Opinion
CV 14-07241-RSWL-MRWx
05-18-2016
KETAB CORP., Plaintiff, v. MESRIANI LAW GROUP; RODNEY MESRIANI; SEYED ALI LIMONADI; STUDIO CINEGRAPHIC LOS ANGELES dba IRTV; and MELLI YELLOW PAGES, INC., Defendants.
ORDER Granting Melli Defendants' Motion for Judgment as a Matter of Law
This matter came before the Court on Melli Defendants' Motion for Judgment as a Matter of Law. See Minutes of Court Trial (2nd Day), ECF No. 283. This order is intended to memorialize the Court's oral ruling GRANTING Melli Defendants' Motion for Judgment as a Matter of Law.
At the close of Plaintiff Ketab Corporation's ("Plaintiff") case, Defendants Seyed Ali Limonadi, Studio Cinegraphic Los Angeles dba IRTV, and Melli Yellow Pages, Inc. ("Melli Defendants" or "Defendants") moved for judgment as a matter of law on Plaintiff's claims for federal and state trademark infringement and unfair competition, which the Court construes as a motion under Federal Rule of Civil Procedure 52(c) for judgment based on partial findings in a bench trial.
Federal Rule of Civil Procedure 52(c) provides: "If a party has been fully heard on an issue during a nonjury trial and the court finds against the party on that issue, the court may enter judgment against the party on a claim or defense that, under controlling law, can be maintained or defeated only with a favorable finding on that issue. [. . .] A judgment on partial findings must be supported by findings of fact and conclusions of law as required by Rule 52(a)."
When deciding a motion under Rule 52(c), the Court is "not required to draw any inferences in favor of the non-moving party," as it would be required to do when deciding a motion for judgment as a matter of law under Rule 50(a). Ritchie v. United States, 451 F.3d 1019, 1023 (9th Cir. 2006). Rather, the Court "may make findings in accordance with its own view of the evidence." Id. / / / / / / / / / I. FINDINGS OF FACT
Findings of Fact Nos. 1-5 and 7-8 are set out as agreed, stipulated facts in the April 26, 2016, Second Amended Final Pretrial Conference Order [264].
The Court makes the following findings of fact:
1. Plaintiff Ketab is a corporation organized and existing under the laws of the State of California, with its principal place of business at 1419 Westwood Blvd., Los Angeles, CA 90024.
2. Defendant IRTV is a limited liability company organized and existing under the laws of the State of California, with its principal place of business at 12238 Moorpark Street, Studio City, CA 91604.
3. Defendant Melli is a corporation organized and existing under the laws of the State of California, with its principal place of business at 12238 Moorpark Street, Studio City, CA 91604. Melli was incorporated in 2006.
4. Defendant Limonadi is an individual residing in Los Angeles, California. Limonadi is the sole shareholder of Melli.
5. Plaintiff and Melli both provide information directory services in print, by telephone, and online.
6. Plaintiff and Melli both provide information directory services to the Iranian community in
Southern California.
7. Plaintiff and Melli are competitors of each other.
8. Plaintiff is the owner of a Federal Trademark registered under Registration No. 3,271,704, described as the "08" Mark, registered on July 7, 2007, which is now incontestable.
9. The "08" Mark consists of the numbers "08" placed in a dark rectangular box overlaid with horizontal lines that resemble closed shutters. Second Am. Compl., Ex. 1.
10. Melli Defendants have not used the "08" Mark that is the subject of Plaintiff's Registration No. 3,271,704, nor made an imitation of that design mark.
11. Plaintiff publishes a yellow pages directory. "Yellow pages" are a type of telephone directory that lists businesses and professional firms alphabetically by product or service.
12. The name of Plaintiff's yellow pages directory is "Yellow Page-e Iranian," which means "Iranian Yellow Pages." In this action, Plaintiff claims trademark rights in the term "Yellow Page-e Iranian."
13. Plaintiff began using the alleged mark "Yellow Page-e Iranian" in 1982, and on its yellow pages book starting in 1984. In 1992,
Plaintiff filed the fictitious business name for "Yellow Page E Iranian."
14. Plaintiff does not own a United States trademark registration for "Yellow Page-e Iranian."
15. Melli Defendants also publish a yellow pages directory. The name of Defendants' yellow pages directory is "Yellow Page-e Melli," which means "Melli Yellow Pages."
