Case 1:06-cv-00628-SOM-KSC Document 27 Filed 04/12/07 Page 1 of 19 PageID #: 882
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF HAWAII
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`Civ. No. 06-00628 SOM/KSC
`
`ORDER DENYING DEFENDANT’S
`MOTION FOR SUMMARY JUDGMENT
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`))))))))))
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`CHERIE PHILLIPS, et al.,
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`
`
`Plaintiffs,
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`vs.
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`SANDERSON BECK, et al.,
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`Defendants.
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`_____________________________
`
`ORDER DENYING DEFENDANT’S MOTION FOR SUMMARY JUDGMENT
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`I.
`
`INTRODUCTION.
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`Plaintiff Cherie Phillips (“Phillips”) and Defendant
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`Sanderson Beck (“Beck”), both of whom appear pro se in this case,
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`are book authors. Phillips’s book is the Wisdom Bible of God,
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`and Beck’s book is the Wisdom Bible From Ancient China, India,
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`Greece, the Middle East, and Rome.
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`On November 22, 2006, Phillips filed her verified
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`Complaint against Beck and Defendant World Peace Communications
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`(“World Peace”).1 The Complaint asserts that Defendants:
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`(1) infringed on Phillips’s copyright in her book, in violation
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`of the Copyright Act, 17 U.S.C. § 101 et seq.; and (2) infringed
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`on the unregistered trademark in the short title of her book,
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`“Wisdom Bible,” and unfairly competed with her, in violation of
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`1 The Stoic Church of Philosophy is named as a
`Plaintiff in the Complaint, but is without counsel. The court
`therefore construes all claims as asserted by Phillips only.
`World Peace is also without counsel, and the court construes
`papers that Beck has filed on its behalf as applicable only to
`Beck as an individual.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF HAWAII
`
`Civ. No. 06-00628 SOM/KSC
`
`ORDER DENYING DEFENDANT’S
`MOTION FOR SUMMARY JUDGMENT
`
`))))))))))
`
`CHERIE PHILLIPS, et al.,
`
`
`
`Plaintiffs,
`
`vs.
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`SANDERSON BECK, et al.,
`
`Defendants.
`
`_____________________________
`
`ORDER DENYING DEFENDANT’S MOTION FOR SUMMARY JUDGMENT
`
`I.
`
`INTRODUCTION.
`
`Plaintiff Cherie Phillips (“Phillips”) and Defendant
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`Sanderson Beck (“Beck”), both of whom appear pro se in this case,
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`are book authors. Phillips’s book is the Wisdom Bible of God,
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`and Beck’s book is the Wisdom Bible From Ancient China, India,
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`Greece, the Middle East, and Rome.
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`On November 22, 2006, Phillips filed her verified
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`Complaint against Beck and Defendant World Peace Communications
`
`(“World Peace”).1 The Complaint asserts that Defendants:
`
`(1) infringed on Phillips’s copyright in her book, in violation
`
`of the Copyright Act, 17 U.S.C. § 101 et seq.; and (2) infringed
`
`on the unregistered trademark in the short title of her book,
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`“Wisdom Bible,” and unfairly competed with her, in violation of
`
`1 The Stoic Church of Philosophy is named as a
`Plaintiff in the Complaint, but is without counsel. The court
`therefore construes all claims as asserted by Phillips only.
`World Peace is also without counsel, and the court construes
`papers that Beck has filed on its behalf as applicable only to
`Beck as an individual.
`
`
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`section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Phillips
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`prays for injunctive relief and damages.
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`On March 1, 2007, Beck filed a motion for summary
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`judgment, arguing that there is “no evidence that [he] copied
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`anything from the work of Phillips.” Beck contends that the term
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`“Wisdom Bible,” which appears in the title of both books, is a
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`“common term” that “cannot be removed from the public domain.”
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`Beck also points out that the books are dissimilar, as, for
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`example, Beck does “not capitalize the first letter of every
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`line” and as the “numbering system[s]” are different.
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`Phillips notes that Beck had a reasonable opportunity
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`to view her book because it was distributed worldwide and was
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`available on the internet for free. She says that the books are
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`similar because, among other things, they have the same short
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`title and are written in the same poetic meter. The “Wisdom
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`Bible” short title is, according to Phillips, not in the public
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`domain because it is “so rare” and has “secondary meaning” in
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`that it is “exclusively associated with the Stoic religion of the
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`Stoic Church of Philosophy.”
