. Falls Media, Ltd. 20 Liab. Co., 602 F.3d 1108, 1113-14 (9th Cir. 21 2010)(“Where the [US]PTO issues a registration . . . 22 the presumption is that the mark is inherently 23 distinctive.”). Defendants argue that because they 24 currently hold the trademark registrations to the MK 25 Marks, there is a complete bar to this claim. 26 18:1-6. Opp’n at However, whether or not Defendants hold a 27 trademark registration today is irrelevant because the 28 cyberpiracy analysis looks to whether there is a 36 1 distinctive mark “at the time of registration of the 2 domain name . . . .” 15 U.S.C. § 3 1125(d)(1)(A)(ii)(I)(emphasis added). The current 4 trademark holder has no bearing on whether in 2008, 5 when Defendants registered the domain names, they were 6 identical to a distinctive mark. At that time, 7 Plaintiff held a valid registered trademark in MORRISON 8 KNUDSEN.15 See Bottaro-Walklet Decl. ¶ 5, ECF No. 14. 9 Defendant Morrsion Knudsen Corporation did not obtain 10 trademark registration in MORRISON KNUDSEN until 2016. 11 See Torres Decl. ¶ 28, Ex. Z, ECF No. 174-26. Thus, it 12 is undisputed that the mark was distinctive at the time 13 the domains were registered. 14 Finally, Plaintiff must prove that Defendants had a 15 “bad faith intent to profit” from the MORRISON KNUDSEN 16 mark when they registered their domain name. 17 § 1125(d)(1)(A)(i). 15 U.S.C. The statute lists nine factors to 18 consider when determining whether a defendant has acted 19 with a bad faith intent to profit from the use of a 20 mark. See 15 U.S.C. § 1125(d)(1)(B)(I)-(IX). However, 21 courts are not limited to these listed factors in 22 making a determination of a bad faith intent. See 23 Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 24 F.3d 936, 946 (9th Cir. 2002)(“Congress did not mean 25 26 27 28 15 As of 2008, Plaintiff, through its heritage companies, including MK, was the registered owner of Registration Numbers 1,716,505 (MKCO MORRISON KNUDSEN) and 1,744,815 (MORRISON KNUDSEN). Torres Decl. ¶ 24, Ex. U at 1097-1100 (showing prior registration belonging to WGI); Szurgot Decl. ¶¶ 5-7. 37 1 these factors to be an exhaustive list”); Sporty’s Farm 2 L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489, 498 (2d 3 Cir. 2000)(“The factors are, instead, expressly 4 described as indicia that ‘may’ be considered along 5 with other facts.”)(quoting § 1125(d)(1)(B)(i)(I)). 6 There is ample evidence of each Defendants’ bad 7 faith intent to profit. The first factor looks at the 8 intellectual property rights in the domain name. 9 15 U.S.C. § 1125(d)(1)(B)(i)(I). See As already 10 discussed, Plaintiff owned the registered MORRISON 11 KNUDSEN mark at the time Defendant Morrison Knudsen 12 Corporation registered the domain names containing the 13 mark on behalf of all Defendants. The second factor 14 looks to the extent to which the name is commonly used 15 to identify that person. 16 § 1125(d)(1)(B)(i)(II). See 15 U.S.C. The MORRISON KNUDSEN Mark was 17 widely known to refer to the original MK (not 18 Defendants) and its iconic projects including the 19 Hoover Dam, the San Francisco-Oakland Bay Bridge, and 20 the Trans-Alaska Pipeline. Kassal Decl. ¶¶ 4-6. The 21 third factor looks to prior use, if any, of the domain 22 name. See 15 U.S.C. § 1125(d)(1)(B)(i)(III). 23 Defendant Topolewski admits that he had no use of the 24 MK Marks, let alone knew of MK as of 2008, and the 25 records show that none of the Corporate Defendants had 26 used the name prior to 2008. See Torres Decl. Ex. B, 27 at 132:10-12, 245:8-17; Torres Decl. Ex. Q at 990 28 (showing Morrison-Knudsen Services revived in 2008); 38 1 Torres Decl. Ex. R, at 1035 (showing MK Viet Nam (later 2 Morrison Knudsen Corporation) was not revived until 3 2014); Torres Decl. Ex. S, at 1062 (showing E Planet 4 did not change its name to Morrison-Knudsen 5 International Inc. until 2016); Torres Decl. Ex. T, at 6 1091 (showing Westland did not change its name to 7 Morrison-Knudsen Company, Inc. until 2016). 