Riggs Marketing Inc. v. Mitchell

• Decision Date: 24 September 1997
• Docket Number: No. CV-N-96-053-ECR(RAM).,CV-N-96-053-ECR(RAM).
• Citation: 993 F.Supp. 1301
• Parties: RIGGS MARKETING INC. v. MITCHELL.
• Court: U.S. District Court — District of Nevada

Page 1301

993 F.Supp. 1301

RIGGS MARKETING INC. v. MITCHELL.

No. CV-N-96-053-ECR(RAM).

United States District Court, D. Nevada.

September 24, 1997.

Michael D. Rounds, Kirstin M. Jahn, of Rounds, Wickes & Cartlidge, Reno, NV, for Plaintiff.

Ernest I. Gifford, of Gifford, Krass, Groh, Sprinkle, Patmore, Anderson & Citkowski, Birmingham, MI, Brian M. McMahon, of Hamilton & McMahon, Reno, NV, for Defendants.

REED, Senior District Judge.

Presently before the Court is the Magistrate Judge's Report and Recommendation ("Report") (# 85) to which no party has objected. For the reasons outlined below, this Report is Affirmed and Adopted.

I. Background

Defendant Mitchell Golf Equipment Company ("MGEC") and its president, Defendant L. Edward Mitchell, allegedly own two patents for devices used in adjusting the shaft and head of golf clubs. The two patents are the "'431 patent," for a "golf club straightening device," and the "'098 patent," for an "apparatus for adjusting golf club loft and lie." Plaintiff Riggs Marketing, *1249 Inc. ("RMI"), a Nevada corporation, manufactures a device (the "Universal") which may infringe Defendants' patents. Plaintiff brought this declaratory relief action, seeking (among other things) a judgment that the patents are invalid and/or not infringed. Amended Compl. (# 31).

Plaintiff moved for summary judgment (# 55) on the issue of infringement; that is, RMI sought a summary judgment that neither patent has been infringed. We referred the matter to the Honorable Robert A. McQuaid, Jr., who, after a very careful analysis of the factual and legal issues presented, issued his Report (# 85) recommending denial of summary judgment as to the '431 patent and grant of summary judgment as to the '098 patent. As neither side has objected to this recommendation, we will only reverse if the Report is clearly erroneous or contrary to law. U.S. v. Remsing, 874 F.2d 614, 617 (9th Cir.1989).

II. '431 Patent

The Magistrate Judge found Defendants' expert's affidavit sufficient to raise a genuine issue of material fact as to whether the Universal infringes the '431 patent under the doctrine of equivalents. Report at 7(# 85). We agree, and the Report is therefore neither clearly erroneous nor contrary to law on this issue.

III. '098 Patent

The Magistrate Judge found that, on the facts as conceded by Defendant Mitchell in his deposition and in his affidavit, the component of the Universal crucial to the present action — the "bracket" — does not literally infringe the '098 patent. We agree. Accordingly, the Report is neither clearly erroneous nor contrary to law.

IT IS, THEREFORE, HEREBY ORDERED THAT the Magistrate Judge's Report and Recommendation (Doc. # 85) is AFFIRMED and ADOPTED, and Plaintiff's motion for summary judgment (#55) is GRANTED with respect to the '098 patent and DENIED with respect to the '431 patent.

August 20, 1997

IT IS HEREBY ORDERED that the report and recommendation (# 84), filed by the Magistrate Judge, on July 23, 1997, is APPROVED and ADOPTED. No objections were filed within the time required by the rules.

IT IS FURTHER ORDERED that said motion for partial summary judgment (# 50) is DENIED.

The report and recommendation of the Magistrate Judge is not clearly erroneous or contrary to law.

REPORT AND RECOMMENDATION

McQUAID, United States Magistrate Judge.

July 23, 1997

This Report and Recommendation is made to the Honorable Edward C. Reed, Jr., United States District Judge. The action was referred to the undersigned Magistrate Judge pursuant to 28 U.S.C. Section 636(b)(1)(B) and the Local Rules of Practice, LR IB 1-4.

This matter is before the court on Defendant Mitchell's motion for partial summary judgment on the issue of trademark infringement (Doc. # 50). Plaintiff Riggs Marketing, Inc., (RMI) has opposed the motion (Doc. # 63), and Defendant has replied (Doc. # 68).

