Skydiving School, Inc. v. Sky-Med, Inc.

Filing 100

ORDER (1) OVERRULING PLAINTIFF'S OBJECTIONS TO AND (2) ADOPTING THE FINDINGS & RECOMMENDATION OF U.S. MAGISTRATE JUDGE re 97 - Signed by CHIEF JUDGE DERRICK K. WATSON on 11/26/2024. For the reasons set forth he rein, SSI's objections to the F&R, Dkt. No. 98, are OVERRULED and the F&R, Dkt. No. 97, is ADOPTED to the extent set forth herein. As a result, the GoJump Defendants are awarded $157,508.31 in attorney's fees and $3,031.41 in non-taxable costs. (eta)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF HAWAI‘I
SKYDIVING SCHOOL, INC.,
Plaintiff,
v.
GOJUMP AMERICA, LLC,
GOJUMP HAWAII LLC, and
MICHAEL VETTER, et al.,

Case No. 23-cv-00292-DKW-WRP
ORDER (1) OVERRULING
PLAINTIFF’S OBJECTIONS TO
AND (2) ADOPTING THE
FINDINGS & RECOMMENDATION
OF U.S. MAGISTRATE JUDGE1

Defendant.

After entry of an Order granting in part the Go Jump Defendants’ 2 motion to
dismiss and dismissing Plaintiff Skydiving School, Inc.’s (SSI) claims under
federal trademark law (“the Dismissal Order”), the GoJump Defendants moved for
attorney’s fees under 15 U.S.C. Section 1117(a) as the prevailing party (“fees
motion”). On September 30, 2024, the assigned U.S. Magistrate Judge entered the
instant Findings and Recommendation (F&R) to grant in part the fees motion to the
extent of awarding the GoJump Defendants $157,508.31 in fees and $3,031.41 in
costs.

1

Pursuant to Local Rule 7.1(c) & (d), the Court elects to decide this matter without a hearing.
The GoJump Defendants are GoJump America, LLC (GJA), GoJump Hawaii LLC (GJH), and
Michael Vetter.
2

Pending before the Court are SSI’s objections to the F&R. Dkt. No. 98. In
various ways, SSI objects to one principal finding in the F&R: that this case was
“exceptional” under Section 1117(a) and governing case law, a prerequisite to
awarding Section 1117(a) fees. Upon review of the objections, the record,
including the F&R, and pertinent case law, the Court disagrees with each of SSI’s
objections for at least one primary reason. From the outset of this litigation, SSI
has sought to prevent the GoJump Defendants from using the words “Skydive” and
“Hawaii” together or in conjunction with any number of other words, even though
the service the GoJump Defendants provide is skydiving in Hawai‘i. As the Court
explained in the Dismissal Order, such a position was untenable under the alleged
facts of this case. This was particularly so where, as here, SSI’s legal arguments
were premised upon long overruled case law and largely conclusory and
incomplete assertions regarding the “classic fair use” doctrine. In this light, and
for the reasons discussed more fully herein, the Court finds that this case “stands
out” as exceptional for the lack of strength in SSI’s legal position and, thus, the
GoJump Defendants are entitled to the fees and costs awarded in the F&R. SSI’s
objections to the contrary are OVERRULED.

2

RELEVANT BACKGROUND3
On July 13, 2023, SSI filed a Complaint against, among others, the GoJump
Defendants, 4 asserting the following four claims: (1) trademark infringement under
the Lanham Act, 15 U.S.C § 1051 et seq. (Count One); (2) unfair competition, in
violation of 15 U.S.C. § 1125 (Count Two); (3) breach of a settlement agreement
(Count Three); and (4) intentional interference with contractual relations (Count
Four). Dkt. No. 1.
Thereafter, SSI moved for a preliminary injunction against the GoJump
Defendants, Dkt. No. 17, while the GoJump Defendants moved to dismiss all
counts of the Complaint, Dkt. No. 42. Succinctly, in the motion for a preliminary
injunction, SSI sought to protect its trademark in the phrase “Skydive Hawaii” and
prevent the GoJump Defendants from using the same or “GoJump Hawaii” alone
or together with “Hawaii Skydive,” “Skydive in Hawaii,” “Skydiving in Hawaii,”
“Skydive over Hawaii,” “Skydiving over Hawaii,” and “Skydiving Hawaii” “in
any capacity….” By contrast, in the motion to dismiss, the GoJump Defendants

