As the Gonzaga Battle continues.. A few of my Defenses got stricken, but others remain. Media wants to say Gonzaga Wins just to get attention.. when case is not even over yet.. LOL.. (Spokane Media.. always reporting 1/10 of the facts.. see the ruling. UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WASHINGTON CORPORATION OF GONZAGA UNIVERSITY, Plaintiff, -vs- PENDLETON ENTERPRISES, LLC, a Washington LLC; PENDLETON BROADCASTING, INC., a Washington Corporation; and JAMIE PENDLETON, an individual and a resident of the State of Washington, Defendants. ) NO. CV-14-0093-LRS ORDER GRANTING IN PART PLAINTIFF GONZAGA’S MOTION TO STRIKE AFFIRMATIVE DEFENSES BEFORE THE COURT is Plaintiff Corporation of Gonzaga University’s (“Gonzaga”) Motion To Strike Affirmative Defenses (ECF No. 17) filed on June 20, 2014. Oral argument was held on September 4, 2014 in Spokane, Washington. Defendants did not file an opposition although the “Declaration of John Pierce Re Discovery Requirement,” ECF No. 27, will be construed as a response to the motion to strike now before the ORDER - 1 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 26 court. The court took Gonzaga’s motion under advisement at the conclusion of the hearing. I. SUMMARY OF MOTION Plaintiff moves to strike several of Defendants affirmative defenses set forth in its Amended Answer (ECF No. 11) pursuant to Federal Rule of Civil Procedure 12(f): Affirmative Defenses Numbered 6, 9(a), 9(b), 9(c), 9(d), 9(e), 10 & 11 (in part). II. LEGAL STANDARD Rule 12(f) of the Federal Rules of Civil Procedure provides that the court may order stricken from any pleading any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter. Fed.R.Civ.P. 12(f). The purpose of a Rule 12(f) motion is to avoid spending time and money litigating spurious issues. See Fantasy, Inc. v. Fogerty, 984 F.2d 1524, 1527 (9th Cir.1993), revd on other grounds, 510 U.S. 517, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994). A defense is insufficient if it fails to give the plaintiff fair notice of the nature of the defense. See Wyshak v. City Natl Bank, 607 F.2d 824, 827 (9th Cir.1979). Matter is immaterial if it has no essential or important relationship to ORDER - 2 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 the claim for relief pleaded. See Fogerty, 984 F.2d at 1527. Matter is impertinent if it does not pertain and is not necessary to the issues in question in the case. See id. A court possesses considerable discretion in disposing of a motion to strike under Rule 12(f). River Road Devel. Corp. v. Carlson Corp., No. 89–7037, 1990 WL 69085 at *2 (E.D.Pa. 23 May 1990). Motions to strike, however, are not favored and usually will be denied unless the allegations have no possible relation to the controversy and may cause prejudice to one of the parties, or if the allegations confuse the issues. Id. (citing 5 C. Wright & A. Miller, Federal Practice and Procedure, § 1382 (1969)); see also Federal Deposit Insurance Corp. v. White, 828 F.Supp. 304, 307 (D.N.J.1993) (citing Cipollone v. Liggett Group, 789 F.2d 181, 188 (3d Cir.1986); Glenside West Corp. v. Exxon Corp., 761 F.Supp. 1100, 1115 (D.N.J.1991)). Partly because of the practical difficulty of deciding cases without a factual record it is well established that striking a pleading should be sparingly used by courts. It is a drastic remedy to be resorted to only when required for the purposes of justice. United States v. Consolidation Coal Co., ORDER - 3 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 No. 89–2124, 1991 WL 333694 at *1 (W.D.Pa. 5 July 1991). [A] court should not grant a motion to strike a defense unless the insufficiency of the defense is ‘clearly apparent. White, 828 F.Supp. at 307 (quoting Cipollone, 789 F.2d at 188). Motions to strike are to be decided on the basis of the pleadings alone. Total Containment, 1992 WL 208981 at *1. An affirmative defense can be stricken ‘only if the defense asserted could not possibly prevent recovery under any pleaded or inferable set of facts. Linker v. Custom–Bilt Machinery, Inc., 594 F.Supp. 894, 898 (E.D.Pa.1984) (quoting United States v. Pennsalt Chemical Corp., 262 F.Supp. 101 (E.D.Pa.1967)). “On the other hand, an affirmative defense is legally insufficient only if it clearly lacks merit ‘under any set of facts the defendant might allege.” McArdle v. AT & T Mobility, LLC, 657 F.Supp.2d 1140, 1149-50 (N.D.Cal.2009)). III. DISCUSSION A. Sixth and Eleventh (Part C) Affirmative Defenses Defendants’ Sixth and Eleventh (part c) Affirmative Defenses allege that Gonzaga’s claims should be dismissed because the registered trademarks are registered in a different International class than that which the Defendants’ ORDER - 4 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 business occupies. Defendants allege that the federally registered word marks “GONZAGA UNIVERSITY”, “GONZAGA UNIVERSITY BULLDOGS”, and “ZAGS” are registered under a single international class IC 041, specifically “educational services in the nature of courses at university and postgraduate