Psk v. Randy Hicklin D/B/A A–1 Am. Garage Door Repair

• Decision Date: 02 December 2010
• Docket Number: No. 09–CV–105–LRR.,09–CV–105–LRR.
• Parties: PSK, LLC d/b/a Overhead Door Company of Cedar Rapids and Iowa City, Plaintiff,v.Randy HICKLIN d/b/a A–1 American Garage Door Repair, Advanced Garage Door Repair, and/or Over Head AAA Garage Door Repair; and Danetta Hicklin, d/b/a A–1 American Garage Door Repair, Advanced Garage Door Repair, Over Head AAA Garage Door Repair, Affordable Overhead Garage Door Repair and American Certified Door Co., Defendants.
• Court: U.S. District Court — Northern District of Iowa

757 F.Supp.2d 836

PSK, LLC d/b/a Overhead Door Company of Cedar Rapids and Iowa City, Plaintiff,

v.Randy HICKLIN d/b/a A–1 American Garage Door Repair, Advanced Garage Door Repair, and/or Over Head AAA Garage Door Repair; and Danetta Hicklin, d/b/a A–1 American Garage Door Repair, Advanced Garage Door Repair, Over Head AAA Garage Door Repair, Affordable Overhead Garage Door Repair and American Certified Door Co., Defendants.

No. 09–CV–105–LRR.

United States District Court, N.D. Iowa, Cedar Rapids Division.

Dec. 2, 2010.

Adam S. Tarr, Laura C. Mueller, Vernon Pellett Squires, Bradley & Riley, P.C., Cedar Rapids, IA, for Plaintiff.Patrick J. McNulty, Laura N. Martino, Grefe & Sidney, P.L.C., Des Moines, IA, for Defendants.

ORDER

LINDA R. READE, Chief Judge.

TABLE OF CONTENTSI.

INTRODUCTION

II.

PROCEDURAL BACKGROUND

III.

SUBJECT MATTER JURISDICTION

IV.

SUMMARY JUDGMENT STANDARD

V.

EVIDENTIARY ISSUES

A. Procedural Background

B.

Plaintiff's Motion to Strike

1.

The e-mails

2.

Telephone directory excerpts

C.

The Hicklins' Motion to Strike

D.

The Hicklins' Objections and Appeal

VI.

FACTUAL BACKGROUND

A.

Overhead Door Corporation

B.

Overhead Door Company of Cedar Rapids and Iowa City

C.

Plaintiff's Advertising

D.

Use of the Term “Overhead”

E.

The Hicklins

F.

The Hicklins' Advertisements

G.

The Hicklins Encounter Confusion

H.

Customer Experiences

1.

Greg Allen

2.

Jack McArtor

3.

Shari Saari

4.

Jeffrey DeFrance

5.

Linda Norton

6.

Karen Guse

I.

The Magid Survey

J.

The Hicklins' “Certified” Technicians

VII.

ANALYSIS

A.

Infringement Claims

1.

Strength of a mark

2.

“Overhead” is a generic term

3.

Likelihood of confusion

B.

Lanham Act Unfair Competition Claims

1.

Passing off

a.

Legal background

b.

Secondary meaning

c.

Likelihood of confusion

i.

Strength of Plaintiff's mark

ii.

Similarity between the parties' marks

iii.

Competitive proximity of the parties' products

iv.

The Hicklins' intent to confuse

v.

Evidence of actual confusion

vi.

Potential customers' degree of care

d. Conclusion

2.

False advertising

C.

Iowa Code Section 548.113

VIII.

CONCLUSION

I. INTRODUCTION

The matters before the court are: (1) the “Motion for Summary Judgment” (docket no. 68), filed by Defendants Randy Hicklin and Danetta Hicklin (together, the “Hicklins”); (2) Plaintiff PSK, LLC's “Motion to Strike” (docket no. 70); (3) the Hicklins' “Motion to Strike Plaintiff's Exhibit 30” (“Hicklins' Motion to Strike”) (docket no. 90); and (4) the Hicklins' “Objections and Appeal of 9/22/2010 Ruling on Motion for Clarification–Reconsideration” (“Objections and Appeal”) (docket no. 98) (collectively, the “Motions”).

II. PROCEDURAL BACKGROUND ¹

On August 5, 2009, Plaintiff filed a five-count Complaint (docket no. 1) against Hicklin Overhead Doors, Inc. Plaintiff asserted claims for common law service mark infringement, common law trade name infringement, service mark infringement and unfair competition in violation of Lanham Act § 43(a), false descriptions in violation of Lanham Act § 43(a) and injury to business reputation in violation of Iowa Code section 548.113. On August 26, 2009, Plaintiff filed an Amended Complaint (docket no. 5) to add Randy Hicklin as a defendant. Plaintiff's claims remained the same.

On September 29, 2009, Randy Hicklin filed an Answer (docket no. 11) denying the substance of the Amended Complaint. On October 13, 2009, Hicklin Overhead Doors, Inc. filed an Answer (docket no. 14) denying the substance of the Amended Complaint.

On October 22, 2009, Plaintiff filed a Second Amended Complaint (docket no. 22) to add Danetta Hicklin as a defendant. On October 26, 2009, Hicklin Overhead Doors, Inc. filed an Answer (docket no. 24) denying the substance of the Second Amended Complaint. On November 13, 2009, the Hicklins filed an Answer (docket no. 26) denying the substance of the Second Amended Complaint.

On April 8, 2010, Plaintiff stipulated to Hicklin Overhead Doors, Inc.'s dismissal from the instant action. On May 4, 2010, the Hicklins filed an Amended Answer (docket no. 32), in which they asserted additional affirmative defenses.

