UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON. Plaintiff, Defendants.

Transcription

1 Case :0-cv-0000-RSM Document Filed /0/0 Page of 0 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON JAMES CHILDERS d/b/a Artemis SOLUTIONS GROUP, a Washington sole proprietorship, v. SAGEM MORPHO, INC., et al., I. INTRODUCTION Plaintiff, Defendants. C0-000 RSM - The Honorable Ricardo S. Martinez Case No. C0-000 RSM REPLY IN SUPPORT OF SAGEM MORPHO, INC. S MOTION FOR SUMMARY JUDGMENT Noted for Consideration: December, 0 In the face of irrefutable evidence that Sagem Morpho had no involvement in the use of the allegedly infringing mark on the website of Defendant E-Software SAS d/b/a XELIOS ( E-Software ), Plaintiff James Childers d/b/a Artemis Solutions Group ( ASG ) now claims that Sagem Morpho infringed its BioCert mark by responding to a telephone inquiry from an ASG employee about a product advertised on the Xelios website. Plaintiff s own evidence confirms, however, that Sagem Morpho did not sell or offer to sell the allegedly infringing product. Indeed, ASG concedes that the Sagem Morpho employee clearly stated that the product was not available for sale in the United States, and referred the ASG employee to the Xelios, not the Sagem Morpho, Telephone () -000

2 Case :0-cv-0000-RSM Document Filed /0/0 Page of 0 website. ASG nonetheless maintains that Sagem Morpho directly infringed its trademark. This position is without legal or factual support. The undisputed evidence shows that Sagem Morpho did not sell or offer to sell products bearing the allegedly infringing mark. See Declaration of Thierry Boillot In Support of Sagem Morpho Inc. s Motion For Summary Judgment ( Boillot Decl. ), ; Declaration of Celeste Grannum In Response to Defendant Sagem Morpho s Motion For Summary Judgment ( Grannum Decl. ),. This case is therefore easily distinguishable from those cited by ASG, which involve a sale of, or offer to sell, a product using an infringing mark. Further, ASG has put forward absolutely no evidence showing that Sagem Morpho had any involvement in E-Software s use of the mark on its website. Boillot Decl., -. ASG s repeated attempts to blur the line between the Defendants distinct corporate identities must be rejected. Because there is no evidence that Sagem Morpho infringed ASG s mark, either directly, contributorily, or vicariously, Sagem Morpho is entitled to summary judgment on all claims against it. In the alternative, Sagem Morpho is entitled to partial summary judgment on ASG s claims for monetary relief. ASG concedes that there is no evidence of damage, nor evidence of profits to Sagem Morpho, relating to the alleged infringement. Further, ASG has failed to proffer any specific facts showing that Sagem Morpho s alleged infringement rises to the level of willful, deliberate, knowing or malicious infringement required before attorneys fees are awarded under U.S.C. (a). Therefore, ASG s claims for money damages and attorneys fees fail as a matter of law. II. ARGUMENT A. ASG s Claims Fail As A Matter Of Law, Because It Has Provided No Evidence That Sagem Morpho Is Liable For Trademark Infringement. Liability under the Lanham Act is predicated on the defendant using the infringing mark in commerce... in connection with the sale, offering for sale, C0-000 RSM - Telephone () -000

3 Case :0-cv-0000-RSM Document Filed /0/0 Page of 0 distribution, or advertising of any goods or services. U.S.C. ()(a). To prevail on its claim for direct infringement, ASG bears the burden to show that Sagem Morpho not its corporate parent or another related corporate entity used the allegedly infringing X-BioCert mark in commerce. See Academy of Motion Picture Arts & Sciences v. Network Solutions, Inc., F.Supp., 0 (C.D. Cal. ). However, ASG has yet to proffer any evidence showing that Sagem Morpho ever used the allegedly infringing mark in any way. ASG does not and cannot dispute the evidence showing that Sagem Morpho and E-Software are different corporate entities, and that Sagem Morpho had nothing to do with either E-Software s use of the X- BioCert mark on its website, or E-Software s posting of Sagem Morpho s Tacoma address on its website. Boillot Decl., -. Therefore, Sagem Morpho is entitled to summary judgment dismissing ASG s claims of direct infringement. ASG s reliance on the telephone call from its employee, Celeste Grannum, to Sagem Morpho is misplaced. Ms. Grannum concedes that she obtained the information about the PC Login Pro Suite product and the contact information for Sagem Morpho from the Xelios website, and not from Sagem Morpho. Grannum Decl.,. ASG does not contest Sagem Morpho s argument that there is no evidence supporting its claims for contributory or vicarious infringement of the BioCert mark. See Defendant Sagem Morpho Inc. s Motion for Summary Judgment ( Motion ), at -. As such, Sagem Morpho is entitled to summary judgment on these claims. Because Ms. Grannum was never identified in ASG s Initial Disclosures as a person likely to have discoverable information to support its claims, Sagem Morpho moves to strike this declaration in its entirety. See Declaration of Molly A. Terwilliger, Ex. A at - (Plaintiff s Rule (a)() Initial Disclosures). In the alternative, Sagem Morpho moves to strike as pure speculation the portion of Ms. Grannum s declaration in which she states that it was my impression that had the product been available on the date I called, I could have purchased it from Mr. Rose. See Grannum Decl. at. This statement is entirely without foundation, and, in any event, is irrelevant because there is no authority for the proposition that a hypothetical sale is sufficient to establish actual use of a trademark or an offer for sale of a product bearing the mark. Both ASG s reference to the relevant product as the X-BioCert product (Response at ) and Ms. Grannum s reference to the PC Login Pro Suit /X-BioCert product (Grannum Decl., ) are a blatant attempt to mislead the Court regarding the use of the allegedly infringing mark. It is undisputed that none of the defendants offered a product called X-BioCert ; rather, ASG alleges that Defendant E-Software used the X-BioCert mark to describe certain technology associated with its PC Login Pro Suite Product. See FAC, Exs. O, P. C0-000 RSM - Telephone () -000

