Mountaineers Found. v. The Mountaineers

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MOUNTAINEERS FOUNDATION, Plaintiff, v. THE MOUNTAINEERS, Defendant.

No. 2:19-cv-1819-RSL-TLF

United States District Court, W.D. Washington, Tacoma

April 8, 2022

Noted for April 22, 2022

REPORT AND RECOMMENDATION

THERESA L. FRICKE UNITED STATES MAGISTRATE JUDGE

This matter comes before the Court on the Mountaineers Foundation's (“Foundation”) motion for partial summary judgment (Dkt. 87) and The Mountaineers motion for summary judgment (Dkt. 91). This matter has been referred to the undersigned Magistrate Judge. Mathews Sec'y of H.E.W. v. Weber, 423 U.S. 261 (1976); 28 U.S.C. § 636(b)(1)(B); Local Rule MJR 4(a)(4). For the reasons discussed below, this Court should DENY the Foundation's motion for partial summary judgment (Dkt 87) and GRANT IN PART AND DENY IN PART The Mountaineers' motion for summary judgment (Dkt. 91).

A. FACTUAL BACKGROUND

The Mountaineers was founded in 1906 as a non-profit organization with the purpose of preserving the natural beauty of the Northwest America. Dkt. 95, Articles of Incorporation for The Mountaineers, at 14; Dkt. 88-1, 1985 Conservancy Agreement (06/19/1985), at 110. In the 1930s, The Mountaineers received tax exempt status under Section 501(c)(7) of the Internal Revenue Code. Dkt. 95, Declaration of Tom Vogl (“Vogl Decl.”) at ¶ 3. The Mountaineers retained this tax-exempt status until 1972. Id. In 1976, The Mountaineers regained tax-exempt status under Section 501(c)(4) of the Internal Revenue Code. Dkt. 95, Letter from Internal Revenue Service (06/23/1976), at 18-19. And later -- in 2011 -- The Mountaineers received tax-exempt status under Section 501(c)(3) of the Internal Revenue Code. Dkt. 95, Vogl Decl., at ¶ 16.

The Foundation was formed and incorporated on June 24, 1968. Dkt. 1-1, Articles of Incorporation, at 8-13. Joan Hansen, one of the original incorporators of the Foundation, testified that the Foundation was set up as a charitable organization for The Mountaineers so that people who wanted to donate to The Mountaineers could get a tax deduction. Dkt. 92, Deposition of Joan Hansen (“Hansen Dep.”) at 7, 9, 10. Ms. Hansen also testified that the Foundation was designed to be a separate entity affiliated with The Mountaineers. Id. at 16.

In the early 1900's The Mountaineers acquired various parcels of real property in Kitsap County collectively known as the Rhododendron Preserve (the “Preserve”). Dkt. 89-1, Exhibit 1, 1985 Conservancy Agreement, at 3; Dkt. 93, Declaration of Delmar M. Fadden (“Fadden Decl.”) at ¶ 6. In 1985, The Mountaineers transferred the Preserve to the Foundation (without cost) by warranty deed. Dkt. 89-1, 1985 Conservancy Agreement, at 4.

As part of the transfer, the parties agreed that “The Mountaineers shall retain the right to continue to use the Preserve for historic and present use after the transfer to The Foundation for Mountaineers activities, subject to the provisions of the open space agreement and applicable law. Id. at 5, 7. The parties also entered into a contemporaneous 1985 Management Agreement, which stated that the Foundation owned the property and The Mountaineers would act as an agent managing and maintaining the Preserve. Dkt. 89-1, Exhibit 4, 1985 Management Agreement (06/19/1985), at 17-22.

In 1990, The Mountaineers and the Foundation entered into a Management Agreement stating that The Mountaineers would continue to manage and protect the Preserve as well as provide insurance for the Preserve. Dkt. 89-1, Exhibit 5, 1990 Management Agreement (06/19/1990), at 24. The agreement states that The Mountaineers would have unlimited access to the Preserve for education and enjoyment, customary ingress, egress and easement for utilities to the Mountaineers property through the former Wymer Parcels and parking on the Reid Parcel for Mountaineers events. Id.

In 2007, the parties entered into a Fiscal Sponsorship Agreement. Dkt. 95, 2007 Fiscal Sponsorship Agreement (01/04/2007), at 55-62. The 2007 Fiscal Sponsorship Agreement created a separate restricted fund for donations made to support The Mountaineers' charitable activities, that would be owned by the Foundation for tax purposes, but would be used to support The Mountaineers' charitable activities. Id. at 55-56. The 2007 Fiscal Sponsorship Agreement also stated that The Mountaineers owned all rights to intellectual property resulting from or created by funding under the 2007 Fiscal Sponsorship Agreement. Id. at 59.

