Opinion
10-P-1537
12-19-2011
RISE CLUB, INC. v. GERBER GROUP LIMITED PARTNERSHIP.
NOTICE: Decisions issued by the Appeals Court pursuant to its rule 1:28 are primarily addressed to the parties and, therefore, may not fully address the facts of the case or the panel's decisional rationale. Moreover, rule 1:28 decisions are not circulated to the entire court and, therefore, represent only the views of the panel that decided the case. A summary decision pursuant to rule 1:28, issued after February 25, 2008, may be cited for its persuasive value but, because of the limitations noted above, not as binding precedent.
MEMORANDUM AND ORDER PURSUANT TO RULE 1:28
Rise Club, Inc. (Rise Club) appeals from a decision by a Superior Court Judge allowing summary judgment in favor of Gerber Group Limited Partnership (Gerber) on Rise Club's claim of trademark infringement. We reverse.
Background. Rise Club operates a 'members only' after-hours dance club in Boston called the 'Rise Club.' In connection with its business, Rise Club trademarked the mark 'Rise' under State and Federal law. Gerber operates a number of bars and restaurants throughout the nation under various names. One of its establishments was the 'Rise Lounge,' a bar and lounge located in The Hard Rock Hotel and Casino in Biloxi, Mississippi. Upon discovering that the 'Rise Lounge' existed in Mississippi, Rise Club brought this action in Superior Court claiming both Federal and State trademark infringement. In a thoughtful, detailed decision, the judge found that there were no genuine issues of material facts as to any of Rise Club's claims and granted summary judgment in favor of Gerber. On appeal, Rise Club argues that there are several issues of material fact which precluded summary judgment.
Rise Club was made aware of the 'Rise Lounge' in Biloxi by virtue of two electronic mail messages (e-mails) sent by former customers congratulating the Rise Club for opening a branch in Biloxi.
We note that Rise Club moved for summary judgment below contending there were no genuine issues of material fact and it was entitled to judgment as a matter of law on all of its claims.
Discussion. We review a grant of summary judgment de novo, Miller v. Cotter, 448 Mass. 671, 676 (2007), looking to the summary judgment record to determine 'whether, viewing the evidence in the light most favorable to the nonmoving party, all material facts have been established and the moving party is entitled to judgment as a matter of law.' Augat, Inc. v. Liberty Mutual Ins. Co., 410 Mass. 117, 120 (1991). 'An order granting summary judgment will be upheld only if it relies on undisputed material facts and the moving party is entitled to judgment as a matter of law.' Coombes v. Florio, 450 Mass. 182, 186 (2007).
While the judge's analysis in the case was thorough and thoughtful, it appears from his decision that he engaged in impermissible fact finding. The judge states his 'opinion' throughout the decision that Rise Club had failed to show a likelihood of confusion. His conclusion that 'Rise Club in Boston could not reasonably be mistaken for Rise Lounge in Biloxi' is a finding of fact, as was his conclusion that the Rise Club's proffered evidence was insufficient to satisfy him as to the strength of Rise Club's mark.
For example, the judge stated that stylistic distinctions between the marks and the fact that Gerber's mark is more often than not used in conjunction with the mark of 'Gerber Group' 'mean to me that the total effect of the marks does not create a likelihood of confusion.' The judge expressed his 'opinion' of the strength of Rise Club's evidence throughout the decision, and, on page 8, 'find[s] that the disparities in the parties' advertising budgets, methods of advertising, and classes of prospective purchasers do not support a finding of likelihood of confusion.' A judge ruling on cross motions for summary judgment 'does not engage in fact finding.' Marhefka v. Zoning Bd. of Appeals of Sutton, 79 Mass. App. Ct. 515, 517 (2011).
In this regard the judge found, 'Here, evidence that the [p]laintiff has been in operation for [nine] years is significant to the strength of [p]laintiff's mark. Evidence of the plaintiff's national reputation would be probative as well, but the actual evidence presented at summary judgment by the [p]laintiff does not substantiate its claim that 'praise for plaintiff's club is everywhere.' Recognition in a newspaper targeted to the local Boston market and mention of the [p]laintiff's 'sense of community' in a trade journal do not rise in my opinion to the level of being 'renown' in the plaintiff's field of business.'
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Furthermore, Rise Club alleges that its mark has acquired a secondary meaning, and '[w]hether secondary meaning has been acquired is a question of fact.' Planned Parenthood Fedn. of America, Inc. v. Problem Pregnancy of Worcester, Inc., 398 Mass. 480, 486 (1986). A fact finder must look 'at a variety of factors in determining whether words or symbols have acquired a secondary meaning,' including the similarity of the marks and goods, 'and evidence of actual confusion.' Ibid. Rise Club submitted evidence that the marks at issue are similar, as are the services offered at the respective institutions. It presented e-mails from two patrons demonstrating that these patrons were actually confused by the similarity between the marks. Such evidence was sufficient to withstand Gerber's motion for summary judgment. See Marhefka v. Zoning Bd. of Appeals of Sutton, 79 Mass. App. Ct. 515, 518 (2011) (summary judgment improper where plaintiff presented evidence demonstrating existence of a material dispute as to an essential element of the claim).
Because genuine issues of material fact exist with respect to the similarity between the respective marks, the similarity of goods, the strength of Rise Club's mark, and whether there was actual confusion, the judge erroneously granted summary judgment in favor of Gerber.
Judgment reversed.
By the Court (Kantrowitz, Fecteau & Carhart, JJ.),