Adidas America, Inc. v. Calmese

Filing 181

OPINION AND ORDER: Denying Defendant's Second Motion for Leave to File a Third Motion for Reconsideration 175 . The Court also Denies the request of both Plaintiff and Defendant for sanctions. Signed on 4/19/10 by Judge Anna J. Brown. (See formal 12-Page Opinion and Order). (mkk)

.,.'
IN THE UNITED STATES D I S T R I C T COURT FOR THE D I S T R I C T OF OREGON PORTLAND D I V I S I O N

A D I D A S AMERICA, I N C . ,

08-CV-91-ST O P I N I O N AND ORDER

Plaintiff,

v.
MICHAEL CALMESE,

Defendant.

DA~D

K . FRIEDLAND

JAIME S . RICH

Lott & Freidland, P.A. 355 Alhambra Circle, Suite 1100 C o r a l G a b l e s , FL 3 3 1 3 4 [phone]
STEPHAN M .
FELD~

P e r k i n s C o i e , LLP 1 1 2 0 N.W. C o u c h S t . , 1 0 t h F l o o r P o r t l a n d , OR 9 7 2 0 9 [phone] Attorneys for Plaintiff
MICHAEL CALMESE

3 0 4 6 N. 3 2 n d S t r e e t , U n i t 3 2 1 P h o e n i x , AZ 8 5 0 1 8 [phone] Defendant, Pro Se 1 - OPINION AND ORDER

BROWN, J u d q e .

This matter comes before the Court on Defendant Michael Calmese's Second Motion (#175) for Leave t o File a Third Motion for Reconsideration of t h i s Court's Order (#173) issued March 9, 2009, denying Defendant's f i r s t Motion (#170) for Leave to File Motion for Reconsideration of February 22, 2010, Order. F o r t h e r e a s o n s t h a t f o l l o w , t h e C o u r t DENIES D e f e n d a n t ' s Second Motion (#175) for Leave to File a Third Motion for

R e c o n s i d e r a t i o n a n d f u r t h e r ORDERS D e f e n d a n t n o t t o m a k e , f i l e , or seek leave to f i l e any additional motions with respect to any of the rulings, opinions, or orders addressed in this Order or related to the Court's adoption of Magistrate Judge Stewart's Amended F i n d i n g s a n d R e c o m m e n d a t i o n ( # 1 0 1 ) i n t h i s m a t t e r a n d
ORDERS D e f e n d a n t n o t t o f i l e a n y m o t i o n t o r e c o n s i d e r t h i s

Opinion and Order.

BACKGROOND

Defendant seeks leave a second time to file a third motion requesting the Court to reconsider i t s October 8, 2009, Order a d o p t i n g a s m o d i f i e d M a g i s t r a t e J u d g e S t e w a r t ' s Amended F i n d i n g s and Recommendation issued on July 9, 2009. On O c t o b e r 2 8 , 2 0 0 9 , D e f e n d a n t f i l e d h i s o r i g i n a l M o t i o n f o r Reconsideration in which he requested this Court to reconsider 2 - OPINION AND ORDER

its O r d e r o f O c t o b e r 8 , 2 0 0 9 .

Defendant maintained a decision by

the District Court for the District of Arizona in an unrelated l i t i g a t i o n b e t w e e n N i k e , I n c . , a n d C a l m e s e was b i n d i n g o n Magistrate Judge Stewart's determination of the Sleekcraft factor of "relatedness of goods": Defendant Calmese believes this Oregon should h a v e come t o t h e s a m e l e g a l c o n c l u s i o n a s d i d t h e H o n o r a b l e J u d g e R o s l y n O. S i l v e r i n t h e Arizona District because just as wine c o m p l e m e n t s c h e e s e a n d s a l a m i , a commonsensical complementary relationship exists between adidas' sports garments and Calmese's sports garments. In fact Plaintiff and Defendant both use sports garments with i d e n t i c a l "PROVE I T " m a r k s i n a l l c a p i t a l l e t t e r s on clothing and also on hang tags and receipts with out the world famous adidas l o g o o r t r a d e m a r k . How much m o r e r e l a t e d c a n these goods get given both adidas and calmese admittedly are using sports garments with the m a r k "PROVE I T " ? l On N o v e m b e r 1 6 , 2 0 0 9 , t h e C o u r t d e n i e d D e f e n d a n t ' s M o t i o n for Reconsideration. The C o u r t h e l d i n r e l e v a n t p a r t :

