S. Cal. Darts Ass'n v. Zaffina

762 F.3d 921

SOUTHERN CALIFORNIA DARTS ASSOCIATION, a California unincorporated association, Plaintiff–Appellee,

v. Dino M. ZAFFINA, pro se, an individual, Defendant–Appellant,andSouthern California Darts Association, Inc., a California corporation, Defendant.

No. 13–55780.

United States Court of Appeals, Ninth Circuit.

Submitted Dec. 20, 2013.^*

Filed Aug. 11, 2014.

Dino M. Zaffina, pro se, Los Angeles, CA, for Defendant–Appellant.

James Kawahito and Timothy Patrick Hennessey, Kawahito Shraga & Westrick LLP, Los Angeles, CA, for Plaintiff–Appellee.

Appeal from the United States District Court for the Central District of California, R. Gary Klausner, District Judge, Presiding. D.C. No. 2:12–cv–01899–RGK–JCG.

Before: RONALD M. GOULD and KIM McLANE WARDLAW, Circuit Judges, and MARK L. WOLF, Senior District Judge.^**

OPINION

WOLF, Senior District Judge:

The district court entered summary judgment for plaintiff-appellee Southern California Darts Association (“SoCal”) and issued a permanent injunction enjoining defendant-appellant Dino M. Zaffina from using certain marks that have been used by SoCal for several decades. We have jurisdiction under 28 U.S.C. § 1291, and we affirm.

I. BACKGROUND

For forty years or more, SoCal has promoted the competitive play of the game of darts and has coordinated league play of this game. For a time, beginning in the 1960s, members of SoCal formed and ran a corporation named “Southern California Darts Association, Inc.” (the “original SoCal corporation”). The corporate powers of the original SoCal corporation were suspended by the State of California in 1977, apparently for nonpayment of the corporate franchise tax. SoCal has, for many years, used the following marks: its full name (“Southern California Darts Association”); the acronym “SCDA”; the nickname “SoCal Darts”; and a logo featuring the organization's full name and a dart board.

Zaffina was once a member of SoCal. Zaffina and SoCal feuded in July 2010 over whether Zaffina's middle initial would be used in SoCal's weekly scoring reports, and Zaffina's membership in SoCal came to an end. It is unclear whether Zaffina renounced his SoCal membership or whether the organization expelled him. On January 3, 2011, Zaffina registered with the State of California a corporation named Southern California Darts Association, Inc. (“SoCal Inc.”), the same name once used by the original SoCal corporation. Zaffina appointed himself president and CEO of SoCal Inc. He then registered the internet domain name www. southerncalifo rniadartsassoci ation. com and began to use it to promote SoCal Inc.

In August 2011, Zaffina and SoCal Inc. informed approximately three hundred darts-related businesses, by email, of SoCal Inc.'s existence. These businesses included the so-called “host pubs” in which the events organized by SoCal traditionally have been held. In September of the same year, Zaffina and SoCal Inc. sued multiple defendants in state court for hosting or participating in events while using SoCal's name and other marks.

On March 6, 2012, SoCal brought suit against Zaffina and SoCal Inc. in the United States District Court for the Central District of California. In its complaint, SoCal alleged violations of the Lanham Act and the California Business and Professions Code, common law trademark infringement, and unfair competition. SoCal also moved for a preliminary injunction.

On April 23, 2012, the district court granted SoCal's motion for a preliminary injunction, and enjoined Zaffina and SoCal Inc. from using SoCal's marks, using URLs containing these marks, and representing to the public that they have rights to these marks. See Apr. 23, 2012 Dist. Ct. Order (“PI Order”). On June 22, 2012, the district court denied Zaffina's motion for reconsideration of its decision to issue a preliminary injunction.

Zaffina and SoCal Inc. filed interlocutory appeals from the district court's preliminary injunction. While these appeals were pending, the following developments occurred in the district court.

On August 20, 2012, the district court allowed a motion to withdraw filed by SoCal Inc.'s counsel, Robert Racine, Esq. The court ordered SoCal Inc. to retain new counsel within thirty days. When SoCal Inc. failed to do so, the district court struck SoCal Inc.'s answer to the complaint and ordered default to enter against it.

On February 22, 2013, the district court granted SoCal's motion for partial summary judgment against Zaffina on its Lanham Act claim. Although Zaffina had not filed an opposition to the motion for summary judgment, the district court examined the motion on the merits, and found it meritorious. See Feb. 22, 2013 Dist. Ct. Order (“SJ Order”). SoCal then moved to withdraw all of its additional claims against Zaffina.

