H. Jay Spiegel & Associates, P.C. v. Spiegel
| Decision Date | 26 August 2009 |
| Docket Number | No. 1:08cv949 (JCC).,1:08cv949 (JCC). |
| Court | U.S. District Court — Eastern District of Virginia |
| Parties | H. JAY SPIEGEL & ASSOCIATES, P.C., Plaintiff, v. Steven M. SPIEGEL, Defendant. |
H. Jay Spiegel, Mount Vernon, VA, pro se.
Steven M. Spiegel, Alexandria, VA, pro se.
This matter comes before the Court on the parties' cross-motions for summary judgment. For the reasons stated below, the Court will deny Plaintiff's motion for summary judgment and deny Defendant's motion for summary judgment. As further explained infra at subpart III.C, the Court finds that each party has failed to put forward sufficient evidence to receive the relief it requests. The Court will leave the parties as they stand.
This case arises out of Defendant Steven M. Spiegel's ("Defendant's") alleged infringement of Plaintiff H. Jay Spiegel & Associates, P.C.'s ("Plaintiff's") trademark. On September 12, 2008, Plaintiff filed a complaint containing claims for federal trademark infringement, federal unfair competition, and trademark infringement and unfair competition under Virginia common law (the "Complaint"). The undisputed facts are as follows.
Plaintiff, a law practice organized as a Virginia professional corporation, has operated continuously under its name since 1989. Plaintiff provides patent and trademark-related legal services.1 In January 1999, Plaintiff registered the domain name SPIEGELAW.COM (Plaintiff's "mark" or "domain name") with Network Solutions. By February 23, 2000, Plaintiff had established a website accessible using the web address WWW.SPIEGELAW.COM. On February 24, 2000, Plaintiff filed an application for federal registration of the domain name as a service mark for the provision of legal services. The United States Patent and Trademark Office ("USPTO") denied the application because it determined that the mark was primarily a surname and thus not legally qualified to be registered on the Principal Register.
Plaintiff subsequently applied to have the domain name placed on the Supplemental Register; the USPTO placed the mark on the Supplemental Register on November 7, 2000. On November 19, 2005, Plaintiff submitted a second application to register the domain name on the Principal Register. The application was assigned a serial number and, on October 17, 2006, the USPTO entered the domain name on the Principal Register as Registration No. 3,158,285.
In March 1999, Lisa M. Spiegel, an attorney who is Defendant's sister, registered the domain name SPIEGELLAW.COM (Defendant's "mark" or "domain name") with Network Solutions. She used the domain name primarily for e-mail purposes. Plaintiff was aware of Lisa M. Spiegel's use of the domain name in some capacity before it filed the February 24, 2000 registration application. (Def.'s Ex. 15.) Plaintiff also knew that there was an inactive website in place at SPIEGELLAW.COM. On February 24, 2000, Plaintiff sent Lisa M. Spiegel a letter asking her to stop using the domain name SPIEGELLAW.COM. (Def.'s Ex. 16.) A hand-written notation by Lisa M. Spiegel indicates that Plaintiff's counsel and Ms. Spiegel spoke and came to an arrangement whereby Plaintiff did not object to Ms. Spiegel's use of the domain name for e-mail purposes so long as it was not used to host a website. (Def.'s Ex. 16.)
On January 10, 2001, Plaintiff sent Lisa M. Spiegel another letter to inform her that the USPTO had entered Plaintiff's mark on the Supplemental Register. Plaintiff's letter stated that, "so long as your practice is limited to immigration matters and my practice is mainly directed to Intellectual Property Law matters, I am confident that we can co-exist with our current domain names," but Plaintiff also demanded that Lisa M. Spiegel sign a licensing agreement in order to protect its rights in Plaintiff's mark. She did not sign a licensing agreement. Sometime prior to March 2, 2008, she transferred the domain name SPIEGELLAW.COM to Defendant. On March 2, 2008, Defendant posted a live website at WWW.SPIEGELLAW.COM. He was aware of Plaintiff's website before he did so.