3

The Court assumes the parties’ familiarity with the procedural and factual background of this
case, which is more fully set forth in the Dismissal Order, and, thus, only sets forth herein the
background necessary for an understanding of the instant issues.
4
The other defendants were Sky-Med, Inc. dba Pacific Skydiving (Sky-Med) and Guy Banal
(Banal, and, with Sky-Med, the Sky-Med Defendants). SSI and the Sky-Med Defendants
stipulated to the dismissal with prejudice of the claims against the Sky-Med Defendants on
February 15, 2024. Dkt. No. 76.
3

argued, inter alia, that their alleged uses of the words “Skydive” and “Hawaii”
constituted “classic fair use” and, thus, did not violate federal trademark law.
On November 22, 2023, approximately a year ago, the Court granted in part
the motion to dismiss and denied as moot the motion for preliminary injunction.
Dkt. No. 60. In doing so, inter alia, the Court agreed with the GoJump
Defendants that their alleged uses of “Skydive” and “Hawaii” constituted “classic
fair use.” Specifically, the Court found that the GoJump Defendants did not use
the words in their “trademark” sense, i.e., to indicate the source of services.
Instead, the words were used to describe and/or explain the GoJump Defendants’
services, and there were no allegations that the GoJump Defendants had not
exercised good faith in using the words. 5
On January 10, 2024, the GoJump Defendants filed a motion for attorney’s
fees, arguing, inter alia, that it was the “prevailing party” in this action, and this
case was “exceptional” for purposes of Section 1117(a). Dkt. No. 69. After
further briefing, including the filing of a “superseding” motion for attorney’s fees,
the GoJump Defendants requested approximately $160,000 in attorney’s fees and

5

As for Claims Three and Four, both of which appeared to arise under State law, the Court
directed supplemental briefing as to whether the claims were moot or whether subject matter
jurisdiction should be retained in light of the dismissal of SSI’s federal trademark claims. After
receipt of said briefing, the Court declined to exercise supplemental jurisdiction and dismissed
without prejudice Claims Three and Four. Dkt. No. 77.
4

$3,000 in non-taxable costs. See Dkt. Nos. 87, 94, 95. SSI opposed the fees
motion, Dkt. No. 70, 91, 96, arguing, inter alia, that this case is not “exceptional”
for purposes of Section 1117(a) and, even if exceptional, the GoJump Defendants
were entitled to at most approximately $33,000 in attorney’s fees because the
remainder constituted duplicative, unnecessary, or vague billing entries.6
On September 30, 2024, the assigned Magistrate Judge entered the F&R,
granting in part the fees motion. Dkt. No. 97. Among other things, the
Magistrate Judge found that (1) the GoJump Defendants were the prevailing parties
on Counts One and Two, (2) this case was “exceptional” for purposes of Section
1117(a), and (3) after careful consideration, the reasonable attorney’s fees amount
was $157,508.31 and the reasonable non-taxable costs amount was $3,031.41.
On October 15, 2024, SSI filed the only objections to the F&R, Dkt. No. 98,
all of which are directed solely to the Magistrate Judge’s finding that this case was
“exceptional” for purposes of Section 1117(a). Specifically, SSI argues that: (1)
the Magistrate Judge failed to apply case law from the Ninth Circuit declining to
find cases exceptional under Section 1117(a); (2) the Magistrate Judge ignored

