The opinion of the court was delivered by: Dean D. Pregerson United States District Judge
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF'S SECOND MOTION FOR SUMMARY JUDGMENT, OR IN THE ALTERNATIVE, FOR AN ORDER TREATING SPECIFIED FACTS AS ESTABLISHED [Docket No. 71 ]
Presently before the Court is Plaintiff Daniel Henderson's ("Plaintiff") Second Motion for Summary Judgment, or in the Alternative, for an Order Treating Specified Facts as Established ("Motion"). (Docket No. 71.) The Court GRANTS summary judgment in Defendant's favor on the copyright infringement and the senior and continuous user issues. The Court DENIES summary judgment on the laches, trademark cancellation, and trademark counterfeiting issues.
On August 15, 2012, this Court issued its Order Denying Plaintiff's Motion for Summary Judgment ("Order"). (Docket No. 67.) The Order outlines the factual background for this case, which the Court now adopts. (Order at 1:25-5:7.) The basic facts of the case, though, are as follows. Plaintiff has sued Defendants Matthew Lindland ("Lindland") and Team Quest Fight Club ("TQFC") LLC (collectively "Defendants") for trademark infringement, copyright infringement, and unfair competition. (See generally Compl., Docket No. 1.) Defendants have counterclaimed for trademark infringement, false designation of origin, unfair competition, trademark counterfeiting, copyright infringement, deceptive advertising, breach of contract, breach of covenant of good faith and fair dealing, and intentional interference with prospective economic advantage. (See generally Amended Answer and Counterclaims, Docket No. 43.) Plaintiff, his teammate Randy Couture ("Couture"), and Lindland are all mixed martial arts ("MMA") fighters. Plaintiff and Couture came up with the name TQFC in 1999, and the name has since featured prominently in televised fights and even video games depicting Plaintiff. Lindland began to associate with Plaintiff and Couture, and in April 2001 started using the TQFC trademark. Lindland and Couture founded TQFC LLC, an MMA gym in 2002. In 2006 Couture released his rights in TQFC LLC to Lindland. (Decl. of Robert Follis in Supp. of Defs.' Mot. to Dismiss ¶ 9, Ex. F. (filed under seal).) Plaintiff, Lindland, and Couture maintained fairly amicable relations until 2011, when this case was brought.
II. Legal Standard on Summary Judgment
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).
To satisfy its burden at summary judgment, a moving party must produce facts for each element which it has the burden of proof at trial "sufficient for the court to hold that no reasonable trier of fact could find other than for the moving party." Calderone v. United States, 799 F.2d 254, 259 (6th Cir. 1986) (emphasis omitted). A moving party without the burden of persuasion "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., Ltd. v. Fritz Cos., Inc., 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")).
It is not enough for a party opposing summary judgment to "rest on mere allegations or denials of his pleadings." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 259 (1986). Instead, the nonmoving party must go beyond the pleadings to designate specific facts showing that there is a genuine issue for trial. Celotex, 477 U.S. at 325.
At the summary judgment stage, the Court does not make credibility determinations or weigh conflicting evidence, and 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., Ltd. 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., Inc. 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 not set forth in the opposing papers with adequate references so that it could conveniently be found." Id.
As in his first summary judgment motion, Plaintiff asks the Court to find that he was the senior user of the TQFC trademarks, and that he thus has priority. "It is a cardinal principle of federal trademark law that the party who uses the mark first gets priority." One Indus., LLC v. Jim O'Neal Distrib., Inc., 578 F.3d 1154, 1158 (9th Cir. 2009). "It is axiomatic ... that the standard test of ownership is priority of use.... [T]he party claiming ownership must have been the first to actually use the mark in the sale of goods or services." Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1047 (9th Cir.1999) (internal quotation marks omitted).
Plaintiff's first summary judgment motion was procedurally denied because his evidence was not properly authenticated. (Order at 7:22-8:12.) Plaintiff claims to have cured this defect with sworn declarations attesting to the previously challenged evidence's accuracy, and has resubmitted that evidence for this Motion. (See Plaintiff's Memorandum in Support Motion ("Memo.") at 3:20-4:5, Docket No.71.) Since Defendants have not objected to the re-submitted evidence in this Motion, it is hereby accepted. Defendants challenge Plaintiff's priority claim with three arguments. First, Plaintiff merely displayed the marks, and he did not use them in commerce. Second, even if Plaintiff did use them in commerce, he did so in Japan, not in the United States. Third, Defendants argue that they are entitled to laches in any event, because Plaintiff has waited more than a decade to assert his right.
Plaintiff additionally seeks summary adjudication on the issues of Defendant's laches affirmative defense, canceling Defendants' registered trademarks, Defendants' trademark counterfeit counterclaim, ...