Calmese v. Adidas America Incorporated

MOTION to Dismiss for Lack of Jurisdiction, MOTION to Dismiss for Failure to State a Claim

D. Ariz.August 16, 2016

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 K. Reed Willis (#028060) PERKINS COIE LLP 2901 North Central Avenue, Suite 2000 Phoenix, Arizona 85012-2788 Telephone: 602.351.8000 Facsimile: 602.648.7000 DocketPHX@perkinscoie.com RWillis@perkinscoie.com Stephen M. Feldman (pending pro hac vice) PERKINS COIE LLP 1120 N.W. Couch Street, Tenth Floor Portland, Oregon 97209-4128 Telephone: 503.727.2000 Facsimile: 503.727.2222 SFeldman@perkinscoie.com Attorneys for Defendant adidas America, Inc. UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA Michael D. Calmese, a resident of Arizona, Plaintiff, v. Adidas America, Inc., a Delaware corporation, Defendant. No. CV-16-2271-PHX-JZB MOTION TO DISMISS (Oral Argument Requested) Pursuant to Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6), Defendant adidas America, Inc. (“adidas”) respectfully moves to dismiss all of the claims asserted in this action by Plaintiff Michael Calmese (“Mr. Calmese”). INTRODUCTION AND SUMMARY OF ARGUMENT Mr. Calmese is a textbook vexatious litigant. More Specifically, Mr. Calmese is a serial litigant who routinely files frivolous lawsuits against large companies with the sole objective of trying to extort a settlement payoff. His well-used “playbook” includes only Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 1 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -2- one play: that is, continue to file as many meritless motions as possible and be as discourteous and unscrupulous as possible until the opposing party succumbs to the harassment and expense of the litigation and agrees to pay Mr. Calmese to simply go away. The Honorable Kent J. Dawson, a United States District Judge for the District of Nevada, has described Mr. Calmese’s often-repeated conduct as follows: Mr. Calmese has been involved in a pattern of litigation against athletic companies, sports teams, and others and has filed numerous trademark lawsuits. In these cases, Mr. Calmese has demonstrated a habit of disregarding courtesy to opposing counsel, unscrupulous conduct relating to settlement, wasteful litigation practices, and unwillingness to follow court orders. * * * Mr. Calmese seems to think that nuisance litigation of the type on display here and in the Nike and Adidas cases can be leveraged into lucrative settlements. See Declaration of K. Reed Willis (“Willis Decl.”), Ex. A, at pp. 4-5 (emphasis in original; footnote omitted).1 Both Judge Dawson and at least one other federal district court judge -- namely, The Honorable Anna J. Brown of the United States District Court for the District of Oregon -- have imposed sanctions against Mr. Calmese for his vexatious litigation conduct.2 In the case before Judge Brown, as in the present case, Mr. Calmese targeted 1 All of the exhibits cited in this Motion to Dismiss are attached to the supporting Declaration of K. Reed Willis. And all of these exhibits are either prior Orders in cases involving Mr. Calmese or pleadings submitted in the underlying proceeding in the United States Patent and Trademark Office (“USPTO”) on which Mr. Calmese’s claims in this case are based. This Court can take judicial notice of these prior Orders and pleadings, and they properly can be considered in connection with the present Motion to Dismiss. See Intri-Plex Technologies, Inc. v. Crest Group, Inc., 499 F.3d 1048, 1052 (9th Cir. 2007) (recognizing that “[a] court may take judicial notice of ‘matters of public record’ without converting a motion to dismiss into a motion for summary judgment,” as long as the facts noticed are not “subject to reasonable dispute”) (quoting Lee v. City of Los Angeles, 250 F.3d 668, 689 (9th Cir. 2001)); Five Points Hotel Partnership v. Pinsonneault, 835 F. Supp. 2d 753, 757 (D. Ariz. 2011) (noting that “[t]he Court can, however, take judicial notice of matters of public record without converting a motion to dismiss into a motion for summary judgment[,]” and concluding that “[t]he Court will take judicial notice of the attached documents because they are matters of public record”). 2 The sanctions imposed by both Judge Dawson and Judge Brown took the form of an award of attorney’s fees against Mr. Calmese upon a finding that each of the respective cases constituted an “exceptional case” under § 1117(a) of the Lanham Act. See Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 2 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -3- his vexatious and harassing litigation conduct against adidas. In imposing sanctions against Mr. Calmese, Judge Brown discussed in detail Mr. Calmese’s “blatant disregard of Court orders and the Local Rules” as well as his “repeated and frivolous filings.” Id., Ex. B, at p. 12. And Judge Brown ultimately concluded that: These actions by Calmese needlessly prolonged these proceedings and caused serious inconvenience and economic hardship for adidas’s counsel. At numerous stages throughout this litigation, the Court, as noted, had to repeat instructions to Calmese to follow the Local Rules, particularly with respect to conferral rules; to limit Calmese’s filings; and to admonish Calmese in writing and in person to obey the Court’s unambiguous and direct instructions. Nevertheless, Calmese continued to show a lack of respect for the legal process, for this Court and its rulings, and for adidas’s counsel. As a result of Calmese’s unreasonable and vexatious behavior, the Court concludes this matter qualifies as an “exceptional case” under § 1117(a) as interpreted by the Ninth Circuit, and adidas, therefore, is entitled to seek an award of attorneys’ fees against Calmese. * * * In light of the foregoing and in the exercise of its discretion, the Court awards adidas $75,000 in attorneys’ fees pursuant to § 1117(a). The Court concludes this amount is sufficient to deter Calmese from engaging in this type of litigation behavior in the future and to compensate adidas’s counsel for the additional time spent to respond to Calmese’s frivolous, vexatious, and unauthorized filings. Id., Ex. B, at pp. 13 & 18 (footnote omitted).3 15 U.S.C. § 1117(a) (“The court in exceptional cases may award reasonable attorney fees to the prevailing party.”). In both cases, as discussed herein, the court determined that the case qualified as an “exceptional case” by virtue of Mr. Calmese’s vexatious and unreasonable litigation conduct. See generally Willis Decl., Exs. A & B. 3 In Judge Dawson’s Order imposing sanctions against Mr. Calmese, Judge Dawson made the following findings and, additionally, Judge Dawson concluded that Mr. Calmese’s pro se status provided him no excuse for his wasteful and inappropriate litigation practices: As noted above, Mr. Calmese’s conduct in this litigation has inconvenienced and caused economic hardship to MOM. Of particular concern to the Court are Mr. Calmese’s sleight of hand tactics in settlement negotiations, backsliding on an agreement for an extension, dilatory conduct in relation to depositions, and unwillingness to respect Judge Leen’s instructions on filing discovery motions. This type of conduct creates inconvenience and waste which negatively affect opposing parties, the Court, and litigants in other cases with meritorious claims. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 3 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -4- Notably, prior to the imposition of sanctions by Judge Brown and Judge Dawson, The Honorable Roslyn O. Silver of this Court expressly admonished and warned Mr. Calmese in the Calmese v. Nike case that his conduct “came perilously close to warranting § 1117(a) attorneys’ fees.” Id., Ex. C, at p. 8. In her Order dated September 8, 2009, Judge Silver further noted: Inexplicably, [Mr. Calmese] supports [Nike’s] argument by bringing to the Court’s attention numerous prior or pending cases in which [Mr. Calmese] engaged in identical conduct to win large settlements from other sporting-good retailers (Doc. 127 at 2-3). The two most recent, one filed in the Southern District of New York in 2006 and another in the District of Oregon in 2008, confirm [Nike’s] allegation that [Mr. Calmese] “has made a pattern – and even his living – off of suing companies in hopes of getting a big payday” (Doc. 125 at 10). In all three cases, including the present, [Mr. Calmese] saw an advertisement or sporting good product produced by a large corporation that incorporated the phrase “prove it.” [Mr. Calmese] subsequently contacted each company, demanding compensation for the infringement and threatening a lawsuit, often using identically-worded threats: “Calmese has threatened that he ‘could (and would) make Eastbay miserable in Court should [he] not receive satisfaction.’” Pla.’s Compl. at ¶ 16, Eastbay, Inc. v. Calmese, CV-06-0162 (S.D.N.Y.) (Jan. 10, 2006); see also Def.’s Opp’n to Pla.’s Mot. for a Prelim. Inj. at Ex. 2E, Calmese v. Nike, Inc., CV-06-1959-PHX-ROS (Doc. 13) (“I certainly could (and would) make Nike miserable in Court should I not receive satisfaction here.”). To expedite settlement, [Mr. Calmese] then sent numerous correspondences to each target, apparently to convince everyone involved that [Mr. Calmese] was in fact capable of making the opposing party miserable in court. See Pla.’s Compl. at ¶¶ 14-16, Eastbay, Inc., CV-06-0162; Pla.’s Compl. at ¶¶ 16-19, Adidas of Am., Inc. v. Calmese, CV-08-0091 (D. Or.) (Jan. 18, 2008). Id., Ex. C, at p. 6 (omitting footnote listing additional lawsuits initiated by Mr. Calmese). Mr. Calmese argues that “the fact that Calmese appeared pro se does excuse his conduct.” The Court disagrees. Pro se status is no excuse for discourteous and unreasonable behavior. Mr. Calmese is a frequent litigant who has been warned about his conduct by several judges and has had an award of attorneys’ fees levied against him by Judge Brown. Accordingly, the Court finds that this case is exceptional for purposes of § 1117(a). Willis Decl., Ex. A, at p. 5 (internal citation omitted). Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 4 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -5- Despite Judge Silver’s admonishment, Mr. Calmese made no effort to change his tactics, as plainly evidenced by the subsequent imposition of sanctions by both Judge Brown and Judge Dawson. Moreover, although Judge Brown and Judge Dawson attempted to deter further improper and vexatious litigation conduct by Mr. Calmese through the imposition of sanctions against him, those attempts have been equally unsuccessful.4 Indeed, the present action that Mr. Calmese has filed against adidas is simply his latest frivolous lawsuit that, in the words of Judge Dawson, Mr. Calmese believes “can be leveraged into [a] lucrative settlement[].” See Willis Decl., Ex. A, at p. 5. The claims asserted by Mr. Calmese in his operative Amended Complaint for Declaratory Judgment (Doc. No. 13, the “Amended Complaint”) are fundamentally flawed for several separate and independent reasons. First of all, the entire premise of Mr. Calmese’s lawsuit is illogical and runs contrary to the indisputable underlying facts. All four (4) of Mr. Calmese’s “causes of action” are premised on the notion that adidas somehow committed fraud by continuing to participate in the trademark cancellation proceeding pending between adidas and Mr. Calmese in the USPTO after the United States Court of Appeals for the Ninth Circuit issued its Mandate on April 18, 2013, in a related, but separate, federal court proceeding between the parties.5 This foundation for Mr. Calmese’s present lawsuit is utterly baseless. Indeed, if Mr. Calmese believed that the Mandate issued by the Ninth Circuit had the effect of terminating the cancellation proceeding, he could have simply brought the Mandate to the attention of the TTAB and 4 adidas notes that despite Judge Brown having ordered Calmese over five (5) years ago to pay adidas $75,000, Calmese has not paid adidas a single cent of that amount. Nor has Mr. Calmese paid adidas any of the $2,882.52 that Judge Brown awarded to adidas as prevailing party costs. adidas has sought enforcement of the amounts due and owing, but Mr. Calmese has resisted payment at every turn. Instead of complying with Judge Brown’s Orders awarding sanctions and costs against him, Mr. Calmese is expending sums in pursuit of additional frivolous litigation against adidas (i.e., the present action). 5 The trademark cancellation proceeding was, more specifically, pending with the USPTO’s Trademark Trial and Appeal Board (the “TTAB” or “Board”). Furthermore, from shortly after its commencement until its termination, the cancellation proceeding was suspended (i.e., stayed) by the TTAB, including the entirety of the period after the issuance of the Ninth Circuit’s Mandate. How Mr. Calmese could possibly have been harmed by the mere pendency of a suspended cancellation proceeding is a complete mystery, and Mr. Calmese’s Amended Complaint sheds no light on the subject. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 5 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -6- requested that the cancellation proceeding be dismissed. However, not only did Mr. Calmese fail to do so, he did the exact opposite. That is, Mr. Calmese himself informed the TTAB, after the issuance of the Ninth Circuit’s Mandate, that the cancellation proceeding should not be terminated, but instead should remain suspended. It was not until over two and a half years after the issuance of the Ninth Circuit’s Mandate that Mr. Calmese first took the position that the issuance of the Mandate compelled the termination of the TTAB cancellation proceeding. And then, upon this sudden and fundamental change of Mr. Calmese’s position, the TTAB requested a response from adidas and adidas, in turn, voluntarily withdrew the cancellation proceeding. The idea that these events give rise to a legal cause of action against adidas is preposterous. Yet another fundamental defect with the basic foundation of Mr. Calmese’s claims is that they are all (incorrectly) premised on the notion that under 37 CFR § 1.197 (hereinafter, “Rule 1.197”), the issuance of the Mandate by the Ninth Circuit had the effect of terminating the TTAB cancellation proceeding. In fact, this is essentially the entire basis of Mr. Calmese’s case. As Mr. Calmese alleges in his Amended Complaint: “All of the pleadings filed by adidas in the Cancellation Proceeding after the April 18, 2013 MANDATE were filed in bad faith and are fraudulent in view of U.S. Trademark Rule 1.197.” Am. Complt. ¶ 16 (emphasis in original). The fatal defect here is that Rule 1.197 has absolutely no applicability in this case because it is a patent rule, not a trademark rule.6 And even if Rule 1.197 did apply to the trademark cancellation proceeding at issue here, which plainly it does not, Rule 1.197 still would offer no support for Mr. Calmese’s claims, given that Rule 1.197 simply and logically states that a patent 6 Oblivious to the fact that he has based his entire case on an inapplicable patent rule, Mr. Calmese repeatedly and incorrectly refers to Rule 1.197 as “U.S. Trademark Rule 1.197.” Furthermore, in paragraph 11 of his Amended Complaint, Mr. Calmese misquotes the actual language of Rule 1.197(b). What that rule actually states, in relevant part, is as follows: “The date of termination of proceedings on an application [for a patent] is the date on which the appeal is dismissed or the date on which the time for appeal to the U.S. Court of Appeals for the Federal Circuit or review by civil action (§ 90.3 of this chapter) expires in the absence of further appeal or review.” See 37 CFR § 1.197(b). Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 6 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -7- application proceeding is terminated when the appeal in that proceeding comes to an end. Here, however, Mr. Calmese is focusing on a Mandate issued in a federal court proceeding that is entirely separate from the TTAB cancellation proceeding. In light of the inherent defects with the basic foundation of his claims, Mr. Calmese has not stated a viable claim for relief and all of his claims should be dismissed pursuant to Rule 12(b)(6).7 Moreover, even if Mr. Calmese had stated a viable claim for relief, which he has not, his claims still should be dismissed under Rule 12(b)(1) because this Court lacks subject matter jurisdiction. This is true for at least two different reasons. First, what Mr. Calmese appears to be complaining about (for entirely nonsensical reasons) is the TTAB’s ultimate disposition of the cancellation proceeding; indeed, Mr. Calmese alleges as follows in his Amended Complaint: “On April 4, 2016, the TTAB finally Terminated adidas’ Cancellation Proceeding but failed to acknowledge U.S. Trademark Rule 1.197 or the fraud allegedly committed by adidas supported by two unopposed sworn Affidavits.” Am. Complt. ¶ 20 (emphasis in original). The problem for Mr. Calmese is that under the applicable trademark rules, he had two months from the date of the TTAB’s decision (i.e., two months from April 4, 2016) to file a civil action challenging that decision, but Mr. Calmese failed to file this action within the mandatory two-month window.8 Accordingly, this action is time barred. Second, Mr. Calmese has filed this action as an action for strictly declaratory relief and has done so under the Declaratory Judgement Act, 28 U.S.C. § 2201(a). The Declaratory Judgement Act, however, does not provide litigants with an independent jurisdictional basis for suits in a federal court. But, here, Mr. Calmese does not allege any viable source of federal subject matter jurisdiction separate and apart from the Declaratory Judgement Act. Accordingly, for this additional reason, this Court lacks subject matter jurisdiction over this action. 