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`Because Beck does not meet his initial burden as a
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`movant on this summary judgment motion, the court denies the
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`motion. This denial is without prejudice to the timely bringing
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`of any motion on a fuller record.
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`2
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`II.
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`LEGAL STANDARD.
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`Summary judgment shall be granted when
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`the pleadings, depositions, answers to
`interrogatories, and admissions on file,
`together with the affidavits, if any, show
`that there is no genuine issue as to any
`material fact and that the moving party is
`entitled to a judgment as a matter of law.
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`Fed. R. Civ. P. 56(c); see also Addisu v. Fred Meyer, Inc., 198
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`F.3d 1130, 1134 (9th Cir. 2000). One of the principal purposes
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`of summary judgment is to identify and dispose of factually
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`unsupported claims and defenses. Celotex Corp. v. Catrett, 477
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`U.S. 317, 323-24 (1986).
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`Summary judgment must be granted against a party that
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`fails to demonstrate facts to establish what will be an essential
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`element at trial. See id. at 323. A moving party without the
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`ultimate burden of persuasion at trial–-usually, but not always,
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`the defendant–-has both the initial burden of production and the
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`ultimate burden of persuasion on a motion for summary judgment.
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`Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102
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`(9th Cir. 2000). The burden initially falls upon the moving
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`party to identify for the court “those portions of the materials
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`on file that it believes demonstrate the absence of any genuine
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`issue of material fact.” T.W. Elec. Serv., Inc. v. Pac. Elec.
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`Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987) (citing
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`Celotex Corp., 477 U.S. at 323).
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`3
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`“When the moving party has carried its burden under
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`Rule 56(c), its opponent must do more than simply show that there
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`is some metaphysical doubt as to the material facts.” Matsushita
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`Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).
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`The nonmoving party may not rely on the mere allegations in the
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`pleadings and instead must “set forth specific facts showing that
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`there is a genuine issue for trial.” Porter v. Cal. Dep’t of
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`Corr., 419 F.3d 885, 891 (9th Cir. 2005) (quoting Anderson v.
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`Liberty Lobby, Inc., 477 U.S. 242, 256 (1986)). “A genuine
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`dispute arises if the evidence is such that a reasonable jury
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`could return a verdict for the nonmoving party.” California v.
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`Campbell, 319 F.3d 1161, 1166 (9th Cir. 2003); accord Addisu, 198
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`F.3d at 1134 (“There must be enough doubt for a ‘reasonable trier
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`of fact’ to find for plaintiffs in order to defeat the summary
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`judgment motion.”). “A scintilla of evidence or evidence that is
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`merely colorable or not significantly probative does not present
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`a genuine issue of material fact.” Addisu, 198 F.3d at 1134
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`(citation omitted). “[I]f the factual context makes the non-
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`moving party’s claim implausible, that party must come forward
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`with more persuasive evidence than would otherwise be necessary
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`to show that there is a genuine issue for trial.” Cal. Arch’l
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`Bldg. Prods., Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466,
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`1468 (9th Cir. 1987) (citing Matsushita Elec. Indus. Co., 475
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`U.S. at 587).
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`4
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`When “direct evidence” produced by the moving party
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`conflicts with “direct evidence” produced by the party opposing
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`summary judgment, “the judge must assume the truth of the
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`evidence set forth by the nonmoving party with respect to that
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`fact.” T.W. Elec. Serv., 809 F.2d at 631. In other words,
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`evidence and inferences must be construed in the light most
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`favorable to the nonmoving party. Porter, 419 F.3d at 891. The
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`court does not make credibility determinations or weigh
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`conflicting evidence at the summary judgment stage. Id.
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`However, inferences may be drawn from underlying facts not in
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`dispute, as well as from disputed facts that the judge is
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`required to resolve in favor of the nonmoving party. T.W. Elec.
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`Serv., 809 F.2d at 631.
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`III.
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`BACKGROUND FACTS.
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`Phillips alleges that she founded the Stoic Church of
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`Philosophy in 1995. Complaint ¶ 9. She says she wrote Wisdom
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`Bible of God, which is “known by the short title, ‘Wisdom
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`Bible,’” for the Stoic Church in 1997 and copyrighted it in 1999.