8 The fifth factor looks to “the person's intent to 9 divert consumers from the mark owner's online location 10 to a site accessible under the domain name that could 11 harm the goodwill represented by the mark . . .”. 12 15 U.S.C. § 1125(d)(1)(B)(i)(V). See As discussed, the 13 Defendants’ use the websites to represent 14 accomplishments associated with the MK marks, claiming 15 such accomplishments as their own. 16 Ex. C, at 41-43. Szurgot Decl. ¶ 11, At least one of the websites appeared 17 in search results for “Morrison Knudsen.” 18 Decl. ¶ 16, Ex. 46. Szurgot And Defendant Topolewski does not 19 dispute he represented to Mr. Davis through their 20 conversations that the “Morrison Knudsen company with 21 which he was affiliated were employees of some spun off 22 entity of the iconic Morrison Knudsen companies.” 23 Davis Decl. ¶¶ 4-7. Further, the overall intent to use 24 the mark in Defendants’ collective revival of the 25 original MK, as previously discussed, shows a bad faith 26 intent. See supra section II.B.4.a. This evidence 27 demonstrates a bad faith intent to profit. See Solid 28 Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1109 39 1 (C.D. Cal. 2009)(for bad faith, “the defendant must 2 intend to profit specifically from the goodwill 3 associated with another’s trademark”). 4 Defendants do not offer any evidence creating a 5 triable issue that they did not demonstrate a bad faith 6 intent to profit from the MK Marks, and instead only 7 argue that before the cancellation of the MK Marks in 8 2016, Plaintiff had started letting the MK Marks cancel 9 as early as 2002. SGDF ¶ 11. This argument fails for 10 the same reason Defendants’ abandonment defense fails. 11 See supra Section II.B.4.b. Accordingly, the Court 12 GRANTS summary judgment on this claim as to all 13 Defendants. 14 15 e. Cancellation of Registered Mark The Lanham Act permits cancellation of a registered 16 trademark on the basis of fraud. 15 U.S.C. § 1064(3). 17 To succeed on its cancellation claim, Plaintiff must 18 show there was a registration obtained by another who, 19 (1) made a false representation regarding a material 20 fact, while (2) knowing it was false; (3) intended to 21 induce action in reliance on the misrepresentation; (4) 22 caused reasonable reliance; and (5) proximately caused 23 damage. See Robi v. Five Platters, Inc., 918 F.2d 24 1439, 1444 (9th Cir. 1990). 25 Plaintiff provided undisputed facts showing false 26 representations were made to the USPTO regarding the MK 27 Marks. Defendant Morrison Knudsen Corporation made 28 false representations to the USPTO by assigning 40 1 Registration No. 1,744,815 for the MORRISON KNUDSEN 2 mark from Plaintiff (WGI at the time) to Defendant 3 Morrison Knudsen Corporation. 4 Ex. V. Torres Decl. ¶ 24; id., Defaulting Defendant Hale also changed the 5 address with the USPTO for Registration Nos. 1,716,505 6 and 1,744,815 from Plaintiff (WGI at the time) to 7 Morrison Knudsen Corporation. 8 Ex. U. Torres Decl. ¶ 23; id. Finally, in its application for the mark 9 MORRISON KNUDSEN, Defendant Morrison Knudsen 10 Corporation represented to the USPTO that its first use 11 of the mark was as early as 1933. Id. ¶ 25, Ex. W. 12 Thus, there is no triable issue as to the first 13 element. 