National Products, Inc. v. Arkon Resources, Inc.

MOTION for Summary Judgment

W.D. Wash.October 11, 2016

Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 1 4811-1365-5866.04 101116/1452/65894.00001 The Honorable Robert S. Lasnik UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE NATIONAL PRODUCTS, INC., Plaintiff, v. ARKON RESOURCES, INC., Defendant. No. 15-cv-01553-RSL DEFENDANT ARKON RESOURCES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND NON- INFRINGEMENT ORAL ARGUMENT REQUESTED NOTE ON MOTION CALENDAR: NOVEMBER 4, 2016 I. INTRODUCTION Summary judgment as to all of the claims in Plaintiff National Products, Inc.’s (“NPI”) Complaint against Arkon Resource’s Inc. (“Arkon”) is appropriate, because Plaintiff cannot prevail on its trademark claims. After having a 20 year patent monopoly on its double socket mount arm products, Plaintiff now wants to wrongfully extend its expired patents in perpetuity by claiming trade dress rights in a generic and functional shape of its products. Plaintiff specifically recited and claimed the shape in its patent applications and refused to provide discovery relating to those patents. Plaintiff now claims ownership of a generic shape that covers products in its own expired patent, numerous other expired patents and other products. Plaintiff cannot prove that the alleged trade dress shape has obtained secondary meaning. This is not surprising given that Plaintiff does not mark its products, its packaging or its labels with any indication that one aspect of the shape is considered to be Plaintiff’s trademark, let Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 1 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 2 4811-1365-5866.04 101116/1452/65894.00001 alone Plaintiff’s registered trademark. Moreover, nearly all of Plaintiff’s webpages lack any trademark notice and fail to even display products in a way that shows the alleged trademark. Plaintiff essentially has a “secret” trademark and intentionally lays in wait to trap competitive threats with litigation. Here, Plaintiff admits that it was aware of Defendant’s accused products in January 2014 and failed to provide any notice to Defendant of its alleged trademark rights at any time prior to the filing of this lawsuit 20 months later. Indeed, Plaintiff admits that it has a policy of simply watching competitors that it believes infringe to see if they are successful and only then does Plaintiff sue them without any prior notice. There is no likelihood of confusion because the products have numerous visual differences. Also, both Plaintiff and Defendant clearly mark their products and packaging with their own word marks and most sales are to careful and sophisticated buyers. This explains why Plaintiff has absolutely no evidence of actual confusion or harm in over two and a half years that have elapsed from when Plaintiff first learned of Defendant’s accused products until now. All of Plaintiff’s state law claims are preempted and fail for the same reasons as Plaintiff’s trademark infringement claims. Finally, because Plaintiff did not provide proper notice of its federal trademark registration and Arkon had no pre-filing notice, Plaintiff is not entitled to pre-filing damages and Defendant is not liable as a willful infringer. Because Plaintiff does not have a valid trademark and there is no likelihood of confusion, Summary Judgment in Arkon’s favor as to all of the claims in the Complaint is warranted. II. NATURE AND STATEMENT OF PROCEEDINGS In its complaint, Plaintiff alleged Federal Trade Dress Infringement under 15 U.S.C. §1114 based on Registration No. 4,254,086, Federal Unfair Competition and False Designation of Origin under 15 U.S.C. §1125(a), Washington Common Law Trade Dress Infringement, Unfair Business Practices under RCW 19.86 et seq., Washington Common Law Unfair Competition, and Washington Common Law Unjust Enrichment. Discovery closed on September 11, 2016 and trial is set to begin on January 9, 2017. Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 2 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 3 4811-1365-5866.04 101116/1452/65894.00001 III. STATEMENT OF FACTS Plaintiff and Defendant both sell ball-and-socket mounting systems for securing devices, such as cellular telephones and cameras, in various locations such as in automobiles. The mounting systems are designed to secure the devices and be adjustable so that the devices can be repositioned. In addition, the mounting systems must be compatible with a wide range of mounting surfaces and devices. Plaintiff obtained U.S. Patent Nos. 5,845,885, RE42,060, RE42,581 and RE43,80 directed to the products and trade dress shape at issue in this case. (See Declaration of Marc Karish (“Karish Decl.”) Exs. A-D.) Those patents expired on December 14, 2013. On May 23, 2012, Plaintiff filed for U.S. Trademark Reg. No. 4,254,086, which was granted on December 4, 2012. (See Karish Decl. Ex. E at p. 1.) IV. APPLICABLE LAW “Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001). “[T]here exists a fundamental right to compete through imitation of a competitor’s product, which right can only be temporarily denied by the patent or copyright laws.” Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 785 (9th Cir. 2002). The Supreme Court has made clear that product configuration rarely has trademark significance. Wal- Mart Stores v. Samara Bros., 529 U.S. 205, 213 (2000) (“Consumers are aware of the reality that almost invariably, even the most unusual of product designs – such as a cocktail shaker shaped like a penguin – is intended not to identify the source, but to render the product itself more useful or more appealing.”). V. ARGUMENT a. Plaintiff Has No Valid Trademark Rights In Its Alleged Product Shape i. The Court Should Disregard and Cancel Plaintiff’s Federal Trademark Registration And Any Presumptions Created Thereby As shown above, it is very difficult to show the secondary meaning required for Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 3 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 4 4811-1365-5866.04 101116/1452/65894.00001 protectable product configuration trade dress, but such secondary meaning can be shown through the presumption allowed by a federal registration. Here, however, Plaintiff’s registration should be canceled because it was procured through deception and thus does not support secondary meaning. Specifically, Plaintiff’s chief evidence of secondary meaning was a non-binding consent judgment between Plaintiff and a third party. In its trademark application, NPI’s president Jeffrey Carnevali stated: Applicant submits herewith a Consent Judgment issued on October 2, 2006 by the United States District Court for the Western District of Washington at Seattle, in which the court declares on page 4, paragraph B that Applicant (“NPI”) has a protectable trade dress comprising the distinctive hourglass-shaped profile of its double- socket RAM Mount devices. (Karish Decl, Ex. E at pp. 32-33, 35.) NPI also submitted a copy of the Consent Judgment in support of the