levels; library services; arranging and conducting athletic competitions.” Defendants allege that “[t]hese marks do not occupy the same, or similar, commercial class of goods or services as Defendants businesses, that of a bar and restaurant, IC 043. US 100 101. G & S: Bar and restaurant services.” ECF No. 11 at 11. The argument advanced by Gonzaga is that there are no “international classification” restrictions in applying a likelihood of confusion test in infringement litigation. Gonzaga further argues that the U.S. Trademark Office adopted the International Classification system for administrative purposes only and it is not a defense to a trademark infringement or an unfair competition lawsuit that the goods or services are in a different international classification – nor do the international classifications limit or extend the applicant’s or registrant’s rights. ECF No. 17 at 9. ORDER - 5 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 Presumably, Defendants are trying to distinguish the channels of commerce and class of purchasers involved in this lawsuit by raising the international classification distinctions in their affirmative defenses. Based on the AMF v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir.1979) factors for determining whether a likelihood of confusion exists, the court cannot find that the defense is legally insufficient. Although Gonzaga is correct in that the Sleekcraft factors are intended to guide the court rather than be rigidly weighed, and that international classes are not a limitation on trademark rights, it cannot be said that Defendants’ allegations in this respect have “no possible relation” to the likelihood of confusion controversy.1 / / / 1Once a trademark applicant has clarified or limited the services under its mark, it may not broaden the scope of those services. See 37 C.F.R. § 2.71(a)). For example, if an applicant explicitly deletes their description for “wholesale furniture” under Class 20, and instead opts to describe the mark as applying only to “wholesale stores featuring furniture” under Class 35, the applicant abandons their mark for use in furniture products and will only have a service mark explicitly for use in “wholesale stores” services. See American Eagle Outfitters, Inc. v. American Eagle Furniture, Inc., 2013 WL 6839815 (N.D.Ill.2013). ORDER - 6 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 B. Ninth Affirmative Defense 1. Defendants’ Affirmative Defense No.’s 9(a) and 9(d). Defendants assert that “Plaintiffs [sic] claims regarding the trademark rights alleged by the plaintiff in paragraphs 9(d)and 9(f) of the Plaintiff’s Complaint . . . should be dismissed because Plaintiff failed to register or maintain the marks”. Plaintiff Gonzaga argues that this is a fallacy based on misrepresentation of Gonzaga’s position because Gonzaga has not alleged the infringement of any U.S. trademark registrations for the Bulldog Head trademark. Gonzaga owns common law and Washington State trademark registration rights in the Bulldog Head and trademark rights in GU and in Gonzaga University word marks. The court agrees with Gonzaga. The Complaint clearly sets forth that Gonzaga has established and owns common law trademark rights from its beginning and constant use of its Bulldog Head since 1998.2 Since motions to strike are to be decided on the basis of the pleadings alone, the court finds these allegations are not so impertinent or immaterial as to 2Common law determines who enjoys exclusive right to use unregistered trademark. ORDER - 7 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 be stricken. Rather, it appears Defendants are suggesting as a defense that Gonzaga may have abandoned the marks that are allegedly not registered. A plaintiff asserting a claim of infringement against common-law trademark ownership rights bears the burden of establishing its exclusive right to use the mark by actual use in a given territory. Therefore, these defenses will not be stricken. 2. Defendants’ Affirmative Defense No. 9(b). Defendants assert that “Plaintiffs [sic] claims regarding the trademark rights alleged by the plaintiff in paragraphs 9(d), 9(c) and 9(f) of the Plaintiff’s Complaint . . . should be dismissed because Plaintiff failed to maintain the expired state registration of the a ‘Bulldog Head’ for Class 25 ‘t-shirts and sweatshirts’ in the State of Washington. A copy of the expired registration is attached hereto as Exhibit 2”. Gonzaga argues that Exhibit 2 of the Amended Answer contains a reference to an older different bulldog and bulldog head than that which is the subject of this current suit. Gonzaga is not aware nor does it allege that the Defendants are using the Bulldog head shown in Exhibit 2. It is not a defense or an affirmative defense to a trademark infringement ORDER - 8 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 or unfair competition case that the plaintiff chose to allow a state registration for a different trademark to go abandoned, and has no known relevance to this case. The court agrees with Gonzaga and finds this allegation confuses the issues before the court and may cause prejudice to Plaintiff. This affirmative defense will be stricken as impertinent to Gonzaga’s claims. 