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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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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12 AECOM ENERGY &
CONSTRUCTION, INC.,
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Plaintiff,
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)
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)
)
v.
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JOHN RIPLEY; TODD HALE;
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GARY TOPOLEWSKI; HENRY
)
BLUM; BUD ZUKALOFF;
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“MORRISON KNUDSEN
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CORPORATION;” “MORRISON)
KNUDSEN COMPANY, INC.;”
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“MORRISON-KNUDSEN SERVICES, )
INC.;” and “MORRISON)
KNUDSEN INTERNATIONAL
)
INC.,”
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Defendants.
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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]

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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
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changed to make them appear to be MK affiliates.

Pl.’s

18
Mot. at 4:28-5:7.
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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,
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Inc. to “Morrison-Knudsen International Inc.”
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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.”
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19

d.

Id.

Websites and Press Releases

On March 25, 2008, Defendant Morrison Knudsen

20 Corporation registered the domain names www.morrison21 knudsen.com and www.morrison-knudsen.net.
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 knudsen.com, 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, www.morrison-knudsen.com 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 www.morrison-knudsen.com).
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 [e-mail].
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 knudsen.com.

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 knudsen.com.
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; GoTo.com, 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 www.morrison-knudsen.com,
21 he emailed [e-mail] 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 Morrison-Knudsen.com 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 www.morrison-knudsen.com, 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: www.morrison-knudsen.com 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 www.morrison-knudsen.net.
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 “gopets.mobi,” “gopetssite.com,” “goingpets.com,”
7 “egopets.com,” and “mygopets.com,” 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

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26
27
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