Clean Crawl, Inc. v. Crawl Space Cleaning Pros, Inc.

Filing 75

ORDER granting in part and denying in part 39 Motion for Summary Judgment, requesting supplemental briefing and re-noting 39 Motion for Summary Judgment for 2/22/2019. Signed by Judge Benjamin H. Settle. (MGC)

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT TACOMA

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CLEAN CRAWL, INC.,
Plaintiff,

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v.
CRAWL SPACE CLEANING PROS,
INC.,

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Defendant.

CASE NO. C17-1340 BHS
ORDER DENYING IN PART, AND
GRANTING IN PART,
DEFENDANT’S MOTION FOR
SUMMARY JUDGMENT, AND
REQUESTING ADDITIONAL
BRIEFING

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This matter comes before the Court on Defendant Crawl Space Cleaning Pros,
Inc.’s (“CSCP”) motion for summary judgment or partial summary judgment. Dkt. 39.
The Court has considered the pleadings filed in support of and in opposition to the
motion and the remainder of the file and hereby denies the motion in part, grants the
motion in part, and reserves ruling and requests supplemental briefing in part for the
reasons stated herein.
I.

PROCEDURAL HISTORY AND FACTUAL BACKGROUND

This suit arises from copyright and trademark disputes between Plaintiff Clean
Crawl, Inc. (“CCI”) and CSCP, two businesses which clean attic and crawls spaces and

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provide pest exclusion services for homes in the Western Washington area. See Dkts. 48

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at 7, 39 at 2.

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CCI began doing business in its current iteration in 2001 when its president,

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Charles Henrichsen (“Henrichsen”), transferred his Bio Bug Pest Management, Inc.

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business to CCI, Dkt. 48 at 6, and began using the trade name CLEAN CRAWLS, Dkt.

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49, Declaration of Charles Henrichsen (“Henrichsen Decl.”) at 3. 1 CSCP, using the trade

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name Crawl Pros, began operations on January 9, 2013 under founder and owner Richard

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Herron (“Herron”). Dkt. 39 (citing Dkt. 40, Declaration of Richard Herron (“Herron

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Decl.”), at 1). CCI provides “air duct cleaning services, animal contamination cleaning

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and disposal services, pest control for commercial and residential buildings, and

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environmental containment.” Dkt. 48 at 7 (citing Henrichsen Decl. at 2–3, 6–7). CSCP

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provides “crawlspace and attic cleaning and restoration, insulation installation, crawl

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space encapsulation and sealing, rodent exclusion, duct sealing, and water mediation and

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flooding.” Dkt. 39 at 2 (citing Herron Decl. at 1). CSCP characterizes the nature of the

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two companies’ businesses as “substantially similar.” Dkt. 39 at 2. CCI confirms this,

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stating that “[i]t is undisputed that both companies provide identical, directly competing

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services.” Dkt. 48 at 24.

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Henrichsen declares that he met Herron in 2008 through an insulation and energy

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efficiency industry association and mentored Herron in starting a business, Sustainable

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Building and Insulation (“SBI”). Henrichsen Decl. at 3–4. Henrichsen declares that he

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The Court refers to ECF pagination throughout this Order if available.

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made SBI a CCI subcontractor, and one of his employees, CCI sales representative Jared

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Pullen (“Pullen”), referred “many jobs” to SBI. Id. at 4. Henrichsen declares that these

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referrals allowed Pullen and Herron to be “heavily exposed” to CCI’s “family of

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trademarks and copyrights” between 2010 and 2013. Id. Henrichsen also declares that all

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of CCI’s copyrighted materials at issue “were substantially completed in the form

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registered in the 2008-2009 time frame.” Id. at 5. Finally, Henrichsen declares that CCI

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has used its trademarks and copyrights with customers in fourteen western Washington

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counties since 2010. Id. at 6. CCI registered a service mark for “a gold amorphous dirt

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blot to the left of a slightly superimposed by the blue capitalized words ‘CLEAN

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CRAWLS’” on August 31, 2010 with the United States Patent and Trademark Office

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(“USPTO”). Dkt. 57-1 at 47.

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Henrichsen specifically declares that by 2012, Herron and Pullen “knew and had

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used repeatedly in association with [CCI] its family of trademarks,” including the

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CLEAN CRAWLS trade name, WE GO WHERE YOU DON’T WANT TO (“Slogan

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One”), and WE DO THE WORK YOU DON’T WANT TO (“Slogan Two”) (collectively

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“the family of marks”). Henrichsen Decl. at 4. Henrichsen declares that CCI typically has

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not used its slogans in printed advertising or on company vehicles or other items, “instead

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using them primarily on the Internet and verbally with customers, associates, and the

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public.” Id. at 7. Henrichsen and others at CCI declare that CCI has used the Slogans

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extensively dating back to at least 2010. See, e.g. Henrichsen Decl. at 4; Dkt. 50

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Declaration of Vice President of CCI Dale Gjerness (“Gjerness Decl.”) at 4–5; Dkt. 52,

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Declaration of Patrick J. Smith (“Smith Decl.”), at 1.

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CSCP began operations in early 2013, using Slogan One extensively to brand its

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business. See Herron Decl. at 6–41. In 2013, CSCP placed the slogan in advertising, on

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company cars and trucks, and on its company headquarters. Id. at 6–24. Between 2014

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and 2017, CSCP expanded its use of Slogan One to include business cards, customer

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giveaways, a domain name, advertising, its payment authorization form, and company

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jackets. Id.at 25–41. On April 15, 2014, CCI registered a service mark for “an amorphous

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water blot to the left of and slightly superimposed by the capitalized words ‘CLEAN

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CRAWLS’” with the USTPO. Dkt. 57-1 at 49.

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On March 20, 2017, CSCP applied to register Slogan One with Washington as a

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trademark in class 37, registering it for use with “[c]leanup of crawl spaces and attics and

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insulation installation services.” Dkt. 41, Declaration of Emilia L. Sweeney (“Sweeney

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Decl.”), at 5–14. Also in March 2017, Herron declares that CSCP “learned that CCI had

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begun using [Slogan One] on CCI’s website,” and so asked CCI to cease and desist.

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Herron Decl. at 3–4. Herron declares that CSCP received a favorable response, but later

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found the CCI “had added a TM to the end of [Slogan One] and was also using the

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confusingly similar [Slogan Two] on its website.” Id. CCI alleges that it first became

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aware of CSCP’s infringement in 2017 “after investigation prompted by [CSCP’s]

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accusation of trademark infringement against [CCI].” Dkt. 48 at 9.

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CCI submitted an application for protection of Slogan One on July 6, 2017 with

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the USPTO. Dkt. 57-1 at 51. CSCP also filed for protection of Slogan One with the

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USPTO, which issued a Notice of Publication on July 12, 2017, announcing its intent to

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register Slogan One to CSCP. Sweeney Decl. at 15–24.

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On August 14, 2017, CSCP filed a complaint against CCI in the Pierce County

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Superior Court for violation of Washington’s Trademark Registration Act, RCW Chapter

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19.77 et seq., common law trademark infringement, and violation of Washington’s

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Consumer Protection Act (“CPA”), RCW Chapter 19.86. Dkt. 39 at 5.

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On September 6, 2017, CCI filed this lawsuit against CSCP, alleging copyright

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infringement, trademark infringement, false designation of origin and unfair competition,

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and violation of the CPA, and seeking a permanent injunction against infringement of the

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copyrighted materials and the trademarked materials, destruction of all infringing

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materials, damages, and other relief. Dkt. 1. On October 10, 2017, CCI registered Slogan

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Two as a service mark with the USPTO. Dkt. 57-1 at 53. On November 28, 2017, CCI

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filed a Notice of Opposition to CSCP’s application for protection of Slogan One with the

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federal Trademark Trial and Appeal Board. Sweeney Decl. at 26–31. This Notice cites

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CCI’s July 6 application for protection of Slogan One. See Dkt. 57-1 at 51. 2 On

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February 27, 2018, CCI registered a service mark which “consists of the wording ‘Clean

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Crawls’ in white and outlined in navy blue . . . centered upon a blue splash, which is

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centered on a blue background . . . .” with the USPTO. Dkt. 57-1 at 55. On March 19,

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2018, CSCP filed an amended answer in the instant case, asserting counterclaims and

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affirmative defenses. Dkt. 32. On March 27, 2018, CCI registered a service mark

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consisting of the words CLEAN CRAWLS with the USPTO, and registered another

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CSCP informed the Court that this proceeding is suspended pending the outcome of the
instant suit. Dkt. 39 at 4.

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service mark consisting of the words CLEAN CRAWLS in blue next to a splash image in

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grey on June 12, 2018. Dkt. 57-1 at 57–59.

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On September 6, 2018, CSCP filed the instant motion for summary judgment. Dkt.

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39. On October 8, 2018, CCI responded. Dkt. 48. On October 19, 2018, CSCP replied.

