The opinion of the court was delivered by: Honorable Ronald S.W. Lew Senior, U.S. District Court Judge
re: Plaintiff Hokto Kinoko's Motion for Summary Judgment and for Permanent Injunction , Third-Party Defendant Hokuto Corporation's Motion for Summary Judgment , and Defendant, Counterclaimant, and Third-Party Plaintiff Concord Farms, Inc.'s Motion for Summary Judgment 
On August 9, 2011, Plaintiff Hokto Kinoko Company's ("Hokto Kinoko") Motion for Summary Judgment and for Permanent Injunction , Third-Party Defendant Hokuto Corporation's ("Hokuto Japan") Motion for Summary Judgment , and Defendant, Counterclaimant, and Third-Party Plaintiff Concord Farms, Inc.'s ("Concord") Motion for Summary Judgment  came on for regular calendar before this Court. The Court having reviewed all papers submitted pertaining to these Motions and having considered all arguments presented to the Court, NOW FINDS AND RULES AS FOLLOWS:
The Court GRANTS Plaintiff Hokto Kinoko's Motion for Summary Judgment as well as Plaintiff's Request for a Permanent Injunction. Furthermore, the Court GRANTS Third-Party Defendant Hokuto Japan's Motion for Summary Judgment in its entirety. Lastly, the Court DENIES, in its entirety, Defendant, Counterclaimant, and Third-Party Plaintiff Concord's Motion for Summary Judgment.
Plaintiff and Counterdefendant Hokto Kinoko is a corporation organized under the laws of the State of California on July 3, 2006. Hokto Kinoko is a wholly-owned subsidiary of Third-Party Defendant Hokuto Japan. Hokto Kinoko undertook the construction of a growing facility in San Marcos, California, which was completed in 2009. Shortly thereafter, Hokto Kinoko began growing and selling its mushrooms in the United States.
Hokto Kinoko sells its mushroom products under a family of trademarks (collectively referred to as the "Hokto Marks")*fn1 . Plaintiff Hokto Kinoko grows, distributes, and markets "100% Certified Organic" specialty mushrooms throughout the United States. Hokto Kinoko's mushrooms include maitake, brown beech, and white beech mushrooms.
From June 28, 2010, Hokto Kinoko has been the owner of the U.S. rights in the Hokto Marks by virtue of an assignment from its parent company, Hokuto Japan. However, from August 2008 to June 28, 2010, Hokto Kinoko was the exclusive U.S. licensee of Hokuto Japan under the Hokto Marks.
From August 2008 to the first quarter of 2009, Hokto Kinoko imported into the United States and sold organically grown maitake, brown beech, and white beech mushrooms bearing the Hokto Marks that were produced in Japan by Hokuto Japan. Hokto Kinoko was the exclusive licensed distributor of Hokuto Japan products in the United States during this period. The mushrooms imported by Hokto Kinoko for the U.S. market were grown under special conditions not normally used by Hokuto Japan. Specifically, the growing media was changed to meet the United States Certified Organic standards. Moreover, Hokuto Japan and Hokto Kinoko developed special packaging for Hokto Kinoko's use in the U.S. market that used the English language, as compared to Hokuto Japan's normal Japanese language packaging. The English language packaging identified the product as "Certified Organic by QAI" and provided nutritional facts.
Shortly after Hokto Kinoko began producing mushrooms in its San Marcos facility in California, Hokuto Japan ceased exporting mushrooms bearing the Hokto Marks to the United States. An exception occurred in 2010, when Hokto Kinoko could not meet demand due to capacity issues in the production of white beech mushrooms. Hokto Japan white beech mushrooms were imported to augment Hokto Kinoko's inventory of these mushrooms. These imported white beech mushrooms from Japan contained English language stickers indicating the country of origin and nutritional facts.