application. (See Karish Decl. Ex. E at pp. 44-48.) However, NPI failed to disclose that the judge in that case had initially refused to sign a submitted consent judgment because it made unsupported factual findings of the very sort NPI needs now. Specifically, Hon. Marsha J. Pechman refused to declare that NPI had a protectable trade dress comprising the hourglass-shaped profile of its double-socket RAM Mount devices. (Karish Decl. Ex. F (Case No. 2:04-cv-02524-MJP, Dkt. Nos. 176-2, 177.) Given the paucity of evidence submitted in support of the application other than the Consent Judgment, the misstatement about the Consent Judgment was likely material, if not determinative, to the Examining Attorney’s granting of the registration. Plaintiff’s current lawyer, David Tellekson, was Plaintiff’s lawyer in the consent judgment case and his firm, Fenwick & West, LLP filed the trademark application. It is implausible that the lawyers filing the trademark application would not have understood the falsity of their statement. Plaintiff also stated that the shape had become distinctive because of its substantially exclusive and continuous use in commerce for at least five years. However, for product shape marks, evidence of five years’ use is not sufficient by itself to show acquired distinctiveness. In Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 4 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 5 4811-1365-5866.04 101116/1452/65894.00001 such a case, actual evidence that the mark is perceived as a mark for the relevant goods/services/classes would be required to establish distinctiveness. In re R.M. Smith, Inc., 734 F.2d 1482, 1484-1485 (Fed. Cir. 1984) (Eight years of continuous and exclusive use for configuration of pistol grip water nozzle not sufficient to show acquired distinctiveness and pistol grip held functional); In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB 2001) (66 years of use not sufficient given similarity of configuration to other guitars). Nor was the additional evidence (photographs of the product and a webpage from rammount.com) sufficient to show distinctiveness. Notably, the webpage discusses the patent, but not supposedly “distinctive” shape, and the hourglass shape is barely discernable. (See Karish Decl. Ex. E at p. 39.) Accordingly, there was grossly insufficient evidence to support Plaintiff’s trademark application and the resulting registration should be cancelled. The registration should be accorded no deference and Plaintiff should be required to show that its mark is distinctive and non-functional. ii. Plaintiff’s Registration Is Invalid Because The Shape Is Generic As depicted in the trademark registration, Plaintiff’s mark is so broad as to be generic. A generic shape is incapable of being trademarked. See, e.g., Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 909 (9th Cir. 1995); see also Glassybaby, LLC v. Provide Gifts, Inc., 2011 WL 4571876 (W.D. Wash. 2011) (granting summary judgment because the votive candle holder shape defined in the amended complaint was generic.); Yurman Design, Inc. v. PAJ, Inc, 262 F.3d 101, 114 (2d Cir. 2001) (“just as copyright law does not protect ideas but only their concrete expression, neither does trade dress law protect an idea, a concept, or a generalized type of appearance”). A product design may be generic if it is overbroad or too generalized. “[T]rade dress law [does not] protect an idea, a concept, or a generalized type of appearance,” but “the concrete expression of an idea in a trade dress” may be protectable, assuming that the other requirements for trademark protection are met. Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 5 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 6 4811-1365-5866.04 101116/1452/65894.00001 32 (2d Cir. 1995). Milstein points out: Often a helpful consideration will be the purpose of trade dress law: to protect an owner of a dress in informing the public of the source of its products, without permitting the owner to exclude competition from functionally similar products. Id. 1 Plaintiff’s registration reciting “a three-dimensional configuration of a double-socket mount arm that is tapered in the middle like an hourglass” accompanied by a vague sketch of the alleged shape is precisely the type of unprotectable trade dress under Milstein. A product design may be “generic” because it is so common in the industry or in the marketplace that it cannot be said to identify any particular source. See, e.g., Mana Prods. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063 (2d Cir. 1995) (holding that producer’s makeup compacts’ “size and shape . . . are common characteristics of the entire genre of makeup compacts” and consequently generic, and holding that black was generic color for makeup compacts because it was so widely used in the industry). Here, Plaintiff is asserting a trademark that has been reduced to a general outline of a vaguely hourglass shape. This shape is so common among similar products as to be generic. Allowing Plaintiff to prohibit others from using any mount arm tapered in the middle, or even having surface decorations suggestive of a taper, would enable Plaintiff to use trademark law to monopolize an entire category of products. 2 Examples of other mount arms that are tapered in the middle include, for example, U.S. Patent Nos. 1,455,441 (See, e.g., Figs. 1, 2), 2,650,788 (See, e.g., Fig. 1), 2,710,609 (See, e.g., Fig. 4) and 7,178,421 (See, e.g., Fig. 1). (Karish Decl., Exs. G, H, I, J.) Indeed, when Plaintiff’s president, Jeff Carnevali was asked whether someone who produced a product as taught in long expired U.S. Patent Nos. 1,455,441 3 , 2,650,788 4 and 2,710,609 would be infringing the 1 The policy behind the Milstein definition of genericness is similar to the policy behind the functionality doctrine. McCarthy §7:69. Both policies seek to prevent trade dress protection from “undermin[ing] restrictions in copyright and patent law that are designed to avoid monopolization of products and ideas.” Milstein, 58 F.3d at 32. 2 Moreover, it would create an unworkable situation at trial. If Plaintiff proceeds to trial with such an amorphous definition of its trade dress, Defendant will introduce many similar designs to show laches. 