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Dkt. 60. On October 22, 2018, CCI filed a surreply. Dkt. 61. 3

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II. DISCUSSION
A.

Summary Judgment Standard
Summary judgment is proper only if the pleadings, the discovery and disclosure

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materials on file, and any affidavits show that there is no genuine issue as to any material

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fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).

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The moving party is entitled to judgment as a matter of law when the nonmoving party

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fails to make a sufficient showing on an essential element of a claim in the case on which

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the nonmoving party has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323

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(1986). There is no genuine issue of fact for trial where the record, taken as a whole,

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could not lead a rational trier of fact to find for the nonmoving party. Matsushita Elec.

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Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (nonmoving party must

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present specific, significant probative evidence, not simply “some metaphysical doubt”).

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See also Fed. R. Civ. P. 56(e). Conversely, a genuine dispute over a material fact exists if

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there is sufficient evidence supporting the claimed factual dispute, requiring a judge or

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The Court has also reviewed CCI’s Motion for Leave to Supplement the Record, Dkt.
74, and finds that the information provided does not alter the conclusions the Court reaches in
this Order.

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jury to resolve the differing versions of the truth. Anderson v. Liberty Lobby, Inc., 477

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U.S. 242, 253 (1986); T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d

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626, 630 (9th Cir. 1987).

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The determination of the existence of a material fact is often a close question. The

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Court must consider the substantive evidentiary burden that the nonmoving party must

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meet at trial—e.g., a preponderance of the evidence in most civil cases. Anderson, 477

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U.S. at 254; T.W. Elec. Serv., Inc., 809 F.2d at 630. The Court must resolve any factual

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issues of controversy in favor of the nonmoving party only when the facts specifically

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attested by that party contradict facts specifically attested by the moving party. The

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nonmoving party may not merely state that it will discredit the moving party’s evidence

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at trial, in the hopes that evidence can be developed at trial to support the claim. T.W.

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Elec. Serv., Inc., 809 F.2d at 630 (relying on Anderson, 477 U.S. at 255). Conclusory,

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nonspecific statements in affidavits are not sufficient, and missing facts will not be

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presumed. Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888-89 (1990).

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B.

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Trademark Claims
CCI makes three primary trademark allegations: first, that CSCP’s trade name

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creates a strong likelihood of consumer confusion with its own, second, that CCI has the

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rights to Slogan One and CSCP’s use is of Slogan One is directly infringing, and third,

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that CSCP’s use of Slogan One creates a likelihood of confusion with and thus infringes

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CCI’s rights in Slogan Two. Dkt. 1, ⁋⁋ 15–20, 24–27. CCI claims violation of 15 U.S.C.

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§ 1114 and/or Washington common law, and false designation of origin and unfair

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competition in violation of 15 U.S.C. § 1125. Dkt. 1, ⁋⁋ 40–43.

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“The Lanham Act [15 U.S.C. §§ 1051 et seq.] provides national protection of

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trademarks in order to secure the owner of the mark the goodwill of his business and to

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protect the ability of consumers to distinguish among competing producers.” Park ‘N Fly,

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Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198 (1985). “Because of the intensely

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factual nature of trademark disputes, summary judgment is generally disfavored in the

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trademark arena.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir.

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2002); see also, e.g., Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt.,

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Inc., 618 F.3d 1025, 1029, 1031 (9th Cir. 2010); Rearden LLC v. Rearden Commerce,

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Inc., 683 F.3d 1190, 1202 (9th Cir. 2012).

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Proof of trademark infringement requires a showing that the defendant used a

The Clean Crawls Trade Name

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mark similar enough to “produce confusion in the minds of consumers about the origin of

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the goods or services in question.” KP Permanent Make-Up v. Lasting Impression I, Inc.,

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543 U.S. 111, 117 (2004)). “Likelihood of confusion is a factual determination,” and

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courts often find likelihood of confusion is best determined by the jury. Fortune

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Dynamic, 618 F.3d at 1031 (quoting Thane Int’l., Inc v. Trek Bicycle Corp., 305 F.3d

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894, 901 (9th Cir. 2002).

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Courts use the eight Sleekcraft factors to assess likelihood of consumer confusion

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among similar trademarks, assessing: “(1) the similarity of the marks; (2) the strength of

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the plaintiff’s mark; (3) the proximity or relatedness of the goods or services; (4) the

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defendant’s intent in selecting the mark; (5) evidence of actual confusion; (6) the

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marketing channels used; (7) the likelihood of expansion into other markets; and (8) the

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degree of care likely to be exercised by purchasers of the defendant’s product.” Fortune

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Dynamic, 618 F.3d at 1030–31 (citing AMF Inc. v. Sleekcraft Boats, 599 F.3d 341 (9th

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Cir. 1979)). “This eight-factor analysis is ‘pliant,’ illustrative rather than exhaustive, and

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best understood as simply providing helpful guideposts” for analysis. Fortune Dynamic,

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618 F.3d at 1030–31.

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CSCP seeks summary judgment on CCI’s trademark claim for the CLEAN

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CRAWLS trade name on the ground that CCI cannot establish a likelihood of confusion

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necessary to prove its claim of infringement. Dkt. 39 at 2. In the alternative, CSCP argues

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that CCI’s trademark for the CLEAN CRAWLS trade name is invalid because the name

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is generic, and thus ineligible for trademark protection. Id. CSCP further argues that the

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CLEAN CRAWLS mark is weak and dissimilar to CSCP’s mark, “mak[ing] consumer

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confusion highly unlikely.” Id. at 13. CCI argues that the marks are confusingly similar

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and that since its complaint was filed, CSCP “has been using the even more confusingly

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similar mark CRAWL PROS” so “the trademark infringement analysis must evaluate

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[CSCP]’s use of both marks,” CRAWL SPACE CLEANING PROS and CRAWL PROS.

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Dkt. 48 at 18. Because the analytical points in the strength of the mark factor also address

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whether the mark is eligible for protection at all, the Court considers that factor first.

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Strength of the mark. The strength of the protected mark, “is evaluated in terms

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of its conceptual strength and commercial strength.” GoTo.com, Inc. v. Walt Disney Co.,

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202 F.3d 1199, 1207 (9th Cir. 2000) (internal citation omitted). “From weakest to

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strongest, marks are categorized as generic, descriptive, suggestive, and arbitrary or

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fanciful.” GoTo.com, 202 F.3d at 1207 (citing Brookfield Commc’ns v. West Coast, 174

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F.3d 1036, 1058 (9th Cir. 1999)). “[T]he most distinctive marks—i.e., arbitrary and

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fanciful marks—receive the most trademark protection, whereas the least distinctive

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marks—i.e., generic marks—receive no trademark protection.” Pom Wonderful LLC v.

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Hubbard, 775 F.3d 1118, 1126 (9th Cir. 2014) (citing Entrepreneur Media, 279 F.3d at

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1141).

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CSCP argues that CCI’s mark is descriptive at best, Dkt. 39 at 14, and generic at

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worst. Id. at 17. CCI argues that it owns a federal registration for the word mark CLEAN

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CRAWLS 4 and four other registrations for those words “stylized or with a design

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element,” and therefore benefits from the presumption that the mark is protectable. Dkt.

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48 at 19 (citing 15 U.S.C. §§ 1057(b), 1115(a)). Generic terms refer to “the genus of

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which the particular product or service is a species” and “cannot become a trademark

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under any circumstances. Surgicenters of America, Inc. v. Medical Dental Surgeries, Co.,

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601 F.2d 1101, 1014 (9th Cir. 1979) (citing Abercrombie & Fitch Co. v. Hunting World,

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Inc., 537 F.2d 4, 9–11 (2nd Cir. 1976)). Descriptive marks “define qualities or

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characteristics of a product in a straightforward way,” Entrepreneur Media, 279 F.3d at

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1141–42, and may be valid trademarks only “by acquiring a secondary meaning, i.e.

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becoming ‘distinctive of the applicant’s goods,’” Surgicenters, 601 F.2d at 1014 (citing

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Abercrombie, 537 F.2d at 10). “[S]uggestive marks convey impressions of goods that

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require the consumer to ‘use imagination or any type of multistage reasoning to

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understand the mark’s significance.’” Pom Wonderful, 775 F.3d at 1126 (quoting

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CCI registered its trademark for the word mark on March 27, 2018. Dkt. 57-1 at 57.

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Entrepreneur Media, 279 F.3d at 1141–42). Additionally, a mark consisting of two or

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more components, or ‘composite mark’ “may become a distinguishing mark even though

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its components individually cannot.” California Cooler, Inc. v. Loretto Winery Ltd., 774

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F.2d 1451, 1455 (9th Cir. 1985); see also W.W.W. Pharm Co. v. Gillette Co., 808

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F. Supp. 1013, 1022 (S.D.N.Y. 1992) (“Although ‘sport’ and ‘stick’ are both generic or

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descriptive terms when viewed individually, the composite term SPORTSTICK is

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stronger than the sum of these two components.”), aff’d 984 F.2d 567 (2nd Cir. 1993).