Third-Party Defendant Hokuto Japan is an organization organized under the laws of Japan with its principal place of business in Nagano, Japan. Hokuto Japan grows, sells, and distributes in Japan mushrooms contained in distinctive packaging with Hokuto Japan trademarks. These Japanese trademarks are identical to Hokto Kinoko's U.S. Marks. However, because "Organic Certification" is not as important to the average Japanese consumer as compared to the American consumer, Hokuto Japan does not go to the added expense to grow its mushrooms under Organic Certified conditions.
Defendant and Third-Party Plaintiff Concord is a corporation organized under the laws of the State of California, with a principal place of business in Union City, California. Concord grows and imports a variety of agricultural products that are distributed across the United States in bulk and retail packs. Since 1987, Concord has distributed exotic Asian mushrooms and produce across the United States.
Since 2003, Concord Farms has been purchasing mushrooms distributed by Hokuto Japan through and from Hokuto Japan's authorized suppliers. However, Concord has never purchased mushrooms directly from Hokuto Japan. Rather, Concord purchases Hokuto Japan mushrooms from a company called MRT, who in turn, purchases the mushrooms from a separate company called Maruichi Seika Co., Ltd. (hereinafter, "Maruichi"). Maruichi purchases mushroom products from Hokuto Japan for resale in Japan.
In July 2009, a Hokto Kinoko representative purchased packages of mushrooms bearing one or more of the Hokto Kinoko U.S. Marks and written mostly in Japanese from two different retail outlets in Irvine, California. The Hokto Kinoko representative was informed that the retail establishments had purchased the packaged mushrooms from Defendant and Third-Party Plaintiff Concord. In October 2009, Hokto Kinoko representatives attended a produce exposition in Anaheim, California where they spoke with a Concord representative requesting that Concord not import, sell, or distribute Hokuto Japan packaged mushrooms. Concord refused to comply with Hokto Kinoko's request and, as a result, this dispute between the parties ensued.
During the period from 2003 to February 2009, Concord imported and sold non-organic white beech and brown beech mushrooms grown by Hokuto Japan packaged in all Japanese language packages. However, since February 2009, Concord has not imported or sold brown or white beech Hokto branded mushrooms, but only now imports maitake mushrooms from Japan bearing the Hokto Marks. Therefore, during the pendency of this Action, the only infringing mushroom products that have been imported and sold by Concord are the maitake mushrooms.
Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). A genuine issue is one in which the evidence is such that a reasonable fact-finder could return a verdict for the non-moving party. Anderson v. Liberty Lobby, 477 U.S. 242, 248 (1986).
A party seeking summary judgment always bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The moving party can satisfy this burden by: (1) presenting evidence that negates an essential element of the non-moving party's case or (2) demonstrating that the non-moving party failed to establish an essential element of the non-moving party's case on which the non-moving party bears the burden of proving at trial. Id. at 322-23.
Once the moving party establishes the absence of genuine issues of material fact, the burden shifts to the non-moving party to set forth facts showing that a genuine issue of disputed fact remains. Celotex, 477 U.S. at 322. However, the non-moving party is required by Federal Rules of Civil Procedure, Rule 56(e)*fn2 to go beyond the pleadings and designate specific facts showing that there is a genuine issue for trial. Id. at 324. Conclusory allegations unsupported by factual allegations are insufficient to create a triable issue of fact so as to preclude summary judgment. Hansen v. United States, 7 F.3d 137, 138 (9th Cir. 1993)(citing Marks v. Dep't of Justice, 578 F.2d 261, 263 (9th Cir. 1978)). A non-moving party who has the burden of proof at trial must present enough evidence that a "fair-minded jury could return a verdict for the [opposing party] on the evidence presented." Anderson, 477 U.S. at 255.
Courts apply "traditional equitable principles" in deciding whether to grant a permanent injunction:
[A] plaintiff seeking a permanent injunction must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.
Reno Air Racing Ass'n v. McCord, 452 F.3d 1126, 1137 n. 11 (9th Cir. 2006) (quoting eBay Inc. v. MercExchange LLC, 126 S. Ct. 1837, 1840 (2006)).
A. Plaintiff Hokto Kinoko's Motion for Summary Judgment
Plaintiff Hokto Kinoko moves for summary judgment on its claims against Defendant Concord for 1) trademark infringement and 2) common law unfair competition, and on all of Defendant Concord's counterclaims and affirmative defenses.
