Idaho Golf Partners, Inc. v. Timberstone Mgmt., LLC., Case No. 1:14-cv-00233-BLW
| Decision Date | 17 August 2017 |
| Docket Number | Case No. 1:14-cv-00233-BLW |
| Parties | IDAHO GOLF PARTNERS, INC., Plaintiff, v. TIMBERSTONE MANAGEMENT, LLC., Defendant. TIMBERSTONE MANAGEMENT, LLC., Counterclaimant, v. IDAHO GOLF PARTNERS, INC., Counterdefendant. |
| Court | U.S. District Court — District of Idaho |
This case concerns a trademark dispute between two golf courses over the use of the mark "TIMBERSTONE." Plaintiff-Counterdefendant Idaho Golf Partners, Inc. ("IGPI") operates a golf course in Caldwell, Idaho under the assumed business name "TimberStone Golf Course." Defendant-Counterclaimant TimberStone Management, LLC ("TimberStone Management") operates the "TimberStone Golf Course" in Iron Mountain, Michigan. On June 13, 2014, IGPI filed a complaint alleging a claim for tortious interference with prospective economic advantage, seeking a declaratory judgment that TimberStone Management does not own an exclusive right to the TIMBERSTONE mark, and seeking to enjoin TimberStone Management from interfering with its use of the mark. TimberStone Management asserted counterclaims for trademark infringement (15 U.S.C. § 1114), unfair competition and false designation of origin (15 U.S.C. § 1125(a)), trademark dilution (15 U.S.C. § 1125(c)), and cybersquatting (15 U.S.C. § 1125(d)).
Trial in this case took place from September 26 to September 30, 2016 on TimberStone Management's counterclaims. The parties' claims for injunctive and declaratory relief were reserved for the Court. The jury returned a verdict for TimberStone Management on its counterclaims for trademark dilution and unfair competition and false designation of origin, and awarded $9,808 in damages against IGPI. Additionally, the jury found that IGPI acted willfully, maliciously, or fraudulently. The jury found no trademark infringement or cybersquatting by IGPI.
Both parties filed omnibus post-trial briefs, addressing their equitable claims and post-trial motions Dkts. 122, 123. These include (1) IGPI's motion for judgment as a matter of law, or alternatively for a new trial, on the trademark dilution and unfair competition and false designation of origin counterclaims; (2) IGPI's request for a declaratory judgment; (3) TimberStone Management's motion to enhance the jury's damages award; (4) TimberStone Management's motion for attorneys' fees and costs; (5)TimberStone Management's motion for a permanent injunction.
A hearing was held on the post-trial motions on November 30, 2016. At the conclusion of that hearing, the Court requested supplemental briefing on the following issues: (1) whether the Court can consider an issue not specifically raised in a Rule 50(a) motion, but later presented in a Rule 50(b) motion, in order to avoid plain error; (2) whether a statutory or common law "good faith remote use" defense applies to an unfair competition claim under 15 U.S.C. § 1125(a); (3) whether, even if applicable, a prior use defense on the unfair competition claim was waived when IGPI failed to ask for an instruction on that defense; and (4) whether the Ninth Circuit has held in any post-2006 case that "fame" may exist in niche market.
This memorandum opinion and order addresses the parties' post-trial motions. The Court will issue a separate decision addressing their requests for equitable relief.
Federal Rule of Civil Procedure 50 governs a request for a judgment as a matter of law. Under Rule 50(a), a party must first move for judgment as a matter of law before the case is submitted to the jury and "specify . . . the law and facts that entitle the movant to the judgment." Fed. R. Civ. P. 50(a)(2). Under Rule 50(b), if the court denies the pre-verdict motion, "the movant may file a renewed motion for judgment as a matter of law and may include an alternative or joint request for a new trial under Rule 59." Fed. R. Civ. P. 50(b). The failure to make a Rule 50(a) motion before the case is submitted to thejury forecloses the possibility of the Court later considering a Rule 50(b) motion. Tortu v. Las Vegas Metropolitan Police Dep't., 556 F.3d 1075, 1083 (9th Cir. 2009). Furthermore, "[a] post-trial motion for judgment can be granted only on grounds advanced in the pre-verdict motion." Fed. R. Civ. P. 50(b), 1991 advisory committee notes.