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`Id.; see Opp. at 14.2 Phillips describes her book as the first
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`2 Beck’s memorandum in support of his motion says it is
`written under penalty of perjury. The court considers the
`parties’ factual statements in memoranda and verified pleadings
`as evidence for purposes of the present motion. Accord Layaoen
`v. Haw. Parole Auth., Civ. No. 06-00586 SOM/KSC, 2006 WL 3246619,
`at *1 (D. Haw., Nov. 7, 2006) (“The court must construe pro se
`pleadings liberally and afford the pro se litigant the benefit of
`any doubt.”); cf. Fraser v. Goodale, 342 F.3d 1032, 1036 (9th
`Cir. 2003) (“At the summary judgment stage, we do not focus on
`the admissibility of the evidence’s form. We instead focus on
`the admissibility of its contents.”).
`
`5
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`
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`book to “combine philosophy and religion into a biblical
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`expression.” Opp. at 13 (describing the book as a “biblical
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`expression of combining religion and philosophy, including
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`classical philosophy and philosophy of science, health
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`nutrition”). Phillips alleges that the first copy of her book
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`was sold in Canada in 1999 and that she thereafter “submitted
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`copies to the Virginia State Library.” Opp. at 2. She also says
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`that she handed out copies of her book in California in 2000 and
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`that it has been available on the internet for free since 2001.
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`Opp. at 6.
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`Phillips further alleges that, in May 2006, she
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`discovered Beck’s book, which she says uses the same short title
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`as her book. Complaint ¶ 12. However, Beck says he wrote most
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`of his book between 1978 and 1991, and that most of the
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`translations he consulted while writing his book “were from books
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`published before 1991.” Motion at 2. Beck alleges that, in June
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`1996, he put most of his book on his website and that his book is
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`“still available to anyone for free on [his] website.” Motion
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`at 3. Beck also says he did not know of Phillips, her website,
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`or her book until he received a letter from her in 2006. Motion
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`at 2.
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`6
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`IV.
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`ANALYSIS.
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`A.
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`Copyright Infringement.
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`Beck argues that he is entitled to summary judgment on
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`Phillips’s claim for copyright infringement because he did not
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`view a copy of her book before writing his book and, thus, could
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`not have copied her work. Motion at 2. Beck also points out
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`several differences between the books, including that he did “not
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`capitalize the first letter of every line” and that Phillips’s
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`book “adopted a different numbering than usual.” Motion at 4-5.
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`Phillips responds that, because her book was distributed
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`worldwide and was available on the internet, Beck had a
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`reasonable opportunity to view her book. Opp. at 2, 6. Phillips
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`also argues that various similarities between the books establish
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`that Beck infringed on her copyright. Opp. at 17-19. Because,
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`on the present record, the court is unable to determine whether
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`the two books are substantially similar and, thus, whether Beck
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`infringed on Phillips’s copyright, the court denies summary
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`judgment on the copyright claim.
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`“A plaintiff bringing a claim for copyright
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`infringement must demonstrate ‘(1) ownership of a valid
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`copyright, and (2) copying of constituent elements of the work
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`that are original.” Funky Films, Inc. v. Time Warner Entm’t Co.,
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`462 F.3d 1072, 1076 (9th Cir. 2006). Because Beck does not
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`7
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`dispute Phillips’s ownership of a valid copyright in her book,3
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`the court turns to the second query-–i.e., whether Beck copied
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`anything that was original to Phillips’s work. See id. (“[The
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`plaintiffs’] ownership in the copyright is undisputed; they need
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`only demonstrate a triable issue of fact whether [the defendant]
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`copied anything that was original to their work.”). “Absent
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`direct evidence of copying, proof of infringement involves fact-
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`based showings that the defendant had ‘access’ to the plaintiff’s
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`work and that the two works are ‘substantially similar.’” Three
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`Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000).
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`Proof of access “requires ‘an opportunity to view or to
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`copy plaintiff’s work.’” Id. at 482. “This is often described
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`as providing a ‘reasonable opportunity’ or ‘reasonable
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`possibility’ of viewing the plaintiff’s work.” Id. Reasonable
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`access is “more than a bare possibility,” and the Ninth Circuit
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`recognizes that “distinguishing a ‘bare’ possibility from a
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`‘reasonable’ possibility” can “present a close question.” Id.