14 As to the second element, Defendants argue that 15 there is a genuine issue whether they knew of the 16 falsity of the representations. Plaintiff argues that 17 in making the representations, Morrison Knudsen 18 Corporation knew they were falsely claiming ownership 19 of the MK Marks. Plaintiff relies on the deposition 20 testimony of Defendant Topolewski, that, despite 21 Defendant Morrison Knudsen Corporation’s claim their 22 first use of the Marks was in 1933, Topolewski had not 23 heard of Morrison Knudsen until “[m]aybe 2007,” that 24 none of the other Defendants ever used the MK Marks 25 prior to 2008, and that none of the Defendants have 26 ever actually used the MK Marks for construction 27 services. 28 Torres Decl. ¶ 5, Ex. B, at 59, 134-135. Defendants argue Topolewski was only testifying for 41 1 himself personally, not as the 30(b)(6) witness for the 2 Corporate Defendants, so his testimony is only 3 speculative as to the Corporate Defendants’ knowledge. 4 SGDF ¶ 13. However, Defendant Topolewski has served as 5 an officer for several of the Corporate Defendants,16 6 and at the time both representations to the USPTO were 7 made he was an officer of Morrison Knudsen Corporation. 8 Torres Decl. Ex. R, at 1034. Additionally, the 9 Corporate Defendants did not designate a witness to 10 dispute any of Topolewski’s testimony. Id. ¶ 9 11 (Plaintiff took the non-appearance at deposition of 12 each Corporate Defendant). Moreover, none of the 13 Corporate Defendants existed prior to 2008, and none of 14 the Defendants provide any evidence they used the MK 15 Marks prior to 2008. Thus, there is no dispute that 16 Defendant Morrison Knudsen Corporation knew that it had 17 not used the MK Marks dating back to 1933. As such, 18 there is no genuine issue as to this element. 19 There is also no genuine issue of material fact as 20 to the remaining elements. The false representations 21 to the USPTO were made in order to receive a trademark 22 23 24 25 26 27 28 16 For Morrison-Knudsen Services, Inc., Topolewski was listed as: President and Secretary in 2010; Chairman in 2011; Chairman, Director, and President in 2014; Secretary and Director in 2016; and President and Secretary in 2017. See Torres Decl., Ex. Q, at 996-1005. For Morrison Knudsen Corporation (formally MK Viet Nam), he was listed as: President, Secretary, Treasurer, and signed as an “Officer” in 2014. Id. Ex. R, at 1034. Finally, he was listed as the Secretary of E Planet in 2012, which later changed its name to Morrison Knudsen International Inc. Id. Ex. S, at 1053, 1062. 42 1 registration, the USPTO granted the registration in 2 reliance on the false statements, and it resulted in 3 harm to Plaintiff as it lost control over MK’s 4 identity, goodwill, and intellectual property rights. 5 Consequently, the Court GRANTS Plaintiff’s Motion for 6 Summary Judgment as to this claim and cancels 7 Defendants’ registration. 8 9 f. Defendants’ Equitable Defenses Fail Defendants put forth one argument that Plaintiff 10 waited nine years to bring this Action, to cover the 11 defenses of estoppel, waiver, laches, unclean hands, 12 and acquiescence. Opp’n at 21:5-10. This is 13 insufficient to establish any of the defenses, as 14 Defendants have not put forth evidence of the required 15 elements of each defense.17 See Devereaux v. Abbey, 263 16 F.3d 1070, 1076 (9th Cir. 2001)(“When the nonmoving 17 party has the burden of proof at trial, the party 18 moving for summary judgment need only point out ‘that 19 there is an absence of evidence to support the 20 21 17 For example, to establish waiver, Defendants would need 22 to provide evidence showing a “clear, decisive, and unequivocal” intent by Plaintiff to relinquish its trademark rights. 