Lokai Holdings, LLC v. Absolute Marketing

          ORDER

          ROBERT C. JONES United States District Judge

         This case arises out of the alleged infringement of various intellectual property rights related to beaded bracelets. Pending before the Court is a Motion for Summary Judgment (ECF No. 34).

         I. FACTS AND PROCEDURAL HISTORY

         Plaintiff Lokai Holdings, LLC manufactures and sells variously colored beaded bracelets (“the Lokai Bracelet”). (Compl. ¶ 10, ECF No. 1). Lokai Bracelets embody U.S. Patent No. D748, 000. (Id. ¶ 11). Plaintiff has been the owner of the ‘000 Patent since December 2, 2015. (See Patent Assignment Abstract of Title, http://portal.uspto.gov/pair/PublicPair). Lokai Bracelets are sold under or bear standard LOKAI marks, Reg. Nos. 4, 429, 129 and 4, 637, 357; stylized LOKAI marks Reg. Nos. 4, 640, 686 and 4, 742, 254; a water droplet logo mark, Reg. Nos. 4, 636, 915 and 4, 698, 780; and the FIND YOUR BALANCE mark, Reg. No. 4, 870, 494. (Id. ¶ 10). Clear-colored Lokai Bracelets come with an attached tag (“the Hangtag”) registered with the U.S. Copyright Office under VA 1-968-047.

         Defendants Absolute Marketing and Craig Hueffner have used Plaintiff's patent, trademarks, and copyright at trade shows throughout the United States, including in Nevada, and have falsely held themselves out to be sponsored by, authorized by, or otherwise affiliated with Plaintiff. (Id. ¶ 16). At these trade shows, Defendants have marketed, offered for sale, and sold counterfeit versions of the Lokai Bracelet (“the Counterfeit Goods”) that violate Plaintiff's patent, trademarks, and copyright. (Id. ¶ 17).

         Plaintiff's representatives contacted Hueffner by telephone on or about April 4, 2016, notifying him of his infringing activities and demanding that he and Absolute Marketing cease and desist. (Id. ¶¶ 23-24). Plaintiff's representatives also exchanged email correspondence with Hueffner on or about April 4-5, 2016, but Hueffner refused to cease and desist and told Plaintiff's representatives not to contact him again. (Id. ¶ 25). Defendants have continued their infringing activities. (Id. ¶ 26).

         Plaintiff sued Defendants in this Court for trademark infringement, trademark counterfeiting, false advertising and unfair competition under the Lanham Act, patent infringement, and copyright infringement. Based on the executed Summonses, (ECF Nos. 9- 10), Plaintiff appears to have served Hueffner (and thereby also Absolute Marketing) at the Reno-Sparks Convention Center on June 1, 2016. Hueffner has answered, but Absolute Marketing has not appeared. Hueffner has admitted being contacted by telephone on April 4, 2016 and being notified of Plaintiff's rights in the marks at that time but has otherwise denied the allegations in the Complaint. (See Answer, ECF No. 27). Plaintiff has moved for offensive summary judgment on trademark infringement, copyright infringement, statutory damages, and attorney's fees. In response, Hueffner has untimely submitted an “affidavit” that is not notarized and contains no perjury clause as required by 28 U.S.C. § 1746 to substitute for an affidavit. It is therefore neither a proper affidavit nor a proper declaration and is not admissible as evidence, even if the untimeliness were excused.

         II. SUMMARY JUDGMENT STANDARDS

         A court must grant summary judgment when “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). 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. A principal purpose of summary judgment is “to isolate and dispose of factually unsupported claims.” Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).

         In determining summary judgment, a court uses a burden-shifting scheme. The moving party must first satisfy its initial burden. “When the party moving for summary judgment would bear the burden of proof at trial, it must come forward with evidence which would entitle it to a directed verdict if the evidence went uncontroverted at trial.” C.A.R. Transp. Brokerage Co. v. Darden Rests., Inc., 213 F.3d 474, 480 (9th Cir. 2000) (citation and internal quotation marks omitted). In contrast, when the nonmoving party bears the burden of proving the claim or defense, the moving party can meet its burden in two ways: (1) by presenting evidence to negate an essential element of the nonmoving party's case; or (2) by demonstrating that the nonmoving party failed to make a showing sufficient to establish an element essential to that party's case on which that party will bear the burden of proof at trial. See Celotex Corp., 477 U.S. at 323-24.

         If the moving party fails to meet its initial burden, summary judgment must be denied and the court need not consider the nonmoving party's evidence. See Adickes v. S.H. Kress & Co., 398 U.S. 144 (1970). If the moving party meets its initial burden, the burden then shifts to the opposing party to establish a genuine issue of material fact. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). To establish the existence of a factual dispute, the opposing party need not establish a material issue of fact conclusively in its favor. It is sufficient 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. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 631 (9th Cir. 1987). In other words, the nonmoving party cannot avoid summary judgment by relying solely on conclusory allegations unsupported by facts. See Taylor v. List, 880 F.2d 1040, 1045 (9th Cir. 1989). Instead, the opposition must go beyond the assertions and allegations of the pleadings and set forth specific facts by producing competent evidence that shows a genuine issue for trial. See Fed. R. Civ. P. 56(e); Celotex Corp., 477 U.S. at 324.

         At the summary judgment stage, a court's function is not to weigh the evidence and determine the truth, but to determine whether there is a genuine issue for trial. See Anderson, 477 U.S. at 249. The evidence of the nonmovant is “to be believed, and all justifiable inferences are to be drawn in his favor.” Id. at 255. But if the evidence of the nonmoving party is merely colorable or is not significantly probative, summary judgment may be granted. See Id. at 249-50. Notably, facts are only viewed in the light most favorable to the nonmoving party where there is a genuine dispute about those facts. Scott v. Harris, 550 U.S. 372, 380 (2007). That is, even where the underlying claim contains a reasonableness test, where a party's evidence is so clearly contradicted by the record as a whole that no reasonable jury could believe it, “a court should not adopt that version of the facts for purposes of ruling on a motion for summary judgment.” Id.

         III. ANALYSIS

         A. ...