Edge Games LLC v. Houghton Mifflin Harcourt Publishing Company et al

Filing 53

ORDER GRANTING IN PART DEFENDANT'S MOTION FOR SUMMARY JUDGMENT AND DENYING PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT by Judge Virginia A. Phillips re: 41 Motion for Summary Judgment ; 45 Motion for Partial Summary Judgment. (See document for specifics) (mrgo)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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11 EDGE GAMES, LLC, A
CALIFORNIA LIMITED
12 LIABILITY COMPANY,
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Plaintiff, )
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v.
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HOUGHTON MIFFLIN
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HARCOURT PUBLISHING
COMPANY, A MASSACHUSETTS )
CORPORATION; AND DOES 1 )
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10,
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Defendants. )
________________________ )

Case No. EDCV 13 02123 VAP
(DTBx)
ORDER GRANTING IN PART
DEFENDANT'S MOTION FOR
SUMMARY JUDGMENT AND DENYING
PLAINTIFF'S MOTION FOR
PARTIAL SUMMARY JUDGMENT
[Motions filed on 4/6/15]

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20

Before the Court are the parties’ cross motions for

21 summary judgment or partial summary judgment.

For the

22 reasons stated below, Plaintiff’s motion is DENIED and
23 Defendant’s motion is GRANTED IN PART and DENIED IN PART.
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I. BACKGROUND
Plaintiff Edge Games produces and sells a game based

26 on the periodic table of the elements, known as “Science
27 Fusion the Elements of the Scienauts.” (“Scienauts game”)
28 Defendant Houghton Mifflin Harcourt (“HMH”) publishes a

1 line of science textbooks designed for kindergarten
2 through eighth grade called “ScienceFusion.”
3

On November 19, 2013, Plaintiff filed suit against

4 Defendant, alleging trademark infringement and false
5 advertising based on Defendant’s use of the name
6 “ScienceFusion.”

(“Complaint,” Doc. No. 1 at 1.)

On

7 April 6, 2015, Plaintiff filed a motion for summary
8 judgment on the issue of likelihood of confusion (i.e.
9 infringement).

(“P.’s MSJ,” Doc. No. 45 at 2.)

On the

10 same day, Defendant filed a motion for summary judgment
11 on three issues:
12

1.

Likelihood of confusion (i.e. infringement)

13

2.

Damages

14

3.

Liability for false advertising

15 (“D.’s MSJ,” Doc. No. 41 at 1.)
16

Defendant filed an opposition to Plaintiff’s motion

17 for summary judgment on April 13, 2015.

Plaintiff did

18 not submit a reply to Defendant’s opposition.
19

Plaintiff did not submit an opposition to Defendant’s

20 motion for summary judgment.

Treating Plaintiff’s own

21 motion for summary judgment on the issue of infringement
22 as an implicit partial opposition to Defendant’s motion
23 for summary judgment, Defendant filed a reply on April
24 20, 2015.

The Court follows suit in construing

25 Plaintiff’s motion for summary judgment on the issue of
26 infringement as an opposition to Defendant’s motion as to
27 the same issue.
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II. LEGAL STANDARD

1
2

A motion for summary judgment or summary adjudication

3 shall be granted when there is no genuine issue as to any
4 material fact and the moving party is entitled to
5 judgment as a matter of law.

Fed. R. Civ. P. 56(c);

6 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 48
7 (1986).

The moving party must show that “under the

8 governing law, there can be but one reasonable conclusion
9 as to the verdict.”
10

Anderson, 477 U.S. at 250.

Generally, the burden is on the moving party to

11 demonstrate that it is entitled to summary judgment.
12 Margolis v. Ryan, 140 F.3d 850, 852 (9th Cir. 1998);
13 Retail Clerks Union Local 648 v. Hub Pharmacy, Inc., 707
14 F.2d 1030, 1033 (9th Cir. 1983).

The moving party bears

15 the initial burden of identifying the elements of the
16 claim or defense and evidence that it believes
17 demonstrates the absence of an issue of material fact.
18 Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
19

Where the non moving party has the burden at trial,

20 however, the moving party need not produce evidence
21 negating or disproving every essential element of the
22 non moving party's case.

