Black v. Irving Materials, Inc.

JEFFERY DEAN BLACK, Plaintiff, v. IRVING MATERIALS, INC., Defendant.

Case No. 17-CV-06734-LHK

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

May 6, 2019

ORDER GRANTING IN PART AND DENYING IN PART IRVING MATERIALS, INC.'S MOTION FOR SUMMARY JUDGMENT; AND DENYING JEFFERY DEAN BLACK'S MOTION FOR SUMMARY JUDGMENT

Re: Dkt. Nos. 66, 70

Plaintiff Jeffery Dean Black ("Black") asserts against Defendant and Counterclaimant Irving Materials, Inc. ("Irving") a reverse domain name hijacking claim, and a declaratory relief claim that Black's use of the imi.com domain name is not unlawful and to prevent the transfer of that domain name from Black to Irving. Irving brings counterclaims for cybersquatting and for declaratory relief seeking to transfer the imi.com domain name from Black to Irving. Both parties moved for summary judgment on all claims and counterclaims. Having considered the parties' briefing, the relevant law, and the record in this case, the Court GRANTS IN PART and DENIES IN PART Irving's motion for summary judgment and DENIES Black's motion for summary judgment.

I. LEGAL STANDARD

Summary judgment is proper where the pleadings, discovery, and affidavits show that there is "no genuine dispute as to any material fact and [that] the movant 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. See 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. See id.

The party moving for summary judgment bears the initial burden of identifying those portions of the pleadings, discovery and affidavits that demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the moving party meets its initial burden, the nonmoving party must go beyond the pleadings and, by its own affidavits or discovery, "set forth specific facts showing that there is a genuine issue for trial." Fed. R. Civ. P. 56(e). If the nonmoving party fails to make this showing, "the moving party is entitled to judgment as a matter of law." Celotex Corp., 477 U.S. at 323.

At the summary judgment stage, the Court must view the evidence in the light most favorable to the nonmoving party: if evidence produced by the moving party conflicts with evidence produced by the nonmoving party, the judge must assume the truth of the evidence set forth by the nonmoving party with respect to that fact. See Leslie v. Grupo ICA, 198 F.3d 1152, 1158 (9th Cir. 1999).

"Because of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena." Interstellar Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1109 (9th Cir. 1999) (citing Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356 n. 5 (9th Cir. 1985)); see also, e.g., Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1029, 1031 (9th Cir. 2010); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002).

II. DISCUSSION

This case concerns Black, an individual who registered the imi.com domain name in March 1994, and Irving, an Indiana concrete and construction materials supplier that claims the IMI mark, which is the acronym of "Irving Materials Inc." In October 2017, Irving initiated an ex parte Uniform Domain Name Dispute Resolution Policy ("UDRP") proceeding against Black for the imi.com domain name. On November 21, 2017, Black initiated the instant suit against Irving.

On March 22, 2018, Black filed his first amended complaint ("FAC") pro se and asserted two claims: (1) declaratory relief regarding no bad faith intent/cyberpiracy (15 U.S.C. § 1114(2)(D)(v), 1125(d)(1)(B)(ii)); and (2) reverse domain name hijacking ("RDNH") (15 U.S.C. § 1114(2)(D)(iv)). ECF No. 11 ("FAC").

On May 21, 2018, Defendant and Counterclaimant Irving answered Black's amended complaint and asserted two counterclaims: (1) cybersquatting (15 U.S.C. § 1125(d)); and (2) declaratory relief (28 U.S.C. § 2201). ECF No. 25 ("Counterclaims").

Black and Irving both move for summary judgment on all claims and counterclaims. See ECF No. 66 ("Irving Mot."); ECF No. 70 ("Black Mot."). The Court first addresses Black's RDNH claim. The Court second addresses the remaining three claims together because the Court finds that genuine disputes of material fact preclude summary judgment on these three claims.¹

A. Black's Reverse Domain Name Hijacking Claim

Black argues that he mistakenly pled his RDNH claim as a violation of 15 U.S.C. § 1114(2)(D)(iv). Instead, Black intended to assert a RDNH claim in violation of 15 U.S.C. § 1114(2)(D)(v). ECF No. 77 ("Black Reply") at 10-11. Irving argues that Black's FAC alleged a RDNH claim under subsection (iv), not subsection (v). Irving Opp'n at 21; ECF No. 78 ("Irving Reply") at 14-15. Irving also argues that Black's RDNH subsection (iv) claim fails as a matter of law. Irving Mot. at 22-23. The Court address each of living's arguments in turn.

