Opinion
Civ. No. 2:16-0201 WBS DB
08-04-2017
NATIONAL GRANGE and CALIFORNIA STATE GRANGE, Plaintiffs, v. CALIFORNIA GUILD, formerly doing business as "California State Grange," and ROBERT MCFARLAND, Defendants.
ORDER RE: MOTION FOR SUMMARY JUDGMENT
Plaintiffs National Grange and California State Grange brought this action against defendants California Guild and Robert McFarland, alleging that defendants continue to violate their trademark, copyright, and tangible property rights after the conclusion of Nat'l Grange v. Cal. State Grange, Civ. No. 2:14-0676 WBS DAD (E.D. Cal. filed Mar. 12, 2014) ("Grange I"). (Compl. (Docket No. 1).)
Plaintiffs assert ten causes of action in their amended Complaint: (1) false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a)(1)(A); (2) false advertisement under the Lanham Act, id. § 1125(a)(1)(B); (3) false advertisement under the California Business and Professional Code, Cal. Bus. & Prof. Code § 17500; (4) trademark infringement under the Lanham Act, 15 U.S.C. § 1114; (5) infringement of unregistered logo and trade dress under the Lanham Act, 15 U.S.C. § 1125(a); (6) copyright infringement under the Copyright Act, 17 U.S.C. § 106; (7) trade libel under California common law; (8) intentional interference with contractual relations under California common law; (9) trespass under California common law; and (10) conversion under California common law. (Am. Compl. at 38-51 (Docket No. 75).) Defendants moved to dismiss plaintiffs' amended Complaint in its entirety in August 2016. (Docket No. 77.) The court granted defendants' motion as to plaintiffs' infringement of unregistered logo and trade dress and intentional interference with contractual relations claims, and denied the motion in all other respects. (Nov. 15, 2016 Order at 23 (Docket No. 106).) Plaintiffs have not filed a second amended complaint.
Defendants now move for summary judgment as to the eight claims remaining in plaintiffs' amended Complaint ("remaining claims"). (Defs.' Mot. (Docket No. 138).) They contend that the remaining claims are barred by res judicata, collateral estoppel, or the law of the case doctrine because the claims were litigated and decided in Grange I or a related state action the parties were involved in, Nat'l Grange v. Cal. State Grange, No. 34-2012-00130439 CU MC GDS (Cal. Sup. Ct. filed Oct. 1, 2012) ("state action"). (See Defs.' Mot., Mem. ("Defs.' Mem.") at i (Docket No. 138-1).)
Summary 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). "[W]here the operative facts are substantially undisputed, and the heart of the controversy is the legal effect of such facts, such a dispute effectively becomes a question of law that can, quite properly, be decided on summary judgment." Joyce v. Renaissance Design Inc., No. CV 99-07995 LGB (EX), 2000 WL 34335721, at *2 (C.D. Cal. May 3, 2000); see also Braxton-Secret v. A.H. Robins Co., 769 F.2d 528, 531 (9th Cir. 1985) ("[W]here the palpable facts are substantially undisputed, [the controverted] issues can become questions of law which may be properly decided by summary judgment.").
The parties agree that there are no disputed issues of material fact for purposes of the present Motion. (See Defs.' Reply at 1-2 (Docket No. 151); Pls.' Opp'n at 1 (Docket No. 140).)
