Ryan House v. Ryan's House For Youth

MOTION for Summary Judgment

W.D. Wash.April 20, 2017

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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 1 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax The Honorable Robert S. Lasnik UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE RYAN HOUSE, an Arizona nonprofit charitable organization, Plaintiff, v. RYAN’S HOUSE FOR YOUTH, a Washington nonprofit charitable organization, Defendant. No. 2:16-cv-01404-RSL PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT NOTE ON MOTION CALENDAR: May 12, 2017 ORAL ARGUMENT REQUESTED I. INTRODUCTION Defendant Ryan’s House for Youth is infringing Plaintiff’s “Ryan House” trademark. In its previously-filed opposition to Ryan’s House for Youth’s motion for summary judgment, Ryan House has shown that the defenses raised in that motion—alleged lack of use in “commerce” and laches—cannot shield Ryan’s House for Youth from liability for trademark infringement. See Dkt. #21. Ryan House now brings this motion for summary judgment, asking the Court to rule that the “Ryan’s House for Youth” trademark and trade name infringes the “Ryan House” trademark, and to enjoin Ryan’s House for Youth from using a trademark or trade name that includes the phrase “Ryan’s House” or that is otherwise confusingly similar to “Ryan House.” Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 1 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 2 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax II. FACTS Ryan House refers the Court to the facts set forth in its Opposition to Defendant’s Motion for Summary Judgment, Dkt. #21 at 2-9, rather than repeating them here. III. ARGUMENT A charitable organization such as Ryan House is entitled to protection under the Lanham Act even though it charges nothing for the services it provides. Moreover, that protection extends to use of a trademark not only in connection with the charity’s services, but also in connection with its fundraising. “‘If the distinct identity of [a] non-profit organization[] is lost through a confusingly similar use of a name by another, then it is obvious that the organization will have serious difficulty in raising funds and attracting members and support.’” Comm. for Idaho’s High Desert v. Yost, 881 F. Supp. 1457, 1471 (D. Idaho 1995), aff’d in relevant part 92 F.3d 814 (9th Cir. 1996) (quoting McCarthy on Trademarks § 9.02[1] at 9–11, (now at McCarthy § 9.05)). As is shown below, Ryan House owns the “Ryan House” trademark, and Defendant is creating a likelihood of confusion by using “Ryan’s House for Youth” not only as a mark in connection with its services but also as a trade name in connection with its fundraising. Both these uses by Defendant infringe the trademark rights of Ryan House, even though its trademark registrations do not claim charitable fundraising services, because “unauthorized use of a registered mark in a corporate name constitutes trademark infringement.” Nat’l Grange of the Order of Patrons of Husbandry v. Cal. State Grange, 182 F. Supp. 3d 1065, 1076 (E.D. Cal. 2016) (collecting cases).1 1 In Safeway Stores, Inc. v. Safeway Props., Inc., 307 F.2d 495 (2d Cir. 1962), for example, the Second Circuit invoked the plaintiff’s trademark rights to stop defendant’s use of a confusingly similar trade name in connection with services that plaintiff’s trademarks apparently did not cover. The plaintiff had long used “Safeway” as a trademark for retail grocery stores, and alleged that defendant’s use of “Safeway Properties” as a trade name for a real estate business infringed the mark. Id. at 497. Framing the issue as “whether the public’s identification of the plaintiff with the term ‘Safeway’ in the retail grocery business”—that is, its trademark rights for retail grocery services—“entitles the plaintiff to an injunction against the defendant’s use of the same name in the real estate business,” the court held that it did: “[e]ven if direct competition in this field [real estate transactions] is not likely, confusion is indeed probable.” Id. at 499. Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 2 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 3 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax A. Summary Judgment Is Appropriate in this Trademark Case. Summary judgment is appropriate if, viewing the evidence and all reasonable inferences drawn therefrom in the light most favorable to the nonmoving party, the moving party shows that “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). In trademark cases, “where the evidence is clear and tilts heavily in favor of a likelihood of confusion,” the Ninth Circuit “ha[s] not hesitated to affirm summary judgment” on the issue of infringement. Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1075 (9th Cir. 2006); see also World Triathlon Corp. v. Dunbar, 320 Fed. App’x. 795 (9th Cir. 2009) (affirming summary judgment of infringement); K & N Eng’g, Inc. v. Bulat, 259 Fed. App’x. 994 (9th Cir. 2007) (same); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1019 (9th Cir. 2004) (same). In this case the facts on which a conclusion of trademark infringement would be based are undisputed; the parties disagree only as to their legal significance. B. Ryan’s House for Youth Has Infringed Ryan House’s Trademark Rights. Ryan House has asserted claims for trademark infringement2 in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114, and for false designation of origin in violation of Section 43(a) of the Act, 15 U.S.C. § 1125(a). Both claims require Ryan House to prove that (1) it owns a valid mark and (2) Defendant’s use of “Ryan’s House for Youth” as a trademark and trade name is likely to cause confusion.3 See, e.g., Reno Air Racing Ass’n, Inc. v. McCord, 452 F.3d 1126, 1134 (9th Cir. 2006) (stating the elements of § 32 claims); Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir. 1989) (stating the elements of § 43(a) claims). Ryan House satisfies both elements. 2 Strictly speaking the marks at issue here are service marks, because they are used in connection with services rather than goods. This motion refers to them as “trademarks,” however, because “the term ‘trademark’ is generally understood to include marks used in the marketing of either goods or services.” Restatement (Third) of Unfair Competition § 9 cmt. f. See also id. (“The term ‘service mark’ . . . denotes a specific type of trademark”). 3 Sections 32 and 43(a) also require that the defendant use the infringing mark “in commerce.” That element is amply established here. See Dkt. #21 at 10:9-12:21. Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 3 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 4 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax 1. Ryan House Owns the “Ryan House” Mark. Ryan House owns the “Ryan House” mark. “It is axiomatic in trademark law that the standard test of ownership is priority of use.” Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). Ryan House unquestionably has priority of use, with a priority of use date of April 7, 2008. Ryan House’s April 7, 2008 filing of the applications that resulted in its registrations, Dunwoody Decl. Exs. 20-21 (Dkt. #24-18 & #24-19) constitutes “constructive use of the mark, conferring a right of priority, nationwide in effect.” Lanham Act § 7(c), 15 U.S.C. § 1057(c). The April 7, 2008 filing date becomes Ryan House’s constructive-use date and “gives [it] priority-of-use over anyone who adopts the mark after the constructive-use date.” Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1111 n.3 (9th Cir. 2010). Ryan House thus has priority. Its April 7, 2008 first use date is well before Ryan’s House for Youth was formed on March 15, 2010, see Second Dunwoody Decl. Ex. 37; Dunwoody Decl. Ex. 5 at 23:23-26:6, Ex. 7, Ex. 8 (Dkt. #24-1 at 17-20, #24-3 at 2, #24-4 at 2), and well before Lori Cavender had even “developed the concept” of the organization, which she says happened in 2009. Dkt. #17 at 1:27-2:2. Beyond evidence of priority of use, Ryan House’s federal registrations for the “Ryan House” mark further confirm Ryan House’s ownership of the mark because they have achieved incontestable status. Lanham Act § 33(b), 15 U.S.C. § 1115(b). A trademark registration becomes “incontestable” when the registrant satisfies the requirements of Section 15 of the Lanham Act, 15 U.S.C. § 1065. Ryan House’s registrations have become incontestable. The certified copies of Ryan House’s registration certificates bear the notation “Section 8 & 15,” see Dunwoody Decl. Exs. 20-21 (Dkt. #24-18 at 2, #24-19 at 2), indicating that U.S. Patent and Trademark Office records show that Ryan House has satisfied the incontestability requirements of Section 15. See also Second Dunwoody Decl. ¶ 2 and Exs. 35-36 at RHFY000254 and 000314 (statement in file histories for Ryan House’s registrations that “[t]he declaration of incontestability filed for the above-identified registration meets the requirements of Section 15 of the Trademark Act, 15 U.S.C. §1065.”). Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 4 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 5 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax These incontestable registrations therefore constitute “conclusive evidence” of Ryan House’s ownership of the “Ryan House” mark, unless Ryan’s House for Youth is able to prove one of nine “defenses or defects” enumerated in Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(b). Ryan’s House for Youth will not be able to do so. It has raised only one of those “defenses or defects” as an affirmative defense—laches—but cannot prove it. See Dkt. #21 at 16-23. Not only does incontestable status “quiet title in the ownership” of Ryan House’s mark, Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985), it also provides “conclusive evidence” that the mark is valid and that Ryan House has the exclusive right to use it in commerce in connection with the services specified in the registrations. Lanham Act § 33(b), 15 U.S.C. § 1115(b) 2. The “Ryan’s House for Youth” Mark and Trade Name Is Likely to Cause Confusion with “Ryan House.” Defendant’s “Ryan’s House for Youth” mark and tradename is likely to cause confusion with “Ryan House.” Likelihood of confusion is “the central element of trademark infringement;” the issue is “whether the similarity of the marks is likely to confuse customers about the source of the products.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000) (citation and internal quotation omitted). The Ninth Circuit courts analyzes likelihood of confusion by considering the following Sleekcraft factors: (1) the similarity of the marks; (2) the relatedness of the two companies’ services; (3) the marketing channel used; (4) the strength of [Plaintiff’s] mark; (5) [Defendant’s] intent in selecting its mark; (6) evidence of actual confusion; (7) the likelihood of expansion into other markets; and (8) the degree of care likely to be exercised by purchasers. See id. (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)). These factors are “pliant.” Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999). “Some factors are much more important than others, and the relative importance of each individual factor will be case-specific.” Id.; see also Au-Tomotive Gold, 457 F.3d at 1076 (factors not applied mechanically, rather “courts may examine some or all of the factors, depending on their relevance and importance”); Thane Int’l, Inc. v. Trek Bicycle Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 5 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 6 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax Corp., 305 F.3d 894, 901 (9th Cir. 2002) (“The list of factors is not a score-card—whether a party wins a majority of the factors is not the point. Nor should the factors be rigidly weighed; we do not count beans.”) (internal punctuation and citation omitted). When competing marks are used on the Internet, “the three most important Sleekcraft factors are: (1) the similarity of the marks, (2) the relatedness of the goods or services, and (3) the ‘simultaneous use of the Web as a marketing channel.’” GoTo.com, 202 F.3d at 1205 (quoting Brookfield, 174 F.3d at 1054 n.16). The Sleekcraft factors show that confusion is likely here. a. The Marks are Similar. It is immediately apparent that “Ryan House” and “Ryan’s House for Youth” are very similar. When determining similarity, the Ninth Circuit (1) considers the marks “in their entirety and as they appear in the marketplace;” (2) judges the “appearance, sound, and meaning” of the marks; and (3) weighs similarities “more heavily than differences.” Id. “Ryan House” and “Ryan’s House for Youth” look and sound very similar. In each, “Ryan” is the initial and dominant portion of the mark, and is followed immediately by “House.” Defendant’s use of the possessive “Ryan’s” rather than “Ryan” makes a negligible difference in both sound and appearance. Nor does the addition of “for Youth” to Defendant’s mark significantly distinguish the two marks in sound and appearance. The location of that phrase at the end of the mark makes it less prominent, whether the mark is spoken or written. Moreover, when it uses its mark as a logo, Ryan’s House for Youth minimizes “for Youth,” prominently featuring the words “Ryan’s House,” and relegating “for Youth” to smaller print on a separate line: Dunwoody Decl. Ex. 5 at 122:16-22 & Ex. 14 (Dkt. #24-1 at 69 & #24-10 at 2). In addition, both Ryan’s House for Youth and third parties regularly omit “for Youth” and use just “Ryan’s Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 6 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 7 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax House” to refer to the organization. The executive director of Ryan’s House for Youth admits that it is natural to shorten the name in this way, Dunwoody Decl. Ex. 5 at 131:25-132:5 (Dkt. #24-1 at 73-74), and that Ryan’s House for Youth so shortens it. Id. at 129:12-17 (#24-1 at 71). Defendant’s website is rife with references to just “Ryan’s House”. Dunwoody Decl. ¶ 4 & Ex 16 (Dkt. 24-1 at 2 & #24-12). Third parties also continue to use “Ryan’s