SG SERVICES INC v. GOD'S GIRLS INC

Full title: SG SERVICES INC v. GOD'S GIRLS INC, ET AL

Court: United States District Court, C.D. California

Date published: May 9, 2007

CV 06-989 AHM (CTx) (C.D. Cal. May. 9, 2007)

Opinion

CV 06-989 AHM (CTx).

May 9, 2007

CIVIL MINUTES — GENERAL

A. MATZ, District Judge

Proceedings: (In Chambers)-No Proceedings Held

I. SUMMARY

Plaintiff SG Services, Inc. ("SG") created and runs an online "alterna-porn" website ("www.suicidegirls.com") that features news, message boards, interviews, and photographs of clothed and nude models. Defendant God's Girls ("GG") launched, and with the assistance of Defendant Annaliese Nielsen has run, a rival "alterna-porn" website ("www.godsgirls.com").¹

1 Numerous other websites exist that "cater to the `alternative culture'" and that include features (such as message boards and member profiles) similar to those used by SG and GG. (See Declaration of Gavin Lloyd (March 10, 2007) ("Lloyd Decl.") ¶¶ 21, 22).

Plaintiff filed its Second Amended Complaint ("SAC") on July 18, 2006. The SAC alleges the following federal-law causes of action against Defendants: (1) copyright infringement; (2) trademark infringement; (3) trademark dilution; (4) false designation of origin/trade dress infringement; (5) false advertisement in violation of the Lanham Act. In addition, the SAC alleges the following state-law causes of action against Defendants: (1) violation of California's Uniform Trade Secrets Act ("UTSA"); (2) unfair competition (statutory and common law); (3) civil conspiracy; (4) intentional interference with economic relations; and (5) unjust enrichment.

Plaintiff has also sued its former employee, Katie Gilbert. The SAC alleges the following claims against her: (1) violation of the UTSA; (2) breach of contract; (3) breach of fiduciary duty; (4) conversion; (5) civil conspiracy; (6) intentional interference with economic relations; and (7) unjust enrichment.

All Defendants have moved for summary judgment, or, in the alternative, summary adjudication. For the following reasons, I GRANT the motion of Defendants GG and Nielsen for summary adjudication on the federal-law claims.²

2 In this Order, I sometimes will refer to that motion as the "federal law motion." I have addressed that motion on the merits. However, as Defendants point out, I could strike Plaintiff's very opposition for failure to comply with the Local Rules. The brief is 35 pages long and Plaintiff did not seek permission to file an oversize brief. Moreover, the brief does not have page numbers, a Table of Contents or a Table of Authorities. Plaintiff was already on notice that this Court requires strict adherence to the Local Rules, given that its initial ex parte application for a TRO was rejected for failure to comply with these Rules. Plaintiff's counsel failed to comply with this Court's rules in other ways as well: It did not submit a diskette with its Statement of Genuine Issues ("SGI"); and it submitted a declaration (that of Corey Holms) that was not signed under penalty of perjury.
Accordingly, the Court ORDERS Plaintiff's counsel to show cause in writing, by not later than May 16, 2007, why counsel should not be fined $500 for egregiously violating so many Local Rules.

II. FACTUAL AND PROCEDURAL BACKGROUND

Defendants launched their website on June 1, 2006. (See Declaration of Gavin Lloyd (March 10, 2007) ("Lloyd Decl.") ¶ 3). Like the SG website, the GG website features pictures of models both nude and clothed, allows members to interact with the models through chat rooms, and includes additional features such as message boards.

On June 4, 2006, Plaintiff filed an ex parte application for a Temporary Restraining Order ("TRO") for an order prohibiting Defendants from operating their website. Plaintiff argued that a TRO was necessary because Defendants had misappropriated trade secrets, and infringed its trademarks and trade dress. This Court denied the application for a TRO because (1) Plaintiff had not raised all the claims in the First Amended Complaint and the Court therefore did not have jurisdiction to consider those claims; and (2) on those claims that were properly raised,³ the Court held that Plaintiff had not shown a likelihood of success on the merits or irreparable injury. (See June 9, 2006 Order).⁴

3 These included claims brought under: the Lanham Act § 43 (trademark infringement, trademark dilution, and infringement of trade dress) and under 15 U.S.C § 1125(a) (false advertising under the Lanham Act).

4 Plaintiff proffers the very arguments, almost verbatim, on the trademark and trade dress infringement claims that it made in seeking a TRO.

