Christian Copyright Licensing International LLC, Plaintiff, v. Multitracks.com LLC, Defendant.
No. CV-23-00368-PHX-DWL
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA
June 6, 2025
WO
Since at least 2012, Multitracks.com LLC (“MTC“) has used the term MUTILTRACKS.COM (the “Mark“) to market its goods and services, including through the use of that term as a website domain name. In 2021, Christian Copyright Licensing International (“CCLI“) obtained the domain name multitrack.com from a non-party who had registered it decades earlier. CCLI initially used that domain name to redirect visitors to the website of one of its affiliate companies, OmniSonic Media Group, LLC d/b/a Loop Community (“Loop Community“), which is one of MTC‘s competitors. In this action, CCLI contends that its use of the multitrack.com domain name is lawful and seeks declaratory relief to that effect. MTC contends that CCLI‘s use of the multitrack.com domain name amounts to cybersquatting in violation of the Anticybersquatting Consumer Protection Act (“ACPA“) and seeks monetary damages.
Now pending before the Court are (1) the parties’ stipulated motion to file certain documents under seal, (2) MTC‘s motion to exclude the opinions of Dr. Samantha Iyengar (“Dr. Iyengar“), (3) CCLI‘s motion for summary judgment, and (4) MTC‘s cross-motion
BACKGROUND
I. Relevant Factual Background
CCLI is a limited liability company that provides copyright licenses to facilitate worship services across the United States. (Doc. 57-22 at 2.) Its parent company is StarPraise Group, LLC (“StarPraise“). (Doc. 57-3 at 89.) As part of its marketing strategy, CCLI acquires “generic descriptor domains that point to various products and services throughout [its] family of companies.” (Id. at 11-12.)
MTC was founded in 2006 as “Interactive Worship Live LLC” (Doc. 57-20 at 2-4) but changed its name to “MultiTracks.com” in 2011 (Doc. 57-21 at 2-4). MTC is a limited liability company that offers products and services, including “multitracks,” for use in worship services. (Doc. 61-1 at 4 ¶ 8 [“[T]he tracks we offer could also be referred to (though not precisely as explained below) as a ‘multi-track . . . .‘“]). MTC is an industry leader and has spent time and resources building its brand. (Doc. 61-4 ¶ 8; Doc. 61-5 ¶¶ 3-7; Doc. 61-1 at 38-67 [showing recognition in worship magazines])
The noun “multitrack” is used in the music industry to denote a class of audio files. Although the parties disagree somewhat as to the precise contours of this class of products, they appear to agree that multitracks include single audio recordings composed of multiple individual audio stems or tracks. (Doc. 57 at 7 [“The term ‘multitrack’ means an audio recording that ‘us[es] more than one audio track.‘“]); Doc 61 at 6-7 [“[T]here is some confusion on these terms because in the recording world, ‘multitracks’ means a collection of raw individual tracks, and in the multitracks/playback world, that same word means a collection of stems.“]). Additionally, Phillip Edwards (“Edwards“), MTC‘s CEO, appears to contend that the term includes the individual stems or tracks themselves. (Doc 57-2 at 4; Doc. 61-1 at 6-7 ¶ 16.) The undisputed dictionary definition included in the record supports this conceptualization. (Doc. 57-1 at 2-3 [defining multitrack as “using more than one audio track“]).
In 2021, CCLI‘s Chief Technology Officer, George Ross (“Ross“), used the domain-name broker service GoDaddy to obtain the domain name multitrack.com via a transfer. (Doc. 1 ¶ 19; Doc. 11 ¶ 19; Doc. 61-6 at 8.) That domain name was originally registered by a non-party in the 1990s. (Doc. 57-2 at 9 [“We [MTC] definitely saw the domain name before, and it had a very interesting, outdated web page. It was kind of circa 1995 or mid ‘90s.“]; Doc. 71-4 [screenshot of the webpage appearing at www.multitrack.com as of July 2002].)
Initially, CCLI caused the multitrack.com domain name to automatically redirect visitors to loopcommunity.com, a website operated by Loop Community where consumers can view and purchase multitrack products. (Doc. 1 ¶ 20; Doc. 11 ¶ 20; Doc. 57-3 at 14.) At the time he obtained the multitrack.com domain name in 2021, Ross knew “both of the existence of [MTC‘s] webpage and the goods and services offered by [MTC].” (Doc. 61-6 at 11.)
On March 29, 2022, Ross received a phone call from Steve McPherson (“McPherson“), MTC‘s Director of Global Licensing and Partnerships. (Doc. 57-24 at 3 ¶ 7.) During the phone call, McPherson asked Ross to stop the multitrack.com domain name from resolving to loopcommunity.com. (Id. at 3 ¶ 9.) Ross agreed to do so—assertedly “not out of any legal obligation” but as a friendly gesture due to his “pre-existing personal relationship with Mr. McPherson“—and caused the multitrack.com domain name to resolve to worshipfuel.com, which is a blog owned and maintained by CCLI and to which Loop Community contributes. (Id. at 3 ¶¶ 10-11.)
On November 21, 2022, MTC filed a complaint against CCLI before “Forum,” a private dispute-resolution company, seeking an order requiring GoDaddy to transfer the domain name multitrack.com to MTC pursuant to the Uniform Domain-Name Dispute Resolution Policy (“UDRP“) of the Internet Corporation for Assigned Names and Numbers (“ICANN“). (Doc. 57-27.) In its UDRP complaint, MTC claimed to have trademark rights
On February 19, 2023, the Forum arbitrator granted MTC‘s UDRP Complaint and ordered the transfer of the domain name multitrack.com to MTC. (Doc. 1 ¶ 45; Doc. 11 ¶ 45.)
II. Procedural Background
On March 1, 2023, CCLI initiated this action by filing the complaint, which seeks “an order declaring that CCLI‘s use of the domain name multitrack.com is not unlawful, within the meaning of the ACPA.” (Doc. 1 at 8.)
On April 11, 2023, MTC filed an answer and counterclaim. (Doc. 11.) In its counterclaim, MTC alleges that CCLI‘s use of the domain name multitrack.com is “designed and intended to create confusion” with the Mark, that CCLI had “a bad faith intent to profit from” the Mark, and that CCLI is using the domain name multitrack.com “to divert consumers from [MTC‘s] online location for commercial gain and to damage [MTC‘s] goodwill.” (Id. at 9 ¶¶ 10-15.) MTC requests damages, an order that CCLI forfeit the multitrack.com domain name, and attorneys’ costs and fees. (Id. ¶ 18.)
On September 16, 2024, the parties filed a joint stipulation to file certain documents under seal. (Doc. 59.)
That same day, CCLI filed the pending motion for summary judgment (Doc. 57) and motion to exclude the opinions of Dr. Iyengar (Doc. 60) and MTC filed the pending cross-motion for partial summary judgment (Doc. 61).
All three motions are now fully briefed. (Docs. 62, 65, 68, 69, 70, 71.)
On May 19, 2025, the Court issued a tentative ruling. (Doc. 75.)
On June 4, 2025, the parties filed a stipulation to vacate oral argument and issue a final order based om the tentative ruling. (Doc. 76.)
. . .
. . .
I. Stipulation To File Documents Under Seal
A. Legal Standard
The public has a general right to inspect judicial records and documents, such that a party seeking to seal a judicial record must overcome “a strong presumption in favor of access.” Kamakana v. City & Cty. of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006). To do so, the party must “articulate compelling reasons supported by specific factual findings that outweigh the general history of access and the public policies favoring disclosure.” Id. at 1178-79 (internal quotation marks and citations omitted). The Court must then “conscientiously balance the competing interests of the public and the party who seeks to keep certain judicial records secret.” Id. at 1179 (internal quotation marks omitted). “After considering these interests, if the court decides to seal certain judicial records, it must base its decision on a compelling reason and articulate the factual basis for its ruling, without relying on hypothesis or conjecture.” Id. (internal quotation marks omitted).
The “stringent” compelling reasons standard applies to all filed motions and their attachments where the motion is “more than tangentially related to the merits of a case.” Ctr. for Auto Safety v. Chrysler Grp., LLC, 809 F.3d 1092, 1096, 1101 (9th Cir. 2016). A motion for summary judgment is clearly such a motion, so the compelling reasons standard applies to the sealing request here.
B. Analysis
The parties “stipulate and agree” to file under seal Exhibits 35 and 38 to CCLI‘s motion for summary judgment as well as an unredacted version of the motion itself. (Doc. 58.) According to the parties, sealing is warranted because Exhibit 35 contains “certain financial information regarding MTC‘s advertising and marketing,” Exhibit 38 contains “certain information regarding MTC‘s number of customer accounts and website visitors,” and the motion “recites two numbers contained in Exhibit 35.” (Id. at 2.) MTC asserts, without corroboration or elaboration, that public disclosure of these numbers “might harm [its] competitive standing.” (Id.) The parties also note that MTC designated Exhibits 35
The parties’ sealing request is denied. As an initial matter, that a sealing request is stipulated or unopposed does not weigh in favor of sealing. See generally Lipocine Inc. v. Clarus Therapeutics, Inc., 2020 WL 4569473, *7 (D. Del. 2020) (“The problem for judges is that [sealing] requests are seldom opposed—the would-be opposing party has access to the materials and doesn‘t particularly care whether the public has access as well. . . . That leaves the judge in the position of having to decide a sometimes complex issue of sealing or redaction with no adversarial briefing and often, as in this case, with only a perfunctory submission from the party seeking relief.“); TriQuint Semiconductor, Inc. v. Avago Techs. Ltd., 2010 WL 2474387, *1 (D. Ariz. 2010) (rejecting sealing request premised on the parties’ “side agreement” as to sealing). Likewise, “the mere fact the parties have designated certain materials or information as confidential pursuant to [the protective order] does not establish that any legal standard for placing those materials or information under seal has been met.” (Doc. 28 at 6.)
On the merits, the parties have failed to “articulate compelling reasons supported by specific factual findings that outweigh the general history of access and the publiс policies favoring disclosure.” Kamakana, 447 F.3d at 1178-79. MTC contends in conclusory fashion that disclosure of its advertising and marketing expenditures and its number of customer accounts and website visitors might harm its competitive standing but provides no factual basis for this claim. This is insufficient to satisfy the “stringent” compelling reasons standard. Joy v. North, 692 F.2d 880, 894 (2d Cir. 1982) (“[A] naked conclusory statement that publication . . . will injure the bank in the industry and local community falls woefully short of the kind of showing which raises even an arguable issue as to whether it may be kept under seal.“) (quoted with approval in Oliner v. Kontrabecki, 745 F.3d 1024, 1026-27 (9th Cir. 2014)); Primus Grp., Inc. v. Inst. for Env‘t Health, Inc., 395 F. Supp. 3d 1243, 1270 (N.D. Cal. 2019) (“conclusory allegations of harm” did not “outweigh the public‘s right of access“).
Under
II. MTC‘s Motion To Exclude
A. Dr. Iyengar‘s Responding Report
One of the disputed issues in this case is whether the Mark (i.e., the term multitracks.com) is generic or merely descriptive without secondary meaning, such that it cannot function as a trademark. In an effort to demonstrate that this term is not generic, MTC retained Dr. Isabella Cunningham (“Dr. Cunningham“) to conduct a survey, which broadly followed the so-called “Teflon”1 survey protocol. (Doc. 62 at 6 [CCLI‘s
More specifically, and as both sides acknowledge, Dr. Cunningham modeled her survey on the Teflon survey conducted by Dr. Hal Poret in United States Pat. & Trademark Off. v. Booking.com B. V., 591 U.S. 549 (2020). (Doc. 60 at 5; Doc. 62 at 3-4.) Dr. Cunningham‘s survey begins by asking demographic and background questions. (Doc. 60-6 at 21-27.) It then proceeds to define the difference between “common” and “brand” names and to test participants’ understanding of this difference. (Id. at 30-32.) It then presents a series of names, including the Mark and various “comparison names,” and asks participants to decide whether each name is a “common name” or a “brand name.” (Id. at 33-36.) Last, it asks some administrative questions. (Id. at 37-40.)
CCLI retained its own expert, Dr. Iyengar, to criticize Dr. Cunningham‘s report and conclusions. (Doc. 57-31 [Dr. Iyengar‘s report].) According to Dr. Iyengar, Dr. Cunningham‘s “survey is unreliable because it violates generally accepted principles for surveys used as evidence in litigation and cannot be used to support her conclusions, including any conclusion that the alleged mark (1) is not generic, and (2) has established secondary meaning.” (Id. at 7.) Dr. Iyengar identifies three purported flaws in Dr. Cunningham‘s methodology: (1) “[f]ailure to survey the relevant population of consumers—specifically, surveying an overinclusive universe (churchgoers) with no way to narrow it down to worship leaders or other decisionmakers in the relevant market“; (2) “[f]ailure to present the mark within the proper frame of reference“; and (3) “[f]ailure to include appropriate comparison names.” (Id.)
B. Legal Standard
“The party offering expert testimony has the burden of establishing its admissibility.” Bldg. Indus. Ass‘n of Wash. v. Wash. State Bldg. Code Council, 683 F.3d 1144, 1154 (9th Cir. 2012).
- the expert‘s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;
- the testimony is based on sufficient facts or data;
- the testimony is the product of reliable principles and methods; and
- the expert has reliably applied the principles and methods to the facts of the case.”