3 Claim 2 of U.S. Patent No. 1,455,441 recites: “A bracket for supporting a mirror and the like . . . comprising two Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 6 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 7 4811-1365-5866.04 101116/1452/65894.00001 trademark in suit, he did not know. (Karish Decl. Ex. K [Carnevali Dep.] at 31:17-33:14, 34:24- 36:17, 40:10-44:4.) Likewise, Mr. Carnevali was unsure whether the owner of U.S. Patent No. 7,178,421 could practice their granted patent without infringing the trademark in suit. (Karish Decl., Ex. K [Carnevali Dep.] at: 49:14-51:8.) That is exactly the type of chilling of legitimate competition with which Milstein was concerned. Other examples of mount products bearing arguably hourglass shaped components include Defendant’s own products which have been on sale in the U.S. for at least 9 years with no confusion or prior complaint from Plaintiff. (See Decl. of Aaron Roth, ¶¶2, 3, Ex. A, B.). Again, Plaintiff’s President did not know if some of these existing products are hourglass shaped. (See Karish Decl. Ex. K [Carnevali Dep.] at 63:16-65:18.) Finally, the Court should note that most mount products have some taper or shape on mount arms between a base and a device holder. (See, e.g., Karish Decl., Ex. L.) 5 Thus, Plaintiff’s alleged trade dress is shape is generic and unprotectable. iii. Plaintiff’s Trademark Is Invalid Because It Is Functional Trademark rights may not be claimed for product features that are functional. TrafFix Devices, Inc. v. Marketing Display, Inc., 121 S. Ct. 1255, 1260 (2001). The rationale behind the functionality doctrine is that trademark law should not provide a means to achieve perpetual utility patent protection. Disc Golf Ass'n v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. longitudinal sections arranged side by side and connected with each other and having their ends constructed to form semi-spherical sections of sockets which receive said balls of said base and head.” 4 The Claim of U.S. Patent No. 2,650,788 recites: “A device for adjustably supporting a camera or the like, said device comprising . . . a pair of clamping plates provided with depressions of substantially semispherical form near their opposite ends for clamping engagement with opposite sides of said ball members, and a single adjusting screw passing through threaded apertures in said clamping plates at their mid-portions and between said ball members.” 5 Notably several of Plaintiff’s products are shown in this Exhibit. See pages ARK004405-004407 Most of the products are displayed in a way where a viewer cannot see the alleged trademark shape. Additionally, another of Plaintiff’s double socket mount products is shown on page ARK004406, but this product does not bear the alleged trade dress. The lack of interest in even showing the shape shows that the alleged trademark has no secondary meaning or value. Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 7 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 8 4811-1365-5866.04 101116/1452/65894.00001 1998); Secalt S.A. v. Wuxi Shenxi Const. Mach. Co., 668 F.3d 677, 683 (9th Cir. 2012) (overall exterior appearance of hoist found functional and case found exceptional on summary judgment). Plaintiff violates this rule, which “is obviously to prevent the grant of perpetual monopoly by the issuance of a trademark in the situation where a patent has either expired or for one reason or another, cannot be granted.” Sylvania Electric Products, Inc. v. Dura Electric Lamp Co., 247 F.2d 730 (3d Cir. 1957). 1. Functionality Is Shown in Plaintiff’s Expired Utility Patents Plaintiff’s expired utility patents are strong evidence that its product design is not protectable as trade dress – indeed, Defendant essentially has an express right to copy the design. “For almost 100 years it has been well established that in the case of an expired patent, the federal patent laws do create a federal right to ‘copy and to use[.]’” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 165 (1989). Also, upon the expiration of the utility patent the public, by way of the patent bargain, receives the right to make the invention in the form in which it was constructed in the patent. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119 (1938). In Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 256 (1945), the Supreme Court held: [A]ny attempted reservation or continuation in the patentee or those claiming under him of the patent monopoly, after the patent expires, whatever the legal device employed, runs counter to the policy and purpose of the patent laws ... By force of the patent laws not only is the invention of a patent dedicated to the public upon its expiration, but the public thereby becomes entitled to share in the good will which the patentee has built up in the patented article or product through the enjoyment of his patent monopoly. (Emphasis supplied.) Granting trademark protection in the hourglass shape would effectively allow Plaintiff to extend its utility patent into eternity and deprive the public of its benefit under the patent bargain. Here, Plaintiff has four expired patents directed to the alleged trade dress shape, U.S. Patent Nos. 5,845,885, RE42,060, RE42,581 and RE43,806. All of the patents show the alleged the shape in Figs. 1, 2, 3 and 8 and describe the shape as follows Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 8 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 9 4811-1365-5866.04 101116/1452/65894.00001 “at the midsections of the arm sections 16 and 18, the faces 15 of the respective arm sections have reduced diameter waists 103 (FIG. 3)”. (Karish Decl. Ex. A at Figs. 1-3, 8, col. 10, lines 61-63.) The Court can find, as a matter of law, that the trade dress is covered by the patent claims. Construction of a patent, including the terms of art within its claim, is exclusively within the province of the Court. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). Claims 1 and 5 recite “means forming a pair of operatively opposing first sockets in the first end portions of the respective arm sections.” Claims 30, 35 and 37 recite “means forming a pair of operatively opposing first sockets in the faces of the respective arm sections.” Ordinarily, a so-called “means-plus-function” claim covers the corresponding structure disclosed in the patent’s written description, as well as that structure’s equivalents. ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d 1374, 1379 (Fed. Cir. 2003). Here, the structure disclosed in the written description for forming the opposing sockets is the structure and shape shown in Figs. 2 and 3 and described in the specification at col. 10, lines 44-51. This is the top and bottom portions of Plaintiff’s identified trade dress shape. Accordingly, at least part of the alleged trademark shape was specifically claimed in U.S. Patent No. 5,845,885. Additionally, during the prosecution of U.S. Patent Nos. RE42,060, the Applicant added claims that further covered the trade dress shape. On March 20, 2006, during the prosecution of U.S. Patent No. RE42,060, Carnevali filed a declaration stating that he was filing a new application, because “I verily believe the original patent to be wholly or partly inoperative or invalid . . . by reason of the patentee claiming more or less than he had the right to claim in the patent.” (Karish Decl. Ex. M at ARK003277-78.) The declaration was filed with claims specifically directed to the shape later claimed in U.S. Trademark Reg. No. 4,254,086. In particular, claims 69-74 and 86-89 specifically recite that the arm sections comprise a reduced diameter waist. (Karish Decl. Ex. M at Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 9 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 10 4811-1365-5866.04 101116/1452/65894.00001 ARK003259, 3261-3262.) On April 25, 2006, the Examiner allowed claims 69-74, 86-89, so clearly the Examiner thought the shape was functional. (Karish Decl. Ex. M at ARK003230-31.) 