Mountaineers Foundation v. The Mountaineers
2:19-cv-01819-RSL
W.D. Wash.Feb 8, 2023Background
- Plaintiff Mountaineers Foundation owns a preserve previously conveyed by warranty deed; The Mountaineers is the defendant and uses MOUNTAINEERS trademarks.
- Dispute centers on (1) whether The Mountaineers retain an easement or other property interest in the Preserve and (2) trademark rights, use, and alleged likelihood of confusion between the parties' marks and activities.
- Magistrate Judge Fricke issued a Report & Recommendation (R&R) addressing easement, trademark protectability, license existence, likelihood of confusion, and admissibility of a declaration; both parties objected to portions of the R&R.
- District Judge Lasnik adopted the R&R in part: he rejected the R&R’s easement analysis (finding the warranty deed unambiguous), requested supplemental briefing on whether part performance removes the easement from the statute of frauds, and otherwise adopted the R&R’s trademark conclusions.
- The Court denied the Foundation’s motion for partial summary judgment, granted in part and denied in part The Mountaineers’ cross-motion: it held The Mountaineers own protectable, non-generic marks (specified 305, 307, 968 marks) for certain charitable fundraising services and books, found no abandonment, struck two of the Foundation’s affirmative defenses as to charitable fundraising, and left remaining claims to proceed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Existence of an easement in favor of The Mountaineers | Easement must be created by deed under WA statute of frauds; warranty deed did not reserve an easement | Easement may exist and, alternatively, part performance can take it out of the statute of frauds | Court declined R&R easement finding; found deed language controls and ordered supplemental briefing on part-performance doctrine before resolving easement issue |
| Protectable trademark interest in MOUNTAINEERS marks | Marks may be generic and third-party uses create material fact disputes | The Mountaineers own and use the marks for charitable fundraising/services and books | Court adopted R&R: The Mountaineers own protectable, non-generic marks for specified services and books; no abandonment |
| Existence of a license to use the marks | Foundation asserts access/rights were terminated; no license exists or is enforceable | The Mountaineers contend a license or licensing arrangement existed | Court found disputed factual issues about licensing and denied summary judgment on license existence |
| Likelihood of consumer confusion | Plaintiff alleges defendant made misleading statements and sought donations improperly; does not concede its own use causes confusion | Defendant contends plaintiff’s pleadings amount to judicial admissions and that unauthorized continued use establishes confusion | Court rejected judicial-admission argument (and its extension from other cases), found Sleekcraft factors require fact-intensive inquiry, and denied summary judgment on likelihood of confusion |
| Admissibility of Norman Winn declaration | Foundation argued the declaration should be considered (including under residual hearsay exception) | Defendant opposed consideration | Court adopted R&R and declined to consider the declaration for summary judgment purposes |
Key Cases Cited
- United States v. Reyna-Tapia, 328 F.3d 1114 (9th Cir. 2003) (standard: de novo review of magistrate judge R&R objections)
- Bale v. Allison, 173 Wn. App. 435 (Wash. Ct. App. 2013) (conveyance of real property interests, including easements, must comply with deed formalities)
- Sunnyside Valley Irr. Dist. v. Dickie, 149 Wn.2d 873 (Wash. 2003) (intent to create an easement is determined from the deed; plain language controls)
- Newport Yacht Basin Assn. v. Supreme Nw., Inc., 168 Wn. App. 56 (Wash. Ct. App. 2012) (extrinsic evidence not considered when deed language is unambiguous)
- JL Beverage Co., LLC v. Jim Beam Brands Co., 828 F.3d 1098 (9th Cir. 2016) (likelihood-of-confusion inquiry is fact-intensive and summary judgment is generally disfavored)
- C.A.R. Transp. Brokerage Co. v. Darden Rests., Inc., 213 F.3d 474 (9th Cir. 2000) (moving party who would bear burden at trial must present evidence entitling it to directed verdict)
- Am. Title Ins. Co. v. Lacelaw Corp., 861 F.2d 224 (9th Cir. 1988) (judicial admissions withdraw facts from issue when made in the same pleading)
- Casa del Caffe Vergnano S.P.A. v. ItalFlavors, LLC, 816 F.3d 1208 (9th Cir. 2016) (judicial admission doctrine does not apply to admissions in separate cases)
- Kirk v. Tomulty, 66 Wn. App. 231 (Wash. Ct. App. 1992) (part-performance may remove certain agreements from statute of frauds)