The opinion of the court was delivered by: Irma E. Gonzalez, Chief Judge United States District Court
ORDER DENYING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT [Doc Nos. 43, 44, 45, 46, 47, 48, 49, 51, 52, 53, 54, 55, 56, 58]
Presently before the Court is Plaintiff California Board Sports, Inc.'s ("CBSI's") motion for summary judgment. For the reasons set forth below, the Court DENIES Plaintiff's motion.
This civil action is for trademark infringement and unfair competition arising under the Lanham Act, 15 U.S.C. § § 1114 and 1125(a).
Plaintiff CBSI markets a brand of casual shoes, accessories, and apparel under the mark "Osiris" and "Osiris design." Plaintiff uses several different designs and patterns on its shoes including various generic black and white checkerboard patterns.
Defendant Vans, Inc. ("Vans") is one of CBSI's main competitors in the field of casual shoes, accessories, and apparel marketed to the skate and surf community. Defendant owns a trademark registration for a slip-on shoe with a generic black and white checkerboard pattern over the entire front, tongue and heel of the shoe, which Defendant refers to as the "Classic Slip-On." The picture registration for the Classic Slip-On, a.k.a., Defendant' Registration No. 1,583,727 ("Slip-On Registration") is set forth below:
Notably, Defendant uses a checkerboard pattern on approximately 5.8% of its entire shoe line and sales of shoes featuring the checkerboard pattern account for approximately 14% of Defendant's footwear business. (Def. Opp'n, Bettencourt Decl., ¶ 8.)
Plaintiff filed the instant lawsuit, alleging Defendant's registration for its Classic Slip-On deck shoe does not confer rights to the generic pattern of a black and white checkerboard nor does it preclude third parties, like Plaintiff, from using decorative checkerboards on shoes for design, descriptive, or non-source identifying purposes. (Doc. No. 1.) Plaintiff utilizes the checkerboard pattern on its "Serve Black" shoe, which is pictured alongside the Classic Slip On below:
CLASSIC SLIP ON CBSI SERVE BLACK
Plaintiff's complaint asked for (1) a declaration of non-infringement of trademark; and (2) a declaration of non-dilution of trademark. (Id.)
Defendant answered, arguing that as holder of the Slip-On Registration, it has exclusive right to use the checkerboard pattern nationwide in connection with its respective goods. Accordingly, Defendant asserted counterclaims against Plaintiff for (1) trademark infringement; (2) unfair competition; and (3) misappropriation under California law based on Plaintiff's use of the checkerboard pattern on the Serve Black shoe. (Doc. No. 3.)
On September 14, 2007, Plaintiff filed a motion for summary judgment based on four independent grounds: (1) Defendant has no trademark rights in the checkerboard pattern because the checkerboard pattern is generic or merely decorative; (2) Defendant has no trademark rights in the checkerboard pattern because the pattern is functional; (3) even assuming Defendant has trademark rights in the checkerboard pattern, Plaintiff's use of the checkerboard pattern creates no likelihood of confusion; or (4) even assuming Defendant has trademark rights in the checkerboard pattern, Plaintiff's use of the checkerboard pattern is fair use. (No. 43.) The Court held argument on October 22, 2007.
Summary judgment is proper where the pleadings and materials demonstrate that "there is no genuine issue as to any material fact and . . . the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). A material issue of fact is a question that a trier of fact must answer to determine the rights of the parties under the applicable substantive law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248. Summary judgment may be granted in favor of a moving party on an ultimate issue of fact where the moving party carries its burden of "pointing out to the district court that there is an absence of evidence to support the nonmoving party's case." Celotex, 477 U.S. at 325; see Nissan Fire & Marine Ins. Co., v. Fritz Cos., 210 F.3d 1099, 1106 (9th Cir. 2000).
The moving party bears "the initial responsibility of informing the district court of the basis for its motion." Celotex, 477 U.S. at 323. To satisfy this burden, the moving party must demonstrate that no genuine issue of material fact exists for trial. Id. at 322. However, the moving party is not required to negate those portions of the non-moving party's claim on which the non-moving party bears the burden of proof. Id. at 323. To withstand a motion for summary judgment, the non-movant must then show that there are genuine factual issues which can only be resolved by the trier of fact. Reese v. Jefferson School Dist. No. 14J, 208 F.3d 736, 738 (9th Cir.2000) (citing Fed. R. Civ. P. 56; Celotex, 477 U.S. at 323). The nonmoving party may not rely on the pleadings but must present specific facts creating a genuine issue of material fact. Nissan, 210 F.3d at 1103. The inferences to be drawn from the facts must be viewed in a light most favorable to the party opposing the motion, but conclusory allegations as to ultimate facts are not adequate to defeat summary judgment. Gibson v. County of Washoe, Nev., 290 F.3d 1175, 1180 (9th Cir. 2002). The court is not required "to scour the record in search of a genuine issue of triable fact," Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir.1996), but rather "may limit its review to the documents submitted for purposes of summary judgment and those parts of the record specifically referenced therein." Carmen v. San Francisco Unified Sch. Dist., 237 F.3d 1026, 1030 (9th Cir. 2001).
A trademark is "any word, name, symbol, or device or any combination thereof" used by a person "to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. § 1127.
To state an infringement claim under § 43(a) of the Lanham Act, a plaintiff must meet three basic elements: (1) distinctiveness, (2) non-functionality, and (3) likelihood of confusion. Kendall-Jackson Winery, Ltd., v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998). As noted above, Plaintiff asserts that Defendant cannot raise a triable issue as to any of these requirements. In the alternative, Plaintiff argues that even if Defendant has trademark rights in the checkerboard pattern, Plaintiff is entitled to summary judgment because (4) Plaintiff's use is protected by the fair use doctrine.
As an initial matter, the Court OVERRULES Defendant's Objections to Plaintiff's Declarations. (Doc. No. 45, 46, 47, 48.) The Court similarly OVERRULES Plaintiff's Objection to Defendant's declaration. (Doc. No. 52.)
The distinctiveness element comes from § 2 of the Lanham Act, which sets forth the requirements for registering a trademark. To be protected under § 2, a mark must be capable of distinguishing the applicant's goods from the ...