Trowbridge Sidoti LLP v. Kim Lisa Taylor et al

Filing 61

ORDER DENYING Plaintiff/Counter Defendant's Motion for Partial Summary Judgment [29 and GRANTING Defendants/Counter Claimants Motion for Partial Summary Judgment 30 by Judge Otis D. Wright, II. (See attachment of this Order for further details). (jp)

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United States District Court
Central District of California

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Plaintiff/Counterdefendant,

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Case № 8:16-cv-00771-ODW-SK

TROWBRIDGE SIDOTI LLP,

ORDER DENYING
PLAINTIFF/COUNTERDEFENDANT’S
MOTION FOR PARTIAL SUMMARY
KIM LISA TAYLOR and
JUDGMENT [29] AND GRANTING
SYNDICATION ATTORNEYS,
DEFENDANTS/COUNTER
PLLC,
CLAIMANTS’ MOTION FOR
Defendants/Counter Claimants. PARTIAL SUMMARY JUDGMENT
[30]
v.

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I.

INTRODUCTION

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In this suit and countersuit over the ownership of the domain name

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SyndicationLawyers.com (and related domains and brand names), both sides have

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moved for partial summary judgment on certain causes of action. (ECF Nos. 29, 30.)

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For the reasons discussed below, the Court DENIES Plaintiff Trowbridge Sidoti

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LLP’s motion and GRANTS Defendants’ motion.1

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After considering papers filed in support of and in opposition to the motions, the Court deemed
them appropriate for decision without oral argument. See Fed. R. Civ. P. 78(b); C.D. Cal. L.R. 7-15.

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II.

FACTUAL BACKGROUND

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The parties in this case have a tangled history with one another.

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Plaintiff/Counterdefendant Trowbridge Sidoti LLP is a law firm headquartered in

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Lake Forest, California. (Compl. ¶ 8, ECF No. 1; Trowbridge Decl. ¶ 2, ECF No. 29-

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4.) The two partners of the firm are Eugene Trowbridge and Jillian Sidoti.2 (See

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Compl. ¶¶ 10, 20.) Defendant/Counter Claimant Kim Lisa Taylor is an attorney who

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currently owns a Florida law firm called Syndication Attorneys, PLLC, which is also

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named as a Defendant/Counter Claimant in this case.3 (Countercl. ¶ 23, ECF No. 11.)

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Prior to forming Syndication Attorneys, PLLC, Kim Lisa Taylor worked for Eugene

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Trowbridge as a contract attorney beginning in 2008. (Id. ¶ 8.) Eugene Trowbridge’s

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practice was at that time a sole proprietorship. (Id.; Compl. ¶ 10.)

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After working together for some time, Eugene Trowbridge and Kim Lisa Taylor

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discussed forming a partnership. (See Taylor Dep., Vol. I, Ex. 6, ECF No. 39-2.)

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They also discussed using the domain name SyndicationLawyers.com as a website

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and/or brand name for the partnership. (Taylor Dep., Vol. I, Ex. 6.) Specifically, on

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June 1, 2009, Kim Lisa Taylor wrote to Eugene Trowbridge in an e-mail,

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“‘SyndicationLawyers.com’ is available. I think it would be a nice website address

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for us and we can use it for emails also. I can register it with Go-Daddy [sic].” (Id.)

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A receipt from GoDaddy.com, Inc. shows that Kim Lisa Taylor reserved the domain

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name SyndicationLawyers.com that same day. (Trowbridge Decl., Ex. A.) Eugene

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Trowbridge claims to have reimbursed her for the transaction, but Kim Lisa Taylor

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states that she has no recollection of being reimbursed for the cost. (See Taylor Decl.

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¶ 9, ECF No. 52-2.) In September 2009, Eugene Trowbridge and Kim Lisa Taylor

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officially formed a partnership called Trowbridge & Taylor LLP. (Compl. ¶ 11;

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To avoid confusion with the firm names of Trowbridge Sidoti LLP, Trowbridge Taylor & Sidoti
LLP, and Trowbridge & Taylor LLP, the Court will refer to Eugene Trowbridge, Jillian Sidoti, and
Kim Lisa Taylor by their full names.
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Defendants/Counter Claimants Kim Lisa Taylor and Syndication Attorneys PLLC will be
collectively referred to as “Defendants.”

