United States District Court, C.D. California
Present: Honorable CHRISTINA A. SNYDER JUDGE
CIVIL MINUTES - GENERAL
(IN CHAMBERS) - DEFENDANT THE SPACE CHARIOT'S MOTION FOR
LEAVE TO FILE THIRD-PARTY COMPLAINT (Dkt. 50, filed February
UL'S MOTION FOR PARTIAL SUMMARY JUDGMENT (Dkt. 50, filed
February 22, 2017)
Court finds this motion appropriate for decision without oral
argument. See Fed. R. Civ. P. 78; C.D. Cal. L.R.
7-15. Accordingly, the hearing date of April 24, 2017 is
vacated, and the matter is hereby taken under submission.
November 3, 2016, plaintiff UL LLC filed this action against
defendants The Space Chariot, Inc., Kevin Walker, Donabelle
Escarez Mortel (aka Donabella Mortel), and John Does 1-10.
Dkt. 1. UL asserts five claims: (1) trademark infringement,
15 U.S.C. § 1114; (2) counterfeit of registered marks,
15 U.S.C. § 1114; (3) unfair competition and false
designation of original and false and misleading
representations, 15 U.S.C. § 1125(a); (4) unfair
competition in violation of California Business and
Professions Code §§ 17200 et seq.; and (5)
false advertising under California Business and Professions
Code §§ 17500 et seq. The gravamen of
UL's complaint is that Space Chariot, Walker, and Mortel
(“defendants”) are using UL marks on various
websites to falsely represent that Space Chariot's
goods-namely, hoverboards-have been certified by UL.
November 3, 2016, UL filed an ex parte application for a
temporary restraining order, seizure order, expedited
discovery, and order to show cause re: preliminary
injunction. Dkts. 4, 7. On the same day, the Court denied
UL's application for a seizure order. Dkt. 12.
November 17, 2016, the Court granted UL's motion for a
temporary restraining order and ordered defendants to show
cause why a preliminary injunction should not be issued. Dkt.
25 (“TRO”). On December 9, 2016, the parties
stipulated to a preliminary injunction. Dkt. 31. Pursuant to
this stipulation, the Court: (1) enjoined defendants from,
inter alia, using UL marks and dispersing personal and
corporate assets; and (2) ordered defendants to, inter alia,
(a) produce all bank statements in their possession or
control, (b) identify all persons affiliated with the domain
names truehoverboard.com, perfecthoverboards.com, and
spacechariotca.com, and identify the nature of the
relationship between defendants and those domain names, and
(c) provide an accounting of any assets having a value
greater than $5, 000 and the location and identify thereof.
Dkt. 33 (“Preliminary Injunction”). On April 10,
the Court granted UL's motion for civil contempt and
sanctions on the grounds that defendants violated portions of
the TRO and the Preliminary Injunction. Dkt. 74.
January 9, 2017, the Court denied Walker and Mortel's
motion to dismiss UL's claims against them. Dkt. 36.
February 22, 2017, Space Chariot filed a motion for leave to
file a third-party complaint against Deep Vapes, Inc. Dkt. 49
(“MTPC”). UL filed an opposition to Space
Chariot's motion on April 3, 2017, dkt. 69
(“Opp'n to MTPC”), and Space Chariot filed a
reply on April 10, 2017, dkt. 73 (“MTPC Reply”).
February 22, 2017, UL filed a motion for partial summary
judgment as to its first and second claims (trademark
infringement and counterfeit of registered marks). Dkt. 50
(“MSJ”). Defendants filed their opposition to
UL's motion on April 3, 2017, dkt. 63 (“Opp'n
to MSJ”), and UL filed its reply on April 10, 2017,
dkt. 71 (“MSJ Reply”).
April 19, 2017, Walker and Mortel filed a notice that they
have filed Chapter 13 Bankruptcy Petitions. Dkt. 79.
Accordingly, this action is stayed as to Walker and Mortel
and this order applies only to Space Chariot.
carefully considered the parties' arguments, the Court
concludes as follows.
following facts are not in dispute unless otherwise noted.
the well-known UL-in-a-circle certification mark
(“Certification Mark”) and variations thereof,
along with the UL Service Mark (collectively, “UL
Marks”). Dkt. 50-2, UL's Statement of Controverted
Facts (“SUF”) at no. 1. The Certification Mark
appears as: UL. Dkt. 6, Declaration of Robert J.
Pollock (“Pollock Decl.”), Ex. B. The Service
Mark appears as: UL. Id. Ex. C. UL has registered
the Certification Mark (U.S. Reg. No. 782, 589; U.S. Reg. No.
2, 391, 140) and the Service Mark (U.S. Reg. No. 4, 201, 014)
with the U.S. Patent and Trademark Office. SUF at no. 3.
UL's federal registrations for the Certification Mark
have reached incontestable status pursuant to 15 U.S.C.
§ 1115(b). SUF at no. 4. UL has the exclusive right to
use the UL marks and authorize customers to use the UL marks.
SUF at no. 6; dkt. 6, Pollock Decl. Exs. A-C.
obtain UL certification and listing in the UL certification
directory, manufacturers submit representative product
samples to UL for evaluation and testing. SUF at no. 7;
Pollock Decl.¶ 19. If representative samples comply with
the applicable safety, performance, or other standard, UL may
authorize the manufacturer to affix the UL Certification Mark
to that product. SUF at nos. 7-8; Pollock Decl. ¶ 20.
Chariot is a California corporation that sold hoverboards and
was founded by Walker, who holds himself out as Space
Chariot's president and chief executive officer. SUF at
no. 11. The parties dispute whether Mortel was an officer of
Space Chariot. See Defs. SMF at 12. Nevertheless, it
not disputed that Mortel stated on her LinkedIn
Account that she was a Vice President of Space Chariot.
