Page:Urantia Foundation v. Maaherra (D. Ariz. 1995).pdf/14

 aforementioned study aid to various individuals free of charge. Id. ¶32.

In September, 1990, the Urantia Foundation was notified that an unidentified source was distributing computer disks that contained the entire text of The URANTIAUrantia [sic] Book. (Second Aff. of Wharton Ex. A, ¶16.) In November, 1990, the plaintiff discovered a second set of computer disks that not only contained the entire text of The URANTIAUrantia [sic] Book but bore the plaintiffs trademarks: “URANTIA” and the symbol of three blue concentric circles. Id. ¶22. In January, 1991, the plaintiff surmised that the defendant was the source of the computer disks and, shortly thereafter, filed the instant action against her. The defendant admits she had full knowledge of the plaintiff’s use and registration of its trademarks when she distributed the computer disks but denies that her actions constitute infringement. ((Revised) Def.’s Substitute 2nd Am. Answer and Countercl. for Cancellation of Federal Trademark Registrations at 4, ¶¶24–25.) [hereinafter Def.’s Answer).

A motion for summary judgment is properly granted if the pleadings and evidence submitted in support of the motion show that “there is no genuine issue as to any material fact and … the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c); Calnetics Corp. v. Vokswagen of Am., Inc., 582 F.2d 674, 683 n. 11 (9th Cir.), ''cert. denied'', 429 U.S. 940, 97 S.Ct. 355, 50 L.Ed.2d 309 (1976). The moving party has the burden of demonstrating the absence of a genuine issue of material fact. Blair Foods, Inc. v. Ranchers Cotton Oil, 610 F.2d 665, 668 (9th Cir.1980). A genuine issue of material fact exists when there is sufficient evidence favoring the party opposing the motion for a jury to return a verdict for that party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986); First Nat. Bank of Arizona v. Cities Serv. Co., 391 U.S. 258, 288–89, 88 S.Ct. 1575, 1592–93, 20 L.Ed.2d 569 (1968). If the moving party meets its initial burden, then the burden shifts to the opposing party to produce evidence of the existence of a genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In deciding a motion for summary judgment, all evidence is considered in a light most favorable to the party opposing the motion. Blair Foods, 610 F.2d at 668 (citations omitted). “If the evidence is merely colorable or is not significantly probative, summary judgment may be granted.” Anderson, 477 U.S. at 249–50, 106 S.Ct. at 2510–11 (citations omitted).

The plaintiff brings this action pursuant to the Trademark Act of 1946. Section 1114 of the Act requires that the plaintiff in a trademark infringement action show that the defendant (1) without consent, (2) used in commerce, (3) a reproduction, copy or colorable imitation of the plaintiff’s registered mark in connection with a sale or distribution of goods or services, and (4) that such a use is likely to cause confusion. See 15 U.S.C. § 1114(1)(a) (1988); Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir.1993); Kelley Blue Book v. Car-Smarts, Inc., 802 F.Supp. 278, 284 (C.D.Cal.1992). Ms. Maaherra admits that she did not have the plaintiff’s consent to reproduce exact copies of the plaintiff’s marks on her computer disks before she distributed the disks throughout the United States. (Def.’s Answer at 3–4, ¶¶13, 25–27.) Therefore, to prevail on its claim of trademark infringement, the plaintiff must overcome only two obstacles. The plaintiff must prove that it has a valid mark entitled to protection and that the defendant’s use of the mark is likely to cause confusion in the minds of the public.

The defendant admits that the plaintiff has obtained trademark registration certificates for both “URANTIA” and the