House” to refer to the organization. Dunwoody Decl. Ex. 5 at 131:25-132:2 (Dkt. # 24-1 at 73-74). News media frequently refer to the organization by that name, as does the charitable information service GuideStar. Childs Decl. Ex. 24 (Dkt. 25-1); Dunwoody Decl. Ex. 18 (Dkt. #24-16). Finally, the competing marks are similar in meaning as well: a facility owned by, named after, or having the characteristics of an individual named Ryan. As with sound and appearance, the possessive “Ryan’s” instead of “Ryan” makes a negligible difference in meaning, and members of the public frequently use the possessive form when referring to Plaintiff in casual conversation, calling it “Ryan’s House”. Cottor Decl. ¶ 14 (Dkt. #23 at 4). The presence of “for Youth” does not appreciably lessen the similarity because it merely describes a population that both parties serve. “If a junior user takes the entire mark of another, addition of a suggestive or descriptive element is generally not sufficient to avoid confusion.” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23.50 (2017) (citing cases). That is all that Defendant did in its half-hearted effort to distinguish “Ryan’s House” from the virtually identical “Ryan House”—add the descriptive element “for Youth”. b. The Parties’ Services and Activities Are Related. The services of Ryan House and Ryan’s House for Youth are related. Ryan House offers charitable residential services for children and youth suffering from life-limiting illnesses, up to age 18. Crockett Decl. ¶ 2 (Dkt. #22 at 2:3-4). Ryan’s House for Youth offers charitable services (including home placement) for homeless children and youth aged 12 to 24, and charitable residential services in its own facilities for homeless youth aged 18 to 24. Second Dunwoody Decl. Ex. 38 at 81:2-9. Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 7 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 8 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax In addition to the relatedness of their respective services, each party engages in fundraising activities to be able to provide those services. Because of the threat of donor confusion, courts recognize that use by one nonprofit of a trade name that is similar to another nonprofit’s trademark supports a finding of likely confusion, even if the two nonprofits do not have closely similar missions. See, e.g., Anti-Defamation League of B’nai B’rith v. Nat’l Mexican Am. Anti-Defamation Comm., 510 F.2d 1246 (D.C. Cir. 1975) (use of “Anti- Defamation” by defendant nonprofit created likelihood of confusion even though plaintiff and defendant advocated for different religious and ethnic groups); Appleseed Found. Inc. v. Appleseed Inst., Inc., 981 F. Supp. 672, 676 (D.D.C. 1997) (Defendant nonprofit’s use of “Appleseed” in connection with “public advocacy” services created likelihood of confusion with plaintiff nonprofit’s use of “Appleseed” in connection with promoting charter schools). c. The Parties Use Overlapping Marketing Channels. Ryan House and Ryan’s House for Youth use virtually identical marketing channels, making “‘simultaneous use of the Web as a marketing channel.’” GoTo.com, 202 F.3d at 1205 (quoting Brookfield, 174 F.3d at 1054 n.16). Both use their respective websites and Facebook pages to promote their services and to solicit donations. Crockett Decl. ¶ 4 (Dkt. #22 at 2); Dunwoody Decl. Ex. 5 at 134:22-136:8 & Ex. 16 (Dkt. #24-1 at 76-78 & #24-12); see also Dunwoody Decl. Ex. 5 at 140:15-25, 143:21-25 & Ex. 17 (Dkt. #24-1 at 81, 82 & #24-13). Both organizations also raise funds using the on-line Amazon Smile service. Second Crockett Decl. ¶ 5; Dunwoody Decl. Ex. 5 at 144:16-146:15 (Dkt. #24-1 at 83-84). d. “Ryan House” Is a Strong Mark. The “Ryan House” mark is strong. The Ninth Circuit analyzes strength both conceptually and commercially. GoTo.com, 202 F.3d at 1207. A mark’s conceptual strength is analyzed along a spectrum of increasing distinctiveness—generic, descriptive, suggestive, arbitrary, or fanciful; marks that are more distinctive are stronger. Brookfield, 174 F.3d at 1058. The “Ryan House” mark is conceptually strong because it does not merely describe Ryan House’s services or its purposes. Id. Rather, the mark is arbitrary. See Moseley v. V Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 8 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 9 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax Secret Catalogue, Inc., 537 U.S. 418, 426 n.7 (2003) (quoting with approval Sixth Circuit’s conclusion that “Victoria’s Secret” is arbitrary for lingerie). At a minimum, “Ryan House” is suggestive because it requires a “mental leap” from the mark to its associated services— pediatric palliative care. Brookfield, 174 