Aecom Energy & Constr., Inc. v. Ripley

• Decision Date: 08 November 2018
• Docket Number: CV 17-5398-RSWL-SSx
• Citation: 348 F.Supp.3d 1038
• Court: U.S. District Court — Central District of California
• Parties: AECOM ENERGY & CONSTRUCTION, INC., Plaintiff, v. John RIPLEY; Todd Hale; Gary Topolewski; Henry Blum ; Bud Zukaloff; "Morrison Knudsen Corporation;" "Morrison-Knudsen Company, Inc.;" "Morrison-Knudsen Services, Inc.;" and "Morrison-Knudsen International Inc.," Defendants.

348 F.Supp.3d 1038

AECOM ENERGY & CONSTRUCTION, INC., Plaintiff,

v.John RIPLEY; Todd Hale; Gary Topolewski; Henry Blum ; Bud Zukaloff; "Morrison Knudsen Corporation;" "Morrison-Knudsen Company, Inc.;" "Morrison-Knudsen Services, Inc.;" and "Morrison-Knudsen International Inc.," Defendants.

CV 17-5398-RSWL-SSx

United States District Court, C.D. California.

Signed November 8, 2018

Yungmoon Chang, Diana M. Torres, Kirkland and Ellis LLP, Los Angeles, CA, for Plaintiff.

Dariush G. Adli, Drew Harris Sherman, Joshua H. Eichenstein, Adli Law Group PC, John G. Jahrmarkt, Jahrmarkt and Associates, Los Angeles, CA, for Defendants.

ORDER re: Plaintiff's Motion for Summary Judgment and for Permanent Injunction against Defendants Gary Topolewski; Morrison Knudsen Corporation; Morrison-Knudsen Company, Inc.; Morrison-Knudsen Services, Inc.; and Morrison-Knudsen International Inc. [157]

HONORABLE RONALD S.W. LEW, Senior U.S. District Judge

Currently before the Court is Plaintiff AECOM Energy & Construction, Inc.'s ("Plaintiff") Motion for Summary Judgment and Permanent Injunction [157] ("Motion"). Having reviewed all papers submitted pertaining to this Motion, the Court NOW FINDS AND RULES AS FOLLOWS: the Court GRANTS Plaintiff's Motion against Defendants Gary Topolewski, Morrison Knudsen Corporation, Morrison-Knudsen Company, Inc., Morrison-Knudsen Services, Inc., and Morrison-Knudsen International Inc.

I. BACKGROUND

A. Factual Background

1. Plaintiff's Corporate History

Morrison Knudsen Corporation ("MK") was a renowned multinational construction and engineering firm responsible for many notable projects, including the Hoover Dam, the San Francisco-Oakland Bay Bridge, and the Trans-Alaska Pipeline. Pl.'s Statement of Uncontroverted Facts ("Pl.'s SUF") ¶ 3(b), ECF No. 173. MK has used many trademarks including: "MORRISON KNUDSEN," the MKO logo, and "MKCO MORRISON KNUDSEN" (collectively, the "MK Marks"). Id. ¶ 17(b). Plaintiff maintained trademark registrations for the MK Marks until February 2016, id. ¶ 17(b)-(c), and continues to use MK's logo and corporate history in many of its current promotional materials. Id. ¶ 17 (listing exemplars); Decl. of Charles Szurgot ("Szurgot Decl.") ¶ 8, Exs. 1-7, ECF No. 175.

In 1996, MK merged with Washington Construction Group, Inc. ("WGI"), while continuing to operate under the name "Morrison Knudsen Corporation." Szurgot Decl. ¶ 5. In 2000, MK changed its name to WGI. Id. In 2007, URS Corp. ("URS") acquired WGI, and in 2014, AECOM, the parent company of Plaintiff AECOM Energy & Construction, Inc., acquired URS and its subsidiaries. Id. ¶¶ 6-7.