On August 16, 2010, the Hicklins filed the Motion for Summary Judgment. On September 10, 2010, Plaintiff filed a Resistance (docket no. 71). On September 20, 2010, the Hicklins filed a Reply (docket no. 89).

The parties request oral argument on the Motion for Summary Judgment. However, the court finds that oral argument is unnecessary. The Motion for Summary Judgment is fully submitted and ready for decision.

III. SUBJECT MATTER JURISDICTION

The court has federal question jurisdiction over Plaintiff's claims arising under the Lanham Act, 15 U.S.C. § 1051 et seq. See 28 U.S.C. § 1331; 28 U.S.C. 1338(a). The court has supplemental jurisdiction over Plaintiff's state law claims because they are so related to Plaintiff's federal claims that they “form part of the same case or controversy under Article III of the United States Constitution.” 28 U.S.C. 1367(a).

IV. SUMMARY JUDGMENT STANDARD

Summary judgment is appropriate “if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). “An issue of fact is genuine when ‘a reasonable jury could return a verdict for the nonmoving party’ on the question.” Woods v. DaimlerChrysler Corp., 409 F.3d 984, 990 (8th Cir.2005) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). A fact is material when it “might affect the outcome of the suit under the governing law.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505. “[T]o establish the existence of a genuine issue of material fact, ‘a plaintiff may not merely point to unsupported self-serving allegations.’ ” Anda v. Wickes Furniture Co., 517 F.3d 526, 531 (8th Cir.2008) (quoting Bass v. SBC Commc'ns, Inc., 418 F.3d 870, 872 (8th Cir.2005)). Rather, the nonmoving party “ ‘must substantiate [its] allegations with sufficient probative evidence that would permit a finding in [its] favor.’ ” Anda, 517 F.3d at 531 (quoting Bass, 418 F.3d at 873). The court must view the record in the light most favorable to the nonmoving party and afford it all reasonable inferences. Baer Gallery, Inc. v. Citizen's Scholarship Found. of Am., Inc., 450 F.3d 816, 820 (8th Cir.2006) (citing Drake ex rel. Cotton v. Koss, 445 F.3d 1038, 1042 (8th Cir.2006)).

Procedurally, the moving party bears “the initial responsibility of informing the district court of the basis for its motion and identifying those portions of the record which show a lack of a genuine issue.” Hartnagel v. Norman, 953 F.2d 394, 395 (8th Cir.1992) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). Once the moving party has successfully carried its burden under Rule 56(c), the nonmoving party has an affirmative burden to go beyond the pleadings and by depositions, affidavits, or otherwise, “set out specific facts showing a genuine issue for trial.” Fed.R.Civ.P. 56(e)(2); see, e.g., Baum v. Helget Gas Prods., Inc., 440 F.3d 1019, 1022 (8th Cir.2006) (“Summary judgment is not appropriate if the non-moving party can set forth specific facts, by affidavit, deposition, or other evidence, showing a genuine issue for trial.”). The nonmoving party must offer proof “such that a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505. “ ‘Evidence, not contentions, avoids summary judgment.’ ” Reasonover v. St. Louis County, Mo., 447 F.3d 569, 578 (8th Cir.2006) (quoting Mayer v. Nextel W. Corp., 318 F.3d 803, 809 (8th Cir.2003)).

V. EVIDENTIARY ISSUES

The parties raise a host of evidentiary issues. The court addresses them here, before turning to the merits of the Motion for Summary Judgment.

A. Procedural background

On September 10, 2010, Plaintiff filed its Motion to Strike, seeking to strike two categories of evidence that the Hicklins submitted in support of the Motion for Summary Judgment. First, Plaintiff sought to strike several e-mails ² that Overhead Door Corporation representatives purportedly sent to Plaintiff's owner and manager. Plaintiff argued that the e-mails lack foundation and constitute hearsay. Plaintiff also moves to strike the Hicklins' Exhibits 24–31, which are purported excerpts from telephone directories in various cities. See Hicklins' App'x at 121–82. Plaintiff argues that “the Hicklins have made no attempt to authenticate the exhibits.” Plaintiff's Motion to Strike at ¶ 2.b.

In response to Plaintiff's Motion to Strike, the Hicklins issued a subpoena to Overhead Door Corporation. The Hicklins sought to depose one or more Overhead Door Corporation representatives, seeking to elicit testimony it presumably could use to authenticate the e-mails.

On September 16, 2010, Plaintiff filed a “Motion to Quash Subpoena and/or Enforce Scheduling Order Deadlines” (“Motion to Quash”) (docket no. 82). In the Motion to Quash, Plaintiff argued that the discovery deadline expired on July 16, 2010, and that the Hicklins did not establish good cause to modify the Scheduling Order (docket no. 16) deadlines. That same date, the Hicklins filed a “Resistance to Motion to Quash” (docket no. 83), in which they argued that Plaintiff, having previously sought to avoid discovery of the e-mails on grounds of attorney-client privilege, should not be allowed to raise authenticity and foundation objections to the e-mails. Accordingly, the Hicklins asked the court to deny the Motion to Quash and “declare that the authenticity and foundation have already been established, or in the alternative allow the deposition to go forward.” Resistance to Motion to Quash at ¶ 2.

On September 16, 2010, United States Magistrate Judge Jon S. Scoles entered an Order (docket no. 84) denying the Motion to Quash. Judge Scoles noted that, during the earlier discovery dispute involving the e-mails, “Plaintiff never questioned the authenticity of the e-mails.” O...