United States District Court, N.D. California
ORDER DENYING PLAINTIFF'S MOTION FOR SUMMARY
JUDGMENT; DENYING DEFENDANT'S MOTION IN LIMINE; AND
GRANTING PLAINTIFF'S MOTION FOR SANCTIONS RE: DKT. NOS.
165, 173, 190
ILLSTON, UNITED STATES DISTRICT JUDGE.
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.
Motion for Summary Judgment
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.
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
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
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)).
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.
[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).
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.
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.
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,