On April 2, 2013, the district court entered final judgment against both defendants—against SoCal Inc. because of its default, and against Zaffina on the basis of the entry of summary judgment on SoCal's Lanham Act claim. The district court vacated its preliminary injunction and issued a permanent injunction. The permanent injunction again prohibited Zaffina, as well as any associated businesses, from using SoCal's marks, from using URLs containing these marks, and from representing to the public that they have rights to these marks. It also ordered Zaffina to: file a notice discontinuing or changing SoCal Inc.'s corporate name, file cancellations of all fictitious business name registrations using SoCal's marks, and destroy or turn over to SoCal all marketing products created by Zaffina for the purpose of promoting SoCal Inc. In addition, the district court found Zaffina and SoCal Inc. jointly and severally liable to SoCal in the amount of $115,705.28 plus costs.¹

The district court's final judgment mooted the appeals from the preliminary injunction. Consequently, on April 25, 2013, we dismissed those appeals.

Zaffina now appeals from the district court's Order entering summary judgment against him, offering a series of threshold challenges and several arguments on the merits.²

II. STANDARD OF REVIEW

We review the district court's grant of summary judgment de novo. See United States v. Arango, 670 F.3d 988, 992 (9th Cir.2012); Hambleton Bros. Lumber Co. v. Balkin Enterprises, Inc., 397 F.3d 1217, 1226 n. 8 (9th Cir.2005).

Summary judgment is appropriate if “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Viewing the facts in the light most favorable to the nonmoving party, we must determine whether a genuine issue of material fact exists, and whether the district court applied the law correctly. See Fortyune v. Am. Multi–Cinema, Inc., 364 F.3d 1075, 1080 (9th Cir.2004).

An issue of fact is “material” if it “might affect the outcome of the suit under the governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); George v. Morris, 736 F.3d 829, 834 (9th Cir.2013). A dispute is “genuine” if “a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505; see FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 514 (9th Cir.2010). Evidence may be offered “to support or dispute a fact” on summary judgment only if it “could be presented in an admissible form at trial.” Fraser v. Goodale, 342 F.3d 1032, 1036–37 (9th Cir.2003); Fed.R.Civ.P. 56(c)(2).

III. THRESHOLD ISSUES

Zaffina presents four threshold challenges to the district court's entry of summary judgment. He argues that the district court lacked subject-matter jurisdiction, that SoCal lacks the capacity to sue, that SoCal lacks standing, and that Zaffina was not properly served with SoCal's motion for summary judgment. These contentions are not correct.

A. Jurisdiction

Zaffina first challenges the district court's subject-matter jurisdiction. He argues that SoCal's suit involves no question of federal law, because it implicates neither common-law trademark rights nor statutory trademark rights. It does not implicate common-law trademark rights, according to Zaffina, because “there is no federal common law of trademark infringement.” Appellant's Br. at 8–9 (quoting Toho Co., Ltd. v. Sears, Roebuck & Co., 645 F.2d 788, 791 (9th Cir.1981)). SoCal's suit also does not implicate statutory trademark rights, Zaffina argues, because SoCal has not registered any of the contested marks.

This argument misapprehends the applicable law. The Lanham Act, 15 U.S.C. ch. 22, grants the federal district courts original jurisdiction over all actions arising under it. See15 U.S.C. § 1121(a). Another statute grants the district courts jurisdiction over “any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks.” 28 U.S.C. § 1338(a).

The pertinent part of SoCal's complaint is based on the provision of the Lanham Act codified at 15 U.S.C. § 1125. This section, unlike certain other Lanham Act provisions, “protects against infringement of unregistered marks and trade dress as well as registered marks.” Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1046 n. 8 (9th Cir.1999); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). The elements of a cause of action under this provision, which are discussed below, do not include registration.

SoCal's claim does arise under the Lanham Act, therefore, notwithstanding the fact that SoCal has not registered any trademarks. Accordingly, the district court did have jurisdiction over SoCal's claim pursuant to 15 U.S.C. § 1121 and 28 U.S.C. § 1338.

B. Capacity to Sue

Zaffina's second threshold argument is that SoCal lacks the capacity to sue. As noted earlier, the corporate powers of the original SoCal corporation were suspended in 1977,...