23 Marketquest Group, Inc. v. BIC Corp., No. 11-cv-618-BAS-JLB, 2018 WL 2933518, at *39 (S.D. Cal. June 12, 2018)(citing Groves v. 24 Prickett, 420 F.2d 1119, 1125 (9th Cir. 1970)). For estoppel, 25 Defendants would need evidence to prove each of the five 26 27 28 elements: (1) Plaintiff knew of Defendants’ actions; (2) Plaintiff’s actions led Defendants to reasonably believe Plaintiff did not intend to enforce its trademark rights; (3) Defendants did not know that Plaintiff actually objected to Defendants’ conduct; and (4) Defendants will be materially prejudiced if Plaintiff is allowed to proceed. Id. 43 1 nonmoving party’s case.’”)(internal citation omitted). 2 Moreover, Defendants rely solely on Plaintiff’s 3 30(b)(6) witness, Charles Szurgot, as evidence that 4 Plaintiff waited nine years to bring this Action. 5 Defendants rely on deposition testimony stating that 6 Plaintiff has had outside and in-house counsel maintain 7 its portfolio of registered marks to argue that it is 8 logical Plaintiff knew of Defendants’ actions when they 9 changed the records with the USPTO. Sherman Decl. ¶¶ 10 12-16; id. Ex. D, at 81:9-14, 82:5-8 (“we certainly 11 relied on in-house counsel to maintain our 12 portfolio.”). First, Defendants are incorrect to claim 13 it would have been nine years, because defaulting 14 Defendant Hale changed the addresses with the USPTO in 15 2014, and not in 2008. 16 1097-99. See Torres Decl., Ex. U, at Second, even in viewing these statements in 17 the light most favorable to the Defendants, at most 18 this deposition testimony establishes that Plaintiff 19 relied in part on its outside counsel to manage their 20 portfolio, but no where does Mr. Szurgot specifically 21 mention the MK Marks or indicate any knowledge of 22 infringement prior to bringing this Action. This 23 evidence alone does not create a triable issue because 24 Defendants only speculate as to what Plaintiff’s 25 personnel could have discovered in managing the marks, 26 with no actual evidence of delay on Plaintiff’s part. 27 See McIndoe v. Huntington Ingalls Inc., 817 F.3d 1170, 28 1173 (9th Cir. 2016)(“Arguments based on conjecture or 44 1 speculation are insufficient . . . .”). Given that 2 Defendants have put forth no evidence proving the 3 required elements of any of the equitable defenses, 4 there is no genuine issue of material fact and 5 Defendants’ defenses fail. 6 5. 7 A prevailing plaintiff seeking a permanent Permanent Injunction 8 injunction must show: “(1) that it has suffered an 9 irreparable injury; (2) that remedies available at law, 10 such as monetary damages, are inadequate to compensate 11 for that injury; (3) that, considering the balance of 12 hardships between the plaintiff and defendant, a remedy 13 in equity is warranted; and (4) that the public 14 interest would not be disserved by a permanent 15 injunction.” La Quinta Worldwide LLC v. Q.R.T.M., S.A. 16 de C.V., 762 F.3d 867, 879 (9th Cir. 2014)(citations 17 omitted). 18 Here, Plaintiff has demonstrated success on the 19 merits. If an injunction were not granted, Plaintiff 20 would suffer irreparable injury from the ongoing damage 21 to its goodwill as a result of Defendants’ deceptive 22 tactics to take over the MK brand.18 See Herb Reed 23 24 25 26 27 28 18 The Court notes that Defendants’ actions have shown an unwillingness to stop its infringement. Defendants have already been held in civil contempt for failure to comply with the preliminary injunction this Court issued. See Order re Civil Contempt, ECF No. 86. The preliminary injunction enjoined Defendants from using Defendants’ corporate names, and from making any representation that Defendants are connected with the MK brand. Id. at 7:2-9. Instead of changing their names to clearly separate themselves from the MK brand, Defendants “simply 45 1 Enters., LLC v. Florida Entertainment Management, 736 2 F.3d 1239, 1250 (9th Cir. 2013)(“Evidence of loss of 3 control over business