Corporation of Gonzaga University v. Pendleton Enterprises LLC et al

Filing 33

ORDER ON GONZAGA'S MOTION FOR PARTIAL SUMMARY JUDGMENT; granting #21 Motion for Partial Summary Judgment. Signed by Senior Judge Lonny R. Suko. (PL, Case Administrator)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 EASTERN DISTRICT OF WASHINGTON 6 7 8 9 10 11 12 13 14 15 16 17 18 ) CORPORATION OF GONZAGA ) NO. CV-14-0093-LRS UNIVERSITY, ) ) ORDER ON GONZAGA’S MOTION Plaintiff, ) FOR [PARTIAL] SUMMARY ) JUDGMENT -vs) ) PENDLETON ENTERPRISES, LLC, ) a Washington LLC; PENDLETON ) BROADCASTING, INC., a ) Washington Corporation; and ) JAMIE PENDLETON, an ) individual and a resident of ) the State of Washington, ) ) Defendants. ) ) 19 BEFORE THE COURT is Plaintiff Corporation of Gonzaga 20 University’s (“Gonzaga”) Motion For Summary Judgment1 (ECF No. 21 21) filed on July 16, 2014. Oral argument was held on 22 23 September 4, 2014 in Spokane, Washington. Defendants opposed 24 25 The motion is a partial summary judgment as Gonzaga’s 26 motion seeks to have a ruling only on the alleged violation of §43(a) of the Lanham Act (15 U.S.C. §1125(a)). 1 ORDER - 1 1 2 the motion (ECF No. 26). The court took Gonzaga’s motion under advisement at the conclusion of the hearing. 3 DISCUSSION 4 5 A. 6 Introduction Plaintiff Gonzaga brought an action against Defendant 7 Pendleton Enterprises, LLC, Pendleton Broadcasting Inc., and 8 9 Jamie Pendleton (collectively referred to as “Defendants”), 10 alleging violations of the Lanham Act, trademark infringement 11 (federal, state and common law), Washington Consumer 12 Protection Act, and unfair competition. Gonzaga moved for 13 14 partial summary judgment on its §43(a) Lanham Act (15 U.S.C. 15 §1125(a)) claim. 16 preventing unauthorized use of Gonzaga trademarks because such Plaintiff asserts a commercial interest in 17 use will allegedly create confusion concerning Plaintiff's 18 19 endorsement of Defendants' bar and radio station 20 activities, products and services. 21 B. related Legal Standard 22 23 A party may move for summary judgment on a “claim or 24 defense” or “part of ... a claim or defense.” Fed.R.Civ.P. 25 56(a). 26 Summary judgment is appropriate when there is no genuine dispute as to any material fact and the moving party ORDER - 2 1 2 is entitled to judgment as a matter of law. Id. A party seeking summary judgment bears the initial burden 3 4 of informing the court of the basis for its motion, and of 5 identifying those portions of the pleadings and discovery 6 responses that demonstrate the absence of a genuine issue of 7 material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 8 9 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Material facts are 10 those that might affect the outcome of the case. Anderson v. 11 Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 12 L.Ed.2d 202 (1986). A dispute as to a material fact is 13 14 15 16 17 “genuine” if there is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. Id. Where the moving party will have the burden of proof at trial, it must demonstrate that no reasonable trier of fact 18 19 could find other than for the moving party. Soremekun v. 20 Thrifty Payless, Inc., 509 F.3d 978, 984 (9th Cir.2007). Where 21 the nonmoving party will bear the burden of proof at trial, 22 the moving party can prevail merely by pointing out to the 23 24 district court that there is an absence of evidence to support 25 the nonmoving party's case. Celotex, 477 U.S. at 324–25, 106 26 S.Ct. 2548. If the moving party meets its initial burden, the ORDER - 3 1 2 opposing party must then set out specific facts showing a genuine issue for trial in order to defeat the motion. 3 4 5 Anderson, U.S. at 250, 106 S.Ct. 2505; see also Fed.R.Civ.P. 56(c), (e). 6 7 477 When deciding a summary judgment motion, a court must view the evidence in the light most favorable to the nonmoving 8 9 party and draw all justifiable inferences in its favor. 10 Anderson, 477 U.S. at 255, 106 S.Ct. 2505; Hunt v. City of Los 11 Angeles, 638 F.3d 703, 709 (9th Cir.2011). 12 for a party opposing summary judgment It is not enough to “rest on mere 13 14 allegations or denials of his pleadings.” Anderson, 477 U.S. 15 at 259. 16 pleadings to designate specific facts showing that there is a 17 Instead, the nonmoving party must go beyond the genuine issue for trial. Celotex, 477 U.S. at 325. 