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)

Download PDF
O 1 2 3 4 5 6 7 United States District Court Central District of California 8 9 10 11 Plaintiff/Counterdefendant, 12 13 14 15 16 17 18 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. 19 20 I. INTRODUCTION 21 In this suit and countersuit over the ownership of the domain name 22 (and related domains and brand names), both sides have 23 moved for partial summary judgment on certain causes of action. (ECF Nos. 29, 30.) 24 For the reasons discussed below, the Court DENIES Plaintiff Trowbridge Sidoti 25 LLP’s motion and GRANTS Defendants’ motion.1 26 27 28 1 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. 1 II. FACTUAL BACKGROUND 2 The parties in this case have a tangled history with one another. 3 Plaintiff/Counterdefendant Trowbridge Sidoti LLP is a law firm headquartered in 4 Lake Forest, California. (Compl. ¶ 8, ECF No. 1; Trowbridge Decl. ¶ 2, ECF No. 29- 5 4.) The two partners of the firm are Eugene Trowbridge and Jillian Sidoti.2 (See 6 Compl. ¶¶ 10, 20.) Defendant/Counter Claimant Kim Lisa Taylor is an attorney who 7 currently owns a Florida law firm called Syndication Attorneys, PLLC, which is also 8 named as a Defendant/Counter Claimant in this case.3 (Countercl. ¶ 23, ECF No. 11.) 9 Prior to forming Syndication Attorneys, PLLC, Kim Lisa Taylor worked for Eugene 10 Trowbridge as a contract attorney beginning in 2008. (Id. ¶ 8.) Eugene Trowbridge’s 11 practice was at that time a sole proprietorship. (Id.; Compl. ¶ 10.) 12 After working together for some time, Eugene Trowbridge and Kim Lisa Taylor 13 discussed forming a partnership. (See Taylor Dep., Vol. I, Ex. 6, ECF No. 39-2.) 14 They also discussed using the domain name as a website 15 and/or brand name for the partnership. (Taylor Dep., Vol. I, Ex. 6.) Specifically, on 16 June 1, 2009, Kim Lisa Taylor wrote to Eugene Trowbridge in an e-mail, 17 “‘’ is available. I think it would be a nice website address 18 for us and we can use it for emails also. I can register it with Go-Daddy [sic].” (Id.) 19 A receipt from, Inc. shows that Kim Lisa Taylor reserved the domain 20 name that same day. (Trowbridge Decl., Ex. A.) Eugene 21 Trowbridge claims to have reimbursed her for the transaction, but Kim Lisa Taylor 22 states that she has no recollection of being reimbursed for the cost. (See Taylor Decl. 23 ¶ 9, ECF No. 52-2.) In September 2009, Eugene Trowbridge and Kim Lisa Taylor 24 officially formed a partnership called Trowbridge & Taylor LLP. (Compl. ¶ 11; 25 26 27 28 2 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. 3 Defendants/Counter Claimants Kim Lisa Taylor and Syndication Attorneys PLLC will be collectively referred to as “Defendants.” 2 1 Registered Limited Liability Partnership Registration, Taylor Dep., Vol. I, Ex. 4.) 2 Later, on August 30, 2011, Kim Lisa Taylor advised Eugene Trowbridge via e-mail, 3 “I have all our [domain names] on auto-renew with the Company Credit card so it 4 [sic] should never expire or get transferred.” (Taylor Dep., Vol. II, Ex. 46.) 5 In or around January 2014, Jillian Sidoti joined Eugene Trowbridge and Kim 6 Lisa Taylor to form Trowbridge, Taylor & Sidoti LLP (“TTS LLP”). (Trowbridge 7 Decl. ¶ 7.) Also in January 2014, TTS LLP began using for 8 its website. (Id. ¶ 8.) The ownership of this website name, in addition to the use of 9 the terms Syndication Attorney and Syndication Lawyers, are the subjects of the 10 claims and counterclaims in this action. 11 On March 21, 2016, Kim Lisa Taylor notified Eugene Trowbridge and Jillian 12 Sidoti that she would be withdrawing from TTS LLP to form a new law firm in 13 Florida. (Taylor Dep., Vol. II, Ex. 26.) At the same time, she proposed using the 14 domain name to cross-market her new firm with Trowbridge 15 Sidoti LLP. 16 was owned by the partnership. (Id. at Ex. 27.) Kim Lisa 17 Taylor 18 and discontinued e-mails directed to addresses identified by 19 that domain name. (Taylor Dep. at 175–76.) 