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

l the tendencyto deceive a substantial segment of its audience; 33) the dec tion
2 llcléilfllllzJflséiilliillslllélllallsilllliiifril.ic’£‘rl‘i*é?$"rrimci$E‘23al§ ll};
plaintiff has been or is likely to be injured as a result of the false statement.,
3 either b direct diversion of sales from itself to defendant or by lessening the
4 goodwill associated with its products.
5 Southland Sod Farms v. StoverSeed Co., 108 F.3d 1 134, 1139 (9th Cir. 1997); see 15 U.S.C.
6 § ll25(a)(l)(B). "To demonstrate falsity within the meaning of the Lanham Act, [the]
7 plaintiff may show that the statement was literally false, either on its face or by necessary
8 implication, or that the statement was literally true but likely to mislead or contirse
9 consumers? Id.
10 Defendants argue that the false advertising claim fails as a matter of law because
l I l any "advertising" was not commercial, false, or material and did not cause any damages.
12 Mot. at 3-6. Plaintiff asserts that the statement "at issue is that [Defendants] ge the
I3 originators of what is actually the modem [True Center] gate, and that Sonoran sells that
14 gate.” Opp’n at 8 (emphasis in original). Plaintiff contends that Defendants made that
I5 statement to a potential customer based on a "spec sheet" that O’Connor used to solicit
16 business from the Portland Meadows track. Id.; P1.’s SOF1[ 6, Ex. B.
17 The spec sheet contains only a design for a Sonoran gate and does not state that
18 Defendants are the originators of a True Center gate. See Pl.’s SOF Ex. B; see also Ex. A
19 (Kammerzell Dep. 604-05:8- 19); Ex. C (O‘Cormor Dep. 213- 17:1 I-8). Plaintiffs claim that
20 the spec sheet makes such a statement of fact is based on a comparison between the patents
2] at issue and True Center gates: "It is obvious from a comparison of the drawings contained
22 in the ‘201 Patent and the ‘094 Patent . . . with prior [True Center] gates . . . that
23 [D]efendants Kammerzell and O’Connor are claiming that they are the inventors and
24 originators of those gates." Opp’n at 6.
25 False advertising claims under the Lanham Act, however, must be based on actual
26 statements of fact, not similarities between products and patents. See 15 U.S.C.
27 § Il25(a)(1)(B); Rice lv. Fox Broad. Co., 330 F.3d 1170, 1180-82 (reversing denial of
i 28 summary judgment for the defendant on a false advertising claim and stating that to prove
- 7 -
Case 2:02-cv-01109-DGC Document 223-4 Filed O1/17/2006 Page 1 of 3

l such a claim the plaintiff must show that the defendant “made false statements of fact about
2 its own product or another product") (emphasis added); Coastal Abstract Serv., Inc.,
3 173 F.3d 725, 735 (9th Cir. 1999) ("Liability under the relevant provision ofthe Lanham Act
4 requires . . . a ‘false or misleading representation. of fact.’”) (quoting 1 5 U.S.C. § 1 l25(a)(l);
5 emphasis in original). The Court will grant the motions for summary judgment with respect
6 to the first cause of action because Plaintiff has presented no evidence that Defendants made
7 a faisc statement of fact. See id.; Reply at 5.
8 2. A The Second and Third Causes of Action: Trademark Dilution and
9 Infringement.
10 Plaintiffs second cause of action is a trademark dilution claim under Lanham Act
ll § 43, 15 U.S.C. § ll25(c). 2nd Supp. Compl. 111] 58-65. Plaintiff alleges that the "Truc
12 Center Gate" trademark has become famous and Defendants have diluted the mark by
13 “marketing, promoting, selling or leasing racing starting gates while claiming responsibility
14 for design and fabrication of recent True Center gates[.]" Id. 111] 59-60. Plaintiffs third
15 cause of action is a common law trademark infringement claim. ld. 1]1] 66-71. Plaintiff
16 alleges that it has acquired common law rights to the True Center Gate mark and that
17 Defendants are infringing the mark by using it without authorization and in a misleading
18 manner that is likely to deceive the public. Id. 111] 67-69.
19 As discussed above, Plaintiff has presented no evidence that Defendants have
20 claimed in a commercial setting that they are the originators of a True Center gate. Nor has
21 Plaintiff presented any evidence that Defendants are making commercial use of the
22 True Center Gate mark. See Reply at 8. Indeed, Plaintiff concedes that the True Center Gate
23 mark is no longer at issue. Opp’n at 9.
24 Plaintiff claims that the new “issue at hand is confined to [True Center’s] gate."
25 Ia'. at 9. Defendants argue in reply that Plaintiff" s gate is not a protectable trademark as a
26 matter of law because a trademark is a word, name, symbol, or device that is distinctive of
27 a person’s goods or services and there is no evidence that consumers of horse race starting
28 gates associate any particular gate design with Plaintiff. Mot. at 7-8,113 (citing 15 U.S.C. §
. g -
Case 2:02-cv-01109-DGC Document 223-4 Filed O1/17/2006 Page 2 of 3

