American Registry of Radiologic Tech. v. Garza

• Decision Date: 13 March 2007
• Docket Number: No. Civ.A. B-05-287.,Civ.A. B-05-287.
• Citation: 512 F.Supp.2d 902
• Parties: AMERICAN REGISTRY OF RADIOLOGIC TECHNOLOGISTS, Plaintiff, v. Manuel O. GARZA, Defendant.
• Court: U.S. District Court — Southern District of Texas

512 F.Supp.2d 902

AMERICAN REGISTRY OF RADIOLOGIC TECHNOLOGISTS, Plaintiff, v. Manuel O. GARZA, Defendant.

No. Civ.A. B-05-287.

United States District Court, S.D. Texas, Brownsville Division.

March 13, 2007.

Charles John Rogers, Conley Rose, P.C., Houston, TX, James K. Langdon, II, Sheri L. Jerde, Dorsey & Whitney LLP, Minneapolis, MN, for Plaintiff.

OPINION & ORDER

HILDA G. TAGLE, District Judge.

BE IT REMEMBERED that on March 13, 2007, the Court DENIED Plaintiff American Registry of Radiologic Technologists' Rule 59(e) Motion to Amend Judgment. Dkt. No. 16.

I. Background

Plaintiff, the American Registry of Radiologic Technologists ("ARRT"), first filed its complaint against Defendant, Manuel O. Garza, on November 8, 2005. Dkt. No. 1. The factual background giving rise to this complaint can be found in the Court's Opinion & Order of May 12, 2006 and is hereby incorporated by reference in this Opinion. Dkt. No. 13.

Plaintiff served Defendant with process on November 22, 2005. Dkt. No. 9. Defendant never answered or otherwise appeared in this action. As a result, ARRT moved for default judgment against Defendant on January 24, 2006. Dkt. No. 10. Pursuant to Federal Rule of Civil Procedure 55(a), the Court Clerk entered default against Defendant on January 27, 2006. Dkt. No. 11. ARRT then proceeded to move for default judgment on March 15, 2006. Dkt. No. 12.

On May 12, 2006, the Court granted in part and denied in part Plaintiffs motion for default judgment. Dkt. No. 13. Default judgment was granted on Plaintiffs claims under 15 U.S.C. § 1125, but it was denied on Plaintiffs claims under 15 U.S.C. § 1114. Id. Final judgment was entered in this case on May 15, 2006. Dkt. No. 15.

ARRT objected to the Court's denial of its claims under 15 U.S.C. § 1114 by filing the motion sub judice on May 30, 2006. Dkt. No. 16. In this motion, Plaintiff "seeks a clarification of the law[] and an amendment of the Court's Opinion & Order" of May 12, 2006. Id. at 1. Specifically, Plaintiff moves the Court, pursuant to Federal Rule of Civil Procedure 59(e), to reconsider its holding which denied Plaintiffs motion for default judgment pursuant to 15 U.S.C. § 1114. Id. Plaintiff reasserts its contention that Defendant violated this statutory provision, and it provides additional support and authority for its position. Id. at 1, 4-7,

II. Standard

Motions under Rule 59(e) "call[] into question the correctness of a judgment." Templet v. HydroChem Inc., 367 F.3d 473, 478 (5th Cir.2004) (quoting In re Transtexas Gas Corp., 303 F.3d 571, 581 (5th Cir.2002)). In making the determination of whether to reconsider its judgment, a court must balance two opposing needs: the need for finality of litigation and the need to render just decisions based upon all of the facts. Templet, 367 F.3d at 478; Mata v. Cameron County, Texas, No. C.A. B-04-92, 2005 WL 2146078, *1 (S.D.Tex. Sept.2, 2005). However, once a judgment has been entered, reconsideration of that judgment is "an extraordinary remedy that should be used sparingly." Templet, 367 F.3d at 478; Maki, 2005 WL 2146078, at *1.

To prevail upon a Rule 59(e) motion, the movant must establish the existence of an appropriate basis for reconsideration. See Mata, 2005 WL 2146078, at *1. The two most prevalent bases are a need "to correct manifest errors of law or fact" and the discovery of new or previously unavailable evidence. Templet, 367 F.3d at 479; Mata, 2005 WL 2146078, at *1. Additionally, reconsideration may be appropriate if it is "necessary in order to prevent manifest injustice" or if there has been "an intervening change in controlling law." Mata, 2005 WL 2146078, at *1. If the movant fails to establish any of these factors, a motion to alter or amend should be denied. Id. Even if the movant successfully proves that one of these factors exists, the Court has considerable discretion to determine whether reconsideration of its judgment is warranted. See Templet, 367 F.3d at 479; Mata, 2005 WL 2146078, at *1.

III. Analysis

Plaintiff argues in its motion that Defendant committed trademark infringement pursuant to 15 U.S.C. § 1114 when he displayed an ARRT certification card, containing ARRT's trademark, to potential employers after his certification was revoked. Dkt. No. 16, at 3-4, 6-7. As support for this argument, Plaintiff primarily relies on two cases: General Electric Co. v. Speicher, 877 F.2d 531 (7th Cir.1989) and Westinghouse Electric Corp. v. General Circuit Breaker & Electric Supply, Inc., 106 F.3d 894 (9th Cir.1997) [hereinafter "Westinghouse"]. Id. at 4-6. The Court will therefore begin its analysis by considering these and other, similar cases.