6 Additionally, on March 29, 2006, during the prosecution of U.S. Patent No. RE43,806, the applicant again filed claims specifically directed to the shape later claimed in U.S. Trademark Reg. No. 4,254,086. In particular, claims 76-81 specifically recite the shape of arms having a reduced diameter waist. 7 (Karish Decl. Ex. N. at ARK002378-79.) 8 Thus, Plaintiff’s own patents and claims during prosecution show the functionality of the now-claimed trademark shape. Moreover, Plaintiff cannot rebut this showing because it flatly refused to provide any witness or evidence regarding its patents and invoked attorney client privilege when questions were asked about the claims. (Karish Decl. Ex. O at 10 (Topic 14); Ex. P at 15-17 (RFP 11); Ex. K [Carnevali Dep.] at 123: 3-15.) 2. Plaintiff Has Admitted Functionality Next, Plaintiff has admitted sufficient functionality to undermine its claim for trade dress protection. The entire product does not need to be functional; a product feature need only have some utilitarian advantage to be considered functional. Disc Golf Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir. 1998). To establish nonfunctionality the party with the burden must demonstrate that the product feature serves no purpose other than identification. Id. But in his deposition, Plaintiff’s president admitted that the shape is functional when he stated that the top and bottom rounded 6 After filing the claims directed to the shape of the arms, the Applicant later canceled them without explanation and the USPTO withdrew the Notice of Allowance. 7 After filing the claims directed to the shape of the arms, the Applicant later canceled them without explanation. 8 In applying for its trademark registration, Plaintiff stated “Applicant notes that the hourglass shape of its goods is not functional or essential to the use of the goods, and is not claimed in Applicant’s patents.” (See Karish Decl. Exh. E at 35.) This statement was disingenuous and misleading in view of the patent prosecution history. Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 10 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 11 4811-1365-5866.04 101116/1452/65894.00001 portions of the registered trademark are rounded in shape to correspond to the ball mounts and to have a uniform wall thickness. (See Karish Decl. Ex. K [Carnevali Dep.] at 165:9-16, 176:16-177:7.) It is not relevant whether there are other designs that may perform the function of holding the ball in the mount. Thus, at least a portion of Plaintiff’s alleged trademark is clearly functional, and that is sufficient to negate trade dress protection. Additionally, the shape of the accused products helps a user grip the product, such as for photographers who hold the mount in their hands, and is therefore advantageous. (See Karish Decl. Ex. Q [Brassard Dep.] at 47:3-8, 104:13-105:20.) Accordingly, Plaintiff’s alleged trademark is functional and therefore invalid. iv. Plaintiff’s Trademark Is Invalid Because It Has No Secondary Meaning To obtain trade dress protection, a product configuration without a valid registration must be shown to have secondary meaning. Plaintiff cannot show that its alleged trade dress has acquired secondary meaning. Plaintiff has no survey evidence and, as explained below, inconsistently shapes its products and fails to mark its products, packages or webpages with any indicia of its alleged trademark. Additionally, Plaintiff’s products are configured such that the alleged trademark shape is only viewable from limited angles. If the Court concludes that Plaintiff’s trade dress is functional, then the Court need not even consider whether there is secondary meaning. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001). Secondary meaning is established when the purchasing public associates the mark with one particular producer or source, rather than just the product itself. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982). Factors to be considered in determining secondary meaning include: (1) whether actual purchasers of the product associate the mark with the producer; (2) the degree and manner of advertising under the mark; (3) the length and manner of use of the mark; and (4) whether Plaintiff’s use has been exclusive. Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir. 1985). Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 11 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 12 4811-1365-5866.04 101116/1452/65894.00001 An applicant faces a “heavy burden in establishing” that the design of a product has acquired distinctiveness under Lanham Act §2(f). E & J Gallo v. Proximo Spirits, Inc., 103 U.S.P.Q.2d 1656, 2012 WL 273077 (E.D. Cal. 2012) (A trapezoidal shaped Tequila bottle is an “ordinary geometric shape” which is not inherently distinctive under the Seabrook test and lacked secondary meaning.); In re Gibson Guitar Corp., 61 U.S.P.Q.2d 1948, 2001 WL 1631369 (TTAB 2001) (because applicant's guitar body shape was so similar to hundreds of other guitar shapes, applicant had a “heavy burden” to prove secondary meaning). As explained below, Plaintiff’s evidence of secondary meaning is so inadequate that summary judgment of no secondary meaning is appropriate. 1. Plaintiff’s Inconsistent Use Across Different Products Has Not Created an Impression in the Mind of the Consumer Plaintiff’s use has not been consistent enough to create secondary meaning. Plaintiff sells numerous products having different dimensions and configurations and does not consistently use its alleged trademark shape. When an alleged trade dress consists of a certain look for a number of different products, it is more difficult to prove that there is a common denominator among those products that identifies Plaintiff as the source. Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 59 U.S.P.Q.2d 1720 (1st Cir. 2001) (Labels on a line of decorative candles displayed different pictures corresponding to the particular candle fragrance. Because the labels were a “combination of functional and common features,” they were found not to be inherently distinctive and were lacking in proof of secondary meaning.); Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch Co., 292 F. Supp. 2d 535, 69 U.S.P.Q.2d 1493 (S.D.N.Y. 2003) (Plaintiff could not prove a reasonable consistency in a line of garments, whose design varied from product to product.). Here, Plaintiff inconsistently shapes its products and this prevents the acquisition of secondary meaning. (See Karish Decl. Ex. R.) 2. Plaintiff Has No Marking On Its Products, Packages, Labels or Webpages Plaintiff’s failure to mark its products, packages, labels and webpages with any indication Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 12 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 13 4811-1365-5866.04 101116/1452/65894.00001 that it considers the shape to be a trademark has prevented the shape from acquiring any secondary meaning. Plaintiff