20 (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 21 domain name is partnership property, as it was paid for 22 using partnership funds and intended by all three relevant principals (Eugene 23 Trowbridge, Kim Lisa Taylor, and Jillian Sidoti) to be partnership property. 24 However, Kim Lisa Taylor advances additional facts and evidence she claims support 25 her ownership of the domain name. She asserts that her husband, Christopher Guillet, 26 suggested to her in 2008 that she market her services under the domain name 27 (singular). (Taylor Decl. ¶ 2.) On or about April 24, 2008, 28 Guillet purchased and registered that domain name. (Id.) Kim Lisa Taylor used it for 3 1 her private practice between April 24, 2008, and January 1, 2010. (Id. ¶ 3.) Kim Lisa 2 Taylor purchased and registered the domain name (plural) 3 on June 1, 2009, in her own name. (Trowbridge Decl., Ex. A; Taylor Decl. ¶ 6.) Kim 4 Lisa Taylor claims that she “never transferred the registration to another name and 5 thus, never otherwise transferred ownership.” (Taylor Decl. ¶ 6.) 6 In addition to the dispute over who owns and whether 7 Kim Lisa Taylor converted the property without authorization when she shut down the 8 site, Trowbridge Sidoti LLP is also suing Kim Lisa Taylor and Syndication Attorneys, 9 PLLC under a theory of unfair competition. Trowbridge Sidoti LLP’s Complaint 10 states claims for false designation of origin under Section 43 of the Lanham Act (15 11 U.S.C. § 1125(a)), state law unfair competition pursuant to California Business and 12 Professions Code § 17200, and common law unfair competition. (Compl. ¶¶ 35, 37– 13 40.) These claims are based on Kim Lisa Taylor and Syndication Attorneys, PLLC’s 14 use of the term “Syndication Attorney(s)” in business, which Trowbridge Sidoti LLP 15 claims is confusingly similar to its “Syndication Lawyers” marks.” (Id. ¶ 33.) In 16 2016, Trowbridge Sidoti LLP applied to the United States Patent and Trademark 17 Office (“PTO”) to register the design mark, and the PTO 18 rejected it due to its being a merely descriptive (not distinctive) mark. (Gelfound 19 Decl. ¶ 2, Ex. A, ECF No. 33-2.) 20 The parties’ cross-motions for partial summary judgment are now pending 21 before this Court. Trowbridge Sidoti LLP’s motion seeks summary judgment as to its 22 fourth claim for conversion and as to Defendants’ first counterclaim for a declaratory 23 judgment. (Pl. Mot. for Partial Summ. J. (“Pl. MPSJ”), ECF No. 29.) Defendants’ 24 motion asks the Court to enter summary judgment as to Trowbridge Sidoti LLP’s 25 unfair competition claims (its first through third causes of action). (Defs. Mot. for 26 Partial Summ. J. (“Defs. MPSJ”), ECF No. 30.) 27 28 4 1 III. LEGAL STANDARD 2 “The court shall grant summary judgment [or partial summary judgment] if the 3 movant shows that there is no genuine dispute as to any material fact and the movant 4 is entitled to judgment as a matter of law.” Fed. R. Civ. Proc. 56(a). A party seeking 5 summary judgment bears the initial burden of informing the court of the basis for its 6 motion and identifying those portions of the pleadings and discovery responses that 7 demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v. 8 Catrett, 477 U.S. 317, 323 (1986). Where the moving party will have the burden of 9 proof on an issue at trial, the movant must affirmatively demonstrate that no 10 reasonable trier of fact could find other than for the moving party. See id. On an issue 11 as to which the nonmoving party will have the burden of proof, however, the movant 12 can prevail merely by pointing out that there is an absence of evidence to support the 13 nonmoving party’s case. See id. 14 If the moving party meets its initial burden, the nonmoving party must set forth, 15 by affidavit or as otherwise provided in Rule 56, “specific facts showing that there is a 16 genuine issue for trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). 