III. LEGAL STANDARD

Federal Rule of Civil Procedure 56(c) provides for summary judgment when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." The moving party bears the initial burden of demonstrating the absence of a "genuine issue of material fact for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986). A fact is material if it could affect the outcome of the suit under the governing substantive law. Id. at 248. The burden then shifts to the nonmoving party to establish, beyond the pleadings, that there is a genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986).

"When the party moving for summary judgment would bear the burden of proof at trial, it must come forward with evidence which would entitle it to a directed verdict if the evidence went uncontroverted at trial. In such a case, the moving party has the initial burden of establishing the absence of a genuine issue of fact on each issue material to its case." C.A.R. Transp. Brokerage Co., Inc. v. Harden Rests., Inc., 213 F.3d 474, 480 (9th Cir. 2000) (citations omitted). In contrast, when the non-moving party bears the burden of proving the claim or defense, the moving party can meet its burden by pointing out the absence of evidence from the non-moving party. The moving party need not disprove the other party's case. See Celotex, 477 U.S. at 325. Thus, "[s]ummary judgment for a defendant is appropriate when the plaintiff `fails to make a showing sufficient to establish the existence of an element essential to [his] case, and on which [he] will bear the burden of proof at trial.'" Cleveland v. Policy Mgmt Sys. Corp., 526 U.S. 795, 805-06 (1999) (citing Celotex, 477 U.S. at 322).

When the moving party meets its burden, the "adverse party may not rest upon the mere allegations or denials of the adverse party's pleadings, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). Summary judgment will be entered against the non-moving party if that party does not present such specific facts. Id. Only admissible evidence may be considered in deciding a motion for summary judgment. Id.; Beyene v. Coleman Sec. Serv., Inc., 854 F.2d 1179, 1181 (9th Cir. 1988).

"[I]n ruling on a motion for summary judgment, the nonmoving party's evidence `is to be believed, and all justifiable inferences are to be drawn in [that party's] favor.'" Hunt v. Cromartie, 526 U.S. 541, 552 (1999) (quoting Anderson, 477 U.S. at 255). But the non-moving party must come forward with more than "the mere existence of a scintilla of evidence." Anderson, 477 U.S. at 252. Thus, "[w]here the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citation omitted).

IV. ANALYSIS

A. Copyright Infringement

In its Opposition to Defendants' motion, Plaintiff notified the Court that "SG has decided not to pursue its First Claim for Relief for Copyright Infringement." (Opp. at 1, n. 1). Accordingly, I dismiss that claim with prejudice.

B. Trademark Infringement

SG contends that it is the owner of two registered trademarks: (1) a logo that consists of a drawing of a woman's head, under which the letters "SG" appear in stylized font (see Thompson Decl., Ex. 3) ("Ex. 1")⁵; and (2) the phrase "Suicide Girls," written in cursive script that uses a "distressed" font (see, e.g., Decl. of Gary J. Lorch in Opp. to Pls. Mot. for TRO (June 8, 2006), Ex. A) ("Ex. 2"). (Opp. to GG's MSJ at 2-3). SG has provided a declaration from Diane L. Thompson in support of its assertion that it has registered these two marks. (See Thompson Decl. ¶¶ 4, 5, Ex. 3).⁶

5 Although the issue of whether SG's trademarks and GG's logos can be confused is central to Plaintiff's trademark claim, the parties have not specifically identified or attached the specific marks at issue in this case. It appears that the relevant marks were included in exhibits submitted in connection with Plaintiff's motion for a TRO, and although those exhibits are not part of a motion for summary judgment, I will refer to them out of necessity. For ease of reference, I have copied these marks and attached them to this Order as Exhibits 1 through 5, respectively.

6 In paragraphs 4 and 5, Thompson notes that both marks were registered with the United States Patent and Trademark Office ("USPTO") in 2003. Exhibit 3 to her declaration is a printout of USPTO screen images that indicates the logo with the image was registered on November 18, 2003. Thompson indicates that there should be an Ex. 2 that is the printout of USPTO screen images that relate to the registration of the phrase "Suicide Girls." However, no Ex. 2 was attached to the Thompson Declaration. A search on the USPTO website revealed an entry indicating that the phrase "Suicide Girls" was registered separate from the logo with the image on November 4, 2003. (See http://tess2.uspto.gov/bin/showfield?f=doc state=r3ivk.2.2 ("USPTO website registration page"). I take judicial notice of this registration.