I l 1 127; Restatement (Third) of Unfair Competition; Commercial Sav. Bank v. Hawkeye Fed.
2 Sav. Bank, 592 N.W.2d 321, 327 (Iowa 1999)); see Reply at 3, 6. Defendants further argue
3 that Plaintiff s gate is functional as a matter of law and Plaintiff has presented no evidence
4 that Defendants have diluted or infringed any trademark. Mot. at 8-15; Reply at 7-9.
5 Rather than citing legal authority and evidence showing that its gate constitutes a
_ 6 protectable trademark, Plaintiff attempts to convert its trademark claim into a trade dress
7 claim. Id at 9-15. A trademark involves a particular word, phrase, symbol, or device while
8 "trade dress involves ‘the total image of a product and may include features such as size,
9 shape, color or color combination, texture, graphics, or even particular sales techniques."’
l0 Mattel, Inc. v. Waling Mountain Prods., 353 F .3d 792, 806 nn.l3-14 (9th Cir. 2003)
11 (analyzing trademark and trade dress claims separately) (citation omitted); compare Avery
12 Dennison Corp. v. Sumpton, 189 F.3d 868, 874 (9th Cir. 1999) ("'1`rademark protection is
13 ‘the law’s recognition ofthe psychological function of symbols"’); with Clicks Billiards, Inc.
I4 v. Szlrshoorers, Inc., 25l F .3d 1252, 1258 (9th Cir. 2001) ("Trade dress refers to the total
15 image, design, and appearance of a product"); see also Stephen W Boney, Inc. v. Boney
I6 Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997) (remanding case to the district court
17 “[b]ecause the parties did not fully and discretely brief the trademark claim, appropriately
18* distinguishing it from the trade name and trade dress claims"). Plaintiffs second and third
l9 causes of action are clearly trademark claims based on the "'l`rue Center Gate" phrase, not
20 trade dress claims based on the overall design of a True Center gate. See 2nd Supp. Compl.
21 at 1, {[1] 58-71. For the reasons asserted by Defendants and because Plaintiff has effectively
22 abandoned its trademark claims in favor of non-pleaded trade dress claims, summary
23 judgment on Plaintiffs trademark claims is appropriate.
24 Moreover, even if Plaintiff' s second and third causes of action could somehow be read
25 . as trade dress claims, summary judgment would be appropriate. "Rule 56(c) mandates the
26 entry of summary judgment, alter adequate time for discovery and upon motion, against a
27 party who fai ls to make a showing sufficient to establish the existence of an element essential
28 to that party's case, and on which that party will bear the burden of proof at trial." Celotex
. g .
Case 2:02-cv-01109-DGC Document 223-4 Filed O1/17/2006 Page 3 of 3

Case 2:02-cv-01109-DGC

Document 223-4

Filed 01/17/2006

Page 1 of 3

Case 2:02-cv-01109-DGC

Document 223-4

Filed 01/17/2006

Page 2 of 3

Case 2:02-cv-01109-DGC

Document 223-4

Filed 01/17/2006

Page 3 of 3