(
A district court‘s decision to admit or exclude expert testimony is guided by a two-part test that focuses on the opinion‘s relevance and reliability. Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589 (1993). “The inquiry envisioned by
Evidence is relevant if it “has any tendency to make the existence of any fact that is of consequence to the determination of the action more probable or less probable than it would be without the evidence.” Id. at 587 (quoting
The basic standard of reliability is similarly broad. “Shaky but admissible evidence is to be attacked by cross examination, contrary evidence, and attention to the burden of proof, not exclusion.” Primiano v. Cook, 598 F.3d 558, 564 (9th Cir. 2010). “Basically, the judge is supposed to screen the jury from unreliable nonsense opinions, but not exclude opinions merely because they are impeachable.” Alaska Rent-A-Car, Inc. v. Avis Budget Grp., Inc., 738 F.3d 960, 969 (9th Cir. 2013). See also
Nevertheless, courts serve an important “gatekeeper” role when it comes to screening expert testimony. Gen. Elec. Co. v. Joiner, 522 U.S. 136, 142 (1997). “Unlike an ordinary witness, . . . an expert is permitted wide latitude to offer opinions, including those that are not based on firsthand knowledge or observation.” Daubert, 509 U.S. at 592. “Presumably, this relaxation of the usual requirement of firsthand knowledge is premised on an assumption that the expert‘s opinion will have a reliable basis in the knowledge and experience of his discipline.” Id. This “general ‘gatekeeping’ obligation . . . applies not only to testimony based on ‘scientific’ knowledge, but also to testimony based on ‘technical’ and ‘other specialized’ knowledge.” Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 141 (1999).
The Court has “broad discretion,” both in deciding whether the evidence is reliable and in deciding how to test for reliability. United States v. Hankey, 203 F.3d 1160, 1168 (9th Cir. 2000). In Daubert, the Supreme Court listed various factors that might be applicable, including whether the expert‘s technique or theory (1) can be tested; (2) has been peer reviewed or published; (3) has a known or potential basis for error; and (4) is generally accepted in the pertinent scientific community. 509 U.S. at 593-94. However, “[t]he Daubert factors were not intended to be exhaustive nor to apply in every case.” Hankey, 203 F.3d at 1168. In particular, “[t]he Daubert factors . . . simply are not applicable to [testimony] whose reliability depends heavily on the knowledge and experience of the expert, rather than the methodology or theory behind it.” Id. at 1169. See also
C. Timeliness
1. The Parties’ Arguments
MTC filed the motion to exclude Dr. Iyengar‘s opinions on September 16, 2024. (Doc. 60.) In response, CCLI argues that because the deadline in the scheduling order to file expert-exclusion motions was August 29, 2024, and “MTC did not file a motion to extend the . . . deadline” or make “any showing of excusable neglect,” “the motion should be denied as untimely.” (Doc. 62 at 7.)
In reply, MTC argues that “the Court should treat the Motion as timely filed and rule on the merits of the Motion.” (Doc. 65 at 1-2.) MTC concedes the motion was untimely under the scheduling order but ascribes the untimeliness to its own good-faith docketing error. (Id. at 9.) MTC argues that the late filing “does not diminish the efficient management or resolution of this matter—and i[n] fact furthers it” and that “when a Daubert motion ‘raise[s] serious challenges . . . which go to the heart of the case,’ then a technical deviation from the Court‘s order ‘should not result in the striking or refusal to consider a motion to exclude.‘” (Id. at 10.) Last, MTC contends that it “did not act in a dilatory manner” because “Dr. Iyengar did not submit her affidavit of changes to her deposition testimony until September 4, 2024” and that affidavit was “not delivered by the court reporter to undersigned counsel until September 12, 2024,” only four days before the filing date. (Id. at 10 n.8.)
. . .
An initial difficulty in evaluating the parties’ timeliness arguments is that neither side invokes the correct standard. Under the scheduling order in this case, “[a]ny motions challenging expert testimony must be filed no later than 28 days after the deadline for close of expert discovery.” (Doc. 22 at 4.) The ultimate deadline for the close of expert discovery, following several extensions requested by the parties, was August 1, 2024. (Doc. 53.) Thus, expert exclusion motions were due by August 29, 2024. However, the motion at issue here was not filed until September 16, 2024.
Although CCLI argues that the timeliness analysis turns on whether MTC can establish “excusable neglect” for missing the August 29, 2024 deadline and MTC seems to argue that excusable neglect exists because it made a good-faith calendaring error, these arguments overlook that the missed deadline was established via a
For these reasons, if MTC‘s only proffered reason for missing the deadline was a calendaring error, there is a strong argument this excuse would be insufficient. However, this is not MTC‘s only reason—MTC also notes that it did not receive Dr. Iyengar‘s changes to her deposition testimony until September 12, 2024, and filed its exclusion motion four days later. The Court concludes that MTC‘s belated receipt of this information provides good cause for the late filing and further notes that CCLI does not contend it suffered any unfair prejudice from the late filing. Nor could CCLI make such an argument, given that the original version of the scheduling order contemplated that dispositive motions and expert-exclusion motions would be due on the same day (Doc. 22) and the short delay in MTC‘s filing has not caused any disruption to the overall case schedule.
D. Survey Population
1. The Parties’ Arguments
As noted, Dr. Iyengar‘s first specific criticism of Dr. Cunningham is that she “[f]ail[ed] to survey the relevant population of consumers—specifically, surveying an overinclusive universe (churchgoers) with no way to narrow it down to worship leaders or other decisionmakers in the relevant market.” (Doc. 57-31 at 7.)
MTC argues that Dr. Iyengar‘s opinion that Dr. Cunningham surveyed the “wrong population” is “not predicated on ‘sufficient facts or data,’ and is manifestly unreliable.” (Doc. 60 at 6-13.) MTC‘s first argument in support of this contention is that Dr. Iyengar “admitted having virtually no knowledge regarding the ambit of goods and services offered under the subject Mark.” (Id. at 4.) As one example, MTC cites an exchange during Dr. Iyengar‘s deposition in which, when asked if she was aware of the “more than 12,000
In response, CCLI argues that MTC‘s arguments “conflict[] with MTC‘s own testimony and public statements,” including testimony frоm Edwards and certain
In reply, MTC argues that CCLI‘s arguments “perpetuate the same fallacies” on which Dr. Iyengar‘s report is based—namely, that MTC‘s consumer base is limited to “worship leaders” and that Dr. Cunningham‘s survey was administered to “ordinary churchgoers.” (Id. at 2.) With respect to the “worship leader fallacy,” MTC argues that it conflicts with Edwards‘s testimony, in which he refers to MTC‘s “significant customer base . . . from artists to labels to customers.” (Id. at 2-3, citing Doc. 65-1 at 48:9-16.) MTC further argues that although, as CCLI indicates, “Edwards did refer to ‘worship leaders and churches,’ he made clear that the market for goods and services offered by [MTC] under the Mark . . . included ‘musicians,’ ‘music directors,’ [and] ‘musicians in churches that use Multitracks in live performance.‘” (Id. at 3.) MTC argues that this testimony is further supported by Edwards‘s declaration and the testimony of Timothy Whincop (“Whincop“). (Id. at 3 n.3.) MTC argues that “[r]ather than concede that Mr. Ross purchased a song from [MTC] because he was just a fan of the band that played it (as he admitted in his deposition), [CCLI] instead tries to shoehorn Mr. Ross into the role of ‘worship leader.‘” (Id. at 5-6.) With respect to the “ordinary churchgoer fallacy,” MTC argues that “[CCLI]
2. Analysis
As an initial matter, the Court notes that MTC does not challenge Dr. Iyengar‘s qualifications. (Doc. 60 at 5 [“Here, it is not that Dr. Iyengar is inherently unqualified to give opinions in this matter.“]). Nor would such a challenge be likely to succeed. Dr. Iyengar possesses expertise and experience in survey research, design, and analysis, specifically in the trademark context. (Doc. 57-31 at 4-5.) And “[w]hen evaluating specialized or technical expert opinion testimony, the relevant reliability concerns may focus upon personal knowledge or experience.” United States v. Sandoval-Mendoza, 472 F.3d 645, 655 (9th Cir. 2006). Furthermore, other courts have allowed Dr. Iyengar to opine on related issues. In re Folgers Coffee, Mktg. Litig., 2024 WL 4093071, *5 (W.D. Mo. 2024) (“Ultimately, none of Defendants’ arguments establish Dr. Iyengar‘s opinion ‘is so fundamentally unsupported that it can offer no assistance to the jury.‘“) (cleaned up); RingCentral, Inc. v. Nextiva, Inc., 2021 WL 12171875, *5 (N.D. Cal. 2021) (“None of Nеxtiva‘s arguments show that Iyengar‘s analysis lacks a ‘reliable foundation’ or ‘relevan[ce] to the task at hand.‘“). Although those decisions are not binding here, they provide a lens through which to analyze the reliability of Dr. Iyengar‘s opinions.
In addition to her qualifications and experience, Dr. Iyengar provides a list of all of the resources on which she relied. (Doc. 57-31 at 42-44.) Those resources include academic literature, case law, pleadings and other litigation materials, websites (including two MTC web pages), and other documents. (Id.) MTC does not question the legitimacy of those sources.2
Nevertheless, MTC cites several excerpts from Dr. Iyengar‘s deposition purporting to demonstrate her “abject ignorance” of MTC‘s products and services. These criticisms at most go to the weight of Dr. Iyengar‘s opinions and fail to establish a lack of foundation
MTC also contends that Dr. Iyengar lacked a sufficient foundation to opine about the nature of its customer base, citing her acknowledgement that she did not rely on “any source of data . . . to attempt to determine how many individuals in the United States were employed as leaders for churches who might make purchasing decisions for the goods and services offered at Multitracks.com,” her acknowledgement that she did not review MTC‘s YouTube channel to learn more about its subscribers, and her inability to quantify the “percentage of individuals who make purchasing decisions to purchase goods and services at Multitracks.com that comprise ‘church worship leaders.‘” (Doc. 60 at 9-11.) But again, the fact that Dr. Iyengar could have done even more to solidify the foundation for her opinions does not establish that the approach she took was so unreliable or insufficient as to warrant exclusion. This is especially true given the undisputed fact that Dr. Iyengar reviewed MTC‘s website and the websites of several of its competitors. Oracle Corp. v. SAP AG, 765 F.3d 1081, 1095 (9th Cir. 2014) (affirming denial of Daubert motion, which was premised in part on expert‘s reliance on internet research when conducting market survey, because movant ‘fail[ed] to explain why the Internet is an inappropriate resource for conducting market research’ and ‘had ample opportunity to cross-examine [the expert] about his underlying sources and discredit them‘); Longoria v. Kodiak Concepts LLC, 2021 WL 1100373, *15 (D. Ariz. 2021) (“The Court accepts that conducting internet research and extrapolating from it can be a reliable methodology.“). At most, the cited exchanges
Dr. Iyengar‘s role as a de facto rebuttal witness only strengthens this conclusion. RingCentral, Inc. v. Nextiva, Inc., 2021 WL 12171869, *4 (N.D. Cal. 2021) (“RingCentral argues that House‘s rebuttal report lacks factual foundation because it is not based on any concrete data . . . and . . . is based on mere ‘expert[] speculation’ because he failed to undertake any investigation of his own in challenging Eichmann. The Court disagrees . . . [because] a rebuttal expert . . . is entitled to rest his rebuttal on [the other expert‘s] assumptions and is not required to conduct independent alternative opinions or investigations.“) (cleaned up); Cmty. Ass‘n for Restoration of the Env‘t v. Cow Palace, LLC, 80 F. Supp. 3d 1180, 1215 (E.D. Wash. 2015) (“[Defendant‘s rebuttal expert] need not develop alternative, affirmative opinions in order to adequately rebut the evidence presented by Plaintiffs—that is not Defendants’ burden.“).3
Meanwhile, Dr. Iyengar‘s statement that she “understood” that this lawsuit is only “in relation to multitrack products” does not demonstrate that her opinions are based on a “fallacious assumption” regarding the products offered by MTC. The issues of what, exactly, a “multitrack” is and which products can be considered “wholly unrelated” to multitracks are complex, so regardless of whether Dr. Iyengar is ultimately correct in this assumption, her statement does not betray a fundamental ignorance regarding the products and services offered by MTC. See, e.g., Flying Fish Bikes, Inc. v. Giant Bicycle, Inc., 2014 WL 12621218, *1 (M.D. Fla. 2014) (drawing a distinction between “an expert‘s
Nor does Dr. Iyengar‘s failure to cite Ross‘s testimony provide a basis for exclusion. MTC argues that because Ross was a customer of MTC yet is not a worship leader, Dr. Iyengar‘s opinion that only worship leaders constitute the proper survey universe is demonstrably unreliable. (Doc. 60 at 13.) But again, MTC exaggerates the implications of these facts. First, even assuming Ross is not a worship leader, Dr. Iyengar‘s failure to consider a single fact that could contradict her opinions would not render her opinions so unreliable as to be inadmissible. Alaska Rent-A-Car, Inc., 738 F.3d at 969 (“Basically, the judge is supposed to screen the jury from unreliable nonsense opinions, but not exclude opinions merely because they are impeachable.“). Second, neither party defines the term “worship leader” and the precise contours of that class, and whether it would include people in Ross‘s or similar roles, may be a matter of factual dispute as this case proceeds. Consequently, Ross‘s status as a customer of MTC does not necessarily undermine Dr. Iyengar‘s opinions at all, much less so fundamentally that it renders the opinions inadmissible.
This leaves one final basis for challenging Dr. Iyengar‘s opinions—one that, in the Court‘s view, creates the closest call as to whether exclusion is warranted. In her report, Dr. Iyengar contends that Dr. Cunningham‘s survey population was “overinclusive” in part because it included mere “churchgoers” who would not be users or buyers of MTC‘s products. (Doc. 57-31 at 7, 19-23.) The apparent basis for this claim is Dr. Iyengar‘s interpretation of Dr. Cunningham‘s description of the survey population. Dr. Iyengar characterizes the survey population as including:
U.S. adults who have or are likely to attend Christian religious services and/or “regularly or occasionally participated with his/her church or religious organization in musical performances or rehearsals, or adult or children choir, or worship services, and typically performed contemporary or modern music when doing so.”