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`Reasonable access can be established by circumstantial evidence
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`in one of two ways: “(1) a particular chain of events is
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`established between the plaintiff’s work and the defendant’s
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`access to that work (such as through dealings with a publisher or
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`3 Attached to Phillips’s opposition memorandum is a
`copy of the Certificate of Registration regarding her book. See
`Ex. 3.
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`8
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`record company), or (2) the plaintiff’s work has been widely
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`disseminated.” Id. at 482.
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`Beck argues that he did not see Phillips’s book, has
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`“never seen a printed copy of the ‘Wisdom Bible of God’ by Cherie
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`Phillips,” and “never heard of Cherie Phillips nor visited her
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`website until after she sent me a letter in 2006 threatening to
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`sue me.” Motion at 2. Although this evidence, if true, would
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`indicate that Beck did not actually view Phillips’s book, the
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`court need only determine whether Beck had a “reasonable
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`opportunity” to view her book before writing his book. See Three
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`Boys Music Corp., 212 F.3d at 482.
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`Phillips alleges that Beck had a reasonable opportunity
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`to view Phillips’s book because it was distributed
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`internationally in 1999, was entered into the Virginia State
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`Library collection, has been available for free on her website
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`since 2001, and was distributed in California, the state in which
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`Beck lives. Opp. at 2, 5-6. Phillips also alleges that Beck
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`“has extensive computer knowledge” and could have easily searched
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`the internet to discover her book before giving his book the same
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`short title. Opp. at 10, 14. Construing this evidence in the
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`light most favorable to Phillips, the court concludes that a
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`reasonable jury could find that Beck had a reasonable opportunity
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`to view Phillips’s work before creating his book. See Porter,
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`419 F.3d at 891; Campbell, 319 F.3d at 1166. However, because
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`9
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`“[n]o amount of proof of access will suffice to show copying if
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`there are no similarities,” the court turns to whether the two
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`books are substantially similar. See Funky Films, Inc., 462 F.3d
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`at 1081; see also Three Boys Music Corp., 212 F.3d at 485.
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`“To determine whether two works are substantially
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`similar, a two-part analysis--an extrinsic test and an intrinsic
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`test–-is applied.” Rice v. Fox Broadcasting Co., 330 F.3d 1170,
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`1174 (9th Cir. 2003). “At summary judgment, courts apply only
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`the extrinsic test; the intrinsic test, which examines an
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`ordinary person’s subjective impressions of the similarities
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`between two works, is exclusively the province of the jury.”
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`Funky Films, Inc., 462 F.3d at 1077. Summary judgment is
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`appropriate only if “no reasonable juror could find substantial
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`similarity of ideas and expression, viewing the evidence in the
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`light most favorable to the nonmoving party.” Smith v. Jackson,
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`84 F.3d 1213, 1218 (9th Cir. 1996). A “plaintiff who cannot
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`satisfy the extrinsic test necessarily loses on summary judgment,
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`because a jury may not find substantial similarity without
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`evidence on both the extrinsic and intrinsic tests.” Funky
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`Films, Inc., 462 F.3d at 1077.
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`The extrinsic test is objective in nature and
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`recognizes that an author’s expression is protected, but not
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`“facts and ideas within a work.” Id. at 1081; see also id. At
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`1077 (“We must take care to inquire only whether ‘the protectable
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`10
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`Case 1:06-cv-00628-SOM-KSC Document 27 Filed 04/12/07 Page 11 of 19 PageID #:
` 892
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`elements, standing alone, are substantially similar.” (emphasis
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`in original)); Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir.
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`1990) (en banc). The extrinsic test “depends not on the
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`responses of the trier of fact, but on specific criteria which
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`can be listed and analyzed.” Funky Films, Inc., 462 F.3d at
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`1077. The “measurable, objective elements” that constitute a
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`literary work’s expression and that the extrinsic test focuses on
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`are “the plot, theme, dialogue, mood, setting, pace, characters,
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`and sequence of events . . . ‘the actual concrete elements that
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`make up the total sequence of events.’” Shaw, 919 F.2d at 1359
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`(ellipses points in original).
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`Beck argues that his book differs from Phillips’s book
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`in that: (1) Beck did “not capitalize the first letter of every
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`line”; and (2) the two books use different “numbering systems.”
