Chrysler Corp. v. Vanzant, ED CV 94-0049 RT (CTx).
| Decision Date | 06 April 1999 |
| Docket Number | No. ED CV 94-0049 RT (CTx).,ED CV 94-0049 RT (CTx). |
| Citation | 44 F.Supp.2d 1062 |
| Court | U.S. District Court — Central District of California |
| Parties | CHRYSLER CORPORATION, a Delaware Corporation, Plaintiff, v. Ted L. VANZANT, an Individual, d/b/a/ Country Craft, Defendant. |
David W. Quinto, Quinn Emanuel Urquhart Oliver and Hedges, L.L.P., Los Angeles, California, Richard P. Vitek, Harness, Dickey & Pierce, P.L.C., Troy, Michigan, for plaintiff/counter-defendant.
Ted L. Vanzant, Norco, California, in pro per.
PROCEEDINGS: ORDER (1) GRANTING VANZANT'S MOTION FOR SUMMARY JUDGMENT ON COUNTS I AND II OF CHRYSLER'S COMPLAINT, AND ON THAT PORTION OF COUNT III WHICH STATES A CLAIM FOR STATE UNFAIR COMPETITION; AND (2) DENYING CHRYSLER'S MOTION FOR SUMMARY ADJUDICATION OF THE ISSUE OF ITS GRILLE DESIGN'S NON-FUNCTIONALITY.
Currently before the Court are two motions for summary judgment, one filed by plaintiff and one filed by defendant. The Court has read and considered plaintiff and defendant's moving papers, defendant and plaintiff's opposition, and plaintiff and defendant's reply papers. Based on such consideration, the Court concludes as follows:
I.
Since 1992, plaintiff Chrysler Corporation ("Chrysler") and defendant Ted L. Vanzant ("Vanzant") have been embroiled in this litigation. The primary basis of this litigation is Chrysler's assertion that Vanzant has infringed its trademark rights in a Jeep grille design by manufacturing and selling form-fitting grille screens and overlays that mimic the grille design.
Chrysler originally filed its complaint against Vanzant in the United States District Court for the Eastern Division of Michigan on September 4, 1992. Vanzant, however, successfully moved that court to dismiss Chrysler's suit for improper venue. On January 15, 1993, Chrysler re-filed its complaint in the Southern Division of the United States District Court for the Central District of California from which the case was later transferred to the Central District's Eastern Division. The complaint sets forth claims for (1) infringement of a registered mark in violation of the Lanham Act, 15 U.S.C. § 1114(1) ("Count 1"); (2) unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a)(1) ("Count II"); and (3) unfair competition and trademark dilution in violation of California law ("Count III").
While the case was in the Southern Division, Chrysler filed a motion for summary judgment on its infringement and dilution claims which the court granted on June 28, 1993. Vanzant appealed, and in an unpublished opinion, the United States Court of Appeals for the Ninth Circuit ("Ninth Circuit") reversed.
The Ninth Circuit held that Chrysler was not entitled to summary judgment on the evidence submitted in support of its motion. Specifically, the court concluded that Chrysler's trademark registration in the Jeep grille design affords it no presumption of trademark protectability in this case because the registrations only cover use of the grille design on "land vehicles" whereas Vanzant is using the design to make grille screens and overlays. The court also stated that to succeed on its trademark infringement claims, Chrysler had to prove affirmatively under the "related goods rule" the protectability of its grille design in the grille screen and overlay market as well as infringement. Because Chrysler had submitted no evidence that would support the protectability of its grille design in the grille screen and overlay market besides its trademark registrations, the court held that Chrysler was not entitled to summary judgment. It therefore reversed the district court's order granting Chrysler summary judgment.
Vanzant now seeks summary judgment on Counts I and II and a portion of Count III of Chrysler's complaint. He contends that Chrysler cannot meet its burden of proving that the Jeep grille design had attained secondary meaning in the grille screen and overlay market prior to January 15, 1990, the date by which he began selling his screens and overlays. Chrysler contests this assertion.
Chrysler also has moved this Court for summary adjudication of the issue of its grille design's non-functionality. Chrysler contends that because there are at least two other ways to build grille screens for Jeeps, its grille design is non-functional as a matter of law when used to manufacture grille screens or overlays. Vanzant disputes this contention.