F.3d at 1058. Examples of strong marks that comprise first names include “Amy’s” for natural foods, https://www.amys.com/, “Olga” for undergarments, https://www.olgaintimates.com/, “Sam’s Club” for retail services, https://www.samsclub.com/sams/homepage.jsp, and “Tom’s of Maine” for toothpaste, http://www.tomsofmaine.com/home. “Ryan House” is conceptually strong too. The “Ryan House” mark also enjoys commercial strength as a result of its commercial success: for nearly ten years Ryan House has been one of only two providers of on-site pediatric palliative care to children with life-limiting or terminal medical conditions and disabilities. Cottor Decl. ¶ 7 (Dkt. #23 at 2). This is a unique and groundbreaking type of care in the United States. Id. Ryan House advertises on television, radio, print, and the Internet. It has been the subject of substantial media coverage, and is the subject of a full-length book, Ryan House in the Heart of Phoenix. Second Crockett Decl. ¶¶ 3-4. See Sleekcraft, 599 F.2d at 350 (commercial strength shown through advertising, length of time in buiness, and public recognition). e. Defendant’s Intent Supports a Finding of Likely Confusion. The intent factor “favors the plaintiff where the alleged infringer adopted his mark with knowledge, actual or constructive, that it was another’s trademark.” See Brookfield, 174 F.3d at 1059 (emphasis added). This factor points to likely confusion here. Ryan House’s trademark registrations have provided constructive notice of Ryan House’s trademark rights since November 2008. See Lanham Act § 22, 15 U.S.C. § 1072 (registration on Principal Register is “constructive notice of the registrant’s claim of ownership” of a mark). Although there is no evidence that Ryan’s House for Youth was actually aware of the “Ryan House” mark when it adopted its mark, and did so with intent to deceive, Ryan’s House for Youth would easily have learned of the “Ryan House” mark if it had exercised reasonable care and Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 9 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 10 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax done even a quick Internet search before selecting its name. This case is like Masters Software, Inc. v. Discovery Commc’ns, Inc., 725 F. Supp. 2d. 1294 (W.D. Wash. 2010), which held the intent factor weighed in favor of likely confusion, even accepting that the defendant was unaware of the plaintiff’s mark when it adopted its mark. The defendant’s lack of knowledge was “a far cry from evidence of innocent intent” given that“it would have taken only a few moments on the internet” for infringer to discover the plaintiff’s trademark. Id. at 1305. See also Walter v. Mattel, Inc., 210 F.3d 1108, 1111 (9th Cir. 2000) (finding a “reasonable investigation into existing uses” of a product name evidence of innocent intent). f. There Has Been Actual Confusion. “The failure to prove instances of actual confusion is not dispositive against a trademark plaintiff, because actual confusion is hard to prove; difficulties in gathering evidence of actual confusion make its absence generally unnoteworthy.” Brookfield, 174 F.3d at 1050 (emphasis in original). But where it exists it is “persuasive proof that future confusion is likely.” Sleekcraft, 599 F.2d at 352. Actual confusion has occurred. Use by Ryan’s House for Youth of the domain for its website caused significant confusion last year. A charitable fundraising event called “Birdies for Charity” solicits donations to participating charities, where the amount pledged is based on the number of birdies made in the Phoenix Open golf tournament. The Birdies for Charity website for the 2016 Phoenix Open contained a list of participating charities to which donors could pledge, and that list included links to the charities’ websites so that donors could obtain information about the charities. Ryan House participated in Birdies for Charity in 2016 and was listed as a participating charity on the Birdies for Charity website. But the link for Ryan House on that website took donors not to the Ryan House website, www.ryanhouse.org, but instead to the Ryan’s House for Youth website at www.ryanshouse.org. As a result, donors considering participating in Birdies for Charity who clicked on the “Ryan House” link to obtain more information were taken to the website for Ryan’s House for Youth and received information about that charity instead, and not Ryan Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 10 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 11 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax House. Crockett Decl. ¶ 9 (Dkt. #22 at 3); Kaser Decl. Ex. A (Dkt. #18 at 3-5); Cottor Decl. ¶ 15 (Dkt. #23 at 4). Another