This interpretation is demonstrably incorrect. Dr. Iyengar erroneously uses the hyphenated conjunction “and/or,” which suggests the survey population includes those persons who attend church without participating in the musical performances. But in describing her survey, Dr. Cunningham used the standalone conjunction “and” at the same critical point, thereby indicating that it only included those persons who attend church and participate in the musical performances. (Doc. 60-6 at 10, emphasis added [“[M]y survey included only those individuals who . . . indicated that they had attended . . . or were likely to attend . . . a Christian religious service and regularly or occasionally participated with his/her church or religious organization in musical performances or rehearsals, or adult or children choir, or worship services, and typically performed contemporary or modern music when doing so.“]). Dr. Cunningham emphasizes this point in her own rebuttal report. (Doc. 60-7 at 5 [“Dr. Iyengar is wrong in stating that my universe is overinclusive. I did not simply survey[] ‘churchgoers.’ I surveyed Christian churchgoers who ‘participated . . . in musical performances or rehearsals, or adult or children choir, or worship services, and typically performed contemporary or modern music when doing so.’ This universe/sample is a distinct subset of ‘churchgoers.‘“]).4
Although this mistake is concerning and will no doubt provide ample fodder from cross-examination, it is not the type of mistake that warrants the wholesale exclusion of Dr. Iyengar‘s opinions. Cf. Cnty. of Maricopa v. Off. Depot Inc., 2019 WL 5066808, *22 (D. Ariz. 2019) (“Although the Court is troubled by the errors, which Office Depot dramatically illustrated during the hearing, the Court is not convinced they were so pervasive as to render Ratliff‘s methodology unreliable as a matter of law.“). Again, Dr. Iyengar‘s overarching position is that Dr. Cunningham used the wrong survey population and should have limited to survey “to worship leaders or other decisionmakers in the relevant market.” (Doc. 57-31 at 7.) Accordingly, even though Dr. Iyengar was wrong to
Ε. Use Of Dr. Poret‘s Methodology5
1. The Parties’ Arguments
MTC argues that Dr. Iyengar‘s criticisms of Dr. Cunningham‘s survey ignore “that the United States Supreme Court [in Booking.com] accepted and ratified a Teflon survey conducted in precisely the same manner, and using precisely the same comparators.” (Doc. 60 at 14.) MTC further argues that “Dr. Iyengar offers no cogent rationale for concluding that a Teflon survey that was admittedly accepted as ‘reliable’ and which used ‘exactly the same description’ for comparison marks is somehow improper.” (Id. at 15.) MTC concludes that this “analytical gap” between Dr. Iyengar‘s opinion and “the data on which her opinion is predicated” should compel exclusion. (Id.)
In response, CCLI argues that “MTC‘s claim that the United States Supreme Court has somehow immunized Dr. Cunningham‘s flawed survey methodology from criticism has no basis in law.” (Doc. 62 at 10.) CCLI first contends that “the acceptability of the [Poret] survey was not before the Supreme Court in Booking.com.” (Id.) CCLI next contends that although “[i]t is true that the district court in the Booking.com litigation denied a motion to exclude Poret‘s survey . . . the district court never suggested that the Poret survey was immune to criticism,” and furthermore such a ruling would be binding here. (Id., cleaned up). Last, CCLI contends that Dr. Cunningham‘s survey suffers from the same flaws that the Trademark Trial and Appeal Board (“TTAB“) identified in In re Benjamin & Brothers, LLC, Serial No. 88396223 (TTAB 2023)—namely, that “(1) only
In reply, MTC criticizes CCLI‘s reliance on In re Benjamin, which is “an unreported case from an administrative tribunal that is not binding on this court” and which nevertheless did not “hold that the ‘Poret survey methodology is critically flawed.‘” (Doc. 65 at 8.) MTC argues that “the TTAB actually concluded that the survey at issue in In re Benjamin was flawed because the applicant did not demonstrate that it was precisely modeled on the Poret Survey in Booking.com” and that “[f]ar from rejecting the soundness of the Poret Survey, the TTAB noted the difference in results in the survey it considered compared to the Poret Survey.” (Id.)
2. Analysis
Dr. Iyengar‘s criticism of Dr. Cunningham‘s survey methodology is twofold: (1) the survey adopts Dr. Poret‘s Teflon methodology, which is itself flawed; and (2) even if the Poret methodology is not itself flawed, Dr. Cunningham‘s “rote copying” of that methodology was improper because surveys must be carefully tailored to the unique facts of each case. (Doc. 62 at 10-11.)
With respect to the first criticism, although MTC is correct that the district court in Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 918 (E.D. Va. 2017), accepted Dr. Poret‘s Teflon survey as reliable, this does not preclude Dr. Iyengar from offering a critique of that methodology here. Camreta v. Greene, 563 U.S. 692, 709 n.7 (2011) (“A decision of a federal district court judge is not binding precedent in either a different judicial district, the same judicial district, or even upon the same judge in a different case.“) (citation and internal quotation marks omitted); Starbuck v. City and County of San Francisco, 556 F.2d 450, 457 n.13 (9th Cir. 1977) (“The doctrine of stare decisis does not compel one district
Turning to the merits, In re Benjamin provides at least some support for Dr. Iyengar‘s first criticism. There, the TTAB ruled that an applicant‘s survey, which was modeled on the Poret survey6 used in Booking.com, suffered from certain methodological flaws that undermined (but did not eliminate) its probative value. In re Benjamin, Serial No. 88396223 at 36 (“Although the flaws in the [survey] diminish its probative value, it is not devoid of significance.“). Although the parties dispute the degree to which In re Benjamin supports CCLI‘s arguments, at the very least, it offers some support for Dr. Iyengar‘s claim that the Poret methodology is flawed. This is true even though TTAB decisions “are not binding,” Lahoti v. Vericheck, Inc., 636 F.3d 501, 506 (9th Cir. 2011), and even though nonprecedential TTAB decisions, like In re Benjamin, carry even less weight. In Re the Procter & Gamble Co., 105 U.S.P.Q.2d 1119 (T.T.A.B. 2012) (“an opinion designated as not precedential is not binding upon the Board“).
With respect to Dr. Iyengar‘s second criticism, the Court is confident that it satisfies
III. Cross-Motions For Summary Judgment
A. Legal Standard
“The court shall grant summary judgment if [a] movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
A party moving for summary judgment “bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of ‘the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,’ which it believes demonstrate the absence of a genuine issue of material fact.”
There is no issue for trial unless enough evidence favors the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). “If the evidence is merely colorable or is not significantly probative, summary judgment may be granted.” Id. at 249-50 (citations omitted). At the same time, the evidence of the non-movant is “to be believed, and all justifiable inferences are to be drawn in [its] favor.” Id. at 255. “[I]n ruling on a motion for summary judgment, the judge must view the evidence presented through the prism of the substantive evidentiary burden.” Id. at 254. Thus, “the trial judge‘s summary judgment inquiry as to whether a genuine issue exists will be whether the evidence presented is such that a jury applying that evidentiary standard could reasonably find for either the plaintiff or the defendant.” Id. at 255.
“[W]hen parties submit cross-motions for summary judgment, [e]ach motion must be considered on its own merits,” but the Court must consider all evidence submitted in support of both cross-motions when separately reviewing the merits of each motion. Fair Hous. Council of Riverside Cnty., Inc. v. Riverside Two, 249 F.3d 1132, 1136 (9th Cir. 2001) (internal quotation marks omitted). For “the party with the burden of persuasion at trial” to succeed in obtaining summary judgment, it “must establish beyond controversy every essential element” of each claim on which summary judgment is sought. S. Cal. Gas Co. v. City of Santa Ana, 336 F.3d 885, 888 (9th Cir. 2003) (internal quotation marks omitted). The party without the burden of persuasion at trial is entitled to summary judgment where it establishes that the party with the burden of persuasion will be unable to prove at least one element of its claim in light of the undisputed facts. Celotex Corp., 477 U.S. at 322-23. This distinction reflects that the burden is ultimately on the proponent of each claim to prove it. Id. (“Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party‘s case, and on
B. The ACPA
The parties’ dispute turns on whether CCLI, by using the domain name multitrack.com to redirect traffic to the website of a related company that was one of MTC‘s competitors, engaged in cybersquatting in violation of the ACPA. CCLI seeks a declaratory judgment that it did not engage in cybersquatting. (Doc. 1.) MTC seeks damages for CCLI‘s alleged cybersquatting violation. (Doc. 11.)
“The [ACPA] establishes civil liability . . . where a plaintiff proves that (1) the defendant registered, trafficked in, or used a domain name; (2) the domain name is identical or confusingly similar to a protected mark owned by the plaintiff; and (3) the defendant acted ‘with bad faith intent to profit from that mark.‘” DSPT Int‘l, Inc. v. Nahum, 624 F.3d 1213, 1218-19 (9th Cir. 2010). Here, the parties’ summary judgment briefing implicates only the second and third elements—the parties dispute whether the Mark (i.e., MULTITRACKS.COM)7 is a “protected mark” and whether CCLI acted in bad faith when using the domain name multitrack.com.
C. “Protected Mark”
“The threshold issue in any action for trademark infringement is whether the words used by a [plaintiff] in connection with his product are entitled to protectiоn.” Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1014 (9th Cir. 1985). The Ninth
A “generic” term is one that refers, or has come to be understood as referring, to the genus of which the particular product or service is a species. It cannot become a trademark under any circumstances. A merely “descriptive” term specifically describes a characteristic or ingredient of an article or service. It can, by acquiring a secondary meaning, i.e., becoming “distinctive of the applicant‘s goods“, become a valid trademark. A “suggestive” term suggests rather than describes an ingredient, quality, or characteristic of the goods and requires imagination, thought, and perception to determine the nature of the goods. A suggestive term is entitled to registration without proof of secondary meaning. An “arbitrary or fanciful” term is usually applied to words invented solely for their use as trademarks and enjoys all the rights accorded to suggestive terms without the need of debating whether the term is “merely descriptive” and with ease of establishing infringement.
Id. at 1014-15 (citations omitted).
Only the first two categories are at issue here. In its summary judgment motion, CCLI argues the Mark is not protected because (1) it “is generic“; or alternatively (2) it is “at best, merely descriptive” and has not “acquired secondary meaning.” (Doc. 57 at 7-8.) Meanwhile, in its cross-motion, MTC “requests that the Court enter summary judgment on Plaintiff‘s claims that [the Mark] is generic or merely descriptive . . . .” (Doc. 61 at 1.)
1. Generic
“Generic terms are those that refer to the genus of which the particular product or service is a species, i.e., the name of the product or service itself.” Advertise.com, Inc. v. AOL Advert., Inc., 616 F.3d 974, 977 (9th Cir. 2010) (internal quotation marks omitted). As noted, a generic term “cannot become a trademark under any circumstances.” Filipino Yellow Pages, Inc. v. Asian J. Publications, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999). For generic terms that have been combined with a top-level domain such as “.com“—what courts call “generic.com” terms—genericness “turns on whether that term, taken as a
a. The Parties’ Arguments
Although CCLI clarifies in a footnote in its motion that it is not seeking an affirmative grant of summary judgment on the issue of genericness—“CCLI contests that [the Mark] is anything more than a generic term . . . but has chosen not to raise this issue on summary judgment” (Doc. 57 at 8 n.3)—CCLI nevertheless argues in its motion that the Mark is generic because “multitracks” is a common music industry term for a class of products. (Id. at 2-3.) In support of this contention, CCLI cites an array of sources, including a dictionary entry and a prior version of MTC‘s website. Id.
In response—and in its separate cross-motion—MTC identifies several reasons why the Mark should be deemed not generic. (Doc. 61 at 11-13; Doc. 69 at 5-7.) For example, MTC argues that although it does not have a federally registered trademark, the PTO‘s determination that the Mark is “entitled to registration on the Principal Register” and the PTO‘s publication оf the Mark for opposition8 both indicate that the Mark is not generic. (Doc. 69 at 5.) MTC also argues that, under Booking.com, generic terms combined with generic domain names like “.com” must be viewed “as a whole” for purposes of trademark analysis (Doc. 69 at 5-6), and that when the Mark is viewed “as a whole,” it is not generic because “[t]here is no ‘class’ or ‘genus’ of good known as a ‘multitrack.com.‘” (Doc. 61
In reply—and in its separate cross-response—CCLI argues that the “mere publication—rather than registration” of the Mark does not prove a lack of genericness. (Doc. 71 at 2 n.2.) CCLI also contends that, under Advertise.com, it is “certainly highly unlikely” that a party can demonstrate that a generic.com term is valid and protectable. (Doc. 68 at 4.) CCLI contends the Mark is generic because “multitracks” form a “genus” that includes not only actual “multitracks” but also all goods and services “directed to or focused on that class of goods.” (Id. at 5-7.) CCLI further argues that a mark is generic if it “is the generic name of any of the goods or services for which registration is sought,” and thus the Mark is generic because MTC operates under the name of “multitracks.com” and sells multritracks. (Id. at 6-7, cleaned up.) Last, CCLI argues that Dr. Cunningham‘s survey is “so critically flawed as to have no probative value” on the issue of genericness. (Id. at 7-8.)