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Registered Limited Liability Partnership Registration, Taylor Dep., Vol. I, Ex. 4.)

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Later, on August 30, 2011, Kim Lisa Taylor advised Eugene Trowbridge via e-mail,

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“I have all our [domain names] on auto-renew with the Company Credit card so it

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[sic] should never expire or get transferred.” (Taylor Dep., Vol. II, Ex. 46.)

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In or around January 2014, Jillian Sidoti joined Eugene Trowbridge and Kim

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Lisa Taylor to form Trowbridge, Taylor & Sidoti LLP (“TTS LLP”). (Trowbridge

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Decl. ¶ 7.) Also in January 2014, TTS LLP began using SyndicationLawyers.com for

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its website. (Id. ¶ 8.) The ownership of this website name, in addition to the use of

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the terms Syndication Attorney and Syndication Lawyers, are the subjects of the

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claims and counterclaims in this action.

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On March 21, 2016, Kim Lisa Taylor notified Eugene Trowbridge and Jillian

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Sidoti that she would be withdrawing from TTS LLP to form a new law firm in

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Florida. (Taylor Dep., Vol. II, Ex. 26.) At the same time, she proposed using the

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SyndicationLawyers.com domain name to cross-market her new firm with Trowbridge

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Sidoti LLP.

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SyndicationLawyers.com was owned by the partnership. (Id. at Ex. 27.) Kim Lisa

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Taylor

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SyndicationLawyers.com and discontinued e-mails directed to addresses identified by

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that domain name. (Taylor Dep. at 175–76.)

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(Id.)

then

This

In response, Eugene Trowbridge told Kim Lisa Taylor that

removed

litigation

TTS

ensued.

LLP’s

website

Trowbridge

from

Sidoti

the

LLP

server

claims

hosting

that

the

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SyndicationLawyers.com domain name is partnership property, as it was paid for

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using partnership funds and intended by all three relevant principals (Eugene

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Trowbridge, Kim Lisa Taylor, and Jillian Sidoti) to be partnership property.

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However, Kim Lisa Taylor advances additional facts and evidence she claims support

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her ownership of the domain name. She asserts that her husband, Christopher Guillet,

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suggested to her in 2008 that she market her services under the domain name

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SyndicationLawyer.com (singular). (Taylor Decl. ¶ 2.) On or about April 24, 2008,

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Guillet purchased and registered that domain name. (Id.) Kim Lisa Taylor used it for

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her private practice between April 24, 2008, and January 1, 2010. (Id. ¶ 3.) Kim Lisa

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Taylor purchased and registered the domain name SyndicationLawyers.com (plural)

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on June 1, 2009, in her own name. (Trowbridge Decl., Ex. A; Taylor Decl. ¶ 6.) Kim

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Lisa Taylor claims that she “never transferred the registration to another name and

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thus, never otherwise transferred ownership.” (Taylor Decl. ¶ 6.)

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In addition to the dispute over who owns SyndicationLawyers.com and whether

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Kim Lisa Taylor converted the property without authorization when she shut down the

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site, Trowbridge Sidoti LLP is also suing Kim Lisa Taylor and Syndication Attorneys,

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PLLC under a theory of unfair competition. Trowbridge Sidoti LLP’s Complaint

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states claims for false designation of origin under Section 43 of the Lanham Act (15

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U.S.C. § 1125(a)), state law unfair competition pursuant to California Business and

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Professions Code § 17200, and common law unfair competition. (Compl. ¶¶ 35, 37–

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40.) These claims are based on Kim Lisa Taylor and Syndication Attorneys, PLLC’s

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use of the term “Syndication Attorney(s)” in business, which Trowbridge Sidoti LLP

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claims is confusingly similar to its “Syndication Lawyers” marks.” (Id. ¶ 33.) In

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2016, Trowbridge Sidoti LLP applied to the United States Patent and Trademark

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Office (“PTO”) to register the design mark SyndicationLawyers.com, and the PTO

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rejected it due to its being a merely descriptive (not distinctive) mark. (Gelfound

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Decl. ¶ 2, Ex. A, ECF No. 33-2.)