6

References to the “fees motion” herein includes arguments and requests made in the initial
motion and the GoJump Defendants’ subsequent briefing. Similarly, references to SSI’s
opposition to the fees motion includes each of the oppositions filed, whether to the initial motion
or supplemental briefs in support thereof.
5

facts requiring this case to be found not exceptional under Section 1117(a); (3) the
Magistrate Judge erred in relying upon Vida Enter. Corp. v. Angelina Swan
Collection, Inc., 2023 WL 9004960 (C.D. Cal. July 14, 2023); and (4) additional
reasons exist for why this case is not exceptional under Section 1117(a). On
October 29, 2024, the GoJump Defendants filed a response to SSI’s objections.
Dkt. No. 99.
With briefing complete, this Order now follows.
STANDARD OF REVIEW
Pursuant to 28 U.S.C. Section 636(b)(1)(B), a district court may refer a
matter to a Magistrate Judge for findings and recommendations. The court must
then “make a de novo determination of those portions of the report or specified
proposed findings or recommendations to which objection is made.” 28 U.S.C.
§ 636(b)(1)(B).
DISCUSSION
As an initial matter, to better provide the context of the analysis herein, the
Court explains that to which objection has and has not been made. As mentioned
above, SSI filed the only objections to the F&R. In other words, the GoJump
Defendants have not objected to the Magistrate Judge’s findings in any respect,
including to the reasonable amount of attorney’s fees and costs. As also
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mentioned above, SSI’s objections to the F&R concern only one finding therein:
that this case is “exceptional” for purposes of Section 1117(a). In other words,
SSI has not objected to the findings concerning (1) the GoJump Defendants being
the prevailing parties or (2) the reasonable amount of attorney’s fees and costs. In
that light, the analysis below focuses upon the finding that this case is
“exceptional” for purposes of Section 1117(a). As for the unobjected-to findings,
they are not entitled to de novo review. See 28 U.S.C. § 636(b)(1)(B). Further,
upon review, the Court finds no error in the Magistrate Judge’s findings (1) that the
GoJump Defendants were the prevailing parties in this case and (2) concerning the
reasonable amount of attorney’s fees and costs. Therefore, the Court does not
disturb those findings herein.
This leaves whether the instant case is “exceptional” for purposes of Section
1117(a). The Court begins with the legal framework for such an analysis, which,
at least in the general sense, neither party appears to dispute. Specifically, as the
Magistrate Judge observed:
Whether a case is ‘exceptional’ is left to the discretion of the district
court ‘considering the totality of the circumstances.’ Octane Fitness,
LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014)
(‘There is no precise rule or formula for making these determinations,
but instead equitable discretion should be exercised in light of the
considerations we have identified.’); SunEarth, Inc. v. Sun Earth
Solar Power Co., Ltd., 839 F.3d 1179, 1180-81 (9th Cir. 2016) (en
banc). An ‘exceptional’ case is ‘simply one that stands out from
7

others with respect to the substantive strength of a party’s litigating
position (considering both the governing law and the facts of the case)
or the unreasonable manner in which the case was litigated.’ Octane
Fitness, 572 U.S. at 554. Courts also consider ‘frivolousness,
motivation, objective unreasonableness (both in the factual and legal
components of the case) and the need in particular circumstances to
advance considerations of compensation and deterrence.’ SunEarth,
839 F.3d at 1181. The applicable burden of proof for fee entitlement
is the preponderance of the evidence standard. See id.
Dkt. No. 97 at 6-7 (certain quotation marks and parentheticals omitted).
Here, for the reasons set forth below, SSI’s litigating position stands out for
its objective unreasonableness. As explained in the Dismissal Order, SSI and the
GoJump Defendants provide the same essential service of skydiving from an
airfield in Waialua, Hawai‘i. Therefore, the obvious thing, for either party, would
be to inform potential customers that they provide skydiving in Hawai‘i. This is
something the Go Jump Defendants did, with messages such as: “Enjoy
Oceanview Skydiving in Hawaii”, “Skydiving Over Hawaii is Easy and Fun With
Your Highly Experienced Tandem Instructor Attached to You Every Step of the
Way, and “Skydive Hawaii with GoJump.” According to SSI, each of these
messages, and many more, were improper because SSI holds a trademark in the
phrase “Skydive Hawaii.” To this day, however, SSI has failed to provide a
reasonable explanation as to why, at least when considered in the context of the
“classic fair use” defense.
8

