The National Grange of the Order of Patrons of Husbandry v. California State Grange
Filing
60
MEMORANDUM AND ORDER RE CROSS-MOTIONS FOR SUMMARY JUDGMENT signed by Senior Judge William B. Shubb on 7/14/2015: IT IS ORDERED that 43 Plaintiff's Motion for Summary Judgment be, and the same hereby is, GRANTED; and that 44 Defendant' ;s Motion for Summary Judgment be, and the same hereby is, DENIED. IT IS FURTHER ORDERED that upon entry of final judgment in this action defendant and its agents, affiliates, and assigns, or any party acting in concert with defendant and its agents , affiliates, and assigns, shall be permanently enjoined from using marks containing the word "Grange." The parties shall appear for a Status Conference on 8/17/2015 at 02:00 PM in Courtroom 5 (WBS) before Senior Judge William B. Shubb regarding the status of plaintiff's remaining claims and its prayer for damages. (Kirksey Smith, K)
1
2
3
4
5
6
7
8
UNITED STATES DISTRICT COURT
9
EASTERN DISTRICT OF CALIFORNIA
10
----oo0oo----
11
12
13
14
THE NATIONAL GRANGE OF THE
ORDER OF PATRONS OF
HUSBANDRY, a District of
Columbia nonprofit
corporation,
17
18
19
MEMORANDUM AND ORDER RE: CROSSMOTIONS FOR SUMMARY JUDGMENT
Plaintiff,
15
16
CIV. NO. 2:14-00676 WBS DAD
v.
CALIFORNIA STATE GRANGE, a
California corporation,
Defendant.
20
21
22
----oo0oo---Plaintiff National Grange of the Order of Patrons of
23
Husbandry brought this action for trademark infringement against
24
defendant California State Grange.
25
are the parties’ cross-motions for summary judgment pursuant to
26
Federal Rule of Civil Procedure 56.
27
I. Factual and Procedural Background
28
Presently before the court
Plaintiff is a national fraternal agricultural
1
1
organization founded in 1867 to promote the interests of farmers
2
and farming in the United States.
3
(Docket No. 43-2).)
4
approximately 2,000 local chapters across the country, through
5
which it provides a variety of goods and services to agricultural
6
communities.
7
featuring the word “Grange,” which it uses for associational,
8
educational and advocacy activities.
9
(Docket No. 43-6); Luttrell Decl. ¶ 7.)
10
(Luttrell Decl. ¶¶ 2, 5
Plaintiff has grown to a network of
Plaintiff has registered numerous trademarks
(Turrill Decl. Ex. 21
On July 15, 1873, plaintiff chartered defendant
11
California State Grange as its affiliate state-level chapter.
12
(Turrill Decl. Ex. 9.)
13
collected dues from local subordinate Granges and turned over a
14
portion of those dues to plaintiff.
15
at 44:22-45:15 (Docket No. 43-7).)
16
As a chartered affiliate, defendant
(May 14, 2014 McFarland Dep.
On April 5, 2013, plaintiff revoked defendant’s charter
17
due to a dispute.
(Luttrell Decl. ¶¶ 19, 24; Turrill Decl. Ex.
18
15.)
19
further affiliation with plaintiff and stated that it would amend
20
its bylaws to reflect its new status.
In response, defendant sent a letter disclaiming any
21
(Turrill Decl. Ex. 19.)
Despite its disaffiliation, defendant continues to use
22
the name “California State Grange” at events, on its website, and
23
in its newsletter and other communications.
24
McFarland Dep. at 112:8-11; Turrill Decl. Exs. 7, 23, 24.)
25
Plaintiff sent a cease and desist letter to defendant on December
26
2, 2013.
(Turrill Decl. Ex. 20.)
27
28
2
(May 14, 2014
When defendant was
1
unresponsive, plaintiff filed this lawsuit.1
2
Plaintiff brought claims under the Lanham Act for (1)
3
trademark infringement, 15 U.S.C. § 1114; (2) unfair competition
4
and false designation of origin, 15 U.S.C. § 1125(a); (3)
5
trademark dilution, 15 U.S.C. § 1125(c); and (4) trademark
6
counterfeiting, 15 U.S.C. § 1114(1).