3. Defendants’ Affirmative Defense No. 9(c). Defendants allege that “Plaintiffs [sic] claims regarding the trademark rights alleged by the plaintiff in paragraphs 9(d) and 9(f) of the Plaintiff’s Complaint . . . should be dismissed because Plaintiff failed to register or maintain the marks”. Gonzaga argues that this is another example in which an affirmative defense was set forth in an attempt to allege that Gonzaga does not have trademark rights in its Bulldog Head design and composites thereof, which have been extensively using in Spokane, Washington since 1998. Gonzaga asserts that it owns common law and Washington State registration rights in the Bulldog Head, and this affirmative defense 9(c) should likewise be dismissed pursuant to Fed. R. Civ. P. 12(f) as ORDER - 9 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 “pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” For the reasons stated above with respect to Defendants Affirmative Defense No.s 9(a) and 9(d), the court finds this affirmative defense should not be stricken. 4. Defendants’ Affirmative Defense No. 9(e). Defendants assert that “Plaintiffs [sic] claims regarding the trademark rights alleged by the plaintiff in paragraphs 9(d), 9(c) and 9(f) of the Plaintiff’s Complaint . . . should be dismissed because . . . “Plaintiff failed to maintain the mark consisting of the words ‘Gonzaga University Zags’, attaching a copy at Exhibit 5 to the Amended Answer (ECF Document 11-2). The mark was filed under the serial number 76303845, and was canceled because registrant did not file an acceptable declaration under Section 8.” Gonzaga argues that the registration referred to by Defendants is a composite trademark,3 which includes the following elements: “Zags”; “Gonzaga University”; and the design element that the two are combined in, i.e. “Zags” 3The mark is shown on page 4 of ECF No. 17. ORDER - 10 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 written in a unique large font with “Gonzaga University” above it in a small font. Gonzaga further notes that it owns other U.S. trademark registrations for “Gonzaga University” and for “Zags”, and these marks/registrations have achieved “incontestable” status. Because Gonzaga chose not to continue its additional registration for this composite trademark, it has no relevance to this lawsuit. Finally, Gonzaga indicates it is not aware of any use of this composite mark by Defendants and Gonzaga has not alleged that said mark was infringed. Gonzaga’s other U.S. registered trademarks (word marks for GONZAGA UNIVERSITY and separately for ZAGS) are still valid, incontestable and infringed by Defendants’ unauthorized commercial use thereof, as well as its common law rights in each trademark and its composite marks. Gonzaga argues that it still has common law rights to the trademark though the registration was allowed to go abandoned (which is to be distinguished from abandonment of use). The court finds that because Gonzaga has not alleged that the subject composite mark was infringed by Defendants, this affirmative defense has the potential to confuse those not ORDER - 11 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 versed in trademark law and is an immaterial and/or impertinent defense to Gonzaga’s claims. Therefore, this affirmative defense will be stricken. C. Tenth Affirmative Defense Defendants assert in this affirmative defense that plaintiff lacks standing to bring its claims because defendants “believe” that plaintiff sold its licensing rights to its trademarks to the Collegiate Licensing Company (the “CLC”). Plaintiff Gonzaga argues that a reasonable investigation would reveal that CLC is a licensing or marketing agent, not the owner of the marks at issue. The court, while making no judgment as to the merits, finds that ownership of the marks at issue is something that is discoverable through the litigation process. Therefore, the court will not strike this affirmative defense. Accordingly, Plaintiff Gonzagas Motion to Strike Affirmative Defenses, ECF No. 17, is GRANTED IN PART and DENIED IN PART. The court specifically finds that the following affirmative defense should be stricken: (1) Defendants’ Affirmative Defense No. 9(b); and ORDER - 12 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 (2) Defendants Affirmative Defense No. 9(e). The District Court Executive is directed to enter this Order. DATED this 25th day of September, 2014. s/Lonny R. Suko LONNY R. SUKO SENIOR UNITED STATES DISTRICT JUDGE ORDER - 13 Case 2:14-cv-00093-LRS Document 32 Filed 09/25/14 -----------------To Be Continued-------------------------- Keyword.. Gonzaga Motion To Strike Affirmative Defenses Granted in Part & Denied In Part! Thats what you did not see in the news.. Case is not over.
Posted on: Fri, 26 Sep 2014 15:59:05 +0000
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