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The parties’ cross-motions for partial summary judgment are now pending

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before this Court. Trowbridge Sidoti LLP’s motion seeks summary judgment as to its

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fourth claim for conversion and as to Defendants’ first counterclaim for a declaratory

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judgment. (Pl. Mot. for Partial Summ. J. (“Pl. MPSJ”), ECF No. 29.) Defendants’

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motion asks the Court to enter summary judgment as to Trowbridge Sidoti LLP’s

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unfair competition claims (its first through third causes of action). (Defs. Mot. for

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Partial Summ. J. (“Defs. MPSJ”), ECF No. 30.)

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III.

LEGAL STANDARD

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“The court shall grant summary judgment [or partial summary judgment] if the

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movant shows that there is no genuine dispute as to any material fact and the movant

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is entitled to judgment as a matter of law.” Fed. R. Civ. Proc. 56(a). A party seeking

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summary judgment bears the initial burden of informing the court of the basis for its

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motion and identifying those portions of the pleadings and discovery responses that

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demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v.

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Catrett, 477 U.S. 317, 323 (1986). Where the moving party will have the burden of

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proof on an issue at trial, the movant must affirmatively demonstrate that no

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reasonable trier of fact could find other than for the moving party. See id. On an issue

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as to which the nonmoving party will have the burden of proof, however, the movant

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can prevail merely by pointing out that there is an absence of evidence to support the

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nonmoving party’s case. See id.

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If the moving party meets its initial burden, the nonmoving party must set forth,

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by affidavit or as otherwise provided in Rule 56, “specific facts showing that there is a

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genuine issue for trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).

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In evaluating the evidence presented in support of or in opposition to summary

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judgment, the court does not make credibility determinations or weigh conflicting

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evidence. Rather, it draws all inferences in the light most favorable to the nonmoving

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party. See T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630–

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31 (9th Cir. 1987). However, conclusory or speculative testimony is insufficient to

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meet this burden or to raise genuine issues of fact defeating summary judgment. See

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Nelson v. Pima Cmty. Coll., 83 F.3d 1075, 1081–82 (9th Cir. 1996).

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IV.

PLAINTIFF’S MOTION FOR PARTIAL SUMMARY JUDGMENT

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Trowbridge Sidoti LLP asks this Court to find as a matter of law that it owns

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the domain name SyndicationLawyers.com. That question of ownership would be

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dispositive of Defendants’ first cause of action for a declaratory judgment, as well as

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necessary for a finding that Kim Lisa Taylor unlawfully converted Trowbridge Sidoti

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LLP’s property (Trowbridge Sidoti LLP’s fourth cause of action). Because the Court

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cannot make this determination as a matter of law, it DENIES Trowbridge Sidoti

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LLP’s motion on both counts.

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A.

Legal Standard for Partnership Property

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Though the parties advance several theories regarding ownership of the domain

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name SyndicationLawyers.com, they can all be boiled down to whether the domain

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name should be properly classified as partnership property or the separate property of

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Kim Lisa Taylor.

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The California Corporations Code defines partnership property simply as “property

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acquired by a partnership.” Cal. Corp. Code § 16203. It explains that such property is

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property of the partnership and not of the partners individually. Id. There are several

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ways that a partnership can acquire property. If it is acquired in the name of the

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partnership or in the name of “one or more partners with an indication in the

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instrument transferring title to the property of the person’s capacity as a partner or the

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existence of a partnership but without an indication of the name of the partnership,”

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then it is partnership property.

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becomes partnership property by transfer if the transfer is made to (1) the partnership

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in its name, or (2) “one or more partners in their capacity as partners in the

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partnership, if the name of the partnership is indicated in the instrument transferring

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title to the property.” Id. at § 16204(b)(1)–(2). Further, if partnership assets are used

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to purchase property, that property is presumed to be partnership property even if not

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acquired in the name of the partnership. Id. at § 16204(c). If property is acquired in

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the name of one or more of the partners, without an indication in the instrument

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transferring title to the property of the existence of the property and without using

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partnership assets, that property is presumed to be separate (non-partnership) property,

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even if used for partnership purposes. Id. at § 16204(d). The Bankruptcy Appellate

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Panel for the Ninth Circuit has stated that “[p]artnership property also does not need to

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be purchased with partnership funds but rather . . . is determined by the understanding

Id. at § 16204(a)(1)–(2).

