Case 3:09-cv-01063-MMA-WVG Document 63 Filed 08/13/10 Page 1 of 15 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 THE JUMPITZ CORPORATION, a CASE NO. 09CV1063-MMA (WVG) California corporation, 12 ORDER GRANTING IN PART Plaintiff, AND DENYING IN PART 13 vs. PLAINTIFF AND COUNTER- DEFENDANT THE JUMPITZ 14 CORPORATION’S MOTION FOR SUMMARY JUDGMENT 15 VIACOM INTERNATIONAL, INC., a Delaware corporation, and MTV [Doc. No. 55] 16 NETWORKS, INC., a Delaware corporation, 17 Defendants. 18 VIACOM INTERNATIONAL, INC., a Delaware corporation, 19 Counter-claimant, 20 vs. THE JUMPITZ CORPORATION, a 21 California corporation, 22 Counter-defendant. 23 Pending before the Court is Plaintiff and Counter-Defendant The Jumpitz Corporation’s (“The 24 Jumpitz”) motion for summary judgment on Defendant and Counter-Claimant Viacom International, 25 Inc.’s (“Viacom”) counterclaim. (Doc. No. 55.) On August 9, 2010, the Court held a hearing on The 26 Jumpitz’s motion. Attorney Fletcher Paddison argued on behalf of The Jumpitz, and Attorney Robert 27 Klieger argued on behalf of Viacom. At the conclusion of the hearing, the Court took the matter under 28 submission pursuant to Civil Local Rule 7.1(d)(1). Having considered the briefs and the arguments - 1 - 09CV1063-MMA (WVG) Case 3:09-cv-01063-MMA-WVG Document 63 Filed 08/13/10 Page 2 of 15 1 of counsel, and for the reasons stated herein, the Court GRANTS IN PART and DENIES IN PART 2 The Jumpitz’s motion for summary judgment. 3 Background1 4 The Jumpitz is a San Diego-based performance group that performs live song and dance for 5 preschool-aged children. Plaintiff first used The Jumpitz mark in the marketplace in December 2007 6 when it marketed its first DVD. In addition to live performances, The Jumpitz also market themselves 7 via their website, www.jumpitz.com. 8 On or about May 1, 2009, MTV Networks began marketing its own live-action children’s 9 program entitled “The JumpArounds.” That same day, MTV Networks also launched a website 10 promoting The JumpArounds, and began promoting The JumpArounds on its Nickelodeon and 11 NOGGIN web and mobile sites. In July 2009, MTV changed the name of the program to “The Fresh 12 Beat Band.” 13 On May 15, 2009, Plaintiff filed the instant complaint alleging infringement of its trademark, 14 as well as infringement of its trade dress. (Doc. No. 1.) On August 21, 2009, Defendants answered the 15 complaint, and Viacom alleged counterclaims against The Jumpitz for trade dress infringement. (Doc. 16 No. 11.) Specifically, Viacom alleged that The Jumpitz had infringed Viacom’s trade dress by: (1) 17 using an orange bar across the top of its website; (2) using a graphic that resembles the Nickelodeon 18 “splat;” (3) referencing slime on its website, which Viacom alleged to be strongly suggestive of an 19 association with Nickelodeon; (4) using a color scheme of muted colors for its website (specifically 20 referencing similarities between the Jumpitz’s site and the site for Spongebob Squarepants); (5) having 21 a similar group composition to The JumpArounds/The Fresh Beat Band; (6) utilizing shirts with a 22 similar pattern and cut to “Blues Clues” to clothe its characters; and (7) creating a website with a color 23 scheme and look similar to those of Nickelodeon’s programs and websites. 24 On March 29, 2010, Defendants moved for summary judgment on all claims. (Doc. No. 37.) 25 1A more detailed background of the facts of this case can be found in the Court’s May 13, 2010 26 Order granting in part and denying in part Defendants’ motion for summary judgment. (Doc. No. 51.) 27 To the extent that any fact appears in this section, the Court finds it not reasonably in dispute and supported by admissible evidence. Moreover, to the extent that any evidentiary fact is subject to 28 an objection, its appearance in this order indicates that the Court has overruled the objection and found the evidence admissible. - 2 - 09CV1063-MMA (WVG) Case 3:09-cv-01063-MMA-WVG Document 63 Filed 08/13/10 Page 3 of 15 1 On May 13, 2010, the Court issued an order granting in part and denying in part Defendants’ motion 2 for summary judgment. (Doc. No. 51.) On July 12, 2010, The Jumpitz moved for summary judgment 3 on all of Viacom’s counterclaims. (Doc. No. 55.) Viacom opposes the motion. (Doc. No. 57.) 