7
Defendant answered with numerous affirmative defenses and
8
counterclaims seeking a declaratory judgment that plaintiff’s
9
trademark is invalid.
(Compl. ¶¶ 48-101.)
(Am. Answer (Docket No. 24).)
Plaintiff
10
now moves for partial summary judgment on its first and second
11
claims for trademark infringement and unfair competition,
12
respectively, and also on defendant’s counterclaims.
13
43.)
14
plaintiff’s claims and its counterclaims on the grounds that it
15
is entitled to the defenses of genericness, abandonment,
16
acquiescence, and unclean hands.
17
44); Def.’s Opp’n at 2 (Docket No. 51).)
18
II. Discussion
(Docket No.
Defendant also moves for summary judgment on all of
19
(Def.’s Mem. at 2 (Docket No.
Summary judgment is proper “if the movant shows that
20
1
21
22
23
24
25
26
27
28
Plaintiff also initiated a proceeding in California
state court, National Grange v. California State Grange, Civ. No.
34-2012-00130434 (Cal. Sup. Ct. filed Oct. 1, 2013), seeking a
declaration of the rights and duties of the parties following the
revocation of California State Grange’s charter.
In addition, there is a related case before this court,
California State Grange v. Grange of the State of California’s
Order of Patrons of Husbandry, Civ. No. 2:15-00317 (E.D. Cal.
filed Feb. 6, 2015), in which California State Grange is suing an
affiliate of the National Grange for trademark infringement. The
court denied a motion to consolidate that action with the present
one, because doing so would have caused delay in the present
action. (June 29, 2015 Order (Docket No. 52).)
3
1
there is no genuine dispute as to any material fact and the
2
movant is entitled to judgment as a matter of law.”
3
P. 56(a).
4
of the suit, and a genuine issue is one that could permit a
5
reasonable jury to enter a verdict in the non-moving party’s
6
favor.
7
(1986).
8
burden of establishing the absence of a genuine issue of material
9
fact and can satisfy this burden by presenting evidence that
10
negates an essential element of the non-moving party’s case.
11
Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986).
12
Alternatively, the moving party can demonstrate that the non-
13
moving party cannot produce evidence to support an essential
14
element upon which it will bear the burden of proof at trial.
15
Id.
Fed. R. Civ.
A material fact is one that could affect the outcome
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
The party moving for summary judgment bears the initial
16
Once the moving party meets its initial burden, the
17
burden shifts to the non-moving party to “designate ‘specific
18
facts showing that there is a genuine issue for trial.’”
19
324 (quoting then-Fed. R. Civ. P. 56(e)).
20
the non-moving party must “do more than simply show that there is
21
some metaphysical doubt as to the material facts.”
22
Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).
23
“The mere existence of a scintilla of evidence . . . will be
24
insufficient; there must be evidence on which the jury could
25
reasonably find for the [non-moving party].”
26
at 252.
Id. at
To carry this burden,
Matsushita
Anderson, 477 U.S.
27
In deciding a summary judgment motion, the court must
28
view the evidence in the light most favorable to the non-moving
4
1
party and draw all justifiable inferences in its favor.
2
255.
3
and the drawing of legitimate inferences from the facts are jury
4
functions, not those of a judge . . . ruling on a motion for
5
summary judgment . . . .”
6
judgment, the court “must review the evidence submitted in
7
support of each cross-motion [in a light most favorable to the
8
non-moving party] and consider each party’s motions on their own
9
merits.”
10
Id. at
“Credibility determinations, the weighing of the evidence,
Id.
On cross-motions for summary
Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090,
1097 (W.D. Wash. 2004).
11
A.
Trademark Infringement under § 1114
12
To prevail on its trademark infringement claim under §
13
1114 of the Lanham Act, a plaintiff must prove: (1) that it has a
14
protectable ownership interest in the mark; and (2) that the
15
defendant’s use of the mark is likely to cause consumer
16
confusion.”2
17
1190, 1202 (9th Cir. 2012) (internal quotation marks and citation
18
omitted).