16. Both Plaintiff and Defendant Melli use the phrase "Yellow Page-e" in their yellow page directories.
17. In Farsi, the word "yellow page" followed by the sound "-e" makes the word possessive. For example, "yellow page-e Iranian" means "yellow pages of Iranians," or "Iranian yellow pages."
18. Plaintiff describes his own directory as an Iranian yellow pages.
19. Other companies publish Iranian yellow pages, including a "Yellow Page-e Iranian" of Canada, which advertises its services to consumers in Los Angeles through Plaintiff's yellow pages directory.
20. A company in New York operates a "Yellow Page-e Iranian" to serve the Iranian community in New York.
21. A company in Texas also operates a "Yellow Page-e Iranian" to serve the Iranian community
in Texas.
22. Melli does not use "Yellow Page-e Iranian" as part of its name, but as part of a phrase, which roughly translates to: "the most complete Iranian Yellow Pages abroad." Melli also used the term "Yellow Page-e Iranian" in a 2014 television commercial, as part of a phrase which translates to either "the yellow pages of successful Iranians abroad," or "the successful Iranian Yellow Pages abroad."
23. In 1982, Plaintiff began using "Markaz-e Etelaate Iranian" to identify its telephone hotline service, whereby the public could call and ask for up-to-date telephone numbers for any business. The term "markaz-e etelaate Iranian" translates to "Iranian information center."
24. In this action, Plaintiff claims trademark rights in the term "Iranian Information Center," and its Farsi translation "Markaz-e Etelaate Iranian."
25. Plaintiff does not own a United States trademark registration for "Iranian Information Center" or its Farsi translation, "Markaz-e Etelaate Iranian."
26. Since 2001, Melli has also offered an information center, which it refers to as a "markaz-e etelaate Iranian," or an "Iranian
information center."
II. CONCLUSIONS OF LAW
The Court makes the following conclusions of law:
1. This Court has original subject matter jurisdiction over the claims of the Second Amended Complaint. 28 U.S.C. §§ 1331, 1338, 1367.
2. This Court has personal jurisdiction over Plaintiff Ketab Corp.
3. This Court has personal jurisdiction over Melli Defendants.
4. Venue is proper in this judicial district. 28 U.S.C. § 1391(b)-(c).
5. To establish a trademark infringement claim under section 32 of the Lanham Act (15 U.S.C. § 1114) or an unfair competition claim under section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), Plaintiff must establish that Melli Defendants are using a mark confusingly similar to a valid, protectable trademark of Plaintiff's. Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1046 (9th Cir. 1999). Plaintiff must show the following elements by a preponderance of the evidence: (1) a reproduction, counterfeit, copy or colorable imitation of the mark; (2) without Plaintiff's consent; (3) in commerce; (4) in connection with the sale, offering for sale,
distribution, or advertising of any goods or services; (5) where such use is likely to cause confusion, or to cause a mistake or to deceive. Wecosign, Inc. v. IFG Holdings, Inc., 845 F. Supp. 2d 1072, 1079 (C.D. Cal. 2012) (citing 15 U.S.C. § 1114(1)); Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988).
6. Whereas section 32 of the Lanham Act(trademark infringement) provides protection only to registered marks, section 43(a) of the Lanham Act (unfair competition) protects against infringement of unregistered marks as well as registered marks, and protects against a wider range of practices such as false advertising and product disparagement. Brookfield, 174 F.3d at 1046 n. 8. Although there are some differences between a claim for federal trademark infringement and a claim for federal unfair competition, "the analysis under the two provisions is oftentimes identical." Wecosign, 845 F. Supp. 2d at 1079 (citing Brookfield, 174 F.3d at 1046 n. 8).
7. The Ninth Circuit has consistently held that state common law claims for unfair competition and actions pursuant to California Business and Professions Code § 17200 are "substantially congruent" to claims under the Lanham Act. Id.
(citing Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994)).
8. In cases involving properly registered marks, a presumption of validity places the burden of proving genericness upon the defendant. Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143, 1146 (9th Cir. 1999). If a supposedly valid mark is not federally registered, however, the plaintiff has the burden of proving nongenericness once the defendant asserts genericness as a defense. Id. (citations omitted).