2. Defendants' Use of MK Name

Plaintiff alleges that, beginning in 2008, Defendants Gary Topolewski, Morrison Knudsen Corporation, Morrison-Knudsen Company, Inc., Morrison-Knudsen Services, Inc., and Morrison-Knudsen International Inc., (collectively, the "Defendants"), undertook an elaborate scheme to pass themselves off as MK and take advantage of MK's good reputation. Pl's. Mem. re Mot. for Summ. J. ("Mot.") 4:8-9, ECF No. 172.

a. "Morrison-Knudsen Services, Inc."

Morrison-Knudsen Services, Inc. was an affiliate of MK incorporated in Nevada in 1982 under a different name, but changed its name to Morrison-Knudsen Services, Inc. in 1983. Decl. of Diana M. Torres ("Torres Decl.") ¶ 19, ECF No. 174; id., Ex. Q, Corporate Records of Morrison-Knudsen Services, Inc. 947-52, 954-55, ECF No. 174-17. In 2002, MK dissolved Morrison-Knudsen Services, Inc. through its Vice President and General Counsel. Id., Ex. Q at 987-89.

In 2008, defaulting Defendant Todd Hale¹ filed a Certificate of Revival with the Nevada Secretary of State's office for Morrison-Knudsen Services, Inc., swearing under penalty of perjury that he had authority to do so from the company's board of directors. Id., Ex. Q at 990-93, ECF No. 174-17. The Certificate of Revival lists defaulting Defendant Henry Blum as Vice President and defaulting Defendant John Ripley as Secretary. Id., Ex. Q at 991. In 2008, Hale filed the annual list of officers and directors listing Morrison-Knudsen Services' address as 2049 Century Park East, Suite 3850, Los Angeles, California 90067. Id., Ex. Q at 996. Around 2007 or 2008, Blum contacted Defendant Topolewski about reviving "Morrison Knudsen." Torres Decl. Ex. B, at 25:19-26:9, 27:5-6. Defendant Topolewski was later listed as President and Secretary in 2010; Chairman in 2011; Chairman, Director, and President in 2014; Secretary and Director in 2016; and President, Secretary, and Director in 2017. Id., Ex. Q, at 996-1005.

b. "Morrison Knudsen Corporation"

MK incorporated Morrison Knudsen of Viet Nam ("MK Viet Nam") in 1996 and dissolved it in 2002. Torres Decl. ¶ 20, Ex. R, Corporate Records of Morrison Knudsen Corp. 1019-21, 1029-30, ECF No. 174-18. In October 2014, Defendants Topolewski and Blum filed a Certificate of Revival with the Nevada Secretary of State, seeking to reinstate MK Viet Nam and declaring, under penalty of perjury, that they had authority to do so from MK Viet Nam's board of directors. Id. at 1033-35. The Certificate of Revival listed Defendant Topolewski as President, Secretary, and Treasurer; defaulting Defendant Blum as Vice President; and defaulting Defendants Ripley and Hale as Directors. Id. The address for each was listed as 2049 Century Park East, Suite 3850, Los Angeles, California 90067. Id. at 1033.

Later that month, after MK Viet Nam was revived, Defendant Topolewski filed a Certificate of Amendment with the Nevada Secretary of State to change the name of MK Viet Nam to "Morrison Knudsen Corporation." Id. at 1036. The annual list of officers filed on January 27, 2016 reflects the name change. Id. at 1037.

c. "Morrison-Knudsen International Inc." and "Morrison-Knudsen Company"

Plaintiff also alleges the names of two unrelated entities, E Planet Communications, Inc. ("E Planet") and Westland Petroleum Corporation ("Westland"), were changed to make them appear to be MK affiliates. Pl.'s Mot. at 4:28-5:7.

First, E Planet was incorporated in Nevada in 2011. Torres Decl. ¶ 21, Ex. S, Corporate Records of Morrison-Knudsen Int'l Inc. 1050, ECF No. 174-19. As of 2012, the company's records listed Defendant Topolewski as E Planet's President and Secretary. Id. In May 2016, defaulting Defendant Zukaloff filed a Certificate of Amendment with the Nevada Secretary of State to change the name of E Planet Communications, Inc. to "Morrison-Knudsen International Inc." Id. at 1065.