4 Case :0-cv-0000-RSM Document Filed /0/0 Page of 0 Further, Ms. Grannum admits that she was told that the product was not available for sale in the United States. Id.. The declaration contains no evidence that the term X- BioCert ever came up in the discussion of E-Software s PC Login Pro Suite product. The fact that Mr. Rose allegedly talked to Ms. Grannum about the product, and reportedly told Ms. Grannum to check back soon regarding whether the PC Login Pro Suite would be available for sale in the future, is not sufficient to establish liability under the Lanham Act. The conversation with Mr. Rose, in which he specifically informed Ms. Grannum that the product was not for sale, by definition does not rise to the level of an offer[] for sale under either U.S.C. (a) or Levi Strauss & Co. v. Shilon, F.d 0 (th Cir. ). In Levi Strauss, the defendant offered to sell an undercover investigator 0,000 sets of counterfeit Levi Strauss labels and tags, and 0,000 pairs of blank counterfeit Levi jeans. Id. at. As part of the offer for sale, the defendant even provided a sample set of tags and labels with a pair of blank counterfeit jeans. Id. In contrast, here the Sagem Morpho representative told Ms. Grannum that the product was not for sale in the United States, and referred her to E-Software s website for information about the product. There is simply no support for ASG s argument that respond[ing] to a solicitation for business with product knowledge, encourag[ing] the consumer to call back or failing to dispel[] the caller s belief that the product would be available for sale supports a claim for trademark infringement. Response, at. Accordingly, Sagem Morpho is entitled to summary judgment on ASG s claim for direct trademark infringement. B. ASG s Claims For Damages And Attorneys Fees Fail As A Matter Of Law, Because It Has Provided No Evidence Of Any Damage Or Profit From The Infringement, And No Evidence That Sagem Morpho s Alleged Infringement Was Malicious, Deliberate, or Willful. ASG concedes that there is no evidence that it was damaged by, or that Sagem Morpho profited from, the alleged infringement of the BioCert mark. See Motion at - C0-000 RSM - Telephone () -000

5 Case :0-cv-0000-RSM Document Filed /0/0 Page of 0. ASG nonetheless maintains that it is entitled to attorneys fees on the ground that this is an exceptional case. Because ASG has put forward no facts supporting its claim that Sagem Morpho infringed, much less that it committed an infringement that was willful, deliberate, knowing or malicious, Sagem Morpho is entitled to partial summary judgment on ASG s claims for attorneys fees under U.S.C. (a). ASG cites two grounds for its attorneys fees claim. Neither is sufficient to create a genuine issue of material fact on the question of whether this is an exceptional case within the meaning of U.S.C. (a). First, ASG claims that Sagem Morpho was acting as a sales agent of a product bearing the mark X-BioCert. Response at. This theory fails because, as shown above, Sagem Morpho has never sold or offered to sell a product bearing the allegedly infringing mark. Even assuming, however, that Sagem Morpho were actually selling the allegedly infringing product, this fact alone would not be sufficient to create a genuine issue of material fact as to whether the infringement was willful, deliberate, knowing or malicious. Under the statute s plain language, attorneys fees are only available in exceptional cases. U.S.C. (a). The Ninth Circuit has made clear that a case is exceptional only when the defendant acted maliciously or fraudulently. See, e.g., Earthquake Sound Corp. v. Bumper Indus., F.d 0, (th Cir. 0). Merely selling, or offering for sale a product bearing an infringing mark is not sufficient to qualify as exceptional under Section (a). See, e.g., Lindy Pen Co. v. Bic Pen Corp., F.d 00, 0-0 (th Cir. ) (affirming denial of attorney fee request in a case where defendants sold allegedly infringing products). Indeed, if the mere sale of an infringing product were sufficient, nearly all cases would qualify as exceptional, thus rendering the plain statutory language meaningless. Second, ASG contends that the appearance of essentially identical hardware Sagem Morpho seeks dismissal of all claims brought by ASG. In the alternative, Sagem Morpho asks the Court to enter partial summary judgment on ASG s claims for monetary relief, including its claims for damages, profits, and attorneys fees. C0-000 RSM - Telephone () -000