SG further alleges that Defendants infringed these two trademarks by using (1) a logo that incorporates two "Gs" and the phrase "God's Girls" in distressed font (see Ex. 5); (2) a God's Girl logo with a splash of pink in the upper lefthand corner and followed by ".com" (see Ex. 4);⁷ and (3) a logo that consists of two interlocking, reversed-direction "Gs." (see Ex. 3) (SAC ¶¶ 48-54).

7 It is not clear whether Plaintiff believes that the God's Girls mark attached as Ex. 4 or the God's Girls mark attached as Ex. 5 is the allegedly infringing mark. For purposes of this analysis, I will compare both marks to the "`Suicide Girls" Trademark (Ex. 2).

Defendants argue that this Court should grant summary judgment on Plaintiff's claim for trademark infringement because there is no admissible evidence of any likelihood of confusion among consumers. To determine whether there is a likelihood of confusion between the parties' allegedly related goods and services, the Court considers the following eight Sleekcraft factors: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).

Some Sleekcraft factors "are much more important than others, and the relative importance of each individual factor will be case specific." Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054 (9th Cir. 1999). "The test for likelihood of confusion is whether a reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks." Dreamwerks Prod. Group, Inc. v. SKG Studios, 142 F.3d 1127, 1129 (9th Cir. 1998). Stated another way, there is such a likelihood of confusion where consumers viewing the mark would probably assume that the goods it represents are associated with the source of a different product identified by a similar mark. Clicks Billiards, Inc. v. Six Shooters, Inc., 251 F.3d 1252, 1265 (9th Cir. 2001). The confusion must "be probable, not simply a possibility." Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987).

Because the likelihood of confusion is often a fact-intensive inquiry, courts are generally reluctant to decide this issue at the summary judgment stage. Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901-02 (9th Cir. 2002). However, a court may grant summary judgment if it determines that there is no likelihood of confusion as a matter of law. M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073, 1080 (9th Cir. 2005) (affirming district court's grant of summary judgment on trademark infringement claim because there was no triable issue of fact on whether there was a likelihood of confusion between the marks).

1. Strength of Mark

"Trademarks are categorized as generic, descriptive, suggestive, and arbitrary or fanciful. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). A generic mark is the least distinctive, and an arbitrary or fanciful mark is the most distinctive. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000). The more distinctive a mark, the greater its conceptual strength; in other words, a mark's conceptual strength is proportional to the mark's distinctiveness." M2 Software, supra, at 1080. For a pithy analysis of this factor, see id., at 1081. SG's marks are conceptually strong under those principles.

2. Proximity of Goods

"When dealing with the second Sleekcraft factor, the courts assess whether the goods are related or complementary. Sleekcraft, 599 F.2d at 350. Where the goods are related or complementary, the danger of confusion is heightened. See id." See M2 Software, Inc., supra, at 1081-82. It is undisputed that both SG and GG created and now run websites that offer alterna-porn images, chat rooms, member profiles, and message boards. (SUF ¶ 24). Therefore this Sleekcraft factor weighs in SG's favor.

3. Similarity of Marks

"The similarity of marks `has always been considered a critical question in the likelihood-of-confusion analysis." See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir. 1999). Similarity of marks is assessed "in terms of their sight, sound, and meaning." Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1392 (9th Cir. 1993) (citations omitted). Moreover, the trademark is not judged by an examination of its parts, but rather "the validity and distinctiveness of a composite trademark is determined by viewing the trademark as a whole, as it appears in the marketplace." Id." M2 Software, Inc., supra, at 1082.

According to the "anti-dissection" rule, courts may not dissect marks to examine and compare their component parts. J. McCarthy, Trademarks and Unfair Competition § 23:41. Although the court may give greater weight to a dominant feature of a mark (i.e., that which is likely to make a greater impression on an ordinary buyer), in the end the court's analysis must consider and compare the marks in their entirety. Id., supra, §§ 23:41, 23:44. Courts weigh similarities more heavily than differences. GoTo.com, 202 F.3d at 1206.

As explained below, this important factor weighs heavily in GG's favor.

a. The SG Trademark

Plaintiff argues that the SG Trademark (Ex. 1) is similar to the "GG" mark (see Ex. 3) used by Defendants because: (1) both use a stylized font; (2) the optical width of the "G" in the GG logo "is virtually the same as the SG Logo"; (3) the Gs in both the SG and GG logos "share a similar connection of the bowl to the stem in that a nick exists in both `Gs' where that connection occurs"; and (4) both "Gs" in the GG logo and the SG logo share a similar optical width. (Mot. at 7). Plaintiff also argues that the letters "GG" share a "visual and aural similarity to `SG.'" (Id.).