Defendant is a sole practitioner with a focus on employment law. Defendant uses his website, in part, to facilitate a class action lawsuit and maintain contact with class members. Plaintiff became aware of Defendant's website in July 2008, when an opposing lawyer sent Plaintiff an e-mail copied to Defendant using an e-mail address incorporating Defendant's domain name. Upon discovering Defendant's website, Plaintiff sent Defendant a letter demanding removal of the site from the Internet and asking Defendant to convey his domain name to Plaintiff. Defendant refused to do so. Plaintiff then filed this suit. The complaint states claims for federal trademark infringement in violation of 15 U.S.C. §§ 1114 and 1125(a) (Count I), federal unfair competition in violation of 15 U.S.C. § 1125(a) (Count II), and trademark infringement and unfair competition under Virginia common law (Count III). The claims are essentially duplicative: "[t]he test for trademark infringement and unfair competition under the Lanham Act is essentially the same as that for common law unfair competition under Virginia law." Lone Star Steakhouse & Saloon Inc. v. Alpha of Virginia, Inc., 43 F.3d 922, 930 n. 10 (4th Cir.1995) (citations omitted). For this reason, the Court will perform a single infringement analysis below.
Plaintiff moved for a preliminary injunction on October 28, 2008. This Court denied the motion on December 11, 2008, 652 F.Supp.2d 630 (E.D.Va.2008). After discovery, the parties filed and briefed cross-motions for summary judgment according to a briefing schedule set by the Court. Plaintiff filed its motion on April 15, 2009. Defendant opposed the motion on June 12, 2009, and Plaintiff filed a reply brief on June 19, 2009. Defendant filed his motion for summary judgment on May 22, 2009. Plaintiff opposed the motion on June 12, 2009, and Defendant filed a reply brief on June 19, 2009. Defendant, in his summary judgment briefing, asserted that Plaintiff's mark was fraudulently registered and that it should be canceled.
At oral argument, Plaintiff's counsel represented to the Court that he seeks only injunctive relief, not monetary damages. Hr'g Tr. June 30, 2009 8. The Court informed him that injunctive relief is an equitable remedy which cannot be awarded by a jury. Hr'g Tr. June 30, 2009 8. Additionally, both parties represented to the Court that they have no additional evidence to produce if the case were to go to trial. Hr'g Tr. June 2009 30-31, 33. Based on these representations, the Court found it appropriate to decide this case based on the record and the parties agreed. Hr'g Tr. June 2009 37. Thus, the Court removed the jury trial, scheduled to occur on July 14, 2009, from the Court's calendar. Hr'g Tr. June 2009 37. The cross-motions for summary judgement are before the Court.
Summary judgment is appropriate only if the record shows that "there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." See Fed.R.Civ.P. 56(c); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Evans v. Techs. Apps. & Serv. Co., 80 F.3d 954, 958-59 (4th Cir. 1996) (citations omitted). The party seeking summary judgment has the initial burden of showing the absence of a material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A genuine issue of material fact exists "if the evidence is such that a reasonable jury could return a verdict for the non-moving party." Anderson, 477 U.S. at 248, 106 S.Ct. 2505.
Once a motion for summary judgment is properly made and supported, the opposing party has the burden of showing that a genuine dispute exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The party opposing summary judgment may not rest upon mere allegations or denials. Rather, the non-moving party "must set forth specific facts showing that there is a genuine issue for trial." Anderson, 477 U.S. at 248, 106 S.Ct. 2505 (quotation omitted). A "mere scintilla" of evidence is insufficient to overcome summary judgment. Id. at 248-52 106 S.Ct. 2505. In reviewing the record on summary judgment, "the court must draw any inferences in the light most favorable to the non-movant" and "determine whether the record taken as a whole could lead a reasonable trier of fact to find for the non-movant." Brock v. Entre Computer Ctrs., Inc., 933 F.2d 1253, 1259 (4th Cir.1991) (citations omitted).
When faced with cross-motions for summary judgment, the standard is the same as that applied to individual motions for summary judgment. The court must consider each party's motion "separately on its own merits to determine whether either of the parties deserves judgment as a matter of law." Rossignol v. Voorhaar, 316 F.3d 516, 523 (4th Cir.2003) (internal quotation marks omitted). If the court finds that there is a genuine issue of material fact, both motions must be denied. 10A Wright, Miller & Kane, Federal Practice & Procedure: Civil 3d § 2720. However, "if there is no genuine issue and one or the other party is entitled to prevail as a matter of law, the court will render judgment." Id.
In order to show trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq., and trademark or service mark infringement under Virginia common law, a plaintiff must demonstrate: (1) ownership of a valid and protectable mark and (2) a likelihood of confusion stemming from an infringer's use of a colorable imitation of the trademark. See Lone Star Steakhouse & Saloon Inc., 43 F.3d at 930 n. 10.
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