Celotex, 477 U.S. at 325.

23 Instead, the moving party’s burden is met by pointing out
24 that there is an absence of evidence supporting the non
25 moving party's case.
26

Id.

The burden then shifts to the non moving party to

27 show that there is a genuine issue of material fact that
28
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1 must be resolved at trial.

Fed. R. Civ. P. 56(e);

2 Celotex, 477 U.S. at 324; Anderson, 477 U.S. at 256.

The

3 non moving party must make an affirmative showing on all
4 matters placed in issue by the motion as to which it has
5 the burden of proof at trial.
6 Anderson, 477 U.S. at 252.

Celotex, 477 U.S. at 322;

See also William W.

7 Schwarzer, A. Wallace Tashima & James M. Wagstaffe,
8 Federal Civil Procedure Before Trial § 14:144.
9 burden is not a light one.

“This

The non moving party must

10 show more than the mere existence of a scintilla of
11 evidence.”

In re Oracle Corp. Securities Litigation, 627

12 F.3d 376, 387 (9th Cir. 2010) (citing Anderson, 477 U.S.
13 at 252).
14

A genuine issue of material fact will exist “if the

15 evidence is such that a reasonable jury could return a
16 verdict for the non moving party.”
17 248.

Anderson, 477 U.S. at

In ruling on a motion for summary judgment, a court

18 construes the evidence in the light most favorable to the
19 non moving party.

Barlow v. Ground, 943 F.2d 1132, 1135

20 (9th Cir. 1991); T.W. Elec. Serv. Inc. v. Pac. Elec.
21 Contractors Ass'n, 809 F.2d 626, 630 31 (9th Cir. 1987).
III. DISCUSSION

22
23 A.

Likelihood of Confusion

24

Infringement of federally registered trademarks is

25 governed by the test of whether Defendant’s use is
26 “likely to cause confusion, or to cause mistake, or to
27 deceive.”

15 U.S.C. § 1114(1)(a).

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In determining

1 whether confusion is likely, the following factors are
2 relevant:
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1.

strength of the mark;

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2.

proximity of the goods;

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3.

similarity of the marks;

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4.

evidence of actual confusion;

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5.

marketing channels used;

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6.

type of goods and the degree of care likely to

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be exercised by the purchaser;

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7.

defendant's intent in selecting the mark; and

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8.

likelihood of expansion of the product lines.

12 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 49 (9th
13 Cir. 1979).
14

The Court considers each of the Sleekcraft factors in

15 turn below.
16

1.

Strength of the Mark

17

Marks are grouped into classifications, with each

18 classification receiving a different level of protection.
19 “A strong mark is inherently distinctive, for example, an
20 arbitrary or fanciful mark; it will be afforded the
21 widest ambit of protection from infringing uses.”
22 Sleekcraft, 599 F.2d at 349.

“A descriptive mark tells

23 something about the product; it will be protected only
24 when secondary meaning is shown.”

Id.

“In between lie

25 suggestive marks which subtly connote something about the
26 products.

Although less distinctive than an arbitrary or

27 fanciful mark and therefore a comparatively weak mark, a
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1 suggestive mark will be protected without proof of
2 secondary meaning.”
3

Id.

The parties agree that the mark at issue is

4 suggestive, falling between a purely fanciful and a
5 purely descriptive mark.

(D.’s MSJ at 7; P.’S MSJ at 7.)

6 As a suggestive mark, it is entitled to protection
7 without proof of secondary meaning, but “it is a weak
8 mark entitled to a restricted range of protection.

Thus,

9 only if the marks are quite similar, and the goods
10 closely related, will infringement be found.”

Sleekcraft

11 at 350.
12

2.

Proximity of the Goods

13

“For related goods, the danger presented is that the

14 public will mistakenly assume there is an association
15 between the producers of the related goods, though no
16 such association exists.

The more likely the public is

17 to make such an association, the less similarity in the
18 marks is requisite to a finding of likelihood of
19 confusion.”
20 omitted).