However, Plaintiff Hokto Kinoko's Motion for Summary Judgment currently before this Court relates only to four out of the original ten federal registrations pled in Plaintiff's First Amended Complaint. Accordingly, Plaintiff has informed the Court that it seeks summary judgment on its trademark infringement claim only with respect to the following four federally registered trademarks:
Moreover, while Plaintiff also initially pled a cause of action for false designation of origin in its FAC, Plaintiff has not submitted briefing to the Court on this claim in its summary judgment motion. As such, the Court will not determine whether Plaintiff is entitled to summary judgment on its claim for false designation of origin.
1) Trademark Infringement To sustain a claim for trademark infringement, Hokto Kinoko must show (1) that it has valid trademark rights; and (2) that Concord's sale of foreign packaged mushrooms is likely to confuse United States consumers. See Comedy III Prods., Inc. v. New Line Cinema, 200 F.3d 593, 594 (9th Cir. 2000).
The initial inquiry relates to whether Plaintiff
Hokto Kinoko has valid trademark rights in the following trademarks at issue in this Motion, namely those shown in U.S. Trademark Registration Nos. 3210268, 3182866, 3179700, and 3182867. Under the Lanham Act, registration of a trademark creates a rebuttable presumption that the mark is valid, but the presumption evaporates as soon as evidence of invalidity is presented. 15 U.S.C. § 1051 et seq.
Here, Plaintiff maintains that in June 2010, for good and valuable consideration, Hokuto Japan assigned all rights and interests in the Hokto Marks to Plaintiff Hokto Kinoko. [See Shigeta Decl., ¶ 5, Ex. E.] In support of this assertion, Plaintiff has attached, to the Shigeta Declaration, Exhibit E, which is a copy of the Assignment recorded with the United States Patent and Trademark Office.*fn3
Defendant Concord disputes this fact and alleges that Plaintiff Hokto Kinoko has not provided any proof of the consideration paid for the alleged assignment, and therefore maintains that the alleged assignment may be invalid. [UF No. 18 Def.'s Mot. for Summ. J.] However, Plaintiff maintains that in consideration, Hokuto Japan received the benefit of no longer "having the burden and expense of policing the Marks...in the United States." Moreover, Plaintiff asserts that consideration received by Plaintiff Hokto Kinoko included having control of the Marks,... protecting and policing the Marks in the United States, and ensuring the quality of goods sold under the Marks in the United States." [Pl.'s UF No. 18.]
Defendant Concord maintains that such purported consideration is not legal consideration. However, the Ninth Circuit instructs this Court to find otherwise. See Kremen v. Cohen, 337 F.3d 1024, 1028 (9th Cir. 2003)(stating that consideration can be found when the other party received some benefit they were not already entitled to receive and finding that the adequacy of consideration doesn't matter, and that consideration must be "something of real value"). Additionally, the Court finds that Defendant has not designated specific facts to show that there is a genuine issue here with regard to its claim of lack of consideration.
Accordingly, the Court finds that Defendant Concord has not met its burden in establishing that a triable issue of fact remains with regard to whether Plaintiff Hokto Kinoko has valid trademark rights in the trademarks at issue in this Case. Defendant Concord has not presented the Court with affirmative evidence to establish that a genuine issue exists with regard to the existence of consideration in relation to the assignment of trademark rights from Third-Party Defendant Hokuto Japan to Plaintiff Hokto Kinoko. Therefore, the Court finds that Defendant has not presented sufficient evidence regarding invalidity and has therefore not successfully rebutted the presumption that registration of a trademark supports the finding of a valid mark. See 555-1212.com, Inc. v. Commc'n House Intern., Inc., 157 F. Supp. 2d 1084 (N.D. Cal. 2001).