Plaintiff did not even proffer these marks in its opposition papers, much less line them up side-by-side to show the claimed similarities. On that basis alone, it might be permissible to grant summary adjudication to Defendants. But in any event, on the merits, Plaintiff's argument is flawed, for several reasons. First, it violates the antidissection rule. Although, as discussed above, "a court may consider and give more weight to the dominant features of a mark, in determining whether two marks are similar, the court must compare both marks in their entirety. McCarthy, supra §§ 23:41, 23:44." Moose Creek, Inc. v. Abercrombie and Fitch Co., 331 F.Supp. 2d 1214, 1227 (C.D. Cal. 2004). Therefore, even if Plaintiffs were correct that the "G" on the GG logo (see Ex. 3) is somewhat similar in appearance (i.e., in font and size) to SG's Trademark (see Ex. 1), when comparing the two sets of marks in their entireties, I find that they are strikingly dissimilar.

Most significantly, Plaintiff's SG mark (see Ex. 1) prominently features an image of a woman's head, whereas the GG logo (see Ex. 3) has no bodily image. The presence of an image alone differentiates Plaintiff's mark from Defendants' logo. Moreover, in the GG logo (see Ex. 3), the "Gs" are reversed and made to look like mirror images of each other. In addition, there is no "S" in the GG mark (see Ex. 3), and there is only one "G" in the SG mark (see Ex. 1).

No reasonable juror could conclude that the SG Trademark (see Ex. 1) and the GG logo (see Ex. 3) are similar. Plaintiff's arguments to the contrary belie a fundamental misunderstanding of this Sleekcraft factor.

b. The "Suicide Girls" Trademark

Plaintiff also contends that its "Suicide Girls" trademark (see Ex. 2) is likely to be confused with the "God's Girl" logo (see Exs. 4, 5).⁸ Plaintiff argues that confusion is likely because: (1) the mark and logo are "written in virtually identical cursive script"; (2) the use of the word "Girls" in the mark and logo creates both a visual and aural similarity; (3) both the mark and the logo "have a tendency to shock"; and (4) both the mark and the logo were chosen "because they sounded good." (Opp. at 6). Here, too, I find that the marks are strikingly dissimilar-so facially unlike that no reasonable jury could find otherwise.

8 Plaintiff is not clear which "God's Girls" mark (i.e., the one displayed in Ex. 4 or Ex. 5) is allegedly infringing its "Suicide Girls" trademark. However, the analysis in this section is equally applicable to both "God's Girls" marks (see Exs. 4 and 5).

The "God's Girls" marks (see Exs. 4 and 5) use two different fonts-one for the word "God's" and one for the word "Girls"-whereas the "Suicide Girls" Trademark (see Ex. 2) uses only a single font for both the word "Suicide" and the word "Girls." There also are distinct visual differences between the word "God's" and the word "Suicide" which further distinguish the marks. Also, the "Suicide Girls" Trademark (both the words and the background on which they are placed) is noticeably pink. (See Ex. 2). The "God's Girls" marks, on the other hand, are either blue (see Ex. 5) or have only a "splash" of pink that hovers above the words "God's Girls" (see Ex. 4).

The two sets of marks are also dissimilar in look and feel, sound and meaning. The mere fact that both marks contain the word "girls" does not create a likelihood of confusion because the prefatory words-"Suicide" and "God's"-have very distinct sounds and meanings.

Plaintiff has utterly failed to establish any genuine issue as to whether these obviously dissimilar marks are in fact alike.

4. Evidence of Actual Confusion

"Evidence that use of the two marks has already led to confusion is persuasive proof that future confusion is likely." Sleekcraft, 599 F.2d at 352. SG attempts to show that Defendants' logos have caused actual confusion by pointing to three statements from unidentified users that were allegedly posted on the GG website. (Opp. at 13). One user purportedly stated that he "was confused" about the origination of the GG website (Opp. at 13; Thomspon Decl. ¶ 11, Ex. 9); one user purportedly stated that he was confused about why GG wanted to know if someone was a SG girl (Id.); and a third user purportedly stated that he was going to be a GG member but decided not to because it seemed "too much like the other site." (Id.). Plaintiff attached printouts of these statements to the Thompson Declaration. (Thompson Decl. ¶ 11, Ex. 9). However, Thompson does not specify how she found the statements; where and when she located the statements; or any basis for her belief that the statements were posted by a visitor to the GG website (as opposed to, for example, someone loyal to SG). There is absolutely no indicia that the statements attached as Exhibit 9 are reliable. The foundation necessary to allow the Court to consider those statements as evidence of actual confusion is absent.