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“Under the anti-dissection rule, the validity and distinctiveness of a composite trademark

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is determined by viewing the trademark as a whole, as it appears in the marketplace.”

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Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1392 (9th Cir. 1993).
The Court finds there is at least a question of material fact as to whether the mark

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CLEAN CRAWLS is suggestive, and thus eligible for registration as a trademark. See

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Pom Wonderful, 775 F.3d at 1126. “Two tests are commonly used to measure the

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strength of a mark, the ‘imagination test,’ and the ‘need test.’” Rodeo Collection, Ltd. v.

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West Seventh, 812 F.2d 1215, 1218 (9th Cir. 1987) overruled on other grounds, Perfect

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10 v. Google, Inc., 653 F.3d 976 (9th Cir. 2011). The imagination test distinguishes

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between suggestive and descriptive marks, asking whether a consumer “must use

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imagination or any type of multistage reasoning to understand the mark’s significance.”

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Entrepreneur Media, 279 F.3d at 1142 (citing Kendall-Jackson Winery, Ltd. v. E. & J.

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Gallo Winery, 150 F.3d 1042, 1048 n.8 (9th Cir. 1998)). This test evaluates the mark in

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the context of the goods or services at issue; for example, “the mark BRILLIANT may be

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‘descriptive’ on diamonds, ‘suggestive’ on furniture polish, and ‘arbitrary’ on canned

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applesauce.” Rodeo Collection, 812 F.2d at 1218 (citing 1 J.T. McCarthy, Trademarks

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and Unfair Competition, § 11:20 at 489 (2nd ed. 1984)). The needs test “asks whether

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‘the suggestion made by the mark is so remote and subtle that it is really not likely to be

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needed by competitive sellers to describe their goods.” Fortune Dynamic, 618 F.3d at

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1033–34 (quoting Zobmondo Entertainment, LLC v. Falls Media, LLC, 602 F.3d 1108,

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1116 (9th Cir. 2010)). “The two tests are related, because ‘[t]he more imagination that is

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required to associate a mark with a product [or service,] the less likely the words used

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will be needed by competitors to describe their products [or services].’” Rodeo

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Collection, 812 F.2d at 1215 (quoting Union Carbide Corp. v. Every-Ready Inc., 531

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F.2d 366, 279 (7th Cir. 1976), cert. denied, 429 U.S. 830 (1976)).
Arguing that the mark is generic, CSCP provides the definition of ‘clean’ and the

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definition of ‘crawl space,’ and provides examples of the usage of the term ‘crawl space’

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in news stories. Dkt. 39 at 18. However, consideration of the words only as separate

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entities violates the anti-dissection rule. Official Airline Guides, 6 F.3d at 1392. While the

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term ‘crawl space’ may well be widely understood by the public, and ‘crawl space

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cleaning’ could arguably be “identified with all such goods or services, regardless of their

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suppliers,” making it “generic and so not a valid mark,” Surgicenters, 601 F.2d at 1016

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(citing King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577, 579 (2nd Cir.

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1963), the Court finds that a reasonable juror could conclude some element of

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imagination is needed to understand the CLEAN CRAWLS mark, Entrepreneur Media,

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279 F.3d at 1141–42.

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“While not determinative, dictionary definitions are relevant and often persuasive

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in determining how a term is understood by the consuming public . . .” Fortune Dynamic,

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618 F.3d at 1033 (quoting Surgicenters, 601 F.2d at 1015 n.11). Webster’s contains seven

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definitions of ‘crawl’ as a verb, two definitions of ‘crawl’ as a transitive verb, and four

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definitions of ‘crawl’ as a noun, none of which mention anything about or refer to the

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separate entry for a ‘crawl space,’ the “space about two feet high provided in a building

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in order to enable workmen to gain access to plumbing, wiring, and other equipment.”

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Webster’s Third New International Dictionary Unabridged at 531 (2002). These

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definitions suggest that ‘crawl’ may not be understood to describe a space in a home

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without the modifier ‘space.’ See Surgicenters, 601 F.2d at 1018–19. CSCP argues that

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consumers “would require no more imagination to know CCI’s service offerings than

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[they] would if CCI’s mark was CLEAN HOUSES for housecleaning services.” Dkt. 60

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at 6. However, the Court reasons that the level of imagination may be greater: CLEAN

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CRAWLS is more analogous to a hypothetical mark ‘CLEAN HOT,’ which requires

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some element of imagination to understand a reference to a hot tub cleaning service. See

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Entrepreneur Media, 279 F.3d at 1142. Just as “[a] person would not be likely to picture

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a shopping center upon first hearing the name ‘Rodeo Collection,’” the Court finds at

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least a question of material fact exists whether a person would picture a cleaning service

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for a particular space in a home upon first hearing the name CLEAN CRAWLS. See

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Rodeo Collection, 812 F.2d at 1215.

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Regarding competitor needs, CSCP argues that if CCI was allowed to sue for

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infringement on CLEAN CRAWLS, CSCP as a competitor “could not describe [its]

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goods as what they are.” Dkt. 39 at 18 (quoting Filipino Yellow Pages, Inc. v. Asian

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Journal Publications, Inc., 198 F.3d 1143, 1151 (9th Cir. 1999)). CSCP argues that it

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would be “precluded from indicating that it offers any type of cleaning service, or that it

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provides services in the spaces in the home typically called a crawl space or an attic.”

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Dkt. 39 at 18. The Court finds this argument unpersuasive. CCI does not claim protection

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for the term ‘crawl space.’ CSCP does not explain how the word ‘attic’ would be

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implicated. Further, the certificate of registration for the word mark CLEAN CRAWLS

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specifically states “No claim is made to the exclusive right to use the following apart

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from the mark as shown: ‘CLEAN’ AS TO INT. CLASSES 37 AND 40.” Dkt. 57-1 at

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57. 5 Finally, CCI provides examples of four other companies providing crawl space

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cleaning services which “are able to advertise their services in a manner far less

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confusing than [CSCP].” Dkt. 48 at 24 (citing Dkt. 57, Declaration of David A. Lowe at

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2–3 (“‘Oasis Attic and Crawls’, https://www.oasiscrawls.com/, ‘A Better Crawl, Inc.’,

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https://www.crawlspacespcecialist.com/, ‘Rainy Day Basement Systems’,

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https://www.rainydaybasementsystems.com/, ‘Atticare’, https://atticareusa.com/”)).

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Finding that a questions of material fact exists as to whether the mark is

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suggestive, the Court turns next to commercial strength, the second half of the analysis

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for the strength of the mark. GoTo.com, 202 F.3d at 1207.

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Courts assess a mark’s commercial strength by considering its actual marketplace
recognition, and, on one hand, may consider evidence of substantial advertising

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Int. Class 37 is the trademark class including “cleaning of attics and crawl spaces” and
Int. Class 40 is the trademark class for air deodorizing. Id.

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expenditures, substantial sales, and widely distributed advertising campaigns “sufficient

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to make the relative commercial strength of the . . . mark a question for the jury.” Fortune

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Dynamic, 618 F.3d at 1034 (citing Brookfield, 174 F.3d at 1058). On the other hand, the

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Ninth Circuit has “rejected the contention that extensive advertising automatically

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transforms a suggestive mark into a strong one.” Nutri/System, Inc. v. Con-Stan

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Industries, Inc. 809 F.2d 601, 605 (9th Cir. 1987) (citing Sleekcraft, 599 F.2d at 350).

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CCI asserts that “[s]ince 2010 alone” it has “invested more than $4.5 million in

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advertising its services under its brands, and generated more than $90 million revenues

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[sic],” and argues that multiple business awards and favorable customer reviews show

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strong brand recognition. Dkt. 48 at 21 (citing Henrichsen Decl. at 6–7; Gjerness Decl. at

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4–5). While the Court disagrees that business awards and favorable customer reviews

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necessarily demonstrate brand recognition, CCI’s officer declarations do support its

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claims of substantial advertising and sales. A potentially suggestive mark in combination

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with substantial sales using the mark make this factor weigh in favor of CCI.

15

Similarity of protected mark and allegedly infringing mark. Courts in the

16

Ninth Circuit assess similarity of the protected mark and the allegedly infringing mark by

17

considering (1) similarity of appearance, sound, and meaning; (2) marks in their entirety

18

and as they appear in the marketplace; and (3) weighing similarities more heavily than

19

differences. Pom Wonderful, 775, F.3d at 1127–28; GoTo.com, 202 F.3d at 1206.

20

CSCP frames the analysis as between CLEAN CRAWLS and CRAWL SPACE

21

CLEANING PROS. Dkt. 39 at 15–16. CCI argues that “in light of [CSCP’s] heavy

22

reliance on the dominant CRAWL and PROS portions of the longer versions of its mark”

ORDER - 15

1

and increasing use of the shortened trade name CRAWL PROS, a reasonable factfinder

2

should consider the shorter version of the mark as well. Dkt. 48 at 25. Herron declares

3

that CSCP does business as CRAWL PROS, so the Court will evaluate both versions.