18 19 It is not the Court's task “to scour the record in search 20 of a genuine issue of triable fact.” Keenan v. Allan, 91 F.3d 21 1275, 22 1279 (9th Cir.1996). Counsel has an obligation to clearly lay out support for the claim asserted. Carmen v. San 23 24 Francisco Unified Sch. Dist., 237 F.3d 1026, 1031 (9th 25 Cir.2001). The Court “need not examine the entire file for 26 evidence establishing a genuine issue of fact, where the ORDER - 4 1 2 evidence is not set forth in the opposing papers with adequate references so that it could conveniently be found.” Id. 3 4 C. Gonzaga’s Motion for [Partial] Summary Judgment 5 1. Gonzaga’s Identifiers and Marks 6 Plaintiff Gonzaga, is an institution of higher learning in 7 Spokane, Washington and has become well-known for its athletic 8 9 programs in the Spokane area. The following are the “words, 10 terms, names, symbols, devices, and combinations thereof” 11 (hereinafter referred to as Identifiers and Marks) that 12 Gonzaga asserts were used by the Defendants to reference or 13 14 identify Gonzaga in connection with Defendants’ commercial and 15 promotional purposes: 16 “GONZAGA UNIVERSITY”, which is the subject of U.S. Trademark Registration No. 1,931,286, and is an incontestable U.S. trademark per 15 U.S.C. §1065. ECF No. 23. 17 18 19 “GONZAGA UNIVERSITY BULLDOGS”, which is the subject of U.S. Trademark Registration No. 1,931,285, and is an incontestable U.S. trademark per 15 U.S.C. §1065. Id. 20 21 22 “ZAGS”, which is the subject of U.S. Trademark Registration No. 1,931,449, and is an incontestable U.S. trademark per 15 U.S.C. §1065. Id. 23 24 25 26 / / / ORDER - 5 1 Gonzaga’s “Bulldog mascot wearing a Gonzaga jersey”, which the record indicates that Gonzaga has used in Spokane since the 1980’s, and which is the subject of Washington State Trademark Registration File No. 56807. Id. 2 3 4 Gonzaga’s Bulldog Head, for which Gonzaga has been awarded Washington State Trademark Registration File No. 56780, showing a date of first use in Washington in 1998. Id. 5 6 7 8 Gonzaga’s Bulldog Head combined with the word Gonzaga, for which Gonzaga has been awarded Washington State Trademark Registration File No. 56959, showing a date of first use in Washington in 1998. Id. 9 10 11 Gonzaga’s Identifier “GU”, for which Gonzaga has been awarded Washington State Trademark Registration File No. 56960, showing a date of first use in Washington in 1998. Id. 12 13 14 15 Gonzaga’s Bulldog Head combined with “GU”, for which Gonzaga has been awarded Washington State Trademark Registration File No. 56958, showing a date of first use in Washington in 1998. Id. 16 17 18 19 20 2. The Undisputed Facts Underlying the Section 43(a) Claim 21 The controlling facts of the case at bar are relatively 22 uncomplicated and uncontested. Plaintiff Gonzaga has a rather 23 well-known basketball team in the Spokane area and throughout 24 25 26 the State of Washington. ECF No. 24. In producing and promoting the sport of NCAA basketball, Gonzaga has adopted ORDER - 6 1 2 and widely publicized the name/nickname (GONZAGA UNIVERSITY, GONZAGA UNIVERSITY BULLDOGS, ZAGS) and a team symbol, Spike, 3 4 a bulldog who wears a Gonzaga jersey. Since the 1998-1999 5 season when Gonzaga began to enjoy national prominence and 6 using the Gonzaga Identifiers and Marks, thousands of fans 7 have attended basketball games where the team Identifiers and 8 9 Marks are displayed on jersey fronts of the players, bulldog 10 mascot and throughout the game programs. 11 the team Identifiers and Marks during televised games. Still 12 Other fans observe more fans are exposed to Gonzaga’s Identifiers and Marks 13 14 15 16 17 through sporting news coverage in newspapers, magazines, and radio. Gonzaga alleges that Defendants have used the bulldog mascot wearing a Gonzaga jersey, a bulldog mascot head with a 18 19 spike collar and other Gonzaga Identifiers and Marks in 20 conjunction with their radio station services and bar services 21 intending 22 the consuming public to recognize the Gonzaga Identifiers as symbols of Gonzaga. 