Bluetooth Sig, Inc. v. FCA US LLC

Decision Date29 May 2020
Docket NumberCase No. 2:18-cv-01493-RAJ
Citation463 F.Supp.3d 1169
Parties BLUETOOTH SIG, INC., a Delaware corporation, Plaintiff, v. FCA US LLC, a Delaware limited liability company, Defendant.
CourtU.S. District Court — Western District of Washington

Honieh Udenka, Pro Hac Vice, Brown Rudnick LLP, Irvine, CA, Peter Willsey, Pro Hac Vice, Vincent J. Badolato, Pro Hac Vice, Brown Rudnick LLP, Shane M. Rumbaugh, Pro Hac Vice, Susan P. Christoff, Pro Hac Vice, Cooley LLP, Washington, DC, Stephanie Calnan, Pro Hac Vice, Brown Rudnick LLP, Boston, MA, Jeffrey Lombard, Christopher B. Durbin, Cooley LLP, Seattle, WA, for Plaintiff.

Charles H. Hooker, III, Pro Hac Vice, Erica Chanin, Pro Hac Vice, Judith Powell, Pro Hac Vice, Kilpatrick Townsend & Stockton LLP, Atlanta, GA, William M. Bryner, Pro Hac Vice, Kilpatrick Townsend & Stockton LLP, Winston-Salem, NC, Christopher Theodore Varas, Kilpatrick Townsend & Stockton LLP, Seattle, WA, for Defendant.

ORDER

Richard A. Jones, United States District Judge

I. INTRODUCTION

Before the Court are three motions. Having considered the submissions of the parties, the relevant portions of the record, and the applicable law, the Court finds that oral argument is unnecessary. For the reasons below, Plaintiff's Motion to Exclude the Expert Report and Testimony of Hal Poret (Dkt. # 59) is DENIED ; Plaintiff's Motion for Summary Judgment, or in the Alternative, Partial Summary Judgment (Dkt. # 155) is GRANTED in part and DENIED in part ; and Defendant's Motion to Dismiss on the Ground of Forum Non Conveniens and Motion for Summary Judgment or, in the Alternative, to Strike Jury Demand (Dkt. # 150) is DENIED .

II. BACKGROUND

Bluetooth wireless technology enables electronic devices to connect with one another. See Dkt. # 155 at 8-9. Today, billions of Bluetooth-branded devices fill the market. Id. Plaintiff Bluetooth SIG, Inc. ("Bluetooth" or the "Bluetooth SIG") owns various trademarks associated with this technology. Id. Three marks are at issue here: (1) the "BLUETOOTH word mark" (BLUETOOTH, U.S. Reg. No. 2,909,356); (2) the "BLUETOOTH & B Design Mark" (, U.S. Reg. No. 2,911,905); and (3) the "B Design Mark" (, U.S. Reg. No. 3,389,311). Id. ; Dkt. # 1 at 5-7. Collectively, the three marks are referred to as the "Bluetooth Marks." As a nonprofit nonstock corporation and owner of the marks, Bluetooth has three purposes: "(1) to develop BLUETOOTH® wireless technology by facilitating collaboration among its members to create new and enhanced technology specifications; (2) to drive the interoperability of BLUETOOTH-enabled devices through a product qualification program that incorporates certain trademark, copyright and patent licenses; and (3) to promote BLUETOOTH wireless technology and the brand." Dkt. # 155 at 8-9.

Defendant FCA US LLC ("FCA") is an automotive manufacturer that sells vehicles under the Fiat, Chrysler, Dodge, Jeep, and Ram brands. Dkt. # 150 at 7. Many of FCA's vehicles are equipped with "Bluetooth-enabled radio head units." Id. at 8. These head units may be paired with other Bluetooth-enabled devices, such as smart phones. Dkt. # 164 at 2. Some of FCA's Bluetooth-fitted vehicles feature its "Uconnect" infotainment platform, which allows users to "find vehicles, start cars, search for points of interest, navigate directions, access Wi-Fi, and receive notices of vehicle health and reports." Dkt. # 53 ¶¶ 36-37. To advertise the Uconnect system, FCA uses the Bluetooth Marks on its website and on its in-vehicle displays. Dkt. # 53 ¶ 41.

As the owner of the marks, Bluetooth often grants licenses to other companies, so long as they satisfy several requirements. Dkt. # 155 at 9. They must first become a member of the Bluetooth SIG and execute certain membership agreements, including the Bluetooth Trademark License Agreement. Id. They must also use the marks in association with products that have been properly qualified and declared under the Bluetooth Qualification Process ("BQP"). Id.

Relevant here is how Bluetooth issues licenses for head units. Like other automotive manufacturers, FCA obtains head units from third party suppliers. Dkt. # 150 at 8. These suppliers develop and manufacture the head units specifically for FCA vehicles. Id. As Bluetooth members, the suppliers test the head units according to the BQP, report the results to Bluetooth, and then receive a Qualified Design ID number and a Declaration ID number. Id. ; Dkt. # 1 ¶¶ 31-32. During this process, the suppliers incur administrative fees. Dkt. # 150 at 8. After the units have been declared, the suppliers distribute them to FCA for installation. Id. at 7.