Defendant contends this Court did not conduct a de novo review of the record with respect t o h i s O b j e c t i o n s a s r e q u i r e d b y 28 U . S . C . § 6 3 6 ( b ) (1) o n t h e g r o u n d t h a t t h e U n i t e d States District Court for the District of Arizona in i t s October 16, 2008, Opinion and O r d e r i n C a l m e s e v . N i k e , I n c . , No. 0 6 - C V - 1 9 5 9 , d e c i d e d o n t h e same r e c o r d t h a t the "relatedness of the goods" Sleekcraft f a c t o r w e i g h e d i n D e f e n d a n t ' s f a v o r . The C o u r t n o t e s P l a i n t i f f was n o t a p a r t y t o t h e

I Although the Arizona District Court found the goods related, i t ultimately concluded no infringement took place and g r a n t e d N i k e ' s M o t i o n f o r Summary J u d g m e n t a s t o C a l m e s e ' s c l a i m s against Nike.

3 - OPINION AND ORDER

Arizona p r o c e e d i n g s , a n d , t h e r e f o r e , t h e likelihood of confusion between the products of P l a i n t i f f and Defendant was not a t issue in t h a t matter. The Court has reviewed the record de novo and adheres to i t s October 8, 2009, Order with respect to this Sleekcraft factor. The Court also noted: Defendant states the Arizona Opinion and Order was attached as Exhibit E t o his Response to Opposition to Defendant's Motion for Leave to File Federal Taxes (#133). Exhibit E to that document, however, i s a September 8, 2009, Order in the Calmese v. Nike matter in which the Arizona District Court denied Defendant's Motion for Reconsideration (Defendant was the p l a i n t i f f in the Arizona case). In that Motion, Defendant requested the Arizona court to reconsider its ruling to dismiss his Complaint against Nike for trademark infringement. On N o v e m b e r 2 5 , 2 0 0 9 , D e f e n d a n t f i l e d h i s s e c o n d M o t i o n f o r Reconsideration in which he repeated his request that the Court reconsider i t s decision to uphold Magistrate Judge Stewart's Findings and Recommendation: Just as wine complements cheese and salami, a commonsensical complementary relationship exist between adidas's sports garments and Calmese's sports garments. Vendors often s e l l sports clothing and sports garments in the same stores and customers consume the products simultaneously, i.e. while playing sports. This factor should have never had to be reconsidered and should have weighed in favor of Defendant long ago as confirmed by t h e H o n o r a b l e J u d g e R o s l y n o. S i l v e r , U n i t e d States District Judge, on October 16, 2008. Judge Anna Brown commits a p l a i n e r r o r were she erroneously states that because Plaintiff 4 - OPINION AND ORDER

adidas w a s n o t a p a r t y t o t h e A r i z o n a proceedings, therefore, the likelihood of confusion between the products of Plaintiff a d i d a s . a n d D e f e n d a n t C a l m e s e was n o t a t i s s u e in that matter. Because the Plaintiff adidas and Defendant Calmese's dispute did not surface until well after the Arizona proceedings started, gives rise to the fact that there could be not issue given that t h e r e was no d i s p u t e y e t . T h i s C o u r t s r e v i e w fails here because in the Arizona proceedings t h e l i k e l i h o o d o f c o n f u s i o n was b e t w e e n Calmese's t - s h i r t s vs. Nike's shoes and C a l m e s e s t i l l won t h i s f a c t o r . H e r e t h e likelihood of confusion i s even greater because the likelihood of confusion is between adidas's t - s h i r t vs. Calmese's t-shirts, a perfect t - s h i r t match. T h e r e f o r e , how c a n D e f e n d a n t C a l m e s e l o s e t h i s f a c t o r i n t h e O r e g o n D i s t r i c t C o u r t when C a l m e s e won t h i s v e r y s a m e S l e e k c r a f t F a c t o r in the Arizona District Court based on the v e r y same " l a w " t h a t s h o u l d b e a p p l i e d i n t h i s matter? Defendant Calmese should rightfully and legally be awarded the S l e e k c r a f t F a c t o r f o r R e l a t e d n e s s o f Goods a s a m a t t e r o f l a w s i m p l y b e c a u s e t h e same l a w s apply to all of the District Courts throughout the entire United States of America. On F e b r u a r y 2 2 , 2 0 1 0 , t h e C o u r t i s s u e d a n O r d e r d e n y i n g Defendant's Second Motion for Reconsideration and instructed Defendant to seek leave of Court before filing any additional motions for reconsideration. The C o u r t a l s o d e n i e d P l a i n t i f f ' s