reputation and damage to goodwill 4 could constitute irreparable harm.”). As detailed 5 above in discussing the merits of Plaintiff’s claims, 6 there is substantial evidence that Plaintiff has 7 suffered a loss to control over its brand, goodwill, 8 and intellectual property rights that cannot be 9 quantified. Further, the balance of hardships favors 10 Plaintiff because the potential hardship on Defendants 11 is “purely economic,” while the hardship on Plaintiff 12 is a complete loss of control over the brand and 13 history of MK entities. See Diller v. Barry Driller, 14 Inc., No. CV 12-7200 ABC EX, 2012 WL 4044732, at *10 15 (C.D. Cal. Sept. 10, 2012)(“It is no hardship to cease 16 intentionally infringing someone else’s trademark 17 rights.”). Finally, the public interest favors an 18 injunction because the marks are identical and shown to 19 have already caused actual confusion. Internet 20 Specialties West, Inc. v. Milon-DiGiorgio Enters., 21 Inc., 559 F.3d 985, 993 n.5 (9th Cir. 2009)(“The public 22 has an interest in avoiding confusion between two 23 companies’ products.”). Thus, the Court GRANTS 24 Plaintiff’s Motion for Permanent Injunction. 25 26 abbreviated Morrison Knudsen to MK.” Id. at 8:12-16. This Court 27 found this act was “‘intentionally calculated by [Defendants] to deceive the public into belief that’ they were still affiliated 28 with Morrison Knudsen.” Id. at 8:16-19. 46 1 6. Damages 2 For violations of section 1125(a) or (d) of the 3 Lanham Act, a plaintiff may recover “(1) defendant’s 4 profits, (2) any damages sustained by plaintiff, and 5 (3) the costs of the action.” 15 U.S.C. § 1117(a). 6 Here, Plaintiff seeks actual damages by disgorgement of 7 Defendants’ profits in the amount of REDACTED. 8 A court may award disgorgement of profits under the 9 Lanham Act where there is willful infringement. Stone 10 Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 11 426, 439-40 (9th Cir. 2017). The Ninth Circuit has 12 recognized three justifications for awarding an 13 infringer’s profits: (1) compensating the plaintiff for 14 diverted sales; (2) preventing unjust enrichment; and 15 (3) serving as a deterrent to infringers. Maier 16 Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 17 117, 123 (9th Cir. 1968). The Ninth Circuit also has 18 suggested that where infringement is deliberate and 19 willful, merely awarding a permanent injunction is 20 insufficient. See Playboy Enters., Inc. v. Baccarat 21 Clothing Co., Inc., 692 F.2d 1272, 1274 (9th Cir. 22 1982)(“[A]n award of little more than nominal damages . 23 . . would fail to serve as a convincing deterrent to 24 the profit maximizing entrepreneur who engages in 25 trademark piracy.”). 26 To demonstrate willful infringement, a party only 27 needs to show “a connection between a defendant’s 28 awareness of its competitors and its actions at those 47 1 competitors' expense.” Fifty-Six Hope Rd. Music, 778 2 F.3d 1059, 1074 (9th Cir. 2015); see also D.C. Comics 3 v. Towle, 802 F.3d 1012, 1026 (9th Cir. 2015) (“Willful 4 trademark infringement occurs when the defendant’s 5 actions are ‘willfully calculated to exploit the 6 advantage of an established mark.’”); Lindy Pen Co., 7 Inc. v. Bic Pen Corp., 982 F.2d 1400, 1406 (9th Cir. 8 1993)(“Willful infringement carries a connotation of 9 deliberate intent to deceive . . . [A]n account is 10 proper only where the defendant is ‘attempting to gain 11 the value of an established name of another.’”) 12 abrogated on other grounds by SunEarth, Inc. v. Sun 13 Earth Solar Power Co., Ltd., 839 F.3d 1179 (9th Cir. 14 2016). 