Bluetooth asserts that, to use its marks, automotive manufacturers must also join the Bluetooth SIG and must also certify and list their end products. Dkt. # 155 at 10. FCA is not a Bluetooth member and has never filed declarations (Dkt. # 150 at 16 n.11) and as such, Bluetooth says, FCA is "freerid[ing] on the value and recognition" of the Bluetooth Marks (Dkt. # 155 at 10). FCA argues, however, that it is free to use the marks because the third party suppliers have already qualified and declared the head units and already paid the administrative fees. Dkt. # 150 at 9-11. Requiring automotive manufacturers to qualify and declare the head units again, FCA believes, would result in multiple fees for the same unit. Id.

Against this backdrop, Bluetooth sued FCA for trademark infringement, asserting seven causes of action. Dkt. # 1. FCA answered and counterclaimed, contending that the underlying Bluetooth Marks should be cancelled and that FCA's uses are nominative and fair (among other equitable defenses). Dkt. # 53. Both parties moved for summary judgment. Dkt. ## 150, 155. Relevant to the cross motions for summary judgment are three of Bluetooth's federal claims (trademark infringement, counterfeiting, and dilution); six of FCA's affirmative defenses (acquiescence, waiver, laches, abandonment, nominative fair use, and the first sale doctrine); and two of FCA's counterclaims (cancellation for trademark abandonment and cancellation for engaging in the production or marketing of goods or services to which a certification mark is applied). Id. Both parties also moved to exclude the other's experts. Dkt. ## 57, 59, 151, 152.

Before this Court are the partiescross motions for summary judgment and Bluetooth's Motion to Exclude the Expert Report and Testimony of Hal Poret. Dkt. ## 59, 150, 155.

III. LEGAL STANDARD

Summary judgment is appropriate if there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Where the moving party will have the burden of proof at trial, it must affirmatively demonstrate that no reasonable trier of fact could find other than for the moving party. Soremekun v. Thrifty Payless, Inc. , 509 F.3d 978, 984 (9th Cir. 2007). On an issue where the nonmoving party will bear the burden of proof at trial, the moving party can prevail merely by pointing out to the district court that there is an absence of evidence to support the non-moving party's case. Celotex Corp. , 477 U.S. at 325, 106 S.Ct. 2548. If the moving party meets the initial burden, the opposing party must set forth specific facts showing that there is a genuine issue of fact for trial to defeat the motion. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The court must view the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in that party's favor. Reeves v. Sanderson Plumbing Prods. , 530 U.S. 133, 150-51, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).

However, the court need not, and will not, "scour the record in search of a genuine issue of triable fact." Keenan v. Allan , 91 F.3d 1275, 1279 (9th Cir. 1996) ; see also White v. McDonnell Douglas Corp. , 904 F.2d 456, 458 (8th Cir. 1990) (the court need not "speculate on which portion of the record the nonmoving party relies, nor is it obliged to wade through and search the entire record for some specific facts that might support the nonmoving party's claim"). The opposing party must present significant and probative evidence to support its claim or defense. Intel Corp. v. Hartford Accident & Indem. Co. , 952 F.2d 1551, 1558 (9th Cir. 1991). Uncorroborated allegations and "self-serving testimony" will not create a genuine issue of material fact. Villiarimo v. Aloha Island Air, Inc. , 281 F.3d 1054, 1061 (9th Cir. 2002) ; T.W. Elec. Serv. v. Pac Elec. Contractors Ass'n , 809 F. 2d 626, 630 (9th Cir. 1987).

IV. DISCUSSION
A. Bluetooth's Motion to Exclude Hal Poret's Survey, Report, and Testimony

In opposing Bluetooth's motion for summary judgment, FCA relies on a consumer survey conducted by its expert, Hal Poret. According to the survey, 82% of consumers believe that "Bluetooth" is a generic term. Dkt. # 94 at 8-9. FCA uses this evidence to argue, among other things, that Bluetooth's marks have become generic and are subject to cancellation. Dkt. # 172 at 11-12. Bluetooth moves to exclude that survey, an accompanying report, and Mr. Poret's testimony. Dkt. # 59.

Mr. Poret conducted a "Teflon survey," named after the survey employed in E. I. DuPont de Nemours & Co. v. Yoshida Int'l, Inc. , 393 F. Supp. 502 (E.D.N.Y. 1975). Dkt. # 94 at 6. The survey teaches respondents the difference between brand names and common names, tests the respondents to ensure they understand the distinction, and then asks them to identify from a list of names which ones are brand names and which are common names. Id. In that list, are a trademark owner's mark (the test term) and other terms (the control terms). Id. at 7. Mr. Poret did just that here, asking survey respondents to identify brand names and common names between...

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