Even if the Court were to consider the statements, however, none of them actually provide evidence of actual confusion regarding the trademarks. In fact, all three statements distinctly recognize GG and SG as distinct websites and, at most, simply indicate that users want more information about the GG website.

Therefore, the fourth Sleekcraft factor weighs in GG's favor.

5. Marketing Channels

"Convergent marketing channels increase the likelihood of confusion." Nutri/System, Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 606 (9th Cir. 1987). Plaintiff argues that SG and GG use the same marketing channels, including the web, parties with models, attendance at conventions and radio shows. (Mooney Decl. in Opp. to MSJ ¶¶ 15-16; Declaration of Sean Suhl in Opp. to MSJ (April 2, 2007) ¶¶ 10, 11). Defendants concede that both sides offer a similar website and internet community. (Reply at 8). The mere fact that both sides somehow use the internet to market their goods weighs "only very slightly" in favor of Plaintiff. M2 Software, Inc., supra, at 1083-84. However, in conjunction with the other similarities of the marketing channels cited by Ms. Mooney and Mr. Suhl, this is sufficient (barely) to weigh this factor in favor of SG.

6. Types of Goods and Degree of Care Likely to Be Exercised by the Purchaser

The type of goods and the degree of care likely to be exercised by the consumer is the sixth Sleekcraft factor to be considered. Although SG has the burden of proving its infringement claim generally, it has not even addressed this factor in its opposition papers and has introduced no evidence to aid the Court in measuring the sophistication of the typical member of SG and GG websites. Therefore this factor weighs in favor of GG.

7. Defendant's Intent in Selecting the Mark

"It is settled that `[a] party claiming trademark infringement need not demonstrate that the alleged infringer intended to deceive consumers.' E. J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1293 (9th Cir. 1992). When the alleged infringer knowingly adopts a mark similar to another's, we must presume that the public will be deceived. See Sleekcraft, 599 F.2d at 354." M2 Software, Inc., supra, at 1085.

Plaintiff has not introduced any evidence that Defendants knowingly adopted a mark similar to SG's trademarks. GG, on the other hand, has produced evidence that the creators of GG's logo created it independent of the SG marks and did not intend to copy SG's trademarks. (See, e.g., Lloyd Decl. ¶¶ 31-33; Declaration of Danny Duran (March 11, 2007) ¶¶ 5-8, 15). Again, this factor weighs in favor of GG.

8. Likelihood of Expansion of Product Lines

"[T]here is a need for "a strong possibility of expansion into competing markets" for this factor to "weigh in favor of a finding of infringement." E. J. Gallo, 967 F.2d at 1293." M2 Software, Inc., supra, at 1085. Plaintiff does not address this factor and provides no evidence that GG intends to expand its product lines. Therefore, this Sleekcraft favor also favors GG.

In conclusion, then, the Sleekcraft factors overwhelmingly favor Defendants. No reasonable jury could find that Plaintiff has established trademark infringement; there is no genuine factual basis to do so. Accordingly, the Court GRANTS summary adjudication to Defendants GG and Nielsen on that claim.

C. Trademark Dilution

SG also claims that its SG Trademark is "famous and distinctive" and that Defendants' use of the GG logo dilutes that Trademark. (SAC ¶¶ 55-60). Federal law provides protection against trademark dilution:

The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark. . . .

15 U.S.C. § 1125(c)(1).

"Dilution works its harm not by causing confusion in consumers' minds regarding the source of a good or service, but by creating an association in consumers' minds between a mark and a different good or service. See McCarthy, supra, § 24:70." Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 805 (9th Cir. 2002). As the Ninth Circuit has explained, "in dilution (as compared to infringement) `an entirely different issue is at stake-not interference with the source signaling function but rather protection from an appropriation of or free riding on the investment [the trademark holder] has made in its [trademark].'" Id. (quoting I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 50 (1st Cir. 1998)).

"`[T]he mark used by the alleged diluter must be identical, or nearly identical, to the protected mark' for a dilution claim to succeed." Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1011 (9th Cir. 2004) (quoting Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 905 (9th Cir. 2002)); see also Playboy Enterprises, 279 F.3d at 806 (The trademarked term, "Playmate of the Year" is not identical or nearly identical to the term "PMOY." Therefore, use of the term "PMOY" cannot, as a matter of law, dilute the trademark "Playmate of the Year.").