Sleekcraft at 350 (internal citations
This factor thus requires looking at whether

21 the products “would reasonably be thought by the buying
22 public to come from the same source if sold under the
23 same mark.”

Id. at 348 n.8.

This is more likely to

24 occur when the parties’ goods are (1) complementary, (2)
25 sold to the same class of purchasers, or (3) are similar
26 in use or function.

Id. at 350.

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1

Defendant argues that the goods at issue here are

2 unrelated because (1) the goods are not promoted or sold
3 together, (2) the primary purpose of the Scienauts game
4 is fun while HMH’s product is a science curriculum, and
5 (3) the parties do not target the same class of
6 purchasers.

Plaintiff, on the other hand, argues that

7 both products are designed to educate students about
8 science and are therefore complementary.
9

The Court concludes that a genuine dispute of fact

10 exists as to whether the goods would reasonably be
11 thought by the buying public to come from the same source
12 if sold under the same mark.

A jury could reasonably

13 find that a consumer might mistakenly believe that the
14 Scienauts game is a complementary product to HMH’s
15 textbooks, intended to supplement the curriculum with an
16 additional educational medium.
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3.

Similarity of the Marks

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“Similarity of the marks is tested on three levels:

19 sight, sound, and meaning.

Each must be considered as

20 they are encountered in the marketplace.”
21 351 (internal citations omitted).

Sleekcraft at

Each level of

22 similarity is considered in turn below.

The Court

23 concludes that a dispute of fact exists whether the marks
24 are similar enough to cause a likelihood of confusion,
25 because the various levels on which similarity is tested
26 weigh in different directions regarding the likelihood of
27 confusion analysis.
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a. Sight
The following are examples of Plaintiff’s mark as

3 encountered on its Scienauts game.
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The following are examples of Defendant’s mark as

20 encountered on its line of textbooks.
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From a visual perspective, the marks do appear quite

2 different.

They use radically different color schemes

3 and, although the first example of Plaintiff’s mark has
4 “Science Fusion” in a sans serif font, like Defendant’s,
5 Plaintiff’s mark appears in all caps or small caps, while
6 Defendant’s mark appears in lowercase letters, except for
7 the ‘f’ of “Fusion.”
8

Plaintiff’s mark includes a hyphen between “Science”

9 and “Fusion,” while Defendant’s mark does not.

As

10 Plaintiff points out, however, the visual impact of this
11 difference is relatively minimal.
12

Defendant’s mark also includes the publisher’s name

13 in some instances, which helps to prevent confusion,
14 though it is not present in every instance.

On the

15 whole, the visual differences between the marks weigh
16 against a finding of likelihood of confusion.
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b.

Sound

“Sound is also important because reputation is often

19 conveyed word of mouth.”

Sleekcraft at 351.

Plaintiffs

20 are correct that, because the only lexical difference
21 between the marks is the presence of a hyphen in
22 Plaintiff’s mark, the two marks sound identical.
23 Accordingly, the audible similarity between the marks
24 weighs in favor of a finding of likelihood of confusion.
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c.

Meaning

With respect to similarity on the level of meaning,

27 neither party has suggested that the introduction or
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1 elimination of a hyphen between “science” and “fusion”
2 alters the meaning of the phrase in any way so as to
3 reduce the likelihood of confusion.

Accordingly, the

4 similarity in meaning between “Science Fusion” and
5 “ScienceFusion” weighs in favor of a finding of
6 likelihood of confusion.
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4. Evidence of Actual Confusion

8

“Evidence that use of the two marks has already led

9 to confusion is persuasive proof that future confusion is
10 likely.”

Sleekcraft at 352.

Nevertheless, “[b]ecause of

11 the difficulty in garnering such evidence, the failure to
12 prove instances of actual confusion is not dispositive.
13 Consequently, this factor is weighed heavily only when
14 there is evidence of past confusion....”

Id. at 353

15 (internal citations omitted).
16

HMH is correct that EG’s showing of actual confusion

17 is quite weak, consisting of little more than anecdotes
18 of a few customers asking if the products were related
19 and testimony that Amazon’s marketing algorithm
20 considered them to be related products for purposes of
21 marketing emails.