Defendants' contention that the remaining claims are barred by res judicata or collateral estoppel was raised at the time defendants moved for dismissal of plaintiffs' amended Complaint. (See Docket No. 77 at 17-18; Oct. 17, 2016 Tr. at 4-6, 21-22 (Docket No. 103).) The court considered and rejected that contention in its order granting defendants' motion to dismiss in part. With respect to plaintiffs' Lanham Act and California false advertisement claims, the court stated:
Grange I decided ownership of the word "Grange," and enjoined defendants from the use of that term . . . . The conduct alleged to support plaintiff's Lanham Act [and California false advertisement] claims in this
action is different from the conduct enjoined in Grange I. It involves more than merely the use of the word "Grange." To the extent that the complaint here alleges that defendants are representing they are the same organization as the California State Grange, that they are responsible for the history and achievements of the California State Grange, or making other false or misleading representations causing confusion among local granges, it goes beyond the complaint in Grange I and seeks to enjoin different conduct. Accordingly, the court will not dismiss plaintiffs' Lanham Act [and California false advertisement] claims on res judicata grounds.(Nov. 15, 2016 Order at 16-17.) With respect to plaintiffs' trespass and conversion claims, the court stated:
Plaintiffs' trespass and conversion claims are not barred under the doctrine of res judicata by the underlying state court action in this case because that action remains pending on appeal. See Eichman v. Fotomat Corp., 759 F.2d 1434, 1439 (9th Cir. 1985) ("Under California law . . . a judgment is not final for purposes of res judicata during the pendency of and until the resolution of an appeal."); see also Howard v. Am. Online Inc., 208 F.3d 741, 748 (9th Cir. 2000) ("The preclusive effect of a state court judgment in federal court is based on state preclusion law."). Neither does Grange I bar such claims, as Grange I decided ownership of the word "Grange," (see Apr. 20 Order at 3), not defendants' subsequent alleged refusal to vacate and return Grange property. See W. Radio Servs., 123 F.3d at 1192 ("In order for res judicata to apply there must be...an identity of claims...."). Accordingly, the court will not dismiss plaintiffs' trespass and conversion claims on res judicata grounds.(Id. at 21-22.)
The court did not specifically address whether plaintiffs' copyright infringement and trade libel claims were barred by res judicata or collateral estoppel in ruling on defendants' motion to dismiss because defendants did not specifically argue for dismissal of those claims on res judicata or collateral estoppel grounds. They make no such arguments now, either.
Defendants cite no new facts, absence of facts, or law in the present Motion that support granting them summary judgment on res judicata or collateral estoppel grounds. Having decided that the remaining claims are not barred on res judicata or collateral estoppel grounds at the time of defendants' motion to dismiss, and being presented with no new information to rule otherwise, the court will not grant summary judgment to defendants on res judicata or collateral estoppel grounds now. See United States v. Jingles, 702 F.3d 494, 499 (9th Cir. 2012) ("Under the 'law of the case' doctrine, a court is ordinarily precluded from reexamining an issue [it] previously decided . . . in the same case.").
Defendants do raise, for the first time, an argument that the remaining claims are barred based on the law of the case doctrine. According to defendants, judgments entered in Grange I and the state action, and the appellate decisions to be rendered in those cases, constitute the law of "this case." (Defs.' Mem. at 6.) Because those rulings concern "the [same] relief [plaintiffs] seek[] in this case," defendants argue, they bar plaintiffs from asserting the remaining claims. (Id. at 6-7.)
Defendants have appealed both Grange I and the state action. (See Defs.' Req. for Judicial Notice Ex. I, Grange I Notice of Appeal (Docket No. 139-1); id. Ex. H, State Action Appellate Brief (Docket No. 139-10).) --------
Defendants misunderstand the law of the case doctrine. That doctrine counsels courts to refrain from reconsidering issues previously decided in the same case. See Jingles, 702 F.3d at 499 ("Under the 'law of the case' doctrine, a court is ordinarily precluded from reexamining an issue [it] previously decided . . . in the same case." (emphasis added)); see also Arizona v. California, 460 U.S. 605, 618 (1983) ("[T]he [law of the case] doctrine posits that when a court decides upon a rule of law, that decision should continue to govern the same issues in subsequent stages in the same case." (emphasis added)). The judgments entered and appellate decisions to be rendered in Grange I and the state action are rulings of other cases. To the extent those rulings may bar plaintiffs from asserting the remaining claims, they would do so pursuant a theory of res judicata or collateral estoppel. The court has already ruled that Grange I and the state action do not bar plaintiffs from asserting the remaining claims pursuant to those theories. That ruling, unlike the rulings in Grange I and the state action, is the law of this case.
IT IS THEREFORE ORDERED that defendants' Motion for summary judgment be, and the same hereby is, DENIED. Dated: August 4, 2017
/s/_________
WILLIAM B. SHUBB
UNITED STATES DISTRICT JUDGE