19
Rearden LLC v. Rearden Commerce, Inc., 683 F.3d
1. Validity of the Trademark
20
“Federal registration of a mark constitutes prima facie
21
evidence of the validity of the mark.”
Yellow Cab Co. of
22
Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 928
23
24
25
26
27
28
2
Plaintiff must also prove that defendant is using
plaintiff’s mark without plaintiff’s consent in commerce. See
Wecosign, Inc. v. IFG Holdings, Inc., 845 F. Supp. 2d 1072, 1079
(C.D. Cal. 2012) (discussing the elements of an infringement
claim). Because it is apparently undisputed that defendant is
using plaintiff’s mark in commerce without plaintiff’s consent,
(see May 14, 2014 McFarland Dep. at 112:8-11), the court will
focus its analysis on the remaining elements.
5
1
(9th Cir. 2005).
2
been properly registered, the burden shifts to the defendant to
3
show by a preponderance of the evidence that the mark is not
4
protectable.”
5
1108, 1114 (9th Cir. 2010).
6
their registrations of the Grange trademark, (see Watson Decl. ¶
7
7, Ex. 21), and defendant has not raised a genuine dispute that
8
the registration was proper.
9
thus presumptively valid, and the burden shifts to defendant to
10
“If the plaintiff establishes that a mark has
Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d
Plaintiff has submitted evidence of
Plaintiff’s trademark “Grange” is
show it is invalid because it is generic.
11
A term is generic if it “refers, or has come to be
12
understood as referring to the genus of which the particular
13
product or service is a species.”
14
Asian J. Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999).
15
generic term is not protectable as a trademark.
16
Inc. v. Realys, Inc., 482 F.3d 1195, 1197 (9th Cir. 2007).
17
lies in the public domain.
18
Foods, Inc., 468 F. Supp. 2d 1181, 1188 (C.D. Cal. 2007).
19
Filipino Yellow Pages, Inc. v.
A
Rudolph Int’l,
It
Classic Food Int’l Corp. v. Kettle
“Whether a mark is generic is a question of fact.”
20
Yellow Cab, 419 F.3d at 929 (internal quotation marks and
21
citation omitted).
22
word to refer only to a particular producer’s goods or whether
23
the consumer understands the word to refer to the goods
24
themselves.”
25
omitted).
26
“‘who-are-you/what-are-you’ test: a valid trademark answers the
27
former question, whereas a generic product name or adjective
28
answers the latter.”
The test is “whether consumers understand the
Id. (internal quotation marks and citation
Courts in the Ninth Circuit have called this the
Rudolph Int’l, 482 F.3d at 1198.
6
1
As support for its contention that “grange,” as it is
2
used by plaintiff, is generic, defendant offers an excerpt from
3
the 1980 edition of the Random House Dictionary.
4
Mot. Ex. D.)
5
that a term is generic.
6
1147-48 (citing Webster to support the observation that “yellow
7
pages” is generic); Surgicenters of Am., Inc. v. Med. Dental
8
Surgeries, Co., 601 F.2d 1011, 1020 (9th Cir. 1979) (noting that
9
the district court “careful analy[zed]” genericness by
(See Def.’s
Courts sometimes consider dictionaries as evidence
See Filipino Yellow Pages, 198 F.3d at
10
considering dictionary definitions and other evidence of generic
11
use).
12
Random House does not support defendant’s position that
13
“grange” is a generic term meaning farmers’ association.
14
The
1980 edition defines Grange as
15
16
17
n. 1. Brit. A farm with its nearby buildings.
2.
(cap.) a lodge or local branch of a farmers’
association in the U.S.
18
19
20
21
22
23
24
25
26
27
28
(Def.’s Mot. Ex. D.)
Random House indicates that the secondary
use of Grange is “cap.” or capitalized, meaning it is a proper
noun, naming a particular thing.
This would suggest that the
secondary definition refers to a local branch affiliated with one
particular national association, plaintiff.
A more contemporary
dictionary definition further reflects that Grange, when used to
mean an association of farmers, is a proper noun naming
plaintiff’s organization.
In the more recent 2005 version of the
Random House dictionary, the secondary definition of “grange” is
“the Patrons of Husbandry, a farmer’s organization formed in 1867
7
1
for social and cultural purposes.”