9. The Ninth Circuit recognizes four categories of terms with respect to trademark protection: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. Id.
10. A "generic" term is one that refers, or has come to be understood as referring, to the genus of which the particular product or services is a species. Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 601 F.2d 1011, 1014 (9th Cir. 1979). As one commentator explained, a generic term is "the name of the product or service itself - what [the product] is, and as such . . . the very antithesis of a mark." Filipino Yellow Pages, 198 F.3d at 1147 (quoting 2 J. Thomas McCarthy, Trademarks and Unfair Competition § 12:1[1]
(4th ed. 1997)). Generic terms cannot become a trademark under any circumstances. Surgicenters, 601 F.2d at 1014.
11. In determining whether a term is generic, the Ninth Circuit has often relied on the "who-are-you/what-are-you" test: "A mark answers the buyer's question 'Who are you?' 'Where do you come from?' 'Who vouches for you?' But the [generic] name of the product answers the question 'What are you?'" Filipino Yellow Pages, 198 F.3d at 1147 (quoting Official Airline Guides, Inc. v. Goss, 6 F.3d 1285, 1391 (9th Cir. 1993). Under this test, "[i]f the primary significance of the trademark is to describe the type of product rather than the producer, the trademark [is] a generic term and [cannot be] a valid trademark." Id. (quoting Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., 611 F.2d 296, 304 (9th Cir. 1979)).
12. The term "yellow pages" has been found to be a generic term for "a local business telephone directory alphabetized by product or service." Id. (quoting AmCan Enters., Inc. v. Renzi, 32 F.3d 233, 234 (7th Cir. 1994)).
13. A merely "descriptive" term specifically describes a characteristic or ingredient of an article or service. Surgicenters, 601 F.2d at 1014. A descriptive term can become a valid
trademark by acquiring "secondary meaning" in the minds of consumers, i.e., it has "become distinctive of the [trademark] applicant's goods in commerce." Filipino Yellow Pages, 198 F.3d at 1147.
14. Plaintiff bears the burden of showing secondary meaning, which may be established through, among other things: direct consumer testimony; survey evidence; exclusivity, manner, and length of use of a mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant. Id. at 1151.
15. Evidence of secondary meaning from a partial source possesses very limited probative value. Id. at 1152. For example, declarations from a trademark plaintiff's employees and wholesalers have "little probative value regarding the assessment of consumer perception," because "[t]rademark law is skeptical of the ability of an associate of a trademark holder to transcend personal biases to give an impartial account of the value of the holder's mark." Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 910 (9th Cir. 1995). Likewise, the views of the trademark holder himself do not reliably describe the
perceptions of consumers in general. See Filipino Yellow Pages, 198 F.3d at 1152.
16. A "suggestive" term suggests rather than describes an ingredient, quality, or characteristic of the goods and requires imagination, thought, and perception to determine the nature of the goods. Surgicenters, 601 F.2d at 1014-15. A suggestive term is entitled to registration without proof of secondary meaning. Id.
17. An "arbitrary or fanciful" term is usually applied to words invented solely for their use as trademarks and enjoys all the rights accorded to suggestive terms without debating whether the terms is "merely descriptive" and with ease of establishing infringement. Id. at 1015.
18. "It is a well established principle of trademark law . . . that the foreign equivalent of a merely descriptive English word is no more registrable than the English word itself despite the fact that the foreign term may not be commonly known to the general public." In re Optica Int'l, 196 U.S.P.Q. 775, at *1 (TTAB 1977). Normally no distinction can be made between English terms and their foreign equivalents with respect to registrability. Id. Variations or phonetic equivalents are
equally unregistrable if they are likely to be recognized as such. Id.A. The "08" Mark
19. The test of trademark infringement under state, federal, and common law is whether there will be a likelihood of confusion. M2 Software, Inc. v. Madacy Entm't, 421 F.3d 1073, 1080 (9th Cir. 2005); Brookfield, 174 F.3d at 1053; see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992).
20. In determining the likelihood of confusion, courts in the Ninth Circuit consider the following eight factors, often referred to as the Sleekcraft factors: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and degree of care likely to be exercised by purchasers in selecting goods; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion in product lines. M2 Software, 421 F.3d at 1080 (citations omitted).
