ANNA J. BROWN, Judge.
This matter comes before the Court on Plaintiff's Motion for Summary Judgment or, Alternatively, for Partial Summary Judgment (#30). Plaintiff Florists' Transworld Delivery, Inc. (FTDI) asks the Court to rule as a matter of law that Defendant violated an injunction issued by another court, infringed on Plaintiff's trademark and trade name, counterfeited and diluted Plaintiff's marks, and engaged in unfair competition. Plaintiff contends Defendant regularly and consistently obtained telephone numbers and telephone-book listings in the United States under which he identified himself as having an FTD affiliation even though Defendant is not affiliated with Plaintiff and has no authorization from Plaintiff to do so. Through its Motion, Plaintiff seeks both injunctive relief and monetary damages. The Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121; 28 U.S.C. § 1331, 1332, 1338(a), 1338(b), and 1367(a).
For the reasons discussed below, Plaintiff's Motion and Alternative Motions are DENIED.
SUMMARY OF RELEVANT FACTS
This summary of undisputed facts is taken from Plaintiff's Concise Statement of Facts (#31), Defendant's Response to Plaintiff's Concise Statement of Facts (#43), and Defendant's Opposition to Plaintiff's Motion for Summary Judgment (#42). Any facts Plaintiff stated in its Concise Statement that were not denied by Defendant are deemed admitted for purposes of Plaintiff's Motion pursuant to Local Rule 56.1(f).
Plaintiff is the owner of the federally registered FTD trademark and Mercury Man Emblem (FTD marks). Plaintiff has exclusive rights to use the FTD marks in the United States. Through a network of licensed florist-members, Plaintiff exercises quality control, processes orders for flowers and floral products for delivery to distant locations, and processes the credits and debits related to each order. Plaintiff's licensed network is comprised of 16,000 members in fifty states and 154 members in countries other than the United States.
Plaintiff and its predecessors have provided floral arrangements and products under the FTD marks since approximately 1920. Plaintiff and its affiliate, FTD.COM, have spent over one hundred million dollars in advertising and promotional activities within the last three years and have generated revenues of well over a half-billion dollars during that time. Plaintiff has established an excellent reputation, has acquired substantial good-will. The FTD marks are some of the most well-known and famous trademarks in existence.
Defendant also engaged in the business of selling flowers and floral products through a self-described "nationwide florist" business that he operated in several states including Pennsylvania, Nevada, Arizona, California, and Oregon.
Plaintiff's practice was to research the "yellow pages" at a given location to identify flower shops no longer in business. He then would obtain use of the telephone numbers of the defunct flower shops and also would use toll-free "1-800" telephone numbers to conduct his floral business.
Defendant named his business Floral-Thigh Distribution and later changed the name to Floral-Trade Distribution. He is aware of the FTD marks, their connection to the floral industry, and their high degree of recognition among the general public. Defendant admits he is not one of Plaintiff's licensees and he has no right to use the FTD marks.
On April 29, 1998, Plaintiff filed an action against Defendant in the United States District Court for the Central District of California (California action), in which Plaintiff alleged trademark infringement, trade name infringement, trademark dilution and unfair competition. The court allowed Plaintiff to serve Defendant by publication. On April 21, 1999, the California court entered a default judgment against Defendant that included a permanent injunction. The California court found the following:
(1) Defendant used the FTD marks to misrepresent himself to the public as a licensee in good standing with FTD by obtaining telephone numbers and listings under "FTD Florist";
(2) Defendant did so with full knowledge of the ownership, extensive use, and substantial value of the FTD marks and intended to avail himself of the good reputation and valuable good will attached to those marks;
(3) Defendant's conduct caused and is likely to continue to cause irreparable harm to Plaintiff through a likelihood of confusion, deception, and mistake among the relevant purchasing public concerning the source, origin, sponsorship, or approval of the goods and services associated with the FTD marks; and
(4) Defendant's conduct caused depreciation of Plaintiff's valuable goodwill and business reputation symbolized by the FTD marks.
In approximately May 2000, Plaintiff's representative placed a floral order over a toll-free telephone number from California and was told to make payment at an address in Portland, Oregon. In a later telephone call to the toll-free number, Plaintiff's representative was told the floral business was owned and managed by Defendant.