A court may grant a Rule 50 motion for judgment as a matter of law only if "there is no legally sufficient basis for a reasonable jury to find for that party on that issue." Krechman v. County of Riverside, 723 F.3d 1104, 1109 (9th Cir. 2013) (citing Jorgensen v. Cassiday, 320 F.3d 906, 917 (9th Cir. 2003) (quoting Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 149 (2000)). "A jury's verdict must be upheld if it is supported by substantial evidence . . . , even if it is also possible to draw a contrary conclusion from the same evidence." Wallace v. City of San Diego, 479 F.3d 616, 624 (9th Cir. 2007). "[I]n entertaining a motion for judgment as a matter of law, the court . . . may not make credibility determinations or weigh the evidence." Go Daddy Software, Inc., 581 F.3d at 961 (quoting Reeves, 530 U.S. at 150). Rather, "[t]he evidence must be viewed in the light most favorable to the nonmoving party, and all reasonable inferences must be drawn in favor of that party." Id.
Federal Rule of Civil Procedure 59(a)(1) states, "A new trial may be granted . . . in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.""Historically recognized grounds include, but are not limited to, claims 'that the verdict is against the [clear] weight of the evidence, that the damages are excessive, or that, for other reasons, the trial was not fair to the party moving.'" Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007) (quoting Montgomery Ward & Co. v. Duncan, 311 U.S. 243, 251 (1940). Erroneous or inadequate jury instructions are also bases for a new trial. See Murphy v. City of Long Beach, 914 F.2d 183, 187 (9th Cir. 1990).
A verdict is against the "clear weight of the evidence" when, after giving full respect to the jury's findings, the judge "is left with the definite and firm conviction that a mistake has been committed" by the jury. Landes Const. Co., Inc. v. Royal Bank of Canada, 833 F.2d 1365, 1371-72 (9th Cir. 1987) (citations omitted). In ruling on a motion for new trial, "the judge can weigh the evidence and assess the credibility of witnesses, and need not view the evidence from the perspective most favorable to the prevailing party." Air-Sea Forwarders, Inc. v. Air Asia Co., 880 F.2d 176, 190 (9th Cir. 1989) (citations and quotation marks omitted). However, a court should not upset the verdict "merely because it might have come to a different result from that reached by the jury." Roy v. Volkswagen of Am., Inc., 896 F.2d 1174, 1176 (9th Cir. 1990) (quotation marks and citation omitted).
At the close of TimberStone Management's case in chief, IGPI made a Rule 50(a) motion for judgment as a matter of law. The Court denied the motion and the case wassubmitted to the jury. IGPI now renews its motion for judgment as a matter of law pursuant to Rule 50(b), asserting that there was insufficient evidence as to: (1) TimberStone Management's trademark dilution claim; (2) TimberStone Management's unfair competition claim; (3) the jury's finding that IGPI infringed TimberStone Management's marks maliciously, fraudulently, or willfully; (4) actual damages.
A. Procedural Default
As a threshold matter, TimberStone Management argues that IGPI is procedurally barred from asserting the first three grounds for its Rule 50(b) motion because IGPI failed to preserve these arguments. The Court agrees.
Under Rule 50(a), a pre-verdict motion for judgment as a matter of law must "specify . . . the law and facts that entitle the movant to the judgment." Fed. R. Civ. P. 50(a)(2). See E.E.O.C. v. Go Daddy Software, Inc., 581 F.3d 951, 961 (9th Cir. 2009); see also Exxon Shipping Co. v. Baker, 554 U.S. 471 (2008); Fed. R. Civ. P. 50(b) Adv. Comm. Notes 2006.1
The Ninth Circuit strictly construes this limitation. See Freund v. Nycomed Amersham, 347 F.3d 752, 761 (9th Cir. 2003) (). In fact, courts generally require sufficiency-of-the-evidence arguments to be made at the level of a claim's specific elements or sub-elements. See id.; accord Gierlinger v. Gleason, 160 F.3d 858 (2d Cir. 1998) ( ) (internal quotations and citations omitted).
Applying this standard here, the Court determines that IGPI failed to preserve the sufficiency of the evidence challenges on the trademark dilution and unfair competition claims. Counsel for IGPI made the following oral motion under Rule 50(a) for judgment as a matter of law at the conclusion of TimberStone Management's case-in-chief:
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