21. Plaintiff failed to present any evidence showing that Melli Defendants used the "08" Mark, or a confusingly similar logo or other
similar mark, to promote Melli Defendants' services. Plaintiff has therefore failed to establish a claim for trademark infringement or unfair competition for the "08" Mark. 15 U.S.C. § 1114(1); 15 U.S.C. § 1125(a); Cal. Bus. & Prof. Code § 17200.B. "Yellow Page-e Iranian" and "Iranian Yellow Pages"
22. Plaintiff's testimony and the evidence presented demonstrates that Plaintiff's claimed "Yellow Page-e Iranian" mark translates to "Iranian Yellow Pages." Just as the phrase "Filipino Yellow Pages" was held to be generic in Filipino Yellow Pages, the phrase "Iranian Yellow Pages" is generic with respect to telephone directories, and is incapable of trademark protection. See Filipino Yellow Pages, 198 F.3d at 1151. Under the "who-are-you/what-are-you" test, the term "Iranian Yellow Pages" is generic. If faced with the question, "What are you?," Plaintiff's directory, Defendant's directory, and the directories in Texas, New York, and Canada, could all respond in the same way: "an Iranian yellow pages." At trial, Plaintiff described his own publication as an Iranian yellow pages. Plaintiff's testimony also established that it did not bring suit to challenge the use of
"Yellow Page-e Iranian" by the yellow pages companies in Texas, New York, and Canada. Lastly, Defendant testified that it uses the phrase "yellow page-e Iranian" to explain its product as "the most complete yellow pages for Iranians abroad." If this Court were to grant Plaintiff exclusive rights to the term "Iranian Yellow Pages," it would effectively grant Plaintiff as owner of the mark "a monopoly, since a competitor could not describe his goods as what they are." Surgicenters, 601 F.2d at 1017. For these reasons, Plaintiff has not met its burden to prove that the unregistered term "Iranian Yellow Pages" is not generic.
23. Plaintiff suggests that its term "Yellow Page-e Iranian" is arbitrary and fanciful because the word "Yellow Page" does not exist in the Farsi language. However, Plaintiff did not present any evidence of consumer perceptions indicating that the primary significance of the exact term "Yellow Page-e Iranian" is not the service, but the server. See Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 718 F.2d 327, 330 (9th Cir. 1983), rev'd on other grounds 469 U.S. 189 (1985); Surgicenters, 601 F.2d at 1016. At best, Plaintiff's Farsi-English term "Yellow Page-e Iranian" directly describes the service
to which the mark is affixed, i.e., an Iranian yellow pages. See Park 'N Fly, 718 F.2d at 330 (finding "Park 'N Fly" to be descriptive because "'park and fly' is a clear and concise description of a characteristic or ingredient of the service offered - the customer parks his car and flies from the airport"). Plaintiff's term "Yellow Page-e Iranian" used in the context of telephone directory services is generic, or at best, a merely descriptive mark.C. "Markaz-e Etelaate Iranian" and "Iranian Information Center"
24. For similar reasons, Plaintiff did not meet its burden to show that its unregistered term "Markaz-e Etelaate Iranian," which translates to "Iranian Information Center," is not generic, regardless of whether the term is given its English meaning or its Farsi meaning. "Iranian Information Center" describes what Plaintiff's service is: an information center for Iranians. Plaintiff failed to produce evidence of nongenericness that is sufficient to rebut even modest evidence of genericness, and Plaintiff's own testimony stated that anyone can use the term "information center." There is no evidence as to what potential customers understood or identified by the mark
"Iranian Information Center." Plaintiff failed to show that the consuming public connects the term "Iranian Information Center" with the server, rather than the service. Surgicenters, 601 F.2d at 1017. Accordingly, "Iranian Information Center" and "Markaz-e Etelaate Iranian" are generic.D. No Secondary Meaning
25. Because "Yellow Page-e Iranian," "Iranian Information Center, and "Markaz-e Etelaate Iranian" are generic and not protectable, Plaintiff is not entitled to judgment for trademark infringement or unfair competition under federal or California law.