2
Ex. N.)
3
dictionary definitions that “grange” is a generic term denoting a
4
local branch of any farmers’ association.
(Pl.’s Opp’n Turrill Decl.
No trier of fact could reasonably conclude from these
5
Beyond the dictionary, there is nothing before the
6
court suggesting plaintiff’s use of “grange,” particularly when
7
capitalized, is generic.
8
use of “grange” meaning a local chapter of an association of
9
farmers in the United States that predates plaintiff’s use.
Defendant has not pointed to a single
10
Moreover, the court has not found any use of “grange” meaning
11
farmers’ association other than plaintiff and its affiliates and
12
defendant’s uses.
13
draw from the evidence before it is that “Grange” does not signal
14
“an association of farmers,” but rather the national association
15
of farmers founded by plaintiff in 1867.
16
The only conclusion the court can reasonably
Moreover, “there is no legal disability in taking a
17
generic name and using it as a trademark for another type of
18
product.”
19
n.10 (4th ed.).
20
are comprised of generic terms, because they do not describe the
21
goods or services offered by the user of the mark.
22
Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).
23
Based on the dictionary definition offered by defendant, “grange”
24
is a generic term for a farm with its nearby buildings.
25
“Grange,” as plaintiff uses it, does not signify that plaintiff
26
deals in “a farm with its nearby buildings.”
27
plaintiff’s national association.
28
2 McCarthy on Trademarks and Unfair competition § 12:1
Arbitrary marks are protectable even though they
Sara Lee
It names
Plaintiff’s mark is therefore not generic, and there is
8
1
no genuine issue of material fact as to the validity of the term
2
“Grange” as a protectable trademark.3
3
2. Consumer Confusion
4
The second element requires a plaintiff to show that “a
5
reasonably prudent consumer in the marketplace is likely to be
6
confused as to the origin or source of the goods or services
7
bearing one of the marks or names at issue in the case.”
8
Rearden, 683 F.3d at 1209.
9
that a reasonably prudent Grange member, prospective member, or
The record is replete with evidence
10
other person contemplating doing business with it is likely to be
11
confused as to the origin of defendant’s services due to its use
12
of “Grange.”
13
Defendant’s use of “grange” on its website strongly
14
suggests it is associated with plaintiff.
The homepage of
15
defendant’s website, which carries the domain
16
californiagrange.org, reads,
17
18
19
20
The Grange is a grass roots organization that began in
1867, in the aftermath of the destructive and divisive
Civil War. . . . We built halls across the rural
landscape of America. . . . For more than 140 years,
we’ve preserved our founding principles of unity,
liberty, and charity.
21
22
23
24
25
26
27
28
3
Another category of mark is a descriptive term. Unlike
a generic term, a descriptive term may sometimes be protected as
a trademark “if the public comes to associate the mark with a
specific source.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo
Winery, 150 F.3d 1042, 1047 (9th Cir. 1998). This acquired
distinctiveness is referred to as ‘secondary meaning.’ Id.
Whether a mark has a secondary meaning is a question of fact.
Yellow Cab, 419 F.3d at 930. Defendant conflates the test for a
generic mark and a descriptive mark. Because the court
determines that plaintiff’s mark is protectable because it is not
generic, it need not discuss whether it might also be protected
as a descriptive mark because it has a secondary meaning.
9
1
2
(Turrill Decl. Ex. 26 (emphasis added).)
Here, defendant
3
recounts plaintiff’s history, and not its own.
4
national association, and not defendant, which limits its
5
services to California, “built halls across the rural landscape
6
of America.”
7
member or prospective member to believe it is affiliated with
8
plaintiff.
9
its website banner, (see id.), implies it is part of “the
Plaintiff, the
By using “we,” defendant is likely to cause a
Defendant’s use of the slogan “We are the Grange” in
10
Grange,” plaintiff’s national association.
11
examples on defendant’s website and in its newsletters of what
12
appear to be uses of “grange” likely to cause the consumer to
13
believe defendant is affiliated with plaintiff, which the court
14
will not enumerate for the sake of brevity.
