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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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 EASTERN DISTRICT OF CALIFORNIA 10 ----oo0oo---11 12 NATIONAL GRANGE and CALIFORNIA STATE GRANGE, Civ. No. 2:16-0201 WBS DB 13 ORDER RE: MOTION FOR SUMMARY JUDGMENT Plaintiffs, 14 v. 15 16 17 18 CALIFORNIA GUILD, formerly doing business as “California State Grange,” and ROBERT MCFARLAND, Defendants. 19 ----oo0oo---- 20 21 Plaintiffs National Grange and California State Grange 22 brought this action against defendants California Guild and 23 Robert McFarland, alleging that defendants continue to violate 24 their trademark, copyright, and tangible property rights after 25 the conclusion of Nat’l Grange v. Cal. State Grange, Civ. No. 26 2:14-0676 WBS DAD (E.D. Cal. filed Mar. 12, 2014) (“Grange I”). 27 (Compl. (Docket No. 1).) 28 Plaintiffs assert ten causes of action in their amended 1 1 Complaint: (1) false designation of origin under the Lanham Act, 2 15 U.S.C. § 1125(a)(1)(A); (2) false advertisement under the 3 Lanham Act, id. § 1125(a)(1)(B); (3) false advertisement under 4 the California Business and Professional Code, Cal. Bus. & Prof. 5 Code § 17500; (4) trademark infringement under the Lanham Act, 15 6 U.S.C. § 1114; (5) infringement of unregistered logo and trade 7 dress under the Lanham Act, 15 U.S.C. § 1125(a); (6) copyright 8 infringement under the Copyright Act, 17 U.S.C. § 106; (7) trade 9 libel under California common law; (8) intentional interference 10 with contractual relations under California common law; (9) 11 trespass under California common law; and (10) conversion under 12 California common law. 13 Defendants moved to dismiss plaintiffs’ amended Complaint in its 14 entirety in August 2016. 15 defendants’ motion as to plaintiffs’ infringement of unregistered 16 logo and trade dress and intentional interference with 17 contractual relations claims, and denied the motion in all other 18 respects. 19 Plaintiffs have not filed a second amended complaint. 20 (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 21 eight claims remaining in plaintiffs’ amended Complaint 22 (“remaining claims”). 23 contend that the remaining claims are barred by res judicata, 24 collateral estoppel, or the law of the case doctrine because the 25 claims were litigated and decided in Grange I or a related state 26 action the parties were involved in, Nat’l Grange v. Cal. State 27 Grange, No. 34-2012-00130439 CU MC GDS (Cal. Sup. Ct. filed Oct. 28 1, 2012) (“state action”). (Defs.’ Mot. (Docket No. 138).) They (See Defs.’ Mot., Mem. (“Defs.’ 2 1 Mem.”) at i (Docket No. 138-1).) 2 Summary judgment is proper “if the movant shows that 3 there is no genuine dispute as to any material fact and the 4 movant is entitled to judgment as a matter of law.” 5 P. 56(a). 6 undisputed, and the heart of the controversy is the legal effect 7 of such facts, such a dispute effectively becomes a question of 8 law that can, quite properly, be decided on summary judgment.”1 9 Joyce v. Renaissance Design Inc., No. CV 99-07995 LGB (EX), 2000 Fed. R. Civ. “[W]here the operative facts are substantially 10 WL 34335721, at *2 (C.D. Cal. May 3, 2000); see also Braxton- 11 Secret v. A.H. Robins Co., 769 F.2d 528, 531 (9th Cir. 1985) 12 (“[W]here the palpable facts are substantially undisputed, [the 13 controverted] issues can become questions of law which may be 14 properly decided by summary judgment.”). 15 Defendants’ contention that the remaining claims are 16 barred by res judicata or collateral estoppel was raised at the 17 time defendants moved for dismissal of plaintiffs’ amended 18 Complaint. 19 6, 21-22 (Docket No. 103).) 20 that contention in its order granting defendants’ motion to 21 dismiss in part. 22 California false advertisement claims, the court stated: 23 24 25 26 27 28 (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 1 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).) 3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 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 identity of claims....”). Accordingly, the court will not dismiss plaintiffs’ trespass and conversion claims on res judicata grounds. 22 23 24 25 26 27 (Id. at 21-22.)2 2 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. 28 4 1 Defendants cite no new facts, absence of facts, or law 2 in the present Motion that support granting them summary judgment 3 on res judicata or collateral estoppel grounds. 4 that the remaining claims are not barred on res judicata or 5 collateral estoppel grounds at the time of defendants’ motion to 6 dismiss, and being presented with no new information to rule 7 otherwise, the court will not grant summary judgment to 8 defendants on res judicata or collateral estoppel grounds now. 9 See United States v. Jingles, 702 F.3d 494, 499 (9th Cir. 2012) Having decided 10 (“Under the ‘law of the case’ doctrine, a court is ordinarily 11 precluded from reexamining an issue [it] previously decided . . . 12 in the same case.”). 13 Defendants do raise, for the first time, an argument 14 that the remaining claims are barred based on the law of the case 15 doctrine. 16 and the state action, and the appellate decisions to be rendered 17 in those cases,3 constitute the law of “this case.” 18 at 6.) 19 [plaintiffs] seek[] in this case,” defendants argue, they bar 20 plaintiffs from asserting the remaining claims. 21 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. 22 That doctrine counsels courts to refrain from reconsidering 23 issues previously decided in the same case. 24 F.3d at 499 (“Under the ‘law of the case’ doctrine, a court is 25 ordinarily precluded from reexamining an issue [it] previously 26 27 28 3 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).) 5 1 decided . . . in the same case.” (emphasis added)); see also 2 Arizona v. California, 460 U.S. 605, 618 (1983) (“[T]he [law of 3 the case] doctrine posits that when a court decides upon a rule 4 of law, that decision should continue to govern the same issues 5 in subsequent stages in the same case.” (emphasis added)). 6 judgments entered and appellate decisions to be rendered in 7 Grange I and the state action are rulings of other cases. 8 extent those rulings may bar plaintiffs from asserting the 9 remaining claims, they would do so pursuant a theory of res The To the 10 judicata or collateral estoppel. 11 that Grange I and the state action do not bar plaintiffs from 12 asserting the remaining claims pursuant to those theories. 13 ruling, unlike the rulings in Grange I and the state action, is 14 the law of this case. 15 The court has already ruled That IT IS THEREFORE ORDERED that defendants’ Motion for 16 summary judgment be, and the same hereby is, DENIED. 17 Dated: August 4, 2017 18 19 20 21 22 23 24 25 26 27 28 6

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