4 Legal Standard 5 A moving party is entitled to summary judgment only if the moving party can demonstrate that 6 (1) “there is no genuine issue as to any material fact,” and (2) it is “entitled to judgment as a matter 7 of law.” Fed R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). A material issue of 8 fact is one that raises a question that a trier of fact must answer to determine the rights of the parties 9 under the substantive law that applies. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A 10 dispute is genuine if “the evidence is such that a reasonable jury could return a verdict for the 11 nonmoving party.” Id. at 248. The initial burden is on the moving party to show that both prongs are 12 satisfied. Celotex, 477 U.S. at 323. The moving party can satisfy this burden in two ways: (1) by 13 presenting evidence that negates an essential element of the nonmoving party’s case; or (2) by 14 demonstrating that the nonmoving party failed to make a showing sufficient to establish an element 15 essential to that party’s case on which that party will bear the burden of proof at trial. Id. at 322–23. 16 If the moving party fails to discharge this initial burden, summary judgment must be denied, and the 17 court need not consider the nonmoving party’s evidence. Adickes v. S.H. Kress & Co., 398 U.S. 144, 18 159–60 (1970). 19 If the moving party meets this initial burden, the nonmoving party cannot defeat summary 20 judgment merely by demonstrating “that there is some metaphysical doubt as to the material facts.” 21 Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986); Anderson, 477 U.S. 22 at 252 (“The mere existence of a scintilla of evidence in support of the nonmoving party’s position 23 is not sufficient.”). Rather, the nonmoving party must “go beyond the pleadings and by [his] own 24 affidavits, or by ‘the depositions, answers to interrogatories, and admissions on file,’ designate 25 ‘specific facts showing that there is a genuine issue for trial.’” Celotex, 477 U.S. at 324 (quoting Fed. 26 R. Civ. P. 56(e)). The inferences to be drawn from the facts must be viewed in a light most favorable 27 to the nonmoving party. Gibson v. County of Washoe, Nev., 290 F.3d 1175, 1180 (9th Cir. 2002). 28 “Credibility determinations, the weighing of evidence, and the drawing of legitimate inferences from - 3 - 09CV1063-MMA (WVG) Case 3:09-cv-01063-MMA-WVG Document 63 Filed 08/13/10 Page 4 of 15 1 the facts are jury functions, not those of a judge, [when] he is ruling on a motion for summary 2 judgment.” Anderson, 477 U.S. at 255. 3 Analysis 4 Although Viacom identified a number of elements of its purported trade dress in its 5 counterclaim, Viacom concedes in its opposition papers that it is no longer pursuing most of those 6 elements. Thus, Viacom’s trade dress infringement claim is now premised on just two elements: (1) 7 Nickelodeon’s “splat;” and (2) Nickelodeon’s “visual system” – which Viacom asserts is comprised 8 of a particular color palette (distinctive shades of orange, green, and cyan blue) and design ( “soft” 9 and “whimsical” geometric shapes as mortise or framing devices). 10 A party claiming infringement must demonstrate that it has a valid, protectable interest in its 11 marks, and that the allegedly infringing use of the same or a similar mark is likely to cause confusion 12 as to source, affiliation, or sponsorship among consumers. See KP Permanent Make-Up, Inc. v. 13 Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005). Trade dress is “the total image, design, 14 and appearance of a product and ‘may include features such as size, shape, color, color combinations, 15 texture or graphics.’” Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1258 (9th Cir. 2001). 16 1. The Nickelodeon splat2 17 First, Viacom asserts that The Jumpitz’s use of a shooting star graphic on its website is 18 sufficiently similar to the Nickelodeon splat, such that it is likely to create confusion amongst 19 consumers. 20 a. Protectable mark 21 Registration of the mark with the U.S. Patent and Trademark Office (“USPTO”) constitutes 22 23 2In its opposition, Viacom references and presents evidence of a number of old logos used by Nickelodeon. Nickelodeon contends that these marks, many of which were in use during the 1980s 24 and 1990s, viewed together with the current iteration of the splat, render the similarity of The Jumpitz graphic even more apparent. As an initial matter, these additional, outdated marks are not relevant to 25 the inquiry because the Court must consider the marks “as they appear in the marketplace.” Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143 (9th Cir. 1999).