request that the Court sanction Defendant for a frivolous filing. On M a r c h 3 , 2 0 1 0 , D e f e n d a n t f i l e d a M o t i o n f o r L e a v e t o F i l e a Third Motion for Reconsideration. In his Motion, Defendant

repeats his argument that the decision by the District Court of Arizona controls this Court's determination of the "relatedness 5 - OPINION AND ORDER

of g o o d s " f a c t o r : By r e p e a t e d l y n o t c o n s i d e r i n g t h e f a c t t h a t Calmese has presented evidence that proves C a l m e s e h a s a l r e a d y won a S l e e k c r a f t f a c t o r t e s t for Relatedness of Goods t e s t i n the m a t t e r M i c h a e l D. C a l m e s e v . N i k e I n c . C a s e No. 06-cv-1959, a p r e v i o u s l y l i t i g a t e d matter in the Arizona District Court, deprives Calmese of the justice that he i s entitled to by law. I t was and should be the same law t h a t awarded Calmese a favorable ruling on t h i s one point of Relatedness of Goods in H o n o r a b l e J u d g e R o s y l n o. S i l v e r ' s O c t o b e r 1 6 , 2 0 0 8 ORDER. T h i s C o u r t s h o u l d n o t e t h a t Calmese won t h e Relatedness o f Goods f a c t o r and he did not even f i l e an answer to Nike's "second" motion for summary judgment which subsequently allowed them to prevail on t h e i r motion but not before awarding Calmese several Sleekcraft factors, specifically Relatedness of Goods. On M a r c h 9 , 2 0 1 0 , t h e C o u r t i s s u e d t h e f o l l o w i n g m i n u t e order denying Defendant's First Motion for Leave to File a Third Motion for Reconsideration: In i t s Order issued February 22, 2010, the Court prohibited Defendant from filing any additional motions for reconsideration w i t h o u t l e a v e o f C o u r t . On M a r c h 3 , 2 0 1 0 , D e f e n d a n t M i c h a e l D. C a l m e s e f i l e d a M o t i o n (#170) for Leave to File Motion for Reconsideration of February 22, 2010, Order. In.his pending Motion, Defendant reiterates the arguments he made i n his previous Second Opposed Motion for Reconsideration and asserts a decision by the United States District Court for the District of Arizona in a matter involving Defendant and a company unrelated to Plaintiff binds the Court's determination of the facts and law as to the "relatedness of goods" between Defendant and Plaintiff adidas America, Inc. In its February 22, 2010, Order, the Court concluded the issues and facts before this Court were 6 - OPINION AND ORDER

not i n d i s p u t e i n t h e D i s t r i c t C o u r t o f . Arizona and t h a t Defendant did not show any error of fact or change in controlling law t h a t compelled f u r t h e r consideration. The Court, therefore, adheres to i t s previous r u l i n g . A c c o r d i n g l y t h e C o u r t DENIES Defendant's Motion (#170) for Leave to File Motion for Reconsideration and, for the same reasons set out i t is Order issued February 2 2 , 2 0 1 0 , DENIES P l a i n t i f f ' s r e q u e s t f o r t h e Court to sanction Defendant. I T I S SO ORDERED.

DISCUSSION On M a r c h 2 9 , 2 0 1 0 , D e f e n d a n t f i l e d t h i s S e c o n d M o t i o n f o r Leave to File a Third Motion for Reconsideration. 2010, Plaintiff filed i t s brief in opposition. On A p r i l 2 ,

In his Motion,

D e f e n d a n t o n c e a g a i n c o n t e n d s h e h a s a l r e a d y won t h e " r e l a t e d n e s s of goods" Sleekcraft factor on the basis of the Arizona District Court's decision and that basis is sufficient to permit his filing of a Third Motion for Reconsideration. asserts the Court has allowed Plaintiff, but Defendant also
no~

