Board of Regents, University of Texas v. Kst Elec., A-06-CA-950 LY.

• Decision Date: 25 February 2008
• Docket Number: No. A-06-CA-950 LY.,A-06-CA-950 LY.
• Citation: 550 F.Supp.2d 657
• Parties: The BOARD OF REGENTS, the UNIVERSITY OF TEXAS SYSTEM, on Behalf of the UNIVERSITY OF TEAS AT AUSTIN v. KST ELECTRIC, LTD.
• Court: U.S. District Court — Western District of Texas

550 F.Supp.2d 657

The BOARD OF REGENTS, the UNIVERSITY OF TEXAS SYSTEM, on Behalf of the UNIVERSITY OF TEAS AT AUSTIN v. KST ELECTRIC, LTD.

No. A-06-CA-950 LY.

United States District Court, W.D. Texas, Austin Division.

February 25, 2008.

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Louis T. Pirkey, Susan J. Hightower, William G. Barber, Pirkey Barber, LLP, Austin, TX, for The Board of Regents, The University of Texas System, on Behalf of the University of Texas at Austin.

Donald Wayne Holcomb, Knolle & Holcomb, Raymond M. Galasso, Galasso and Associates, LP, Austin, TX, for KST Electric, Ltd.

ORDER ON REPORT AND RECOMMENDATION

LEE YEAKEL, District Judge.

Before the Court is the above styled and numbered cause of action. The Court referred Defendant KST Electric, LTD.'s ("KST") Motion For Summary Judgment On Its Affirmative Defenses Of Laches, Estoppel By Laches And Statute Of Limitations filed November 9, 2007 (Clerk's Document No. 37) and KST's Motion For Summary Judgment On UT's Federal Dilution, Trademark Infringement And Unfair Competition Claims filed November 9, 2007 (Clerk's Document No. 38) to the United States Magistrate Judge for a report and recommendation (Clerk's Document No. 34). See 28 U.S.C. § 636(b); Fed.R.Civ.P. 72; Loc. R.W.D. Tex. Appx. C, 1(d). After considering the motions, Plaintiff The Board of Regents, The University of Texas System, On Behalf Of The University Of Texas At Austin's ("UT") responses (Clerk's Document Nos. 39 & 40), UT's reply (Clerk's Document No. 45), the parties' summary-judgment proof, the file, and the applicable law the Magistrate Judge signed his Report and Recommendation on February 5, 2008 (Clerk's Document No. 53). By his Report and Recommendation, the Magistrate Judge recommends that this Court deny KST's motion for summary judgment on its affirmative defenses of laches, estoppel by laches, and statute of limitations, and grant the portion of KST's motion for summary judgment regarding UT's federal trademark dilution claim and deny the remainder of that motion regarding UT's federal trademark infringement and unfair competition claims. The parties received the Report and Recommendation on February 6, 2008 and objections, if any, were due to be filed on or before February 21. See Fed R. Civ. P. 72(b) (within ten days after service of report and recommendation, party may serve and file specific written objections to proposed findings and recommendations).

Rather than file objections, UT filed Plaintiffs Response To Report And Recommendation Of The United States Magistrate Judge on February 19, 2008 (Clerk's Document No. 54). By its response, UT disagrees with the portion of the Report and Recommendation that finds and concludes that marks of college sports teams, and particularly those of UT, are excluded from federal dilution protection because their fame is limited to a "niche" market. See 15 U.S.C. § 1125(c)(2)(A). Nevertheless, UT's response provides that UT does not object to the recommendation that summary judgment be granted in favor of KST on UT's federal trademark-dilution claim because all of the relief UT seeks is available pursuant to other claims that remain for trial in this cause.

A party may serve and file specific written objections to the proposed findings and recommendations of a magistrate judge within ten days after being served with a copy of the report and recommendation, thereby securing a de novo review by the district court. See 28 U.S.C. § 636(b); Fed.R.Civ.P. 72(b). A party's failure to timely file written objections to the proposed findings, conclusions, and recommendations in a report and recommendation bars that party, except upon grounds of plain error, from attacking on appeal the unobjected-to proposed factual findings and legal conclusions accepted by the district court. See Douglass v. United Servs. Auto. Ass'n, 79 F.3d 1415 (5th Cir. 1996) (en banc). The Court, having reviewed the entire record and finding no plain error, will approve and accept the Magistrate Judge's Report and Recommendation.

IT IS ORDERED that the United States Magistrate Judge's Report and Recommendation (Clerk's Document No. 53) filed in this action is hereby APPROVED AND ACCEPTED.

IT IS FURTHER ORDERED that KST's Motion For Summary Judgment On Its Affirmative Defenses Of Laches, Estoppel By Laches And Statute Of Limitations filed November 9, 2007 (Clerk's Document No. 37) is DENIED.