17 In evaluating the evidence presented in support of or in opposition to summary 18 judgment, the court does not make credibility determinations or weigh conflicting 19 evidence. Rather, it draws all inferences in the light most favorable to the nonmoving 20 party. See T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630– 21 31 (9th Cir. 1987). However, conclusory or speculative testimony is insufficient to 22 meet this burden or to raise genuine issues of fact defeating summary judgment. See 23 Nelson v. Pima Cmty. Coll., 83 F.3d 1075, 1081–82 (9th Cir. 1996). 24 IV. PLAINTIFF’S MOTION FOR PARTIAL SUMMARY JUDGMENT 25 Trowbridge Sidoti LLP asks this Court to find as a matter of law that it owns 26 the domain name That question of ownership would be 27 dispositive of Defendants’ first cause of action for a declaratory judgment, as well as 28 necessary for a finding that Kim Lisa Taylor unlawfully converted Trowbridge Sidoti 5 1 LLP’s property (Trowbridge Sidoti LLP’s fourth cause of action). Because the Court 2 cannot make this determination as a matter of law, it DENIES Trowbridge Sidoti 3 LLP’s motion on both counts. 4 A. Legal Standard for Partnership Property 5 Though the parties advance several theories regarding ownership of the domain 6 name, they can all be boiled down to whether the domain 7 name should be properly classified as partnership property or the separate property of 8 Kim Lisa Taylor. 9 The California Corporations Code defines partnership property simply as “property 10 acquired by a partnership.” Cal. Corp. Code § 16203. It explains that such property is 11 property of the partnership and not of the partners individually. Id. There are several 12 ways that a partnership can acquire property. If it is acquired in the name of the 13 partnership or in the name of “one or more partners with an indication in the 14 instrument transferring title to the property of the person’s capacity as a partner or the 15 existence of a partnership but without an indication of the name of the partnership,” 16 then it is partnership property. 17 becomes partnership property by transfer if the transfer is made to (1) the partnership 18 in its name, or (2) “one or more partners in their capacity as partners in the 19 partnership, if the name of the partnership is indicated in the instrument transferring 20 title to the property.” Id. at § 16204(b)(1)–(2). Further, if partnership assets are used 21 to purchase property, that property is presumed to be partnership property even if not 22 acquired in the name of the partnership. Id. at § 16204(c). If property is acquired in 23 the name of one or more of the partners, without an indication in the instrument 24 transferring title to the property of the existence of the property and without using 25 partnership assets, that property is presumed to be separate (non-partnership) property, 26 even if used for partnership purposes. Id. at § 16204(d). The Bankruptcy Appellate 27 Panel for the Ninth Circuit has stated that “[p]artnership property also does not need to 28 be purchased with partnership funds but rather . . . is determined by the understanding Id. at § 16204(a)(1)–(2). 