7 As discussed below, certain of Mr. Calmese’s claims (specifically, his Second, Third, and Fourth Causes of Action) should be dismissed under Rule 12(b)(6) for additional reasons. 8 Mr. Calmese filed this action on July 11, 2016. See Doc. No. 1. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 7 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -8- BACKGROUND A. The Oregon District Court Action9 In response to multiple cease-and-desist letters from Mr. Calmese regarding adidas’s alleged improper use of the phrase “prove it,” adidas filed an action in the United States District Court for the District of Oregon (the “Oregon Action”) on January 18, 2008. See Willis Decl., Ex. B, at p. 2. In the Oregon Action, adidas sought “a declaration of noninfringement of Calmese’s ‘Prove It!’ trademark under 15 U.S.C. § 1114, a declaration on nonfalse designation of origin under 15 U.S.C. § 1125(a), and cancellation of Calmese’s trademark under 15 U.S.C. § 1119.” Id. Mr. Calmese subsequently filed an answer in which he asserted, inter alia, “two Counterclaims against adidas for trademark infringement under 15 U.S.C. § 1114 and for violation of Oregon’s Unlawful Trade Practices Act.” Id., Ex. B, at pp. 2-3. adidas eventually moved for summary judgment on all three of its claims and both of Mr. Calmese’s counterclaims. See id., Ex. B, at p. 3. The Court (i.e., Judge Brown) granted summary judgment in favor of adidas as to both of Mr. Calmese’s counterclaims, as well as adidas’s claims for a declaration of noninfringement and a declaration of nonfalse designation of origin. See id. The only claim on which summary judgment was denied was adidas’s claim for cancellation of Mr. Calmese’s trademark. See id. adidas’s claim for cancellation of Mr. Calmese’s trademark proceeded to a bench trial. Id. Following the trial, Judge Brown rendered a verdict against adidas on its cancellation claim, finding that the evidence was in “equipoise” and that since adidas had the burden of proof on its cancellation claim, a verdict in favor of Mr. Calmese was warranted. See id. 9 Unless otherwise noted, the factual background regarding the Oregon district court action between Mr. Calmese and adidas is taken from Judge Brown’s Opinion and Order that is attached as Exhibit B to the supporting Declaration of K. Reed Willis. As discussed above, the Court may take judicial notice of these background facts which are a matter of public record. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 8 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -9- As indicated above, Judge Brown determined that adidas was the prevailing party in the Oregon Action, and on February 2, 2011, Judge Brown entered an Order awarding taxable costs in favor of adidas and against Mr. Calmese in the amount of $2,882.52. Id., Ex. D. Thereafter, on May 13, 2011, Judge Brown issued her Opinion and Order finding the Oregon Action to be an “exceptional case” under the Lanham Act, 15 U.S.C. § 1117(a), and awarding attorney’s fees in favor of adidas and against Mr. Calmese in the amount of $75,000. Id., Ex. B. The Ninth Circuit subsequently affirmed Judge Brown’s disposition of all of the claims and counterclaims in the Oregon Action and, additionally, affirmed Judge Brown’s award of attorney’s fees in favor of adidas and against Mr. Calmese. Id., Ex. E. With regard to its affirmance of the fee award, in particular, the Ninth Circuit held that “[t]he district court did not abuse its discretion in awarding a portion of [a]didas’s attorney’s fees in light of Calmese’s litigation tactics and repetitive filings, and because the record supports the amount of fees awarded.” Id., Ex. E, at p. 3. The Ninth Circuit subsequently issued its Mandate on April 18, 2013. Id., Ex. F. B. The Trademark Trial and Appeal Board Proceeding On January 23, 2008, shortly after adidas filed the Oregon Action, it commenced a proceeding with the TTAB in which adidas sought cancellation of Mr. Calmese’s “Prove It!” trademark (the “Cancellation Proceeding”). Id., Exs. G & H. Not long thereafter, on July 2, 2008, the TTAB suspended the Cancellation Proceeding pending the disposition of the Oregon Action. Id., Ex. I. The Cancellation Proceeding remained suspended following the issuance of the Ninth Circuit’s affirmance of all of Judge Brown’s rulings in the Oregon Action and the subsequent issuance of the Ninth Circuit’s Mandate on April 18, 2013. And, notably, it was Mr. Calmese, not adidas, who requested the continuation of the suspension of the Cancellation Proceeding following the issuance of the Ninth Circuit’s Mandate. Mr. Calmese initially requested that the Cancellation Proceeding remain suspended because he was going to file a petition for certiorari with the United States Supreme Court. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 9 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -10- Indeed, it was based on this representation by Mr. Calmese that the TTAB continued the suspension of the Cancellation Proceeding. On April 29, 2013, the TTAB issued a decision that the suspension of the Cancellation Proceeding should continue, and in reaching that conclusion, the TTAB stated as follows: The Board also notes that Mr. Calmese’s April 10, 2013 filing states that the Ninth Circuit Court of Appeals reached a final determination of the civil action on April 8, 2013, and that Mr. Calmese plans to file a petition for certiorari. In view of Mr. Calmese’s statement, and inasmuch as Mr. Calmese’s time in which to file an appeal from the Ninth Circuit has not yet run (see, e.g., Sup. Ct. R. 13 (allowing 90 days for a writ of certiorari)), petitioner’s motion to resume proceedings is denied. * * * In view of the denial of the motion to resume, proceedings in this Board case remain suspended pending final determination of the civil action, including joint respondent Mr. Calmese’s (presumptive) appeal to the Supreme Court. See Trademark Rule 2.117(a). Id., Ex. J, at p. 3.10 Over a year later, on September 12, 2014, the TTAB issued its standard request for a status update, which read as follows: The parties are allowed until thirty days from the mailing date of this order in which to inform the Board of the status of the civil action which occasioned the suspension of this proceeding. If no response to this order is received from either party, the Board will resume proceedings and reset dates, as appropriate. Proceedings otherwise remain suspended pending a response to this order. 10 As indicated above, in its ruling on April 29, 2013, the TTAB expressly acknowledged that it was informed (via Mr. Calmese’s April 10, 2013 filing) that “the Ninth Circuit Court of Appeals reached a final determination of the [Oregon Action] on April 8, 2013[.]” Yet, remarkably, the entire foundation for the current action by Mr. Calmese is that the TTAB purportedly was kept in the dark about the Ninth Circuit’s final determination in the Oregon Action. There is obviously no merit whatsoever to Mr. Calmese’s claims in this action. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 10 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -11- Id., Ex. K.11 Mr. Calmese responded three (3) days later on September 15, 2014, and in his filing, Mr. Calmese stated, in pertinent part, that: PLEASE TAKE NOTICE, pursuant to the Board’s Order dated September 12, 2014, that the civil action which occasioned the suspension of this proceeding is still pending and has not come to final determination . . . . Id., Ex. L, at p. 1. Based on this representation by Mr. Calmese, the TTAB continued the suspension of the Cancellation Proceeding. Specifically, on October 8, 2014, the TTAB issued an order, stating: The Board has been notified that the civil action which occasioned the suspension of this proceeding is still pending. Accordingly, proceedings remain suspended pending final determination of the civil action. See Trademark Rule 2.117(a). Id., Ex. M. More than a year passed before there was any further action in the Cancellation Proceeding. See id., Ex. G. Thus, during that time, Mr. Calmese took no action to confirm with the TTAB that there had been a final determination in “the civil action which occasioned the suspension of th[e] [C]ancellation [P]roceeding.” Rather, the next action in the Cancellation Proceeding was the TTAB once again issuing a standard request for a status update, which occurred on October 15, 2015. See id., Ex. N. Like all of the other such requests, the October 15, 2015 request stated: The parties are allowed until 30-days from the mailing date of this order in which to inform the Board of the status of the civil action which occasioned the suspension of this proceeding. If no response to this order is received from 11 In his Amended Complaint, Mr. Calmese recklessly accuses adidas of “willful noncompliance” with the TTAB’s status update request of September 12, 2014, as well as two virtually identical (and materially indistinguishable) status update requests. See Am Complt. ¶ 32. This accusation is demonstrably false, given that none of the three referenced status update requests actually require either party to the Cancellation Proceeding to do anything. Rather, the status update requests simply “allowed” the parties an opportunity to inform the TTAB “of the status of the civil action which occasioned the suspension of this proceeding” and made clear that if no response was received from either party, then the TTAB would resume the Cancellation Proceeding. And, as indicated above and discussed further below, it was Mr. Calmese himself who responded to the September 12, 2014 status update request by requesting that the Cancellation Proceeding remain suspended. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 11 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -12- either party, the Board will resume proceedings and reset dates, as appropriate. Proceedings otherwise remain suspended pending a response to this order. Id. Mr. Calmese responded to the TTAB’s status request on October 30, 2015, requesting for the first time that the Cancellation Proceeding be terminated in light of the Ninth Circuit’s decision in the Oregon Action and the issuance of its Mandate over 2 and 1/2 years earlier on April 18, 2013. Id., Ex. O. Mr. Calmese specifically stated as follows in his October 30, 2015 filing: “Because of Trademark Rule 1.197 and because the 9th Circuit Court of Appeals has ruled on and dismissed Case No. 11-35080 in Mr. Calmese’s favor regarding cancellation, adidas’ Cancellation Proceeding No. 92048777 should respectfully be terminated immediately and is no longer appropriate.” Id., Ex. O, at pp. 1- 2. In response to Mr. Calmese’s filing on October 30, 2015, the TTAB issued an Order on January 6, 2016, stating: “The Board construes [Mr. Calmese’s] October 30, 2015 response to the Board’s status inquiry as a motion for summary judgment asserting claim or issue preclusion.” Id., Ex. P, at p. 1. The TTAB ordered adidas to file a response within 30 days. Id. On February 4, 2016, adidas filed a notice of withdrawal of the Cancellation Proceeding, which specifically stated: “Pursuant to the Board’s January 6, 2016 Order and TBMP § 601.02, Petitioner, adidas America, Inc., by and through undersigned counsel, hereby files this notice of withdrawal of this cancellation proceeding, with prejudice.” Id., Ex. Q. Subsequently, on April 4, 2016, the TTAB dismissed the Cancellation Proceeding via an Order that stated as follows: On February 4, 2016, Petitioner filed a withdrawal of the petition to cancel with prejudice. In view thereof, the petition to cancel is dismissed with prejudice. Id., Ex. R. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 12 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -13- ARGUMENT A. Legal Standard Federal Rule of Civil Procedure 12(b)(6) provides that a pleading that fails to state a claim upon which relief can be granted is subject to dismissal. A “complaint . . . must contain either direct or inferential allegations respecting all the material elements necessary to sustain recovery under some viable legal theory” to avoid dismissal. Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 562 (2007). To survive a Rule 12(b)(6) motion to dismiss, “a complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). “Facial plausibility exists if the pleader pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Five Points Hotel Partnership, 835 F. Supp. 2d at 758. Thus, a plaintiff must allege facts that add up to “more than a sheer possibility that a defendant has acted unlawfully.” Iqbal, 556 U.S. at 678. Rather, a plaintiff must allege facts sufficient to “raise a right to relief above the speculative level.” Twombly, 550 U.S. at 555. Pleadings need not contain detailed factual allegations, but “labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do[.]” Id. “Dismissal is proper when the complaint does not make out a cognizable legal theory or does not allege sufficient facts to support a cognizable legal theory.” Cervantes v. Countrywide Home Loans, Inc., 656 F.3d 1034, 1041 (9th Cir. 2011) (affirming district court’s dismissal of plaintiffs’ conspiracy to commit fraud claim because “plaintiffs’ allegations fail[ed] to address several . . . necessary elements for a fraud claim”).12 12 While the Court must accept all well-pleaded factual allegations as true in deciding a motion to dismiss under Rule 12(b)(6), “the Court does not have to accept as true a legal conclusion couched as a factual allegation.” Five Points Hotel Partnership, 835 F. Supp. 2d at 758 (citing Papasan v. Allain, 478 U.S. 265, 286 (1986)). Additionally, as noted above, the Court may, in deciding a motion to dismiss, “take judicial notice of matters of public record[.]” Id. at 757. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 13 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -14- B. Mr. Calmese Has Not Stated A Viable Claim For Relief As discussed above, all of the claims asserted in Mr. Calmese’s Amended Complaint are premised on the notion that adidas somehow committed fraud by continuing to participate in the (suspended) Cancellation Proceeding after the Ninth Circuit issued its Mandate on April 18, 2013, in the Oregon Action. Mr. Calmese makes this abundantly clear in the first paragraph of his Amended Complaint in which he describes the “Nature of Action” as follows: This is an action seeking a declaratory judgment under 28 U.S.C. §§ 2201 and 2202 that all of the unnecessary pleadings filed by adidas against Mr. Calmese in the Cancellation Proceeding . . . AFTER the Ninth Circuit Court of Appeals issued a MANDATE on April 18, 2013, Case No. 11-35080 does constitute fraud on the TTAB and Mr. Calmese in view of the relief Mr. Calmese was and is legally entitled to pursuant to U.S. Trademark Rule 1.197. This, however, is not a cognizable legal theory in light of the indisputable factual record and, additionally, because “U.S. Trademark Rule 1.197” has no applicability here, much less does it, as Mr. Calmese contends, entitle him to the relief he seeks in this action.13 For starters, and as mentioned above, if Mr. Calmese believed that the Mandate issued by the Ninth Circuit in the Oregon Action had the effect of terminating the Cancellation Proceeding, all that he needed to do was to bring the Mandate to the attention of the TTAB and request that the Cancellation Proceeding be dismissed. Mr. Calmese, however, did not do so. Rather, as plainly reflected by the record in the Cancellation Proceeding, Mr. Calmese did the opposite. Specifically, Mr. Calmese informed the TTAB, 13 Notably, allegations of “fraud on the court” are a staple of Mr. Calmese’s frequent litigations. In the Oregon Action, for example, Mr. Calmese continually alleged that adidas had committed fraud on the court. The District Court (i.e., Judge Brown) rejected these allegations as nonsense, and the Ninth Circuit readily agreed. Indeed, in the Ninth Circuit decision affirming the District Court, the Ninth Circuit held, in pertinent part: “Calmese’s contention that judgment should be vacated because of fraud upon the court is unpersuasive in light of Calmese’s failure to show ‘an unconscionable plan or scheme which is designed to improperly influence the court in its decision.” Willis Decl., Ex. E, at pp. 3-4 (quoting Pumphrey v. K.W. Thompson Tool Co., 62 F.3d 1128, 1131 (9th Cir. 1995)). In the present action, Mr. Calmese does not even allege, much less could he show, the requisite “unconscionable plan or scheme . . . designed to improperly influence the [TTAB] in its decision.” Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 14 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -15- after the issuance of the Ninth Circuit’s Mandate, that the Cancellation Proceeding should not be terminated, but instead should remain suspended. Indeed, as noted above, Mr. Calmese submitted a filing on September 15, 2014 -- i.e., well over a year after the issuance of the Mandate in the Oregon Action -- in which he stated: PLEASE TAKE NOTICE, pursuant to the Board’s Order dated September 12, 2014, that the civil action which occasioned the suspension of this proceeding is still pending and has not come to final determination . . . . Willis Decl., Ex. L, at p. 1 (emphasis added). As the public record reflects, the first time that Mr. Calmese took the position that the issuance of the Mandate in the Oregon Action compelled the termination of the Cancellation Proceeding was on October 30, 2015 -- i.e., over 2 and 1/2 years after the issuance of the Mandate. Id., Ex. O. In that filing, Mr. Calmese stated the following (which mirrors his allegation in this action): “Because of Trademark Rule 1.197 and because the 9th Circuit Court of Appeals has ruled on and dismissed Case No. 11-35080 in Mr. Calmese’s favor regarding cancellation, adidas’ Cancellation Proceeding No. 92048777 should respectfully be terminated immediately and is no longer appropriate.” Id., Ex. O, at pp. 1-2. The TTAB, in turn, requested that adidas respond, and adidas then promptly filed a notice of withdrawal of the Cancellation Proceeding. Id., Exs. P & Q. Simply put, the indisputable facts in the public record do not support the claims that Mr. Calmese is now asserting. Furthermore, those claims are without any legal merit, given that, as mentioned above and as made clear in his Amended Complaint, Mr. Calmese’s claims are (incorrectly) premised on the notion that under Rule 1.197, the issuance of the Ninth Circuit’s Mandate in the Oregon Action had the effect of terminating the Cancellation Proceeding in the TTAB. 14 But, as indicated above, 14 See, e.g., Am Complt. ¶ 29 (“Adidas’ Cancellation Proceeding should have legally been terminated on 04/18/13 which is the date of the MANDATE pursuant to U.S. Trademark Rule 1.197.”). Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 15 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -16- Rule 1.197 is inapplicable in this case because it is a patent rule, not a trademark rule.15 See 37 CFR Part 1, “Rules of Practice in Patent Cases.”16 This further confirms that Mr. Calmese has not stated a cognizable legal theory entitling him to relief. As such, Mr. Calmese’s claims should be dismissed under Rule 12(b)(6). In addition to suffering from the basic foundational defects discussed above, Mr. Calmese’s Second Cause of Action (for a declaratory judgment of tortious interference), Third Cause of Action (for a declaratory judgment terminating in favor of Mr. Calmese all pending litigation involving him and adidas), and Fourth Cause of Action (for a declaration cancelling all of adidas’s trademark registrations) suffer from additional fatal deficiencies. These additional deficiencies are discussed below. 1. Mr. Calmese Has Failed to State A Viable Claim for Tortious Interference In his Second Cause of Action, Mr. Calmese seeks a declaratory judgment of tortious interference against adidas. This claim is not viable for at least two reasons beyond the reasons previously discussed. First, Mr. Calmese’s alleged claim of tortious interference is time barred under the applicable statute of limitations. Second, even if it were timely, Mr. Calmese’s allegations do not satisfy the essential elements of a tortious interference claim. Before discussing each of these fatal flaws, it is instructive to set forth all of the allegations in Mr. Calmese’s Amended Complaint that ostensibly support a claim for tortious interference: 15 Moreover, and as also indicated above, even if Rule 1.197 did apply to the Cancellation Proceeding at issue here, which it does not, Rule 1.197 still would offer no support for Mr. Calmese’s claims, given that Rule 1.197 simply states that a patent application proceeding is terminated when the appeal in that proceeding comes to an end. See 37 CFR § 1.197(b) (“The date of termination of proceedings on an application is the date on which the appeal is dismissed or the date on which the time for appeal to the U.S. Court of Appeals for the Federal Circuit or review by civil action (§ 90.3 of this chapter) expires in the absence of further appeal or review.”). Here, however, Mr. Calmese is basing his claims on a Mandate issued not in the TTAB Cancellation Proceeding, but instead in the separate and distinct Oregon Action. 16 37 CFR Part 2, not Part 1, are the rules that apply in trademark cases. See 37 CFR Part 2, “Rules of Practice in Trademark Cases.” Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 16 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -17- • “On April 23, 2010 adidas had a copy of Mr. Calmese’s Business Plan and was fully aware of Mr. Calmese’s [$]14,000,000.00 (fourteen million dollar) financial projection.” Am Complt. ¶ 5. • “On April 6, 2013 adidas committed Tortious Interference against Mr. Calmese and his investor in view of U.S. Trademark Rule 1.197.” Am Complt. ¶ 9. • “Adidas’ fraudulent behavior has prevented Mr. Calmese from executing his Business Plan and living his life.” Am Complt. ¶ 13.17 • “On April 6, 2013 adidas committed Tortious Interference by knowingly and fraudulently harassing Mr. Calmese and his girlfriend/investor while adidas knowingly had already lost its appeal in 2012 and while adidas had or should have had knowledge of U.S. Trademark Rule 1.197.” Am Complt. ¶ 38. According to Mr. Calmese, adidas “committed Tortious Interference by knowingly and fraudulently harassing Mr. Calmese and his girlfriend/investor” on April 6, 2013. Because the applicable statute of limitations is two years, Mr. Calmese had until April 6, 2015, to bring a claim for tortious interference against adidas. See Clark v. Airesearch Mfg. Co. of Arizona, 138 Ariz. 240, 243, 673 P.2d 984, 987 (Ct. App. 1983) (confirming that under Arizona law, a claim for tortious interference is subject to a two-year statute of limitations); accord McManus v. American Exp. Tax and Business Services, Inc., 67 F. Supp. 2d 1083, 1086-89 (D. Ariz. 1999) (dismissing tortious interference claim because it was filed approximately 40 days after the two-year limitations period expired). Mr. Calmese, however, did not file his tortious interference claim against adidas until July 11, 2016, which was over a year too late. Mr. Calmese’s claim seeking a declaratory judgment of tortious interference is time barred. Further, even if this claim were not time barred, which it is, and even if it did not suffer from the basic foundational defects discussed above, which it does, the claim would 17 Although not obviously connected to his tortious interference claim, Mr. Calmese also has alleged: “The unnecessary and illegal pleadings drafted by adidas after the MANDATE, have put Mr. Calmese under an enormous amount of duress and adidas’ oppressive and fraudulent tactics have created for Mr. Calmese and his investors a reasonable apprehension that adidas will keep illegally harassing Mr. Calmese.” Am Complt. ¶ 21. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 17 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -18- still fail because Mr. Calmese does not satisfactorily allege all of the essential elements of a tortious interference claim. Under Arizona law, the only cognizable claim for tortious interference is a claim for intentional interference with a contractual relationship or business expectancy. See Loomis v. US Bank Home Mortg., 912 F. Supp. 2d 848, 860 (D. Ariz. 2012) (confirming that Arizona does not recognize a claim of negligent interference with a prospective economic advantage). To state a valid claim for intentional interference, a plaintiff must sufficiently allege the following five essential elements: (1) the existence of a valid contractual relationship or business expectancy; (2) the interferer’s knowledge of the relationship or expectancy; (3) intentional interference inducing or causing a breach or termination of the relationship or expectancy; (4) resultant damage to the party whose relationship or expectancy has been disrupted; and (5) that the interferer acted improperly. See Wells Fargo v. Ariz. Laborers, 201 Ariz. 474, 493, 38 P.3d 12, 31 (2002); Wallace v. Casa Grande Union High Sch. Dist. No. 82 Bd. of Governors, 184 Ariz. 419, 427, 909 P.2d 486, 494 (1995). Here, Mr. Calmese’s skeletal and conclusory allegations do not come close to stating a cognizable claim for tortious interference. Most fundamentally, Mr. Calmese fails to allege the existence of a valid contractual relationship or business expectancy. The Amended Complaint includes no allegation of any contractual relationship on the part of Mr. Calmese, and the only reference to any “business expectancy” is a mention that Mr. Calmese had a “Business Plan” that apparently included a “financial projection” of $14,000,000.18 See Am. Complt. ¶ 5. This generic reference to a “Business Plan” with a “financial projection” is insufficient, as a matter of law, to serve as the basis for a claim for tortious interference. Indeed, the Arizona courts have made clear that “[a] claim for tortious interference with a business expectancy is insufficient unless the plaintiff alleges 18 Notably, this “Business Plan” and “financial projection” are alleged to have been in existence at least as early as April 23, 2010, see Am Complt. ¶ 5, but the alleged tortious interference did not occur until April 6, 2013, nearly three years later. See Am Complt. ¶¶ 9, 38. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 18 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -19- facts showing the expectancy constitutes more than a mere ‘hope.’” Dube v. Likins, 216 Ariz. 406, 412, 167 P.3d 93 (2007). Mr. Calmese provides no facts showing that the “financial projection” in his “Business Plan” constitutes anything more than a mere hope. While this alone invalidates Mr. Calmese’s claim for tortious interference, Mr. Calmese also fails to allege sufficient facts to establish other essential elements of a tortious interference claim. For example, the Amended Complaint includes no facts detailing the nature of adidas’s alleged “interference” with Mr. Calmese’s business “expectancy.” Instead, the Amended Complaint simply includes the legal conclusion that “[o]n April 6, 2013 adidas committed Tortious Interference against Mr. Calmese and his investor in view of U.S. Trademark Rule 1.197.”19 Am Complt. ¶ 9. And Mr. Calmese also fails to provide any meaningful detail regarding the purported causal connection between adidas’s alleged “interference” (whatever that may have been) and any resulting damage to Mr. Calmese. Rather, Mr. Calmese offers nothing more than the conclusory assertion that “Adidas’ fraudulent behavior has prevented Mr. Calmese from executing his Business Plan and living his life.” Am Complt. ¶ 13. Simply put, Mr. Calmese’s claim for a declaratory judgment of tortious interference is both untimely and woefully insufficient to state a viable claim for relief. 2. Mr. Calmese Has Failed to State A Viable Claim For Terminating Other Separate and Distinct Litigation Mr. Calmese’s Third Cause of Action, which is entitled “Declaratory Judgment on All the Pending Litigation,” includes only a single paragraph (other than a paragraph incorporating the prior paragraphs in the Amended Complaint). This sole paragraph states as follows: 19 Likewise, Mr. Calmese subsequently alleges: “On April 6, 2013 adidas committed Tortious Interference by knowingly and fraudulently harassing Mr. Calmese and his girlfriend/investor while adidas knowingly had already lost its appeal in 2012 and while adidas had or should have had knowledge of U.S. Trademark Rule 1.197.” Am Complt. ¶ 38. Mr. Calmese fails to detail the nature of this alleged “harassment” or how any such “harassment” of his “girlfriend/investor” somehow interfered with his business “expectancy.” Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 19 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -20- All pending litigation involving adidas and Mr. Calmese should be terminated in favor of Mr. Calmese because Adidas has committed fraud on the TTAB after the MANDATE to prevent Mr. Calmese from profiting with his registered brand PROVE IT! Reg. No. 2,202,454. Am. Complt. ¶ 40. Mr. Calmese identifies no authority for such extraordinary relief, and there is none. Indeed, it goes without saying that the relief that Mr. Calmese seeks is precluded by basic constitutional constraints as well as federal/state jurisdictional constraints.20 3. Mr. Calmese Has Failed to State A Viable Claim For Cancellation Of adidas’s Trademark Registrations. Mr. Calmese’s Fourth Cause of Action, which is entitled “Cancellation of Adidas’ Trademark Registrations Pursuant to 15 U.S.C. § 1119,” also includes only a single paragraph (other than a paragraph incorporating the prior paragraphs in the Amended Complaint). This sole paragraph states as follows: Adidas clearly has attempted to take advantage of Mr. Calmese’s non-attorney statues [sic] by unfairly using Mr. Calmese’s obvious lack of knowledge to commit these deceptive and fraudulent acts causing irreparable damage to Calmese’s business, business relationships and personal life. Am. Complt. ¶ 42. It is difficult to know where to begin with why this “claim” is legally deficient. For starters, there are no adidas trademark registrations at issue in this action; nor, for that matter, were there any adidas trademark registrations at issue in the Oregon Action, which involved only adidas’s alleged infringement of Mr. Calmese’s Prove It! trademark and the validity of that trademark. As there are no adidas trademark registrations even at issue in this action, Mr. Calmese’s requested relief for cancellation of all of adidas’s trademark registrations is utterly baseless. See 15 U.S.C. § 1119 (stating that “[i]n any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled 20 adidas notes that the only pending “litigation” between it and Mr. Calmese aside from the present action is the action that adidas was forced to file in Arizona state court in an effort to collect on the approximately $78,000 judgment entered in favor of adidas and against Mr. Calmese in the Oregon Action. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 20 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -21- registrations, and otherwise rectify the register with respect to the registrations of any party to the action”). It appears that Mr. Calmese’s request for cancellation of all of adidas’s trademark registrations is simply a request by Calmese that the Court should punish adidas for what Mr. Calmese describes as adidas’s “attempt[] to take advantage of Mr. Calmese’s non- attorney statues [sic] by unfairly using Mr. Calmese’s obvious lack of knowledge to commit . . . deceptive and fraudulent acts causing irreparable damage to Calmese’s business, business relationships and personal life.” Am. Complt. ¶ 42. Not only is the relief that Mr. Calmese seeks unprecedented and without any legal basis, it is completely unsupported by the indisputable facts. As explained above, Mr. Calmese’s complaint is that adidas did not take steps to terminate the suspended Cancellation Proceeding after the Ninth Circuit issued its Mandate in the Oregon Action on April 18, 2013. Not only was adidas under no obligation to take any affirmative action to dismiss the suspended Cancellation Proceeding,21 it was actually Mr. Calmese himself who informed the TTAB, after the issuance of the Ninth Circuit’s Mandate, that the Cancellation Proceeding should remain suspended. Put simply, Mr. Calmese’s claim for cancellation of adidas’s trademark registrations is without any legal or factual merit. C. The Court Lacks Subject Matter Jurisdiction Over This Action The claims asserted in Mr. Calmese’s Amended Complaint should also be dismissed under Rule 12(b)(1) because this Court lacks subject matter jurisdiction over the claims.22 As indicated above, this is true for at least two different reasons. 21 As previously explained, Mr. Calmese’s contention that Rule 1.197 required adidas to terminate the Cancellation Proceeding is misplaced because Rule 1.197 is an inapplicable patent rule and, additionally, Mr. Calmese misconstrues what that inapplicable rule actually states. 