United States District Court, D. Idaho
NELSON-RICKS CHEESE COMPANY, INC., an Idaho corporation, Plaintiff,
LAKEVIEW CHEESE COMPANY, LLC, a Nevada limited liability company, Defendant.
MEMORANDUM DECISION AND ORDER
C. NYE, U.S. DISTRICT COURT JUDGE
before the Court is Defendant Lakeview Cheese Company
LLC's (“Lakeview”) Motion for Summary
Judgment. Dkt. 70. Lakeview has also filed a motion seeking
to exclude the testimony of two of Plaintiff Nelson-Ricks
Cheese Company's (“NRCC”) experts from the
Court's consideration in deciding the Motion for Summary
Judgment. Dkt. 79. After holding oral argument on the
motions, the Court took the matters under advisement. Also
after oral argument, NRCC filed a Motion to Supplement the
record with additional material in support of its opposition
to summary judgment. Dkt. 89. Upon review, the Court now
issues the following decision GRANTING the Motion to
Supplement, DENYING the Motion to Exclude, and GRANTING the
Motion for Summary Judgment.
a trademark infringement case. The trademark at issue is the
word mark “Nelson-Ricks Creamery Company”
(“the Mark”). The two parties in this case own
and operate various assets that formerly belonged to
Nelson-Ricks Creamery Company (“Creamery”), a now
defunct business entity.
to 2012, Creamery owned facilities in Salt Lake City, Utah,
and Rexburg, Idaho. Creamery also owned certain intellectual
property including both the “Banquet” and
“Nelson Ricks Creamery” brand names of cheese. In
2012, Lakeview purchased both the Salt Lake City facility and
the Banquet brand from Creamery. The sale included the
transfer of Creamery's www.banquetcheese.com website to
Lakeview. Importantly, the sale also included a limited
license allowing Lakeview to make use of the Nelson Ricks
Creamery brand name. In 2014, Creamery sold the Rexburg
facility and the Nelson Ricks Creamery brand to NRCC Asset
Acquisition LLC, an affiliate of NRCC.
claims in this matter center on the “About Us”
webpage from Creamery's original www.banquetcheese.com
website. The “About Us” webpage detailed
Creamery's history, story, and the historical affiliation
of Nelson-Ricks Creamery Company and the Banquet brand. In
2014, contemporaneously with Creamery's sale to NRCC
Asset Acquisition, Creamery terminated Lakeview's limited
license agreement to use the Mark. As a result, Lakeview
updated Creamery's website to remove the “About
Us” webpage, making it no longer accessible via
one year later, in April 2015, NRCC obtained trademark
registration for “Nelson-Ricks Creamery Company.”
One year after that, NRCC became aware that, even though the
“About Us” webpage was no longer linked to the
www.banquetcheese.com website, if manually typed into a
web-browser, a person could still access the page, in the
same form as when it was created by Creamery, and containing
the trademarked “Nelson-Ricks Creamery Company”
Mark. NRCC sent Lakeview a cease and desist letter demanding
that the information be changed or taken down. Lakeview
altered the “About Us” page and removed any
reference to Nelson Ricks Creamery. Those actions aside, this
lawsuit ensued. NRCC alleges six trademark related claims
against Lakeview: (1) trademark infringement under the Lanham
act; (2) common law trademark infringement; (3) unfair
competition; (4) unfair methods and practices; (5) unjust
enrichment; and (6) tortious interference with prospective
now moves for summary judgment on all counts. Additionally,
in evaluating summary judgment, Lakeview asks the Court to
exclude from consideration the testimony of two of NRCC's
experts. The Court will address each matter in turn.
oral argument, the Court requested that the parties
supplement the record with more accurate pictures of the
webpages at issue (as those provided in the record were out
of focus or otherwise difficult to read). The parties
prepared a joint submission, which the Court now accepts.
NRCC filed a Motion to Supplement the record, dkt. 89, in
support of its opposition to summary judgement. The Court
will also address this motion.
judgment is proper “if the movant shows that there is
no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Fed.R.Civ.P.
56(a). This Court's role at summary judgment is not
“to weigh the evidence and determine the truth of the
matter but to determine whether there is a genuine issue for
trial.” Zetwick v. Cty. of Yolo, 850 F.3d 436,
441 (9th Cir. 2017) (citation omitted). In considering a
motion for summary judgment, this Court must “view
the facts in the non-moving party's favor.”
