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GoPro, Inc. v. 360Heros, Inc.

United States District Court, N.D. California

March 30, 2018

GOPRO, INC., Plaintiff,
360HEROS, INC., Defendant.



         On March 23, 2018, the Court heard argument on plaintiff's motion for summary judgment (Dkt. No. 173), defendant's motion in limine (Dkt. No. 190), and plaintiff's motion for partial terminating sanctions (Dkt. No. 165). Having carefully considered the arguments of the parties and the papers submitted, the Court hereby GRANTS IN PART and DENIES IN PART the motions.

         I. Motion for Summary Judgment

         Plaintiff moves for summary judgment of infringement by 360Heros of plaintiff's HERO mark. Plaintiff alleges four causes of action against 360Heros: federal trademark infringement, federal unfair competition, California unfair competition, and California common law trademark infringement. Dkt. No. 173.

         Summary judgment is proper if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The moving party, however, has no burden to disprove matters on which the non-moving party will have the burden of proof at trial. The moving party need only demonstrate to the Court that there is an absence of evidence to support the non-moving party's case. Id. at 325.

         Once the moving party has met its burden, the burden shifts to the non-moving party to “designate ‘specific facts showing that there is a genuine issue for trial.'” Id. at 324 (quoting then Fed.R.Civ.P. 56(e)). To carry this burden, the non-moving party must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). “The 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).

         In deciding a summary judgment motion, the Court must view the evidence in the light most favorable to the non-moving party and draw all justifiable inferences in its favor. Id. at 255. “Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge . . . ruling on a motion for summary judgment . . . .” Id. However, conclusory, speculative testimony in affidavits and moving papers is insufficient to raise genuine issues of fact and defeat summary judgment. Thornhill Publ'g Co., Inc. v. Gen. Tel. & Elec. Corp., 594 F.2d 730, 738 (9th Cir. 1979). The evidence the parties present must be admissible. Fed.R.Civ.P. 56(c)).

         Plaintiff claims defendant willfully infringed GoPro's HERO mark by using “360Heros” in relation to defendant's products. Plaintiff seeks disgorgement of defendant's profits. Defendant argues plaintiff cannot prove a likelihood of confusion and that plaintiff acquiesced to defendant's use of the mark.[1]

         “The [Lanham] Act allows for civil liability against ‘[a]ny person who, on or in connection with any goods or services, ... uses in commerce any word, term, name, symbol, or device, or any combination thereof ..., which (A) is likely to cause confusion ... as to the origin, sponsorship, or approval' of the goods or services.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002) (citing 15 U.S.C. 1125(a)(1)) (emphasis in original).

         “To prevail on its Lanham Act trademark claim, a plaintiff ‘must prove: (1) that it has a protectable ownership interest in the mark; and (2) that the defendant's use of the mark is likely to cause consumer confusion.'” Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1202 (9th Cir. 2012) (citation omitted). The parties do not dispute plaintiff's protectable ownership interest in the mark. Accordingly, the Court will analyze only the likelihood of confusion.

         “The test for likelihood of confusion is whether a ‘reasonably prudent consumer' in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.” Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998).

         The 9th Circuit has developed eight factors to help determine the likelihood of confusion:

(1) The strength of plaintiff's trademark; (2) the similarity of the marks; (3) the proximity or relatedness of the goods or services; (4) defendant's intent in selecting the mark; (5) evidence of actual confusion; (6) the marketing channels used; (7) the likelihood of expansion of product lines; and, (8) the degree of care consumers are likely to exercise.

AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979). “This multi-factor approach must be applied in a flexible fashion” and should not be used as a “rote checklist.” Rearden, 683 F.3d at 1209. There is no particular number of factors required to be present for summary judgment to be warranted. Entrepreneur, 279 F.3d at 1141. “Although the Sleekcraft test plays an important role in the analysis of whether a likelihood of confusion exists, ...

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