Plaintiff filed its Complaint in this Court on May 17, 2000. On May 18, 2000, the Court granted Plaintiff's Motion for Order of Seizure of Counterfeit Goods and for Order Setting Hearing to Confirm Seizure. As a result, the United States Marshal seized six boxes of documents at Defendant's Portland, Oregon, business location. A hearing for confirmation of the seizure was held on June 2, 2000. The records seized show 9,333 floral orders totaling $619,682.49 in sales were placed with Defendant through his telephone listings between August 1998 and May 2000. Of this total, 7,659 orders valued at $509,876.69 were placed after the default judgment in the California action was entered against Defendant.
When the Order of Seizure was carried out in May 2000, Defendant learned for the first time that Plaintiff had obtained a default judgment against him in the California action and that the California court had entered a permanent injunction against him. After June 1, 2000, Defendant refrained from further operating a floral business.
Although Defendant stated in his answer that on or about June 1, 2000, he had ceased operating his floral business, there is no evidence he actually operated the business after the seizure of his business documents was carried out in late May 2000.
STANDARDS
Fed.R.Civ.P. 56(c) authorizes summary judgment if no genuine issue exists regarding any material fact and the moving party is entitled to judgment as a matter of law. The moving party must show an absence of any issue of material fact. Hanon v. Dataproducts Corp., 976 F.2d 497, 500 (9th Cir. 1992). In responding to a properly-supported motion for summary judgment, the non-moving party must go beyond the pleadings and show there is a genuine issue of material fact for trial. Fed.R.Civ.P. 56(e). Evidence must be significantly probative to present a genuine issue of material fact. United Steelworkers of America v. Phelps Dodge Corp., 865 F.2d 1539, 1542 (9th Cir.), cert. denied, 493 U.S. 809 (1989). Further, when the non-moving party's claims are factually implausible, that party must come forward with more persuasive evidence than would otherwise be required. Id.
The substantive law governing a claim or defense determines whether a fact is material. Addisu v. Fred Meyer, Inc., 198 F.3d 1130, 1134 (9th Cir. 2000). The Court must resolve against the moving party all reasonable doubts about whether issues of material fact exist, and the Court must view all inferences drawn from the facts in the light most favorable to the non-moving party. Id. A mere disagreement about a material issue of fact does not preclude summary judgment. California Architectural Bldg. Prods., Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1468 (9th Cir. 1987), cert. denied, 484 U.S. 1006 (1988).
DISCUSSION
Plaintiff has moved for summary judgment or, alternatively, partial summary judgment against Defendant as to liability, injunctive relief, and damages on all claims asserted in this action. Plaintiff brings the following claims:
First Claim — Contempt of Permanent Injunction and Order issued by the United States District Court for the Central District of California,
Second Claim — Trademark Infringement/Counterfeiting-Federal Registration,
Third Claim — Trademark Infringement and False Designation of Origin,
Fourth Claim — Federal Dilution of Plaintiff's trademarks,
Fifth Claim — Common Law Trademark and Trade Name Infringement,
Sixth Claim — State Trademark Dilution and Injury to Business Reputation,
Seventh Claim — Common Law Passing Off and Unfair Competition, and
Eighth Claim — State Trademark Counterfeiting. In addition to supplemental injunctive relief, Plaintiff asks the Court to award total damages of $1,969,756.02 plus prejudgment interest from the date this action was filed.
1. Plaintiff Is Not Entitled to Partial Summary Judgment Nor an Award of Damages on its First Claim
Plaintiff argues Defendant has contemptuously violated an earlier injunction entered against him by the United States District Court for the Central District of California. Plaintiff urges the Court, therefore, to enter partial summary judgment in its favor on the First Claim and to award damages and supplemental injunctive relief. In support of its Motion, Plaintiff contends the permanent injunction entered in the California action is unambiguously worded. Documents taken in the Oregon seizure demonstrate in clear and convincing terms that Defendant did not comply nor attempt to comply with the permanent injunction.
Defendant counters he did not learn of the permanent injunction until his lawyer told him shortly after the Court-ordered seizure of documents was carried out on or about May 18, 2000, at Defendant's Oregon business location. Defendant maintains he discontinued all floral business operations in Portland, Oregon, and any other location on or about June 1, 2000. Defendant asserts he did not willfully act in contempt of court because he had no knowledge until after May 18, 2000, of the permanent injunction and default judgment entered against him in the California action.
Plaintiff contends Defendant's alleged lack of knowledge is irrelevant. Plaintiff also argues lack of notice is not a defense to a charge of contempt of a court order. Plaintiff points out Defendant has not refuted the existence of the plainly-worded permanent injunction nor demonstrated he attempted to comply with the injunction before his business documents were seized in Oregon. Finally, Plaintiff avers the absence of willfulness is no defense to a charge of civil contempt.