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`Motion at 4-5. It is unclear what Beck means by “numbering
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`systems,” but even assuming these differences do exist, “[n]o
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`plagiarist can excuse the wrong by showing how much of his work
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`he did not pirate.” Shaw, 919 F.2d at 1362. Furthermore, as no
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`party has provided briefing addressing anything more than a few
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`excerpts of Phillips’s book, the court is unable to determine
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`what, if any, protectable elements are similar.4 Accord Funky
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`4 Phillips submitted an untimely print-out of her
`entire book on April 6, 2007, one business day before the hearing
`on this matter. See LR 7.4; see also LR 56.1. The court was not
`aware of this late filing before the hearing. At the hearing,
`Beck also stated that he has not seen a copy of Phillips’s book,
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`11
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` 893
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`Films, Inc., 462 F.3d at 1077. Beck therefore fails to meet his
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`initial burden of persuasion on this summary judgment motion.
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`See T.W. Elec. Serv., Inc., 809 F.2d at 630.
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`In opposing the motion, Phillips points to numerous
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`alleged similarities between the books. In support of her
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`opposition memorandum, Phillips submitted three excerpts from her
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`book and three excerpts from Beck’s book for a side-by-side
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`comparison. Exs. 9-11, 19. The only argument Phillips makes
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`with respect to these excerpts is that they establish that the
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`books use the “[s]ame poetic meter: dactylic hexameter.” Opp.
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`at 7, 11, 15, 17. However, none of the excerpts is written
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`solely or even primarily in dactylic hexameter.
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`Phillips also points out the following general
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`similarities between the books: (1) same short title;
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`(2) similar cover design; (3) same “combination of philosophy and
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`world religions”; (4) same biblical expression; (5) same “unusual
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`spelling” of Zacharias and Encheiridion; and (6) same “synthesis
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`of ideas from Matthew, Mark, Luke and John to tell a similar
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`story of Christ in a single epic poem.” Opp. at 17-19. Without
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`examining Phillips’s book, the court is unable to determine if
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`and Phillips confirmed that she had not provided a copy to him.
`Thus, the court ordered Phillips to provide the court with
`courtesy copies of her filing and to serve Beck with a copy of
`her book within ten days of the hearing. Additionally, because
`Beck had no opportunity to review Phillips’s late filing, the
`court disregards Phillips’s print-out for purposes of this
`motion.
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`12
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`any of these alleged similarities exist, except for the
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`similarity between the books’ short titles. However, in the
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`Ninth Circuit, titles “cannot claim statutory copyright.” Shaw,
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`919 F.2d at 1362; see also Chase-Riboud v. Dreamworks, Inc., 987
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`F. Supp. 1222, 1231 (C.D. Cal. 1997) (“Titles may not claim
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`statutory copyright.”). Rather, any similarity in title is but
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`“one factor in establishing whether the substance of plaintiff’s
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`work (not the title) has been copied.” Shaw, 919 F.2d at 1362.
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`Summary judgment is denied on the copyright claim.
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`B.
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`Trademark Infringement and Unfair Competition.
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`Although Beck does not expressly seek summary judgment
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`on Phillips’s claims for trademark infringement and unfair
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`competition, he argues that the short title, “Wisdom Bible,”
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`“cannot be removed from the public domain.” Motion at 5-6. This
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`argument appears to attack the validity of Phillips’s alleged
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`trademark in the short title of her book. Phillips contends that
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`“the title, ‘Wisdom Bible,’ is so rare that it could not possibly
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`be in public domain.” Opp. at 22. Because Beck presents only
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`conclusory allegations in support of his argument, the court
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`denies summary judgment on the trademark infringement and unfair
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`competition claims.
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`To prevail on a claim of trademark infringement, a
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`plaintiff must establish “(1) that it has a protectible ownership
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`interest in the mark; and (2) that the defendant’s use of the
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`13
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`mark is likely to cause consumer confusion, thereby infringing
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`upon the [plaintiff’s] rights to the mark.” Dep’t of Parks &
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`Recreation for the State of Cal. v. Bazaar Del Mundo, Inc., 448
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`F.3d 1118, 1124 (9th Cir. 2006). Beck presents argument on only
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`the first element, which is also an element of a claim for unfair
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`competition. Motion at 5-6; see Brookfield Commc’ns, Inc. v. W.