admits that it does not mark its products. (Karish Decl. Ex. U [Hersey Dep.] at 77:16-78:1, 86:2-6; 90:24-92:7.) Plaintiff admits that it does not have any marking on the packaging. (Id. at 40:6-12; 40:18-41:11.) Plaintiff admits that it does not have any labels on packaging that discuss the trademark. (Id. at: 40:13-17; 41:12-15.) Plaintiff does not indicate anything about its alleged trademark, let alone its trademark registration on most of its webpages, although the webpages do continue to tout the “patented” functionality of the product. (Karish Decl. Ex. R.) Further, the alleged protected shape is only viewable from certain directions and Plaintiff does not take care to display its products in a way that shows the alleged trademark shape on its webpages. (Karish Decl. Ex. R.) Plaintiff will no doubt highlight the fact that it has a page dedicated to the alleged shape in its catalogs and in brochures distributed with its products. However, there is no indication that this is meaningful to consumers. This Court has granted summary judgment of no acquired distinctiveness despite evidence of television advertising, millions of email newsletters, hundreds of thousands of packages bearing a mark and millions of internet banner advertisements, because there was no evidence of the effectiveness of the effort to create the association between mark and product in the consumer’s mind. Rubber Stamp Mgmt., Inc. v. Kalmbach Publ'g Co., No. C06-0277RSM, 2007 WL 1367718, at *4-5 (W.D. Wash. May 4, 2007). Other Ninth Circuit Courts have done the same. Continental Lab. Prods., Inc. v. Medax Intl., Inc. et al., 195 F.R.D. 675 (S.D. Cal. 2000) (plaintiff’s evidence of sales, advertising, exclusive use, employee affidavits and deliberate copying found “individually and collectively insufficient to raise a genuine issue of material fact on the issue of secondary meaning”); Steven W. Boney, Inc. v. Boney Servs., 127 F.3d 821 (9th Cir. 1997); Global Manufacture Group v. Gadget Universe.com, 417 F. Supp. 2d 1161 (S.D. Cal. 2006); Switchmusic.comv. U.S. Music Corp., 2006 U.S. Dist. LEXIS 25178 (C.D. Cal. Jan. 24, 2006). 9 9 Moreover, the shape depicted in the brochure is very different than the shape in U.S. Trademark Reg. No. Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 13 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 14 4811-1365-5866.04 101116/1452/65894.00001 Given Plaintiff’s failure to mark its products, packaging and webpages and that the alleged trademark shape is only viewable from certain angles, a consumer may view and purchase one of Plaintiff’s products without seeing the alleged trademark shape. That is the antithesis of trademark usage where a trademark owner attempts to actually link the trademark with the product in the eye of a consumer. It does, however comport with Plaintiff’s strategy of laying in wait for competitors, like Defendant, to become successful and then accuse them of trademark infringement. Plaintiff was aware of Defendant in January 2014, but provided no notice to Defendant of its trademark before brining suit on September 29, 2015. (Karish Decl. Ex. K [Carnevali Dep.] at 91:9-19, 94:10-96-7.) Thus, Plaintiff allowed what it considered to be an infringing product shape to remain in the market for an extra 20 months, thereby lessening any association between the alleged trademark shape and its own product in the marketplace. Again, these actions are not consistent with a trademark owner concerned with acquisition of secondary meaning. 3. Defendant Intended To Use Plaintiff’s Expired Patent Given Plaintiff’s limited evidence in support of secondary meaning, Plaintiff will likely argue that Defendant intentionally copied Plaintiff’s trade dress and that this intentional copying is evidence of secondary meaning. This argument is meritless. Defendant copied Plaintiff’s expired patent, not Plaintiff’s trade dress. (Karish Decl. Ex. Q [Brassard Dep.] at p. 25:12-18, 28:6-23, 30:5-13, 35:3-36:13, 78:24-80:2.) Defendant was unaware that Plaintiff was claiming any trademark rights until being served with the Complaint in the instant action. Moreover, several courts have held that evidence of intentional copying alone is insufficient to defeat a motion for summary judgment that a trade dress is not distinctive. Chrysler Corp. v. Vanzant, 44 F. Supp. 2d 1082, 1083 (C.D. Cal. 1999); Continental La. Prods., Inc. v. Medax Int’l. Inc., 114 F. Supp. 2d 992, 1010 (S.D. Cal. 2000). 4,254,086. In the registration, the end plates are not part of the mark. Moreover, the drawings in the brochures have accent lines implying that the shape gets extremely narrow in the middle and these accent lines are not part of the registration. Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 14 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 15 4811-1365-5866.04 101116/1452/65894.00001 Accordingly, Plaintiff’s alleged trademark has no secondary meaning and is invalid. b. Even if Plaintiff Has Trade Dress Rights, Summary Judgment Should Be Granted Because Plaintiff Cannot Show Likelihood of Confusion Next, even if Plaintiff has trade dress rights, it needs to show likelihood of confusion. It cannot do so, which is an independent ground to grant a motion for summary judgment. Plaintiff has no evidence of actual confusion and no survey evidence of likely confusion, one of which is necessary in almost every case to show likelihood of confusion. Considering together the likelihood of confusion factors detailed below, Plaintiff simply cannot prove a likelihood of confusion and summary judgment is warranted. “The test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.” Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998). In the Ninth Circuit, courts determine likelihood of confusion by considering the following eight factors from AMF Inc. v. Sleekcraft Boats: (1) strength of the mark; (2) proximity or relatedness of the goods; (3) similarity of sight, sound, and meaning; (4) evidence of actual confusion; (5) marketing channels; (6) type of goods and purchaser care; (7) intent; and (8) likelihood of expansion. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979). These factors are not to be “rigidly weighed.” Dreamwerks, 142 F.3d at 1129. “Rather, the factors are intended to guide the court in assessing the basic question of likelihood of confusion.” E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992). 10 i. Plaintiff’s Mark Is Generic Or Very Weak The first factor to consider is the strength of the mark. “The stronger a mark—meaning the more likely it is to be remembered and associated in the public mind with the mark’s owner—the greater the protection it is accorded by the trademark laws.” Brookfield Commc’ns, 10 The last factor – likelihood of expansion – considers “[t]he potential that one or both parties will enter the other’s submarket with a competing model.” Sleekcraft, 599 F.2d at 354. Because the parties’ products are directly competing with each other already, this factor need not be considered. Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 15 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 16 4811-1365-5866.04 101116/1452/65894.00001 174 F.3d at 1058. Marks are generally classified along a spectrum, with descriptive marks being the weakest and arbitrary or fanciful marks being the strongest. See Sleekcraft, 599 F. 2d at 349. As explained above, Plaintiff’s mark is generic or at best very weak. ii. The Goods Are Related For purposes of this motion, Defendant concedes that the goods are related. iii. There Accused Products Present Very Different Appearances Defendant’s product does not appear to look at all like the trade dress. When considering similarity of the marks, the court should consider the similarity of the marks based on their sight, sound, and meaning “in their entirety and as they appear in the marketplace.” GoTo.com, 202 F.3d at 1206. Here, similarity of sight is the relevant comparison. This factor has been recognized in some cases as “[t]he most important factor.” Classic Foods Int’l Corp. v. Kettle Foods, Inc., SACV04-725CJC(EX), 2006 WL 5187497, at *9 (C.D. Cal. Mar. 2, 2006). The presence of a word mark can serve to differentiate the product and prevent a likelihood of confusion. McCarthy on Trademarks and Unfair Competition, §23:531; Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc. 973 F.2d 1033, 1047 (2d Cir. 1992). Defendant’s products are markedly different in appearance. Defendant’s originally accused products do not have “a three-dimensional configuration of a double-socket mount arm that is tapered in the middle like an hourglass” as recited in Plaintiff’s trademark registration. When viewed with the fastening nut turned to the side, Defendant’s products are wider at the middle then at the ends. When viewed with the fastening nut turned toward the user, the shape is also not hourglass shaped. Defendant’s redesigned products have no hourglass shape whatsoever from any angle. The products have different finishes. Defendant’s accused products have surface designs while Plaintiff’s products do not. Plaintiff’s products have a differently shaped handle/knob than Defendant’s products. Plaintiff’s products are clearly marked with Plaintiff’s trademark RAM and Defendant’s products are clearly marked with Defendant’s trademark ARKON. Plaintiff’s products have different mounts than Defendant’s products. Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 16 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 17 4811-1365-5866.04 101116/1452/65894.00001 Plaintiff’s Product Defendant’s Originally Accused Product Defendant’s Redesigned Product Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 17 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 18 4811-1365-5866.04 101116/1452/65894.00001 Thus, the very different appearance of Plaintiff’s and Defendant’s products prevents any likelihood of confusion. 11 iv. In Over 30 Months There is No Evidence of Actual Confusion Plaintiff admits it knew of Defendant’s accused products in January 2014, but intentionally waited over 20 months before bringing this lawsuit. (Karish Decl., Ex. K, Carnevali Depo at 88:9-19, 94:10-96:7.) Another 10 months have passed since the suit was filed. In all of that time, Plaintiff has absolutely no evidence of any actual confusion. (Karish Decl., Ex. U, Hersey Depo at 22:10-23:4; 24:5-27:1; Karish Decl., Ex. K, Carnevali Depo at 78:19-80:22.) Plaintiff stretches so far that it merely references a lost sale as “confusion,” but Plaintiff’s 30(b)(6) witness testified that the reason for the lost sale was price – there was no evidence of confusion. (Karish Decl., Ex. U, Hersey Depo at 24:12-25:15.) That is competition, not confusion, and that is what Plaintiff is trying to destroy with this lawsuit. v. Marketing Channels “Convergent marketing channels increase the likelihood of confusion.” Sleekcraft, 599 F.2d at 353. Specifically, this factor “is concerned with ‘where, how, and to whom the parties’ products are sold.” Athleta, Inc. v. Pitbull Clothing Co., 2013 WL 142877, at *9 (C.D. Cal. Jan. 7, 2013) (quoting Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1339 (11th Cir. 1999)). The majority of Plaintiff’s and Defendant’s products are sold to corporate customers who directly buy large numbers of products at a time. (Karish Decl., Ex. U, Hersey Depo. at 61:12- 17, 64:13-65:23; Ex. V, Roth Depo at 25:8-10.) While both parties sell products through their respective websites, it is a rather small percentage of their sales and there is little likelihood of confusion since the products are not shown side-by-side. (Karish Decl., Ex. U, Hersey depo. at 59:5-8, 59:13-60:1; Ex. V, Roth Depo at 51:14-19.) Neither Plaintiff nor Defendant directly sells their products on Amazon. (Karish Decl., Ex. U, Hersey depo. at 59:9-12.; Ex. V, Roth Depo at 11 Additionally, Plaintiff and Defendant have very different packaging. (See Karish Dec., Exhs. S and T.) Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 18 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 19 4811-1365-5866.04 101116/1452/65894.00001 37:6-11.) However, there is little likelihood of confusion on Amazon, because Plaintiff’s products and Defendant’s products are shown in connection with their respective word marks. (Karish Decl., Ex. L.) Thus, the marketing channels utilized by Plaintiff and Defendant are divergent and unlikely to lead to confusion. vi. Type of Goods And Purchaser Care The sixth Sleekcraft factor considers the degree of care likely to be exercised by the “reasonably prudent consumer” in purchasing the type of good at issue. Sleekcraft, 599 F.2d at 353. As the Ninth Circuit stated in Brookfield Communications: “What is expected of this reasonably prudent consumer depends on the circumstances. We expect him to be more discerning—and less easily confused—when he is purchasing expensive items and when the products being sold are marketed primarily to expert buyers.” 174 F.3d at 1060. The goods at issue in this case are expensive and are frequently used to hold very expensive items, such as iPhones, under conditions in which product failure would lead to damage or loss of the held items. Moreover, both Plaintiff’s and Defendant’s products are typically sold in large quantities to expert buyers. (Karish Decl., Ex. U, Hersey Depo. at 64:13- 67:24; Ex. V, Roth Depo at 25:8-10.) Accordingly, the type of goods and high degree of purchaser care lead to very little likelihood confusion. vii. Intent Defendant was unaware of Plaintiff’s alleged trademark prior to receiving the complaint in this action and had no intent to copy anything other than Plaintiff’s expired patent. (Karish Decl., Ex. Q, Brassard Depo. at 25:12-18, 28:6-23, 30:5-13, 35:3-36:13, 78:24-80:2.) “Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.” Entrepreneur Media, 279 F.3d at 1148. Here, there is no evidence that Defendant’ intended to copy Plaintiff’s trademark. Indeed, Defendant was unaware of Defendant’s alleged Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 19 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 20 4811-1365-5866.04 101116/1452/65894.00001 trademark