As the absence of proof on this factor

22 is normally given relatively little weight, however, this
23 factor does not weigh heavily in favor of either side.
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5. Marketing Channels Used

25

“Convergent marketing channels increase the

26 likelihood of confusion,” because it means “the general
27 class of [consumers] exposed to the products overlap.”
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1 Sleekcraft at 353.

Evidence that the parties advertise

2 or distribute their products differently indicates a
3 lesser likelihood of confusion.
4

The record shows that overlap in marketing channels,

5 while minimal, is not non existent.

(See, e.g., “Pelzel

6 Depo.,” Doc. No. 41 2, Ex. 15 at 182:17 25; “Smith Herbst
7 Decl.,” Doc. No. 41 1 at ¶ 16.)

Thus, while the evidence

8 does appear to weigh in Defendant’s favor on this factor,
9 the evidence is not so conclusive as to merit summary
10 judgment for Defendant.
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6.

be Exercised by the Purchaser

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Type of Goods and the Degree of Care Likely to

“In assessing the likelihood of confusion to the

14 public, the standard used by the courts is the typical
15 buyer exercising ordinary caution.

Although the wholly

16 indifferent may be excluded, the standard includes the
17 ignorant and the credulous.

When the buyer has expertise

18 in the field, a higher standard is proper though it will
19 not preclude a finding that confusion is likely.
20 Similarly, when the goods are expensive, the buyer can be
21 expected to exercise greater care in his purchases;
22 again, though, confusion may still be likely.”
23 Sleekcraft at 353 (internal citations omitted).
24

The uncontroverted evidence is that elementary school

25 textbooks are generally chosen by committees of teachers
26 and other school professionals with expertise in the
27 field.

(Smith Herbst Decl. at ¶ 10.)

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Additionally, the

1 adoption of new textbooks represents a significant
2 financial investment for most schools, often involving a
3 multi year commitment.

(Smith Herbst Decl. at ¶ 17.)

4 This weighs heavily against a finding of likelihood of
5 confusion with respect to purchasers of HMH’s product.
6

EG’s Scienauts game, on the other hand, costs only

7 $29 for a starter kit with expansion packs costing $7
8 each.
9 96:21.)

(“Leach Depo.,” Doc. No. 41 2, Ex. 14 at 95:12
This is not a significant financial investment

10 compared to many educational costs.

It is not at all

11 difficult to imagine a parent seeing a copy of EG’s
12 Scienauts game in a game store and relying on the
13 “Science Fusion” mark on the game to infer that it is
14 associated with his or her child’s science textbook
15 manufacturer, perhaps concluding that it is a
16 supplemental educational material that could enrich the
17 child’s science curriculum.

The cost of Plaintiff’s

18 product is not so high as to make significant research on
19 the manufacturer of the game likely.
20

Accordingly, there is evidence cutting both ways on

21 the issue of the degree of care likely to be exercised by
22 the ordinary consumer, making summary judgment
23 inappropriate.
24

7.

Defendant’s Intent in Selecting the Mark

25

“When the alleged infringer knowingly adopts a mark

26 similar to another’s, reviewing courts presume that the
27 defendant can accomplish his purpose: that is, that the
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1 public will be deceived.

Good faith is less probative of

2 the likelihood of confusion....”
3 (internal citations omitted).

Sleekcraft at 354

There is no evidence here

4 that Defendant had any awareness of Plaintiff’s mark or
5 that Defendant had any intent to capitalize on a
6 similarity to Plaintiff’s mark in designing its own mark.
7 Rather, the overwhelming evidence suggests that Defendant
8 chose the mark in good faith.

But since good faith is

9 less probative of likelihood of confusion, this factor
10 does not weigh heavily in favor of either party.
11

8.

Likelihood of Expansion of the Product Lines

12

“Inasmuch as a trademark owner is afforded greater

13 protection against competing goods, a ‘strong
14 possibility’ that either party may expand his business to
15 compete with the other will weigh in favor of finding
16 that the present use is infringing.”
17

Sleekcraft at 354.