instance of actual confusion involved Local Independent Charities of America, an organization with a website on which visitors can find and contribute to a charity. Ryan’s House for Youth was a participating charity in Local Independent Charities of America until recently. Dunwoody Decl. Ex. 5 at 136:25-138:13 (Dkt. #24-1 at 78-80). A recent search on the Local Independent Charities of America website for “Ryan House” returned a listing for Ryan’s House for Youth, not Ryan House. Childs Decl. ¶ 5 & Ex. 28 (Dkt. #25 at 2:5-17 & #25-5). In addition, a search for “Ryan House” on Google yields results that list Ryan House and Ryan’s House for Youth, with one immediately following the other. Childs Decl. Ex. 25, (Dkt. #25-2 at 2). An internet user looking for Ryan House who mistakenly add an extra “s” and types “ryanshouse.org” in a web browser will be taken to the Ryan’s House for Youth website, not the Ryan House website. Dunwoody Decl. Ex. 5 at 106:24-107:1, 108:11-25, 126:24-127:10 (Dkt. #24-1 at 63-64, 65, 70-71). This results in Ryan House supporters accidentally reaching the Ryan’s House for Youth website. Cottor Decl. ¶ 15 (Dkt. #23 at 4:17-18). g. The Likelihood of Expansion Factor Is Neutral. There is no evidence of likelihood of either party expanding into markets other than the ones in which they currently offer services and raise funds. This factor is neutral, but is not required for a finding of likelihood of confusion. See, e.g., Lahoti v. Vericheck, Inc., 636 F.3d 501, 509 (9th Cir. 2011) (affirming finding of likelihood of confusion where evidence of likelihood of expansion was absent); Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1131-32 (9th Cir. 2014) (same). h. Not All Donors Exercise a High Degree of Care. Finally, the degree of care factor favors Ryan House. Though consumers searching for pediatric palliative care services or for services for homeless youth may exercise a certain Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 11 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 12 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax degree of care in selecting these services, prospective donors likely would exercise a relatively lower degree of care. As discussed above, a prospective donor typing the words “Ryan House” into a search engine will receive results showing the two organizations in sequential order. A donor looking for Ryan House may see the words “for Youth” in Ryan’s House for Youth’s name and, knowing that Ryan House offers services for youth, click on the link for Ryan’s House for Youth without much thought or care. In addition, the Ryan House website has been specifically designed to make it as quick and easy as possible for potential donors to navigate the website and, ultimately, to donate. Second Crockett Decl. ¶ 6. The online donations Ryan House receives are generally in relatively small amounts compared to donations by other means, such as donations via mailed- in checks or made in person at Ryan House fundraising events, and studies show that online donations suffer significantly if a prospective donor cannot figure out how to make a donation within one minute of reaching a charity’s website. Id. The Ryan’s House for Youth website also makes it easy to donate,4 and online donors who make relatively small donations are less likely to exercise a high duty of care. As a court observed when finding a likelihood of confusion between two charitable organizations using similar marks, “[p]ersons wishing to donate are not likely to analyze in depth the credentials of the charity. Rather, they are more likely to be generally familiar with the works of a charity for a cause they support and, when solicited, will contribute to such a cause.” Am. Diabetes Ass’n v. Nat’l Diabetes Ass’n, 533 F. Supp. 16, 21 (E.D. Pa. 1981), aff’d 681 F.2d 804 (3d. Cir. 1982). C. Laches Does Not Bar an Injunction. Laches does not bar entry of an injunction, for the reasons stated in Ryan House’s Opposition to Defendant’s Motion for Summary Judgment, Dkt. #21 at 16-23. 4 See Dunwoody Decl. Ex. 5 at 134:22-135:11, Ex. 16 at RHFY000854-56, 866 (Dkt. #24-1 at 76-77, #24-12 at 37-39, 49. Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 12 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 13 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax D. The Court Should Grant an Injunction. The Court should grant Ryan House an injunction under the Lanham Act, which authorizes injunctions to remedy trademark infringement. 