1. Black Asserts a Violation of 15 U.S.C. § 1114(2)(D)(iv)

In his summary judgment briefing, Black argues that his citation to subsection (iv) in the FAC is a "typographical error made by Mr. Black (pro se) when he filed his FAC, wherein he cited 15 U.S.C. § 1114(2)(D)(iv) rather than subsection (v)." Black Reply at 10-11 (emphasis in original). Black then focuses on what is required to sustain a RDNH claim under subsection (v). Black Mot. at 24-25; ECF No. 76 ("Black Opp'n") at 19-22.

The Court disagrees that Black made a typographical error. The title of the FAC's RDNH claim and its factual allegations specifically reference 15 U.S.C. § 1114(2)(D)(iv). See, e.g., FAC at 10 ¶ 51 ("The above acts by Defendant constitute reverse domain name hijacking in violation of the [ACPA], 15 U.S.C. § 1114(2)(D)(iv)."). Moreover, the FAC's substantive allegations track the language of subsection (iv). For instance, subsection (iv) states that "[i]f a registrar . . . takes an action . . . based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark, the person making the knowing and material misrepresentation shall be liable for any damages . . . ." 15 U.S.C. § 1114(2)(D)(iv).²Mirroring that portion of the statute, Black's FAC alleges that "Defendant's UDRP filing and the allegations of cybersquatting set forth therein represent a knowing and material misrepresentation that the imi.com domain name is identical to, confusingly similar to, or dilutive of [living's] mark." FAC ¶ 49. Therefore, the Court is unpersuaded that Black's decision to bring his RDNH claim under subsection (iv) was a mere "typographical error."

Moreover, Black's prior status as a pro se litigant does not warrant construing his RDNH claim as stating a violation of subsection (v) instead of subsection (iv). Black's FAC is well written and demonstrates his competence, and Black's pro se status was only temporary. Black filed his FAC on March 22, 2018 and subsequently obtained counsel, who filed their appearances in his case on June 20, 2018 and June 27, 2018. ECF Nos. 31 & 36. After Black obtained counsel, he could have, with their help, stated a claim for a subsection (v) violation, as he purports to have intended. Indeed, at the June 20, 2018 case management conference, with Black's counsel present, the Court set August 15, 2018 as the deadline to amend the pleadings. ECF No. 34. Black's counsel never filed a motion or stipulation to further amend Black's complaint to correct his RDNH claim. Accordingly, the Court finds that Black's RDNH claim asserts a violation of 15 U.S.C. § 1114(2)(D)(iv).

2. Black's Reverse Domain Name Hijacking Claim Fails as a Matter of Law

Black's summary judgment briefing continuously asserts that Black intended to bring a RDNH claim for violation of subsection (v) and makes no argument in support of his subsection (iv) claim. Black Mot. at 24-25 (discussing only subsection (v)); Black Opp'n at 19-22 (asserting subsection (iv) is "inapplicable" and that "[t]here is no justification to add the 'misrepresentation' element under subsection (iv) into the elements of subsection (v)—they are different claims aimed at different behavior."); Black Reply at 10-11 (asserting subsection (iv) is not "applicable" and that Black made a "typographical error."). Thus, Black repeatedly asserts that subsection (iv) is inapplicable and abandons his RDNH claim for violation of subsection (iv). Although "summary judgment is not properly granted simply because there is no opposition," Atilano v. Cty. of Butte,2008 WL 4078809, at *6 (E.D. Cal. Aug. 29, 2008) (citing Henry v. Gill Indus., Inc., 983 F.2d 943, 950 (9th Cir. 1993)), a court "has no obligation to search the entire case file for evidence that establishes a genuine issue of fact when the nonmovant presents inadequate opposition to a motion for summary judgment," Fair Hous. Council of Riverside Cnty., Inc. v. Riverside Two, 249 F.3d 1132, 1136-37 (9th Cir. 2001).

Because Black abandons his RDNH subsection (iv) claim, the Court GRANTS summary judgment to Irving as to Black's RDNH in violation of 15 U.S.C. § 1114(2)(D)(iv) claim and DENIES Black's motion for summary judgment as to this claim.

B. Irving's Cybersquatting and Declaratory Relief Counterclaims and Black's Declaratory Relief Claim

Summary judgment as to the three remaining claims rises and falls together on the issues of whether Irving's trademark ("mark") is distinctive and whether Black acted with bad faith intent. Therefore, the Court first identifies the three remaining claims then discusses why genuine disputes of material fact as to distinctiveness and bad faith intent preclude summary judgment on all three claims.

Irving's first counterclaim is for cybersquatting in violation of 15 U.S.C. § 1125(d)...