Defendant, to

rely on the decision by the Arizona D i s t r i c t Court. In her Amended Findings and Recommendation, Magistrate Judge Stewart found: The standard for deciding whether the parties' goods or services are 'related' i s whether customers are 'likely to associate' the two product l i n e s . " Surfvivor Media, Inc., 406 F3d a t 633. The court also must consider whether the buying public could reasonably conclude t h a t the products came from the same source. S l e e k c r a f t B o a t s , 599 F2d a t 348 n10. I f the marks are identical and used with identical goods or services, 7 - OPINION AND ORDER

then " l i k e l i h o o d o f c o n f u s i o n w o u l d f o l l o w a s a m a t t e r o f c o u r s e . " B r o o k f i e l d , 174 F3d a t 1056. In t h i s case, both Calmese and adidas s o l d t h e same g o o d s , n a m e l y t - s h i r t s , w i t h t h e same " p r o v e i t " p h r a s e . H o w e v e r , a d i d a s argues that the buying public could not r e a s o n a b l y c o n c l u d e t h a t i t s t - s h i r t s came f r o m C a l m e s e . To i d e n t i f y t h e o r i g i n a n d source of i t s t - s h i r t s , adidas placed two adidas trademarks just below the phrase "PROVE I T : " t h e w o r d m a r k " a d i d a s " a n d a d i d a s ' s 3 - B a r s L o g o . Backman. D e c l . ~~ 4 - 5 , E x . A. I n a d d i t i o n , a l l o f t h e a d i d a s t - s h i r t s p l a c e t h e s e same t r a d e m a r k s o n b o t h the inside of the s h i r t ' s c o l l a r and on the hang tag affixed to the shirt. Id. Because of the prominent display of the adidas t r a d e m a r k s , i t i s u n l i k e l y t h a t c o n s u m e r s who saw t h e a d i d a s t - s h i r t s w e r e c o n f u s e d a s t o the source or origin of the products. Thus, this factor also weighs against a finding of likelihood of confusion and, thus, in favor of adidas. In the long line of Defendant's argument on t h i s factor, he misses the thrust of the Magistrate Judge's reasoning with respect to
th~

"relatedness of goods" factor that is at the heart Plaintiff's use

o f h e r u l t i m a t e c o n c l u s i o n o n Summary J u d g m e n t :

of multiple adidas logos in combination with the "Prove I t " mark make t h e l i k e l i h o o d o f c o n f u s i o n w i t h D e f e n d a n t ' s m a r k m i n i m a l . 'In addition, Defendant stubbornly continues to maintain the decision of the Arizona D i s t r i c t Court i s binding on t h i s Court. The C o u r t , h o w e v e r , h a s a l r e a d y p o i n t e d o u t t h a t t h e A r i z o n a decision i s not binding on t h i s Court as a matter of law nor i s i t determinative of the facts in this case. Ultimately Defendant

8 - OPINION AND ORDER

has n o t c i t e d a n y c h a n g e i n c o n t r o l l i n g l a w n o r s h o w n c l e a r errors of fact that would provide adequate grounds for the Court to modify or to overturn the i t s Order adopting the Magistrate J u d g e ' s Amended F i n d i n g s a n d R e c o m m e n d a t i o n . Although Defendant

spends the bulk of his Motion lamenting a perceived double standard by which the Court has allowed Plaintiff but has prevented Defendant from relying on the decision by the Arizona District Court, Defendant's argument fails. The C o u r t h a s n o t

made a n y r u l i n g w i t h r e s p e c t t o a p a r t y ' s a b i l i t y t o c i t e o r t o argue analogous aspects of that decision. In fact, the Court has

merely concluded Defendant's reliance on t h a t decision i s misplaced and i s not grounds for altering the Court's rulings in this matter. Defendant also makes a cursory request t h a t P l a i n t i f f should be s a n c t i o n e d f o r e m a i l i n g t h e C o u r t ' s March 9, 2010, o r d e r "(15) days a f t e r i t was signed[,] adidas." sanctions. Plaintiff counters Defendant's request for sanctions by asserting that counsel for Plaintiff only sent a copy of the C o u r t ' s O r d e r t o P l a i n t i f f when i t b e c a m e a p p a r e n t d u r i n g a t e l e p h o n e c o n v e r s a t i o n t h a t D e f e n d a n t was n o t a w a r e h i s m o t i o n for leave had been denied. P l a i n t i f f c o n t e n d s i t s c o u n s e l was [ w h i c h ] was v e r y . d i s i n g e n u o u s b y

Defendant does not otherwise explain his request for

being courteous, and Defendant's request for sanctions i s

9 - OPINION AND ORDER

baseless.