In its response to the motion to dismiss, SSI relied upon case law holding
that the classic fair use defense is not available when a likelihood of customer
confusion exists over the origin of a product. Dkt. No. 47 at 17. As explained in
the Dismissal Order, the small problem with this argument was that it was an
incorrect statement of the law—something which SSI should have been more than
aware given that it also cited the case that clarified the law. See Dkt. No. 60 at 22
& n.16. Put another way, it is not hard to conclude that relying on out-of-date
case law puts one on a sure path to an unreasonable legal argument.
As for the three elements of a “classic fair use” defense, the best SSI could
muster in its response to the motion to dismiss was the conclusory assertion that
“GoJump has failed to prove these three elements.” Dkt. No. 47 at 19. In its
motion for preliminary injunction, SSI provided a modicum of additional thought
on the subject. Specifically, SSI, relying upon the message “Enjoy Oceanview
Skydiving in Hawaii”, argued that it was being used as a mark and not
descriptively. Dkt. No. 17 at 26-27. As explained in the Dismissal Order,
however, nothing could be less true in the context of the messages used on the
GoJump Defendants’ webpages. Dkt. No. 60 at 16-21. In particular, the terms
“skydiving”, “skydive”, and “Hawaii” were not being used as marks because they
were not used to identify the source of the GoJump Defendants’ services—a role
9

that was instead played by “gojump” or “GoJump Hawaii.” 7 Those same terms
were also clearly used descriptively. In other words, to describe what potential
customers would be doing with the GoJump Defendants: “enjoy[ing] oceanview
skydiving in Hawaii.” Finally, in its reply, for the first time, SSI argued that the
GoJump Defendants lacked good faith because they could have used GoJump
Waialua instead of GoJump Hawaii. Dkt. No. 52 at 7. Putting aside the lateness
of this argument and the failure to explain how changing Hawai‘i to Waialua
would have satisfied SSI’s broad interpretation of its trademark, as explained in the
Dismissal Order, there was no allegation in the Complaint that the GoJump
Defendants used Hawai‘i instead of Waialua to allegedly capitalize on SSI’s
goodwill. Dkt. No. 60 at 21-22.
In this light, SSI’s legal position on the “classic fair use” defense was
objectively unreasonable and stood out both in terms of its failure to acknowledge
changes in the law and its conclusory and/or unsupported arguments. In its
objections to the F&R, SSI contends otherwise. The Court disagrees with SSI in
each respect.

7

For some still unexplained reason, SSI appeared to believe that they could also monopolize the
words in the GoJump Defendants’ business name, i.e., “gojump” or “GoJump Hawaii”, purely
because SSI held a trademark in “Skydive Hawaii.”
10

First, SSI argues that the Magistrate Judge failed to apply Ninth Circuit case
law declining to find “exceptional” cases brought to “police” federally registered
trademarks. Dkt. No. 98 at 2-7. As an initial matter, the cases SSI references
were, in fact, addressed, albeit briefly, in the F&R. See Dkt. No. 97 at 11 n.3
(observing that the cases were “distinguishable” because they did not find, inter
alia, “objective unreasonableness”). In any event, as explained below, the Court
does not find any of the cited cases persuasive in the context of this one.
In McZeal v. Amazon.com Services LLC, 2022 WL 19521359 (C.D. Cal.
Aug. 16, 2022), the court denied a motion for attorney’s fees, in part, because the
losing plaintiff was proceeding pro se, entitling his pleadings to liberal
construction—something which is inapplicable here. Id. at *1-2. Further, in
McZeal, the plaintiff held a trademark in the term “smart walkie talkie,” while the
defendants used the same in marketing a “smart walkie talkie” product. Id. at *1.
That is not even in the same zip code of relevancy compared to both the trademark
at issue here and the words SSI sought to prevent the GoJump Defendants from
using.
In Delta Forensic Eng’g, Inc. v. Delta V Biomechanics, Inc., 2021 WL
243323 (C.D. Cal. Jan. 22, 2021), the court denied a motion for attorney’s fees,
finding the plaintiff raised arguments that were “sufficiently debatable” on the
11