23 24 Photographs of these uses were posted in commerce on 25 Defendants’ online social media websites which advertise and 26 promote Defendants’ radio station and bar services. ORDER - 7 ECF No. 1 2 22 at 7-26. Relative to the Spokane Downtown Daiquiri Factory, Gonzaga asserts that the use of a bulldog mascot 3 4 wearing a Gonzaga-identifying jersey (Gonzaga or GU), as well 5 as the posting of photographs on Defendants’ online social 6 media websites, were intended to reference or identify Gonzaga 7 in connection with the commercial advertising and promotion of 8 9 10 11 12 defendants’ bar services, the Spokane Downtown Daiquiri Factory. Gonzaga asserts that the Defendants’ use of the Gonzaga Identifiers and Marks is likely to cause confusion, or to 13 14 cause mistake, or to deceive as to the affiliation, 15 connection, or association of Gonzaga with the radio station 16 and bar services offered by Defendants’ businesses, or as to 17 the origin, sponsorship, or approval of Defendants’ radio 18 19 station and bar services, or commercial activities. 20 With regard to the radio station services, Gonzaga argues 21 that the photographs make it appear that the third party 22 businesses being promoted and/or Pendleton Broadcasting’s 23 24 25 26 104.5 radio station are affiliated with, associated with or in some other commercial business relationship with Gonzaga. Gonzaga reports there have been multiple instances of ORDER - 8 1 2 actual confusion by members of the public in Spokane as to whether there was an "affiliation, connection, or association" 3 4 or a "sponsorship, such approval" example of between this Defendants reported and 5 Gonzaga. 6 (negative) with one of Defendants' businesses, the Downtown 7 One or association Spokane Daiquiri Factory, is as follows: 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 > Dear GU Athletics – As a Spokane resident, a mother of student athletes and fan of GU – I was very dismayed to see Spike associated in this manner with this particular business. This bar has promoted their signature drink called Date Grape, an obvious pun on Date Rape, and refuses to cooperate, acknowledge, or show any remorse for their blatant insensitivity for victims of sexual assault. This issue has prompted nationwide press coverage and as a result, they simply put the word "Banned" over the word Date. They are now promoting their "Q-Laid", "Strawberry Deep Throat Banana" and "We Still In This Bitch". See below as well as the numerous pictures still showing of Spike in their public photo gallery. > > I do not know if you are aware of this or not, the pictures are in their photo gallery on a public page and this is not a good image for your mascot. Thank you. ECF No. 24, Kassel Decl., ¶ 10. 24 Gonzaga (through its Associate Athletic Director 25 26 Kristopher Kassel) requested that Defendant Pendleton cease ORDER - 9 1 2 further use of the Gonzaga Identifiers and Marks, but the uses did not stop. Gonzaga concludes that Defendants are using 3 4 Gonzaga’s Identifiers and Marks without authorization and such 5 uses 6 association 7 make it appear with that or there some is other an affiliation commercial with, business relationship with Gonzaga-- when there is none. 8 9 3. Defendants’ Opposition 10 Defendants oppose the motion arguing that in a trademark 11 action, likelihood of confusion is a material fact2 which 12 should preclude summary judgment. Defendants do not respond to 13 14 Plaintiff's argument that there is a likelihood of confusion 15 with their use of Gonzaga’s Identifier and Marks. 16 despite there being no affidavits containing contrary facts, Defendants, 17 assert there exist genuine issues of fact, yet to be resolved. 18 19 Additionally, Defendants argue that the parties have yet to 20 commence any discovery. 21 Defendants further argue that the doctrine of “fair use” 22 should be held applicable action and to this trademark infringement 23 24 that the Court should apply the doctrine to 25 26 Defendants cite Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 767 (Fed. Cir. 1993). 2 ORDER - 10 1 2 sanction their use of a replica of Gonzaga's Identifiers. Plaintiff replies that Defendants do not mount a colorable 3 4 factual or legal argument why their use of Gonzaga's 5 Identifiers and Marks is a "fair use" or what facts they need 6 from the discovery process to support this or any of their 7 contentions. 8 Another issue advanced by Defendants is whether a mark 9 10 owned by the Plaintiff can be protected outside of the class 11 of services for which it is registered. 12 Plaintiff replies that all trademarks can apply outside of the "class" of 13 14 services because the legal test for trademark infringement is 15 whether there is a likelihood of confusion. 