Id. To defeat a motion for summary judgment, the
respondent need only present evidence upon which “a
reasonable juror drawing all inferences in favor of the
respondent could return a verdict in [his or her]
favor.” Id. (citation omitted). Accordingly,
this Court must enter summary judgment if a party
“fails to make a showing sufficient to establish the
existence of an element essential to that party's case,
and on which that party will bear the burden of proof at
trial.” Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986). The respondent cannot simply rely on an
unsworn affidavit or the pleadings to defeat a motion for
summary judgment; rather the respondent must set forth the
“specific facts, ” supported by evidence, with
“reasonable particularity” that precludes summary
judgment. Far Out Prods., Inc. v. Oskar, 247 F.3d
986, 997 (9th Cir. 2001).
Exclusion of Expert Testimony
though this case is not at the trial stage, the extent to
which experts may render an opinion is addressed under the
well-known standard first enunciated in Daubert v.
Merrell Dow Pharms., Inc., 509 U.S. 579 (1993), and its
progeny, and now set forth in Rule 702 of the Federal Rules
of Evidence. See Moore v. Deer Valley Trucking,
Inc., No. 4:13-CV-00046-BLW, 2014 WL 4956241, at *1 (D.
Idaho Oct. 2, 2014).
702 establishes several requirements for admitting an expert
opinion. First, the evidence offered by the expert must
assist the trier of fact either to understand the evidence or
to determine a fact in issue. Primiano v. Cook, 598
F.3d 558, 563 (9th Cir. 2010); Fed.R.Evid. 702. “The
requirement that the opinion testimony assist the trier of
fact goes primarily to relevance.” Id.
(Internal quotations and citation omitted).
the witness must be sufficiently qualified to render the
opinion. Id. If specialized knowledge will assist
the trier of fact in understanding the evidence or
determining a fact in issue, a witness qualified by
knowledge, skill, experience, training or education may offer
expert testimony where: (1) the opinion is based upon
sufficient facts or data, (2) the opinion is the product of
reliable principles and methods; and (3) the witness has
applied those principles and methods reliably to the facts of
the case. Fed.R.Evid. 702; Daubert, 509 U.S. at
592-93; Kumho Tire Co. v. Carmichael, 526 U.S. 137,
147 (1999). The inquiry is a flexible one. Primiano,
598 F.3d at 564. Ultimately, a trial court must “assure
that the expert testimony both rests on a reliable foundation
and is relevant to the task at hand.” Id.
(internal quotation marks and citation omitted).
Motion for Summary Judgment
argues that all of NRCC's claims fail as a matter of law
and because there are no disputed facts in this case. The
Court will address each cause of action in turn. However, the
Court will place extra emphasis on the first claim, as the
analysis there is relevant to later claims.
Trademark Infringement Under the Lanham Act
order to prevail on a claim for trademark infringement, NRCC
must establish that: (1) it is the owner of a valid and
protectable trademark; (2) the defendant used the mark in
commerce; (3) the defendant's use of the mark is likely
to cause confusion; and (4) NRCC has suffered damages. 15
U.S.C. § 1125(a); Adobe Sys. Inc. v.
Christenson, 809 F.3d 1071, 1081 (9th Cir. 2015) (citing
Fortune Dynamic, Inc. v. Victoria's Secret Stores
Brand Mgmt., Inc., 618 F.3d 1025, 1030 (9th Cir. 2010)).
use of the mark is a jurisdictional predicate. Bosley Med
Inst., Inc. v. Kremer, 403 F.3d 672, 676 (9th Cir.
2005). If a defendant does not use the mark in commerce, a
plaintiff's claim for trademark infringement fails as a
matter of law. Id. If commercial use is established,
then the “core element of trademark infringement”
is “[p]rotecting against a likelihood of confusion,
” which helps to “ensur[e] that owners of
trademarks can benefit from the goodwill associated with
their marks” and “that consumers can distinguish
among competing producers.” Adobe Sys. Inc.,
809 F.3d at 1081 (quoting Brookfield Commc'ns v. W.
Coast Entm't Corp., 174 F.3d 1036, 1053 (9th Cir.
1999); Thane Int'l, Inc. v. Trek Bicycle Corp.,
305 F.3d 894, 901 (9th Cir. 2002)).
Owner of a Valid Trademark
stated previously, in 2012, when Lakeview purchased some of
Creamery's assets, it also entered into a Limited License
Agreement that allowed it to use the name “Nelson-Ricks
Creamery Company.” In March of 2014, when NRCC Asset
Acquisition bought Creamery's remaining assets,
Creamery-in anticipation of the pending sale- revoked this
agreement with Lakeview. Lakeview immediately disconnected
the “About Us” webpage that had the Mark's
language. Creamery, however, retained the right to collect
royalties from Lakeview, and the Mark did not officially
become NRCC Asset Acquisition's until an escrow period of
180 days had closed. The Mark, therefore, could not become
NRCC's until sometime after August 24,
2014. On August 11, 2014, NRCC filed its
application to register the Mark with the United States
Patent and Trademark Office (“USPTO”), and on
April 21, 2015, NRCC registered the Mark with the USPTO.