In its cross-reply, MTC argues that CCLI “ignores the most fundamental argument raised by [MTC]“—namely, that there is no “genus” of goods or services known as “multitracks.com,” which, rather than merely “multitracks,” is the composite trademark at issue. (Doc. 70 at 1-2.) MTC also argues that CCLI‘s attempts to discredit Dr. Cunningham are “fallow and ineffectual” because CCLI never deposed or challenged Dr. Cunningham. (Id. at 4-5.) MTC further argues that CCLI relies on outdated cases, such as Advertise.com, that predate Booking.com and its “anti-dissection rule”10 and that CCLI‘s
b. Analysis
Because MTC seeks trademark protection for a mark that has not yet been federally registered (Doc. 11 ¶ 35),11 it bears the burden of proving the Mark is nongeneric. Filipino Yellow Pages, Inc., 198 F.3d at 1146.
MTC‘s “most fundamental argument” is that the Mark cannot, by definition, be generic because “there is no genus of products known as ‘multitracks.com.‘” MTC‘s argument appears to be that “multitracks.com” (i.e., the whole mark)12 cannot identify any genus because a “multitracks.com” is not the name of any discrete product or service.
True, Booking.com also includes language suggesting that the addition of a top-level domain name like “.com” to an otherwise generic term renders that term more distinctive (and therefore less likely to be generic) than the standalone term. For instance, the Court explained that a “generic.com” mark conveys not only “that the generic good or service is offered online” but also a “source-identifying characteristic: an association with a particular website.” Id. at 559. Elaborating on this point, the Court explained that “only one entity can occupy a particular Internet domain name at a time, so a consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.” Id. (cleaned up). Elsewhere, the Court stated that “if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity—another such service—to be a ‘Booking.com.’ We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider.” Id. at 557.
Such language suggests it is quite difficult to demonstrate that a “generic.com” mark is generic—and, consequently, easier for a party seeking trademark protection for such a mark (here, MTC) to prove the mark is nongeneric. But even so, Booking.com holds that whether a “generic.com” mark is generic ultimately turns on how consumers in fact perceive it. Booking.com also rejects the notion—which MTC seems to advocate here—that the inclusion of a top-level domain like “.com” at the end of a purported mark automatically results in a finding of non-genericness.
Alternatively, MTC seeks to meet its burden by proffering various pieces of
Before addressing the sufficiency of this evidence, it is necessary to take note of the relevant summary judgment standard. When, as here, “the moving party bears the burden of proof at triаl, different considerations apply. The moving party . . . ‘must lay out the elements of the claim, cite the facts which it believes satisf[y] these elements, and demonstrate why the record is so one-sided as to rule out the prospect of a finding in favor of the non-movant on the claim.‘” Cabral v. State Farm Fire & Casualty Co., 582 F. Supp. 3d 701, 707 (D. Ariz. 2022) (quoting Hotel 71 Mezz Lender LLC v. Nat. Retirement Fund, 778 F.3d 593, 601 (7th Cir. 2015)). Additionally, when evaluating the sufficiency of the movant‘s proffered evidence, courts must be cognizant of not “crossing into improper credibility determinations.” Id. at 708. “Fortunately, there are a few guideposts,” including that “if the testimony of a witness is necessary to carry the movant‘s burden of proof, we look carefully at whether the witness is unbiased and competent, and whether his testimony is positive, internally consistent, unequivocal, and in full accord with the documentary exhibits. . . . [S]ummary judgment is improper when specific facts are alleged that if proven would call the credibility of the moving party‘s witness into doubt, especially when the challenged testimony is an essential element of the plaintiff‘s case. Indeed, if the credibility of a critical interested witness is even partially undermined in a material way by the non-moving party‘s evidence, summary judgment in favor of the party with the burden of proof should be denied.” Id. at 708-09 (quoting Nationwide Prop. & Cas. Ins. Co. v. Faircloth, 845 F.3d 378, 382 (8th Cir. 2016)). See generally 2 Gensler, Federal Rules of Evidence, Rules and Procedure, Rule 56 (2022) (“The summary-judgment process is different when the moving party has the burden of proof on an issue. . . . Obviously, a
With these principles in mind, and recognizing MTC is moving for summary judgment on an issue as to which it will bear the burden of proof at trial, the Court concludes that MTC‘s proffered consumer-perception evidence is insufficient to compel the entry of summary judgment in MTC‘s favor on the issue of genericness. Starting with Dr. Cunningham, although a factfinder at trial might very well deem her to be a credible witness and accept the results of her survey, she is the antithesis of an unbiased witness—she is MTC‘s paid expert. Additionally, CCLI has retained its own expert, Dr. Iyengar, who has now survived a Daubert challenge and identified various perceived flaws in Dr. Cunningham‘s methodology and conclusions (including that Dr. Cunningham used the wrong sample). Under these circumstances, Dr. Cunningham‘s report is not the sort of evidence that would be sufficient to support a grant of summary judgment in MTC‘s favor on an issue as to which MTC bears the burden of proof. Nationwide Prop. & Cas. Ins. Co., 845 F.3d at 382 (“[I]f the credibility of a critical interested witness is even partially undermined in a material way by the non-moving party‘s evidence, summary judgment in favor of the party with the burden of proof should be denied.“).
Next, MTC argues that the following exchanges from Ross‘s deposition constitute an admission that the Mark оperates as a “source designator” (Doc. 69 at 5)—i.e., that the Mark communicates to consumers the identity of the producer rather than merely the product—and thus cannot be generic:
Q: Looking at Exhibit 17, when you redeemed the song Savior‘s Love from MultiTracks.com, you knew to go to the website www.MultiTracks.com as the source for that song. Correct?
A: Yes.
. . . .
Q: Okay. If someone wanted to acquire the product Playback, one of the goods offered by my client, is the reader of the portion of Exhibit 23 that we‘re looking at informed of the source of origin for that particular good?
A: Yes, it is.
Q: And the source of origin is MultiTracks.com. Correct?
A: Yes.
(Doc. 61-6 at 6, 12.)
The Court disagrees that these passages are sufficient to meet MTC‘s burden as the summary judgment movant. First, and most important, Booking.com holds that “[w]hether any given ‘generic.com’ term is generic . . . depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” Id. at 560-61 (emphasis added). Thus, even if an individual consumer like Ross—or even three individuals like Ross, Whincop, and Olide—perceived the Mark to be a source designator, it is difficult to see how these isolated data points could be deemed to constitute consumer-perception evidence that is “so one-sided as to rule out the prospect of a finding in favor of the non-movant on the claim.” Hotel 71 Mezz Lender LLC, 778 F.3d at 601. Indeed, that is why survey evidence, rather than anecdotes involving individual consumers, is often used to prove (or disprove) genericness in trademark actions. See, e.g., Booking.com, 591 U.S. at 561 n.6 (“Surveys can be helpful evidence of consumer perception . . . .“); id. at 573 (Sotomayor, J., dissenting) (“Under the majority‘s approach, a ‘generic.com’ mark‘s eligibility for trademark protection turns primarily on survey data.“); Orgain, Inc. v. N. Innovations Holding Corp., 2021 WL 1321653, *8 (C.D. Cal. 2021) (“The Teflon survey . . . has since become a widely accepted and persuasive way to
Second, at any rate, the Court agrees with CCLI that Ross‘s statements are ambiguous and could be interpreted by a reasonable factfinder as merely acknowledging that “MTC‘s website, multitracks.com, was the ‘source of origin’ for a particular song and Playback software” that he purchased. (Doc. 68 at 11.) This ambiguity provides an additional reason why Ross‘s testimony is insufficient to meet MTC‘s initial burden.
Turning to Whincop and Olide, both are executives in the worship music industry who have used MTC‘s services for roughly a decade. (Doc. 61-4 ¶¶ 1, 4; Doc. 61-5 ¶¶ 1, 4.) Each avers that “[r]ecord labels and artists all recognize that the MULITITRACKS.COM trademark is associated with Multitracks, LLC and represents the premium platform for worship music resources.” (Doc. 61-4 ¶ 7; Doc. 61-5 ¶ 7.) MTC contends these declarations establish that consumers perceive the Mark as a signifier of “who” MTC is, rather than merely the class of products and services it sells. (Doc. 70 at 9.) CCLI responds that Whincop and Olide “are executives of record labels who supplied sound recordings to MTC—not customers who purchase and use MTC‘s products” and that their declarations thus “lack probative value.” (Doc. 71 at 4-5.)
The Whincop and Olide declarations are insufficient to meet MTC‘s initial burden as the summary judgment movant. The record establishes—and, at a minimum, a juror could conclude when all reasonable inferences are resolved in CCLI‘s favor—that Whincop and Olide use MTC‘s services more like self-interested wholesalers than traditional consumers. (Doc. 61-4 ¶ 5 [declaring that MTC‘s services, “which include
Finally, to the extent MTC argues that the declaration of Edwards, its own founder and CEO (Doc. 61-1 at 1 ¶ 1), qualifies as conclusive and “unrebutted” evidence that MTC offers various goods and services that cannot accurately described as a “multi-track” (Doc. 61 at 14; Doc. 70 at 6-8), this argument fails to establish an entitlement to summary judgment on the issue of genericness for two reasons. First, as noted, Booking.com holds that the genericness inquiry ultimately “depends on whether consumers in fact perceive that [generic.com] term as the name of a class.” Id. at 560-61. Because Edwards‘s declaration does not purport to measure or assess consumer perception, it is not the sort of evidence that could meet MTC‘s significant evidentiary burden as the party seeking summary judgment on an issue as to which it bears the burden of proof. Second, at any
D. Descriptive
1. The Parties’ Arguments
CCLI seeks summary judgment on the issue of whether MTC has any “protectable” “trademark rights” in the Mark. (Doc. 57 at 7.) CCLI argues the Mark is unprotected because it is “merely descriptive of multitrack or multitracks products” and has not “acquired secondary meaning.” (Id. at 7-8.) In support of the contention that the Mark is merely descriptive, CCLI cites several websites that contain the word “multitrack” in the title, such as hymnmultitracks.com and multitracksforworship.com. (Id. at 2-3.)
In response—and in its cross-motion for summary judgment—MTC appears to argue that, as with genericness, CCLI improperly “focuse[s] on one element of [MTC‘s] composite mark” in its effort to show that the Mark is descriptive. (Doc. 61 at 13. See also Doc. 69 at 5-6.) MTC also argues that Ross‘s testimony demonstrates that the Mark is not merely descriptive for the same reasons outlined in relation to genericness. (Doc. 69 at 5-6; Doc. 61 at 14-15.) MTC further argues that the Mark is not “merely descriptive” because “[MTC] offers goods and services under the Mark that have nothing to do with anything that can be described as a ‘multi-track,’ including ‘a panoply of goods and services under the Mark—ranging from software, to licensing, to content—for which the word ‘multi-track’ does not ‘describe’ a quality, characteristic, or ingredient.” (Doc. 69 at 6. See also Doc. 61 at 13-14.)
In cross-reply, MTC reiterates its definition for descriptiveness and emphasizes that CCLI “fails to rebut the overwhelming evidence that the Mark does not ‘convey an immediate idea of the ingredients, qualities, or characteristics of the 20,000+ songs, array of technological products thаt allow musicians to rehearse, produce, and perform more efficiently, create custom charts for songs, engage in dynamic performances with the use of presentation aids and lyric projections, license unique ‘sounds’ such as ambient pads, Kemper Profiles, drum samples, and sound beds, or the host of training, technical, and support services offered by [MTC] under the Mark.” (Doc. 70 at 10.)
2. Analysis
As noted, there are four categories of terms with respect to trademark protection. Surgicenters of Am., Inc., 601 F.2d at 1014. The second category, “descriptive,” is at issue here: “A merely ‘descriptive’ term specifically describes a characteristic or ingredient of an article or service.” Id. A mark is also descriptive if it describes “the intended purpose,
Courts have not hesitated to characterize “generic.com” marks as descriptive. For example, the district court in Booking.com concluded that “Booking.com” was descriptive. 278 F. Supp. 3d at 918. The PTO didn‘t appeal this determination and the Supreme Court didn‘t disturb it. Booking.com, 591 U.S. at 555. See also Tranik Enterprises, Inc. v. Fulda, 2017 WL 11150925, *4 (C.D. Cal. 2017) (“Taken together, ‘AuthenticWatches.com’ is a descriptive mark and may be entitled to protection.“); In re Steelbuilding.com, 415 F.3d 1293, 1299-1300 (Fed. Cir. 2005) (concluding that “STEELBUILDING.COM” was a descriptive mark because “steel buildings” were a “significant feature of applicant‘s services“).
Here, the record clearly establishes that MTC sells multitrack products. (Doc. 61-1 ¶ 4 [Edwards: “[M]y company does offer tracks as a discrete product . . . .“]; Doc. 57-38 at 4 [Edwards referring to “[t]he MultiTracks that you download from our website“]). It follows that the Mark—“Multitracks.com“—“describes a characteristic or ingredient” of at least some of the goods and services offered by MTC. Surgicenters of Am., Inc., 601 F.2d at 1014. In fact, there is evidence that “multitracks” comprise a significant portion of MTC‘s sales. For example, MTC, describing itself on its website, stated that “MultiTracks.com was founded to resource worship leaders on the concept of running
Consequently, a reasonable viewer of the Mark could see it as “conveying an immediate impression” of a product MTC provides—namely, that the “tracks” MTC indisputably offers are designed in a certain way suitеd to the performance of live worship music. In other words, they are “multitracks.” This common-sense conceptualization is further supported by the record. For example, CCLI identifies a litany of websites employing some variant of the term “multitrack” or “multitracks” in their domain names. (Doc. 57 at 3, citing Docs. 57-11 through 57-19 [hymnmultitracks.com, multitracksforworship.com, flymultitracks.com, vocalmultitrack.com, multitracksapp.com, multitrackmaster.com, gospelmultitracks.com, vocalmultitrack.com, multitracksmusic.com, multitrackstudio.com, and multitracksapp.com]). It appears that many if not all these websites offer downloadable multitrack products and services. (See, e.g., Doc. 57-11 at 3 [website for https://hymnmultitracks.com, which includes a tab entitled “Buy All 20 Multitracks” for $150].) That these websites employ some version of the word “multitrack” in their domain names supports the conclusion that the term is being used to describe those products and services.
