Phase Forward Incorporated v. Adams

Filing 82

ORDER by Judge Jeremy Fogel Granting 77 Motion To Reconsider And Vacate Summary Judgment On, And Reinstate, Plaintiff's Federal Trademark Dilution Claim. (jflc3, COURT STAFF) (Filed on 2/5/2008)

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Phase Forward Incorporated v. Adams Doc. 82 1 2 3 4 5 6 NOT FOR CITATION 7 **E-Filed 2/05/2008** IN THE UNITED STATES DISTRICT COURT 8 FOR THE NORTHERN DISTRICT OF CALIFORNIA 9 SAN JOSE DIVISION 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 PHASE FORWARD INCORPORATED, Plaintiff, v. MARY NOEL ADAMS, individually and d/b/a PHASE FORWARD, Defendant. Case Number C 05-4232 JF (HRL) ORDER1 GRANTING PLAINTIFF'S MOTION TO RECONSIDER AND VACATE SUMMARY JUDGMENT ON, AND REINSTATE, PLAINTIFF'S FEDERAL TRADEMARK DILUTION CLAIM [re: docket no. 77] Plaintiff Phase Forward Incorporated ("PFI"), pursuant to this Court's Order granting leave to file a motion for reconsideration, asks the Court to reconsider and vacate its decision to dismiss on summary judgment PFI's federal trademark dilution claim and to reinstate the claim. Defendant Mary Noel Adams, individually and doing business as Phase Forward (collectively, "Adams"), does not oppose the motion. For reasons discussed below, the motion will be granted. PFI filed its initial complaint in this action seeking review of the decision of the Trademark Trial and Appeal Board on October 19, 2005. On July 21, 2006, PFI filed a first amended complaint ("FAC"), asserting eight separate claims in eight separate counts. Count III This disposition is not designated for publication and may not be cited. C a s e No. C 05-4232 JF (HRL) O R D E R RE RECONSIDERATION ( JF L C 3 ) Dockets.Justia.com 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 of the FAC alleges that Adams's acts violated 15 U.S.C. 1125(c), which prohibits dilution of famous marks. In October 2006, the U.S. Congress enacted the Trademark Dilution Revision Act, Pub. L. 109-312, 120 Stat. 1730 (2006) ("TDRA"), which amended 1125 by defining a "famous mark" as one "widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner." 15 U.S.C.A. 1125(c)(2)(A) 2007. Prior to the passage of the TDRA, the Ninth Circuit recognized "nichemarket fame2" as a valid type of fame that could form the basis of a federal trademark dilution claim under 1125(c). See Thane Int'l v. Trek Bicycle Corp., 305 F.3d 894, 908-09 (9th Cir. 2002). The TDRA, however, eliminated niche-market fame as a basis for a federal trademark dilution claim under 1125(c). See Jarritos, Inc. v. Los Jarritos, 2007 WL 1302506, *17 (N.D. Cal. May 2, 2007). In April 2007, after the enactment of the TDRA, Adams moved for summary judgment against all the claims in the FAC. At that time the Ninth Circuit had not addressed the issue of whether the TDRA would be applied retroactively. However, at least one other circuit had applied the TDRA retroactively. See Starbucks Corp v. Wolfe's Borough Coffee, Inc., 477 F.3d 765, 766 (2d Cir. 2007). Thus, PFI voluntarily withdrew Count III of its FAC. In its Order, the Court acknowledged PFI's concession that "it has not met the more rigorous standards set forth in the [TDRA] with respect to proving `niche-market fame'" and dismissed Count III. 7/24/2007 Order at 4:21-23. However, nine days after the Court issued its Order, the Ninth Circuit decided Jada Toys v. Mattel, Inc., 496 F.3d 974 (9th Cir. 2007), in which the court reversed the district court's grant of summary judgment on Mattel's counterclaim for federal trademark dilution under 1125(c). The Ninth Circuit noted that because the action was filed before the 2006 amendment of 1125, the pre-TDRA version of 1125 applied to Mattel's dilution claim. Id. at 980 n.2. Similarly, Niche-market fame is fame of a mark within a limited specialized market segment with an identifiable customer base or within a limited geographic area. 2 C a s e No. C 05-4232 JF (HRL) O R D E R RE RECONSIDERATION ( JF L C 3 ) 2 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PFI's claim for federal trademark dilution under 1125 was filed before the enactment of the TDRA. Accordingly, PFI requests that the Court reconsider and vacate its order granting summary judgment on Count III and reinstate PFI's federal trademark dilution claim. A motion for reconsideration of summary judgment may be brought pursuant to Federal Rule of Civil Procedure 59(e). School District No. 1J, Multnomah County v. ACandS, 5 F.3d 1255, 1262 (9th Cir. 1993); Fuller v. M.G. Jewelry, 950 F.2d 1437, 1442 (9th Cir. 1991). The decision whether to grant reconsideration is committed to the sound discretion of the district court and will be reviewed only for abuse of discretion. Multnomah, 5 F.3d at 1262. Reconsideration pursuant to Rule 59(e) is appropriate if: (1) the district court is presented with newly discovered evidence; (2) the district court committed clear error or the initial decision was manifestly unjust; or (3) there is an intervening change in controlling law. Id. at 1263. The repetition of arguments that the district court has already considered and rejected is not a proper basis for reconsideration. Fuller, 950 F.2d at 1442. The Ninth Circuit's decision in Jada Toys constitutes an intervening change in controlling law. Having reconsidered its grant of summary judgment on Count III of the FAC, the Court hereby VACATES its Order of July 24, 2007 and REINSTATES Count III without prejudice to Adams's right to seek summary judgment on some other legal claim in the future. IT IS SO ORDERED. DATED: February 5, 2008. JEREMY FOGEL United States District Judge 3 C a s e No. C 05-4232 JF (HRL) O R D E R RE RECONSIDERATION ( JF L C 3 ) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 This Order has been served upon the following persons: Randy Scott Erlewine David Given Keith Lee Spencer Martinez Laura Thompson M. Kelly Tillery rse@phillaw.com dmg@phillaw.com, leeke@pepperlaw.com, sanfordl@pepperlaw.com scm@phillaw.com, LThompsonesq@comcast.net tilleryk@pepperlaw.com, carrollp@pepperlaw.com 4 C a s e No. C 05-4232 JF (HRL) O R D E R RE RECONSIDERATION ( JF L C 3 )

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