Here, there is no evidence that EG intends to expand

18 its business to include textbooks, nor is there any
19 evidence that HMH intends to expand its business beyond
20 textbooks.

Accordingly, there does not appear any

21 realistic possibility that the parties’ products will
22 come into direct competition, and this factor weighs
23 against a finding of likelihood of confusion.
24

After considering the Sleekcraft factors, the Court

25 concludes that, although it is a close call, there is a
26 triable issue of fact as to whether the Defendant’s mark
27 presents a likelihood for confusion.
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While much of the

1 evidence tips in Defendant’s favor, a reasonable jury
2 could decide that, in light of the similarities between
3 the marks and the purposes for which the products are
4 used, consumers might be confused into thinking that both
5 products come from the same producer.

Accordingly,

6 summary judgment is inappropriate as to this issue.
7 B.

Damages

8

Defendant seeks partial summary judgment that

9 Plaintiff is not entitled to monetary relief because it
10 has suffered no damages as a result of Defendant’s
11 alleged trademark infringement and Defendant has made no
12 profits on the alleged infringing products to warrant
13 disgorgement.

Plaintiff has not submitted an opposition

14 to this motion, so if Defendant has met its burden of
15 showing an absence of dispute of material fact, it is
16 entitled to summary judgment on this issue.
17

A prevailing plaintiff in a trademark infringement

18 case is entitled to recover damages actually sustained by
19 the plaintiff as well as the defendant’s profits.
20 U.S.C. § 1117(a).

15

HMH argues that it is entitled to

21 summary judgment on both issues.
22

1.

Damages Sustained by Plaintiff

23

“When seeking damages, a plaintiff must prove both

24 the fact and the amount of damage.”

Intel Corp. v.

25 Terabyte Int'l, Inc., 6 F.3d 614, 620 (9th Cir. 1993).
26 Actual damages in an action for trademark infringement
27 “are typically measured by any direct injury which a
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1 plaintiff can prove, as well as any lost profits which
2 the plaintiff would have earned but for infringement.”
3 Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1407 (9th
4 Cir. 1993).
5

With respect to lost profits, Defendant points to the

6 lack of any evidence of lost profits, as well as the
7 deposition testimony of EG’s 30(b)(6) representative that
8 he did not know if EG had lost any profits as a result of
9 HMH’s alleged infringement.
10 14.)

(See Leach Depo. at 256:11

This is sufficient to meet Defendant’s burden as

11 the party moving for summary judgment, and Plaintiff has
12 not submitted any opposition.

Accordingly, summary

13 adjudication that Plaintiff has suffered no lost profits
14 as a result of Defendant’s alleged infringement is
15 appropriate.
16

With respect to other direct injuries Plaintiff may

17 have suffered, the only direct injury claimed by EG is
18 lost goodwill.

(See Leach Depo. at 268:23 69:3.)

19 Defendant points to the lack of evidence of the value of
20 any alleged lost goodwill, including EG’s failure to
21 procure an expert report on the issue of damages.
22 (“McCauley Decl.,” Doc. No. 41 1 at *34, ¶ 20.)
23 Defendant has met its burden as the moving party of
24 showing the absence of a genuine issue of material fact,
25 and Plaintiff has not submitted any opposition.
26 Accordingly, summary adjudication that Plaintiff cannot
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1 prove the monetary value of any alleged lost goodwill is
2 appropriate.
3

2.

Defendant’s Profits

4

“In assessing profits the plaintiff shall be required

5 to prove defendant's sales only; defendant must prove all
6 elements of cost or deduction claimed.”
7 1117(a).

15 U.S.C. §

HMH has submitted evidence that it has earned

8 no profit from its ScienceFusion textbook series, and
9 that indeed it has incurred a loss.

(Smith Herbst Decl.

10 at ¶ 18; “Pampinella Decl.,” Doc. No. 41 4 at *7, ¶¶ 50
11 51.)