The Court must now determine if there are triable issues of fact regarding whether Concord's sale of foreign packaged mushrooms is likely to confuse United States consumers. This issue is critical in determining whether the Court should grant summary judgment on both Plaintiff's claims for trademark infringement and common law unfair competition. The element of likelihood of confusion applies to both claims. Plaintiff Hokto Kinoko argues that there is a high likelihood of confusion between Concord's sale of Hokuto Japan's foreign packaged mushrooms and Hokto Kinoko's U.S. locally grown mushrooms.
The core element of trademark infringement is the likelihood of confusion, i.e., whether the similarity of the marks is likely to confuse customers about the source of the products. E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992). The Ninth Circuit looks to the following factors for guidance in determining the likelihood of confusion: similarity of the conflicting designations; relatedness or proximity of the two companies' products or services; strength of the mark; marketing channels used; degree of care likely to be exercised by purchasers in selecting goods; defendant's intent in selecting its mark; evidence of actual confusion; and likelihood of expansion in product lines. See Dr. Seuss Enters. v. Penguin Books Kinoko, Inc., 109 F.3d 1394, 1404 (9th Cir. 1997).
Specifically, in the context of gray market goods, the likelihood of confusion relates to the existence of material differences between the allegedly infringing good and the registrant's product. See Grupo Gamesa S.A. De C.V. v. Dulceria El Molino, Inc., 39 U.S.P.Q. 2d 1531, 1533 (C.D. Cal. 1996). In general terms, a gray market good, often referred to as a parallel import, is "[a] foreign-manufactured good, bearing a valid United States trademark, that is imported without the consent of the United States trademark holder." K Mart Corp. v. Cartier, Inc., 486 U.S. 281, 285 (1988). "[T]he ultimate issue in a trademark infringement suit against the importer of gray market imports is the factual question of likelihood of confusion of U.S. customers." Am. Circuit Breaker Corp. v. Or. Breakers, Inc., 406 F.3d 577, 584 (9th Cir. 2005). Liability for the importation of goods bearing an identical mark "turns on whether the allegedly infringing goods are genuine or 'differ materially' from the plaintiff's goods." Summit Tech. v. High-Line Med. Instruments Co., 922 F. Supp. 299, 308 (C.D. Cal. 1996). See PepsiCo, Inc. v. Reyes, 70 F. Supp. 2d 1057, 1059 (C.D. Cal. 1999)(finding that the sale of gray market products under the same trademarks as the authorized products is likely to confuse customers if these gray market products differ materially from the authorized products).
The inquiry of whether a product qualifies as a genuine product turns on the question of whether material differences exist between the allegedly infringing good and the registrant's product. Under the Lanham Act, imported goods are not "genuine" if they differed materially from the authorized version. See Monte Carlo Shirt, Inc. v. Daewoo Intern (America)
Therefore, the threshold inquiry in resolving whether summary judgment should be granted on Plaintiff's trademark infringement claim is whether the Defendant has met its burden to prove that there are no genuine issues of fact regarding the existence of material differences between Plaintiff Hokto Kinoko's U.S. produced and Japanese imported mushrooms and the Japanese mushrooms imported by Defendant Concord.
As an initial matter, it is undisputed that both the Plaintiff Hokto Kinoko's U.S. produced mushrooms and the Hokuto Japan Japanese mushrooms imported by Concord are both sold under the same Hokto Marks. Defendant Concord argues that it cannot be held to infringe the Hokto Marks for importing the same genuine goods imported by Plaintiff Hokto Kinoko. However, Plaintiff Hokto Kinoko maintains that the goods imported by Defendant Concord are not considered genuine because there are material differences between those mushrooms and Hokto Kinoko's U.S. produced and Japanese imported mushrooms.
Defendant Concord relies on Nec Electronics v. CAL Circuit Abco, where the Ninth Circuit held that trademark law does not reach the sale of genuine goods bearing a true mark even though such sale is without the mark owner's consent. 810 F.2d 1506, 1510 (9th Cir. 1987). However, the Court finds that Defendant's reliance on Nec Electronics is misplaced because in that case, the parties stipulated that defendant's imported products were genuine products. See id. Such is not the case here. In fact, Defendant Concord has not met its burden to survive summary judgment on the issue of whether Defendant Concord's imported mushrooms qualify as genuine goods for purposes of trademark protection.