16 it unnecessary to decide this issue as this motion only covers 17 The Court finds a claim pursuant to §43(a) of the Lanham Act for unregistered 18 19 marks. Defendants 20 21 22 also assert that the Washington State trademarks were obtained after this suit was filed. Plaintiff replies that the Washington State trademarks each certify that 23 24 the marks are trademarks owned by Gonzaga, carry the 25 evidentiary value set forth in R.C.W. §19.77.040, and identify 26 Gonzaga as the source of the goods. ORDER - 11 Again, this motion does 1 not cover state registered trademark infringement. 2 Finally, Defendants suggest that Gonzaga does not have 3 4 5 standing to bring suit. D. Section 43(a) Violation – Likelihood of Confusion Analysis 6 In its Complaint, Gonzaga claims that Defendants are 7 liable for trademark infringement and unfair competition under 8 9 the Lanham Act, 15 U.S.C. §1125(a). Gonzaga indicated at the 10 hearing that the instant motion for summary judgment was based 11 only on Section §43(a) of the Lanham Act (15 U.S.C. §1125(a)). 12 Although it is somewhat unclear, Gonzaga’s arguments cover 13 14 claims of false designation of origin, federal/common law 15 trademark infringement (collectively, “infringement claims”), 16 and unfair competition claims, which claims cannot be 17 separated for purposes of the Court’s analysis. Section 43(a) 18 19 covers unregistered marks and is the federal counterpart of 20 certain state unfair competition and anti-dilution rights. 21 Section 43(a) of the Lanham Act gives an entity a cause of 22 action for the use by any person of “any word, term, name, 23 24 symbol, or device, or any combination thereof * * * which * * 25 * 26 sponsorship, or approval of his or her goods.” 15 U.S.C. § is likely ORDER - 12 to cause confusion * * * as to origin, 1 2 1125(a). In order to sue under the statute at issue in the instant 3 4 motion, it is not necessary for a mark or trademark to be 5 registered. 6 595 F.2d 1194, 1198 (9th Cir. 1979). 7 New West Corp. v. NYM Co. of California, Inc., Whether the theory is Section 43(a) of the Lanham Act or state unfair competition 8 9 law,3 the ultimate test is whether the public is likely to be 10 deceived or confused by the similarity of the marks. Id. at 11 1201. The burden on plaintiff is twofold: First, plaintiff 12 must establish secondary meaning in their use of the Gonzaga 13 14 15 16 17 Identifiers and Marks. Second, Defendants’ activities must be shown to have created a likelihood of confusion. Secondary meaning has been defined as association, nothing more. Carter-Wallace, Inc. v. Proctor & Gamble Co., 434 F.2d 18 19 794, 802 (9th Cir. 1970). The basic element of secondary 20 meaning is a mental recognition in buyers' and potential 21 buyers' minds that products connected with the symbol or 22 device emanate from or are associated with the same source. 23 24 25 Plaintiff’s Fourth Cause of Action is for common law unfair competition but was not specifically argued in the 26 summary judgment motion. 3 ORDER - 13 1 2 Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 200 U.S.P.Q. 713, 716 (9th Cir. 1980). 3 The creation of confusion as to sponsorship of products 4 5 is also actionable. See HMH Publishing Co., Inc. v. Brincat, 6 504 F.2d 713, 716 (9th Cir. 1974); Dallas Cowboys Cheerleaders, 7 Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2nd Cir. 8 9 1979). The standard, however, applied by the courts in 10 determining whether a showing of secondary meaning has been 11 made in a sponsorship context is not well-defined. See, e.g., 12 HMH Publishing, 504 F.2d at 718 (secondary meaning is 13 14 demonstrated by a showing that the purchasing public generally 15 believes that a product which bears that mark is “in some 16 fashion connected” with the products of the registrant); Wyatt 17 Earp Enterprises, Inc. v. Sackman, Inc., 157 F.Supp. 621, 625 18 19 (S.D.N.Y.1958) 20 confusion and secondary meaning). 21 (collapsing the analysis of likelihood of The correct standard should be reachable deductively. 