4

Herron Decl. at 1. Visually, CSCP describes its mark as CRAWL SPACE CLEANING

5

PROS, which “consistently includes the house and leaf design feature, and uses a green

6

and orange color scheme,” and describes CCI’s mark as CLEAN CRAWLS, with “[t]he

7

word ‘CLEAN’ stacked on top of the word ‘CRAWL,’ with the ‘splat’ image to the left

8

of the literal elements” in blue, grey, and white, arguing that consumers see “very

9

different marketplace representations of these two marks.” Dkt. 39 at 16. CCI argues that

10

visual similarity exists “in light of [CSCP’s] heavy reliance on the dominant CRAWL

11

and PROS portions of the longer versions of its mark” and that additional visual

12

similarity exists when CSCP refers to itself as CRAWL PROS. Dkt. 48 at 18, 25. To the

13

ear, CCI argues that CRAWL PROS and CLEAN CRAWLS sound alike because “both

14

use CRAWL and both have two syllables.” Dkt. 48 at 25. CCI further argues that

15

CRAWL SPACE CLEANING PROS sounds like CLEAN CRAWLS because both use

16

the word CLEAN and the word CRAWL. Dkt. 48 at 25. CCI contends that the

17

importance of word-of-mouth reviews in the context of home services increases the

18

importance of auditory similarity in this case. Dkt. 48 at 25 (citing Pintrest, Inc. v.

19

Pintrips, Inc., 140 F. Supp. 3d 997, 1013 (N.D. Cal. 2015) (“Sound is also important

20

because reputation is often conveyed word-of-mouth.”). Cognitively, CSCP argues that

21

CLEAN CRAWLS and CRAWL SPACE CLEANING PROS refer to different concepts,

22

a clean space, in contrast with the people who do the cleaning, and are thus cognitively

ORDER - 16

1

dissimilar. Dkt. 39 at 15. CCI counters that a reasonable juror “could conclude that both

2

sets of marks call to mind the result of cleaning up a crawl space.” Dkt. 48 at 25.

3

While the Court sees little visual similarity between the marks particularly when

4

incorporating the logos and colors, a reasonable juror could find likely auditory similarity

5

given the repetition of words with similar meaning beginning with a hard ‘c’ sound,

6

particularly in a word-of-mouth context where a trade name may not be perfectly

7

articulated. Thus, putting more emphasis on similarities, Pom Wonderful, 775 F.3d at

8

1127–28, this factor also weighs in favor of CCI.

9

Relatedness of goods or services. “Related goods are more likely than non-

10

related goods to confuse the public as to the producer of the goods. A diminished

11

standard of similarity is therefore applied when comparing the marks of closely related

12

goods.” Official Airline Guides, 6. F.3d at 1392. CSCP and CCI do not dispute that they

13

provide related services. Dkt. 39 at 2; Dkt. 48 at 24. Therefore, this factor also makes

14

public confusion more likely.

15

Defendant’s intent. While plaintiffs are not obligated to prove wrongful intent to

16

support a finding of trademark infringement, “when the evidence does show or require

17

the inference that another’s name was adopted deliberately with a view to obtain some

18

advantage from the good will, good name, and good trade which another has built up,

19

then the inference of the likelihood of confusion is readily drawn.” Fleischmann

20

Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 157–58 (9th Cir. 1963). CCI argues

21

that the past relationship of the parties, and CSCP’s “blatant copying of [CCI’s] forms

22

and [CSCP’s] efforts to poach [CCI’s] employees” supports an inference that CSCP

ORDER - 17

1

intentionally copied CCI’s mark with intent to confuse consumers. Dkt. 48 at 27. These

2

facts could support a reasonable juror inference of intent, in contrast to a fact pattern

3

where the two businesses were not known to each other prior to discovery of alleged

4

infringement, but could equally support nothing more than an inference that CSCP sought

5

a name that would help customers identify it.

6

Evidence of actual confusion. “Evidence of actual confusion is strong evidence

7

of likelihood of confusion.” Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625,

8

633 (9th Cir. 2005). Because actual confusion is difficult to prove, “[t]he failure to prove

9

instances of actual confusion is not dispositive against a trademark plaintiff.” Brookfield,

10

174 F.3d at 1050. In Americana Trading, Inc. v. Russ Berrie & Co., 966 F.2d 1284, 1289

11

(9th Cir. 1992), the Circuit found testimony by a company’s owner about confusion

12

among retailers and a single letter from a misdirected customer “sufficient evidence of

13

actual confusion which, if believed by the trier of fact, would aid [the plaintiff’s]

14

infringement claim.” In responses to CCI interrogatories, CSCP provided eight specific

15

instances of customer confusion, including six conversations where the customers had

16

had more than cursory interaction, such as an estimate or actual work done, with CCI,

17

and had mistakenly contacted CSCP to follow up. Dkt. 57-1 at 22–23. 6 These instances

18

appear to be strong evidence of exactly the kind of consumer difficulty in

19
20
21
22

6

CSCP’s only evidentiary objection to this question in its interrogatory response was
overbreadth. The Court finds nothing to suggest that these records of customer conversations
would not be admissible as business records. Fed. R. Evid. 803(6).

ORDER - 18

1

“distinguish[ing] among competing producers” that trademark laws seek to address. Park

2

‘N Fly, 469 U.S. at 198.

3

Marketing channels. “Convergent marketing channels increase the likelihood of

4

confusion.” Nutri/System, 809 F.2d at 606. The available record supports an inference

5

that the companies market similar services to homeowners in Western Washington using

6

conventional advertising methods, and so use convergent marketing channels.

7

Expansion into competing markets. “The likelihood of expansion in product

8

lines factor is relatively unimportant when two companies already compete to a

9

significant extent.” Brookfield, 174 F.3d at 1060 (citing Official Airline Guides, 6 F.3d at

10

1394). Here, the parties already compete and have not suggested that expansion into new

11

service lines is at issue.

12

Degree of care. Courts note that consumers exercise less care with inexpensive

13

products, making confusion more likely, Brookfield, 174 F.3d at 1060, and greater care

14

when purchasing expensive goods making confusion less likely, Pom Wonderful, 775

15

F.3d at 1127. CCI argues that customers seeking crawl space cleaning “need help—often

16

emergency in nature—to address pest, flooding, or other undesirable problems,” and that

17

its products are priced affordably, Dkt. 48 at 26–27, implying that consumers may

18

exercise a lower degree of care when selecting a crawl space cleaning service. CCI also

19

argues that CSCP may be improperly benefiting from ‘initial interest confusion,’ where

20

an infringing competitor benefits from the mark’s goodwill when confused customers

21

survey its offerings, which is actionable as trademark infringement. Dkt. 48 at 27 (citing

22

Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1025 (9th

ORDER - 19

1

Cir. 2004). The Court finds this framing plausible and supported by the instances of

2

customer confusion. See Dkt. 57-1 at 22–23.

3

The Sleekcraft test “is a fluid one and the plaintiff need not satisfy every factor,

4

provided that strong showings are made with respect to some of them.” Surfvivor, 406

5

F.3d at 632 (citing Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127,

6

1129 (9th Cir. 1998)). Finding a strong showing for actual consumer confusion and

7

neutral or positive showings supporting confusion for the other factors, the Court denies

8

summary judgment for CSCP on CCI’s claims relating to the CLEAN CRAWLS trade

9

name.

10

2.

11

CSCP seeks summary judgment on CCI’s trademark claims regarding Slogan One

The Slogans

12

on the grounds of priority in usage. CSCP seeks summary judgment on claims regarding

13

Slogan Two on the ground that Slogan Two is confusingly similar to Slogan One,

14

therefore infringing CSCP’s rights in Slogan One established by priority in usage. Dkt.

15

39 at 12.

16

“[L]ike with trademarks, common law rights are acquired in a service mark by

17

adopting and using the mark in connection with the services rendered.” Chance v. Pac-

18

Tel Teletrac Inc., 242 F.3d 1151, 1156 (9th Cir. 2001) (citing Hanover Star Milling Co. v.

19

Metcalf, 240 U.S. 403 (1916)). “To acquire ownership of a trademark, it is not enough to

20

have invented the mark first or even to have registered it first; the party claiming

21

ownership must have been the first to actually use the mark in the sale of goods or

22

services.” Brookfield, 174 F.3d at 1047 (quoting Sengoku Works Ltd v. RMC Int’l, Ltd.,

ORDER - 20

1

96 F.3d 1217, 1219 (9th Cir. 1996)). “The first to use a mark is deemed the ‘senior’ user

2

and has the right to enjoin ‘junior’ users from using confusingly similar marks in the

3

same industry and market or within the senior user’s natural zone of expansion.”