15
24.)
16
There are many more
(See id. Exs. 7, 23,
Beyond defendant’s communication tools, defendant’s use
17
of plaintiff’s mark is likely to cause confusion, because both
18
plaintiff and defendant offer similar services.
19
counsel for defendant admitted defendant provides the same
20
services as plaintiff.
21
identical, a party looking to join the official Grange will
22
likely believe that defendant is somehow affiliated with
23
plaintiff.
24
Commerce, 354 F. Supp. 61, 76 (N.D. Cal. 1972) (finding that
25
because defendant’s and plaintiff’s civic services were
26
substantially similar, defendant’s use of plaintiff’s trademark
27
would likely confuse consumers).
28
(See id.)
At the hearing,
Because those services are
See U.S. Jaycees v. San Francisco Jr. Chamber of
Lastly, because plaintiff chartered a new chapter in
10
1
California after defendant’s disaffiliation, members and
2
prospective members in California are now likely to be confused
3
as to which California-based Grange is affiliated with national
4
organization.
5
California-based members of National Grange voted to reorganize a
6
state Grange under the name Grange of the State of California’s
7
Order of Patrons of Husbandry, Chartered.
8
a prospective or current member would be uncertain as to which
9
California Grange originates from the national organization.
In 2014, after defendant disaffiliated,
It is foreseeable that
See
10
U.S. Jaycees, 354 F. Supp. at 76 (considering that there was a
11
new official local affiliate bearing a similar name to the
12
disaffiliated defendant as a factor weighing in favor of finding
13
a likelihood of confusion).
14
Defendant has even conceded that two California
15
organizations using the name “Grange” would--and has--caused
16
consumer confusion.
17
Grange is suing the Grange of the State of California’s Order of
18
Patrons of Husbandry (“TGSC”) for trademark infringement.
19
Cal. State Grange v. Grange of the State of Cal.’s Order of
20
Patrons of Husbandry, Civ. No. 2:15-00317 (E.D. Cal. filed
21
February 6, 2015).
22
TGSC’s use of the Grange mark causes “great confusion” among
23
local granges, causing them to pay their dues to TGSC rather than
24
California State Grange.
25
deposition for this lawsuit, defendant’s president, Robert
26
McFarland, stated that TGSC’s use of “Grange” caused actual
27
confusion:
In a separate lawsuit, California State
See
In that suit, California State Grange alleges
(See id., Compl. ¶ 13-14.)
28
11
In his
1
2
3
4
[W]e know of some of our Granges that have accidently
sent their reports and dues to [TGSC].
I get emails
and phone calls consistently from--when they get a
bulletin from [TGSC]. They say, “Is this--is that you
or is it”--like they refer to--[TGSC]. . . . So I
consistently have to enlighten them and tell them
where the communications are coming from.
5
6
(McFarland Dep. at 162:7-18.)
In light of defendant’s concession, and the absence of
7
8
any evidence or argument for why defedant’s use of “Grange” is
9
not likely to cause consumer confusion, only one inference can be
10
drawn: defendant’s use of “Grange” is likely to cause, and
11
apparently has caused, a reasonably prudent consumer in the
12
marketplace to be confused about the origin of defendant’s
13
services.
14
regarding the “Grange” mark’s validity, plaintiff has
15
undisputedly established a trademark infringement claim under §
16
1114.
17
Because there is also no genuine issue of fact
B. Defendant’s Affirmative Defenses
18
1. Estoppel by Acquiescence
19
Defendant insists it had a “long and continued public
20
use of Grange” for 150 years that went unchallenged, and so the
21
court should estop plaintiff from prevailing in a suit that it
22
has waited a century-and-a-half to bring.
23
(Docket No. 44-1).)
24
defendant must prove that plaintiff knew of facts giving it
25
notice of its trademark infringement claim.
26
Corp. v. Gen. Circuit Breaker & Elec. Supply Inc., 106 F.3d 894,
27
899 (9th Cir. 1997).
28
infringement claim requires showing that plaintiff had a
(Def.’s Mem. at 6-7
To establish a claim for acquiescence,
Westinghouse Elec.