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In addition, property

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and intention of the partners.” In re Fair Oaks, Ltd., 168 B.R. 397, 402 (9th Cir. BAP

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1994) (citing Perelli-Minetti v. Lawson, 205 Cal. 642, 648 (1928)).B. Analysis

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The evidence presented here cuts in both directions and does not definitively

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establish ownership as a matter of law. On the one hand, the partnership paid for the

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renewal fees for the domain name, and Trowbridge Sidoti LLP presents some

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evidence that suggests Kim Lisa Taylor intended SyndicationLawyers.com to be

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partnership property. (Taylor Dep., Vol. I, Ex. 6 (containing an e-mail from Kim Lisa

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Taylor stating, “‘SyndicationLawyers.com’ is available. I think it would be a nice

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website address for us and we can use it for emails also.” (emphasis added)); Taylor

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Dep., Vol. II, Ex. 46.)

On the other hand, Kim Lisa Taylor acquired

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SyndicationLawyers.com in her name alone, and the original registration does not

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reference her status as a partner or the partnership name. (See Trowbridge Decl., Ex.

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A.) Moreover, Kim Lisa Taylor was not a partner nor had Trowbridge & Taylor LLP

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been created at the time she purchased the domain name.

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Registered Limited Liability Partnership Registration, Taylor Dep., Vol. I, Ex. 4, ECF

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No. 39-2.) Kim Lisa Taylor’s own sworn statements also contradict her alleged

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intention for the domain name to be partnership property seemingly evidenced in her

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e-mail to Eugene Trowbridge. (See Taylor Decl. ¶¶ 6–7.)

(Compare id., with

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Defendants also dispute Trowbridge Sidoti LLP’s characterization of each

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successive version of the firm (Eugene Trowbridge, sole proprietorship; Trowbridge

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& Taylor, LLP; TTS LLP; and the present version, Trowbridge Sidoti LLP) as a

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successor in interest of the one before it. (Opp’n to Pl. MPSJ 12–14, ECF No. 52.)

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However, the Court determines that this issue is not material at this juncture. The

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Court cannot determine as a matter of law that SyndicationLawyers.com was ever

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partnership property, and thus the issue of whether that partnership successively

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transformed into the current iteration, Trowbridge Sidoti LLP, is not relevant to this

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ruling.

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In sum, the available evidence creates a genuine dispute of fact as to whether

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the domain name SyndicationLawyers.com is partnership property or the separate

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property of Kim Lisa Taylor. This dispute is material as to the causes of action on

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which Trowbridge Sidoti LLP seeks summary judgment: its own cause of action for

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conversion and Defendants’ cause of action for a declaratory judgment. Thus, the

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Court DENIES Trowbridge Sidoti LLP’s motion.

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V.

DEFENDANTS’ MOTION FOR PARTIAL SUMMARY JUDGMENT

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Defendants argue that the Court should determine as a matter of law that

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Trowbridge Sidoti LLP cannot prevail on its unfair competition claims. The Court

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agrees that summary judgment is appropriate on these claims and GRANTS

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Defendants’ motion.

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Trowbridge Sidoti LLP’s first, second, and third causes of action are all

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premised on its allegation that it owns a trademark for the phrase “Syndication

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Lawyers.” (See Compl. ¶ 33.) In order to allege that Defendants violated various

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unfair competition laws based on their use of the “confusingly similar” marks

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“Syndication Attorney(s),” then, the validity of Trowbridge Sidoti LLP’s mark is a

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necessary element. (Id.); see Credit One Corp. v. Credit One Fin., Inc., 661 F. Supp.

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2d 1134, 1137 (C.D. Cal. 2009). Trowbridge Sidoti LLP cannot prove that element.

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A.

Legal Standard for Proving Ownership of a Trademark

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The standard test of trademark ownership is priority of use. Sengoku Works v.