26. Even assuming "Yellow Page-e Iranian" and "Iranian Information Center" are merely descriptive (rather than generic), Plaintiff's terms are the feeblest of descriptive marks, and Plaintiff did not meet its burden to show that the marks acquired secondary meaning. The only evidence Plaintiff presented regarding secondary meaning included: (1) Plaintiff's testimony regarding the exclusivity of Plaintiff's use of the claimed marks from 1981 until 1994; (2) Plaintiff's testimony and the front covers of Plaintiff's 1989, 2004, 2006, and 2008 directories stating that the
circulation of Plaintiff's directories were in the tens of thousands each year; (3) and Plaintiff's testimony that he advertised the marks on TV, radio stations, newspapers, magazines, trade shows, special events, and through email blasts. Plaintiff's uncorroborated and self-interested testimony is entitled to little weight, and does not establish that the terms "Yellow Page-e Iranian" or "Iranian Information Center" acquired secondary meaning. Filipino Yellow Pages, 198 F.3d at 1152. This testimony does not show that "in the minds of the public, the primary significance of [the] mark[s] is to identify the source of the product rather than the product itself." Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1095 (9th Cir. 2004). Plaintiff did not present any strong evidence of the following factors: consumer perception or direct consumer testimony, amount of advertising, amount of sales and number of customers, established place in the market, proof of intentional copying by defendant, or actual confusion. See Filipino Yellow Pages, 198 F.3d at 1151 (listing factors used to establish secondary meaning).E. No Likelihood of Confusion
27. Even assuming, arguendo, that Plaintiff established the validity of its asserted marks in "Yellow Page-e Iranian" and "Iranian Information Center," Plaintiff did not meet its burden to show that Defendants' use of the marks is likely to cause confusion about the source of Plaintiff's or Defendant's products. Brookfield, 174 F.3d at 1053 ("The core element of trademark infringement is the likelihood of confusion, i.e., whether the similarity of the marks is likely to confuse customers about the source of the products."). The fact that Ketab and Melli both provide information directory services and are competitors of each other, without more, does not establish a likelihood of confusion. The weakness of Plaintiff's alleged marks, and Plaintiff's failure to adduce evidence regarding actual confusion, Defendant's intent, marketing/advertising channels used by both Plaintiff and Defendant, and the degree of care likely to be exercised by consumers do not support a likelihood of confusion. Defendant's use of the Farsi words for "Iranian information center" in its television advertising, and use of the term "yellow page-e Iranian" as part of a longer
phrase on the cover of its Melli Yellow Pages directory and in its television advertising, is not similar to Plaintiff's marks, and is not likely to cause confusion about the source of the goods.F. No Injunctive Relief is Warranted
28. Trademark law gives federal courts the "power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable." La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867, 880 (9th Cir. 2014) (quoting 15 U.S.C. § 1116). A permanent injunction may be entered where the plaintiff shows: "(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of the hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction." Id. (quoting eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)). In exercising its equitable discretion to decide whether to grant or deny a permanent injunction, the district court must consider the unique circumstances of
each case. Id.
29. The Court denies Plaintiff's request for injunctive relief because "[t]o allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are." Surgicenters, 601 F.2d at 1017 (quoting C.E.S. Publ'g Corp. v. St. Regis. Publ'ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975)).
30. However, even if Plaintiff had shown infringement of valid and protectable marks, Plaintiff did not prove through competent, credible evidence, any basis on which to find irreparable harm from Melli Defendants' use of the "08" Mark, "Yellow Page-e Iranian," or "Iranian Information Center" and its Farsi translation. Plaintiff did not meet its burden to demonstrate irreparable harm, and Plaintiff is not entitled to a permanent injunction. See Herb Reed Enters., LLC v. Fla. Entm't Mgm't, Inc., 736 F.3d 1239, 1249 (9th Cir. 2013).
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979). --------
In accordance with Rule 52(c), Melli Defendants' Motion for Judgment as a Matter of Law is GRANTED. The Court finds against Plaintiff on its claims for trademark infringement and unfair competition, and denies all of Plaintiff's requested relief. Judgment shall be entered for Melli Defendants.
IT IS HEREBY ORDERED that Melli Defendants are directed to file a proposed judgment on or before May 25, 2016.
IT IS SO ORDERED.
DATED: May 18, 2016
s/ RONALD S.W. LEW
HONORABLE RONALD S.W. LEW
Senior U.S. District Judge