MTC‘s arguments do not affect this conclusion. MTC‘s preliminary argument is that CCLI fails to consider the Mark “as a whole” when arguing that it is descriptive. Although MTC is correct that courts must consider the mark “as a whole” when evaluating descriptiveness, the analysis also differs from the genericness context—where the mark as a whole must name a specific class—because a mark may be descriptive if, when taken as a whole, it merely “conveys an immediate idea” of the characteristics, function, or purpose
In fact, some courts have found that the addition of top-level domain names like “.com” may add descriptive content to the mark. In re Steelbuilding.com, 415 F.3d at 1299-1300 (“[T]he [.com] indicator describes a significant feature of applicant‘s services, namely, the Internet commerce connection. Thus, the . . . applicant‘s mark is ‘merely descriptive’ for the on-line services specified in the application.“); Tranik Enterprises, 2017 WL 11150925 at *4 (“The Court now finds that the Plaintiff‘s mark is descriptive, not generic. The word ‘authentic’ describes a specific characteristic of the watches sold by the Plaintiff. Further, the suffix ‘.com’ describes the manner in which the Plaintiff sells watches; namely, that the watches are sold on the internet. The generic aspect of the mark, ‘Watches,’ has been sufficiently described in the mark itself to qualify as a descriptive mark. Taken together, ‘AuthenticWatches.com’ is a descriptive mark and may be entitled to protection.“). Cf. Booking.com, 591 U.S. at 559 (noting that the addition of top-level domain names like .com “might also convey to consumers a source-identifying characteristic: an assoсiation with a particular website“). Consequently, when analyzing whether the Mark is descriptive, the Court treats “multitracks.com” and the term “multitracks” as functionally equivalent.
MTC‘s core argument is that because it offers products and services that are unrelated to multitracks, the Mark cannot be “merely descriptive.” This argument is foreclosed by settled law: “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant‘s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 (Fed. Cir. 2004). See also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346 (Fed. Cir. 2001) (“Dial–A–Mattress argues that its mark is not descriptive because, although it suggests the nature of its services, it does not describe their full scope and extent. This argument is unavailing because the mark need not recite each feature of the relevant goods or services in detail to be descriptive.“). Indeed, a mark may be found descriptive if it describes any of the goods and/or services provided under the mark. 1 McCarthy on Trademarks and Unfair Competition § 11:51 (5th ed.) (“The registration should be refused if the term is descriptive of any of the goods for which registration is sought.“) (emphasis added); In Re Analog Devices Inc., 6 U.S.P.Q.2d 1808 (T.T.A.B. 1988) (“[I]t is a well settled legal principle that where a mark may be merely descriptive of one or more items of goods in an application but may be suggestive or even arbitrary as applied to other items, registration is properly refused if the subject matter for registration is descriptive of any of the goods for which registration is sought.“). In short, even if MTC offered some goods and services that are unrelated to multitracks, the Mark could remain descriptive of MTC‘s goods and services.13
For these reasons, MTC has failed to demonstrate that the Mark is not descriptive as a matter of law.14 The Court thus denies MTC‘s motion for summary judgment on that issue and turns to CCLI‘s motion for summary judgment on the issue of secondary meaning.15
“Although descriptive terms generally do not enjoy trademark protection, a descriptive term can be protected provided that it has acquired ‘secondary meaning’ in the minds of consumers, i.e., it has ‘become distinctive of the [trademark] applicant‘s goods in commerce.‘” Filipino Yellow Pages, 198 F.3d at 1147. “Secondary meaning is directed towards the consumer‘s attitude about the mark in question: does it denote to him a single thing coming from a single source? In other words, an applicant must show that in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” Snap Inc. v. Vidal, 750 F. Supp. 3d 1120, 1156 (C.D. Cal. 2024) (cleaned up). The party seeking trademark protection bears the burden of proving secondary meaning. Booking.com, 278 F. Supp. 3d at 919, overruled on other grounds by Booking.com, 591 U.S. 549.
In determining whether a descriptive mark has secondary meaning, courts employ a “vigorous evidentiary” standard involving a variety of factors. Perini Corp. v. Perini Const., Inc., 915 F.2d 121, 125 (4th Cir. 1990). Those factors include direct consumer testimony; survey evidence; exclusivity, manner, and length of use of a mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant. P & P Imports LLC, 46 F.4th at 961. “Because of the intensely factual nature of the secondary meaning inquiry, summary judgment is generally disfavored.” Id. (cleaned up).16
CCLI argues that even if the Mark is descriptive rather than generic, “no reasonable juror could conclude that MTC has satisfied the rigorous evidentiary standard required to prove that [the Mark] has acquired distinctiveness.” (Doc. 57 at 7-12.) In response,
Below, the Court considers the parties’ arguments as to each factor before considering the totality of the factors.
1. Survey Evidence and Consumer Testimony
a. The Parties’ Arguments
CCLI argues that Dr. Cunningham report is irrelevant to the secondary meaning analysis because she “conducted only a genericness survey” and admitted that the “entire discussion of secondary meaning is a red herring[]” to her analysis. (Doc. 57 at 8-9, citing Doc. 57-32 at 6.) Alternatively, CCLI argues that “[e]ven if the report were not a red herring to the secondary-meaning analysis,” the report is fatally flawed for the reasons outlined above. (Id. at 9.) With respect to consumer testimony, CCLI argues that the Olide and Whincop declarations “unwittingly undermine MTC‘s attempt to establish secondary meaning” because both declarants appear to suggest that they do not associate the Mark with the official company name of “MultiTracks.com” and therefore “do not know the source of MTC‘s products.” (Id. at 9-10.)
In response, MTC argues that CCLI‘s “unsupported assertion that Dr. Cunningham‘s report ‘has no relevance’ is plainly absurd,” because “Dr. Cunningham‘s survey shows that 71% [of] the Teflon survey respondents designated the Mark a brand name, well above the threshold needed to support a finding of secondary meaning.” (Doc. 69 at 8-9.) MTC also argues that CCLI‘s attempt to undermine its consumer testimony is “hair-splitting” and “shows the weakness of [CCLI‘s] argument” and that “[t]he declarations of [] Whincop and Olide, and the ‘source of origin’ admissions of Mr. Ross buttress Dr. Cunningham‘s conclusions and constitute direct evidence that Defendant‘s Mark has acquired distinctiveness.” (Id. at 9-10, cleaned up.)
In reply, CCLI argues that MTC fails to address Dr. Cunningham‘s concession. (Doc. 71 at 3.) CCLI also reiterates its contention that the Cunningham report‘s
b. Analysis
Consumer surveys and testimony may provide the strongest evidence of secondary meaning. Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9th Cir. 1989) (“An expert survey of purchasers can provide the most persuasive evidence of secondary meaning.“). For the reasons that follow, the Court concludes that the evidence, when construed in the light most favorable to MTC, creates a genuine dispute of material fact in relation to this factor.
First, although CCLI relies heavily on Dr. Cunningham‘s statement that “the entire discussion of secondary meaning is a red herring,” Dr. Cunningham offered this statement in her rebuttal report in the context of rebutting the criticisms of Dr. Iyengar. (Doc. 57-32 at 6-7.) A reasonable juror could conclude, when considering Dr. Cunningham‘s challenged comment in context and in conjunction with some of the other passages in her rebuttal report, that Dr. Cunningham did not concede her survey was irrelevant to the issue of secondary meaning—quite the opposite, she emphasized that some scholars consider “secondary meaning and genericness as opposite sides of the same coin” because “[t]hey approach the same issue—namely, whether a term primarily possesses or lacks trademark significance from two different directions.” (Id. at 6.) Thus, Dr. Cunningham opined that it would be “reasonable to hypothesize that when a high percentage of ‘relevant consumers’ consider a name to designate a brand (or trademark) in a genericism survey, similar results may be obtained if one were to survey ‘relevant consumers’ to assess whether that trademark (or brand) had achieved secondary meaning.” (Id. at 6-7.) As a result, Dr. Cunningham‘s report serves as evidence supporting MTC‘s position on the issue of secondary meaning.
Indeed, although “genericness and secondary meaning are different concepts, they are not easily disentangled.” Snyder‘s Lance, Inc. v. Frito-Lay N. Am., Inc., 542 F. Supp. 3d 371, 400 n.35 (W.D.N.C. 2021). Thus, “if a Teflon-type survey shows that a significant percentage of respondents identify a designation as a ‘brand name,’ that is not only evidence that it is not a generic name, it is also evidence that the designation has acquired a secondary meaning.” 2 McCarthy on Trademarks and Unfair Competition § 12:14 (5th ed.). See also Mar. Madness Athletic Ass‘n, L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786, 809 (N.D. Tex. 2003), aff‘d sub nom. Mar. Madness Athletic Ass‘n LLC v. Netfire Inc., 120 F. App‘x 540 (5th Cir. 2005) (finding a term had acquired secondary meaning on the basis of the results of a Teflon survey). Furthermore, although Dr. Cunningham‘s survey may not have fully carried the day when MTC sought to rely on it as evidence supporting MTC‘s request for summary judgment on an issue as to which MTC bore the burden of proof, the tables are turned here—CCLI is the only party that has moved for summary judgment on the issue of secondary meaning, so all reasonable inferences must now be resolved in MTC‘s favor.
Second, for similar reasons, although the statements of Olide and Whincop have various features that preclude them as serving as the basis for an affirmative grant of summary judgment in MTC‘s favor on the issue of genericness, a factfinder could still conclude, when all reasonable inferences are resolved in MTC‘s favor, that they provide at least some additional evidence that consumers perceive the Mark to have secondary meaning. Application of Automatic Radio Mfg. Co., 404 F.2d 1391, 1395 (C.C.P.A. 1969) (finding wholesaler affidavits probative of secondary meaning).17
a. The Parties’ Arguments
CCLI argues that MTC has not exclusively used the Mark, because “it is undisputed that numerous entities have used the word ‘multitracks’ to describe their products—and even used the words ‘multitracks’ and ‘.com’ in their domain names.” (Doc. 57 at 10.) CCLI further argues that “[g]iven the highly descriptive nature of a generic.com mark, the use of such a mark for even multiple decades is insufficient to prove that it has acquired distinctiveness.” (Id., cleaned up.)
In response, MTC argues that its “substantially exclusive and continuous use of the Mark for over a decade weighs strongly in favor of a finding of secondary meaning” and “has established [MTC] as one of the leading providers of licensed Christian music and related products and services to consumers across the United States and internationally.” (Doc. 69 at 10.)
In reply, CCLI argues that use of a mark for over a decade does not strongly weigh in favor of secоndary meaning where, as here, the mark is “highly descriptive.” (Doc. 71 at 5.) CCLI also reiterates that many entities have used the word “multitracks” to describe their products and used the words “multitracks” and “.com” in their domain names. (Id.)
b. Analysis
Evidence of “substantially exclusive and continuous use” of a mark “in commerce for the five years before the date on which the claim of distinctiveness is made” may provide prima facie evidence of secondary meaning.
Here, the undisputed evidence shows that MTC has made continuous use of the Mark since roughly 2012. (Doc. 61-1 ¶ 2 [“Since 2012, my company has used the trademark ‘MULTITRACKS.COM.‘“]. See also Doc. 61-1 at 13, 15-16, 18-20, 22-36 [showing MTC‘s use of the Mark at conferences, in advertisements, and on social media since at least 2014]). The record does not support, however, that MTC‘s use during this period was “substantially exclusive.” As CCLI notes, many entities have used various combinations of “multitracks” and “.com” in their domain names to describe the goods and services they provide. (Docs. 57-10 through 57-18.) Notably, MTC does not address this issue or explain why its use of the Mark could be considered “substantially exclusive” despite this third-party usage. Consequently, this factor weighs against a finding of secondary meaning.
3. Amount And Manner Of Advertising
a. The Parties’ Arguments
CCLI argues that MTC‘s advertising expenditures “pale in comparison” to those of the plaintiff in Booking.com. (Doc. 57 at 10.) CCLI also argues that MTC has “failed to produce evidence establishing how many consumers were actually exposed to the purported mark as a result of MTC‘s advertising.” (Id.) Last, CCLI argues that because “the advertising examples produced by MTC are replete with a composite mark containing a logo next to ‘Multitracks.com’ . . . one cannot disentangle the source-identifying impression of this composite mark from MULTITRACKS.COM alone.” (Id. at 10-11.)
In response, MTC argues that the undisputed evidence “shows the tremendous
In reply, CCLI argues that “[c]ontrary to MTC‘s claim, CCLI does—and has—disputed MTC‘s amount and manner of advertising.” (Doc. 71 at 6.) CCLI also argues that Edwards‘s statements purporting to indicate that “all” record labels and artists recognize the Mark fails to establish consumer perception “and in any event, are entitled to no weight—otherwise every litigant could establish secondary meaning by submitting a self-serving declaration of this sort.” (Id.) CCLI further argues that “MTC‘s ‘social media following’ is of no help because its social media sites all prominently display MTC‘s composite mark—not the purported MULTITRACKS.COM mark—and even prominently display ‘MultiTracks’ without the ‘.com’ suffix.” (Id.) Last, CCLI argues that MTC has a duty to explain why its marketing expenditures, “which are ‘microscopic’ in comparison to those of Booking.com are nonetheless sufficient to establish secondary meaning under Booking.com.” (Id.)
b. Analysis
To demonstrate secondary meaning based on advertising, the advertising must be of a “nature and extent such as to create an association” with the advertiser‘s goods. Dep‘t of Parks and Recreation v. Bazaar Del Mundo, 448 F.3d 1118, 1128 (9th Cir. 2006). The mere “large expenditure of money does not in itself create legally protectable rights.” Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 800 (9th Cir. 1970) (citation omitted). The “true test of secondary meaning” is the effectiveness of the advertising effort. Int‘l Jensen v. Metrosound U.S.A., 4 F.3d 819, 824 (9th Cir. 1993). “The effectiveness of this advertising can be evident from the success of product sales and need not be directly proven.” Appliance Liquidation Outlet, L.L.C. v. Axis Supply Corp., 105 F.4th 362, 378 (5th Cir. 2024) (cleaned up).