4

Brookfield, 174 F.3d at 1047. Congress amended the Lanham Act in 1988, changing the

5

statutory definition of use in commerce from a standard where “the extent of actual use of

6

the mark was irrelevant so long as it amounted to more than a mere sham attempt to

7

conform with statutory requirements” to now require “a greater degree of activity,”

8

Chance, 242 F.3d at 1157 (citing 2 J.T. McCarthy, McCarthy on Trademarks and Unfair

9

Competition, § 16:8 (4th ed. 1997)). The Trademark Trial and Appeal Board of the

10

USPTO interpreted the new language to mean that the party claiming ownership of the

11

mark must show “commercial use of the type common to the particular industry in

12

question.” Id. (citing Paramount Pictures Corp. v. White, 31 U.S.P.Q.2d 1768, 1774

13

(TTAB 1994)).

14

“For both goods and services, the ‘use in commerce’ requirement includes (1) an

15

element of actual use, and (2) an element of display.” Chance, 242 F.3d at 1159. The

16

statutory definition for services requires “the bona fide use of a mark in the ordinary

17

course of trade, and not made merely to reserve a right in a mark” and defines use in

18

commerce for services “when [a mark] is used or displayed in the sale or advertising of

19

services and the services are rendered in commerce.” 15 U.S.C. § 1127 (2012). The Ninth

20

Circuit directs district courts to weigh the following six factors in evaluating the totality

21

of the circumstances to determine use in commerce:

22

ORDER - 21

1

5

the genuineness and commercial character of the activity, the determination
of whether the mark was sufficiently public to identify or distinguish the
marked service in an appropriate segment of the public mind as those of the
holder of the mark, the scope of the non-sales activity relative to what
would be a commercially reasonable attempt to market the service, the
degree of ongoing activity of the holder to conduct the business using the
mark, the amount of business transacted, and other similar factors which
might distinguish whether a service has actually been “rendered in
commerce.”

6

Chance, 242 F.3d at 1159. A non-sales activity “still must be sufficiently public in nature

7

to identify or distinguish the goods or services in an appropriate segment of the public

8

mind as belonging to the owner.” Rearden, 683 F3d at 1206. In applying the test, the

9

court in Chance determined that, although the record supported an inference that the

2
3
4

10

plaintiff’s use was not a sham, the plaintiff presented no evidence of bona fide sales, and

11

the defendant had been using the mark continuously in advertising and marketing prior to

12

the plaintiff’s use, establishing priority. 242 F.3d at 1159–60. While CSCP argues CCI’s

13

evidence “at most, again demonstrate mere prepatory intent to use the phrase in

14

conjunction with CCI’s services,” Dkt. 39 at 21 n.1 (citing Brookfield, 174 F.3d at 1052),

15

here, CCI’s actual sales and offerings of the service are clear from the record, but the

16

question is whether CCI provides sufficient evidence from which a reasonable juror could

17

conclude CCI actually used the mark prior to 2013.

18

The parties agree that priority of use is the disputed issue here. See Dkt. 39 at 19;

19

Dkt. 48 at 28. CSCP claims use of Slogan One starting in June 2013. Dkt. 39 at 21. CCI’s

20

application for registration for Slogan One with the USPTO claims first use and first use

21

in commerce in 2001. Dkt. 57-1 at 51. CCI argues “[t]here is no question as to long-time

22

ORDER - 22

1

Internet usage of [Slogan One] (and its complementary slogan [Slogan Two] since long

2

prior to [CSCP’s] adoption of the conflicting mark.” Dkt. 48 at 29.

3

CSCP argues that CCI has “failed to provide any documentary evidence” to

4

support its claim that has used Slogan One throughout the Pacific Northwest since 1993,

5

Dkt. 39 at 21 (citing Dkt. 1, ⁋ 16), and argues that because CCI’s declarations explain

6

“much of the use of the marks to its customers base [sic] was verbal, corroborating

7

evidence from customers as to this auditory input is essential to CCI’s claims,” Dkt. 60 at

8

10. CSCP provides documentation of its use of Slogan One in an advertising graphic, a

9

banner ad, on company cars, business cards, and on magnets, with order dates indicating

10

use between 2013 and 2014, Herron Decl. at 9–25, as well as documentation of additional

11

use on advertising materials, company items, and a registered domain name between

12

2014 and 2017, id. at 26–41.

13

CCI argues that a court could conclude it has proved priority based on the

14

testimony of one witness, and corroboration of that witness’s testimony is considered

15

helpful but not required. Dkt. 48 at 28 (citing Nettie Rosenstein, Inc. v. Princess Pat, Ltd.,

16

220 F.2d 444, 446–47 (C.C.P.A. 1955); Crystal Entm’t & Filmworks, Inc. v. Jurado, 643

17

F.3d 1313, 1322 (11th Cir. 2011)). In Crystal Entertainment, the Eleventh Circuit

18

explained that “[o]ral testimony, even of a single witness, if ‘sufficiently probative,’ may

19

suffice to prove priority, but such testimony ‘should not be characterized by

20

contradictions, inconsistencies, and indefiniteness’; instead, it ‘should carry with it

21

convictions of its accuracy and applicability.” 643 F.3d at 1322 (quoting B.R. Baker Co.

22

v. Lebow Bros., 32 C.C.P.A. 1206 (1945)). CCI argues that the declarations of “long-time

ORDER - 23

1

company ownership, employees and third parties” are sufficient to establish the use of

2

both Slogan One and Slogan Two well prior to 2013. Dkt. 48 at 29. Also quoting Crystal

3

Entertainment, 643 F.3d at 1322, and B.R. Baker, 32 C.C.P.A. 1206, CSCP counters that

4

testimony of witnesses or a single witness not accompanied by corroborating evidence

5

“should be closely scrutinized.” Dkt. 60 at 8. CSCP points out that despite Henrichsen’s

6

claim that CCI has used the slogans in “various written forms” since 2001, CCI was only

7

able to provide two undated pieces of written evidence. Dkt. 60 at 9 (citing Henrichsen

8

Decl at 49).

9

CCI provides printouts from its website showing its use of Slogan One and Slogan

10

Two, including a photo of Slogan Two on a company truck. Dkt. 49-1 at 55–57, 68.

11

Henrichsen’s accompanying declaration explains that CCI has “maintained a website at

12

[www.cleancrawls.com] consistently for most of the company’s existence, including

13

prior to 2013.” Henrichsen Decl. at 7. Notably, neither Henrichsen’s declaration nor the

14

printouts themselves establish when either slogan appeared on the website, or when

15

Slogan Two appeared on the truck.

16

CCI provides five declarations from its officers and employees attesting to the

17

history of CCI’s use of the slogans in commerce. Henrichsen declares that he “first

18

started using the slogans and similar variations with customers throughout the Pacific

19

Northwest” in 1993, and transferred the rights to CCI in 2001. Henrichsen Decl. at 2. He

20

further declares that CCI has “consistently trained our employees to use” the family of

21

marks including CLEAN CRAWLS and Slogans One and Two “when interacting with

22

the public and our customers,” and that “I have personally used or observed the family of

ORDER - 24

1

marks used with the public to indicate the source of [CCI] services literally thousands of

2

times prior to 2013.” Id. Finally, he declares that “[w]hile use of the marks has taken

3

various written forms over the years, including business cards, brochures, flyers,

4

advertisements and the Internet, the vast majority of our advertising and customer

5

association comes verbally from our sales teams and work crews” who use the family of

6

marks “and similar slogan variations with customers on a daily basis.” Id. at 2–3.

7

Gjerness declares that he has “personally observed the family of marks used by others at

8

[CCI] since at least as early as 2009” and has “personally used or observed the family of

9

marks used with the public to indicate the source of [CCI] services literally thousands of

10

times prior to 2013.” Gjerness Decl. at 2. Patrick J. Smith, an estimator at CCI since

11

2008, declares that “[t]hroughout my time with [CCI], I personally used and observed

12

from others at the company using the following family of trademarks” which includes the

13

Slogans. Smith Decl. at 1. Robin Compton and Tammy Wilen, CCI employees since

14

2009, make the same declaration. Dkt. 53, Declaration of Robin Compton, at 1; Dkt. 54,

15

Declaration of Tammy Wilen, at 1.

16

CSCP argues that CCI offers two declarations “from witnesses who have not been

17

previously disclosed” and so may not be considered per Fed. R. Civ. P. 37(c)(1). Dkt. 60

18

at 12. CSCP separately refers to the declarations of CCI’s officers and employees and to

19

the challenged witnesses, leading the Court to infer that CSCP believes Steve Bodine and

20

Ken Harris of Bodine Construction are the undisclosed witnesses. See Dkt. 60 at 11–12;

21

Dkt. 55, Declaration of Steve Bodine; Dkt. 56, Declaration of Ken Harris.