IT IS FURTHER ORDERED that KST's Motion For Summary Judgment On UT's Federal Dilution, Trademark Infringement And Unfair Competition Claims filed November 9, 2007 (Clerk's Document No. 38) is GRANTED IN PART as to UT's federal dilution cause of action and in all other respects is DENIED.

IT IS. FURTHER ORDERED that UT TAKE NOTHING on its federal dilution cause of action.

REPORT AND RECOMMENDATION OF THE UNITED STATES MAGISTRATE JUDGE

ANDREW W. AUSTIN, United States Magistrate Judge.

The Magistrate Court submits this Report and Recommendation to the United States District Court pursuant to 28 U.S.C. § 636(b) and Rule 1 of Appendix C of the Local Court Rules of the United States District Court for the Western District of Texas, Local Rules for the Assignment of Duties to United States Magistrate Judges. Before the Court are Defendant's Motions for Summary Judgment (Clerk's Doc. No. 37 & 38). On November 26, 2007, Judge Yeakel referred all dispositive motions to the Court for a Report and Recommendation.

SUMMARY JUDGMENT STANDARD OF REVIEW

Summary judgment shall be rendered when 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); Celotex Corp. v. Catrett, 477 U.S. 317, 323-25, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Ragas v. Tennessee Gas Pipeline Co., 136 F.3d 455, 458 (5th Cir.1998). A dispute regarding a material fact is "genuine" if the evidence is such that a reasonable jury could return a verdict in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). When ruling on a motion for summary judgment, the court is required to view all inferences drawn from the factual record in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Ragas, 136 F.3d at 458. Further, a court "may not make credibility determinations or weigh the evidence" in ruling on a motion for summary judgment. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000); Anderson, 477 U.S. at 254-55, 106 S.Ct. 2505.

Once the moving party has made an initial showing that there is no evidence to support the nonmoving party's case, the party opposing the motion must come forward with competent summary-judgment evidence of the existence of a genuine fact issue. Matsushita, 475 U.S. at 586, 106 S.Ct. 1348. Mere conclusory allegations are not competent summary-judgment evidence, and thus are insufficient to defeat a motion for summary judgment. Eason v. Thaler, 73 F.3d 1322, 1325 (5th Cir.1996). Unsubstantiated assertions, improbable inferences, and unsupported speculation are not competent summary-judgment evidence. See Forsyth v. Barr, 19 F.3d 1527, 1533 (5th Cir.1994). The party opposing summary judgment is required to identify specific evidence in the record and to articulate the precise manner in which that evidence supports his claim. Ragas, 136 F.3d at 458. Rule 56 does not impose a duty on the court to "sift through the record in search of evidence" to support the nonmovant's opposition to the motion for summary judgment. Id.; see also Skotak v. Tenneco Resins, Inc., 953 F.2d 909, 915-16 & n. 7 (5th Cir.1992). "Only disputes over facts that might affect the outcome of the suit under the governing laws will properly preclude the entry of summary judgment." Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Disputed fact issues which are "irrelevant and unnecessary" will not be considered by a court in ruling on a summary judgment motion. Id. If the nonmoving party fails to make a showing sufficient to establish the existence of an element essential to its case and on which it will bear the burden of proof at trial, summary judgment must be granted. Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548.

BACKGROUND

In this case the University of Texas ("UT") is suing KST Electric ("KST") for a number of state and federal trademark claims,¹ alleging that several logos developed and used by KST infringe on UT's registered trademark that depicts its mascot, a longhorn steer, in silhouette (referred to by UT as its "longhorn silhouette logo" or LSL). See Appendix A (depicting the Longhorn logo).

KST was started by Kenneth and Suanna Tumlinson in 1994. They are avid fans of the University of Texas athletics and have had season tickets to the football games for many years. In 1998, KST designed what the Court will refer to as the Longhorn Lightning Bolt Logo (or "LLB Logo"). The logo's design consists of a longhorn silhouette with a "K" on the left cheek area of the longhorn, an "S" on the right cheek area, a "lightening bolt T" in the face of the silhouette, and the words "ELECTRIC, LTD." in the space between the horns. See Appendix A (depicting LLB Logo).

In March 2002, when UT asserts it learned of the LLB Logo (a date disputed by KST), UT asked KST to cease and desist using that logo. KST refused. Eventually, in December 2006 UT filed suit. KST now moves for summary judgment on a number of affirmative defenses and on the merits of some of UT's claims.

ANALYSIS

KST has filed two motions for summary judgment. The first addresses several affirmative defenses KST has raised, and seeks summary judgment on these defenses: (1) laches; (2) estoppel by laches;...