As explained in Part B.3, supra, GG's marks are not even similar, let alone identical to, SG's trademarks. Accordingly, SG's claim for dilution necessarily fails.

Even if the SG Trademark and GG logo were identical or nearly identical, however, SG still would not prevail because it has failed to prove that GG is making use of the SG trademarks in commerce. See Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998) (finding dilution where defendant used plaintiff's registered trademark as a domain name and noting that to prove dilution, plaintiff must show, among other things, that defendant is making commercial use of the mark).

In this action, there is no evidence that GG is making commercial (or, indeed any) use of Plaintiff's registered trademarks. For all these reasons, the Court GRANTS the motion for summary adjudication on this claim as well.

D. Trade Dress Infringement ⁹

9 In its Fourth Claim for Relief, SG also refers to its trade dress claim as a claim for "false designation of origin." However, SG fails to address GG's motion for summary adjudication on the false origin claim. Accordingly, pursuant to Local Rule 7-12, the Court deems SG to have consented to the granting of GG's motion for summary adjudication on that claim, to the extent that it exists separate and apart from the claim for trade dress infringement.

The "trade dress" that SG contends GG infringed is the use of certain features on the website: (1) the color pink; and (2) the use of specific phrases ("they're the girl next door" and "so you wanna be a suicide girl?"). (SAC ¶¶ 62-64; SGI ¶ 43).¹⁰ Plaintiff has not even provided the Court with a copy of the web site pages displaying the purported trade dress or a copy of the allegedly infringing web site. Nevertheless, in an attempt to analyze this factor, the Court examined the only evidence of the websites that are on the record: printouts of three pages of SG's web site and two pages from GG's website that are attached to Defendants' Opposition to Plaintiff's ex parte application for a TRO (See Lorch Decl. in support of Opp. to Pls. TRO (Exs. B, C, F (SG site) and D, E (GG site)).

10 In its Opposition, Plaintiff also seeks trade dress protection for "DIY graphics, distressed typography, specific phrasing, and specific formatting." Plaintiff cannot seek protection for these elements because they were not alleged in the SAC, and were not disclosed during discovery as being support for what was alleged.

Trade dress is the appearance of the product and may include features such as size, shape, color, color combinations, texture, or graphics. . . . A plaintiff seeking to recover for trade dress infringement under § 43(a) must show that its trade dress is protectable and that defendant's use of the same or similar trade dress is likely to confuse consumers. . . . Under this analysis, trade dress may be protected if it is nonfunctional and has acquired secondary meaning and if its imitation creates a likelihood of consumer confusion.

Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir. 1987) (citations omitted).

"A plaintiff seeking to recover for trade dress infringement under section 43(a) must show that its trade dress is protectable and that defendant's use of the same or similar trade dress is likely to confuse consumers. . . . Under this analysis, trade dress may be protected if it is nonfunctional and has acquired secondary meaning and if its imitation creates a likelihood of consumer confusion." Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 841-842 (9^th Cir. 1987). See also Academy of Motion Pictures Arts and Sciences v. Creative House Promotions, 944 F.2d 1446, 1454 (9^th Cir. 1991) ("To be protected under the Lanham Act, a particular design must be both non-functional and have a secondary meaning"). The Court will evaluate each of these factors in turn.

1. Functionality

The Ninth Circuit has described the test for functionality as follows:

A product feature is functional if it is essential to the product's use or if it affects the cost and quality of the product. . . . In determining functionality, a product's trade dress must be analyzed as a whole. . . . The issue of functionality has been consistently treated as a question of fact. . . . However, we have placed the burden of proof on the plaintiff. Functional features of a product are features which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.

Rachel, supra, at 1506 (citations omitted).

SG has not registered its website or any of the design or technological elements on the USPTO principal register. Therefore, SG has the burden to establish that the color and phrases used on its website are nonfunctional. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001) (quoting Title 15 U.S.C. § 1125(a)(3) (1994 ed., Supp. V)). Plaintiff argues that these features are non-functional because "[D]efendants failed to make any contrary argument in their summary judgment brief." (Opp. at 21). That notion reflects Plaintiff's misunderstanding of the applicable burdens. In addition to that misplaced contention, however, Plaintiff argues that the phrases to which it claims trade dress rights are non-functional because they are "an intentional design element of the SG website." (Id.).

The Court agrees that sometimes colors and phraseology features may be nonfunctional under the Rachel analysis outlined above. That is, they are merely adornment and do not "constitute the actual benefit that the consumer wishes to purchase." Rachel, supra, at 1506. Such is the case here.