15 U.S.C. § 1116(a). The injunction should prohibit Ryan’s House for Youth from using a trademark or trade name that contains the phrase “Ryan’s House” or is otherwise confusingly similar to “Ryan House,” and direct Ryan’s House for Youth to transfer the domain to Ryan House.5 A permanent injunction may be entered for trademark infringement where the plaintiff shows: “(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of the hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.” La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867, 879 (9th Cir. 2014) (quoting eBay Inc. v MercExchange, L.L.C., 547 U.S. 388, 391 (2006)). These factors are satisfied here. First, “[c]ourts have recognized that in trademark cases, the irreparable harm may be shown through evidence of the loss of prospective customers, goodwill, or reputation.” Treemo, Inc. v. Flipboard, Inc., 53 F. Supp. 3d 1342, 1367 (W.D. Wash. 2014); see also Getty Images (U.S.), Inc. v. Virtual Clinics, No. C13–0626 JLR, 2014 WL 1116775, at *6 (W.D. Wash. Mar. 20, 2014) (plaintiff suffered irreparable harm from copyright infringement through potential loss of customers, goodwill, and reputation). A good reputation is especially important for a charitable organization such as Ryan House, which is wholly dependent on contributions from donors. Crockett Decl. ¶ 6 (Dkt. #22 at 2). Ryan House currently enjoys an excellent reputation in Arizona and throughout the United States. If Ryan’s House for Youth were to receive bad publicity, whether as a result of mismanagement, misconduct by volunteers who are not adequately screened, or other reasons, that bad publicity could tarnish the reputation of Ryan House as well because of the similarity in their names. Id.¶ 7. Ryan’s 5 Transfer of the domain will ensure that it is not used by others, and is the equivalent of an order requiring destruction of infringing articles pursuant to Section 36 of the Lanham Act, 15 U.S.C.§ 1118. Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 13 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 14 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax House for Youth’s use of its trademark thus has caused Ryan House to lose control over possible damage to its goodwill and reputation. Crockett Decl. ¶ 7 (Dkt. #22 at 2). Such damage to goodwill and reputation constitutes an irreparable harm. Rent-a-Center, Inc. v. Canyon Television & Appliance Rental, Inc., 944 F.2d 597, 603 (9th Cir. 1991). Second, the harm caused by improper use of a trademark is inherently difficult to quantify, making money damages inadequate. Kraft Foods Grp. Brands LLC v. Cracker Barrel Old Country Store, Inc., 735 F.3d 735, 741 (7th Cir. 2013) (“irreparable harm is especially likely in a trademark case because of the difficulty of quantifying the likely effect on a brand of a nontrivial period of consumer confusion . . . .”); see also Am.Diabetes Ass’n, 533 F. Supp. at 21 (loss of donations by charitable organization as a result of trademark infringement is “notoriously difficult to prove”). Therefore, “[c]ourts have broadly accepted the general proposition that, even after the Supreme Court’s decision in eBay, monetary damages alone are inadequate to remedy trademark violations.” Treemo, 53 F. Supp. 3d at 1367. Third, the balance of hardships favors Ryan House. Since Ryan House is seeking only to enjoin infringing activity, the injunction “will not adversely affect any of Defendant[’]s legitimate business operations, nor will [it] suffer any cognizable hardship as a result of its issuance.” Coach, Inc. v. Pegasus Theater Shops, No. C12–1631–MJP, 2013 WL 5406220, at *5 (W.D. Wash. Sept. 25, 2013) (entering permanent injunction) (citation and internal quotation omitted). Conversely, Ryan House and the public are likely to suffer harm from consumer and donor confusion if Ryan’s House for Youth continues to use its mark and trade name. Id. Fourth, an injunction here would serve the public interest in avoiding consumer and donor confusion. Internet Specialties W., Inc. v. Milon-DiGiorgio Enters., Inc., 559 F.3d 985, 993-94 (9th Cir. 2009). Accordingly, Ryan House should be granted an injunction prohibiting Ryan’s House for Youth from using a trademark or trade name that contains the phrase “Ryan’s House” or is otherwise confusingly similar to “Ryan House,” and directing Ryan’s House for Youth to Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 14 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 15 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax transfer the domain to Ryan House. The scope of this proposed injunction is adequate to protects Ryan House from further harm. IV. CONCLUSION The Court should grant summary judgment finding that Ryan’s House for Youth has infringed the “Ryan House” trademark, and enter an injunction prohibiting Ryan’s House for Youth from using a trademark or trade name that contains the phrase “Ryan’s House” or is otherwise confusingly similar to “Ryan