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Barrio Fiesta, LLC v. Northridge Foods International, Inc.

United States District Court, N.D. California

May 5, 2017

BARRIO FIESTA, LLC, a California Limited Liability Company, Plaintiff,
v.
NORTHRIDGE FOODS INTERNATIONAL, INC. and DOES 1-10, Defendants.

          ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

          JEFFREY S. WHITE UNITED STATES DISTRICT JUDGE

         Now before the Court is the motion for summary judgment filed by Defendant Northridge Foods International Inc. (“Northridge”). Having carefully reviewed the parties' papers, considered their arguments and the relevant legal authority, the Court hereby GRANTS Northridge's motion for summary judgment.

         BACKGROUND

         Plaintiff Barrio Fiesta, Inc. (“Plaintiff”) contends that Northridge infringes upon its trademark. Northridge moves for summary judgment on all of Plaintiff's claims against it. In summary, Plaintiff operates Barrio Fiesta Restaurant in Milpitas, California. Northridge, a California corporation, imports packaged food products with the mark “Barrio Fiesta” for distribution in the United States. Plaintiff's claims for relief are premised upon the allegations of purported infringement of the registered trademark Barrio Fiesta Express and the common law trademark of “Barrio Fiesta.” The Court shall refer to additional facts as necessary in the remainder of this Order.

         ANALYSIS

         A. Legal Standard for Motion for Summary Judgment.

         A principal purpose of the summary judgment procedure is to identify and dispose of factually unsupported claims. Celotex Corp. v. Cattrett, 477 U.S. 317, 323-24 (1986). Summary judgment is proper when the “pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). “In considering a motion for summary judgment, the court may not weigh the evidence or make credibility determinations, and is required to draw all inferences in a light most favorable to the non-moving party.” Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir. 1997).

         The party moving for summary judgment bears the initial burden of identifying those portions of the pleadings, discovery, and affidavits that demonstrate the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323; see also Fed. R. Civ. P. 56(c). An issue of fact is “genuine” only if there is sufficient evidence for a reasonable fact finder to find for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). A fact is “material” if it may affect the outcome of the case. Id. at 248. Once the moving party meets its initial burden, the non-moving party must go beyond the pleadings and, by its own evidence, “set forth specific facts showing that there is a genuine issue for trial.” Fed.R.Civ.P. 56(e).

         In order to make this showing, the non-moving party must “identify with reasonable particularity the evidence that precludes summary judgment.” Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir. 1996) (quoting Richards v. Combined Ins. Co., 55 F.3d 247, 251 (7th Cir. 1995) (stating that it is not a district court's task to “scour the record in search of a genuine issue of triable fact”); see also Fed. R. Civ. P. 56(e). If the non-moving party fails to point to evidence precluding summary judgment, the moving party is entitled to judgment as a matter of law. Celotex, 477 U.S. at 323; Fed.R.Civ.P. 56(e)(3).

         B. Northridge's Motion for Summary Judgment.

         Northridge moves for summary judgment on Plaintiff's trademark infringement and related claims on four discrete grounds: (1) Plaintiff lacks standing because it only possesses a nonexclusive license in the “Barrio Fiesta” trademark at issue; (2) Plaintiff cannot establish priority of use; (3) Plaintiff's claims are barred by the equitable doctrine of laches; and (4) Plaintiff's California and common law trademark and unfair competition claims are dependent upon the federal trademark infringement claims and should be summarily adjudicated. The Court shall address each argument in turn.

         1. Standing.

         As a threshold issue, the Court must determine whether Plaintiff has standing to pursue the claims for trademark infringement and related claims. Standing is “an essential . . . part of the case-or-controversy requirement of Article III.” Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992). Plaintiff bears the burden of proving the existence of standing to sue. See, e.g., United States v. Hays, 515 U.S. 737, 743 (1995). “The statutory property right in a trademark is not simply the right to make or use the trademark, but to do so to the exclusion of others.” Visa U.S.A., Inc. v. First Data Corp., 2005 WL 6271242, *4 (N.D. Cal. Aug. 16, 2005) (citing International Society for Krishna Consciousness of Western Pennsylvania v. Stadium Authority, 479 F.Supp. 792, 797 (W.D. Pa. 1979) (citations omitted)).

         Northridge contends that Plaintiff lacks standing to assert its trademark claims under the Lanham Act for trademark infringement, unfair competition and false designation of origin, because it is a non-exclusive licensee and not the registrant of the subject mark. Plaintiff argues that it has standing to sue because trademark protection extends to an actual registrant's “legal representatives, predecessors, successors and assigns.” (Opp. Br. at 4, citing 15 U.S.C. § 1127.) This Court has previously found that a non-exclusive licensee does not have standing to sue for copyright infringement. See Visa U.S.A., 2005 WL 6271242 at *4 (“[w]here the license is non-exclusive, the licensee does not have standing to bring an infringement action.”). “The determination of whether a licensee has standing to sue under § 1114 depends on the rights granted to the licensee in the licensing agreement. Where the license is non-exclusive the licensee does not have standing to bring an infringement action.” Ultrapure Sys., Inc. v. Ham-let Group, 921 F.Supp. 659, 665 (N.D. Cal. 1996). Prior to the filing of Northridge's motion for summary judgment, the undisputed evidence in the record establishes that ...


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