The opinion of the court was delivered by: Dean D. Pregerson United States District Judge
ORDER DENYING IN PART AND GRANTING IN PART PLAINTIFF'S MOTION FOR 1. SUMMARY JUDGMENT, OR ALTERNATIVELY, SUMMARY ADJUDICATION ON XEN, INC'S COMPLAINT, AND 2. SUMMARY JUDGMENT, OR ALTERNATIVELY, SUMMARY ADJUDICATION ON CITRIX SYSTEMS INC.'S COUNTERCLAIMS [Docket No. 30 ]
Presently before the court is Xen, Inc.'s ("Plaintiff") Motion for Summary Judgment or, in the alternative, for Partial Summary Adjudication. The court DENIES summary judgment on Citrix Systems, Inc.'s ("Defendant") counterclaims of trademark infringement, unfair competition, and false designation of origin. Plaintiff's declaratory relief counts related thereto are also DENIED. The court GRANTS Plaintiff's motion for summary judgment on Defendant's counterclaims for dilution and cybersquatting. Plaintiff's declaratory relief counts related thereto are also GRANTED.
Plaintiff operates xen.com, a social networking website that allows users to "select interests, pick their level of interest, and browse through interests of other users" on matters such as television shows and restaurants. (Statement of Genuine Disputes ("SGD") ¶¶ 2, 12 (filed under seal). The website was launched in 2009. Id. ¶ 9. Plaintiff has invested at least $8,800,000 in its products and services under the Xen mark. (Id. at ¶ 14.) It is disputed how many people use xen.com, and whether the website is only available to individuals selected to test it. Id. at ¶¶ 14,16. Plaintiff's "Xen" mark is not registered.
Defendant is the owner of a number of marks that include the word "XEN" (e.g. "XEN SOURCE," "XENCENTER," "XENDESKTOP," "XEN SUMMIT," and "XENMOTION"), including two marks that contain "XEN" as its sole word. (Gates Decl. Ex. A.) Defendant, however, is not the only entity with a registered trademark that features this word. (SGD ¶ 54 (filed under seal).) Virtualization is the technology behind Citrix's XEN products. (See Wasson Decl. ¶ 19(filed under seal)); (SGD ¶ 19(filed under seal).) Virtualization software allegedly "allows one physical computer to operate as multiple 'virtual' computers-- and even lets them run multiple virtual desktops on a single laptop." (See Wasson ¶ 6 (filed under seal).) It allegedly also powers cloud computing resources. (SGD ¶ 21 (filed under seal).) Defendant sells products under the XEN name, some costing several thousand dollars. (SGD ¶ 25 (filed under seal).) Defendant is also the owner of xen.org, which allows users to download various free products. (SGD ¶ 26 (filed under seal).) Defendant uses both its XEN and Citrix marks in marketing its XEN products. (SGD ¶ 28 (filed under seal).) Allegedly, every day 100 million people worldwide sign onto Defendant's XENAPP and XENDESKTOP to access their employers' work spaces, and Defendant allegedly receives one billion dollars in yearly revenue from sales of XEN branded products. (Wasson Decl. ¶¶ 14, 25 (filed under seal).)
Summary judgment shall be granted when a movant "shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(a). In other words, summary judgment should be entered "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Parth v. Pomona Valley Hosp. Med. Ctr., 630 F.3d 794, 798-99 (9th Cir. 2010)(internal quotation marks omitted).
A moving party without the burden of persuasion at trial "must either produce evidence negating an essential element of the nonmoving party's claim or defense or show that the nonmoving party does not have enough evidence of an essential element to carry its ultimate burden of persuasion at trial." Nissan Fire & Marine Ins. Co., v. Fritz Cos., 210 F.3d 1099, 1102 (9th Cir. 2000); see also Devereaux v. Abbey, 263 F.3d 1070, 1076 (9th Cir. 2001) (en banc) ("When the nonmoving party has the burden of proof at trial, the moving party need only point out 'that there is an absence of evidence to support the nonmoving party's case.'") (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986), and citing Fairbank v. Wunderman Cato Johnson, 212 F.3d 528, 532 (9th Cir. 2000) (holding that the Celotex "showing" can be made by "pointing out through argument--the absence of evidence to support plaintiff's claim")).
If the party moving for summary judgment meets its initial burden of identifying for the court the portions of the materials on file that it believes demonstrate the absence of any genuine issue of material fact, the nonmoving party may not rely on the mere allegations in the pleadings in order to preclude summary judgment[,but instead] must set forth, by affidavit or as otherwise provided in Rule 56, specific facts showing that there is a genuine issue for trial.
T.W. Elec. Serv., v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987) (internal citations, quotation marks, and emphasis omitted).
At the summary judgment stage, the court does not make credibility determinations or weigh conflicting evidence, and it views all evidence and draws all inferences in the light most favorable to the non-moving party. See id. at 630-31 (citing Matsushita Elec. Indus. Co., v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)); see also Hrdlicka v. Reniff, 631 F.3d 1044 (9th Cir. 2011); Miranda v. City of Cornelius, 429 F.3d 858, 860 n.1 (9th Cir. 2005). Speculative testimony in affidavits and motion papers is insufficient to raise genuine issues of fact and defeat summary judgment. Thornhill Publ'g Co., v. GTE Corp., 594 F.2d 730, 738 (9th Cir. 1979). As the Supreme Court has stated, "[t]he mere existence of a scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could reasonably find for the [non-moving party]." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).
It is not the court's task "to scour the record in search of a genuine issue of triable fact." Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir. 1996). Counsel has an obligation to lay out their support clearly. Carmen v. San Francisco Unified Sch. Dist., 237 F.3d 1026, 1031 (9th Cir. 2001). The court "need not examine the entire file for evidence establishing a genuine issue of fact, where the evidence is ...