22

ORDER - 25

1

Even if the Court disregards these last two declarations, upon consideration of the

2

remainder of the record presented, the Court concludes that there is sufficient evidence

3

from which a reasonable juror could conclude CCI has priority of use in Slogan One.

4

CSCP does not argue that verbal use of a slogan with customers in home cleaning

5

services can never be “commercial use of the type common to the particular industry in

6

question,” Chance, 242 F.3d at 1157 (citing Paramount Pictures, 31 U.S.P.Q.2d at 1774),

7

only that testimony verifying that use is self-serving and has little probative value as to

8

the understanding of the consuming public. Dkt. 60 at 10, 10 n.47 (citing Self-Realization

9

Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 910 (9th Cir.

10

1995)). Though the declarations are not particularly detailed and contain similar or

11

identical language, CCI presents five employees with a history of employment starting at

12

least three years before 2013, who could potentially testify as to CCI’s regular use of the

13

Slogans with customers so as to “identify [the] . . . services in an appropriate segment of

14

the public mind as belonging to the owner.” Rearden, 683 F3d at 1206. Henrichsen

15

declares that CCI has made 40,000 sales between 2010 and present, based on an average

16

of more than 8,000 leads per year. Henrichsen Decl. at 6–7. CSCP does not contest this

17

sales data. Combining substantial sales with declarations attesting to regular use of the

18

Slogans in the context of those sales and construing all evidence in favor of CCI, the

19

Court finds CCI has met its burden to raise a question of material fact as to priority of

20

use.

21
22

Regarding Slogan Two, CSCP argues that CCI “cannot establish that [CSCP] has
made commercial use of [Slogan Two] because it hasn’t.” Dkt. 39 at 22. In the

ORDER - 26

1

alternative, CSCP argues that if CCI believes Slogan Two is confusingly similar to

2

Slogan One, then Slogan Two would be unprotectable based on CSCP’s priority of use in

3

Slogan One. Dkt. 39 at 22. The Court finds a dispute of material fact exists as to

4

ownership of Slogan One, and the resolution of ownership of Slogan One may drive the

5

resolution of ownership of Slogan Two. CSCP is correct that if it won at trial on its claim

6

of priority for Slogan One, it is possible that the jury could also conclude CCI’s claims

7

regarding Slogan Two are invalid because it is confusingly similar to Slogan One.

8

Conversely, if CCI won at trial on its claim of priority for Slogan One, a jury could

9

conclude that CSCP’s use of Slogan One infringes CCI’s rights in both Slogan One and

10

Slogan Two, without CCI’s having to prove CSCP used Slogan Two, due to confusing

11

similarity.

12

Finally, CSCP argues that all of CCI’s trademark claims are barred by laches,

13

reading the Henrichsen and Gjerness declarations to “state that they have known of

14

[CSCP’s] alleged trademark infringement since 2012.” Dkt. 60 at 10–11 (citing

15

Henrichsen Decl. at 4; Gjerness Decl. at 3). The Court agrees with CCI that CSCP’s

16

argument “is based on a misreading of the declarations submitted.” See Dkt. 61 at 2. Both

17

declarations state that Herron and Pullen were exposed to CCI’s trademarks starting in

18

2012, not that CCI was aware of use by CSCP of the trademarks at that time. Henrichsen

19

Decl. at 4; Gjerness Decl. at 3. On this issue, there is also a dispute of a material fact.

20
21

Therefore, the Court denies summary judgment for CSCP on CCI’s claims of
trademark infringement for both Slogan One and Slogan Two.

22

ORDER - 27

1
2

C.

Copyright claims
CCI alleges that CSCP has deliberately copied and used five of CCI’s works of

3

authorship named in pending federal copyright applications. Dkt. 1, ⁋⁋ 12, 23. The works

4

are (1) CCI’s Project Graph, (2) CCI’s Project Bid Sheet, (3) CCI’s Project Worksheet,

5

(4) Clean Crawls Standards, and (5) CCI’s Venting Calculator. Id. Plaintiffs alleging

6

copyright infringement must demonstrate: “(1) ownership of a valid copyright and (2)

7

copying of constituent elements of the work that are original.” Feist Publications, Inc. v.

8

Rural Telephone Service Co., 499 U.S. 340, 361 (1991) (“Feist”).

9

If the first prong, ownership, is in question, there are five additional elements to

10

consider: “(1) originality in the author; (2) copyrightability of the subject matter; (3)

11

citizenship status of the author, such as to permit a claim of copyright; (4) compliance

12

with applicable statutory formalities; and (4) (if the plaintiff is not the author) a transfer

13

of rights or other relationship between the author and the plaintiff so as to constitute the

14

plaintiff the valid copyright claimant.” Advanz Behavioral Mgmt. Res., Inc. v. Miraflor,

15

21 F.Supp.2d 1179, 1183 (C.D. Cal. 1998) (“Advanz”) (citing 4 Nimmer on Copyright §

16

13.01(A) (1997)). If the second prong, copying, is at issue but the plaintiff does not have

17

evidence of direct copying, they can show “the defendant had ‘access’ to the plaintiff’s

18

work and that the two works are ‘substantially similar.’” Funky Films, Inc. v. Time

19

Warner Entm’t Co., L.P., 462 F.3d 1072, 1076 (9th Cir. 1990).

20

Here, CSCP challenges a sub-element of ownership, copyrightability of the subject

21

matter, for the Project Graph, Project Bid Sheet, and Project Worksheet. CSCP argues

22

these works are blank forms not permitted copyright protection under 27 C.F.R. §

ORDER - 28

1

202.1(c). Dkt. 39 at 9. CSCP concedes that “the existence of CCI’s certificates of

2

registration for [the works] create[s] a rebuttable presumption that the works at issue

3

contain copyrightable subject matter” and CSCP “has the burden of persuasion” to rebut

4

the presumption. Dkt. 39 at 8 (citing Bibbero Sys., Inc. v. Colwell Sys., Inc, 893 F.2d

5

1104, 1106 (9th Cir. 1990) (“Bibbero”)). 7

6

CCI quotes Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 913 (9th Cir. 2010),

7

for the proposition that the Court should first analyze the “extrinsic/intrinsic” distinction

8

between “permissible lifting of ideas and impermissible copying of expression” to

9

evaluate which shared elements of the works are protectable, and how broad the

10

protection should be for an infringed work. Dkt. 48 at 10. However, this analysis assumes

11

protectable content exists. The court in Mattel proceeded on an assumption that Mattel

12

owned the preliminary drawings and doll sculpture at issue, and moved immediately to

13

consider how far the copyright of the doll idea’s “particular expression” would extend.

14

Mattel, 616 F.3d at 913. CSCP is correct that courts end their inquiry once they have

15

determined an allegedly infringed work is a blank form, not copyrightable, and not

16

available as a the basis of a copyright infringement claim. See Dkt. 60 at 2 & n.2 (citing

17
18
19
20
21
22

7

CSCP does not address 47 U.S.C.A. § 410(c), which provides “[i]n any judicial
proceedings the certificate of a registration made before or within five years after first
publication of the work shall constitute prima facie evidence of the validity of the copyright and
of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a
registration made thereafter shall be within the discretion of the court,” even though Henrichsen
declares that the documents were substantially completed in the form registered in 2008–09,
Henrichsen Decl. at 5, but copyright registration did not take place until 2017, see Henrichsen
Decl. Exs. A–E. Construing all facts in favor of the non-moving party, the Court will follow
CSCP’s acceptance of the burden to rebut the presumption that the works contain copyrightable
subject matter.

ORDER - 29

1

Advanz, 21 F.Supp.2d at 1182; Moore v. Kroger Co., No. C–13–04171 DMR, 2014 WL

2

825428, at *5 (N.D. Cal. Feb. 28, 2014)). Therefore, the Court will first analyze CSCP’s

3

claims that the first three works are unprotectable under the blank forms rule, then

4

analyze CSCP’s claims about the other two works.

5

1.

6

“Blank forms, such as time cards, graph paper, account books, diaries, bank

Blank Forms

7

checks, scorecards, address books, report forms, order forms, and the like, which are

8

designed for recording information and do not in themselves convey information” are

9

material not subject to copyright under 37 C.F.R. § 202.1(c). “A blank form that merely

10

contains words, short phrases, or a de minimis amount of text does not satisfy [the

11

requirement for authorship] because it does not qualify as a literary work, a pictorial

12

work, a graphic work, or any of the other categories of works listed in

13

[17 U.S.C. §] 102(a).” 11 Nimmer on Copyright 313 (2018) (citing Registration of

14

Claims to Copyright, 77 Fed. Reg. 37,605, 37,607 (June 22, 2012)). In the Ninth Circuit’s

15

interpretation of the rule, a blank form’s inclusion of some categories of information and

16

not others does not make it copyrightable, nor does the fact that “considerable effort and

17

creativity went into designing it” necessarily make it copyrightable. Bibbero, 893 F.2d at

18

1107, 1108 n.1. Though the rule has been criticized, the Circuit noted that the Copyright

19

Office considered many comments arguing for the creativity and effort of blank form

20

design in 1980 when it considered abolishing the rule, and “nevertheless chose to

21

reaffirm the validity of the rule.” Bibbero, 893 F.2d at 1108 n.1 (citing Noting of

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ORDER - 30

1

Termination of Inquiry Regarding Blank Forms, 45 Fed. Reg. 63,297, 63,299 (September

2

24, 1980)).