As previously discussed, a trademark
12
1
protectable interest in the mark and that defendant’s use of the
2
mark was likely to cause consumer confusion.
3
F.3d at 1202.
4
Rearden LLC, 683
The facts giving rise to the second element of
5
plaintiff’s trademark claim did not exist until defendant
6
disaffiliated with plaintiff in April 2013.
7
remained affiliated with plaintiff, a reasonably prudent consumer
8
in the marketplace would have been correct, and not confused, to
9
believe that defendant’s use of “Grange” marked its affiliation
So long as defendant
10
with plaintiff.
11
confusion until after defendant officially declared it was
12
disaffiliating and stopped paying dues to plaintiff.
13
defendant no longer bore any relation to plaintiff, and was
14
operating by its own bylaws, (McFarland Decl. ¶ 13), and
15
collecting dues on its own terms, (McFarland Dep. at 147:13-
16
150:12), there arose a risk that consumers might be confused as
17
to whether defendant’s use of “Grange” meant the “source” of its
18
services was the national order.
19
There would have been no risk of consumer
Once
A month after defendant disclaimed its affiliation in
20
November 2013, and the facts existed that put plaintiff on notice
21
that defendant’s use was likely to mislead consumers into
22
thinking it remained affiliated with plaintiff, plaintiff sent
23
defendant its cease and desist letter, (Turrill Decl. Ex. 20),
24
and filed this lawsuit in March 2014.
25
file a lawsuit after being put on notice that the facts
26
supporting an infringement claim exists is hardly acquiescence.
27
Based on the evidence before the court, defendant appears to be
28
unable to prevail on its acquiescence theory.
13
Waiting four months to
See Celotex, 477
1
U.S. at 323 (“[T]he plain language of 56(c) mandates the entry of
2
summary judgment, after adequate time for discovery and upon
3
motion, against a party who fails to make a showing sufficient to
4
establish the existence of an element essential to that party’s
5
case, and on which that party will bear the burden of proof at
6
trial.”).
7
2. Abandonment/Naked Licensing
8
“[N]aked licensing may result in the trademark ceasing
9
to function as a symbol of quality and controlled source.”
10
Barcamerica Int’l USA Trust v. Tyfield Imps., Inc., 289 F.3d 589,
11
596 (9th Cir. 2002) (internal quotation marks and citation
12
omitted).
13
trademark, “where the licensor fails to exercise adequate quality
14
control over the licensee, a court may find that the trademark
15
owner has abandoned the trademark, in which case the owner would
16
be estopped from asserting rights to the trademark.”
17
Because showing subjective intent to abandon the mark is not
18
required, “the proponent of a naked license theory faces a
19
stringent standard of proof.”
20
Although a trademark owner may license the use of its
Id.
Id.
The Ninth Circuit has not yet decided whether the
21
preponderance of the evidence or clear and convincing standard
22
applies to the naked licensing defense.
23
Freecycle Network, 626 F.3d 509, 514 (9th Cir. 2010).
24
either standard, to overcome summary judgment, defendant must
25
show that, viewing the light most favorable to defendant,
26
plaintiff allowed a licensee to use the Grange trademark with so
27
few restrictions as to compel a finding that plaintiff engaged in
28
naked licensing and abandoned the trademark.
14
Freecycle Sunnyvale v.
Under
See id. at 516.
1
Defendant provides several examples of alleged naked
2
licensing, the first involving an entity called the Brooklyn
3
Grange.
4
Brooklyn, New York, which sells produce through retailers and
5
provides meal and alcohol services.
6
(complaint filed against Brooklyn Grange, LLC in the Eastern
7
District of New York) (Docket No. 51-2).)
8
affiliate or a fraternity of farmers.
9
an infringement action against the Brooklyn Grange.
Brooklyn Grange is a rooftop farming operation in
(See Def.’s Opp’n, Ex. K
It is not a Grange
In 2011, plaintiff brought
(See id.)
10
The case settled, and the parties reached a “Settlement Agreement
11
and License Agreement.”
12
the agreement confidential, and it is not before the court.
