Degidio v. West Group Corp.

• Decision Date: 18 March 2002
• Docket Number: No. 3:99 CV 7510.,3:99 CV 7510.
• Citation: 191 F.Supp.2d 904
• Parties: Anthony J. DEGIDIO, Plaintiff, v. WEST GROUP CORP., et al., Defendant.
• Court: U.S. District Court — Northern District of Ohio

Page 904

191 F.Supp.2d 904

Anthony J. DEGIDIO, Plaintiff, v. WEST GROUP CORP., et al., Defendant.

No. 3:99 CV 7510.

United States District Court, N.D. Ohio, Western Division.

March 18, 2002.

Anthony J. DeGidio, Calamunci, Groth & Joelson, Toledo, for Anthony J. DeGidio, Plaintiffs.

Carol Witschel, White & Case, Jennifer L. Johnson, White & Case, New York, NY, Richard M Kerger, Kerger & Kerger, Toledo, Robert L. Raskopf, White & Case, Shannon M. Hudnall, White & Case, New York, NY, for West Group Corporation, Thomson Corporation, The, West Licensing Corporation, Defendants.

MEMORANDUM OPINION

KATZ, District Judge.

Pending before this Court are cross-motions for summary judgment filed by Defendants, West Group Corporation, The Thompson Corporation, and West Licensing Corporation ("Defendants" or "West"), and Plaintiff Anthony DeGidio ("DeGidio"), who is proceeding pro se in the above-captioned matter. Jurisdiction in this Court is proper pursuant to 28 U.S.C. §§ 1331, 1332, and 1338(a). Based upon careful consideration of the parties' respective motions, oppositions, and replies, and the entire record herein, the Court will grant in part and deny in part Defendants' Motion for Summary Judgment (Doc. No. 50). The Court will deny Plaintiff's Motion for Summary Judgment (Doc. No. 55) in its entirety.

I. BACKGROUND

Plaintiff is the registrant of the domain name "lawoffices.net" and alleged founder and owner of the corresponding website, which provides an attorney directory, legal information relating to cyberlaw issues, a vanity email service, listings of domain names for sale, and a hosting service for legal related websites. In the instant action, Plaintiff asserts trademark protection for the designation LawOffices.net,¹ which is the moniker attached to the website lawoffices.net. However, Plaintiff does not own either a federal or state registration for the LawOffices.net designation. The essential features of Plaintiff's putative trademark are: (1) a capitalization of the letters "1" and "o;" (2) pluralization of "Lawoffice;" and (3) placement of the term "LawOffices.net" in black font in a horizontal rectangular box that is shaded in marbled white and light gray.²

Defendants utilize the designation Law office.com and the domain name "lawoffice.com"³ to market the West Legal Directory, described by Defendants as "a `one-stop' online resource for useful information pertaining to law and lawyers for businesses, professionals and consumers." Defs.' Mot. Summ. J. at 5. Defendants' website offers information on over four hundred legal topics, a directory of attorneys and other legal professionals, an online searchable legal dictionary, and a frequently asked questions section. See id. at 5-6. In addition to the aforementioned services, West also offers fee-based services, including email, website creation and hosting, and sponsorship packages. See id. However, these fee-based services are not advertised at the Law office.com website. See id. The essential features of the designation Law office.com are: (1) capitalization of the letter "1;" (2) singular, as opposed to plural, "lawoffice;" (3) italicization of "law;" (4) placement of Law office.com in white font in a dark blue rectangular box; (5) a multicolored open door emblem situated over the "dot;" and (6) the text "from West Legal Directory" placed in smaller white font beneath Law office.⁴ See Defs.' Mem. P. & A. at 19.

Plaintiff asserts that Defendants' use of the designation Law office.com in conjunction with the website lawoffice.com infringes upon his alleged rights in the designation LawOffices.net and the affiliated lawoffices.net website. Specifically, Plaintiff pleads seven causes of action, alleging: (1) violations of the Ohio Deceptive Trade Practices Act, OHIO REV. CODE ANN. §§ 4165.01-4165.04 (Anderson 1998 & Supp.2000); (2) unauthorized use of a trademark pursuant to OHIO REV. CODE ANN. § 1329.65 (Anderson 1993 & Supp. 2000);⁵ (3) common law unfair competition; (4) false designation of origin pursuant to 15 U.S.C. § 1125(a); (5) trademark dilution pursuant to 15 U.S.C. § 1125(c); (6) common law dilution; and (7) common law misappropriation.

