Vinh-Sanh Trading Corp. v. SFTC, Inc.
| Decision Date | 19 July 2021 |
| Docket Number | 19-cv-04315-CRB |
| Parties | VINH-SANH TRADING CORPORATION, Plaintiff, v. SFTC, INC., DBA SUN FAT TRADING CORPORATION, Defendant. |
| Court | U.S. District Court — Northern District of California |
ORDER GRANTING MOTION FOR SUMMARY JUDGMENT
Plaintiff Vinh-Sanh imports and distributes rice and rice-based products. Decl. of Kon Chen filed Aug. 2, 2019 (dkt. 12) (Aug. 2 Chen Decl.) ¶ 2. Vinh-Sanh has sued SFTC, Inc. (Sun Fat), an importer, distributor, and wholesale buyer of Asian foods, for trademark infringement and unfair competition. See Compl. (dkt. 1). Vinh-Sanh moved for summary judgment, Motion for Summary Judgment (MSJ) (dkt 93), and Sun Fat failed to oppose. The Court then filed an Order to Show Cause, OSC (dkt. 96), and Sun Fat failed to respond. The Court now GRANTS summary judgment for Vinh-Sanh. However, the Court DENIES without prejudice Vinh-Sanh's request for a permanent injunction.
Vinh-Sanh imports and distributes rice and rice-based products. Aug. 2 Chen Decl. ¶ 2. Its most popular product is Thai jasmine rice, which it sells throughout the United States. Id. ¶ 6. In the mid-1980s, Vinh-Sanh established the THREE LADIES brand, and developed a trademark consisting of a drawing of three women wearing clothing representing the countries of Cambodia, Vietnam, and Laos. Id. ¶ 7. Vinh-Sanh has four trademarks in connection with the THREE LADIES brand. See id. ¶¶ 13-14, Exs. C-F.
Sun Fat is an importer, distributor, and wholesale buyer of Asian foods. Compl. ¶ 22; Compl. Ex. D. Vinh-Sanh works with a variety of distributors and briefly had a wholesale relationship with Sun Fat “for the sale of a small quantity of THREE LADIES rice.” Aug. 2 Chen Decl. ¶ 18. Vinh-Sanh “terminated the relationship with Sun Fat” when it discovered that, in its view, Sun Fat was infringing the THREE LADIES mark. Id. ¶ 19. Sun Fat had started marketing and selling Thai jasmine rice with the images-photographs, not drawings-of three women wearing what Vinh-Sanh asserts is clothing representing the countries of Cambodia, Vietnam, and Laos. Id. Vinh-Sanh has found Sun Fat rice with the similar THREE LADIES mark at multiple stores and markets in multiple cities throughout California. Id. ¶ 20.
Sun Fat admitted in a deposition that it had knowledge of Vinh-Sanh's THREE LADIES marks and rice when Benny Hong, Sun Fat's CEO, created the infringing mark in 2018. Decl. of Kevin Viau filed Oct. 23, 2019 (Oct. 23 Viau Decl.) Ex. C 19:3-18, 20:16-23, 30:25-31:7. Sun Fat has been using the title “THREE ASIAN LADIES” in product listing headings for its rice. Aug. 2 Chen Decl. Ex. H.
Vinh-Sanh's retailers have reported that some consumers and retailers have been or potentially will be confused by Sun Fat's rice labelling. Tony Ly Decl. ¶ 6; Aug. 2 Chen Decl. ¶ 24. After receiving Sun Fat's rice with the similar labelling, one retailer asked salesperson Cam Mach of First World Trading Corp. (First World), a company related to Vinh-Sanh that markets and sells food products to grocery stores, if there was a new version of THREE LADIES rice packaging. Mach Decl. (dkt. 42) ¶¶ 4-5; Lau Decl. (dkt. 45-2) ¶¶ 7-9. This retailer reported: “Many customers come to our store and ask simply for the bag with the three ladies.” Lau Decl. ¶ 6. Adding to this confusion is that stores sell Sun Fat's rice at a significantly lower price of up to $10 per bag less than Vinh-Sanh's. Aug. 2 Chen Decl. ¶ 26.