15 Here, Plaintiff has offered ample evidence of each 16 Defendants’ willful infringement by their efforts in 17 taking over the MK brand. Defendants Morrison-Knudsen 18 Services and Morrison Knudsen Corporation (formally MK 19 Viet Nam) both assumed the identify of original MK 20 entities. Defendant Topolewski was the one who revived 21 MK Viet Nam in 2014 (later changed to Morrison Knudsen 22 Corporation) and signed under penalty of perjury that 23 he was authorized by a court or the entity to do so. 24 Torres Decl. ¶ 20, Ex. R, at 1033-35. And Defendants 25 Morrison-Knudsen International Inc. and Morrison 26 Knudsen Company, Inc. both changed their names to 27 assume an MK identity. No one affiliated with the 28 original MK, URS, or AECOM gave any of the Defendants 48 1 permission to do so. 2 Szurgot Decl. ¶ 13. With respect to profits, a “plaintiff shall be 3 required to prove defendant’s sales only; defendant 4 must prove all elements of cost or deduction claimed.” 5 15 U.S.C. § 1117(a)(emphasis added). To prove sales, 6 Plaintiff provides three press releases announcing 7 contracts Defendants received under the MK name and 8 brand amounting to $1.806 billion in revenue. 9 Torres Decl. ¶¶ 16-18, Exs. N-P. See The three press 10 releases include: (1) March 16, 2016 titled, “Morrison 11 Knudsen Awarded $570 Million Environmental Clean Up 12 Project”; (2) June 30, 2016 titled, “Morrison Knudsen 13 Awarded $36 Million Mine Engineering Contract”; and (3) 14 April 11, 2017 titled, “Morrison Knudsen awarded $1.2 15 Billion Construction and Engineering Contract”. Torres 16 Decl. ¶¶ 16-18, Exs. N-P, ECF Nos. 174-14, 174-15, 17417 16. The press releases were the only evidence 18 Plaintiff could rely on because Defendants have not 19 provided adequate documentation of their revenue, 20 profits, or costs, despite repeated requests for such 21 information throughout discovery. The history of this 22 litigation demonstrates a pattern in which Defendants 23 continuously refused to comply with Plaintiff’s 24 discovery requests, Court orders, and evaded providing 25 financial information. 26 During discovery, Plaintiff sought financial 27 information to calculate damages in its Requests for 28 49 1 Production (“RFP”) Nos. 19, 20, 2119 and Interrogatory 2 No. 15.20 Order re Mot. for Contempt. 9:4-8, 11:27- 3 12:5, 13:22-24, ECF No. 154. On April 26, 2018, after 4 Defendants’ failure to provide such information, the 5 Court ordered Defendants to provide supplemental 6 discovery responses by May 15, 2018 [118]. 7 1:20-25. Id. at On May 29, 2018, Plaintiff filed a Motion for 8 Contempt, or in the Alternative, Motion to Compel 9 Supplemental Discovery against Defendants for failing 10 to comply with the April 26 Order [132]. Plaintiff 11 argued, and the Court found, that Defendants’ 12 supplemental discovery response, including a two-page 13 financial summary, was “plainly inadequate” because the 14 summary did not provide information from January 2017 15 forward. Order re Mot. for Contempt at 13:6-12. The 16 Court ordered Defendants to respond to Plaintiff’s 17 Interrogatory No. 15 and RFP Nos. 19 and 20 by July 9, 18 2018 [154]. Id. at 18:1-4. Specifically, the Court 19 ordered Defendants to produce “all monthly, quarterly 20 21 22 23 24 25 26 27 28 19 RFP No. 19 requested “[a]ll documents relating to or reflecting any revenue received by any Defendant arising in any way relating to the use of the Morrison Knudsen name or logo . . . .”; RFP No. 20 requested “[a]ll tax returns and bank statements of any Corporate Defendant since such Corporate Defendant’s Date of Inception.”; and RFP No. 21 requested “[a]ll tax returns and bank statements of any Individual Defendant since 2008.” Order re Mot. for Contempt 11-16, ECF No. 154. 