When all reasonable inferences are resolved in MTC‘s favor as the non-movant, a juror could find that MTC‘s advertising efforts support the Mark having secondary meaning. MTC has spent millions of dollars in advertising and marketing expenditures since it began using the Mark. (Doc. 69 at 10. See also Doc. 59-1 [to be refiled on public docket]). This alone provides at least some evidence of secondary meaning. Snap Inc., 750 F. Supp. 3d at 1157 (“The limited evidence of Snap‘s [tens of millions in] advertising expenditures . . . is superficially probative of secondary meaning.“).
MTC also provides more than its raw expenditures. MTC offers a variety of documents demonstrating the multiple avenues through which it carried out its advertising and marketing efforts. For example, MTC provides documents showing its advertisements and marketing efforts directed toward various Christian music award shows, magazines, conferences, and other events—and through its own social media platforms. (Doc. 61-1 at 12-67.) The efforts extend as far back as 2014 (id. at 33) and appear to grow more frequent and substantial with time—something to be expected if those efforts were bearing fruit. MTC further provides undisputed evidence that these efforts resulted in a social media following of over 261,000 people, more than 500,000 customer accounts, and 340,000 unique visits to MTC‘s website. (Doc. 61-1 ¶¶ 12-13.) These facts support MTC‘s contention that its efforts have been effective at creating an association between the Mark and MTC, which is the “true test” of secondary meaning. Int‘l Jensen, 4 F.3d at 824. See also Booking.com, 278 F. Supp. 3d at 919 (concluding that “the number of visual
CCLI‘s arguments do not alter this conclusion. First, that MTC‘s advertising expenditures “pale in comparison” to those in Booking.com does not undermine the effectiveness of those efforts. CCLI provides no authority—nor could the Court find any—suggesting there is a required minimum expenditure. Nor would such a one-size-fits-all rule make sense given the variety of ways in which one industry may differ from another. Appliance Liquidation Outlet, 105 F.4th at 378 (“ALO has presented evidence of advertising in amounts reasonable for a business of its size. Its sole location is adorned with a massive billboard displaying ‘Appliance Liquidation Outlet’ prominently. It also partners with local sports teams to display its name at games. These advertising efforts have ‘creat[ed] an association in the minds of consumers’ between ALO‘s store and the words ‘Appliance Liquidation Outlet.‘“); Comm. for Idaho‘s High Desert, Inc. v. Yost, 92 F.3d 814, 822 (9th Cir. 1996) (affirming a district court‘s decision that a nonprofit‘s limited advertising expenditures weighed in favor of secondary meaning: “While the type of ‘advertising’ identified by the district court would be unusual in a trademark dispute involving competing for-profit businesses, it is not inappropriate in a dispute between two non-profit advocacy groups“). CCLI provides nothing in its motion in the way of argument or evidence to suggest that MTC‘s expenditures are insufficient.
CCLI‘s next argument is that MTC‘s frequent use of its composite mark (“CM“) undermines any claim that the raw Mark has secondary meaning. When CCLI refers to MTC‘s composite mark, it refers to the following:
According to CCLI, because MTC often uses the CM in its promotional materials, this diminishes the likelihood that consumers associate the raw Mark with MTC, as “one cannot disentangle the source-identifying impression of this composite mark from
Putting aside the non-precedential nature of In re Benjamin, the Court is not convinced that it undermines MTC‘s proffered evidence of advertising and marketing efforts, particularly at the summary judgment stage where all reasonable inferences must be resolved in MTC‘s favor. Unlike in In re Benjamin, where the TTAB did not know how frequently the plaintiff used the raw mark, the record here includes a substantial number of documents showing MTC‘s use of the Mark. For example, the record demonstrates that MTC used the Mark as its username on Facebook and Instagram, where it interacts with its hundreds of thousands of followers. (Doc. 61-1 at 22-36.) See the following example from MTC‘s Instagram:
(Doc. 71-3 at 2.)
See also the following examples from MTC‘s Facebook pages at two different periods:
(Doc. 61-1 at 29 [left]; Doc. 71-1 at 2 [right].)
In none of these examples does MTC precisely use the CM. In the first example from Instagram and the more recent еxample from Facebook, MTC‘s profile picture contains a negative-colored version of the graphic of the CM but uses the Mark separate and apart from that image. In the earlier example from Facebook, MTC appears not to use any portion of the CM and prominently displays the Mark apart from the logo to its left. A reasonable factfinder could conclude that MTC‘s use of the raw Mark as its username, separate from the CM, is evidence of usage that could affect consumer association of the Mark with MTC. MTC also uses the raw Mark in a variety of other materials that, although not strictly advertisements, constitute examples of marketing and therefore could be taken to affect consumer association of the Mark with MTC. For example, MTC includes various articles extolling the virtues of MTC, all using the Mark rather than the CM. (Doc. 61-1 at 65-67, 69-103.)
At bottom, when all reasonable inferences are resolved in MTC‘s favor, a factfinder could conclude that the third factor favors a finding of secondary meaning.
4. Amount Of Sales And Number Of Customers
a. The Parties’ Arguments
CCLI argues that MTC has “produced information only regarding the number of accounts and unique visitors on its website,” which is, by Edwards‘s own admission, “not necessarily indicative of sales.” (Doc. 57 at 11.) “Moreover, MTC failed to produce evidence regarding its market share or where [its] services rank in the industry in terms of sales.” (Id., cleaned up.)
In response, MTC argues that in addition to its 500,000 customer accounts, it serves over 50,000 churches across the country. (Doc. 69 at 11.) MTC also argues that CCLI‘s
In reply, CCLI argues that “MTC still fails to point to any evidence establishing its actual amount of sales, rather than ‘customer accounts’ and website ‘visits.‘” (Doc. 71 at 6.) “A reasonable juror cannot ‘infer secondary meaning’ by ‘bridging [MTC‘s] evidentiary gaps with speculation and conjecture—an impermissible practice incapable of precluding summary judgment.” (Id.)
b. Analysis
MTC‘s has failed to provide evidence of its sales volume—instead, it apparently seeks to argue that its number of customer accounts (500,000) and the number of churches it services (over 50,000) are proxies for sales. On the one hand, such figures do provide some support for MTC‘s position that the Mark has acquired secondary meaning, at least when all reasonable inferences are resolved in MTC‘s favor as the non-movant. 2 McCarthy on Trademarks and Unfair Competition § 15:49 (5th ed.) (“The logical inference is: The larger a company and the greater its sales, the greater the number of people who have been exposed to this designation used as a trademark. The inference is that these buyers associate the designation with a single source.“). CCLI appears to contend that Edwards conceded that customer accounts are unrelated to sales (Doc. 57 at 11), but this mischaracterizes his statement. In context, Edwards‘s statement is simply an acknowledgement that not every person who creates an account goes on to buy something. (Doc. 57-2 at 10-11.) This obvious fаct does not mean, however, that the number of accounts created on MTC‘s website is irrelevant when assessing sales—it merely reflects that the customer-account figure is an imperfect proxy for sales.
On the other hand, even accepting that MTC‘s proffered evidence may serve as an imperfect proxy for sales, that evidence lacks context. For sales figures (or in this case, customer numbers) to be indicative of secondary meaning in a particular industry, they must be placed in the context of that industry. RVC Floor Decor, Ltd. v. Floor & Decor Outlets of Am., Inc., 2024 WL 2847139, *14 (E.D.N.Y. 2024) (“Plaintiff failed to place its
5. Established Place In The Market
a. The Parties’ Arguments
CCLI omits any mention of this factor in its motion.
In response, MTC argues that CCLI “cannot dispute that [MTC] has been the established market leader for over a decade, and indeed it makes no effort to do so in its motion.” (Doc. 69 at 11, citation omitted.)
In reply, CCLI argues that the Ninth Circuit has provided no guidance on what this factor means or how it differs from the others, but “[w]hatever the phrase means, Mr. Edwards‘[s] self-congratulatory legal conclusions about his company‘s place in the market do not establish a genuine issue of material fact.” (Doc. 71 at 6-7.)
b. Analysis
Although MTC does not provide direct evidence of its market share, MTC does offer evidence—in the form of publications, awards, and consumer testimony—that it is an industry leader that has achieved wide recognition in the market. (See, e.g., Doc. 61-1 at 12-67.) This provides some evidence that MTC has an “established place in the market.” CCLI offers nothing to contradict this inference. CCLI appears only to argue that because the Ninth Circuit has not offered guidance on how to apply this factor, it cannot serve as a basis for avoiding summary judgment. The Court disagrees, as the Ninth Circuit‘s decision to enumerate this as a separate factor suggests it may have some independent value in the secondary-meaning calculus—otherwise, there would have been no reason to enumerate it.
6. Intentional Copying
a. The Parties’ Arguments
CCLI argues that “[t]here is zero evidence that third parties have intentionally copied the purported mark MULTITRACKS.COM” and “[i]t is not clear how such intentional copying would be possible, given that ‘multitracks’ and ‘.com’ are nothing more than the generic and/or descriptive names for a class of products that can be found online.” (Doc. 57 at 11.)
In response, MTC argues that CCLI misstates the relevant law—namely, that courts “should look to whether [CCLI]—not third parties—copied the Mark.” (Doc. 69 at 11.) MTC thus argues that an inference of secondary meaning arises because CCLI “knowingly copied [MTC‘s] Mark—i.e., purchased a nearly identical domain name to redirect consumers away from [MTC‘s] products and services.” (Id. at 11-12.)
In reply, CCLI argues that by obtaining the multitrack.com domain name “to accurately describe its own website used to promote the class of products at issue,” it did not copy the Mark. (Doc. 71 at 7.) “Moreover, in the absence of ‘precise copying’ for which there was ‘no logical reason’ except ‘an attempt to realize upon a secondary meaning that is in existence,’ a factfinder cannot infer the existence of secondary meaning.” (Id.)
b. Analysis
“[P]roof of copying strongly supports an inference of secondary meaning.” Vision Sports, Inc., 888 F.2d at 615. This is because “[t]here is no logical reason for the precise copying save an attempt to realize upon a secondary meaning that is in existence.” Audio Fid., Inc. v. High Fid. Recordings, Inc., 283 F.2d 551, 558 (9th Cir. 1960). On the other hand, “close copying does not necessarily indicate that the defendant has attempted to capitalize on the secondary meaning of plaintiff‘s trademark or trade dress because there may have been many other motivations for defendant‘s actions.” Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 716 F.2d 854, 860 (11th Cir. 1983) (cleaned up). For example,
Here, CCLI acquired the domain name multitrack.com for the purpose of having it redirect users to Loop Community, which sold products and services in competition with MTC. (Doc. 61-6 at 10.) The CCLI representative who acquired the domain name, Ross, was aware of the existence of MTC‘s website, Multitracks.com, and the goods and services offered there. (Id. at 11.). The domain name was not, however, a precise copy of the Mark—instead, it was a close copy that omitted the final “s” from the Mark. At trial, the factfinder will have to determine whether this close-copying effort constituted an improper attempt to capitalize on the goodwill that MTC had already established in the Mark (as MTC contends) or a mere attempt to accurately describe Loop Community‘s offerings (as CCLI contends). For present purposes, the Court must resolve this factual dispute in MTC‘s favor, and thus the “intentional copying” factor favors a finding of secondary meaning.
7. Unsolicited Media Coverage
a. The Parties’ Arguments
CCLI argues that MTC‘s nine proffered publications fail to establish substantial media coverage because “[t]wo of those publications focus on Edwards himself, rather than his company and thus carry no weight,” “[t]wo of the remaining seven use only the composite mark and thus have no probative value,” and “[t]hree of the remaining five show that MTC itself, and consumers, refer to MTC as ‘Multitracks’ rather than
In response, MTC argues that its nine proffered articles “show that the Mark enjoys unsolicited media coverage” and that “instead of disputing the facts, [CCLI] relies on non-reported, non-precedential, and non-binding authority to challenge the sufficiency of this evidence.” (Doc. 69 at 12.)
In reply, CCLI argues that MTC failed to address the “fundamental deficiencies” that CCLI identified with the nine publications. (Doc. 71 at 7-8.) CCLI also argues that many of the publications contain only the CM. (Id.) Last, CCLI reiterates its contention that the mention of the Mark in nine publications over the span of ten years is “insufficient to establish secondary meaning as a matter of law.” (Id. at 8.)
b. Analysis
MTC offers nine publications in an attempt to demonstrate “unsolicited media coverage” of the Mark. (Doc. 57-38 at 2-23; Doc. 61-1 at 48-61.) All of these publications use the Mark in the context of discussing MTC and/or its products and services. (Id.) This provides at least some evidence of unsolicited media coverage.
CCLI nevertheless contends that because two of the publications focus on Edwards rather than on MTC, they carry no weight. This argument lacks merit, at least at summary judgment. Because those publications explicitly cover Edwards‘s role in the context of discussing MTC‘s goods and services, a reasonable factfinder could construe them as evidence of unsolicited media coverage concerning MTC. CCLI also argues that two of the publications use only the CM and thus lack probative value. But although at least one of the referenced publications employs the CM, it also employs the raw Mark. (Doc. 57-38 at 4-5.)