2. Distinctiveness

In an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act, "a product's design is distinctive, and therefore protectable, only upon a showing of secondary meaning." Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216 (2000) (Manufacturer of designer children's clothes sued retailer of "knock-off' garments. Court held that product design is entitled to protection as unregistered trade dress only if it has acquired secondary meaning.). The Ninth Circuit defines "secondary meaning" as "the mental association by a substantial segment of consumers and potential consumers `between the alleged mark and a single source of the product.'" Levi Strauss Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985) (quoting in part McCarthy, supra, §§ 15:2, 15:11(B)). Whether trade dress has acquired secondary meaning is a question of fact. Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 614 (9th Cir. 1989).

Some of the factors to be considered in determining whether a product's design has acquired a secondary meaning include: (1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer; (2) the degree and manner of advertising under the claimed trademark; (3) the length and manner of use of the claimed trademark; (4) whether use of the claimed trademark has been exclusive; (5) evidence of sales, advertising, and promotional activities; (6) unsolicited media coverage of the product; and (7) attempts to plagiarize the mark. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987); Levi Strauss, 778 F.2d at 1358.

Here Plaintiff offers some evidence of its commercial success and media coverage in the website. Namely: (1) it has sold over 100,000 of its first book; (2) it has produced and sold two movies; and (3) it is the most popular web page on MySpace. (Declaration of Selena Mooney in Opp. to MSJ (April 2, 2007) ¶ 15).

SG has not presented any evidence, however, that its claimed commercial success has led the public to associate SG with the color pink and with the phrases "they're the girl next door" and "so you wanna be a suicide girl?" See International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 824 ("While evidence of a manufacturer's sales, advertising and promotional activities may be relevant in determining secondary meaning, the true test of secondary meaning is the effectiveness of this effort to create it."). Cf. Yellow Cab of Sacramento v. Yellow Cab of Elk Grove, Inc., 413 F.3d 925, 930 (9th Cir. 2005); (genuine dispute as to secondary meaning where plaintiff presented to the district court various declarations detailing the history of the Yellow Cab of Sacramento, customer confusion concerning the companies, advertising data and other evidence addressing the Levi Strauss factors); Clicks Billiards, 251 F.3d at 1252 (finding genuine dispute as to distinctiveness created where plaintiff presented (1) survey conducted by expert that showed 80% of the respondent associated trade dress with company that made the product; and (2) testamentary evidence from various witnesses that defendant had intentionally copied its trade dress).

With respect to the seven First Brand factors set forth above, Plaintiff has failed to proffer any evidence whatsoever as to factors 1, 2, 6, 7, and (at best) have proffered only very dubious evidence of factor 4. Accordingly, even construing the facts in favor of the Plaintiff, no reasonable jury could infer that those who view the GG website associate its features with SG's trade dress.

3. Likelihood of Confusion

The Court conclude that no reasonable jury reasonably could find that Defendants have used Plaintiff's trade dress in a way likely to cause confusion about the source of Defendant's web site.

First, the color pink-which is prominently displayed all over SG's website (See Lorch Decl., Exs. B, C, F) — is used sparingly (and at most constitutes an accent only) on GG's website (See id., Ex. E). Indeed, blue is the predominant color on GG's website. (See id., Ex. E).

Second, in examining the two GG website pages attached to the opposition to the TRO, the Court did not find any phrases that copied or imitated the SG phrases. These pages do not even contain the two phrases GG allegedly incorporated into the GG website ("the other girl next door"; and "so you wanna be a god's girl"). Even if such phrases did exist on GG's site, they would not create a likelihood of confusion between the SG and the GG websites. A reasonable website visitor who reads "why i'm a god's girl" would not mistake the source of that quote to be SG; indeed, the statement clearly and exclusively identifies GG. The mere fact that the question is similar to a question posed on the SG website does not create a likelihood of confusion.

Similarly, the fact that GG allegedly uses the phrase "the other girl next door" and SG allegedly uses the phrase "they're the girl next door" does not create a likelihood of confusion between the two sites. On the contrary, even if a viewer were to recognize the phrase "the girl next door" as SG's trade dress, GG's use of the word "other" clearly indicates that it is separate and distinct from SG's "girl next door."