20 Interrogatory No. 15 states, “[i]dentify all revenues and profits earned by Topolewski America, Inc. since its date of incorporation and how those revenues and profits, in whole or in part, are shared with or received by any of the Defendants.” Id. at 9:4-8 50 1 and annual income statements, balance sheets and other 2 financial statements of any Corporate Defendant.” 3 at 13:12-20. Id. Defendants missed that deadline, and did 4 not file the supplemental responses until July 18, 5 2018,21 after several communications from Plaintiff. 6 Order re Contempt 3:4-22, ECF No. 210. In the 7 supplemental responses, Defendants refused to produce 8 any documents created after January 1, 2017, even 9 though the Court clearly ordered them to do so. 10 18:1-10, 22:6-12. Id. at Despite several orders and ample 11 time to provide further financial information, 12 Defendants did not submit any additional financial 13 documents. 14 Upon realizing Defendants would not provide 15 Plaintiff further information, Plaintiff served its 16 Supplemental Disclosure on July 17, 2018, including the 17 three press releases. Even though the Court found that 18 the two-page financial statement Defendants initially 19 provided was inadequate, Plaintiff has conceded that in 20 the absence of any showing of costs by Defendant, 21 Plaintiff will accept the summary’s showing of 22 Defendants’ total costs and expenses for 2013-2016 as 23 REDACTED. Torres Decl. ¶ 15, Ex. M, 930-31, ECF No. 24 25 26 27 28 21 Defendants served a joint set of “Further Supplemental Responses” on July 18, 2018; Defendant Topolewski served Third Supplemental Responses on July 23, 2018; and Corporate Defendants served their Third Supplemental Responses on July 31, 2018, only after Plaintiffs filed a Motion to Hold Defendants in Civil Contempt for Violating the Court’s Order re Discovery and to Award Plaintiff Its Costs and Fees. Id. at 2:1-10. 51 1 178-1. The two-page financial summary was put forth 2 collectively by all four Corporate Defendants showing 3 that they claimed to share the total expenses listed 4 from 2013 to 2016. Id. Thus, the total profits 5 Plaintiff seeks is the $1.806 billion in revenue as 6 stated in the press releases, less the total costs and 7 expenses of REDACTED, for a total of REDACTED. 8 In light of the significant amount of damages 9 Plaintiff is seeking, the Court is more hesitant to 10 rely solely on the press releases than it would be if 11 there was a lesser amount at stake. However, 12 Defendants do not offer any evidence or argument 13 disputing Plaintiff’s calculation of REDACTED, or offer 14 any alternative calculation. Plaintiff clearly stated 15 as an uncontroverted fact in its SUF that “Defendants 16 have claimed to earn revenue totaling REDACTED ” by 17 issuing the three press releases. Nowhere in 18 Defendants’ SGDF or Opposition did they dispute the 19 amount or deny earning the contracts. Defendants did 20 not raise a genuine issue as to the accuracy of the 21 press releases, or as to the amount the press releases 22 state that Defendants were “awarded.” 23 this telling.22 The Court finds The only genuine issue Defendants 24 raised as to damages was that Plaintiff did not 25 26 27 28 22 The Court surmises that Defendants’ actions in failing to rebut the amount disclosed in the press releases and failing to provide financial information suggests the possibility that Defendants received more than what the three press releases accounted for. 52 1 disclose the press releases until after the close of 2 discovery. See SGDF ¶ 6; Opp’n at 21:14-27. However, 3 the Court has already rejected this argument and has 4 deemed the press releases admissible. See supra, 5 section II.B.2.b. 6 With no genuine issue raised by Defendants as to 7 the amount, there is no other basis to compute damages 8 than what Plaintiff has provided. Damages