Barcamerica Intern. v. Tyfield Importers, Inc.

• Citation: 289 F.3d 589
• Decision Date: 06 May 2002
• Docket Number: No. 01-15973.,01-15973.
• Parties: BARCAMERICA INTERNATIONAL USA TRUST, a California Trust, Plaintiff-counter-defendant-Appellant, v. TYFIELD IMPORTERS, INC., a corporation; Cantine Leonardo Da Vinci Soc. Coop., a.r.l., an entity of Italy, Defendants-counter-claimants-Appellees, v. George Gino Barca, Third-party-defendant.
• Court: U.S. Court of Appeals — Ninth Circuit

289 F.3d 589

BARCAMERICA INTERNATIONAL USA TRUST, a California Trust, Plaintiff-counter-defendant-Appellant, v. TYFIELD IMPORTERS, INC., a corporation; Cantine Leonardo Da Vinci Soc. Coop., a.r.l., an entity of Italy, Defendants-counter-claimants-Appellees, v. George Gino Barca, Third-party-defendant.

No. 01-15973.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted April 10, 2002.

Filed May 6, 2002.

COPYRIGHT MATERIAL OMITTED

John P. Sutton (argued), San Francisco, CA, for Appellant Barcamerica International USA Trust.

Julius Rabinowitz (argued), Perla M. Kuhn, Hughes, Hubbard & Reed, New York, NY, Thadd A. Blizzard, Weintraub, Genshlea & Sproul, Sacramento, CA, for Appellee Tyfield Importers, Inc. and Appellee Cantine Leonardo Da Vinci Soc. Coop. a.r.l.

Thadd A. Blizzard, Weintraub, Genshlea & Sproul, Sacramento, CA, for Appellee Tyfield Importers, Inc.

John R. Harrison, Jr., Sacramento, CA, for Third-Party Defendant George Gino Barca.

Appeal from the United States District Court for the Eastern District of California; Frank C. Damrell, Jr., District Judge, Presiding, D.C. No. CV-98-00206-FCD.

Before: O'SCANNLAIN and TALLMAN, Circuit Judges, and KING^*, District Judge.

O'SCANNLAIN, Circuit Judge.

We must decide whether a company engaged in "naked licensing" of its trademark, thus resulting in abandonment of the mark and ultimately its cancellation.

I

This case involves a dispute over who may use the "Leonardo Da Vinci" trademark for wines.

A

Barcamerica International USA Trust ("Barcamerica") traces its rights in the Leonardo Da Vinci mark to a February 14, 1984 registration granted by the United States Patent and Trademark Office ("PTO"), on an application filed in 1982.¹ On August 7, 1989, the PTO acknowledged the mark's "incontestability." See 15 U.S.C. § 1115(b). Barcamerica asserts that it has used the mark continuously since the early 1980s. In the district court, it produced invoices evidencing two sales per year for the years 1980 through 1993: one to a former employee and the other to a barter exchange company. Barcamerica further produced invoices evidencing between three and seven sales per year for the years 1994 through 1998. These include sales to the same former employee, two barter exchange companies, and various sales for "cash." The sales volume reflected in the invoices for the years 1980 through 1988 range from 160 to 410 cases of wine per year. Barcamerica also produced sales summaries for the years 1980 through 1996 which reflect significantly higher sales volumes; these summaries do not indicate, however, to whom the wine was sold.

In 1988, Barcamerica entered into a licensing agreement with Renaissance Vineyards ("Renaissance"). Under the agreement, Barcamerica granted Renaissance the nonexclusive right to use the "Da Vinci" mark for five years or 4,000 cases, "whichever comes first," in exchange for $2,500. The agreement contained no quality control provision. In 1989, Barcamerica and Renaissance entered into a second agreement in place of the 1988 agreement. The 1989 agreement granted Renaissance an exclusive license to use the "Da Vinci" mark in the United States for wine products or alcoholic beverages. The 1989 agreement was drafted by Barcamerica's counsel and, like the 1988 agreement, it did not contain a quality control provision.² In fact, the only evidence in the record of any efforts by Barcamerica to exercise "quality control" over Renaissance's wines comprised (1) Barcamerica principal George Gino Barca's testimony that he occasionally, informally tasted of the wine, and (2) Barca's testimony that he relied on the reputation of a "world-famous winemaker" employed by Renaissance at the time the agreements were signed.³ (That winemaker is now deceased, although the record does not indicate when he died.) Nonetheless, Barcamerica contends that Renaissance's use of the mark inures to Barcamerica's benefit. See 15 U.S.C. § 1055.