Moreover, in the four website pages that the Court examined, all the phrases and slogans are in small font and barely distinguishable amidst the pictures, message boards, marks, and advertisements that otherwise clutter these pages. It is inconceivable that a viewer would zero in on the phrases strewn about these pages and consider them to be definitive markers of their respective brands. Cf. Wal-Mart Stores, Inc., 529 U.S. at 213 ("Consumers are aware of the reality that, almost invariably, even the most unusual of product designs-such as a cocktail shaker shaped like a penguin-is intended not to identify the source, but to render the product itself more useful or more appealing.").

4. Infringement

Even if all of the factors discussed above weighed in SG's favor, however, I would still grant summary adjudication on SG's claim because SG has failed to present sufficient evidence that Defendants have infringed its trade dress. As noted above, Plaintiff does not even identify which of Defendants' products-a website, merchandise, advertising flyer-allegedly infringes Plaintiffs trade dress. Without such information, it is impossible for Plaintiff to meet its burden of proving this allegation.

In support of its allegations of infringement, Plaintiff cites to a single piece of evidence: the Declaration of Corey Holms, a purported "expert" in the creation and design of brands. Mr. Holms states that "the GG Website uses virtually the same shade of pink — and in the same manner — as the SG Website." (Holms Decl. ¶ 23). He also states that the "aping of the SG phrasing may further blur the line between the SG Website and the GG Website . . ." (Id. ¶ 24).

As a preliminary matter, Holms's Declaration is inadmissible because it was not signed under the penalty of perjury and therefore, fails to comply with the requirements of 28 U.S.C. § 1746. Even if the Court were to accept the declaration despite the failure to sign under the penalty of perjury, the "evidence" of infringement is also inadmissible because it lacks foundation. Holms does not indicate which website pages he is comparing; he does not indicate when he looked at the pages to make the comparison; and he does not provide any factual basis for his opinion that the use of similar phrases will "blur the line" between the websites.

Without Holms's Declaration, Plaintiff has no evidence of infringement. Accordingly, for all the foregoing reasons, the Court GRANTS summary adjudication on the claim of trade dress infringement.

E. False Advertising

SG also claims false advertising in violation of the Lanham Act, 15 U.S.C. § 1125(a). In its complaint, SG alleges that two false profiles posted on God's Girls website contained links to websites that contain disparaging statements about Selena Mooney and Sean Suhl.¹¹ To establish a claim for false advertising under the Lanham Act, SG must show: (1) Defendants made false or misleading statements of fact about its or SG's products in commercial advertisements; (2) those advertisements actually deceived or have a tendency to deceive a substantial segment of the audience; (3) such deception is material, in that it is likely to influence purchasing decisions; (4) Defendants caused the falsely advertised goods to enter interstate commerce; and (5) SG was injured or likely to be injured as a result of either diversion of sales from itself to Defendant or a lessening of goodwill that its products enjoy. See Cooks, Perkins, and Liege, Inc. v. Nor. Cal. Collection Services, 911 F.2d 242, 244 (9th Cir. 1990).

11 SG's opposition brief does not even discuss these alleged statements but instead argues that entirely unrelated and previously unmentioned statements form the basis for its false advertising claim. It is only the statements cited in the SAC, the operative pleading in this case, that warrant analysis here.

Plaintiff has presented no evidence to establish that any of these elements have been satisfied. Moreover, Even if Plaintiff could show that Defendants made false statements in commercial advertisements, it has not presented any evidence that it was injured by such statements. Accordingly, the Court GRANTS summary adjudication on this claim.

F. Anti-Cybersquatting Consumer Protection Act

SG also alleges that Defendants violated the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d). In order to survive a motion for summary adjudication on this claim, SG must present sufficient evidence to show that: (1) Defendants registered, trafficked in or used a domain name; (2) that the domain name is identical or confusingly similar to, or dilutive of, a distinctive famous trademark (in this case, SG alleges the mark is its "Suicide Girls" trademark (see Ex. 2); and (3) that Defendants had a bad faith intent to profit from the mark. It is the challenged domain name (here, "www.godsgirls.com") and the Plaintiff's trademark (here, the "Suicide Girls" Trademark (see Ex. 2) that are to be compared. See McCarthy § 25:78. However, as explained in Part B.3, supra, Plaintiffs have not presented sufficient evidence to establish that the domain name is confusingly similar to the "Suicide Girls" Trademark. Accordingly, the Court GRANTS summary adjudication on this claim.

V. CONCLUSION

For the foregoing reasons, I GRANT summary adjudication on the federal-law claims in favor of Defendants GG and Nielsen.¹²

IT IS SO ORDERED.¹³

12 Dkt. No. 107.

13 This Order is not intended for publication.

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