22 National Football League Properties, Inc. v. Wichita Falls 23 24 Sportswear, 25 a symmetry between the concepts of secondary meaning and 26 likelihood ORDER - 14 532 F.Supp. 651, 659 (D.C.Wash.1982). of confusion. Secondary meaning There is requires an 1 2 examination of the non-infringing party's mark and product, and tests the connection in the buyers' mind between the 3 4 product bearing the mark and its source. Id. Likelihood of 5 confusion in a sponsorship context focuses on the product 6 bearing the allegedly infringing marks and asks whether the 7 public believes the product bearing the marks originates with 8 9 or is somehow endorsed or authorized by the plaintiff. Id. 10 citing Kentucky Fried Chicken Corp. v. Diversified Packaging 11 Corp., 549 F.2d 368, 388-90 (5th Cir. 1977). Just as the 12 relevant inquiry for the establishment of likelihood of 13 14 confusion in a sponsorship context is the belief that 15 sponsorship or authorization was granted, the inquiry should 16 be the same in order to establish secondary meaning. Wichita, 17 532 F.Supp. at 659. 18 As the Ninth Circuit has explained it, § 43(a) provides 19 20 two bases for liability: “(1) false representations concerning 21 the origin, association or endorsement of goods or services 22 through the wrongful use of another's distinctive mark, name, 23 24 trade dress or other device (‘false association’), and (2) 25 false representations in advertising concerning the qualities 26 of goods ORDER - 15 or services (‘false advertising’).” Waits v. 1 2 Frito–Lay, Inc., 978 F.2d 1093, 1108 (9th Cir.1992) (citations omitted). Here, Plaintiff asserts a violation of the Lanham 3 4 Act §1025 [sic] as its First Claim for relief. ECF No. 1 at 8. 5 A false endorsement claim is available where defendants' 6 conduct has allegedly created “a likelihood of confusion as to 7 whether plaintiffs were endorsing [defendants'] product.” 8 9 Wendt v. Host Int'l, Inc., 125 F.3d 806, 812 (9th Cir.1997). 10 “Section 43(a)(1) [of the Lanham Act] provides similar 11 protection to trademarks regardless of registration.” Bell v. 12 Harley Davidson Motor Co., 539 F.Supp.2d 1249, 1254 13 14 (S.D.Cal.2008) (citing Brookfield Commc'ns, Inc. v. W. Coast 15 Entm't Corp., 174 F.3d 1036, 1046 n. 6 (9th Cir.1999)). “To 16 establish a trademark infringement claim ..., [Plaintiff] must 17 establish that [Defendant] is using a mark confusingly similar 18 19 to a valid, protectable trademark of [Plaintiff's].” 20 Brookfield Commc'ns, 174 F.3d at 1046. “To show that he has a 21 protectable trademark interest, Plaintiff must have been the 22 first to use the mark in the sale of goods or services.” 23 24 Sengoku Works, Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th 25 Cir.1996). 26 ORDER - 16 1 2 To prevail on an infringement claim, a trademark owner4 must prove that the alleged infringer used the mark at issue 3 4 in commerce and in connection with the sale, distribution, or 5 advertising of goods or services in such a way that the use 6 “is likely to cause confusion, or to cause mistake, or to 7 deceive.” 15 U.S.C. § 1114; see also 15 U.S.C. § 1125(a). 8 9 Infringement disputes are “intensely factual in nature,” and 10 therefore 11 Interstellar Starship Serv., Ltd. v. Epix, Inc., 184 F.3d 12 summary judgments are generally disfavored. 1107, 1109 (9th Cir.1999). 13 14 As between Plaintiff and Defendants, this Court finds 15 Plaintiff is the owner of the Gonzaga Identifiers and Marks, 16 which include protectable marks.5 Defendants have not denied 17 18 19 20 21 22 23 Although Defendants assert an affirmative defense calling into question the ownership of the marks, there is no dispute that Gonzaga owns the Marks, which are federally and state registered or acquired through actual and continuous use. (ECF No. 22, Hendricksen Decl., ¶¶ 2-5.) This “constitutes prima facie evidence of the validity of the registered mark and of [Gonzaga’s] exclusive right to use the mark on the goods and services specified in the registration.” Brookfield, 174 F.3d at 1047. 4 24 Three word marks are incontestible federal trademarks (“GONZAGA UNIVERSITY,” GONZAGA UNIVERSITY BULLDOGS, and 26 ”ZAGS”). Plaintiff may also prevail if it establishes that it has a common law trademark or service mark. See Boston 5 25 ORDER - 17 1 2 that each of the Gonzaga Identifiers or trademarks refer to or identify Gonzaga in the Spokane area. With the exception of 3 4 other non-local teams that also use a bulldog mascot, 5 Defendants have not identified any other possible entity to 6 which the Gonzaga Identifiers and Marks refer. 