Vinh-Sanh brought suit for federal trademark infringement under 15 U.S.C. § 1114, federal unfair competition under 15 U.S.C. § 1125(a), common law trademark infringement, and unfair competition under the California Business & Professions Code § 17200. See Compl. Vinh-Sanh applied for a temporary restraining order on August 2, 2019. See TRO App. (dkt. 11). The Court denied the TRO, concluding that while Vinh-Sanh was likely to succeed on the merits and an injunction was in the public interest, Vinh-Sanh had not shown irreparable harm. See Tr. of Aug. 9, 2019 Proceedings (dkt. 27) at 3:19-22. The Court gave the parties leave to conduct further discovery on irreparable harm prior to briefing a preliminary injunction motion. Id. at 3:13-4:12. Vinh-Sanh subsequently filed a motion for preliminary injunction. See Motion for Preliminary Injunction (MPI) (dkt. 39). Sun Fat opposed the motion. See MPI Opp'n (dkt. 44). Vinh-Sanh replied. See MPI Reply (dkt. 45). The Court denied the preliminary injunction, again concluding that while Vinh-Sanh was likely to succeed on the merits and an injunction was in the public interest, Vinh-Sanh had not shown irreparable harm. See Order Denying Preliminary Injunction (dkt. 52). Vinh-Sanh subsequently moved for summary judgment on all of its claims. See MSJ. Sun Fat did not file an opposition. The Court issued an Order to Show Cause ordering Sun Fat to explain why the motion for summary judgment should not be granted, and Sun Fat still did not respond. Vinh-Sanh filed a Reply requesting a permanent injunction against Sun Fat. See Reply (dkt. 95). Vinh-Sanh subsequently filed a Further Case Management Statement noting that Sun Fat is apparently “no longer appearing in and defending the case.” See Further CMC (dkt. 101) at 1.
Summary judgment is proper where the pleadings, discovery, and affidavits show that there is “no genuine dispute as to any material fact and the [moving] party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). Material facts are those which may affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is genuine if there is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. Id.
The moving party for summary judgment bears the initial burden of identifying those portions of the pleadings, discovery, and affidavits which demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Cattrett, 477 U.S. 317, 323 (1986). Where the moving party will have the burden of proof on an issue at trial, it must affirmatively demonstrate that no reasonable trier of fact could find other than for the moving party. Id. But on an issue for which the opposing party will have the burden of proof at trial, the moving party need only point out “that there is an absence of evidence to support the nonmoving party's case.” Id.
Once the moving party meets its initial burden, the nonmoving party must go beyond the pleadings to demonstrate the existence of a genuine dispute of material fact by “citing to specific parts of material in the record” or “showing that the materials cited do not establish the absence or presence of a genuine dispute.” Fed.R.Civ.P. 56(c). A triable dispute of fact exists only if there is sufficient evidence favoring the nonmoving party to allow a jury to return a verdict for that party. Anderson, 477 U.S. at 249. If the nonmoving party fails to make this showing, “the moving party is entitled to judgment as a matter of law.” Celotex, 477 U.S. at 323.
Even when the nonmoving party fails to oppose the motion for summary judgment, the moving party still needs demonstrate that there is no genuine issue of material fact. See Hibernia Nat'l Bank v. Administracion Central Sociedad Anonima, 776 F.23 1277, 1279 (5th Cir. 1985) (“A motion for summary judgment cannot be granted simply because there is no opposition[.]”). “The absence of an opposition does not . . . independently justify granting the motion” for summary judgment. United States v. Filice, No. CIV 06-02528 WBS DAD, 2007 WL 4591445, at *1 n.1 (E.D. Cal. Dec. 28, 2007) (citing Henry v. Gill Indus., Inc., 983 F.2d 943, 949-50 (9th Cir. 1993)). However, a court “may . . . grant an unopposed motion for summary judgment if the movant's papers are sufficient to support the motion and do not on their face reveal a genuine issue of material fact.” United States v. Abdullah, No. CV 11-0784, 2011 U.S. Dist. LEXIS 141308, at *6 (N.D. Cal. Nov. 8, 2011) (citing Henry, 983 F.2d at 950).
The Court GRANTS Vinh-Sanh's motion for summary judgment because (A) Sun Fat fails to oppose the motion; and (B) Vinh-Sanh has shown that there is no genuine dispute of material facts related to its claims of trademark infringement and unfair competition. However, (C) the Court DENIES without prejudice Vinh-Sanh's request for a permanent injunction, as the Court does not consider arguments raised for the first time in a reply.
Sun Fat has failed to respond not only to Vinh-Sanh's motion for summary judgment, but also to this Court's Order to Show Cause. Although this failure is not a sufficient justification for granting Vinh-Sanh's motion for summary judgment, see Henry, 983 F.2d at 949-50, the Court grants the motion in part because of this failure to respond. As explained below, Vinh-Sanh has proven that there is no genuine issue as to any material fact, and therefore has met its burden.
Vinh-Sanh has demonstrated that there is no genuine dispute regarding the merits of the four claims-federal trademark infringement, federal unfair competition, common law trademark infringement, and unfair competition under the California Business and Professions Code § 17200-raised in its complaint and for which it seeks summary judgment.
Vinh-Sanh has demonstrated that there is no genuine dispute regarding the merits of a trademark infringement claim. To prevail on such a claim, a plaintiff must demonstrate (1) ownership of a valid trademark and (2) use by defendant in commerce of a mark likely to cause confusion. See Network Automation,...
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