As will be seen, however, Plaintiffs proffered precedents do not provide a palatable basis for this Court to reverse its previous decision. Therefore, the Court will also consider the language of and congressional intent behind sections 32 and 43 of the Lanham Act.¹ Next, the Court will apply 15 U.S.C. § 1114(1)(a), as interpreted, to Defendant's conduct. Finally, the Court will discuss how other courts have been engaging in judicial activism by interpreting 15 U.S.C. § 1114 to achieve goals that the courts consider desirable, even though the language of the statute will not support the interpretations attributed to it.

A. The Language of the Statute

Prior to engaging in a meaningful discussion of the statute, the language of the statute must be provided. The text of section 1114(1)(a) states:

Any person who shall, without the consent of the registrant —

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; ...

shall be liable in a civil action by the registrant for the remedies hereinafter provided.

15 U.S.C. § 1114(1)(a).

B. Plaintiff's Precedent

Plaintiff argues that "[w]hen Defendant Garza's conduct is viewed in light of cases involving [facts analogous to this case], it is clear that his conduct does violate 15 U.S.C. § 1114(a)." Dkt. No. 16, at 4. In support of this argument, Plaintiff specifically points to, and discusses, Speicher and Westinghouse. Id. at 4-6. Based on these cases, Plaintiff avers:

Defendant Garza was not offering an ARRT "product" or service. Instead, he offered his own services as a radiological technologist but had, figuratively speaking, packaged his services with ARRT's Mark [sic]. The likelihood of consumer confusion in such a circumstance is extremely high, indeed practically inevitable. By using an actual ARRT card (with the ARRT Mark [sic] ), a potential employer is almost certain to presume that !his services are endorsed by ARRT.

Id. at 6-7. Thus, ARRT concludes that, because consumer confusion is likely to result, Defendant's conduct violates section 1114. Id. at 7.

1. General Electric Co. v. Speicher

The first case Plaintiff analogizes this case to is General Electric Co. v. Speicher, 877 F.2d 531 (7th Cir.1989). In that case, General Electric Co. ("G.E.") sued the defendant and his company for violations of 15 U.S.C. § 1114 and unfair competition. See Gen. Elec. Co. v. Speicher, 676 F.Supp. 1421, 1424 (N.D.Ind.1988), rev'd, 877 F.2d 531 (7th Cir.1989). The subject matter of the case involved carbide inserts. Speicher, 877 F.2d at 532-33. G.E. was the sole manufacturer of a grade 570 insert. Id. at 533. Speicher, however, sold his own inserts as a substitute for G.E.'s 570 inserts. Id. Initially, Speicher shipped his products in generic white boxes, but he eventually switched to boxes containing G.E.'s trademark on the sides. Speicher, 676 F.Supp. at 1425. The G.E. boxes were original boxes that had previously been utilized by G.E. Speicher, 877 F.2d at 534. G.E. alleged that this conduct, selling substitute products in boxes marked with the G.E. trademark, violated § 1114. Speicher, 676 F.Supp. at 1428.

The district court disagreed with G.E.'s arguments. Id. According to the district court, the use of "actual G.E. boxes" with "genuine mark[s]" on them did not constitute a violation of § 1114. Id. The Court did, however, find that the defendant had infringed G.E.'s trademark, but under § 1125(a), not § 1114.² Id. at 1428-29; see also Gen. Elec. Co. v. Speicher, 681 F.Supp. 1337, 1343-44 (N.D.Ind.1988), rev'd, 877 F.2d 531 (7th Cir.1989).

On appeal, the Seventh Circuit reversed the district court's decision. Speicher, 877 F.2d at 538. The appellate court reasoned that, although the G.E. trademark on the side of each of the boxes was "not a counterfeit in the literal sense;" the literal sense was not the "correct one." Id. at 534. According to the court, the purpose of § 1114 "is broader [than just the proscription of counterfeiting]: to prohibit the use of your trademark on someone else's product without your authorization." Id. Thus, the court could

see no difference, so far as the objectives of section 1114(1)(a) are concerned, between [putting one's good in boxes marked with someone else's genuine trademark] and making a reproduction of GE's trademark. The happenstance of having trademarks made by the owner in one's possession, so that one doesn't have to copy them, has no relevance to the purposes of the statute. Indeed, the danger of confusion is even greater because the "imitation" is not merely colorable, but perfect. The more fundamental point is that the purpose of trademark law is not to guarantee genuine trademarks but to guarantee that every item sold under a trademark is the genuine trademarked product, and not a substitute.

Id. Finally, the court stated that "it is a detail whether the trademark was stolen from the manufacturer or merely copied." Id. at 535.

Although this Court recognizes that a decision from the Seventh Circuit Court of Appeals generally carries substantial precedential authority, ...