issue of consumer confusion and that were not resolved until summary judgment.
Id. at 4-5. Similarly, in Sarieddine v. Alien Visions E-Juice, Inc., 2019 WL
4316245 (C.D. Cal. June 14, 2019), a motion for attorney’s fees was denied after
the defendant established at summary judgment the “prior use” of its trademark.
Id. at *1-2. Those are not close to the situation here, which did not progress past
an initial motion to dismiss and did not require an analysis of consumer confusion,
prior use, or any other issue beyond classic fair use.
In Applied Underwriters, Inc. v. Lichtenegger, 2020 WL 5107627 (E.D. Cal.
Aug. 31, 2020), the court denied a motion for attorney’s fees, finding that it was
“debatable” whether the plaintiff was justified in bringing its claims, as it held a
valid trademark and reasonably believed its trademarks had been infringed. Id. at
*4; see also VersaTop Support Sys., LLC v. Georgia Expo, Inc., 2017 WL 8895625
(Nov. 21, 2017) (similarly stating that the court could not conclude there was no
reasonable basis for the plaintiff believing its claims were worthwhile).8 This
Court disagrees that the same can be said for SSI. As discussed herein and in the
Dismissal Order, in the context of the facts alleged here, there was no reasonable

8

Although the analysis is less detailed, the reasoning appears similar in another case SSI cites.
See Park Law Firm v. Park Law Offices, P.C., 2020 WL 3213797, at *6 (C.D. Cal. Mar. 23,
2020).
12

basis for SSI to believe that the GoJump Defendants’ uses of the terms “skydive”,
“skydiving”, “gojump”, and “Hawaii” were anything other than “classic fair use.”
Reserve Media, Inc. v. Efficient Frontiers, Inc., 2017 WL 2562098 (C.D.
Cal. June 12, 2017), involved, inter alia, three motions for summary judgment, 18
depositions, and “sizable” document production requests. Id. at *1. After the
conclusion of these proceedings, the court cancelled ten registered trademarks after
finding that they were descriptive and lacked secondary meaning. Id. Perhaps
unsurprisingly, thereafter, the court denied a motion for attorney’s fees, finding
that the plaintiff’s lack of success alone did not mean its litigation position was
unreasonable and it had legitimate reasons for bringing the lawsuit. Id. at *3. 9
Again, as discussed repeatedly, that is not the situation here. Beyond the
procedural differences, this Court still cannot pin a reason for this lawsuit other
than SSI seeking to monopolize the words “skydiving”, “skydive”, and “Hawaii”
in describing the activity of jumping out of a plane with a parachute in Hawaii—
something which this Court does not find to be “legitimate.”
9

A similar finding was made in another case to which SSI cites. See Caiz v. Roberts, 2017 WL
830386, at *1, 3 (C.D. Cal. Mar. 2, 2017). In Caiz, the court denied a motion for attorney’s
fees, finding that the plaintiff held a valid trademark and advanced good faith arguments in
support of his positions. Id. at *4-5. Here, as discussed, this Court disagrees that SSI has
advanced good faith arguments in opposing the GoJump Defendants’ reliance on the classic fair
use defense. Further, to the extent SSI cites Caiz for the proposition that holding a valid
trademark alone can defeat a motion for attorney’s fees, for the obvious reason set forth in the
GoJump Defendants’ response, Dkt. No. 99 at 8-9, this Court disagrees.
13

SSI’s second and third objections to the F&R are that the Magistrate Judge,
respectively, “recognized” and “failed to recognize” facts showing that this case is
not exceptional. Dkt. No. 98 at 7-11. More specifically, the alleged facts include
(1) SSI holding six trademarks, including for “Skydive Hawaii”, (2) SSI alleging
instances of consumer confusion, (3) SSI bringing this action on a “reasonable
basis” to “police” its trademarks, (4) SSI operating a skydiving business since
2005, (5) the GoJump Defendants beginning their skydiving business
approximately 18 years later, (6) SSI “continuously” using its “Skydive Hawaii”
trademarks in commerce, (7) a survey expert determining that 15.6% of consumers
were confused by the GoJump Defendants alleged infringing uses and 86.1% of
“qualified respondents” identifying “Skydive Hawaii” as a brand name, and (8)
SSI sending the GoJump Defendants a cease and desist letter.
SSI’s reliance on these purported “facts” reflects its failure to comprehend
the GoJump Defendants’ “classic fair use” defense and the Court’s findings with
respect thereto. 10 Notably, none of the “facts” are relevant to the Court’s finding