The Court agrees the permanent injunction entered in the California action is unambiguously worded. The order, however, clearly applies only to Defendant and his representatives and associates "who receive actual notice of this Judgment" (emphasis added). Plaintiff has not alleged nor submitted any evidence showing Defendant received actual notice of the permanent injunction until after the action in this Court was filed. Moreover, Plaintiff submitted no evidence to show that Defendant continued to operate his floral business after receiving actual notice of the injunction following the Court-ordered seizure of Defendant's business documents in late May 2000.
A decision to hold a party in civil contempt of an earlier court order falls within the discretion of the Court. Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1022 (9th Cir. 1985) (citation omitted), cert. denied, 474 U.S. 1059 (1986). Whether a party was aware of the contents of an injunction is a factor the Court may consider in deciding whether to hold a party in civil contempt. See Perry v. O'Donnell, 759 F.2d 702, 706 (9th Cir 1985).
In this instance, Plaintiff has failed to make the threshold showing that the injunction bound Defendant because Plaintiff has submitted no evidence that Defendant received prior actual notice of the default judgment or the permanent injunction. In the absence of a showing by Plaintiff that Defendant actually knew the injunction existed and was aware of its terms, the Court declines to find Defendant in civil contempt for failing to comply with it. Plaintiff's Motion for Partial Summary Judgment on its First Claim, therefore, is denied.
2. Plaintiff Is Not Entitled to Partial Summary Judgment on its Second and Third Claims
Plaintiff contends it has submitted sufficient evidence to show Defendant created a likelihood of confusion among the purchasing public through his use of the FTD marks in his flower business. Plaintiff asserts, therefore, the Court should enter partial summary judgment on Plaintiff's Second and Third Claims in which trademark infringement is alleged. The Court concludes, however, Plaintiff has not supported its claim with admissible evidence that establishes Defendant used the FTD marks while operating his flower business after the default judgment was entered in the California action.
Only admissible evidence may be considered by the trial court in ruling on a motion for summary judgment. Beyene v. Coleman Sec. Services, Inc., 854 F.2d 1179, 1181 (9th Cir. 1988) (citations omitted). See also Fed.R.Civ.P. 56(e). Hearsay testimony that would be inadmissible at trial may not be considered as evidence in support of a motion for summary judgment. United States v. Dibble, 429 F.2d 598, 601-02 (9th Cir. 1970). See also Anheuser-Busch, Inc. v. Natural Beverage Distributors, 69 F.3d 337, 345 n. 4 (9th Cir. 1995) (citing Blair Foods, Inc. v. Ranchers Cotton Oil, 610 F.2d 665, 667 (9th Cir. 1980)).
Plaintiff contends it has proven Defendant infringed on and counterfeited Plaintiff's FTD marks. Plaintiff further argues Defendant's mere denials and disputes about nonessential facts cannot defeat Plaintiff's otherwise properly-supported motion. The Declarations and Affidavit Plaintiff submitted in support of its Motion, however, do not establish Defendant used the FTD marks in connection with his flower business after the California action was completed.
For instance, the Declaration of Neil D. Greenstein in Support of Plaintiff FTDI's Motion for Summary Judgment (#32) offers some evidence that Defendant was previously convicted of misdemeanor embezzlement and that Defendant was aware of the FTD marks as well as their connection to the floral industry and their high degree of recognition among the general public when he opened his Oregon flower business. The Greenstein Declaration also contains evidence in support of Plaintiff's attorneys' fee claim. The Declaration of Randy Twyman (#33) establishes Plaintiff's ownership and exclusive rights in the FTD marks, provides background information concerning Plaintiff's business and promotional efforts, and discusses how properly-licensed FTD florists are authorized to identify themselves in telephone listings. The Declaration of Kimberly D. Marks (#34) and Affidavit of Kimberley Hanks McGair (#35) pertain to Plaintiff's claims for monetary damages and show generally that Defendant operated a flower business. The Declaration of Neil D. Greenstein in Support of Plaintiff's Reply (#47) offers evidence that Defendant evaded service of the summons and complaint in the California action in May 1998.
Plaintiff summarizes its position by stating Defendant advertised under the names "FTD," "FTD Florist," and "FTD Nationwide," and that Defendant deceived the public into thinking he was a licensed FTD Florist. Defendant denies such allegations.