3

Project Graph. CCI’s Certificate of Registration with the U.S. Copyright Office

4

for the “Project Graph” identifies a “compilation of text and illustrations.” Dkt. 49-1 at 2.

5

The Project Graph document consists of a sheet of graph paper with the “Project Graph”

6

heading, labeled spaces at the top for “Customer Name,” “Customer Service Rep.” and

7

“North Heading,” and at the bottom, a series of boxes to identify features of the house,

8

images of different rodents, and a list of tasks which a CCI employee may need to

9

complete in the home, from A, Re-Screen Vent (Crawlspace) through O, Roof Ridge

10

Line/Roof Cap. Id. The CCI and CSCP documents are virtually identical except for a

11

portion of the bottom section identifying features of the house, which has slightly

12

different language, symbols, and categories. Compare Dkt. 49-1 at 2, with Dkt. 57-1 at

13

29–30.

14

In Bibbero, the panel considered ‘superbills,’ medical insurance claim forms with

15

“lengthy checklists” of diagnoses, services performed, and fees which came pre-filled

16

with diagnoses and services common to different specialties, or could be customized by

17

the medical provider. 893 F.2d at 1105–06. Though the forms contained “simple clauses

18

assigning insurance benefits to the doctor and authorizing release of patient information”

19

as well as instructions for completion, the panel held that the superbills were

20

uncopyrightable blank forms which did not convey information prior to their completion

21

by the medical provider. Id. at 1105, 1107–08. The panel found the superbills ineligible

22

for the ‘text with forms’ exception to the blank forms rule, in contrast to Edwin K.

ORDER - 31

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Williams & Co., Inc., v. Edwin K. Williams & Co., East, 542 F.2d 1053, 1060–61 (9th

2

Cir. 1976) (“Williams”), where the account books contained “several pages of

3

instructions on the use of the forms and advice on the successful management of a service

4

station” and Continental Casualty Co. v. Beardsley, 253 F.2d 702, 704 (2nd Cir. 1958)),

5

which addressed forms containing inseparable instructions. Id. at 1107, 1108. CCI cites

6

Williams and Continental Casualty in arguing the Project Graph should be eligible for the

7

‘text with forms’ exception, as well as Eng’g Dynamics, Inc. v. Structural Software, Inc.,

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26 F.3d 1335, 1347 (5th Cir. 1994) (user interface coveys information to user), and

9

Pallen Martial Arts, LLC v. Shir Martial Arts, LLC, 2014 U.S. Dist. LEXIS 71574 (N.D.

10

Cal. 2014) (forms for new students in martial arts classes conveyed detailed information

11

about conduct in martial arts studio). Dkt. 48 at 14.

12

CCI argues that it “chose to bring together a variety of symbols and pictures in

13

order to direct the user of the form” including terms and phrases unique to the industry,

14

characterizing its design as conveying potential problem areas, and teaching or guiding

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the user to some degree. Dkt. 48 at 13–14. However, conveying potential problem areas

16

with industry-specific terms seems to parallel what a superbill did for each medical

17

specialty in Bibbero; CCI does not explain what its form teaches the user, whether that be

18

the technician or the customer, and the form’s instructions appear similar to or less

19

complex than a superbill’s clauses assigning insurance benefits or releasing patient

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medical information, 893 F.2d 1104, 1107, and not approaching the complexity of

21

Williams’s advice on business management, 542 F.2d at 1060–61. CCI also does not

22

explain what the rodent images convey, and whether the recipient of that message is the

ORDER - 32

1

CCI technician or the customer receiving the bid. While Bibbero’s strong articulation of

2

the blank forms rule has been criticized, as noted in Advanz, district courts have

3

continued to apply it. See, e.g., Advanz, 21 F.Supp. 2d at 1189; Calyx Technologies, Inc.

4

v. Ellie Mae, Inc., No. 04–cv–1640 SI, 2005 WL 2036918, at *4 (N.D. Cal. Aug 22,

5

2005); Moore, 2014 WL 825428 at *3–4.

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CCI cites Kregos v. AP, 937 F.2d 700, 703 (2d Cir. 1991) (“Kregos”) for the

7

proposition that its color choices, layout, and phrases constitute a copyrightable

8

compilation. Dkt. 48 at 13. In Kregos, the Second Circuit found the creator’s choice of a

9

particular selection of nine categories of baseball statistics into a form demonstrated

10

sufficient originality to be eligible for copyright protection. 937 F.2d at 705. That case

11

illustrates the disagreement about the breadth of the blank forms rule. There, the Second

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Circuit highlighted Bibbero as an example of a case with statements “suggesting broadly

13

that no blank forms are copyrightable,” in contrast with cases in district courts and the

14

Third Circuit which have “recognized that there can be protectable elements of forms that

15

include considerable blank space.” Id. at 708 (internal citations omitted). In contrast to

16

Kregos’s recognition that a choice of a particular selection of fillable statistical categories

17

was copyrightable, Bibbero reasons that recognizing a form’s inclusion of some

18

categories of information and not others, “thus indicating which information was

19

important” as sufficient for copyright protection creates an unadministrable line and

20

“cannot be what the Copyright Office intended by the statement ‘convey information’ in

21

37 C.F.R. 202.1(c).” 893 F.2d at 1107.

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ORDER - 33

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Even if the Kregos analysis was controlling, CCI does not provide examples of the

2

variety of alternative categories that a home maintenance provider could consider, or

3

explain that the tasks it selected are an original and instructive selection. While the form

4

does provide a good method for recording the required information, CCI does not explain

5

how they have selected only a limited array of tasks in order to confine their employees

6

to that limited universe, direct them away from less desirable methods of addressing the

7

maintenance tasks in cleaning crawl spaces, or help them communicate CCI’s expertise

8

to customers. On the briefing presented, CCI has simply listed the tasks a crawl space

9

cleaning company would complete, along with a space to record the employee’s selection

10

of tasks and data gathered from the home, which does not appear to meet the threshold

11

for guiding the user or integrated instructions necessary to escape the blank form rule.

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The district court in Advanz explained “Plaintiff’s forms may be good ones, they may

13

have required thought and work to create, and they may contain some original material or

14

some original organization of unoriginal material, but under the restrictive approach

15

adopted by the Ninth Circuit in Bibbero Systems, they are not copyrightable subject

16

matter.” 21 F.Supp.2d at 1190. The Court believes CSCP has a strong case for summary

17

judgment on CCI’s copyright claims for the Project Graph. However, the Court is

18

requesting additional briefing on other copyright claims as discussed below, and so also

19

requests additional briefing addressing the weaknesses of CCI’s claims for the Project

20

Graph identified in this section.

21
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Project Bid Sheet. CCI’s Certificate of Registration with the U.S. Copyright
Office identifies the “Project Bid Sheet” as containing author-created text. Dkt. 49-1 at

ORDER - 34

1

5–8. The first page contains spaces to fill in customer information and the tasks to be

2

completed along with their costs, statements, recommendations, and disclaimers to the

3

customer, and spaces for signature. Id. at 5. The second and third pages include the

4

‘General Conditions’ of the contract between CCI and the customer. Id. at 7–8. CCI

5

argues that the Bid Sheet “contains detailed instructions, information, and

6

recommendations to the individuals who participate in completing it,” highlighting the

7

signing statement on the first page which establishes terms and conditions, authorizes

8

work performed, and includes cancellation provisions. Dkt. 48 at 15 (citing DKt. 49-1 at

9

6.

10

CCI argues that “[i]t is well-settled that legal forms, if original, may properly be

11

the subject of copyright protection” citing Merritt Forbes & Co. v. Newman Inv. Sec.,

12

Inc., 604 F. Supp. 943, 950–51 (S.D.N.Y. 1985). Dkt. 48 at 12. Compilations also may be

13

protected under copyright, but the copyright “extends only to the material contributed by

14

the author of such work, as distinguished from the preexisting material employed in the

15

work.” 17 U.S.C.A. §103(b). CSCP concedes that the Project Bid Sheet includes literary

16

elements but argues these elements “simply request information that is provided to CCI

17

employees by potential customers, or obtained by CCI employee review, or provided to

18

the customer to allow him or her to decide whether to engage CCI.” Dkt. 39 at 10.

