Free Motion for Attorney Fees - District Court of Arizona - Arizona

1 Corp. v. Carrett, 477 U.S. 317, 322 (1986) Plaintiff has not presented evidence sufficient
l 2 to create a genuine issue of fact on whether the design of its gate is famous, inherently
3 distinctive, or has acquired "secondary meaning" within the horse racing industry such that
4 purchasers of the gate associate the design with Plaintiff See Thane Int ’L Inc. v. Trek
5 Bicycle Carp. , 305 F.3d 894, 907-13 (9th Cir. 2002) (affirming summary judgment for Thane
6 on trademark dilution claims because Trek did not present evidence from which a jury could
7 conclude that the trademark "TREK" was famous in the pertinent market); Japan Telecom,
8 Inc. v. Japan Telecom Am., Inc., 287 F.3d 866, 873 (9th Cir. 2002) (affirming summary
9 judgment for the defendant and holding that the plaintiff failed to create an issue of fact
l0 regarding secondary meaning because evidence of actual consumer confusion was “not
ll enough to establish a ‘mental recognition in buyers’ and potential buyers’ minds’ between
12 Japan Telecom’s trade name and a single source") (citation omitted).
1 3 Construed in Plaintiffs favor, the evidence shows that True Center gates and the gates
14 described in the ‘201 and ‘094 Patents are similar, Plaintiff competes in a specialized, close
15 knit community, and the overall appearance of Plaintiffs gate is different than the gate of
16 its chief rival, United—Puett. Opp’n at 1 1-14; Pl.’s SOF 1]‘|] I 1-12. Plaintiff concludes from
17 this evidence that its "gate is well know throughout the horse racing industry? Opp’n at 1 l.
1 8 But Plaintiff has presented no evidence to support the conclusion that the relevant consumers
19 associate the design of the gate with Plaintiff. See Reply at 6, 9; Japan Telecom, 287 F .3d
20 at 873 (listing factors courts should consider in evaluating the sufficiency of evidence of
21 secondary meaning); Int 'l Jensen, Inc. v. Metrosound LISA., Inc., 4 F .3d 819, 824 (9th Cir.
22 1993) ("While evidence of a manufacturer’s sales, advertising and promotional activities may
23 be relevant in determining secondary meaning, the true test of secondary meaning is the
24 effectiveness of this effort to create it.“); First Brands Carp. v. Fred Meyer, Inc., 809 F .2d
25 1387, 1383 (9th Cir. 1987) (affirming the district court’ s finding that the plaintiffs extensive
26 advertising campaign failed to establish a secondary meaning with respect to the trade dress
27 of an antifreeze jug in part because the campaign did not emphasize the color and shape of
28 the jug).
- -
Case 2:02-cv-01109-DGC Document 223-5 Filed 01/17/2006 Page 1 of 3

I Nor has Plaintiff presented evidence sufficient to create a genuine issue of fact that
2 the overall design of its gate is non-functional. See Reply at 7-8; Tie Tech, Inc. v. Kinedyne
3 Carp. , 296 F .3d 778, 785-87 (9th Cir. 2002) (affirming summary judgment for the defendant
. 4 because the overall design ofthe plaintiff s "web cutter" tool was functional); Talking Rain
5 Beverage Ca. v. SZ Beach Beverage Ca., 349 F.3d 601, 603-05 (9th Cir. 2003) (affirming
6 summaryjudgment for to defendant because the plaintiffs bottle design was functional).
7 Construed in Plaintiffs favor, the evidence shows only that the design ofthe overhead truss
I 8 ofthe gate is non—functional and that altemative gate designs are available. Opp’n at l0;
9 SOF 1 l I. As Plaintiff acknowledges, however, the issue is not "‘whether individual
I0 elements of the [gate] fall within the defmition of functional, but . . . whether the whole
l I collection of elements taken together are functional."’ Id. (citation omitted). Plaintiff has
12 presented no evidence that the overall design of its gate is non—functional, and the fact that
I3 alternative designs are available is insufficient to survive summary judgment. See Tie Tech,
14 296 F.3d at 786 (holding that the plaintiffs “evidence of alternative designs fail[ed] to raise
l 5 a material factual issue"); T alkingkain Beverage, 349 F .3d at 603 (holding that the existence
16 of alternative designs does not negate functionality).
17 l The Court will grant summary judgment with respect to the second and third causes
18 of action because there is no genuine issue of material fact that Plaintiff has a protectable
19 trademark or trade dress with respect to its gate.
20 3. The Fourth and Sixth Causes of Action: Breach of Fiduciary Duty.
21 Plaintiff alleges in the fourth and sixth causes of` action that a fiduciary duty was owed
22 to Plaintiff by O’Connor and Donald Kammerzell. 2nd Supp. Compl. 1l1[ 73, 86.
23 "A fiduciary relationship is a confidential relationship whose attributes include ‘great
24 intimacy, disclosure of secrets, or intrusting of power.’ In a fiduciary relationship, the
25 fiduciary holds ‘superiority of position’ over the beneficiary? Standard Chartered PLC v.
26 Price Waterhouse, 945 P.2d 317, 335 (Ariz. Ct. App. 1997) (citations and alteration omitted).
27 “Mere trust in another’s competence or integrity does not suffice; ‘peculiar reliance in the
28 trustworthiness of another’ is required? Id. (citation omitted).
I - ll -
Case 2:02-cv-01109-DGC Document 223-5 Filed O1/17/2006 Page 2 of 3