While Defendant Concord avers that it is undisputed that its imported mushrooms are considered genuine products, Plaintiff Hokto Kinoko contends otherwise. Specifically, Plaintiff points to affirmative evidence, through the Declaration of Katsumi Shigeta, that the mushrooms imported from Hokuto Japan by Defendant Concord are not genuine goods because they materially differ from both Hokto Kinoko's U.S. produced mushrooms and the mushrooms it imports from Hokuto Japan. [Shigeta Decl., ¶ 3.] The mushrooms Plaintiff Hokto Kinoko imported from Japan for the U.S. market were grown under special conditions not normally used by Hokuto Japan. [Id.] Specifically, the growing media was changed to meet the United States Certified Organic standards. [Id.] Furthermore, Hokuto Japan and Plaintiff Hokto Kinoko developed special packaging for Plaintiff Hokto Kinoko's use in the U.S. market that used the English language, as compared to Hokuto Japan's normal Japanese language. [Id.]
The Court finds that while Plaintiff Hokto Kinoko points to affirmative evidence with regard to the issue of genuine products, Defendant has not negated its burden to prove that there are triable issues of fact regarding whether the Defendant's imported mushrooms are considered genuine goods. As such, the issue of whether Defendant's imported mushrooms materially differ from both Plaintiff's domestically grown and Japanese imported mushrooms is also important for the Court to consider.
Material differences can relate to a product's quality control standards, packaging, and price. See Societe Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 641 (1st Cir. 1992)(enjoining gray market chocolates that were not manufactured to the same quality control standards and contained numerous differences in composition, configuration, packaging, and price). Moreover, material differences can pertain to including nutritional information on labeling and packaging. See Ferrero U.S.A., Inc. v. Ozak Trading, Inc., 753 F. Supp. 1240, 1244 (D.N.J. 1991)(finding that unauthorized product differed materially because, among other things, label did not contain information concerning serving size, servings per container, and nutrient and mineral composition). See also PepsiCo, 70
F. Supp. 2d at 1059 (finding use of Spanish versus English a material difference); Nestle, 982 F.2d at 641 (finding use of Spanish and English on gray goods versus Italian, French, and English on authorized goods a material difference).
Different quality control standards also qualify as material differences. Grupo Gamesa S.A., 39 U.S.P.Q. 2d at 1553. See also PepsiCo, 70 F. Supp. 2d at 1059 (finding material difference because gray goods did not comply with FDA requirements). Lastly, different marketing strategies and techniques have been evaluated in determining whether material differences exist between a registrant's product and the allegedly infringing gray good. PepsiCo, 70 F. Supp. 2d at 1060.
Defendant Concord argues that its imported Hokuto Japan mushrooms are considered "genuine" or identical products to the Plaintiff Hokto Kinoko's imported mushrooms. As such, Defendant maintains that courts have held that the unauthorized sale of genuine goods does not constitute trademark infringement because it does not cause consumer confusion. See, e.g., NEC Elec., 810 F.2d at 1509.
By contrast, Plaintiff asserts that Hokuto Japan's Japanese produced mushrooms are only "genuine goods" in Japan, and Hokto Kinoko's products are "genuine goods" in the United States. Plaintiff maintains that Hokuto Japan's Japanese mushrooms are not "genuine goods" in the United States because there are material differences between the Hokuto Japan Japanese products and Hokto Kinoko's U.S. products. Plaintiff argues that the proper comparison is between Hokto Kinoko's genuine goods, whether domestically produced or imported and Concord's unauthorized imported goods.
The Court finds Plaintiff's arguments here persuasive. Plaintiff relies primarily on Nestle in furthering its argument about the existence of material differences between the imported mushrooms by Defendant Concord and Plaintiff's mushrooms manufactured in the United States.