19

The Court’s concern is that CCI has not identified which aspects of the text within

20

the Bid Sheet are actually original and thus protectable. “To qualify for copyright

21

protection, a work must be original to the author,” meaning “independently created by the

22

author.” Feist, 499 U.S. at 345. The Court cannot evaluate CCI’s claims for infringement

ORDER - 35

1

of copyrighted text without clear identification of the specific elements of the work CCI

2

claims are protected by its certificate of copyright—the specific elements CCI

3

independently created. CCI highlights text in its signing statement that it argues is

4

substantially similar to CSCP’s signing statement, and identifies five paragraphs of the

5

ten-paragraph General Conditions page which “use nearly identical legal conditions

6

expressed in nearly identical ways” but does not argue it independently created the text in

7

these paragraphs, or detail specific drafting choices made “because of the particular

8

circumstances surrounding the . . . industry” as the plaintiff did in Phoenix Renovation

9

Corp. v. Rodriguez, 439 F. Supp. 2d 510, 516–17 (E.D. Va. 2006). For example, the

10

Court questions whether CCI is making a claim of independent authorship for one of the

11

paragraphs identified, Paragraph Eight of the General Conditions titled “Time Limit for

12

Filing Any Claim,” which reads “All claims by either party concerning the performance

13

of this contract, including but not limited to claims for breach of contract, breach of

14

warranty, and indemnification, are WAIVED unless filed in a court of competent

15

jurisdiction with four (4) months of the expiration of the one-year warranty period.” Dkt.

16

49-1 at 7.

17

The Court requests additional briefing clarifying which aspects of the Project Bid

18

Sheet CCI claims are original and thus protectable, and any specific contrary showings

19

from CSCP.

20

Project Worksheet. CCI’s Certificate of Registration with the U.S. Copyright

21

Office identifies the “Project Worksheet” as containing an author-created compilation of

22

text. Dkt. 49-1 at 10–11. It consists of a single sheet with a detailed array of labeled

ORDER - 36

1

spaces to be checked or filled in, as well as an instruction at the top in white text within a

2

red field stating “Red lettering notes what tasks require additional information (i.e.

3

detailed notes and/or location indicated on Project Graph).” Id. at 11. CCI characterizes it

4

as containing a set of data CCI specifically chose to gather. Dkt. 48 at 16 (citing Kregos,

5

937 F.2d at 704). However, as noted, Kregos suggests a disagreement between Circuits

6

with Bibbero, and this form does not teach the user, provide information, or include more

7

than the single line of instruction. Bibbero’s bright line, that conveying information

8

cannot be established by containing “some of the possible categories of information but

9

not others,” 893 F.2d at 1107, would be directly violated by recognizing the Project

10

Worksheet as conveying information. Like the Project Graph, CCI has failed to create a

11

question of material fact about whether the Project Worksheet contains copyrightable

12

subject matter. If the work contains no copyrightable subject matter, there is nothing to

13

copy or infringe. Therefore, the Court grants summary judgment for CSCP on CCI’s

14

copyright claims regarding the Project Worksheet.

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2.

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CCI’s Standards document is a set of instructions for employees who clean crawl

Standards

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spaces. DKt. 49-1 at 13–32. CSCP argues it does not have a Standards document and CCI

18

cannot identify an infringing document, so CCI’s claim that CSCP has copied its

19

Standards document is moot. Dkt. 39 at 11. CCI argues that because discovery was not

20

complete, it was still possible that an infringing CSCP Standards document could be

21

discovered. Dkt. 48 at 18. Fed. R. Civ. P. 56(d) authorizes district courts to defer

22

considering a motion for summary judgment or deny it if “a nonmovant shows by

ORDER - 37

1

affidavit or declaration that, for specified reasons, it cannot present facts essential to

2

justify its opposition . . .” The party seeking a Rule 56(d) continuance bears the burden of

3

proffering facts sufficient to satisfy the requirements of 56(d). Nidds v. Schindler

4

Elevator Corp., 113 F.3d 912, 921 (9th Cir. 1996).

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CCI did not move for a Rule 56(d) continuance, and has not presented any

6

affidavit or other proof that the alleged infringing document exists, arguing only that

7

CSCP “had access to and copied” the four other works, implying that it is thus likely

8

CSCP copied this work as well. Dkt. 48 at 18. This is mere speculation. Because CCI

9

fails to present any specific, probative evidence to support its claim, Matsushita Elec.,

10

475 U.S. at 586, the Court grants summary judgment for CSCP on CCI’s copyright

11

claims regarding the Standards document.

12

3.

13

CCI’s Certificate of Registration with the U.S. Copyright Office identifies the

Venting Calculator

14

“Venting Calculator” as containing a “compilation of text and equations.” Dkt. 49-1 at

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34–36. The Venting Calculator consists of two pages, the first containing colored boxes

16

and simple instructions for the user to input figures to calculate the appropriate venting in

17

different areas of a home, and the second containing a table of venting data. Id.

18

CSCP argues the Venting Calculator document “simply provide[s] the procedure

19

by which the facts of a given house dictate the work that both CCI and [CSCP] perform,”

20

arguing that the copyright covers “calculations that all attic and crawl space service

21

providers must follow.” Dkt. 39 at 11. CSCP cites Feist, 499 U.S. at 347, for the

22

proposition that facts are not copyrightable, and 17 U.S.C § 102(b) for the point that

ORDER - 38

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copyright protection does not cover “any idea, procedure, process, system, method of

2

operation, concept, principle, or discovery, regardless of the form in which it is described,

3

explained, illustrated, or embodied in such work.” Dkt. 39 at 12. However, as the Ninth

4

Circuit explained in Cash Dividend Check Corp. v. Davis, 247 F.2d 458, 460 (9th Cir.

5

1957) (“Cash Dividend”) it is possible for an “integrated subject of the copyright” to be

6

more than the utilitarian item that is one component of the subject when it “conveys to

7

the public information through appellant’s authorship,” there, a stamp savings plan. In

8

Cash Dividend, the appellant did not attempt to copyright its system or the check portion

9

of the work on its own, but “[r]ather, it seeks a copyright over the writing, with the

10

integrated check, which describes the means by which the stamp-check plan is carried

11

out.” Id. at 460.

12

CCI explains that its creativity “is expressed in the collection of color choices,

13

layout, and phrases used at least on the first page of the Venting Calculation form.” Dkt.

14

48 at 17. CCI does not argue that its color choices and layout convey information, even

15

though copyright protects forms that convey information, 37 C.F.R. § 202.1(c), and does

16

not protect “any functional layout, coloring, or design that facilitates the use of a form.”

17

11 Nimmer on Copyright 313 (2018) (citing Baker v. Selden, 101 U.S. 99 (1879)).

18

While “the copyright in a factual compilation is thin,” and a “subsequent compiler

19

remains free to use the facts contained in another’s publication to aid in preparing a

20

competing work, so long as the competing work does not feature the same selection and

21

arrangement,” CCI could make the case that it conveys something original in its visual

22

illustration of calculations using factual information. As noted above, enforcing a valid

ORDER - 39

1

copyright requires identifying precisely what was “independently created by the author.”

2

Feist, 499 U.S. at 345, 349. The Court requests additional briefing which outlines the

3

differences, if any, between the factual calculations involved in determining the number

4

of vents a service provider would install in a home, and the information conveyed by

5

specific color choices and layout in the document. See Cash Dividend, 247 F.2d at 460.

6

The second page of each company’s Venting Calculation document appears to be

7

a table of data. See Feist, 499 U.S. at 344, 348 (“Others may copy the underlying facts

8

from the publication, but not the precise words used to present them.”) CCI admits as

9

much, arguing that its creativity is expressed on “at least the first page” of the Calculator.

10

Dkt. 48 at 17. CCI explains that the colorful page of the Calculator “was authored by

11

[CCI] and not provided by the local public utility districts,” but does not explain the

12

source of the black-and-white page. Id. Thus, the Court expects that supplemental

13

briefing will also clarify the origin and originality or lack thereof of this data.

14

Finally, finding CCI has not conclusively established any of the works at issue

15

contain protectable content, the Court does not analyze the extent of the protection for the

16

content under Mattel. 616 F.3d at 913.

17
18

III. ORDER
Therefore, it is hereby ordered that CSCP’s motion for summary judgment, Dkt.

19

39, is DENIED as to CCI’s trademark claims, and GRANTED as to CCI’s copyright

20

claims for the Project Worksheet, and Standards documents. The Court reserves ruling

21

and requests simultaneous supplemental briefing on CCI’s copyright claims for the

22

Project Graph, Project Bid Sheet and Venting Calculations documents. Opening briefs

ORDER - 40

1

shall be no longer than 12 pages and be filed no later than February 15th, 2019, and

2

response briefs shall be no longer than 8 pages and be filed no later than February 22nd,

3

2019. The Clerk shall renote CSCP’s motion for consideration on the Court’s February

4

22nd, 2019 calendar.

5

Dated this 29th day of January, 2019.

A

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7

BENJAMIN H. SETTLE
United States District Judge

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ORDER - 41