Rearden LLC v. Rearden Commerce, Inc.
683 F.3d 1190
| 9th Cir. | 2012Background
- Pls Rearden LLC, Rearden Productions LLC, Rearden Studios LLC, Rearden, Inc., and Rearden Properties LLC appeal two district court summary-judgment rulings in favor of Rearden Commerce, Inc. on Lanham Act, ACPA, California trademark, and UCL claims and court vacates/remands.
- The Rearden entities operate as technology incubators and production studios with multiple marks and websites including Rearden.com, ReardenSteel.com, ReardenStudios.com, and ReardenLabs.com.
- Rearden Commerce runs a business concierge marketplace via the Rearden Personal Assistant and registered multiple domain names incorporating Rearden terms (e.g., ReardenLLC.com, ReardenLLC.net, ReardenMobile.com).
- Appellants allege cybersquatting, trademark infringement, and unfair competition based on Rearden Commerce’s use of the Rearden name and domain registrations.
- The district court granted summary judgment to Rearden Commerce on trademark, cybersquatting, and UCL claims, and the Ninth Circuit vacated/remanded due to genuine disputes of material fact.
- The court emphasizes a totality-of-the-circumstances approach to use in commerce and the Sleekcraft framework for likelihood of confusion, with significant factual disputes remaining.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Use in commerce and ownership of Rearden marks | Appellants used Rearden marks publicly prior to or concurrent with Rearden Commerce's use. | Use in commerce is lacking or not sufficiently public; strong likelihood of confusion not shown. | Genuine issues of material fact preclude summary judgment on use in commerce. |
| Likelihood of confusion under Lanham Act | There is a real risk of consumer confusion given similarities in marks/names and shared marketing channels. | Differences in goods, channels, and consumer base preclude confusion; no strong evidence. | Fact issues remain; reversal of summary judgment on likelihood of confusion. |
| ACPA cybersquatting and bad faith | Domain registrations were made to leverage a BP dispute and harm plaintiffs’ marks. | Registrations were part of a branding program; potential good faith could exist; safe harbor considerations apply. | Genuine issues of material fact preclude summary judgment on bad-faith cybersquatting. |
| State-law claims (trademark infringement and UCL) | Based on the same facts as federal claims; preemption not applicable. | If federal claims fail, state-law claims fail as well; no separate basis. | Remand needed as issues unresolved for federal claims permeate state-law claims. |
Key Cases Cited
- Sleekcraft Boats v. Superior Court, 599 F.2d 341 (9th Cir. 1979) (eight-factor test for likelihood of confusion; flexible application)
- Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (protection of rights before sale; totality-of-the-circumstances approach)
- Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151 (9th Cir. 2001) (non-sales activities may be relevant in totality-of-circumstances)
- Accuride International, Inc. v. Accuride Corp., 871 F.2d 1531 (9th Cir. 1989) (focus on prospective purchasers; confusion in marketplace)
- Interstellar Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107 (9th Cir. 1999) (summary judgment disfavored in trademark disputes; fact-intensive)
- Bazaar Del Mundo v. Desert Palace, Inc., 448 F.3d 1118 (9th Cir. 2006) (use in commerce; service marks context; totality approach)
- TrafficSchool.com, Inc. v. Edriver Inc., 653 F.3d 820 (9th Cir. 2011) (non-consumer confusion can bear on likelihood of confusion)