7 The Court finds that Defendants have made commercial use 8 9 of a mark that is similar enough to cause confusion in the 10 minds of consumers about the origin of the goods or services 11 in question. KP Permanent Make–Up, Inc. v. Lasting Impression 12 I, Inc., 543 U.S. 111, 117, 125 S.Ct. 542, 160 L.Ed.2d 440 13 14 15 16 17 18 19 20 21 22 (2004). To assess likelihood of confusion, courts in the Ninth Circuit consider the Sleekcraft factors: (1) the strength of the plaintiff's mark; (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. Wendt, 125 F.3d at 812 (applying AMF, Inc. v. Sleekcraft 23 24 25 Professional Hockey Association v. Dallas Cap & Emblem Mfg., 26 Inc., 510 F.2d 1004, 1010 (5th Cir.), Cert. denied, 423 U.S. 991, 96 S.Ct. 408, 46 L.Ed.2d 312 (1975). ORDER - 18 1 2 Boats, 599 F.2d 341 (9th Cir.1979)). This list of factors is not exhaustive and is not intended to be applied as a 3 4 “mechanistic formula.” Dr. Seuss Enterprises, L.P. v. Penguin 5 Books USA, Inc., 109 F.3d 1394, 1404 (citations and internal 6 marks omitted), cert. dismissed, Penguin Books USA, Inc. v. 7 Dr. Seuss Enterprises, 521 U.S. 1146, 118 S.Ct. 27, 138 8 9 L.Ed.2d 1057 (1997). “Other variables may come into play 10 depending on the particular facts presented.” Id. As the 11 nature of the factors makes clear, the “ ‘likelihood of 12 confusion’ standard is predominantly factual in nature.” Id. 13 In the Spokane area, there is no dispute that Gonzaga's 14 15 Identifiers and Marks are commercially strong. The 16 relatedness of goods/services is somewhat nebulous as one 17 could argue that an athletic/school program class is not close 18 19 to the Defendants' bar/radio program class, but Gonzaga 20 arguably has opportunities to associate with or approve of a 21 broad range of different entities to become affiliated with 22 its programs. In this case, there can be no dispute that 23 24 Defendants 25 identically except the bulldog mascot wearing the Gonzaga 26 identifying ORDER - 19 are using jersey. Gonzaga's Even though Identifiers the bulldog and Marks costume is 1 2 different than Gonzaga's, the bulldog costume also includes other Gonzaga Identifiers to further create the impression 3 4 5 that it is the Gonzaga Bulldog mascot or is affiliated or approved by Gonzaga. 6 7 Evidence of actual confusion is not required to find a likelihood of confusion. Moreover, if Plaintiff offers 8 9 compelling evidence of actual confusion, such evidence may be 10 "persuasive proof that future confusion is likely." 11 Inc., v. Sun Earth Solar Power Co., 846 F.Supp.2d 1063, 1079 12 (N.D.Cal.2012) (citations and quotations omitted). SunEarth, The Court 13 14 finds that Defendants have used Gonzaga’s Identifiers to 15 benefit from any connection (negative or positive) the public 16 might 17 draw between goodwill)and the Defendants’ well-know sports sports bar or team (and radio its station. 18 19 Plaintiff has also provided compelling evidence of the 20 existence of at least public comment and confusion from the 21 use of the Spike-like mascot at the Spokane Daiquiri Factory. 22 As far as marketing channels go, in this case both Gonzaga 23 24 and the Defendants advertise and promote their respective 25 goods and services to the public in Spokane, Washington using 26 the Gonzaga ORDER - 20 Identifiers and Marks. From the photographs 1 2 included in Exhibit B to the Kassel Declaration, the Defendants have been using their bulldog mascot with the 3 4 Gonzaga or GU jersey in the promotion of Defendants' 5 businesses (as well as the businesses of the customers of 6 Defendant's radio station 104.5 JAMZ) in the Spokane area. 7 Furthermore, when it comes to well-known college sports 8 9 10 11 12 programs, the range of businesses and products with which the college may become associated or approve is wide and varied. The Spokane area has a very large number of Gonzaga fans who are loyal to Gonzaga and its various athletic teams, and 13 14 based upon the photographs attached as Exhibit B to the Kassel 15 Declaration, Defendants are using Gonzaga's Identifiers and 16 Marks in order to benefit commercially from the well known fan 17 recognition and loyalty. 