United States District Court, N.D. California, San Jose Division
October 5, 2005.
SPORTVISION, INC., Plaintiff,
SPORTSMEDIA TECHNOLOGY CORPORATION, Defendant.
The opinion of the court was delivered by: JAMES WARE, District Judge
ORDER GRANTING SPORTSMEDIA'S MOTION TO MODIFY PARTIAL SUMMARY
Plaintiff Sportvision, Inc. ("Plaintiff") initiated this
lawsuit against Defendant SportsMEDIA Technology Corporation
("Defendant") for patent infringement, trademark infringement and
unfair competition. At issue are the rights to a virtual yellow
first-down line used in football game broadcasts. On August 4,
2005, the Court granted Defendant's motion for partial summary
judgment on the trademark issues (Counts IV, V, and VI of
Plaintiff's complaint) ("MSJ Order") (Docket No. 201) because the
Court found that Plaintiff Sportvision "failed to offer
sufficient evidence to create a genuine issue of material fact
that its mark is not functional" (MSJ Order at 12:6-7.) and that
"no likelihood of confusion exists between the parties' virtual
first-down line services." (Id. at 15:24-25.)
Presently before the Court is Defendant's Motion to Modify
Partial Summary Judgment Order requesting that Plaintiff
Sportvision's trademark registration be cancelled under
15 U.S.C. § 1119 (Count Five in Defendant's counterclaim) (Docket No. 210).
Section 1119 provides that "[i]n any action involving a
registered mark the court may determine the right to
registration, order the cancellation of registrations, in whole or in part. . . ." A
trademark registration must be canceled if the mark is
functional. See Gracie v. Gracie, 217 F.3d 1060, 1065-66 (9th
Cir. 2000) (stating that "[i]n cases not involving jury trials,
district courts have been reversed for refusing to order the
cancellation of registrations for claimed marks found to be
incapable of serving as valid marks").
A hearing on Defendant's motion was set for October 3, 2005.
However, the Court finds it appropriate to take the motion under
submission without oral argument pursuant to Civil Local Rule
7-1(b). Based on the arguments advanced by counsel in their
briefs, and in light of the Court's finding that Plaintiff's
trademark is functional, Defendant SportsMEDIA's motion is
Accordingly, the Court hereby modifies the MSJ Order granting
Defendant SportsMEDIA's Motion for Partial Summary Judgment to
include an order for cancellation of U.S. Trademark Registration
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