l Plaintiff contends thata fiduciary relationship existed between Plaintiff and O’Connor
2 because he lived in a trailer on Plaintiffs property, used its telephone, and primarily worked
3 on its projects. Opp’n at 3. Plaintiff contends that a fiduciary relationship existed between
4 Plaintiff and Kammerzell because Plaintiff operated out of K-Zell’s premises, K-Zell
5 provided bookkeeping services to Plaintiff, and Kammerzell essentially functioned as an
6 employee of Plaintiff rather than as an independent contractor. Opp’n at 20; SOF {1] 20-28.
7 Plaintiff notes that the fiduciary relationship determination is generally an issue of fact for
8 the jury. Id. at 19 (citing Taeger v. Catholic Family & Cmty. Servs., 995 P.2d 721, 1] l2
9 (Ariz. Ct. App. 1999)).
10 When the evidence is insufficient to support a finding of a fiduciary relationship,
1 1 however, "the trial court has a duty to decide the issue as a matter of law." Taeger, 995 P.2d
12 1] l2 (citation and alteration omitted). Constming the evidence in Plaintiff s favor, the Court
l3 finds that it is insufficient as a matter of law because it does not show that Defendants had
14 a "superiority of position" over Plaintiff or that Plaintiff had more than a mere trust in
15 Defendants’ competence and integrity. See Standard Chartered, 945 P.2d at 335-37 (holding
16 that auditing firm did not owe banks a fiduciary duty as a matter of law because the
l7 plaintiffs evidence merely established that the banks relied on the firm’s competency and
l8 integrity as an independent auditor); Rhoads v. Harvey Publ Qg, Inc., 700 P.2d 840, 846-48
19 (Ariz. Ct. App. 1985) (holding that no fiduciary relationship existed between a cartoonist and
20 his publisher as a matter of law in part because "[a]ny superiority of position [was] no
2l different than that which would exist between any master and servant or employer-
22 employee"); Klinger v. Hummel, 464 P.2d 676, 679 (Ariz. Ct. App. 1970) (holding that no
9 23 fiduciary relationship existed between the parties even though they had known each other for
24 a long time and were friends and the defendant was experienced in real estate transactions
25 while the plaintiffs were not). The Court will grant summary judgment with respect to the
26 fourth and sixth causes of action.
27 4. The Fifth Cause of Action: Conspiracy.
28 Plaintiff alleges in the fifth cause of action that O’C0mror and Donald Kammeizell
- 12 .
Case 2:02-cv-01109-DGC Document 223-5 Filed O1/17/2006 Page 3 of 3

Case 2:02-cv-01109-DGC

Document 223-5

Filed 01/17/2006

Page 1 of 3

Case 2:02-cv-01109-DGC

Document 223-5

Filed 01/17/2006

Page 2 of 3

Case 2:02-cv-01109-DGC

Document 223-5

Filed 01/17/2006

Page 3 of 3