10

In addition, some of the “facts” are not, in fact, “facts.” For example, SSI’s characterization of
its motive for this lawsuit—“polic[ing]” its trademarks—is not a fact. It is also not supported by
the findings in the Dismissal Order. In addition, simply because SSI believes that it was
“polic[ing]” its trademarks does not mean it was pursuing an objectively reasonable litigation
position, which is the relevant issue here, when confronted with the GoJump Defendants’ classic
fair use defense. Also, SSI states as “fact” that, in marketing, the GoJump Defendants used the
“Skydive Hawaii” registered marks. Dkt. No. 98 at 9-10. That contradicts, however, the
14

that the classic fair use defense applied to the alleged facts of this case. Thus,
while SSI continues to rely on such things as consumer-confusion surveys and the
length of its business, it still has provided no explanation, other than citing to
outdated case law, as to why any of this matters in the context of fair use.
Fourth, SSI argues that the Magistrate Judge erred in relying upon Vida
Enter. Corp. v. Angelina Swan Collection, Inc., 2023 WL 9004960 (C.D. Cal. July
14, 2023), in the F&R. Dkt. No. 98 at 11-12. SSI asserts that, in Vida, the court
found that the case qualified as exceptional because there was “no appreciable
chance” or actual evidence of consumer confusion. According to SSI, as a result,
the Magistrate Judge should not have relied on Vida because it is “inapposite” to
this case. SSI, however, misconstrues the Magistrate Judge’s citation to Vida.
The Magistrate Judge did not cite Vida to compare the lack of consumer confusion
in that case with the alleged confusion in this one. Rather, the Magistrate Judge
cited Vida for the general proposition that meritless and weak legal arguments can
justify the award of attorney’s fees under Section 1117(a). In Vida, the weak
arguments concerned consumer confusion. Here, the weak arguments concerned

Dismissal Order’s express finding that the GoJump Defendants alleged infringing terms were not
used as a mark. See Dkt. No. 60 at 16-18.
15

SSI’s opposition to the classic fair use defense. Thus, while the arguments may
be different, the issue of weakness is not.
Finally, SSI argues that there are “additional” reasons why this case is not
exceptional, including (1) SSI not engaging in “unreasonable” litigation conduct,
(2) SSI not violating an injunction order, (3) this Court purportedly not finding the
case to be “objectively unreasonable”, (4) the purported “straight forward” nature
of the case, and (5) two of SSI’s claims not being dismissed on the merits. Dkt.
No. 98 at 13-15. SSI’s arguments are misplaced. The majority of the foregoing
matters, such as the various ways in which SSI asserts it has not engaged in
“unreasonable” litigation conduct, are irrelevant to whether SSI advanced an
objectively unreasonable legal position. See Octane Fitness, 572 U.S. at 574
(explaining that an “exceptional case” is one that “stands out” with respect to a
party’s litigating position or the unreasonable manner in which it was litigated).
As discussed herein, the Court finds that SSI advanced an objectively unreasonable
legal position with respect to the classic fair use defense, irrespective of whether it
complied with deadlines or orders or engaged in unsavory litigation practices.
Similarly unmoving is the fact that two of SSI’s claims were dismissed because the
Court declined to exercise supplemental jurisdiction over the same. That too is

16

irrelevant to whether SSI advanced an objectively unreasonable litigation position
with respect to the claims providing the federal lynchpin for this lawsuit.
CONCLUSION
For the reasons set forth herein, SSI’s objections to the F&R, Dkt. No. 98,
are OVERRULED and the F&R, Dkt. No. 97, is ADOPTED to the extent set forth
herein. As a result, the GoJump Defendants are awarded $157,508.31 in
attorney’s fees and $3,031.41 in non-taxable costs.
IT IS SO ORDERED.
Dated: November 26, 2024 at Honolulu, Hawai‘i.

___________________________
Derrick K. Watson
Chief United States District Judge

17