2:23-cv-00368
D. Ariz.Jun 6, 2025Background
- Multitracks.com LLC (MTC) has used the mark MULTITRACKS.COM commercially since about 2012 and offers multitrack audio products and related services to worship leaders and others; MTC claims trademark rights in MULTITRACKS.COM and related marks.
- Christian Copyright Licensing International (CCLI) acquired the domain multitrack.com in 2021 and initially redirected it to Loop Community (a competitor to MTC), later redirecting it to another CCLI-owned site; MTC initiated a UDRP proceeding and prevailed, obtaining an order to transfer the domain.
- MTC sued in district court alleging ACPA cybersquatting and seeking damages and forfeiture; CCLI sought a declaratory judgment that its use was lawful.
- The parties filed cross-motions: CCLI moved for summary judgment (seeking rulings that MTC’s asserted marks are generic/descriptive and that CCLI lacked bad faith), MTC filed a motion to exclude CCLI’s expert and a cross-motion for partial summary judgment asserting the mark is protectable.
- The court denied the sealing stipulation, denied MTC’s Daubert motion to exclude Dr. Iyengar, denied MTC’s partial summary judgment, and granted CCLI’s summary judgment in part and denied it in part. The court found genuine disputes on secondary meaning and bad faith precluding full summary judgment.
Issues
| Issue | Plaintiff's Argument (CCLI) | Defendant's Argument (MTC) | Held |
|---|---|---|---|
| Whether MULTITRACKS.COM is generic | Term “multitracks” names a genus of products; mark is generic (no protection) | The mark (viewed as “multitracks.com” whole) functions as a source identifier and is nongeneric; consumer evidence supports protectability | Genuine dispute; MTC did not meet its burden for summary judgment—issue for trial (survey and other evidence create triable issues) |
| Whether MULTITRACKS.COM is merely descriptive and lacks secondary meaning | Even if descriptive, MTC cannot show the rigorous evidentiary standard for secondary meaning | MTC points to longtime use, advertising, sales/accounts, unsolicited media, intentional copying and surveys supporting secondary meaning | Genuine dispute; material facts exist on multiple secondary-meaning factors so summary judgment for CCLI on this ground was denied in part and granted in part as to two other asserted marks not pursued by MTC |
| Whether CCLI acted in bad faith under the ACPA in using multitrack.com | CCLI claims fair use, bona fide descriptive use, and invokes ACPA safe harbor; no bad faith | MTC argues transfer/use to redirect traffic to competitor, awareness of MTC, close copy (missing only an “s”), and other factors indicate bad faith | Bad-faith dispute: multiple ACPA factors (intent to divert, lack of registrant trademark rights, prior use, copying, etc.) could support bad faith; summary judgment inappropriate—triable issue remains |
| Admissibility of CCLI’s rebuttal expert (Dr. Iyengar) | N/A (opposed to exclusion) | MTC moved to exclude, arguing methodological flaws and wrong survey-population assumptions | Motion to exclude denied; court found criticisms go to weight, not admissibility, and rebuttal role strengthens admissibility |
Key Cases Cited
- Kamakana v. City & Cty. of Honolulu, 447 F.3d 1172 (9th Cir. 2006) (compelling-reasons standard for sealing judicial records)
- Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (Sup. Ct. 1993) (expert-admissibility gatekeeping; focus on methodology and reliability)
- Booking.com B.V. v. United States Patent & Trademark Office, 591 U.S. 549 (Sup. Ct. 2019) (analysis of when “generic.com” terms can be protectable; consumer perception governs)
- GoPets Ltd. v. Hise, 657 F.3d 1024 (9th Cir. 2011) (ACPA registration vs. later transfers; registration is the initial registration act)
- DSPT Int’l, Inc. v. Nahum, 624 F.3d 1213 (9th Cir. 2010) (elements of an ACPA cybersquatting claim)
- Celotex Corp. v. Catrett, 477 U.S. 317 (Sup. Ct. 1986) (summary judgment burden-shifting principles)
- Lahoti v. Vericheck, Inc., 636 F.3d 501 (9th Cir. 2011) (ACPA bad-faith factors and evidentiary considerations)