6 In addition, property 1 and intention of the partners.” In re Fair Oaks, Ltd., 168 B.R. 397, 402 (9th Cir. BAP 2 1994) (citing Perelli-Minetti v. Lawson, 205 Cal. 642, 648 (1928)).B. Analysis 3 The evidence presented here cuts in both directions and does not definitively 4 establish ownership as a matter of law. On the one hand, the partnership paid for the 5 renewal fees for the domain name, and Trowbridge Sidoti LLP presents some 6 evidence that suggests Kim Lisa Taylor intended to be 7 partnership property. (Taylor Dep., Vol. I, Ex. 6 (containing an e-mail from Kim Lisa 8 Taylor stating, “‘’ is available. I think it would be a nice 9 website address for us and we can use it for emails also.” (emphasis added)); Taylor 10 Dep., Vol. II, Ex. 46.) On the other hand, Kim Lisa Taylor acquired 11 in her name alone, and the original registration does not 12 reference her status as a partner or the partnership name. (See Trowbridge Decl., Ex. 13 A.) Moreover, Kim Lisa Taylor was not a partner nor had Trowbridge & Taylor LLP 14 been created at the time she purchased the domain name. 15 Registered Limited Liability Partnership Registration, Taylor Dep., Vol. I, Ex. 4, ECF 16 No. 39-2.) Kim Lisa Taylor’s own sworn statements also contradict her alleged 17 intention for the domain name to be partnership property seemingly evidenced in her 18 e-mail to Eugene Trowbridge. (See Taylor Decl. ¶¶ 6–7.) (Compare id., with 19 Defendants also dispute Trowbridge Sidoti LLP’s characterization of each 20 successive version of the firm (Eugene Trowbridge, sole proprietorship; Trowbridge 21 & Taylor, LLP; TTS LLP; and the present version, Trowbridge Sidoti LLP) as a 22 successor in interest of the one before it. (Opp’n to Pl. MPSJ 12–14, ECF No. 52.) 23 However, the Court determines that this issue is not material at this juncture. The 24 Court cannot determine as a matter of law that was ever 25 partnership property, and thus the issue of whether that partnership successively 26 transformed into the current iteration, Trowbridge Sidoti LLP, is not relevant to this 27 ruling. 28 In sum, the available evidence creates a genuine dispute of fact as to whether 7 1 the domain name is partnership property or the separate 2 property of Kim Lisa Taylor. This dispute is material as to the causes of action on 3 which Trowbridge Sidoti LLP seeks summary judgment: its own cause of action for 4 conversion and Defendants’ cause of action for a declaratory judgment. Thus, the 5 Court DENIES Trowbridge Sidoti LLP’s motion. 6 V. DEFENDANTS’ MOTION FOR PARTIAL SUMMARY JUDGMENT 7 Defendants argue that the Court should determine as a matter of law that 8 Trowbridge Sidoti LLP cannot prevail on its unfair competition claims. The Court 9 agrees that summary judgment is appropriate on these claims and GRANTS 10 Defendants’ motion. 11 Trowbridge Sidoti LLP’s first, second, and third causes of action are all 12 premised on its allegation that it owns a trademark for the phrase “Syndication 13 Lawyers.” (See Compl. ¶ 33.) In order to allege that Defendants violated various 14 unfair competition laws based on their use of the “confusingly similar” marks 15 “Syndication Attorney(s),” then, the validity of Trowbridge Sidoti LLP’s mark is a 16 necessary element. (Id.); see Credit One Corp. v. Credit One Fin., Inc., 661 F. Supp. 17 2d 1134, 1137 (C.D. Cal. 2009). Trowbridge Sidoti LLP cannot prove that element. 18 A. Legal Standard for Proving Ownership of a Trademark 19 The standard test of trademark ownership is priority of use. Sengoku Works v. 20 RMC Int’l, 96 F.3d 1217, 1219 (9th Cir. 1996). Moreover, “federal registration of a 21 trademark constitutes prima facie evidence of the validity of a registered mark.” 22 Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 744 (9th Cir. 2006) (internal brackets 23 omitted). If another party claims that it owns the mark, however, it may rebut this 24 presumption with evidence establishing its own prior use in commerce. Dep’t of 25 Parks and Recreation for State of Cal. v. Bazaar Del Mundo Inc., 448 F.3d 1118, 26 1124 (9th Cir. 2006). 