13
the title of the document, it can be inferred that plaintiff
14
agreed to license its trademark to the Brooklyn Grange as part of
15
the settlement.
(Def.’s Opp’n Ex. M.)
The parties kept
From
16
Defendant’s only evidence that plaintiff has failed to
17
exercise adequate quality-control over Brooklyn Grange’s license
18
is that Brooklyn Grange makes no reference to the license on its
19
website.
20
standard, no trier of fact could reasonably conclude from this
21
omission that plaintiff has failed to police the license.
22
Anderson, 477 U.S. at 252 (holding that the “mere existence of a
23
scintilla of evidence” is insufficient to overcome summary
24
judgment).
25
license from plaintiff on its website has no apparent connection
26
to whether plaintiff has imposed so few restrictions on the use
27
of its mark that “Grange” has “ceased to function as a symbol of
28
quality and controlled source.”
Even under the lower preponderance of the evidence
See
Whether the Brooklyn Grange has referred to its
See Barcamerica Int’l, 289 F.3d
15
1
at 596.
2
Defendant also points to several farm-to-fork
3
restaurants using Grange in their names, one of which happens to
4
be just a few blocks from this courthouse.
5
licensed these restaurants to use the “Grange” mark, and those
6
licenses are subject to quality control provisions.
7
Decl. ¶ 8.)
8
evidence that plaintiff has failed to maintain adequate quality
9
control over these licensees.
10
Plaintiff has
(Watson
Like the Brooklyn Grange, defendant offers no
Because there is a total absence of evidence in the
11
record that plaintiff failed to exercise adequate quality control
12
over its licensing, defendant cannot meet a “stringent” standard
13
of proof on its naked licensing affirmative defense.
14
Barcamerica Int’l, 289 F.3d at 596.
15
theory must fail.
16
See
Defendant’s naked licensing
See Celotex, 477 U.S. at 323.
3. Unclean Hands
17
“The doctrine [of unclean hands] bars relief to a
18
plaintiff who has violated conscience, good faith or other
19
equitable principles in his prior conduct, . . . [or] who has
20
dirtied his hands in acquiring the right presently asserted.”
21
Seller Agency Council, Inc. v. Kennedy Ctr. for Real Estate
22
Educ., Inc., 621 F.3d 981, 986 (9th Cir. 2010) (citation and
23
internal quotation marks omitted).
24
an unclean hands defense, plaintiff’s alleged misconduct must
25
bear some connection to the transaction from which the complaint
26
arose.
27
asserted by plaintiff against the transgression which, it is
28
contended, serves to foreclose that right.
Id.
For defendant to succeed on
“The court must weigh the substance of the right
16
The relative extent
1
of each party’s wrong upon the other and upon the public should
2
be taken into account, and an equitable balance struck.”
3
Republic Molding Corp. v. B.W. Photo Utils., 319 F.2d 347, 350
4
(9th Cir. 1963).
5
plaintiff’s wrong, compared with the defendant’s wrong, warrants
6
punishment of the plaintiff rather than of the defendant.
Ultimately, the court must decide whether
7
There is no evidence before the court suggesting
8
plaintiff engaged in wrongful conduct in connection to its
9
claims.
Id.
According to plaintiff’s constitution, subordinate
10
granges “derive their rights and powers” from plaintiff.
11
(Turrill Decl. Ex. 22, Ch. 1 art. III § 1.3.1 (Docket No. 43-7).)
12
Plaintiff retains the authority to issue charters.
13
§ 1.4.1.)
14
revocation of charters where the “good of the Order” requires
15
such action.
16
defendant’s charter, plaintiff stated the reason for the
17
revocation was that defendant made no effort to work with
18
plaintiff following the suspension of defendant’s president for
19
violating rules in the charter and instead launched a
20
“destructive public relations campaign” against plaintiff.
21
(Turrill Decl. Ex. 15.)
22
states the disaffiliation was the result of a “political dispute”
23
between the parties, without offering more explanation.
24
(McFarland Decl. ¶ 13 (Docket 44-4).)
25
ground for revoking defendant’s charter, it is not genuinely
26
disputed that plaintiff was acting within its rights and in
27
accordance with its bylaws when it revoked defendant’s charter.