In Nestle, the First Circuit found infringement because the Venezuelan manufactured chocolates differed materially from the "Perugina" chocolates manufactured in Italy and authorized for the U.S. market. 982 F.2d at 641. As the First Circuit held in Nestle, "when dealing with the importation of gray goods, a reviewing court must necessarily be concerned with subtle differences, for it is by subtle differences that consumers are most easily confused." Id. Thus, in gray goods cases, "the threshold of materiality is always quite low." Id.
The Court finds the reasoning in Nestle particularly instructive in determining that Plaintiff has sufficiently presented to the Court that there are no genuine issues of fact regarding whether there are material differences between Hokto Kinoko's U.S. produced and Japanese imported mushrooms and those imported by Defendant Concord. On the other hand, the Court finds that Defendant Concord has not met its burden to show that triable issues of fact remain.
The Court finds that material differences in growing conditions, labeling and packaging information, warranty and customer support, and quality control between packaged mushrooms sold by Defendant Concord and the Hokto Kinoko U.S. produced and Japanese imported mushrooms demonstrate that there is a high likelihood of confusion regarding the nature and origin of mushrooms bearing the Hokto Kinoko Marks.
With regard to material differences in growing conditions, there is no genuine issue of fact that Concord's imported mushrooms are grown under non-organic conditions. By contrast, Hokto Kinoko's U.S. produced and imported mushrooms are grown under conditions that are approved as meeting the Organic Certifier's standards.
Furthermore, the labeling and packaging information between the Hokto Kinoko and Hokuto Japan products have language and design differences. The authorized domestic packaging, states that mushrooms are "100% Organic," "USDA Organic" and "Certified Organic by GOCA," while the imported product has no claim to being Organic or Certified Organic. [Shigeta Decl., ¶ 13, Ex. G.] Moreover, the domestic product contains the familiar nutrition information such as serving size, servings per container, calorie content in English along with vitamin and mineral content. [Shigeta Decl.,¶ 15, Ex. H.] Concord's imported Hokuto Japan products do not contain such information. [Shigeta Decl., ¶ 13, Ex. G.]
Additionally, the packaging of Defendant Concord's imported mushrooms specifies weights based on the metric system (which is used in Japan): provides hours of customer support based on the Japanese time zone using a 24-hour notation ("13:00-17:00"); includes information uniquely designed for the Japanese market (including the website address for the Japanese parent company (http: //www.hokto-Kinoko.co.jp), and provides a Japanese telephone number "TEL. 026-254-5333."
[Shigeta Decl., ¶ 13, Ex. G.] The Hokto Kinoko goods, on the other hand, indicate they are "produced and packed by Hokto Kinoko Company, San Marcos, California," and that it is a "Product of the U.S.A." Weights are in English metric units, e.g., 3.5 ounces (100 grams). [Shigeta Decl., ¶ 15, Ex. H.]
With regard to the issue of mushrooms imported by Hokto Kinoko from Hokuto Japan, the mushrooms imported by Hokto Kinoko for the U.S. market were grown under special conditions not normally used by Hokuto Japan. [Shigeta Decl., ¶ 3.] Plaintiff avers that the growing media was changed to meet the United States Organic standards. [Id.] Defendant disputes this by arguing that Hokto Kinoko is referring to its American-grown product here and not the product it imports from its parent company, Hokuto Japan. However, the Court finds that Defendant offers no credible evidence in support of this contention. Rather, Defendant cites to the deposition transcript of Kazumi Ikeda, Vice President of Production at Hotko Kinoko, which does not affirm that Hokto Kinoko imports the same mushrooms as Defendant Concord. Instead, the testimony indicates that the mushrooms imported by Hokto Kinoko from Hokuto Japan were organic products specifically grown for the U.S. market and not the same products imported by Defendant Concord. [Posey Decl., ¶ 3, Ex. B, Ikeda Dep. 72: 4-9.]
Furthermore, Plaintiff asserts that Hokuto Japan and Hokto Kinoko developed special packaging for Hokto Kinoko's use in the U.S. market that used the English language, as compared to Hokuto Japan's normal Japanese language. [Shigeta Decl., ¶ 3.] The English language packaging identified ...