22 Notably, in a motion to dismiss under Rule 12(b)(1), no presumptive truthfulness attaches to plaintiff’s allegations, and the existence of disputed material facts do not preclude the district court from evaluating for itself the merits of the jurisdictional claims. See Ritza v. Int'l Longshoremen's & Warehousemen's Union, 837 F.2d 365, 369 (9th Cir. 1988). Additionally, the district court may consider evidence outside of the pleadings. See Roberts v. Corrothers, 812 F.2d 1173, 1177 (9th Cir. 1987); see also W. Schwarzer, Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 21 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -22- First, as previously mentioned, Mr. Calmese’s core complaint in this action is with the TTAB’s disposition of the Cancellation Proceeding -- specifically, that in dismissing the Cancellation Proceeding, the TTAB should have acknowledged that adidas somehow violated the (inapplicable) Rule 1.197. Indeed, as noted above, Mr. Calmese alleges in his Amended Complaint that: “On April 4, 2016, the TTAB finally Terminated adidas’ Cancellation Proceeding but failed to acknowledge U.S. Trademark Rule 1.197 or the fraud allegedly committed by adidas supported by two unopposed sworn Affidavits.” Am. Complt. ¶ 20 (emphasis in original). Similarly, Mr. Calmese alleges: “[T]he TTAB’s 04/04/16 Termination Order should have acknowledged U.S. Trademark Rule 1.197 and or the MANDATE but wrongfully failed to do so.” Am. Complt. ¶ 30. The Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) makes clear that the time for challenging a decision of the TTAB by either filing a notice of appeal to the Federal Circuit or commencing a civil action is two months. See TBMP § 900(d)(1) (codified at 37 CFR § 2.145(d));23 see also Tovaritch Spirits Int'l SA v. Luxco, Inc., No. 4:11CV950JCH, 2011 WL 5006510, at *2 (E.D. Mo. Oct. 20, 2011) (“The question of how long a dissatisfied party to a TTAB proceeding has to file a civil action is answered by regulation. The applicable regulation is 37 CFR § 2.145, which provides in relevant part that ‘[t]he time ... for commencing a civil action [seeking judicial review of a TTAB decision] is two months from the date of the decision of the Trademark Trial and Appeal Board.’”); Patsy's Italian Rest., Inc. v. Banas, 508 F. Supp. 2d 194, 211 (E.D.N.Y. 2007) (“The time period to either appeal a decision of the Commissioner or the TTAB to the United States Court of Appeals for the Federal Circuit, or to commence a civil action, is two months from the date of the decision.”). Here, and as alleged in the Amended A. Tashima & J. Wagstaffe, California Practice Guide: Federal Civil Procedure Before Trial at 9:85 (1991). 23 Section 900(d)(1) of the TBMP states: “The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal Circuit (paragraph (b) of this section), or for commencing a civil action (paragraph (c) of this section), is two months from the date of the decision of the Trademark Trial and Appeal Board or the Director, as the case may be.” Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 22 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -23- Complaint, the TTAB dismissed the Cancellation Proceeding on April 4, 2016, meaning that Mr. Calmese had until June 4, 2016, to commence a civil action seeking judicial review of the TTAB’s disposition of the Cancellation Proceeding. Mr. Calmese, however, did not commence this action until July 11, 2016, which was over a month too late. Because Mr. Calmese missed his deadline to commence a civil action seeking review of the TTAB’s decision, this Court lacks jurisdiction.24 See Intel Corp. v. Terabyte Int'l, Inc., 6 F.3d 614, 617-18 (9th Cir. 1993) (“The time of appealability is jurisdictional and strictly applied.”); see also In re Maslyukov, No. 2009-1194, 2009 WL 1605557, at *1 (Fed. Cir. June 5, 2009) (dismissing as untimely an appeal of a TTAB final decision denying trademark registration). The second jurisdictional defect here stems from the fact that Mr. Calmese has filed this action as an action for strictly declaratory relief and has done so under the Declaratory Judgement Act, 28 U.S.C. § 2201(a). See Am. Complt. ¶ 1. But “[t]he Declaratory Judgement Act does not provide litigants with an independent jurisdictional basis for suits in a federal court.” Fiedler v. Clark, 714 F.2d 77, 79 (9th Cir. 1983) (citing Skelly Oil Co. v. Phillips Petroleum Co., 339 U.S. 667, 671-74 (1950)). Therefore, in declaratory judgment actions, there must be a source of federal jurisdiction external to the Declaratory Judgment Act. Skelly Oil, 339 U.S. at 671. Here, however, there is no such external or independent source of federal jurisdiction. The only statute aside from the Declaratory Judgment Act that Mr. Calmese mentions in his Amended Complaint is 15 U.S.C. § 1119. See Am. Complt. ¶ 2 & Fourth Cause of Action (for cancellation of adidas’s trademark registrations). As discussed above, however, 15 U.S.C. § 1119 is a 24 adidas notes that on April 8, 2016, Mr. Calmese filed a “Motion for Reconsideration of the Board’s April 4, 2016 Decision Pursuant to U.S. Trademark Rule 1.197.” See Willis Decl., Ex. G. That reconsideration motion, however, did not operate to extend Mr. Calmese’s two-month deadline to commence a civil action seeking review of the TTAB’s decision to dismiss the Cancellation Proceeding. This is because the two-month deadline is tolled only by the filing of a reconsideration request under certain specified sections of the TBMP (i.e., §§ 2.127(b), 2.129(c) or 2.144), and a reconsideration request, like Mr. Calmese’s request, under Rule 1.197 is not one of the specified sections that operates to toll the deadline. See TBMP § 900(d)(1). Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 23 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -24- statute that applies only to actions pertaining to the registration or cancellation of a registered trademark. That is not what this action involves, and Mr. Calmese’s wild and unfounded request to cancel all of adidas’s trademark registrations (none of which are genuinely at issue in this action) does not magically transform this action into an action appropriately brought under 15 U.S.C. § 1119. It is well established that while a federal court may determine the validity of a trademark registration that is otherwise before it (e.g., in an infringement dispute), a federal court does not have “jurisdiction under the Declaratory Judgment Act to determine the validity of [a] trademark where there is no issue of infringement.” Wham-O, Inc. v. Manley Toys, Ltd., No. CV 08-07830 CBM(SSx), 2009 WL 6361387, at *3 (C.D. Cal. Aug. 13, 2009) (citing Homemakers, Inc. v. The Chicago Home for the Friendless, 169 U.S.P.Q. (BNA) 262, 263 (7th Cir. 1971) (per curium)). The bottom line is that Mr. Calmese does not allege any viable source of federal subject matter jurisdiction separate and apart from the Declaratory Judgement Act. Accordingly, for this additional reason, this Court lacks subject matter jurisdiction over this action. CONCLUSION For all of the foregoing reasons, the Court should grant adidas’s motion to dismiss. Dated: August 15, 2016 PERKINS COIE LLP By: s/ K. Reed Willis K. Reed Willis 2901 North Central Avenue, Suite 2000 Phoenix, Arizona 85012-2788 Stephen M. Feldman Perkins Coie LLP 1120 N.W. Couch Street, Tenth Floor Portland, OR 97209-4128 Attorneys for Defendant adidas America, Inc. Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 24 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -25- CERTIFICATE OF SERVICE I hereby certify that on August 15, 2016, I electronically transmitted the attached documents to the Clerk’s Office using the CM/ECF System for filing and transmittal of a Notice of Electronic Filing to all CM/ECF registrants for this matter, I hereby certify that on August 15, 2016, I served the attached document by first class mail on the following, who are not registered participants of the CM/ECF System: Michael D. Calmese 3046 N. 32nd Street, Unit # 321 Phoenix, AZ 85018 s/ Brenda G. Lumm 131969918.1 Case 2:16-cv-02271-SRB Document 24 Filed 08/16/16 Page 25 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 K. Reed Willis (#028060) PERKINS COIE LLP 2901 North Central Avenue, Suite 2000 Phoenix, Arizona 85012-2788 Telephone: 602.351.8000 Facsimile: 602.648.7000 DocketPHX@perkinscoie.com RWillis@perkinscoie.com Stephen M. Feldman (pending pro hac vice) PERKINS COIE LLP 1120 N.W. Couch Street, Tenth Floor Portland, Oregon 97209-4128 Telephone: 503.727.2000 Facsimile: 503.727.2222 SFeldman@perkinscoie.com Attorneys for Defendant adidas America, Inc. UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA Michael D. Calmese, a resident of Arizona, Plaintiff, v. adidas America, Inc., a Delaware corporation, Defendant. No. CV-16-2271-PHX-JZB NOTICE OF CERTIFICATION OF CONFERRAL Pursuant to this Court’s July 22, 2016 Order [Doc. 8], notice is given that Defendant adidas America, Inc. (“adidas”) through its counsel, Stephen M. Feldman and K. Reed Willis, have conferred with Plaintiff Michael Calmese on August 11, 2016 to determine whether an amended complaint could cure Mr. Calmese’s deficient pleading. Specifically, adidas raised the following issues: (1) failure to state a claim because all of Mr. Calmese’s claims are premised on a demonstrably flawed premise; (2) failure to state a claim because Mr. Calmese relies on an inapplicable patent rule (37 CFR 1.197); (3) failure to state a claim for tortious interference because any such claim is time barred Case 2:16-cv-02271-SRB Document 24-1 Filed 08/16/16 Page 1 of 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -2- and, additionally, all of the necessary elements are not pled; (4) failure to state a claim for terminating other separate litigation as lacking any legal basis; (5) failure to state a claim for cancellation of adidas’s trademark registrations because, inter alia, no adidas trademark is even at issue in this action; (6) a lack of subject matter jurisdiction because Mr. Calmese failed to timely appeal the agency decision he is complaining about; and (7) a lack of subject matter jurisdiction for failing to allege any viable basis for federal jurisdiction independent of the Declaratory Judgment Act. The parties reached an impasse during their meet-and-confer discussions, but Mr. Calmese asked to take the discussion under further consideration. Later that same day, Mr. Calmese sent an email in which he stated, inter alia, “in light of our conversation today I will only concede to the fact that grounds for declaratory relief are not present and I will therefore file a second amended complaint by noon Monday Aug. 15, 2016.” As it turns out, Mr. Calmese appears to have filed an (unauthorized) Second Amended Complaint on August 12, 2016. The Second Amended Complaint, however, was filed in violation of Federal Rule of Civil Procedure 15(a)(2), as Mr. Calmese did not seek or receive consent from adidas to file a Second Amended Complaint, nor did Mr. Calmese seek or receive leave from the Court to file a Second Amended Complaint. Accordingly, Mr. Calmese’s Second Amended Complaint was improperly filed and is of no force or effect. Notably, Mr. Calmese proceeded to file his Second Amended Complaint in disregard of the Federal Rules of Civil Procedure even though counsel for adidas had previously advised Mr. Calmese to become familiar with and follow the applicable rules of procedure. [Doc. 11, Ex. A] Counsel for adidas sent an email to Mr. Calmese communicating adidas’s position on the Second Amended Complaint. See Attached Exhibit A. Finally, it bears mention that even a cursory review of Mr. Calmese’s unauthorized and improperly filed Second Amended Complaint reveals that it suffers from many of the same fatal deficiencies inherent in his First Amended Complaint. Most notably, it is premised on the same demonstrably flawed premise as are the claims in his First Case 2:16-cv-02271-SRB Document 24-1 Filed 08/16/16 Page 2 of 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -3- Amended Complaint. Thus, even if the Court were to consider Mr. Calmese’s Second Amended Complaint, this action still should be dismissed. To the extent that the Court considers Mr. Calmese’s Second Amended Complaint, and to the extent that the Court is disinclined to dismiss this action based on adidas’s concurrently filed motion to dismiss, then adidas reserves the right to file a supplemental motion to dismiss. Dated: August 15, 2016 PERKINS COIE LLP By:/s K. Reed Willis K. Reed Willis 2901 North Central Avenue, Suite 2000 Phoenix, Arizona 85012-2788 Stephen M. Feldman Perkins Coie LLP 1120 N.W. Couch Street, Tenth Floor Portland, OR 97209-4128 Attorneys for Defendant adidas America, Inc. Case 2:16-cv-02271-SRB Document 24-1 Filed 08/16/16 Page 3 of 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -4- CERTIFICATE OF SERVICE I hereby certify that on August 15, 2016, I electronically transmitted the attached documents to the Clerk’s Office using the CM/ECF System for filing and transmittal of a Notice of Electronic Filing to the following CM/ECF registrants: I hereby certify that on August 15, 2016, I served the attached document by [facsimile/first class mail/hand delivery] on the following, who are not registered participants of the CM/ECF System: Michael D. Calmese 3046 North 32nd Street, Unit 32 Phoenix, AZ 85018 s/ Brenda G. Lumm 132382404 1 Case 2:16-cv-02271-SRB Document 24-1 Filed 08/16/16 Page 4 of 7 EXHIBIT A Case 2:16-cv-02271-SRB Document 24-1 Filed 08/16/16 Page 5 of 7 From: Feldman, Stephen (POR) To: Michael Calmese (usaproveit@yahoo.com) Cc: Willis, K. Reed (PHX) Subject: RE: Calmese v. Adidas RE: 8/11/16 Conf. Call Date: Monday, August 15, 2016 5:14:32 PM Mr. Calmese, Your communication below does not accurately reflect the substance of our meet-and-confer discussion that took place on August 11. During our meet-and-confer, we explained why your First Amended Complaint suffers from numerous deficiencies, and why those deficiencies cannot be cured by amendment. You said that you wanted some time to consider our position, so we agreed that adidas would proceed to file a Rule 12(b) motion to dismiss unless you advised us by noon on August 15 that you were willing to voluntarily dismiss your suit against adidas. Having received no indication that you are willing to voluntarily dismiss your suit, adidas will proceed to file its motion to dismiss. We note also that on August 12, you appear to have filed a Second Amended Complaint. Any such filing is improper and of no force and effect. As we previously explained to you, a party is allowed to amend its complaint once as a matter of course and you previously did so. See Fed. R. Civ. P. 15(a)(1). Any further amendments are permissible only with leave of the Court (or with the opposing party’s written consent). See Fed. R. Civ. P. 15(a)(2). You did not receive leave of the Court to file a Second Amended Complaint, nor did you even seek such leave. Similarly, you neither sought nor received consent from adidas to file a Second Amended Complaint. Stephen M. Feldman | Perkins Coie LLP 1120 N.W. Couch Street Tenth Floor Portland, OR 97209-4128 PHONE: 503.727.2058 FAX: 503.346.2058 E-MAIL: sfeldman@perkinscoie.com P Please consider the environment before printing this email. Thank you. From: Michael Calmese [mailto:usaproveit@yahoo.com] Sent: Thursday, August 11, 2016 5:37 PM To: Feldman, Stephen (Perkins Coie); Willis, K. Reed (Perkins Coie) Subject: Calmese v. Adidas RE: 8/11/16 Conf. Call Dear Counsel: Thank you for the opportunity to meet pursuant to the Court’s July 22, 2016 ORDER. Therefore, pursuant to Honorable U.S. District Court Judge Bolton’s Order and in light of our Case 2:16-cv-02271-SRB Document 24-1 Filed 08/16/16 Page 6 of 7 conversation today I will only concede to the fact that grounds for declaratory relief are not present and I will therefore file a second amended complaint by noon Monday Aug. 15, 2016. Please note my second amended complaint will be filed on the same grounds listed in the Calmese v. Nike matter which was alos filed in the Arizona District Court against Nike who is also a Portland based company. However, as I stated in our conversation, aside from grounds for declaratory relief, I completely disagree with your position that it was my responsibility to report adidas’ lost appeal to the PTO after it was adidas who lost the trial and then asked the PTO to stay the proceeding while adidas appealed or that an amended complaint can’t satisfy your 12(b) concerns. For you to suggest it was my responsibility as a non-attorney is clearly wrong and I have no choice but to detail your position from today in my second amended complaint along with the appropriate changes. Please be advised, that after I file my second amended complaint pursuant to U.S. Judge Bolton’s July 22, 2016 Order and following our conversation today, you will have my permission to file your dubious 12(b) motion if we continue to disagree. Nevertheless, as it was and is AGREED, pursuant to our conversation and pursuant to U.S. Judge Bolton’s July 22, 2016 Order, you will be free to do what you will after I file my second amended complaint on Monday which should fix any and all of the deficiencies we discussed. Regards, Michael Calmese Also attached is a copy of my Conference Statement in addition to my Pre-Conf. Statement. Case 2:16-cv-02271-SRB Document 24-1 Filed 08/16/16 Page 7 of 7