At bottom, although MTC‘s showing of unsolicited media coverage is not overwhelming, a reasonable juror could view this factor as favoring MTC.
Balancing all of these factors, the Court concludes that MTC has presented enough evidence to create genuine factual dispute as to whether the Mark has acquired secondary meaning. A reasonable factfinder could conclude that many of the relevant factors, including the most important factors, favor MTC, and “summary judgment is generally disfavored” with respect to “the secondary meaning inquiry” due to its “intensely factual nature.” P & P Imports LLC, 46 F.4th at 961. See generally Narayan v. EGL, Inc., 616 F.3d 895, 901 (9th Cir. 2010) (“[I]f we are to have multiple factors, we should also have a trial. A fact-bound approach calling for the balancing of incommensurables, an approach in which no ascertainable legal rule determines a unique outcome, is one in which the trier of fact plays the principal part. That there is a legal overlay to the factual question does not affect the role of the trier of fact.“) (cleaned up).
F. Bad Faith
As noted, bad faith is an essential element of a cybersquatting claim under the ACPA. DSPT Int‘l, Inc. v. Nahum, 624 F.3d 1213, 1218-19 (9th Cir. 2010) (“The [ACPA] establishes civil liability . . . where a plaintiff proves that . . . the defendant acted ‘with bad faith intent to profit from that mark.‘“). CCLI argues it is entitled to summary judgment on the issue of bad faith: “Even if MTC could prove that MULTITRACK[S].COM has acquired distinctiveness (it has not), CCLI is still entitled to judgment as a matter of law because MTC cannot prove that CCLI registеred the multitrack.com domain name with a bad-faith intent to profit from MTC‘s purported mark.” (Doc. 57 at 12.)
As an initial matter, CCLI‘s focus on whether it acted with bad faith when “registering” the domain name multitrack.com is imprecise and potentially confusing. Under the ACPA, three different categories of activity are potentially actionable as cybersquatting: (1) registering a domain name in bad faith; (2) trafficking in a domain name in bad faith; and (3) using a domain name in bad faith. See
Presumably for this reason, both sides’ pleadings in this case seem to focus on “use” rather than “registration.” For example, although CCLI‘s complaint states that CCLI “registered” the domain name at issue in 2021 (Doc. 1 ¶¶ 19, 21)—an assertion that is difficult to reconcile with GoPets—the ultimate form of declaratory relief sought in the complaint is “an order declaring that CCLI‘s use of the domain name multitrack.com is not unlawful, within the meaning of the ACPA.” (Doc. 1 at 8, emphasis added.) Likewise, in its counterclaim for cybersquatting under the ACPA, MTC alleges that CCLI ”uses and traffics in the Domain Name with a bad faith intent.” (Doc. 11 at 9 ¶ 10, emphasis added.)
With this backdrop in mind, it is not entirely clear that the Court even possesses authority to grant summary judgment on the issue raised in CCLI‘s motion, i.e., whether “CCLI registered the multitrack.com domain name with a bad-faith intent to profit.” (Doc. 57 at 12.) After all, Rule 56(a) only allows a court to grant summary judgment on a “claim or defense” or “part of [a] claim or defense,” and the specific issue raised in CCLI‘s motion does not appear to be a claim or defense (or even part of a claim or defense) in this case.
At any rate, in keeping with the principle of party presentation, United States v. Sineneng-Smith, 590 U.S. 371, 375-76 (2020), the Court has done its best in the passages below to evaluate the parties’ arguments regarding the issue of bad-faith registration.
1. Trademark Rights
The first statutory factor is “the trademark or other intellectual property rights of the person, if any, in the domain name.”
a. The Parties’ Arguments
CCLI argues that because it “has the right—like any purveyor of goods and services—to use generic and/or descriptive terms (“multitrack” and “.com“) to describe its products,” the first factor weighs against bad faith. (Doc. 57 at 12-13.)
In response, MTC argues that because CCLI offers no evidence that it “has ever used “multitrack.com” as a trademark or owns any intellectual property rights in the domain name,” the Court should, consistent with Lahoti, “imply [b]ad faith.” (Doc. 69 at 12.)
In reply, CCLI argues that MTC “fails to dispute CCLI‘s right to use generic and/or descriptive terms to describe its products.” (Doc. 71 at 8.) CCLI also argues that MTC‘s reliance on Lahoti is misplaced because the full quotation makes clear that courts will imply bad faith only where the party “never used the [domain name] in connection with a bona fide offering of goods and services,” which CCLI indisputably has. (Id.)
b. Analysis
Although CCLI asserts that it has the “right” to use the domain name multitrack.com to describe its own goods and services, the relevant inquiry under the first factor is simply whether the allegedly infringing party asserts trademark rights in the domain name, which CCLI does not. See, e.g., Blair v. Automobili Lamborghini SpA, 2024 WL 4528164, *4
2. Legal Name Or Common Identifier
The second statutory factor is “the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person.”
a. The Parties’ Arguments
CCLI asserts that “[n]o one contends that MULTITRACKS.COM is the “legal name” of any person, so the second factor is inapposite.” (Doc. 57 at 13.)
In response, MTC argues that CCLI‘s argument on this point “is nonsense,” because “[t]he germane inquiry is whether the Mark is indicative of the registrant‘s nickname or legal name,” and here it is not. (Doc. 69 at 12-13.)
In reply, CCLI reiterates its argument that the Mark is not the legal name of any human being and the second factor is therefore inapposite. (Doc. 71 at 8-9.)
b. Analysis
MTC is correct that the second factor asks whether the relevant domain name is the name or nickname of the alleged cybersquatter. 4 McCarthy on Trademarks and Unfair Competition § 25A:55 (5th ed.). See also Blair, 2024 WL 4528164 at *4 (applying this factor to determine whether the mark “Lambo” was used as a nickname for registrant); Audi AG v. D‘Amato, 469 F.3d 534, 549 (6th Cir. 2006) (second factor weighed in favor of bad faith where the alleged cybersquatter was named D‘Amato and the domain name was audisport.com). Because CCLI does not argue that multitrack.com is its name (or the name of the current registrant, Ross), this factor weighs in favor of bad faith.
3. Prior Use Of Domain Name In Connection With Bona Fide Offerings
The third statutory factor is “the person‘s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services.”
a. The Parties’ Arguments
CCLI argues that “[i]t is undisputed that CCLI, through its affiliated companies, used the terms “multitrack” and “.com” in connection with the bona fide offering of multitrack products.” (Doc. 57 at 13.) Moreover, CCLI argues that because it purchased the multitrack.com domain name from a prior registrant who, like CCLI, used that name in connection with a bona fide offering of multitrack services, it inherited “all of the rights” from the prior registrant, meaning that its prior use of multitrack.com predates MTC‘s use of multitracks.com. (Id.)
In response, MTC argues that CCLI misrepresents the nature of the prior registrant‘s use, which involved offering “a “Turn Key” service to help small businesses “develop and maintain a website,” services totally unrelated to music industry.” (Doc. 69 at 13.) MTC‘s argument appears to be that even if CCLI did inherit the prior registrant‘s rights in the domain name, those rights do not extend to changes to the original use of the domain name. (Id.)
In reply, CCLI argues that MTC “cherry pick[ed]” screenshots from the prior registrant‘s website to suggest that the services offered were unrelated to multitracks, when in fact the evidence demonstrates that “the prior owner also . . . used the domain name to market multitrack goods and services.” (Doc. 71 at 9.)
b. Analysis
The third factor asks whether, at the time of the challenged conduct—here, CCLI‘s use of the domain name multitrack.com to divert traffic to the website of Loop Community—CCLI had engaged in “prior use” of that domain name for the bona fide sale of goods or services. See generally Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235, 1247 (11th Cir. 2009) (“The third factor is “the person‘s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services.” 3M initially used the diamondbrite.com domain name in connection with the bona fide offering of the product lines it had acquired through its purchase of the American Electronic Sign
The Court disagrees with CCLI‘s contention that it “indisputably” engaged in such prior use here. CCLI does not contend that it has ever used the domain name multitrack.com to sell goods and services, much less that it did so before 2021. Rather, CCLI focuses on the pre-2021 activities of Loop Community, which CCLI‘s parent company, StarPraise, acquired in 2020. But even assuming without deciding that, due to this corporate structure, CCLI might be able to take advantage of Loop Community‘s pre-2021 activity for purposes of the bad faith analysis, there is no evidence that Loop Community ever used the domain name multitrack.com before 2021 when selling goods and services.
In an effort to show otherwise, CCLI points to deposition testimony that Loop Community used the domain name loopcommunity.com before 2021 to sell multitrack products. (Doc. 57-3 at 7-8, 10.) CCLI seems to believe that because Loop Community‘s domain name ended with .com, and that domain name was used to sell multitrack products, the combination of these two facts shows there was the sort of “prior use” contemplated by the third factor. (Doc. 57 at 13 [“It is undisputed that CCLI, through its affiliated companies, used the terms “multitrack” and “.com” in connection with the bona fide offering of multitrack products.“].) But this misunderstands the inquiry under the third factor, which asks whether the alleged cybersquatter had made prior use of “the domain name“—as opposed to the prior use of separate words and phrases that, if hypothetically cоmbined, would equal the domain name—by the time of the challenged conduct. There is no evidence of such prior use here.19
CCLI‘s fallback argument—that it effectively steps into the shoes of the prior registrant of the multitrack.com domain name—fares no better. In support of this argument, CCLI cites GoPets. There, an individual (Hise) registered the domain name gopets.com in 1999, then transferred it to a related company (Digital Overture) in 2006, which proceeded to re-register it. GoPets, 657 F.3d at 1030. At some point between Hise‘s initial registration in 1999 and Digital Overture‘s re-registration in 2006, the plaintiff engaged in efforts to transform its service mark “GoPets” into a distinctive mark. Id. One issue in GoPets was whether Digital Overture‘s re-registration of the domain name in 2006 constituted cybersquatting in violation of the ACPA. Id. The Ninth Circuit rejected the cybersquatting claim, holding (as discussed in more detail above) that there can be only one act of “registration” under the ACPA and that the relevant act as to the domain name gopets.com occurred in 1999. Id. at 1032. This date was significant because a prerequisite to cybersquatting liability under the ACPA is that the protected mark was “distinctive at the time of registration of the domain name.”
Although CCLI may be correct that, under GoPets, it steps into the shoes of the initial registrant of the multitrack.com domain name for purposes of the temporal inquiry contemplated by
4. Bona Fide Noncommercial Or Fair Use
The fourth statutory factor is “the person‘s bona fide noncommercial or fair use of the mark in a site accessible under the domain name.”
a. The Parties’ Arguments
CCLI argues that it “indisputably made “fair use of the mark in a site accessible under the domain name.“” (Doc. 57 at 13.) To support this argument, CCLI notes its “pattern and practice of purchasing “generic descriptor domains” for its affiliated companies . . . to leverage the inherent power that such generic and descriptive names necessarily have in the marketplace.” (Id.) CCLI argues that treating such activity as fair use is consistent with the rationale behind the fair-use doctrine as set forth in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004), which “centers on the undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first.” (Doc. 57 at 13.)
In response, MTC argues that Ross admitted that CCLI “did not have a bona fide
In reply, CCLI argues that MTC conflates the fourth and fifth factors, which is “indicative of the incoherence of its arguments.” (Doc. 71 at 9.) Focusing solely on the question of fair use, CCLI argues that MTC has failed to “distinguish the uniform authority holding that the fair-use doctrine applies when a defendant uses generic terms to describe the content of its website.” (Id.)
b. Analysis
When all reasonable inferences are resolved in MTC‘s favor, a factfinder could reject the notion that CCLI‘s use of multitrack.com was “bona fide noncommercial or fair use.” The analysis as to the “noncommercial” clause of this factor is straightforward. CCLI admits that its decision to use multitrack.com to redirect web traffic to Loop Community‘s website was made as part of an “ongoing and established” marketing campaign and to “leverage the inherent power” that such descriptive terms have in the marketplace—i.e., to drive more traffic to Loop Community‘s website, where its affiliate sells multitrack goods and services and competes with MTC. This is not the sort of “noncommercial” use contemplated by Congress or the courts. See COMMERCIAL, Black‘s Law Dictionary (12th ed. 2024) (“Of, relating to, or involving the selling of goods
Turning to “fair use,” CCLI cites several district court decisions purporting to support the proposition that “the fair use doctrine applies when a defendant uses another‘s trademark simply to describe the content of defendant‘s website.” (Doc. 57 at 13.) As an initial matter, CCLI is not “using” multitrack.com “in connection with” or “to describe” its goods and services at all. And even if it were, CCLI is wrong to contend that such use would necessarily mean the use was “fair.” In KP Permanent Make-Up—which CCLI cites elsewhere and which postdates all of its cited district court decisions—the Supreme Court stated that “[w]hile we thus recognize that mere risk of confusion will not rule out fair use, we think it would be improvident to go further in this case . . . . It suffices to realize that our holding that fair use can occur along with some degree of confusion does not foreclose the relevance of the extent of any likely consumer confusion in assessing whether a defendant‘s use is objectively fair . . . . Since we do not rule out the pertinence of the degree of consumer confusion under the fair use defense, we likewise do not pass upon the position of the United States, as amicus, that the “used fairly” requirement in
Nor does Jackpocket, Inc. v. Lottomatrix NY LLC, 645 F. Supp. 3d 185 (S.D.N.Y. 2022), which CCLI cites in its reply, affect this conclusion. There, the court concluded that a defendant operating a website under the name “JACKPOT.COM” to market lottery tickets and services had engaged in fair use of that mark. Id. at 270-71. The court noted that the defendant had “operated a consumer-facing website under the JACKPOT.COM mark for nearly six years; it is logical, indeed expected, that Defendants would want to use the same branding that it uses to serve customers in over 180 countries upon entry into a new market. Furthermore, the word “jackpot,” as discussed above, is intimately linked to, and highly descriptive of, the precise product Defendants are offering—lottery tickets.