In 2019, the Foundation sent The Mountaineers a letter formally terminating the 1990 Management Agreement and the 1985 Conservancy Agreement. Dkt. 89-1, Exhibit 6, Letter from the Foundation (12/11/2019), at 26-29.

B. RELEVANT TRADEMARKS IN DISPUTE

• (THE) MOUNTAINEERS FOUNDATION (Washington Reg. No. 60088) (“088 Mark”). Registered to the Foundation on July 10, 2017. First Use in 1968. Dkt. 1-1, Washington State Registration Certificate, at 41 (Exhibit G).

• THE MOUNTAINEERS FOUNDATION (Fed. Serial No. 88,643,474) (“474 Application”). Pending Trademark Application filed by The Mountaineers on October 5, 2019 for “Charitable services, namely raising funds for and awarding grants to organizations supporting the environment, conservation, outdoor education, outdoor recreation, and natural history.” Alleging First Use as early as June 1968 and First Use in Commerce as early as June 1968. Dkt. 1-1, Federal Trademark Application, at 43-50 (Exhibit H).

• THE MOUNTAINEERS word mark (Fed. Reg. No. 5,350,305) (“305 Mark”). Registered to The Mountaineers on December 5, 2017 for “Charitable fundraising services for the environment, conservation, outdoor education, outdoor recreation, and natural history.” First Use: March 31, 1907; First Use In Commerce: June 30, 1913. Dkt. 38, Federal Trademark Application and Registration, at 39-41 (Exhibit 2).

• THE MOUNTAINEERS design mark (Fed. Reg. No. 5,350,307) (“307 Mark”). Registered to The Mountaineers on December 5, 2017 for “Charitable fundraising services for the environment, conservation, outdoor education, outdoor recreation, and natural history.” First Use: December 29, 2004; First Use In Commerce: December 29, 2004. Dkt. 95-1, Federal Trademark Application and Registration, at 69-70 (Exhibit 11).

• MOUNTAINEERS BOOKS word mark (Fed. Reg. No. 5,483,968) (“968 Mark”). Registered to The Mountaineers on June 5, 2018 for “Books in the field of environmental conservation, outdoor recreation, and natural history.” First Use: April 30, 1960; First Use in Commerce: April 30, 1960. Dkt. 95, Federal Trademark Registration, at 72-74 (Exhibit 11).

C. DISCUSSION

Summary judgment is supported if the movant “shows that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Federal Rule of Civil Procedure (FRCP) 56 (a),(c). The moving party bears the initial burden to demonstrate the absence of a genuine dispute of material fact for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A genuine dispute concerning a material fact is presented when there is sufficient evidence for a reasonable jury to return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). In this context, materiality means the fact is “relevant to an element of a claim or defense and whose existence might affect the outcome of the suit”; thus, materiality is “determined by the substantive law governing the claim.” T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987).

The non-moving party is required to show that genuine issues of material fact “‘can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party.'” California Architectural Building Prods., Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1468 (9th Cir. 1987) (quoting Anderson, 477 U.S. at 250) (emphasis in original)). When the Court considers a motion for summary judgment, “[t]he evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in [their] favor.” Anderson, at 255. Yet the Court is not allowed to perform the jury's function - the Court may not weigh evidence, draw legitimate inferences from facts, or decide credibility. Id.

If the moving party meets their initial burden, an adverse party may not rest upon the mere allegations or denials of his pleading; his or her response, by affidavits or as otherwise provided in FRCP 56, must set forth specific facts showing there is a genuine issue for trial. FRCP 56(c). The Court may not disregard evidence solely based on its self-serving nature. Nigro v. Sears, Roebuck & Co., 784 F.3d 495, 497 (9th Cir. 2015). “The district court can disregard a self-serving declaration that states only conclusions and not facts that would be admissible evidence.” Id.

1. Declaration of Norman Winn

In support of the motion for partial summary judgment, the Foundation submitted the Declaration of Norman Winn. Dkt. 90. Winn's declaration was prepared and signed on May 13, 2021. Id. On September 17, 2021, The Mountaineers took the deposition of Norman Winn. Dkt. 92, Declaration of Daniel Oats, at ¶ 5.

The Mountaineers contend that they were not made aware of the Declaration of Norman Winn before the deposition and only became aware of the declaration when the Foundation submitted the declaration in support of their motion. Dkt. 126, The Mountaineers' Supplemental Brief, at 1-2. The Foundation argues that the Court should consider the Declaration of Norman Winn under Fed.R.Civ.P. 56(c)(4) because Mr. Winn offered his declaration based on his personal knowledge regarding matters for which he was competent to testify. Dkt. 127, The Foundation's Supplemental Brief, at 3.

On December 31, 2021, Norman Winn passed away. Dkt. 126, The Mountaineers'...