Plaintiff has offered no expert evidence to dispute

12 any of the opinions offered by HMH’s accounting expert
13 regarding HMH’s lack of profit on the accused product.
14 (McCauley Decl. at ¶ 20.)
15

Defendant has met its burden as the moving party to

16 show the absence of a genuine dispute of material fact,
17 and Plaintiff has not submitted any opposition.
18 Accordingly, summary judgment that Defendant has earned
19 no profits on the accused product is appropriate.
20 C.

False Advertising

21

Defendant seeks summary adjudication as to

22 Plaintiff’s false advertising claim.

Plaintiff has not

23 submitted an opposition to this motion, so if Defendant
24 has met its burden of showing an absence of dispute of
25 material fact, it is entitled to summary judgment on this
26 issue.
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1

Plaintiff’s complaint alleges that Defendant’s use of

2 Plaintiff’s trademark “misrepresents Defendant’s goods in
3 that it tends to lead consumers to believe they are
4 dealing with Plaintiff’s game and/or a variation
5 thereof.”

(“Compl.,” Doc. No. 1 at ¶ 34.)

Defendant

6 points to two essential elements of Plaintiff’s claim on
7 which there is a complete absence of evidence.
8

First, Defendant points out there is no evidence that

9 any consumer believed HMH’s textbooks were sponsored by
10 or associated with EG or the Scienauts game.
11 Smith Herbst Decl. at ¶ 18.)

(See, e.g.,

Defendant’s position is

12 corroborated by EG’s 30(b)(6) testimony.

EG’s

13 representative stated that EG’s customers questioned
14 whether EG had the right to use the Science Fusion mark,
15 but did not testify that anyone believed HMH’s product
16 was affiliated with EG.

Accordingly, there is no

17 evidence to suggest that Defendant’s use of the mark
18 tends to lead consumers to believe HMH’s product is
19 associated with Plaintiff’s game.1
20

Second, Defendant points out that, even if consumers

21 did believe HMH’s textbooks were associated with EG,
22 Plaintiff has presented no evidence of actual harm caused
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1

This conclusion is not in conflict with the Court’s
decision regarding the likelihood of confusion, as
Plaintiff’s trademark infringement theory is centered on
the allegation that consumers are likely to believe that
Plaintiff’s product is associated with Defendant, not
vice versa. (See, e.g., P.’s MSJ at 12 13 (“This is a
reverse confusion case.... Reverse confusion is the
misimpression that the junior user is the source of the
senior user’s goods.”).)
17

1 by that deception.

Plaintiff’s only evidence of

2 reputational harm caused by Defendant’s use of the
3 ScienceFusion mark is testimony that “[o]ur potential
4 customers wonder if we have the right to use science
5 fusion or if we are some kind of a knockoff company or
6 imposter.”

(Leach Depo. at 269:6 8.)

Even assuming this

7 is sufficient evidence of reputational harm, it does not
8 establish that the reputational harm results from
9 consumers believing that they are “dealing with
10 Plaintiff’s game and/or a variation thereof” when
11 purchasing HMH’s textbooks.
12

Indeed, EG’s testimony regarding reputational harm

13 contradicts the allegation that consumers believe
14 Defendant’s textbooks is associated with Plaintiff’s
15 game.

EG’s testimony shows that consumers know the

16 products are separate, but mistakenly believe that HMH
17 owns the trademark to ScienceFusion and that EG might be
18 infringing that mark.

Plaintiff points to no evidence

19 suggesting that consumers believe HMH’s textbooks are
20 associated with or derivative of EG’s Scienauts game.
21

Thus, Defendant has met its initial burden of showing

22 the absence of a genuine dispute of material fact.
23 Plaintiff has not filed any opposition.

Accordingly,

24 summary judgment in favor of Defendant on Plaintiff’s
25 false advertising claim is appropriate.
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IV. CONCLUSION

1
2

For the reasons discussed above, Plaintiff’s motion

3 for partial summary judgment is DENIED; Defendant’s
4 motion for summary judgment is DENIED as to the issue of
5 likelihood of confusion; and Defendant’s motion for
6 partial summary judgment is GRANTED as to the issue of
7 monetary damages and as to Plaintiff’s false advertising
8 claim.
9
10
Dated:
11

June 2, 2015
VIRGINIA A. PHILLIPS
United States District Judge

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