The National Grange of the Order of Patrons of Husbandry v. California State Grange et al.

Filing 153

ORDER signed by Senior Judge William B. Shubb on 8/4/2017 DENYING 138 Motion for Summary Judgment (Washington, S)

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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NATIONAL GRANGE and
CALIFORNIA STATE GRANGE,

Civ. No. 2:16-0201 WBS DB

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ORDER RE: MOTION FOR SUMMARY
JUDGMENT

Plaintiffs,
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v.
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CALIFORNIA GUILD, formerly
doing business as “California
State Grange,” and ROBERT
MCFARLAND,
Defendants.

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----oo0oo----

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Plaintiffs National Grange and California State Grange

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brought this action against defendants California Guild and

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Robert McFarland, alleging that defendants continue to violate

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their trademark, copyright, and tangible property rights after

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the conclusion of Nat’l Grange v. Cal. State Grange, Civ. No.

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2:14-0676 WBS DAD (E.D. Cal. filed Mar. 12, 2014) (“Grange I”).

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(Compl. (Docket No. 1).)

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Plaintiffs assert ten causes of action in their amended
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Complaint: (1) false designation of origin under the Lanham Act,

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15 U.S.C. § 1125(a)(1)(A); (2) false advertisement under the

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Lanham Act, id. § 1125(a)(1)(B); (3) false advertisement under

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the California Business and Professional Code, Cal. Bus. & Prof.

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Code § 17500; (4) trademark infringement under the Lanham Act, 15

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U.S.C. § 1114; (5) infringement of unregistered logo and trade

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dress under the Lanham Act, 15 U.S.C. § 1125(a); (6) copyright

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infringement under the Copyright Act, 17 U.S.C. § 106; (7) trade

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libel under California common law; (8) intentional interference

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with contractual relations under California common law; (9)

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trespass under California common law; and (10) conversion under

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California common law.

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Defendants moved to dismiss plaintiffs’ amended Complaint in its

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entirety in August 2016.

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defendants’ motion as to plaintiffs’ infringement of unregistered

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logo and trade dress and intentional interference with

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contractual relations claims, and denied the motion in all other

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respects.

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Plaintiffs have not filed a second amended complaint.

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(Am. Compl. at 38-51 (Docket No. 75).)

(Docket No. 77.)

The court granted

(Nov. 15, 2016 Order at 23 (Docket No. 106).)

Defendants now move for summary judgment as to the

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eight claims remaining in plaintiffs’ amended Complaint

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(“remaining claims”).

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contend that the remaining claims are barred by res judicata,

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collateral estoppel, or the law of the case doctrine because the

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claims were litigated and decided in Grange I or a related state

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action the parties were involved in, Nat’l Grange v. Cal. State

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Grange, No. 34-2012-00130439 CU MC GDS (Cal. Sup. Ct. filed Oct.

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1, 2012) (“state action”).

(Defs.’ Mot. (Docket No. 138).)

They

(See Defs.’ Mot., Mem. (“Defs.’
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Mem.”) at i (Docket No. 138-1).)

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Summary judgment is proper “if the movant shows that

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

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movant is entitled to judgment as a matter of law.”

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P. 56(a).

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undisputed, and the heart of the controversy is the legal effect

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of such facts, such a dispute effectively becomes a question of

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law that can, quite properly, be decided on summary judgment.”1

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Joyce v. Renaissance Design Inc., No. CV 99-07995 LGB (EX), 2000

Fed. R. Civ.

“[W]here the operative facts are substantially

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WL 34335721, at *2 (C.D. Cal. May 3, 2000); see also Braxton-

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Secret v. A.H. Robins Co., 769 F.2d 528, 531 (9th Cir. 1985)

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(“[W]here the palpable facts are substantially undisputed, [the

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controverted] issues can become questions of law which may be

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properly decided by summary judgment.”).

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Defendants’ contention that the remaining claims are

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barred by res judicata or collateral estoppel was raised at the

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time defendants moved for dismissal of plaintiffs’ amended

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Complaint.

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6, 21-22 (Docket No. 103).)

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that contention in its order granting defendants’ motion to

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dismiss in part.