I. BACKGROUND

This motion concerns a claim of trademark infringement. Both parties deal in golf club bending machines. The dispute concerns the use of the word "universal." Plaintiff's machine is called the "Universal Loft and Lie Bending Machine." (See Doc. # 50, exhibit B). Defendant's advertisements have the words "Universal Standard" printed across the top of the page in a similar size and style as Plaintiff's advertisements. (See Doc. # 50, exhibit A). Plaintiff claims trademark infringement on the word "universal" pursuant to 15 U.S.C. Section 1125(a) (Docs. # 31 & 63).

Defendant filed a motion for partial summary judgment on the issue of trademark infringement (Doc. # 50), arguing that "universal" is a generic term under trademark law, and thus cannot be infringed upon. Plaintiff has responded (Doc. # 63), claiming that Defendant has failed to comply with procedural rules for filing a motion of summary judgment, and that "universal" is not generic in the golf club bending machine context, rather it is suggestive of their machine and thus deserves trademark protection. Defendant has replied (Doc. # 68), arguing that they have complied with the procedural rules, that "universal" is generic as a matter of law, and that there are no issues of material fact to prevent summary judgment.

II. DISCUSSION

Procedural Defects

Plaintiff argues that Defendant's summary judgment motion should be denied for failure to comply with Local Rule 56-1.¹ Specifically, Plaintiff argues that Defendant has failed to include a statement of material facts along with the motion for summary judgment. Defendant argues there was no need to comply with LR 56-1 as all the material facts are obvious from the motion and the attached exhibits. The Defendants are correct.

The material facts center around Plaintiff's allegedly protected use of the word "universal" as the name of their machine. Defendant's summary judgment motion contained copies of advertisements of both Plaintiff's and Defendant's machines (Doc. # 50, exhibit A & B). These advertisements provide an illustration of the material facts. Furthermore, Defendant's factual arguments are obvious from the summary judgment motion. Therefore, because the spirit of LR 56-1 has been complied with, Defendant's motion should not be dismissed on a harmless procedural defect.

Standard for Summary Judgment

Summary judgment is appropriate when it is demonstrated that there exists 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); Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 1608, 26 L.Ed.2d 142 (1970). The moving party always bears the initial responsibility of informing the district court of the basis for its motion, identifying those portions of "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any," which the moving party believes indicates the absence of a genuine issue of material fact. Fed.R.Civ.P. 56(c); Celotex v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986).

Once the moving party has met its initial responsibility, the burden shifts to the opposing party to establish that a genuine issue as to any material fact exists. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1355, 89 L.Ed.2d 538 (1986). The opposing party must demonstrate that the fact in contention is material, i.e., a fact that might affect the outcome of the suit under governing law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Additionally, the nonmoving party must show that the dispute is genuine, i.e., that the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Id. To establish the existence of a factual dispute, the opposing party need not establish a material issue of fact conclusively; only that "the claimed factual dispute be shown to require a jury or judge to resolve the parties' differing versions of the truth at trial." T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Association, 809 F.2d 626, 630 (9th Cir.1987).

In determining whether to grant or deny the motion, the court examines the pleadings depositions, answers to interrogatories, and admissions on file, together with any affidavits, if any. Fed.R.Civ.P. 56(c). The evidence of the opposing party is to be believed, and all reasonable inferences that may be drawn from the facts placed before the court must be drawn in favor of the opposing party. Anderson, 477 U.S. at 255, 106 S.Ct. at 2513; Matsushita, 475 U.S. at 587, 106 S.Ct. at 1356 (citing United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962) (per curiam)). However, to demonstrate a genuine issue, the opposing party "must do more than simply show that there is some metaphysical doubt as to the material facts ... Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no `genuine issue for trial.'" Matsushita, 475 U.S. at 587, 106 S.Ct. at 1356 (citation omitted).

Defendant, as the movant for summary judgment, must inform the court of the basis for the motion. Celotex, 477 U.S. at 323, 106 S.Ct. at 2553. Defendant has satisfied this burden through the arguments and exhibits in the motion for summary judgment. (Doc. #50). Specifically, Defendant argues that no issues of material fact exist as neither party disputes that each uses the term "universal." Defendant also argues that there is no proof that "universal" should receive a trademark protection.

Plaintiff, as the nonmoving party, must show that a genuine issue of material fact exists and that a reasonable jury could find trademark infringement. Matsushita, 475 U.S. at 586, 106 S.Ct. at 1355.

Trademark Infringement

Plaintiff alleges that "universal" is infringed under 15 U.S.C. Section 1125(a).² Plaintiff requests relief in the form of an injunction to prevent Defendant from using "universal" in such a way as to...