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`Coast Entm’t, 174 F.3d 1036, 1046-47 (9th Cir. 1999) (“To resolve
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`whether West Coast’s use of ‘moviebuff.com’ constitutes trademark
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`infringement or unfair competition, we must first determine
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`whether Brookfield has a valid, protectable trademark interest in
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`the ‘MovieBuff’ mark.”); cf. Century 21 Real Estate Corp. v.
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`Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988) (“The ‘ultimate
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`test’ for unfair competition is exactly the same as for trademark
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`infringement: ‘whether the public is likely to be deceived or
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`confused by the similarity of the marks.’”); Joujou Designs, Inc.
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`v. Jono Ligne Internationale, Inc., 821 F. Supp. 1347, 1353 (N.D.
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`Cal. 1992) (“The tests for . . . infringement of a common law
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`trademark, unfair competition under 15 U.S.C. § 1125(a), and
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`common law unfair competition are the same: whether confusion is
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`likely.”).
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`“Before infringement can be shown, the trademark holder
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`must demonstrate that it owns a valid mark, and thus a
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`protectable interest.” KP Permanent Make-Up, Inc. v. Lasting
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`Impression I, Inc., 408 F.3d 596 (9th Cir. 2005); see also Yellow
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`14
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` 896
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`Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d
`
`at 928 (9th Cir. 2005) (noting that the “validity of the
`
`trademark is ‘a threshold issue’”). There are five categories of
`
`trademarks: “(1) generic; (2) descriptive; (3) suggestive;
`
`(4) arbitrary; and (5) fanciful.” Yellow Cab Co. of Sacramento,
`
`419 F.3d at 927. “The latter three categories are deemed
`
`inherently distinctive and are automatically entitled to
`
`protection.” Id. A descriptive trademark “can receive trademark
`
`protection if it has acquired distinctiveness by establishing
`
`‘secondary meaning’ in the marketplace.” Id. Generic trademarks
`
`“give the general name of the product” and are “not capable of
`
`receiving protection because they identify the product, rather
`
`than the product’s source.” Id. “Whether a mark is generic is a
`
`question of fact.” Id. at 929. In determining the validity of a
`
`trademark, the court must view the trademark “as a whole” because
`
`“the composite may become a distinguishing mark even though its
`
`components individually cannot.” Reno Air Racing Ass’n, Inc. v.
`
`McCord, 452 F.3d 1126, 1135 (9th Cir. 2006) (quoting Cal. Cooler,
`
`Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1455 (9th Cir.
`
`1985)).
`
`At the hearing on this matter, Phillips explained that
`
`her trademark and unfair competition claims are based on her
`
`alleged trademark in the short title of her book, “Wisdom Bible.”
`
`Beck challenges the validity of her trademark, arguing that the
`
`15
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`
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`Case 1:06-cv-00628-SOM-KSC Document 27 Filed 04/12/07 Page 16 of 19 PageID #:
` 897
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`short title is generic because it is in the public domain.
`
`Motion at 5-6; see Big Island Candies, Inc. v. Cookie Corner, 244
`
`F. Supp. 2d 1086, 1098 (D. Haw. 2003) (noting that generic
`
`trademarks are “free for all to use” and are “in the public
`
`domain”). However, the determination of whether a trademark is
`
`generic is a question of fact, and, without more, Beck’s
`
`conclusory assertion that the trademark is generic is
`
`insufficient to sustain his burden on this motion.5 See Walker
`
`v. Sumner, 917 F.2d 382, 387 (9th Cir. 1990) (conclusory
`
`assertions are insufficient to meet the movant’s burden on a
`
`summary judgment motion).
`
`The second and “core element” of trademark infringement
`
`and unfair competition asks whether “customers are likely to be
`
`confused about the source or sponsorship of the products.” Reno
`
`Air Racing Ass’n, Inc., 452 F.3d at 1135, 1136 (“the legal
`
`question is not whether the marks look similar to us but whether
`
`they look similar to ordinary consumers of the products”); Corp,
`
`5 Because Beck does not meet his burden on this point,
`the court need not address Phillips’s contention that Phillips’s
`trademark in “Wisdom Bible” has “secondary meaning.” Opp. at 23.