House,” and directing Ryan’s House for Youth to transfer the domain to Ryan House. DATED this 20th day of April 2017 Davis Wright Tremaine LLP Attorneys for Plaintiff By s/Stuart R. Dunwoody Stuart R. Dunwoody, WSBA # 13948 Brooke E. Howlett, WSBA #47899 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 Tel: 206.622.3150 Fax: 206.757.7700 Email: stuartdunwoody@dwt.com Email: brookehowlett@dwt.com Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 15 of 16 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 PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 16 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax CERTIFICATE OF SERVICE I hereby certify that on April 20, 2017, I electronically filed the foregoing with the Clerk of the Court using the CM/ECF system which will send notification of such filing to the following: Bruce A. Kaser Vantage Law PLLC 420 Front Street S Issaquah, WA 98027 Email: bruce@vantagelaw.net Attorneys for Defendant ______ U.S. Mail ______ Hand Delivery ______ Overnight Mail ______ Facsimile X CM/ECF Notification DATED this 20th day of April 2017. s/Stuart R. Dunwoody Stuart R. Dunwoody Case 2:16-cv-01404-RSL Document 27 Filed 04/20/17 Page 16 of 16 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 ORDER GRANTING PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 1 4848-7177-9143v.1 0107293-000001 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax The Honorable Robert S. Lasnik UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE RYAN HOUSE, an Arizona nonprofit charitable organization, Plaintiff, v. RYAN’S HOUSE FOR YOUTH, a Washington nonprofit charitable organization, Defendant. No. 2:16-cv-01404-RSL [PROPOSED] ORDER GRANTING PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT This matter comes before the Court on Plaintiff’s Motion for Summary Judgment. Having considered the parties’ briefing, the Court finds that the Motion should be GRANTED. Now, therefore, it is hereby ORDERED as follows: 1. Ryan’s House for Youth is liable for infringement of the “Ryan House” trademark owned by Ryan House, in violation of Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a). 2. Ryan’s House for Youth, its agents, servants, employees, and attorneys, and other persons who are in active concert or participation with any of the foregoing persons (referred to as the “Enjoined Parties”), are hereby permanently enjoined and restrained from Case 2:16-cv-01404-RSL Document 27-1 Filed 04/20/17 Page 1 of 3 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 ORDER GRANTING PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 2 4848-7177-9143v.1 0107293-000001 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax using a trademark or trade name that contains the phrase “Ryan’s House” or that otherwise is confusingly similar to “Ryan House.” 3. The Enjoined Parties shall cause the domain to be transferred to Ryan House by no later than 14 days after entry of this Order. 4. By no later than 14 days after entry of this Order, Ryan’s House for Youth shall deliver to Plaintiff’s attorney, Stuart R. Dunwoody, Davis Wright Tremaine LLP, 1201 Third Avenue, Suite 2200, Seattle, Washington 98101, a written statement under penalty of perjury and executed by an officer or director of Ryan’s House for Youth confirming that the Enjoined Parties have complied with all requirements of the injunction imposed by Paragraphs 2 and 3 of this Order. DATED this _____ day of ___________________, 2017. UNITED STATES DISTRICT JUDGE Presented by: Davis Wright Tremaine LLP Attorneys for Plaintiff By: s/Stuart R. Dunwoody Stuart R. Dunwoody, WSBA #13948 Brooke Howlett, WSBA #47899 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 Tel: 206-757-8034 Fax: 206-757-7034 Email: stuartdunwoody@dwt.com Email: brookehowlett@dwt.com Case 2:16-cv-01404-RSL Document 27-1 Filed 04/20/17 Page 2 of 3 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 ORDER GRANTING PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT (2:16-cv-01404-RSL) - 3 4848-7177-9143v.1 0107293-000001 Davis Wright Tremaine LLP LAW OFFICES 1201 Third Avenue, Suite 2200 Seattle, WA 98101-3045 206.622.3150 main · 206.757.7700 fax CERTIFICATE OF SERVICE I hereby certify that on April 20, 2017, I electronically filed the foregoing with the Clerk of the Court using the CM/ECF system which will send notification of such filing to the following: Bruce A. Kaser Vantage Law PLLC 420 Front Street S Issaquah, WA 98027 Email: bruce@vantagelaw.net Attorneys for Defendant ______ U.S. Mail ______ Hand Delivery ______ Overnight Mail ______ Facsimile X CM/ECF Notification DATED this 20th day of April 2017. s/Stuart R. Dunwoody Stuart R. Dunwoody Case 2:16-cv-01404-RSL Document 27-1 Filed 04/20/17 Page 3 of 3