prior to service of the Complaint, which is understandable given Plaintiff’s failure to mark its products, packaging or webpages with any indication that it considered the shape to be a trademark. In reality, Defendant’s intent was to copy Plaintiff’s expired utility patent which clearly showed the shape Plaintiff is now asserting as a trademark. Accordingly, Plaintiff had no relevant intent to copy Plaintiff’s alleged trademark. c. Plaintiff’s State Law Claims For Unfair Business Practices, Unfair Competition and Unjust Enrichment Are Preempted by the Patent Act Plaintiff’s state claims for unfair business practices unfair competition, unjust enrichment and are preempted by the Patent Act. First, the unjust enrichment, unfair competition and unfair business practices claims do not add the “extra element” required by the Ninth Circuit to survive preemption by federal patent law. Further, even the Lanham Act and common law trade dress infringement claims are preempted because the Patent Act provides an adequate remedy for Plaintiff – just one that has already expired. i. The State Law Claims For Unfair Business Practices, Unfair Competition and Unjust Enrichment Are Preempted Because They Do Not Meet the Ninth Circuit’s “Extra Elements” Test. NPI attempts to support its common law claims with allegations that Arkon copied the NPI double-socket RAM Mount products. See Complaint, ¶ 13 (“On information and belief, Defendant Arkon has been marketing, distributing, and selling products containing double-socket mount arms tapered in the middle like an hourglass.”) To the extent that NPI alleges Arkon copied its product, these allegations, even if true-- and they are not - - are not actionable under federal patent law and NPI cannot look to state law to extend protection to its unpatented product. As explained by the Supreme Court in the seminal Compco cases: [w]hen an article is unprotected by a patent ... state law may not forbid others to copy that article. To forbid copying would interfere with the federal policy, found in Art. I, § 8, cl. 8, of the Constitution and in the implementing federal statutes, of allowing free access to copy whatever Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 20 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 21 4811-1365-5866.04 101116/1452/65894.00001 the federal patent ... laws leave in the public domain. Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 237, 84 S. Ct. 779, 782 (1964) citing Sears, supra, 376 U.S. at 231, 84 S. Ct. at 784; see Leatherman Tool Group, Inc. v. Cooper Industries, Inc., 131 F.3d 1011, 1014 (Fed. Cir. 1997) (holding that " ... while the patent laws provide the right to exclude others from making, using or selling a claimed invention for a statutorily limited amount of time, if such rights could be but were not awarded under the patent laws, the states may not provide commensurate protection.") Consistent with the preemptive effect of federal patent law, courts routinely find that the copying of unpatented products that exist in the public domain are not actionable. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 165, 109 S. Ct. 971, 985 (1989); Gemveto Jewelry Co. v. Jeff Cooper, Inc., 800 F.2d 256, 259 (Fed. Cir. 1986) (“copying of the article itself that is unprotected by the federal patent and copyright laws cannot be protected by state law.”). The Ninth Circuit has stated that where state law offers “patent-like protection for ideas deemed unprotected under the present federal scheme, [state law] conflicts with the strong federal policy favoring free competition in ideas.” Summit Mach. Tool Mfg. Corp. v. Victor CNC Sys., Inc., 7 F.3d 1434, 1439 (9th Cir. 1993). Analyzing Bonito Boats, the Ninth Circuit, has held that the Patent Clause still leaves room for very limited state protection of intellectual property if the “extra element” test is met. In Summit Machine Tool Manufacturing v. Victor CNC Systems, 7 F.3d 1434, 1439-1442 (9th Cir. 1993), the court interpreted Bonito Boats as allowing state protection against “reverse palming off” (marketing another's goods as one's own) of an unpatented article, but not against the actual copying of that article. See also Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1099 (9th Cir. 1992) (finding Bonito Boats dicta affirmed that States were free to place limited restrictions on unpatented designs in order to prevent consumer confusion). The analysis turns on “determining whether the state law claim contains an element not shared by the federal law -- an element which changes the nature of the action ‘so that it is qualitatively different from a copyright [or patent] infringement claim.’” Summit Mach. Tool Mfg. Corp. v. Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 21 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 22 4811-1365-5866.04 101116/1452/65894.00001 Victor CNC Sys., Inc., 7 F.3d 1434, 1439–40 (9th Cir. 1993) (quoting Balboa Ins. Co. v. Trans Global Equities, 218 Cal.App.3d 1327, 1340, 267 Cal.Rptr. 787 (1990)). Here, at the very least, the Fourth Claim for Relief (Unfair Business Practices – RCW 19.86), the Fifth Claim for Relief (Washington Common Law Unfair Competition) and the Sixth Claim for Relief (Washington Common Law Unjust Enrichment) are all preempted by federal patent law to the extent that those claims rely on copying of the any formerly patented features of the double socket RAM mount product. 1. The State Claims Are Preempted Plaintiff’s state law claims are preempted. First, the Washington Consumer Protection Act (“CPA”) is preempted. Showing a claim under the CPA requires proof of five elements: (1) an unfair and deceptive act or practice; (2) occurring in trade or commerce; (3) public interest impact; (4) injury to plaintiff in his business or property; and (5) causation. CD Law, Inc. v. LawWorks, Inc., 1994 WL 840929, at *4 (W.D. Wash. Decl. 21, 1994). This Court has previously held that the CPA is preempted by copyright claims. Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240, 1249–50 (W.D. Wash. 2007). In Blue Nile, Inc., this Court held that even though a CPA claim contains “essential elements of deception, misrepresentation, and public interest impact,” that “does not change the underlying nature of the action in this case.” Just as in Blue Nile, the gravamen here is plaintiff's claim of copying. And just as in Blue Nile, while the elements of plaintiff's CPA claim may not be identical to the copyright claims, “the underlying nature of [Blue Nile's] state law claims is part and parcel of a copyright [or patent] claim” for preemption purposes.” Next, the unjust enrichment claim is also preempted by patent law, just as in Blue Nile. 478 F. Supp. 2d at 1251. Here, the unjust enrichment claim incorporates the prior allegations in the complaint and adds only that the act “complained of herein constitute unjust enrichment of Defendant at NPI’s expense in violation of Washington common law.” (Dkt. No. 1 at ¶ 47.) At Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 22 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 