`The court notes, however, that Phillips fails to address the
`factors pertinent to determining whether a trademark has
`“secondary meaning”: “(1) whether actual purchasers of the
`product bearing the claimed trademark associate the trademark
`with the producer, (2) the degree and manner of advertising under
`the claimed trademark, (3) the length and manner of use of the
`claimed trademark, and (4) whether use of the claimed trademark
`has been exclusive.” See Dep’t of Parks & Recreation for the
`State of Cal., 448 F.3d at 1128.
`
`16
`
`
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`Case 1:06-cv-00628-SOM-KSC Document 27 Filed 04/12/07 Page 17 of 19 PageID #:
` 898
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`846 F.2d at 1178. “An eight-factor test--the so-called
`
`Sleekcraft factors--guide the assessment of whether a ‘likelihood
`
`of confusion’ exists.” Id. at 1135. Those factors are:
`
`(1) the strength of the mark; (2) the
`proximity or relatedness of the goods; (3)
`the similarity of the marks; (4) evidence of
`actual confusion; (5) the marketing channels
`used; (6) the degree of care customers are
`likely to exercise in purchasing the goods;
`(7) the defendant’s intent in selecting the
`mark; and (8) the likelihood of expansion
`into other markets. Not all of the factors
`are of equal importance or applicable in
`every case.
`
`Id. at 1136 n.9. “[D]etermining whether a likelihood of
`
`confusion exists at the summary judgement stage is generally
`
`disfavored because a full record is usually required to fully
`
`assess the facts.” KP Permanent Make-Up, Inc., 408 F.3d at 608.
`
`In the present motion, Beck does not address this second element
`
`of Phillips’s trademark infringement and unfair competition
`
`claims.
`
`Because Beck does not meet his initial burden on this
`
`motion with respect to Phillips’s alleged trademark in the short
`
`title of her book, the court denies summary judgment on
`
`Phillips’s trademark and unfair competition claims.
`
`C.
`
`Future Motions.
`
`At the hearing on this matter, Beck stated that he
`
`would like to be excused from filing any opposition memorandum to
`
`motions that Phillips might bring in the future. Instead, he
`
`17
`
`
`
`Case 1:06-cv-00628-SOM-KSC Document 27 Filed 04/12/07 Page 18 of 19 PageID #:
` 899
`
`asked that the court rely on his present motion and memorandum
`
`for his position with respect to any motions Phillips might file
`
`in this case. Although the court will not search the record on
`
`Beck’s behalf if he fails to oppose a motion by Phillips, he may
`
`rely on the present motion and memorandum in future proceedings
`
`by filing an opposition to any future motion that clearly states
`
`that he is incorporating the present motion and memorandum. This
`
`is an unusual procedure, but Beck appears pro se and says that
`
`his burden in opposing future motions might be substantial. The
`
`court notes, however, that Beck, as a practical matter, may want
`
`to file a new memorandum, whether attached to a new motion he may
`
`bring or as an opposition to a motion Phillips may bring. A new
`
`memorandum may well make sense in light of Phillips’s late
`
`submission of her book.
`
`The court also reminds Beck to comply with Rule 12 of
`
`the Federal Rules of Civil Procedure, regarding the filing of an
`
`answer or a motion to dismiss. At the hearing, Beck complained
`
`about having to litigate in Hawaii and orally moved to transfer
`
`the case. The court declined to consider the oral motion, but
`
`Beck may file a written motion. In so stating, the court is not
`
`suggesting that such a motion would or would not be granted. The
`
`court notes that, to date, Beck has not challenged personal
`
`jurisdiction over him.
`
`18
`
`
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`Case 1:06-cv-00628-SOM-KSC Document 27 Filed 04/12/07 Page 19 of 19 PageID #:
` 900
`
`V.
`
`CONCLUSION.
`
`In light of the foregoing, the court denies Beck’s
`
`motion for summary judgment, but Beck may bring future motions
`
`based on a fuller record than existed when he filed the present
`
`motion.
`
`
`
`IT IS SO ORDERED.
`
`DATED: Honolulu, April 12, 2007.
`
`_____________________________
`Susan Oki Mollway
`United States District Judge
`
`Phillips, et al. v. Beck, et al., Civ. No. 06-00628 SOM/KSC; ORDER DENYING
`DEFENDANT’S MOTION FOR SUMMARY JUDGMENT.
`
`19
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