6 Case :0-cv-0000-RSM Document Filed /0/0 Page of 0 and software on the E-Software website after ASG showed its product to a claimed representative of Sagem Morpho gives rise to the inference that Sagem Morpho s infringement was willful. Response at. This evidence is simply not sufficient to raise a genuine issue of material fact regarding willfulness, for several reasons. First, although Mr. Childers claims that Mr. Moussier represented himself as an agent of Sagem Morpho, the undisputed evidence shows that Mr. Moussier was not a representative of Sagem Morpho. Boillot Decl.,. C0-000 RSM - Second, even assuming that Mr. Moussier was a Sagem Morpho representative, at most this would show that Sagem Morpho was aware of ASG s use of the BioCert mark a fact that ASG actively promotes. See FAC,. Third, Sagem Morpho did not create, maintain, or contribute to the E-Software website, nor did it sell or offer to sell products bearing the allegedly infringing mark. Boillot Decl., -. By definition, if Sagem Morpho did not infringe, it could not have infringed willfully, deliberately, knowingly or maliciously. This case is easily distinguishable from Oyster Software, Inc. v. Forms Processing, Inc., 0 U.S. Dist. LEXIS (N. D. Cal. 0), relied upon by ASG. In Oyster Software, the metatags from plaintiff s website, including a number of plaintiff s trademarks, were found on the defendant s website. Defendant claimed that it was unaware of and took no part in the infringement, because its metatags were created by an outside company. Id. at *, *. At summary judgment, however, the plaintiff put forward evidence countering defendant s claim that it had no involvement in the alleged infringement. Id. at *. Plaintiffs put forward specific facts showing that the files containing the defendant s metatags were modified after defendant terminated its relationship with the outside company. Id. at *. They also put forward Mr. Moussier signed the Mutual Confidentiality Agreement on behalf of Smartgem Hong Kong, and Mr. Moussier s address had a.hk suffix, signifying an address from Hong Kong, not Tacoma. See FAC, Exs. L, M. Metatags are code which describe the contents of a website to a search engine. Id. at * n.. Telephone () -000

7 Case :0-cv-0000-RSM Document Filed /0/0 Page of 0 evidence showing that one of the allegedly infringing files contained a page marker created by a program that the outside company did not use. Id. These facts were sufficient to create an inference that defendant, not the outside company, copied plaintiff s metatags. Because the infringement at issue in Oyster Software was so blatant, this inference gave rise to a factual dispute regarding whether the defendant s infringement was willful. Id. Unlike the plaintiff in Oyster Software, ASG has put forward no specific facts to show that Sagem Morpho infringed, much less that its infringement was malicious, fraudulent, deliberate or willful. Lindy Pen, F.d at 0. Neither Sagem Morpho s alleged status as a sales agent of the allegedly infringing product, nor the appearance of a similar product on the Xelios website is sufficient to create a genuine issue of material fact regarding Sagem Morpho s alleged infringement. As such, this case is not an exceptional case within the meaning of U.S.C. (a). ASG s claim for attorneys fees therefore fails as a matter of law. Because ASG has effectively conceded the fact that it has no evidence to support its claims for damages or defendants profits, Sagem Morpho is entitled to partial summary judgment on ASG s claims for monetary relief under the Lanham Act. See, e.g., Committee for Idaho s High Desert, Inc. v. Yost, F.d, (th Cir. ). III. CONCLUSION For the reasons outlined above, Sagem Morpho respectfully requests that ASG s claims be dismissed with prejudice. In the alternative, Sagem Morpho requests partial summary judgment dismissing ASG s claims for damages and attorney s fees. DATED this th day of December, 0. C0-000 RSM - Telephone () -000

8 Case :0-cv-0000-RSM Document Filed /0/0 Page of 0 SE v //0 : PM (0.000) C0-000 RSM - HELLER EHRMAN LLP /s/ Molly A. Terwilliger Brendan T. Mangan, WSBA # Molly A. Terwilliger, WSBA # Attorneys for Defendant Sagem Morpho, Inc. 0 th Avenue, Suite 00 Seattle, WA 0 Tel: () -000 Fax: () -0 brendan.mangan@hellerehrman.com molly.terwilliger@hellerehrman.com Telephone () -000