27 But where there is no federal registration of a mark, a party can only prove 28 ownership for purposes of the Lanham Act and other unfair competition laws if the 8 1 mark is distinctive (not merely descriptive) or has acquired secondary meaning in the 2 market in connection with a person or entity’s goods in commerce. 3 Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010). 4 B. See, e.g., Analysis 5 Here, all of the available evidence demonstrates that Trowbridge Sidoti LLP 6 does not have an ownership interest in the mark “Syndication Lawyers.” In July 2016, 7 the PTO refused to register the mark based on its finding that the mark was “merely 8 descriptive.” (Gelfound Decl. ¶ 2, Ex. A.) Thus, it is not entitled to a presumption of 9 ownership. See Quiksilver, 466 F.3d at 744. 10 Trowbridge Sidoti LLP responded to the PTO’s finding by claiming that the 11 mark had become descriptive through its five years’ use in commerce. (Gelfound 12 Decl. ¶ 2, Ex. A.) In response, the PTO concluded that the five years of use was 13 insufficient to show acquired distinctiveness because “is 14 highly descriptive of [Trowbridge Sidoti LLP’s] services” due to the fact that 15 Trowbridge 16 SYNDICATION LAWYERS.” (Id.) The PTO’s refusal to register the mark occurred 17 less than one year ago, on December 5, 2016. (Id.) Trowbridge Sidoti LLP did not 18 submit further evidence of acquired distinctiveness to the PTO following this refusal. 19 (Id.) Sidoti LLP is “engaging in SYNDICATION LAW or are 20 Based on the above information, the Court gives deference to the PTO’s finding 21 of non-distinctiveness and determines that and the phrase 22 “Syndication Lawyers” are not valid trademarks for which Trowbridge Sidoti LLP is 23 entitled to protection. 24 competition claims should not be foreclosed as a matter of law because its mark “can” 25 acquire distinctiveness. (Opp’n to Defs. MPSJ 8, ECF No. 43.) However, it cites no 26 authority for the proposition that the ability or potential to acquire distinctiveness in 27 the future carries the right to prevent others from using the (currently non-distinctive) 28 mark in the present. If that were the rule, any person or entity could essentially Trowbridge Sidoti LLP attempts to argue that its unfair 9 1 reserve any non-distinctive mark just by claiming that it was possible for the mark to 2 acquire secondary meaning, and thus distinctiveness, in the future. The Court cannot 3 allow such a result. 4 Trowbridge Sidoti LLP also argues that there is a genuine issue of fact as to 5 whether the mark has acquired secondary meaning in the minds of the consuming 6 public (id. at 9), but the Court finds that this argument is conclusory and disagrees 7 with the sentiment. Trowbridge Sidoti LLP would have to submit overwhelming 8 evidence of secondary meaning to combat the recent PTO finding that the subject 9 mark lacks distinctiveness, and it has failed to do so. See Anderson, 477 U.S. at 252 10 (“[t]he mere existence of a scintilla of evidence in support of the plaintiff’s position 11 will be insufficient [in a summary judgment proceeding]”). For these reasons, the 12 Court finds that Trowbridge Sidoti LLP cannot as a matter of law prove its case for its 13 unfair competition claims (its first through third causes of action). Therefore, the 14 Court GRANTS Defendants’ motion. 15 VI. CONCLUSION 16 For the reasons discussed above, the Court DENIES Trowbridge Sidoti LLP’s 17 motion for partial summary judgment (ECF No. 29) and GRANTS Defendant’s 18 motion for partial summary judgment (ECF No. 30). 19 20 IT IS SO ORDERED. 21 22 August 28, 2017 23 24 25 26 ____________________________________ OTIS D. WRIGHT, II UNITED STATES DISTRICT JUDGE 27 28 10

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?