BACA International v. Clarke et al

Filing 37

ORDER Requesting Supplemental Briefing on 33 MOTION for Default Judgment as to defendant(s) Jacob Huggard filed by BACA International. Signed by Judge Jill N. Parrish on 6/26/2018. (jwt)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
B.A.C.A. INTERNATIONAL, INC.,
Plaintiff,
v.

ORDER REQUESTING SUPPLEMENTAL
BRIEFING ON MOTION FOR DEFAULT
JUDGMENT

CHRIS CLARKE, et al.,
Case No. 2:15-cv-00617
Defendants.
District Judge Jill N. Parrish

On November 9, 2015, the clerk of the court issued a certificate of default as to
Defendant Jacob Huggard. Over two years later, Plaintiff B.A.C.A. International, Inc. moved for
a default judgment against Mr. Huggard. B.A.C.A. contends that it is entitled to default judgment
on its fifth claim to relief: unfair competition in violation of Section 43(a)(1)(A) of the Lanham
Act, 15 U.S.C. § 1125(a)(1)(A). The court, hwoever, is concerned that the facts alleged in the
complaint fail to establish of a violation of § 1125(a)(1)(A).
Section 1125(a)(1) imposes liability on “[a]ny person who, on or in connection with any
good . . . , uses in commerce any word, term, name, symbol, or device, or any combination
thereof, . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods . . . by another person.”
B.A.C.A. contends that Mr. Huggard violated this section because “the patch [he sold]
was not merely similar to an authorized B.A.C.A. back patch, but indistinguishable from an
authorized B.A.C.A. back patch.” And according to B.A.C.A., once the patch was sold and

“affixed to a biker’s jacket or vest, the patch would have necessarily conveyed the message to all
who saw it that the wearer was a B.A.C.A. member and, therefore, a safe, trustworthy person
without regard for the wearer’s actual character.”
It does not appear that B.A.C.A. argues that Mr. Huggard’s sale of the B.A.C.A. patch
was likely to cause confusion as to “the affiliation, connection, or association” of Mr. Huggard
with B.A.C.A. or some other person. See § 1125(a)(1)(A). Specifically, B.A.C.A. does not argue
that the public would be confused as to Mr. Huggard’s affiliation with B.A.C.A. So B.A.C.A.
seems to impliedly argue that Mr. Huggard’s sale of the B.A.C.A. patch was likely to confuse the
public as to the “origin, sponsorship, or approval” of the patch.
But “trademark law generally does not reach the sale of genuine goods bearing a true
mark even though such sale is without the mark owner’s consent.” NEC Elecs. v. CAL Circuit
Abco, 810 F.2d 1506, 1509 (9th Cir. 1987); see also Prestonettes, Inc. v. Coty, 264 U.S. 359, 368
(1924) (“A trade-mark only gives the right to prohibit the use of it so far as to protect the
owner’s good will against the sale of another’s product as his.”); Matrix Essentials, Inc. v.
Emporium Drug Mart, Inc. of Lafayette, 988 F.2d 587, 593 (5th Cir. 1993) (en banc) (holding
that retail drug store did not violate § 1125(a)(1) because, among other reasons, sale of
manufacturer’s hair-care products “cannot cause confusion as to manufacture or sponsorship
because the goods were manufactured and labeled [by manufacturer]”). This rule exists because
trademark law is “designed to prevent sellers from confusing or deceiving consumers about the
origin or make of a product, which confusion ordinarily does not exist when a genuine article
bearing a true mark is sold.” NEC, 810 F.2d at 1509 (citing Prestonettes, 264 U.S. at 368–69).
Here, Mr. Huggard sold a genuine B.A.C.A. patch without B.A.C.A.’s consent. Mr.
Huggard did not sell a counterfeit B.A.C.A. patch—an act that would certainly cause confusion

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as to the origin of the patch. The court is concerned that merely selling the B.A.C.A. patch does
not constitute a violation of § 1125(a)(1). Specifically, the court is concerned that B.A.C.A.
focuses on whether the public would mistake someone wearing the B.A.C.A. patch as a member
of B.A.C.A., as opposed to whether the public would be confused as to the “origin, sponsorship,
or approval” of the patch itself.
Accordingly, B.A.C.A. is hereby ORDERED to submit supplemental briefing on the
issue of whether the factual allegations in the complaint establish that Mr. Huggard violated
§ 1125(a)(1)(A). B.A.C.A. must identify the specific statutory language of § 1125(a)(1)(A) upon
which it relies. B.A.C.A. shall respond accordingly on or before Friday, July 6, 2018. B.A.C.A.’s
supplemental brief shall not exceed ten pages. Alternatively, B.A.C.A. may withdraw its motion
for entry of default judgment and move for default judgment against Mr. Huggard on one of its
sixteen other claims for relief.

Signed June 26, 2018
BY THE COURT

______________________________
Jill N. Parrish
United States District Court Judge

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