28
Plaintiff even afforded defendant procedural due process, giving
(Id. art. IV
Plaintiff’s bylaws set out the procedure for the
(See id. Ch. 4 art. V.)
In its letter revoking
Defendant’s president McFarland merely
17
Regardless of the precise
1
defendant the opportunity to appeal the decision.
2
Ex. 16.)
3
Defendant declined.
(Turrill Decl.
(McFarland Dep. at 78:14-79:16.)
Moreover, as the organization bearing the right to use
4
the “Grange” name, plaintiff was also within its right to charter
5
a new organization in California.
6
Defendant asserts that after kicking out defendant, plaintiff’s
7
purpose in beginning a new California Grange chapter was “to take
8
defendant’s local chapters and cripple defendant organization.”
9
(Def.’s Opp’n at 14.)
(See Ex. 22 art. IV § 1.4.1.)
Defendant offers no evidentiary support
10
for this bare allegation.
11
favorable to defendant, plaintiff’s conduct does not rise to the
12
level of violating “conscience, or good faith, or other equitable
13
standards of conduct” such that plaintiff should be precluded
14
from enforcing its rights.
15
at 986.
16
Viewing the record in the light most
See Seller Agency Council, 621 F.3d
The record supports only one conclusion: plaintiff’s
17
behavior, compared with the defendant’s infringement, should not
18
prevent plaintiff from enforcing its right to its trademark.
19
Defendant’s unclean hands defense must also fail.
20
477 U.S. at 323.
21
See Celotex,
Plaintiff has thus undisputedly established a trademark
22
infringement claim, and based on the record, defendant cannot
23
prevail on any of its affirmative defenses.
24
court must grant plaintiff’s motion for summary judgment and deny
25
defendant’s motion for the same on plaintiff’s first claim for
26
trademark infringement.
27
counterclaims turn on the same legal issues, the court will also
28
grant plaintiff’s motion for summary judgment and deny motion for
Accordingly, the
Moreover, because defendant’s
18
1
the same on defendant’s counterclaims.
2
3
B. Unfair Competition and False Designation of Origin
under § 1125(a)
4
Plaintiffs commonly frame their claims in infringement
5
suits under both §§ 1114 and 1125(a).
Brookfield Commc’ns, Inc.
6
v. W. Coast Entm’t Corp., 174 F.3d 1036, 1046 n.8 (9th Cir.
7
1999).
8
identical.”
9
Supp. 2d 1072, 1079 (C.D. Cal. 2012) (jointly analyzing the
“The analysis under the two provisions is oftentimes
Id; see Wecosign, Inc. v. IFG Holdings, Inc., 854 F.
10
plaintiff’s §§ 1114 and 11259(a) claims).
11
for plaintiff’s first two claims appear to be indistinguishable
12
in all respects that are material to this action, the court must
13
also grant plaintiff’s motion for summary judgment with respect
14
to its second claim for unfair competition.
15
16
Because the analyses
C. Remaining Claims on which Defendant Moves for
Summary Judgment
17
While plaintiff only moves for summary judgment on its
18
first two claims, defendant moves for summary judgment on all of
19
plaintiff’s claims as well as its counterclaims seeking the court
20
declare plaintiff’s trademark invalid and abandoned.
21
defendant failed to address any of plaintiff’s remaining two
22
claims, the court will deny defendant’s motion for summary
23
judgment as to those claims.
24
Because
IT IS THEREFORE ORDERED that plaintiff’s motion for
25
summary judgment be, and the same hereby is, GRANTED; and that
26
defendant’s motion for summary judgment be, and the same hereby
27
is, DENIED.
28
IT IS FURTHER ORDERED that upon entry of final judgment
19
1
in this action defendant and its agents, affiliates, and assigns,
2
or any party acting in concert with defendant and its agents,
3
affiliates, and assigns, shall be permanently enjoined from using
4
marks containing the word “Grange.”
5
The parties shall appear for a status conference on
6
August 17, 2015 at 2:00 p.m. regarding the status of plaintiff’s
7
remaining claims and its prayer for damages.
8
Dated:
July 14, 2015
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
20
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?