II.
Chrysler is a manufacture of automobiles and automobile accessories. One of these automobiles is the Jeep sports utility vehicle ("Jeep"). Chrysler and its predecessors in interest (collectively, "Chrysler") have manufactured and sold Jeeps for more than 30 years. During that time Chrysler registered as trademarks at least two Jeep grille designs for use on "land vehicles" (i.e., automobiles). Chrysler registered the first mark, numbered 1, 170,088, (the "088 mark") in 1981. Chrysler registered the second mark, numbered 1,433,760, (the "760 mark") in 1987. The 760 mark attained incontestability status in 1992, and Chrysler has sold hundreds of thousands of Jeep vehicles incorporating the 760 mark since 1986.
The two grille designs are similar in appearance. Both are flat pieces of metal, substantially trapezoidal, with holes left open for a pair of headlights and a smaller pair of fog lights, situated below the headlights. The grille's longer top and shorter bottom edges run parallel to each other, while the right and left edges angle inward from top to bottom. Between the openings left for the two pairs of lights are seven (roughly) identical openings in the grille which allow air to reach the Jeep's radiator. These seven openings are elliptical on the 088 grille design and rectangular on the 760 grille design, and run nearly the length of the grille vertically. On the earlier grille design (i.e., the 088 mark), all of the openings, as well as the overall grille design, are round or rounder, while on the later grille design (i.e., the 760 mark), the openings are generally more rectangular as is the overall grille design.
Defendant Vanzant, appearing pro se, lives and does business in Norco, California. He manufactures and sells after-market automobile accessories under the name "Country Craft." Among these parts are several that are designed to fit Jeeps. One that he labels a "tube step" is a piece of metal tubing shaped to fit below the vehicle's door and to provide a step into the vehicle's passenger compartment. A second one that he labels an "entry shield" is designed to fit within a Jeep's door frame and to protect the vehicle's paint from wear that can accompany individuals' entry and exit from the vehicle.
Two other parts manufactured and sold by Vanzant for use on Jeeps are the subject matter of this dispute. The first is a grille "screen" and the second is a grille "overlay." Both products substantially mimic Chrysler's 760 mark and Vanzant, in fact, has admitted using a Jeep grille embodying the 760 mark to make his grille screens and overlays. The grille screens cover the entire Jeep grille fixture while also covering the seven ventilation slots with a wire mesh. They apparently come in several different colors. The grille overlays cover the entire Jeep grille fixture but without also covering the seven ventilation slots. The overlays come only in black but can be painted to match the vehicle or to provide the grille with a color different than that of the rest of the vehicle. Vanzant has sold these products since at least January 15, 1990. Chrysler has sold grille overlays identical to those of Vanzant since 19871 and has entered into "numerous Consent Judgments and Agreements relating to its Jeep grille overlays and the enforcement of the Registered Trademark."
III.
Under Rule 56(c) of the Federal Rules of Civil Procedure, a district court may grant summary judgment where "the pleadings, depositions, answers to interrogatories, and admissions on file, together with 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).
Supreme Court and Ninth Circuit precedent establish the following standards for consideration of such motions: "If the party moving for summary judgment meets its initial burden of identifying for the court the portions of the materials on file that it believes demonstrates the absence of any genuine issue of material fact," the burden of production then shifts so that "the nonmoving party must set forth, by affidavit or as otherwise provided in Rule 56, `specific facts showing that there is a genuine issue for trial.'" T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir.1987) (quoting Fed. R.Civ.P. 56(e)) (emphasis added in court opinion) (citations omitted). With respect to these specific facts offered by the non-moving party, the court does not make credibility determinations or weigh conflicting evidence, and is required to draw all inferences in a light most favorable to the non-moving party. See id. at 630-31.
Rule 56(c) nevertheless requires this Court to enter summary judgment, "after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). A party who does not bear the burden of proof at trial need not present any evidence to support its motion for summary judgment but may instead point out the other party's inability to support an essential element of its claim. See id. at 325, 106 S.Ct. at 2554.
In order to defeat a motion for summary judgment, a plaintiff who bears the burden...
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