23 4811-1365-5866.04 101116/1452/65894.00001 bottom, this claim alleges that copying of the unpatented product has resulted in unjust enrichment to Arkon. This basis for unjust enrichment has been found preempted in other cases in this Circuit. See Del Madera, 820 F.2d at 977 (preempting unjust enrichment claim); Firoozye v. Earthlink Network, 153 F.Supp.2d 1115, 1128 (N.D.Cal.2001) (dismissing unjust enrichment claim because it was equivalent to copyright claim); Zito v. Steeplechase Films, Inc., 267 F.Supp.2d 1022, 1027 (N.D.Cal.2003). These results obtain here as well. The addition of a claim for the remedy of unjust enrichment does not qualitatively change the fact that this is a case about copying an unpatented product. Finally, the Claim for Common Law Unfair Competition is preempted by the Patent Act. This claim also incorporates all prior paragraphs of the Complaint and adds only the conclusory allegation that “Defendant’s use of NPI’s trade dress has infringed on its distinctive features in a manner that tends to confuse, in the public mind, NPI’s products and/or advertising with the products and/or advertising of others.” (Dkt. No. 1 at ¶ 44.) Despite paying lip service to confusion, Plaintiff has no evidence of confusion, so that this claim once again boils down to mere copying of an unpatented article. confusion, either. Thus, because there is no confusion, this is really just another allegation of copying of a product, which is preempted by the Patent Act. d. The Washington Common Law Trade Dress Claim Fails For The Same Reason As Plaintiff’s Federal Trademark Claims Plaintiff’s claim for Washington common law trade dress infringement is commensurate with its federal trademark claims. YKK Corp. v. Jungwoo Zipper Co., 213 F. Supp. 2d 1195, 1198 (C.D. Cal. 2002). As explained above, the federal trademark claims fail, because Plaintiff’s alleged trade dress is generic, functional and has not acquired secondary meaning. Moreover, as explained above, Plaintiff cannot show a likelihood of confusion. Accordingly, Plaintiff’s claim Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 23 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 24 4811-1365-5866.04 101116/1452/65894.00001 for Washington Common Law Trade Dress Infringement fails for the same reasons as its federal trademark claims. 12 e. There Was No Willful Infringement And Plaintiff is Not Entitled To Prefiling Damages As explained above, Plaintiff failed to mark its products, packaging and relevant web pages with any indication that it considered the shape of its products to be a trademark, let alone that it had federal trademark registration no. 4,254,086. Moreover, Plaintiff failed to provide any pre-filing notice of federal trademark registration no. 4,254,086. 15 U.S.C. §1111 states “in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.” Because Plaintiff did not give notice of its registration and Defendant had no actual notice of the registration, Plaintiff is not entitled to profits or damages. Additionally, the Court should find that there was no willful infringement. CONCLUSION For the foregoing reasons, Arkon’s motion for summary judgment should be granted. RESPECTFULLY SUBMITTED this 11th day of October, 2016. KARISH & BJORGUM PC By: /s/ Marc Karish Marc Karish (admitted pro hac vice) Email: marc.karish@kb-ip.com By: /s/ James E. Breitenbucher James E. Breitenbucher, WSBA No. 27670 RIDDELL WILLIAMS P.S. 1001 Fourth Avenue, Suite 4500 Seattle, WA 98154-1192 Tel: (206) 624-3600 Email: jbreitenbucher@riddellwilliams.com Attorneys for Defendant ARKON RESOURCES, INC. 12 Plaintiff’s other state law claims are also commensurate with Plaintiff’s federal trademark claims and fail for the same reasons. Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 24 of 25 Karish & Bjorgum, P.C. 119 E . Union Street, Suite B Pasadena, California 91103 213.785.8070 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 DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT (No. 15-cv-01553-RSL) - 25 4811-1365-5866.04 101116/1452/65894.00001 CERTIFICATE OF SERVICE I, Susan E. Miller, states as follows: I am over 18 years of age and a citizen of the United States. I am employed as a legal secretary by the law firm of Riddell Williams P.S. On the date noted below I electronically filed the foregoing document using the CM/ECF system and caused to be delivered true and accurate copies of the same via the CM/ECF system which will send notification of such filing to: David K. Tellekson Jeffrey A. Ware Ewa M. Davison Fenwick & West LLP 1191 Second Avenue, 10 th Floor Seattle, WA 98101 Email: dtellekson@fenwick.com jware@fenwick.com edavison@fenwick.com smcphee@fenwick.com Attorneys for Plaintiff National Products, Inc. I declare under penalty of perjury under the laws of the State of Washington that the foregoing is true and correct and that this Certificate of Service was executed on this 11 th day of October, 2016, at Seattle, Washington. Susan E. Miller Case 2:15-cv-01553-RSL Document 44 Filed 10/11/16 Page 25 of 25 Riddell Williams P.S. 1001 Fourth Avenue, Suite 4500 Seattle, Washington 98154-1192 206.624.3600 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 ORDER GRANTING DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT - (No. 15-cv-01553-RSL ) - 1 4851-2616-3258.01 101116/1315/65894.00001 THE HONORABLE ROBERT S. LASNIK UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE NATIONAL PRODUCTS, INC., Plaintiff, v. ARKON RESOURCES, INC., Defendant. No. 15-cv-01553-RSL PROPOSED ORDER GRANTING DEFENDANT ARKON RESOURCES, INC.’S MOTION FOR SUMMARY JUDGMENT THIS MATTER having come before the Court on Defendant Arkon Resources, Inc.’s Motion for Summary Judgment, and the Court having reviewed the motion and supporting declarations, Plaintiff’s opposition, Defendant’s reply in support and all subsequent pleadings filed in opposition to or in support thereof, as well as the records and files of the case herein, IT IS HEREBY ORDERED that Defendants’ Motion for Summary Judgment is GRANTED. IT IS SO ORDERED. DATED this _____ day of November, 2016. HONORABLE ROBERT S. LASNIK UNITED STATES DISTRICT COURT JUDGE Case 2:15-cv-01553-RSL Document 44-1 Filed 10/11/16 Page 1 of 2 Riddell Williams P.S. 1001 Fourth Avenue, Suite 4500 Seattle, Washington 98154-1192 206.624.3600 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 ORDER GRANTING DEFENDANT ARKON’S MOTION FOR SUMMARY JUDGMENT - (No. 15-cv-01553-RSL ) - 2 4851-2616-3258.01 101116/1315/65894.00001 PRESENTED BY: KARISH & BJORGUM PC By: s/ Marc Karish Marc Karish, (admitted pro hac vice) 119 E. Union Street, Suite B Pasadena, CA 91103 Telephone: (213) 785-8070 Email: marc.karish@kb-ip.com RIDDELL WILLIAMS P.S. By: s/ James E. Breitenbucher Jayson W. Sowers, WSBA #27618 James E. Breitenbucher, WSBA #27670 1001 Fourth Avenue, Suite 4500 Seattle, WA 98154-1192 Telephone: (206) 624-3600 Email: jsowers@riddellwilliams.com jbreitenbucher@riddellwilliams.com Attorneys for Defendant Arkon Resources, Inc. Case 2:15-cv-01553-RSL Document 44-1 Filed 10/11/16 Page 2 of 2