For these reasons, when all disputed inferences are resolved in MTC‘s favor as the nonmovant, a reasonable factfinder could conclude that the fourth factor weighs in favor of bad faith.
5. Intent To Confuse And Divert Consumers
The fifth statutory factor is “the person‘s intent to divert consumers from the mark owner‘s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.”
a. The Parties’ Arguments
CCLI argues there is no evidence it sought to divert customers by creating a likelihood of confusion. (Doc. 57 at 14.) CCLI also disputes MTC‘s characterization of its conduct as “typosquatting“—that is, registering intentional misspellings of famous trademarks or names—because “multitrack.com” is not a misspelling; it is a permissible and correct spelling of a generic.com domain address.” (Id.) Last, CCLI argues that any confusion between the two marks is within the scope of what the Supreme Court tolerates when it comes to descriptive names chosen as marks. (Id. at 14-15.) As part of this argument, CCLI cites a colloquy between Justice Alito and Booking.com‘s counsel from the oral argument in Booking.com in which counsel seemed to concede that Booking.com would have no right to sue another party on the basis of a “slight variation” of its mark. (Id. at 15.)
In response, MTC reiterates its arguments regarding the fourth factor. (Doc. 69 at 13-14.)
In reply, CCLI argues that MTC failed to acknowledge or dispute that its
b. Analysis
Factor five “is rarely discernable directly” and “must typically be inferred from pertinent facts and circumstances.” Audi AG, 469 F.3d at 549.
Here, a reasonable factfinder could view the facts as giving rise to an inference of intent to confuse and divert consumers. Ross, CCLI‘s CEO, acquired multitrack.com not long after CCLI‘s parent company acquiring MTC‘s direct competitor, Loop Community. Ross admits that, before obtaining the domain name, he became aware that MTC operated its website by the name multitracks.com and offered competing goods and services at that site. (Doc. 61-6 at 11.) Upon acquiring multitrack.com, CCLI initially used it to redirect visitors to Loop Community‘s website, on which Loop Community sold competing goods and services. (Id. at 10.). Courts have found that similar conduct is indicative of an intent to confuse consumers. Spectrum Ass‘n Mgmt. of Texas, L.L.C. v. Lifetime HOA Mgmt. L.L.C., 5 F.4th 560, 566 (5th Cir. 2021) (“[T]he Lifetime Defendants violated Spectrum‘s trademarks willfully and in bad faith by engaging in the following conduct: . . . registering the Infringing Domain with prior knowledge of Spectrum‘s trademarks . . . and setting up the Infringing Domain to confuse and divert internet users who sought Spectrum‘s services.“); Brookfield Commc‘ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (“West Coast‘s use of “moviebuff.com” in metatags will still result in what is known as initial interest confusion. Web surfers looking for Brookfield‘s “MovieBuff” products who are taken by a search engine to “westcoastvideo.com” will find a database similar enough to “MovieBuff” such that a sizeable number of consumers who were originally looking for Brookfield‘s product will simply decide to utilize West Coast‘s
A reasonable factfinder could also conclude that multitraсk.com is “confusingly similar” to the Mark.20 After all, the absence of one plural “s” is a minor change. Moreover, “similarity here is judged not just by appearances, but by the likelihood that a particular domain name might be typed in accidently by someone trying to type in one of Plaintiffs’ marks or domain names.” Verizon California Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088, 1095 (C.D. Cal. 2008). CCLI does not dispute that a consumer seeking to purchase a product from MTC might easily misspell multitracks.com and end up on multitrack.com, and a reasonable juror could conclude that such a mistake is likely. Courts have inferred bad faith from the use of domain names with comparable degrees of similarity to an existing mark. DaimlerChrysler v. The Net Inc., 388 F.3d 201, 207 (6th Cir. 2004) (“[I]t can be inferred that the defendants intended to divert customers from the plaintiff‘s website from the fact that the defendants’ “foradodge” domain name is phonetically identical to plaintiff‘s 4ADODGE mark.“). A reasonable juror could thus infer from these facts that CCLI obtained the multitrack.com domain name with the intent to divert consumers from MTC‘s website for commercial gain and to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.
Of course, CCLI disputes this inference and contends it acted with the honest intent of accurately describing its own products and services (or, more precisely, the products and services of Loop Community). Such a conclusion is possible, especially in light of the
6. Offer To Sell Domain Name
The sixth statutory factor is “the person‘s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person‘s prior conduct indicating a pattern of such conduct.”
a. The Parties’ Arguments
CCLI argues that no evidence exists that it has ever offered to transfer, sell, or otherwise assign the domain name for financial gain. (Doc. 57 at 15.)
In response, MTC does not address the sixth factor generally or this argument specifically.
In reply, CCLI argues that “[b]y failing to address the sixth factor, MTC effectively concedes this factor weighs against any finding of bad faith as a matter of law.” (Doc. 71 at 10.)
b. Analysis
By not addressing CCLI‘s contention that CCLI never “offer[ed] to transfer, sell, or otherwise assign the domain name,” MTC effectively concedes this fact.
7. False Contact Information
The seventh statutory factor is “the person‘s provision of material and misleading false contact information when applying for the registration of the domain name, the person‘s intentional failure to maintain accurate contact information, or the person‘s prior conduct indicating a pattern of such conduct.”
a. The Parties’ Arguments
CCLI argues that “[t]he undisputed facts establish that CCLI did not provide “material and misleading false contact information” to GoDaddy when registering the domain name.” (Doc. 57 at 15.) CCLI further argues that although MTC “has tried to make much of GoDaddy‘s erroneous recording of the registrant as “George George,” Ross testified that he did not make that decision and this testimony is the only evidence in the record on this point. (Id. at 16.) Last, CCLI argues that “it is nonsensical to claim that Ross sought to provide “material” or “misleading” information” because “[i]f Ross sought to mislead, he would not have used his real first name and a StarPraise email account.” (Id.)
In response, MTC argues that CCLI‘s registration of multitrack.com under the “George George” name, instead of under the account name that it used when registering six other domain names, shows that it provided deliberately misleading or false contact information. (Doc. 69 at 14.) MTC further argues that CCLI‘s “inaction also implies bad faith—it was perfectly happy to leave obscure the identi[t]y of the “multitrack.com” domain name owner and employ a non-CCLI email address for the technical contact.” (Id.)
In reply, CCLI emphasizes that “MTC has not put forward any evidence refuting Mr. Ross‘s testimony that GoDaddy made an error” and that CCLI‘s cited evidence “supports only the opposite inference.” (Doc. 71 at 10.) CCLI further explains that the account under which it registered the six other domain names, Domains By Proxy, LLC, is a privacy service meant to protect the identity of its users and that “[h]ad Mr. Ross
b. Analysis
On the one hand, the facts surrounding the contact information for the multitrack.com domain name are indeed strange. In registering most of CCLI‘s domain names, Ross did so under one account name (“Domains By Proxy, LLC“), whereas the multitrack.com domain name is now registered under the account name “George George” and for the registrant organization “George.” (Doc. 57-24 ¶ 4.) “George George” is not the name of any registrant, nor is “George” the name of any relevant organization. Courts have found the presence of false contact information and false registrant information to be indicative of bad faith. DaimlerChrysler, 388 F.3d at 207 (“[T]he defendants provided misleading contact information as the site‘s registrant, initially listing the registrant as The Net Inc., of Hewlett, New York, while no such еntity exists.“).
On the other hand, Ross has avowed that he provided accurate contact information during the re-registration process, only for GoDaddy to inexplicably utilize the “George George” and “George” names discussed above. (Doc. 57-24 ¶ 5.) Additionally, CCLI raises the common-sense point that if Ross were truly interested in concealing his identity or connection to the domain name, he could have just identified Domains By Proxy as the registrant (and certainly wouldn‘t have used his own name).
This strikes the Court as a situation where summary judgment would be unwarranted—the task of sorting out which inferences to draw from odd and arguably conflicting facts is usually reserved for the factfinder at trial. But even if CCLI were correct that the undisputed evidence—MTC makes no effort to come forward with evidence contradicting Ross‘s account of why the inaccurate registration details must be a product of an error committed by GoDaddy—compels a finding in CCLI‘s favor as to the seventh bad-faith factor, this would not change the overall bad-faith calculus given the presence of
8. Multiple Domains
The eighth statutory factor is “the person‘s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties.”
a. The Parties’ Arguments
CCLI argues that “[t]here is zero evidence that CCLI has registered or acquired multiple domain names which the person knows are identical or confusingly similar to marks of others.” (Doc. 57 at 16, cleaned up.)
In response, MTC argues that CCLI‘s prior registration of the domain name churchstreaminglicense.com, despite knowing that MTC held the federally registered trademark “CHURCH STREAMING LICENSE,” weighs in favor of bad faith. (Doc. 69 at 15.)
In reply, CCLI argues that registration only offends under this factor if the other mark is distinctive “at the time of registration,” and MTC fails to mention that CCLI acquired and used the domain name churchstreaminglicense.com in commerce as early as March 10, 2011—“long before MTC‘s first use in commerce of CHURCHSTREAMINGLICENSE on June 27, 2022.” (Doc. 71 at 11.)
b. Analysis
The record establishes that CCLI created and registered the churchstreaminglicense.com domain name in 2010. (Doc. 71-6 at 2.) MTC did not begin using the “Church Streaming License” mark in commerce until June 2022 and did not register it with the PTO until January 2024. (Doc. 69-1 at 44.) The eight factor thus weighs against a finding of bad faith.
. . .
The ninth statutory factor is “the extent to which the mark incorporated in the person‘s domain name registration is or is not distinctive and famous within the meaning of subsection (c).”
a. The Parties’ Arguments
CCLI argues that “[t]he final factor weighs heavily against any finding of bad faith because, for all of the reasons explained above in Section I, the purported mark MULTITRACKS.COM does not have acquired distinctiveness.” (Doc. 57 at 16.)
MTC argues that “[t]he final factor weighs heavily in favor of bad faith because, for all of the reasons [already] stated . . . [the] Mark is neither generic nor merely descriptive, but has acquired secondary meaning.” (Doc. 69 at 15.)
CCLI reiterates its arguments in reply. (Doc. 71 at 11.)
b. Analysis
Because, for the reasons outlined in the earlier portions of this order, a genuine dispute of material fact exists as to whether MTC has shown secondary meaning, this factor does not weigh in either direction.
10. Balancing The Factors
Considering all of the statutory factors, there is more than enough evidence of bad faith to allow MTC to survive summary judgment as to that issue. A reasonable factfinder could conclude that a majority of the factors weigh in favor of bad faith and intent is, at any rate, an “elusive factual question” almost always best suited for resolution by the factfinder at trial. Perez v. Curcio, 841 F.2d 255, 258 (9th Cir. 1988).
G. ACPA Safe Harbor
Even where the nine bad-faith factors weigh in favor of bad faith, the ACPA contains a “safe harbor” clause that provides: “Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”
1. The Parties’ Arguments
CCLI argues that “[t]he undisputed facts establish that CCLI‘s registration of the multitrack.com domain is subject to the ACPA‘s “safe harbor” provision. (Doc. 57 at 16.) CCLI argues that although the safe-harbor provision applies only in “the most unusual cases,” the present case “is precisely such an “unusual case“” because “[u]nlike the typical ACPA case, (1) MTC had no registration on the Principal Register at the time CCLI registered the domain name; (2) the Supreme Court only recently held in Booking.com that generic.com domain names are protectable at all and everyone involved agreed such marks are weak; (3) MTC is nothing like Booking.com in terms of its size and scale; and (4) to this day, no federal court has held—or suggested—that registering a generic.com domain name as a descriptive term for selling the class of products at issue on a website violates the ACPA.” (Id. at 16-17, emphasis added.)
In response, MTC argues that “courts should make use of this “reasonable belief” defense very sparingly and only in the most unusual cases. Here, because Plaintiff plainly acted in bad faith, it cannot avail itself of the narrow safe harbor provisions in the ACPA.” (Doc. 69 at 15, cleaned up.)
In reply, CCLI reiterates its arguments and contends that “MTC does not dispute, or even attempt to dispute, the key facts establishing CCLI‘s “safe harbor” defense,” and
2. Analysis
For the reasons outlined in the previous section, the record contains facts sufficient to support a determination that CCLI re-registered and used the domain name multitrack.com with a bad-faith intent to profit from the goodwill associated with the Mark. Moreover, CCLI is a sophisticated party with admitted knowledge of MTC‘s Mark and services—not the sort of pure-hearted and empty-headed registrant contemplated by the safe-harbor provision. Consequently, and in light of courts’ reluctance to apply this defense, CCLI has not established entitlement to safe-harbor protection as a matter of law.
Accordingly,
IT IS ORDERED that:
- The parties’ stipulation to file documents under seal (Doc. 58) is denied. Within five days of the issuance of this order, CCLI shall resubmit its unredacted summary judgment motion and unredacted versions of Exhibits 35 and 38 to its summary judgment motion.
- MTC‘s motion to exclude Dr. Iyengar (Doc. 60) is denied.
- CCLI‘s motion for summary judgment (Doc. 57) is granted in part and denied in part.
- MTC‘s motion for partial summary judgment (Doc. 61) denied.
Dated this 6th day of June, 2025.
Dominic W. Lanza
United States District Judge