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RMC Int’l, 96 F.3d 1217, 1219 (9th Cir. 1996). Moreover, “federal registration of a

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trademark constitutes prima facie evidence of the validity of a registered mark.”

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Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 744 (9th Cir. 2006) (internal brackets

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omitted). If another party claims that it owns the mark, however, it may rebut this

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presumption with evidence establishing its own prior use in commerce. Dep’t of

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Parks and Recreation for State of Cal. v. Bazaar Del Mundo Inc., 448 F.3d 1118,

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1124 (9th Cir. 2006).

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But where there is no federal registration of a mark, a party can only prove

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ownership for purposes of the Lanham Act and other unfair competition laws if the

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mark is distinctive (not merely descriptive) or has acquired secondary meaning in the

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market in connection with a person or entity’s goods in commerce.

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Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010).

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B.

See, e.g.,

Analysis

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Here, all of the available evidence demonstrates that Trowbridge Sidoti LLP

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does not have an ownership interest in the mark “Syndication Lawyers.” In July 2016,

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the PTO refused to register the mark based on its finding that the mark was “merely

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descriptive.” (Gelfound Decl. ¶ 2, Ex. A.) Thus, it is not entitled to a presumption of

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ownership. See Quiksilver, 466 F.3d at 744.

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Trowbridge Sidoti LLP responded to the PTO’s finding by claiming that the

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mark had become descriptive through its five years’ use in commerce. (Gelfound

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Decl. ¶ 2, Ex. A.) In response, the PTO concluded that the five years of use was

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insufficient to show acquired distinctiveness because SyndicationLawyers.com “is

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highly descriptive of [Trowbridge Sidoti LLP’s] services” due to the fact that

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Trowbridge

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SYNDICATION LAWYERS.” (Id.) The PTO’s refusal to register the mark occurred

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less than one year ago, on December 5, 2016. (Id.) Trowbridge Sidoti LLP did not

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submit further evidence of acquired distinctiveness to the PTO following this refusal.

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(Id.)

Sidoti

LLP

is

“engaging

in

SYNDICATION

LAW

or

are

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Based on the above information, the Court gives deference to the PTO’s finding

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of non-distinctiveness and determines that SyndicationLawyers.com and the phrase

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“Syndication Lawyers” are not valid trademarks for which Trowbridge Sidoti LLP is

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entitled to protection.

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competition claims should not be foreclosed as a matter of law because its mark “can”

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acquire distinctiveness. (Opp’n to Defs. MPSJ 8, ECF No. 43.) However, it cites no

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authority for the proposition that the ability or potential to acquire distinctiveness in

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the future carries the right to prevent others from using the (currently non-distinctive)

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mark in the present. If that were the rule, any person or entity could essentially

Trowbridge Sidoti LLP attempts to argue that its unfair

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reserve any non-distinctive mark just by claiming that it was possible for the mark to

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acquire secondary meaning, and thus distinctiveness, in the future. The Court cannot

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allow such a result.

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Trowbridge Sidoti LLP also argues that there is a genuine issue of fact as to

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whether the mark has acquired secondary meaning in the minds of the consuming

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public (id. at 9), but the Court finds that this argument is conclusory and disagrees

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with the sentiment. Trowbridge Sidoti LLP would have to submit overwhelming

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evidence of secondary meaning to combat the recent PTO finding that the subject

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mark lacks distinctiveness, and it has failed to do so. See Anderson, 477 U.S. at 252

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(“[t]he mere existence of a scintilla of evidence in support of the plaintiff’s position

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will be insufficient [in a summary judgment proceeding]”). For these reasons, the

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Court finds that Trowbridge Sidoti LLP cannot as a matter of law prove its case for its

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unfair competition claims (its first through third causes of action). Therefore, the

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Court GRANTS Defendants’ motion.

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VI.

CONCLUSION

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For the reasons discussed above, the Court DENIES Trowbridge Sidoti LLP’s

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motion for partial summary judgment (ECF No. 29) and GRANTS Defendant’s

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motion for partial summary judgment (ECF No. 30).

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IT IS SO ORDERED.

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August 28, 2017

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____________________________________
OTIS D. WRIGHT, II
UNITED STATES DISTRICT JUDGE

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