must only 9 “be established with reasonable certainty,” and they 10 are not precluded merely “because they cannot be 11 calculated with absolute exactness” so long as “a 12 reasonable basis for computation ... exist[s].” Lindy 13 Pen Co., 982 F.2d at 1407 (internal quotation marks 14 omitted). Courts have accepted less precise estimates 15 of damages where, as here, a defendant frustrates the 16 discovery of a precise amount by refusing to cooperate 17 in providing relevant discovery. See, e.g., Allergan 18 Inc. v. Mira Life Group, Inc., No. SACV 04-36 JVS MLGX, 19 2004 WL 2734822, at *3 (C.D. Cal. June 9, 2004); Taylor 20 Made Golf Co. v. Carsten Sports, Ltd., 175 F.R.D. 658, 21 662 (S.D. Cal. 1997)(granting imprecise damages because 22 “[w]hile perhaps not a product of its best efforts, 23 Plaintiff's calculations are probably conservative and 24 do not appear to be unreasonable under the 25 circumstances”). “In the end, any ‘uncertainty in the 26 amount of damages should be borne by the wrongdoer.’” 27 Spin Master, Ltd. v. Zombondo Entmt. LLCU, 944 F. Supp. 28 2d 830, 840 (C.D. Cal. 2012) (quoting Adray v. 53 1 Adry–Mart, Inc., 76 F.3d 984, 989 (9th Cir. 1995)). 2 The Second Circuit has held that “‘where . . . the 3 defendant controls the most satisfactory evidence of 4 sales the plaintiff needs only establish a basis for a 5 reasoned conclusion as to the extent of injury caused 6 by the deliberate and wrongful infringement.’” Louis 7 Vuitton S.A.v. Spencer Handbags Corp., 765 F.2d 966, 8 973 (2d Cir. 1985)(noting that a court may have to rely 9 on “indirect and circumstantial evidence” if a 10 defendant fails to produce evidence on damages). Here, 11 Defendants are in the best position to know their 12 profits and are in control of the evidence of their 13 profits, but did not provide any such information in 14 discovery or argue that the REDACTED amount is 15 incorrect. 16 Given Defendants’ failure to comply throughout 17 discovery and failure to raise a genuine issue as to 18 damages, Plaintiff has met its burden of establishing 19 Defendants’ revenue. Without any argument or evidence 20 provided by Defendant as to costs, the Court accepts 21 Plaintiff’s calculation for the total profits as 22 REDACTED. Thus, the Court GRANTS Plaintiff’s request 23 for disgorgement of profits in the amount of REDACTED. 24 7. 25 “The court in exceptional cases may award Attorneys’ Fees 26 reasonable attorney fees to the prevailing party.” 27 U.S.C. § 1117(a). A case is considered exceptional 28 “when the infringement is malicious, fraudulent, 54 15 1 deliberate, or willful,” however, no egregious conduct 2 or bad faith is required. 3 F.3d at 1079. Fifty-Six Hope Road, 778 There is ample evidence that Defendants 4 willfully and deliberately infringed upon the MK Marks 5 in an elaborate scheme to pass themselves off as the 6 original MK. Thus, this is an exceptional case 7 entitling Plaintiff to attorneys’ fees. 8 9 III. CONCLUSION Based on the foregoing, the Court GRANTS 10 Plaintiff’s Motion for Summary Judgment and Permanent 11 Injunction in its entirety against Defendants Gary 12 Topolewski, Morrison Knudsen Corporation, Morrison13 Knudsen Company, Inc., Morrison-Knudsen Services, Inc., 14 and Morrison-Knudsen International Inc. 15 currently on calendar are vacated. All dates The Court declines 16 to enter a final judgment until a Motion for Default 17 Judgment is brought and a decision is made as to the 18 remaining defaulting Defendants: Todd Hale, John 19 Ripley, Bud Zukaloff, and Henry Blum. 20 21 IT IS SO ORDERED. 22 s/ RONALD S.W. LEW 23 DATED: November 8, 2018 24 HONORABLE RONALD S.W. LEW Senior U.S. District Judge 25 26 27 28 55

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