B

Cantine Leonardo Da Vinci Soc. Coop. a.r.l. ("Cantine"), an entity of Italy, is a wine producer located in Vinci, Italy. Cantine has sold wine products bearing the "Leonardo Da Vinci" tradename since 1972; it selected this name and mark based on the name of its home city, Vinci. Cantine began selling its "Leonardo Da Vinci" wine to importers in the United States in 1979. Since 1996, however, Tyfield Importers, Inc. ("Tyfield") has been the exclusive United States importer and distributor of Cantine wine products bearing the "Leonardo Da Vinci" mark. During the first eighteen months after Tyfield became Cantine's exclusive importer, Cantine sold approximately 55,000 cases of wine products bearing the "Leonardo Da Vinci" mark to Tyfield. During this same period, Tyfield spent between $250,000 and $300,000 advertising and promoting Cantine's products, advertising in USA Today, and such specialty magazines as The Wine Spectator, Wine and Spirits, and Southern Beverage Journal.

Cantine learned of Barcamerica's registration of the "Leonardo Da Vinci" mark in or about 1996, in the course of prosecuting its first trademark application in the United States. Cantine investigated Barcamerica's use of the mark and concluded that Barcamerica was no longer selling any wine products bearing the "Leonardo Da Vinci" mark and had long since abandoned the mark. As a result, in May 1997, Cantine commenced a proceeding in the PTO seeking cancellation of Barcamerica's registration for the mark based on abandonment. Barcamerica responded by filing the instant action on January 30, 1998, and thereafter moved to suspend the proceeding in the PTO. The PTO granted Barcamerica's motion and suspended the cancellation proceeding.

Although Barca has been aware of Cantine's use of the "Leonardo Da Vinci" mark since approximately 1993,⁴ Barcamerica initiated the instant action only after Tyfield and Cantine commenced the proceeding in the PTO. A month after Barcamerica filed the instant action, it moved for a preliminary injunction enjoining Tyfield and Cantine from any further use of the mark. The district court denied the motion, finding, among other things, that "there is a serious question as to whether [Barcamerica] will be able to demonstrate a bona fide use of the Leonardo Da Vinci mark in the ordinary course of trade and overcome [the] claim of abandonment." Barcamerica Int'l U.S.A. Trust v. Tyfield Importers, Inc., No. CV-98-00206-FCD, at 4-5 (E.D. Cal. filed Apr. 13, 2000) (Damrell, J.).

Thereafter, Tyfield and Cantine moved for summary judgment on various grounds. The district court granted the motion, concluding that Barcamerica abandoned the mark through naked licensing. The court further found that, in any event, the suit was barred by laches because Barcamerica knew several years before filing suit that Tyfield and Cantine were using the mark in connection with the sale of wine. This timely appeal followed.

II

Before addressing the merits of this case, we must first deal with a preliminary issue raised by Tyfield and Cantine. By motion, Tyfield and Cantine ask us to strike various of Barcamerica's Excerpts of Record, and also the portions of Barcamerica's opening brief which rely on those excerpts; they also request sanctions. The documents objected to can be roughly separated into three categories: (1) portions of depositions; (2) exhibits to depositions; and (3) other documents, not part of depositions.

A

As Tyfield and Cantine correctly observe, the record on appeal consists of "the original papers and exhibits filed in the district court." Fed. R.App. P. 10(a)(1); see also 9th Cir. R. 10-2. Consequently, "[p]apers not filed with the district court or admitted into evidence by that court are not part of the record on appeal." Kirshner v. Uniden Corp. of Am., 842 F.2d 1074, 1077 (9th Cir.1988). With respect to categories (1) and (2) more specifically, while portions of these depositions and exhibits were filed appended to the motion for summary judgment and the Barcamerica's opposition thereto — and thereby brought to the court's attention — the portions and exhibits objected to were not. Thus, these documents, which were not filed with the district court, are not properly part of the record before us. See Henn v. Nat'l Geographic Soc., 819 F.2d 824, 831 (7th Cir.1987) ("Parties who designate and file parts of a deposition for a district judge's consideration must be aware that the remainder of the deposition is not in the record on appeal.").

B

Barcamerica raises several unavailing arguments in opposition to the motion to strike. Barcamerica relies primarily upon Federal Rule of Civil Procedure 32(a)(4), which provides that "[i]f only part of a deposition is offered in evidence by a party, an adverse party may require the offeror to introduce any other part which ought in fairness to be considered with the part introduced, and any party may introduce any other parts." While this is true, it has nothing to do with determining what is in the record on appeal — Barcamerica admits that these "other parts" were not, in fact, filed. Barcamerica also relies on various Federal Rules of Evidence, most notably Rule 106, which provides that "[w]hen a writing or recorded statement or part thereof is introduced by a party, an adverse party may require the introduction at that time of any other part or any other writing or recorded statement which ought in fairness to be considered contemporaneously with it." Again, this Rule is irrelevant to the question of what is in the record on appeal; it only indicates that Barcamerica could have required the introduction of other parts of statements or writings "at th[e] time" when Tyfield and Cantine introduced parts of the statements or writing, i.e., before the district court. Barcamerica did not do so.

C

At oral argument, Barcamerica asserted that even if documents in category (3) were not part of the record on appeal, at least those in categories (1) and (2) are because the depositions from...