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California false advertisement claims, the court stated:

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(See Docket No. 77 at 17-18; Oct. 17, 2016 Tr. at 4The court considered and rejected

With respect to plaintiffs’ Lanham Act and

Grange I decided ownership of the word “Grange,” and
enjoined defendants from the use of that term . . . .
The conduct alleged to support plaintiff’s Lanham Act
[and California false advertisement] claims in this
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The parties agree that there are no disputed issues of
material fact for purposes of the present Motion. (See Defs.’
Reply at 1-2 (Docket No. 151); Pls.’ Opp’n at 1 (Docket No.
140).)
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action is different from the conduct enjoined in
Grange I. It involves more than merely the use of the
word “Grange.” To the extent that the complaint here
alleges that defendants are representing they are the
same organization as the California State Grange, that
they are responsible for the history and achievements
of the California State Grange, or making other false
or misleading representations causing confusion among
local granges, it goes beyond the complaint in Grange
I and seeks to enjoin different conduct. Accordingly,
the court will not dismiss plaintiffs’ Lanham Act [and
California false advertisement] claims on res judicata
grounds.
(Nov. 15, 2016 Order at 16-17.)

With respect to plaintiffs’

trespass and conversion claims, the court stated:
Plaintiffs’ trespass and conversion claims are not
barred under the doctrine of res judicata by the
underlying state court action in this case because
that action remains pending on appeal. See Eichman v.
Fotomat Corp., 759 F.2d 1434, 1439 (9th Cir. 1985)
(“Under California law . . . a judgment is not final
for purposes of res judicata during the pendency of
and until the resolution of an appeal.”); see also
Howard v. Am. Online Inc., 208 F.3d 741, 748 (9th Cir.
2000) (“The preclusive effect of a state court
judgment in federal court is based on state preclusion
law.”). Neither does Grange I bar such claims, as
Grange I decided ownership of the word “Grange,” (see
Apr. 20 Order at 3), not defendants’ subsequent
alleged refusal to vacate and return Grange property.
See W. Radio Servs., 123 F.3d at 1192 (“In order for
res judicata to apply there must be...an identity of
claims....”). Accordingly, the court will not dismiss
plaintiffs’ trespass and conversion claims on res
judicata grounds.

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(Id. at 21-22.)2
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The court did not specifically address whether
plaintiffs’ copyright infringement and trade libel claims were
barred by res judicata or collateral estoppel in ruling on
defendants’ motion to dismiss because defendants did not
specifically argue for dismissal of those claims on res judicata
or collateral estoppel grounds. They make no such arguments now,
either.

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Defendants cite no new facts, absence of facts, or law

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in the present Motion that support granting them summary judgment

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on res judicata or collateral estoppel grounds.

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that the remaining claims are not barred on res judicata or

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collateral estoppel grounds at the time of defendants’ motion to

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dismiss, and being presented with no new information to rule

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otherwise, the court will not grant summary judgment to

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defendants on res judicata or collateral estoppel grounds now.

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See United States v. Jingles, 702 F.3d 494, 499 (9th Cir. 2012)

Having decided

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(“Under the ‘law of the case’ doctrine, a court is ordinarily

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precluded from reexamining an issue [it] previously decided . . .

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in the same case.”).

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Defendants do raise, for the first time, an argument

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that the remaining claims are barred based on the law of the case

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doctrine.

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and the state action, and the appellate decisions to be rendered

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in those cases,3 constitute the law of “this case.”

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at 6.)

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[plaintiffs] seek[] in this case,” defendants argue, they bar

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plaintiffs from asserting the remaining claims.

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According to defendants, judgments entered in Grange I

(Defs.’ Mem.

Because those rulings concern “the [same] relief

(Id. at 6-7.)

Defendants misunderstand the law of the case doctrine.

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That doctrine counsels courts to refrain from reconsidering

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issues previously decided in the same case.

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F.3d at 499 (“Under the ‘law of the case’ doctrine, a court is

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ordinarily precluded from reexamining an issue [it] previously

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See Jingles, 702

Defendants have appealed both Grange I and the state
action. (See Defs.’ Req. for Judicial Notice Ex. I, Grange I
Notice of Appeal (Docket No. 139-1); id. Ex. H, State Action
Appellate Brief (Docket No. 139-10).)
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decided . . . in the same case.” (emphasis added)); see also

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Arizona v. California, 460 U.S. 605, 618 (1983) (“[T]he [law of

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the case] doctrine posits that when a court decides upon a rule

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of law, that decision should continue to govern the same issues

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in subsequent stages in the same case.” (emphasis added)).

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judgments entered and appellate decisions to be rendered in

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Grange I and the state action are rulings of other cases.

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extent those rulings may bar plaintiffs from asserting the

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remaining claims, they would do so pursuant a theory of res

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To the

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judicata or collateral estoppel.

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that Grange I and the state action do not bar plaintiffs from

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asserting the remaining claims pursuant to those theories.

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ruling, unlike the rulings in Grange I and the state action, is

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the law of this case.

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The court has already ruled

That

IT IS THEREFORE ORDERED that defendants’ Motion for

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summary judgment be, and the same hereby is, DENIED.

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Dated:

August 4, 2017

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