Bell v. Harley Davidson Motor Co.

• Decision Date: 03 March 2008
• Docket Number: No. 05CV2151 JLS (BLM).,05CV2151 JLS (BLM).
• Citation: 539 F.Supp.2d 1249
• Court: U.S. District Court — Southern District of California
• Parties: Craig R. BELL, individual d/b/a Destinee' — Eploriums, Plaintiff/Counterdefendant, v. HARLEY DAVIDSON MOTOR COMPANY, et al., Defendants/Counterclaimants.

539 F.Supp.2d 1249

Craig R. BELL, individual d/b/a Destinee' — Eploriums, Plaintiff/Counterdefendant, v. HARLEY DAVIDSON MOTOR COMPANY, et al., Defendants/Counterclaimants.

No. 05CV2151 JLS (BLM).

United States District Court, S.D. California.

March 3, 2008.

COPYRIGHT MATERIAL OMITTED

Craig R. Bell, El Cajon, CA, pro se.

Kristal Danica Ray, Dla Piper US LLP, San Diego, CA, Gina L. Durham, Dla Piper US LLP, Chicago, IL, for Defendants/Counterclaimants.

Jane H. Barrett, Morrison and Foerster, Los Angeles, CA.

ORDER (1) GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT, (2) DENYING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT, and (3) GRANTING JOINT MOTION TO VACATE SCHEDULING ORDER

JANIS L. SAMMARTINO, District Judge.

Presently before the Court are crossmotions for summary judgment by plaintiff Craig R. Bell (Doc. No. 92) and defendants Harley-Davidson Motor Company and D Michigan, Inc. (together, "Harley-Davidson") (Doc. No. 102), along with a joint motion to vacate the Court's prior Scheduling Order and set new pretrial dates (Doc. No. 182). Both plaintiff and defendants seek summary judgment on all seven counts of the complaint. Bell has not established the elements of federal trademark infringement as a matter of law, and the fair use defense bars such a cause of action. All of Bell's remaining claims are either dependent on the cause of action for federal trademark infringement or not cognizable, as a matter of law. Therefore, the Court grants Harley-Davidson's motion and denies Bell's motion.¹ To give the parties adequate time to prepare for trial on Bell's remaining counterclaims,² the Court grants the joint motion to vacate the prior Scheduling Order and sets new pretrial dates.

BACKGROUND

A. Facts

The parties have submitted a joint statement of undisputed material facts ("JSUMF"). Harley-Davidson Motor Company has been in the business of motorcycle manufacturing since 1903 and also offers accessories, apparel, and general merchandise bearing the Harley-Davidson logo. (JSUMF Nos. 1-3.) H-D Michigan, Inc. owns the Harley-Davidson trademarks and licenses them to the Harley-Davidson Motor Company. (Id. No. 3.) Harley-Davidson first used the phrase "ride hard" back in 1988 when "Ride Hard or Stay Home" appeared in one of its advertisements. (Id. No. 11.) The phrase "Hard Ride" first appeared on a Harley-Davidson T-shirt in 1993. (Id. No. 12.) The phrase has subsequently appeared on such merchandise as bumper stickers, caps, headbands, floormats, bandanas, decals, and lighters. (Id. No. 13.) Whenever advertising or merchandise bears the "Ride Hard" phrase, it is also branded with a Harley-Davidson trademark, such as the phrase "Harley-Davidson" or the bar and shield logo. (Id. No. 14.)

In 1994, Bell first began using the phrase "ride hard" on apparel sold through his business, Ride Hard International. (Id. No. 16.) That same year, Bell claimed "ride hard" as a trademark before the Patent and Trademark Office, and obtained three additional federal trademark registrations in 1995 and 1996.³ (Id. Nos. 17-18.) Ride Hard International's sales dropped to almost zero by 1998. (Id. No. 19.) Between 2001 and 2005, Bell sold no products bearing the "ride hard" trademark and had no licensees selling such products. (Id. Nos. 25, 27.) Nonetheless, during this period, Bell submitted statutory affidavits to the PTO that his registered trademarks were in use in commerce in connection with all the goods listed on the registration. (Id. No. 28.) Since 2005, Bell sold two T-shirts and a keychain with the "Ride Hard" trademark for a total of $48.98. (Id. No. 33.) These sales were made through the ridehard.com website, which Bell licenses to a former business partner. (Id. No. 34.)