Plaintiff relies upon the previously submitted Declarations of two of its attorneys filed regarding Plaintiff's Application for Seizure of Counterfeit Goods (#3). The Declaration of Bruce A. Tassan (#5), however, has attached to it a hand-written facsimile message dated January 28, 2000, from a Bell Atlantic representative to Plaintiff's Chief Financial Officer (CFO). In his affidavit, Tassan summarized the telephone company's communications to Plaintiff's CFO, described statements by a New York FTD florist, attached a print-out of information from the New York florist, and summarized in conclusory terms information provided by an undisclosed source indicating an unauthorized entity had a toll-free number under "FTD" in 29 California telephone directories. Id. at ¶¶ 3-5, 8. Similarly, the Declaration of Neil D. Greenstein in Support of Application for Order For Seizure (#5) also included and referred to the facsimile message by the Bell Atlantic representative. In his Declaration, Greenstein described statements attributed to the representative and attached a copy of a letter of complaint dated July 15, 1998, from a Birmingham, Alabama, resident who related her experience and communications with an individual suspected to be Defendant. Id. at ¶¶ 3, 7-8, and Ex. B-13 to B-15. These summarized communications and attached written statements, offered to prove the truth of the matters asserted, constitute inadmissible hearsay. See Fed.R.Evid. 801 and 802.
Fed.R.Evid. 801 (Definitions) provides in relevant part:
(c)Hearsay. `Hearsay' is a statement, other than one made by the declarant while testifying at the trial or hearing, offered in evidence to prove the truth of the matter asserted.
Fed.R.Evid. 802 (Hearsay Rule) provides:
Hearsay is not admissible except as provided by these rules or by other rules prescribed by the Supreme Court pursuant to statutory authority or by Act of Congress.
An affidavit in which an attorney merely states what he or she believes is not sufficient to satisfy the requirements of Fed.R.Civ.P. 56(e). In re Sun Island Foods, 125 B.R. 615, 620 (D.Haw. 1991) (citing Local Union No. 490 v. Kirkhill Rubber Co., 367 F.2d 956, 958 (9th Cir. 1966)). In addition, out-of-court memoranda exchanged among third parties and offered for their truth are not cured of their hearsay characteristics by attaching them to an affidavit or declaration and referring to them as "true copies." Beyene v. Coleman, 854 F.2d at 1182-83 1183 n. 3 (citing United States v. Dibble, 429 F.2d at 602).
Plaintiff also relies upon the court's findings in the California action as stated in the April 1999 default judgment.
Plaintiff did not submit a court-certified copy of the judgment; nevertheless, Defendant admitted those paragraphs in Plaintiff's Concise Statement in which Plaintiff summarized the California court's findings. In the California action, the court found Defendant advertised his toll-free "1-800" number under "FTD Florist" in a Beverly Hills, California, telephone directory "without ever telling the customer that he is not licensed by FTDI to use the FTD marks." The California court issued a permanent injunction and awarded Plaintiff damages of $153,229.99 after the court found Defendant's conduct had caused and was likely to continue to cause irreparable harm to Plaintiff.
Plaintiff in this action, however, does not appear to be bringing claims against Defendant based upon the same conduct that was at issue in the California action. Plaintiff has neither alleged nor submitted any evidence to show Defendant used the same telephone listing and number at issue in the California action to conduct his floral business after the California action concluded. This action pertains to Defendant's alleged conduct after the default judgment and injunction were entered in California. The findings of the California court recited in the default judgment, therefore, do not establish Defendant engaged in the identical conduct after the California action.
Plaintiff has not submitted admissible evidence to establish Defendant used the FTD marks in connection with his flower business following entry of the default judgment and injunction in the California action. Plaintiff's Motion for Partial Summary Judgment, therefore, is denied with respect to Plaintiff's Second and Third Claims.
3. Plaintiff Is Not Entitled to Partial Summary Judgment on its Remaining Claims
Plaintiff also asks the Court to enter partial summary judgment on Plaintiff's Fourth Claim (dilution of Plaintiff's registered marks), Fifth Claim (common law trademark and trade-name infringement), Sixth Claim (statutory claim under Oregon law for trademark dilution and injury to business reputation), Seventh Claim (Defendant's alleged activities constitute common law passing-off and unfair competition), and Eighth Claim (trademark counterfeiting pursuant to Oregon statute).
As noted, Plaintiff has not submitted admissible evidence to show Defendant used Plaintiff's FTD marks in Defendant's business after the conclusion of the California action. Accordingly, Plaintiff's Motion for Partial Summary Judgment on the remaining claims is also denied.
CONCLUSION
Based on the foregoing, Plaintiff's Motion for Summary Judgment or, Alternatively, Partial Summary Judgment (#30) is DENIED.
IT IS SO ORDERED.