Opinion
ORDER DENYING MOTION FOR RECONSIDERATION
JEFFREY S. WHITE, District Judge.
On October 29, 2004, this matter came before the Court for hearing on Plaintiff's motion for reconsideration of the Court's July 6, 2004 Order denying Plaintiff's motion for summary judgment. Plaintiff Charles Meeker ("Plaintiff") was represented by Joseph Rimac, Kevin Gill and William Reilly. Defendants were represented by Michael J. Ioannou. Having considered the parties' papers, including Plaintiff's additional evidence submitted on November 5, 2004, the relevant legal authority, and having had the benefit of oral argument, the Court DENIES the motion.
I. Background
On April 2, 2004, this Court heard oral argument on the parties' cross-motions for summary judgment.
On July 2, 2004, Defendants produced approximately 160 electronic mail messages to Plaintiff. Defendant Meeker contends these documents were belatedly discovered while he was searching for other documents responsive to Plaintiff's discovery requests.
On July 6, 2004, just four days after Plaintiff received most of the electronic mail messages at issue, the Court denied each party's motion for summary judgment.
On July 20, 2004, Plaintiff filed a motion for leave to file a motion for reconsideration based upon the newly discovered evidence, which was granted on August 3, 2004.
Additional electronic mail messages were produced to Plaintiff just prior to the hearing on the motion for reconsideration and, with leave of Court, were submitted for consideration in connection with this motion. These electronic mail messages, which Plaintiff asserts constitute evidence of secondary meaning and actual confusion, form the basis for Plaintiff's motion for reconsideration.
II. Legal Standards Applicable to a Motion for Reconsideration.
A motion to reconsider is "appropriate if the district court (1) is presented with newly discovered evidence, (2) committed clear error or the initial decision was manifestly unjust, or (3) if there is an intervening change in controlling law." School District No. 1J v. AcandS, Inc., 5 F.3d 1255, 1263 (9th Cir. 1993). When a party moves for reconsideration on the basis of newly discovered evidence, a motion should not be granted unless the evidence is material and would be likely to affect the outcome of the case. See Jones v. AeroChem Corp., 921 F.2d 875, 878 (9th Cir. 1990) (citing 11 C. Wright & A. Miller, Federal Practice and Procedure: Civil, § 2589 (1973) for the proposition that the standard to be applied to determine whether evidence is "newly discovered" is the same under Federal Rules of Civil Procedure Rule 59 and 60(b)(2)). See also N.D. Civil Local Rule 7-9.
Defendants assert that because Defendant Meeker had initially produced three misdirected electronic mail messages, and because Plaintiff was aware of the fact that Defendant Meeker was receiving such messages, the belatedly produced electronic mail messages do not constitute "newly discovered evidence". The Court finds this argument disingenuous. Defendants may indeed have apprised Plaintiff in discovery that Defendant Meeker received electronic mail messages intended for Plaintiff. That fact is of no moment, however, because until Defendants produced the documents, Plaintiff had no means of knowing the content or quantity of the messages and would have had no means of evaluating the relevance and/or materiality of such communications to this case.
Even that inference is questionable based upon the discovery responses submitted by the Defendants in response to Plaintiff's motion to amend. Apart from the three electronic mail messages previously produced, it appears to the Court that the only other information Plaintiff received about third party contacts with Defendant Meeker was a "yes" response to the following interrogatory: "From 1998 to the present, has any person ever contacted YOU and/or MEEKER VINEYARDS and attempted to purchase wine produced by PLAINTIFF'S WINERY?" and a statement from Defendant Meeker that he could not recall specific instances of such contacts. See Declaration of Michael J. Ioannou in Support of Opposition to Motion to Amend ("Ioannou Decl. In Supp. of Opp. M. To Amend."), Ex. D at 9:24-10:20.
The Court concludes that these messages were available prior to the time it ruled on the cross-motions for summary judgment. Taking Defendant Meeker's assertion that he did not know they existed until July 2004 at face value, the Court also finds that Plaintiff could not have discovered them through due diligence before that time. However, while the Court has considered this evidence in deciding the instant motion, for the reasons discussed below, the Court does not find that this evidence would have affected its decision to deny Plaintiff's motion for summary judgment. Jones, 921 F.2d at 878.
See Ioannou Decl. In Supp. of Opp. M. To Amend, Ex. C at 202:16-24.
III. Analysis
In their motions for summary judgment, both parties treated the contested mark as if it was a "distinctive" mark, rather than "arbitrary" or "fanciful", "suggestive" or "generic". See, Japan Telecom, Inc. v. Japan Telecom America, Inc., 287 F.3d 866, 872 (9th Cir. 2002) (setting forth the four categories of marks). Thus, both parties presented argument and evidence regarding whether the contested mark had acquired secondary meaning.
In his motion for reconsideration, Plaintiff now argues that his "composite" mark is suggestive, negating a need to produce evidence of secondary meaning. Plaintiff did not make this argument in his motion for summary judgment. However, because it would not affect this Court's analysis on reconsideration, the Court does not consider this new argument.
Whether a contested mark has acquired secondary meaning is a question of fact. Japan Telecom, 281 F.3d at 873. The Court denied the Plaintiff's motion for summary judgment because it concluded that Plaintiff had not presented sufficient evidence to establish secondary meaning as a matter of law but did find that genuine issues of material fact were in dispute. (July 6, 2004 Order at 6:15-16, 7:13-14, 13:25-27.)
Because of the belated production of the misdirected electronic mail messages, Plaintiff now has additional evidence to support a finding of secondary meaning. For the reasons set forth in the July 6, 2004 Order, however, the Court finds that even considering the additional electronic mail messages, there remain genuine issues of fact in dispute on the question of secondary meaning.
226 U.S.P.Q. 526, 527 n.1 (C.D. Cal. 1985); Fed.R.Evid. 803(3). Although the Court did strike Plaintiff's attempts to introduce statements made to him by third parties, the Court did not strike the electronic mail messages Plaintiff included with his declaration in support of the motion for summary judgment. The most recently produced electronic mail messages that were mistakenly sent to Defendant Meeker can be considered as evidence of the states of mind of the senders or for the fact that messages apparently intended for the Plaintiff were sent to the Defendant. See, e.g., Mustang Motels, Inc. V. Patel,
Because Plaintiff is not entitled to summary judgment as a matter of law on the issue of secondary meaning, the Court does not reach the questions of infringement and likelihood of confusion. As noted in the July 6, 2004 Order, the Court found that there were genuine issues of material fact in dispute on the Sleekcraft factors. It would appear, however, that the newly produced electronic mail messages will strengthen Plaintiff's position on Sleekcraft's "actual confusion" prong.
AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).
For the reasons set forth herein, Plaintiff's motion for reconsideration is DENIED.
IT IS SO ORDERED.