B. Procedure

Bell filed the complaint in this action on November 21, 2005. (Doc. No. 1.) He enumerated seven causes of action: (1) federal trademark infringement, (2) federal common-law trademark and trade dress infringement, (3) express passing-off, (4) reverse confusion, (5) unauthorized use of mark for enhancement of the commercial value of the user's product, (6) state-law claims for unfair competition and deceptive trade practices, and (7) misappropriation. Bell prayed for a permanent injunction against, inter alia, Harley-Davisdon's further use of the term "Ride Hard," forfeiture of all merchandise and advertising that bear the "Ride Hard" trademark, statutory damages,⁴ and attorneys' fees. The action was originally assigned to the Hon. M. James Lorenz. After Judge Lorenz's Order granting in part and denying in part plaintiffs motion to dismiss the counterclaims and motion for judgment on the pleadings (Doc. No. 50), Harley-Davidson filed its third amended answer and counterclaims on March 19, 2007 (Doc. No. 51).

Harley-Davidson filed its motion for summary judgment on May 15, 2007. (Doc. No. 92.) Bell filed his motion for summary judgment on May 25, 2007. (Doc. No. 102.) Harley-Davidson filed its consolidated opposition and reply on June 8, 2007. (Doc. No. 141.) Bell filed his reply on June 15, 2007. (Doc. No. 142.)

On October 3, 2007, this case was reassigned to the Hon. Janis L. Sammartino. The Court heard oral argument on the cross-motions on January 11, 2008 and then took the matters under submission. On February 22, 2008, while the motions were under submission, the parties filed a joint motion to vacate the pretrial dates set in the Court's prior Scheduling Order because the Court's disposition of the cross-motions for summary judgment "may impact the issues to be addresse[d] at trial[.]" (Doc. No. 182, at 2.)

LEGAL STANDARD

Federal Rule of Civil Procedure 56 empowers the court to enter summary judgment on factually unsupported claims or defenses. Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). A fact is material when, under the substantive governing law, it affects the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir.1997). A "genuine issue" of material fact arises "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248, 106 S.Ct. 2505. "Disputes over irrelevant or unnecessary facts will not preclude a grant of summary judgment." T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir.1987).

The party moving for summary judgment bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323, 106 S.Ct. 2548. When the moving party bears the burden of proof on an issue — whether on a claim for relief or an affirmative defense — the party "must establish beyond peradventure all of the essential elements of the claim or defense to warrant judgment in its favor." Fontenot v. Upjohn Co., 780 F.2d 1190, 1194 (5th Cir.1986); see S. Cal. Gas Co. v. City of Santa Ana, 336 F.3d 885, 889 (9th Cir.2003). And, where the moving party carries its initial burden of production, the nonmoving party cannot "rest upon mere allegation or denials of [the pleadings]." Anderson, 477 U.S. at 256, 106 S.Ct. 2505. Rather, the non-movant must "go beyond the pleadings and by her own affidavits, or by the depositions, answers to interrogatories, and admissions on file, designate specific facts showing that there is a genuine issue for trial." Celotex, 477 U.S. at 324, 106 S.Ct. 2548 (internal quotations omitted); Anderson, 477 U.S. at 256, 106 S.Ct. 2505; Nissan Fire, 210 F.3d at 1103.

When ruling on a summary judgment motion, the court cannot engage in credibility determinations or weighing of the evidence; these are functions for the jury. Anderson, 477 U.S. at 255, 106 S.Ct. 2505. The court must view the evidence in the light most favorable to the nonmoving party, and draw all reasonable inferences in favor of the non-movant. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Gibson v. County of Washoe, Nev., 290 F.3d 1175, 1180 (9th Cir.2002). The court is not required "to scour the record in search of a genuine issue of triable fact," Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir.1996), but rather "may limit its review to the documents submitted for purposes of summary judgment and those parts of the record specifically referenced therein," Carmen v. S.F. Unified Sch. Dist., 237 F.3d 1026, 1030 (9th Cir.2001).

DISCUSSION

A. Bell's Motion

1. Trademark Infringement

The federal trademark statute, the Lanham Act, has two provisions on trademark infringement. Section 32(1) applies to federally registered trademarks and imposes civil liability for us[ing] 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[.]

15 U.S.C. § 1114(1)(a). Section 43(a)(1) provides similar protection to trademarks regardless of registration.⁵ 15 U.S.C. § 1125(a)(1); Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1046 n. 6 (9th Cir.1999). The standard for trademark infringement is essentially identical under both federal and California law. Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir.1991); E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 444 F.Supp.2d 1012, 1049 (C.D.Cal. 2006). "To establish a trademark infringement claim..., [Bell] must establish that [Harley-Davidson] is using a mark confusingly...