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 THIRD MOTION FOR SUMMARY JUDGMENT AND DEFENDANT'S MOTION FOR SUMMARY JUDGMENT [DOCKET NOS. 83 AND 85]
Plaintiff Daniel Henderson has sued Defendants Matthew Lindland and Team Quest Fight Club, LLC ("TQFC"), for five claims:
(1) common law trademark infringement under Lanham Act § 43(a); (2) copyright infringement under 17 U.S.C. §§ 101, et seq.; (3) federal unfair competition under Lanham Act § 43(a); (4) common law unfair competition; and (5) California Unfair Competition under California Business & Professions Code § 17200. (See generally Compl., Docket No. 1.) Defendants have counterclaimed for (1) federal trademark infringement under Lanham Act § 32(1); (2) federal trademark infringement, false designation of origin, passing off, and unfair competition under Lanham Act § 43(a)(1)(A); (3) federal trademark counterfeiting under Lanham Act §§ 32(1)(a) and 34(d); (4) statutory unfair competition under California Business & Professions Code § 17200; (5) deceptive advertising under California Business & Professions Code § 17500; (6) common law trademark infringement, unfair competition, and misappropriation; (7) common law breach of contract; (8) common law covenant of good faith and fair dealing; (9) intentional interference with prospective economic advantage; and (10) copyright infringement.*fn1
(See generally Amended Answer and Counterclaims, Docket No. 43.)
Presently before the Court is (1) Plaintiff's Third Motion for Summary Judgment, or in the alternative, for an order treating specified facts as established, and (2) Defendants' Motion for Summary Judgment on Various Counts and Defenses. The facts of the case are familiar to the parties, and the Court has outlined them before. (Docket Nos. 67, 80.) Plaintiff, Daniel Henderson is a professional Mixed Martial Arts (MMA) fighter, who has started MMA gyms. The Court previously summarily adjudicated that he is the senior and continuous user of the Team Quest mark, that he owns the mark, and that he has priority in the mark. (Docket Nos. 80, 100.) Lindland is a retired MMA fighter. Before Henderson started any MMA gyms, Lindland founded one, TQFC, which is also a Defendant. Henderson and Lindland were once friends. Their relationship soured in 2011, shortly before Henderson brought this suit. Both have used Team Quest marks in their MMA-related services for over a decade. These marks are at the heart of this case.
The Court GRANTS summary judgment in favor of Plaintiff on the following of his claims: trademark infringement under Lanham Act § 43(a), common law unfair competition, unfair competition under California Business & Professions Code § 17200, and trademark cancellation. The Court GRANTS summary judgment in Defendants' favor on the laches issue. The Court DENIES Summary Judgment on Defendants' first through fourth counterclaims, and notes that these claims have been abandoned. All other claims and counterclaims have, likewise, been abandoned.
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 on each element for 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., 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., 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 not set forth in the opposing papers with adequate references so that it could conveniently be found." Id.
A. Plaintiff's Trademark Infringement Claims are Entitled to Summary Judgment Plaintiff has filed for summary judgment on his trademark infringement claims. Plaintiff's Complaint makes clear that its common law infringement claim is under section 43(a) of the Lanham Act, and his Motion indicates that his unfair competition claim under that section is really an infringement claim: "Thus in suing under § 43(a) for infringement . . ." (Compl. at 9:1-3; Docket No. 85 at 16:9). Plaintiff also moves for summary judgment under common law unfair competition and statutory unfair competition. Courts "jointly analyze" trademark infringement and statutory and common law unfair competition claims. Wecosign, Inc. v. IFG Holdings, Inc., 845 F. Supp. 2d 1072, 1079 (C.D. Cal. 2012). They do so because the Ninth Circuit "has consistently held that state common law claims of unfair competition and actions pursuant to California Business and Professions Code § 17200 are 'substantially congruent'~to claims made under the Lanham Act." Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994) (citation omitted).
"Section 43(a)(1) [of the Lanham Act] provides similar protection to trademarks regardless of registration." Bell v. Harley Davidson Motor Co., 539 F. Supp. 2d 1249, 1254 (S.D. Cal. 2008) (citing Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1046 n.6 (9th Cir. 1999)). "To establish a trademark infringement claim . . ., [Plaintiff] must establish that [Defendant] is using a mark confusingly similar to a valid, protectable trademark of [Plaintiff's]." Brookfield Commc'ns, 174 F.3d at 1046. "To show that he has a protectable trademark interest, Plaintiff must have been the first to use the mark in the sale of goods or services." Guichard v. Universal City Studios, LLLP, No. C 06-6392 JSW, 2007 WL 1750216, at *2 (N.D. Cal. June 15, 2007) aff'd sub nom. Guichard v. Universal City Studios LLLP, 261 F. App'x 15 (9th Cir. 2007). This Court has already decided Plaintiff is the senior and continuous user of the Team Quest mark. (Docket No. 80.)*fn2 Accordingly, the Court now moves to the likelihood of confusion analysis.
1. Likelihood of Confusion
The factors for determining likelihood of confusion are:
2. proximity of the goods;