Helio LLC v. Palm, Inc.

Filing 86

Proposed Order re 85 Memorandum in Opposition Denying Plaintiff's Request for Dismissal Without Terms and Conditions by Palm, Inc.. (Roberts, Andrea) (Filed on 3/30/2007)

Helio LLC v. Palm, Inc.

Doc. 8

1 QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP Claude M. Stern (Bar No. 96737) 2 Brian Cannon (Bar No. 193071) Doug Colt (Bar No. 210915) 3 Andrea Pallios Roberts (Bar No. 228128) [e-mail] 4 [e-mail] [e-mail] 5 [e-mail] 555 Twin Dolphin Drive, Suite 560 6 Redwood Shores, California 94065-2139 Telephone: [phone] Facsimile: [phone] 8 Attorneys for Defendant Palm, Inc. 9 10 11 12 13 14 HELIO LLC 15 16 vs. Plaintiff, UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION CASE NO. C 06 7754 SBA __________________________ [PROPOSED] ORDER DENYING PLAINTIFF'S REQUEST FOR DISMISSAL WITHOUT TERMS AND CONDITIONS

17 PALM, INC. 18 19 20 1. On March 21, 2007, plaintiff Helio filed a motion to voluntarily dismiss its claims Defendant.

21 with prejudice. 22 2. On March 29, 2007, defendant Palm filed a request for terms and conditions in

23 connection with dismissal without prejudice or, in the alternative, request for dismissal with 24 prejudice. 25 26 3. 4. The Court heard oral argument on plaintiff's motion on April 10, 2007. Having considered the papers and evidence in support of and in opposition to

27 plaintiff's motion, the papers and evidence in support of and in opposition to plaintiff's motion for 28
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Case No. C 06 7754 SBA [PROPOSED] ORDER Dockets.Justia.com

1 a preliminary injunction, the relevant authorities, and the respective arguments of counsel, the 2 Court denies plaintiff's motion and now rules as follows: 3 5. There is no evidence that plaintiff's "Don't call it a phone" and "Don't call us a

4 phone company" marks have secondary meaning. The Declaration of Howard Marylander (docket 5 no. 57) submitted by defendant convincingly demonstrates that there is no secondary meaning. 6 6. There is no evidence of confusion between plaintiff's marks and defendant's "Not

7 Just a Cell Phone. A Treo." theme line. The Declaration of Howard Marylander (docket no. 58) 8 submitted by defendant convincingly establishes that there is no actual confusion and no 9 likelihood of confusion. 10 7. Plaintiff does not have a likelihood of success on the merits of its trademark

11 infringement claim. An analysis of Helio's claim of trademark infringement requires analysis of 12 the eight factors articulated in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 13 1979): 14 15 16 17 18 19 20 21 22 8. a. b. c. d. e. f. g. h. The strength of the allegedly infringed mark; The similarity of goods and services; The similarity of marks; The similarity of marketing channels; Palm's intent on selecting its mark; Evidence of actual confusion; The degree of care likely to be exercised by consumers, and The degree of expansion into other markets.

Having analyzed these factors both individually and collectively, the Court

23 concludes that, on balance, they weigh in favor of a finding of no likelihood of confusion. 24 9. With regard to the strength of the allegedly infringed mark, the Court finds that

25 plaintiff has not produced evidence of secondary meaning. The evidence presented by defendant 26 convincingly demonstrates that there is no secondary meaning. 27 10. With regard to the similarity of goods and services, the Court finds that they are

28 different. Plaintiff did not produce evidence to demonstrate similarity. The evidence presented by
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Case No. C 06 7754 SBA [PROPOSED] ORDER

1 defendant demonstrates that the functions available on plaintiff's devices are entertainment- and 2 youth-oriented and are not available on the Treo 680. The evidence further establishes that 3 plaintiff is a network service provider and defendant is not. 4 11. With regard to similarity of marks, the Court finds that they are different. Plaintiff

5 did not present evidence to demonstrate similarity. The evidence presented by defendant 6 demonstrates that the marks are different in sight, sound, and meaning. 7 12. With regard to similarity of marketing channels, the Court finds that they are

8 different. Plaintiff did not produce evidence to demonstrate similarity. 9 13. With regard to defendant's intent on selecting its mark, the Court finds that plaintiff

10 did not produce evidence sufficient to establish that defendant intentionally selected its mark due 11 to its alleged similarity to plaintiff's marks. The evidence presented by defendant demonstrates 12 that defendant selected its mark independent of plaintiff. 13 14. With regard to actual confusion, the Court finds that plaintiff did not produce any

14 evidence of confusion. The evidence presented by defendant convincingly establishes that there is 15 no actual confusion and no likelihood of confusion. 16 15. With regard to the degree of care likely to be exercised by consumers, the Court

17 finds that plaintiff did not produce evidence to demonstrate that consumers exercise a low degree 18 of care. The evidence presented by defendant demonstrates that cellular phone devices are 19 expensive and plaintiff's market is tech-savvy, suggesting a high degree of care. 20 16. The parties agreed that the degree of expansion in other markets is not relevant in

21 this case. 22 17. On balance, the above factors suggest that plaintiff is not likely to succeed on the

23 merits of its trademark infringement claim. 24 18. Plaintiff's voluntary dismissal without prejudice shall not be granted unless

25 plaintiff agrees to the condition that if plaintiff chooses to challenge the conclusions in the two 26 consumer surveys conducted by Howard Marylander (docket nos. 57 and 58) in future litigation, 27 defendant will be entitled to retroactive payment of fees and costs at the time of the challenge. 28 Otherwise, the opinions expressed in both declarations shall be conclusively established.
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Case No. C 06 7754 SBA [PROPOSED] ORDER

1

19.

Plaintiff did not demonstrate a "realistic chance of prevailing" on its trademark

2 infringement claim, and the award of fees and costs to defendant is appropriate. 3 20. The costs and fees associated with defendant's oppositions to plaintiff's application

4 for a temporary restraining order and motion for a preliminary injunction are sunk costs because 5 they cannot easily be carried over into future litigation. 6 21. Plaintiff's voluntary dismissal without prejudice also shall not be granted unless

7 plaintiff agrees to the condition that any discovery already exchanged can be utilized in any 8 subsequent lawsuit. 9 22. In the alternative, should plaintiff not agree to the two conditions imposed by this

10 Court, plaintiff's case shall be dismissed with prejudice. 11 23. Dismissal of this case without conditions would result in defendant suffering "plain

12 legal prejudice." 13 24. The issues have been fully litigated in connection with plaintiff's motion for a

14 preliminary injunction and depriving defendant of the Court's ruling on plaintiff's motion would 15 result in legal harm. 16 25. Having analyzed the above factors, the Court concludes that plaintiff's voluntarily

17 dismissal without prejudice shall be conditioned upon payment of defendant's costs and fees, if in 18 the future plaintiff challenges the findings of defendant's surveys, and that any discovery already 19 exchanged can be utilized in any subsequent lawsuit. If plaintiff does not agree to such 20 conditions, plaintiff's case is dismissed with prejudice. 21 22 23 24 25 26 27 28
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So ordered. Dated: April ___, 2007 _______________________ Saundra B. Armstrong United States District Judge

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Case No. C 06 7754 SBA [PROPOSED] ORDER