18 19 The fact that the Defendants are using several of 20 Gonzaga's Identifiers and Marks in most instances, is strong 21 evidence 22 impression that Defendants that are Defendants are intending to affiliated, create connected the or 23 24 associated with Gonzaga, or that there was a sponsorship or 25 approval 26 activities by Gonzaga. ORDER - 21 of Defendants goods, services, or commercial Evidence would suggest Defendants are 1 2 intending to use the notoriety and reputation of gain attention, advertising and Gonzaga to benefit in Defendants' own 3 4 businesses, and in the case of Defendants' radio station 5 (104.5 6 businesses. 7 JAMZ), promotional benefit for the third party As far as the other remaining Sleekcraft factors, these 8 9 either favor Gonzaga or are neutral. 10 To address Defendants’ defense of fair use raised in their 11 opposition, the fair use doctrine typically allows adjustments 12 of conflicts between the first amendment and the copyright 13 14 laws, See Wainwright Securities Inc. v. Wall Street Transcript 15 Corp., 558 F.2d 91, 95 (2d Cir. 1977), Cert. denied, 434 U.S. 16 1014, 98 S.Ct. 730, 54 L.Ed.2d 759 (1978), and is designed 17 primarily to balance "the exclusive rights of a copyright 18 19 holder with the public's interest in dissemination of 20 information affecting areas of universal concern, such as art, 21 science and industry." Id. at 94. 22 There are two fair use defenses available in trade dress 23 24 or trademark infringement cases—classic and nominative. The 25 classic fair use defense "applies only to marks that possess 26 both a primary meaning and a secondary meaning—and only when ORDER - 22 1 2 the mark is used in its primary descriptive sense rather than its secondary trademark sense." Brother Records, Inc. v. 3 4 Jardine, 318 F.3d 900, 905 (9th Cir.2003). In the Ninth 5 Circuit, "the classic fair use defense is not available if 6 there is a likelihood of customer confusion as to the origin 7 of the product." Cairns v. Franklin Mint, 292 F.3d 1139, 1151 8 9 (9th Cir.2002). 10 To prove nominative fair use, a defendant must satisfy 11 three requirements: (1) "the plaintiff's product or service in 12 question must be one not readily identifiable without use of 13 14 the trademark"; (2) "only so much of the mark or marks may be 15 used as is reasonably necessary to identify the plaintiff's 16 product or service"; and (3) "the user must do nothing that 17 would, in conjunction with the mark, suggest sponsorship or 18 19 20 21 endorsement by the trademark holder." Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792, 809 (9th Cir.2003). The Court does not find either type of fair use is 22 applicable under the facts of this case. There are numerous 23 24 ways in which Defendants may entertain their Gonzaga fans 25 without infringing Plaintiff's trademark(s). 26 primary purpose of the trademark laws is to protect the public ORDER - 23 Because the 1 2 from confusion,6 it would be somewhat anomalous to hold that the confusing use of another's trademark is "fair use". See 3 4 also Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 5 1210, 1215 (8th Cir.), Cert. denied, 429 U.S. 861, 97 S.Ct. 6 164, 50 L.Ed.2d 139 (1976). 7 The greater the similarity, the greater the likelihood of 8 9 confusion. Inc. v. Walt Disney Co., 202 F.3d 1199, 10 1205-06 (9th Cir.2000). In the Ninth Circuit, secondary meaning 11 is defined merely as “association” and has as its “basic 12 element ... the mental association by a substantial segment of 13 14 consumers and potential consumers ‘between the alleged mark 15 and a single source of the product.’ ” Levi Strauss & Co., 778 16 F.2d at 1354, quoting McCarthy, §§ 15:2 and 15:11(B) 17 (additional citations omitted). 18 19 "[W]hile the issue of likelihood of confusion is a mixed 20 question of law and fact, the inquiry is predominantly a 21 question of fact." United States v. Six Thousand Ninety–Four 22 (6,094) “Gecko” Swimming Trunks, 949 F.Supp. 768, 771 23 24 (D.Haw.1996). The circumstances of each particular case 25 26 , See W. E. Basset Co. v. Revlon, Inc., 354 F.2d 868, 871 (2d Cir. 1966). 6 ORDER - 24 1 2 dictate whether the determination is a question of law or fact. J.B. Williams Company, Inc. v. Le Conte Cosmetics, Inc., 3 523 F.2d 187, 190 (9th Cir.1975). Where summary judgment is 5 appropriate, relief 6 choice. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 4 7 however, injunctive is the remedy of 1175, 1180 (9th Cir.1988). Gonzaga indicated at the hearing 8 9 10 11 12 that if its summary judgment is granted, it will moved for injunctive relief in a motion to follow. Plaintiff has put forth evidence to establish secondary meaning for its Identifiers and Marks and the likelihood of 13 14 confusion, relative to Defendants’ use of the various 15 Identifiers/Marks and combinations thereof. 16 shown the primary significance of its Identifiers and Marks is 17 Plaintiff has source identification. 18 19 Having found that Plaintiff has acquired secondary meaning 20 in its Identifiers including the bulldog (with spike collar 21 wearing a Gonzaga jersey), the Court finds that the bulldog 22 mascot used by Defendants in the Spokane area closely 23 24 25 26 resembles Gonzaga’s bulldog mascot and that the public is likely to identify it as Plaintiff's mascot. In the Complaint, Plaintiff states that “[i]n the past ORDER - 25 1 2 weeks for example, a concern or multiple outrage that concerned Gonzaga citizens have voiced University would be 3 4 affiliated or associated with a business that would engage in 5 conduct such as naming a drink Date Grape Koolaid.” 6 1 at 8. 7 ECF No. As Judge Markey opined, the trademark laws are designed not only to prevent consumer confusion but also to 8 9 protect “the synonymous right of a trademark owner to control 10 his product's reputation.” James Burrough Ltd. v. Sign of the 11 Beefeater, Inc., 540 F.2d 266, 274 (7th Cir. 1976). The 12 depiction of the bulldog in a Gonzaga jersey using a urinal as 13 14 shown in the March 23, 2013 posting on Defendants’ social 15 media advertising website, for example, violates §43(a) and 16 the Plaintiff’s right to control its reputation. (ECF. No. 22 17 at 21). 18 In the Ninth Circuit, neither an intent to confuse nor 19 20 actual 21 infringement claim. See Coca–Cola Co. v. Overland, Inc., 692 22 confusion are required elements of a trademark F.2d 1250, 1256 n. 16 (9th Cir.1982) (intent to confuse); 23 24 Brookfield Communications, Inc. v. West Coast Entm't Corp., 25 174 F.3d 26 Instead, “[l]ikelihood of confusion will be found whenever ORDER - 26 1036, 1050 (9th Cir.1999) (actual confusion). 1 2 consumers are likely to assume that a mark is associated with another source or sponsor because of similarities between the 3 4 two marks.” Academy of Motion Picture Arts & Scis. v. Creative 5 House Promotions, Inc., 944 F.2d 1446, 1456 (9th Cir.1991), 6 citing Shakey's, Inc. v. Covalt, 704 F.2d 426, 431 (9th 7 Cir.1983). 8 9 Defendants, as the nonmoving parties, have not designated 10 specific facts showing that there is a genuine issue(s) for 11 trial with respect to Plaintiff’s §43(a) claim. 12 The Court finds, as a matter of law, evidence of record would permit a 13 14 rational factfinder to conclude Defendants' use of the Gonzaga 15 Identifiers and Marks is likely to cause confusion, or to 16 cause 17 mistake, or to deceive as to the affiliation, connection, or association of Gonzaga with the radio station 18 19 and bar services offered by Defendants' businesses, or as to 20 the origin, sponsorship, or approval of Defendants' radio 21 station and bar services, or other commercial activities. 22 As to Defendants’ defense that Plaintiff lacks standing, 23 24 the Court flatly rejects this contention. 25 Section 43(a) 26 believes that he is or is likely to be damaged.” ORDER - 27 gives standing to sue to On its face, “any person who See L’Aiglon 1 2 Apparel Co. V. Lana Lobell, Inc., 214 F.2d 649 (3rd Cir.1954). E. Conclusion 3 4 Accordingly, the Court finds the likelihood of confusion 5 exists and a violation of Section 43(a) has occurred. The 6 strength in the market of Plaintiff’s Identifiers weigh in 7 favor of finding likelihood of confusion required for 8 9 Gonzaga’s Lanham Act false designation of origin claim against 10 Defendants as supported by Gonzaga’s long and substantial use 11 of the Identifiers and marks in connection with the college 12 and well-known athletic program. 13 14 15 16 Accordingly, Plaintiff Gonzaga's Motion for [Partial] Summary Judgment, ECF No. 21, is GRANTED. The Court specifically finds for Plaintiff with respect to the First 17 18 19 20 21 Cause of Action (Violation of the Lanham Act, Section 43(a)). The District Court Executive is directed to enter this Order. DATED this 25th day of September, 2014. 22 23 s/Lonny R. Suko 24 LONNY R. SUKO SENIOR UNITED STATES DISTRICT JUDGE 25 26 ORDER - 28

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