See dkt. 5, Ex. D (Mortel's LinkedIn profile);
dkt. 65, Declaration of Donabelle Mortel (“Mortel
Decl.”) ¶ 3. Furthermore, both Walker and Mortel
promoted Space Chariot hoverboards via their personal social
media accounts. SUF at no. 15.
parties dispute when defendants began advertising Space
Chariot's hoverboards as UL certified. See Defs.
SMF at nos. 16-17. Defendants contend they only advertised
their hoverboards as UL certified when Deep Vapes received
its UL 2722 certification in June 2016. Defs. SMF ¶ 16.
However, defendants do not contest or challenge the
authenticity of evidence demonstrating that Space
Chariot's Facebook page advertised their hoverboards as
“safety certified” along with images of the UL
Certification Mark as early as December 2015. Dkt. 50-6, Ex.
17. In addition, on or about January 21, 2016, Kevin
Olive-Investigation Manager for UL-visited the Space Chariot
website, which included the statement “ALL Space
Chariots are UL CE FCC RoHS Safety Certified, ” using
what appears to be the UL Certification Mark. Dkt. 5,
Declaration of Kevin Olive (“Olive Decl.) ¶ 8
& Ex. A. On January 27, 2016, in an email exchange
between Olive and firstname.lastname@example.org, “Steven,
” a “Space Chariot Specialist” stated that
“All our our products are safety certified (ROCH, UL,
etc.)[.]” Olive Decl. Ex. E. On April 8, 2017, the
Space Chariot website stated that “All Space Chariots
are UL, CE, FCC and RoHS safety certified!” Olive Decl.
¶ 19 & Ex. F. Space Chariot continued to use on its
website what appears to be the UL Certification Mark along
with a statement that all of their products were UL certified
on February 6, March 22, and April 19, 2016, and on October
9, 2017. SUF at no. 25; dkt. 50-6, Ex. 19.
first announced its safety standard for hoverboards, UL 2722,
in February 2016 and did not certify any hoverboard product
until May 2016. SUF at nos. 21, 22; dkt. 50-6, Ex. 18;
Pollock Decl. ¶¶ 25. Walker has testified that he
“did know about the certification when it was announced
in February.” See dkt. 50-6, Ex. 15
(“Walker Depo.”) at 53:8-15.
April 26, 2016, UL sent a cease and desist letter to
email@example.com, stating that Space Chariot's use
of the UL Marks was unauthorized and demanding that Space
Chariot stop using any UL Marks. SUF at no. 26; Olive Decl.
¶ 21. On the same day, Walker asked Sally Beauty-a sales
employee for Space Chariot's supplier, JOMO Technology
Ltd. (“JOMO”) and/or Deep Vapes-whether the
supplier was UL certified.SUF at no. 27; dkt. 50-7, Ex. 22.
Beauty responded: “We are applying.” SUF at no.
28; dkt. 50-7, Ex. 22.
17, 2016, the U.S. Consumer Protection Safety Commission
(“CPSC”) sent by email a letter informing
defendants that CPSC staff was “evaluating whether the
self-balancing scooters comply with currently applicable
voluntary standards, including all referenced standards are
requirements contained in UL 2272[.]” Dkt. 50-7, Ex.
23. On the same day, Walker asked Beauty whether JOMO's
hoverboards had been tested and certified by UL yet; Beauty
responded that they had been sent out for testing. SUF at 30;
dkt. 50-7, Ex. 24.
18, 2016, Olive called Space Chariot's customer service
line and spoke with a Space Chariot employee named Ariel.
Olive explained that Space Chariot is not a customer of UL,
UL never conducted any tests on Space Chariot's
hoverboards, and the hoverboards are therefore not
“safety certified” by UL. Olive Decl. ¶ 21.
Olive further explained that defendants were not authorized
to use UL's Certification Mark or to suggest that Space
Chariot hoverboards were certified by UL. Id. Ariel
stated that she was taking notes and would speak to her
manager regarding the phone call. Id.
2, 2016, by text message to Walker, Beauty of JOMO/Deep Vapes
stated: “Good news, we are almost to pass UL
2272.” SUF at ¶ 32; dkt. 50-7, Ex. 25.
6, 2016, Space Chariot added a statement to the news section
of its website asserting that its hoverboards were UL
certified. SUF at no. 33; dkt. 50-7, Ex. 20.
10, 2016, Beauty sent an email to Walker with proof of the UL
2272 certification. Walker Decl. ¶ 13 & Ex. 2. The
certificate of compliance was issued on June 30, 2016. Walker
Decl. Ex. 2 On August 4, 2015, a UL investigator working with
Olive contacted Space Chariot to set up a time to purchase a
hoverboard at Space Chariot's offices. SUF at no. 37;
Olive Decl. ¶ 25. Upon retrieving and reviewing the
hoverboard, it did not include any UL Marks, but it did
include a sticker indicating that the board was made by
“KooWheels, ” which is not a UL customer and is
not authorized by UL to use any UL Marks. Olive Decl. ¶
26 & Ex. K.
August 25, 2016, Walker communicated by text message with
Beauty. SUF at no. 38; dkt. 50-7, Ex. 28. Walker asked Beauty
for the price of non-UL hoverboards and stated:
“You can't keep charging me so much for non UL
2722. I've been paying you $200 each for all as a
friendly gesture even though it was $190[.] I need better
than $190 for non UL 2722[.]” Dkt. 50-7, Ex. 28.
bought two non-UL certified hoverboards from JOMO/Deep Vapes
on October 18, 2016. SUF at no. 40; dkt. 50-7, Ex. 29.
LEAVE TO FILE THIRD-PARTY COMPLAINT