Defendants have moved for summary judgment, asserting inter alia that the "designation LawOffices.net is descriptive, devoid of secondary meaning, and therefore not entitled to trademark protection." Defs.' Mem. P. & A. at 1. Defendants also argue that even if this Court determines that there is a genuine factual dispute as to the trademark status of the designation of LawOffices.net, Plaintiff still cannot prevail on his dilution claims because he cannot establish that his mark is famous. Defendants further assert that Plaintiff cannot maintain his Ohio state law claims because he does not own an Ohio registration for the LawOffices.net designation.

Plaintiff not only opposes Defendants' motion, but also has moved for summary judgment on Counts I-IV; however, Plaintiff maintains that there are "serious factual disputes regarding the fifth through seventh claims and they are thus inappropriate for summary judgment." Pl.'s Mot. Summ. J. at 6.

II. DISCUSSION

A. Summary Judgment Standard

"Summary judgment is just as appropriate in a trademark infringement case as in other litigation and is granted or denied on the same principles." Freed v. Farag, 994 F.Supp. 887, 889 (N.D.Ohio 1997) (citing WSM, Inc. v. Tenn. Sales Co., 709 F.2d 1084, 1086 (6th Cir.1983); SCI Sys., Inc. v. Solidstate Controls, Inc., 748 F.Supp. 1257, 1260 (S.D.Ohio 1990)). Summary judgment must be entered "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). Of course, the moving party always bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any," which it believes demonstrate the absence of a genuine issue of material fact. Id. at 323, 106 S.Ct. at 2553. The burden then shifts to the nonmoving party who "must set forth specific facts showing that there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986) (quoting FED. R. CIV. P. 56(e)).

Once the burden of production has so shifted, the party opposing summary judgment cannot rest on its pleadings or merely reassert its previous allegations. It is not sufficient "simply [to] show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986). Rather, Rule 56(e) "requires the nonmoving party to go beyond the [unverified] pleadings" and present some type of evidentiary material in support of its position. Celotex, 477 U.S. at 324, 106 S.Ct. at 2553; see also Harris v. GMC, 201 F.3d 800, 802 (6th Cir.2000). Summary judgment shall be rendered if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show 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).

"In considering a motion for summary judgment, the Court must view the facts and draw all reasonable inferences therefrom in a light most favorable to the nonmoving party." Williams v. Belknap, 154 F.Supp.2d 1069, 1071 (E.D.Mich.2001) (citing 60 Ivy Street Corp. v. Alexander, 822 F.2d 1432, 1435 (6th Cir.1987)). "The Court is not required or permitted, however, to judge the evidence or make findings of fact." Id. The purpose of summary judgment "is not to resolve factual issues, but to determine if there are genuine issues of fact to be tried." Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 130 F.Supp.2d 928, 930 (S.D.Ohio 1999). Ultimately, this Court must determine "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson, 477 U.S. at 251-52, 106 S.Ct. 2505; see also Atchley v. RK Co., 224 F.3d 537, 539 (6th Cir.2000).

B. Overview of Plaintiff's Claims

As a preliminary matter, Defendants assert, and Plaintiff does not contest, that in order to prevail on any of his claims, Plaintiff must first establish that the designation LawOffices.net is indeed a valid and legally protectable trademark. The Court agrees with this assertion, at least with respect to Counts I-VI, and thus begins its analysis of these claims with an inquiry as to the validity of Plaintiff's designation. See Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., 270 F.3d 298, 308 (6th Cir.2001); Am. Online, Inc. v. AT & T Corp., 243 F.3d 812, 819 (4th Cir.2001) (explaining that plaintiff asserting rights to unregistered mark carries the burden of establishing "that it has a valid, protectable trademark and that the defendant is infringing its mark"); Sunbeam Products Inc. v. The West Bend Co., 123 F.3d 246, 251 (5th Cir.1997), overruled in part on other grounds by TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001); 4 McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 27:14 at 27-27 (4th ed.2001). As discussed below, these claims are analyzed pursuant to federal trademark principles.

As to Count VII, common law misappropriation, Defendants argue that the Court should analyze this claim as an unfair competition claim. However, Plaintiff does not premise this claim upon the alleged infringement of his putative common law trademark. Instead, Plaintiff asserts a claim for misappropriation of the "trade value" of the...