United States District Court, C.D. California
Oleg Pogrebnoy, Plaintiff, Pro se, Santa Monica, CA.
For Russian Newspaper Distribution Inc., MMAP Inc., Vitaly Matusov, Alexander Ginsburg, Defendants: Mark Rabinovich, LEAD ATTORNEY, Anthony P Malecki, Mark Rabinovich Law Offices, Encino, CA; Steven M Barnhill, LEAD ATTORNEY, Barnhill and Vaynerov LLP, Los Angeles, CA; Maxim Vaynerov, Barnhill and Vaynerov LLP, Beverly Hills, CA; Olga Zalomiy, Law Offices of Olga Zalomiy, Los Angeles, CA.
For Erica Bristol, Mediator (ADR Panel): Erica Bristol, Santa Clarita, CA.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
Percy Anderson, UNITED STATES DISTRICT JUDGE.
This action involves allegations of trademark and trade dress infringement asserted by plaintiff Oleg Pogrebnoy (" Pogrebnoy") against defendants Russian Newspaper Distribution, Inc., MMAP, Inc., Vitaly Matusov (" Matusov"), and Alexander Ginzburg (" Ginzburg") (collectively " Defendants") arising out of the publication of a Russian language newspaper titled " KYPbEP" in Cyrillic and translated by Pogrebnoy as " courier" in English.
Pogrebnoy, appearing pro se, commenced this action on November 9, 2010. In his First Amended Complaint (" FAC"), Pogrebnoy alleged claims for: (1) trademark infringement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) against Defendants; (2) trade dress infringement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) against Defendants; (3) cancellation of a federal trademark registration for " LAKurier.com" pursuant to 15 U.S.C. § 1064 against defendants Russian Newspaper Distribution, Inc. and Ginzburg; and (4) unfair competition against Defendants.
The parties filed cross-motions for summary judgment. In a June 28, 2011 Minute Order, the Court concluded that Pogrebnoy had not provided admissible evidence of the transfer of his asserted intellectual property rights from one of the entities in the purported chain of title to another of the predecessor entities. As a result, the Court concluded that Pogrebnoy lacked standing to pursue his claims and entered Judgment in favor of Defendants. On November 14, 2013, the Ninth Circuit issued a Mandate reversing the entry of Judgment and, among other things, directed the Court " to address alternate theories of standing, including whether Pogrebnoy acquired an ownership interest in the Kurier mark on the basis of an assignment from his wholly-owned company, which had priority of use of the mark over defendants, or whether Pogrebnoy was a nonowner with a cognizable commercial interest in the Kurier mark." Pogrebnoy v. Russian Newspaper Distrib., Inc., 536 F.App'x. 737, 738 (9th Cir. Aug. 5, 2013) (citing Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1225-26 (9th Cir. 2008)).
The Court, sitting without a jury, conducted a bench trial on February 25, 2014, September 2, 2014, and September 3, 2014. The parties submitted trial declarations, the Court took evidence, and allowed for cross-examination of the parties' witnesses. Following the trial, the parties submitted proposed Findings of Fact and Conclusions of Law pursuant to Federal Rule of Civil Procedure 52(a). Defendants also filed a Motion for Judgment on Partial Findings Pursuant to Federal Rule of Civil Procedure 52(c) (Docket No. 179).
Having considered the materials submitted by the parties, observed the witnesses during cross-examination, and after reviewing the evidence, the Court makes the following Findings of Fact and Conclusions of Law pursuant to Federal Rule of Civil Procedure 52(a). Any finding of fact that constitutes a conclusion of law is hereby adopted as a conclusion of law, and any conclusion of law that constitutes a finding of fact is hereby adopted as a finding of fact. Defendants' Motion for Judgment on Partial Findings is denied as moot.
I. FINDINGS OF FACT
1. Pogrebnoy's FAC alleges that his trademark, which is unregistered, " consists of the Russian word 'KYPbEP.'" (FAC ¶ 1.)
2. " KYPbEP" is the Russian equivalent of the English word " courier."
3. Pogrebnoy asserts that he has standing to pursue the claims alleged in the FAC as a result of an assignment from Radony, Inc., a company he controls, that he executed in November 2010.
4. According to Pogrebnoy, Radony, Inc. acquired the intellectual property rights that were assigned to him in November 2010, through a series of assignments between companies either directly or beneficially owned and controlled by him.
5. Pogrebnoy testified that he was the first owner of the intellectual property in 1992 until he transferred his rights to Russian Kurier, Inc., which owned the rights from November 1992 until 1996. Russian Kurier, Inc. transferred the rights in 1996 to Kurier Weekly, Inc. Kurier Weekly, Inc. was apparently owned by Svetlana Yavorsky, although Pogrebnoy claims that he was the " beneficial owner" and Yavorsky was merely the " nominal" owner. According to Pogrebnoy, in 2000, Kurier Weekly, Inc. transferred its rights to VPP, Inc., which owned the rights until 2005 or 2006, when the rights were assumed by RWNY, Inc. RWNY, Inc. then transferred the rights to Radony, Inc. in 2007. Radony, Inc. owned the rights until November 2010, when Pogrebnoy caused Radony, Inc. to transfer the rights to him so that he could pursue this action pro se. Other than the assignment from Radony, Inc. to Pogrebnoy, Pogrebnoy has not admitted into evidence any written document memorializing these transfers. Nor is there any evidence, other than Pogrebnoy's testimony, that these transfers explicitly or implicitly transferred any trademark or trade dress rights.
6. At the time the Court ruled on the parties' cross-motions for summary judgment, Pogrebnoy had stated that the transfer from Kurier Weekly, Inc. to VPP, Inc. was memorialized in a written assignment that was stored at his parents' house located in Ukraine. Although Pogrebnoy's Trial Declaration stated that he " recently traveled to Kiev and conducted due diligent search in his parents' house and was able to locate said agreement, " Pogrebnoy clarified at the February 7, 2014 pretrial conference that his trial declaration was incorrect and that he could not find the assignment from Kurier Weekly, Inc. to VPP, Inc. (Trial Declaration of Oleg Pogrebnoy (" Pogrebnoy Decl.") ¶ 33 (Docket No. 131); February 7, 2014 transcript, 22:20-23:14.)
7. At trial, Pogrebnoy stated that these transfers between companies were undertaken for a variety of purposes, including to avoid judgments, bad publicity from litigation unrelated to the present dispute, and unpaid taxes. No consideration was ever provided for these assignments.
8. According to Pogrebnoy, he began publishing and distributing a Russian language newspaper titled " KYPbEP" in New York in 1992.
9. Pogrebnoy and Matusov agree that their business relationship started in 1994 with Pogrebnoy sending to Matusov copies of the New York version of the KYPbEP newspaper. According to Matusov, he distributed the KYPbEP newspaper in Los Angeles for a period of approximately 12 weeks to test the desirability of launching a Los Angeles version of KYPbEP. Pogrebnoy did not charge Matusov for these copies, and there is no evidence that Pogrebnoy sold advertisements directed at the Los ...