Second, Westland was incorporated in Nevada in 1926 and fell out of good standing in 2013. Torres Decl. ¶ 22, Ex. T, Corporate Records for Morrison-Knudsen Company, Inc., 1068-74, 1087-88, ECF No. 174-20. In October 2016, John Anderson, listed as Vice President of Westland, filed a Certificate of Reinstatement for Westland with the Nevada Secretary of State. Torres Decl. in Supp. Prelim. Inj. Ex. 4, 150-152, ECF No. 19-4. The records listed Westland Petroleum's address as 2049 Century Park East, Suite 3850, Los Angeles, California 90067. Id. at 151. The Nevada Secretary of State granted reinstatement sometime that month, and on October 18, 2016, defaulting Defendant Ripley filed a Certificate of Amendment with the Nevada Secretary of State to change Westland's name to "Morrison-Knudsen Company, Inc." Id.

d. Websites and Press Releases

On March 25, 2008, Defendant Morrison Knudsen Corporation registered the domain names www.morrison-knudsen.com and www.morrison-knudsen.net. Torres Decl. ¶¶ 9-10; id. Exs. E-F, Whois Record. The website contained promotions of MK's history, current AECOM projects, a current business relationship AECOM has with a construction equipment maker, and the website also offered to sell construction equipment used in MK's projects. See Pl.'s SUF ¶ 2(b),(f), ¶ 4(a)-(b),(k)-(n).

"Morrison Knudsen" issued three press releases claiming original MK projects and announcing: (1) on March 16, 2016, "Morrison Knudsen Awarded $570 Million Environmental Clean Up Project"; (2) on June 30, 2016, "Morrison Knudsen Awarded $36 Million Mine Engineering Contract"; and (3) on April 11, 2017, "Morrison Knudsen awarded $1.2 Billion Construction and Engineering Contract". Torres Decl. ¶¶ 16-18, Exs. N-P, ECF Nos. 174-14, 174-15, 174-16.

3. Take Over of the MK Marks

On November 10, 2014, defaulting Defendant Hale submitted a "change of address" form to the United States Patent and Trademark Office ("USPTO"). Decl. of Annette Bottaro-Walklet ("Walklet Decl.") ¶ 6, ECF No. 14; id. Ex. F., ECF No. 14-1. The contact information listed in the USPTO records for two of Plaintiff's registered trademarks ("MORRISON KNUDSEN" and "MKCO MORRISON KNUDSEN") was changed from Plaintiff's addresses, to Hale's email address todd.hale@morrison-knudsen.com, and the physical address of 2049 Century Park East, Suite 3850, Los Angeles, California 90067. See Torres Decl. ¶ 23, Ex. U, USPTO Record, ECF No. 174-21.

On November 11, 2015, defaulting Defendant Zukaloff submitted a document to the USPTO purporting to assign the registered trademark "MKCO MORRISON KNUDSEN" from Washington Group International (a previous name of Plaintiff) to Defendant Morrison Knudsen Corporation, listed at 2049 Century Park East, Suite 3850, Los Angeles, California 90067. Id. ¶ 24, Ex. V, USPTO Record, ECF No. 174-22. On March 26, 2016, Defendant Morrison Knudsen Corporation filed a new application with the USPTO to register the mark "MORRISON KNUDSEN," declaring under penalty of perjury that they owned the mark and claiming a first-use date of April 18, 1933. See id. Ex. W, ECF No. 174-23.

B. Procedural Background

Plaintiff filed its Complaint [1] on July 21, 2017, alleging the following claims:

1) False Designation of Origin

2) False Advertising

3) Cyberpiracy

4) California Common Law Unfair Competition

5) California Statutory Unfair Competition

6) California Statutory False Advertising

7) Petition for Cancellation of Registered Mark

Plaintiff filed a Motion for Preliminary Injunction [11] on August 1, 2017. This Court granted Plaintiff'...