contends that because NRCC did not have a valid and
enforceable trademark prior to August 24, 2014, (when NRCC
Assets Acquisition actually acquired the rights to the
Nelson-Ricks Creamery Company Mark) any use by Lakeview prior
to that date is irrelevant and NRCC only had a valid
trademark after August 24, 2014.
asserts that it had a common law trademark prior to
registration. Even assuming this is true, the earliest date
NRCC could claim a common law trademark is March 24, 2014-the
date of NRCC Assets Acquisition's purchase of Creamery
assets. Construing all possible inferences in NRCC's
favor, the period of infringement would at most be from March
24, 2014, to August 2016 (when, following NRCC's cease
and desist letter, Lakeview removed all references to
Nelson-Ricks Creamery Company from the “About Us”
not completely clear if NRCC had a valid and enforceable
trademark during the time in question, but construing the
facts in NRCC's favor, the Court will assume that it did.
However, even assuming the Mark's validity, this is only
the first step of the inquiry.
Use in Commerce
second section of the Lanham Act states that any person who
“use[s] in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark in
connection with the sale, offering for sale, distribution, or
advertising of any goods or services on or in connection with
which such use is likely to cause confusion, or to cause
mistake, or to deceive” can be held liable for such
use. 15 U.S.C. § 1114(1)(a); see also Bosley,
403 F.3d at 676. Courts do not consider there to be
infringement under the Lanham Act if a website contains
another's trademark if the website does not offer any
product for sale or contain any paid advertisements.
Bosley, 403 F.3d at 678.
the mention of Nelson-Ricks Creamery Company on the
“About Us” webpage was mostly historical in
nature. The “About Us” section of the website
told the story of the Banquet cheese brand and the Mark was
included to describe when the company was founded and what
kind of products are offered. While the website originally
contained an online store link (which the Court would have
interpreted as offering products for sale), Lakeview removed
that function prior to NRCC's accusation and its prior
existence is irrelevant to the Court's determination.
Simply put, there is no indication that Lakeview used the
Mark in commerce.
makes a tenuous argument in its reply brief that because the
website contains information about a business, it necessarily
is an advertisement and is commercial in nature. NRCC does
not cite to any court that has made such a finding and this
Court declines to do so now.
the Court does not find that Lakeview used the Mark in
commerce, the Court will nonetheless address confusion, as
this is the crux of any trademark claim. See Two Pesos,
Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992)
(determining that it is “undisputed that liability
under § 43(a) requires proof of the likelihood of
confusion”); Fortune Dynamic, Inc., 618 F.3d
at 1030 (finding that “the likelihood of confusion is
the core element of trademark infringement”).
Additionally, in this case specifically, confusion and
damages are the two elements that weigh most heavily in favor
of summary judgment, as NRCC cannot provide a single example
of confusion or point to a single dollar in damages.
establish a likelihood of confusion, a plaintiff must
establish that confusion is probable rather than
merely possible. HMH Pub. Co. v. Brincat,
504 F.2d 713, 717 (9th Cir. 1974). Both sides agree that the
Court should utilize the long-recognized factors set forth in
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.
1979), to determine if a likelihood of confusion exists in
applying the Sleekcraft factors, a court is to
consider: (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) the 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 GoTo.com, Inc.
v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000).
The Sleekcraft factors are not mandatory or an
exhaustive list but rather “helpful guideposts”
for the Court to use. Fortune Dynamic, Inc., 618
F.3d at 1030. The Court need not give the factors equal
weight, or even utilize each factor, as some may not be
relevant or applicable. Marketquest Grp., Inc. v. BIC
Corp., 862 F.3d 927, 938 (9th Cir. 2017). The purpose of
a “factor” list such as this is simply to
“facilitate a court's analysis, to the degree [the
factors] are relevant in a given case.” Id.
first four factors are not as relevant to the Court because:
the use in question here is not just of a similar mark, but
is the use of the actual Mark itself (factor 1); the two
companies services are closely related (factor 2); both use
the internet as a marketing channel (factor 3); and the
strength of the Mark is not in question (factor
4).Additionally, because Lakeview and NRCC are
already competitors in a niche market, the likelihood of
expansion (factor 7) is not particularly relevant in this
case. See Brookfield, 174 F.3d at 1060. The
remaining three ...