The opinion of the court was delivered by: Dennis L. Beck United States Magistrate Judge
ORDER DENYING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT (Document 147) ORDER DENYING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT (Document 149)
Before the Court are the parties' cross-motions for summary judgment, or in the alternative, summary adjudication. The motions were heard on May 15, 2009, before the Honorable Dennis L. Beck, United States Magistrate Judge. John G. Michael appeared on behalf of Plaintiff Anlin Industries, Inc. ("Anlin"). Defendant Paul Burgess ("Defendant") is proceeding pro se and appeared on his own behalf.
Anlin filed the instant action on October 15, 2005, alleging the following causes of action: (1) violations of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) ("ACPA"); (2) infringements of federally registered trademarks in violation of 15 U.S.C. § 1114(1); (3) unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (4) trademark infringement under state common law; (5) trademark infringement under California law; and (6) unfair competition under state law. The allegations are based on Defendant's registration and use of domain names alleged to be identical or confusingly similar to Anlin's federally registered and unregistered trademarks and trade names.
After numerous motions to dismiss Defendant's counterclaims and affirmative defenses, Defendant was allowed leave to plead an estoppel defense. On December 24, 2006, Defendant moved to amend his answer to include the affirmative defenses of "fair use/first use" and acquiescence, as well as a promissory estoppel counterclaim. The Court denied the motion on February 6, 2007, finding in part that the facts of the case did not support either a fair use defense or the first sale defense.
On February 9, 2007, Defendant filed his answer, which included the estoppel affirmative defense.
On March 5, 2007, the Court issued an order on the parties' cross-motions for summary judgment. The Court granted Anlin's motion for summary judgment on its first two causes of action under the ACPA based in part on a finding that Defendant harbored a bad faith intent to profit when he continued to use the domain name after receiving a cease and desist letter from Anlin. The Court awarded statutory damages in the amount of $12,500, noting that Anlin did not show that Defendant interfered in its business in "any meaningful way." The Court also granted injunctive relief and ordered Defendant to transfer the five domain names at issue to Anlin. Anlin's request for attorney's fees was denied.
Defendant filed a notice of appeal on March 29, 2007.
On April 11, 2007, the Court granted Anlin's motion to dismiss the third through seventh causes of action without prejudice and entered judgment.
On November 26, 2008, the Ninth Circuit Court of Appeals issued its order reversing this Court's grant of summary judgment and remanded the action for further proceedings. The Court of Appeals found that many of the disputed facts identified by this Court relating to a bad faith intent to profit for the period of time prior to Anlin's cease and desist letter were also in dispute for the period of time after the letter. The Court remanded the action to allow this Court to "address the factual disputes that cannot be resolved on a motion for summary judgment."
Anlin filed its first amended complaint on January 20, 2009, reinstating all six causes of action alleged in its original complaint.
On January 29, 2009, Defendant filed his answer, which included the affirmative defenses of fair use and estoppel.
On March 30, 2009, Defendant filed his motion for summary judgment. Anlin filed its motion for summary judgment on April 14, 2009.
Anlin, a manufacturer of vinyl replacement doors and windows, filed Articles of Incorporation in 1991 and began manufacturing its products under a license agreement with Certainteed Corporation. Declaration of Eric Vidmar, filed Dec. 21, 2006 ("Vidmar Dec."), ¶¶ 2-3. The name "Anlin" is a combination of the middle name of the founder of the company and his wife's first name. The founder's middle name is Antone and his wife's name is Linda. The first few letters of each name forms "Anlin." Vidmar Dec. ¶ 2.
Under the license agreement with Certainteed, Anlin manufactured windows for Certainteed but was permitted to manufacture its own brand of windows and doors. Vidmar Dec. ¶ 3. The windows manufactured for Certainteed, as well as the sales literature created for Certainteed, contained stickers identifying Anlin as the source of the windows. Vidmar Dec. ¶ 3. Delivery trucks contained both the Certainteed and Anlin names. Vidmar Dec. ¶ 3. Anlin produced windows for Certainteed and its own brand from 1991 through 2001. Vidmar Dec. ¶ 3. In addition, from 1993 through 2001, Anlin sold a line of patio doors and custom made windows under the Anlin name. Vidmar Dec. ¶ 3.
On March 30, 1998, Anlin registered the domain name "www.anlin.com." Vidmar Dec. ¶ 4. Prior to the year 2001, when the license agreement with Certainteed was set to expire, Anlin decided not to renew the agreement and prepared to enter the market with a full line of windows and doors without the Certainteed name. Vidmar Dec. ¶ 4. In preparation, Anlin created sales literature, truck logos, t-shirts and other promotional merchandise with the logos "Anlin Windows" and "Anlin Window Systems." Vidmar Dec. ¶ 4. It also created new stickers with the logos to be applied to windows before delivery. ...