The C o u r t a g r e e s .

Finally, Plaintiff in i t s Response once again seeks sanctions against Defendant: H e r e we g o a g a i n . C a l m e s e h a s a d d e d y e t another frivolous filing to his already impressive collection and, in the process, he has once again forced adidas to waste i t s time and resources preparing a response (and, just as unfairly, Calmese has once again forced the Court to waste i t s time and resources considering a frivolous motion) . The t i t l e o f C a l m e s e ' s l a t e s t m o t i o n s p e a k s volumes: a Second Motion for Leave to File a Third Motion for Reconsideration. While i t would be bad enough i f Calmese's l a t e s t m o t i o n was a c c u r a t e l y t i t l e d , t h e f a c t o f t h e matter is that the present motion is at least the seventh attempt by Calmese to object to and/or seek reconsideration of this Court's e n t r y o f summary j u d g m e n t i n a d i d a s ' s f a v o r on the issues of trademark infringement and u n f a i r c o m p e t i t i o n . T h e t i m e h a s come t o p u t a stop to Calmese's incessant filing of frivolous motions. adidas has previously e x p l a i n e d t h a t , i n i t s v i e w , t h e o n l y way t o effectively put a stop to Calmese's incessant filing of frivolous motions i s to impose a monetary sanction against him. For the reasons stated in the Court's February 22, 2010, Order, the Court, in the exercise of i t s discretion, declines to sanction Defendant for filing this Motion. As n o t e d b e l o w ,

Defendant runs the risk of the Court striking a l l of his pleadings, however, finding him in default, and allowing plaintiff to pursue the relief i t seeks without Defendant having any additional opportunity to defend himself in this matter i f D e f e n d a n t d o e s n o t now c o m p l y w i t h t h i s O p i n i o n a n d O r d e r .

1 0 - OPINION AND ORDER

CONCLUSION
F o r t h e s e r e a s o n s , t h e C o u r t DENIES D e f e n d a n t ' s S e c o n d Motion (#175) for Leave to File a Third Motion for Reconsideration. T h e C o u r t a l s o DENIES t h e r e q u e s t o f b o t h

Plaintiff and Defendant for sanctions. The Court notes there i s "strong precedent establishing the inherent power of federal courts to regulate the a c t i v i t i e s of abusive l i t i g a n t s by imposing carefully tailored restrictions under the appropriate circumstances." F.2d 351, 352 (10th Cir. 1989).
§ 1651(a)

T r i p a t i v . Beaman, 8 7 8

"Under the power of 28 U.S.C.

(1988), enjoining l i t i g a n t s with abusive and lengthy

histories i s one such form of r e s t r i c t i o n that the d i s t r i c t court may t a k e . " De L o n g v . H e n n e s s e y , 912 F.2d 1144, 1147 (9th Cir.

1990) ( c i t i n g Tripati, 878 F.2d a t 352). Accordingly, in the exercise of i t s discretion and pursuant t o t h e C o u r t ' s i n h e r e n t a u t h o r i t y , t h e C o u r t f u r t h e r ORDERS Defendant not to make, f i l e , or seek leave to f i l e any additional motions with respect to any of the rulings, opinions, or orders addressed in this Order or related to the Court's adoption of Magistrate Judge S t e w a r t ' s Amended Findings and Recommendation ( # 1 0 1 ) i n t h i s m a t t e r a n d ORDERS D e f e n d a n t n o t t o f i l e a n y m o t i o n to reconsider this Opinion and Order. 1 1 - O P I N I O N AND ORDER

If D e f e n d a n t v i o l a t e s t h i s O r d e r b y m a k i n g , f i l i n g , o r seeking leave to f i l e prohibited motions, the Court will impose sanctions, potentially including the striking of his pleadings and an entry of an order of default against Defendant thereby permitting Plaintiff to conclude this matter in i t s favor without any opportunity for Defendant to oppose the r e l i e f Plaintiff seeks. I T I S SO ORDERED. DATED t h i s 1 9 t h d a y o f A p r i l , 2 0 1 0 .

United States District Judge

1 2 - OPINION AND ORDER